In a decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), a trademark owner lost its case because the dispute was really about an email address that contained its trademark -- not a domain name. Although the panel recognized that the respondent was using the domain name in connection with what it called a "fraudulent enterprise," it said that the domain name "neither looks nor sounds like" the trademark.
I discuss what happened in this case, VFS Global Services PLC v. David Killam, WIPO Case No. D2022-3969, in a new YouTube case study video.
The UDRP complaint was filed by a trademark owner known as VFS Global Services out of the United Kingdom, which owns trademark registrations for VFS and VFS GLOBAL and operates a website using the domain name <vfsglobal.com>. The respondent in the case used the email address vfsglobal@visasdept.com in connection with what the decision calls a “fraudulent enterprise.”
However, as I explain in the video, the UDRP only addresses domain name disputes, not email address disputes. And in this case, the relevant domain name (in the email) was <visasdept.com> — which is not identical or confusingly similar to the VFS trademark, as required by the first element of the UDRP.
As a result, the panel refused to transfer the domain name to VFS:
With very considerable reluctance…, the Panel finds that the Complainant has failed to establish that the disputed domain name is confusingly similar to the Complainant’s trademark rights. The Policy is limited to resolving disputes about the registration of abusive domain names…. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of ‘the abusive registration of domain names’, also known as ‘cybersquatting’.
As I say in the video, this decision is an important reminder that the UDRP is a narrow policy that addresses only domain names, not email addresses. While an email address used by a respondent might provide important evidence in a case, ultimately the domain name against which the complaint has been filed must be identical or confusingly similar to a complainant’s trademark rights.
This doesn’t mean that using an email address in a deceptive or fraudulent manner is appropriate or even legal, it’s just that the UDRP is not the right enforcement tool in every case.
