The recently made decision concerning kong.ai domain name transfer has created buzz among domain experts following the order of the panel that the domain should be transferred to Kong Inc., which is well-known as a provider of API and connectivity solutions.
According to the decision, which was provided by the National Arbitration Forum, Kong Inc. was able to provide evidence for all the three UDRP elements. Nevertheless, many are wondering whether the case was actually a cybersquatting one or rather a trademark dispute that could be handled in court.
Kong.ai UDRP Case Facts
In its decision, the NAF mentions that Kong Inc. filed a UDRP complaint regarding the domain named kong.ai, which was registered in the name of Sumit Patel / Kong AI. In turn, Kong Inc. requested that the domain should be transferred to it.
In this respect, the decision notes that Kong Inc. has registered trademark rights and that the disputed domain was being used in connection with the competing business. According to the decision, Kong Inc. holds many trademark rights, including those of U.S. Trademark Registration No. 5094093.
It is important to add that the respondent did not submit any kind of response, meaning that the panel made its decision based on the submissions by the complainant.
Reasons Why the Decision Was Questioned
Many argue that the facts mentioned in the decision raise questions on whether the case was really a cybersquatting one.
Namely, in its opinion, Andrew Allemann of Domain Name Wire stated that Kong Inc. probably had a valid claim of trademark infringement but asked whether it was really a valid UDRP cybersquatting claim because there were archived pages suggesting that the domain owner conducted a legitimate business.
In addition, a point of criticism was made concerning the statement by the panel that nothing in the WHOIS record suggested that the respondent had a common business name that could be identified with the disputed domain. On the contrary, in the published decision, the respondent was identified as “sumit patel / Kong AI,” which complicates things.
Role Played By the Missing Response
It is quite likely that the fact that there was no response from the defendant affected the case significantly.
Indeed, according to the UDRP procedure, the complainant must prove three things in order to win the case. Namely, it has to be proved that the domain is either identical to a trademark or confusingly similar to it, that the domain is not being used in legitimate purposes by the respondent, and that it has been registered in bad faith. In this particular case, the panel confirmed that all three conditions were met and that, therefore, the domain should be transferred.
Since the domain owner did not respond to the complaint submitted by Kong Inc., the latter had no opponent and could provide all the claims without having anything denied by the respondent.
Is This a Trademark Dispute or a UDRP Case?
Here, we see an important factor that needs consideration, namely whether or not the dispute concerns a bad faith registration of the domain.
As already stated, UDRP is used for the resolution of cases regarding abusive domain name registrations. Therefore, it may not be the best choice for solving trademark disputes in cases where the respondent has a real business behind the domain.
Why This Is Important For .AI Domains and Companies Working With Them
The fact is that, due to increased interest in AI domains, more domain disputes can be seen in the near future.
Therefore, startups and domain investors should remember to do the following:
- Submit responses to each and every UDRP claim.
- Maintain proper documents confirming legitimate use of the domain.
- Avoid using names, which are associated with trademarks.
- Remember that using trademarked word in a domain name can create legal problems.
Final Words
Thus, even though the company was able to obtain the domain name in question, this case has once again shown the power of the UDRP procedure when it comes to the participation of respondents. In addition, it also reveals one problem – the issue of separating trademark infringement and cybersquatting is likely to appear more often as AI domains become more popular.
