In the recent decision of Oystar USA, Inc. v. Domain Administrator info@heavylifting.com HeavyLifting, LLC (WIPO D2009-0025, March 6, 2009)(available here), a single member Panel was faced with a dispute over www.oystar.com. Complainant, Oystar USA is the subsidiary of Oystar Holding GmbH, based in Germany. Oystar operates a website at www.oystar.de. Oystar USA is involved in the packaging and processing industry and operates a website at www.oystarusa.com. Oystar claims to be the owner of the mark OYSTAR used in commerce in the U.S. since June 2007. Respondent, Heavy Lifting LLC, claims that it was not the original registrant of the domain, which was first registered in 2000. Respondent acquired the domain on April 19, 2006.
Respondent’s attorney, John Berryhill, provided some important arguments in favor of a denial. The Panel summarized the arguments as follows:
The Respondent contends that the Complainant has not demonstrated that it has rights in the OYSTAR marks. According to the Respondent, the Complainant is not the owner of the German national registrations for the OYSTAR marks, which the Respondent argues in any event, are of no legal effect in the United States. Even assuming that the Complainant’s German parent has granted its subsidiary the right to use the OYSTAR marks in the United States, the Respondent points out that there are no United States registrations for the marks, and that the USPTO has provisionally refused to extend protection to the OYSTAR marks. Nor, according to the Respondent, has the Complainant demonstrated enforceable rights based on use of the OYSTAR marks in the United States.
The Respondent’s arguments went further to explain:
According to the Respondent, the earliest date of any registration for the OYSTAR marks is a German registration in June 2008 obtained by the Complainant’s German parent, based on an application not filed until late 2007. The Respondent maintains that it acquired the disputed domain name in the spring of 2006. Even assuming arguendo that the Complainant had used the OYSTAR marks in commerce in the United States since June 2007, the Respondent asserts there is no conceivable basis to conclude that the Respondent registered the disputed domain name with the aim of exploiting the Complainant’s then non-existent rights in the marks.
The Panel then addressed the elements of paragraph 4(a)of the Policy which require a finding that (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith.
The Panel began to address the first prong, where Respondent’s assertions regarding ownership of the mark proved to be fatal to Complainant. The Panel explained:
There is no dispositive basis in the provided record, however, upon which the Panel can conclude that the Complainant is the owner or exclusive licensee of the German registrations, and the United States applications for the OYSTAR marks (also held by the German parent company) are still in examination, and have not achieved the status of registered marks. Hence, the Complainant’s assertion of rights in the OYSTAR marks cannot on the present record be based on registration rights….While the Complainant asserts that is has continuously used the OYSTAR marks in the United States since June 2007, the Complainant has not submitted any evidence to substantiate this claim. The marketing brochures submitted by the Complainant upon examination appear to have been prepared by the German parent for general use by its various subsidiaries. Portions of the materials reflect a creation date of February 2008.
In addressing the nature and amount of evidence presented by Oystar, the Panel stated: “The Complainant has offered no evidence of the length and amount of sales under the marks, the nature and extent of advertising, or other relevant information such as consumer surveys or media recognition.”
Based upon the above stated reasons the Panel found that Oystar USA failed to establish it had any rights to the OYSTAR marks. The Panel elected to skip the remaining UDRP 4(a) prongs in light that finding. The Panel was also tasked with a determination of possible reverse domain hijacking. Based upon other presented evidence of Respondent’s use of the domain, the Panel found that a reverse domain hijacking claim was not merited. Ultimately the Panel DENIED Complainant’s request for transfer.
DefendMyDomain Commentary: We tip our hat to Mr. Berryhill for his insightful arguments in this dispute. The lesson to be learned herein is to make sure the proper Complainant brings the case, or at least to provide sufficient evidence of ownership of the trademark(s).
