WNP.com Saved In UDRP By The Czech Arbitration Court
The domain name WNP.com was saved in a UDRP decided by the ADR Center of the Czech Arbitration Court (CAC).
The UDRP was actually filed on several domain names:
wnp.com first registered on 9 June 1997
williams-partner.com first registered on 18 June 2003
williamspartner.com first registered on 18 June 2003;
williamsandpartner.com first registered on 18 June 2003.
The CAC found seemed not to believe either parties claims or their presentation of the facts which where very complicated and hard for the panel to understand.
It seemed that the complainant that may have had a trademark on the term Williams & Partner tried to use that trademark to get the “matching” three letter domain WNP.com (the N standing for and”) which the CAC found was a huge stretch for such a generic term.
Here are the relevant facts and findings by the Panel
“”The Complainant is a company established pursuant to Slovak law.
The Respondent is a company based in the Seychelles.
“Prior to the filing of the Complaint the Domain Names would re-direct internet users to a website operating from the domain name espartners.cz; with the headings “Executive Search Partners” and “The Total Deception Detection Blueprint”. At the bottom of that page was to be found the text:
“Executive Search Partners is a division of The Runa Group B.V. a Venture Capital & Business Incubator specialist with activities in Europe, Russia & CIS, Japan and the United States”
As at the date of this decision all of the Domain Names divert to the same website operating from espartners.cz
The Complainant claims to be engaged in the business of recruitment and management consultancy in Central and Eastern Europe. It claims to be the successor in business to a business that from marketing materials annexed to the Complaint would appear to have been established in 2003.
The Complainant possesses the Czech trade mark already described above for “WILLIAMS & PARTNER”.
The material appended to the Complaint in this respect is in Czech and accordingly unintelligible to the Panel.
Nevertheless, the Czech trade mark office provides online an English language version of the material appended to the Complaint. This shows (a) that prior to February 24, 2012, the trade mark was registered in the name of “Williams & Partner sro”; and (b) that on February 24, 2012 the trade mark was transferred into the name of the Complainant; i.e. “Williams &; Partner CEE s.r.o”.
The Complainant also claims to posses a Slovak trademark. However, no documentation in relation to that trade mark appears to have been provided.
The Complainant asserts that the Domain Name wnp.com is confusingly similar to its trademarks being “an abbreviation of [the] [C]omplainant’s trademarks Williams & Partner
“It is tempting for the Panel simply to assert that this larger dispute involving allegations of breach of contract and possibly even fraud is simply inappropriate for determination under the UDRP.”
“Nevertheless, in the opinion of the Panel the approach here should be somewhat more systematic than simply to assert that the case involves issues that are too difficult for it to determine.”
“Its task is to consider each aspect of the requirements of the Policy. In doing so it must bear in mind that it is the complainant that bares the burden of proof of satisfying the requirements of each aspect of the Policy in order to succeed in the proceedings.”
“7.8 In the circumstances, the Panel believes that the correct approach is to examine each of the requisite elements of the Policy in turn. If in the context of that examination it is apparent that there is a substantive factual dispute between the parties, it may be that the dispute is incapable of determination under the Policy, and the Complaint may consequently fail.
It may also be a dispute of fact that is relevant to some separate claim as a matter of law. But it is the irreconcilable dispute of fact rather than the legal claim that is relevant here.”
“In particular, the Panel has considered it appropriate to give little weight to any factual assertion by either party unless it appears that the other party accepts that assertion either explicitly or implicitly or if the contention is supported by credible evidence that is intelligible to the Panel”.
“With this all in mind the Panel finally turns to the question of rights. If one is to take at face value the entries in the various trade mark registries, then it would appear that the Complainant is the registered owner of the registered trade mark for WILLIAMS & PARTNER in the Czech Republic and the Respondent is the owner of registered trademarks elsewhere.
Of course, the Respondent contends that the Czech trade mark was wrongfully transferred to the Complainant, but that is something on the material provided that the Panel is in no position to decide.
Further, although the Respondent contends that this has been raised with the Czech trademark registry, there is no real evidence before the panel to support this, or even if correct what legally remedy has been sought and could be obtained by the Respondent in this respect.
In the circumstances, the Panel is prepared to proceed on the assumption (with formally deciding this issue in favour of the Complainant) that the Complainant has rights in this Czech trade mark.
In the case of wnp.com; matters are somewhat more difficult.
Many panels, including this one, view the requirement of “confusing similarity” as imposing a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint
Nevertheless, the Complainant is asking the Panel to find confusing similarity in relation to the use in a domain name of only three letters to be found in a (if spaces are to be ignored) 16 character trade mark.
Even though each of these letters is said to represent an individual work in the mark, that is asking too much. The Panel is not convinced that there is a sufficient degree of similarity between the two to satisfy the test of “confusing similarity” under the Policy.
Further, undertaking this assessment strikes the Panel as somewhat artificial in the particular circumstances of this case. The Complainant contends that the term “wnp” is one that has been extensively used in business. In short, the real question in this case is whether the Complainant has trademark rights in this term alone.
The Complainant has no registered trade mark rights in the term “wnp” but that is not the end of the matter.
Unregistered trade mark rights are also recognized for the purposes of the Policy. Although those rights are more commonly recognized in common law countries, if a complainant can show that if use of that term would be protected by the law in any relevant country (for example under unfair competition law), that is likely to be sufficient
However, no claim of “unregistered trademarks” (or any local law equivalent) has been made by the Complainant in this case.
Further, there are a number of unresolved factual complications which might be relevant to any assessment of whether such rights exist that the Panel is not in a position to determine (i.e. to what extent the Complainant is the owner of the relevant rights and to what extent there remains any real business of the Complainant that is trading in this term).
In the circumstances, at least so far as the wnp.com Domain Name is concerned, the Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.”