BREAD & Butter GmbH & Co. of Berlin, Germany, which operates under the domain name 14oz.net just lost its bid to gain control of the domain name 14oz.com in a one person UDRP decision.
In the year 1999 the Complainant established a retail and wholesale business under the brand “14oz”.
The business mainly focusses on the design, production and retailing of high quality apparel. Until 2004 the Complainant maintained its business in the city of Cologne and then moved to Berlin. In October 2012 the Complainant opened a second retail-facility on Berlin-Kurfürstendamm.
The Complainant has a registered mark for 14OZ, filed on July 15, 1999 at the German Trademark Office and registered on January 19, 2000
The disputed domain name was first created on March 28, 2000. As confirmed by the Registrar, the disputed domain name was registered by the Respondent on December 31, 2003 (the day the disputed domain name was transferred to the Registrar, Go Daddy).
However, according to information attached to the Complaint (past WhoIs reports from “Domain Tools”) the Respondent was the registrant of the disputed domain name in 2001, before the 2003 date when the Registrar confirmed first registration by the Respondent. On its face, this evidence appears inconsistent, although in each case sourced from a third party.
As noted above, the disputed domain name was first registered in 2000, and first registered to the Respondent in 2003 (or earlier, according the Complaint). This means that the disputed domain name was registered around 13 years before the Complainant filed the Complaint. The Complainant provides no explanation as to why it took so long to file the Complaint.
The non-applicability of the defense of laches (i.e. undue delay) in UDRP proceedings has long been recognized by UDRP panels, over many years and a large body of jurisprudence.
While this Panel is aware that a small number of UDRP panelists have, on occasion, sought to put this question in issue (see e.g. Laminex, Inc. v. Yan Smith, NAF Claim No. FA1470990), this Panel sees no compelling reason to disrupt or depart from years of well settled UDRP jurisprudence on this point.
This does not mean that a delay may not be relevant in this proceeding, to the extent that it may relate particularly to the matters the Complainant must provide under paragraph 4(a)(ii) or (iii) of the Policy. To the extent issue of delay is relevant in these respects, the Panel has addressed it below.
What is not clear, from the case file in this case, is the date at which the Respondent first registered the disputed domain name.
According to evidence in the Complaint, based on a search of WhoIs records in Domain Tools, the disputed domain name was registered by the Respondent at least in 2001. According to the Registrar’s confirmation to the Center, the disputed domain name was first registered to the Respondent in 2003. It is possible to interpret from this that the ownership of the disputed domain name changed over the period since it was created, and was then re-registered by the Respondent in 2003. The alternative is that the evidence is inconsistent and that the Respondent has either been the continuous registrant since 2000 or 2001, or first registered the disputed domain name in 2003.
Ultimately, the Panel has not issued a panel order for further information to seek to clarify this issue.
This is because, even on the most favorable case to the Complainant, the Panel finds on the balance of probabilities that the disputed domain name was not registered or has not been used in bad faith, for the purpose of paragraph 4(a)(iii) of the Policy.
The most favorable case to the Complainant is that the disputed domain name was first registered by the Respondent (as confirmed by the Registrar) in 2003.
However, even if this were the case, the Panel does not consider that the evidence sufficiently supports a finding that the disputed domain name was registered, or has been used in bad faith. Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s trade mark rights and reputation. The factors against such a finding are, in the Panel’s view, as follows.
– Firstly, the Complainant’s mark is comprised of a term that has a common meaning – relating to a unit of measurement. It is also, notably a unit of measurement (Imperial) that is in common use in the USA, where the Respondent has its address.
– Secondly, while the Complainant’s use of its mark began in 1999, and has marks registered in a number of jurisdictions, the Complainant’s evidence indicates that it conducts its business primarily from two retain outlets in Berlin. The Complainant’s evidence does not suggest that its reputation was so strong that it is likely the Respondent was aware of it in 2003.
– Thirdly, there is little evidence that the Respondent has, in fact, sought to use the disputed domain name to trade on the Complainant’s goodwill in its mark. None of the specific businesses which have used the disputed domain name (whether directly or via services provided by the Respondent) relate to the Complainant’s area of business of clothing and footwear. This does not strongly suggest that the Respondent was motivated, in registering or using the disputed domain name, to unfairly exploit the Complainant’s goodwill in its mark.
– Fourthly, the Respondent has his address in the USA. Apart from its mark registered with the USPTO, the Complainant did not provide strong evidence of its reputation in that jurisdiction. Some panels have found constructive bad faith, based on a Complainant’s registered mark with the USPTO and in cases where both are resident in the USA. However, as noted in the WIPO Overview 2.0, panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP. Consistent with the majority of panel opinion, this Panel has also not previously applied a concept of constructive notice.
– Fifthly, the Panel declines to follow the Complainant’s suggestion, based on the ‘Octogen’ line of cases, that bad faith may be found if the Respondent can be said to have only used the disputed domain name in bad faith. As previously discussed by this Panel, the majority of panel opinion has found that the requirement under paragraph 4(a)(iii) of the Policy is a conjunctive requirement – requiring both bad faith registration and use. .
Had the Respondent registered the disputed domain name in 2000, the evidence set out (as the second factor) above would be stronger in the Respondent’s favor.
The natural inference is that the Complainant’s reputation would not have been as well established in 2000 as it was in 2003 (the alternative finding of when the disputed domain name was first registered to the Respondent). As such, it is even less likely that the Respondent would have been aware of the Complainant’s mark when the disputed domain name was registered.
The Panel acknowledges that there is at least one countervailing factor.
The term “14oz” seems an unlikely domain name to choose by accident, and there is no self-evident reason in the case file for the Respondent to have chosen it. However, ultimately the burden is on the Complainant to prove its case. Having regard to the more numerous factors set out above, the Panel does not consider that the alternative inference (that the Respondent has acted in bad faith) to be sufficiently strong.
For these reasons, the Panel finds that the Complainant has not established its case under paragraph 4(a)(iii) of the Policy.