Domain name disputes are confusing inherently. There is always the question of which preceded before: Domain name registration or the Trademark registration? There are other little nuances too, however, towards whom should the balance of justice lean, when both the parties partook in mutual dealings?
WIPO underwent a domain dispute regarding the domain name LiquidRubber.se. The Complainant was Liquid Rubber Sweden AB. The Complainant owned the trademark LIQUID RUBBER, registered in November 2021. The Complainant claimed that the domain name has been in continuous use for the sole purpose of destroying its reputation and strengthening its rivals. The Complainant contested that the Respondent doesn’t have a business in Sweden and hence no legitimate interest in the domain name. The trademark registration by the Complainant has been opposed by the Respondent and hence not assumed full legal force.
The Respondent had registered the domain name in September 2010. The Respondent made an agreement with Liquid Rubber Worldwide Inc. The Respondent made another deal with a Finnish company called Ruiskukumi. Ruiskukumi made another collaboration with a person named D.S. The collaboration ended and Ruiskukumi and D.S. parted ways. It was here that D.S. then went along with the Complainant.
The panel decided that the Respondent registered the domain name way before the Complainant demonstrated any use of the mark. In such a case, ‘bad faith’ couldn’t be proved on the part of the Respondent. The Respondent has been using the mark for service in Europe. This is a legitimate usage, even in Sweden. The Complainant usage of the mark and possession of trademark could also be not denied. However, such cases were not within the scope of WIPO and the parties were suggested to look for relief on some other platform.
The Complaint was denied.
You can read the full case here.