I think you’ll agree with me when I say:
If you have a well known brand, which is also a global trademark, and a third party registers your brand.club, then obviously you can get it back legally.
Piece of cake, right?
Here is one controversial WIPO domain name decision, which serves as a warning to global brands.
The complainant, 180 years old German company Staedtler, failed to get hold of FIMO.CLUB in a legal battle against a Ukrainian individual.
Single panelist Brigitte Joppich called it “a tough call”.
I agree with her. It was not an easy decision, and if you’re a brand owner, you should definitely read the following.
So why did Staedtler lose the case?
What it basically boils down to is potential good faith use by the registrant.
This WIPO domain name decision has some surprising details, and it will reveal that trademarks and worldwide brand recognition aren’t always sufficient to defend your rights. This case is also interesting as the nature of some of the newer domain endings makes it harder for the complainant to win the dispute.
This analysis will give you an understanding of the gray zones, so you can be pro-active where required and avoid going into legal battle too early.
The Complainant – Staedtler
Staedtler is a German manufacturer and supplier of writing, artist, and engineering drawing instruments. The firm was founded in 1835 and has an annual turnover of EUR 250M.
FIMO is a polymer clay used by hobbyists and professionals tracing back to 1939. Staedtler has various trademarks for FIMO including German trademark registration no. 905498 of May 17, 1973, an International trademark registration no. 399781 of June 9, 1973 and Community trademark registration no. 5778469 of April 21, 2008.
The Respondent – Maryna Kobielieva
Maryna Kobielieva is Ukrainian and a former reseller of FIMO products.
She registered FIMO.CLUB on 3rd July 2014. That was two months after the public launch of .club.
After the domain registration she left the domain name inactive. According to her defense the intention of use is to establish a virtual club “for those who truly love FIMO”.
Here is her prior history with FIMO according to herself and listed in the case summary:
– She was aware of the FIMO brand since 2008.
– She sold FIMO in her shop, “Shop Kyiv”.
– She is the registered owner of the domain name fimo.kiev.ua, from where she ran an online shop “Fimo-Kiev” selling FIMO until 2013.
– “Fimo-Kiev” showed their dedication to FIMO by organizing a contest named “Fimo Polymer Clay Techniques” in 2012.
– She used to own other related domain names to develop her business in the Ukraine.
She also noted that many other websites use FIMO as part of their domain name. I conclude that this point was made to underline Staedtler’s silent accept.
Three elements that Staedtler had to prove to win the case
In order for Staedtler to win the case and get the domain name, they needed to prove all of the following three elements:
1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
3) The disputed domain name has been registered and is being used in bad faith.
So how well did Staedtler do on these three accounts?
Ad 1) Correct
FIMO.CLUB is identical to Staedtler’s trademark.
Ad 2) Correct
Intended use is not sufficient to give the domain registrant the rights to the domain name. Since the domain name is not active, it is not sufficient that the registrant simply claims that she wants to use it for a virtual club of FIMO aficionados.
Ad 3) Incorrect
Here it gets interesting…
The domain name is inactive, so single panelist Brigitte Joppich had a tough decision to make, whether she could prove bad faith. She is very focussed on this point. As she stated in our conversation: “The problem is that panelists decide for bad faith, even in disputes where no bad faith use has been proven“.
How bad faith can be proven
Let’s dive in:
Here are the typical factors, where proof of bad faith has earlier decided cases in favor of the complainant:
A. Widely known trademark with a global reputation.
B. No response to the complaint.
C. Concealment of true identity.
D. Giving false details.
E. Impossibility of conceiving a good faith use (e.g. if registrant does not have a track record with the brand).
A. and E. usually carry the most weight when deciding bad faith, however in this case B., C. and D. proved to be the deciding factors.
Brigitte Joppich was satisfied with the co-operation of Maryna Kobielieva and the information brought forward by the Respondent.
Brigitte Joppich noted that:
“The Respondent replied to the Complaint, did not provide false contact details and did not try to conceal her identity. Because of the above mentioned facts and the Respondent’s submissions in this matter, the Panel finds that the Complainant has failed to prove registration and use in bad faith.”
In my phone conversation with Brigitte Joppich she also underlined that the Respondent had no prior disputes under her belt, which was also a factor ruling in her favour.
The decision means that Maryna Kobielieva is allowed to run a FIMO fan club using the fimo.club domain. If she uses it for other purposes, then it’s likely a proof of bad faith.
Results of similar WIPO domain name decisions
Earlier cases reached the same decision:
A. Estate of Gary Jennings and Joyce O. Servis vs. Submachine and Joe Ross over the domain name garyjennings.com. Here the registrant had created a website with reviews of Gary Jennings’ works. The Estate lost.
B. White Castle Way, Inc. vs. Glyn O. Jacobs, where the fan Mr. Jacobs, created a tribute page, patbenatar.com, to Pat Benatar. White Castle Way, Pat Benatar’s record label, lost the case.
Questions arising from the decision
The decision does ask some central questions though:
1) Maryna Kobielieva did not provide any proof about her role selling FIMO products. For all we know, she could have worked in the warehouse. I think this is an important aspect, since her supposed FIMO past, led the panel to not consider point E. Impossibility of conceiving a good faith use. The only evidence she did provide to prove this fact was a screenshot of the old website.
In my conversation with Brigitte Joppich she confirmed that no additional documentation was provided. I think that for instance business cards, receipts or other in her name should have been requested to further confirm the FIMO link.
2) It appears from the case files that her former shop was not an authorized reseller of the FIMO products, so Staedtler would most likely never have approved the use of their trademark in the .ua domain names she registered.
When checking the WHOIS information all domains are under WHOIS protection, so there was no proof brought forward that she was indeed the registrant. This documentation could have been provided by the domain registrar.
3) Is it easier for the Respondent to defend a .club than another top level domain?
I gave Brigitte Joppich the following example:
A former teacher at Harvard registers Harvard.university to create a website for former Harvard teachers to exchange knowledge. What are the chances to keep the domain name in a dispute against Harvard University ? She comments that a “.club certainly is more difficult than other top level domains due to it being a community term. It’s a matter of leaving no room for good faith use, and each case is individual”.
Here’s another one for you.
In a URS dispute Porsche vs. Interactiv Corporation over porsche.social, Interactiv argued that they planned to use the domain for a free community of Porsche enthusiasts. The panel ruled in favour of the Respondent. However the appeal was won by Porsche on the basis of ads appearing on the parked page claiming to show bad faith. However, the parked page belonged to the domain registrar – not Interactiv! There really is a fine line here. Read further about the case here.
So my conclusion is that a decision certainly could depend on the nature of the domain ending. This was also proven by Porsche’s failed attempt to get hold of porsche.social.
So what can brand owners learn from this case?
1) IF a registrant who has a history working with your brand registers a domain name matching your trademark, (unathorized or not) AND they intend to use the domain name for some common not for profit purpose, THEN you have a tough case. You actually have to sit on your hands, until the registrant makes a bad faith move.
Brigitte Joppich comments that “there is no policy on time limit”, so you cannot make a second dispute for not using the domain name five years from now.
2) If you turn the blind eye to others registering domain names with your brand in it, then it could serve as an argument of the respondent that you accepted their doings.
It does appear that Staedtler ignores this point in general. At SEDO there are currently several exact match trademark domains on sale.
Some prominent ones are:
fimoair.cn (FIMOAIR is another trademark)
We know that when trademark rights are not defended, then the trademark can end up as a generic term. And generic terms cannot be defended.
3) Some domain endings leave more room for good faith use.
Some of the newer domain endings have a community feel to them, which will make it harder to dispute a registrant’s intentions of use. Obvious ones in my book are .club, .social, .reviews, .fans and .gallery. It’s certainly important for brand owners to pay attention to this aspect.
You can read the full WIPO domain name decision here.
P.S.: Shortly after the decision Staedtler became the owner of the domain name. No price has been disclosed.