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WIPO Orders INPI.com Handover
Posted on December 12th, 2008 by admin in Domain News | No Comments »
The WIPO Arbitration and Mediation Center made a UDRP decision on 27 November 2008 (case D2008-1536) awarding the domain name INPI.com to the the national industrial property office of France (Institut National de la Propriété Industrielle (INPI)).
The term INPI is trademarked with the French Trade Mark Office (trademark no. 3449074 INPI, registered on September 7, 2006, trademark no. 3449071 INPI INSTITUT NATIONAL DE LA PROPRIETE INDUSTRIELLE, registered on September 7, 2006, and trademark no. 532435 INPI INSTITUT NATIONAL DE LA PROPRIETE INDUSTRIELLE, registered on August 10, 1994), a fact that probably played an important role in the UDRP decision.
To add to that, the respondent, BWI Domains of Grand Cayman, owns more than 35,000 domain names and “has previously been involved in many domain cases where the transfer of domain names to the respective complainant was ordered”. The respondent failed to reply to a cease and desist order sent to them on July 15, 2008.
It did not help that “the Respondent uses the disputed domain name to provide links to third parties’ websites including direct competitors of the Complainant. As the name “INPI” is in itself not descriptive of the Complainant’s services, the Respondent would not have placed related ads on the website without knowledge of the Complainant and its activities”.
The fact that Complainant “has been active in the field of protecting intellectual property in France since its creation in 1951 and is also widely-known internationally because it is involved in the adaptation of international intellectual property law” probably played a role in the final UDRP decision but I wonder whether the same decision would have been made had the Complainant not been so high profile.
In any case, an important president has been set for 4 letter domain names with this decision. If you do own a disputable 4 letter domain name I would suggest you do not serve trademark infringing ads on it as this could prove crucial in any UDRP decision made on the domain name in any WIPO complaints made against you in the future.
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