Trademark holder vs. “the” trademark holder — Targeting “a”
Domain owner admitted the Complainant was one of the firms that would be interested in its domain, but that there were many others.
A World Intellectual Property Organization panel has ordered (pdf) the domain name temco.com transferred to a tool manufacturer called Temco Industrial.
It’s an interesting case worth digging into.
The registrant, domain investor Mira Holdings, purchased the domain for $12,540 in a NameJet auction in 2022.
Mira Holdings argued that there are many firms with the name Temco and that it wasn’t targeting the Complainant exclusively.
In communications with a GoDaddy broker, it stated that it was willing to hold out for one of the many firms with this name to purchase it. One of the examples it provided was the Complainant, but it didn’t realize that the Complainant was the firm making the offer.
The three-person panel distinguished between targeting trademark holders in general vs. targeting a specific trademark holder. Since the Complainant was one of the firms Mira believed might want the domain, the panel found it targeted.
The panel pointed to a previous case (pdf) involving Mira and the domain bowtex.com, where the domain was ordered transferred.
While one could argue that temco is more generic than bowtex, the panel noted that this case was different from combining common dictionary words.
Ultimately, the panel ruled that Mira targeted the Complainant or another firm using the Temco mark, and that this showed registration in bad faith.
While there’s some nuance, the decision seems at odds with Mira Holding’s most recent UDRP win for Ideatec.com. While one could argue that case involved more generic dictionary words (tec being short for tech), the panel specifically pointed to firms other than the Complainant using the domain as evidence that it’s fairly generic, and Mira wasn’t uniquely targeting the Complainant.
