New Rosme SIA of Riga, Latvia, managed to wrestle away Rosme.com from its Barbados-based registrant, in a UDRP decision.
The Complainant alleges use of the ROSME mark in underwear, since 1952 in Latvia and other Baltic countries, with a Madrid System trademark registered in 1998.
That mark, however, is a design mark in stylized print.
The Respondent was represented by Muscovitch Law P.C., Canada. In their defense, the following statements were made:
Respondent contends that Complainant by its own admission is primarily doing business in the Baltic states. Respondent argues that Complainant’s presence outside the Baltic states is more limited than Complainant contends.
Respondent alleges that Complainant has not provided evidence that it has substantial brand awareness within the Baltic states. Respondent argues that Complainant’s trademark is not internationally recognized or famous such that Respondent would ever have heard of Complainant.
Respondent indicates that there are numerous business, even in Latvia, which share the name “Rosme”.
Respondent argues that there are no ROSME word trademark registrations owned by Complainant, and that the ROSMEN trademark is significantly different from the ROSME trademark.
In order to paint the Respondent in a less favorable light, the Complainant indicated that they are a serial “squatter” of typo-domains, such as oogle.com; referencing the latter, the Respondent stated that the domain oogle.com had been defended in a UDRP proceeding successfully.
The Respondent acquired the domain Rosme.com in 2014, as an investment in generic, short acronym and geo-domain. It was offered to the Complainant for $31,200 dollars, which apparently triggered the UDRP.
Despite the trademark being in stylized format, the three member panel at the WIPO indicated that in cases where the entire mark is represented by the textual part, then the match can be used to indicate confusion.
In the end, Frederick M. Abbott – Presiding Panelist – and Katalin Szamosi along with Clive L. Elliott ordered Rosme.com to be transferred to the Complainant; read the UDRP here.
