Business Magazine Saved in UDRP Despite Trademark: Panel Finds “Drome” is Generic

Posted on the 02 April 2015 by Worldwide @thedomains

The Complainant Librairie des Artistes in Paris, France, just lost its bid to gain control over two adult domain names, and

Disputed domain names and were registered on September 24, 2014.

The Respondent is using the domain name to propose referencing links to other websites . The Respondent is using the domain name to run a sex shop online.

First, the Applicant must establish that it has rights to trademarks or service that he holds. As the Applicant holds the French brand SEXODROME, registered for services related to advertising, telecommunications, education and information technology, the Applicant has established that there is a trade mark of trademarks or service it holds.

The Commission considers that the disputed domain name is identical to the mark of the Applicant. Regarding the disputed domain name, the Commission considers that it is similar to the mark of the Applicant in that the domain name reproduces the mark invoked by simply adding the geographical term “Europe” and a link between the two words.

Since the disputed domain names are identical or similar to the mark for which the Applicant is the owner, the identity of the first disputed domain name and brand of the Applicant is established and that the similarity between the second domain contentious and brand of the Applicant may be confusing. Consequently, the Applicant has established that the first element of paragraph 4 (a) of the Policy is met.

The Applicant provides evidence of the registration of the French brand SEXODROME, which is not disputed by the Respondent and predates the registration of the disputed domain names. The Respondent has not received a license, warrant or Applicant’s mission contract to save the disputed domain names.

There also is no link between the Applicant and the Respondent. Therefore, the Commission considers that the Applicant has demonstrated that at first glance, the Respondent has no rights or legitimate interests vis-à-vis the disputed domain names.

However, the Respondent responds by citing the fact that the name “Sexodrome” is the usual way used across different countries and by different parties in the erotic and pornographic industry.

The Respondent provides a list of examples of how many parts make use of the name “Sexodrome” – or “Sexodrom” variant based on the language used – to describe a universe in trade of eroticism and pornography.

Finally, the Respondent argues make use of the disputed domain names is to offer SEO links to other sites, to sell sex toys via a third company based in Switzerland.

In view of the above, the Commission considers that the use that the Respondent is Domain Name is linked in the usual sense of the word “Sexodrome” and do not necessarily referring to the territory or services protected by the trademark rights of the Applicant.

The Commission also notes that the suffix ‘Drome’ in English or French – or “Drom ‘in German – is generic because of its use to refer to a movement or a race in words like velodrome, racecourse, aerodrome, motordrome. The Commission considers that the Applicant can not object to the international use of the term “Sexodrome” in a domain name.

Therefore, the Commission considers it likely that the Respondent has a legitimate interest in the disputed domain names. The criteria listed in paragraph 4 (a) (ii) of the Guidelines, is not satisfied.

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