UDRP respondent found to have legitimate interests in disputed domain name

International

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organisation, a panel has denied the transfer of a domain name identically reproducing a trademark, as the registrant was able to demonstrate that she had a legitimate interest in the domain name in question.

The complainant was AC Editions, also doing business as Art Culinaire, a company based in California, United States, that published an online and paper magazine entitled Art Culinaire for chefs and food enthusiasts. The complainant was the holder of the trademark ART CULINAIRE with the US Patent and Trademark Office (Registration No 2691216), registered on June 17 2002 for goods and services in Class 16 of the Nice Classification (namely magazines and books featuring information relating to food and cooking). Its website was available at ‘www.artculinairemagazine.com’.

The respondent was Patricia Robert, an individual based in Guiche, France. No further details about the respondent were known.

The disputed domain name was ‘artculinaire.com’. It was registered on April 19 1998 and was pointing to a food blog.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three elements: 

  1. the domain name must be identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  2. the respondent does not have rights or legitimate interests in respect of the domain name; and 
  3. the domain name has been registered and is being used in bad faith. 

With regard to the first requirement under the UDRP, given that the complainant was the holder of the US trademark ART CULINAIRE, registered in connection with publications relating to food and cooking, the complainant was able to establish that it had relevant trademark rights.

The panel then went on to examine whether the domain name was identical, or confusingly similar, to the complainant's trademark. The panel noted that the domain name identically reproduced the complainant's trademark under the ‘.com’ extension, and that the extension had no impact in this assessment.

The panel therefore found that the domain name was identical to the complainant's ART CULINAIRE mark. Thus, the complainant satisfied the first requirement under the UDRP.

Moving on to the second requirement, a complainant is required to demonstrate prima facie that the respondent does not have any rights or legitimate interests in the disputed domain name. The complainant had provided evidence that it had trademark rights in ART CULINAIRE and had asserted that the respondent was not a licensee nor otherwise authorised by the complainant to register the domain name or make any use of its trademark.

The respondent, however, argued that ‘art culinaire’ was a common expression in the French language (‘culinaire’ means ‘culinary’). In this regard, the respondent relied on the Larousse dictionary meaning of ‘art culinaire’ which defined the term as "the art of the preparation of food to please the palate". The respondent argued that the term ‘art culinaire’ may not be protected under French trademark law as it is a generic term. In support of her claim, the respondent submitted as evidence a list of French trademarks including the term ‘art culinaire’ which were all associated with other terms. Finally, the respondent also argued that the domain name predated the complainant's trademark registration.

As a preliminary remark, the panel noted that a respondent has a right to register and use a domain name for its common, generic and descriptive value, unless there are indications suggesting that the domain name was registered with the intention of taking advantage of its trademark value. 

The panel noted that the domain name predated the complainant's trademark and examined whether the complainant had demonstrated that the term ‘art culinaire’ had acquired distinctiveness (or secondary meaning) through use in relation to the complainant's goods and services. The panel held, however, that the complainant had not provided sufficient evidence of goodwill and reputation in relation to ‘art culinaire’ as a distinctive identifier of the complainant's products, particularly in the respondent's country of residence (France). In this regard, the panel found that the complainant's limited reputation was insufficient to limit the respondent's legitimate interests in the generic expression ‘art culinaire’. 

Furthermore, the panel found that the respondent's use of the domain name did not fall within the realm of the goods and services for which the complainant's trademark was registered: whilst the website associated with the domain name was in French, and displayed photographs or links related to cooking in general, the complainant's magazine was in English and published mainly interviews with renowned chefs and recipes. Thus, the panel found that the likelihood of confusion was minimal.

The panel found that the complainant had failed to establish that the respondent registered and used the domain name with the purpose of unduly taking advantage of the complainant's trademark. It therefore found that it was likely that the respondent had a real legitimate interest in the domain name and, therefore, the complainant was unable to prevent the respondent from using the term ‘art culinaire’.

Based on the above, the panel found that the complainant did not satisfy the second requirement under the UDRP. Given that a complainant must cumulatively fulfil the three requirements under the UDRP and that the complainant had failed to satisfy the second requirement, the panel did not find it necessary to go on to examine whether the respondent had registered and used the domain name in bad faith.

The panel thus denied the complainant's request to transfer the domain name.

This decision highlights how having a trademark by itself does not necessarily mean that the trademark holder will succeed in obtaining the transfer of a domain name, even if it identically reproduces such trademark. A respondent may well have a legitimate interest in the disputed domain name, particularly where the trademark also has a generic meaning and there is no indication that the domain name was registered and used to take advantage of the complainant's rights. Complainants should therefore carefully consider the weaknesses of their case and the potential defences of their opponent before deciding to file a complaint under the UDRP, even if they have a trademark which is identical to the domain name in question.

David Taylor and Soraya Camayd, Hogan Lovells LLP, Paris

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