Steve Levy ⬥ 28 April
The domain at issue in this week’s decision is roispresso.com. So what on Earth is “roispresso”, you may ask?
Well, the Respondent – the company behind www.roispresso.com – named ENERG d.o.o., explains that Roispresso is an espresso-like drink made from rooibos tea and that the product was originally called “Respresso” but the name was changed to avoid a lawsuit by Nestle. Given that the Panelist in this National Arbitration Forum (NAF) decision ruled that the Complainant not be granted relief, it looks like ENERG d.o.o. gets to keep its website and its new(er) name.
The Complainant is DuPreez International LLC dba Rooispresso. Rooispresso advertises a very similar beverage on www.rooispresso.com, explaining that its product is a “rooibos tea in specially formulated espresso form”. While the Complainant’s site features photos of the packaged product as well as specific locations where the product can be purchased, the Respondent’s site does not indicate where its product can be purchased nor shows any photos of the packaged product itself. The Respondent’s site does feature reviews and press mentions of Roispresso, however, including online articles that report that London’s Trafalgar Hotel Bar now serves Roispresso.
Under the first UDRP factor the Panelist found that the domain name is confusingly similar to the Respondent’s trademark, but then held that the Complainant failed to adequately establish that the Respondent has no rights or legitimate interests in the domain name under the second UDRP factor. Although the Complainant claimed that the Respondent is not commonly known by the roispresso.com name, the Panelist pointed out that the Respondent does, in fact, have a registered trademark in Slovenia for ROISPRESSO and that it used its trademark for at least three months prior to receiving a warning letter from the Complainant.
As for the third UDRP factor, the Panelist decided not to make a finding on the question of bad faith registration and use. However, he does make an interesting point: “The Panel notes, with some concern, that the evidence appears to indicate that Respondent indeed agreed to change its domain name, and has failed to do so. It is not, however, within the jurisdiction of this Panel under the Policy to enforce contractual agreements. Any claim that Complainant may wish to advance regarding that issue will need to be brought in an appropriate court with jurisdiction over such claims.” You may have heard me mention, in prior blog posts, that the UDRP is no place for contractual disputes.
So, the bottom line here is that a brand owner must carefully investigate the owner of a domain name before firing off a UDRP complaint. Even where they don’t, if new facts are brought to light by the respondent, it’s the job of complainant’s counsel to suspend the case and possibly even recommend settlement if those new facts make it look like the case isn’t the sweet tea it once appeared to be but has turned into a bitter brew.
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If you’re interested in learning more about UDRP decisions (specifically, how to get more out of your enforcement budget), join me and the FairWinds UDRP Team on May 6, 2014 for “Improve Outcomes, Reduce Costs: UDRP in 2014″, a free 30 minute webinar. Register here today.