Canyon.bike Lost In 1st UDRP Decision On A New gTLD Domain Name

Canyon Bicycles GmbH of Koblenz, Germany, just won the first UDRP decision on a new gTLD domain name, canyon.bike (all other decision up to now have been URS cases)

The one member panel found that when it comes to new gTLD’s the will take the entire domain name, both on the left and right of the dot in determining whether the domain name infringes on a trademark:

The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.

This case follows the decision in TES.co.

But having said that the panel said the case didn’t turn on that factor.

Here are the relevant facts and findings:

The Complainant is a corporation with its headquarters in Koblenz, Germany and is one of the world’s leading manufacturers of racing, mountain and triathlon bicycles. The Complainant was originally founded in 1985 and has been operating under its present name since 2001.

The Complainant distributes its bicycle products worldwide, has agents in ten countries and has subsidiaries in six countries including the Netherlands where the Respondent is based. The Complainant is involved in numerous international cycling events of global repute and has been the recipient of multiple accolades including over thirty “Bike of the Year” awards together with the “Eurobike Award” in 2012.

The Complainant has secured ownership of numerous registered trademark rights in the term “Canyon” used in connection with bicycles in many jurisdictions throughout the world. For example, the Complainant is the owner of International Trademark (word) No. 687879, CANYON, registered on January 2, 1998, for goods and services in classes 11 and 12.

The Respondent is an individual based in the Netherlands.

The Respondent states that he is a cyclist and web designer in the cycling industry. The disputed domain name was created on February 5, 2014

The “.bike” generic Top-Level Domain (gTLD) had entered its General Availability period, where domain names became available at standard base registration fees, seven seconds earlier. The Respondent registered the disputed domain name using a privacy protection service.

The disputed domain name points to a website parking page provided by the Registrar which, according to the screenshot provided by the Center, features sponsored listings including one entitled “Mountainbikes”.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.

The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for the word “Canyon”, including the example cited in the factual background.

The Panel therefore turns to the second part of the inquiry and notes that the alphanumeric string in the second level of the disputed domain name incorporates the Complainant’s trademark in its entirety with no additional elements.

This is sufficient for the Panel to find identity between the disputed domain name and the Complainant’s trademark as the applicable top-level suffix in a domain name is usually disregarded under this test, except thus far generally in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The Complainant subscribes to the principle expressed in paragraph 1.2 of the WIPO Overview 2.0, which it notes is well-established.

The Complainant also makes the additional argument that the gTLD in the present case, “.bike”, exacerbates confusing similarity because it describes a core product of the Complainant.

The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.

However, the Panel considers that it is not necessary to do so in the present case. The test in paragraph 4(a)(i) of the Policy is “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). There is no doubt in the Panel’s mind that the Complainant’s case on this element of the Policy, with which the Respondent does not take issue, more than meets this threshold.

In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name.

In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions (1) that the Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant’s trademark; (2) that the Respondent cannot assert that he is commonly known by the term “Canyon” or has made demonstrable preparations to use or is using such term in connection with a bona fide offering of goods and services; and (3) that the disputed domain name is currently pointing to a website featuring PPC links which could not be construed as a bona fide or legitimate noncommercial or fair use. Accordingly the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in respect of the disputed domain name.

The Panel notes that the Response is informal in nature, such that it is lacking the Respondent’s certification of completeness and accuracy required by paragraph 5(b)(viii) of the Rules. In these circumstances, the Panel requires to accord this less weight than a fully compliant response.

However this may be, the Panel notes that the Respondent’s brief submissions focus on his alleged motivation to register certain disputed domain names “to protect companies from domain squatting” and, in the case of the disputed domain name, to provide the means for establishing contact with the Complainant with a view to enlarging his network. I

n the Panel’s opinion this does not make out a case in terms of paragraph 4(c) of the Policy, nor can the Panel conceive of any way in which the Respondent’s actions could be considered to have conferred rights or legitimate interests upon him in respect of the disputed domain name. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case.

In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

Registered and Used in Bad Faith

It is clear from the Parties’ respective submissions that they are agreed that the Respondent registered the disputed domain name knowing of the Complainant’s rights and indeed with these in mind. The Respondent expressly acknowledges that he is a web developer and cyclist and that he hoped to be able to make contact with the Complainant through having registered the disputed domain name. The Respondent states that he had a wholly good faith motivation to protect companies such as the Complainant from cybersquatting.

The record does not however support the Respondent’s insistence of a good faith motivation. In particular, the Respondent’s email to the Center of February 12, 2014 indicates that the Respondent was looking to be financially compensated in respect of the registration of the disputed domain name, which if treated as an offer for sale can be evidence of bad faith (see paragraph 3.6 of the WIPO Overview 2.0). Furthermore, the Respondent’s statement that he wished to “enlarge his network” discloses a deliberate and intentional commercial purpose behind the registration of the disputed domain name, given the Respondent’s admitted background as a web developer with interests in the cycling industry. An attempt by a person to improve their commercial prospects through the registration of a domain name which that person knows to correspond to the trademark of another is in the Panel’s view a further indication of registration in bad faith.

Finally, the Panel turns to the website parking page associated with the disputed domain name.

It is clear that this is a page created by the Respondent’s registrar rather than directly by the Respondent.

However, that page features PPC advertisements, at least one of which appears to the Panel to be directly competitive with the Complainant’s products.

On this subject, paragraph 3.8 of the WIPO Overview 2.0 notes the consensus view of WIPO UDRP panels that a registrant will normally be deemed responsible for content appearing on a website at its domain name even if it does not exercise direct control over such content.

Where certain links may constitute evidence of bad faith use of the domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of links which profit from trading on third party trademarks. Furthermore, it may not be necessary for the registrant itself to have profited directly under such arrangement if profit or “commercial gain” was made by a third party.

In the present case, the Panel is satisfied that commercial gain will have been made by the operator of the PPC links on the Respondent’s website and that there is no evidence of any good faith attempt on the part of the Respondent to prevent the inclusion of such links.

On the contrary, paragraph 9 of the Respondent’s registration agreement demonstrates that the commercial nature of the links provided by the registrar had been brought to the Respondent’s attention. They are clearly described as “an online domain monetization system designed to generate revenue” and the registration agreement required the Respondent to agree to their inclusion on the default setting parked page.

 

Paragraph 3.8 of the WIPO Overview 2.0 goes on to note that some panels have found that the inclusion of such links may not be a basis for finding respondent bad faith where (1) these are genuinely automated; (2) there is no evidence that the respondent influenced the advertising content; (3) the respondent credibly denies knowledge of the complainant’s trademark; (4) there is no evidence of the respondent previously being put on notice of such mark; and (5) other indicia of cybersquatting are not present.

This does not describe the circumstances of the present case, where there is no such denial of knowledge of the Complainant’s mark. Indeed, there is effectively an admission of such knowledge together with the other indicia of cybersquatting noted above. In these circumstances, the Panel considers that it is reasonable to hold the Respondent accountable for the inclusion of the PPC links and to find that this constitutes use of the disputed domain name in bad faith.

Finally, the Panel notes that despite the Respondent’s protestations of a good faith intent regarding the registration and use of the disputed domain name, the central feature of the present case is that the Respondent registered the disputed domain name in the clear knowledge of the Complainant’s rights in its CANYON mark and in no doubt that he had not received the Complainant’s permission to do so.

In the Panel’s view, the absence of such permission or indeed any bona fide basis for the Respondent’s actions means that on the facts of this case the Respondent’s alleged good faith intent is irrevocably tainted.

In these circumstances, the Panel finds that the Complainant has established that the Respondent has registered and is using the disputed domain name in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

 

Comments

  1. says

    What is wrong with all you guys paying thousands, in terms that have rapid URS which means the second these domains have any outside marketplace value, you are going to get hot, and have your name suspended, and be out of pocket, as you clearly agreed to a claim.

    Donuts gets paid either way for selling you trademarked names, with waivers, the co sequences of these rulings are starting to outweigh premium registrations, upon premium renewals.

    Your reward, is that if the gtlds gain traction, you should expect the above noted situation, if you have purchased a name with disclaimer, or one with a registered mark in 2014.

  2. says

    Pretty straightforward TM infringement. How is “canyon bike” ever a generic?

    Question is now that Canyon Bicycles owns that domain, do they have to pay the premium renewal fee (if that applies) or can they just ask the registry to block this domain altogether?

  3. says

    Tony, domain is placed in a suspended state, and just hangs.

    The real question is of you register pretty much any keyword with a TM disclaimer in the new G’s, what are your chances of winning the case if this holder files a URS and comes across your so called godaddy registration or to them
    parked page, as godaddy has 80 percent share, and most name servers haven’t moved much?

    This is a huge liability if these names become valuable.

  4. says

    ontheinterweb,

    There is no such generic thing as a canyon bike. There is a company by the name of Canyon that makes bikes. If you want to ride on bike paths in some canyon, you will get a mountain bike…

  5. says

    well, there is also no such thing as a “bike com”

    what is a “bike commercial”… a commercial about bikes? biking commerce?

    your argument seems to be it isnt a good “domain hack.” thats irrelevant… people bike in canyons, woods, mountains, valleys, etc… unless you’re saying canyons arnt ever associated with bicycling unless talking about THIS company i’ve never heard of.

    like when people mention apple and we’re talking about computers.

    if i mention a canyon and biking, thats not so cut and dry.

    however, in this case when you read the whole decision it makes sense they lost. respondent was aware of the company, had ads for mountain bikes up there, approached the company that had the TM trying to make a profit from the domain, etc..

    they just wernt as sneaky as the Graceland.com people were, putting bible quotes up n stuff. they slipped up eventually though, even if it was the ad stream it was their domain, they’re responsible.

    now had the registrant of canyon.bike simply registered the domain, NOT contacted the company, put a picture of somebody doing some cool stunt jump in a canyon, with maybe a nice sunset and all… they may not have lost.

    but to say “derrrrrr whats a canyon bike” as if canyons arnt associated with biking, except for this company… thats stretching it.

  6. says

    onthe,

    Canyon bike is as generic as apple computer (negative in either case, just in case you don’t understand). Just because you have heard of Apple and not of Canyon doesn’t make Canyon’s TM rights any less valid. It is your limitation, not Canyon’s.

    My original comment was in reply to the first one saying this is bad for generics. This has nothing to do with generics. If you really love the keyword canyon that much, there will be hundreds of other extensions to acquire it in.

  7. says

    its descriptive.

    nobody says apple + computer in the same sentence that arnt referring to apple computers. but people do say canyon + bike ALL THE TIME in the same sentence that have NO association to this company.

    dont believe me… lets look at 2 of the places i found in 30 seconds who apparently realize people DO bike in canyons and its not anywhere near “apple computers”…

    by the way, none of these are associated with the complainant and its all about BIKING IN CANYONS!

    canyonbicycles.com (bicycle shop, not the complaintent, domain registered 1998)
    CANYONBIKES.com (they do bike rentals and bike tours, domain registered 1998)

    now im curious what you thought of the Graceland.com UDRP decision…

  8. John Berryhill says

    What kind of surprises me is that there is a “Canyon” brand of bike in the first place, given the fame of “Cannondale” in the relevant market.

    I’ve heard of a “mountain bike”, but I’m not aware that there is such a thing as a “canyon bike” as a generic indication of bike.

    Had the respondent been a bike rental shop in Sedona or Flagstaff or whatever, then it would have been a more interesting set of facts, and more along the lines noted by ontheinterweb above. But those were not the facts here, and there was reason to conclude the registrant was specifically motivated by an intent arising from the complainant’s mark.

    Still, given that the URS is for facial “no brainers” as was said of the UDRP originally, I am not optimistic that it won’t be subject to the same sort of scope creep as has happened to the UDRP.

Join the Discussion