In a recent domain dispute case, the age-old question of notoriety versus trademark rights took center stage. A French company, founded back in 1977 and specializing in Personal Protective Equipment (PPE), found itself in a tussle over its well-known trademark, DELTA PLUS, and a domain name, <deltaplus.com>. The intriguing twist? The domain had been registered way back in 1995, and the panel had to decide whether notoriety could overshadow trademark rights in this unique case.
The French Complainant in this case is part of the Delta Plus Group, a company dedicated to designing, manufacturing, and distributing PPE. They proudly own a French semi-figurative trademark registration for DELTA PLUS, which dates all the way back to January 16, 1986. This trademark isn’t just confined to French borders; it has extended its reach to other countries as well.
Now, here’s where the plot thickens: The disputed domain name, <deltaplus.com>, was registered on May 14, 1995. However, instead of promoting PPE, it redirected users to a website advertising Roma Architecture, located in Albuquerque, New Mexico, United States. A rather unexpected twist, wouldn’t you say?
The Complainant argued that the Respondent must have known about DELTA PLUS, given its long-standing reputation, and deliberately aimed to connect their business to it. However, the Respondent remained silent, offering no response or insight into their intentions. To add to the mystery, the WhoIs records for the domain showed no change in ownership.
- The Complainant boasts a rich history dating back to 1977, specializing in Personal Protective Equipment (PPE).
- DELTA PLUS, the Complainant’s trademark, was registered in France in 1986 and extended to other countries.
- The disputed domain, <deltaplus.com>, was registered in 1995 and now redirects to a website promoting Roma Architecture.
- The Complainant alleged that the Respondent aimed to create an association with their business due to the well-known status of DELTA PLUS.
- The Respondent did not provide any response or clarification regarding their intentions.
The panel had a daunting task: to determine if the Complainant’s trademark notoriety could overshadow the rights of the domain name holder, given that the domain had been registered way back in 1995.
Surprisingly, the panel ruled in favor of the Respondent. They pointed out that the Complainant hadn’t provided substantial evidence to show that a United States entity, in the position of the Respondent, would have been aware of DELTA PLUS or registered the domain because of the Complainant’s reputation in 1995.
Intriguingly, the panel noted that the Complainant had only demonstrated their presence in the United States recently, whereas the disputed domain dated back to 1995. The Complainant’s allegations seemed more like suppositions than concrete evidence.
Additionally, the panel delved into the historical use of the disputed domain. It found records indicating that the domain had once been associated with Delta Plus Financial Services, Inc., and later with the Delta Plus Commercial Mortgage Company in Florida, which existed until 2010.
In summary, there was insufficient evidence to suggest that, in 1995, the Respondent had any knowledge of the Complainant or deliberately aimed to use the domain due to the Complainant’s reputation.
In the intriguing case of <deltaplus.com>, the panel’s decision underscored the importance of concrete evidence in domain disputes. Despite DELTA PLUS’s notoriety, the panel ruled in favor of the Respondent due to the lack of substantial proof connecting the domain’s registration in 1995 to the Complainant’s reputation.
This case serves as a reminder that in the dynamic world of trademark disputes, evidence and context play a pivotal role in determining the outcome. It’s not just about a well-known name; it’s about the history and facts surrounding it. In the end, the panel’s decision highlighted the need for a strong case backed by solid evidence when it comes to protecting trademark rights in the digital age.
Read the case in detail here: https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-2698.pdf