It is intriguing to see how many entities would approach the law, not with facts and figures but with the misconstrued logic of their own. The arbitration and redressal platforms hence serve as an appropriate anvil on which the misconstrued logic is given shape.
WIPO witnessed an interesting contention over the domain name Bookker.com. The Complainants were Bookker Corporate S.L.U, Spain and The Graffter SL, Spain. The Complainants provide services that involve a better appropriation of office and parking spaces.
The Complainants have trademark rights over the BOOKKER mark in Spain, EU as well as the US registered earliest by 2019. The Complainants claimed that the disputed domain name infringed upon their trademarks. The Complainant also contested that the Respondent had offered the domain name for sale at a hefty price. The Complainant had approached the Respondent over the disputed domain name but the conversation derailed after the same hefty price was quoted to the Complainant.
The Respondent argued that the trademarks were registered earliest by 2019, while the domain name was registered way back in 2014. The Response couldn’t have registered the domain name in bad faith when there wasn’t any registered trademark to infringe upon.
The Respondent also argued that the domain name in question was registered based on a pattern that involved registering brandable domain names. The Respondent claimed that he has been involved in investment of domain names, the number of which ranged in millions. The Respondent stated that domain name investment was an accepted use case and couldn’t be termed as having no legitimate interest.
The Respondent also presented as to how the concerned term in the domain name, i.e., Bookker was a derivative of Booker, a generic name. It was also presented that the term was also used as Surname, thus making the generic nature even more prominent.
The panel noted that the domain names were registered way before the registration of trademarks by the Complainant. One of the Complainant, The Graffter SL, Spain was incorporated in 2012, before the registration of domain name. However no evidence of usage of the mark in question was demonstrated. The Complainant’s domain name BookkerCorp.com itself was registered in 2018. The panel thus denied the Complaint.
The panel also looked upon the nature of the Complaint. The panel noted that the Complainant was well aware that the trademark registration succeeded that of domain name registration. The Complainant still went ok with the complaint. The Complainant had also discussed with the Respondent over the domain name. The failure of which led to this complaint.
The panel awarded the Complainant with a RDNH.
You can read the case in detail here.