Domain name owner acquired the domain in an expired domain auction last year.
Domain name and hosting company One.com Group AB has lost a UDRP it filed against the domain name 0ne.com, with a zero replacing the o.
Cryptocurrency investor Stanislav Nikolskyi acquired the domain name in a DropCatch.com auction for $2,305 in July 2020. He said he acquired the domain name because wallet address in Ethereum start with the number 0.
A Czech Arbitration Court panelist agreed with One.com that the domain name was confusingly similar to its mark, but found in favor of the Respondent on rights and legitimate interests and registration and use in bad faith.
Panelist Victoria McEvedy noted that using a generic word as a trademark comes with limitations:
No-one can own a number or dictionary word to the exclusion of the rest of the world. They are inherently lacking in the distinctiveness required for trade mark law. Trade marks are badges of origin that enable the public to identify the goods and services of a trader so they can make a repeat purchase safe in the knowledge that the quality should be the same the second time around. An ordinary word or number cannot function in that way for obvious reasons. That is, unless they have what we call “acquired distinctiveness” or secondary meaning so that they are so famous that it is the brand that the relevant public bring to mind and not the dictionary term. That is not really possible with a number or a common word –so that in their original meaning, they remain the property of and available to, all. This forms the basis of the prohibition on descriptive and generic marks which recognises that many traders want to use descriptive terms for their informational values and that no one trader should be able to monopolise them. Those selecting such terms as marks have to tolerate confusion and the Policy reflects this by protecting such as fair or legitimate use. Furthermore, consumers are not easily confused by such terms as they understand they are common ordinary terms, employed by many undertakings, with a low degree of distinctiveness.
In pre-dispute correspondence, Nikolskyi informed One.com Group:
…You can pass these two options to your ‘Client’: a. Offer price and buy it out without wasting time and resources for legal battle (and then eventually loosing [sic] it) b. Start a UDRP claim, I’m in no rush and have resources to defend my name, ‘very similar’ is a weak argument and I had experiences in past, so in both cases I’m pretty confident. Either I get a deal, or I get a win under my belt which only adds value to credibility to the name…
Apparently, he was right.
Advokat Lisbet Andersen represented One.com Group. Cylaw Solutions represented the domain name owner.