The Complainant Sumol+Compal Marcas, S.A. of Carnaxide, Portugal, just won a UDRP against BuyDomains.com on the domain name Frize.com
This is actually the 2nd UDRP Buydomains.com lost this week, earlier this week they voluntarily handed over the domain name gamewinner.org but since it was a published UDRP decision is counts as a loss.
Here are the relevant facts and findings by the three member panel:
The Complainant is Sumol+Compal Marcas, S.A, a company incorporated in Portgual.
The Complainant was created in 2009 through the union of two companies, Sumolis and Compal.
The Complainant is a leading manufacturer of non-alcoholic beverages in Portugal.
The Complainant is the owner of numerous trade mark registrations, both word and composite, for FRIZE (the “Trade Mark”). The earliest of these registrations was granted on May 6, 1998 in Portugal.
The Respondent is BuyDomains.com which, since 1999, has been in the business of registering domain names that become available when an existing registration expires. The Respondent maintains a large portfolio of domain names, some of which it has acquired for the purposes of resale.
The Respondent registered the Disputed Domain Name on January 8, 2004.
“”The Respondent seeks to overcome the Complainant’s prima facie case by showing that it is using the Disputed Domain Name in connection with a bona fide business.
The CEO of the Respondent provides affidavit evidence that the Respondent’s business involves registering and maintaining “domain names that incorporate common and/or generic dictionary words, phrases, acronyms, abbreviations and/or descriptive terms for which the available evidence suggests no single party has exclusive rights”, some of which are offered for sale to the general public.
The Respondent submits that using the Disputed Domain Name to direct traffic to a website with sponsored links is a legitimate use within the terms of the Policy.
There are a number of UDRP decisions which have addressed the resale of domain names, or the use of domain names for websites with advertising or PPC links. The panel in Media General Communications, Inc. v Rarenames, WebReg, WIPO Case No. 2006-0964 summarized some of the relevant principles as follows:
“These practices are most likely to be deemed legitimate under the Policy when:
– the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
– the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
– the domain name in question is a “dictionary word” or a generic or descriptive phrase;
– the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
– there is no evidence that the respondent had actual knowledge of the complainant’s mark.”
Here, the Respondent is clearly in the business of registering and reselling domain names, as well as using them to display advertising links.
According to the affidavit of the Respondent’s CEO, the Respondent has made some efforts to avoid registering, using, and selling domain names that correspond to the trademarks of others.
There is no evidence before the Panel that allows the Panel to conclude on the facts of this case that the Respondent had actual knowledge of the Complainant’s Trade Mark at the time the Respondent registered the disputed domain name.
However, there is insufficient evidence before the Panel to establish that “frize” is a dictionary word, a generic phrase, or common surname.
The Panel has conducted its own investigations (as it is entitled to) and has not found an entry for “frize” in any dictionary in which the Panel has looked.
Further, on the facts of this case, the Panel is of the view that the efforts the Respondent made to avoid registering a domain name that is identical to the trade mark of another fall short of “good-faith efforts” (see further discussion in relation to bad faith below).
The Respondent is using the Disputed Domain Name on a website with PPC links that have little relevance to the Respondent’s asserted dictionary meaning or surname. The Respondent has had no other use or planned use of the term “frize”, and is offering the Disputed Domain Name for sale.
In light of the above, the Respondent has not demonstrated that the Respondent has rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie case. The Complainant succeeds on the second element of the Policy.
The affidavit of the Respondent’s CEO states that the Respondent has “developed proprietary, proactive technology” to avoid registering, using, and selling domain names that correspond to trade marks.
It states that this technology searches the United States Patent and Trademark Office.
As the Complainant had no registered United States trade marks at the time the Disputed Domain Name was registered, any search of the United States Trade Mark Office would have produced nil results.
However, the Internet is global and, as a professional domain name trader, it is this Panel’s view that the Respondent should have engaged in broader searches.
Accordingly, the Respondent should have been aware of the Complainant and the Trade Mark when it registered the Disputed Domain Name.
Even brief enquiries (e.g. a simple Google search) would have led the Respondent to the Complainant.
On the evidence provided, the Panel concludes that the Respondent was “willfully blind” in failing to make these enquiries
Furthermore, while the Respondent may not have had actual knowledge of the Complainant, it would have been aware of the traffic that the Disputed Domain Name was generating at the time it decided to acquire the Disputed Domain Name. It would be implausible that a professional domain name trader such as the Respondent would not have reviewed traffic details and search engine results before valuing and acquiring the Disputed Domain Name.
The Panel finds that the following further evidence bad faith registration:
– The Respondent is not using the website at the Disputed Domain Name to advertise products that compete with the Complainant’s products. However, the Respondent would be receiving Pay-Per-Click revenue from the website. In light of this, the Panel infers that the Disputed Domain Name was registered, at least in part, in order to profit from the trade mark value in the name.
– Although the website of the Disputed Domain Name purports to provide a link to “Vanity E-mail” services, none of the links on the website are being used for services related to “frize” as a surname (e.g. the provision of a vanity email service for a Mr. Frize).
The Panel finds, taking account of all of the circumstances of the case, the Respondent has registered and is using the Disputed Domain Name in bad faith. The third element of the Policy is satisfied.
The Complainant made submissions regarding the Respondent’s offer of the Disputed Domain Name for sale.
This offer does not appear to be directed to the Complainant.
The Panel takes the view that the Respondent’s offering of the disputed domain name for sale in the present case does not constitute bad faith.
If the Complainant and the Trade Mark were famous or very well-known, the Panel may have taken a different view on this point.