In this case study video, I explain how the word "mail" in a domain name plus active MX (mail exchange) records helped a trademark owner win a case against a cybersquatter under the Uniform Domain Name Dispute Resolution Policy (UDRP).
The case involved the domain name <MailEquinor.com>, and the complaint was filed by a company called Equinor, which is engaged in the energy sector and is headquartered in Norway.
Equinor argued that the MX records for the disputed domain name were active, which it said meant that there was “a high risk that fraudulent emails could be sent using the Domain Name.” An MX record is simply an acronym for “mail exchange” and, if it exists, it appears in the DNS, or domain name system, records associated with a domain name. An MX record is a technical entry that indicates how email messages using a specific domain name should be routed.
At the outset, the UDRP panel first looked at whether the disputed domain name, <MailEquinor.com>, was confusingly similar to the EQUINOR trademark, which is required under the first element of the UDRP’s three-part test. Obviously, the domain name contains the trademark in its entirety, which is usually sufficient to find confusing similarity under the UDRP. But the panelist looked at the additional word in the domain name, “mail,” and had this to say:
[T]he term ‘mail’ [is] a dictionary term which also corresponds to one of the most widely used features of the Internet and [is] a very commonly used term in public and private namespaces. The addition of the term ‘mail’ to the EQUINOR trade mark in the Domain Name cannot prevent a finding of confusing similarity between the Complainant’s trade mark and the Domain Name.
As I explain in the video, the panelist went on to find that the registrant of the domain name lacked rights or legitimate interests in it under the second element of the UDRP, and the registrant didn’t bother to submit a response.
And finally, the panelist found that the domain name was registered and used in bad faith, not only because of the PPC website that was associated with it, but also because the domain name contained the word “mail” and because MX records were activated in connection with it. Here’s what the panelist wrote on those two issues:
[T]he DNS setup of the Domain Name (with active MX records), along with the composition of the Domain Name, lead the Panel to consider that the Domain Name is most likely intended to be used to send emails which is consistent with the prefix ‘mail’ contained in the Domain Name before the EQUINOR trade mark of the Complainant. Given the visibility and goodwill of the EQUINOR trade mark of the Complainant and the use of the term ‘mail’ in the Domain Name, without any explanation for the active MX records, the Panel considers that there is a high risk that the Domain Name could be used to deceive Internet users. In these circumstances, the Domain Name constitutes a potential threat hanging over the head of the Complainant.
So as a result, because Equinor had proven all three elements of the UDRP, the panelist ordered the domain name transferred to Equinor.
So, this was a simple case, but it holds an important lesson for trademark owners pursuing cybersquatters, and it’s a lesson that has also appeared in many other UDRP decisions through the years: How a domain name is being used publicly is not the only manner in which bad faith is assessed. Sometimes, other words in a domain name (such as “mail”) and technical issues (such as the configuration of MX records) are highly relevant.
