A three member UDRP panel had held in favor of the domain holder on the domain name Masai.com which was represented by John Berryhill.
The complaint was brought by Masai Clothing Company of Copenhagen, Denmark which holds several community trademarks from “several European countries” on the term Masai.
Masai is also a dictionary word for the name of an African Tribe.
Here are the relevant facts and findings by the panel:
The domain name was originally registered on May 15, 2000. It currently routes to a website posting directory links to sites related to Africa and travel.
“According to archives available at “www.archive.org”, the website in 2000 advertised a Chicago-based software services company named “Masai Management.” From 2001 to 2005 the website displayed instead text-generated directory links referring to a number of categories (often travel related).”
“In September 2005, the website displayed an African animal scene banner, then later in 2005, the site displayed numerous links relating to African travel destinations. Near the end of 2005, there are no available archives.”
“Screen captures of the website on September 15, 2008 show a photo of what appears to be African tribes-people, with a search box, an appearance that is consistent until September 2009”
“Respondent contends that the links were generated by a third-party search result service provider. Respondent also appears to make the debatable assertion that a Respondent absolves itself of responsibility for the appearance of its website if a third party actually generates the content. Although Complaint Annexes 8 and 9 are ambiguously presented, the Response nonetheless concedes that “[a] recent change in service providers by the Respondent caused a brief and incidental display of subject matter relating to clothing.”
Based upon this concession, Complainant’s evidence, and other evidence bearing upon the appearance of the website during years prior to the time of Complainant’s Annexes 8 and 9, the Panel finds that there was a brief display of links on Respondent’s website that directed users to Complainant’s competitors in the recent past. ”
Those links are no longer present.”
“Whether or not that recent display of links to competitors was a deliberate act for which Respondent has responsibility does not, in the Panel’s view, shed light on the question of bad faith registration nearly six and one-half years ago. ”
“The Panel appreciates that it can be difficult for a complainant to prove a respondent’s intention at the time of registration.”
“The only allegations touching on the element of bad faith registration are limited to the following: “It is held that the Respondent has registered and used the domain name to disrupt the Complainant’s business. The website is disruptive to the Complainant’s business since it results in potential customers being confused or misled into believing that the website is somehow affiliated with, or sponsored by, the Complainant.”
“The Panel rules that the Complaint fails to establish bad faith registration directly, since it does not provide any evidence relating to bad faith registration. ”
“Likewise, although the Complaint alleges customer confusion and disruption to Complainant’s business, there is no evidence submitted to support these allegations. Further, the Complaint provides no evidence of the scope of public recognition for Complainant’s mark or any other circumstances that could potentially support the Panel making an inference of bad faith registration.”
“Unlike the case with a less descriptive trademark, it cannot be said in this case that there is little chance that Respondent was not aware of the trademark when registering, since “masai” is a dictionary word and, even allowing the possibility that the trademark was known to Respondent at the time of registration, the registration could have been in good faith and for a legitimate purpose if Respondent’s use of a common word was intended to be descriptive, as explained above.”
The Panel concludes that the Complaint fails for lack of evidence that the disputed domain name was registered in bad faith. The Complaint does not fulfill Complainant’s burden under Policy paragraph 4(a)(iii)