A UDRP panel in a ruling issued today, denied the claim of Publicare Marketing Communications GmbH of Germany on the domain name publicare.com.
The one member panel found although the company did hold a valid trademark on the term, the trademark was filed for four years after the domain holder registered the domain and although the domain was parked and offered for sale, the domain was also a word found in the latin dictionary, therefore generic and the domain holder had legitimate rights to the domain.
Here are the relevant facts and findings:
The Complainant is a German company offering services of development and implementation of dialog-base email communications, online advertising and e-business applications and operating under the company name “Publicare Marketing Communications”.
“The Complainant owns a German word trademark PUBLICARE 30560520 which was registered on November 16, 2005 and which covers various services in classes 35, 38 and 42 (the “Trademark”).
The Complainant has registered different domain names reflecting the Trademark that it uses in connection with its services which include the following domain names: <publicare.de>, <publicare.info> and <publicare.us>.
The Disputed Domain Name was registered on April 4, 1999.
The domain It is used in connection with a parking service, which provides links pointing to various third party companies whereby the site also indicates that the Disputed Domain Name is for sale.
The Complainant sent a cease and desist letter to the Respondent on June 27, 2012 asking the Respondent to justify its legitimate interests in the Disputed Domain Name.
The Complainant also offered to acquire the Disputed Domain Name via third parties which did not succeed, given that the Respondent offered the Disputed Domain Name for a price of EUR 25, 000.
“Even if the Respondent has produced documents dating back to 2000 establishing its project to use the Disputed Domain Name in connection with a certain business activity, it remains that the Disputed Domain Name has not been actively used since then and is as of today still not actively used.
In this case, the Panel notes that the Disputed Domain Name was registered more than six years before the registration of the Trademark by the Complainant.
The Panel further notes that the Disputed Domain Name corresponds to a generic latin name.
The Panel finds that the evidence before it is not sufficient to enable the Panel to conclude that the Trademark is so well-known that it should supposedly have been known by the Respondent.
Being a dictionary word, and not inherently distinctive, there is an onus on the Complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use, which has not been estalbished here.
See by analogy Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent), WIPO Case No. D2007-0515 (in which the three member panel refused to find bad faith in the case of the registration of a domain name consisting of a Latin word, i.e. <orbis.com>, based on the lack of evidence showing that the respondent had knowledge of a complainant and its trademark rights prior to or at the time of registration/acquisition of the disputed domain name).
From this perspective, the Panel notes that the Complainant has not established that the Respondent would have been aware (or should have been aware) of the Complainant or of the Trademark at the time when the Disputed Domain Name was registered (or when it was renewed). On this basis, the Panel cannot admit that the Disputed Domain Name was registered in bad faith by the Respondent.
The Complainant further claims that the Respondent is in bad faith because it has registered various domain names including the Disputed Domain Name given that they correspond to third party trademarks and offers them for sale at a price which is highly in excess of the out-of-pocket expenses. The Panel however notes that paragraph 4(a)(i) of the Policy provides as an example of bad faith that “the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name”. This provision consequently also requires the showing that the Respondent has knowledge of the Complainant and of the Trademark, given that this provision applies in case of acquisition primarily for a sale (or another transaction) to the Complainant or to a competitor of the Complainant. As a result, the mere fact that the Respondent offers the Disputed Domain Name for sale (and other domain names that it holds) does not demonstrate a showing of bad faith of the Respondent.
The Panel reminds in this respect that the overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another.
In the Panel’s consideration, there have not been sufficient elements established to demonstrate that the Respondent was seeking to profit from and to exploit the Trademark of the Complainant as a result of the registration and of the use of the Disputed Domain Name which corresponds to a generic Latin word.