The World Intellectual Property Organization (WIPO) Arbitration Tribunal has issued a ruling on a complaint lodged by IP Guardian Pty Ltd., an Australian law firm specializing in copyright and intellectual property. One might assume that such a company would be well-versed in the nuances of domain name disputes, which fall squarely within its area of practice.
IP Guardian Pty Ltd operates its website under the domain name IPGuardian.com.au and has held the IP GUARDIAN trademark in Australia since 2014. At first glance, its complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), filed against the owner of the IPGuardian.com domain, appeared to be solid. However, the case turned out to be far more complex.
The domain is owned by Mira Holdings, a large company investing in domain names. It acquired IPGuardian.com at a NameJet auction in March 2021 for $450, and the domain is now listed for resale at $25,000. According to Domain Name Wire, the WIPO panelists Jane Seeger, Matthew Kennedy, and Andrew D.S. Lothian concluded that the domain name is indeed confusingly similar to that of the Australian firm and that Mira Holdings acquired it after IP Guardian Pty Ltd had registered its trademark. Nevertheless, the panel found no evidence of the crucial element: that the domain had been registered or acquired in bad faith, or with the intention of causing detriment to the complainant.
Mira Holdings’ legal team proved that both IP (Intellectual Property) and the word Guardian are widely used terms, and that together they form a common phrase. Moreover, no evidence was presented to suggest that Mira Holdings, a US-based entity, had prior knowledge of IP Guardian Pty Ltd’s existence or had targeted the Australian firm with a view to selling the domain to it. As a result, the Australian lawyers likely suffered some damage to their own reputation: the WIPO panelists dismissed the complaint.
