The Complainant INDÚSTRIA E COMÉRCIO DE CONFECÇÕES DI MIRMAY LTDA of Brazil, lost its bid to grab the domain name DIMY.com from a chinese registrant.
The domain name was registered on November 16, 2001.
The Complainant was founded in 1994.
Here are the relevant findings of the one member panel:
It manufactures and sells a wide range of fashion products under the Trade Mark and the trade mark DI MIRMAY, including clothing, bags and accessories.
The Trade Mark is derived from the Complainant’s trademark DI MIRMAY, which is part of the
DIMY/DIMIRMAY is one of the most desired fashion brands in Brazil, particularly amongst teenage girls and young women. The Complainant’s DIMY products constantly appear in fashion editorials in the most important Brazilian fashion magazines.
The Complainant’s DI MIRMAY and M device trade mark was registered in Brazil with a filing date of December 20, 1996.
Its registration for the word mark DIMY-DIRMAY was registered in Brazil with a filing date of August 22, 2005.
The filing date for each of its registrations for the Trade Mark in Brazil is August 27, 2007.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The Complainant claims unregistered trade mark rights in the Trade Mark dating back to 1996. However, the earliest evidence of use filed with the Complaint is an excerpt from a Brazilian fashion magazine dated July 2007. The Panel is therefore unable to conclude, on the evidence, that the Complainant’s rights in the Trade Mark predate July 2007.
Although the disputed domain name was registered six years before (1) the date of registration of the Trade Mark; and (2) the earliest available evidence of use of the Trade Mark, the consensus view in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (Second Edition) (“WIPO Overview 2.0”) in relation to this issue is as follows:
“Registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP”.
The disputed domain name contains the Trade Mark in its entirety. The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant claims to have used the Trade Mark since 1996. If this were the case, then in the Panel’s view, given the content of the Website from 2008 until recently, this would be a clear cut case of bad faith registration and use of the disputed domain name.
However, as detailed above, the Panel is unable, on the evidence, to conclude that the Complainant had any registered or unregistered rights in respect of the Trade Mark which predate 2007. Therefore, on a strict, literal interpretation of the UDRP, at the time of registration of the disputed domain name, the Respondent could not have contemplated the Complainant’s then non-existent rights, and, accordingly, the third element under paragraph 4(a) of the Policy (which requires bad faith registration and use) would not be made out.
This Panel has considered adopting a less rigid approach in determining the question of bad faith in the present proceeding and, looking at the totality of the circumstances, assess the concept of “bad faith registration and use” as a unitary concept (see paragraph 3.1 of the WIPO Overview 2.0). In this Panel’s view, such an approach may be more appropriate in cases such as the present, where the evidence clearly shows the Respondent, upon becoming aware of the Complainant and its Trade Mark some time in or around 2008, has deliberately changed the content of the Website so as to intentionally attract, for commercial gain, Internet users to the Website.
The Panel would note further that, at some stage following the filing of the Complaint, the content of the Website has been changed completely. The disputed domain name is currently resolved to a Chinese language website, with no reference whatsoever to the Complainant or to fashion products. All of this serves to significantly undermine the assertions of the Respondent regarding the Respondent’s purported bona fide and genuine use of the disputed domain name, and lack of bad faith registration and use.
Whilst sympathetic to the Complainant and noting the line of reasoning put forward in Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-Solutions, supra, relied upon by the Complainant, the Panel is mindful however that the majority of UDRP panelists continue to adhere to a more literal interpretation of the third limb under paragraph 4(a) of the Policy.
In all the circumstances of this proceeding, on the evidence filed, and given the consensus position adopted by the majority of panelists regarding the Octogen line of authorities, the Panel therefore feels bound to reach the conclusion that the requisite element of bad faith has not been satisfied, under paragraph 4(b)(iv) of the Policy.
The Panel notes, for the record, the Respondent’s allegations of reverse domain name hijacking are unwarranted.
There is no evidence to suggest that the Respondent has any relevant trade mark rights which predate the established rights of the Complainant in the Trade Mark, or, indeed, that the Complainant should have been aware of any such rights prior to filing the Complaint in this proceeding. Moreover, as indicated above, the history of the Respondent’s use of the disputed domain name suggests that the Respondent’s behaviour has, since at least 2008, been opportunistic.
For all the foregoing reasons, the Panel concludes that, although the disputed domain name has clearly been used in bad faith, it was not registered in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has not been made out.””