In English, the word “illusion” is spelled with two L’s but in Spanish one is missing. There is also an accent on the letter “u”.
Due to this fine detail, a Mexican company, Diltex SA, decided to file a UDRP against the registrant of the domain Ilusion.com.
The case was defended by UDRP Police DBS, a British IP law firm.
It seems that Diltex brought the case to the WIPO due to existing trademarks they hold since 1984, asserting that their enterprise goes as far back as in 1949 for women’s apparel.
The Respondent did not argue over the trademarks, but pointed out that there is no evidence of their use outside of Mexico. Furthermore, they stated the following in their UDRP defense:
“Respondent indicates the disputed domain name was registered in November 2000, and that none of the evidence presented by Complainant relates to that period of time. Respondent indicates that Complainant presented no evidence of its volume of sales or promotional expenditures, most importantly in Respondent’s jurisdiction. Respondent indicates that Complainant has not presented any evidence that Respondent has used the disputed domain name to compete with Complainant in any way. Respondent indicates that if there was at some point a “this domain name is for sale” banner, which it does not concede, Respondent nevertheless vehemently denies knowledge of Complainant at the time of registration. Respondent argues that each case under the Policy must be addressed on its own merits, and the fact that it may have been found to have engaged in abuse in prior decisions does not mean that each of its registrations is abusive. Respondent refers to dissenting opinions favoring its position from two prior decisions under the Policy.”
The sole panelist in this UDRP, Frederick M. Abbott, delivered the following notes that led to the eventual denial to transfer the domain to the Complainant:
“The Panel accepts that the term “ilusión” has a generic or commonly descriptive meaning in the Spanish language, as the term “illusion” has a generic or commonly descriptive meaning in the English language. The Panel further notes that a party registering a generic or commonly descriptive term as a domain name may well demonstrate rights or legitimate interests in the use of that term in circumstances where it is used as a trademark by a third-party, such as by using it in a fair descriptive way. Nonetheless, the general view of panelists under the Policy is that registration of a generic or commonly descriptive term does not, as such, establish rights or legitimate interests. Rather, the registrant of such a term may establish rights or legitimate interests depending on the context of its use.”
For the full text of the UDRP for the domain ilusion.com, click here.
