In a WIPO decision out this morning Frank Schilling and Name Administration represented as usual by John Berryhill, won another UDRP this time on the domain name Premiercard.net beating back a challenge from Visa.
In doing so it got a decision full of good language that can be cited by domainers in other cases. (we have highlighted those below).
But 1st for the facts as found by the panel:
“”The Complainant is Visa Europe Limited which owns the trademark registrations in France for the PREMIER word trademark and the PREMIER and global map device trade mark, and the owner of CTM registrations for two PREMIER and global map device trade marks, registered with priority dates of October 10, 1996, August 27, 2004, December 1997 and August 27, 2004, respectively (the “Trade Marks”). The Complainant is also the owner of the domain name <premier.tel>.”””
“The disputed domain name was first registered on December 19, 2005. It appears to have been registered by the Respondent on April 28, 2008 following the abandonment of its initial registration.”
“”The Complainant is very well-known and provides more than 200 banks with a wide range of credit cards for use by individual and corporate customers. The Complainant is one of the main credit card companies in France and its PREMIER products and services offered under the Trade Marks are well-known in France.””
The complainant alleged that:
“”The disputed domain name is confusingly similar to the Trade Marks as it comprises the word “premier” together with the descriptive word “card”.””
“”The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no rights in respect of the name PREMIER whether as a trade mark or whether in respect of reputation acquired through use of the disputed domain name. The Complainant has not licensed or otherwise authorised the Respondent to use the Trade Marks or the disputed domain name. The Respondent is not commonly known by the disputed domain name.””
Here are the relevant findings of the 3 member panel:
“”The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate the date of registration of the disputed domain name.”
“In the present case, the Panel concludes that the addition of the non-distinctive word “card” does not serve to distinguish the disputed domain name from the Trade Marks in any way.”
“”The crucial issue in respect of this proceeding is whether the Respondent was aware of the Trade Marks at the time it registered the disputed domain name.”
“”The Complainant has asserted that the Respondent clearly had knowledge of the Complainant and its Trade Marks at that time. The Respondent has stated that it did not have any such knowledge. The lack of distinctiveness of the wording component of the Trade Marks lends weight to the Respondent’s arguments, as do the facts the Complainant has used the Trade Marks primarily if not solely in the French market, whereas the Website operates entirely in the English language.””
“”“It is for the Complainant to establish… that the Respondent has no rights or legitimate interests in the disputed domain name. Where a disputed domain name corresponds to a less distinctive mark or group of marks, this burden tends to be higher than it might otherwise be. Although each case must be assessed on its own merits and evidence, in general it is inherently more likely that a respondent may have a legitimate interest in using a more descriptive domain name. Given the phonetically descriptive nature of the term “exotiq”… the relatively scant evidence of distinctiveness provided by the Complainant, and the Respondent’s prima facie plausible claim to a legitimate interest in the use of the name, the Panel finds that the Complainant has not discharged its burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name”””.
“”The Panel is not convinced on the facts of this case that the business conducted by the Respondent under the disputed domain name does not amount to a bona fide offering of goods or services.””
“The Panel therefore concludes that the Respondent has produced sufficient evidence to establish its rights or legitimate interests in the disputed domain name.”
The panel then went on deal with the issue of bad faith although by its own decision clearly they did not have to since the complainant failed on the 2nd element.
“The Panel finds, on the evidence, the Complainant has also failed to establish bad faith registration and use under the third limb of the Policy.”
“The use of the word “premier” in connection with the marketing and promotion of premium banking and credit services (and, indeed, in respect of a wide range of goods and services in numerous industries), both in France and worldwide, is widespread.”
“The lack of cogent evidence filed with the Complaint, other than the Complainant’s registrations for the Trade Marks, to support the Complainant’s claim that the Respondent knew of the Trade Marks at the time of registration of the disputed domain name, and the Respondent’s assertion that it had never heard of the Complainant when it registered and commenced use of the disputed domain name, gives rise to the inference that the disputed domain name has not been registered and used in bad faith.”
“”The Respondent is not a direct competitor of the Complainant in respect of the supply of credit card services seeking to disrupt the Complainant’s business, but is simply operating a pay-per-click website providing links to third party websites (albeit third party websites of entities operating in the same industry as the Complainant). “”
I”n the Panel’s view, the wording component of the Trade Marks is descriptive. It has been held that a respondent should be free to register domain names comprising common or generic terms on a “first come, first served” basis as long as they are used descriptively “
Here is where Berryhill has does a great service for all domainers IMHO.
I have argued for a while that a PPC page is a lot less damaging to a trademark holder than the domain being in the hands of a competitor offering a competing product for sale. However over the years, UDRP seem to have grow to believe the most damaging thing that can happen to a domain is to be parked.
But clearly that is not the case and as we all know Google openly sells trademark keywords to competitors so how is that technically any different than a landing page full of ads?
“”The Respondent is not a direct competitor of the Complainant in respect of the supply of credit card services seeking to disrupt the Complainant’s business, but is simply operating a pay-per-click website providing links to third party websites””
For Generic domain holders who have lost their share of UDRP’s here is language that simply warms the heart in this holiday season:
A domain holder “should be free to register domain names comprising common or generic terms on a “first come, first served” basis as long as they are used descriptively.
Even if they go to a PPC page.
John Berryhill says
“Here is where Berryhill has does a great service for all domainers ”
Andrew, it is the panelists who write the decisions. I merely explain the facts, many of which are often omitted in the Complaint. While a number of interesting facts were left out of the decision, the panel decides and states the principles on which the decision is made, and for very little compensation in comparison to their qualifications and the time they put into it.
howard Neu says
John Berryhill does a great job, but he should know that your name is MIKE, not ANDREW. I received a similar decision at the NAF last week in the case of CareFree Homes II, L.P. v. Worldwide Media, Inc. / Domain Administrator. There, the panel said
“The fact that the words of the disputed domain name are generic operates against a finding of their having acquired a secondary meaning. The fact that there are similar operations in at least three other states, as identified by the Respondent, all operating under the name “Carefree Homes” further diminishes the Complainant’s case.”
The panel also ruled favorably on the Doctrine of Laches, though not directly. It stated:
“This is another case where a complainant has slept on its rights. It would be extremely difficult to infer, after 10 years of inaction by the Complainant, that a respondent registering a domain name 10 years previously consisting of two generic words would know of their use by a company then operating in a small way in another state some distance away.
The Complainant fails to appreciate the need to show that the reputation of the mark was such in the year 2000 that the Respondent should have known about its alleged common law mark at the date of registration of the disputed domain name.
The equitable doctrine of laches need play no part in this Panel’s assessment. Nevertheless, the longer a complainant defers the seeking of relief under the Policy, the more difficult it is to prove bad faith registration. “
landon white says
@ Shoulda Neu
John Berryhill does a great job, but he should know that your name is MIKE, not ANDREW. lol
Glad to see your in the holiday spirit, thanks for your deep insightfull articles
and remarks throughout the past year. HAPPY HOLIDAYS!
Sean Patrick says
This is why I’m telling my better half that she needs to move into domain law. We need more skilled attorneys, there are lots of domains that need representation. She’s passed the bar in FL and NJ, up next DC and CA.
Together with the previous case these are VERY GOOD news.
Congratulations John Berryhill, a good defense always has merit.
cheap Domains Price World Record dot COM says
why want premiercard.net if the (better) premiercard.com still is only a parked domain?
cheap Domains Price World Record dot COM says
also premiercard.CO is registered and on sale
With the new gTLD’s coming out this area of law is going to explode.
If I was younger and still practicing this is the area I would concentrate on.
Still less than 10 attorneys as far as I know that represent domain holders on a regular basis
Did anyone else notice this?
“…Given the phonetically descriptive nature of the term “exotiq”…”
Where did THAT come from?
It really does seem UDRP decisions, good or bad, are often
cut and paste jobs.
Much of the wording in this decision was “cut” from:
“Exotiq Properties Ltd. v. David Smart
Case No. D2009-1672”
“…Given the phonetically descriptive nature of the term “exotiq”, the Respondent’s evidence that it has indeed registered several other domain names containing the term “exotiq” (seemingly in combination with other descriptive terms such as “exotiqgirls”, “exotiqgirls”, “exotiqrentals.” the relatively scant evidence of distinctiveness provided by the Complainant, and the Respondent’s prima facie plausible claim to a legitimate interest in the use of the name, the Panel finds that the Complainant has not discharged its burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name.”
tricolorro – the times I questioned your logic, I was wrong 😀 Great catch, and Happy Holidays to everyone.
“tricolorro – the times I questioned your logic,…”
“I was wrong”
It’s logical. 🙂
Caroline marks Johnson says
keep patronizing panelists and even i might let you win one
I dig it. Safe to say we all dig it. Thank you Visa!
I wonder why it is parked with SEDO
John Berryhill says
“John Berryhill does a great job, but he should know that your name is MIKE, not ANDREW”
Oops, wrong site.
Thanks for pointing that out, Ari.
Interestingly, Visa Europe prevailed on