By Steve Levy
When filing a UDRP complaint it’s critical to name the correct party as the Complainant. Most often this is the current owner listed in a trademark registration certificate (or an assignment recorded at the trademark office). However, there’s an exception to this where the Complainant is an exclusive licensee of the trademark owner.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Jurisprudential Overview 3.0”), at par. 1.4.1, discusses the consensus view among UDRP panels that “A trademark owner’s … exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.” It goes on to note that panels will often “expect parties to provide relevant evidence of authorization to file a UDRP complaint.” This doesn’t mean that an exclusive licensee needs to submit into evidence a copy of the full license agreement, which may contain confidential business information. Usually a signed declaration, from the trademark owner or from a senior executive of the licensee, setting out the essential terms of the license (e.g., the dates and goods covered, the geographic scope, etc.) will be accepted by the panel.
A decision from late last year highlights this issue. The case was filed against the domain name <sheinindia.com> by NextGen Fast Fashion Limited, India, the owner of an exclusive license to use the SHEIN trademark in India from Roadget Business Pte Ltd., the Singapore owner of the well-known clothing and lifestyle brand. The Respondent claimed that “the Complainant does not have a standing or right to file the present Compliant as the disputed domain name was registered prior to the Complainant’s use of the mark as a licensee.” The panel first cited par. 1.4.1 of the WIPO Overview 3.0 and then went on to state that “[a] trademark licensee can take action, and the key factor is the prior existence and reputation of the trademark itself, not the date of license agreement or the date of the disputed domain name registration.” Since the Respondent was not using the domain name and, in light of the fame of the SHEIN mark, any use would cause confusion and be attributed to the Complainant, the panel ordered a transfer of the domain name.
The scope of who can be a Complainant creates opportunities for brand owners to shift resource demands by requesting that their exclusive licensees take enforcement action against cybersquatted domain names. It also allows the licensee to move quickly and be aggressive in going after problematic domains without the need for direct involvement by the brand owner. Something to keep in mind when sorting out, amongst business partners, who will protect the brand.