Business Magazine, Holder of Italian Trademark Awarded In UDRP Based On Links On Parked Page

Posted on the 27 February 2015 by Worldwide @thedomains

Oscar Studio di Cavallin Oscar of Veneto, Italy, which owns an  Italian Trademark  on the term “leather crown” just won a UDRP on matching .com which was owned by Rob Monster of Epik who registered the domain name on July 18, 2012.

The Complainant operates its site at and has a Italian trademark registered on November 29, 2010 (filed July 28, 2009) in class 25 for clothing, footwear and headgear.The one member panel of Tony Willoughby, while making it clear “that in principle there is no reason why a proprietor of a domain name connected to a commercial pay-per-click website should not be able to establish rights or legitimate interests in respect of that domain name.

This might be so, in particular, where the domain name comprises an ordinary dictionary word (or words) and the revenue earning links are consistent with the meaning of the dictionary word (or words),  in this case, it appears that the Domain Name has been connected and is still connected to a pay-per-click website offering links to sites concerned primarily with the Complainants’ field of activity (e.g. footwear).” Many of the links are worded in the Italian language. Whoever is responsible for selecting the links (and the Panel accepts that it may well not be either the Respondent or the Registrar) is clearly aware that the Domain Name is an Italian brand of shoe. If there are links relating to leather crowns, the Panel has not been able to find them.””In the view of the Panel such a use cannot give rise to rights or legitimate interests in respect of the Domain Name. ”

“The fact that it may be a third party who is directing the links does nothing to assist the Respondent. The Respondent has to accept responsibility for what is on the site and particularly where it is providing him with a source of income.”

The Complainants point to the legend at the top of the Respondent’s website reading: “This domain may be for sale”. In the Panel’s experience this is most unlikely to constitute an express offer for sale. It is a generic legend to be found on the websites of most registrars and not specific to any category of domain name.

“At all events, the Panel is not persuaded that this was the primary purpose for which the Domain Name was registered.””As to the second claim, namely that the Respondent registered the Domain Name to take commercial advantage of the Complainants’ trade mark, the Complainants have a stronger basis for making the claim. ”

“The Respondent’s website is clearly targeted to a significant degree to the Complainants’ field of activity (not leather crowns) and the Complainants’ geographical location (Italy). Some of the links feature the Complainants’ products, but many also feature the products of the Complainant’s competitors.”

“While it is possible that the Respondent acquired the Domain Name blissfully unaware of the existence of the Complainants and the use to which the Domain Name has been put, the Panel finds it more likely that the Respondent intentionally set out to target the Complainants’ brand and to derive commercial gain on the back of the fame of the Complainants’ brand. The Respondent is a self-proclaimed expert in the “consumer internet” area and the Panel believes it more likely than not that the Respondent will have investigated the potential of the Domain Name before acquiring it and will have monitored the use to which it has been put. Had the advertising links been to sites concerned with leather crowns and not so specifically targeted to Italian footwear, the Panel might well have come to a different conclusion.”

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