UDRP complaint for advocracy.com denied at WIPO – Complainant had no TM

The Complainant was Advocracy, SL based in Madrid, Spain and the Respondent was Gustavo Federico Block also based in Madrid, Spain so Spanish was the language of these proceedings.

The Respondent registered the disputed domain name advocracy.com on April 19, 2010.

The Complainant owns the domain name advocracy.net since September 22, 2011 and the domain name name advocracy.es since May 2, 2010. The term “advocracy” is not trademarked and it is not the name of a service.

The Respondent was a founding partner of the Complainant and was appointed joint administrator at the time of incorporation of the Company on 24 April 2009. On October 14, 2011 Respondent left the company. Complainant then requested Respondent to transfer the disputed domain name. After that failed, Complainant filed for a UDRP complaint. So this was really a dispute of former partners about a company asset such as a domain name. This is not what UDRP was designed for and the Complaint was destined to fail, as it did. The UDRP should not be used for stolen domain names either.

Of course without a trademark and taking in account that this was a company dispute the UDRP complaint failed at the first element of the UDRP. (Identical or Confusingly Similar)

The Panel said that Complainant presented no evidence to the Panel that the mark “advocracy” (not yet trademarked product or service), has acquired a “secondary meaning” or that it uniquely associated with the Complainant in the eyes of the public.

So the complaint failed at the first element of the UDRP. The Panel didn’t analyze the other two elements. So the Panel dismissed the Complaint.

Finally the Panel noted that the facts alleged in the Complaint, are beyond the scope of the Policy. In this sense, nothing would prevent the Complainant submitting the dispute to a court of competent jurisdiction and to obtain independent resolution. The UDRP Policy was implemented for conflicts between domain names and trademarks or services on which a complainant has rights, being oblivious to the conflicts that may arise from other legal matters. The Center can not rule on the basis of company names, trade names, shop signs and other domain names.

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About Konstantinos Zournas

Konstantinos studied Computer Engineering and Computer Science in London and lives in Athens, Greece. He works on domain names, websites and software development. Has been online since 1995 & domaining since 2002.

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