A registered trademark does not give automatic rights to a domain.
The UDRP for the aged domain, SpaceScooter.com, delivered a surprising result.
The Complainant is a Dutch company that acquired the rights to the SPACE SCOOTER mark, originating from 1999.
The domain was registered in 2000, and in 2014, during negotiations with the Complainant via GoDaddy’s brokering services, its owner asked $8,000 dollars for it.
Complainant even made promotional use of the mark by having international soccer star, Lionel Messi, use it in commercials.
“The Complainant is a company based in the Netherlands that sells a product with the name “Space Scooter” around the world. This product is a kick scooter of the sort often used by children but which has the unusual feature that it can be propelled not just by resting one foot on the footboard and pushing the other against the ground, but also by moving the footboard backward and forward. Apparently, this particular product has achieved popularity among adults as well as children and has also benefited from sponsorship from Argentine professional footballer, Lionel Messi.”
There was no response from the Respondent, who appears to be a Swiss individual.
And yet, the sole panelist, Matthew S. Harris, said that the domain can remain with its registrant.
Although there was no denying that the SPACE SCOOTER mark matches the domain, the WIPO panelist made a striking observation:
The product, which was created in 1999 and received the mark protection, was a wind up toy, but the current ride-on “scooter” was not created until 2011.
According to the panelist, that distinction, clears the Respondent from any suspicion of having possibly registered the domain to take advantage of the Complainant’s mark, in 2000.
For the full text of this intriguing decision, click here.
Or watch the video below.
