The Complainant Sumol+Compal Marcas, S.A. of Carnaxide, Portugal, just won a UDRP against BuyDomains.com on the domain name Frize.com
This is actually the 2nd UDRP Buydomains.com lost this week, earlier this week they voluntarily handed over the domain name gamewinner.org but since it was a published UDRP decision is counts as a loss.
Here are the relevant facts and findings by the three member panel:
The Complainant is Sumol+Compal Marcas, S.A, a company incorporated in Portgual.
The Complainant was created in 2009 through the union of two companies, Sumolis and Compal.
The Complainant is a leading manufacturer of non-alcoholic beverages in Portugal.
The Complainant is the owner of numerous trade mark registrations, both word and composite, for FRIZE (the “Trade Mark”). The earliest of these registrations was granted on May 6, 1998 in Portugal.
The Respondent is BuyDomains.com which, since 1999, has been in the business of registering domain names that become available when an existing registration expires. The Respondent maintains a large portfolio of domain names, some of which it has acquired for the purposes of resale.
The Respondent registered the Disputed Domain Name on January 8, 2004.
“”The Respondent seeks to overcome the Complainant’s prima facie case by showing that it is using the Disputed Domain Name in connection with a bona fide business.
The CEO of the Respondent provides affidavit evidence that the Respondent’s business involves registering and maintaining “domain names that incorporate common and/or generic dictionary words, phrases, acronyms, abbreviations and/or descriptive terms for which the available evidence suggests no single party has exclusive rights”, some of which are offered for sale to the general public.
The Respondent submits that using the Disputed Domain Name to direct traffic to a website with sponsored links is a legitimate use within the terms of the Policy.
There are a number of UDRP decisions which have addressed the resale of domain names, or the use of domain names for websites with advertising or PPC links. The panel in Media General Communications, Inc. v Rarenames, WebReg, WIPO Case No. 2006-0964 summarized some of the relevant principles as follows:
“These practices are most likely to be deemed legitimate under the Policy when:
- the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
- the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
- the domain name in question is a “dictionary word” or a generic or descriptive phrase;
- the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
- there is no evidence that the respondent had actual knowledge of the complainant’s mark.”
Here, the Respondent is clearly in the business of registering and reselling domain names, as well as using them to display advertising links.…
