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September 13, 2010 / Nate Harris

Tellus B.V. v. Mr. Oren Nehoray

Summary of Tellus B.V. v. Mr. Oren Nehoray
(WIPO Case No. D2010-1115)

Filed July 6, 2010; Decided August 24, 2010 (Panelist: Tony Willoughby)

Domain Name: <intlmovers.org>

intlmovers.org

intlmovers.org

The Parties

Complainant Tellus B.V. (“Tellus”) is an intermediary for those needing international moving and relocation services. Since August 2003, Tellus has offered those services through its website at <intlmovers.com>, where visitors can compare rates and contact moving companies. Tellus owns multiple trademark registrations for the mark INTLMOVERS, the earliest having a priority date of July 2007.

Respondent Mr. Oren Nehoray registered the disputed domain name in June 2006 (i.e., after Tellus registered its <intlmovers.com> domain but before it had registered its INTLMOVERS mark). Since that time, Mr. Nehoray has used the site to offer information about international moving services.

Identical or Confusingly Similar

The domain name comprises Tellus’s INTLMOVERS mark followed by the “.org” gTLD. Thus, the disputed domain name is identical to Tellus’s mark.

Rights or Legitimate Interests

Because the Panel does not find (below) that the disputed domain was registered and used in bad faith, it does not bother to consider this issue.

Bad Faith

The Panel points out that Mr. Nehoray registered the disputed domain name on June 23, 2006, which is after Tellus began using the INTLMOVERS mark in 2003 (and, possibly, acquired common law rights in the mark) but before Tellus first registered the mark.

“The Panel finds that when the Respondent registered the [disputed] Domain Name he must have been aware of the Complainant and the Complainant’s website.” However, for the disputed domain to have been registered in bad faith, Tellus must have had common law rights in the mark at the time of registration, and Mr. Nehoray must have been aware of those rights. Here, Tellus failed to provide sufficient evidence of secondary meaning. Though Tellus submitted its marketing expenditures dating back to 2003, no details of the expenditures are provided, and in fact it is not even clear what currency the figures are in. Thus, there is no evidence that INTLMOVERS had acquired secondary meaning by the time the disputed domain was registered.

While Mr. Nehoray did not dispute that he was aware of Tellus’s <intlmovers.com> domain, he claimed that he believed “international movers” was descriptive of the type of services that he and Tellus both offered. The Panel accepted that explanation, noting that “it is quite possible on the evidence before [the Panel] that the Respondent reasonably regarded the Domain Name to be a fair description of the subject matter for his website, which he was free to use.”

For these reasons, the Panel is not persuaded that the disputed domain name was registered in bad faith.

Decision

The complaint is denied.

Commentary

I thought this decision got it right. Note that the Panel found it possible that the Respondent reasonably regarded INTLMOVERS to be descriptive. In other words, an unreasonable belief that a mark is merely descriptive may not avoid a finding of bad faith.

Contrast that with the law of fraud in the trademark context. The Federal Circuit held last year in In re Bose, 91 USPQ2d 1939 (CAFC 2009) that the reasonableness of a declarant’s belief in the veracity of a statement is “not part of the analysis.” As John Welch points out on the TTABlog, that’s a strange rule, “since an honest, totally off-the-wall, belief would hardly seem a legitimate explanation that would avoid fraud.” SeeThinking About Fraud: Where Does ‘Inadvertence’ End and ‘Reckless Disregard’ Begin?“, TTABlog (Jan. 25, 2010).

When a respondent believes the complainant has no trademark rights, must that belief be reasonable to avoid a finding of bad faith? This Panel’s approach suggests the answer is yes, which seems to make a lot of sense.

Epilogue

9/13/2010: <intlmovers.org> still points to Mr. Nehoray’s website.

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