Yesterday we wrote about a UDRP being filed by the owner eLeader.eu against eLeader.com.

However the case was actually decided yesterday by the Czech Arbitration Court (CAC) who awarded the domain name to the owner of eLeader.eu which is a company out of Poland.

Its another decision in my opinion one in which the panel decided it was going to give the domain to the TM holder and then found a way to hand it over saying that:

“”” The fact that the registration of this trademark was granted after the disputed domain name was registered does not prevent a finding of identity or confusing similarity.”””

Right like someone in the US in going to be held to a standard of not only knowing every registered trademark somewhere in the world but domain holders apparently must also know every unregistered common law trademark as well, even if the company and common law trademark is in Poland.

Here are the relevant facts and findings by the panel:

The company name ‘eLeader’ (Full name ‘eLeader Sp. z o.o.’ equivalent of ‘eLeader Ltd.’), was registered in the year 2000.

“Although the mark eLeader was not registered until later, it has been a distinctive identifier of all eLeader’s products and services, internationally, since the inception of the company (year 2000), and as such eLeader asserts that, before the date of Domain Name registration, eLeader had established common law rights to the mark and that the mark had acquired secondary meaning.”

“The Trademark ‘eLeader’ Registered in Poland in 2004.”

eLeader owns the following ‘eLeader’ domains:

eleader.pl (since 2000)
eleader.com.pl (since 2000)
eleader.biz (since 2005)
eleader.eu (since 2006)
eleader.us (since 2011)

“The Respondent has never made any use of and has not demonstrated preparations to use the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

“This domain name has only ever contained a message regarding the domain being for sale and some unrelated advertising.”

“The Respondent is not making a legitimate non-commercial or fair use of the domain name. The domain has only ever contained a message regarding the domain being for sale and some unrelated advertising.”

i. The page shown on the Domain Name has listed this domain name as ‘For Sale’ at all times since its initial registration.

ii. Other than the ‘for sale’ message, and unrelated advertising, the domain has been parked and held passively for the duration of the registration. It has never contained any real content.
iii. In November 2005, Respondent demanded 75.000,00 EUR for the domain.

“”The above clearly shows that the intention of the Respondent has been to sell the Domain Name, and not use it in any bona fide way. It has been established in previous UDRP decisions that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and is being used in bad faith.””

“According to a reverse WHOIS search using the Respondent’s email address (hostmaster@newmall.com), the Respondent has registered 516 other domains, almost all of which seem to have been registered speculatively, are not used for any legitimate purpose, and are ‘for sale’ in the same way (examples: ibmco.com, porncable.com, dvdsky.com, savestore.com, amcom.com, cinemaya.com, ibiskm.com, sex161.com, eserv.com, accessoires.com)””

“Respondent has a history of registering domains containing, or similar to, established trade marks of third parties. Examples : ibmco.com [IBM], amcom.com [Amcom/Amcom Software], cinemaya.com [Cinemaya – popular international film magazine http://en.wikipedia.org/ dvdsky.com [Sky Tv] , eserv.com [Dell engineering services, formerly eServe]).””

“”As stated in paragraph 4(b)(ii) of the URDP, a ‘pattern of such conduct’ can be considered evidence of bad faith registration and use.”

“”As further evidence of Respondent’s pattern of bad faith conduct, Respondent has repeatedly been challenged via the URDP and lost.””

“Examples:

i. dadanet.com (see DADA S.p.A vs. Hyunjong Lee, 2007, WIPO Case No. D2007-1663).
ii. julbo.com (See Julbo vs. Hyunjong Lee, 2008, WIPO Case No. D2008-0525).”

“”Complainant has also proved to have used the <eleader> trademark since the year 2000 in such a way to acquire common law rights on the name since the very beginning of its use, namely (at least) since the year 2001 when eLeader won the Microsoft ‘Most interesting application for Mobile Devices – 2001’ award.””

“”The Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired rights, for this reason the registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP.””

“The Panel is therefore satisfied that the Complainant has established that it has rights in a registered trademark which is identical to the disputed domain name. The fact that the registration of this trademark was granted after the disputed domain name was registered does not prevent a finding of identity or confusing similarity.””
“”Respondent has no connection or affiliation with Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant’s trademark. Respondent does not appear to make any legitimate use of the domain name for non-commercial activities.””

“”On the contrary, it appears that Respondent used the disputed domain name to direct consumers to a presumed Pay Per Click (PPC) parking page suggesting general links to websites that offered goods and/or services of different nature. Respondent does not appear to have been commonly known by the domain name.””
“”Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate non commercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder””

“””In addition, Respondent’s argument that the links related to “leadership or leader” that have appeared on Respondent’s web site do not make its interest illegitimate due to the fact that they were auto-generated by the technology of the Domain Parking Sites, is not sufficient to escape Respondent’s responsibilities for the contents displayed on the web site.””
“”It is in fact true the opposite, namely in the case of advertising links appearing on an “automatically” generated basis, Panels have generally found that a domain name registrant is normally deemed responsible for the content appearing on its website, even if it is not exercising direct control over such content.
Thus the claim of the Respondent that the content is auto generated reinforces Complainant’s thesis that Respondent is passively holding the disputed domain name and that it has been registered speculatively, with the primary purpose being the sale of the domain for an amount far in excess of out-of-pocket expenses””

.
“”Therefore, Respondent has not shown any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name in accordance with the UDRP Policy . Respondent did not provide any elements to demonstrate, as requested by the Policy, that he used or made preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services.””

“”In fact the Policy requires the Respondent to show, before any notice to him of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.””

“”It is the Panel’s view that the mere detention of the disputed domain name does not demonstrate any preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.””