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November 22, 2010 / Nate Harris

UDRP Complainant’s ETHNO (& Design) Mark Doesn’t Confer Trademark Rights in “ETHNO”

Summary of Limited Liability Company Infomedia v. c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager
(WIPO Case No. D2010-1239)

Filed: July 27, 2010; Decided: October 27, 2010 (Panelists: Alistair Payne, Natasha Lisman, and Christos A. Theodoulou)

Disputed domain name: <ethno.com>

ethno.com

The Parties

Complainant Limited Liability Company Infomedia (“Infomedia”) is a web services company based in the Ukraine. Since as early as 2006, it has owned and licensed Russian and Ukraine trademark registrations, respectively, for design marks incorporating the word ETHNO and  a propeller design, presumably like the one seen below:

Respondent c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager (“Eurofirm”) registered the disputed domain name on September 26, 2000. It claims to have been working on plans to use the disputed domain name for business projects relating to ethnic groups.

Identity or Confusing Similarity

The Panel acknowledges Infomedia’s rights in a registered Russian trademark “which comprises a prominent propeller-like device element and the word mark ETHNO underneath it.” However, the Panel notes that Infomedia submitted no evidence of rights in the word ETHNO alone:

While it is a prominent element in the combined trademark, in this Panel’s view the word “ethno” is no more prominent than the propeller-like device element, which the Panel notes does not conjure up any particular association with the common meaning of the term “ethno” as defined above. Considering these factors together, taking into account the Panel’s overall impression of the trademark, its assessment that the Complainant’s trademark is not even close to being a word mark registration for ETHNO or even a fancy stylized version of the word mark, and that the combined trademark evokes more than the word alone, the Panel does not on balance find that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

Bad Faith

The Panel notes that the disputed domain name was registered at least six years prior to Infomedia’s first use of the mark. Thus, Infomedia has failed to prove bad faith registration. Furthermore, the disputed domain name is “generic in nature”, and there is no evidence suggesting that Eurofirm was using the disputed domain in bad faith.

Decision

The Complaint is denied.

Commentary

One could argue that the “propeller-like device element” is a somewhat abstract part of the mark, and less prominent than the word ETHNO, which is the dominant part of the mark. However, I think it’s a close call. I found this to be a good decision overall.

Epilogue

<ethno.com> still points to Eurofirm’s website.

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