.... and parties and their advisers should always remember that, if the case originally submitted is inadequate, they may be asked by the panelist to submit more evidence or give an explanation for some issue troubling the panelist. Such a case was Arla Foods amba v. Cirtex Corp., (WIPO Case No. D2011-1143). The disputed domain name was <bukoporn.com> and it was linked to a pornographic site.
The issue arose in the proceedings as to whether the domain name had been registered in bad faith and that depended on how well- known was the Complainant’s trademark. The reason how the issue came to be raised in that manner is apparent from the following extract from the decision.
“……Linking a domain name to a website with pornographic content is not in itself evidence of bad faith, and although the Complainant asserts that the trademark is well-known (particularly in Denmark), there has been no evidence submitted in support of this contention."
The issue, therefore, was whether there was evidence that the Complainant’s trademark was well known.
The Panel continued:
“It is clear that trademark protection for the mark BUKO has existed in Denmark, the USA and Germany (the nationalities to which the website appears to be aimed for) for a considerable time before the disputed domain name was registered. The age of the Danish trademark registration from which seniority is claimed in the Community Trademark Registration, supports to some degree the Complainant’s assertion that the mark BUKO is well-known there. Moreover, the website linked to the disputed domain name is available in Danish, English and German and features “real Danish amateur porn.”
Given opportunity to supplement its filings, the Complainant has submitted three opposition cases involving its trademark BUKO. The decision of the OHIM Opposition Division from August 29, 2001 notes the reputation of the trademark in Denmark. Reputation can only occur when the trademark is well-known. The Decision from the Boards of Appeal of the Office For Harmonization In The Internal Market (OHIM) from April 2, 2007, notes that the Complainant’s trademark is well-known for cheese products in Denmark, Germany, the Netherlands and Spain. The last supplemental filing, an opposition decision from the United Kingdom Intellectual Property Office holds that BUKO is a highly distinctive mark in relation to the goods for which it is registered.
From this evidence, the Panel finds that the Complainant has established a prima facie case in support of its assertion that the trademark BUKO is well-known, at least in Denmark and Germany. (emphasis added).”
In other words, the Complainant was given the opportunity by the panelist to supply additional evidence and if that invitation had not been accepted and acted on, the Complainant would have been at risk.
The case had a happy ending so far as the Complainant was concerned, as the evidence was held to be sufficient to show the fame of the trademark, but some such cases end in the claim being defeated and the relief sought being denied. It is therefore essential to produce in support of the claim, at the first opportunity, the best evidence available.