Medical textiles firm loses dispute over CareFix.com.
Tytex A/S has been found guilty of reverse domain name hijacking (pdf) in an interesting UDRP case.
Domain investment firm Germanium World LLC registered CareFix.com in 2008. Tytex had registered trademarks for CareFix dating to 1994, but all had expired or been abandoned when the Respondent registered the domain name. Tytex subsequently registered new trademarks in 2009.
There was a small window between the expired trademarks and the new ones in which Germanium World registered the domain. Tytex suggested that the Respondent could have ascertained the Complainant’s trademark rights through a trademark search when it registered the domain, but any search would have pulled up only expired trademark registrations.
It’s possible that Tytex had common law rights to the mark when the Respondent registered the domain, but it didn’t show this in its case.
In finding reverse domain name hijacking, panelist Matthew Kennedy wrote:
The Panel notes that the Complainant has legal representation in this proceeding. A crucial requirement for the Complaint was a showing that the Respondent targeted the Complainant’s trademark at the time when he registered the disputed domain name in 2008. The Complainant provided details of its 1994-97 national trademark registrations and asserted that these “are replaced” by its 2009 international registration, without disclosing that it held no registered trademark rights in CAREFIX in any jurisdiction during a period leading up to and including 2008, when the Respondent registered the disputed domain name. An annex to the Complaint showed that three earlier registrations were inactive in 2021 only and another annex (in Danish) showed that one trademark registration had been cancelled in 2004. The Complainant may have impliedly acknowledged the temporal gap in its registered rights when it asserted that the Respondent should have known of the existence of “the Complainant” (rather than the Complainant’s mark) when he registered the disputed domain name, but later the Complaint expressly alleged that the Respondent could have ascertained the Complainant’s trademark rights through a trademark search when, at the time he registered the disputed domain name, the Complainant held no valid trademark registration for CAREFIX anywhere.
DAHL Lawfirm represented Tytex in the dispute. Ankur Raheja of Cylaw Solutions represented the domain owner.
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