Frank Schilling’s Name Administration Inc represented as usually by John Berryhill, Ph.D, Esq., has won another UDRP this time on the domain name Torneo.com which was registered on September 28, 1999.
“Torneo” is the common Spanish and Italian word for “tournament”
The UDRP was filed by Sport and Fashion Management PTE. LTD. of Moscow, Russian Federation which owns the domain name torneo.ru
The Complaint was filed on July 15, 2015.
The panelists of Christopher J. Pibus, Irina V. Savelieva and Pablo A. Palazzi were not appointed until a month later.
The decision which is dated October 23, 2015 was not transmitted to the parties until 10 days later.
All and all a very long time for a very short decision.
Here are the highlights:
“”The Complainant appears to be an assignee of the Russian Trademark Registration for TORNEO & Design dated August 19, 1999 for games, toys; gym and sports goods.
The Complainant has entered into a license agreement with a retailer called Sportsmaster Ltd., which operates more than 450 stores in over 150 cities in the Russian Federation, Kazakhstan, Belarus, Ukraine and China. The Complainant’s licensee sells sports footwear, apparel, accessories and equipment under different trademarks including the TORNEO trademark.
Upon review of the Complaint materials, the Panel finds that the Complainant does provide some evidence of use of the TORNEO mark in association with sporting equipment through its licensed retail stores and on websites at “www.sportsmaster.ru” and “www.torneo.ru”.
However, the Panel is not convinced that the evidence as filed supports a finding of reputation in the TORNEO & Design trademark beyond the jurisdictions of the Russian Federation, Kazakhstan, Belarus, Ukraine and China.
Therefore, the Panel is not prepared to question the Respondent’s statement that it was not aware of the TORNEO mark.
Further, the Panel acknowledges the Respondent’s evidence to the effect that the word “torneo” is the common Italian and Spanish word for “tournament”, which supports the Respondent’s contention that the word “torneo” is primarily generic in nature.
The Panel also takes into consideration the fact that the Respondent has owned and used the disputed domain name for over a decade, and during that time has continuously used the disputed domain name without objection as a parking site that provides links to third-party websites. The Respondent properly points out that pages from its website (associated with the disputed domain name) actually display links to other websites with content related to tournaments, specifically soccer tournaments. These links are obviously based on the generic meaning of “torneo”; there is nothing on the Respondent’s website connected to, or suggestive of, the Complainant’s products or business.
Accordingly, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(iii) of the Policy.””
