Registering too many domain names can be a bad idea...

Registering too many domain names can be a bad idea...
 

In its recent decision DAU2016-0033 of October 10 2016, the WIPO Arbitration Center reminds the criteria for assessing the legitimate interest in domain names.
 
In this case, the famous carmaker JAGUAR LAND ROVER filed an arbitration procedure before the WIPO Arbitration Center to request the cancellation of 175 Australian domain names in .com.au or .net.au composed of its Trademarks JAGUAR, RANGE ROVER or LAND ROVER combined with geographical indications such as melbourne, sydney, north, south ... or generic terms such as leasing, sport, finance, parts, electric, hybrid ...
 
The arbitrator reviewed the three conditions required to characterize an infringement: 1) There is a likelihood of confusion with the earlier trade marks; 2) The lack of legitimate interest of the registrant on the names; 3) A registration / use with bad faith.
 
While the Respondent explained that he intended, in good faith, to connect JAGUAR, RANGE ROVER or LAND ROVER owners with repairers or spare parts suppliers of these Trademarks, the Arbitrator relied on Oki Data Americas, D2001-0903, which sets out the criteria for a legitimate interest when offering goods or services in good faith in relation to a domain name:
 
-to effectively propose  goods or services covered by the Trademark concerned;

-to use the domain name to offer only products or services of the concerned Trademark ;

-to clearly state the relationship between the domain name holder and the Trademark owner;

-not try to lock the market by preventing the owner of the mark from having domain names composed of the latter.
 
It was precisely on this last point that the company JAGUAR LAND ROVER was able to win: the large number of registrations (175 domain names!) was qualified as an attempt to corner the market.
 
In the absence of legitimate interest, the panelist decided the cancellation of the 175 domain names. He stated that his decision could have been different if there had not been so many registered domain names.

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