September 09, 2011
The most recent Philippine domain name dispute involving www.sulit.ph was just recently resolved by the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) in Case No. DPH 2011-0003 entitled “Netpreneur Connections Enterprises Inc. v. Anton Sheker, Seo.Com.Ph.” The dispute involved two online classified advertising websites fighting for the right to use the word “sulit” in its domain name.
Netpreneur Connections Enterprises Inc., the owner of an online classified advertisements portal (www.sulit.com.ph) filed a complaint against Seo.Com.Ph, as the owner of the domain name “www.sulit.ph.”
Netpreneur, the complainant, claimed that it is the trademark owner of “sulit.com.ph,” which is registered with the Philippine Intellectual Property Office, and that the domain name “sulit.ph” of the respondent Seo.Com.Ph is identical or similar to its registered trademark. It alleged that the respondent’s use of the word “sulit” in its domain name infringed on the complainant’s trademark “sulit.com.ph.”
The complainant further claimed that the respondent has no rights or legitimate interests to the disputed domain name because it is not used as a website, but as a tool to redirect internet users to respondent’s website “www.classifiedads.ph.” The complaint was brought forth under the Philippine Uniform Domain Name Dispute Resolution Policy (PDHRP).
The respondent, in its defense, claimed that “sulit.com.ph” is a descriptive trademark which deserves little protection under the Philippine Intellectual Property laws. The protection that could be afforded to complainant is only to the artistic presentation of the word sulit and not the word sulit itself. Moreover, the disputed domain name was used in the belief that sulit is a generic or descriptive word that is commonly employed for advertising or business that involves the commerce of buying and selling goods.
A Panel was constituted by the WIPO to decide the complaint, and, after evaluating the claims and evidence of the parties, dismissed the complaint on the ground that the complainant failed to prove all the elements of Paragraph 4 (1) of the PHDRP.
Under paragraph 4 (1), a complainant must prove the following elements:
1. That the domain name is identical or confusingly similar to 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.
The Panel ruled that the complainant failed to establish the second element of paragraph 4 (1) of the PHDRP Policy (that the respondent had no rights or legitimate interests in respect of the domain name). It ruled that complainant’s case was “marginal” because it was not able to show it has trademark rights to the word “sulit” as a stand alone term. The Panel was convinced that the term “sulit” (Filipino term for “a good buy”) was registered by the respondent in the honest belief that it is a descriptive or generic word that would commonly be used in abundance for advertising, or in a business that involved, buying and selling of goods.
The fact that “www.sulit.ph” was linked to the website www.classifiedads.ph” was held to be inconclusive that respondent lacked legitimate interests to the domain name. The Panel found that 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.”
There was no need for the Panel to consider the issue on whether the domain name was registered or being used in bad faith.