Thermowood.com UDRP ruling is out, domain name holder successfully retains ownership

Recently, WIPO ruled on the dispute over the domain name Thermowood.com, ruling that the domain name does not need to be transferred and the original holder can continue to retain ownership. This is the second lawsuit in the case and an important practice of the boundaries of the UDRP procedure and the judgment of "common terms".

The case was initiated by the Finnish non-profit organization Lampopuuyhdistys Ry, which manages the "ThermoWood Association" and holds the EU registered trademark "THERMOWOOD". The trademark was registered in 2000 and is used to describe a specific heat-treated wood process. The plaintiff claimed that the domain name is exactly the same as its trademark and that the defendant has no authorized use.

The parties complained are Dan.com (now acquired by GoDaddy), Global Forest Lumber Company LLC and Blue Lake Lumber LLC, both of which are controlled by Mr. Anderson da Rocha. Dan.com managed the domain name as an intermediary. Blue Lake was once the US distributor of ThermoWood's authorized brand Novawood, and registered and used the domain name with this background.

Although the arbitration panel determined that the respondent failed to clearly provide proof of its trademark license for the "THERMOWOOD" logo and did not fully explain the legality of the use of the trademark on the website, the panel believed that the disputed domain name was not registered in bad faith, and found no evidence that it attempted to prevent the trademark owner from using the domain name.

A key factor is that "thermowood" is a common descriptive term in the industry and has certain common attributes, rather than a unique trademark. Furthermore, the domain name is hosted by the Dan.com platform, which also shows that it has transaction attributes and is not a malicious registration.

The final ruling dismissed the complaint and refused to transfer the domain name. This result continues the first judgment of the same dispute case in 2023, and once again emphasizes the evidence standard in UDRP rulings and the strict threshold of "bad faith use".

This case also reminds brands and domain name investors: between distribution authorization, trademark use and domain name management, the contract terms should be clear and consistent with actual operations to avoid lengthy legal disputes caused by management omissions.