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WIPO rules for dribble.com and against dribbble.com

Labeled as news in Legal Discussion started by Dominium, Apr 30, 2018.

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  1. Dominium

    Dominium Active Member VIP

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    Common sense seems to have prevailed in a dispute over dribble.com. The complainant dribbble.com (three bs) attempted to reverse hijack dribble.com in my opinion, although WIPO is not willing to support this assertion.

    However, WIPO has ruled in favour of the respondent, the owner of dribble.com, and denied the complaint as registration in bad faith could not be established. Dribble.com was registered in 1997, 12 years before dribbble.com adopted its trademark. Dribble.com is also an ordinary English word.

    Link: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2018-0419
     
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  2. Dominique

    Dominique Established Member

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    The case is absolute nonsense, but its a good example of treating domain name comprised of a dictionary word.

    Complainant must establish all three elements to succeed:

    1. The Complainant must demonstrate that it has rights in a trademark
    + The disputed domain name must be shown to be identical or confusingly similar to the trademark
    (dribbble=dribble)

    The fact that domain name is comprised of a dictionary word (ordinary English word) is not
    relevant at this stage !
    The Panel stated that: "...the minimal difference between the complainants trademark and the
    disputed domain name constitutes confusing similarity under the Policy"
    As we can see, the Panel finds that the disputed domain name is confusingly similar to the
    complainants trademark.

    2. Complainant must prove respondent has no rights or legitimate interests in respect of the domain
    name.

    The Panel skipped the legitimate interest factor and consider the respondents lack of
    bad faith and the complainants reverse domain name hijacking.

    But its worth to mention Wipo 3.0 (2.10.1):
    "Panels have recognized that merely registering a domain name comprised of a dictionary word or
    phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels
    have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not
    necessarily suffice. In order to find rights or legitimate interests in a domain name based on its
    dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended
    for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party
    trademark rights.
    For example, a hypothetical respondent may well have a legitimate interest in the domain name
    <orange.com> if it uses the domain name for a website providing information about the fruit or the
    color orange. The same respondent would not however have a legitimate interest in the domain

    name if the corresponding website is aimed at goods or services that target a third-party trademark.
    Panels also tend to look at factors such as the status and fame of the relevant mark and whether the
    respondent has registered and legitimately used other domain names containing dictionary words or
    phrases in connection with the respective dictionary meaning."

    3. Complainant must prove respondent registered and used the disputed domain name in bad faith.

    Finally, under the third requirement of the Policy, the Panel took into account that the word
    “dribble” is an ordinary English word
    , and its just an indicator of a good faith.
    The fact that respondent registered the disputed domain name in 1997 (12 years before the
    complainant adopted its trademark) + "there is no suggestion in the record in this case that the
    respondent had any notice of the complainant’s plan" is much more important to show respondents
    good faith !
     

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