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News details | 123domain.eu

Registration of domains with alternative spellings protects against long-standing domain disputes

The worldwide known company Würth has experienced it themselves and after long 18 years the domain würth.com has been adjudicated to the company by WIPO.

The Würth Group was founded in 1945 and currently employs more than 76,000 people in 400 companies in more than 80 countries. In 2018, it generated a turnover of 13.6 billion euros. The family-owned company is the world market leader in trading with assembly and fastening materials. Among other things, it is involved in the cultural sector and in the sports sector: It sponsored the German national soccer team and clubs of the Bundesliga or has sponsored in recent years the uniforms of the referees and their assistants in Spain's leading football league ("La Liga").

The company Adolf Würth GmbH & Co. KG is the trademark owner of various German and international trademarks "Würth"´. It owns corresponding domains such as wuerth.com, wurth.com or wurth.es. Until now the domain würth.com was not part of this. This domain was registered on February 26, 2001 by a private person from Spain and displayed a "parking page". The German company has now filed a complaint with the WIPO (World International Property Organization) and demands the transfer of this domain.

The complainant states that "Würth" is a rare, German surname without meaning and does not occur in German or Spanish vocabulary. It is an unmistakable brand name with a well-known reputation. It also shows that the name of the disputed domain corresponds exactly to the trademark name and that the respondent has neither rights nor a legitimate interest in this name. The complainant has not been granted permission to use this trademark. They also alleges that the domain name was being used maliciously: they were notified of an intention to sell for a bid between 8,000 and 10,000 euros. The respondent must also have known the trademark: an umlaut domain would rarely be registered by a Spaniard and the trademark owner was already active in Spain with wurth.es. The respondent had registered further domains with company names or trademarks of third parties, which indicated the intention of the domain trade. In addition, the disputed domain has not been used for an active website for 17 years. WIPO has not received any comments from the respondent.

WIPO confirms in its decision that the disputed domain name corresponds to the name of the trademark rights. The respondent has not shown WIPO any legitimate interest in the domain. WIPO further states that the use of the website is neither a bona fide offer nor a lawful non-commercial or fair use. Furthermore, it states that the respondent must have acted maliciously in registering the domain, since the domain name is obviously connected to the complainant. It is obvious that he wanted to create the impression of a connection to the complainant. On the basis of the above points, WIPO deduces that the passive use of the domain by the respondent does not prevent the finding of malicious registration and use.

On the basis of the above statement of grounds, WIPO decides that the domain should be transferred to the complainant. As of today (21/01/2019), the transfer has not yet taken place. The complete decision on the domain würth.com can be found on the WIPO website.

This decision clearly shows how long it can take for trademark owners to transfer corresponding domain names in their portfolio. 17 years respectively 18 years is a very long period. In the last years they probably tried different ways to transfer the domain into the own portfolio. Finally, a complaint had to be submitted to WIPO in order to hopefully know the domain soon in their own portfolio. In order to save costs, nerves, turnover and reputation losses, we recommend the regular checking of your own domain portfolio as well as the registration of domains with alternative spellings (hyphens, umlauts etc.) - especially in the most important regions in which the company is active.

Sources: wipo.int, wuerth.com

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