PARTIES' CONTENTIONS:
COMPLAINANT:
Firstly, the Complainant contends that the disputed domain name is identical to the protected rights on which he relies and which he owns, i.e. registered trade/service marks protected in several countries and company name. With regard to that latter company name no further information is provided.
Secondly, the Complainant contends that the Respondent does not have any rights or legitimate interest in the domain name, since the domain name is merely parked. In addition, the Complainant raises the argument of non-use/passive holding.
Thirdly, the Complainant contends that the domain name has been registered and is being used in bad faith for the following reasons: (i) Speculation in domain names, (ii) Holding domain name for purposes of selling, licensing or renting, namely offer to public and (iii) Selling, licensing or renting was the primary purpose.
In the light of the above, the Complainant argues that despite requests, the Respondent did not transfer the disputed domain name to him free of charge. The Respondent only bought said domain name for speculative purposes. Since he (the Complainant) is the only one who registered the TUCON trademark, he is also the only one who has this trademark right.
The Complainant therefore requests the disputed domain name to be transferred.
RESPONDENT:
Respondent firstly points out that neither the Complainant’s claim to have rights in “TUCON”, nor the Complainant’s claim to be the “only” registrant of rights therein, are correct. Respondent argues that the Swiss registration is chronologically irrelevant. Furthermore, Respondent contends that the element “TUCON” in the disputed domain name only constitutes approximately 22% of the textual content of the registered mark, the main part being the second verbal element "VERBINDUNGSTECHNIK". The claim of confusing similarity is therefore based on a minority component of the purely textual content. Furthermore, Respondent notes that Complainant provides zero information on the extent of its reputation, volume of business, or even what that business may be. Respondent therefore assumes the Complainant is an individual engaged in some sort of trade relating to pipe connectors who appears to run his own service business. Finally, it results from the evidence provided by the Respondent, that there are in fact four registered marks in various jurisdictions for marks consisting of the sole textual component “TUCON” and another 73 pending or registered trademarks in numerous jurisdictions containing the verbal element "TUCON" together with further verbal and/or figurative elements.
Secondly, Respondent contends that Complainant has not carried its burden of demonstrating that the Respondent's use, prior to notice of this dispute, is in any way illegitimate in relation to Complainant's limited and non-exclusive claim in its asserted mark, nor has the Complainant shown that the Respondent’s offer to sell the domain name is premised on the Complainant’s Austrian pipe business. The Respondent contends that he was attracted to the disputed domain name because it is a short, memorable two-syllable name, which - as resulting from the evidence provided by the Respondent - corresponds in both Spanish and Italian to “You With”. Furthermore, the Respondent also contends - based on respective evidence - that "TUCON" is a minor surname. Being aware of that significance, the Respondent after the acquisition of the disputed domain name targeted it to genealogical and family name relevant PPC to advertising categories of “Ancestry”, “Family Tree”, “Family Reunion” etc. Registration of a surname and use consistent with that significance is a legitimate use of a domain name.
Thirdly, the Respondent points out that Complainant has provided no reason to believe that either registration or use of the domain name was inspired by the Complainant’s claim of trademark right. In this context it confirms that the Complainant’s arguments are following which (i) the Respondent didn’t give the domain name to the Complainant “free of charge” and (ii), the Respondent bought the name for speculative purposes, are true. In fact, the Respondent admits that it has indeed a history of buying and selling abandoned domain names. However, the Respondent underlines that he acquired the disputed domain name at a public auction, after it was abandoned by a long time registrant thereof. The Respondent further wonders why Complainant did not explain how the domain name registration was not an issue when it was used by a US company for many years, but only became an issue when the Respondent acquired it and pointed it to genealogy resources, or merely offered it for sale. Finally, the Respondent alleges that he was not aware of the Complainant upon registering the mark, and even if he had conducted a broad trademark search at the time, he would have seen that many parties use “TUCON” for a variety of things around the world, and none of those uses would conflict with the Respondent’s belief that it is primarily a surname and a Spanish/Italian phrase. In other words, the Respondent would have had every reason to proceed to acquire the domain name, as the Respondent has had no intention of using it for any purpose relating to pipes, pipe connectors, or whatever pipe business the Complainant conducts, nor of targeting the Complainant or a competitor for selling the name.
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