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WIPO – UDRP: Proof of bad faith registration crucial

.CARIn a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel denied the transfer of a domain name mainly based on the lack of evidence about the Respondent’s bad faith upon registration of the domain name in dispute.

The Complainant was Zeca S.p.A of Feletto Canavese, Italy, a manufacturer of accessories and spare parts for motor vehicles and vehicle mechanics.  Founded approximately 60 years ago, the Complainant owned many registered trade marks for ZECA, including an international trade mark registered on 5 February 1991, designating a number of territories in Europe and in Asia.  The Complainant was also the registrant of numerous domain names incorporating its trade marks, such as <zeca.it>.

The Respondent was Domain Vault LLC, a company based in the United States.

The Domain Name was <zeca.com>, registered on 25 October 2003.  It was used to resolve to a parking webpage comprising links to a number of third party websites primarily related to music and music promotion.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:

(a) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b) The respondent has no rights or legitimate interests in respect of the domain name; and

(c) The domain name has been registered and is being used in bad faith.

As far as the first limb was concerned, the Complainant contended that the Domain Name was confusingly similar to its trade mark as the Domain Name simply comprised of the term ZECA in its entirety.  This contention was accepted by the Panel, who also noted that it appeared that the Complainant had used the trade mark for around 60 years and, as a result, had acquired goodwill and reputation in respect of this trade mark.  The first limb was therefore satisfied.

With regard to the second limb, the Complainant also successfully made out a prima facie case by asserting that the Domain Name was not used in connection with a bona fide offering of goods or services as it appeared to resolve to a parking page with pay-per-click links, and the Respondent was not commonly known by the Domain Name in the absence of any historical use of such Domain Name.

It should be noted that the Respondent chose not to respond to the Complainant or to take any steps to counter the prima facie case established above.  Since the evidentiary burden had now shifted to the Respondent, the Panel had no choice but to conclude that the Respondent had no rights or legitimate interests in respect of the Domain Name.

So far, all the factors described above, such as the acquisition of trade mark rights in the term ZECA long before the registration of the Domain Name and the use of the Domain Name to point to a parking page containing pay-per-click links, seemed to suggest a finding of bad faith on the Respondent’s part, thus leading to the transfer of the Domain Name.  However, instead of jumping to this conclusion, the Panel took a different view when assessing the evidence provided by the Complainant under the third limb regarding bad faith registration and use of the Domain Name.

The Panel was not convinced by the Complainant’s evidence on the point that the Respondent should have known the Complainant and its trade marks at the time of registration of the disputed domain name.  Specifically, the Panel pointed out that, although the Complainant had apparently been in business for over 60 years, there was no substantive evidence of the extent of its commercial activities or of its marketing or turnover, in particular in the period prior to the date of registration of the Domain Name in 2003, over 13 years ago.  Furthermore, save for the statement in the Complaint that “The notoriety and diffusion of Complainant’s trademarks, also in the USA, are proved by the documents hereby attached“, no material evidence was actually found by the Panel to support the Complainant’s reputation or goodwill in the United States, where the Respondent was based.  It is worth noting that the mere provision of some invoices addressed to customers in the US between 2007 and 2016 and certain photographs relating to participation by the Complainant in exhibitions organized in the US between 2013 and 2016 was not deemed sufficient to establish the Complainant’s purported reputation and goodwill, especially prior to 2003 when the Domain Name was registered.

In view of the above, the Panel concluded that the Complainant had not established, on the balance of probabilities, that the Respondent would have been aware of the Complainant or its trade mark rights at the date of registration of the Domain Name.  In addition, there was nothing in the Complaint to support an argument that as a result of the subsequent use of the Domain Name it could be inferred that the Respondent had registered the Domain Name in bad faith.  In this regard the Panel noted that the links on the corresponding website related to music and music promotion.  The Respondent was therefore not considered to have registered the Domain Name in bad faith, and the Panel did not need to go on to consider bad faith use in any detail.

An important lesson to be drawn from this case is that the registration of trade marks long before the registration of a disputed domain name may not be enough, on their own, to convince a panel of the domain name owner’s knowledge of the corresponding trade mark rights at the time that the domain name was registered.  This is especially the case when trade mark holders are not considered to have notoriety worldwide or do not hold trade marks in the countries where domain name registrants are based.  When a trade mark owner is not that well known, it is crucial to provide solid evidence demonstrating goodwill and reputation at the time of the registration of the domain name at issue, and not simply rely on general assertions of notoriety in the complaint.

The decision is available here.

First published on Anchovy News: Anchovy® is our comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house. For more information please contact us at  anchovynews@hoganlovells.com