The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center has ordered the transfer of two .boutique domain names.
The WIPO panellist ruled on 29 June that two disputed domain names, paul-shark.boutique and paulshark.boutique, were registered in bad faith in a bid to profit from Dama’s numerous trademarks protecting the Paul & Shark clothing brand.
Dama first attempted to tackle the registration of paulshark.boutique by issuing a cease and desist letter to the registrant, an individual in Ukraine who runs a fishing and hunting equipment business.
The Italian brand owner argued in its Uniform Domain Name Dispute Resolution Policy complaint that the registrant’s subsequent registration of the second domain name, paul-shark.boutique, which followed receipt of the initial cease and desist letter, along with its “portfolio of domain names that incorporate verbatim other well-known brands”, unveiled a pattern of comprehensive domain name abuse.
The registrant also attempted to sell the domains to Dama for $300,000.
In response, the registrant argued that ‘Paul & Shark’ is not a well-known trademark in Ukraine where it allegedly uses the domain name, and its own business uses ‘paulshark’.
The domain names were allegedly registered with the intention to put up a website in order to promote the fishing and hunting equipment business, but its target customers were not active internet users and Ukraine has been at war since 2014, plunging the country into an economic crisis.
Richard Lyon, the sole panellist assigned to the case, ruled that, on the balance of probabilities, the registrant was likely aware of the ‘Paul & Shark’ trademark when registering the disputed domain names.
“Looking most favourably upon the respondents as possible, their registration of many domain names incorporating well-known brands reveals more than a passing knowledge of the UDRP and the conventions of domain name registration,” he explained, ordering the transfer of paul-shark.boutique and paulshark.boutique to Dama.
Source: http://ipprotheinternet.com/ipprotheinternetnews/domainnamesarticle.php?article_id=4991#.V4OUyjUgfm4
The WIPO panellist ruled on 29 June that two disputed domain names, paul-shark.boutique and paulshark.boutique, were registered in bad faith in a bid to profit from Dama’s numerous trademarks protecting the Paul & Shark clothing brand.
Dama first attempted to tackle the registration of paulshark.boutique by issuing a cease and desist letter to the registrant, an individual in Ukraine who runs a fishing and hunting equipment business.
The Italian brand owner argued in its Uniform Domain Name Dispute Resolution Policy complaint that the registrant’s subsequent registration of the second domain name, paul-shark.boutique, which followed receipt of the initial cease and desist letter, along with its “portfolio of domain names that incorporate verbatim other well-known brands”, unveiled a pattern of comprehensive domain name abuse.
The registrant also attempted to sell the domains to Dama for $300,000.
In response, the registrant argued that ‘Paul & Shark’ is not a well-known trademark in Ukraine where it allegedly uses the domain name, and its own business uses ‘paulshark’.
The domain names were allegedly registered with the intention to put up a website in order to promote the fishing and hunting equipment business, but its target customers were not active internet users and Ukraine has been at war since 2014, plunging the country into an economic crisis.
Richard Lyon, the sole panellist assigned to the case, ruled that, on the balance of probabilities, the registrant was likely aware of the ‘Paul & Shark’ trademark when registering the disputed domain names.
“Looking most favourably upon the respondents as possible, their registration of many domain names incorporating well-known brands reveals more than a passing knowledge of the UDRP and the conventions of domain name registration,” he explained, ordering the transfer of paul-shark.boutique and paulshark.boutique to Dama.
Source: http://ipprotheinternet.com/ipprotheinternetnews/domainnamesarticle.php?article_id=4991#.V4OUyjUgfm4
