Law firm loses cybersquatting claim — Intellectual property

A firm that specializes in IP loses an IP case.

An Australian law firm specializing in intellectual property has, somewhat ironically, failed to win a cybersquatting dispute against a domain name that incorporates its brand.

IP Guardian Pty Ltd, which operates from IPGuardian.com.au and holds an Australian trademark for IP GUARDIAN dating to 2014, filed the complaint against IPGuardian.com. The sizable domain investment firm Mira Holdings owns the domain.

Mira purchased the domain name at a NameJet auction in March 2021 for $450. The domain is parked with a for-sale notice and had a price of $25,000.

The three-member WIPO panel found the domain name is confusingly similar to the law firm’s mark but ruled that IP Guardian failed to prove the key element of bad faith registration. The panel accepted Mira’s explanation that “IP” and “guardian” are common terms that form a descriptive phrase and that the firm purchased the domain for its inherent value, not to target the firm.

Panelists Jane Seager, Andrew D. S. Lothian, and Matthew Kennedy wrote that there was no evidence Mira knew of the Australian firm or sought to sell the name specifically to it. They also noted the firm provided no proof of reputation beyond its trademark registration.

The Complainant argued that the case was similar to one that SRL BOWTEX won against Mira Holdings; still, the panel determined that the circumstances in that case were different.

While finding for Mira Holdings, the panel denied a request for a reverse domain name hijacking finding.

Both parties were internally represented in the dispute.