Trademark owner loses claim over domain

Sunday, June 26th, 2011

The case below has caught our attention after a French company called “Exploitation des Services Auxiliaires Aeriens Servair” established in 1971 made a UDRP complainaint against a domain owner who had registered serv-air.com on September 2010.

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0608

The disputed domain name leads to a page containing several hyperlinks in Japanese which redirect to a Japanese website about the outsourcing of payroll, human relations and labor.

One would have immediately thought that a company established over 40 years ago would have had outright claim to the domain name based on not only common trademark but also registered trademarks seeing that the Complainant has registered several generic and country code top-level domain names consisting of or incorporating the trademark SERVAIR and the Complainant has rights in the trademark SERVAIR with International registration numbers 795792 (registered on July 23, 2002) and 972651 (registered on November 9, 2011) and its Japanese registration number 1032601 (registered on September 17, 2009).)

Saying that however, the panelist’s in their decision found and stated in the decision AGAINST the Complainant the following:

“Apart from the fact that the disputed domain name has been found by this Panel to be confusingly similar to the Complainant’s trademarks for the purpose of the first element standing requirement, the Panel finds there is not much direct evidence of the Respondent’s intention to create a likelihood of confusion for the purpose of diverting Internet users to Respondent’s website based on the Complainant’s mark in particular. The Panel notes the website appears to be in use to post links to inter alia human resource services which bear little if any apparent relationship to goods and services provided by the Compliant under its SERVAIR mark. This is not a case in which, for example links to the direct competitors of the Complainant are in evidence.”

“This Panel understands that while the Respondent may have been a respondent in several UDRP cases, which may reflect a pattern of behaviour, such past behaviour is not enough to determine bad faith use in present case where clear evidence of bad faith use, as the use of pay-per-click links to competitors’ websites is lacking.”

So, the Complaint was denied because the Respondent had a legitimate business use for his domain name, even though he had a history of cybersquatting.

So here we have an example of a company who has registered international trademarks and appears to have legitimate rights to the domain based on said trademarks but the respondent is not using the domain name in a confusingly similar manner, so it would appear that Legitimate Business Use trumps all other grounds for complaint.