Decision for dispute CAC-UDRP-105892

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

 The Complainant owns EUIPO mark LAWCODE, Reg. No. 018579098, registered since August 13, 2022.

The disputed domain name <lawcode.com> was registered on November 29, 1999. It is presently inactive.

The Complainant says:

"We are a RegTech company located in Germany. Our company name is lawcode GmbH. lawcode is registered as a word EU trade mark since 2021 with high legal protection. https://www.tmdn.org/tmview/#/tmview/detail/EM500000018579098. Our domain is available under www.lawcode.eu We offer whistleblowing and compliance tools. The domain lawcode.com is not used. respondent does not have any rights. The respondant [sic] cannot be verified. Any disputed should be governed by German law, if permissible. Due to that the domain www.lawcode.com should be trandfered [sic] to lawcode GmbH."

 The Respondent says:

"I am a US citizen and the legal owner of the Lawcode.com domain. This is my intellectual and material property. I came up with and registered the domain name Lawcode.com on November 29, 1999 in the USA and have been paying all fees regularly since then.

The last time I paid my renewal fee was October 21, 2023 through Accuwebhosting.com, an American-based company. (Please see the attached documents). During my ownership of the domain name, there were several business initiatives related to it. Unfortunately, they did not pan out as expected and the website is dormant right now. However, this domain name is still in play and I have a business plan for it.

EU trade mark applicants were required to carry out extensive checks to ensure that the Lawcode.com domain name was available. Every self-respecting registration company checks availability as the first step when registering a domain.

In any case, the Lawcode.com domain name has a rightful creator and owner who does not intend to transfer it in the foreseeable future."

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Panel makes no finding as to whether the Respondent has rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has not, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

In accordance with paragraph 4(a) of the Policy, to obtain transfer of a domain name, a complainant must prove the following three elements: (i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the domain name; and (iii) the respondent has registered the domain name and is using it in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

As to the first element, the Complainant has shown that it has rights in the LAWCODE trademark, registered since 2022, upon application made in 2021. The Panel finds the disputed domain name <lawcode.com> to be identical to the Complainant's mark, since it comprises the entirety of the mark and the inconsequential gTLD ".com" may be ignored. The Complainant has established this element.

Because the Complainant has not satisfied paragraph 4(a)(iii) of the Policy the Panel need not address paragraph 4(a)(ii).

As to the third element, section 1.1.3 of the WIPO Jurisprudential Overview 3.0 provides: "Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith."

According to Whois searches conducted by the Panel, the disputed domain name <lawcode.com> was registered on November 29, 1999, more than 20 years prior to the registrations of the Complainant's mark and its <lawcode.eu> domain name. Under these circumstances, the Panel is not persuaded that the Respondent could have had the Complainant or its non-existent trademark or domain name in mind when registering the disputed domain name. Accordingly the Panel finds that Complainant has not shown that the domain name was registered in bad faith. The Complainant has failed to establish this element.