In the recent decision of Schur International A/S v. Jorge Massa (WIPO D2009-0450, May 25, 2009), a single member Panel was faced with a dispute over www.drop-stop.com. Complainant, is a Danish company which markets a wine pouring device to prevent spilling. Complainant has trademark protection for the DROPSTOP mark in Australia, Canada, and also has a Community Trademark. Complainant maintains web sites for the product which include www.dropstop.com and www.dropstop.dk.
The Panel noted that although the domain was registered on March 14, 2005, users were redirected to another web site which “offered wine pourers similar to the ones offered on the Complainant’s websites.”
The Panel first began with the “identical or confusingly similar” prong of the ICANN UDRP three element test for domain disputes. The Panel noted that Complainant owned numerous trademarks and that the only difference between the domain and the mark was the addition of the hyphen. This insignificant change was not enough and the Panel found Complainant satisfied this prong.
The next element, whether Respondent had any rights or legitimate interests in the domains, was also quickly dealt with by the Panel. The Panel found that Complainant put forth a prima facie case in regards to this prong. Since Respondent did not reply to the dispute the analysis appears to end there, and the Panel found Complainant satisfied this element as well.
The last element, whether the domain was registered and used in bad faith, provided the most amount of analysis by the Panel. The Panel noted:
It is suggestive of the Respondent’s bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain name. The Complainant submitted evidence, which shows that the Complainant’s trademark – DROPSTOP is registered in different territories around the world and is known in the wine business and that its trademark would be recognized publicly. The Complainant’s DROPSTOP trademark was registered as early as 1992 in Australia (see Australian trademark registration No. B584204 – DROPSTOP (stylized) with the registration date of August 12, 1992). The Respondent registered the disputed domain name long after the Complainant registered its DROPSTOP trademarks….A review of the web site operating under the disputed domain name reveals it automatically leads consumers to another website – “http://tds.com.ar/drop-stop” – on which the consumers are offered wine pourers that are similar to the ones offered by the Complainant in the Complainant’s website under the name “Dropstop”. The Respondent’s use of the name “dropstop” to promote such similar wine pourers clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and the DROPSTOP trademark and product. Respondent’s actions constitute bad faith.
The Panel went further and explained:
In light of the Complainant’s distinctive registered trademark, the Panel finds that the registration of the disputed domain name in the name of the Respondent shows the Respondent intent to operate a web site offering similar goods and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either the source of the Complainant goods or associate the Respondent with the Complainant. The use of the Complainants distinctive trademark for quasi identical goods constitute bad faith on behalf of the Respondent.
Ultimately, the Panel found Complainant satisfied all three elements and agreed to TRANSFER the domain.
