Analysis of WIPO Domain Name Dispute Case D2018-1772

The WIPO domain name dispute case D2018-1772, involving the domain name “excelway.com,” presents an intriguing example of the complexities in domain name disputes and the enforcement of intellectual property rights. This case was adjudicated between AUSACORP, S.L, a Spanish company, and Andrew David Dawson, an individual from the United Kingdom.

Parties Involved

The complainant in this case was AUSACORP, S.L, a company based in Barcelona, Spain, specializing in designing and producing compact industrial machinery and vehicles for road maintenance. AUSACORP, which started in 1956 and sells its products in 80 countries, is part of the AUSA Group which launched the “Excelway” brand.

The respondent was Andrew David Dawson from Blackburn, United Kingdom, who registered the disputed domain name “excelway.com” on June 18, 2003. Dawson was self-represented in this dispute.

Trademark and Domain Name Details

AUSACORP owns a Spanish registered trademark for EXCELWAY, registered on September 25, 2012, under registration number 3033041. The company also owns a domain name incorporating this trademark, “excelway.eu”.

On the other hand, the disputed domain name “excelway.com” was registered by Dawson several years prior to AUSACORP’s trademark registration, a crucial detail in the case.

Complainant’s Contentions

AUSACORP argued that the disputed domain name was identical to its registered trademark EXCELWAY and that Dawson had no legitimate interest in the domain name. They claimed that Dawson tried to sell the domain name to them for an excessive amount and alleged that the domain was being used for a parking page with pay-per-click links, which they argued was evidence of bad faith usage.

Respondent’s Position

Dawson highlighted the chronology of events, noting that he registered the domain name in 2003, significantly earlier than the complainant’s trademark registration in 2012. He stated that he was not aware of the complainant at the time of registration. Dawson also responded to the complainant’s purchase inquiry, initially asking for GBP 16,250 and later reducing the price to GBP 14,750.

WIPO’s Decision

The WIPO panel, led by John Swinson, assessed the dispute based on the three elements of the UDRP policy: (i) whether the domain name is identical or confusingly similar to a trademark in which the complainant has rights, (ii) whether the respondent has rights or legitimate interests in respect of the domain name, and (iii) whether the domain name has been registered and is being used in bad faith.

The panel found that while the domain name was identical to the trademark, Dawson had registered it long before AUSACORP’s trademark registration, negating the possibility of bad faith registration. Consequently, the panel concluded that the complainant did not satisfy the third element of the UDRP policy.

Conclusion

The panel’s decision in this case emphasizes the importance of the registration date of a domain name in relation to the establishment of trademark rights. Since the domain name “excelway.com” was registered well before the complainant’s trademark rights were established, the panel ruled in favor of the respondent, Andrew David Dawson, and the complaint was denied.

For a more detailed examination of the case and the panel’s decision, you can refer to the WIPO’s case details here and the full decision here.

The WIPO domain name dispute case D2018-1772, involving the domain name “excelway.com,” presents an intriguing example of the complexities in domain name disputes and the enforcement of intellectual property rights. This case was adjudicated between AUSACORP, S.L, a Spanish company, and Andrew David Dawson, an individual from the United Kingdom. Parties Involved The complainant in…