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12 Year Old Domain Saved In UDRP

Posted on the 19 September 2013 by Worldwide @thedomains

The Complainant INDÚSTRIA E COMÉRCIO DE CONFECÇÕES DI MIRMAY LTDA of Brazil, lost its bid to grab the domain name from a chinese registrant.

The domain name was registered on November 16, 2001.

The Complainant was founded in 1994.

Here are the relevant findings of the one member panel:

It manufactures and sells a wide range of fashion products under the Trade Mark and the trade mark DI MIRMAY, including clothing, bags and accessories.

The Trade Mark is derived from the Complainant’s trademark DI MIRMAY, which is part of the

DIMY/DIMIRMAY is one of the most desired fashion brands in Brazil, particularly amongst teenage girls and young women. The Complainant’s DIMY products constantly appear in fashion editorials in the most important Brazilian fashion magazines.

The Complainant’s DI MIRMAY and M device trade mark was registered in Brazil with a filing date of December 20, 1996.

Its registration for the word mark DIMY-DIRMAY was registered in Brazil with a filing date of August 22, 2005.

The filing date for each of its registrations for the Trade Mark in Brazil is August 27, 2007.

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.

The Complainant claims unregistered trade mark rights in the Trade Mark dating back to 1996. However, the earliest evidence of use filed with the Complaint is an excerpt from a Brazilian fashion magazine dated July 2007. The Panel is therefore unable to conclude, on the evidence, that the Complainant’s rights in the Trade Mark predate July 2007.

Although the disputed domain name was registered six years before (1) the date of registration of the Trade Mark; and (2) the earliest available evidence of use of the Trade Mark, the consensus view in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (Second Edition) (“WIPO Overview 2.0”) in relation to this issue is as follows:

“Registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP”.

The disputed domain name contains the Trade Mark in its entirety.…

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