NAF panellist finds commercial use in 'smurfs.com' dispute

In Studio Peyo SA v Nevo, National Arbitration Forum (NAF) panellist John J Upchurch has ordered the transfer of 'smurfs.com' to the complainant. Upchurch held that, although the respondent was using the domain name to provide free email services, he was using it for a commercial purpose that did not constitute a bona fide offering of goods and services under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Studio Peyo, a Swiss company that owns intellectual property rights in the famous Smurf cartoon characters, filed a complaint with NAF arguing that Zev Nevo, a US individual, had infringed its rights in the marks SMURF, SMURFS and SMURFETTE. Nevo registered 'smurfs.com' in the United States and was using it to operate a website offering free email services. Studio Peyo contended that pursuant to Paragraph 4 of the UDRP:

  • 'smurfs.com' was identical to its SMURFS trademark;

  • Nevo had no rights or legitimate interests in the domain name; and

  • Nevo had registered and used the domain name in bad faith.

Upchurch agreed that all the requirements under the UDRP had been fulfilled and ordered the transfer of 'smurfs.com'. He noted that, although Nevo operated free email services, he was making a commercial use of the domain name that did not amount to a bona fide offering of goods and services. Upchurch, therefore, held that Nevo did not have a legitimate interest in the domain name. He also held that Nevo had registered and used the domain name in bad faith, since it was likely that his intention was to profit from an association with Studio Peyo's famous marks.

Peter Heinrich, Lenz & Staehelin, Zurich

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