One panelist dissented in a case of a trademark vs. common name.
HugeDomains has successfully defended its domain name Affron.com in a UDRP cybersquatting dispute.
Pharmactive Biotech Products, S.L., a Spanish company that sells a saffron extract under the brand name Affron, filed the dispute against the domain name investment company.
While the Complainant has a trademark for Affron, HugeDomains argued that it’s also a common name and business name to which the Complainant does not have exclusive rights.
HugeDomains acquired the domain name in 2013. The Complainant claims trademark rights dating 2012, although the exact use of its trademark worldwide before 2013 is disputed.
The majority of the panel found that the domain was not registered and used in bad faith and that the Complainant didn’t show that HugeDomains lacked rights or legitimate interests in the domain name.
Panelist Alejandro Touriño, a lawyer in Spain, dissented. I often find that a dissenting panelist in a three-person panel is the only one from the same country as the Complainant.
Touriño mostly relied on Pharmactive Biotech Products’ trademark for Affron in arguing that the domain should be transferred. He wrote, “it is likely that the Respondent knew (or should have known) of the Complainant’s trademark when it registered the domain name.”
Even if HugeDomains did know of the trademark, HugeDomains’ argument is that the trademark for Affron did not give it worldwide exclusive rights to the mark outside of its product category.
The oddest thing about this case is that HugeDomains was asking only $5,195 for the domain. Between the lawyers and the WIPO fees, I suspect the Complainant spent more than that to file its case. And it still doesn’t have the domain to show for it.