Complainant's Hopes For Winning The UDRP Are Sleeping With The Fishes

Author:Mr David Taylor and Jane Seager
Profession:Hogan Lovells
 
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In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of the domain name taffo.com because it found that the Complainant had failed to prove that the Respondent had acted in bad faith, given that the dispute was in fact a complex trademark matter better resolved in a different forum.

Background

The Complainant, Taffo s.r.l, and the Respondent, Agenzia Funebre Taffo di Taffo G. & C. sas Societa/Ditta, were both Italian companies providing funeral services. The Complainant and the Respondent used to carry on the business initiated by their common ancestor, Gaetano Taffo, together. However, as a result of internal disputes the family decided to separate and continue their activity independently.

The disputed Domain Name, taffo.com, was acquired by the Respondent in 2015 and used to point to its website promoting funeral services.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a):

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Before proceeding to the analysis of the Parties' arguments, the Panel firstly focused on the pending court proceedings initiated by the Complainant in the Italian courts. In fact, the UDRP Rules give panels discretion to suspend, terminate, or continue with UDRP proceedings where the disputed domain name is also the subject of other pending legal proceedings. In the present case, the Panel did not deem it appropriate to terminate the UDRP proceedings and therefore proceeded to analyse each of the substantive requirements prescribed by the Policy.

Identity / similarity

With regard to the first limb, the Complainant contended that it had trademark rights in the name TAFFO FUNERAL SERVICES since 2012 and that, since 2010, it had attracted millions of visitors to its website at 'www.taffo.it'. The Respondent rebutted these arguments by stating, among other things, that the Complainant's Italian trademark did not designate funeral services. The Respondent further referred to an interim Italian court decision in 2017, confirmed...

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