The Freename Forum

A German company and long-standing trade mark owner launched uninspired and uncommitted UDRP proceedings against the owner of the domain gonso.com. It failed and was confirmed that it had conducted the proceedings abusively.

The complainant, Corina Osswald (Schwanhäußer Industrie Holding GmbH & Co. KG), is a German supplier of functional cycling clothing, owner of the EU trade mark ‘GONSO’ registered in 1998 and has its website at gonso.de. It believes that its rights have been infringed by the domain gonso.com, which is why it has initiated UDRP proceedings before the Czech Arbitration Court (CAC). Among other things, it argues that the fact that the domain gonso.com is for sale on the opponent's website for US$ 24,500 is evidence of bad faith. The opponent, William Coam (Germanium World LLC), is based in the USA, is a domain investor and sells domains under domainshop.com. He argues that the complainant's submission of only 200 words and the submitted printout from the website of the European Trade Mark Office are not sufficient proof of the trade mark. Since she is also represented by a lawyer who should know better, this argues in favour of reverse domain name hijacking (RDNH). The opponent also claims to have been the owner of the domain since October 2011 and to offer it via his website. He has registered the domain together with other, similarly structured domains such as avika.com and debert.com because it is short with five characters. It is a common first and last name; there are also companies with ‘Gonso’ in their name, which he proved with 100 individuals from social media and in a list of company names. The complainant had contacted him anonymously in 2020 about the domain. The complainant's submission did not provide any information about its business, reputation, turnover, advertising and profits. Furthermore, she did not argue that he, the opponent, had registered the domain in bad faith. The fact that he was offering the domain for sale did not indicate bad faith. The Spanish lawyer María Alejandra López García was appointed as the decision-maker.

López García dismissed the complaint and established RDNH (CAC-UDRP-10668). She summarily stated that the complainant's trade mark was not in dispute, that the evidence submitted by the complainant was formally sufficient for her and confirmed the identity of the trade mark and the domain. On the question of the opponent's right or legitimate interest in the domain, she confirmed that the complainant had not provided any prima facie evidence that the opponent was not authorised. On the other hand, the opponent had demonstrated the criteria according to which he had selected the domain and that he was a domain investor, which resulted in a right to use the domain. With regard to bad faith, López García sees that the domain was registered by the opponent 13 years after the trade mark was registered. However, there is no evidence to suggest that the US-based opponent was aware of the complainant's business activities and/or trade mark at the time the domain was registered. On the contrary, the opponent had presented and proven his motives for registering the domain. These showed that he did not register the domain in bad faith. In addition, the term ‘GONSO’ was not exclusively linked to the complainant's trade mark. After all this, the complainant had not proven the bad faith of the opponent. López García thus dismissed the appeal.

Finally, however, she examined the question of the RDNH, which she confirmed: Nearly four years after the complainant contacted the opponent anonymously about the domain, she launched a UDRP procedure without any substance, with hardly any supporting documents, bypassing the resources available on the CAC's website and through deliberate omissions, presumably in an effort to obtain the domain gonso.com with minimal effort. She thus violated the rules that a complaint may not be filed for an improper purpose. López García thus confirmed the reverse domain name hijacking.

The UDRP decision on the domain gonso.com can be found at:
https://udrp.adr.eu/decisions/detail?id ... ad800e9659