Zeca’s failed UDRP complaint (D2017-0158) provides a reminder to rights holders that a longstanding history of trading and trade mark registrations alone don’t make for a guaranteed win at WIPO.
Zeca, an Italian spare parts manufacturer and motor mechanic business, brought a UDRP complaint to recover the domain zeca.com (registered in 2003), which linked to a parked webpage displaying pay-per-click links through to music websites. Zeca relied upon 60 years of use of the trade mark ZECA, trade mark registrations for ZECA dating as far back as 1955, and a domain portfolio including zeca.it and zeca.us.
To win this UDRP complaint, Zeca needed to show that:
- com was identical or confusingly similar to a trademark or service mark in which Zeca had rights; and
- the current owner had no rights or legitimate interests in respect of zeca.com; and
- com had been registered and was being used in bad faith.
Grounds 1 and 2 were made out based on Zeca’s trading history/rights together with the current domain owner’s passive use and lack of any appreciable claim to ZECA.
However, the Panel rejected a finding of bad faith (Ground 3) by the current owner on the basis that Zeca had failed to provide substantive evidence showing the scale of its commercial activities over the past 60 years or, alternatively, since zeca.com’s registration. The burden of proof in a UDRP complaint is on the Complainant, and a Panel will not simply find bad faith by virtue of satisfying Grounds 1 and 2. Something more is needed. Here, there was nothing to show that the current owner was aware of Zeca / the ZECA brand when it registered zeca.com. Nor was the current owner’s use (a parked webpage linking to music sites) enough to allow an inference of bad faith, as may arguably have been the case if the site had linked through to tool websites, vehicle repair pages, or hosted a rival online tool store.
Cases such as this show the need to take a circumspect approach to filing a UDRP complaint where there is no positive evidence of bad faith (e.g. the usual opportunistic approach from a domain owner or a domain listed via a domain broker for unreasonable sums). The problem Zeca faced is not unique to them but is more likely to be faced by B-2-B brands from a bricks and mortar background making the transition from bricks to clicks.
What is clear from this case is that frontloading the best evidence possible is key to success because there are no further formal evidence rounds or appeal routes. Put simply, a brand owner must know their song before they sing it.