A German company missing the landrush for the domain project.me goes out after the landrush and registers a trademark on the term in Germany and then files a WIPO complaint against the domainer that grabbed the .me domain during the landrush.
Welcome to trademark abuse.
So with a ton of new extensions coming on the horizon this is an important case.
The three member panel found in favor of the domain holder, despite the domain being parked, with a “for sale” link, and despite the domain holder offering to sell the domain to the trademark holder.
In finding for the domain holder the panel found:
“””In this Panel’s view, the Complainant has failed to establish that the Respondent registered and is using the domain name in bad faith.””
“”The Respondent applied for registration of the disputed domain name during the Land Rush application period for the .me domain, on June 26, 2008, three months before the Complainant’s trademark registration was entered in the German trademark Register, three weeks before the Complainant even applied for its trademark registration, and two weeks before the Complainant even came into legal existence.””
“” The Respondent could not, therefore, have been aware of the Complainant’s existence, let alone aware of the Complainant’s trademark rights, at the time the Respondent applied for registration of the disputed domain name. It is true the domain name was not in fact registered to the Respondent until August 17, 2008, but the delay between application and registration was a result of the timing of the .me Rollout Schedule adopted by the .me Registry to execute the Land Rush applications. “”
“”The Complainant has not provided any evidence to show that the Respondent was, or should reasonably have been, aware of the Complainant and its trademark rights on August 17, 2008, when the domain name registration took effect. Furthermore, given the timings of activities and the different geographical locations of the parties, this Panel considers that the Respondent was not, and could not reasonably have been, aware of the Complainant and its trademark rights when registration took effect.””
“”Although this Panel recognizes that there are some cases in which bad faith registration and use can be made out even when the disputed domain name is registered before the Complainant’s trademark rights came into existence or before the Respondent was aware of the Complainant’s trademark rights, this is not one of them.””
Howard Neu represented the Domain holder.
Case citation is:
Case No. DME2009-0008
project.me GmbH v. Alan Lin