Spielwarenmesse eG of Nürnberg, Germany, has lost its bid to grab the domain name spielwarenmesse.com which is ToyFair in German in a UDRP away from Frank Schilling’s Name Administration which was represented as always by John Berryhill.
Here are the revelvant fact and findings by the three member panel:
The Complainant, Spielwarenmesse eG, is a German cooperative which has been organising a trade fair for the toy industry on an annual basis since 1950.
On March 31, 2006, the Complainant filed the German trademark application No. 306213990 for SPIELWARENMESSE, for goods and services in classes 16, 35 and 41. However, the German Patent and Trademark Office rejected the application on the ground of lack of distinctive character. In addition, it was of the opinion that the mark was a descriptive indication to be kept available for general use.
On September 28, 2011, the Complainant filed again a German trademark application for SPIELWARENMESSE this time designating exclusively “organization of trade fairs in the field of toys” in class 35. That application No. 30 2011 053 981 was again rejected by the German Patent and Trademark Office. However, the German Federal Patent Court annulled that decision by order dated September 12, 2012. Consequently, that trademark was finally registered on January 7, 2013.
On May 23, 2013, the Respondent filed a petition for cancellation of said trademark registration No. 30 2011 053 981 SPIELWARENMESSE with the German Patent and Trademark Office.
The Complainant also owns the Chinese trademark registrations No. 8187940 and No. 8187939 for SPIELWARENMESSE designating respectively classes 35 and 38 and filed on April 28, 2011.
The Complainant is the owner of a large number of domain names featuring the word “Spielwarenmesse”, including <spielwarenmesse.be>, <spielwarenmesse.cn>, <spielwarenmesse.co.uk>, <spielwarenmesse.co.za>, <spielwarenmesse.de>, <spielwarenmesse.eu>, <spielwarenmesse.com.mx>, <spielwarenmesse.in>, <spielwarenmesse.jp>, <spielwarenmesse-eg.com>.
“Little is known about the Respondent, Name Administration Inc. (BVI). It appears to be a company having significant domain name assets. The Respondent describes itself as being a leading company in the field of search advertising through its large portfolio of common words and phrases.”
“The Respondent has been the owner of the Domain Name <spielwarenmesse.com> since January 2002. “
The Complainant has shown by various exhibits that its toy trade fair is one of the most important ones in this field.
The Panel is therefore convinced that its fair has reached certain fame.…
