Different Domain Dispute Decisions: it’s actually a trade mark dispute

Written by Samuel O’Toole | April 27, 2021

IP Disputes

Domain name disputes and trade marks go hand in hand. Generally trade mark rights are required in a mark identical or similar to the disputed domain in order to get over the first hurdle; the administrative panels will not award any domain transfers or cancellations unless the party making the complaint actually has trade mark rights in the domain. In the event the complainant party doesn’t have any trade mark rights then they should simply not have brought the complaint in the first place. They should also be ready to receive a decision of reverse domain name hijacking – a declaration that the domain complaint was brought in bad faith or to harass the domain owner (not a good look FYI).

If the administrative panels deciding domain disputes can determine whether a trade mark is similar to a domain, can they also deal with trade mark infringement issues? In short no, as was found out in WIPO Case No. DCO2020-001 Reshape Wealth, LLC v. Vinay Menda.

Reshape Wealth, LLC is a financial management, advisory and investment company who has been using the RESHAPE brand since 2017 and has a US Federal trade mark for the same mark. Vinay Menda is the Managing Partner of a venture capital firm by the name of Reshape Holdings LLC incorporated in 2018 who registered the domain name <reshape.co> in 2019.

In the domain name proceedings, it was not disputed that Vinay Menda/Reshape Holdings LLC had started use of the RESHAPE mark for its venture capital services at least a year after Reshape Wealth, LLC had begun using the same mark for its financial planning and wealth management services. This use began at least six months after Reshape Wealth, LLC obtained its US trade mark registration for RESHAPE mark in connection with venture capital services.

Vinay Menda submitted the RESHAPE mark was weak in terms of trade mark rights – a result of it being an alleged descriptive term in the industry, and that financial services are distinct from those offered by Reshape Wealth, LLC and are targeted to distinct classes of consumers.

Two notable points arise out of this case:

First, Reshape Wealth, LLC had made various allegations that its RESHAPE mark was “well-known” and it has made “substantial use” of it but not quite got the evidence on point to back those claims up.

The panel noted that “To be sure, conclusory allegations of fame or widespread use that are unsubstantiated with specific evidence are entitled to little or no weight.” It appears that if you do in fact have a “well-known” mark which has been used substantially then please provide the panel with evidence of it (if it’s so well-known and used this should be the easy part!).

Second, the panel went onto note that from the proceedings it was clear this was a trade mark dispute. When discussing a pre-action letter sent by Reshape Wealth, LLC it was clear that the “letter in itself suggests that Complainant viewed the dispute as a matter of trademark infringement and unfair competition and not as a case of cybersquatting in bad faith. Indeed, the ultimate demand in Complainant’s December 2, 2019 letter is stated as follows: ‘Reshape Wealth demands that you immediately CEASE AND DESIST in any further use of the word ‘RESHAPE’ in association with the marketing, sale, distribution or identification of your financial and investment services.’”

The panel explained its roll in such proceedings “which is limited to considering whether a disputed domain name has been registered and used in bad faith pursuant to a non-exhaustive list of circumstances set forth in Paragraph 4(b) of the [UDRP] Policy”.

The panel then concluded and found that Reshape Wealth, LLC had not established that Vinay Menda had registered or used the disputed domain name in bad faith to take advantage of Reshape Wealth, LLC’s rights in its claimed RESHAPE mark and it failed.

The complaint failed as Reshape Wealth, LLC had not provided sufficient evidence to back up is “substantial” claims and that this was in essence a trade mark infringement dispute, dressed behind a domain name dispute proceeding. If you have a domain dispute, the correct place for said dispute is most likely a domain name proceeding. On the other hand, if you have a trade mark infringement issue on your hands your better forum is likely to be the courts. The UDRP panel is rather good at what it does but its only got limited scope to determine domain disputes in line with the UDRP policy.

Written by Sam O’Toole, Solicitor

Related articles

Back to blog

Book a free consultation with one of our specialist solicitors.

We’ll start with a no obligation chat where we’ll get to know you and understand your current challenges.

Book your free consultation now

Looking for more information?

Explore our services Key industry sectors Briffa content hub