Intellectual Property – ICANN Uniform Dispute Resolution Policy (“UDRP”) – intention to use a domain name without taking action does not demonstrate rights or legitimate interests – attracting visits to the website for commercial gain by creating likelihood of confusion with a third party’s mark constitutes registration and use of a domain name in bad faith
Complainant, (hereinafter “C”), owner of registered trademark of “SNOW” (“Trademark”) in China for its beverage products since 1997, filed a Complaint against the Respondent (hereinafter “R”) regarding its domain name <snowbeer.com> (“Disputed Domain Name”) registered in 2003.
C sought the transfer of the Disputed Domain Name, based on the three elements under Para. 4(a) of UDRP, by alleging:
- the Disputed Domain Name was identical or confusingly similar to C’s Trademark;
- R had no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name had been registered and was being used in bad faith.
R rebutted C’s Complaint and submitted:
- C had no trademark right since C had no trademark registration where R was domiciled. R argued that C would not enjoy “a monopoly in all contexts” even if the trademark registration existed.
- R had a business operation in reselling domain name with generic, descriptive and “brandable” terms. R intended to use the Disputed Domain Name to sell beer, soda and tea.
- The preparation to use the Disputed Domain Name to sell beverage items created rights and legitimate interests although R had not yet been able to devote the time and resources to doing so.
Held, granting the relief sought, that:
- The Panel found that C’s Trademark had been registered in the PRC and elsewhere. There was no requirement under UDRP for C to hold a trademark registration in R’s domicile. The Disputed Domain Name was held to be confusingly similar to C’s Trademark.
- The Panel found that C had made a prima facie case that R had no rights or legitimate interests in the Dispute Domain Name, and R had the onus to prove otherwise. R had not made any submission to provide evidence that R had made preparation to use the Disputed Domain Name since the registration 13 years ago. The Panel also noticed that the Disputed Domain Name was offered for sale.
- The Panel found that the Disputed Domain Name was used to intentionally attract visits for commercial gain by creating a likelihood of confusion with C’s Trademark as to the source, sponsorship, affiliation, or endorsement of website. Registration and use of the Disputed Domain Name were regarded as a source of making commercial gain with bad faith.
The Panel was of the view that all the three elements under Para. 4(a) were established, and ordered that the Disputed Domain Name be transferred to C.
The case had been appealed to the court.
(The full decision can be downloaded at the ADNDRC website, at http://www. adndrc.org/diymodule/docUDRP/HK- 1600857_Decision.pdf.)