Despite TM Going Back To 1998 & Parked Page UDRP Rejected on In-Case.com
The Complainant Incase Designs Corp. of Chino, California, lost a UDRP to get the domain name In-Case.com, despite the fact that complainant had a trademark in the US dating back to 1998 and that the domain holder was parking the domain.
The case seemed to turn on the fact that the term although trademarked was generic, the domain holder owned many other domin names starting with the word “in” and that the landing page showed local results when it was viewed from different countries, China for example
Here are the relevant facts and finding by the three member panel:
“The Complainant is an American manufacturer of protective cases and bags for consumer electronics. ”
“The Complainant is the proprietor of many trademarks throughout the world incorporating INCASE, including a United States trade mark filed on September 5, 1997 and registered on December 1, 1998. The Complainant is also the registrant of the domain name <goincase.com>, which was first registered on October 21, 1999″.
The Respondent is based in Seychelles and is engaged in the business of registering and operating a portfolio of domain names, including:
- <inquebec.com>; and
The Disputed Domain Name was registered on November 20, 2007. ”
“As at the date of this Decision, the Disputed Domain Name resolves to a website displaying numerous links which largely relate to cases and bags (the “Website”)”.
“The Panel accepts that the Complainant has not licensed or otherwise authorised the Respondent to use the INCASE trade mark. The Panel also notes that there is no evidence, whether put forward by the Respondent or otherwise, that the Respondent has been commonly known by the Disputed Domain Name, and finds that the use of the Website as a “link farm” to host numerous sponsored links (for which the Respondent receives revenue, on PPC or other basis) precludes any argument that the Disputed Domain Name is being used on a noncommercial basis. ”
“The Panel accepts that use of a website to host PPC sponsored links is capable of conferring rights or legitimate interests in the relevant domain name on the registrant and/or website operator, particularly where the domain name in question consists of a dictionary or generic word or phrase, and the domain name is reasonably related to the content of the links hosted ”
“The Disputed Domain Name consists of a generic phrase (“in case”). ”
“The sponsored links displayed on the Website also largely relate to this phrase.”
“The Panel accepts the Respondent’s submission that the links displayed on the Website are generated by the descriptive nature of the term “in case”, including its variations such as “cases”, and “just in case”.”
“While the Website displayed a link to the Complainant’s website at the time that the screen shot provided by the Complainant was captured, the Panel does not consider this to be evidence that the Complainant was specifically targeted by the Respondent. ”
“Rather, the links displayed on the Website relate to various companies in the business of selling and/or manufacturing cases.”
“In addition, the Panel finds that when the Website is viewed outside of the United States, for example in Hong Kong, a significant proportion of the links relate to businesses operated locally. This indicates that the Website content is not fixed or predetermined and is adapted to the geographical location of the Website viewer”
“As such, in the absence of any apparent evidence that the Respondent is targeting the Complainant in any way through use of the Disputed Domain Name and in the absence of any apparent evidence that the Disputed Domain Name is being used in any sense beyond a descriptive sense, the Panel is prepared to find that the Respondent’s use of the Disputed Domain Name and the Website constitutes legitimate use under the Policy”.
“The Panel considers its finding supported by other relevant factors, such as the Respondent’s record of registering domain names containing generic words or phrases prior to these proceedings, many of which incorporate “in” (including <in-action.com>, <in-corporate.com>, <in-flight.com>, <in-flow.com>, <in-germany.com>, <in-ireland.com>, <inquebec.com> and <in2finance.com>) rather than deliberately targeting third party brands or trade marks ”