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Reverse Domain Hijacking Where Complainant Knew but Did Not Disclose Geographic Significance of Mark

In the case of Oy Vallila Interior Ab v. Linkz Internet Services, a 3-member WIPO Panel denied the Complainant’s efforts to have the disputed domain name <vallila.com> transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith.

The Complainant is in the business of providing fabrics and interior design services and claimed trademark rights in its registered mark VALLILA in the European Union. The Respondent registered the disputed domain name in 2005 and used it to establish a website that contained sponsored links. In response to an anonymous inquiry made on behalf of the Complainant, the Respondent offered to sell the disputed domain name for USD $32,000.

The Panel found that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith. Vallila is the name of a geographic location, namely, an inner suburb of Helsinki, Finland. The Complainant did not disclose in its complaint that its mark was also a place name, though correspondence introduced by the Respondent showed the Complainant had that knowledge.

There was no evidence the disputed domain name was used to take advantage of the trademark significance of the Complainant’s disputed domain name. The web page at the disputed domain name contained sponsored links—but only about a third of them referred to Finland. The Panel observed that in an ordinary case, that amount of connection to the place name would not be enough to show geographic use of the domain name. But the Complainant did not advance anything sufficiently concrete to link the Respondent with specific knowledge of the Complainant. Even if the Respondent did have such knowledge, it may well also have had knowledge of the geographic significance of the term Vallila and the many other businesses operating there which have Vallila in their name. The price sought for the disputed domain name, therefore, could not necessarily be attributed to the disputed domain name’s resemblance to the Complainant’s trademark.

The Panel went on to find that the Complainant brought the UDRP proceeding in bad faith. The Complainant had argued that the only possible reason for registering the disputed domain name was to take advantage of its significance as the Complainant’s trademark. Moreover, the Complainant relied on the communication from the Respondent’s broker offering the disputed domain name for sale for USD $32,000 as evidence of both registration and use in bad faith. But the Panel found that failure to disclose the geographic significance of the name had the potential to mislead the Panel in a way which could be, and in this case was, highly material to the Panel’s decision. The panel found there to be reverse domain name hijacking.

Oy Vallila Interior Ab v. Linkz Internet Services, WIPO Case No. D2017-1458

By Evan D. Brown, Attorney

Evan focuses on technology and intellectual property law at the law firm of Neal & McDevitt. He maintains a law and technology focused blog at evan.law and is a Domain Name Panelist with the World Intellectual Property Organization deciding cases under the UDRP.

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Equally important (I think), and necessary to Gerald M. Levine  –  Nov 2, 2017 2:00 PM

Equally important (I think), and necessary to underline, is the Panel’s view on failing to disclose material facts: “partial disclosure cannot be condoned.” This view has found expression in a number of earlier decisions, with the same consequence, denial of complaint and sanctions.

Gerald - agreed. Panels - just like Evan D. Brown  –  Nov 2, 2017 2:11 PM

Gerald - agreed. Panels - just like real people - don’t appreciate anyone trying to hide the ball.

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