Tobias.com - WIPO rejects complaint of trademark owner

Just in time before our new colleague Tobias - welcome also at this point - will start his job we would like to show on the basis of the domain tobias.com that not every trademark right necessarily gets the right to a domain.

Therefore, it is all the more important to rely on a good domain management and to work out the appropriate strategy for it.

The company Gibson Brands, Inc. has filed a complaint with WIPO (World Intellectual Property Organization) as the complainant and demands the transfer of the domain tobias.com.

According to WIPO, there are three points that must be met in order for a domain to be transferred or cancelled:

  1. The domain name is the same as or confusingly similar to a trademark of the complainant,
  2. the respondent has no right or legitimate interest in the domain name, and
  3. the domain name is registered and is being misused.

The Complainant sets forth the following points in its Complaint: It has been in the music industry for over 40 years and develops, manufactures and sells musical instruments under its "tobias" brand. The products are offered worldwide, and the company and its trademarks are accordingly known globally. The trademark "tobias" was registered with the American Patent and Trademark Office on March 28, 1995, with the indication that this name had already been in use since December 31, 1984.

The Respondent, AssuredPartners, Inc. (founded in 2011), responds to the Complaint with the following facts: The domain tobias.com, under which corresponding web appearances were published, was registered by Tobias Insurance Group, Inc. on July 28, 1995. In 2012, the Respondent acquired the insurance company Tobias Insurance Group, Inc. The latter would continue to actively operate in the market under its own company name despite the acquisition. In December 2017, the domain was transferred from Tobias Insurance Group, Inc. to the Respondent, but a corresponding website was never set up by the Respondent, as it maintains a web presence under its own domain assuredpartners.com. Respondent further stated that it has discontinued the use of the disputed domain name in connection with a web presence. However, it continues to use the domain tobias.com to communicate with some customers who still send e-mails to addresses that include the disputed domain name. The Respondent attached corresponding screenshots and evidence, as well as an affidavit from the managing director, to its opposition.

WIPO's decision is as follows: It recognizes that the Complainant has rights to the trademark "tobias" and that the disputed domain name is identical to that trademark. However, it also concludes that the Respondent has clear rights or legitimate entitlement to the domain name. After all, it took over the company and continued to use the trademarks for several years, so that existing customers are still sending e-mails to addresses with the disputed domain name. This was obviously a legitimate use of the domain name. Finally, WIPO states that there is no evidence that the domain is registered and used improperly and therefore decides that this complaint is rejected. In the reasoning for the decision it can also be read why WIPO comes to the conclusion that this UDRP procedure (Uniform Domain-Name Dispute-Resolution Policy) has been abused by the complainant.

The decision on the domain tobias.com shows that not every trademark can enforce rights to the corresponding domain. It is therefore all the more important to develop an individual domain strategy and implement it accordingly. The domain tobias.com was registered by the then Tobias Insurance, Inc. only a few weeks after the trademark registration of the brand "tobias" by Gibson Brands, Inc. Here there would have been at least a small head start to secure the domain in time. Most importantly, it would have been far less expensive than filing a UDRP with WIPO, which would have been unsuccessful.

Are you currently facing similar challenges or do you need support with your domain strategy? We are happy to assist you with our experience, so that your brand, product and company names are or will be protected on the Internet as well. You can reach us directly by phone at +49 (0) 231 58698-123 or by e-mail at support@123domain.eu.

Sources: wipo.int

 

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