JHO Intellectual Property Holdings and Elite IP Holdings are engaged in a promotional campaign for beverages and clothing that includes the term “NOO”. To this end, in the course of the year 2020, they have filed hundreds of trademarks around the world. However, deprived of the noo.com domain name, owned by Mr. T. since 2005, these two companies felt a loophole that they tried to fill by initiating a UDRP procedure to obtain the domain name.
However, the reckless complaint could hardly succeed. Indeed, the respondent had acquired the domain name 15 years before the first use of the claimants’ trademarks. UDRP case law provides recent examples of success many years after the registration or acquisition of the disputed domain name (kingofpop.com: Michael Jackson’s rights holders and other celebrities facing domain name issues, iptwins.com, 2019-07-11; UDRP: transfer of Mandela.org to the guardians of Nelson Mandela’s memory, iptwins.com, 2019-07-27; UDRP: stevejobs.com, transferred 20 years after registration, iptwins.com, 2019-12-20; UDRP: pabloescobar.com, transferred 20 years after its registration, iptwins.com 2019-10-16). However, in these examples, claimants were in a position to prove that they had prior trademark rights. In this case, however, the claimants were unable to provide this proof. Therefore, given the circumstances, the respondent unmistakably could not have been aware of the “NOO” trademarks at the time of the registration of the domain name. As a result, it was unthinkable that the claimants would succeed in proving bad faith. Among other reasons, the sole panelist held the following:
“there is no evidence that Respondent has used the Domain Name in a manner that reflects bad faith. Respondent’s prior use of the Domain Name for various content on webpages linked to the Domain Name does not reflect any targeting of Complainants or their NOO marks”.
I can only agree on this, although there are discordant voices (see UDRP on iss.mobi: a transfer that does not go without saying, iptwins.com, 2021-02-05).
The facts show that the claimants knew or should have known that their claim was without merit for the respondent and the sole panelist. In other words, the complaint was abusive.
Source: WIPO, D2020-3504, JHO Intellectual Property Holdings, LLC, Elite IP Holdings LLC v. Mahad Taheri, February 16, 2021, <noo.com> (sole panelist: Christopher S. Gibson).
