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Not All Confusion is Actionable

A trademark holder’s rights are prospective; they may reach back on proof of trademark use in the market place and consumer recognition predating its registration; but otherwise prior use of an identical or confusingly similar term by another as a domain name or identifier of its goods or services belongs to the person who got there first. The Complainant in Park Hotel Leipzig Theo Gerlach OHG v. Niki Chelu, D2009-1559 (WIPO January 10, 2010) stated that it had opened a “new steak restaurant [to be known as the ‘meatery’] in one of [its] several hotels… and plans to extend the steak restaurant concept to other hotels within the chain.” The only problem is that the Respondent registered <meatery.com> for its business years earlier than the Complainant’s German trademark registration. Nevertheless, the Complainant “wishes to use the disputed domain name … in parallel with its <meatery.de> domain name so as to avoid confusing its guests.”

However, “wishing” to have a domain name is not a persuasive argument under UDRP. Neither is a respondent’s rejection of overtures to purchase the domain name persuasive. The Respondent in Park Hotel (a U.S. resident) “was never and is not [presently] interested in selling the disputed domain name … or any of his other domain names.” It also is not persuasive for forfeiture that a domain name was inactive until shortly before the complainant filed its complaint and when it became it active it was redirected to another website. What is true for a mark higher on the classification scale is not true for descriptive words and phrases. If a respondent has rights or legitimate interests in the domain name it is irrelevant how it uses it. Neither is it persuasive that “the disputed domain name <meatery.com> is identical with the Complainant’s MEATERY trademark .. [and] likely to confuse the Complainant’s international guests.” Most likely it will be confusing! But when the harmful consequence is self-created it will not be actionable.

Having exhausted its armamentarium, the Complainant throws in an allegation of inference, namely that it believed that “the Respondent is holding onto the domain name because he wants to earn money by selling it for a higher price when the Complainant’s EATERY trademark is successfully established.” See yesterday’s Note, distinction between allegations of fact and interence. The only evidence that gave the Panel pause was the redirection of the domain name to another website offering greenhouses for sale: “however, it is not necessary for this Panel to determine these issues as the Complainant has in any event failed to establish the third and final element of the test.”

The Respondent’s observation about the Complainant registering an English word for its trademark and restaurant that it failed to perform due diligence is apt because it spotlights the certification requirement that it has a meritorious claim (Rule 3[xiv] of the Rules of the Policy). Ordinarily, it is the respondent who must answer to its representation and warranty. Here, the Complainant clearly did not “check[] if the name is already in use.” The Respondent also notes that a “further search on Google will easily show that the name ‘meatery’ has been created by others many years ago and is in existence for very many years.” The Respondent evidently did not request and the Panel did not make a finding of reverse domain name hijacking.

Gerald M. Levine <udrpcommentaries.com>

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