In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of the domain name taffo.com because it found that the Complainant had failed to prove that the Respondent had acted in bad faith, given that the dispute was in fact a complex trademark matter better resolved in a different forum.
The Complainant, Taffo s.r.l, and the Respondent, Agenzia Funebre Taffo di Taffo G. & C. sas Societa/Ditta, were both Italian companies providing funeral services. The Complainant and the Respondent used to carry on the business initiated by their common ancestor, Gaetano Taffo, together. However, as a result of internal disputes the family decided to separate and continue their activity independently.
The disputed Domain Name, taffo.com, was acquired by the Respondent in 2015 and used to point to its website promoting funeral services.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a):
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Before proceeding to the analysis of the Parties' arguments, the Panel firstly focused on the pending court proceedings initiated by the Complainant in the Italian courts. In fact, the UDRP Rules give panels discretion to suspend, terminate, or continue with UDRP proceedings where the disputed domain name is also the subject of other pending legal proceedings. In the present case, the Panel did not deem it appropriate to terminate the UDRP proceedings and therefore proceeded to analyse each of the substantive requirements prescribed by the Policy.
Identity / similarity
With regard to the first limb, the Complainant contended that it had trademark rights in the name TAFFO FUNERAL SERVICES since 2012 and that, since 2010, it had attracted millions of visitors to its website at 'www.taffo.it'. The Respondent rebutted these arguments by stating, among other things, that the Complainant’s Italian trademark did not designate funeral services. The Respondent further referred to an interim Italian court decision in 2017, confirmed by judges in three other different court proceedings, filed by the Complainant against the Respondent, according to which the Complainant’s Italian trademark was not enforceable and the use of the sign TAFFO made by the Respondent was perfectly lawful.
The Panel found for the Complainant, noting that the disputed Domain Name was confusingly similar to the Complainant’s trademark, TAFFO FUNERAL SERVICES, as the denominative element, “taffo”, was entirely reproduced in the disputed Domain Name and was the dominant portion of the trademark. The Panel thus made a finding that the Complainant had satisfied the first limb.
Rights / legitimate interests and bad faith
As far as the other requirements under the UDRP were concerned regarding the Respondent's rights or legitimate interests and bad faith, the Complainant presented the Respondent as a small company, established in 2015, three years after the Complainant’s company. According to the Complainant, the Respondent had been using the disputed Domain Name since October 2015 to advertise and sell the same funeral services offered by the Complainant, using the same trademark, which had generated consumer confusion. The Complainant also added that it was the owner of the domain names taffo.org, taffo.net, taffo.biz and taffo.eu. The Complainant further contended that the Respondent’s use of the disputed Domain Name amounted to a usurpation of the trademark registered by the Complainant and therefore should be considered an act of unfair competition.
The Respondent asserted that its company was established to carry on the family funeral business and that its use of the sign TAFFO had always been made in connection with a bona fide offering of funeral products and services. Furthermore, the Respondent argued that, as a branch of the Taffo family, it was making a legitimate use of the disputed Domain Name, fairly competing with the Complainant. The Respondent also submitted that the Respondent had acquired 80,000 followers on Facebook since 2015. The Respondent also contended that the disputed Domain Name was not registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name since the Complainant was the owner of several domain names encompassing the sign TAFFO.
The Panel noted that the Respondent acquired the disputed Domain Name in October 2015, ten months after the creation of the Respondent’s company. The Panel stated that the Parties began to quarrel about the use of the TAFFO trademark and the ownership and use of the disputed Domain Name only after the Respondent’s acquisition of the disputed Domain Name. According to the Panel, the Respondent had proved that it had been carrying on the family funeral business since January 2015 under its company name which corresponded to the surname of the company founders and shareholders. As a consequence, given that the disputed Domain Name corresponded to the name of the Respondent, and given the complex relationships between the Parties, the Panel found that the Complainant had failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed Domain Name. For the same reasons, the Panel found that the Complainant had failed to prove that the Respondent registered or acquired the disputed Domain Name in bad faith.
In light of the above, the Panel made a finding that the Complainant had failed to demonstrate the requirements prescribed by the second and third limbs of the Policy, and also noted that this was a complex trademark matter that would be more appropriately handled by the national courts, especially since a procedure was already pending before the Court of Rome.
This decision serves as a reminder that the UDRP was designed to address specific issues related to cybersquatting and therefore more complex disputes, such as those between parties with current or past business relationships (as in the present case), generally fall outside of its scope. However, where a disputed domain name is also the subject of other pending legal proceedings, a panel can choose at its discretion whether or not to continue with a UDRP proceeding. It should be noted though that national courts are not bound by UDRP panel decisions. Nevertheless, the relative expediency of the UDRP versus regular courts is still immensely beneficial in more straightforward cases involving abusive domain name registrations.
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