PJS International SA of Luxembourg just lost its bid to grab the generic domain name Parajumpers.com which is owned by Vertical Axis who was represented by Esquire.com
The three member panel failed to find Reverse Domain Name Hijacking although the domain name Parajumpers.com was registered 4 years before the trademark was granted and 3 years before the complainant even registered its own domain name.
Here are the relevant facts and finding by the Panel:
The trademark PARAJUMPERS has been registered as a Community trademark on February 13, 2007 in Nice classes 9, 18 and 25.
The Complainant is also owner of an International trademark for PARAJUMPERS, and of many other national trademarks.
The Complainant has been giving the brand in license to APE & Partners since 2006, for the purpose of selling mainly clothing and outerwear with the brand PARAJUMPERS, with sales in over 20 countries, and recently also through the website “www.parajumpers.it”.
The disputed domain name was registered in April 2003 while the trademark of the Complainant has been registered in 2007, and its first domain name parajumpers.it in November 2005.
The general principle for the acquisition of title for a domain name, especially one consisting of a generic word or commonly used descriptive phrase, may be summed up as “first come first served”.
In the view of the Panel, the designation “parajumpers” is mainly generic.
However, “parajumpers” is not a “dictionary word”, but appears to be the name of a military squadron that is based in Alaska.
In the absence of special circumstances the principle “first come first served” still applies to adjudicate the conflict between a domain name and a later registered trademark.
The Panel finds no such special circumstances in the present case and the Complainant did not allege any circumstance that would give its trademark priority rights over the right of the Respondent to the disputed domain name.
This is especially so when there is no indication that the Respondent had the trademark or any intellectual property right of the Complainant in mind when registering the disputed domain name
Accordingly, the Respondent has a right or legitimate interest in the disputed domain name by virtue of the fact that it was free to register the domain name and did so before the registration of the PARAJUMPERS trademark relied on by the Complainant.
There is no evidence that the Respondent acted in bad faith when it registered the disputed domain name, among the several thousand domain names that it claims to own.…