International - Hogan Lovells
- The complainant, which owned several TITONI marks, sought the transfer of 'titoni.com' under the UDRP; the domain name had lapsed in 2018 due to the complainant's failure to renew it
- The panel found that the complainant had not established that the respondent had registered the
- domain name in order to sell it to the complainant
- The UDRP was not primarily designed to make up for the mistakes of complainants
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member panel has refused to transfer the disputed domain name 'titoni.com', nding that the complainant had failed to prove that the domain name had been registered in bad faith.
The complainant was Titoni AG, a company with its headquarters in Grenchen, Switzerland, specialised in the manufacture and supply of watches and jewellery worldwide. The complainant had used the brand Titoni since the 1950s and owned many trademarks in TITONI, including a Swiss trademark registered in 1991. The domain name had been registered in 2000 by the complainant and used for its English-language websites. It had been regularly renewed until it lapsed in 2018 due to the complainant's failure to renew it as a result of an administrative error.
The respondent, Synergy Technologies LLC, a company registered in Saint Kitts and Nevis, was a domain name dealer. It acquired the domain name by auction and used it to point to a website with pay-per-click links related to names and genealogy, such as 'Ancestry', 'Change Names', 'Family Heritage', 'Family Portrait' and 'Family Tree'.
On 15 February 2019 the complainant attempted to regain ownership of the domain name by emailing the respondent to request a transfer. To support its request, the complainant asserted trademark rights and explained that the domain name had been used for a website for many years and that the non-renewal of the registration was due to a mistake. A domain name broker immediately replied that at least $10,000 would be required to engage with the respondent.
The complainant then initiated proceedings under the UDRP. To be successful under the UDRP, a complainant must satisfy the requirements of Paragraph 4(a) of the UDRP, namely:
- 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 rst element of Paragraph 4(a), the panel found that the requirement was satised because the domain name, without its sux, was identical to the trademark registered by the complainant.
The panel considered it was not necessary to comment on the second element of Paragraph 4(a) due to its ndings under the third element.
As regards the third element of Paragraph 4(a), the complainant claimed that the respondent had intended to benet from the complainant's trademark and reputation in order to sell the domain name at an unreasonably high price. The panel considered that, with regard to bad faith, this was a nely balanced case.
The complainant argued that 'Titoni' was a fanciful word without any common meaning. The panel however found that the respondent had established that 'Titoni' was a rst name, a surname and a business name used in some countries and was not exclusive to the complainant.
The complainant also contended that the respondent's website simulated active content, whereas in fact its main purpose was to sell domain names. The complainant added that the respondent was not commonly known as 'Titoni' and that it had not registered any trademarks under that name, but had instead engaged in unauthorised use of the complainant's trademark in a domain name without establishing any legitimate non-commercial or fair use. To the complainant, the respondent could only have been aware of its trademark, which was unmistakably linked to its marketing activities, and of the fact that only the complainant was known by the word 'Titoni'. The complainant came to the conclusion, from the broker's response and from the respondent's refusal to transfer the domain name after receiving the complainant's notice, that the respondent's bad faith was established.
The panel reminded the complainant that it had itself mentioned that the respondent was aware of the name and trademark "[at the] latest since respondent received a notice from complainant about its erroneous lapse", thus acknowledging the possibility that the respondent may not have had such knowledge prior to receiving the complainant's notice. The panel found that the complainant's allegations that the respondent had intended to target its business were unsubstantiated. For example, there was no evidence that:
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