Titoni AG v. Synergy Technologies, LLC, Domain Administrator
WIPO Case No. D2019-0395
In examining an unfortunate case for the unsuccessful Complainant, who previously owned yet failed to renew the disputed domain name, it is important to emphasise some key characteristics of the UDRP which determine how Panels adjudicate cases. In particular, this case reminds us of the specific purposes the UDRP serves in resolving domain disputes and demonstrates how Panels perform the balancing trick of making, or not making, findings of bad faith on the balance of probabilities.
The Case
The Complainant, a swiss watch and jewellery company which operates under the name “Titoni,” holds a Swiss trademark for TITONI, registered in 1991. While its main website operates at <www.titoni.ch>, it previously owned the disputed domain name <www.titoni.com>. Despite the reputation the Swiss have for quality timekeeping, as Orson Welles noted in his own maudlin way in The Third Man, the Complainant’s products may have been running slow, as it failed to renew the disputed domain name in time, and it was subsequently put up for auction. This happens more frequently than it should. The editor of Domain Times admits that he once forgot to re-register one of his domain names, with the usual consequences.
The Respondent purchased the disputed domain name in December 2018 at auction, and it is currently used for a website that has pay-per-click links relating to names and genealogy.
The Complainant tried to buy it but to no avail.
The Panel’s Findings
The Panel[1] had no difficulty in determining trademark rights for the complainant, and that the disputed domain name was identical to the complainant’s trademark. However, noting the “finely balanced” nature of the case, the panel had to consider well-put arguments from both parties in determining whether the disputed domain name was used and registered in bad faith. That was where the result was determined.
The Complainant argued that the value of the disputed domain name derived from their “reputation and long use of their trademark”, a fact it asserted the Respondent was well aware of. The Respondent denied this and said that the disputed domain name held value independently of the complainant’s trademark rights, due to the fact the disputed domain is a short <.com> domain name and that “Titoni” was a common surname and first name with “global third-party usage”. The Respondent highlighted that the Complainant provided no proof that the disputed domain name was registered with reference to the Complainant’s trade mark, and the ancestral/name-based pay-per-click links demonstrated that the registration and use of the disputed domain name was in good faith and outside of the bounds of the Complainant’s mark.
The panel made it plain that this was a delicately balanced case and it could have gone either way. The Complainant had traded under Titoni for many years, and that “Titoni” was a somewhat uncommon name, yet the name was not exclusive to the Complainant, due to its generic use as surname and first name. Also, the trademark did not possess a high degree of fame. Highlighting the Complainant’s acknowledgement that the Respondent was aware of the Complainant’s name “[at the] latest since the respondent received a notice from the complainant” (emphasis added) the panel found that, on the balance of probabilities, this showed the Complainant was unable to prove, that the Respondent was aware of the complainant’s trademark at the time it registered the domain name. You can see these points building up in favour of the Respondent.
In the absence of any cybersquatting activity or targeting of the complainant, the panel found that the complainant was unable to prove bad faith registration use and the Complainant was denied.
This case highlights that there are many factors at play in determining bad faith registration and use, including the fame and reputation of the complainant’s trademark, and the way in which the disputed domain name is used, particularly when it has some sort of generic meaning, and intrinsic value outside the scope of the Complainant’s trademark.
For Complainants to be successful, they must produce substantive evidence of bad faith use and registration that directly targets their own commercial activity.
While mistakes may happen and domain names may forget to be renewed, this case serves as a reminder that the UDRP is not designed to “make up for the mistakes or negligence of Registrars or Complainants” but rather provides a quick and easy course of action for complainants who have been subject to direct targeting of their trademarks and cybersquatting.
Once again, the facts will determine which said of the case will carry the day, when it could be either.
[1] The panel includes the Hon Neil Brown QC