Press Release
October 5, 2010 -- Kenyon & Kenyon LLP announced that a World Intellectual Property Organization (WIPO) panel ruled unanimously in favor of the firm's client, Domain Spa, LLC, a leading domain name developer that combines the acquisition of domain names incorporating generic words and the subsequent commercial development of those domain names.
At issue were the domain names <thea.com> and <thea.net>, which Domain Spa, LLC uses for dating websites. THEA, which is the Greek word for goddess, is a common generic name used frequently around the world. Complainant, Laboratoires Thea, claimed to own trademark rights in the THEA designation, which it uses in connection with its business that specializes in the research, development and commercialization of opthamologic products.
Laboratoires Thea contended that Domain Spa, LLC's <thea.com> and <thea.net> domain names are identical or confusingly similar to Complainant's THEA, LABORATOIRES THEA, THEA PHARMA, and THEA marks, that Domain Spa, LLC has no rights or legitimate interests in the disputed domain names, that the disputed domain names interfere with Complainant's reputation, that the disputed domain names were registered in bad faith with the intention to attract Internet users for commercial gain and create a likelihood of confusion with Complainant's trademarks, and that, therefore, the domain names are in violation of the Uniform Dispute Resolution Policy ("UDRP").
The WIPO panel held that the disputed domain names reproduce Complainant's trademark for THEA in its entirety and, as a result, the disputed domain names are confusingly similar to Complainant's mark. However, the Panel found that the Complainant had failed to establish that Domain Spa, LLC has no rights or legitimate interests in the disputed domain names. The Panel stated, "there is no evidence that the Respondent is targeting the Complainant’s customers in anyway. The websites resolving from the disputed domain names do not refer to the Complainant, its competitors or offer similar goods or services to the Complainant." They further stated, "it is quite plausible to believe that "Thea" is an appropriate name for a dating website, and, in this case the Respondent's websites are websites advertising third party dating services. The links on the websites at the disputed domain names support the Respondent's submissions that the domain names were registered due to their descriptive value." Furthermore, the Panel noted that "the disputed domain names were registered over ten years ago. The Complainant did not present evidence or make any compelling submission that the Respondent knew of the Complainant or the Complainant’s trademarks when the disputed domain names were registered."
Based upon these determinations, the Panel found that Domain Spa LLC's use of the disputed domain names amounts to a bona fide offering of goods and services. Having reached this decision, the Panel determined that it was unnecessary to decide whether the disputed domain names were registered and used by Domain Spa, LLC in bad faith.
Domain Spa, LLC was represented by Kenyon & Kenyon LLP partner James E. Rosini and associates Mimi Rupp and Aaron Johnson.
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