UDRP SuezDigital.com - Respondent Offered to Transfer Domains - Denied (1.Viewing)

The Complainant and its counsel were aware in October 2024 of Respondent’s willingness to transfer the Domain Names to the Complainant for USD 50.20 as reimbursement for the costs related to the Domain Names, and were aware that this willingness was inconsistent with the Domain Names having been registered primarily for the purpose set out in paragraph 4(b)(i) of the Policy. Despite that knowledge, the Complainant and its counsel chose to make the above submission.

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Case Comment by ICA General Counsel, Zak Muscovitch: This case highlights how the UDRP is not intended to be a trademark court. Its mandate is strictly limited to resolving cases where a domain name was registered in bad faith, i.e. targeting of a trademark owner’s mark and goodwill. Cases which involve a determination of who has “better” rights or whether trademark rights were infringed without bad faith registration of a domain name, are generally left to the courts.

This case is also noteworthy for the Panel’s expressly affirmative finding of the Respondent’s rights and legitimate interest in the disputed Domain Name. Panels all too often skip over a Respondent’s rights and legitimate interest, even where a factual and legal case is made out for them and despite the fact that Paragraph 4(c) of the Policy expressly entitles a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven (see UDRPPerspectives.org at 2.1).

Lastly, this is a rather strange case in that apparently, the Respondent was originally willing to transfer the Domain Names for only fifty bucks yet the case somehow proceeded, and as a result RDNH was found.

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The Complainant further alleges that the Respondent’s bad faith is further confirmed by his operation of a separate, non-infringing website at <cymb .ca> promoting the exact same digital marketing services. The Respondent operates a legitimate Ontario sole proprietorship under the registered business name SUEZ DIGITAL, providing digital marketing and website services, with a particular focus on dental clinics in Ontario, Canada. The Respondent contends that he chose the name “Suez Digital” for metaphorical and personal reasons unrelated to the Complainant. The Respondent visited Egypt in high school and was fascinated by the efficiency of the Suez Canal, adopted the “Suez” metaphor to represent helping clients streamline and “bypass” the long, complicated journey of digital marketing. The Respondent further declares that at the time of adopting SUEZ DIGITAL and registering the Domain Names (May/July 2022), the Respondent had never heard of SUEZ International and did not know of Complainant’s business, logo, customers or operations.

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MapleDots said:

I am in Guelph for business fairly often and the interesting thing is they run on the .com yet use a .digital domain for email.

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