3.10 Reputation
As explained at 3.3, above, the key to demonstrating bad faith registration is targeting. A Complainant however, will generally be unable to prove targeting without demonstrating its reputation, as it is a trademark’s reputation that allows it to be sufficiently known for a Respondent to have targeted it. The degree of reputation required to be demonstrated will vary from case to case but in each case it is a requirement in order to prove targeting.
The mere existence of a trademark alone is insufficient for a Panel to conclude that a Complainant’s trademark has any particular reputation. Constructive notice of a trademark generally has no place in the UDRP (See 3.4) and therefore a Complainant must prove not only that it has a trademark, but that its trademark had a reputation such that the Respondent was likely aware of it and targeted it. Such evidence can comprise sales volume data, marketing expenditures, advertising examples, and search engine rankings, for example.
The timing and location of a trademark’s reputation is also important. The material time for proving reputation is prior to the domain name registration and not the time of filing of the Complaint. Where evidence of reputation is very limited, appears to be highly localized, or exists primarily in a niche field, for example, such that it is unlikely for the Respondent to have been aware of the trademark’s reputation, this would be insufficient to use reputation as a means of proving targeting. On the other hand, the fact that a Respondent is located geographically far away from a Complainant’s location or that a Complainant does not offer its goods and services in a Respondent’s location, is not necessarily determinative of a Respondent’s lack of awareness of a Complainant’s reputation. In such cases, a Complainant may still be able to succeed in demonstrating that the Respondent was likely aware of the Complainant by proving its reputation on the Internet or otherwise.
Satisfactorily proving that a Respondent was likely aware of a Complainant’s trademark is not the end of the inquiry as mere awareness of a Complainant’s trademark is not necessarily determinative of bad faith registration. Rather, something more would generally be required in order to demonstrate that not only was the Respondent aware of the Complainant’s trademark, but that the Complainant’s trademark and its associated goodwill were the primary reasons for the Respondent’s registration as opposed to, for example, merely benefitting from the bona fide attractiveness of the term for a variety of possible non-conflicting uses.
Other factors beyond reputation must be taken into consideration when determining bad faith, such as the degree of distinctiveness of the trademark, third party usage, and the Respondent’s intent and usage of the domain name.
Additional Information
Relevant Decisions
Bullion and Diamond Co LLC v. Dan Torgny Persson, Forum FA2504002148846 <bullionbank. com>, 3-Member, Denied
The Panel also considers that the parties appear to operate in geographically distinct regions. The Complainant is based in the United States, with offices in Virginia, and appears to serve primarily a North American clientele. The Respondent, by contrast, is based in Singapore and appears to focus on clients in South Asia. The Complainant Trademarks are valid in the United States, but not in Singapore or other jurisdictions in which the Respondent conducts its business.
The Complainant has not provided evidence regarding its business reputation, sales figures, advertising, marketing, or revenue in the Respondent’s region. Nor has the Complainant presented other facts supporting a finding that its marks were particularly well known at the time the disputed domain name was registered or used.
Solar Hero GmbH v. SINCRONIELEVADA UNIPESSOAL, WIPO D2024-4861 <hive-pt. com>, Denied, RDNH
The Complainant, represented by counsel, makes repeated key assertions regarding the alleged wellknown status and globally present nature of its trademark, of which it asserts the Respondent must have been “well aware”, without providing a scintilla of supporting evidence beyond the existence of the mark itself.
Michelios 3 and AmeXio v. Domain Manager, eWeb Development Inc, WIPO D2024-4344, <amexio. com>, 3-member, Denied, RDNH
In that regard, the Panel notes that the Complainant’s French trademark application was pending when the Respondent registered the disputed domain name. AMEXIO is not a dictionary or geographical word but rather a coined term, and the disputed domain name is identical to it. However, there is no evidence on the record of the Complainant’s foundation, operations, or reputation prior to July 2011. Specifically, there is no evidence on the record to support the Complainant’s assertion that it had used AMEXIO as its trade name for several years prior to 2011, no evidence on the record of its operations in France or other countries, no mention of when it commenced operations outside France, no evidence on the record that it is “one of the leading companies in Europe” in the field of ECM and CCM, and no evidence on the record that it operates a website in connection with any of its domain names.
Türk Hava Yolları Anonim Ortaklığı v. Domain Admin, FindYourDomain.com, WIPO DCO2024-0068, <thy.co>, 3-member, Denied
The Panel is aware that the trademark THY is well known particularly in Türkiye, however it is not possible for the Panel to determine whether the Respondent, who is located in the United States, was aware of the Complainant’s trademark THY at the time of registration of the disputed domain name; the Complainant has not provided evidence on that point… Therefore, it appears plausible that the Respondent acquired the disputed domain name and set its offering price not to target the Complainant but based on the attractiveness of the disputed domain name as a short dictionary word.
Cronos Group Inc. v. Mira Holdings, Inc., CIIDRC 23351-UDRP (2024), <cronosgroup.com>, 3-member, Denied, RDNH
The Complainant demonstrates that it is a global cannabinoid company trading publicly on the Nasdaq Global Market and Toronto Stock Exchange. However, as a business operating in a niche market, its reputation will necessarily be limited to consumers who may take an interest in its product or services, and its offering is not of a kind that forces itself on a person’s attention by its ubiquity of market presence.
Mangels Industrial S.A. v. Mira Holdings, Inc., WIPO D2024-2275, <mangels.com>, 3-member, Denied, RDNH
The Complainant’s trademark registrations are of limited geographical scope and the Complainant provides no evidence of the reputation and public profile of that trademark, nor any grounds on which to conclude that the Respondent was, or ought to have been, aware of its trademark when it registered the disputed domain name.
LTQ LIMITED DIGITAL COMPANY v. ginny kailyn, NAF Claim Number: FA2409002114826 <vidsavefrom .com>, Denied, RDNH
Furthermore, the mere registration of a trademark is not a basis for the Panel to conclude that the Complainant has any particular reputation or fame
Majid Al Futtaim Properties LLC v. Ayman Bajnaid, WIPO Case No. D2022-4130 <matajer .net>, Denied, RDNH
The Complainant in the present case did not provide evidence to establish that the Respondent registered the disputed Domain Name because of the Complainant, the term “Matajer” is not famous but a term in Arabic meaning “shops”, the Respondent is located in South Africa (where the Complainant does not have shopping malls), and there is no evidence that the Respondent is likely aware of the Complainant.
Dialoga Servicios Interactivos, S.A. v. Finlead AG, WIPO Case No. D2018-2768, <dialoga. com>, 3-member, Denied, RDNH
Even had the Complainant been in a position to demonstrate that the Respondent had been aware of the Complainant or its trademarks prior to registering the disputed domain name, which it is not, this fact on its own would not necessarily have led to a finding of registration in bad faith. Something more would have been needed to demonstrate on the balance of probabilities that the Respondent also had an intent to target trademark rights as opposed to merely benefitting from the presence and attractiveness of the dictionary word in the disputed domain name leading to a variety of possible uses which would not necessarily conflict with the Complainant’s rights.
Développement Information et Maintenance de Systèmes d’Information v. Jeff Park (박준우), WIPO Case No. D2022-0958 <dimsi .com>, Denied
The Complainant asserts that its turnover in 2020 was EUR 3 million; in contrast, it provides merely a single invoice from June 2006 for EUR 13,000. This is a far cry from demonstrating a reputation between April 2006 and June 2007 so as to support an inference that the Respondent was targeting the Complainant.
Digest Commentary
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Digest Vol.5.14 <playsports.tv>, Denied
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Digest Vol.5.4 <metarisk.com>, Denied
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Digest Vol. 4.40 <vidsavefrom .com>, Denied
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Digest Vol. 4.36 <gonso .com>, Denied
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Digest Vol. 4.35 <mangels .com>, Denied