Shoe retailer gains a valuable domain through a questionable decision.
What does it take for a three letter trademark to be well known and famous? We have a new low bar.
A World Intellectual Property Organization panelist has ordered the domain name aku.com transferred to a niche hiking and sporting outdoor shoemaker. I have serious doubts about the decision.
Aku Italia S.R.L. filed the dispute against a man in China. The domain owner did not respond to the dispute, which is a major strike against him. Perhaps he didn’t understand the Complaint given his likely native language.
Still, a panelist has to consider all of the facts, and I disagree with the decision Nick Gardner made.
For a valuable three letter .com to be transferred in a UDRP, you generally need either for that initialism to be very famous (think IBM) or for there to be obvious targeting of the trademark holder (think a parking page with ads related to the Complainant).
Neither of these exists in this case.
Aku is not a major shoe company. It’s probably well-known amongst outdoor enthusiasts. It produced 280,000 pairs of shoes in 2021, grossing €23 million.
It’s certainly not well known in China. It provided really old data about its presence in China, noting a turnover of €330,000 in 2015 and €134,000 in 2016. After nearly a 50% drop year over year, it makes me wonder how much it sells in China now.
Gardner considered the fame of the mark. And he gave the benefit of the doubt to the Complainant, given no response from the domain owner. But I don’t come to the same conclusion. Here’s what he wrote:
In the present case, the Panel considers that the Complainant has established it has a significant reputation in the AKU trademark in relation to outdoor footwear and that reputation subsists internationally…
Yes, with regards to footwear, AKU is perhaps a famous mark. But that’s a limited use and market.
…It has also filed evidence which establishes that it had a significant reputation in China prior to the date the Disputed Domain Name was acquired by the Respondent. In those circumstances the Panel considers that an inference can be drawn that the Respondent’s registration of the Disputed Domain Name was made with knowledge of the Complainant’s reputation and with intent to take advantage of that reputation….
Selling six figures of product in China gives you a significant reputation? Hmmm.
…The Panel thinks it likely, as the Complainant says, that had the Respondent carried out a simple Google search when it acquired the Disputed Domain Name it would have identified the Complainant and its AKU trademark….
Ah yes, a simple Google search…in China? Did they do a Baidu search?
I can tell you what I see when I search for AKU on Google in the US. The first result is for the Samurai Jack Wiki. Then there’s the Complainant. Then Aga Khan University, a Wiki page for a tuna called Aku, a character called Aku…and several other possible uses for AKU. The shoe company is not dominant here.
…It might also however conceivably have identified that there were other organisations which used the acronym “aku” . There is however no evidence to suggest that any other such organisation had any reputation in China, unlike the Complainant…
It’s not just organizations that use aku. It’s a Hawaiian term for Tuna. A fictional character. And again, I question the idea that the shoe company has a “reputation” in China.
…Conceivably this inference could, with appropriate evidence, be rebutted – but as WIPO Overview 3.0 notes at 2.10.2: “For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark”. In the present case, given the lack of any Response or any communication at all from the Respondent the inference has not been rebutted…
You have me there. The domain owner should have responded. But with such a weak mark, especially in China, I’d want to see some targeting here. A parked page with shoe ads, for example.
The domain points to GoDaddy’s DomainControl nameservers. I can’t get it to resolve.
The most likely reason the domain registrant acquired this domain because it was three letters. Many Chinese domain investors collect short domains.
I think this is a very weak decision for a valuable domain name.
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