4 Lettered .Com Lost in UDRP Based On TM On Three Letter: OOVH.com

A one member UDRP panel just ruled against the domain holder of OOVH.com based off a trademark on the term OVH which  is an acronym for “On Vous Héberge”, In English this translates as “We Host You”.

The Complainant provides webhosting services through dedicated servers, private servers, domain registrations and email services. It business is described more fully at its French language website at “www.ovh.com”.

The Complainant claims to be the biggest webhosting provider in France and the European Union, and the fourth biggest worldwide.

The Complainant states that its hosts over 18 million websites, holds 2.5 million domain names and operates 120,000 servers.

The Complaint exhibits registrations for the mark OVH in the European Union and some 15 other countries.

The Respondent is the registrant of the disputed domain name which was created on July 4, 2006.

The disputed domain name was purchased from the Registrar by the Respondent on August 8, 2008.

The reason for the purchase was that the Respondent and his partner were going to develop a health website named “Our Ovo-Vegetarian Home” directed to ovo-vegetarians, who eat eggs.

However, because of other commitments, no website was developed and, consequently, the disputed domain name was “parked” with Namedrive.

The Respondent claimed that he and his partner own “… many health-related domains, especially ones like vegan, vegetarian, weight loss, etc.”

The disputed domain name

“… once being parked, began to attract FREE GAME DOWNLOAD links, ads, impressions and we decided to leave it like that. It has been parked the same way and with no keyword and featuring almost exclusively free download ads for a long time. And if you are curious is making ZERO, as in $0.00 as far as the parking company records go. We own many domains and do not recall if it has been parked at other companies in the past. … .”

The disputed domain name has been for sale for the greater part of the time since the Respondent purchased it in August 2008.

By the email dated July 2, 2012 the Respondent stated that he and his partners and associates were prepared to sell the disputed domain name to the Complainant for US $1,199.00. The letter also asserted that the domain name is valuable,

“… because it has three superb letters (O, H and V) plus a double O at the start makes it pronounceable and highly valuable. The acronym represents endless company names, person’s names, phrases etc.”

“The Complainant has established rights in the OVH registered trademark the earliest bring August 1999. The Complainant has further established to the satisfaction of the Panel that in the context of webhosting it is and has for some time been well known under and by reference to the name and mark OVH.”

“The Complainant’s OVH mark is incorporated entirely within the disputed domain name. The difference between the two resides in the addition in the disputed dome name of a second letter “o” as a prefix before the OVH trademark. In the Panel’s opinion, this is not, as the Complainant asserts, an obvious misspelling of the OVH trademark and, consequently, does not amount to typosquatting.”

“However, although there may be a phonetic difference between the trademark and the domain name, visually the overall impression is, in the Panel’s view, very similar and the additional letter “o” prefix to the disputed domain name does not distinguish it from the OVH trademark. Consequently, the Panel’s view is that the disputed domain name is confusingly similar to the Complainant’s OVH trademark and the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.”

Rights or Legitimate Interest

“There is no evidence to substantiate the Respondent’s case – set out in the email of June 22, 2012 – that he and his partner acquired the disputed domain name in August 2008 with a view to using it for a vegetarian website as explained in paragraph 4.2.3 above.

“Furthermore, despite the Respondent’s statement in that email that he would provide particulars of his other health-related domain names to WIPO as evidence of the intention to use the disputed domain name for that purpose, none have been provided. ”

“Consequently, the Panel concludes that the respondent has failed to demonstrate the evidence required by paragraph 4(c)(i) of the Policy.

“Despite the fact that the website to which the disputed domain name resolves does link to “free game downloads” – as stated in the Respondent’s June 22, 2012 email – it also contains numerous links to other products and services. ”

“The screenshots from that website exhibited to the Complaint link, for example, to chat rooms; advertisements for office premises; online dating; archiving photographs; sports coaching services; tennis holidays for children in the 9-7 year age range; website development services; sale of perfumes; sale of Italian designed furniture; multitrack recording and mixing software for audio production; video production, etc. ”

“The website also contains numerous links to webhosting services which, as explained in paragraph 4.1.3 above, are the core business of the Complainant in which the Complainant is the fourth largest provider worldwide; see, also paragraph 4.1.6 above.

“In this Panel’s view. it is not sufficient for the Respondent to say that he has no control over the use to which the disputed domain name has been and, continues to be put once that name is parked for the purpose of generating click-through revenue. ”

“There is no evidence that the disputed domain name was either originally registered or subsequently (2008) acquired by the Respondent primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.”

“There is no evidence of the price for which the disputed domain name was acquired by the Respondent for comparison with its offer to sell that domain name in the July 2, 2012 email; paragraph 4.2.4. above.

“However, in any event that offer appears to the Panel to have been a bona fide attempt by the Respondent to resolve the present dispute.”

“However, as already found, the Complainant has had rights in the registered trademark OVH since 1999 (in France), followed by registration of its CTM in September 2007 (see, paragraph 4.1.4 above) and in its particular markets is very well-known under that name and mark. ”

“The Respondent does not say it expressly when the disputed domain name was parked as a pay-per-click website, except that it has been advertised for sale on the parking page “… for most of the past four years …. .”. In other words, it appears from shortly after August 2008 when it was acquired by the Respondent. The Respondent cannot, however, quite simply, deny responsibility for the use to which the disputed domain name has been put and as, according to the Respondent, he is the owner of “… many health-related domains …” and we own many domains …” [email of June 22, 2012] he must be presumed to be well aware of the representation made under paragraph 2 of the Policy. As that paragraph concludes:

“It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

“Here, the Respondent’s case is that the disputed domain name with the additional letter “o” is highly distinctive and valuable [Respondent’s July 2, 2012 email], will not be confused by Internet users searching for the Complainant under its OVH name and mark and is being used in a legitimate and bona fide manner.”

“But where, as in this case, the Panel decides that the disputed domain name is confusingly similar to the Complainant’s OVH mark, that the Respondent has failed to demonstrate rights or legitimate interests in that domain name, continued use of the domain name as described above cannot constitute indicia of good faith.”

Not sure how this case can be reconciled with the panel finding in the Woogle.com case

 

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