ICA Weekly UDRP Case Summary Digest – Volume 1.3

ICA Weekly UDRP Case Summary Digest – Volume 1.3

Toros Tarım Sanayi ve Ticaret Anonim Şirketi v. Mehmet, Metbil Teknoloji / Toros Fidancılık Özel Ağaç Tarım ve Hayvancılık Pazarlama Ticaret Limited, WIPO Case No. D2021-1464

Domain Name: >>TorosTarim .net<<

Complaint Denied

Panelist: Mr. Dilek Ustun Ekdial

Brief Facts: The Turkish Complainant was founded in 1974 in the agricultural sector. Since 2005, the Complainant’s tradename has been Toros Tarım Sanayi ve Ticaret Şirketi and Complainant owns the ‘TOROS’ device mark, regarded as well-known in Turkey. The Complainant operated a website at <toros .com .tr> since 1997. The disputed Domain Name TorosTarim .net was registered on June 6, 2020 and has an active website. Since 2015, the official trade name for the Respondent is Toros Fidancılık Özel Ağaç Tarım ve Hayvancılık Pazarlama Ticaret Limited Şirketi. 

Held: Toros is a geographic descriptive term referring to a mountain range in Turkey and Tarim means agriculture. The word ‘Toros’ has been part of Respondent’s company name since 2015 and the Respondent demonstrated a bona fide offering of goods and services. The Panel noted that to the extent the Complainant considers it may have a broader trademark or unfair competition claim against the Respondent, nothing in the present decision precludes them from addressing that in a competent court.

Complainant’s Counsel: Gün & Partners, Turkey.

Respondent’s Counsel: Self Represented.

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Grupo Nacional Provincial, S.A. v. Privacydotlink Customer 4270030 / Yancy Naughton, WIPO Case No. D2021-1136

Domain Name: >>GNP .com<<

Complaint Denied  

Panelists: Mr. Nick J. Gardner (Chair), Mr. Kiyoshi Tsuru, Mr. Gerald M. Levine  

Brief Facts: The Mexican Complainant operated since 1907 in the insurance sector as “GNP”. It has substantial business in Mexico and trademark rights for the term GNP in stylised form since 2006, as well as several other similar Mexican trademarks. The Respondent’s business offers .com domain names for sale and promotes them with its own designed logos. The Respondent invests in many three-letter (acronym) domain names. The disputed domain name was originally created on August 27, 1991. At one stage it was linked to an automatically generated “parking page” containing links to third party websites but now it resolves to a ‘for sale’ page.

Held: A domain name comprising a three-letter combination can readily be purchased for its inherent value as a general acronym. As a general rule it is likely that in such cases the registration will be for bona fide purposes. The evidence does not come anywhere close to establishing that the term GNP was so well-known as to mean a third party based outside Mexico, and operating in a completely different field, either was or should have been aware of the Complainant and its use of the term GNP.  The Panel sees no reason to disbelieve the Respondent when he says he had never heard of the Complainant and the contemporaneous correspondence corroborates that fact.

The Respondent has a legitimate interest in marketing domain names as those names seem to have been chosen for their generic nature and do not seek to capitalize on the Complainant’s trademark. So far as the parking page relied upon by the Complainant is concerned it is unclear exactly when and why that page was displayed, therefore, the probative value of this evidence is low, so as to hold any kind of bad faith.

Complainant’s Counsel: Legarreta y Asociados, Mexico.

Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States of America.

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Harman International Industries, Inc. v. Comercializadora JBL S.A.S., WIPO Case No. DCO2021-0042

>>JBL .com.co<<

Complaint Denied

Panelist: Mr. Edoardo Fano

Brief Facts: The American Complainant has a well-known ‘JBL’ brand operating in the field of audio technology. It owns several trademark registrations for JBL, including a Colombian trademark registration since April 4, 1986. The disputed Domain Name was registered on April 17, 2010 and resolves to an inactive website. On August 14 and September 3, 2020, the Complainant’s legal representatives sent a cease-and-desist letter to the Respondent but did not receive any reply.

Held: The Respondent’s company Comercializadora JBL Jesus Bermudez S.A.S. was incorporated on November 17, 2011, which demonstrates that the Respondent’s name substantially corresponds to the disputed Domain Name. The Panel, in accordance with its powers to consult matters of public record, found that the Wayback Machine online archive showed that the disputed Domain Name resolved to a website in 2013 and 2014, demonstrating what appears to be a bona fide offering of products, different from the Complainant’s products. Therefore, the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant’s Counsel: Estrategia Juridica Nacional e International S.A.S., Colombia.

Respondent’s Counsel: Self Represented.

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Atlas Numismatics, Inc. v. C Alexander, Atlas Rare Coin Wholesale, Inc., Atlas Rare Coins, Inc., Christian Antonelli, Jason Sullivan, Atlas Collectibles, Inc. f/k/a Atlas Gemstones, Inc., Brandon Mizrahie, WIPO Case No. D2021-1920

Domain Names: >>Atlasgemstones .com<< and >>Atlasrarecoins .com<<

Complaint Denied

Panelist: Mr. W. Scott Blackmer

Brief Facts: Since 2013, the Complainant operated a rare coin dealership under the name ‘Atlas Numismatics’ and holds a corresponding trademark USPTO registration since 2016. The Domain Name <atlasgemstones .com> was registered on July 30, 2016 and <atlasrarecoins .com> was registered on September 18, 2020. Screenshots from the Internet Archive’s Wayback Machine show that the Domain Name, <atlasgemstones .com> was used from 2016 for a website headed “Atlas Gemstones & Rarities” selling gold and other precious metals, gemstones, rare coins, and jewellery. In 2020 and 2021, the website listed the operator as Atlas Gemstones & Rarities, Inc., with a postal address in New York, United States.

Held: The Domain Name <atlasgemstones .com> was registered on July 30, 2016 and was used for the business of selling precious metals, gemstones, rare coins, and jewellery. There is no evidence in the record concerning the volume of the Complainant’s sales or its market recognition in 2016 or even in 2020, when the second Domain Name, <atlasrarecoin .com> was registered. “Atlas” is a dictionary word that is widely used for information resources about gems, coins, and investments. The “Atlas” portion of the Complainant’s mark is not highly distinctive or renowned and there are other, legitimate reasons for the Respondents to use “Atlas” in their names. Indeed, there is no evidence that the Complainant is known as “Atlas” rather than by its full mark. In the absence of other evidence supporting the inference that the Respondents had the Complainant’s mark in contemplation, the Panel did not find bad faith in the registration and use of the Domain Names.

Complainant’s Counsel: Law Offices of Armen R. Vartian, United States.

Respondent’s Counsel: Self Represented 

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Valeo, Valeo Service v. Anshuman Vyas, WIPO Case No. D2021-2125

DomainName: >>ValoService .com<<

Complaint Denied

Panelist: Mr. Warwick A. Rothnie

Brief Facts: The Complainants are part of Valeo Group which is in the automotive parts business. They have 191 production sites and over 111,000 employees. Group sales in 2007 were EUR 9,555 million rising to EUR 19,200 million in 2019 and EUR 16,400 in 2020. The first French trademark was registered in 1966 and in the USA, it has been registered since 2009. The Respondent is a domain name investor, who acquired the Domain Name in aftermarket in October 2020 and the domain name has been on sale at DAN for EUR 2,288.

Held: The sales of the group are very substantial and the Complainant’s VALEO trademark is well known. The Respondent categorically denies any knowledge of the Complainants and their trademarks. Importantly, the Respondent has provided evidence demonstrating that trademark / Google searches for “valo” do not show the Complainant trademarks. The Respondent is a domain name investor and registered a number of domain names because they correspond to descriptive words in foreign languages. The Respondent provides evidence demonstrating that “valo” in Finnish translates to “light” or “lamp” in English and conveys the idea of a service relating to lights. The Respondent’s explanation of how he came to register the disputed Domain Name is arguably unusual, but it is supported to an extent by his own past practices as evidenced by other domain names he has registered and also the trademark and Google searches. Accordingly, the Complainants have not established that the Respondent registered the disputed Domain Name in bad faith and the Complaint must fail.

Complainant’s Counsel: Tmark Conseils, France.

Respondent’s Counsel: Cylaw Solutions, India.

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Parcelhub Limited v. Scott Dylan, NAF Claim Number: FA2107001953560

Domain Name: >>ParcelHub .com<<

Complaint Denied

Panelist: Mr. Douglas M. Isenberg 

Brief Facts: The Complainant is the owner of U.K. trademark PARCELHUB since 2011 for use in connection with packaging of goods and storage container rental. The Complainant alleged that Domain Name redirects to the website of a competing company. The Respondent acquired the Domain Name for £8,825.01 and submitted that the disputed Domain Name is an apt name for the global package distribution platform that it is building. The Respondent also stated that the disputed Domain Name had previously redirected to a competing website but the Respondent did not cause this redirection himself and has since requested the withdrawal of this redirection.

Held: The Complainant provided no evidence that Respondent lacks rights or legitimate interests. Similarly, the Complainant has not specifically cited any of the bad faith circumstances set forth under the Policy. The Complainant sets forth no theory of bad faith other than a broad statement that the previous redirection of the disputed Domain Name caused confusion with the Complainant’s brand. This theory cites no evidence or precedent under the Policy (and, indeed, Complainant’s entire Complaint and additional submission is devoid of any such authority). Accordingly, in the absence of any evidence or relevant arguments from the Complainant, the Complainant has failed to prove the second & third elements of the Policy.

Complainant’s Counsel: Lewis Owen of Field Seymour Parkes LLP, United Kingdom

Respondent’s Counsel: Christiana Loizides of Sheridans Solicitors, United Kingdom.

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Dewberry Engineers Inc. v. Elizabeth Dewberry, Dewberry Designs, WIPO Case No. D2021-1791

Domain Name: >>DewberryDesigns .com<<

Complaint Denied  

Panelist: Mr. Christopher Gibson

Brief Facts: The Complainant is an engineering, architecture, real estate and emergency management firm with more than 50 locations in the United States. It has a website at <dewberry .com> which was registered on October 5, 1998. The Complainant’s service marks for DEWBERRY were registered on September 6, 2005. The disputed Domain Name was registered on April 13, 2021 using a privacy service. The Registrar confirmed the Respondent’s contact details, including that her last name is Dewberry and that she is located in Tennessee. The Respondent sent informal email communications to the Center in which Respondent indicated she stated: she is “a simple artist who debated selling earrings I haven’t even made on Shopify a while ago. I have obviously never done that, much less developed the site… “I am not working, I just had surgery, I have two kids. Whatever this is, I don’t have time for it.”

Held: The Panel noted that somewhat surprisingly, the Complainant maintained its allegation in its amended Complaint, even after the Respondent had been identified by the Registrar with the last name being Dewberry. The Complainant provided no evidence of the Respondent’s bad faith registration and use of the Domain Name to show that the Respondent targeted the Complainant’s DEWBERRY mark when registering the Domain Name, nor did it show improper use of the Domain Name for an active website or for any other bad faith purpose.

Complainant’s Counsel: McCandlish Lillard, P.C., United States.

Respondent’s Counsel: Self Represented.  

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Marine Travelift, Inc. v. Ellsen Lilian, NAF Claim Number: FA2108001958337

Domain Name: >>MarineTravelLifts .com<<

Complaint Denied

Panelist: Mr. Richard Hill

Brief Facts: The Complainant, founded in 1954, is a manufacturer of mobile boat hoists. In 1965, it began selling boat hoists under the mark MARINE TRAVELIFT and registered the trademark in the United States in 1984. The Complainant used <MarineTraveLift .com> as its primary website since at least 2002. The products are sold throughout the United States and internationally. The Complainant alleges that the Chinese Respondent used the disputed Domain Name to promote and sell products which compete with those offered by the Complainant and that the disputed Domain Name constitutes ‘typosquatting’. In a previous UDRP between the same parties, <MarineTraveLlift .com> was transferred. No Response was filed.

Held: The disputed Domain Name consists of the generic terms “marine travel lifts”. The term “travel lift” is a generic term that describes a certain type of hoist often used for boats and in marinas. Thus the disputed Domain Name is not so much a misspelling of Complainant’s mark, as a description of certain products. Past panels have found that, when a disputed Domain Name describes a Respondent’s business, it is used for a bona fide offering of goods or services under UDRP. The previous case cited by the Complainant had a different set of circumstances as the resolving website displayed images taken without authorization from the Complainant’s website. The Panel noted that the instant Complaint was filed three years after the registration of the disputed Domain Name and thereby weakens the Complainant’s arguments as well.

Complainant’s Counsel: Thomas A. Agnello of Michael Best & Friedrich LLP, Wisconsin, USA.

Respondent’s Counsel: No Response

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