TOGU Gebruder Obermaier oHG of Prien-Bachham, Germany, just lost a UDRP on the domain name Togu.com.
The domain owner Port Media Domains was represented by Esquire.com
Its not clear to me why the panel did not find Reverse Domain Name Hijacking (RDNH) as the domain name is 13 years old, and was registered prior to the Complainants trademark registration.
The panel did not address the issue of RDNH but did not specifically adopt the legal doctrine of Laches it did say: ” it is well to remember that whether it is called laches or not, delay and its effects may still play a role.”
Here are the relevant facts and findings by the panel
“Complainant is a German company that also operates in the United States of America in the field of supplying products that it describes as “toys, sport balls and exercise and training devices, and also with medical devices designed for therapy and rehabilitation”.
Complainant’s business originated in Germany. It has two United States trademarks for TOGU which were applied for on April 19, 2000 and registered on September 3, 2002, both of which dates are later than the acquisition of the disputed domain name which occurred on March 7, 2000.
Respondent Port Media Domains is a Hong Kong company whose business is to acquire domain names and develop or sell them to other entities.
Since it acquired the disputed domain name it has been used in general for links to goods and services of a general nature.
The three member panel found there was no bad faith on the part of the domain holder:
“Respondent has submitted and tendered evidence that its business is the registration of generic and descriptive common word and 2, 3, and 4 letter domain names, their commercial development and then the possible reselling of those names because they are attractive commercial propositions.
Moreover, Respondent’s submission and evidence is to the effect that this is what it was doing with respect to the disputed domain name and that it accounts for the advertising links on its website.
In the Panel’s view, Respondent’s activity in this regard is legitimate and lawful provided that it does not target or trade off Complainant’s trademark or engage in any other inappropriate conduct.
In the present case, there is no evidence that Respondent was either attempting to take part in or did take part in an abusive registration of the disputed domain name.
Not only is there a distinct lack of evidence to that effect but the history of events is such that it would have been difficult if not impossible for Respondent to engage in such an abusive registration even if it had been so inclined.
That is so because the two US trademarks relied on by Complainant (the only trademarks it relied on) were filed on April 19, 2000, and registered on September 3, 2002, both of which of course are after the disputed domain name was registered on March 7, 2000.
Complainant claims that the two US trademarks have a “priority” from 19 October 1999. That appears to be a “claimed priority” based on the fact that there were also German trademarks obtained by Complainant. Even if such German trademarks were registered prior to the registration of the disputed domain name, which is by means clear, there is no evidence that Respondent was aware of this or could have become aware of it before the disputed domain name was registered. That being so and Complainant’s case being unpersuasive, Respondent’s position is at least plausible and more likely than not to have occurred, i.e. that it registered the disputed domain name not to harm Complainant but because it was a potentially valuable short name that could be developed and which, being an acronym, might well become attractive to potential buyers. Although it is difficult to be definitive about such matters that go to the intention of Respondent some 13 years ago, the Panel concludes that there is no evidence that the registration of the disputed domain name and its subsequent use were carried out for any improper or illegitimate purpose.
The second basis on which the allegations of bad faith are put is that since at least March 2004, Respondent has openly advertised the disputed domain name for sale. Obviously, in some circumstances the conduct of a registrant with respect to selling a domain name has to be looked at closely, but in the present case there is no evidence from which an inference can be drawn that offering the disputed domain name for sale was an act of bad faith. Indeed, offering the disputed domain name to the highest bidder seems to be consistent with Respondent’s business and, as Respondent points out, UDRP panels have taken the view that it is legitimate to buy and sell domain names, as was noted in Audiopoint, Inc. v. eCorp a/k/a Chad Folkening, WIPO Case No. D2001-0509 (“Indeed, speculation in domain names when done without any intent to profit from others’ trade mark rights may itself constitute a bona fide activity under paragraph 4(c)(i)”).
The third basis on which Complainant put its case for bad faith was that Respondent has been “hiding behind Respondent WhoIs Privacy.” Again, in some circumstances the use of a privacy service together with other facts may suggest bad faith. But the Panel is also aware that privacy services are widely used for legitimate purposes and in any event the actual registrant has emerged without any apparent difficulty and the proceedings have not been handicapped. Nor are there any other facts that might tend to show from the use of the privacy service any abusive intent on the part of Respondent toward Complainant. Indeed, the only rational conclusion from the evidence is that Respondent more likely than not did not know of Complainant or its trademark even after the trademark was registered, let alone before it was registered.
In general, the Panel’s view is that this case is not one that appears to have any of the hallmarks of an abusive registration. Although the word “togu” itself would be said by some to be inherently distinctive, the evidence fails to establish that it is or was at any relevant time well known, particularly at the time of registration of the disputed domain name. There is evidence that Complainant started business in 1956, but not, so far as the evidence goes, under the name TOGU until 2000 or perhaps 1999 in Germany; there is, however, no evidence that Complainant was known as TOGU in the US or was even in the US at all until roughly the time the disputed domain name was registered or perhaps even after it was registered. Moreover, there is no evidence of any conduct indicating that Respondent was or is attempting to trade on an association with Complainant’s business reputation in the TOGU brand. The disputed domain name was registered so long ago that, on the evidence, the crucial fact appears to be that the early registration of the disputed domain name was prior to any evidence of international reputation in the TOGU trademark, and prior to the filing of the US application by Complainant. Taking considerations like the foregoing into account shows that it would be unsafe to infer a bad faith intention on virtually no evidence.
Accordingly, Complainant has not made out the third element that it is required to establish.
D. Laches
Respondent has submitted that Complainant should be dismissed on the ground of laches or delay, or that the “delay” of 13 years since Respondent acquired the disputed domain name and before the Complaint was filed should be taken into account.
It is certainly true that since the inception of the UDRP, panels have been reluctant to apply laches as a bar to these proceedings.
However, the Panel notes the following recent decisions: The New York Times Company v. Name Administration, Inc. (BVI), NAF Claim No. 1349045 where the delay was only six years and the three person panel unanimously held that “the circumstances of this case are the type that support a decision for Respondent based on laches.” Reflections of that transition are to be found in such cases as C. Brewer and Sons Ltd. v. Vertical Axis, Inc., WIPO Case No. D2009-1759; Vanguard Trademark Holdings USA LLC v. Nett Corp., NAF Claim No. 1262162; Libertad Servicios Fiancieros, S.A. de C.V.S.P.F. v. Telepathy, Inc., WIPO Case No. D2011-1635; UTV Limited v. Unitedeurope Consulting, Kwang Pyo Kim, WIPO Case No. D2011-2293 and Professional Rodeo Cowboys Association, Inc. v. Alternative Advertising Concepts, Inc. / Kenneth Forman, NAF Claim No. 1440736 where laches was found to be “a defence”.
The Panel would not suggest that laches is now universally accepted as a bar to proceedings, but rather that unexplained delays may be considered in deciding difficult questions of rights and legitimate interests and bad faith when so much time has passed since the registration of the domain name that it is made very difficult to decide, years after the event, what the intention or motivation of Respondent was at the time it registered the disputed domain name.
Delay may therefore, together with other factors, play a role in reaching conclusions on those difficult questions and may, in some cases, militate against the interests of the party responsible for the delay; see, for example, Victoria’s Secret Stores Brand Mgmt., Inc. v. Linda Cameron Pickard, Linda Watson, WIPO Case No. DAU2012-0015, noting the comment in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that “Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements” of the Policy. Indeed, in that last mentioned decision, the panel went further and held that “…(t)his Panel further believes that delay can, in exceptional circumstances, contribute to the Respondent acquiring through its subsequent bona fide use a right or legitimate interest in a domain name even though it had no such right or legitimate interest at an earlier time.”
In the present case, the Complaint fails because the evidence does not show Respondent registered and used the disputed domain name in bad faith and the Panel therefore need not make a definitive ruling on laches or delay. However, it is well to remember that whether it is called laches or not, delay and its effects may still play a role.
