中立但有態度
不炒作不忽悠

域名先于商標注冊,能認定惡意注冊及使用嗎

【案情介紹】
投訴人來自美國亞利桑那州,為一個體經營者,聲稱自己經營一家專營足球運動服飾及相關產品的商場,于2000年10月10日開始將“SOCCER MALL”作為商標使用,之后于2014年向美國專利商標局提出商標申請,最后于2016年6月28日正式核準注冊。

投訴人指控稱:自開始啟用該商標以來,其通過長期持續使用并申請注冊,獲得了受法律保護的商標權,被投訴人注冊的爭議域名跟其商標完全相同,且解析網站后沒有進行善意使用,而是設置各種鏈接,并對外公開出價轉讓,構成惡意注冊及使用。

被投訴人未提交答辯意見。被投訴人來自中國,相關信息通過注冊商采取了隱私保護。爭議域名注冊時間為2000年8月10日,也即比投訴人正式使用商標的時間早2個月時間。

【專家組裁決】
專家組審查認為:投訴人首次使用商標的時間是2000年10月10日,相比較爭議域名注冊時間晚了2個月,而正式申請商標注冊及核準注冊的時間更是晚了好幾年,據此難以認定被投訴人在當時注冊域名的時候具有惡意,最終裁決駁回投訴人請求,爭議域名繼續由被投訴人持有。

為闡述這個觀點,專家引用了多份在先案例,并援引《世界知識產權組織專家意見綜述》(第二版,2011/2013)指出:盡管在UDRP程序中,投訴獲得支持的第一項要件所需要的商標權并沒有注冊時間的限制,但當爭議域名注冊時間早于投訴人商標注冊時間時,則難以認定域名注冊具有惡意,因為域名持有人在注冊域名時難以預料投訴人在后尚未存在的商標權(原文:[A]lthough a trademark can form a basis for a UDRP action under the first element irrespective of its date …, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.)。

【高錆律師點評】在UDRP程序中,一項投訴要獲得支持,需要同時滿足三個要件,第一個要件是判斷投訴人商標或商業標識與爭議域名是否相同或構成混淆性近似;第二個要件是判斷被投訴人對爭議域名是否享有權利及合法利益;第三個要件是判斷被投訴人對爭議域名的注冊及使用是否具有惡意,注意第三個要件中的惡意需要同時體現在注冊及使用過程中。本案專家組裁決并沒有按照常規的審查順序逐項進行,而是直接審查第三項,即惡意的問題,并明確指出域名先于商標注冊,不存在注冊的惡意,故第三項要件不滿足,其他兩項要件就無需審查,最后就直接作出駁回投訴人請求裁定。

顯然,專家組在該案件中審查邏輯明顯區別于曾一時引起熱議的微信域名案,兩案裁決的個中理由及背后的法律文化值得研究。

附:裁決書
DECISION

Hassan Shams v. Private Registration / WhoisGuardService.com

Claim Number: FA1608001689685

PARTIES

Complainant is Hassan Shams (“Complainant”), represented by Shawn Diedtrich of Prudens Law LLC, Arizona, USA. Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with Nanjing Imperiosus Technology Co. Ltd.

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 17, 2016; the Forum received payment on August 17, 2016.

On August 23, 2016, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the Forum that the domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected] Also on August 25, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On September 26, 2016, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is an individual located in Phoenix, Arizona, USA, who owns a retail

business called SOCCER MALL.

Complainant owns and has continuously used the mark SOCCER MALL from the date of its first use in commerce on October 10, 2000, in connection with the marketing of retail and online store services, including selling soccer uniforms, footwear, socks, shin-guards, jerseys, gloves, pants, shorts, knee protectors, t-shirts, sweatshirts, sweat pants, soccer balls, backpacks, travel bags, duffel bags, baseball hats, caps, equipment accessories and related sporting goods and sportswear.

Complainant’s long and continuous use of the mark in commerce and its extensive efforts to market its goods and services under the SOCCER MALL mark have created in it common law trademark rights in the mark.

Complainant holds a registration for the SOCCER MALL service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 4,986,219, filed September 16, 2014, registered June 28, 2016).

Respondent registered the domain name on August 10, 2000.

The domain name is confusingly similar to Complainant’s SOCCER MALL mark.

Respondent has not been commonly known by the domain name.

Complainant has not granted to Respondent permission to use its SOCCER MALL mark in the domain name.

Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain name.

The domain name resolves to a website featuring multiple links that divert Internet users to other parked websites.

Respondent has caused these links to resolve to other websites which operate in competition with the business of Complainant.

Respondent presumably gains monetarily from the operation of such links.

Respondent has no rights to or legitimate interests in the domain name.

Respondent has made a general offer of the domain name for sale at several of the resolving webpages for a price in excess of its costs of acquisition of the domain name.

Respondent has registered and uses the domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

SUPPORTED LANGUAGE REQUEST

Complainant requests, pursuant to UDRP Rule 11(a), that the language of this proceeding be English. Complainant makes this request in light of the Chinese language Registration Agreement. In order to ensure fairness and justice to both parties, it is established practice to take UDRP Rules 10(b) and (c) into consideration in determining the language of the proceeding. Factors that panels have found persuasive include: (i) WHOIS information placing Respondent in a country whose identity suggests a familiarity with the English language, and (ii) the filing of a domain name registration which evinces an understanding of the English language. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (the panel there exercising discretion in deciding that the language of the proceeding be English, contrary to the Registration Agreement, based on evidence that respondent had command of English).

The Panel may also weigh the cost in terms of both time and economic expense which would be incurred in enforcing the Chinese language agreement, to the extent that it might result in prejudice to either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, and reciting that: “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).

Complainant makes the following contentions in support of its request:

i. The domain name is in English.

ii. All websites to which the domain name resolves are in English.

iii. The offers of the domain name for sale are made in English, and the

domain name sales sites are in English.

iv. The domain name parking sites used by Respondent are in English.

v. The items for sale on the websites are in English.

vi. The term “soccer” that is used to refer to the sport on all the websites, is

a term used primarily in English-speaking countries, and Chinese

speakers do not translate the term “soccer” into Chinese, but translate

the term “football” or a similar term into Chinese to describe the sport.

vii. Complainant is a small business operator in the United States.

viii. Respondent has chosen to conceal its identity through a Private

Registration service.

In light of these considerations, and further considering that Respondent has not responded to the Complaint, we conclude, pursuant to UDRP Rule 11(a), that sufficient evidence has been presented by Complainant to justify permitting this proceeding to be conducted in the English language. Accordingly, all aspects of this proceeding shall be conducted in English.

FINDINGS

Complainant has failed to show that the contested domain name was registered in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In view of Respondent’s failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant’s undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

Registration and Use in Bad Faith

While Respondent makes no contentions with regard to the application of Policy ? 4(a)(iii) to the facts set out in the Complaint filed in this proceeding, we are obliged to take note of the fact that the record shows the date on which Complainant first used the SOCCER MALL mark in commerce was October 10, 2000. This is two (2) months after Respondent’s August 10, 2000, registration of the domain name. We also note that the Complaint claims that Complainant holds a registration for the SOCCER MALL service mark, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,986,219, application for which was filed September 16, 2014, with registration granted on June 28, 2016. Thus both the application filing and registration dates for the mark fall years after Respondent is reported to have registered the contested domain name. In light of this, it is impossible for us to find that Respondent registered the domain name in bad faith. See, for example, TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Forum March 28, 2005), concluding that, because a respondent’s domain name registration predated a UDRP complainant’s trademark filing date and its asserted date of first use in commerce:

[T]here was no bad faith on the part of Respondent when registering the subject domain name.

This is because:

[A]lthough a trademark can form a basis for a UDRP action under the first element irrespective of its date …, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.

“WIPO Overview of WIPO [World Intellectual Property Organization] Panel Views on Selected UDRP Questions,” Second Edition (2011/2013).

Accord: John Ode dba ODE and ODE – Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, WIPO Case No. D2008-0641; and Meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH, WIPO Case No. D2009-0943.

We therefore find that Complainant has failed to show that Respondent registered the contested domain name in bad faith as provided in Policy ? 4(a)(iii).

Because of this conclusion, and because Complainant cannot prevail in this proceeding unless it proves each of the three elements of Policy ? 4(a), it is unnecessary for us to inquire into the question of confusing similarity of the domain name with Complainant’s mark under Policy ? 4(a)(i) or the issue of the existence of Respondent’s rights to or legitimate interests in the domain name under Policy ? 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that, because a UDRP complainant must prove all three elements under the Policy, a complainant’s failure to prove any one of those elements makes inquiry into the remaining two unnecessary). See also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into assertions of a respondent’s rights to or legitimate interests in a domain name or its registration and use of the domain name in bad faith where a UDRP complainant could not satisfy the requirements of Policy ? 4(a)(i)).

DECISION

Complainant having failed to establish one of the elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.

Accordingly, it is Ordered that challenged the domain name remain with Respondent.

Terry F. Peppard, Panelist

Dated: October 5, 2016

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