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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No.	101120
Time of Filing	2015-11-24 13:51:36
Disputed domain name	SBKMOTOWORKS.COM

Case Administrator
Name	Lada Válková

Complainant
Organization	DORNA WSBK ORGANIZATION S.R.L.
Authorized Representative
Organization	Dorna WSBK Organization

Respondent
Name	Md Farid Jaafar

Other Legal Proceedings
There are no legal proceedings the Panel is aware of.

Identification of rights
The Complainant relies on its registered rights in various jurisdictions. It relies mainly on its trademarks in the US and at the European level generally. It submitted a long report showing many marks, some 70 pages long. Examples of the marks relied upon include a word mark for SBK, IR No. 1006900 registered as national marks in Japan, the US and Australia. There are other similar marks. It also has many figurative or logo marks also such as CTM No. 000291427 in classes 25, 28, 38, 41 for a stylized SBK both on top and below of the stylized words ‘SUPERBIKE WORLD CHAMPIONSHIP’ and mark no. 564823 a figurative mark with word elements: ‘SBK SUPERBIKE WORLD CHAMPIONSHIP’ registered in classes 25 28 38 41 via WIPO in Austria, Bulgaria, the Benelux, Switzerland, Spain, France, Hungry, Lichtenstein, Monaco, Portugal Romania, Serbia and Russia. It also has US national marks, including SBK, No. 3476636 registered in class 41. The Complainant also relies on its domain names, including: Iamsbk.com, Sbk.asia,Sbk.tv, Sbk.xxx, Sbkargentina.com, Sbkcasino.it, Sbkfactory.com, Sbkgarage.it, Sbkgear.com, Sbkgp.com, Sbkinfo.com, Sbk-intern.com, Sbkinternational.com, Sbkkk.com, Sbkmanager.it, Sbkmercosur.com, Sbkofficialstore.it, Sbkportal.com, Sbkracingschool.com, Sbk-racingschool.com,Sbkrm.com,Sbksuperbike.com, Sbksuperbikeworldchampionship.com, Sbkthegame.com,Sbkworld.com,Sbk-world.com,Worldsbk.cn,Worldsbk.com.ru, Worldsbk.it, Worldsbk.xxx, WSBK.EU, Wsbk.xx

Identification of rights

The Complainant relies on its registered rights in various jurisdictions. It relies mainly on its trademarks in the US and at the European level generally. It submitted a long report showing many marks, some 70 pages long. Examples of the marks relied upon include a word mark for SBK, IR No. 1006900 registered as national marks in Japan, the US and Australia. There are other similar marks. It also has many figurative or logo marks also such as CTM No. 000291427 in classes 25, 28, 38, 41 for a stylized SBK both on top and below of the stylized words ‘SUPERBIKE WORLD CHAMPIONSHIP’ and mark no. 564823 a figurative mark with word elements: ‘SBK SUPERBIKE WORLD CHAMPIONSHIP’ registered in classes 25 28 38 41 via WIPO in Austria, Bulgaria, the Benelux, Switzerland, Spain, France, Hungry, Lichtenstein, Monaco, Portugal Romania, Serbia and Russia. It also has US national marks, including SBK, No. 3476636 registered in class 41.

The Complainant also relies on its domain names, including: Iamsbk.com, Sbk.asia,Sbk.tv, Sbk.xxx, Sbkargentina.com, Sbkcasino.it, Sbkfactory.com, Sbkgarage.it, Sbkgear.com, Sbkgp.com, Sbkinfo.com, Sbk-intern.com, Sbkinternational.com, Sbkkk.com, Sbkmanager.it, Sbkmercosur.com, Sbkofficialstore.it, Sbkportal.com, Sbkracingschool.com, Sbk-racingschool.com,Sbkrm.com,Sbksuperbike.com, Sbksuperbikeworldchampionship.com, Sbkthegame.com,Sbkworld.com,Sbk-world.com,Worldsbk.cn,Worldsbk.com.ru, Worldsbk.it, Worldsbk.xxx, WSBK.EU, Wsbk.xx

Factual Background
In March 2013, the Complainant, part of the Spanish DORNA Group, acquired the Superbike World Championships, a competition broadcast to an international audience. This racing event is now apparently owned by the Italian arm of the group. The Complainant also acquired the many and various registered trade marks referred to above, including for the abbreviation SBK (often with other elements or stylised) in various classes, including class 41 for motor sport events and related merchandising classes but also with some marks in class 12 for motorbikes and vehicles in general and their accessories, parts and fittings. The Complainant is also the proprietor of many various domain names featuring SBK, often with other elements, as noted above. The Registrant is a company registered and trading in Malaysia since at least April 2011 under the registered company name and style ‘SBK Motorworks.’ It is a workshop which manufactures and designs parts for racing motorbikes. It has a website accessed by the Disputed Domain Name, SBKMOTOWORKS.COM where it shows and promotes its business. It registered that domain name on 31 May 2012. On 23 September 2015, the Complainant sent a warning letter to the Respondent and its Registrar. No reply was received either by the Registrant or by its Registrar

Factual Background

In March 2013, the Complainant, part of the Spanish DORNA Group, acquired the Superbike World Championships, a competition broadcast to an international audience. This racing event is now apparently owned by the Italian arm of the group. The Complainant also acquired the many and various registered trade marks referred to above, including for the abbreviation SBK (often with other elements or stylised) in various classes, including class 41 for motor sport events and related merchandising classes but also with some marks in class 12 for motorbikes and vehicles in general and their accessories, parts and fittings. The Complainant is also the proprietor of many various domain names featuring SBK, often with other elements, as noted above.

The Registrant is a company registered and trading in Malaysia since at least April 2011 under the registered company name and style ‘SBK Motorworks.’ It is a workshop which manufactures and designs parts for racing motorbikes. It has a website accessed by the Disputed Domain Name, SBKMOTOWORKS.COM where it shows and promotes its business. It registered that domain name on 31 May 2012.

On 23 September 2015, the Complainant sent a warning letter to the Respondent and its Registrar. No reply was received either by the Registrant or by its Registrar


PARTIES' CONTENTIONS: COMPLAINANT: 1. The Complainant has exclusive registered rights to the name and mark SBK internationally. 2. It has extensive reputation in the word and mark SBK internationally as a result of its SUPERBIKE races and competitions as protected by its extensive trade mark and domain name portfolio. 3. The Respondent’s use of the Disputed Domain Name free-rides on the Complainant’s international marks and reputation and diverts internet traffic and consumers may believe it is connected or authorised by the Complainant and the Disputed Domain Name was selected with knowledge and intent and this is in Bad Faith. 4. While SUPERBIKE is descriptive, SBK is not. Therefore, the Respondent has no legitimate rights or interests in SBK and its use is not a bona fide offering. RESPONDENT: 1. A SUPERBIKE is a customised racing bike. The term SUPERBIKE and the abbreviation SBK are generic and descriptive. 2. The Respondent provides bona fide goods and services for SUPERBIKES and has rights in Malaysia arising from use and customers in Malaysia for its goods and services and has had a company name registration for SBK Motorworks since April 2011.

PARTIES' CONTENTIONS:

COMPLAINANT:
1. The Complainant has exclusive registered rights to the name and mark SBK internationally.
2. It has extensive reputation in the word and mark SBK internationally as a result of its SUPERBIKE races and competitions as protected by its extensive trade mark and domain name portfolio.
3. The Respondent’s use of the Disputed Domain Name free-rides on the Complainant’s international marks and reputation and diverts internet traffic and consumers may believe it is connected or authorised by the Complainant and the Disputed Domain Name was selected with knowledge and intent and this is in Bad Faith.
4. While SUPERBIKE is descriptive, SBK is not. Therefore, the Respondent has no legitimate rights or interests in SBK and its use is not a bona fide offering.

RESPONDENT:
1. A SUPERBIKE is a customised racing bike. The term SUPERBIKE and the abbreviation SBK are generic and descriptive.
2. The Respondent provides bona fide goods and services for SUPERBIKES and has rights in Malaysia arising from use and customers in Malaysia for its goods and services and has had a company name registration for SBK Motorworks since April 2011.

Rights
The Complainant has many registered marks worldwide -as noted above. It also appears that there are various registrations in Malaysia from the Complainant’s report. The Complainant has not focused on the Malaysian marks in this case and did not draw attention to them –however they are referenced in its report. Fortunately, that registry has an online database. The Panel viewed that and notes that there are also a number of marks there such as that for No: 2011021827 a figurative mark with a word element SBK plus then two large signs << which look like another K and are coloured together with word elements ‘SUPERBIKE <SUPERSPORT <FIM WORLD CHAMPIONSHIP’ registered in 2011 in class 41. Similarly, in the same class, No. 201102182 with word elements including ‘SUPERBIKE <SUPERSPORT <FIM WORLD CHAMPIONSHIP‘. That registry has an entry for an application in class 12 for SBK which does not appear to have been granted but which reads ‘SBK Application No. 2011010734 10/06/2011 class 12. Stat: Full examination not OK –Objection‘. That appears to have been the status as at 5 January 2012 and the record has not been updated as at 16 December 2015. The official correspondence is not available online, however the Panel thinks it is fair to assume that application faced objection on the grounds of descriptiveness. Descriptive words are in theory un-registerable as trade marks as low or lacking in distinctiveness. Trade marks are badges of origin –they indicate the undertaking or business responsible for the quality of the goods/services –and therefore enable consumers to distinguish the goods and services of different undertakings and repeat purchases. Therefore marks cannot be registered that lack either inherent or acquired distinctiveness or are descriptive of the goods and services—as they do not indicate origin. You cannot have Soap for soap or Superbike for superbikes. There is also a public interest underlying this prohibition, in that no trader should be able to acquire exclusive rights to words other traders might wish to use, such as terms with purely informational values. Consumers are not easily confused by such terms as they understand they are common ordinary terms, employed by many undertakings, with a low degree of distinctiveness. The Complainant seems to have responded to the Registry’s objection by applying and registering instead No. 2011021823 being a barely stylized mark being ‘SBK<’ (the <is stylised to look like another K) as a class 12 mark. That was applied for on 13 December 2011 and was eventually granted. There are similar marks in classes 25 and 41. The Complainant’s registered marks have been granted by the respective registrars, including that for ‘SBK<’ in class 12 in Malaysia. That does not mean that the marks do not contain elements that are descriptive and in so far as they do, that element enjoys limited or no exclusivity. The Panel asked the parties to address this critical issue and referred them to the decision of the European Court of Justice in Case C 196/11 P, Formula One Licensing BV v OHIM, Global Sports Media Ltd at paragraphs 18-20 (the case concerned an application for a figurative mark which included the word element F1 and was opposed by the owner of an earlier mark for F1), the court found that the term ‘Formula 1’ was used to designate, in generic terms, the sport of motor racing and that the abbreviation F1 was just as generic as the term ‘Formula 1’. The decision in the ECJ is focused on a narrow point about the appropriate context (invalidity proceedings and not an opposition) for raising absolute grounds challenges (descriptiveness/distinctiveness) to the earlier mark. However, the case illustrates that the mere fact that the earlier mark owner had managed to register a descriptive element, did not prevent it being that, nor would it prevent other traders from using that element to describe their own goods and services or from registering their own marks including it. This can be described as a norm of international trade mark law, which is why the issue of descriptiveness is addressed expressly in the UDRP. Indeed, the Complainant replied to the Panel’s request and now accepts that SUPERBIKE is generic and descriptive but asserts that SBK is not. This is disingenuous. The Complainant said it has had to overcome absolute grounds objections based on descriptiveness in order to be registered in some jurisdictions—what it omitted to tell us was that it was refused SBK in Malaysia in class 12 as it was descriptive for SUPERBIKE. The Panel understands that this can be a discretionary issue for some registries. While many jurisdictions will grant highly descriptive marks, those marks may be weak, as well as vulnerable. Any such registration will not prevent third parties from registration and/or use in the descriptive sense and therefore do not offer exclusive rights. As would be expected in the case of a descriptive mark, in this case there are many similar marks employing SBK --as many traders in the racing bike market/superbike racing world wish to use the same generic/descriptive term. Indeed, the online registries viewed by the Panel such as WIPO, OHIM, TM View and USPTO demonstrate that there are many others owning marks using SBK—particularly in the EU where there are a very significant number of such national marks. These other marks registered using the abbreviation SBK also show the Complainant does not and cannot enjoy exclusive rights to a descriptive term. For the same reason that the Malaysian registry refused to grant the word mark SBK in class 12, the Complainant lacks exclusive rights to it. The Panel notes that the Complainant cited and provided copies of a good number of other domain name decisions finding in its favour. A review of these decisions however revealed that they were almost without exception undefended. They are therefore of no assistance. However, it should be noted that it is generally accepted that the test for confusing similarity is a very low, threshold test, designed simply to assess whether a complainant has standing to bring a complaint under the Policy. Therefore, the Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy) for the Disputed Domain Name fully incorporates term ‘SBK’ merely adding descriptive ‘MOTOWORKS’ but those rights are very limited and non-exclusive in relation to the descriptive word element SBK.

Rights

The Complainant has many registered marks worldwide -as noted above.

It also appears that there are various registrations in Malaysia from the Complainant’s report. The Complainant has not focused on the Malaysian marks in this case and did not draw attention to them –however they are referenced in its report.

Fortunately, that registry has an online database. The Panel viewed that and notes that there are also a number of marks there such as that for No: 2011021827 a figurative mark with a word element SBK plus then two large signs << which look like another K and are coloured together with word elements ‘SUPERBIKE <SUPERSPORT <FIM WORLD CHAMPIONSHIP’ registered in 2011 in class 41. Similarly, in the same class, No. 201102182 with word elements including ‘SUPERBIKE <SUPERSPORT <FIM WORLD CHAMPIONSHIP‘.

That registry has an entry for an application in class 12 for SBK which does not appear to have been granted but which reads ‘SBK Application No. 2011010734 10/06/2011 class 12. Stat: Full examination not OK –Objection‘. That appears to have been the status as at 5 January 2012 and the record has not been updated as at 16 December 2015. The official correspondence is not available online, however the Panel thinks it is fair to assume that application faced objection on the grounds of descriptiveness. Descriptive words are in theory un-registerable as trade marks as low or lacking in distinctiveness. Trade marks are badges of origin –they indicate the undertaking or business responsible for the quality of the goods/services –and therefore enable consumers to distinguish the goods and services of different undertakings and repeat purchases. Therefore marks cannot be registered that lack either inherent or acquired distinctiveness or are descriptive of the goods and services—as they do not indicate origin. You cannot have Soap for soap or Superbike for superbikes. There is also a public interest underlying this prohibition, in that no trader should be able to acquire exclusive rights to words other traders might wish to use, such as terms with purely informational values. Consumers are not easily confused by such terms as they understand they are common ordinary terms, employed by many undertakings, with a low degree of distinctiveness.

The Complainant seems to have responded to the Registry’s objection by applying and registering instead No. 2011021823 being a barely stylized mark being ‘SBK<’ (the <is stylised to look like another K) as a class 12 mark. That was applied for on 13 December 2011 and was eventually granted. There are similar marks in classes 25 and 41.

The Complainant’s registered marks have been granted by the respective registrars, including that for ‘SBK<’ in class 12 in Malaysia. That does not mean that the marks do not contain elements that are descriptive and in so far as they do, that element enjoys limited or no exclusivity.

The Panel asked the parties to address this critical issue and referred them to the decision of the European Court of Justice in Case C 196/11 P, Formula One Licensing BV v OHIM, Global Sports Media Ltd at paragraphs 18-20 (the case concerned an application for a figurative mark which included the word element F1 and was opposed by the owner of an earlier mark for F1), the court found that the term ‘Formula 1’ was used to designate, in generic terms, the sport of motor racing and that the abbreviation F1 was just as generic as the term ‘Formula 1’. The decision in the ECJ is focused on a narrow point about the appropriate context (invalidity proceedings and not an opposition) for raising absolute grounds challenges (descriptiveness/distinctiveness) to the earlier mark. However, the case illustrates that the mere fact that the earlier mark owner had managed to register a descriptive element, did not prevent it being that, nor would it prevent other traders from using that element to describe their own goods and services or from registering their own marks including it. This can be described as a norm of international trade mark law, which is why the issue of descriptiveness is addressed expressly in the UDRP.

Indeed, the Complainant replied to the Panel’s request and now accepts that SUPERBIKE is generic and descriptive but asserts that SBK is not. This is disingenuous. The Complainant said it has had to overcome absolute grounds objections based on descriptiveness in order to be registered in some jurisdictions—what it omitted to tell us was that it was refused SBK in Malaysia in class 12 as it was descriptive for SUPERBIKE.

The Panel understands that this can be a discretionary issue for some registries. While many jurisdictions will grant highly descriptive marks, those marks may be weak, as well as vulnerable. Any such registration will not prevent third parties from registration and/or use in the descriptive sense and therefore do not offer exclusive rights.

As would be expected in the case of a descriptive mark, in this case there are many similar marks employing SBK --as many traders in the racing bike market/superbike racing world wish to use the same generic/descriptive term. Indeed, the online registries viewed by the Panel such as WIPO, OHIM, TM View and USPTO demonstrate that there are many others owning marks using SBK—particularly in the EU where there are a very significant number of such national marks. These other marks registered using the abbreviation SBK also show the Complainant does not and cannot enjoy exclusive rights to a descriptive term.

For the same reason that the Malaysian registry refused to grant the word mark SBK in class 12, the Complainant lacks exclusive rights to it.

The Panel notes that the Complainant cited and provided copies of a good number of other domain name decisions finding in its favour. A review of these decisions however revealed that they were almost without exception undefended. They are therefore of no assistance.

However, it should be noted that it is generally accepted that the test for confusing similarity is a very low, threshold test, designed simply to assess whether a complainant has standing to bring a complaint under the Policy. Therefore, the Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy) for the Disputed Domain Name fully incorporates term ‘SBK’ merely adding descriptive ‘MOTOWORKS’ but those rights are very limited and non-exclusive in relation to the descriptive word element SBK.

No rights or legitimate interests
The Respondent says the SBK element in its mark is generic and/or descriptive and references SUPERBIKE and it is using it in its descriptive sense. The Panel finds that the abbreviation SBK is just as generic and descriptive as SUPERBIKE—namely to reference a bike that has been customised for racing. The fact the Complainant managed to register marks including the term does not prevent the Respondent's or others’ use or registration of the same term in its descriptive sense. The Panel is also satisfied that the Respondent's registration and use was in relation to the word’s ordinary meaning and not any source or acquired/secondary meaning referencing the Complainant’s product and goodwill. In trade mark law, this is paradigm fair use and does not infringe. Further, the Respondent has relevant rights arising from its own bona fide use of its name in trade and possibly protected as earlier rights in local law. Neither party has made detailed submissions on this point, however, it appears that Malaysia follows common law norms and recognizes unregistered rights arising through use and protected by the law of passing-off. The Respondent has customers in Malaysia. The Complainant may also have an audience there but has not submitted evidence focused on that jurisdiction. However, the Respondent’s rights will also be limited (that is, non-exclusive) in relation to the descriptive term SBK as passing-off in common law systems follows the same rules and norms as trade mark law in this respect. The Respondent has made out its case in this respect, it is bona fide in the business of manufacturing and supplying parts and accessories for SUPERBIKES and uses the abbreviation of that generic and descriptive term in its mark to indicate that. The Panel finds that the Respondent has made out these grounds under the paragraph 4(c) of the Policy: “c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. .: (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Complainant has not, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).

No rights or legitimate interests

The Respondent says the SBK element in its mark is generic and/or descriptive and references SUPERBIKE and it is using it in its descriptive sense.

The Panel finds that the abbreviation SBK is just as generic and descriptive as SUPERBIKE—namely to reference a bike that has been customised for racing. The fact the Complainant managed to register marks including the term does not prevent the Respondent's or others’ use or registration of the same term in its descriptive sense.

The Panel is also satisfied that the Respondent's registration and use was in relation to the word’s ordinary meaning and not any source or acquired/secondary meaning referencing the Complainant’s product and goodwill. In trade mark law, this is paradigm fair use and does not infringe.

Further, the Respondent has relevant rights arising from its own bona fide use of its name in trade and possibly protected as earlier rights in local law. Neither party has made detailed submissions on this point, however, it appears that Malaysia follows common law norms and recognizes unregistered rights arising through use and protected by the law of passing-off. The Respondent has customers in Malaysia. The Complainant may also have an audience there but has not submitted evidence focused on that jurisdiction. However, the Respondent’s rights will also be limited (that is, non-exclusive) in relation to the descriptive term SBK as passing-off in common law systems follows the same rules and norms as trade mark law in this respect.

The Respondent has made out its case in this respect, it is bona fide in the business of manufacturing and supplying parts and accessories for SUPERBIKES and uses the abbreviation of that generic and descriptive term in its mark to indicate that.

The Panel finds that the Respondent has made out these grounds under the paragraph 4(c) of the Policy:

“c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. .:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant has not, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).

Bad faith
The Respondent uses the Disputed Domain Name including the descriptive element SBK in its descriptive sense and in good faith and accordance with practices that are generally recognized as honest in the view of the Panel. The Complainant has not, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy). Reverse Domain Name Hijacking Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name". WIPO’s second edition overview says: “To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name […] WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.” The Panel finds this is a case of Reverse Domain Name Hijacking. That is so for the following reasons. First, the Complainant has failed on the significant issues in the proceeding. It is true that it has succeeded on one issue, as it established registered trademarks including the element SBK but in light of the refusal of the Malaysian Registry to grant that word mark in class 12 non-stylized, it knew full well that that it was so descriptive as to be un-registerable there in that class and therefore that it could not claim any exclusive rights in it. Its other registered marks there (and elsewhere) containing that descriptive word element are of very limited value to the Complainant for the same reasons. The Complainant failed to disclose this highly pertinent refusal even when asked expressly to address descriptiveness by the Panel. The Complainant knowing it could not claim exclusive rights locally, appears to have hoped that a foreign panel would not advert to that issue and may carelessly award the Disputed Domain Name in its favour. It also likely expected that the complaint would be undefended – as the others were – and as so many complaints are. The fact that the Complainant’s representatives are highly specialised experts in trade mark law who would fully have understood and explained the limits of the Complainant’s rights compounds the issue. So many registrants lack the knowledge, will or resources to access such expertise and would have lost legitimately owned and acquired domains in such a case - fortunately the Respondent was prepared to defend his. The Complainant also failed on the issues of rights and legitimate interests and also on the issues of both bad faith registration and bad faith use. The fact that a complainant does not succeed in proving various elements is not by itself a ground for a finding against it of Reverse Domain Name Hijacking. But in the present case the Complainant either knew or should have known that it could not prove the essential elements of a claim under the UDRP, yet it went on and brought the claim. This is part, it seems, of a highly aggressive and overreaching approach to its international portfolio. There must be some sanction for this conduct and therefore the Panel is making this finding. This may at least alert others should it repeat the behaviour.

Bad faith

The Respondent uses the Disputed Domain Name including the descriptive element SBK in its descriptive sense and in good faith and accordance with practices that are generally recognized as honest in the view of the Panel.

The Complainant has not, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).

Reverse Domain Name Hijacking

Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name". WIPO’s second edition overview says: “To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name […] WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.”

The Panel finds this is a case of Reverse Domain Name Hijacking. That is so for the following reasons. First, the Complainant has failed on the significant issues in the proceeding. It is true that it has succeeded on one issue, as it established registered trademarks including the element SBK but in light of the refusal of the Malaysian Registry to grant that word mark in class 12 non-stylized, it knew full well that that it was so descriptive as to be un-registerable there in that class and therefore that it could not claim any exclusive rights in it. Its other registered marks there (and elsewhere) containing that descriptive word element are of very limited value to the Complainant for the same reasons.

The Complainant failed to disclose this highly pertinent refusal even when asked expressly to address descriptiveness by the Panel. The Complainant knowing it could not claim exclusive rights locally, appears to have hoped that a foreign panel would not advert to that issue and may carelessly award the Disputed Domain Name in its favour. It also likely expected that the complaint would be undefended – as the others were – and as so many complaints are.

The fact that the Complainant’s representatives are highly specialised experts in trade mark law who would fully have understood and explained the limits of the Complainant’s rights compounds the issue. So many registrants lack the knowledge, will or resources to access such expertise and would have lost legitimately owned and acquired domains in such a case - fortunately the Respondent was prepared to defend his.

The Complainant also failed on the issues of rights and legitimate interests and also on the issues of both bad faith registration and bad faith use. The fact that a complainant does not succeed in proving various elements is not by itself a ground for a finding against it of Reverse Domain Name Hijacking. But in the present case the Complainant either knew or should have known that it could not prove the essential elements of a claim under the UDRP, yet it went on and brought the claim.

This is part, it seems, of a highly aggressive and overreaching approach to its international portfolio. There must be some sanction for this conduct and therefore the Panel is making this finding. This may at least alert others should it repeat the behaviour.

Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Principal Reasons for the Decision
The Complainant has failed to meet its three-fold burden under the Policy: “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.” The burden was not met for (ii) and (iii) and the findings made in relation to (i) were limited as described. A finding of Reverse Domain Name Hijacking was made against the Complainant.

Principal Reasons for the Decision

The Complainant has failed to meet its three-fold burden under the Policy:

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

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

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

In the administrative proceeding, the complainant must prove that each of these three elements are present.”

The burden was not met for (ii) and (iii) and the findings made in relation to (i) were limited as described.

A finding of Reverse Domain Name Hijacking was made against the Complainant.

Decision
For all the following reasons, the Complaint is	Rejected
and the disputed domain name(s) are to be
SBKMOTOWORKS.COM	Complaint rejected

Panellists
Name	Victoria McEvedy
Date of Panel Decision	2015-12-17

Publication of the Decision
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Dispute 101120

Panel Decision