Universal Assistance S.A. of Buenos Aires, Argentina, just won a UDRP against Mike Mann’s Domain Asset Holdings, LLC on the domain name UniversalAssistance.com
The Complainant had a trademark on the term, Universal Assistance since 1994 but the panel seemed to be willing to give them a common law right to the term even if they didn’t have the trademark.
The company official site was universal-assistance.com which they registered in 2004.
Mike company registered the domain subject to the UDRP in 2007.
The panel didn’t like the parking links on the domain, the fact that Mike quoted the Complainant a price of $50,000 to buy the domain and held several other UDRP losses against Domain Asset Holdings.
Here are the relevant facts and findings by the one member panel:
“The Complainant is a company incorporated in Argentina in 1980, providing travel health insurance in and outside Argentina. According to the Complainant, the company is operational in 150 countries and provides insurance to over 10 million people a year. It has trade mark registrations in Brazil, Argentina, Paraguay, Nicaragua and Colombia, with the oldest registration dating back to 1994. The Complainant registered the domain name universal-assistance.com in 2004”.
“The Respondent is a company based in the USA and is in the business of owning, developing and selling domain names.”
“It registered the Disputed Domain Name on December 9, 2007.”
“Despite the Respondent’s contention that “Universal Assistance” is a generic or descriptive term and cannot be registered, the Panel finds that the Complainant has rights in respect of the UNIVERSAL ASSISTANCE trademark on the basis of its various registrations in South America, with the oldest registration dating back to 1994″.
“Even if the Complainant was found not to have a valid trade mark registration for the UNIVERSAL ASSISTANCE trade mark, it is well-established that marks which may be generic or descriptive, but have gained a certain distinctiveness through use, should be considered a trade mark or service mark in which a Complainant has rights for purposes of the Policy.
“In its Supplementary Response, the Respondent produced a number of WhoIs records to illustrate that the hyperlinks on the website of the Disputed Domain Name belong to the Respondent, and that the Disputed Domain Name is used to advertise the Respondent’s goods and services. I
“n the Panel’s opinion, the evidence provided by the Respondent is of low probative value and therefore insufficient to overcome a prima facie finding of no rights or legitimate interests in the spirit of paragraph 4(c)(i) of the Policy.”
“Furthermore, this appears to be a mere display of hyperlinks, which although may lead to websites that are owned by the Respondent, establish no connection to the Disputed Domain Name or a name corresponding to the Disputed Domain Name such that would support a finding of a right or legitimate interest in the Disputed Domain Name.”
“The purported use of the website to which the Disputed Domain Name directs fails to show any monetary or intellectual investment that would support the Respondent’s submission that the website was used for a bone fide offering of goods or services. ”
“It is also clear, in the Panel’s opinion, that no legitimate noncommercial or fair use is being made of the Disputed Domain Name without intent for commercial gain (paragraph 4 (c)(iii) of the Policy).
“In this case there is a notice on the top and bottom of the screen advertising that the Disputed Domain Name is for sale. ”
“In addition, the Respondent admits that it offered the Disputed Domain Name to the Complainant for USD $50,000. ”
“As addressed in the preceding heading, the hyperlinks advertised on website of the Disputed Domain Name are not enough, in the view of the Panel, to amount to a bone fide use of the Disputed Domain Name and should be disregarded. ”
“The evidence taken as a whole, suggests that the Respondent did not register the Disputed Domain Name other than to offer it for sale (Training Channel, SA v, Domain Asset Holdings, WIPO Case No. D2011-0875). ”
“The fact that the Complainant was the first to reach out to the Respondent to purchase the Disputed Domain Name is of no relevance.”
“Furthermore, any doubt in the minds of the Panel as to the motives of the Respondent in registering the Disputed Domain Name is dispelled by the fact that the Complainant puts forward evidence of the Respondent’s pattern of registering domain names that involve trade marks, companies or businesses of other well-known third parties. The Respondent was involved in several disputed domain name disputes including the following: Training Channel, S.A v. Domain Asset Holdings, WIPO Case No. D2011-0875; Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC, WIPO Case No. D2011-2137 ; and Facebook, Inc. v. Domain Asset Holdings, WIPO Case No. D2011-0516.”
“Previous UDRP panels have found against the Respondent for all of the above-listed domains for reasons similar to those already discussed by this Panel.”
“The Panel has taken due note of all of the Respondent’s contentions; however, the Panel does not find sufficient evidence on the provided record to establish that the Respondent did not register and/or use the Disputed Domain Name other than in bad faith. Given the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name.”
“The Panel notes that the Respondent denies that the Complainant has a valid trade mark registration since 1997, yet seeks to rely on this fact to invoke the doctrine of laches. ”
“Accordingly, the Panel does not find that the doctrine of laches apply on this ground.”