G-Hold License B.V. just lost its bid to grab the domain name gsus.com which is owned by Vertical Axis, Inc in a UDRP.
gsus.com issued phonetically and slang for Jesus in Spanish.
Vertical Axis registered the domain name Respondent registered the disputed domain name on October 14, 2001.
Vertical Axis was represented by ESQwire.com
The three member panel of Petter Rindforth, The Honourable Neil Anthony Brown QC and Jonas Gulliksson found that the domain name that was registered in 2001 was not Registered or Used in bad faith but denied a finding of Reverse Domain Name Hijacking or a finding of laches.
The Complainant has a trademark on the term “G-SUS” which it filed with the United States Patent and Trademark Office (“USPTO”) (e.g., on July 6, 1998, and was registered March 19, 2002),
Here are the highlights:
Complainant uses the G-SUS trademark in connection with its stores and services worldwide involved in the fashion and lifestyle business. Complainant purports to hold multiple trademark registrations of the G-SUS mark, especially with the USPTO (e.g., Reg. No. 2,548,688, filed July 6, 1998, registered March 19, 2002), arguing that its rights should be seen by this Panel to date back to the filing date. The Panel notes that where a relevant trademark registration exists with the USPTO, Policy ¶ 4(a)(i) rights exist in a trademark beginning at the filing date.
Complainant argues that Respondent’s domain name is confusingly similar to the G-SUS mark as it merely eliminates the hyphenation and adds the gTLD, “.com.”
The Panel agree that the elimination of the hyphen and the addition of the “.com” gTLD to the G-SUS mark fails to negate a finding of confusing similarity under Policy ¶ 4(a)(i).
While Respondent contends that the domain name is comprised of common and generic/descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under the Policy
The Panel is not convinced that Respondent (based in Australia) had knowledge of Complainant’s trademark G-SUS and the use of GSUS at the time of the registration of the disputed domain name .
The Panel especially notes that was registered before the first applications for the trademark GSUS.
The word “Gsus” has several meanings, and may be used as slang for “Jesus”, a phonetic similarity to the Spanish pronunciation of “Jesus”, or mean the G Suspended Chord when playing piano or guitar.
The domain holder has used the disputed domain name periodically for religious related topics and links, and in between for more general pay-per-click web sites.
Respondent argues that it had neither actual nor constructive knowledge of the Complainant’s trademark or its rights in the trademark, which is evident as Respondent has never attempted to target Complainant or its products.
Rather, Respondent argues that its 2002 registration of the domain name was done in good faith.
This Panel agrees that, in light of the available evidence and surrounding facts that it has not appeared that the similarity between the domain name and the trademark was deliberately created.
Thus the Panel concludes that Complainant failed to prove that the disputed domain name was registered and is being used in bad faith.
Doctrine of Laches
While the disputed domain was registered on February 1, 2002 and the Complaint was filed over thirteen years later, Respondent argues that the Doctrine of Laches applies as thirteen years is “an eternity in Internet time” and Complainant was likely aware of the domain name.
However, the Panel finds that the doctrine of laches does not apply as a defense, and therefore chooses to disregard Respondent’s assertions.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.
However, even as the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. S
In this case, Complainant has, both in the Complaint as well as in Complainant’s Additional Submission, listed a number of reasons for the filing of the Complaint, including facts that the Panel neutrally accept as grounds for Complainant’s decision to use the UDRP as a way to solve the dispute.
The Panel therefore concludes that Complainant has not been engaged in Reverse Domain Name Hijacking.