NYLSTAR S.A. of Blanes, Girona, Spain lost its bid to gain control of the domain name Meryl.com
The complainant registered the Domain Name on September 26, 1997 and let it lapse and drop in November 2006.
The current domain owner, is Meryl Blog of St-Nicolas, Quebec, Canada, which was represented by ESQwire.com
A majority of the three member panel Clive Elliott Q.C., and The Hon Neil Brown Q.C. found that in the Majority’s view (2-1) it is not unreasonable that relevant delay can be taken into account, however panelist Manuel Moreno-Torres, while concurring on the outcome, expressed a dissenting view on the issue of delay and laches.
All and all an interesting case with a good discussion of laches & delay to enforce rights.
Here are the highlights:
“Complainant was founded in Girona, Spain in 1923. It specializes in the design, production, distribution and retail of clothing and textile products, especially nylon, under the trademarks MERYL and NYLSTAR. It asserts that its MERYL brand is registered in more than 100 countries around the world, and it serves customers in more than 60 countries.
Complainant further asserts that it is the owner of a substantial portfolio of registered trademarks, many of which consist of or include the word “MERYL”, as well as the domain name
“Complainant suggests that the word “meryl” is an invented or coined word, without any meaning and that the Domain Name is identical to its trademark MERYL in all respects, with only the addition of the suffix “.com”.”
Respondent noted that Complainant has waited ten years to initiate a claim in an attempt to “recover” a domain it allowed to expire in 2006, which was not disclosed in the Complaint. According to WhoIs, Complainant . Respondent notes that since 2006 the Domain Name has been registered and used by others unrelated to Complainant.
“Notwithstanding whatever rights Complainant may have in Complainant’s Trademark, Respondent contends that it has no links related to Complainant on its webpage. It points out that a Google search for “Meryl” revealed 24,000,000 results and the results on at least the first five pages show only third-party results, all unrelated to Complainant.
Accordingly, while Respondent acknowledges that it is using the Domain Name and doing so for commercial purposes it argues that this is a legitimate use which does not depend on any improper registration or use of the Domain Name.
Ultimately, the question comes down to whether Complainant has established that Respondent lacks rights or a legitimate interest in the Domain Name.
The Panel accepts unanimously that pay per click links may be acceptable under certain circumstances. However, the acceptability or otherwise of this practice will depend largely on the manner in which the links are created and used. The Panel considers that Respondent is using the Domain Name in an acceptable manner.
A number of questions have to be weighed up and determined in proper context. The relevant context in this particular case includes that:
1. the Domain Name has been subject to previous registration, transfers and or arrangements;
2. at least on the face of it, there is no evidence of misuse of the Domain Name;
3. the Domain Name is a well-known given name (and therefore has its own inherent value as a domain name); and
4. there was inaction on Complainant’s part (in this case arguably in the order of six years and four or five different owners of the Domain Name).
The previous registrations of the Domain Name were as set out in Annexure 2 of the Response as follows:
1. eCommerce Advertising Ownership of the Disputed Domain Nov, 2006 through Oct 2007;
2. BWI Domain Manager Ownership of the Disputed Domain Oct 2007 through June 2009;
3. Terra Serve Ownership of Disputed Domain June 2009 through May 2010;
4. Fei Zhu Ownership of Disputed Domain May 2010 through June 2013; and
5. Meryl blog or Kurt Richter as from or around June 29 2013.
“The question is whether the Panel should take into account the above registration history and circumstances or should downplay or even ignore these circumstances and assume for the purposes of its analysis that the purchase of the Domain Name in June 2013 is to be treated in all respects as a new registration.
The Panel accepts that there may well be a strong argument for treating a domain name as a new registration (notwithstanding any prior registration of the said domain name). The Panel asserts that this is the case particularly if the respondent misuses the domain name, as that could lead to a legitimate inference of sharp practice. However, in this case there is no such evidence, which makes the Majority hesitate to apply that rule too rigidly.
While laches may be an equitable concept, the Majority does not accept that it should be precluded entirely from taking delay into account, in weighing up the merits of a complaint and lengthy delay should, in its view, be a factor which either supports a complaint or in the case of relatively lengthy delay (as here) may work in Respondent’s favour; particularly given that well-known, short and easily pronounceable words such as Meryl have their own currency in the domain name space. That is, quite apart from any commercial entities which may use that name as a trademark.”
“In the Majority’s view it is not unreasonable that relevant delay can be taken into account. It seems extreme to say as some panels have said that it is irrelevant and cannot even be looked at. Further, the Majority respectfully adopts the position that this is contrary to the Rules which make it clear that the Panel is able to take any relevant consideration into account particularly “principles of law.”
The Majority considers that this is the type of case where delay and the overall circumstances can and should be taken into account. This includes that Complainant did not address in its Complaint that Complainant or a predecessor in business used to own the Domain Name and appears to have let it lapse.
“The Majority considers that it is able to draw an inference that Complainant may have decided, after some years of inactivity, that it should take steps to reassert rights over the Domain Name. It may be entitled to do that. However, if other parties have arranged their own affairs and taken steps to advance their own interest in the meantime, then this is a circumstance which also needs to be taken into account and the respective interests of the parties balanced, as best the Panel can.”
“The Panelist Manuel Moreno-Torres, while concurring on the outcome, does however wish to express a dissenting view on the issue of delay and laches. The individual Panelist’s view is that the concept of laches is a common law concept which has no application generally, or in this case. Nor is the doctrine of laches applicable under the UDRP according to the consensus opinion among of the Panelists.” Therefore, having considered the purchase of the Domain Name as a new registration, the Panelist is of the opinion that there is no lengthy delay in two years and eight months. Thus, the Panelist considers that Panel should not draw inferences against Complainant.
Having considered all of the above and on balance the Panel considers that Respondent has provided a sufficient explanation and justification for its use of the Domain Name. For these reasons the Panel considers that Complainant has failed to satisfy this ground.
A finding of bad faith requires a complainant to show by a preponderance of evidence that it is more likely than not that Respondent acted in bad faith. The Panel finds here that such a showing has not been made. A deliberate intent to associate with a well-known woman’s name is not sufficient to show bad faith in this instance.
Complainant relies on its Google search results to show that the MERYL mark is well known and that that meaning trumps the otherwise well-known female name Meryl. However, the Google search relied upon is for the “Meryl brand”. This provides a weighted response in favour of the brand or trademark as opposed to the word per se and the results need to be viewed in light of this.
Dictionary.com defines Meryl as a female given name, form of Merle. It is also apparent that the well-known American actress Meryl Streep completely dominates the results of a generic Google search for “Meryl”, followed by a number of other women who have made their name in other fields but who all have the same first name. This suggests that the primary meaning of the word Meryl is as a woman’s first name, rather than as a trademark or trade name of any particular commercial entity.
“Respondent has not been shown to be using the MERYL Trademark as part of the Domain Name so as to knowingly divert or attract sales of goods or services normally associated with Complainant. Instead, it appears to be simply monetising the word Meryl. The Panel concludes that it is doing so because of the inherent value of the word Meryl, rather than to trade off Complainant’s Trademark or name.”
“Ultimately, the Panel concludes that Respondent was entitled to register the Domain Name, as it has done and that there is insufficient evidence to make out an allegation of bad faith registration or use.”
The consensus view of panels on this subject is that “the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.
Here, the Panel concludes that the relevant circumstances include the fact that Meryl is a well-known woman’s name and that Respondent has not used the Domain Name in a manner which would necessarily associate it with Complainant. In this case, the Panel finds that Complainant has failed to demonstrate by a preponderance of evidence a deliberate intent by Respondent to create a likelihood of confusion with Complainant or Complainant’s Trademark in order to attract, for commercial gain, Internet users.
For these reasons the Panel is not satisfied that bad faith registration and use has been established.
Date: June 13, 2016