Latest company to go after domain did not address deficiencies in other company’s prior claim.
A Saudi Arabian company has faced two recent cybersquatting claims by two different companies over its domain name. It won both of them.
Times United Verifications and Inspections uses the domain name TUVinsp.com for its website.
Last year, Tüv Nord AG filed a dispute with World Intellectual Property Organization against the domain and lost (pdf).
This year, TÜV SÜD AG filed a dispute with Czech Arbitration Court against the domain name and lost.
The reason both unrelated companies have “TÜV” in their names is that it’s a German term for organizations that conduct testing.
TÜV SÜD was aware of the first decision when it filed its complaint. The first decision found that the domain registrant had rights or legitimate interests in the domain, and the second complaint did not address that finding.
Panelist Bart Van Besien found that the second case was filed in bad faith, constituting reverse domain name hijacking.
This prior decision was known to the Complainant, as it is expressly referenced in the Complaint. Notwithstanding this, the Complainant failed to engage with a key factual element, namely the Respondent’s use of the trade name “Times United Verifications and Inspections”. Instead, the Complainant asserted that the disputed domain name <tuvinsp.com> cannot be regarded as corresponding to the Respondent’s company name “Times United”, without addressing the Respondent’s established use of that trade name.
The Panel considers that the Complainant knew, or ought to have known, that the Respondent relied on this trade name, that the prior panel had found the disputed domain name to refer to that name, and that the Respondent was therefore found to have rights or legitimate interests in the disputed domain name. Despite this, the Complainant failed to address this issue in any meaningful way.
Moreover, the prior decision explicitly indicated that a successful complaint would require evidence that the Respondent’s business or website was not a bona fide enterprise but rather a sham or pretext for bad-faith targeting. The Complainant has entirely failed to address this point or to provide any such evidence.
In summary, in a recent case – known to the Complainant – involving the same domain name, the same registrant, and materially similar facts, the reasons for the failure of the complaint under the second and third elements were clearly articulated. Notwithstanding this, the Complainant filed the present Complaint without presenting any credible evidence capable of supporting those elements. In these circumstances, the Panel finds that the Complainant knew or ought to have known that it could not succeed.
Finally, the Panel notes that the Complainant submitted misleading, or at least unsupported, evidence in relation to its alleged trademark rights in the United Arab Emirates and its commercial licence in Abu Dhabi.
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