Complaint for hitorque.org denied at WIPO

The Complaint was filed with the WIPO Arbitration and Mediation Center.

The Complainant, Hytorc Division UNEX Corporation of New Jersey, is a leading provider of hydraulic and pneumatic bolting systems and associated services for industrial use.

The Respondent was li jinglei of Shanghai, China.

The disputed domain name hitorque.org was registered on February 3, 2012.

The Complainant contended that:

The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark HYTORC. The prefixes “hy” and “hi” are virtually synonymous and identical and/or confusingly similar as to appearance, spelling, sound, connotation and/or commercial impression. “Torque” and “Torc” are virtually synonymous, identical and/or confusingly similar as to appearance, spelling, sound, connotation and/or commercial impression, and widely used to describe bolting tools offered by the Complainant.

This argument didn’t impress the Panel:

The Complainant clearly has rights in the trademark HYTORC by virtue of the identified trademark registrations. The trademark HYTORC appears to be a coined word. […]

The Disputed Domain Name is not identical to the trademark HYTORC. […]

However, the first limb of paragraph 4(a) of the Policy is not satisfied by merely showing that the domain name and trademark are similar. The burden is only discharged by showing that the domain name is confusingly similar to the trademark. It is a consensus of past UDRP panels to evaluate the issue of confusing similarity by a comparison of the domain name and the relevant trademark. The content of the website resolved from the domain name is generally irrelevant as far as the first limb of paragraph of paragraph 4(a) is concerned (e.g., Harry Winston Inc and Harry Winston SA v. Jennifer Katheman, WIPO Case No. D2008-1267). The content of the website resolved from a domain name in dispute is mainly an issue to be addressed under the third limb of paragraph 4(a) of the Policy.

In the present case, although phonetic similarity between the Disputed Domain Name and the trademark HYTORC exists, in this Panel’s view there are material differences between them, namely: the second letter “y” in the trademark is not similar to the second letter in the Disputed Domain Name, the second syllables in the trademark and the Disputed Domain Name only share the 3 characters “tor”, and only 4 out of the 8 characters in the Disputed Domain Name are found in the trademark HYTORC.

Further, the evidence does not indicate that “hytorc” is a meaningful word. The Disputed Doman Name appears to be an obvious concatenation of known words “hi” and “torque” and, in the Panel’s view, readily refers to “high torque” which is descriptive of wrenches and similar products offered on the Respondent’s website. […]

In the same vein, the Panel is unable to consider that the trademark HYTORC and the Disputed Domain Name are conceptually similar for purposes of this decision under the Policy. They do not convey the same impression as claimed by the Complainant.

Having regarded the visual, phonetic, semantic and conceptual comparison of the trademark HYTORC and the Disputed Doman Name, it is the Panel’s conclusion that the Disputed Domain Name <hitorque.org> is not confusingly similar to the trademark HYTORC. The Complainant has failed to establish the first limb of paragraph 4(a) of the Policy.

So the Complaint failed at the first element of the UDRP, because the Complainant couldn’t prove that the domain name hitorque.org was confusingly similar to the Trademark HYTORC.

The Decision for the hitorque.org Complaint was:

For the foregoing reasons, the Complaint is denied. However, the Panel notes that the Complainant’s trademark application for ITORQUE in the United States is pending. The word ITORQUE differs from the Disputed Domain Name by only one letter. Unfortunately, there is no evidence before the Panel as to whether the Complainant has any rights in the trademark ITORQUE beyond being the applicant for registration in the United States. It should be noted that this decision does not preclude the Complainant from initiating a further complaint based on new or additional evidence.

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About Konstantinos Zournas

Konstantinos studied Computer Engineering and Computer Science in London and lives in Athens, Greece. He works on domain names, websites and software development. Has been online since 1995 & domaining since 2002.

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