A trademark owner lost what seemed to be an easy case under the Uniform Rapid Suspension System (URS), simply because of an apparent oversight by its attorney: failing to include a PDF that properly showed how the disputed domain name was being used.
I discuss what happened in the case and what lesson it holds for other trademark owners in a new video.
The case was filed at the Forum by Bitwarden, which offers password management products and services under the BITWARDEN trademark. While Bitwarden uses the domain name <bitwarden.com>, the disputed domain name in this case was <bitwarden.icu>. The decision was issued in October 2022.
As I discuss in the video, the decision says that Bitwarden “claimed that the disputed domain name referred to a website which mimics [its own] website, using identical content,” although the decision also says that “[t]he disputed domain name is currently inactive” when the URS examiner apparently visited it.
The case seems straightforward, but Bitwarden lost on what some might call a technicality. Specifically, the decision says that Bitwarden did not include documentation supporting its claim that the disputed domain name was actually being used in connection with a website that mimicked Bitwarden’s own website.
Here’s what the decision says:
The Complainant provided a .pdf document showing what appears to be a printout of a website corresponding to the Complainant’s official website. However, the Examiner observes that the URL is missing. It is therefore impossible to verify whether this printout relates to a website linked to the disputed domain name. As the disputed domain name is currently inactive, the Examiner cannot confirm the Complainant’s claim by its own research either. In these circumstances, the Examiner finds that the Complainant did not make a prima facie case, proven by clear and convincing evidence, for the disputed domain name to be used in bad faith.
As a result, the URS examiner ruled against Bitwarden, allowing the domain name registrant to keep it.
However, as I explain in the video, Bitwarden apparently followed up its loss under the URS by filing a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) for the same domain name — so, it may ultimately be successful after getting a second bite at the proverbial apple.
(Update, December 3, 2022: As I predicted in the video, Bitwarden has now won a UDRP decision for <bitwarden.icu>, the same domain name it lost in the URS case I discuss in the video.)
When I file domain name complaints on behalf of my clients, I always include printouts where appropriate that include not only the URL but also the date on which the website was visited. And in some cases, I even include videos to explain what is happening with a domain name if a printout can’t fully explain the story, such as if a domain name redirects to another website.
Read the URS decision: Bitwarden, Inc. v. Privacy Protection, Forum Claim No. 2013920
