In 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 confusingly similar to a trade mark for failure to prove that it was registered for its trade mark value as opposed to its generic or descriptive value.

The Complainant was Allglass Confort Systems, S.L., a company based in Malaga, Spain, that manufactured and sold glass enclosures.  The Complainant was the owner of the trade mark TODOCRISTAL ALLGLASS in several jurisdictions, including Spain, the United States of America and Mexico, and was also the owner of community and international trade mark registrations covering several jurisdictions, including China, India, Japan, the Republic of Korea, Singapore, Russia and Morocco.  The Complainant’s trade mark registrations in TODOCRISTAL ALLGLASS dated from at least 1 October 2009. The Complainant was also the registrant of the domain name <allglasstodocristal.com> which resolved to a website where it offered its products and services.

The Respondent was Semi, Arirang C&T, based in the Republic of Korea.

The disputed domain name was <todocristal.com> (the Domain Name), which is Spanish for “all glass”.  It was registered on 19 October 2014 and was resolving to a parking page containing pay-per-click links and also offering the Domain Name for sale.

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

  1. 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
  2. the respondent has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith

The first requirement under the UDRP is two-fold, and requires the panel to assess, first, whether a complainant has relevant trade mark rights, regardless of when or where the trade mark was registered (although these factors may be relevant for the purpose of the third limb under the UDRP, mainly bad faith registration) and, secondly, whether the disputed domain name is identical or confusingly similar to the complainant’s trade mark.

In the present case, the Panel was satisfied that the Complainant owned relevant trade mark rights which predated the registration of the Domain Name.

The Panel further found that the Domain Name was confusingly similar to the Complainant’s trade mark. The Complainant’s trade mark consisted of a Spanish component (TODOCRISTAL) and an English component (ALLGLASS).  Whilst the Domain Name only reproduced the Spanish component of the Complainant’s trade mark, the Panel found that this was sufficient for a finding of confusing similarity.

The Panel therefore found that the Domain Name was confusingly similar to a trade mark in which the Complainant had rights, and thus found that the Complainant had satisfied the first requirement under the UDRP.

Moving on to the second requirement under the UDRP, a complainant is required to demonstrate prima facie that the respondent does not have any rights or legitimate interests in the disputed domain name.  The Complainant argued that the Respondent did not have any rights or legitimate interests in the Domain Name as the Respondent was not licensed or otherwise authorised by the Complainant to use its trade mark and neither did the Respondent own any trade marks in the term “TODOCRISTAL”.  The Complainant also argued that there was no evidence suggesting that the Respondent was involved in the glass industry and the fact that the Domain Name was put up for sale on the website associated with the Domain Name was a strong indication of the Respondent’s lack of rights or legitimate interests.

The Respondent did not submit a response. However, a respondent’s default does not automatically result in a decision in favour of the complainant (although a panel may draw appropriate inferences therefrom).

The Panel noted that “todo cristal” translated into “all glass” in English and was therefore arguably descriptive of the Complainant’s business. The Panel conceded that domain name registrants may have rights or legitimate interests in domain names consisting of common or descriptive terms where the domain name was chosen for its generic meaning.  The Panel thus found that it was conceivable that the Respondent could have a legitimate interest in the Domain Name.  However, the Panel did not reach a conclusion in this regard in light of its findings under the third requirement of the UDRP.

Turning to the third requirement under the UDRP, a complainant must demonstrate the conjunctive requirement that the respondent both registered and used the disputed domain name in bad faith.  In the present case, however, the Panel found that the Complainant had failed to prove bad faith registration. The Panel considered the overall circumstances of the case and, on balance, did not find sufficient evidence to demonstrate that the Respondent registered the Domain Name with the purpose of exploiting the Complainant’s rights.  The Panel noted that the Complainant’s mere reference to paragraph 4(b)(iv) of the UDRP was insufficient to establish bad faith.

The Panel also found that the evidence submitted was insufficient to demonstrate that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, in accordance with paragraph 4(b)(i) of the UDRP.  Rather, the Panel found that it was more likely that the Respondent intended to sell the Domain Name for its descriptive value as opposed to any trade mark value derived from the Complainant’s trade mark.  The Panel held that “neither mere registration, nor general offers to sell, a domain name which consists of generic, common, or descriptive terms can be considered acts of bad faith in the absence of evidence that the Respondent was targeting the Complainant”.

The Panel therefore found that the Complainant had failed to satisfy the third requirement under the UDRP.

Given that the Complainant must prove all of the three requirements set out in paragraph 4(a) of the UDRP, the Panel denied the Complainant’s request to order the transfer of the Domain Name.

Comment

The decision highlights how in the case of domain names consisting of dictionary terms a complainant has a higher burden to prove that the respondent lacks rights or legitimate interests and/or registered and used the domain name in bad faith, even if the domain name is confusingly similar to its trade mark.  In such cases, it is crucial that a complainant demonstrates the respondent’s awareness of the complainant’s rights and that the domain name was chosen (and used) for its trade mark value as opposed to its generic or descriptive value.

Mere allegations of lack of rights or legitimate interests and/or bad faith registration and use are therefore insufficient in order to be successful under the UDRP.  Complainants should therefore ensure that they provide sufficient evidence to support their claims in order to increase their chances of successfully recovering the domain name in question, particularly if it consists of dictionary or generic terms.

The decision is available here.

First published on Anchovy News: Anchovy® is our a 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.