Jakri ApS of Vildbjerg, Denmark just lost a UDRP decision on the domain name indura.com which was owned by Sanela Jankovic of Copenhagen who represented himself in the proceeding.
The domain was acquired through a NameJet.com auction in just February of this year.
Here are the relevant facts and findings by the three member panel”
The Complainant is part of the Indura group of companies, which was founded on August 24, 1988.
On December 22, 1997 Indura A/S was established as a wholly owned subsidiary of the Complainant.
The Complainant holds the intellectual property rights of the Indura group and applied for two Community trademarks on January 7, 2013, i.e. INDURA (application no. 011338118) and INDURA & design (application no. 011338191).
At the time of the filing of the Complaint, the disputed domain name was registered in the name of the Respondent Sanela Jankovic, who is still registered as domain owner in the WhoIs database.
The Respondent Jesper Wennick acquired the disputed domain name on February 26, 2013 in a public Internet auction at the auction site <namejet.com>.
“The first point to be dealt with is the identity of the Respondent. The disputed domain name is still registered in the name of the Respondent Sanela Jankovic. However, the Respondent Jesper Wennick provided evidence that he acquired the disputed domain name prior to the filing of the Complaint in the present proceeding and that the transfer of the disputed domain name failed because the Complaint had been lodged in the meantime. As the information in the WhoIs database is not constitutive of the ownership of the disputed domain name, the Panel will treat Jesper Wennick as beneficial holder of the disputed domain name and will refer to Jesper Wennick as the Respondent for the purpose of this proceeding.”
The Complainant does not own any registered trademark rights in INDURA but has so far only applied for the registration of two Community trademarks including such term.
The Complainant relies on unregistered trademark rights in Denmark in INDURA based the use of such term since its establishment in August 1988 in the course of trade with fittings, flanges, and other related products.
To establish common law trademark rights under the Policy, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.
Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.
A conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice. In fact, specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
In the Panel’s view, the evidence provided by the Complainant is not sufficient to establish that the Complainant enjoys common law trademark rights under the UDRP in the term “indura”.
In support of its claim of unregistered trademark rights, the Complainant has filed inter alia prints from the website at <indura.dk>, marketing material, invoices, and business cards.
No claim of a secondary meaning of the company name Indura has been made by the Complainant and absolutely no evidence in support of such claim has been presented to the Panel.
Moreover, the Complainant in this case is Jakri ApS (and not Indura A/S), and the Complainant Jakri ApS did not claim or provide any evidence that it is owner or licensee of unregistered rights in INDURA (the fact that Indura A/S is a wholly owned subsidiary of the Complainant is not sufficient in this regard).
The Panel therefore cannot but find that on the record of these Policy proceedings the Complainant only established that the name Indura has been used as a trade name for Indura A/S and not that the Complainant Jakri ApS can rely on a secondary meaning in Indura. The Complainant thus failed to satisfy the first element of the Policy.
It appears that the Respondent acquired the disputed domain name in a public auction before knowledge of the present dispute.
Furthermore, the Respondent provided evidence that the term “indura” is used by several third parties in connection with their respective products.
The fact that the content of the website at the disputed domain name remained unchanged after its acquisition by the Respondent (still including a sales offer) is per se not sufficient for a finding of bad faith registration and use in the Panel’s view either.
From the Panel’s own experience, domain names acquired on the secondary market (as in the present case via an auction at NameJet) are sometimes blocked against changes with regard to the information available in the WhoIs database and the nameserver settings for a couple of days after the acquisition due to the fact that the implementation of the purchase and the allocation of the domain name to the buyer’s account with its registrar may take some time. Therefore, the fact that the disputed domain name was still offered for sale after the acquisition by the Respondent must not automatically be imputed to the Respondent.
Accordingly, the Panel concludes that the third requirement of the Policy has not been established either. The Complaint must therefore fail in this regard as well.