Case Number: D2020-0811
Complainant: Agencias Universales S.A.
Represented by: Sáenz de Santa María Abogados
A Chilean logistics and shipping company has been found guilty of Reverse Domain Name Hijacking after filing a UDRP to grab control of the domain gen.com. Agencias Universales S.A., which was represented by the law firm of Sáenz de Santa María Abogados, filed its case against a private owner, from the United States, at the World Intellectual Property Organization on April 2, 2020. The respondent was also represented by counsel, the law firm of Pillsbury Winthrop Shaw Pittman LLP, which has offices worldwide.
The complainant argued its long-standing international reputation in the shipping industry, having started in Chile in 1960, gave it global recognition, specifically for the mark “GEN”, which it argued was the acronym for ‘Grupo de Empresas Navieras’, which means ‘group of shipping companies’ in Spanish. Agencias Universales S.A. submitted proof of at least two trademarks it owns, which include the “GEN” mark, “gen group” and “grupo gen”, both filed in February 2006.
For his part, the domain was originally registered in 1996 and apparently acquired by a company called the Global Education Network in 1998, which then applied for and was granted a trademark on the phrase gen.com. However, that trademark was later abandoned. The company later changed its name, and is currently called Allen Technology, Inc. The respondent and the chief technology officer of Allen Technology, Inc. are the same person, the panel confirmed.
The WIPO panel was careful to delineate the timeline of events of the respondent before discussing its findings. Essentially, sole panelist, Adam Taylor, concluded there was no way an education technology company in the United States, operating under the name “Global Education Network”, could have known of a Chilean shipping company, with a completely different type of business, or thereafter tried to target its trademarks.
“The Complainant has failed by a large margin,” wrote Mr. Taylor. “The Complainant should have considered if there really existed any evidence to prove that the disputed domain name was registered with the Complainant’s trade mark in mind in order to take advantage of the Complainant’s trade mark with bad faith rather than for a legitimate purpose.”
Mr. Taylor handed up the RDNH ruling on June 22, 2020.
Source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2020-0811