A three member UDRP panel just handed over the three letter domain name EHF.com to the European Handball Federation
The panel of Flip Jan Claude Petillion, John Swinson and The Hon Neil Brown Q.C. found that the domain was parked, listed for sale for $150,000, owned by someone who is in the business of domaining and was registered 5 years after the trademark of the Complainant was filed.
It seemed the response from the domain holder was way over the 5,000 word limit but its not clear how that effected the decision
Here are the highlights:
“The Panel notes that the Disputed Domain Name
Accordingly, Complainant has made out the first of the three elements that it must establish.
B.2. Rights or Legitimate Interests
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent uses the Disputed Domain Name to refer to a website incorporating pay-per-click links which, at least intermittently, relate to handball and the Complainant.
According to the Panel, such use of the Disputed Domain Name is detrimental to the Complainant and cannot be considered to constitute a bona fide commercial or fair use
In view of the foregoing, the Panel considers that the Complainant has also made out the second of the three elements that it must establish.
B.3. Registered and Used in Bad Faith
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the EHF trademark at the moment it registered the Disputed Domain Name. The Complainant has valid trademarks in the Benelux, where the Respondent is located. At least two trademarks of the Complainant were registered in 1998, 5 years before Respondent acquired the Disputed Domain Name.
A simple trademark search on the Internet would have revealed the presence and use of the EHF trademark by Complainant.
Moreover, the historical Google searches included in the annexes to the Response show that there were already links to the Complainant and its trademarks between 1999 and 2000 on the website linked to the Disputed Domain Name.
Complainant also shows that an archived version of the website mentioned the sign “ehf” for the first time in April 2004, a few months after Respondent acquired the Disputed Domain Name.
The sign was mentioned in connection with sports, which is a further indication that Respondent was aware of the Complainant.
Respondent states that the Disputed Domain Name was acquired as a large portfolio purchase, and mentions that it has numerous other domain names in its portfolio.
The Panel notes that Respondent also appears in a large number of UDRP disputes, which further indicates that Respondent is in the business of selling domain names.
The Panel finds that paragraph 2 of the Policy implicitly requires some good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, especially when Respondent is a professional domain name registrant reseller
There is no evidence in the record that the Respondent in the present case engaged in any trademark review before registering the Domain Name, listing it for sale for USD 150,000 and using it to redirect visitors to a website filled with advertising links.
Such review might not be considered necessary in registering a domain name containing “dictionary words”, but the likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater where the domain name is not a dictionary word or descriptive phrase. This is particularly true for three- or four-letter strings (See e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No.. D2006-0964).
As mentioned above, Respondent uses the Disputed Domain Name to refer to a website incorporating pay-per-click links which, at least intermittently, relate to handball and the Complainant.
While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.
Respondent gives a detailed explanation of the pay-per-click method it used. It argues that the “periodic appearances[of references to the Complainant]were related to the Complainant’s advertising activities and were not related to any actions undertaken by the Respondent.” The Panel does not accept this argument, as Respondent is solely responsible for the content of websites linked to the Disputed Domain Name
The Panel concludes that, by using the Disputed Domain Name incorporating the Complainant’s trade mark in connection with a website containing links relating to the Complainant and its trademarks, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. In accordance with 4(b)(iv) of the Policy, this is evidence of registration and use in bad faith.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name