Victory for Latimer Levay Fyock's Client Pandadoc, Inc.
On May 23, 2022, a World Intellectual Property Organization (“WIPO”) Panel issued a Uniform Domain Name Dispute Resolution Policy (“UDRP”) decision in favor of PandaDoc, Inc. (“PandaDoc”), for the Dutch domain name <pandadoc.nl>.
Founded in 2013, PandaDoc, Inc. is a provider of all-in-one document automation software which streamlines the process of creating, approving, and eSigning business documents. PandaDoc’s software assists businesses in creating proposals, quotes, and contracts. PandaDoc has over 30,000 customers in 130 countries that use the company’s powerful document creation and workflow software. Since its founding, PandaDoc has become extremely successful and was recently valued at over one billion dollars and its international presence has been growing rapidly.
PandaDoc discovered someone had registered the <pandadoc.nl> without its authorization and was demanding an exorbitant amount of money to transfer the domain name to PandaDoc. PandaDoc refused to engage with this cybersquatter and instead hired Latimer LeVay to recover the domain name by filing a complaint pursuant to the Dispute Resolution Regulations for .nl Domain Names with the World Intellectual Property Organization.
In ruling on behalf of PandaDoc, the WIPO Panelist wrote:
Based on the evidence submitted by the Complainant, it reached out to the Respondent upon discovery of the Disputed Domain Name, offering to reimburse the Respondent for its out-of-pocket costs related to the Disputed Domain Name. In response, the Respondent demanded a sum of USD XXXXX for the transfer of the Disputed Domain Name to the Complainant. This suggests that the Respondent acquired the Disputed Domain Name primarily for the purpose of selling it to the Complainant or to the Complainant’s competitors for valuable consideration in excess of the cost of registration.
While the registration of the Disputed Domain Name predates the Complainant’s trademark rights protected under Dutch law, the Panel finds that it was undertaken in bad faith. The Panel finds it inconceivable that the Respondent was not aware of the Complainant when registering the Disputed Domain Name, as it matches the Complainant’s prior United States trademark rights as well as the Complainant’s prior domain name. (In fact, given the Complainant’s presence in the Netherlands (and the use of a Dutch language website), it is likely that the Respondent anticipated on the Complainant’s interest in a domain name using a “.nl” ccTLD.) This notion is reinforced by the fact that the Respondent itself, allegedly located in Germany, has no evident connection with the Netherlands. Furthermore, the Respondent’s use of the Disputed Domain Name in any event cannot amount to anything but use in bad faith.
The full decision in PandaDoc, Inc. v. PERSON Case No. DNL2022-0011 can be found here.
PandaDoc was represented in the proceeding by Latimer LeVay Fyock attorneys Colin T.J. O’Brien and John L. Ambrogi.
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