Vertical Axis Beats Back UDRP On Generic Parajumpers.com By Owner Of Parajumpers.it
PJS International SA of Luxembourg just lost its bid to grab the generic domain name Parajumpers.com which is owned by Vertical Axis who was represented by Esquire.com
The three member panel failed to find Reverse Domain Name Hijacking although the domain name Parajumpers.com was registered 4 years before the trademark was granted and 3 years before the complainant even registered its own domain name.
Here are the relevant facts and finding by the Panel:
The trademark PARAJUMPERS has been registered as a Community trademark on February 13, 2007 in Nice classes 9, 18 and 25.
The Complainant is also owner of an International trademark for PARAJUMPERS, and of many other national trademarks.
The Complainant has been giving the brand in license to APE & Partners since 2006, for the purpose of selling mainly clothing and outerwear with the brand PARAJUMPERS, with sales in over 20 countries, and recently also through the website “www.parajumpers.it”.
The disputed domain name was registered in April 2003 while the trademark of the Complainant has been registered in 2007, and its first domain name parajumpers.it in November 2005.
The general principle for the acquisition of title for a domain name, especially one consisting of a generic word or commonly used descriptive phrase, may be summed up as “first come first served”.
In the view of the Panel, the designation “parajumpers” is mainly generic.
However, “parajumpers” is not a “dictionary word”, but appears to be the name of a military squadron that is based in Alaska.
In the absence of special circumstances the principle “first come first served” still applies to adjudicate the conflict between a domain name and a later registered trademark.
The Panel finds no such special circumstances in the present case and the Complainant did not allege any circumstance that would give its trademark priority rights over the right of the Respondent to the disputed domain name.
This is especially so when there is no indication that the Respondent had the trademark or any intellectual property right of the Complainant in mind when registering the disputed domain name
Accordingly, the Respondent has a right or legitimate interest in the disputed domain name by virtue of the fact that it was free to register the domain name and did so before the registration of the PARAJUMPERS trademark relied on by the Complainant.
There is no evidence that the Respondent acted in bad faith when it registered the disputed domain name, among the several thousand domain names that it claims to own.
The mere fact of registering a large number of domain names is not proof by itself of bad faith, as there may exist a legitimate purpose in appropriating many domain names in the hope that some of them will enjoy commercial value.
The mere fact of offering the disputed domain name for sale is not in itself indicative of bad faith. The fact that the present website displays (pay per click) links to third parties related to topics such as insurance, education, job opportunities, travel, business, finance, legal, electronics and cars (i.e., no capitalization on the Complainant’s trademark) defeats in the present case the idea of bad faith use.
In view of the foregoing result of the examination of the Parties’ contentions, the Panel does not find it necessary here to apply the doctrine of laches, which is recognized as a general principle in intellectual property rights in most legal orders, and indeed in most matters of private law generally.
The Panel has not been sufficiently informed about the trademark rights of the Complainant to enable it to specify when those rights arose. Without applying the doctrine of laches, however, the Panel has taken into account that the Complainant has waited several years to act against the existing registration of the disputed domain name, which adds to the above mentioned circumstances for the Panel to deny the existence of bad faith on the part of the Respondent (see Spielwarenmesse eG v. Name Administration Inc. (BVI), WIPO Case No. D2013-0744).
However the panel, refused to find Reverse Domain Name Hijacking (RDNH)
In the view of the Panel, it would be necessary that some kind of intent of the Complainant to disrupt a legitimate business of the Respondent should have been demonstrated in order to make a finding of Reverse Domain Name Hijacking.
The Panel is not convinced that the Complainant should have known that it had no basis for its claim.
The bad faith of the Complainant is not to be presumed.
Assuredly, it might have been possible for the Complainant to detect that the disputed domain had been registered significantly prior to the registration of the PARAJUMPERS trademark, which nevertheless is only one aspect of the bad faith evaluation
However, the UDRP and the Rules have been in effect for more than 13 years, and any lawyer filing a UDRP complaint should know what Reverse Domain Name Hijacking is and avoid his or her client from filing a complaint in bad faith.
The Complainant was apparently not aware of it.
Nevertheless, this Panel finds that oversight is not equivalent to Reverse Domain Name Hijacking.
It is generally the purpose of the UDRP to decide, in particular through a decision of the Panel, whether the Complainant is entitled to a domain name transfer or not.
Moreover, it is very often the case that parties attempt to negotiate a settlement before filing a UDRP complaint, and the Panel finds that the Complainant cannot be blamed for its attempt in this respect.
The request for Reverse Domain Name Hijacking of the Respondent is accordingly dismissed.”