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Thursday, 26 November 2009

Corporación Habanos S.A. sees its UDRP claim for go up in smoke

Corporación Habanos S.A. failed to obtain the domain name in a recent URDP proceeding against Tobias Pischetsrieder. It is undisputed that the complainant owns more than 800 registrations worldwide for trade marks containing the term COHIBA, which was created in 1966 and first registered in 1969. In Germany (domicile of the respondent) the COHIBA mark was registered in 1985.

The respondent had registered the domain name in 1996 and not used it for any commercial purposes, neither offered to sell it nor placed any advertising on it. He argued that in 1996, when the domain was registered, it was not clear under German law whether the registration and use of a domain name constituted trade mark infringement. Whether COHIBA was a well-known mark in Germany at that time was unclear (he did not dispute that he was aware of the COHIBA brand at the time of registration). There co-existed trade marks with the term COHIBA for different goods. His registration and use of was not in bad faith.

The three-member panel agreed that under the circumstances, the complainant had failed to establish the bad faith of the respondent, and denied the transfer of the domain name. A key element considered was also the 13 year delay before the complainant enforced his rights; while the panel noted that the UDRP did not foresee forfeiture ("Verwirkung"), a long delay between the registration of the domain name at issue and the enforcement of the alleged rights counted against a finding of bad faith (citing The Knot, Inc. v. Ali Aziz, WIPO case No. D2007-1006).

D2009-1041 (in German - the complainant had filed its complaint first in Spanish but was educated that the language of the proceeding is the language of the domain name registration agreement, which in this case was German)

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