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Recent Case Notes & Commentary

A TRIX-Y SITUATION


Trix Investimentos Ltda, Trix investimentos e participações ltda. v. Steve Haehnichen, Recreational U-Turns and Falconry

 

WIPO Case No. D2024-0778

 

April 3, 2024

 

RATIO

 

Relief was denied to the Complainants in this case on the grounds that they had failed to establish that the Respondent had registered the domain name <trix.com> in bad faith and that the domain name was being used by the Respondent in bad faith.

 

BACKGROUND

 

There are two complainants in this case. The First Complainant, Trix Investimentos Ltda, was registered on July 23, 2021 and is the owner of the domain names <trix.com.br>, registered on October 19, 2023, and <trix.com.vc>, registered on May 12, 2021. The Second Complainant, Trix Investimentos e Participações Ltda., was registered on March 5, 2020 and is the registered proprietor of the trademark TRIX INVESTIMENTOS, registered on April 18, 2023. The Complainants are affiliated Brazilian companies that manage third-party funds for investment in the real estate market.

 

The disputed domain name <trix.com> was registered in on June 23, 1995, and is inactive.

 

The Complainants have alleged that the disputed domain name contains all of their trademark, and that the mark TRIX INVESTIMENTOS is distinctively associated with the Complainants in the Brazilian financial markets. The Complainants have alleged that since the website is inactive, the Respondent is not using it to offer any goods or services and has not made any legitimate non-commercial or fair use of the disputed domain name, but is only passively holding it.

 

Steve Haehnichen ("the Respondent") has claimed that he registered the domain name <trix.com> in 1995 and has used it only for legitimate purposes, as evident from the archived copies of the associated website that are available with the Wayback Machine, which is a website for looking up internet archives. According to the Respondent, by 1994, he had developed audio processing algorithms and signal processing software for sound effects, audio editing, and voice processing and that he formed “Trix Technologies” to solicit business, where “trix” was considered as one of the common alternate spellings of “tricks”. The Respondent has alleged that he was never in real estate and therefore there is no possibility of confusion with the business of the Complainants, and further the disputed domain name has become his primary email domain and has been used to host respected businesses and others who did not have their own email domain or website.

 

DECISION

 

The Panelist reviewed the matter in accordance with the UDRP Rules.


Identical and/ or confusingly similar

 

The Panelist found that the Complainants had established its rights in the trademark “TRIX INVESTIMENTOS”, and such mark is recognizable within the disputed domain name, since the element “TRIX” represents the second level portion of the disputed domain name. Therefore, the disputed domain name was indeed identical or confusingly similar to the Complainants’ trademark and therefore the first element in a domain dispute matter was satisfied.


Rights or legitimate interests

 

Considering the Panelist’s conclusions with regard to registration of the Disputed Domain Name and Use in Bad Faith in the following paragraph, there was no need to make a finding under this second element. Nevertheless, the Panelist noted that the Respondent has shown use of the disputed domain name for purposes unrelated to the Complainants years before they were established and before the TRIX INVESTIMENTOS trademark was registered, which would support a conclusion that the Complainants have failed under this element as well.

 

Registration and Use in Bad Faith

 

The Respondent had registered the disputed domain name <trix.com> in 1995, 25 years before either of the Complainants came into existence. The Complainants had failed to adduce evidence of any actual use, marketing, or advertising of their trademark TRIX INVESTIMENTOS prior to its registration in 2023, and the Wayback Machine reflects that that their domain names have been used only as of 2022, even though registered a year earlier. In all circumstances, the Respondent’s registration of the domain name predates the Complainants by at least 25 years, and therefore it is impossible for the Respondent to have been aware of the latter’s existence or intentionally target them with the disputed domain name.

 

Therefore, the Complainants had failed to satisfy the third element in a domain dispute matter.

 

ORDER

 

Having failed to establish all the three elements necessary in a domain disputes matter, relief was denied to the Complainants.

 

REVERSE DOMAIN NAME HIJACKING (“RDNH”)

 

It was clear in this case that since the Complainants came into existence at least 25 years after the Respondent’s registration of the disputed domain name. Therefore, the Panelist concluded that Complainants and their counsel should have conducted adequate due diligence before filing the complaint. Therefore, the complaint was brought in bad faith, and a finding of RDNH was made against the Complainants.

 

SIDE NOTE:

 

Interestingly, the law firm that represented the Complainants in this matter, Newton Silveira, Wilson Silveira e Associados, had also represented the Complainant in the case of Distribuidora Automotiva S.A. v. Jeff T Muzzy, Black Moon Designs WIPO Case No. D2023-5318 over the disputed domain name <pitstop.com>. In that case as well, the Respondent had been established much earlier than the Complainant, but as the Respondent was hiding behind a privacy shield, the Complainant was unable to ascertain the former’s potential rights and legitimate interests in the disputed domain name. The complaint was unsuccessful in the Pitstop case, the Complainant being unable to establish that the disputed domain name <pitstop.com> was registered and being used in bad faith. While no finding of RDNH was made in that case, the Complainants and the law firm in the Trix case were not so lucky this time.

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