WIPO Dismisses Onetile.com Dispute: Trademark Later Than Domain Name Registration

An Italian tile retailer attempted to obtain the domain name Onetile.com through UDRP proceedings, but ultimately failed. A WIPO panel recently dismissed One Click Tiles Srl's application, finding that the domain, registered in 2004, enjoyed prior rights in time and that the complainant had failed to substantiate its claim.

The dispute centered on the domain name Onetile.com, currently held by the US company GM Marble, which failed to appear in court and automatically entered default proceedings.

The complainant, One Click Tiles Srl, a retailer specializing in tile and flooring products, was founded in 2017 and did not officially register the "ONETILE" trademark until 2023. The company alleged that the domain name was highly similar to its brand and that it was being redirected to a parked page displaying paid advertising (PPC) links related to competitors in the tile industry, causing brand confusion and commercial harm.

While the panel agreed that Onetile.com was identical to the complainant's registered trademark "ONETILE," the panel focused its ruling on the timing of the domain registration and evidence of bad faith use. The complainant claimed to have used the mark prior to trademark registration and accumulated unregistered trademark rights, but failed to provide persuasive evidence demonstrating that it had acquired a certain level of goodwill or reputation prior to the company's incorporation in 2017.

On the other hand, the Panel noted that the domain name Onetile.com was registered long before the complainant's trademark—created as early as 2004—and there was insufficient evidence to suggest that the current owner acquired the domain name after the complainant's brand emerged. The Panel concluded that the domain name has likely been held by the same entity since its registration.

Furthermore, the complainant failed to demonstrate that GM Marble registered or used the domain name in bad faith. While domain parking and displaying competing advertisements may create potential for confusion, this alone is insufficient to establish "bad faith" within the meaning of the UDRP. The Panel emphasized that acquiescence (the respondent's failure to respond) does not automatically constitute acceptance of the complainant's assertions; the burden of proof always rests with the complainant.

Ultimately, the W Panel dismissed the complaint, and the Onetile.com domain name will not be transferred.