SlideShare uma empresa Scribd logo
1 de 6
Baixar para ler offline
ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION
Netrepreneur Connections Enterprises Inc. v. Anton Sheker, Seo.Com.Ph
Case No. DPH 2011-0003



1. The Parties

The Complainant is Netrepreneur Connections Enterprises Inc. of Pasig City, Philippines, represented by the
Law Offices of Ray Gilberto J. Espinosa, Philippines.

The Respondent is Anton Sheker, Seo.Com.Ph of Makati City, Philippines, represented by Vera &
Associates Law Firm, Philippines.


2. The Domain Name and Registrar

The disputed domain name <sulit.ph> is registered with DotPH.


3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2011.
On June 20, 2011, the Center transmitted by email to DotPH a request for registrar verification in connection
with the disputed domain name. On July 21, 2011, DotPH transmitted by email to the Center its verification
response confirming that the Respondent is listed as the registrant and providing the contact details. In
response to a notification by the Center that the Complaint was administratively deficient, the Complainant
filed an amended Complaint on July 5, 2011.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the
Rules for .PH Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(1) and 4(1), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on July 12, 2011. In accordance with the Rules, paragraph
5(1), the due date for Response was August 1, 2011. The Response was filed with the Center on
July 29, 2011.

The Center appointed Francine Tan as the sole panelist in this matter on August 12, 2011. The Panel finds
that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of
Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
page 2

4. Factual Background

The Complainant states that SULIT.COM.PH is its trade mark which was applied for in the Philippines on
May 13, 2008 and registered on October 13, 2008, under Trademark Registration No. 2002008005602. The
exclusive use of the element “.com.ph” in the trade mark was disclaimed. The mark is registered in respect
of advertising services in Class 35.

The Complainant further states that it has operated its website at “www.sulit.com.ph” (“the Website”) since
September 11, 2006. The Website provides an online classified advertisements portal “which incorporates
interactivity among its users by allowing people to respond to ads via a personal message or posting
messages. This facilitates initial contact and negotiation. The actual sale is consummated by the buyer and
seller themselves when they eventually decide to meet up”. Members of the Website can, inter alia, maintain
an online profile, create and manage their advertisements, and chat with other members. The Complainant
asserts that due to the large number of postings of advertisements, the Website has become the most
popular online advertisement listings facility and one of the top five websites in the Philippines. To date, the
membership numbers have exceeded one million. Further, the extent of use of the Complainant’s trade
mark has been such that most people in the Philippines, even those with little access to the Internet, have
associated the word “sulit” (a Filipino word which means “a good buy”) with the Website.

The Complainant submitted evidence of an email exchange in February 2010 between an individual and the
Respondent as regards the availability of the disputed domain name for sale and the cost. An initial offer
was made in the amount of USD 1,000, to which the Respondent asked for the “best price” that the individual
was willing to offer. The offer was increased to USD 2,000 but no further response was received from the
Respondent. The nature of the relationship of the individual (who had contacted the Respondent as
indicated above) to the Complainant is not specified in the Complaint.


5. Parties’ Contentions

A. Complainant

The Complainant submits as follows:

The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the
Complainant has rights. In this regard, it is submitted that the Complainant’s trade mark SULIT.COM.PH is
“infringed” by the disputed domain name “as the second-level domain name both use the same word “sulit”
and are both used by an online classified ad listing”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The
Respondent operates its own online classified advertising listing called “classifiedads.ph” at a website of the
same name but which is “patterned after” the Website of the Complainant. The disputed domain name when
entered on an Internet browser redirects the Internet user to “www.classifiedads.ph”. The Respondent has
no trademark registration rights in the term “sulit” nor does the word “sulit” appear on the Respondent’s
website except in reference to the Website of the Complainant.

The disputed domain name was registered and is being used in bad faith. The Respondent’s objective is to
ride on the popularity of the Website and confuse people wishing to look for an item through the
Complainant’s advertisement listings to end up using the Respondent’s website. The fact that the disputed
domain name is not used on a website reflecting <sulit.ph> but merely as a redirector to
“www.classifiedads.ph” is, by itself, evidence that the Respondent has no legitimate interest in the disputed
domain name and is using it in bad faith. Reference was made in this regard to the email communication
between the parties regarding the proposed sale/transfer of the disputed domain name for monetary
consideration. Visual and recall confusion can easily occur as:
page 3

the only difference between the Complainant’s domain name and the disputed domain name is in the
element “.com”; and the element “.ph” is the country code top level domain for the Philippines and both the
Complainant’s and the Respondent’s websites are targeted at the Philippines market.

B. Respondent

The Respondent made the following submissions in its Response:

      “SULIT.COM.PH is a descriptive trade mark which deserves scant protection under Intellectual
      Property laws in the Philippines. “The only protection the Complainant has is the word ‘sulit’
      disclaiming both ‘.com’ and the ‘.ph’. Rather, Complainant’s protection is only on the artistic
      presentation of the word ‘Sulit’ and not the word ‘Sulit’ itself […] which cannot and never be in an
      actual URL”. The trademark registration to which the Complainant relies on is therefore weak; “a
      weak trademark that is alleged to have been infringed should be totally similar or an actual copy. An
      actual viewing of the trademark and the URL shows only resemblance in the spelling”.

The Complainant has yet to present concrete evidence to prove the claim that it is a “top 5 website”, and that
the trade mark SULIT.COM.PH is so successful and pervasive.

As admitted by the Complainant, the word “sulit” is a descriptive/generic word which cannot be registered as
a trade mark. There is evidence of an abandoned Philippines trademark application by the Complainant for
the word “sulit.com”. The Complainant has not presented evidence that this word has acquired a secondary
meaning other than mere assertions of the Complainant’s fame and reputation.

The Complainant has not established a prima facie case as its statements have been unsubstantiated.
Without having discharged its burden, the burden therefore remains with the Complainant to prove its case
and the Respondent does not have to prove the contrary.

There are numerous domain names that incorporate the term “sulit”, e.g. <e-sulit.com>, <sulitbahay.com>,
<sulitfranchisenegosyo.com>, <sulithomes.com>, <sulitmobile.com>, <sulitwebsolutions.com>. The sheer
number of domain names using the term “sulit” as well as the popularity of trademark registrations in the
Philippines incorporating the word “sulit” show that the Respondent did not and could not violate any
legitimate right or interest of the Complainant with respect to the disputed domain name.

The disputed domain name was registered in the belief that “sulit” is a generic or descriptive word that is
commonly used in abundance for advertising or in a business that involves the commerce of buying and
selling goods and which cannot be the subject of a trademark registration.

The term “sulit” is commonly and widely used on the Internet and it is therefore not possible for the
Complainant to substantiate its claim that the term is associated with the Complainant as to source.

As regards the communication between the parties in relation to the Complainant’s offer to buy the disputed
domain name and the Respondent’s rejection of the offer, this per se does not prove bad faith on the
Respondent’s part.


6. Discussion and Findings

A. General Principles

Paragraph 15(1) of the Rules requires panelists to “decide a complaint on the basis of the statements and
documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it
deems applicable". Further paragraph 10(4) of the Rules states that “the Panel shall determine the
admissibility, relevance, materiality and weight of the evidence”.
page 4

Under paragraph 4(1) of the Policy, a complainant has to prove all three elements:

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

(2)   That the respondent has no rights or legitimate interests in respect of the domain name; and

(3)   That the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(2) of the Policy lists a number of circumstances which, without limitation, are deemed to be
evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(1)   circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly
      related to the domain name; or

(2)   the respondent has 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 the respondent
      has engaged in a pattern of such conduct; or

(3)   the respondent has registered the domain name primarily for the purpose of disrupting the business of
      a competitor; or

(4)   by using the domain name, the respondent has intentionally attempted to attract, for commercial gain,
      Internet users to the respondent’s website or other on-line location, by creating a likelihood of
      confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
      respondent’s website or location or of a product or service on the respondent’s website or location.

Paragraph 4(3) of the Policy sets out a number of circumstances, again without limitation, which may be
effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name.
Those circumstances are:

(1)   Before any notice to the respondent of the dispute, use by the respondent 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

(2)   Where the respondent (as an individual, business, or other organization) has been commonly known
      by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(3)   Where the respondent is 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.

B. Identical or Confusingly Similar

The Complainant has shown that it has registered trademark rights in the combination SULIT.COM.PH. The
certificate submitted in evidence reflects that the trademark registration was in respect of a stylized mark with
a colour claim. There is, however, no evidence from which the Panel is able to find that the Complainant has
trademark rights in the word “Sulit” on its own.

The issue therefore to be considered by the Panel under paragraph 4(1)(1) of the Policy is whether the
disputed domain name <sulit.ph> is confusingly similar to the trade mark SULIT.COM.PH in which the
Complainant has registered trademark rights. As has been well established in previous decisions under the
page 5

Uniform Dispute Resolution Policy (“UDRP”) which the Panel considers to be relevant to the decision herein,
the gTLD elements e.g. “.com” should be disregarded when considering the issue of identity or confusing
similarity. The Panel is of the view that the word “sulit” in the disputed domain name is confusingly similar to
the trade mark SULIT.COM.PH as the word “sulit” in the trade mark is the more dominant component of the
trade mark.

The Panel therefore finds that the first element of paragraph 4(1) of the Policy has been satisfied.

C. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition
(“WIPO Overview 2.0”) states that “while the overall burden of proof rests with the complainant, panels have
recognized that this could result in the often impossible task of proving a negative, requiring information that
is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a
prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is
made, the burden of production shifts to the respondent to come forward with appropriate allegations or
evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come
forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied
paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence
of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof
always remaining on the complainant.”

In relation to this second element of paragraph 4(1) of the Policy, the Complainant has submitted, inter alia,
that:

      the Respondent operates its own online classified advertising listing called “classifiedads.ph” which is
      patterned after the Website of the Complainant;

      the disputed domain name when entered on an Internet browser redirects the Internet user to
      “www.classifiedads.ph”; and

      the Respondent has no trademark registration rights in the word “Sulit”.

In relation to point (1), there is nothing on the face of the Respondent’s website which appears to be a copy
or a lookalike of the Website. In the absence of further clarification and substantiating evidence from the
Complainant, the Panel is not persuaded by the Complainant’s submission on this point. As regards point
(3), the relevant issue is whether the Respondent has a legitimate interest (which does not necessarily
require the Respondent to have trademark registration rights in the word “sulit”).

The Panel observes that there is an overall lack of evidence to substantiate the Complainant’s various
assertions. Further, taking into account the meaning and/or generic nature of the word “sulit”, and the fact
that the Complainant has not shown it has trademark rights in the word “sulit” as a stand alone term, the
Panel is of the view that the Complainant’s case is marginal.

Paragraph 2.2 of the WIPO Overview 2.0 states that:

      “Panels have recognized that mere registration of a domain name, even one that is comprised of a
      confirmed dictionary word or phrase (which may be generic with respect to certain goods or services),
      may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find
      rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word
      or phrase contained therein, the domain name would need to be genuinely used or at least
      demonstrably intended for such use in connection with the relied-upon meaning (and not, for example,
      to trade off third-party rights in such word or phrase).”
page 6

The Respondent appears to be genuinely using the disputed domain name comprising a generic word in
connection with the “relied-upon meaning” of the word “sulit”, i.e. a good buy. It has provided a plausible
explanation in its choice of the disputed domain name, namely that it was registered in the belief that since
“sulit” is a generic or descriptive word that is commonly used in abundance for advertising or in a business
that involves the buying and selling goods, it would not violate the Policy.

The Panel is of the view that the fact that the Respondent’s website at “www.sulit.ph” is linked to the website
at “www.classifiedads.ph” does not, in itself, constitute conclusive evidence of a lack of rights or legitimate
interests (especially as the Panel finds that the use is consistent with the descriptive nature of the term
“sulit”).

The Respondent appears to have rights or legitimate interests in the disputed domain name in relation to a
bona fide offering of goods and services on its online classified advertisement portal, which is not
inconsistent with the meaning of the word “sulit”. The Panel therefore finds that the Complainant has failed
to establish the second element of paragraph 4(1) of the Policy.

In view of the Panel’s finding on this point, there is no necessity for the Panel to consider paragraph 4(1)(3)
of the Policy.


7. Decision

For all the foregoing reasons, the Complaint is denied.




Francine Tan
Sole Panelist
Dated: August 19, 2011

Mais conteúdo relacionado

Destaque

Idea pad u300_datasheet_us
Idea pad u300_datasheet_usIdea pad u300_datasheet_us
Idea pad u300_datasheet_usAbe Olandres
 
Jp morgan lazada press announcement
Jp morgan lazada press announcementJp morgan lazada press announcement
Jp morgan lazada press announcementAbe Olandres
 
Samsung Galaxy Note Philippines
Samsung Galaxy Note PhilippinesSamsung Galaxy Note Philippines
Samsung Galaxy Note PhilippinesAbe Olandres
 
Smart Press Statement
Smart Press StatementSmart Press Statement
Smart Press StatementAbe Olandres
 
HP Breakup Announcement
HP Breakup AnnouncementHP Breakup Announcement
HP Breakup AnnouncementAbe Olandres
 
2012 msi ecs warehouse sale
2012 msi ecs warehouse sale2012 msi ecs warehouse sale
2012 msi ecs warehouse saleAbe Olandres
 
Globe legacy network better than smart’s upgraded network
Globe legacy network better than smart’s upgraded networkGlobe legacy network better than smart’s upgraded network
Globe legacy network better than smart’s upgraded networkAbe Olandres
 
Globe Telecom Statement for YugaTech
Globe Telecom Statement for YugaTechGlobe Telecom Statement for YugaTech
Globe Telecom Statement for YugaTechAbe Olandres
 
Omron press release
Omron press releaseOmron press release
Omron press releaseAbe Olandres
 
Republic Act No. 10175
Republic Act No. 10175Republic Act No. 10175
Republic Act No. 10175Abe Olandres
 
Lesson 3: Blog Platforms
Lesson 3:  Blog PlatformsLesson 3:  Blog Platforms
Lesson 3: Blog PlatformsAbe Olandres
 
Active ageing or not
Active ageing or notActive ageing or not
Active ageing or notanitaliice
 
Economic marginalisation in some selected states in the niger delta.
Economic marginalisation in some selected states in the niger delta.Economic marginalisation in some selected states in the niger delta.
Economic marginalisation in some selected states in the niger delta.Alexander Decker
 
Unelma jostain paremmasta - Tulevaisuustarinoita kirjasta Uuskasvun anatomia ...
Unelma jostain paremmasta - Tulevaisuustarinoita kirjasta Uuskasvun anatomia ...Unelma jostain paremmasta - Tulevaisuustarinoita kirjasta Uuskasvun anatomia ...
Unelma jostain paremmasta - Tulevaisuustarinoita kirjasta Uuskasvun anatomia ...Sonera
 

Destaque (20)

Idea pad u300_datasheet_us
Idea pad u300_datasheet_usIdea pad u300_datasheet_us
Idea pad u300_datasheet_us
 
Jp morgan lazada press announcement
Jp morgan lazada press announcementJp morgan lazada press announcement
Jp morgan lazada press announcement
 
Samsung Galaxy Note Philippines
Samsung Galaxy Note PhilippinesSamsung Galaxy Note Philippines
Samsung Galaxy Note Philippines
 
Smart Press Statement
Smart Press StatementSmart Press Statement
Smart Press Statement
 
HP Breakup Announcement
HP Breakup AnnouncementHP Breakup Announcement
HP Breakup Announcement
 
Smart new logo
Smart new logoSmart new logo
Smart new logo
 
2012 msi ecs warehouse sale
2012 msi ecs warehouse sale2012 msi ecs warehouse sale
2012 msi ecs warehouse sale
 
Globe legacy network better than smart’s upgraded network
Globe legacy network better than smart’s upgraded networkGlobe legacy network better than smart’s upgraded network
Globe legacy network better than smart’s upgraded network
 
2012 msi ecs sale
2012 msi ecs sale2012 msi ecs sale
2012 msi ecs sale
 
Globe Telecom Statement for YugaTech
Globe Telecom Statement for YugaTechGlobe Telecom Statement for YugaTech
Globe Telecom Statement for YugaTech
 
Omron press release
Omron press releaseOmron press release
Omron press release
 
Ntc pr copy
Ntc pr copyNtc pr copy
Ntc pr copy
 
Republic Act No. 10175
Republic Act No. 10175Republic Act No. 10175
Republic Act No. 10175
 
Pldt white flyer
Pldt white flyer Pldt white flyer
Pldt white flyer
 
Lesson 3: Blog Platforms
Lesson 3:  Blog PlatformsLesson 3:  Blog Platforms
Lesson 3: Blog Platforms
 
Social media
Social mediaSocial media
Social media
 
Estadistica 11
Estadistica 11Estadistica 11
Estadistica 11
 
Active ageing or not
Active ageing or notActive ageing or not
Active ageing or not
 
Economic marginalisation in some selected states in the niger delta.
Economic marginalisation in some selected states in the niger delta.Economic marginalisation in some selected states in the niger delta.
Economic marginalisation in some selected states in the niger delta.
 
Unelma jostain paremmasta - Tulevaisuustarinoita kirjasta Uuskasvun anatomia ...
Unelma jostain paremmasta - Tulevaisuustarinoita kirjasta Uuskasvun anatomia ...Unelma jostain paremmasta - Tulevaisuustarinoita kirjasta Uuskasvun anatomia ...
Unelma jostain paremmasta - Tulevaisuustarinoita kirjasta Uuskasvun anatomia ...
 

Semelhante a Decision dph2011 0003

IP Bulletin- what strategies to reclaim unregistered trademark rights in vietnam
IP Bulletin- what strategies to reclaim unregistered trademark rights in vietnamIP Bulletin- what strategies to reclaim unregistered trademark rights in vietnam
IP Bulletin- what strategies to reclaim unregistered trademark rights in vietnamKENFOX IP & Law Office
 
Meyer vs Aabaco - Yahoo Small Business
Meyer vs Aabaco - Yahoo Small BusinessMeyer vs Aabaco - Yahoo Small Business
Meyer vs Aabaco - Yahoo Small BusinessSmall Business Trends
 
Seikaly & stewart v rainmaker
Seikaly & stewart v rainmakerSeikaly & stewart v rainmaker
Seikaly & stewart v rainmakerGreg Sterling
 
Infringement of trademark
Infringement of trademarkInfringement of trademark
Infringement of trademarkSolubilis
 
UDRP:Shanken.decision.doc
UDRP:Shanken.decision.docUDRP:Shanken.decision.doc
UDRP:Shanken.decision.docRoger Seawright
 
India: Meta-Tagging Vis-À-Vis Trade Mark Misuse: An Overview
India: Meta-Tagging Vis-À-Vis Trade Mark Misuse: An OverviewIndia: Meta-Tagging Vis-À-Vis Trade Mark Misuse: An Overview
India: Meta-Tagging Vis-À-Vis Trade Mark Misuse: An OverviewDr. Prashant Vats
 
Uniform Domain Name Dispute Resolution
Uniform Domain Name Dispute ResolutionUniform Domain Name Dispute Resolution
Uniform Domain Name Dispute Resolutionlibertyluver
 
RESOLVING CYBERSQUATTING DISPUTE IN INDIA
RESOLVING CYBERSQUATTING DISPUTE IN INDIARESOLVING CYBERSQUATTING DISPUTE IN INDIA
RESOLVING CYBERSQUATTING DISPUTE IN INDIADr. Prashant Vats
 
3Kaur15 U.S.C.S. § 1125 ™False designations of ori.docx
3Kaur15 U.S.C.S. § 1125 ™False designations of ori.docx3Kaur15 U.S.C.S. § 1125 ™False designations of ori.docx
3Kaur15 U.S.C.S. § 1125 ™False designations of ori.docxtamicawaysmith
 
Case studies of business law
Case studies of business lawCase studies of business law
Case studies of business lawVictor Solomon
 
Non-Practicing Entity Sued Under RICO for Bringing Allegedly Frivolous Patent...
Non-Practicing Entity Sued Under RICO for Bringing Allegedly Frivolous Patent...Non-Practicing Entity Sued Under RICO for Bringing Allegedly Frivolous Patent...
Non-Practicing Entity Sued Under RICO for Bringing Allegedly Frivolous Patent...Patton Boggs LLP
 
Final reply to icai behalf of ankit goel amended
Final reply to icai behalf of ankit goel   amendedFinal reply to icai behalf of ankit goel   amended
Final reply to icai behalf of ankit goel amendedKuldeepBatra
 
Madonna Ciccone v Madonna (Cyber Crime)
Madonna Ciccone v Madonna (Cyber Crime)Madonna Ciccone v Madonna (Cyber Crime)
Madonna Ciccone v Madonna (Cyber Crime)Nusrat Zahan
 
Bulletin - Opposing an application mark without prior rights in Vietnam, is i...
Bulletin - Opposing an application mark without prior rights in Vietnam, is i...Bulletin - Opposing an application mark without prior rights in Vietnam, is i...
Bulletin - Opposing an application mark without prior rights in Vietnam, is i...KENFOX IP & Law Office
 
Domain registration and protection in vietnam
Domain registration and protection in vietnamDomain registration and protection in vietnam
Domain registration and protection in vietnamPATON CO., LTD.
 
Trademarks and trade names What lessons can be learned from the recent pharma...
Trademarks and trade names What lessons can be learned from the recent pharma...Trademarks and trade names What lessons can be learned from the recent pharma...
Trademarks and trade names What lessons can be learned from the recent pharma...KenfoxLaw
 
Social Media Influencers and Intellectual Property Rights
Social Media Influencers and Intellectual Property RightsSocial Media Influencers and Intellectual Property Rights
Social Media Influencers and Intellectual Property RightsKerdaSoftech
 
Examples Of Emotional Appeals
Examples Of Emotional AppealsExamples Of Emotional Appeals
Examples Of Emotional AppealsErin Ross
 

Semelhante a Decision dph2011 0003 (20)

Trademark Prosecution Luncheon January 2011
Trademark Prosecution Luncheon January 2011Trademark Prosecution Luncheon January 2011
Trademark Prosecution Luncheon January 2011
 
IP Bulletin- what strategies to reclaim unregistered trademark rights in vietnam
IP Bulletin- what strategies to reclaim unregistered trademark rights in vietnamIP Bulletin- what strategies to reclaim unregistered trademark rights in vietnam
IP Bulletin- what strategies to reclaim unregistered trademark rights in vietnam
 
Meyer vs Aabaco - Yahoo Small Business
Meyer vs Aabaco - Yahoo Small BusinessMeyer vs Aabaco - Yahoo Small Business
Meyer vs Aabaco - Yahoo Small Business
 
Seikaly & stewart v rainmaker
Seikaly & stewart v rainmakerSeikaly & stewart v rainmaker
Seikaly & stewart v rainmaker
 
Infringement of trademark
Infringement of trademarkInfringement of trademark
Infringement of trademark
 
UDRP:Shanken.decision.doc
UDRP:Shanken.decision.docUDRP:Shanken.decision.doc
UDRP:Shanken.decision.doc
 
India: Meta-Tagging Vis-À-Vis Trade Mark Misuse: An Overview
India: Meta-Tagging Vis-À-Vis Trade Mark Misuse: An OverviewIndia: Meta-Tagging Vis-À-Vis Trade Mark Misuse: An Overview
India: Meta-Tagging Vis-À-Vis Trade Mark Misuse: An Overview
 
Uniform Domain Name Dispute Resolution
Uniform Domain Name Dispute ResolutionUniform Domain Name Dispute Resolution
Uniform Domain Name Dispute Resolution
 
RESOLVING CYBERSQUATTING DISPUTE IN INDIA
RESOLVING CYBERSQUATTING DISPUTE IN INDIARESOLVING CYBERSQUATTING DISPUTE IN INDIA
RESOLVING CYBERSQUATTING DISPUTE IN INDIA
 
August 2011 Trademark Group Lunch
August 2011 Trademark Group LunchAugust 2011 Trademark Group Lunch
August 2011 Trademark Group Lunch
 
3Kaur15 U.S.C.S. § 1125 ™False designations of ori.docx
3Kaur15 U.S.C.S. § 1125 ™False designations of ori.docx3Kaur15 U.S.C.S. § 1125 ™False designations of ori.docx
3Kaur15 U.S.C.S. § 1125 ™False designations of ori.docx
 
Case studies of business law
Case studies of business lawCase studies of business law
Case studies of business law
 
Non-Practicing Entity Sued Under RICO for Bringing Allegedly Frivolous Patent...
Non-Practicing Entity Sued Under RICO for Bringing Allegedly Frivolous Patent...Non-Practicing Entity Sued Under RICO for Bringing Allegedly Frivolous Patent...
Non-Practicing Entity Sued Under RICO for Bringing Allegedly Frivolous Patent...
 
Final reply to icai behalf of ankit goel amended
Final reply to icai behalf of ankit goel   amendedFinal reply to icai behalf of ankit goel   amended
Final reply to icai behalf of ankit goel amended
 
Madonna Ciccone v Madonna (Cyber Crime)
Madonna Ciccone v Madonna (Cyber Crime)Madonna Ciccone v Madonna (Cyber Crime)
Madonna Ciccone v Madonna (Cyber Crime)
 
Bulletin - Opposing an application mark without prior rights in Vietnam, is i...
Bulletin - Opposing an application mark without prior rights in Vietnam, is i...Bulletin - Opposing an application mark without prior rights in Vietnam, is i...
Bulletin - Opposing an application mark without prior rights in Vietnam, is i...
 
Domain registration and protection in vietnam
Domain registration and protection in vietnamDomain registration and protection in vietnam
Domain registration and protection in vietnam
 
Trademarks and trade names What lessons can be learned from the recent pharma...
Trademarks and trade names What lessons can be learned from the recent pharma...Trademarks and trade names What lessons can be learned from the recent pharma...
Trademarks and trade names What lessons can be learned from the recent pharma...
 
Social Media Influencers and Intellectual Property Rights
Social Media Influencers and Intellectual Property RightsSocial Media Influencers and Intellectual Property Rights
Social Media Influencers and Intellectual Property Rights
 
Examples Of Emotional Appeals
Examples Of Emotional AppealsExamples Of Emotional Appeals
Examples Of Emotional Appeals
 

Mais de Abe Olandres

Tax Memo on Social Media Influencers (RMC No. 97 2021 )
Tax Memo on Social Media Influencers (RMC No. 97 2021 )Tax Memo on Social Media Influencers (RMC No. 97 2021 )
Tax Memo on Social Media Influencers (RMC No. 97 2021 )Abe Olandres
 
Salaries of Filipino Developers, IT Consultants
Salaries of Filipino Developers, IT ConsultantsSalaries of Filipino Developers, IT Consultants
Salaries of Filipino Developers, IT ConsultantsAbe Olandres
 
Globe Tattoo Tonino Lamborghini Stick
Globe Tattoo Tonino Lamborghini StickGlobe Tattoo Tonino Lamborghini Stick
Globe Tattoo Tonino Lamborghini StickAbe Olandres
 
AC Ryan Play On! HD
AC Ryan Play On! HDAC Ryan Play On! HD
AC Ryan Play On! HDAbe Olandres
 
Winners Starcraft 2 Tournament
Winners Starcraft 2 TournamentWinners Starcraft 2 Tournament
Winners Starcraft 2 TournamentAbe Olandres
 
Nokia n9 data sheet
Nokia n9 data sheetNokia n9 data sheet
Nokia n9 data sheetAbe Olandres
 
Nokia N9 Press Release
Nokia N9 Press ReleaseNokia N9 Press Release
Nokia N9 Press ReleaseAbe Olandres
 
Nokia N9 Data Sheet
Nokia N9 Data SheetNokia N9 Data Sheet
Nokia N9 Data SheetAbe Olandres
 
Digital life tns ph media briefing final
Digital life tns ph media briefing finalDigital life tns ph media briefing final
Digital life tns ph media briefing finalAbe Olandres
 
Mobile Usage Behavior Study of Metro Manila
Mobile Usage Behavior Study of Metro ManilaMobile Usage Behavior Study of Metro Manila
Mobile Usage Behavior Study of Metro ManilaAbe Olandres
 
Mazda2 2011 Philippines
Mazda2 2011 PhilippinesMazda2 2011 Philippines
Mazda2 2011 PhilippinesAbe Olandres
 
Smart to deploy lte and hspa+ in major urban centers
Smart to deploy lte and hspa+ in major urban centersSmart to deploy lte and hspa+ in major urban centers
Smart to deploy lte and hspa+ in major urban centersAbe Olandres
 
BlackBerry Bold 9900, BB Bold Touch 9930
BlackBerry Bold 9900, BB Bold Touch 9930BlackBerry Bold 9900, BB Bold Touch 9930
BlackBerry Bold 9900, BB Bold Touch 9930Abe Olandres
 
Nokia E6 Data Specs
Nokia E6 Data SpecsNokia E6 Data Specs
Nokia E6 Data SpecsAbe Olandres
 
Nokia X7 Data Specs
Nokia X7 Data SpecsNokia X7 Data Specs
Nokia X7 Data SpecsAbe Olandres
 
Ranger powertrains en
Ranger powertrains enRanger powertrains en
Ranger powertrains enAbe Olandres
 

Mais de Abe Olandres (16)

Tax Memo on Social Media Influencers (RMC No. 97 2021 )
Tax Memo on Social Media Influencers (RMC No. 97 2021 )Tax Memo on Social Media Influencers (RMC No. 97 2021 )
Tax Memo on Social Media Influencers (RMC No. 97 2021 )
 
Salaries of Filipino Developers, IT Consultants
Salaries of Filipino Developers, IT ConsultantsSalaries of Filipino Developers, IT Consultants
Salaries of Filipino Developers, IT Consultants
 
Globe Tattoo Tonino Lamborghini Stick
Globe Tattoo Tonino Lamborghini StickGlobe Tattoo Tonino Lamborghini Stick
Globe Tattoo Tonino Lamborghini Stick
 
AC Ryan Play On! HD
AC Ryan Play On! HDAC Ryan Play On! HD
AC Ryan Play On! HD
 
Winners Starcraft 2 Tournament
Winners Starcraft 2 TournamentWinners Starcraft 2 Tournament
Winners Starcraft 2 Tournament
 
Nokia n9 data sheet
Nokia n9 data sheetNokia n9 data sheet
Nokia n9 data sheet
 
Nokia N9 Press Release
Nokia N9 Press ReleaseNokia N9 Press Release
Nokia N9 Press Release
 
Nokia N9 Data Sheet
Nokia N9 Data SheetNokia N9 Data Sheet
Nokia N9 Data Sheet
 
Digital life tns ph media briefing final
Digital life tns ph media briefing finalDigital life tns ph media briefing final
Digital life tns ph media briefing final
 
Mobile Usage Behavior Study of Metro Manila
Mobile Usage Behavior Study of Metro ManilaMobile Usage Behavior Study of Metro Manila
Mobile Usage Behavior Study of Metro Manila
 
Mazda2 2011 Philippines
Mazda2 2011 PhilippinesMazda2 2011 Philippines
Mazda2 2011 Philippines
 
Smart to deploy lte and hspa+ in major urban centers
Smart to deploy lte and hspa+ in major urban centersSmart to deploy lte and hspa+ in major urban centers
Smart to deploy lte and hspa+ in major urban centers
 
BlackBerry Bold 9900, BB Bold Touch 9930
BlackBerry Bold 9900, BB Bold Touch 9930BlackBerry Bold 9900, BB Bold Touch 9930
BlackBerry Bold 9900, BB Bold Touch 9930
 
Nokia E6 Data Specs
Nokia E6 Data SpecsNokia E6 Data Specs
Nokia E6 Data Specs
 
Nokia X7 Data Specs
Nokia X7 Data SpecsNokia X7 Data Specs
Nokia X7 Data Specs
 
Ranger powertrains en
Ranger powertrains enRanger powertrains en
Ranger powertrains en
 

Último

Crea il tuo assistente AI con lo Stregatto (open source python framework)
Crea il tuo assistente AI con lo Stregatto (open source python framework)Crea il tuo assistente AI con lo Stregatto (open source python framework)
Crea il tuo assistente AI con lo Stregatto (open source python framework)Commit University
 
COMPUTER 10: Lesson 7 - File Storage and Online Collaboration
COMPUTER 10: Lesson 7 - File Storage and Online CollaborationCOMPUTER 10: Lesson 7 - File Storage and Online Collaboration
COMPUTER 10: Lesson 7 - File Storage and Online Collaborationbruanjhuli
 
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdfUiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdfDianaGray10
 
UWB Technology for Enhanced Indoor and Outdoor Positioning in Physiological M...
UWB Technology for Enhanced Indoor and Outdoor Positioning in Physiological M...UWB Technology for Enhanced Indoor and Outdoor Positioning in Physiological M...
UWB Technology for Enhanced Indoor and Outdoor Positioning in Physiological M...UbiTrack UK
 
OpenShift Commons Paris - Choose Your Own Observability Adventure
OpenShift Commons Paris - Choose Your Own Observability AdventureOpenShift Commons Paris - Choose Your Own Observability Adventure
OpenShift Commons Paris - Choose Your Own Observability AdventureEric D. Schabell
 
Connector Corner: Extending LLM automation use cases with UiPath GenAI connec...
Connector Corner: Extending LLM automation use cases with UiPath GenAI connec...Connector Corner: Extending LLM automation use cases with UiPath GenAI connec...
Connector Corner: Extending LLM automation use cases with UiPath GenAI connec...DianaGray10
 
Linked Data in Production: Moving Beyond Ontologies
Linked Data in Production: Moving Beyond OntologiesLinked Data in Production: Moving Beyond Ontologies
Linked Data in Production: Moving Beyond OntologiesDavid Newbury
 
Anypoint Code Builder , Google Pub sub connector and MuleSoft RPA
Anypoint Code Builder , Google Pub sub connector and MuleSoft RPAAnypoint Code Builder , Google Pub sub connector and MuleSoft RPA
Anypoint Code Builder , Google Pub sub connector and MuleSoft RPAshyamraj55
 
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...Aggregage
 
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...Will Schroeder
 
Designing A Time bound resource download URL
Designing A Time bound resource download URLDesigning A Time bound resource download URL
Designing A Time bound resource download URLRuncy Oommen
 
Building AI-Driven Apps Using Semantic Kernel.pptx
Building AI-Driven Apps Using Semantic Kernel.pptxBuilding AI-Driven Apps Using Semantic Kernel.pptx
Building AI-Driven Apps Using Semantic Kernel.pptxUdaiappa Ramachandran
 
KubeConEU24-Monitoring Kubernetes and Cloud Spend with OpenCost
KubeConEU24-Monitoring Kubernetes and Cloud Spend with OpenCostKubeConEU24-Monitoring Kubernetes and Cloud Spend with OpenCost
KubeConEU24-Monitoring Kubernetes and Cloud Spend with OpenCostMatt Ray
 
Nanopower In Semiconductor Industry.pdf
Nanopower  In Semiconductor Industry.pdfNanopower  In Semiconductor Industry.pdf
Nanopower In Semiconductor Industry.pdfPedro Manuel
 
Cybersecurity Workshop #1.pptx
Cybersecurity Workshop #1.pptxCybersecurity Workshop #1.pptx
Cybersecurity Workshop #1.pptxGDSC PJATK
 
Artificial Intelligence & SEO Trends for 2024
Artificial Intelligence & SEO Trends for 2024Artificial Intelligence & SEO Trends for 2024
Artificial Intelligence & SEO Trends for 2024D Cloud Solutions
 
AI Fame Rush Review – Virtual Influencer Creation In Just Minutes
AI Fame Rush Review – Virtual Influencer Creation In Just MinutesAI Fame Rush Review – Virtual Influencer Creation In Just Minutes
AI Fame Rush Review – Virtual Influencer Creation In Just MinutesMd Hossain Ali
 
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdfIaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdfDaniel Santiago Silva Capera
 
UiPath Studio Web workshop series - Day 8
UiPath Studio Web workshop series - Day 8UiPath Studio Web workshop series - Day 8
UiPath Studio Web workshop series - Day 8DianaGray10
 

Último (20)

Crea il tuo assistente AI con lo Stregatto (open source python framework)
Crea il tuo assistente AI con lo Stregatto (open source python framework)Crea il tuo assistente AI con lo Stregatto (open source python framework)
Crea il tuo assistente AI con lo Stregatto (open source python framework)
 
COMPUTER 10: Lesson 7 - File Storage and Online Collaboration
COMPUTER 10: Lesson 7 - File Storage and Online CollaborationCOMPUTER 10: Lesson 7 - File Storage and Online Collaboration
COMPUTER 10: Lesson 7 - File Storage and Online Collaboration
 
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdfUiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
 
UWB Technology for Enhanced Indoor and Outdoor Positioning in Physiological M...
UWB Technology for Enhanced Indoor and Outdoor Positioning in Physiological M...UWB Technology for Enhanced Indoor and Outdoor Positioning in Physiological M...
UWB Technology for Enhanced Indoor and Outdoor Positioning in Physiological M...
 
OpenShift Commons Paris - Choose Your Own Observability Adventure
OpenShift Commons Paris - Choose Your Own Observability AdventureOpenShift Commons Paris - Choose Your Own Observability Adventure
OpenShift Commons Paris - Choose Your Own Observability Adventure
 
Connector Corner: Extending LLM automation use cases with UiPath GenAI connec...
Connector Corner: Extending LLM automation use cases with UiPath GenAI connec...Connector Corner: Extending LLM automation use cases with UiPath GenAI connec...
Connector Corner: Extending LLM automation use cases with UiPath GenAI connec...
 
Linked Data in Production: Moving Beyond Ontologies
Linked Data in Production: Moving Beyond OntologiesLinked Data in Production: Moving Beyond Ontologies
Linked Data in Production: Moving Beyond Ontologies
 
Anypoint Code Builder , Google Pub sub connector and MuleSoft RPA
Anypoint Code Builder , Google Pub sub connector and MuleSoft RPAAnypoint Code Builder , Google Pub sub connector and MuleSoft RPA
Anypoint Code Builder , Google Pub sub connector and MuleSoft RPA
 
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
 
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
 
Designing A Time bound resource download URL
Designing A Time bound resource download URLDesigning A Time bound resource download URL
Designing A Time bound resource download URL
 
201610817 - edge part1
201610817 - edge part1201610817 - edge part1
201610817 - edge part1
 
Building AI-Driven Apps Using Semantic Kernel.pptx
Building AI-Driven Apps Using Semantic Kernel.pptxBuilding AI-Driven Apps Using Semantic Kernel.pptx
Building AI-Driven Apps Using Semantic Kernel.pptx
 
KubeConEU24-Monitoring Kubernetes and Cloud Spend with OpenCost
KubeConEU24-Monitoring Kubernetes and Cloud Spend with OpenCostKubeConEU24-Monitoring Kubernetes and Cloud Spend with OpenCost
KubeConEU24-Monitoring Kubernetes and Cloud Spend with OpenCost
 
Nanopower In Semiconductor Industry.pdf
Nanopower  In Semiconductor Industry.pdfNanopower  In Semiconductor Industry.pdf
Nanopower In Semiconductor Industry.pdf
 
Cybersecurity Workshop #1.pptx
Cybersecurity Workshop #1.pptxCybersecurity Workshop #1.pptx
Cybersecurity Workshop #1.pptx
 
Artificial Intelligence & SEO Trends for 2024
Artificial Intelligence & SEO Trends for 2024Artificial Intelligence & SEO Trends for 2024
Artificial Intelligence & SEO Trends for 2024
 
AI Fame Rush Review – Virtual Influencer Creation In Just Minutes
AI Fame Rush Review – Virtual Influencer Creation In Just MinutesAI Fame Rush Review – Virtual Influencer Creation In Just Minutes
AI Fame Rush Review – Virtual Influencer Creation In Just Minutes
 
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdfIaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
 
UiPath Studio Web workshop series - Day 8
UiPath Studio Web workshop series - Day 8UiPath Studio Web workshop series - Day 8
UiPath Studio Web workshop series - Day 8
 

Decision dph2011 0003

  • 1. ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Netrepreneur Connections Enterprises Inc. v. Anton Sheker, Seo.Com.Ph Case No. DPH 2011-0003 1. The Parties The Complainant is Netrepreneur Connections Enterprises Inc. of Pasig City, Philippines, represented by the Law Offices of Ray Gilberto J. Espinosa, Philippines. The Respondent is Anton Sheker, Seo.Com.Ph of Makati City, Philippines, represented by Vera & Associates Law Firm, Philippines. 2. The Domain Name and Registrar The disputed domain name <sulit.ph> is registered with DotPH. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2011. On June 20, 2011, the Center transmitted by email to DotPH a request for registrar verification in connection with the disputed domain name. On July 21, 2011, DotPH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 5, 2011. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for .PH Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(1) and 4(1), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2011. In accordance with the Rules, paragraph 5(1), the due date for Response was August 1, 2011. The Response was filed with the Center on July 29, 2011. The Center appointed Francine Tan as the sole panelist in this matter on August 12, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
  • 2. page 2 4. Factual Background The Complainant states that SULIT.COM.PH is its trade mark which was applied for in the Philippines on May 13, 2008 and registered on October 13, 2008, under Trademark Registration No. 2002008005602. The exclusive use of the element “.com.ph” in the trade mark was disclaimed. The mark is registered in respect of advertising services in Class 35. The Complainant further states that it has operated its website at “www.sulit.com.ph” (“the Website”) since September 11, 2006. The Website provides an online classified advertisements portal “which incorporates interactivity among its users by allowing people to respond to ads via a personal message or posting messages. This facilitates initial contact and negotiation. The actual sale is consummated by the buyer and seller themselves when they eventually decide to meet up”. Members of the Website can, inter alia, maintain an online profile, create and manage their advertisements, and chat with other members. The Complainant asserts that due to the large number of postings of advertisements, the Website has become the most popular online advertisement listings facility and one of the top five websites in the Philippines. To date, the membership numbers have exceeded one million. Further, the extent of use of the Complainant’s trade mark has been such that most people in the Philippines, even those with little access to the Internet, have associated the word “sulit” (a Filipino word which means “a good buy”) with the Website. The Complainant submitted evidence of an email exchange in February 2010 between an individual and the Respondent as regards the availability of the disputed domain name for sale and the cost. An initial offer was made in the amount of USD 1,000, to which the Respondent asked for the “best price” that the individual was willing to offer. The offer was increased to USD 2,000 but no further response was received from the Respondent. The nature of the relationship of the individual (who had contacted the Respondent as indicated above) to the Complainant is not specified in the Complaint. 5. Parties’ Contentions A. Complainant The Complainant submits as follows: The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. In this regard, it is submitted that the Complainant’s trade mark SULIT.COM.PH is “infringed” by the disputed domain name “as the second-level domain name both use the same word “sulit” and are both used by an online classified ad listing”. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent operates its own online classified advertising listing called “classifiedads.ph” at a website of the same name but which is “patterned after” the Website of the Complainant. The disputed domain name when entered on an Internet browser redirects the Internet user to “www.classifiedads.ph”. The Respondent has no trademark registration rights in the term “sulit” nor does the word “sulit” appear on the Respondent’s website except in reference to the Website of the Complainant. The disputed domain name was registered and is being used in bad faith. The Respondent’s objective is to ride on the popularity of the Website and confuse people wishing to look for an item through the Complainant’s advertisement listings to end up using the Respondent’s website. The fact that the disputed domain name is not used on a website reflecting <sulit.ph> but merely as a redirector to “www.classifiedads.ph” is, by itself, evidence that the Respondent has no legitimate interest in the disputed domain name and is using it in bad faith. Reference was made in this regard to the email communication between the parties regarding the proposed sale/transfer of the disputed domain name for monetary consideration. Visual and recall confusion can easily occur as:
  • 3. page 3 the only difference between the Complainant’s domain name and the disputed domain name is in the element “.com”; and the element “.ph” is the country code top level domain for the Philippines and both the Complainant’s and the Respondent’s websites are targeted at the Philippines market. B. Respondent The Respondent made the following submissions in its Response: “SULIT.COM.PH is a descriptive trade mark which deserves scant protection under Intellectual Property laws in the Philippines. “The only protection the Complainant has is the word ‘sulit’ disclaiming both ‘.com’ and the ‘.ph’. Rather, Complainant’s protection is only on the artistic presentation of the word ‘Sulit’ and not the word ‘Sulit’ itself […] which cannot and never be in an actual URL”. The trademark registration to which the Complainant relies on is therefore weak; “a weak trademark that is alleged to have been infringed should be totally similar or an actual copy. An actual viewing of the trademark and the URL shows only resemblance in the spelling”. The Complainant has yet to present concrete evidence to prove the claim that it is a “top 5 website”, and that the trade mark SULIT.COM.PH is so successful and pervasive. As admitted by the Complainant, the word “sulit” is a descriptive/generic word which cannot be registered as a trade mark. There is evidence of an abandoned Philippines trademark application by the Complainant for the word “sulit.com”. The Complainant has not presented evidence that this word has acquired a secondary meaning other than mere assertions of the Complainant’s fame and reputation. The Complainant has not established a prima facie case as its statements have been unsubstantiated. Without having discharged its burden, the burden therefore remains with the Complainant to prove its case and the Respondent does not have to prove the contrary. There are numerous domain names that incorporate the term “sulit”, e.g. <e-sulit.com>, <sulitbahay.com>, <sulitfranchisenegosyo.com>, <sulithomes.com>, <sulitmobile.com>, <sulitwebsolutions.com>. The sheer number of domain names using the term “sulit” as well as the popularity of trademark registrations in the Philippines incorporating the word “sulit” show that the Respondent did not and could not violate any legitimate right or interest of the Complainant with respect to the disputed domain name. The disputed domain name was registered in the belief that “sulit” is a generic or descriptive word that is commonly used in abundance for advertising or in a business that involves the commerce of buying and selling goods and which cannot be the subject of a trademark registration. The term “sulit” is commonly and widely used on the Internet and it is therefore not possible for the Complainant to substantiate its claim that the term is associated with the Complainant as to source. As regards the communication between the parties in relation to the Complainant’s offer to buy the disputed domain name and the Respondent’s rejection of the offer, this per se does not prove bad faith on the Respondent’s part. 6. Discussion and Findings A. General Principles Paragraph 15(1) of the Rules requires panelists to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Further paragraph 10(4) of the Rules states that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
  • 4. page 4 Under paragraph 4(1) of the Policy, a complainant has to prove all three elements: (1) That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (2) That the respondent has no rights or legitimate interests in respect of the domain name; and (3) That the disputed domain name has been registered and is being used in bad faith. Paragraph 4(2) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are: (1) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (2) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Paragraph 4(3) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name. Those circumstances are: (1) Before any notice to the respondent of the dispute, use by the respondent 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 (2) Where the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (3) Where the respondent is 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. B. Identical or Confusingly Similar The Complainant has shown that it has registered trademark rights in the combination SULIT.COM.PH. The certificate submitted in evidence reflects that the trademark registration was in respect of a stylized mark with a colour claim. There is, however, no evidence from which the Panel is able to find that the Complainant has trademark rights in the word “Sulit” on its own. The issue therefore to be considered by the Panel under paragraph 4(1)(1) of the Policy is whether the disputed domain name <sulit.ph> is confusingly similar to the trade mark SULIT.COM.PH in which the Complainant has registered trademark rights. As has been well established in previous decisions under the
  • 5. page 5 Uniform Dispute Resolution Policy (“UDRP”) which the Panel considers to be relevant to the decision herein, the gTLD elements e.g. “.com” should be disregarded when considering the issue of identity or confusing similarity. The Panel is of the view that the word “sulit” in the disputed domain name is confusingly similar to the trade mark SULIT.COM.PH as the word “sulit” in the trade mark is the more dominant component of the trade mark. The Panel therefore finds that the first element of paragraph 4(1) of the Policy has been satisfied. C. Rights or Legitimate Interests Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that “while the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” In relation to this second element of paragraph 4(1) of the Policy, the Complainant has submitted, inter alia, that: the Respondent operates its own online classified advertising listing called “classifiedads.ph” which is patterned after the Website of the Complainant; the disputed domain name when entered on an Internet browser redirects the Internet user to “www.classifiedads.ph”; and the Respondent has no trademark registration rights in the word “Sulit”. In relation to point (1), there is nothing on the face of the Respondent’s website which appears to be a copy or a lookalike of the Website. In the absence of further clarification and substantiating evidence from the Complainant, the Panel is not persuaded by the Complainant’s submission on this point. As regards point (3), the relevant issue is whether the Respondent has a legitimate interest (which does not necessarily require the Respondent to have trademark registration rights in the word “sulit”). The Panel observes that there is an overall lack of evidence to substantiate the Complainant’s various assertions. Further, taking into account the meaning and/or generic nature of the word “sulit”, and the fact that the Complainant has not shown it has trademark rights in the word “sulit” as a stand alone term, the Panel is of the view that the Complainant’s case is marginal. Paragraph 2.2 of the WIPO Overview 2.0 states that: “Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
  • 6. page 6 The Respondent appears to be genuinely using the disputed domain name comprising a generic word in connection with the “relied-upon meaning” of the word “sulit”, i.e. a good buy. It has provided a plausible explanation in its choice of the disputed domain name, namely that it was registered in the belief that since “sulit” is a generic or descriptive word that is commonly used in abundance for advertising or in a business that involves the buying and selling goods, it would not violate the Policy. The Panel is of the view that the fact that the Respondent’s website at “www.sulit.ph” is linked to the website at “www.classifiedads.ph” does not, in itself, constitute conclusive evidence of a lack of rights or legitimate interests (especially as the Panel finds that the use is consistent with the descriptive nature of the term “sulit”). The Respondent appears to have rights or legitimate interests in the disputed domain name in relation to a bona fide offering of goods and services on its online classified advertisement portal, which is not inconsistent with the meaning of the word “sulit”. The Panel therefore finds that the Complainant has failed to establish the second element of paragraph 4(1) of the Policy. In view of the Panel’s finding on this point, there is no necessity for the Panel to consider paragraph 4(1)(3) of the Policy. 7. Decision For all the foregoing reasons, the Complaint is denied. Francine Tan Sole Panelist Dated: August 19, 2011