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Domain name right : bona fide offer of goods or services

Written by Dreyfus18/06/2021

A right or legitimate interest in a domain name may be demonstrated by its use in the context of a bona fide offer of goods or services. This assessment requires to take into account how the domain name has been used, but also the space-time framework: When was the domain name registered? By whom? In which country?

Founded in 2003, Ba & sh is a French company operating in the field of design, manufacturing and distribution of women’s ready-to-wear clothing and fashion accessories.

Having detected the registration of the domain names <bashshitever.com> registered in 2014 and <bashclothing.co> in 2020, Ba & sh filed a complaint with the WIPO Arbitration and Mediation Center in order to obtain the transfer of these domain names.

While the construction of the <bashshitever.com> domain name is somewhat intriguing, the fact that the <bashclothing.co> name contains the term “clothing” may have led Ba & sh to consider that its rights were being infringed.

In any event, since the domain names include the sign “BASH” except for the ampersand, the panellist acknowledges a likelihood of confusion.

Nevertheless, the panellist deems that Respondent has chosen these domain names independently of Complainant’s trademark and has used them in the context of a bona fide offer of its goods on the corresponding websites.

Indeed, Respondent is from Malaysia, where the company was founded in 2015, while Ba & sh has provided no evidence of actual use of its BA & SH mark in that territory. Khor Xin Yu, Respondent, explains that he co-founded “BASH CLOTHING” in 2013 when he was 18 years old and that the mark was also used in Singapore in 2017. Initially, the sign used was “Bash Shit Ever”, later changed in 2020 to “Bash Clothing” as part of a branding update.

Similarly, Respondent provided an explanation and documentation justifying the selection of the sign BASH because of the meaning of the dictionary term “bash”. Finally, Respondent used a logo that differs from that of Complainant.

Complainant has not shown that Respondent registered and used the disputed domain names in bad faith.

Indeed, when the first disputed domain name <bashshitever.com> was acquired by Respondent, Complainant had been operating in France and worldwide for about 11 years and had owned an international trademark for about 7 years, designating Malaysia. However, Complainant has not presented any evidence of actual use of its BA & SH trademark in Malaysia at the time of registration of the first disputed domain name.

In addition, a Google search for “bash” shows several results unrelated to Complainant or its trademark. Respondent has also provided a plausible explanation as to why he chose the term “bash”, an English dictionary term related to the idea of a party insofar as its initial target was female students.

Finally, although the parties operate in the same market segment (i.e. ready-to-wear and accessories), Respondent’s use of the disputed domain names does not show an intention to compete with Complainant and its trademark, given the different logos/layouts, the significantly lower prices at which the Respondent’s clothing is offered for sale, and the absence of any information on Respondent’s website that would lead users to believe that the website is operated by Complainant or any of its affiliated entities.

The complaint is, therefore, dismissed.

Ba & sh should have investigated Respondent’s motives before initiating a UDRP proceeding, including whether its trademark was known in Respondent’s country when the first domain name was registered. It should also have determined for how long Respondent had been using the “Bash” sign for fashion activities. An investigation could have revealed these elements. Respondent explains that he first marketed the Bash clothing on social networks. And, depending on the answers to these two questions, write a proper letter to the defendant

Written by Dreyfus18/05/2021

(OMPI, Centre d’arbitrage et de médiation, 23 février 2021, affaire n° D2020-3322, Netflix Inc. c. WhoisGuard, Inc. / Siddharth Sethi)

Avons-nous encore besoin d’introduire Netflix ? Cette plateforme proposant des services de streaming vidéo compte 195 millions de membres dans plus de 190 pays et semble être connue dans le monde entier. Pourtant, certaines personnes tentent de se soustraire à cette notoriété pour tenter de se construire une légitimité artificielle et justifier l’enregistrement d’un nom de domaine .

En effet, alors que la société Netflix détient de nombreux enregistrements dans le monde pour le signe « NETFLIX » en tant que marque , la société a détecté l’enregistrement du nom de domaine <netflix.store> . En conséquence, elle a déposé une plainte auprès du Centre d’arbitrage et de médiation de l’OMPI pour obtenir son transfert.

Le nom de domaine, enregistré le 3 septembre 2017, pointe vers une page qui présente une animation composée d’un effet d’éclatement de couleur et se termine par un écran de couleur vierge.
Le titulaire soutient que le nom de domaine ne reproduit pas la marque NETFLIX mais est plutôt composé de deux termes , “net” et “flix”. Or, comme prévu, l’expert considère que la marque NETFLIX est reproduite à l’identique dans le nom de domaine.
L’expert considère que si l’utilisation du nom de domaine n’est pas commerciale, son enregistrement ne serait pas non plus considéré comme légitime. En effet, le site mis en place vise à légitimer l’enregistrement afin de dissimuler l’intention de vendre le nom de domaine au Plaignant. Ni la reproduction de la marque NETFLIX dans le nom de domaine litigieux, ni l’extension <.store> n’ont de sens si le projet devait effectivement être non commercial.

En conséquence, il estime que l’intimé n’a aucun droit ou intérêt légitime sur le nom de domaine .
Par ailleurs, l’expert constate que le Défendeur connaissait le Plaignant et son activité et prévoyait qu’en achetant le nom de domaine, il serait en mesure de le revendre au Plaignant avec un bénéfice significatif. Cette stratégie a été partiellement couronnée de succès, car Netflix a fait une offre que l’intimée a refusée, essayant d’obtenir une somme considérablement plus élevée.

Or, l’enregistrement d’un nom de domaine qui correspond à la marque d’un Plaignant avec l’intention de le vendre au Plaignant lui-même , établit la mauvaise foi. L’expert précise que le titulaire « [n’aurait pu] raisonnablement penser qu’un tiers serait en mesure d’utiliser commercialement le Nom de domaine litigieux ». Il convient également de noter que l’intimé a tenté de faire croire à la personne qui l’a contacté qu’il avait reçu d’autres offres plus élevées. En effet, le représentant de Netflix, qui n’avait pas indiqué qu’il agissait pour Netflix, ce qui était un secret de polichinelle, avait proposé la somme de 2 000 USD, que le déclarant jugeait trop faible.

L’expert commente ce comportement récurrent de certains cybersquatteurs : « Peu importe que le Défendeur n’ait pas proposé activement à la vente le Nom de domaine litigieux. Il n’est pas rare que des déclarants opportunistes de noms de domaine incluant une marque tierce attendent d’être approchés, réalisant qu’une offre active de vente du nom de domaine peut faciliter un procès UDRP à leur encontre ».

En conséquence, l’expert conclut que le nom de domaine litigieux a été enregistré et est utilisé de mauvaise foi et ordonne ainsi son transfert au Plaignant.

Sauf dans les cas où un nom de domaine reproduisant une marque notoire telle que NETFLIX est utilisé à des fins de critique sans usage commercial, ou pour un usage commercial minimal, il est quasiment inconcevable d’imaginer qu’un tel nom de domaine ait pu être enregistré de bonne foi . Netflix savait évidemment qu’elle gagnerait le procès, mais a visiblement choisi d’essayer de négocier un rachat à l’amiable pour un budget légèrement inférieur à celui d’une procédure UDRP, si l’on compte les 1 500 USD d’honoraires et les honoraires d’avocat. Cette approche, si elle réussissait, aurait permis d’économiser du temps et de l’argent, mais la simple offre de rachat a pour effet d’encourager le cybersquattage.

Written by Dreyfus29/04/2021

UDRP While one generally refers to the “three criteria” of the UDRP (a trademark similar to the domain name; the absence of rights or legitimate interests of the defendant in the disputed domain name; and the bad faith of the registrant), it should be kept in mind that bad faith in UDRP matters has two aspects: the first is bad faith registration and the second is bad faith usage. Therefore, proving only one of these elements is insufficient even though it may be considered “fair” that a name used in bad faith should be transferred to the applicant.
In the present case, Great American Hotel Group, Inc. complained that its former vice-president retained the domain name <greatamericanhg.com> and changed the password of the account used to manage this name with the registrar.

It all started in 2011 when the applicant decided to adopt the name Great American Hotel Group. Its president at the time asked Mr. Greene, then vice-president of the company, to reserve the domain name <greatamericanhg.group>.
The latter did so, but – apparently without notifying his superior – reserved the domain name in his name instead of that of the company. He did, however, record the company’s postal address, and pay with the company card. In 2012, he hired an anonymity service to hide his data.

Since its registration, the name had been used for the company and Mr. Greene had always treated the domain name as part of the company’s assets.

However, following disagreements, Mr. Greene was suspended from office in 2015 and dismissed in 2016. In 2017, the name was renewed by the company’s technical teams even though Mr. Greene was no longer present. However, the latter subsequently changed the password so that the name could no longer be renewed by the company. The applicant’s counsel proceeded to send Mr. Greene a letter of formal notice, which remained unanswered, leading to the filing of a UDRP complaint.

The panellist acknowledged that the applicant had common law trademark rights through the use of the sign “Great American” and that the registrant did not have any legitimate rights or interest in the name as it was created for the applicant company.
He also acknowledged that the domain name was used by Mr. Greene in bad faith.

Nevertheless, the panellist was more sceptical regarding the issue of bad faith registration. Indeed, the name had been reserved by Mr. Greene at the request of the president of the applicant company, which, in principle, had, in fact, been a registration in good faith.

In order for registration by an employee to qualify as having been done in bad faith, the panellist specified that the employee must have, from the beginning, had “an intention to cause harm”. Therefore, the evaluation must be factual and done on a case-by-case basis.

In this case, Mr. Greene had registered the domain name in his own name. The panellist found that “this may be subject to questioning, and the fact that he did not mention the company does not constitute a good domain name management practice”, however, the president and the company seemed to be equally as uninterested in formalizing the reservation of the name.

For four years, until he was suspended from his functions, the registrant had always displayed conduct that demonstrated that he understood that the name belonged to the company. Thus, there is no reason to suppose that by reserving the name four years earlier, he had intended to compete with the applicant or to benefit from some type of tactical advantage against him.

Consequently, the plaintiff’s complaint was dismissed as the registration in bad faith had not been established. Nevertheless, the panellist specified that the applicant could turn to other avenues to try to obtain relief.

The significance of this decision, in addition to highlighting the dual condition of bad faith, is that it reiterates the need to set up an internal naming charter to avoid any dispersion of assets, both in terms of trademarks and domain names.

Written by Dreyfus26/04/2021

“Intellectual property was viewed with passion – and in a style steeped in pre-Romanticism! – as “the most sacred, the most legitimate, the most unassailable […], the most personal of properties”; “The least likely to be contested, the one whose increase can neither hurt republican equality, nor overshadow freedom,” said Patrick Tafforeau in his book Intellectual Property Law published in 2017.

It should be borne in mind that intellectual property is protected by law. This protection is notably achieved through patents, copyright and trademark registrations. These intellectual property rights allow creators to obtain a certain form of recognition or even a financial advantage from their inventions, plant varieties or creations.

In this sense, paragraph 1 of article L111-1 of the Intellectual Property Code provides that: “The author of a work of the mind enjoys on this work, by the sole fact of his creation, of an exclusive and intangible property right enforceable against all”.

In fact, the Internet has created tremendous opportunities for companies in terms of communicating their brand message. However, its global reach, openness, versatility and the fact that it is largely unregulated are all elements that have created fertile ground for trademark infringement such as counterfeiting.

For a long time, real world activity and Internet activity were separated. Today, the two worlds undeniably tend to come together. Trademark law is therefore very useful in defending yourself in the digital era. By appropriately balancing the interests of innovators with those of the general public, the intellectual property system aims to foster an environment conducive to the flourishing of creativity and innovation.

When you create a company or launch a product, know that it is recommended to protect your trademark (which can be the name of your company, a logo, numbers, letters, etc. …). This registration will protect your company from counterfeiting.

Once registered, the trademark is an industrial property title which gives you a monopoly of exploitation for a period of ten years, renewable indefinitely.

Registering your trademark gives you an exclusive right to a sign that distinguishes the products or services you offer from those of your competitors, which is a significant competitive advantage ! As such, your sign is protected for the categories of goods and services referred to in your trademark registration and in the territory for which said registration is accepted.

In this perspective, it is necessary to put in place a strategy for the protection of your brand as soon as possible. Before filing a trademark, it is important to make sure that it is available and that there is no owner of an earlier right to that trademark. You must therefore be the first to register this mark.

The reasons why trademark registration is becoming a necessity are multiplying in the face of the phenomenon of cybersquatting. Thus, owners of registered trademarks benefit from new advantages in the defense of their rights on the Internet.

First, it has become increasingly important to protect your brand on social media. Since 2009, Facebook has allowed its members to create usernames, easily accessible, but which can include brands. Prior to 2009, Facebook allowed registered trademark owners to identify their trademarks and prevent their use by other members.

Most social networks register user names on a “first come, first served” basis. In order to defend your rights, it is preferable to have a registered trademark in order to report a violation of trademark rights, according to the general conditions of use of social networks.

Secondly, the presence of a mark on the Internet also imposes its protection in referencing on search engines and in particular paid referencing. Through the AdWords system, Google allows advertisers to select keywords so that their ads will appear to Internet users after entering those words into a search. Conflicts arise when advertisers buy keywords that contain brands, but do not have rights to them.

Owning a trademark right then also becomes extremely useful in the fight against unfair practices.

Thirdly, the proliferation of new gTLD domain name extensions must also attract the attention of trademark owners. To date, more than 300 new gTLDs have been delegated, and gradually hundreds more will follow. Faced with the risk of conflicts with protected trademarks, a new tool is made available to trademark rights holders: The Trademark Clearinghouse. It is a centralized declarative database of registered trademarks. Once the trademark is registered, the holder benefits from the priority registration period for new gTLDs – Sunrise Period – and is notified when a third party wishes to register a domain name identical or similar to its trademark. The registrant of the disputed domain name is also informed that he may infringe trademark rights.

Finally, if a domain name reproducing or containing a trademark is registered, the trademark rights holder has the possibility of taking action against cybersquatters using dedicated extrajudicial procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP). These dedicated procedures are only open to trademark holders.

It should be remembered that the business landscape has changed with the rise of the Internet and, in order to thwart the risks of intellectual property infringements on online markets, it is important that companies adapt their management of industrial property rights portfolio accordingly.

Nathalie Dreyfus – Industrial Property Attorney, Expert at the Paris Court of Appeal, Founder & Director of Cabinet Dreyfus in Paris – Dreyfus.fr

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

Written by Dreyfus14/04/2021

The DNS NEWS report No. 271 highlights the overall criticism of ICANN solution for not intervening as much as its powers allow in Internet security issues, even though the DNS breaches do not decrease the number of hits. A sort of criticism derives from this observation: should ICANN become a kind of Internet welfare state or should it remain in the background, which would be recommended by the defenders of Internet neutrality.

It should be noted that in 2018, ICANN solution had already undertaken measures to make the Internet a little more secure, by changing the cryptographic key used to protect the Internet’s address book, the DNS (Domain Name System). However, further efforts are expected.
Domain Name System. – V. ICANN, 16 sept. 2018, Approved Board Resolutions [ R]egular Meeting of the ICANN Board).

Source: Dns-news.fr, date, rapp. n° 271,

To discover…

♦ ICANN Summit: the fight against DNS abuse, a GAC priority

Written by Dreyfus23/03/2021

Source: WIPO, Arbitration and Mediation Center, Nov. 24, 2020, case DRO2020-0007, NAOS c/ Bioderm Medical Center

The Bioderma brand has a world-wide reputation but was this reputation already established in Romania at the beginning of the years 2000? The Bioderm Medical Center, a clinic based in Romania, answers no to this question.

NAOS, owner of the Bioderma trademark, has detected the registration by the Centre Médical Bioderm of a domain name reproducing its trademark, namely <bioderma.ro>. However, said domain name is quite old as it has been registered on February 24, 2005.

On September 4, 2020, NAOS filed a complaint with the WIPO Arbitration and Mediation Center to obtain the transfer of this domain name. This complaint is based on an International trademark Bioderma, protected in Romania since 1997.

Nonetheless, the defendant claims to have used the sign Bioderma as its business name for several years, hence the registration of the domain name <bioderma.ro> and the subsequent change of its coporate name.
The expert in charge of the case is particularly thorough in its assessing whether the defendant has the legitimate interest and rights in the disputed domain name or not.
He considers that even if the latter produced a Kbis extract showing that its commercial name, in 2003, was indeed Bioderma, it is insufficient to prove a legitimate interest or rights on the domain name. The defendant should have brought evidence that it was commonly known by the Bioderma name.

The expert also notes that the disputed domain name resolves to an inactive web page and therefore concludes that there was nobona fide use of the name in connection with an offer of goods and services and no legitimate non-commercial use of the name.
It is however on the ground of bad faith that the expert finally decides in favour of Bioderm Medical Center.
The latter notes that the International registration of the applicant’s Bioderma trademark is several years older than the disputed domain name and that this trademark is currently renowned. However, the evidence brought by the applicant are deemed insufficient to demonstrate the possible or actual knowledge of this trademark by the defendant in 2005, at the time of registration of the disputed domain name.

Indeed, although the earlier mark was established in the 70’s in France and was first registered in Romania in 1997, the first subsidiary of the applicant, established in Italy, only opened in 2001: the true starting point of the brand’s internationalization.
Yet, the defendant founded the company in 2003 and carried on its business under the name Bioderma until 2008.

From there, it is not possible to establish that it had targeted the company or its trademark to mislead or confuse Internet users. Moreover, the defendant did not conceal its identity and responded to the complaint, which shows good faith.

This decision is a reminder that it is essential to place oneself at the time of domain name registration in order to assess the aim of the registrant. Even if the prior trademark enjoys a world-wide reputation on the day of the complaint, the dive into the past is inevitable: it must be determined whether the defendant, located in a certain country, had knowledge of the rights or reputation of the trademark. In this case, the expert took into account, among other things, that the defendant used the commercial name “Bioderma” in 2005. Therefore, it is essential to investigate on the registrant and their situation at the time of registration of the domain name, here particularly old. To that end, seeking legal advice from an IP lawyer specialized in UDRP procedures is strongly recommended.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

Written by Dreyfus27/01/2021

Since the advent of the General Data Protection Regulations (GDPR), it has become really difficult to obtain information about the registrant of a domain name. This obviously complicates the dialogue between trademark and domain name holders.

ICANN has proposed a project to create a System for Standardized Access/Disclosure (SSAD), which would allow standardized access to non-public data on domain name registrations.
The objective of the SSAD is to provide a predictable, transparent, efficient and accountable framework for access to non-public registration data. It must also be consistent with the GDPR.
However, the decision whether or not to grant requests would still belong to the registrars, as legal constraints on personal data may vary from country to country.

This project accelerated in August during Stage 2 of the policy development process, during which a final report was presented that provides 22 recommendations for the system.
The creation of this SSAD could, in the coming years, facilitate the fight against cybersquatting, which has been strongly impacted by the GDPR and WhoIs anonymization processes. It should be remembered that the next round of requests for domain name extensions should take place in 2023, bringing a whole new set of challenges in the fight against Internet attacks.

Source: LexisNexis, N°1 (January 2021)

Written by Dreyfus26/01/2021

Sources: Domain Incite, Free speech, or bad faith? UDRP panels split on Everything.sucks domains, Oct. 22, 2020:

Free speech, or bad faith? UDRP panels split on Everything.sucks domains

Mirapex.sucks, Case n° 103141, 2020-06-29 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103141
Bioderma.sucks, Case n° 103142, 2020-07-01 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103142DNS News No. 270, Oct. 2020

The top-level domain name extension <.sucks> was open for registration by ICANN in 2015. At the time, some brands were already concerned about the risk of cybersquatting on these extensions, and the possible damage to the brand image that this could generate. In fact, many domain names that use trademarks known and ending in <.sucks> were born. Very often, these domain names refer to pages where Internet users can complain about the brand in question, whether they are consumers or former employees.

During the past months, the phenomenon has intensified with a lot of reservation numbers, clearly done by the same registrar of the domain name in <.sucks>. Suddenly, new online pages have emerged, with the same structure and bad comments about renowned brands. A system of resale at prices between $199 and $599 is also in place.
The question of the dispute resolution about the <.suck> is complex, since the situation raises issues relating to freedom of expression.

Two recent cases with two opposite outcomes illustrate this complexity. The domain names <mirapex.sucks> and <bioderma.sucks> were both registered by the same registrar and are both the subject of UDRP complaints. In response to these two complaints, the defendant based his argument on freedom of expression. For <mirapex.sucks>, the complaint was unsuccessful, on the contrary, for <bioderma.sucks>, the name transfer was ordered.

In the case of <bioderma.sucks>, the expert had taken into consideration the fact that the registrar didn’t use the domain name for bad comments on the trademark in question but was simply a third party who registered the domain name seeking to resell it. The reseller was a company located in the Turks and Caicos Islands whose activity is the purchase and resale of names in <.sucks>. The latter had no way of verifying if the bad comments were authentic. Especially because those comments seemed to have been added only after the complaint was filed.

On the other hand, in the decision on <mirapex.sucks>, reserved by the same company, the transfer was refused. The expert gave special attention to the nature of the <.sucks> and to the freedom of expression, while underlining the insufficiency of the argumentation of the applicant.
One thing is sure: prevention is better than cure, therefore it would preferable to register a brand in the extension <.sucks>, on a purely defensive basis.

Written by Dreyfus22/01/2021

If Virgin Enterprises Limited (“Virgin”) was notably known by the French public as a megastore on the Champs Elysées, now permanently shut down; the company, on the contrary, is still very active in many different sectors such as travel, under the Virgin Voyages brand, or even in the mobile sector under the Virgin Mobile brand. As we all know, success is often followed by harm. Having detected the registration of domain names by a third party taking over its brands, namely <virgincruisevoyages.com>, <virginmediabiz.com>, <virginmobilewifi.com>, Virgin has filed an UDRP complaint against these names, July 23, 2020.

On the day the complaint was notified, July 27, the name <govirginvoyages.com> was registered and the applicant added it to his complaint. The expert reminds that a complaint can indeed cover several names, if they are registered by the same person or under the same name or under a common control.

In order to accept the request for consolidation, the expert takes in consideration the following elements:
* the names <govirginvoyages.com> and <virgincruisevoyages.com> that refer to identical sites and the same email contact;

* the registrant of the name <govirginvoyages.com> has the same first name as the registrant of of <virgincruisevoyages.com>, <virginmovilewifi.com> and <virginmediabiz.com>.

Thus, it seems possible to add a reserved name to a complaint after the filing.

Subsequently, the expert was able to conclude without difficulty that there was no legitimate interest of the defendant and bad faith. The defendant did not respond to the complaint.

All names resolved to sites copying those of Virgin and two of them, in particular, <virgincruisevoyages.com> and virginmobilewifi.com> were used in the context of fraud, aimed at “obtaining public information for commercial gain”. In addition, the registrar already used, in the past, other domain names related to Virgin’s brands. The expert said that “the use of some of the domain names involved in conducting an e-mail phishing scam is the type of illegal activity that is clearly considered to be the proof of bad faith”. This decision also highlights the need to be vigilant when mail servers – also known as “servers MX” – are set on a domain name. When such servers are set up, the reservee can send to anyb0ody e-mails from an address that includes the domain name, and endanger the company and its consumers; just checking if a website is in place on the names cybersquatted is not enough.

In this case, each single name was associated with a fake site and two of them had in addition a mail server that was carrying an e-mail fraud campaign. Thus, would be preferable to set up adequate surveillance on the company’s brands and to carefully analyze those, which are closest to the brand in order to take the right actions once the registration is detected.

Source: WIPO, Arbitration and Mediation Center, Oct. 23, 2020, aff. D2020-1921, Virgin Enterprises Limited v. Aladin Chidi, NA / Aladin Tg.

Written by Dreyfus22/10/2020

(WIPO, Arbitration and Mediation Center, August 4, 2020, Case No. D2020-1543, Fundación Trinidad Alfonso Mocholí, Fundación de la Comunitat Valenciana v. Jack Zhang)

In a UDRP proceeding, the Complainant is required to establish that the disputed domain name was both registered and used in bad faith by the Respondent. To do so, it is imperative to establish the respondent’s knowledge of the Complainant’s rights.

The charity organisation, Fundacion Trinidad Alfonso Mocholi, filed a UDRP complaint because of the registration of the domain name <juanroig.com>. This association was founded by Mr. Juan Roig, who is particularly well known in Spain as a businessman. He presides over the largest supermarket chain in Spain and has already been received by the Spanish royal couple.

The association’s activities include programs to encourage the participation of children in sports activities. It carries out this activity under the name “Mecenazgo Deportivo Juan Roig”. It is also the owner of a semi-figurative Spanish trademark “MECENAZGO DEPORTIVO JUAN ROIG” registered on April 17, 2020 for goods and services in classes 16, 25 and 41.

The defendant in the action, located in the United States, is active in the purchase and sale of domain names. It reserved the domain name in question on October 27, 2014, before the registration of the plaintiff’s trademark. The disputed domain name does not refer to any site offering goods or services, but is offered for sale for an amount of 2,500 USD.

The expert admits the existence of a risk of confusion between the domain name and the subsequent trademark. Let us remind that the date of registration of the trademark is irrelevant for the analysis of the likelihood of confusion: only a “side-by-side” comparison is made. The expert takes into account, among other things, the fact that the expression “Mecenazgo Deportivo” is generic, since it means “Sports Sponsorship”.

The question of the legitimate interest of the defendant then arises.

The complainant states that it did not authorize the Respondent to reserve the disputed domain name. In return, the respondent argues that the practice of buying and reselling domain names is not illegitimate. He explains that a search on the LinkedIn site shows that there are more than 1200 members registered in Spain whose name is, or includes, “Juan Roig”. He argues that about 10% of the world’s population is on LinkedIn and infers that there are about 12,000 people in Spain who would be named Juan Roig. For him, the domain name is therefore composed of generic terms. This daring mathematical calculation is naturally not admitted by the expert, who notes the strong presence of people named Juan Roig in Spain or Latin America.

However, the expert believes that it would be necessary to demonstrate that the domain name is really used for its descriptive meaning in order to be able to refute a prima facie case of absence of legitimate interest. This was not the case here since the name is simply offered for sale, without any other use. The expert, therefore, asserts that the absence of legitimate interest is well demonstrated.

Furthermore, we may wonder about the descriptive use of a patronymic name, which seems complicated, unless a site is dedicated to statistics on the use of the name or to a specific person.

Regarding bad faith, the plaintiff argues that it was not a coincidence that the defendant registered the disputed domain name shortly after Mr. Juan Roig was ranked as the second wealthiest person in Spain.

The expert reminds that, in theory, bad faith will not be recognized when the trademark invoked in support of the complaint is subsequent to the registration of the disputed domain name. Except when it is proven that the defendant knew about the plaintiff and his emerging or future trademark rights.

The defendant purchases domain names in volume and could have been aware of the existence of the plaintiff if the domain name in question had been reserved as a result of its enter into the public domain (known as “drop catching”). But, this is a new registration. However, the expert notes that the defendant refused an offer to buy back the name, submitted by a third party, for the sum of 300 USD, which is almost 15 times higher than the price of a name reservation in <.com>. It is, therefore, clear that he wanted to make a more profitable profit from it.

Nevertheless, the defendant argues that he had never heard of the plaintiff or his trademark and that most of the publications that are supposed to support this fame are in Spanish language, which he does not speak.

The expert notes that some of these publications are in English and come from well-known newspapers such as the Wall Street Journal, but these publications are aimed at a limited audience, from the financial services sector.

The expert deduces that despite Mr. Juan Roig’s reputation, this is only demonstrated in Spain and he notes that his name is reasonably common among Spanish speakers.

The complaint is therefore dismissed.

Thus, the popularity of a public person is not sufficient to demonstrate the bad faith of the holder in the registration and use of a domain name. It is necessary to try to put oneself in the place of the reservist. If he comes from abroad, is he reasonably likely to know the person whose fame is being claimed?

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