International - Hogan Lovells
- NovAtel Inc, the owner of the US trademark NOVATEL, sought the transfer of 'novatela.com' under the UDRP
- The panel found that 'novatela' could be read as the combination of two common words and could be applied in multiple contexts unrelated to the complainant and its activities
- The complainant failed to demonstrate that the respondent knew or should have known of the trademark, or had targeted the complainant when registering the domain name
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before WIPO, a panel has refused to transfer the domain name 'novatela.com', finding that the complainant had failed to prove that the domain name had been registered in bad faith.
The complainant was NovAtel Inc, Canada, a company specialised in global navigation satellite system solutions. The complainant registered the NOVATEL trademark in the United States in 2001. The complainant indicated that it had, since then, registered the trademark in at least 30 countries. The complainant also claimed that it had first used the trademark in 1992 in connection with navigation and positioning transceivers, GPS receivers and related goods.
The respondent was Registration Private, Domains By Proxy LLC, United States/Domain Admin, FindYourDomain.com, United States, which had registered the domain name 'novatela.com' in 2007. At the time of the decision, the domain name did not resolve to an active website.
The complainant initiated proceedings under the UDRP for a transfer of ownership of the domain name.
To be successful under the UDRP, a complainant must satisfy the requirements of Paragraph 4(a), namely that:
- the disputed domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
Under the first element of Paragraph 4(a) of the UDRP, the complainant argued that the domain name fully incorporated the trademark, thus causing a likelihood of confusion as to the source and/or sponsorship of the domain name. The complainant added that the letter 'a' at the end of the domain name did not mitigate the confusing similarity between the domain name and the trademark.
The respondent argued that the domain name involved a generic, descriptive and common phrase in the Portuguese language and that the test of confusing similarity had to follow the recommendation described in Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, of a typical side-by-side comparison of the domain name and the textual components of the relevant trademark so as to assess whether the mark was recognisable within the domain name. The respondent concluded that the test would have revealed that, in Portuguese, 'nova tela' meant 'new screen', thus making the domain name distinct from the NOVATEL trademark. The respondent added that the results of a Google search for 'novatela' did not show the complainant or its trademark in the first five pages.
The panel found that the requirement under the first element was satisfied because the complainant had established rights in the NOVATEL trademark and that the domain name incorporated the trademark entirely.
With regard to the second element of Paragraph 4(a) of the UDRP, the complainant contended that:
- the respondent was not commonly known by the Novatel name and that it was not affiliated with the complainant;
- the respondent had not been commonly known by the domain name as an individual or business and it owned no registered trademark in any variation of the term 'novatel';
- the complainant's trademark registration preceded the registration of the domain name by at least six years;
- the respondent was not making a legitimate non-commercial or fair use of the domain name since the domain name resolved to a webpage indicating that the respondent was offering it for sale, which indicated that the respondent was not using and had made no reasonable preparations for the use of the domain name; and
- there were no other circumstances justifying the respondent's registration or use of the domain name.
The respondent explained that its business involved selling legitimately acquired generic and descriptive domain names and that the disputed domain name was a combination of the Portuguese words 'nova' and 'tela' - making the combination a common, well-known and descriptive phrase, commonly used in advertisements for smart phones in Brazil. The respondent concluded that it had made good-faith use of the domain name and pursed a legitimate interest.
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Originally Published by World Trademark Review
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