Gotta love words with secondary meaning.
The domain Golf.com.br, a Brazilian ccTLD, was lost in UDRP, after its owner tried to sell it for $100,000 dollars.
It’d be great to do so if the content at Golf.com.br were related to golf – the sport.
Unfortunately, the Complainant in this UDRP is the German automotive corporation Volkswagen Aktiengesellschaft Wolfsburg.
VW Golf images on Google. Golf alone does not produce such photos.
Golf is a popular make of the giant VW, and in this case it became obvious that the Respondent was not targeting a golfing manufacturer, for example:
“In this case, e-mail messages submitted by claimants as correspondence with the Claimed lead to the conclusion that is set up the hypothesis of paragraph (a) of that paragraph, given that the value required by Claimed (US $ 100,000.00 ) denotes knowledge of the Complainant and the size of its economic group. The expert believes that the domain name registration in dispute was made with the claimants and their GOLF brand in mind and with the intention to sell it, rent it or transfer it to the Complainant or others.”
Does this mean that if you owned Apple.com you could not sell it to the computer and electronics manufacturer?
Let’s just say you’d be much safer to sell it to a producer of apples in California. 😉
Seeing all this, and taking into consideration international and Brazilian trademarks for GOLF owned by the Complainant, the sole panelist, Gilberto Martins de Almeidaor, ordered Golf.com.br to be transferred to them.
For the full text of the UDRP decision for Golf.com.br click here for a translated copy.
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So there was no website at all and it was lost? How such generic word with no web content can be a trademark infringement?
Mark – There was no official response by the registrant, who only engaged in private communications objecting to the complainant’s claims. There was a rudimentary web site up until 2014: https://web.archive.org/web/20140415051441/http://www.golf.com.br/
The lack of response leads to a fact-check by the panel, most of the time resulting in a domain loss.
What a dumb way of losing such a premium domain … it would have been a great site for Brazilian golfers, what a pity …
His biggest mistake was offering to sell it to VW for 100k USD … plus not officially responding to the UDRP …
Obviously parking with ads would be suicide, because Google would surely serve ads related to the VW car … 😀
Andrea – His mistake was not to respond to the UDRP, as the sales pitch wasn’t the tire-kicker here. Also, when you Google ‘Golf’ images not a single car photo appears!
DomainGang – Question is, if his $100k request was an answer to inquiry from VW, or the inquiry was initialized by the domain owner.
Andrea – If you were him, and you get an inquiry from VW, what would you do? I am curious.
DomainGang – the archive site shows the content was about the golf sports, not vehicles. So, there was no trademark infringement!
Mark – True, but the Complainant focused on the current content which was a broken page. It’s the Respondent’s job to defend their case. The panel rarely goes to extreme lengths to investigate, and in this case the amount that was asked from VW sealed the case.
@DomainGang,
Don’t agree with you.
A few points:
– VW has been a leader in car manufacturing in Brazil for many decades (since at least the old “Beetle” models), and it’s very popular there (I know also because I’ve been in Brazil and I’ve some Brazilian friends …);
– this case refers to a com.br, which is the Brazilian cctld;
– as you can read in the original version of the UDRP (http://www.wipo.int/amc/en/domains/search/text.jsp?case=DBR2015-0005) in Portuguese, the Respondent offered to sell to VW the domain for 100,000 BRL (not USD as you say), as it’s said here: “- na troca de e-mails entre as partes, a Reclamada pediu o valor de BRL 100.000,00 para vender o nome de domínio em disputa para as Reclamantes, embora tenha depois pedido para desconsiderar a proposta de venda;”
So this has clearly been his biggest mistake … never offer to sell a domain with TM risks to the TM owner … that’s suicidal … 🙂
Of course the Respondent should have also at least officially responded to the UDRP to explain his reasons.
Furthermore, if you google “GOLF” from Google.com.br, which is the relevant search to do, you will clearly see the VW car on page 1 …
@Mark: as far as I see in the original version of the UDRP, the Respondent (the domain owner) offered to sell the domain to the Complainant (VW): it says “(iii) este último foi registrado e usado de má-fé, tendo em vista a conduta da Reclamada de uso passivo, proposta de venda, e tentativa de transferência após ter tomado conhecimento da Reclamação.”
It’s different if you get an inquiry from the Complainant, because in this case you can prove that there is no bad faith in use, since you were not trying to sell the domain, but it was the Complainant which made an inquiry to purchase it.
But you have to officially respond to the UDRP to explain your point of view to the Panelist(s).
Andrea – “But you have to officially respond to the UDRP to explain your point of view to the Panelist(s).” <--- This is the juice. I'm aware of Brazil being the last known location where the old VW Beetle was manufactured. The issue here is that the Complainant claimed the asking price was an indication of bad faith due to the figure, and the Brazilian panelist agreed. So what would have been a non-suspicious number? $99,999 ? $49,999 ? Or less? This logic is dangerous, and however basic the content has been on Golf.com.br it was about golfing, not VW cars.
DomainGang,
Chronologically speaking, the offer of the Respondent to sell to VW the domain for 100,000 BRL comes first.
Without that offer, the Complainant wouldn’t have had any or very little chances of getting the domain in a UDRP, and most likely they would have not even started it.
And without UDRP there are no explanations to provide to the Panelist(s).
By making that offer, he basically gave VW the keys to start and win the UDRP.
The Complainant claimed that “- na troca de e-mails entre as partes, a Reclamada pediu o valor de BRL 100.000,00 para vender o nome de domínio em disputa para as Reclamantes, embora tenha depois pedido para desconsiderar a proposta de venda;”, which means that bad faith in use is due to the offer to sell (“proposta de venda”), not to the price in itself, which could have been 10,000 BRL, 50,000 BRL, etc …
Check the Complainant statements:
6. Alegações das Partes
A. Reclamantes
As Reclamantes afirmam que:
(i) o nome de domínio em disputa cria confusão com marca registrada de titularidade da 1ª Reclamante;
(ii) tal marca é notoriamente conhecida, nos termos do art. 126 da Lei 9.279 (“Lei de Propriedade Industrial”), pois a marca GOLF identifica um modelo de carro que é sucesso de vendas no mundo todo;
(iii) a Reclamada quer se aproveitar da fama das Reclamantes;
(iv) estaria caracterizada a má-fé da Reclamada tendo em vista que:
– na troca de e-mails entre as partes, a Reclamada pediu o valor de BRL 100.000,00 para vender o nome de domínio em disputa para as Reclamantes, embora tenha depois pedido para desconsiderar a proposta de venda;
– a Reclamada possui grande quantidade de nomes de domínio registrados em seu nome em violação a direitos marcários de terceiros;
– está caracterizado o chamado passive domain name holding; e,
– a Reclamada buscou alterar o titular do nome de domínio em disputa após ter ciência da apresentação da Reclamação.
FYI, VW manufactured over 20 mln cars in Brazil since 1953, and Brazil is NOT the last location where the VW Beetle was manufactured. Production in Brazil ended in 1996, while the last manufacturing location was Mexico, in the Puebla facilities.