A Belgian services provider of cloud services has lost the UDRP it filed against the registrant and operator of the domain LawCloud.eu that appears to resolve as a broken page.
The domain was registered one year before the Complainant’s formation; the Complainant operates from the ultra premium gTLD domain Law.cloud. They have also registered the mark LAWCLOUD internationally and it other locales in Europe.
The Respondent provides secure cloud computing services to some 230 clients of his law firm.
The panel ordered the domain to remain with the Respondent, on the following basis:
“For reasons set out under the preceding element, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered or has used the disputed domain name in bad faith. Critically, the Complainant was incorporated on September 5, 2017, whereas the disputed domain name was registered nearly one year earlier on September 18, 2016. There is nothing on record to suggest that the Respondent could have had knowledge of the Complainant at the time that the Respondent registered the disputed domain name, nor has the Complainant put forward any evidence to suggest that the Respondent has sought to target the Complainant through use of the disputed domain name.”
The domain transfer was denied.
Copyright © 2024 DomainGang.com · All Rights Reserved.ARBITRATION AND MEDIATION CENTER – PANEL DECISION
Lawcloud B.V. v. Miroslav Ivanovič
Case No. DEU2022-0043
The Parties
The Complainant is Lawcloud B.V. of Belgium, represented by Advocatenkantoor Desdalex LLC, Belgium. The Respondent is Miroslav Ivanovič of Slovakia, self-represented.
The Domain Name, Registry and Registrar
The Registry of the disputed domain name lawcloud.eu is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is WebSupport s.r.o.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2022. On December 21, 2022, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On December 23, 2023, the Registry transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on December 23, 2023, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 3, 2023.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2023. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was January 25, 2023. The Response was filed with the Center on January 25, 2023. The Center sent response deficiency notification to the Respondent on January 26, 2023, inviting the Respondent to submit an amendment to the Response. The Respondent filed an amended Response on February 2, 2023.
The Center verified that the Response together with the amended Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules.
The Center appointed Jane Seager as the sole panelist in this matter on February 7, 2023. The Panel finds
that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the ADR Rules, Paragraph B(5).
Factual Background
The Complainant is a limited liability company incorporated under Belgian law on September 5, 2017. The Complainant offers computer consulting services, including an Internet application named “Lawcloud”, marketed to lawyers and law firms as a cloud-based platform for digital file storage.
The Complainant is the registered owner of the following trademarks:
International Trademark Registration No. 1671727, LAWCOULD (figurative), registered on April 14, 2022, designating Slovakia and the United Kingdom; and
Benelux Trademark Registration No. 1461322, LAWCLOUD (figurative), registered on May 31, 2022. The Complainant is also the registrant of the domain names lawcloud.app, lawcloud.be, law.cloud, lawcloud.fr, lawcloud.lu, and lawcloud.nl, which redirect to the Complainant’s public-facing website at “www.law.cloud”.
The Respondent is a lawyer providing legal services under a registered trade name in Slovakia, established on January 1, 2011. The Respondent is the registrant of the domain name ivanoviclegal.sk, which resolves to the Respondent’s main website, providing information in Slovak about the Respondent’s legal services. The Respondent is also the registrant of the domain name lawcloud.sk.
The disputed domain name was registered on September 18, 2016. When accessed via an Internet browser, the disputed domain name resolves to a web page with the following text:
“This version of Nextcloud is not compatible with PHP 7.1. You are currently running 8.0.27.”
On August 4, 2022, the Complainant’s lawyers sent a letter to the Respondent, putting the Respondent on notice of the Complainant’s rights, and requesting transfer of the disputed domain name. The Respondent did not reply to the Complainant’s letter.
Parties’ Contentions
Complainant
The Complainant asserts rights in the trademark LAWCLOUD, as well as its trade name, and its domain names. The Complainant submits that its trademark, trade name, and domain name, are integrally included in the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it is entitled to the trade name “Lawcloud”, which is protected in Belgium, having used it in a visible, public, and continuous manner since its incorporation. The Complainant argues that the disputed domain name has not been used since its registration, and that there is no evidence of the Respondent having made any demonstrable preparations to do so. The Complainant further asserts that the Respondent is not commonly known by the disputed domain name, and that the Respondent has no rights recognized or established by national or European Union law, nor is the Respondent making any legitimate and noncommercial or fair use of the disputed domain name.
The Complainant submits that the disputed domain name was registered in bad faith. The Complainant argues that the disputed domain name “seems to be registered a personal name for which no demonstrable link exists between the Respondent and the domain name registered”. The Complainant asserts that it is probable that the disputed domain name was registered primarily for the purpose of disrupting the professional activities of a competitor, and that the disputed domain name is the subject of cybersquatting, a result of which the Complainant is prevented from registering and using the disputed domain name in good faith for its economic activities. The Complainant argues that its “audience is now inconveniently redirected to the disputed domain name […] and this constitutes an obstacle to finding the Complainant’s domain name. The identical domain name lawcloud.eu makes it virtually impossible, or at least significantly more difficult, for the Complainant to raise its profile outside of the Benelux via a channel other than its domain names […]”.
The Complainant requests transfer of the disputed domain name.
Respondent
The Respondent asserts that his practice was established seven years before the Complainant, and that the domain names lawcloud.eu and lawcloud.sk were registered one year prior to the creation of the Complainant. The Respondent submits that he registered its domain names, including the disputed domain name, in good faith and uses them to offer his services and products for legitimate purposes. The Respondent argues that he has never offered the disputed domain name for sale, and that he has been using it since 2016 for his own needs, as well as for the needs of his law firm. The Respondent asserts that he uses the disputed domain name to offer secure cloud computing services to some 230 clients of his law firm. In this regard, the Respondent asserts that he has paid for third-party software to provide an interface for the Respondent’s client-facing cloud computing services.
The Respondent asserts that no one is preventing the Complainant from fully establishing itself through the
law.cloud domain name, already registered by the Complainant. The Respondent submits that the disputed domain name was registered on a “first-come, first-served” basis, prior to the establishment of the Complainant, and that he does not use the disputed domain name to interfere with the Complainant in any way.
The Respondent requests that the Complaint be denied.
Discussion and Findings
In order to prevail, the Complainant must demonstrate that it has satisfied the requirements of Paragraph B(11)(d)(1) of the ADR Rules:
The domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either
The domain name has been registered by the Respondent without rights or legitimate interest in the name; or
The domain name has been registered or is being used in bad faith.
Noting the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), prior panels in .EU cases have referred to the views expressed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate; see in this regard Vitalen Otomotiv A.Ş and Vitalen Technology GmbH v. Faith Ünsal, WIPO Case No. DEU2022-0001.
Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law
The Complainant is the registered owner of the trademarks referred to in the factual background section above, the textual elements of which consist of LAWCLOUD. As noted in WIPO Overview 3.0, section 1.10, to the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessment under the first element. The Panel finds that the Complainant has established rights in the trademark LAWCLOUD, for purposes of the first element of the ADR Rules.
The disputed domain name comprises the textual elements of the Complainant’s trademark under the country code Top-Level Domain “.eu”. The Panel finds the Complainant’s trademark to be immediately recognizable in the disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights as required by Paragraph B(11)(d)(1)(i) of the ADR Rules.
Rights or Legitimate Interests
The Complainant’s case is built on the premise that the Respondent has made no use of the disputed domain name, and therefore has been registered without rights or legitimate interests in the disputed domain name.
The Respondent has come forward to assert that he makes use of the disputed domain name in connection with his legal practice, or in order to provide client-facing cloud computing services. In this regard, the Respondent has produced screen captures of what is stated to be the interface for the Respondent’s services offered via the disputed domain name, as well as evidence of a software licence for file management software. Noting that the Respondent operates as a lawyer in the jurisdiction in which he is based, the Panel finds that the Respondent has come forward with a credible explanation for and evidence of his bona fide registration and use of the disputed domain name. The Panel finds that prior to any notice of the present dispute, the Respondent has used the disputed domain name in connection with a legitimate service offering, giving rise to a legitimate interest in the disputed domain name pursuant to Paragraph B(11)(e)(1) of the ADR Rules.
The Panel finds that the Complainant has failed to satisfy the requirements of Paragraph B(11)(d)(1)(ii) of the ADR Rules.
Registered or Used in Bad Faith
For reasons set out under the preceding element, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered or has used the disputed domain name in bad faith. Critically, the Complainant was incorporated on September 5, 2017, whereas the disputed domain name was registered nearly one year earlier on September 18, 2016. There is nothing on record to suggest that the Respondent could have had knowledge of the Complainant at the time that the Respondent registered the disputed domain name, nor has the Complainant put forward any evidence to suggest that the Respondent has sought to target the Complainant through use of the disputed domain name.
The Panel finds that the Complainant has failed to satisfy the requirements of Paragraph B(11)(d)(1)(iii) of the ADR Rules.
Decision
For the foregoing reasons, the Complaint is denied.
/Jane Seager/ Jane Seager Sole Panelist
Date: February 22, 2023
