Whispering Smith Limited of Manchester filed a complaint with the WIPO Arbitration and Mediation Center against Domain Administration of Cayman Islands over the domain name BraveSoul.com.
The following facts were undisputed.
The Complainant, Whispering Smith Company Limited, originally called Rajan Imports Limited, was established on September 6, 1985. The Complainant is a wholesale importer, exporter and distributor of fashion clothing in several countries. The Complainant operates its main websites at “www.bravesoul.es” and “www.bravesoul.co.uk”.
The Complainant owns an international portfolio of registered trademarks for BRAVE SOUL, including European Union Trade Marks and national trademarks in various countries in the world. For instance, United Kingdom Trademark no. 3,230,479 BRAVE SOUL, registered on August 12, 2003 for clothing, footwear and headwear in International class 25.
The Domain Name was registered on April 18, 2001. The Domain Name resolves to a parking webpage.
The Respondent has submitted a lengthy Response. Insofar as relevant for this matter, the Respondent contends the following.
The Domain Name was registered by the Respondent on April 18, 2001, over 15 years ago and long before the Complainant adopted BRAVE SOUL as its clothing brand in 2003, at the very earliest. As such, the registration of the Domain Name in bad faith is an impossibility. The Respondent has never used the Domain Name to infringe the Complainant’s Trademark and there is no evidence of bad faith use whatsoever. The Complainant’s allegations of purported trademark dilution are wholly outside the jurisdiction of the UDRP and as such are misplaced. In any event, the term “brave soul” purportedly is an extraordinarily common term in everyday usage all over the English speaking world. The Complainant is merely looking to “upgrade” its existing <bravesoul.co.uk> and <bravesoul.es> domain names to the Domain Name, at the expense of the Respondent, whose rights predate those of the Complainant. This Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
The Respondent acknowledges that the Complainant has various Trademarks for BRAVE SOUL. However, the Complainant’s Trademarks all postdate the Respondent’s Domain Name registration. Nevertheless, by merely having any Trademark registration which corresponds to the Domain Name, the Respondent acknowledges that the Complainant has met this preliminary first part of this three-part UDRP test.
Discussion and Findings
The Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It was found that the Complainant has failed to make out a case about on the third element. The Complainant failed to provide evidence that Respondent could have, or should have, anticipated Complainant’s Trademark rights in advance of the BRAVE SOUL Trademark’s registration. In other words, the Complainant has simply failed to argue why the registration and use of the Domain Name have been in bad faith.
Needless to say, the Complaint was denied.
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