In this trademark dispute, the Complainant seeks an order that the registration of winrar for software be revoked and that the Respondent be prohibited from using that mark in any forum.
The Respondent also asserts third party rights in the mark. The Respondent asserts that it has registered the disputed domain name as a service mark, i.e., winrar.com, and obtained a trademark registration for winrar as of April 2014. Although we are aware of the Respondent=s application and grant, the applications were withdrawn as of May 13, 2014, and the application was published by the United States Patent and Trademark Officeas of May 19, 2014. The application for the mark was filed on January 8, 2015 and the trademark was published on September 9, 2015. We are not aware of the Respondent=s application for registration of the mark.
The Respondent has not disputed that it is not the owner of the winrar trademark. We find that the Respondent has not made a prima facie showing of ownership of the winrar trademark. The Respondent, therefore, has not demonstrated ownership of the winrar trademark. We make no findings concerning the Respondent=s rights in the disputed domain name. We reserve our findings and conclusions pending receipt of any further evidence, including a reply to our request for further information.
“Discover the power of WinRAR. Extract any compressed or password protected files such as music, movies, software and documents from WinRAR archives. You can also secure and protect your digital information with WinRAR secure folders. Your files will always be accessible, safe and safe.”
The document to which the Panel referred in its determination does not in itself appear to concern the application of the UDRP. It is very cursory and suggests that it might address non commercial use of the WINRAR mark but does not provide a meaningful point of reference to actually confirm or conclusively refute that possibility.
In the present case, it is claimed that a well established website was being operated by the Complainant at the disputed domain name www.winrar.com and that “private” free downloads were available by contacting the Complainant. Of relevance, was the Respondent claiming at the time of the notice of this Complaint that its own website was located at www.winrarindia.in, comprising just a Welcome banner and a navigation bar and a Google search box. This website appeared to redirect to the publicly accessible free downloads from the Complainants website at www.winrar.com, which no doubt attracted a large number of Internet visitors and, thus, provided some public recognition of the Complainants mark. However, the Respondent did not identify the website as their own. In any event, there is no evidence that any members of the public were actually redirected to this website because the only link from that site to www.winrar.com was a single-word “Welcome” text banner on the homepage. Nor is there any evidence to support the Respondent’s claim that its purported business “WINRAR” was ever a partnership with any person or entity. At most, the partnership is claimed to have existed in February 2007 but evidence to support this claim is sparse. The Complainant has provided evidence that, some years after that, it moved from India to Germany.