Globesailor who has a European trademark on the term has lost their WIPO case at the WIPO Arbitration and Mediation Center for the domain names Globesailor.com and Globesailor.net in case number D2021-3009.
At the time of writing both Globesailor.com and Globesailor.net don’t currently resolve and I can see why Globesailor would like to own these domain names, They currently use TheGlobeSailor.com as their corporate website but own many ccTLD such as globesailor.co.uk, globesailor.fr, globesailor.it, globesailor.es, globesailor.ch, and globesailor.de
I guess they want to do a Facebook and drop “The” from their domain name… However, they should have done the correct process and made the owner a cash offer for the domain names instead of going via the UDRP / WIPO process to ultimately lose and now drive the cost upwards on the two domain names Globesailor.com and Globesailor.net
I am pleased to see the single panelist didn’t just rely on the trademark information and realized that the domain names were registered in the year 2000, 17 years before the Trademark for Globesailor was granted.
I hope the two parties can reach an amicable outcome and the domain name owner received the correct monies owned to sell these assets to Globesailor.
DECISION OF THE ADMINISTRATIVE COMMISSION
Globesailor vs. Desarnaud Patrice
Litigation No. D2021-3009
1. The parties
The Applicant is Globesailor, France, represented by the firm Avrillon Huet, France.
The Respondent is Desarnaud Patrice, France.
2. Domain name and registration unit
The disputed domain names
3. Reminder of the procedure
A complaint was filed by Globesailor with the Arbitration and Mediation Center of the World Intellectual Property Organization (hereinafter referred to as the “Center”) on September 13, 2021. As of September 14, 2021, the Center sent a request to the Registration Unit for verification of the elements of the dispute, as communicated by the Applicant. On September 15, 2021, the Registration Unit transmitted its verification to the Center confirming all the data of the dispute.
The Center has verified that the complaint responds to the Guiding Principles Governing the Uniform Settlement of Disputes Relating to Domain Names (hereinafter referred to as the “Guiding Principles”), the Rules for the Application of the Guiding Principles (hereinafter referred to as the “Rules of Application ”), and to the WIPO Supplementary Rules (hereinafter referred to as the“ Supplementary Rules ”) for the application of the above Guidelines.
In accordance with paragraphs 2 and 4 of the Application Rules, on September 17, 2021, a notification of the complaint establishing the initiation of this administrative procedure was sent to the Respondent. In accordance with paragraph 5 of the Rules of Application, the last deadline for submitting a response was October 7, 2021. The Respondent submitted a response on October 6, 2021.
On October 15, 2021, the Center appointed Christiane Féral-Schuhl as an expert in this dispute. The Administrative Commission notes that it was constituted in accordance with the Guiding Principles and the Rules of Application. The Administrative Commission sent the Center a declaration of acceptance and a declaration of impartiality and independence, in accordance with paragraph 7 of the Rules of Application.
On October 25, 2021, the Applicant sent the Center its observations on the response submitted by the Respondent on October 6, 2021. On October 26, 2021, the Center transmitted these observations to the Administrative Commission.
On October 26, the Respondent sent the Center observations in response to those submitted by the Applicant on October 25, 2021. On October 27, 2021, the Center transmitted these observations to the Administrative Commission.
4. The facts
The Applicant is Globesailor, the business of which is the management of a platform intended to offer pleasure boaters the possibility of reserving pleasure craft.
In the course of carrying out its activities, the Applicant is the holder of intellectual property rights, among which:
– the European word mark GLOBESAILOR No. 017000051, registered on November 1, 2017, for classes 12 and 39;
In addition, the Applicant is the holder of the following domain names:
The disputed domain names
On the day of the filing of the complaint and of this decision, the disputed domain names redirect to an inactive page entitled “test gs”.
5. Arguments of the parties
The Applicant argues first of all that the domain names in dispute are identical to its GLOBESAILOR mark since they literally transcribe it.
The Applicant further argues that the Respondent has no right or legitimate interest in the disputed domain names, since, although it has held them since 2000, it has never made use of them, so that they redirect to pages without content, that it is not known under the disputed domain names and makes neither legitimate non-commercial use nor fair use.
Finally, the Applicant considers that the disputed domain names were registered and are used in bad faith, pointing out that several users wishing to consult the services offered by the Applicant went by mistake on the websites to which the disputed domain names redirect. , and thought that the platform managed by the Applicant was down since these websites do not display any content, then turning to the Applicant’s competitors, which seriously damages its image and decreases the traffic of its platform.
The Applicant also insists on the fact that these actions have lasted for almost 10 years, the first formal notice relating to the disputed domain names and addressed to the Respondent through its lawyer dating from 2012.
It is in the light of all of these elements that the Applicant requests that the disputed domain names be transferred to it.
First of all, the Respondent does not dispute that the domain names in dispute are identical to the GLOBESAILOR trademark of the Applicant.
Next, the Respondent points out that the term “Globe Sailor” is a generic name intended to mirror the term “Globe-trotter”, applied to the world of nautical sports.
Finally, the Respondent indicates that it registered the disputed domain names on November 8 and 9, 2000, and recalls that the GLOBESAILOR mark began to be used by the Applicant in 2008, and that the GLOBESAILOR mark on which it relies today has been registered. November 1, 2017.
The Respondent, therefore, considers that it has registered the disputed domain names in good faith because at the date of their registration, the GLOBESAILOR mark over which the Applicant has rights did not exist.
The Respondent adds that the websites to which the disputed domain names redirect have never displayed any content, the use of a domain name not being limited to a website and being able to be used for other purposes (SMTP , FTP, VPN, Web API, WEB Service), which is the case for its servers.
6. Discussion and conclusions
According to paragraph 4 (a) of the Guidelines, the Applicant must prove that:
(i) the disputed domain name is identical or similar to the point of confusing a mark of goods or services over which the Applicant has rights; and
(ii) the Respondent has no right to the disputed domain name or any legitimate interest attached to it; and
(iii) the disputed domain name has been registered and is being used in bad faith.
I. On the additional unsolicited observations of the parties
On October 25 and 26, 2021, the Applicant and the Respondent sent the Center additional observations not requested by the Administrative Commission.
In accordance with paragraphs 10 and 12 of the Application Rules, the eligibility of such unsolicited additional deposits is determined at the sole discretion of the Administrative Commission.
In this case, the Administrative Commission considers that the unsolicited filings of the Applicant and the Respondent do not add any new useful element to the solution of the present dispute, the observations submitted by the Applicant being judicial decisions not applicable to the case, and those submitted by the Respondent referring to decisions previously rendered in the context of proceedings conducted in accordance with the UDRP principles of which the Administrative Commission was already aware.
In addition, in its additional unsolicited observations, the Respondent requests that the Administrative Commission rule on the attempted hijacking of a reverse domain name (“RDNH”) operated by the Applicant through its complaint, which was allegedly filed from bad faith and would constitute an abuse of administrative procedure.
However, in accordance with paragraph 15 (e) of the Rules of Application, the Administrative Commission must, in any event, declare in its decision that the complaint was lodged in bad faith and constitutes an abuse of administrative procedure if it finds that it was filed in connection with an attempted reverse domain name hijacking, and whether or not the Respondent raised this point (see Insight Energy Ventures LLC v. Alois Muehlberger, LMBerger Co. Ltd., WIPO Litigation No. . D2016-2010 ).
Consequently, the Administrative Commission refuses to admit in the present proceedings the additional unsolicited filings of the Applicant and the Respondent, considering that nothing resulting from these observations would modify its decision.
A. Confusing Identity or Similarity
According to paragraph 4 (a) (i) of the Guidelines, the Applicant must demonstrate that the disputed domain names are identical or similar to the point of confusing a mark of goods or services over which the Applicant has rights.
The Administrative Commission considers that the Applicant has provided evidence that it holds rights to the GLOBESAILOR mark.
In this case, the disputed domain names
Numerous decisions rendered on the basis of the Guidelines have already found that the incorporation of an identically reproduced mark within a domain name is sufficient to establish that the domain name is identical or similar to the point to confuse the mark over which the applicant has rights. Thus, there is a consensus of the administrative commissions which consider that the simple addition of a word to a mark is insufficient to avoid such a risk of confusion. Consequently, it is common ground in previous UDRP decisions that the fact that a domain name incorporates the mark registered by an applicant is sufficient to characterize a likelihood of confusion and that the mere addition of a term is insufficient to avoid such a risk (seeHoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov , WIPO Litigation No. D2011-1474 ; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. , WIPO Litigation No. D2000-1525 ; Bayerische Motoren Werke AG v. bmwcar.com , WIPO Litigation No. D2002-0615 ; Swarovski Aktiengesellschaft c. mei xudong , WIPO Litigation No. D2013-0150 ; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Litigation No. D2010-1059 ).
The Administrative Commission considers that the complete and identical reproduction in the disputed domain names of the GLOBESAILOR mark makes the disputed domain names identical to the GLOBESAILOR mark, or at least similar to this mark to the point of causing confusion.
Furthermore, the Administrative Commission recalls that the “.com” and “.net” extensions are not to be taken into consideration in the comparison of the disputed domain names and the GLOBESAILOR brand, as the decisions are based on the Guiding Principles consider it. for a long time.
In any event, the Respondent has declared that it does not dispute that the disputed domain names are indeed identical to the GLOBESAILOR mark over which the Applicant has rights.
The Administrative Commission, therefore, considers that the disputed domain names are identical or similar to the point of leading to confusion with the trademark owned by the Applicant, within the meaning of paragraph 4 (a) (i) of the Guidelines.
B. Rights or legitimate interests
Under paragraph 4 (a) (ii) of the Guidelines, the Applicant must be able to demonstrate that the Respondent has no right to the disputed domain names or any legitimate interest therein.
If the burden of proof of the absence of right or of the legitimate interest of the Respondent rests on the Applicant, the administrative commissions consider that it is difficult to prove a negative fact. In accordance with the Synthesis of the Opinions of the Administrative Commissions of WIPO on Certain Questions Relating to the UDRP Principles, Third Edition (“WIPO Synthesis, Version 3.0”), Section 2.1, it is therefore generally accepted that the Applicant should establish prima facie that the Respondent has no right or legitimate interest in the disputed domain name (see for example Croatia Airlines ddv Modern Empire Internet Ltd. , WIPO Litigation No. D2003-0455). It is then for the Respondent to rebut this presumption. If it fails to do so, the Applicant is presumed to have met the requirements of paragraph 4 (a) (ii) of the Guidelines (see for example Denios Sarl v. Telemediatique France, WIPO Litigation No. D2007-0698 ) .
According to paragraph 4 (c) of the Guidelines, if the Administrative Commission considers the facts to be established in view of all the evidence presented by the Respondent, proof of its rights to the domain name or of its legitimate interest which is attached to it may be constituted, in particular, by one of the following circumstances:
i) before having knowledge of the dispute, the Respondent used the domain name or a name corresponding to the domain name in connection with a good faith offer of products or services, or made serious preparations for this purpose;
ii) the Respondent (individual, company or other organization) is known by the domain name in question, even without having acquired any rights in a trademark of goods or services;
iii) or the Respondent makes legitimate non-commercial or fair use of the domain name without the intention of profitably diverting consumers by creating confusion or tarnishing the mark of the goods or services in question.
The Commission noted that the Applicant considers that the Respondent has no right or legitimate interest in the disputed domain names since it has never made use of them since its holder, i.e. since 2000, each of them redirecting to web pages with no content.
The Commission also noted that the Respondent indicates that it registered the disputed domain names because of its interest in the nautical world and for purposes other than redirection to Internet sites (namely for SMTP, FTP, VPN uses. , Web API, or WEB Service).
However and in any event, in light of its findings below relating to the registration and bad faith use of the disputed domain names, it does not appear useful for the Administrative Commission to decide the question of if the Applicant has provided proof that the Respondent has legitimate rights or interests in the disputed domain names.
C. Recording and use in bad faith
According to paragraph 4 (a) (iii) of the Guidelines, the Applicant must demonstrate that the disputed domain names have been registered and are being used in bad faith by the Respondent.
Paragraph 4 (b) adds that proof that the domain name has been registered and is used in bad faith can be made, in particular, provided that their reality is ascertained by the Administrative Commission, by the above circumstances. after :
(i) the facts show that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise assigning the registration of that domain name to the Applicant who is the owner of the product mark or services, or to a competitor thereof, for consideration and for a price exceeding the amount of the costs that it can prove to have paid in direct connection with this domain name;
(ii) the domain name has been registered with a view to preventing the owner of the trademark for goods or services from repossessing his trademark as a domain name;
(iii) the domain name was registered primarily with a view to disrupting the business operations of a competitor; Where
(iv) by using the domain name, the Respondent knowingly attempted to attract, for-profit, Internet users to a website or other online space belonging to it, creating a likelihood of confusion with the Applicant’s trademark with regard to the source, sponsor, affiliation or endorsement of the site or webspace or of a product or service offered therein.
In the present case, the Administrative Commission notes that the Respondent registered the disputed domain names on November 8 and 9, 2000, that is to say many years before, not only, the registration of the GLOBESAILOR mark by the Applicant, which took place on November 1, 2017, but also the start of its operation, initiated in 2008.
The Respondent could not, therefore, have had any knowledge of the Applicant’s mark prior to the registration of the disputed domain names, so that it could not have done so in bad faith. There is indeed no element in this file that establishes that the Respondent was targeting the Applicant’s mark at the time of the registration of the domain names.
Indeed, apart from the rare cases of prior knowledge of a trademark by a defendant, it is logically not possible for a defendant to register a domain name by targeting in bad faith a trademark which does not yet exist or whose he is not aware of (see the decisions cited in section 3.8 of the WIPO Synthesis, version 3.0).
However, the consensus since the implementation of the UDRP Principles is that the conjunctive “and” of paragraph 4 (a) (iii) of the Guidelines, which provides that the Applicant must demonstrate that the disputed domain name “has been registered and is used in bad faith ”by the Respondent, indicates that the Respondent’s bad faith must be characterized both at the time of registration of the disputed domain name and subsequently.
Numerous decisions rendered on the basis of the Guidelines have thus already refused to characterize the bad faith of a defendant when he registered a domain name before the birth of the plaintiff’s trademark rights (see Mile, Inc. v. Michael Burg, WIPO Litigation No. D2010-2011; KION Material Handling GmbH v. Kion Printing Inc., WIPO Litigation No. D2017-0025 ; Insight Energy Ventures LLC v. Alois Muehlberger, LMBerger Co. Ltd. , WIPO Litigation No. D2016- 2010; Coolside Limited v. Get On The Web Limited, WIPO Litigation No. D2016-0335 ).
In view of all these elements and circumstances, the Administrative Commission considers that the disputed domain names were not registered in bad faith by the Respondent and that, without it being necessary to rule on their use of bad faith, the condition of paragraphs 4 (a) (iii) and 4 (b) of the Guidelines is not met.
On the issue of the RDNH, the Administrative Commission does not consider that the complaint was lodged in bad faith on the part of the Applicant and does not constitute an abuse of the administrative procedure.
For the reasons explained above, the Administrative Commission rejects the complaint.
November 3, 2021
Original article: European Trademark Holder loses WIPO Case. –
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