What happens when someone uses a term to support their business, a term that belongs to someone else. In such cases, legally the decision depends upon who used the mark first. However, apart from this point another point is also important. Was the term being used in bad faith?
WIPO faced an interesting dispute related to the several domain names with PETRABYNIGHT being common in all of them. The domain names in question were PetraByNight.com, PetraByNight.co, PetraByNight.net and PetraByNight.org. The Complainant operates a tour business in Jordan. The Complaint owns Jordanian trademarks over PETRA BY NIGHT mark since 2016. Besides that the Complaint also claimed common law rights over the mark since 1999. The Complainant also presented as being the ‘official founder organizer’ of the Petra by Night event that has been taking place since 1998.
The Respondent is also a tours and travel company called Discover Jordan Tours. The Respondent has owned the domain names in question since 2012. The domain name PetraByNight.com redirects to the Respondent’s platform at DiscoverJordan.com. The other three domain names are parked. The domain name PetraByNight.co is offered for sale at the price of $40, 000.
The panel found that an authority did consider the Complainant ‘official founder organizer’. However, no information about the Complainant at the authority’s webpage related to the Petra by Night event. The panel received evidence to prove that the terms in question were descriptive and used by many entities. The domain names are used to direct users to Respondent’s platform.
Hence, bad faith couldn’t be proved and the Complaint was denied.
Read the full case here.
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