We hope you will enjoy this edition of the Digest (vol. 4.2), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Telstra Doctrine Narrow in Application (tractus .com *with commentary)
‣ Century Domain Alleged Stolen (century .com *with commentary)
‣ Complaint Inadequate but Succeeds Anyhow (thenaturesconservancy .org *with commentary)
‣ Lack of Understanding of Policy Absolves Represented Complainant of Bad Faith (roberto .com *with commentary)
‣ Complainant Fails to Demonstrate That a Common Name Has Acquired Secondary Meaning (sese .com)
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Telstra Doctrine Narrow in Application
<tractus .com>
Panelists: Mr. Douglas M. Isenberg (Chair), Mr. Jonathan Agmon and The Honorable Neil Anthony Brown KC
Brief Facts: The Complainant is a business strategy consulting and operations management firm dedicated to helping clients invest and thrive globally. It first began operating and… offering its services in Thailand in 1995 and entered the U.S. market in 2001. The Complainant claims to have used the mark TRACTUS since at least as early as 2001, which is protected by registrations in the United States, China, India, and Vietnam, including U.S. registration dated June 9, 2015 (first used in commerce: December 31, 2001). The Respondent acquired the disputed Domain Name in March 2013, because “it is a short, single Latin dictionary word .COM domain name with inherent value and utility.” The Complainant alleges that the disputed Domain Name was “first registered in 2006” and “does not support active website content, but rather is parked and passively maintained with click-to-pay advertisements, under a privacy service to conceal Respondent’s identity.”
The Complainant further alleges that the website associated with the disputed Domain Name ”actively solicits offers for inquiry as to acquisition of the domain”. The Complainant used a broker to attempt to purchase the disputed Domain Name, offering US $5,000.00, but the broker stated that “[t]he seller replied he will only consider serious offers above US $50,000”, which well-exceeds Respondent’s reasonable out of pocket costs. The Respondent contends he “has been in the business of buying, selling, leasing, and developing generic and descriptive domain names since February 20, 2007, with over 10,000 generic and descriptive domain names in its portfolio” and that “[o]ver the past 2 decades, the Respondent has registered approximately seventy-eight (78) other valuable and memorable Latin words or religious related domain names of similar quality and value to the Disputed Domain”.
Held: The screenshot of the website associated with the disputed Domain Name, as provided by the Complainant, shows PPC links labelled “Dictionary Definition,” “Online Thesaurus,” and “Meanings Of Words.” Although these PPC links are not strictly “genuinely related to the dictionary meaning of the word(s) or a phrase comprising the domain name,” it is apparent that these PPC links do not “trade-off” of the TRACTUS Trademark or anything related to the Complainant or the TRACTUS Trademark. If anything, these PPC links seem to indicate that the Respondent may have taken “efforts to suppress PPC advertising related to” the TRACTUS Trademark. Accordingly, the Panel finds that the Respondent has demonstrated that it has rights or legitimate interests in the disputed Domain Name. This case appears to be analogous to a recent decision under the Policy brought against the same respondent as here, Royal Caribbean Cruises, Ltd. V. Anonymize, Inc. / Synergy Technologies, LLC, WIPO Case No. D2023-1708 <starofthesea .com>.
Further, the Panel finds the Complainant’s arguments with respect to passive holding inapplicable here, given that the disputed Domain Name is in fact associated with an active website – albeit one that displays only PPC links. In any event, even if the Panel considered the PPC page associated with the disputed Domain Name to constitute passive holding, the Panel does not find the doctrine applicable here given, at least, the Complainant’s failure to establish that the TRACTUS Trademark “has a strong reputation and is widely known” (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and further given the Respondent’s evidence of “actual or contemplated good faith use by it of the domain name”. Finally, with respect to the Complainant’s arguments regarding communications about a potential sale of the disputed Domain Name, the Panel agrees with the decision cited by the Respondent, Costa Crociere S.P.A. v. Yoshiki Okada, WIPO Case No. D2018-1632.
RDNH: Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard. Here, as set forth above, the Complainant (which is represented by an attorney) has failed to establish two of the three elements of the Policy, and it appears that the Complainant filed the Complaint, as the Respondent has described, only as a “Plan B” after the Complainant failed to negotiate a purchase of the disputed Domain Name at a price it was willing to pay. Perhaps, the Complainant should not have filed the Complaint.
However, the bar for RDNH, as described in WIPO Overview 3.0 above, is high. The Complaint was substantive and supported by both evidence and citations, indicating that the Complainant had a reasonable belief that it was entitled to pursue a claim for the disputed Domain Name on appropriate grounds despite the Panel’s conclusion that it failed on two of the three elements of the Policy. As a result, the Panel declines to find that the Complaint was brought in bad faith, in an attempt at RDNH.
Complaint Denied
Complainants’ Counsel: Patchen M. Haggerty, Perkins Coie LLP, USA
Respondents’ Counsel: Jason Schaeffer, ESQwire.com P.C., USA
Case Comment by ICA General Counsel Zak Muscovitch and Editor-in-Chief, Ankur Raheja:
Notably, the Panel in this case rejected the Complainant’s argument that Telstra applied since in this case there was no actual “passive holding”, i.e. complete non-use of a domain name or a blank or coming soon page). In the alternative, the Panel found that the Complainant’s failure to establish that the TRACTUS Trademark “has a strong reputation and is widely known” also made the Telstra doctrine inapplicable.
The Telstra case is the third-most cited UDRP case (See UDRP.tools, “Most Frequent Citations”), yet its proper application is actually quite narrow as noted by the Panel (Swinson, Blackmer, Willoughby) in the recent Sage. ai case (commented upon in ICA Digest Vol. 3.37):
“The Telstra case is long standing but relatively narrow in operation. In that case, the complainant’s trademark was unique and one of the most famous in Australia, the complainant provided substantial evidence of its reputation in Australia, the respondent had an Australian address and was likely aware of the complainant, and the respondent used a fake name (Nuclear Marshmallows) to conceal his or her identity. In the present case, the Complainant has not presented strong evidence to satisfy the test set out in Telstra. Merely asserting that the Complainant has a trademark and that the Respondent has not used the disputed domain name is typically not sufficient to satisfy the Telstra test. Unlike Telstra, the Panel here can consider uses of the disputed domain name that would be in good faith.”
The limited application, and indeed the common misapprehensions of the Telstra case are detailed by Nat Cohen in his commentary on the Terravita .shop case, in ICA Digest Volume 3.36. Parties and Panelists alike should be careful in invoking or applying the Telstra doctrine since its application is narrow and its requirements are considerable.
The Panel in the instant case referred to Costa Crociere S.P.A. v. Yoshiki Okada, WIPO Case No. D2018-1632 >Costa .com<. The Panel said that it agreed with this decision cited by the Respondent. In that case, the Panel wrote:
“Turning to the Respondent’s asking price of USD 1 million for the disputed Domain Name, it is the view of the Panel that, where an investor in domain names legitimately registers a domain name which appreciates in value, it is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name. The Respondent did not approach the Complainant for 21 years and quoted the price in question in response to an enquiry from the Complainant. In the view of the Panel, the facts of the case overall are more supportive of an inference that the Respondent registered the disputed Domain Name because of its Spanish dictionary meaning and in the hope that it would appreciate in value generally, rather than with the specific intention of selling it to the Complainant or a competitor of the Complainant for an excessive price.”
Century Domain Alleged Stolen
Century Time Gems Ltd v. Century Aluminum SysAdmins, Century Aluminum, WIPO Case No. D2023-3480
<century .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Swiss Complainant is a supplier of luxury watches under the name and trademark CENTURY and owns various registrations for the CENTURY mark, including the Switzerland trademark (March 14, 1990); and the United States trademark (March 18, 1986). The Complainant acquired the disputed Domain Name in December 2006 and continued to own the disputed Domain Name until the date of its acquisition by the Respondent. The Complainant exhibits evidence of the renewal of the disputed Domain Name via its hosting provider until January 19, 2024. The US-based Respondent is a supplier of aluminium products, primarily under the name and trademark CENTURY ALUMINUM and also owns a US trademark for the word mark CENTURY, since March 10, 2009. The disputed Domain Name was acquired by the Respondent on or about July 11, 2023, and resolves to a registrar-operated “parking page”.
The Complainant alleges that it can only be concluded that the Respondent acquired the disputed Domain Name in bad faith using or as the result of unlawful or fraudulent means and that the Respondent intends to sell it for a hefty profit; capitalize on the Complainant’s reputation; and/or intentionally mislead and confuse customers who have been visiting the disputed Domain Name since 2006 to find the Complainant’s goods. The Respondent contends that it had no intent in acquiring the Domain Name unlawfully or through illegitimate means, nor could it have acquired the domain as the Complainant suggested. Instead, the Respondent’s employee inquired about the domain and was allowed to purchase it (the purchase took place on July 7, 2023). The Respondent provides no further detail or documentation relating to the relevant inquiry or negotiation.
Unsolicited Supplemental Filings: The Complainant submitted an unsolicited supplemental filing on December 6, 2023, to which the Respondent objects. The circumstances in which a panel will accept a party’s unsolicited supplemental filing are discussed in Section 4.6 of WIPO Overview 3.0. In this case, it is unclear why the Complainant could not have carried out relevant investigations (and otherwise as may have been appropriate) before issuing the Complaint, to have been in a position to furnish the Panel with its concluded submissions from the outset. The Panel does not find there to be an exceptional or compelling reason to permit the Complainant to submit additional material of this nature at this stage in the proceeding.
Further, given that the Policy is intended to determine relatively straightforward cases of “cybersquatting” and related activity, the Panel does not consider the allegations raised by the Complainant, which would require an investigation into alleged fraud and criminal activity, to be matters properly within the remit of the Panel.
Held: The Respondent has established that it has traded under the name and the mark CENTURY ALUMINUM for many years, and that it has independent registered trademark rights in the mark CENTURY dating from well before the date of its acquisition of the disputed Domain Name. There is no evidence before the Panel to indicate that the Respondent’s business is anything other than bona fide or that it registered its CENTURY trademark in an attempt to circumvent the UDRP, or primarily to target the Complainant’s trademark. Nor, as further discussed below, is the Panel in a position to conclude that the Respondent acquired the disputed Domain Name as the result of dishonest activity on its part. The Panel finds in the circumstances that, under its independent rights in its CENTURY trademark, the Respondent has a claim to rights or legitimate interests in respect of the disputed Domain Name and the Complainant has failed to show otherwise.
The Complainant submits that the disputed Domain Name was transferred out of its ownership, without any knowledge or involvement on its part. However, it provides no information about any enquiries it may have made about the circumstances surrounding the transfer of the disputed Domain Name, or any explanation it may have been provided. That omission seems remarkable to the Panel, particularly in circumstances where the Complainant then goes on to accuse the Respondent of unlawful, fraudulent, and indeed criminal activity in acquiring the disputed Domain Name. Equally, the Panel finds the Respondent’s explanation of the circumstances surrounding the acquisition of the disputed Domain Name to be somewhat unclear. While it submits that it was “allowed to purchase” the disputed Domain Name, it does not state, for example, whether the disputed Domain Name was offered for sale, whether it made a speculative enquiry regarding the same, or whether some other situation was obtained.
Despite the lack of comprehensive evidence on the part of either of the Parties, the position remains that, despite the Complainant’s serious allegations, there is insufficient evidence before the Panel to conclude that the Respondent acquired (or has used) the disputed Domain Name either in fraudulent circumstances or for any purpose other than in connection with its existing business name and trademarks. The Complainant cannot therefore establish that the disputed Domain Name was registered or has been used in bad faith.
Complaint Denied
Complainants’ Counsel: FMP Fuhrer Marbach & Partners, Switzerland
Respondents’ Counsel: Frost Brown Todd LLC, United States
Case Comment by ICA General Counsel, Zak Muscovitch: As the Panel noted in this strange and unfortunate case, the Complainant alleged that it somehow lost the Domain Name but provided no information about the circumstances surrounding the alleged unauthorized transfer. Since the Domain Name ended up in the hands of an apparently bona fide business that shared the mark, CENTURY, the Complainant was out of luck and this Complaint was bound to fail despite the less than clear explanation of its acquisition by the Respondent. As I wrote in ICA Digest Vol. 3.49, “the UDRP is inadequate for helping Complainants who have had their domain name stolen” and “ICANN should create a new system specifically for domain name theft cases”.
Although not the focus of this case, I do want to comment upon the Panel’s rejection of the supplemental filings. The Panel found “there to be [no] exceptional or compelling reason to permit the Complainant to submit additional material of this nature at this stage in the proceeding”. As noted by the Panel, Section 4.6 of the Overview states that “unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel” and that “in all such cases, panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response”.
It is crucial that Panelists hold the line on supplemental filings as the Panelist did in this case. Exceptional circumstances must be shown. Otherwise, the UDRP’s streamlined procedure will be circumvented and expanded, depleting its efficacy and putting additional strain on the responding party and the Panel who must deal with a Complainant’s supplemental filing.
Complaint Inadequate but Succeeds Anyhow
The Nature Conservancy v. Waheed Fadi, NAF Claim Number: FA2312002074398
<thenaturesconservancy .org>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant states it is the world’s largest non-governmental conservation organization. With more than a million members and over 400 scientists, the Complainant impacts conservation in 79 countries and territories by tackling climate change, protecting ocean, land, and fresh water, providing food and water, and more. With donations reaching almost USD 885 million, the Complainant was ranked #15 on Forbes America’s Top 100 Charities in 2022. Since as early as 1956, the Complainant has prominently used its THE NATURE CONSERVANCY mark in connection with domestic and international conservation initiatives and partnerships. The Complainant asserts rights in the “THE NATURE CONSERVANCY” mark through its registration in the United States in 1988. The mark is registered elsewhere around the world.
The Complainant alleges that the Respondent is not using the disputed Domain Name for a bona fide offering of goods or services or a legitimate non-commercial or fair use. Instead, the disputed Domain Name is not being used. The Complainant correctly notes that it has to prove that the disputed Domain Name has been registered and is being used in bad faith, but fails to provide any arguments or discussion of that element of the Policy, and even though the Complaint was submitted by a well-known, large, law firm. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant alleges that the disputed Domain Name is not being used, but it fails to provide any evidence to support that allegation. This is surprising for at least two reasons: the Complainant clearly states that the Complainant has the burden of proving its allegations, and the Complaint was submitted by a well-known, large, law firm. In terms of paragraph 4.8 of the WIPO Overview 3.0, the Panel conducted limited factual research regarding disputed Domain Name and found that neither the disputed Domain Name resolves to a website at present nor a search in the Internet Archive indicates that the disputed Domain Name was used in the past. Thus the Panel finds that the disputed Domain Name is not being used. Failure to make active use of a domain name demonstrates that the Respondent is not using the disputed Domain Name for a bona fide offering of goods or services or a legitimate non-commercial fair use.
The Complainant makes no allegations regarding the bad faith element of the Policy. As already noted, that is surprising, given that the Complaint was submitted by a well-known, large law firm. The Panel operates under the principle “iura novit curia”, thus it will analyze this element of the Policy even though the Complainant does not discuss it. As already noted, the disputed Domain Name is not being used and also taking into account the factors provided under paragraph 3.3 of the WIPO Overview 3.0. In the present case, the Complainant’s trademark is well known. It is difficult to envisage any use of the disputed Domain Name that would not violate the Policy. There has been no response to the Complaint and the Respondent used a privacy service, that is, it attempted to conceal its identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed Domain Name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Transfer
Complainants’ Counsel: Alberto Zacapa of DLA Piper LLP (US), USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Why would an individual respondent in Pakistan register a domain name nearly identically corresponding to name of “the largest nongovernmental conservation organisation in the world”? The Respondent did not respond so that question is not answered. It was nevertheless inferred by the Panel that the Domain Name was registered and used in bad faith due to it being a ‘typo’ of a well known brand and not actively used.
The Panel however noted that the Complaint as submitted was inadequate since it contained unsupported allegations of non-use. Moreover, the Complainant failed to make any allegation regarding bad faith registration and use. We sometimes see this sort of thing with Complaints where the Complainant basically says, ‘look, somebody registered a domain name similar to our brand for no apparent reason and ipso facto, this is illegitimate and in bad faith’ with no supporting evidence required. Under the facts of this particular case, perhaps the Complainant thought that it was plainly a cybersquatting case and that nothing more was required, but to the Panelist, that was not the case. The Panelist actually suggested to the Complainant and the Complainant’s counsel, that in the future it submit evidence to support its allegations.
Lack of Understanding of Policy Absolves Represented Complainant of Bad Faith
<roberto .com>
Panelists: Mr. Antony Gold (Presiding), Mr. Ahmet Akgüloğlu and Mr. Pablo A. Palazzi
Brief Facts: The Italy-based Complainant, established in 1968, specializes in bakery products. It owns many trademarks for ROBERTO, including International registration dated February 5, 1990, designating 15 countries in Europe. The Respondent registered the disputed Domain Name on April 30, 1998, and it resolves to a website containing hypertext pay-per-click (“PPC”). The Complainant alleges that the Complainant’s business was well-established in 1998 and it is clear that the Respondent knew or should have known of the existence of the Complainant’s earlier trademarks. Moreover, the inactive status of the disputed Domain Name does not prevent a finding of bad faith under the doctrine of passive holding. Earlier in 2021, the Complainant made an offer of US $1,000, to which the Respondent replied that the offer would not move the Respondent to consider selling the disputed Domain Name.
The Respondent contends that the disputed Domain Name is an exceptionally common male name and it commenced using it 22 years ago to provide telephone directory services. It submits archived web pages showing its use of the disputed Domain Name from the early 2000s to date, which establish that it has been making use of it in contexts which do not have any connection with the Complainant and, currently, are the same in nature as the use it is making of domain names it holds for other personal names such as <matthew .com>, <eliza .com>, and <helen .com>. The Respondent further contends that the institution of these proceedings following the Respondent’s rejection of the Complainant’s offer of USD 1,000 is a Plan B strategy which points towards a finding of RDNH.
Held: As of the date of registration of the disputed Domain Name in April 1998, the Respondent was (and it remains) a business located in the United States. The Complainant has not adduced any evidence at all to demonstrate that the Complainant had repute in the United States as at the date of registration of the disputed Domain Name or any subsequent date. It follows that the consensus position reflected in section 3.2.2 of the WIPO Overview 3.0 is not supportive of the Complainant’s position. First, there is a complete absence of evidence that the Complainant’s mark was so widely known to lead the Panel to infer that the Respondent either knew of it or should have found out about it. Second, as a known first personal name in many countries, it is open as to whether the Complainant’s mark is inherently distinctive. There is no basis for finding that the Respondent should have known that its registration of the disputed Domain Name would be identical to the Complainant’s mark.
Furthermore, the Respondent’s claim that it registered the disputed Domain Name because of its value in being a widely used personal name, both in Italy and also elsewhere, is plausible and is accepted, particularly having regard to the other personal names registered by it. Whether the Respondent was under a positive duty to search for marks which might render its registration abusive is considered in section 3.2.3 of the WIPO Overview 3.0. In the circumstances of these proceedings, it is not necessary to discuss the existence or precise extent of any duty on the part of the Respondent to search because, even if it had undertaken some form of search which had revealed the Complainant’s mark, having regard to the fact of its varied potential uses and the Respondent’s intended use non-infringing of the disputed In these circumstances, the Panel finds that the Complainant has not established its burden of showing that the Respondent’s registration of the disputed Domain Name was in bad faith.
RDNH: The Panel notes that the Complainant has been professionally represented and many panels will find that such a party should be held to a higher standard. This was a misconceived Complaint in that the Complainant had no credible basis for alleging that its mark had a reputation in the United States and consequently that the Respondent was, or should have been, aware of it. Moreover, it adduced scarcely any evidence to support its assertions and it produced no evidence at all in relation to the alleged repute of its ROBERTO mark in the United States as of the date of registration of the disputed Domain Name; and the record suggests that the Complainant bought these proceedings because its offer of USD 1,000 for the disputed Domain Name had been rejected by the Respondent.
In these proceedings, some of the more egregious features associated with a finding of RDNH, such as manifestly untrue allegations against a respondent and attempts to mislead the panel, are absent. The overall impression is that the Complainant has simply not understood the Policy and the burden it has to meet. For this reason, by a very narrow balance, the Panel declines to make a finding of RDNH.
Complaint Denied
Complainants’ Counsel: Società Italiana Brevetti S.p.A., Italy
Respondents’ Counsel: John Berryhill, United States
Case Comment by ICA General Counsel, Zak Muscovitch:
To the Panel’s credit, it dismissed the Complaint and considered RDNH as it was obliged to do in the circumstances. The Panel however declined to find RDNH “by a very narrow balance”, finding that “the overall impression is that the Complainant has simply not understood the Policy and the burden it has to meet”.
This is a rather surprising rationale for not finding RDNH in the circumstances of the case. As noted by the Panel, the Complainant was represented by counsel. But not just any counsel – an IP firm established in 1882, according to its website. The Complainant’s website lists numerous awards, accolades, and IP organizations of which it is a member, and even states that, “We are official agents qualified to act directly through the Trademark Clearinghouse, ICANN’s trademark protection mechanism offering quick and cost-effective solutions to pre-empt and repress cybersquatting and abusive domain name registrations in new gTLDs.” Moreover, the Complainant’s law firm has been counsel in 133 UDRP cases over the last 20 years. Given the foregoing, if the Complainant’s counsel truly didn’t understand the UDRP after filing 133 cases as the Panel contends, that is far more damning a finding than an RDNH finding itself, and the Complainant’s law firm should immediately look into how it has managed to handle so many cases without understanding the UDRP Policy.
In any event, it is also surprising that filing a legal procedure that one doesn’t understand is not considered bad faith. Nevertheless, if that is the case, I would expect the Panel in the future to consider a Respondent’s lack of understanding of the legal prohibitions on registering domain names to be given equal consideration in determining that no bad faith existed.
Complainant Fails to Demonstrate That a Common Name Has Acquired Secondary Meaning
TRANS SESÉ, S.L. v. 陈财贵 (Chen Cai Gui), WIPO Case No. D2023-4283
<sese .com>
Panelist: Ms. Sok Ling MOI
Brief Facts: The Complainant, domiciled in Spain, has been a family-owned business since 1965. The founder, Alfonso Sesé Tena, started a business for the transportation of goods by road. In 1995, his children grew the business on the back of their father’s achievements with the opening of international locations and diversified the business beyond road transport into logistics and industrial services. The Complainant also owns and operates its official website through the domain name <gruposese .com> to promote its business activities. The Complainant owns the trademark registrations for two different trademark versions incorporating the name “sesé”, namely: SESÉ word mark in colour (filed in EU on June 12, 2023); and GRUPO SESÉ & lion head device mark (filed in U.K., Brazil and EU on November 22, 2017).
The disputed Domain Name was acquired by the Respondent on July 30, 2015 and redirected to <haoqq .com>, an English-language parking website with many links. The Respondent contends that the Respondent had spent substantial sums of money in purchasing the disputed Domain Name in 2015 and developing the website, and thus has legitimate interests in the disputed Domain Name. The Complainant’s earliest trade mark registration was filed in 2017, which is later than the date of original registration of the disputed Domain Name in 1999, and also later than the date of (acquisition) transfer of the disputed Domain Name to the Respondent in 2015. The term “sese” may represent the Chinese pinyin equivalent of various Chinese words such as “色色”（which means “lust”), and it is valuable as a “CVCV” type domain name.
Held: The Panel notes that the Complainant did not have (or if it does, does not provide evidence of such) registered trade mark rights in respect of the name “sesé” as at the date of registration of the disputed Domain Name (i.e., on December 6, 1999, or July 30, 2015). Given that the Complainant was founded in 1965, if there was evidence of trade mark rights (registered or otherwise) from before 1999 or 2015 for that matter, it would be incumbent on the Complainant to provide evidence of this in its Complaint – it does not, and merely suggests in a conclusory manner that if the Respondent had searched the Internet it would have found the Complainant, and since the disputed Domain Name is for sale, the Complainant must have been the Respondent’s target.
The Complainant’s name is “TRANS SESÉ, S.L.” and uses the domain name <gruposese .com> to promote its business activities. The Panel notes that the term “sesé” is a common Spanish surname and if used in such capacity may be lacking in distinctiveness. The burden of proof is on the Complainant to establish that through its use and promotion, the term “sesé” has acquired a secondary meaning such that the relevant public would view it as a badge of origin exclusively associated with the Complainant’s business. However, the Complainant did not furnish any clear date-specific evidence to show that it has acquired common law or unregistered rights in respect of the name “sesé” as at 1999 when the disputed Domain Name was first registered, or at 2015 when the disputed Domain Name was acquired by the Respondent.
All said, the Complaint contains a series of conclusory statements which are not supported by evidence and which do not even add up to allowing the Panel to draw an inference of bad faith on the part of the Respondent. In the absence of clear convincing evidence, the preference would be to preserve the status quo taking into account the relative prejudice to the parties.
Complaint Denied
Complainants’ Counsel: ABG Intellectual Property Law, S.L., Spain
Respondents’ Counsel: Qifafa Intellectual Property Services Co. Ltd., China