The domain name WorldTradeCenter.com, was lost in a UDRP along with WorldTradeCenter.net.
The one member panel decision was handed down by the On-line ADR Center of the Czech Arbitration Court (CAC).
The complainant is the World Trade Centers Association, Inc, who was represented by RODENBAUGH LAW.
The domain WorldTradeCenter.com was registered on November 2, 1996 and owned is Earth Plaza of Ft. Lauderdale, Florida who has owned the domain name since at least 2002 according to DomainTools.com but may have been the original registrant.
In 2011 the domain was listed for sale by Aftermarket.com as we reported.
The Complainant is the holder of trademark registrations consisting of the sign WORLD TRADE CENTER in multiple countries, including U.S. trademark registration no. 1469489 for the word mark “WORLD TRADE CENTER”, registered with the USPTO on December 15, 1987, in class 42 (hereinafter, the “WORLD TRADE CENTER trademarks”.
The Complainant is a not-for-profit corporation, incorporated in the State of Delaware on August 22, 1969. It aims at the stimulation of trade and investment opportunities for commercial property developers, economic development agencies, and international businesses looking to connect globally and prosper locally.
The disputed domain name
The disputed domain names currently do not resolve to an active webpage but according to screenshots.com had an active page (or parked page) since June 2014.
For an undefined period of time, the first disputed domain name worldtradecenter.com was used to link to a memorial page for the 9/11 attacks in 2001.
It is uncontested that the disputed domain name has also been used as a parking page containing pay-per-click advertisements and that the second disputed domain name
The one member panel concluded:
The Complainant has, to the satisfaction of the Panel, shown the Domain Names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
Then in discussing the case the panel said:
For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the domain names; and
3. The domain names have been registered and are being used in bad faith.
The Panel has therefore dealt with each of these requirements in turn.
Confusing similarity of the Domain Name with existing rights
The Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the WORLD TRADE CENTER trademarks, which are used in connection with its business, it is established that there is a trademark in which Complainant has rights.
The Panel considers the disputed domain names
Accordingly, the Complainant has made out the first of the three elements that it must establish.
No legitimate rights
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the domain names.
It is established case law that it is sufficient for the Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the Domain Name in order to shift the burden of proof to the Respondent.
The Panel notes that the Respondent has not been commonly known by the domain names and that the Respondent has not acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain names was not authorized by the Complainant. There are no indications that a connection between Complainant and Respondent existed.
The Respondent states that the disputed domain names were used for non-profit, humanitarian purposes only. While the Panel notes that the disputed domain name
In the circumstances of this case, the Panel is of the opinion that Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Bad faith
Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith and that it is being used in bad faith
According to the Panel, the awareness of a respondent of the complainant and/or the complainant’s trademark rights at the time of registration can evidence bad faith
In the present case, the Respondent claims to have discovered the Complainant’s trademark rights shortly after having registered the disputed domain name
The Respondent was unquestionably aware of the Complainant’s trademarks when registering the second disputed domain name
Moreover, the Respondent’s subsequent use of the disputed domain names has clearly been targeting the Complainant’s WORLD TRADE CENTER trademarks. The Respondent does not contest that the disputed domain names recently referred to a parking page containing sponsored links, including links to websites which promotes third party services that compete with those of Complainant.
The Panel considers that the Respondent is using the domain names in bad faith, as the Respondent is using the Complainant’s WORLD TRADE CENTER trademarks in an attempt to attract Internet users with an apparent intent of commercial gain.
The panel did not discuss why it took the Complainant some 20 years to raise the issue and file the UDRP even though it was actively marketed for sale in 2011.
And what about the “World Trade Center’s” in other Countries ?. All I hope is that Respondent files a Court case. Again I puzzle why those with valuable domains do not register them with German Registrar and through German office ?. It is against german law to transfer a .com to even a winning party .
Any suggestions on a reliable German Registrar?
I would suggest Hxonet.net /1API GmbH
Hexonet.net
The UDRP is part of the domain registration contract for any gTLD in any country as far as I know.
Clearly a greedy overreaching TM holder got lucky. Respondent will need to file RDNH charges in Ontario, Canada it looks like… (Tucows)
There is too much shadiness and inconsistency with the UDRP process.
I had to sue an overreaching TM holder. They got a crooked single panelist to rule in their favor and reverse hijack an extremely generic domain.. Ultimately, I dropped the charges once we agreed on a settlement.
Though the respondent shot himself in the foot by parking it. That I never did.
March 1, 2016 – A restaurant in Chicago filed a TRADEMARK Application for the words “THANK YOU”. If the registration is allowed, no other restaurants will be able to use it.
April 5, 2016 – Published for opposition, Citibank owns ThankYou.com and has filed a TRADEMARK Application for the words “THANK YOU”, where it applies to promoting customer loyalty in relation to banking.
If the Denver based non-profit souvenir TM holder of “World Trade Center” gets a TM Registration for “Thank You” not only will you not be able to say Thank You in a restaurant or bank, but anywhere on the planet.
Steve – The “thank you” lawsuit is specifically about competong credit card marketing campaigns the two banks are doing. It only applies in that context. You are way over generalizing that it would apply to anything else.
It’s good to hear the banks are competing. Allow more Thank You TM registrations, soon all the convenience stores and supermarkets will have to remove the words from the plastic grocery bags.
It seems like a good decision to me. I am not sure why people seem to think it is unfair. The Complainant has a very old trademark and the defendant had no good use for the domain, so it seems like a typical UDRP case. They may not have registered the domain in bad faith, but the trademark holder should be able to obtain it via a court case.
ignoring the huge elephant in the room that is or was the actual world trade center.
You are obviously a clueless idiot.
What a terrible decision based on a subjective opinion , not on fact. The complainant has been sleeping on its ‘right’ and such kind of a ‘right’ holder should not be protected by law as it desroys the legal stability of a society.
Domain Observer – What you are talking about is the “doctrine of laches”, which is when there is an
unreasonable delay in the lawsuit. Waiting 15+ years to file suit can be a reason for the judge to deny their claim, although the defendant did not really have any harm from the delay (like if they built a big, active site on the domain over the years) so I am not sure how much weight it would have in this case.
Thanks.
Would say the complainants mark would be very weak due to the number of businesses trading under the term “world trade center”. Think they could only protect this for narrow purposes.
Main reason the loss I think though is the weak defense, 1 panelist, no lawyer representation and a not 100% obviously generic term, type of dispute that could be easily lost.
These are the cases wherein I wish the IP legal experts such as Mr. Berryhill or Howard Neu or Steve Lieberman would comment.
I see both sides. But I couldn’t really make a decision either way.
When I hear and see “WorldTradeCenter.com, I think http://www.wtc.com . But that’s just me.
Without knowing what the arguments and evidence were in the case, there’s not much beyond the self-justifying summaries in the decisions themselves. When you read a UDRP case, and look at the “respondent” and “complainant” sections, you are only seeing the panelist’s summary of their arguments which may, or may not, be complete or accurate. The standout line seems to be:
“While the Panel notes that the disputed domain name has indeed been used to refer to a humanitarian web page and to a non-profit memorial tribute site, the Respondent does not contest the fact that it recently referred to a parking page containing sponsored links. Moreover, it appears from previous correspondence between the parties that the Respondent was aware of the Complainant’s trademark rights since 1996.”
It would be interesting to know what was in that previous correspondence. Did the Respondent, at that time, claim that the domain name would only be used as a tribute site, and then later switch it to parking? Who knows? Certainly not anyone reading the decision.
The definition of “World” includes the word “Planet”. Planet would be any in the galaxy, solar system, or universe known to man. All can agree MARS is a world. The Respondent could have claimed FAIR USE of the domain thru the offering of a service that trades parcels of land on Mars and Earth with Martians.
Right on Steve. The respondent lost the name through inaction not through the complainant’s minimal efforts using legal template language.
It is unfortunate, that simply parking a domain name, is reason enough to risk loosing the name, in the event someone else, somewhere, or anywhere else in the world, may have legitimate rights to the name..
So that means we need some .mars domains.
.venus
.jupiter
.uranus
.saturn
…