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.