Trademark use has to be evident when challenging a domain name.
A Chinese domain investor has fought off a UDRP against his domain name, Norheim.com, and won.
The UDRP was brought forth by a Norwegian company, Gresvig AS.
Complainant indicates that it has operated in Norway under the NORHEIM trademark since 1947, long before the Internet existed.
The latter is important, as research tools regarding the existence of marks are nowadays used prior to registering domains; Norheim.com was registered in 2010, according to DomainTools, although it existed as back as in 2005.
The Respondent outlined several strong points in his response:
- Respondent contends that “Norheim” is a common and general name that is widely known and a long time geographic name (from Wikipedia, it is a state-recognized tourism community and winegrowing village).
- Respondent alleges that Complainant could have, but failed, to register the disputed domain name over a long period of doing business, although Complainant has not substantiated that it has been doing business since 1947. Respondent states that Complainant has not explained where its name originates.
- Respondent claims that he had never heard of NORHEIM as a sport product when he registered the disputed domain name. Respondent alleges that there is no NORHEIM trademark registered in China, nor in the European Union or the United States.
- Respondent asserts that Complainant’s main website at “www.gresvig.no” is in Norwegian, and that the term “Norheim” does not seem to appear on the website.
- Respondent claims that he is unable to verify the alleged trademark registrations of Complainant.
- Respondent argues that he has rights and legitimate interests in the disputed domain name because it is a general and common term, and a famous location and person’s name.
- Respondent contends that he did not register and use the disputed domain name in bad faith because “I have right to sell, rent, provide email service, or reserve it for future development, as long as for fair use. I am the bona-fide owner.”
- Respondent contends that he has never before seen the links shown on the screenshots provided by Complainant.
- Respondent said he never tried to sell the disputed domain name to Complainant or any other party. He also argues that he did not register it to prevent Complainant from reflecting the trademark in a corresponding domain name, that he is not a competitor of Complainant and is not attempting to disrupt its business, and that he did not registered the disputed domain name to divert Internet users by creating a likelihood of confusion.
A single member panel, consisting of panelist Frederick M. Abbott delivered a decision that the domain should remain with the Respondent, but found no evidence of reverse domain name hijacking.
“On the basis of the evidence before the Panel (i.e., the Wikipedia reference to a region in Germany, as contrasted with virtually no evidence of use of the term by Complainant), it seems more likely to the Panel that Respondent would have been aware of the Norheim region in Germany than of Complainant’s trademark.”
For the full UDRP text on Norheim.com, click here.
