The Dutch fashion chain known as “WE”(also known as WE Fashion) currently operates approximately 240 shops in the Netherlands, Belgium, Germany, France, Luxembourg, Austria, Switzerland and online from the domain name Wefashion.com.
Searches conducted with the Office for Harmonization in the Internal Market (OHIM) and the United States Patent and Trademark Office (USPTO) reveal European Community and US trademarks for the term “WE” under filing basis 1b (intent to use) which may or may not prove to be an interesting feature in this case.
Another feature of the case is the registration date of the domain name which dates back to 1992, 7 years before the company re-branded as “WE”. Nevertheless, the Respondent may not be able to rely on the extensive registration period for a prior rights argument as WHOIS history reveals that he acquired the name sometime in 2005; no doubt the Complainant would be prepared to counter such a defence.
All is not lost for the Respondent who will need to ensure he provides a thorough response In good time if he hopes to retain the domain name.
Firstly the burden is on the Complainant to show that the Respondent registered and used the domain name in bad faith which infers targeting and therefore knowledge of the mark in question.
Of course it is impossible to decipher exactly what was in the Respondent’s mind at the time he decided to register/acquire the domain but the policy requires a Complainant to prove on the balance of probabilities that the Respondent would have been aware of their rights at the time of registration.
This point is further supported by the specific circumstances that the drafters of the UDRP envisaged as constituting evidence of a domain name being registered and used in bad faith, namely;
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor
Each of the examples cited above is dependent on knowledge; suggesting that the Respondent chose to acquire the domain with the intention of exploiting the Complainant’s mark in some form or another.
Has the Complainant done enough to demonstrate that the domain name was registered and used in bad faith? Will the Respondent take advantage of the descriptive nature of the domain and provide a response worthy of a finding of Reverse Domain Name Hijacking?
This is certainly a case we will be keeping an eye on.