Les Mills won a dispute over a bad faith registered domain name for lesmills.vip

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.

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Lidl won a dispute over lidl-de.website

The well-known German retailer Lidl won a domain name dispute before the WIPO Arbitration and Mediation Center.

The case concerns a registered domain name for lidl-de.website by an individual. The domain hadn’t been used before the arbitration procedure with exception of a period when there was a website offering a survey dedicated to Lidl and redirecting to third parties websites.

The German company initiated a complaint wanting transfer of the domain to the company because of bad faith registration. In order for such a procedure to be successful the following cumulative factors are necessary:

(i) the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Lidl submitted many early registered trademarks such as:

– German registration No. 2006134 for LIDL registered on 11 November, 1991;
– German registration No. 30009606 for LIDL registered on 9 March, 2000;
– European Union registration No. 001779784 for 

 registered on 12 November, 2001;
– European Union registration No. 001778679 for LIDL registered on 22 August, 2002;
– European Union registration No. 013192752 for 

 registered on 27 February, 2015;
– International registration No. 748064 for LIDL registered on 26 July, 2000;
– International registration No. 974355 for LIDL registered on 9 May, 2008;

In addition, the company added a family of registered domain names that include lidl.

WIPO concluded that the domain name in dispute is confusingly similar to the earlier trademarks because they are included in the domain entirely. The rest of the domain elements .de and .website are generic and descriptive and are not able to create a difference.

According to Arbitrage, the domain registrant has no legitimate interest to use it because it associates with the business and geographical origin of Lidl as a company.

The domain was registered in bad faith because the registrant was aware of Lidl’s business taking advantage of its reputation.

Source: WIPO.

Instagram won a domain name dispute against instagam.nl.

The well-known social-media Instagram part of Facebook won a domain name dispute. The case filed before the WIPO Arbitration and Mediation Center regards a third party registered domain name for instagam.nl.

Instagram pointed out that this domain is confusingly similar to its registered trademarks INSTAGRAM insofar the difference is only one letter R.

According to the US company, the Respondent had no rights to or legitimate interests in the domain name. This domain was used to point to a webpage entitled “Instagam” under which it was stated: “Allways online / stay connected”. Below the title, the website displayed graphics containing the camera logos of Complainant. The website contained three hyperlinks, including a hyperlink resolving to a page which was headed “instagam IGTV: Watch Instagram Videos”. However, none of the hyperlinks enabled the viewing of videos of Complainant.

The Respondent didn’t use the domain for any goods and services in a fair trade way. 

Instagram asserts that the domain name has been registered and is being used in bad faith. Bearing in mind that INSTAGRAM trademark is distinctive and well known throughout the world, Respondent could not reasonably argue that it did not have knowledge of it at the time of registration of the domain.

The WIPO Arbitration upheld all Instagram claims and transferred the domain name.

Source: WIPO.

Michelin won a domain name dispute for michelin-wine.tokyo

One of the biggest tyre manufacturers in the world the French company Michelin won a domain name dispute before the WIPO Arbitration and Mediation Center.

The case concerns a registered domain for michelin-wine.tokyo by an individual in 2020. This domain was used for website that offered wine delivery in Japan with the following message: “Starred sommelier carefully selected wine delivery service Michelin Starred selection. We will deliver 2 bottles of hidden wine that has not arrived in Japan every month”.

An interesting fact is that the French company publishes the MICHELIN Guide, that was launched for the first time in 1920 as a trip guide for motorists helping them to plan their trips. Later this guide was stared to be used for awarding stars for fine dining establishments. Nowadays Michelin Stars are one of the most valuable recognition for every restaurant around the world.

The company own several Michelin trademarks for Japan in classes 8, 11, 16, 20, 21, 24, 26, 35, 36, 39, 40, 41, 42, 44 и 45.

Finding the newly registered domain, the company filed a complaint with the WIPO Arbitration and Mediation Center. According to Michelin this domain infringes the rights over the earlier trademarks, what’s more the domain includes these marks entirely in its composition. Taking into account the nature of the website under this domain name, it could create consumer confusion taking advantages of the Michelin longstanding reputation.

WIPO Arbitration agreed and ruled for the transfer of the domain name to the French company. According to WIPO:

The Complainant owns international and Japanese trademark registrations for MICHELIN. The disputed domain name consists of “michelin”, “-wine” and a new gTLD, “.tokyo”. The disputed domain name entirely incorporates the Complainant trademark MICHELIN.

In the disputed domain name, the part “michelin” naturally attracts Internet users’ attention, and it is clearly recognizable. Moreover, the addition of “-wine” does not prevent a finding of confusing similarity.

The Complainant has never authorized the Respondent to use and register its trademark, or to seek registration of any domain name incorporating the Complainant’s trademark. Nevertheless, the Respondent’s website offers wine delivery services with such a message as “Starred sommelier carefully selected wine delivery service Michelin Starred selection. We will deliver 2 bottles of hidden wine that has not arrived in Japan every month”. The Respondent’s use of the disputed domain name cannot be recognized as use in connection with a bona fide offering of goods or services.

The Respondent is an individual whose name is Mai Miyota. The Panel sees no similarity between the Respondent’s name and the disputed domain name. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain name.

The Respondent’s website offers wine delivery services with the above mentioned confusing message, which would likely mislead consumers to recognize the Respondent’s website as somehow related to the Complainant. Therefore, the Panel finds that the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. Rather, it is clear to the Panel that the Respondent has intent for commercial gain to misleadingly divert consumers.

Considering that the Complainant is famous for its publication “MICHELIN Guide”, the disputed domain name is easily associated with the Complainant. The composition of the disputed domain name affirms the likelihood of confusion (as it includes the trademark MICHELIN in its entirety with the added term “wine”), because it is well-known that MICHELIN Guide awards stars for fine dining establishments, and fine dining establishments often offer wines. In the present case, even the gTLD, “tokyo” may strengthen the confusion because Tokyo is a destination of many MICHELIN Guide users, and the Internet users can perceive the disputed domain name as somehow associated to the Complainant.

Source: WIPO.

Can Booking.com be a trademark – that’s the question

Megan Taylor (Novagraaf) published an interesting article for Lexology where she discusses the topic for registration possibilities of low distinctive or generic names as trademarks.

The case at hand concerns the Booking.com’s attempt to register this domain name as a word trademark in the US. So far all applications for such trademarks have been refused by the USPTO. The arguments for this were the fact the booking is descriptive word for accommodation services for which the registration was sought.

The company’s position, however, was that the presence of .com makes the difference because it helps consumer to associate the word with the company’s business and in that way to create secondary meaning for the word.

The USPTO considers that such words have to be left for free use by all market participants.

Currently this case is submitted to the US Supreme Court and everyone expect its position.

In contrast, Booking.com was more successful in the EU. They received registration for its word mark in 2007 after proving acquired distinctiveness among the consumers.

Having said that, however, the EUIPO has changed its practice on the matter and nowadays it is really difficult such generic words to be registered as word marks even in case of evidence for a secondary meaning.