We hope you will enjoy this edition of the Digest (vol. 3.43), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Playhouse.com: Play Around and Find Out (playhouse .com)
‣ Nominative Fair Use: Lack of Disclaimer Not Fatal to Respondent’s Case (italysegwaytours .com *with commentary)
‣ Business/Contractual Dispute Outside The Scope Of The Policy (ae7 .net *with commentary)
‣ Complainant Reclaims Expired Domain Name through UDRP (wilkesbarrerugby .com *with commentary)
‣ Evidence of Reputation at Material Time is Crucial to Prove Bad Faith Registration (youngmazda .com)
‣ Respondent’s Bona-fide Use of the Complainant’s Trademark (cummins-uae .com)
Playhouse.com: Play Around and Find Out
Panelist: Mr. Robert Badgley
Brief Facts: The Complainant, incorporated in July 2022, claims itself to be “a subscription social platform free of overbearing censors that puts creators first” and an “OnlyFans Alternative… With Fewer Restrictions.” The Complainant holds three domain names for its online business: <playhouse .net .au> (registration date not known); <playhouse .fans> (registered on October 5, 2021); and <theplayhouse .fans> (registered on October 6, 2021). The Complainant claims common law rights in the mark ‘Play House’ and states that its unregistered mark PLAYHOUSE has been “actively and exclusively utilized since 2020” and as a result, “PlayHouse” brand has garnered substantial recognition and goodwill, both on domestic and international fronts, a narrative vividly illustrated through a plethora of media mentions and features in preeminent media outlets spanning continents from Australia to Asia, and traversing countries including but not limited to the USA, the UK, Canada, and Mexico.
The Respondent, a domain name investor, acquired the Domain Name on October 11, 2021, and currently resolves to a parking page. Previously it resolved a landing page announcing that the disputed Domain Name was available for sale for USD $250,000. The Respondent contends that he purchased the disputed Domain Name as an investment or development, for a substantial sum, because it was a premium dictionary word domain name. The Respondent further points out that, according to Wayback Machine, the first time a website appeared at the Complainant’s <theplayhouse .fans> address was December 25, 2021, and the first time any site appeared at <playhouse .fans> was October 7, 2022. The Respondent’s main contention is that it acquired the disputed Domain Name before the Complainant began to use the alleged PLAYHOUSE mark, and certainly before that mark achieved any notoriety (if it has achieved the same at all).
Held: Contrary to the Complainant’s statement that its alleged trademark PLAYHOUSE enjoys a “potent reputation and significant consumer brand recognition intricately associated with the Complainant’s name,” the Panel does not accept that bald and unsupported allegation. The Panel concludes, however, that the Complainant has proven, through evidence of use and some unsolicited media recognition demonstrated in the record, that it has established, since 2022, common law rights in the trademark PLAYHOUSE. The Panel also concludes that the Domain Name is identical to that mark.
The Complainant has not come close to establishing that the Respondent has registered and used the Domain Name in bad faith. The evidence presented here tends to suggest that the Respondent acquired the Domain Name before the Complainant had made any use of the PLAYHOUSE mark. The Respondent’s explanation for his motives and plans vis-à-vis the Domain Name are plausible and are essentially uncontradicted in this record, and his denial of any knowledge of the Complainant or the PLAYHOUSE mark is equally plausible.
The Respondent’s expressed desire to sell this valuable Domain Name for profit does not constitute bad faith here, given the lack of evidence of targeting the Complainant’s mark and, the fact that “playhouse” is a common word. If the Respondent is a competitor of the Complainant and registered the Domain Name with a bad faith motivation, it has not been shown on the record here. Given the foregoing, there can be no bad faith registration and use, and the Complaint must fail.
RDNH: The Panel finds that the Complainant has committed RDNH. The Complaint, while eloquently composed, is replete with hyperbole and unsupported claims. The Complainant misstates (at best) the timing of its first use of the PLAYHOUSE mark as a source identifier for its online subscription services. All the evidence presented in this case suggests that there was no such use of the mark in 2020, which is the Complainant’s repeated claim. The Complainant should have known perfectly well when it first launched a website using its PLAYHOUSE mark, which appears to have been after the Domain Name was registered. Finally, the Complainant makes spurious allegations against the Respondent, without even trying to support them. For instance, the Complainant asserts that the Respondent is its “significant competitor,” but offers not a shred of evidence to support this claim.
Complaint Denied (RDNH)
Complainants’ Counsel: Hayden O’Halloran, Australia
Respondents’ Counsel: Zak Muscovitch of Muscovitch Law P.C., Canada
Nominative Fair Use: Lack of Disclaimer Not Fatal to Respondent’s Case
Panelist: Mr. David Allison
Brief Facts: The Complainant, founded in 1999 (by renowned inventor Dean Kamen), describes itself as the worldwide leader in personal transportation. In 2015, Ninebot merged with Segway, which is based in Bedford, USA. The new company has strategic locations in the United States, the Netherlands and Beijing, and has production facilities in the United States and China. The Complainant has registered a large number of trademarks for SEGWAY in various countries worldwide, including in the EU, predominantly in Classes 9, 12 and 28. The Complainant has also registered several domain names including <segway .com>.
The Respondent did not file a response to the Complaint and does not appear to hold any trademarks. Nevertheless, as evidenced by the Respondent’s website and evidence supplied by the Complainant as to previous versions of the Respondent’s website, the Respondent appears to have operated a thriving tour company located in several cities throughout Italy since at least 2005. A key feature of the Respondent’s tours, is that it utilizes Segway vehicles to transport its guests during the tour.
The Complainant alleges that the Respondent has no trademarks in Italy nor is the Respondent authorized by the Complainant. For these reasons, the Complainant asserts that the Respondent has no legitimate rights or interests in the disputed Domain Name. The Complainant further alleges that the Respondent applied for the disputed Domain Name with ‘malicious intent’ because the Respondent uses the SEGWAY devices in its tours and thus knew or ought to have known about the Complainant and its trademarks prior to registering the disputed Domain Name.
Held: A perusal of the Respondent’s website shows that although the Respondent’s business makes use of Segway vehicles as a feature of its tours, the emphasis and thrust of the Respondent’s business is obviously and clearly on tourism. There is nothing on the website to suggest confusion between the Complainant’s marks and the Respondent’s business and the Panel holds that the Respondent’s use of the disputed Domain Name is legitimate fair use as it accurately and fairly describes its legitimate business in offering tours, in Italy, which use Segway vehicles. Further, the Respondent’s business has been in operation since at least 2005 and appears to have developed a great deal of goodwill and a positive reputation as a legitimate tour company, which also makes the disclaimer unnecessary. As such, the Panel finds that the Respondent has a legitimate interest in using the disputed Domain Name.
Prior knowledge of a Complainant’s marks and business may in some cases provide further strength to an argument that a Respondent is using the disputed Domain Name in bad faith. However, that is not the case here in light of the clear legitimate business interest demonstrated by the Respondent and its fair use of the disputed Domain Name. The disputed Domain Name when assessed on its plain meaning, merely and clearly suggests that the Respondent is offering tours, in Italy, using a segway device. While the use of the Segway device is an important feature of the tours that are offered, there is nothing on the website to suggest a relationship, sponsorship or affiliation with the Complainant. The look and feel of the website is in no way similar to that of the Complainant’s and there is nothing on the website that suggests the Respondent is attempting to mislead or confuse internet consumers for commercial gain. Overall, this leads to the conclusion that the Respondent is not using the disputed Domain Name in bad faith but rather in a legitimate and fair manner.
Complainants’ Counsel: NA
Respondents’ Counsel: NA
Case Comment by Special Guest Commentator, Mr. Igor Motsnyi:
Igor is an IP consultant and partner at Motsnyi Legal, Motsnyi.com. His practice is focused on international trademark matters and domain names, including ccTLDs disputes and the UDRP. Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy. The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
The ADNDRC decision in <ITALYSEGWAYTOURS. COM> deals with a “nominative fair use” issue and the application of the “Oki Data test” to service providers.
The Respondent was offering tour guides in several cities in Italy by using “Segway” vehicles. While the Respondent did not submit a response, the Panel reviewed the Respondent’s website and previous versions of the website and concluded that the Respondent had a legitimate interest as a service provider.
When it comes to the rights and legitimate interests of resellers/distributors/service providers, UDRP panels usually rely on the Overview (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition”), par. 2.8.1 that is based on the “Oki Data” 4-part test (“Oki Data Americas, Inc. v. ASD, Inc.”, WIPO Case No. D2001-0903, <okidataparts. com>) and the criteria provided in the Overview are:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The most challenging part of the “Oki Data test” for the parties and often for UDRP Panelists is usually its third element, namely accurate and prominent disclosure of the registrant’s relationship with the trademark owner.
“Accurately and prominently” is often interpreted as a requirement to have a clear statement or disclaimer denying the registrant’s affiliation with the trademark holder.
The “Oki Data test” challenges were already discussed in the previous editions of the ICA Digest, see here, discussing the <subzerorefrigeratorservice .com> case where the Panel acknowledged that “there appears to be an issue whether the disclaimer itself is sufficiently clear and prominent to distinguish its services from that of the Complainant and whether it is clear to Internet users visiting the Respondent’s website that it is not operated by the Complainant”.
There was no disclaimer in <ITALYSEGWAYTOURS. COM>.
The authority cited by the Panel on the second element analysis was “National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.”, WIPO Case No. D2007-1524, <nascartours .com>, where a prominent disclaimer was present (“A disclaimer appears in the middle of the home page of the Respondent’s website”).
However, the Panel in <ITALYSEGWAYTOURS. COM> looked at the content of the website and concluded that: “There is nothing on the website to suggest confusion between the Complainant’s marks and the Respondent’s business and the Panel holds that the Respondent’s use of the disputed Domain Name is legitimate fair use as it accurately and fairly describes its legitimate business…”.
On the disclaimer issue, the Panel specifically noted: “the overwhelming evidence of the Respondent’s legitimate business and fair use of the disputed Domain Name makes such a disclaimer unnecessary”. While the presence of a prominent disclaimer or a similar statement can play a role in Panels’ assessment of the “Oki Data test”, its absence is not always fatal if other circumstances indicate that the disclosure of the relationship between the parties is “accurate”.
The ADNDRC decision <ITALYSEGWAYTOURS. COM> is in line with another relatively recent decision by the Forum 3-member panel in <lsatbyfisch. com> where the Panel concluded: “While the Respondent’s Website does not contain an express disclaimer, there is nothing in the Respondent’s Website that would imply to a visitor that Respondent is anything other than what he is, namely an individual offering a LSAT preparation service independent of Complainant” (see Law School Admission Council, Inc. v. Fischel Bensinger, NAF Claim Number: FA2307002054973).
While analyzing the third element of the “Oki Data test” in cases of service providers, UDRP panels may look at the nature of the disputed Domain Name (trademark + “qualifier” vs. identical to complainant’s trademark), the content of the website, including an accurate description of respondent’s services, any logos/pictures used on the website and contact information of respondent, if any.
A disclaimer or a similar statement can be helpful but it is not decisive if the content eliminates confusion.
Business/Contractual Dispute Outside The Scope Of The Policy
Panelist: Mr. Alan L. Limbury (Presiding) Professor David E. Sorkin, and Mr. Charles Kuechenmeister
Brief Facts: The US-based Complainant has rights in the AE7 trademark and is a wholly owned subsidiary of Pinnacle Holding Ltd. (“Pinnacle”), headquartered in Dubai. The Respondent is a minority shareholder of Pinnacle and Manager of AE7 Architecture and Engineering Consultancies LLC in Abu Dhabi (“AE7 Abu Dhabi”), which is also a wholly owned subsidiary of Pinnacle. As such, the Respondent is a signatory of the “Pinnacle Holding Bylaws,” “AE7 Board Resolutions,” and “AE7 Board Resolutions” and is, therefore, obligated both legally and contractually to observe the rules and Code of Conduct which govern Pinnacle’s wholly owned subsidiaries. The Respondent registered the disputed Domain Name on January 22, 2022, and currently reads: “The Website is under Maintenance”.
The Complainant contends that on August 17, 2023, the Respondent was disqualified as a shareholder of Pinnacle and his employment was terminated at AE7 Abu Dhabi due to numerous breaches of Pinnacle’s Bylaws and Code of Conduct and AE7 Board Resolutions. His disqualification as a shareholder suspended all entitlements, privileges, and associated rights as a shareholder of Pinnacle, and his termination of employment removed his authorization to use any of Pinnacle’s intellectual property, including any email address containing “ae7.” By letter dated August 2, 2023, the Respondent expressed his intent to retain the “AE7” name in Abu Dhabi and indicated his pursuit of legal measures to prohibit other entities from its use.
Held: The Panel considers the issue of whether the disputed Domain Name should be transferred to the Complainant under the Policy depends upon what relationship, if any, existed between Pinnacle and the Respondent when the disputed Domain Name was registered; whether and, if so, how the disputed Domain Name is being used; what authority, if any, the Respondent had as a shareholder of Pinnacle and as Manager of AE7 Abu Dhabi; and whether the Respondent’s disqualification as a shareholder and termination of employment were valid. Further, the Policy issues are inextricably intertwined with the other numerous alleged breaches specified in the Complaint.
These circumstances satisfy the Panel that it is inappropriate to embark upon consideration of the merits of the Complaint. The administrative proceeding should be terminated. As stated by the learned Panelist in Rexair LLC v. Vladimir Leon, FA2044372 (Forum June 22, 2023): “From our review of the Complaint and accompanying submissions, it is clear that this is not a dispute within the contemplation of the Policy, which is intended solely to address instances of “cyber-squatting,” defined as the abusive registration and use of Internet domain names. Rather, this dispute appears to be centered around the unwinding of a business agreement, which should be confided to the jurisdiction of the appropriate local or national courts.”
Complainants’ Counsel: Gwen R. Acker Wood of Acker Wood Intellectual Property Law, LLC, Pennsylvania, USA
Respondents’ Counsel: No Response
Comment by Newsletter Editor, Ankur Raheja: This matter involves a business or contractual dispute between the parties. Given the narrow scope of the Policy, the Panel rightly terminated the proceedings. This was in quite contrast to the approach taken by the Panel in the matter of <cryptospace .com>, which was covered under Digest Vol. 3.33. Generally in such matters, the disputed Domain Name is initially registered with the (express or implied) consent of the trademark holder, hence relief is not available under the Policy as no ‘bad faith registration’ exists. The limitation on the jurisdiction of the UDRP can be found in the Final Report of the WIPO Internet Domain Name Process (April 30, 1999) at Para 135 (i) and similar references can be located in the Second Staff Report on UDRP (24 October 1999) at Para 4.1 clause (c), which reads:
Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.”
Complainant Reclaims Expired Domain Name through UDRP
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant claims common law rights in the WILKES-BARRE RUGBY FOOTBALL CLUB INC mark based upon the use of the mark in commerce for rugby football club services for over fifty years since 1973. The Complainant previously owned the Domain Name from 2003 until 2020 and used the Domain Name for its website until the Domain Name expired. The disputed Domain Name was registered by the Respondent on expiration in 2020 and is currently being used for gambling advertisements. The Complainant alleges that the Respondent registered and used the Domain Name in bad faith for commercial gain. The Respondent failed to file a response. The Complainant under additional submission provided further evidence of the common law rights in its name which is often abbreviated to WILKES-BARRE and WILKES-BARRE RUGBY in use and evidence of the fact that it had previously owned the Domain Name through its authorised representative.
Held: The Complainant has common law rights in the WILKES-BARRE RUGBY FOOTBALL CLUB INC mark, often abbreviated to WILKES-BARRE RUGBY and WILKES-BARRE, based upon the use of the mark in commerce for rugby football club services for over fifty years since 1973. The Respondent has further used the disputed Domain Name for gambling advertisements which is not a bona fide offering of goods and services or a legitimate non-commercial or fair use. The Respondent has not answered this Complaint or offered any explanation or evidence to rebut the prima facie case evidenced by the Complainant herein. As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name.
The Domain Name has been pointed to a page bearing gambling advertisements for commercial gain, disrupting the Complainant’s business. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot .com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). As such, the Panel holds that the Complainant has made out its case that the disputed Domain Name was registered and used in bad faith primarily for the purposes of profit in terms of the Policy.
Complainants’ Counsel: Tony VanScoy, Pennsylvania, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: As explained in the WIPO Overview: “In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.” And this evidence, must be strong and serious as held by the Panel in Chandler Horsley v. Fundacion Private Whois, NAF Claim Number: FA1305001497825:
“Common law rights must be proven by strong and serious evidence of constant use and recognition from the objective customers of the goods or services…Awarding common law rights to any expression to ultimately granting the same status of either a trademark or service mark without proper evidence, would be improper behavior of this Panel and also very unjust…”
Here, the terms comprising the domain name – “wilkes barre rugby” – are clearly descriptive, referring to a town and a sport, and as such the Complainant must demonstrate acquired distinctiveness or a “secondary meaning” in order to have common law trademark rights in the terms. Although no mention is made in the decision to the evidence reaching the level of acquired distinctiveness, the Panel does note that the Complainant submitted evidence, including via an additional submission, of longstanding use of the term for over 50 years in association with a particular local rugby club.
There is likely only one ‘Wilkes Bar Rugby club’ so this Domain Name likely refers specifically to it and it only. If it was ‘ScottishRugby .com’, for example, it would be a very different situation since there is more than one Scottish rugby club and therefore likely no evidence that the term is exclusively associated with a single party. There is a much higher bar for common law trademark rights when a term is used descriptively by the public and by various traders to describe something generally, like ‘Scottish Rugby’, and therefore it would be particularly challenging for there to be evidence to rise to the requisite level of secondary meaning just through mere use by a single party. Here however, Wilkes Barr Rugby likely demonstrated a secondary meaning locally through its longstanding and apparently exclusive use, which is all that would be expected for such a small town’s rugby club to acquire a secondary meaning. Nevertheless, it would have been helpful to reference acquired distinctiveness in this case and to explain how this threshold was reached.
Evidence of Reputation at Material Time is Crucial to Prove Bad Faith Registration
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant owns and operates over two dozen car dealerships in Utah and Idaho, and owns two federal trademark registrations for YOUNG AUTOMOTIVE GROUP. The Complainant also claims common law rights in the marks YOUNG and YOUNG AUTOMOTIVE GROUP based on its use of the former since the 1990s and of the latter since at least 2003. The Complainant additionally claims common law trademark rights in the mark YOUNG MAZDA, which it claims it first began using in 2016 when it opened its Young Mazda automobile dealership in Ogden, Utah. The disputed Domain Name was registered in 2005 and currently resolves to a PPC website, carrying links for “Mazda Dealership,” “Mazda Inventory,” and “Mazda Parts Online.”
The Complainant alleges that the Respondent is using the disputed Domain Name to divert would-be customers of the Complainant to the Respondent’s website, which features links to products and services offered by the Complainant’s competitors. The Respondent contends that its registration could not have been in bad faith because it registered the disputed Domain Name before the Complainant’s purported trademark rights accrued and that the disputed Domain Name consists of two generic terms, “Young” and “Mazda,” the latter of which, the Respondent contends, is generic for “the transcendental god of Zoroastrianism, symbolizing creativity.” The Respondent further contends that the Complainant does not have trademark rights in “Young” plus an open list of car brands, and cites the existence of an unrelated Young Mitsubishi car dealership that uses the domain name <youngmitsubishi .com>.
Held: The Respondent does not even try to articulate any rights or legitimate interests in respect of the domain name. The Respondent’s use of these PPC links alone establishes that it is not using the disputed Domain Name “in connection with a bona fide offering of goods or services.” Further, the Respondent’s suggestion that it registered the disputed Domain Name in good faith because it “consists of two generic terms, ‘Young’, and ‘Mazda,'” is not credible and the assertion cannot be taken seriously given the fame of the MAZDA brand. Advancing such a patently frivolous argument undermines the Respondent’s credibility. Also without merit is Respondent’s repeated assertion that its registration of the disputed Domain Name “precede[d] the accrual of Complainant’s purported trademark rights.” Although it is true that the Complainant did not open its Young Mazda dealership until 2016, more than ten years after the Respondent registered the disputed Domain Name, the Complainant did at the time have rights in at least the YOUNG AUTOMOTIVE GROUP trademark along with at least three YOUNG-related car dealership marks.
The Respondent further argues that it has not used the disputed Domain Name in bad faith, its operation of a PPC parking page that advertises websites that compete with the Complainant is paradigmatic bad faith use. However, the critical flaw in the Complaint is the Complainant’s failure to credibly allege bad faith registration. For Young Automotive Group to credibly establish bad faith registration in 2005, Young Automotive Group would need to offer some evidence that the Respondent was likely aware of the Complainant in 2005 and that it registered the disputed Domain Name to target the Complainant specifically. The Complainant has not credibly alleged any of those facts. To the contrary, in 2005, Complainant operated only three car dealer brands, and did so in Utah, several states away from the Respondent’s Texas base. The Complainant has submitted no evidence at all that it did any business in Texas or that the Respondent did any business in Utah. The Complainant also provides no evidence to support its naked assertion that the Respondent “was well aware of” or should have been aware of the Complainant’s marks when it registered the disputed Domain Name in 2005.
Complainants’ Counsel: James T. Burton of Kirton McConkie PC, Utah, USA
Respondents’ Counsel: Gary Schepps of Schepps Law Offices, Texas, USA
Respondent’s Bona-fide Use of the Complainant’s Trademark
Panelist: Mr. John Swinson
Brief Facts: The Complainant, founded in 1919, designs, manufactures, distributes, and services diesel and natural gas engines. The Complainant owns many trademark registrations for or including CUMMINS since 1953. However, The Complainant’s first trademark in the UAE has a filing date of December 20, 2005. The Respondent is the owner of a UAE company “Cummins Diesel Spare Parts Co. LLC” registered on April 4, 1990. The Respondent has a physical store in the UAE to sell these genuine spare parts. The disputed Domain Name was registered on November 12, 2012. At the present time, the website appears to be primarily focused on promoting the Respondent’s physical store and does not appear to enable online transactions. At the bottom of the home page, there is a legend that states: “Cummins® is the Registered Trademark of Cummins Corporation.”
The Complainant alleges that the use of the disputed Domain Name is likely to mislead users into believing that the website at the disputed Domain Name belongs to a partner or affiliate of the Complainant and that the Respondent’s website falsely purports that the Respondent is an official dealer of the Complainant. The Respondent contends that he has been using the name “Cummins” legitimately as part of its business name for over 30 years, and before the Complainant had trademark rights in the UAE… the Respondent is a reseller of legitimate Cummins spare parts and is not acting in bad faith.
Held: The Respondent was given notice of this dispute via a letter of demand from the Complainant on February 15, 2023. Accordingly, for over 32 years prior to the notice of the dispute, the Respondent has been using the name “Cummins Diesel Spare Parts Co. LLC” as the name of its business. This was ten years before the Complainant had registered trademark rights in the United Arab Emirates – though clearly it was done with a view to the Complainant’s goods and services. The question arises as to whether the Respondent’s use of “Cummins” as part of its business name and on its shopfront for over 32 years is bona fide in terms of the Policy. The Respondent relies on provisions of United Arab Emirates law with which the Panelist is not familiar.
The Panel notes that ordinarily, the disputed Domain Name would fall afoul of the impersonation test articulated in section 2.5.1 of the WIPO Overview 3.0. That said, the Panel is hesitant to overlook the fact of the use by the Respondent of the disputed Domain Name for over a decade and the fact that the Respondent’s use of its business name has been open and transparent; ordinarily it may be that this business name which copies the Complainant’s name would be infringing under the terms of the Policy (c.f., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna .com”, WIPO Case No. D2000-0847) and likely under national law, but given the length of time and apparent openness of such use, the Panel considers this matter better addressed by a court of competent jurisdiction. Based on the available record, the Panel finds the second element of the Policy has not been established.
Complainants’ Counsel: Mayer Brown LLP, Germany
Respondents’ Counsel: Self-represented