Panelist uses critical eye in UDRP filed unopposed.
People don’t respond to UDRP filings for a couple of reasons.
One is that they aren’t aware of the case against their domain. Perhaps they don’t check their email frequently, the information went to spam, they are traveling, they are incapacitated, etc. Or maybe they received the communication but didn’t understand it, so they didn’t bother to respond.
The other is that they are a bad actor and decide not to reply.
Either way, panelists often acquiesce to whatever the Complainant argues when the domain owner doesn’t respond.
So kudos to World Intellectual Property Organization panelist Jeremy Speres for his decision (UDRP) in a case over terravita .shop.
Laboratoire Terravita, a French food supplements company, filed the case. Someone in Switzerland owns the domain, and it resolves to a generic Shopify page asking the owner to set up the site.
Speres correctly considered that Terravita is a ubiquitous name for businesses. He did limited research and found:
The Panel’s own limited Internet searches for “terravita” reveal that there are many third parties that use TERRAVITA as a trade mark, including within the Complainant’s own supplements and related products industry. This is so globally and in the Respondent’s country of Switzerland specifically. Some global examples found by the Panel include, e.g., (i) an Indian supplements provider. See “www.terravita.in”, (ii) a range of medicinal teas and supplements sold by an American company, ZooScape LLC. See “www.amazon.com/s?k=TerraVita”, (iii) an American band. See “en.wikipedia.org/wiki/Terravita”, (iv) a golf club in Arizona. See “www.terravita.com”, and (v) a Spanish landscaping company. See “terravita.eu”.
There are numerous others. In fact, when the Panel searched for “terravita”, unrestricted to any particular region, the Complainant did not feature on the first few pages of search results at all.
If such searches are limited to pages published in Switzerland, where the Respondent is ostensibly based, none of the results featured on the first few pages of search results relate to the Complainant.
Based on the Panel’s trade mark searches limited to European trade mark registries, there are also many trade mark registrations consisting of or incorporating “terravita” in the names of parties ostensibly unconnected to the Complainant, including in classes relevant to the Complainant’s business.
The Panel is not therefore convinced that the evidence in the record establishes, on balance of probabilities, the Respondent’s targeting of the Complainant.
Given the common nature of the trademark at issue, the Complainant needs to show that the domain registrant was targeting it. Speres found this wasn’t proven:
The Domain Name resolves to a generic parking page offered by the ecommerce platform Shopify. There is nothing on that page, or otherwise in the record, that indicates any targeting of the Complainant specifically. The parking page does not relate to the Complainant’s industry, or any specific industry for that matter. It is not targeted at users in the Complainant’s territory of France. None of the Complainant’s other branding elements have been adopted. The Domain Name is not flagged in the databases of any information security vendors. The Domain Name is also not configured for email, as mail exchange (MX) records are not set, thus its potential usage for email-based fraud is excluded.
Without more, the Respondent’s website could just as conceivably be targeted at any of the other “terravita” offerings listed above as it could at the Complainant, or at none of them for that matter. In the circumstances, factors (i) and (iv) of the passive holding doctrine are against the Complainant. Given that the onus is on the Complainant to prove its case on balance of probabilities regardless of the Respondent’s default, the Panel finds that there is insufficient evidence of bad faith targeting of the Complainant.
Some other panelists would have just phoned this case in and ordered it transferred. It’s the easier thing to do. So, kudos to Speres for taking a step back and considering the case on its merits.
Post link: This WIPO panelist deserves kudos
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