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March 31, 2011 / Nate Harris

Tucows Wins UDRP By Proving Rights in LORENZO.COM

Summary of Lorenzo International Limited v. Tucows.com Co.  / Tucows Inc.

(WIPO Case No. D2010-2254)

Filed: December 23, 2010; Decided: March 15, 2011 (Panelists: Desmond J. Ryan, Dan Hunter, and David E. Sorkin)

Disputed domain name: <lorenzo.com>

lorenzo.com


The Parties

Established in 1983, Complainant Lorenzo International Limited (“Lorenzo”) is a Hong Kong-based designer and retailer of “conceptualised lifestyle furniture.” Lorenzo claims to be the owner of 41 trademark registrations in 21 countries for the mark LORENZO, the earliest dating to May 1989 in Singapore.

Respondent Tucows.com Co/Tucows Inc. (“Tucows”) is a Canadian domain registrar. As part of its NetIdentity service, it has registered over 42,000 domain names consisting of surnames in order to provide personalized email addresses to persons having that surname. Tucows registered the disputed domain name in October 1996, predating all but the Singapore registration for LORENZO. The disputed domain points to a website relating to the personalize email address service.

Identical or Confusingly Similar

The Panel notes that Lorenzo is not listed as the owner of the trademark registrations it has submitted. Nonetheless, the Panel is willing to draw an inference that the listed owner and Lorenzo “are related and have a common interest in the protection of the LORENZO trademark.” Accordingly, the disputed domain is identical to the LORENZO mark.

Rights or Legitimate Interests

There is no evidence that Tucows knew of or had reason to suspect Lorenzo’s possible rights in the LORENZO mark when it registered the disputed domain name in 1996. Only the Singapore registration predates the domain registration, yet there is not “strong evidence of use and notoriety” to suggest that Tucows was aware of the mark.

The Panel accepts Tucows’ assertion that its personalized email service is a bona fide offering of services, and attempts to determine when that offering began. Though in some decisions panels have held that the disputed domain was registered on the date it was transferred to the respondent, the Panel here finds that approach to be inappropriate when, as here, the domain is used in conjunction with an ongoing business. Accordingly, the date of registration is considered to be the date of first registration, i.e., 1996. Even if registration were placed at the date of transfer, there is no evidence that the use was not bona fide on that date, as Tucows claims to have been unaware of Lorenzo until it received the complaint.

Accordingly, the Panel finds that Tucows has a legitimate right and interest in the disputed domain name.

Bad Faith

In light of the previous finding, the Panel does not consider this ground. However, the Panel notes that it “would not find bad faith registration or use” based on the above findings.

Decision

The complaint is denied.

Commentary

Substantively, I have no quarrel with this decision. However, the opinion is full of typos and inadvertent substitutions of “Respondent” for “Complainant” and vice versa. I found that somewhat disconcerting, especially considering that this was a three person Panel. You’d think at least one of them would have noticed the phrase “bone fides.”

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