The WIPO Arbitration Center has ruled in the case D2022-3246 regarding a dispute for the domain name lesmills.vip, registered by an individual from the USA.
The New Zealand Company Les Mills International Limited initiated a proceeding against the registration of this domain before the Arbitration Center with a request for the domain name to transferred to the company.
Les Mills International offers fitness programs and classes around the world, having both registered trademarks, including for the US, and registered domain names, including lesmills.com. The company stated that its brand was founded by four-time Olympian Les Mills in 1968 and since then the brand has gained a significant reputation reaching around 6 million people every week.
According to the company, the disputed domain name was registered and used in bad faith. The company considered the Respondent aware of the LES MILLS trademark since his website was offering unlicensed copies of the company’s materials. It contended that the disputed domain name was in itself misleading in suggesting to consumers that it directed to one of the company’s official websites.
According to the Uniform Domain Name Dispute Resolution Policy, in order to succeed in the Complaint, the Complainant is required to show that all three of the elements:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
Considering all of the three elements, WIPO concluded that the domain was similar to the earlier trademarks, from one side, that the Respondent had no legitimate interest to use the domain, and that there was bad faith use of the domain considering the potential risk for consumer misleading.
Based on this the domain was transferred to Les Mills International.
INTELLECTUAL PROPERTY PLANET 