Eddy Merckx manufactures very nice, high end road bikes, and is the namesake of a famous road racer. Unfortunately, someone else owned their domain name. But after 9 years they were able to get it back and will start using it as their primary domain. This shows the benefits of using an experienced domain name attorney to to protect and recover ones domain name names from cyber squatters.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2009. On January 21, 2009, the Center transmitted by email to Go Daddy a request for registrar verification in connection with the domain name at issue. On January 21, 2009, Go Daddy transmitted by email to the Center its verification response and provided the contact details for the Respondent and confirmed that the Respondent is listed as the Registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 26, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for a response was February 22, 2009. The Response was filed with the Center on February 15, 2009.
The Center appointed Charné Le Roux as the sole panelist in this matter on February 24, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Factual Background
The Complainant is a Belgium corporation and owner of the trade mark EDDY MERCKX. The Complainant provided evidence of an International registration for the trade mark dated December 7, 1981 and December 27, 1972. It also provided evidence of the registration of the trade mark in Benelux on June 16, 1981 and a Community Trade Mark registration dated January 9, 2007.
The Complainant has used the EDDY MERCKX trade mark for over 27 years in connection with various goods but bicycles in particular. It is the owner of the domain name <eddymerckx.be>. EDDY MERCKX refers to a famous cyclist i.e. Mr. Eddy Merckx. The trade mark appears to be very widely known as supported by the results of a Google search for EDDY MERCKX provided by the Complainant.
The owner of the Disputed Domain Name is Irfan Khalil. The Disputed Domain Name was registered on March 23, 2000. The website attached to the Disputed Domain Name appears to be a parking page.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith.
While there is Respondent’s claim that the sponsored and other links are for non- competing items, the Respondent also denies that the parking site was connected to the said website with his knowledge. Previous panels have on numerous occasions found that respondents are ultimately responsible for automatically generated content on their disputed domain names. See, e.g., Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448, NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079 and Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381. Even if the Panel would accept the Respondent’s lack of knowledge of and responsibility for the parking page, then the alternative would be that the Respondent is passively holding the Disputed Domain Name. Previous panels have not hesitated to hold that the lack of active use of a disputed domain name or the use of the disputed domain name as a parking site, coupled with factors which include that the trade mark is well known, may constitute bad faith.
While the Panel is not prepared to find that the Respondent in this matter has deliberately concealed his identity or that it is impossible to conceive a circumstance in which good faith use could be made of the Disputed Domain Name for example as a fan site, the Respondent’s inactive use of the Disputed Domain Name, which is identical to a well known trade mark, for 9 years, have persuaded the Panel that the requirements of paragraph 4(b) of the Policy have been met.
It is necessary to comment on the Respondent’s contention that the Complainant has lost its rights to claim the Disputed Domain Name under a doctrine of laches. In a similar case involving the domain name <tomcruise.com> (Tom Cruise v. Network Operations Centre/Alberta Hod Rods, WIPO Case No. D2006-0560), the complainant had taken 10 years to file a complaint in connection with the domain name. A three member panel held that there is no meaningful precedent under the Policy for refusing to enforce trade mark rights on the basis of a delay in bringing a claim, and a transfer was ordered. In that case, as is the case here, the Respondent also made no argument that he has or will suffer injury because of the Complainant’s delay in initiating this proceeding. The Respondent has made no claim that he has invested any monies towards his EDDY MERCKX website. The Complainant has also not provided any firm indication, express or tacit, in connection with any consent that it may have provided to the Respondent to use its trade mark in the Disputed Domain Name. In these circumstances, the Panel is not prepared to find that the delay of the Complainant constitutes a bar against its cause of action.
