The Panel considers that the second requirement of the Policy should be addressed in the circumstances of this case by reference to the criteria identified in the decision in WIPO Case No. D2001-0903, Oki Data Americas, Inc. v ASD, Inc. This approach has been followed in numerous cases decided under the Policy by WIPO Panels and also in several cases by CAC Panels: see, for example, Case No. 100788 Stellar Ltd v David Egelmeers and Case No. 101248 Novo Nordisk A/S v Luca Radu.
According to the Oki Data decision,
“To be ‘bona fide,’ the offering must meet several requirements. Those include, at the minimum, the following:
- Respondent must actually be offering the goods or services at issue. …
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. …
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. …
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. …”
The Panel is satisfied that the first, second and fourth of these criteria are met in this case. However, it is necessary to consider more closely the third criterion.
In the Panel’s view the disclaimer is inconspicuous, even after it was moved to a more prominent position following the cease and desist letter. Despite being alerted to its presence and looking for it, having read the parties’ submissions, the Panel had difficulty finding it. Furthermore, even if seen and read, the disclaimer does not make it clear that the product offered on the website is not made by or under the control of the Complainant. It merely states that Dome (whatever it is) is a separate company from the Complainant and is not the same as GoPro; it does not, though, also indicate that the product, despite using GoPro in its name, is not licensed or otherwise approved by the Complainant.
Indeed, the extensive use of the name “GoPro Dome” throughout the website as if it is a single brand reinforces the (erroneous) impression given by the disputed domain name that the website is selling a product of the GoPro company, or licensed or authorised by the GoPro company, and not merely a product that works in conjunction with products of the GoPro company.
In addition, the failure of the Respondent to provide a clearer and more conspicuous disclaimer even after receiving the Complainant’s cease and desist letter indicates a desire on the part of the Respondent to continue to benefit from Internet users being given the false impression that the product promoted and sold on the Respondent’s website is a product of the Complainant.
The Panel does not regard the use of the “GOPRO” mark in the name of the Respondent’s product as compatible with US or EU trademark law. It is confusing and unnecessary to indicate the intended use of the Respondent’s product. It does not constitute fair use for the purposes of US trademark law or use in accordance with honest and fair commercial practices within the meaning of EU trademark legislation. Rather, the use of the GoPro mark in the name for Respondent's product appears to be trademark infringement, rather than a fair nominative use. This consideration provides further support for finding that the second requirement of the Policy is satisfied in this case.
In these circumstances the Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
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