When ‘Nova Tela' Is As Common As Telenovelas

Author:Ms Jane Seager and Aissatou Sylla
Profession:Hogan Lovells
 
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International - Hogan Lovells

NovAtel Inc, the owner of the US trademark NOVATEL, sought the transfer of 'novatela.com' under the UDRP The panel found that 'novatela' could be read as the combination of two common words and could be applied in multiple contexts unrelated to the complainant and its activities The complainant failed to demonstrate that the respondent knew or should have known of the trademark, or had targeted the complainant when registering the domain name In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before WIPO, a panel has refused to transfer the domain name 'novatela.com', finding that the complainant had failed to prove that the domain name had been registered in bad faith.

Background

The complainant was NovAtel Inc, Canada, a company specialised in global navigation satellite system solutions. The complainant registered the NOVATEL trademark in the United States in 2001. The complainant indicated that it had, since then, registered the trademark in at least 30 countries. The complainant also claimed that it had first used the trademark in 1992 in connection with navigation and positioning transceivers, GPS receivers and related goods.

The respondent was Registration Private, Domains By Proxy LLC, United States/Domain Admin, FindYourDomain.com, United States, which had registered the domain name 'novatela.com' in 2007. At the time of the decision, the domain name did not resolve to an active website.

The complainant initiated proceedings under the UDRP for a transfer of ownership of the domain name.

To be successful under the UDRP, a complainant must satisfy the requirements of Paragraph 4(a), namely that:

the disputed domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights; the respondent has no rights or legitimate interests in the disputed domain name; and the disputed domain name was registered and is being used in bad faith. Decision

Identity/similarity

Under the first element of Paragraph 4(a) of the UDRP, the complainant argued that the domain name fully incorporated the trademark, thus causing a likelihood of confusion as to the source and/or sponsorship of the domain name. The complainant added that the letter 'a' at the end of the domain name did not mitigate the confusing similarity between the domain name and the trademark.

The respondent argued that the domain name involved a generic, descriptive and...

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