Case Number: D2020-0246
Complainant: Thermamax Hochtemperaturdämmungen GmbH
Represented by: Reble & Klose Attorneys & Patentattorneys
A German company specializing in the manufacture of thermal and acoustic insulation has been found guilty of Reverse Domain Name Hijacking in its attempt to get control of the domain tmax.com from a private owner in South Korea. Thermamax Hochtemperaturdämmungen GmbH, which was represented by the law firm of Reble & Klose Attorneys & Patentattorneys, filed its case on February 17, 2020, at the World Intellectual Property Organization. The respondent, who was privacy protected, originally registered the domain in September 2000.
Thermamax, as it is commonly known, had sought to gain control of the tmax.com domain based upon a 1996 German trademark and a 1999 European Union trademark that predated the domain registration, as well as a 2009 international trademark, covering the United States and China. The Germany company further stated it was known by the TMax abbreviation of its name and product, even though it was operating primarily under the Thermamax tradename at www.thermamax.com.
The respondent argued the acronym or abbreviation “tmax” is used by many companies around the world, and that Thermamax is not well known outside of Germany, especially given the very specialized nature of the company’s business, which is to make thermal and acoustic insulation for engine compartments and drive train systems.
The WIPO panel agreed. “The Complainant, based in Germany, has provided very little evidence to support its assertion that its TMAX mark is known internationally and in particular in the Republic of Korea, whether at the date of the registration of the disputed domain name in 2000, or currently,” the panel wrote in its decision.
“Although it is clear that the Complainant uses its TMAX mark, based on its own website screenshots as submitted in evidence,” the panel continued, “it looks to the Panel as if the Complainant’s principal trading name and trade mark is ‘Thermamax’ which is consistent with the Respondent’s contention that the Complainant’s 62 TMAX domain names all redirect to its website at ‘www.thermamax.com’.”
In issuing its ruling, the three-member panel noted it appeared Thermamax was trying to indulge a program of rebranding, and had decided to target the current domain owner because of the crucial gTLD he owned.
“It looks to the Panel as if this is a case in which the Complainant has … decided to gradually re-brand from ‘Thermomax’ (sic) to ‘Tmax’ and has undertaken a programme of registering or acquiring various domain names incorporating TMAX accordingly,” the panel wrote.
“[T]he Panel infers on balance that the Complainant decided that it also required the key ‘.com’ Top-Level domain name but after its efforts to contact the Respondent bore no results it then decided to proceed with this Complaint,” the panelists added.
The RDNH ruling was handed up April 21, 2020.
Source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2020-0246