WEDNESDAY, 10 DECEMBER 2008
Everyone knows that INPI is the acronym for Institut National de la Propriété Industrielle. At least domainers do.
This is one of the reasons why in a UDRP decision issued 27 November 2008 (case D2008-1536), the WIPO Arbitration and Mediation Center' appointed panelist ordered the transfer of the domain name inpi.com to the French Trade Mark Office.
The respondent was indeed a domainer (owning a gargantuan portfolio of more than 35.000 domain names) who had "previously been involved in many domain cases where the transfer of domain names to the respective complainant was ordered".
As a hors d'oeuvre, in the present case the respondent had also neglegted responding to a cease and desist letter from the Trade Mark Office.
Skewing bad faith clues one after the other, the panelist found that:
Now, while such decision is rich in motivation and should taste creamy for an IP Office's palate, just to add a little note of pepper, we note that INPI is also known in the IP world as the acronym for "Instituto Nacional da Propriedade Industrial". And fort dessert, how about chewing some uspto.com or wipo.com ?
"the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraph 4(a)(ii) of the Policy.As to bad faith registration, on balance, the Panel finds it more likely than not that the Complainant knew of third parties’ rights in the disputed domain name at the moment of its registration or acquisition:
- The Complainant has been active in the field of protecting intellectual property in France since its creation in 1951 and is also widely-known internationally because it is involved in the adaptation of international intellectual property law. Given the distinctiveness of the INPI Marks and the high profile of the Complainant and its marks, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights in the INPI Marks.
- This finding is supported by the fact that the Respondent uses the disputed domain name to provide links to third parties’ websites including direct competitors of the Complainant. As the name “INPI” is in itself not descriptive of the Complainant’s services, the Respondent would not have placed related ads on the website without knowledge of the Complainant and its activities. The fact that the Respondent is generating links in the French language even if through an automated process and for users in France suggests that the disputed domain name is used for its trademark value.
- The Panel is aware that the disputed domain name was first registered in 2000 but in the absence of any explanation by the Respondent finds it likely that it was acquired by the Respondent, a professional domainer, and in any event, most probably with the intention of making money from the likely confusion with third parties’ rights. (...)
- Finally, even if the Respondent did not specifically know of the Complainant or of its trademark rights when it registered the disputed domain name, the finding of bad faith registration would be confirmed under the specific circumstances of this case by the Respondent’s “wilful blindness”. The Respondent is evidently a professional domainer. Previous panels have found that a sophisticated domainer who regularly registers domain names for use as pay-per-click landing pages cannot be “wilfully blind” to whether a particular domain name may violate trademark rights (...), at least not in cases like the present where the Complainant as trademark owner is internationally known and its rights are revealed as hits on the first page of a Google search. (...)
As to bad faith use, by fully incorporating the INPI Marks into the disputed domain name and by using the website under such domain name as a parking website, providing links to direct competitors of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant’s website (...)"