Background
The Complainant was Thermamax Hochtemperaturdämmungen GmbH, a company based in Germany operating an international business in the design and manufacture of thermal and acoustic insulation systems for engines. It owned various combined word and logo trade mark registrations that included the stylized characters TMAX, including the German trade mark registered in 1996 and the EU trade mark registered in 1999. The Complainant also owned numerous domain names that incorporated its TMAX trade mark.
The Respondent was MySite Corporation, based in South Korea.
The Domain Name <tmax.com> was registered on 26 September 2000 and had been redirected to a parking page containing pay-per-click (“PPC”) links since its creation.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):
(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identity / similarity
As far as the first limb was concerned, the Complainant contended that the term TMAX constituted the dominant element of its trade marks while the Respondent submitted that this term was widely used as a combination of generic words, acronyms, surnames and first names and thus was neither distinctive nor proprietary but generic and had no unique significance.
Based on the Complainant's well established TMAX trade marks, the Panel found that the Domain Name, which consisted of the dominant element, was identical to the Complainant’s registered trade mark rights. The first limb was therefore satisfied.
Rights / legitimate interests
With regard to the second limb, the Complainant claimed that the Respondent had no rights or legitimate interests in the Domain Name, which was registered after the registration of its German and EU trade marks and had been only used to redirect to a parking page with PPC links on “Yamaha” and “Tmax” products since its creation. Highlighting the generic nature of the term TMAX, the Respondent submitted that it had registered the Domain Name originally for the purpose of supporting a business using the phrase “Try Maximum” and that, pending the launch of its website, it used a parking page service in order to avoid not using the Domain Name.
In order to assess whether the Respondent could legitimately use the Domain Name to point to a parking page with PPC links, the Panel pointed out that the onus was on the Complainant to show that the Domain Name was targeting its trade mark and business. In this regard, the Panel noted that the Complainant, based in Germany, had provided very little evidence to support its assertion that its TMAX trade mark was well-known around the world and particularly in South Korea where the Respondent was based, whether at the registration date of the Domain Name or currently. The Panel further noted that the Complainant’s sector of activity was quite specialised and that, since the Respondent did not operate a competing business, there was no evidence to suggest that the Respondent would or should have known the Complainant’s business and trade mark when registering the Domain Name. In addition, the Panel had the impression that the Complainant’s principal trading name and trade mark was “Thermamax” instead of “Tmax”, as all the Complainant’s TMAX domain names redirected to its website at 'www.thermamax.com'. As a result, in the absence of evidence of targeting, the Respondent’s use of the Domain Name to point to a parking page with PPC links was not necessarily indicative of a lack of bona fide or fair use under the UDRP. The second limb was therefore not satisfied.
Although the Complainant’s failure to establish the second limb would be sufficient to give rise to a denial of the Complaint, the Panel continued to assess the third limb based on similar grounds related to the lack of targeting.
Bad faith
Regarding the third limb, the Complainant submitted that its TMAX trade mark was inherently distinctive as a result of considerable worldwide use since 1996. According to the Complainant, the fact that the parking page associated with the Domain Name contained PPC links in relation to “Tmax” products, including a Tmax Scooter, clearly indicated that the Respondent was seeking to profit from the reputation attached to the Complainant by diverting Internet users to its parking page for PPC revenues, which was undoubtedly in bad faith. The Complainant also submitted that the Respondent’s refusal to respond to the Complainant’s emails was indicative of additional bad faith. In response, the Respondent claimed that the Complainant had been operating its business under the “Thermamax” brand and that its website at 'www.thermamax.com' came into existence in 2007, seven years after the Domain Name was registered. In particular, according to the Respondent, the Complainant’s TMAX trade mark had only been effectively used in Germany without global repute and all its TMAX domain names had been registered significantly after the registration of the Domain Name. The Complainant therefore had not established the global recognition of its TMAX trade marks at the time of registration of the Domain Name. The Respondent explained that it did not respond to the Complainant’s email inquiring about the purchase of the Domain Name as it never intended to sell it.
The Panel took a similar view on the third limb by affirming that there was insufficient evidence suggesting that the Complainant enjoyed such a degree of reputation attached to its TMAX trade mark that the Respondent, based in Korea, would or should have known of the Complainant’s business or trade mark rights at the time of registration of the Domain Name. The Domain Name was therefore not considered to be registered in bad faith. Likewise, due to the lack of content clearly targeting the Complainant on the associated parking page (the “Tmax scooter” was in fact related to Yamaha), the Panel did not consider that the use of a PPC parking page would amount to use of the Domain Name in bad faith. The third limb was therefore not satisfied either.
At the Respondent’s request, the Panel finally assessed whether the Complaint amounted to a case of Reverse Domain Name Hijacking (“RDNH”) under the UDRP and concluded that the Complainant should have known that it would be unable to succeed in this proceeding given the circumstances, but still chose to file the Complaint in an attempt to re-brand itself from “Thermomax” to “Tmax” after its efforts to contact the Respondent bore no results. The Complainant’s filing of the Complaint therefore amounted to RDNH.
Comment
This decision illustrates how important it is to prove that a disputed domain name, which incorporates a non-distinctive term that may be subject to different interpretations, was registered and is being used to target a particular trade mark owner. Where the evidence of targeting is thin, other elements such as the pre-complaint correspondence may help to establish this. In the absence of any tangible evidence of targeting, the trade mark owner may be advised to consider other options apart from the UDRP. Attempting to buy a domain name and then filing a UDRP complaint when the registrant does not reply is always a risky strategy.
Authored by Anchovy News Team
