No Bad Faith, ‘Givn’ the weak Evidence
Panelist: Mr. Robert A. Badgley
Brief Facts: Complainant sells bottled water under the GIVN trademark since April 9, 2014. The Complainant registered GIVN mark with USPTO soon thereafter and operates at <givnwater .com>. Complainant claims its GIVN trademark is “famous” but there is no indication in the record about Complainant’s sales, advertising expenses, consumer recognition, etc. The Respondent acquired the Domain Name on May 20, 2021 at a public auction. Respondent claims to have received an offer of $1500 from the Complainant, which the latter declined. Currently, the Domain Name does not resolve to an active website.
Held: The gTLD .com Domain Names may be inherently valuable notwithstanding anyone’s trademark rights. Respondent as well submits that it acquired the Domain Name because it is short and represents an abbreviation of a common word. Complainant asserts that its mark has become “famous” but that conclusion simply cannot be accepted on the strength of the evidence presented. Therefore, the Complainant has failed to prove that Respondent has registered and used the Domain Name in bad faith. Based on the rather thin record here, and viewing the matter on a balance of probabilities, it cannot be concluded that it is more likely than not that Respondent had Complainant’s GIVN trademark in mind when registering the Domain Name. Absent such a finding, there can be no bad faith registration, and hence the Complaint must fail.
Complainants’ Counsel: Gearhart Law, United States.
Respondent’ Counsel: Pillsbury Winthrop Shaw Pittman LLP, United States.
Well-known mark (medtronic) v. Legitimate interests (medo+tronic)
Panelist: Mr. Nick J. Gardner (Presiding), Mr. A. Justin Ourso III and Mr. Ugur G. Yalçiner
Brief Facts: The US Complainant is one of the largest medical device and technology companies in the world, offering goods and services under the mark MEDTRONIC since 1949. The Complainant’s product is sold in over 150 countries with annual revenue totaling tens of billions of US dollars and operates online at <medtronic .com>. Besides, it owns trademark registrations in over 100 jurisdictions worldwide since 1976 including a recent International Registration enforceable in Turkey. The Respondent is a Turkish company, known as “Medo Tekstil Elektronik Alim” since 2005, wherein ‘ME+DO’ has been derived from the first two letters of the names of Company promoters. The Respondent registered the Disputed Domain Name on May 2, 2018 and resolves to a website where the Respondent promotes consumer electronic related products and components.
Held: The demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or service are evident here. But the words “bona fide” must encompass the Respondent’s knowledge and motives in choosing the name in question. The origin of the term “medo” as part of the Respondent’s name and supported by documentary evidence – it had nothing to do with the Complainant. Besides, Turkish law prohibits use of non-Turkish words in company names. The word “elektronik” is the Turkish translation of the English word “electronic”. In these circumstances, the addition of “tronic” to the existing business “medo” term, to evoke electronics connection, as opposed to the Turkish variant “tronik” is entirely credible for a business seeking to portray itself as an international seller of electronic products. Therefore, the Respondent has rights or a legitimate interest in the disputed Domain Name.
Complainants’ Counsel: Snell & Wilmer, LLP, United States.
Respondent’s Counsel: Christopher K. Leigh, United States.
This UDRP did not click with majority Panel
<clickbetter .com> and <clickbetter .info>
Complaint Denied (with Dissenting opinion)
Panelists: Ms. Marilena Comanescu (Presiding), Mr. The Hon Neil Brown Q.C. and Mr. Warwick A. Rothnie (Dissenting)
Brief Facts: The Complainant is a UK company incorporated in October 2012. The promoters of the Company included two associates, Sean Clark (the Complainant’s representative) and Justin Michie (the Respondent – silent partner). The Complainant provides Internet advertising services and claims common law trademark rights for the “Clickbetter” name. The disputed Domain Name <clickbetter .com> has registration date that of August 23, 2014 (registrar verified) and the registrant is the Respondent Justin Michie; the disputed Domain Name <clickbetter .info> has registration date that of August 22, 2013 and the registrant is ClickBetter LTD, UK (i.e. the Complainant although the address is different). At the time of filing the Complaint both disputed Domain Names redirected to a third party website, where services similar to those of the Complainant are promoted.
Held: The disputed Domain Names and corresponding websites are subject to common control of the Respondent and it would be equitable and procedurally efficient to decide the consolidation of multiple disputed Domain Names. The Complainant has failed to discharge the burden of proof on it, of establishing its common law trademark rights under this first element of the Policy. Moreover, it is apparent from the case file documents, that, the parties involved in this proceeding have business collaboration for more than ten years, wherein Respondent claims 50% ownership in the Complainant. The facts are further complicated by allegations of unfair competition, taken down websites, blocking and intercepting emails, stealing funds, loans and many further facts presented in a contradictory manner by the parties, supported by huge evidence. In order to get to the bottom of these issues, it will be necessary to have further evidence including cross-examination, discovery of documents and interrogatories or their equivalent. A UDRP panel does not have those mechanisms and has no power to order them. Therefore, the current dispute is not suitable for resolution under the UDRP and accordingly it should not examine the issues that arise in a UDRP proceeding.
Dissenting (Mr. Warwick A. Rothnie): The evidence is sufficient to establish that the Complainant has a relevant reputation in its claimed trademark to qualify as an unregistered trademark for the purposes of the Policy, hence standing in these proceedings. The Complainant remained the registrant of both disputed Domain Names until February 2021 when the first disputed Domain Name got transferred into the Respondent’s name and control. The second disputed Domain Name did not formally transfer out of the Complainant’s name but, at the same time, came under the unilateral control of the Respondent and, like the first disputed Domain Name, redirected to the site of one of the Complainant’s competitors. Moreover, the Respondent relies on a Silent Partnership Agreement between himself and Mr. Clark, whereby each has an equal 50 per cent interest in the business. The said arrangement directly contradicts the Respondent’s claim to unilaterally transfer the disputed Domain Names into his sole control. In these circumstances, the Complainant has established a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed Domain Names which the Respondent has not rebutted. The said factor indicates Bad Faith, in addition to the fact that the Respondent used the Domain Names to redirect people seeking the Complainant’s business to the business of one of its competitors.
Complainant’s Counsel: Adlex Solicitors, United Kingdom.
Respondents’ Counsel: ESQwire .com PC, United States.
Indonesian distributor meets OKI data Test
Panelist: Mr. John Swinson
Brief Facts: The Argentinian Complainant is a family enterprise, selling the product under the mark THERMOMIXsince 1970. The Complainant and the Respondent entered into a distribution agreement in 2011, with an understanding for the Respondent to choose and purchase its own Domain Name as the Complainant already reserved Domain Name <thermomix .co.id> for its subsidiary. Accordingly, the Respondent registered the disputed Domain Name on January 12, 2014. Later, the Respondent closed its office on October 31, 2015 due to difficulty importing the product but the Complainant did not exercise the option to repurchase the left over stock of THERMOMIX TM31. Therefore, the Respondent continued selling the remaining stock through its website at the disputed Domain Name.
Held: It is concerning that the Complainant did not inform the Panel of the business relationship between the parties and also suggests that the THERMOMIX products offered on the Respondent’s website did not originate from the Complainant, but the evidence before the Panel provided by the Respondent is to the contrary. The addendum to that agreement appears to state that the Respondent has the exclusive distribution rights for Indonesia for an indefinite period. Additionally, the Respondent provided invoices from the Complainant and shipping documentation to demonstrate the purchases made in 2012, 2013 and 2014 and further evidence that the Complainant emailed the Respondent numerous times in 2014 at an email address that included the disputed Domain Name. Here, the Oki Data test is relevant. This test derives from the well-known decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO-D2001-0903. Relying on the Oki Data decision, many panels have recognized that resellers and distributors using a Domain Name containing a trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such Domain Name. On balance, here-in the Respondent meets the Oki Data test.
Complainants’ Counsel: Moeller IP, Argentina.
Respondents’ Counsel: Internally Represented.
NGO fails to prove common law rights in the pending mark
Panelist: Mr. Alistair Payne
Brief Facts: The Complainant is an NGO based in the United Kingdom that is focused on Human Rights in Sri Lanka. The Complainant asserts that it owns common law rights through use since 2015, not only in the name and in its combined word & logo mark that contains the words “The International Truth And Justice Project”. The Complainant has made a United Kingdom trade mark application for a logo mark including the words but it has not yet reached the point of registration. The Respondent registered the disputed Domain Name on 13 September 2020 and resolves to a website soliciting information concerning activists and makes use of a logo that appears to be identical or similar to the Complainant’s logo.
Held: The Complainant has submitted that while it does not own registered trade mark rights for its mark “The International Truth And Justice Project” as it only has a pending trade mark application in U.K., that it does own common law rights both in its name and in the combined logo mark. In support of this assertion the Complainant has provided the evidence as to archives of its active website at the disputed Domain Name since 2015 and its Twitter account. The onus upon the Complainant under this element of the Policy is to show that its name or mark has become a distinctive identifier which consumers associate with its services. Although the standard of evidence required for a non-commercial organisation’s name and mark may be lower in the particular circumstances than for the mark of a commercial product or service, there is a threshold evidential requirement which has not been met in this case. Besides, the Complainant’s name and mark, “The International Truth And Justice Project” is at least in part descriptive and is not in the panel’s view highly distinctive. Therefore, the Complaint fails for this reason under the first element of the Policy.
Complainants’ Counsel: Internally Represented.
Respondents’ Counsel: Hewage Law Group.
Tags: CAC, Denied
Complainant Agrees to Purchase Domain Name, Then Brings UDRP and Loses, Gets Slapped with RDNH
Complaint Denied (with RDNH ruling)
Panelist: Mr. Robert A. Badgley (Presiding Panelist), Mr. Clive Duncan Thorne and Mr. Tony Willoughby
Brief Facts: The Complainant’s unsolicited offer to purchase the Domain Name was accepted by the Respondent. The Complainant then brought the UDRP. The Complainant claimed common law trademark rights and provided details as to the annual turnover in 2016 that it increased each year through 2020 and it has expended large amounts on advertising and promotion of the mark tranScrip. But the Domain Name was acquired by the Respondent in 2014. The disputed Domain Name resolves to a parking page, at the top of which it is reads that the Domain Name “may be for sale” and below has number of hyperlinks, such as “Transcription Jobs”, “Apply Jobs”, “Transcription Services”, and “Writing Services”.
Held: The monetizing of domain names in relation to their dictionary value is not in itself illegitimate, so long as there is no targeting of trademarks. The word, “transcrip” is an obvious reference to “transcript” and was acquired by the Respondent because of its meaning. There is no evidence that the Complainant possessed any trademark rights in the mark TRANSCRIP prior to the Domain Name registration in 2014. It is undisputed that Complainant actually approached Respondent in 2015 in an effort to buy the Domain Name as a part of a rebranding effort. This fact, coupled with Respondent’s credible sworn denial of knowledge of Complainant or its mark in 2014, leads to the conclusion that Respondent did not register the Domain Name in bad faith.
RDNH: Complainant should have known that its Complaint was doomed to fail, especially since Complainant was represented by counsel with a clear understanding of the UDRP. When the Complainant filed the Complaint, it may have not realized that the Respondent acquired the Domain Name in 2014 but once the Complainant received Respondent’s initial response it arguably should have withdrawn the Complaint. In its supplemental filing, the Complainant did not even attempt to assert any common law trademark rights in TRANSCRIP prior to April 2014, or offer any allegations or proof that Respondent targeted Complainant’s trademark in April 2014. The Complainant appears to have reneged on the deal to purchase the Domain Name – which Complainant had initiated – because it ultimately concluded that it could wrest the Domain Name from Respondent via the UDRP process and avoid paying the agreed price of GBP 12,000. The Complainant’s claim that it ‘could not recall’ prior negotiations commencing in 2015 may be implausible, but in any event the Complainant failed to undertake at least minimal due diligence before filing its Complaint.
Complainants’ counsel: Fox Williams LLP, United Kingdom
Respondents’ counsel: Muscovitch Law P.C., Canada
Complaint Denied (with RDNH ruling)
Panelist: Mr. Steven A. Maier
Brief Facts: The Swiss Complainant is a provider of hybrid containers for the pharmaceutical industry and related services. It owns various trademark registrations for the mark SKYCELL since 2014 including an international registration. The disputed Domain Name has 1995 as year of registration, but the Respondent acquired it on March 20, 2008 as a part of his domain name portfolio for resale purposes. Currently, the disputed Domain Name does not resolve to an active website.
Held: The disputed Domain Name comprises a combination of two dictionary words: “sky” and “cell”. The Respondent is a domain name investor who has acquired other domain names including those containing the term “sky” at around the same time in 2008. The speculation in domain names is not inherently illegitimate and a registrant may obtain rights or legitimate interests in a domain name comprising dictionary terms, which it uses, or intends to use, in connection with those terms and not to target any third-party trademark. In such circumstances, registration in bad faith cannot be established, since the Respondent acquired the disputed Domain Name some five years before the Complainant or its trademark came into existence. Besides, the domain name is not in use, to hold any kind of Bad Faith use, as the Complainant alleges.
RDNH: In circumstances where the Complainant has failed to establish even a prima facie case in respect of bad faith, it can only be concluded that the Complainant had no reasonable or good-faith basis to invoke, or at least following receipt of the information provided by the Registrar: to continue with, the UDRP against the Respondent and brought this proceeding speculatively and therefore in bad faith. Therefore, the Complaint constitutes an attempt at Reverse Domain Name Hijacking.
Complainants’ Counsel: Internally represented
Respondents’ Counsel: Lewis & Lin, LLC, United States
Arigato, Mr. Roboto!
Complaint Denied (with RDNH ruling)
Panelist: Mr. Tony Willoughby
Brief Facts: The Dutch Company, founded in 2015, is engaged in the field of robotics and automation. It operates a website at “smart-robotics .nl” and has trademark registration in the EU dated June 04, 2018. The Domain Name has registration date of 2009 and is connected to a parking page featuring advertising links labeled “Robot Kits”, “Robotic Process Automation Microsoft”, “I Robot Vacuums”, “Robotics”, and “Robotics Engineering”, all of which appear to lead to sites matching those labels. In June 2021, a representative of the Complainant emailed the Respondent enquiring as to acquisition of the disputed Domain Name and also sent further reminders, but without receiving a reply.
Held: The use of a domain name to host a page comprising PPC links is permissible and therefore consistent with Respondent rights or legitimate interests under the UDRP in terms of WIPO Overview. Therefore, the Complainant has failed to satisfy the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that Respondent clearly had actual knowledge of Complainant’s rights in its name when the Respondent registered the infringing domain name. Though, the Complainant’s own evidence is to the effect that the Domain Name did get registered before the Complainant was founded and indeed before the Complainant’s trade mark registration. The Complainant’s case stands or falls on the predominant feature of the trade mark, the dictionary expression “SMART ROBOTICS”, and there is nothing in the Complaint to indicate why the Complainant should be entitled to exclusive rights in respect of that expression.
RDNH: The domain name has prior registration to the Complainants’ mark by years and “Smart Robotics”, the predominant element of that mark on which the Complainant relies, is a straightforward expression apt to describe the study of smart robots. Moreover, the Respondent’s use of the Domain Name to connect to a PPC parking page leads to links matching the Domain Name, namely websites concerned with smart robotics. The Complainant is legally represented by a law firm with expertise in the field and clearly knew or ought to have known that the Complaint was doomed to fail on both the second and third elements of the Policy. Hence, the Complainant has brought this Complaint in bad faith and constitutes an abuse of this administrative proceeding.
Complainants’ counsel: Taylor Wessing N.V., Netherlands
Respondents’ counsel: No response
$6,888 Domain Name – Complaint Brings UDRP Instead of Buying – and Loses!
Panelist: Mr. Matthew Kennedy
Brief Facts: The French Complainant specializes in advice, surveys, design, and construction for the food processing sector. The Complainant, founded in 2000, has its name CECIA formed as the acronym for its complete Company name. The Complainant holds the French trademark registrations for CECIA since 1990, while its subsidiary IDEC Group registered the domain name <cecia .fr> in 2018, which provides information about the Complainant and its services. The Respondent is a domain reseller from Pakistan who trades under the business name “Abidnetwork .com” and operates a website at the same address. The website displays his portfolio of approximately 100 domain names including the disputed Domain Name. The Respondent acquired the disputed Domain Name at a public auction and registered on December 9, 2020. The disputed Domain Name is currently advertised for sale.
Held: The disputed Domain Name got registered many years after the registration of the Complainant’s CECIA mark in France. “Cecia” is a female name, but not a common name like “Cecilia”. The Complainant shows that it has gained a reputation through the provision of its specialized engineering services in France and otherwise on the Internet, but the Respondent submits that he has never visited France or ever heard of the Complainant prior to this dispute. Besides, the Respondent shows that the top results for the same Internet search conducted outside France mostly refer to Cecia as a female name and rarely makes any reference to the Complainant. The Respondent may indeed have been aware of the existence of the Complainant but prior awareness of the Complainant does not by itself demonstrate that the Respondent intended to benefit unfairly from the Complainant’s CECIA mark and/or to damage the business of the Complainant. The Respondent is offering the disputed Domain Name for sale at USD 6,888, this price may reflect the disputed Domain Name’s inherent value as a personal name and does not allow the Panel to infer that the Respondent acquired the disputed Domain Name “primarily” for the purpose of selling it to the Complainant or to a competitor of the Complainant in terms of the Policy.
Complainants’ Counsel: Niddam-Drouas Avocats, France
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States of America
Weak Common Law Right Evidence Leads to Loss Over Descriptive Term
Panelist: Mr. Debrett G Lyons
Brief Facts: The Complainant asserts common law trademark rights in THE MORTGAGE LINK based upon asserted use of that mark since 2002. The evidence in support of the claim to common law trademark rights in this case, just comprises of a document showing that Complainant got incorporated in the State of Maryland in 2001 and screenshots of the Complainant’s current webpages resolving from the domain names <themtglink .com> and <mymortgagelink .com>. Besides, the Complainant alleges Respondent has no rights or legitimate interests and that Respondent registered and used the disputed Domain Name in bad faith. Respondent failed to submit a Response in this proceeding.
Held: The common law trademark rights may be established through use and public recognition, such that it has come to acquire secondary meaning. In terms of WIPO overview 3.0, to establish unregistered or common law trademark rights for purposes of the UDRP, the Complainant must show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services. The Complainant is a mortgage lender and the phrase “the mortgage link” is wholly descriptive of Complainant’s business. As such, the Complainant bears a greater onus to present evidence of acquired distinctiveness / secondary meaning. The Complainant’s evidence does not show public recognition of THE MORTGAGE LINK as a common law trademark, still less a reputation in that descriptive expression. In the circumstances, the Complainant has failed to show unregistered trademark rights in THE MORTGAGE LINK. No findings required under other two clauses because the Complainant must prove all three elements under the Policy, the Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary.
Complainants’ counsel: Rachel M. Wolf of Shumaker Williams, P.C., Maryland, USA
Respondents’ counsel: No response
Attempt to swap website redirection foiled
Panelist: Mr. Edoardo Fano (Presiding), Mr. Lawrence K. Nodine, Mr. William A. Van Caenegem
Brief Facts: The US Complainant is operating in the financial field of blockchain, cryptocurrency and trading protocol software for digital currency, operating at <uniswap .org>. It owns several trademark registrations and applications for UNISWAP, among which, earliest registration is October 2020 before USPTO and also has an International Trademark registration. The disputed Domain Name was acquired by the Respondent on April 7, 2021 and currently resolves to a website promoting the trade of sea urchin, a sushi ingredient known by its Japanese “uni”. At the time of filing of the Complaint, it was being redirected to a subpage of the website belonging to SushiSwap, a Complainant’s direct competitor.
Held: The reputation of the Complainant’s trademark UNISWAP in the financial field of blockchain, cryptocurrency and trading protocol software for digital currency is clearly established. The composition of the disputed Domain Name carries a high risk of implied affiliation and does not represent a bona fide offering of goods or services giving rise to rights or legitimate interests in the Disputed Domain Name. The Respondent likely knew of the Complainant and deliberately acquired the disputed Domain Name, as operating in the same field as the Complainant. The said acquisition of the disputed Domain Name after the trademark rights had been registered by the Complainant is in Bad Faith. Moreover, the disputed Domain Name is also being used in bad faith since it was redirecting to a website belonging to a Complainant’s direct competitor, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed Domain Name’s source, sponsorship, affiliation or endorsement.
Complainants’ counsel: O’Melveny & Myers, LLP, United States
Respondents’ counsel: Cornwalls, Australia
Domaining overpowers Canadian Healthcare Company
Complaint Denied (with RDNH)
Panelist: Andrew F. Christie (Presiding), Daniel R. Bereskin QC, Martin Schwimmer
Brief Facts: The Canadian Complainant operates in the healthcare sector providing several products, including hardware and software. It registered Trademarks in Canada in 2018, claiming use since 2016. The Respondent is a French corporation whose principal Mr. Francois Carillo is the proprietor of Domaining .com and Catchy .com. Particularly at Catchy .com the Respondent advertises its interest in buying pronounceable four-letter domain names. The Respondent registered the disputed Domain Name on February 19, 2015 and was offered for lease in 2019. Currently the disputed Domain Name resolves to a webpage containing the text: “The problem with not having the .com of your name is that it signals weakness. Fix it now”, with a link to the LinkedIn profile of Mr. Carillo.
Held: The Respondent registered the disputed Domain Name nearly four years before the Complainant’s first registration of its trademark, and over one and one-half years before the Complainant’s asserted first use of its trademark. In these circumstances, it is clear that the Respondent did not register the disputed Domain Name for the purpose of selling or renting the disputed Domain Name to the Complainant, preventing the Complainant from reflecting its trademark in the disputed Domain Name, or disrupting the business of the Complainant. The Respondent’s use of the disputed Domain Name since registration of it has been consistent to offer it for lease or sale. Accordingly, the Respondent did not register and has not used the disputed Domain Name in bad faith.
RDNH: The Complainant identified a particular partner of a major Canadian law firm as the Complainant’s authorized representative in the proceeding but later designated him “as an observer and side counsel” to the matter. These facts do establish that legal advice was available to the Complainant, whether or not it was taken. This exacerbates the Complainant’s culpability for bringing the Complaint in the circumstances identified above. Accordingly, the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and therefore constituted an abuse of the administrative proceeding.
Complainants’ counsel: Internally represented
Respondents’ counsel: John Berryhill, Ph.d., Esq., United States of America
Too much of a hype by ‘The Hype Company’
Panelists: Ms. Jane Seager (Presiding), Ms. María Baylos Morales, The Hon Neil Brown Q.C.
Brief Facts: Spanish Complainant, incorporated on April 16, 2018, is engaged in the production and sale of products for plant growth and care. The Complainant owns various trademarks for “The Hype Company” applied in December 2017 or early 2018 and operating at <thehypecompany .es>, in connection with its agricultural products. The disputed Domain Name was registered on April 13, 2018 and has been parked for sale at DAN. The Respondent claims to have had no knowledge of the Complainant when he registered the disputed Domain Name, and has produced evidence indicating that he has registered a number of other similar Domain Names following the naming pattern “the [term] company”.
Held: The disputed Domain Name was registered by the Respondent three days prior to the incorporation of the Complainant company, while the Complainant’s founder had already registered a number of semi-figurative trademarks for its mark. The Complainant has failed to produce any relevant evidence to demonstrate that the Respondent has sought to target the Complainant through the registration or use of the disputed Domain Name. Besides, the Complainant’s trademark is composed of dictionary terms, and that the distinctiveness of the Complainant’s trademark results, in part, from the semi-figurative nature of the mark. There is no evidence of the Respondent having engaged in a pattern of abusive Domain Name registration targeting the Complainant or the Respondent has at any time sought to sell the disputed Domain Name to the Complainant. Therefore, the Complainant has failed to demonstrate that the disputed Domain Name was registered in bad faith pursuant to the Policy.
Complainants’ counsel: Herrero & Asociados, Spain
Respondents’ counsel: Self-represented
Quixotic idea leads to shattered dreams
Panelist: Mr. Gerald M. Levine
Brief Facts: The Complainant, a software developer, having intentions to use his last name ‘Van Dorp’ in his family business takes the UDRP route. There is no supporting evidence, if the said business has already been established and he has rights, either registered or unregistered in his last name. The Complainant just expresses his strong desire to use the disputed Domain Name for his family business and alleges the same is owned by the Respondent, who is demanding a “non-reasonable price” price for it. The disputed Domain Name was registered in 2003 and the webpage displays the email services being offered under it.
Held: A precondition for invoking the UDRP is that the complainant has a trademark. This could be either registered or unregistered, but if an unregistered mark, the Complainant must offer evidence of secondary meaning, which is lacking in this case. The Complainant may be using “Van Dorp” as a trade name that alone would not help the Complainant. Previous panels have held that usage as a trade name does not serve to establish common law rights in a mark. In any event, the Complainant offers no evidence of any unregistered mark or that he is even currently operating an IT business, rather than it seems to be a wishful future enterprise. For these reasons, the Complainant does not satisfy his burden under the first element of the Policy, that is, fails on the basic standing requirement under the Policy. Obviously, this complaint should never have been brought. Had the Complainant taken advice from counsel, he should have been sanctioned for reverse domain name hijacking, but the same is not applicable here.
Complainants’ counsel: Internally represented
Respondents’ counsel: Self-represented
The Vietnamese Company failed to demonstrate the Zing Thing
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant, established in 2004, is a leading Internet and technology company in Vietnam and Southeast Asia. It operates the ZING ME social network, film and music streaming services, an electronic magazine, and a gaming platform. The Complainant is the owner of the International trademark ZING with registration since 2012 and operating through ccTLD .vn including <zing .vn>. The disputed Domain Name was registered on October 23, 2013. It resolves to a website that offers the disputed Domain Name for sale.
Held: “Zing” is an English dictionary that is being used online by different entities for different purposes. The Complainant has not presented any evidence that its ZING trademark is well-known or recognized exclusively with the Complainant. Further, the Complainant has provided no evidence to create an inference that when registering the disputed Domain Name, the Respondent had knowledge of the Complainant or that it has targeted it with its offer for sale of the disputed Domain Name or otherwise. It is well accepted that acquisition of domain names by domain name investors would normally be legitimate as long as no third-party trademarks are targeted. However, the request for RDNH is declined, as disputed Domain Name does not resolve to an active website.
Complainants’ counsel: Internally Represented
Respondents’ counsel: Self-represented
Complainant’s arm twisted over generic domain name
Panelist: Ms. Sok Ling MOI
Brief Facts: The U.K. based Complainant renders technology related goods and services since 1990. It has sold over 180 billion products under its ARM brand, which includes processors used by famous mobile brands. The Complainant owns numerous trade mark registrations for ARM since 1999 for ‘ARM’ mark in USA, U.K., EU and Singapore and claims the ARM mark as a “well-known mark”. Disputed Domain name was registered in January 2021 by a Chinese Respondent. No response has been filed.
Held: The Respondent is merely passively using the disputed Domain Name to redirect to a landing page and soliciting offers for the purchase of the same, the Panel notes that the disputed Domain Name is composed of the geographical term “china” and a dictionary term “arm”, which is quite different from the classic case where a well-known distinctive third party mark has been incorporated in the disputed Domain Name. Notwithstanding the Complainant’s claims regarding its reputation it is noteworthy that the Complaint does not list trademarks registered in or designating China; moreover, given that the disputed Domain Name is comprised of two dictionary words and is not in the Panel’s view a highly distinctive mark, the Panel ultimately is not prepared to draw an inference regarding the Respondent’s potential targeting of the Complainant.
Complainants’ counsel: Quinn IP Law, United States of America
Respondents’ counsel: No response
For the first time ever, you can see a “live” demonstration of how an actual UDRP domain name dispute case is argued and adjudicated. The ICA is very pleased to present in association with the International Trademark Association (INTA) a “moot” or “mock” UDRP hearing. This innovative and lively session will feature three actual UDRP Panelists as they hear a fictional UDRP case influenced by real-world facts. The case will be presented by experienced lawyers making arguments for the trademark owner and for the domain name registrant, respectively. Read the interesting “fictional” facts of the case, here. The case involves a famous Thailand-based energy drink company called, “Red Ball”, and a domain name investor from Iowa, Connie Domainus in a dispute over the fictional domani name Red Ball dot com. Was the domain name registered and used in bad faith to target the Complainant? Or did the registrant register the Domain Name because it had inherent value as corresponding to a descriptive term? Now you don’t need to just read about a case after it happens, you can see it argued and decided in real time!
The ICA and INTA have put together a dream team of counsel and panelists: George Nahitchevansky as Complainant Counsel, Karen Bernstein as Respondent Counsel, and Gerald Levine, Steve Levy, and Francine Tan (Chair), serving as Panelists. Lori Schulman from INTA and Zak Muscovitch and Kamila Sekiewicz of ICA will both be making brief remarks at the beginning of the session.
Here is a little promo reel to give you a taste of the session: https://www.youtube.com/watch?v=ze1RyANN2aY.
You can still get a Namescon Online ticket, here: https://namescon.online/pass
Red Bull in a China Shop
<redbullbeijing .com> and others
Transfer (with dissenting opinion)
Panelist: Mr. Matthew Kennedy (Presiding), Mr. Joseph Simone and Dr. Hong Xue (Dissenting)
Brief Facts: The Thai Complainant sells energy drinks including RED BULL. The Complainant entered into joint venture and trademark licensing agreements with Red Bull Vitamin Drink Co. Ltd, the purpose of which was the introduction of the Red Bull vitamin drink to China. A trademark ownership dispute arose between Red Bull Vitamin Drink Co., Ltd and the Complainant, in which the former claimed ownership of the RED BULL trademarks in China. The trademark ownership claim was dismissed by a Beijing court. The Respondent claims to have registered the domain names in the course of employment with the Respondent Company and that the beneficial owner, Red Bull Vitamin Drink Co., Ltd, uses the domain names in connection with its valid and subsisting licensing agreement.
Held (majority view): The Respondent failed to prove that she was and continues to be an employee of Red Bull Vitamin Drink Co. Ltd. The Respondent failed to substantiate her claim that Red Bull Vitamin Drink Co., Ltd has the exclusive right to use the RED BULL trademarks in mainland China. The Supreme People’s Court of China previously declined to accept the authenticity of the purported 50-year license agreement for the RED BULL. The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names. The Respondent targeted the Complainant’s trademarks when she acquired the disputed Domain Names and registered them in bad faith.
Dissenting opinion: There is insufficient evidence to conclude that the Respondent had not been the employee of Red Bull Vitamin Drink Co. Ltd since acquiring the disputed Domain Names or that the purported license agreement was inauthentic. The court decision referenced by the majority decided the ownership of the RED BULL trademarks in China but the authenticity of the purported licensing agreement was not conclusively determined. The Parties’ complicated dispute regarding the 50-year licensing agreement (especially the new evidence) is more appropriately resolved through a full trial in other legal proceeding than in an expedited administrative case.
Complainant’s Counsel: Internally represented
Respondent’s Counsel: Han Kun Law Offices, China
Buttkicker Gets Butt Kicked
Complaint Denied (RDNH)
Panelist: Mr. Michael A. Albert
Brief Facts: Complainant is in the business of consumer electronics and apparel. Complainant has rights in the BUTTKICKER mark through its registration with the USPTO since 2003. Respondent registered the disputed Domain Name on Sept. 30, 1996 and planned to use the domain name in connection with a smoking cessation program developed by Respondent’s father, wherein word “butt” can refer to a cigarette butt, while “kicker” refers to the common phrase of quitting smoking by “kicking” the habit. Currently, the disputed Domain Name has been passively held.
Held: Respondent provided multiple documents as evidence in support of the smoking cessation program, including an expired USPTO application and online description of the program/device. Therefore, the Respondent has rights and legitimate interests in the disputed Domain Name under Policy. Also the Respondent’s registration of the disputed Domain Name predates Complainant’s first claimed rights in the BUTTKICKER mark. In such circumstances, the Complainant cannot prove registration in bad faith in terms of the Policy.
RDNH: The Complainant knew or should have known that it was unable to prove either that Respondent lacks rights or legitimate interests in the <buttkicker .com> Domain Name or that Respondent registered and is using the disputed Domain Name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered a decade before Complainant’s trademark rights came into existence. It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred.
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Roberto Ledesma of Lewis & Lin, LLC, New York, USA
Turkish Car Company’s Complaint Not Up to Speed
Complaint Denied (RDNH)
Panelist: Mr. Matthew Kennedy
Brief facts: The Complainant is a Turkish company founded on June 28, 2018 for the purpose of producing automobiles. The Complainant holds multiple trademark registrations in Turkey and the European Union containing the element TOGG. “TOGG” is an acronym formed by the initials of the first four words in the Complainant’s company name – TÜRKIYE’NIN OTOMOBILI GIRIŞIM GRUBU. The Complainant currently uses <togg .com.tr>, where it provides information about itself and its planned automobiles. The disputed Domain Name has a registration date of January 2003. The Complainant purported to withdraw the Complaint after the commencement of the proceeding but the Respondent objected to the withdrawal.
Held: The Panel declined to terminate the proceeding. Termination would leave the Complainant free to refile a complaint, whereas continuing will give the Respondent an opportunity to obtain findings on the merits of the Complaint. The disputed Domain Name was acquired by the Respondent in 2014, five years before Complainant obtained its earliest trademark registrations. Obviously, the Respondent could not possibly have had the Complainant or its marks in mind in 2014 when it acquired the disputed Domain Name.
RDNH: The Complainant was represented by legal counsel. The Complaint specified the creation date of the disputed Domain Name, which was 16 years before the earliest registrations of the Complainant’s trademarks in March 2019. The Complainant at best launched this proceeding without addressing the critical issue in the case and knowing that it could not succeed in its Complaint under any reasonable interpretation of the Policy. Therefore, the Panel declared that the Complaint was brought in bad faith and constituted an abuse of the administrative proceeding.
Complainant’s Counsel: Gün + Partners, Turkey
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Don’t Confuse Your B&B with Your BNB, or AirBNB
Panelist: Mr. Blackmer, W. Scott
Brief Facts: The French Complainant operates hotels & restaurants, has a portfolio of more than 500 hotels in France, Germany, Italy, Spain, Portugal, Belgium, Switzerland, Poland, Austria, Slovenia, the Czech Republic, and Brazil. The Complainant holds multiple trademark registrations for B&B Hotels and similar marks since 1990 and operates online through multiple domain names, including <hotel-bb .com> (1998), <hotel-bb .tm.fr> (1998), and <hotel-bb .fr> (2000). The disputed Domain Name was created on July 26, 2001 by a U.K. resident, who has parked the domain name at DAN .com for sale, with a minimum offer of GBP 4,997.
Held: The disputed Domain Name is composed of the English dictionary word “hotel” and the string “bnb”, a variation of the common acronym “b&b”, which stands for “bed and breakfast”. Those words are very common on Internet travel websites. The less distinctive the mark, the harder it is to establish the likelihood that a similar, descriptive domain name was chosen for its trademark rather than dictionary value. The problem is that the textual elements of those marks are dictionary words or acronyms that are very commonly used, and the Complainant is neither globally known nor uniquely associated in the travel industry with hotels and bed and breakfasts. The Respondent’s intention of selling the Domain Name is not in itself proof of bad faith and no indication that the Respondent is a competitor or serial cybersquatter. Therefore, no Bad Faith is proved against the Respondent.
Complainant’s Counsel: Fiducial Legal By Lamy, France
Respondent’s Counsel: Self-Represented
UDRP Lights On, But Nobody Home
Panelist: Mr. David E. Sorkin
Brief Facts: Complainant was founded in 1917 as Wisconsin Power and Light Company, but later the name changed to Alliant Energy Corp. The Complainant claimed as having expended significant sums of money and substantial effort promoting and advertising its goods and services under the WISCONSIN POWER AND LIGHT COMPANY mark. The members of the public throughout Wisconsin and Iowa “continue to associate” the mark with the Complainant and its goods and services. Complainant alleges the Respondent has used the disputed Domain Name, without any authorisation or licence for a website in Complainant’s name, presumably in support of Respondent’s fraudulent scheme.
Held: Complainant does not own any Trademark rights in the name, therefore, relying on unregistered or common law rights in the mark. Based on the manner in which Complainant has used and claimed public recognition of its mark, it appears that Complainant no longer uses that mark in a trademark or even a trade name sense, having shifted to ALLIANT ENERGY, more than twenty years ago. Therefore, the Complainant has not proved that it has the rights in a relevant mark in terms of the first clause of the Policy. The Panel reaches this conclusion reluctantly, as it appears fairly clear that Respondent lacks rights or legitimate interests in the disputed Domain Name and that Respondent registered and is using the domain name in bad faith.
Complainant’s Counsel: Thomas L. Holt of Perkins Coie LLP, Illinois, USA
Respondent’s Counsel: No Response
Gooooal! Beckhams Score a Domain Transfer
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainants are wife and husband. The first Complainant started her “Victoria Beckham” fashion label in 2008 and her fashion products are offered for sale from an official website and are available in more than 450 stores in 50 countries worldwide. The second Complainant is a former English footballer who has worked with world-leading fashion and lifestyle brands. He is the owner of two registered trademarks in the United States – “BECKHAM” (since 2007) in classes 9, 16, 25 (includes clothing), 28, and 41 and another “BECKHAM” (since 2012) in Class 3 (which includes fragrances). The U.S. Respondent registered disputed Domain Name on July 8, 2020 and it resolves to a website offering competing fashion products. The products on offer from the Respondent’s website are not products made or offered by the First Complainant’s business or endorsed by the Second Complainant. By clicking on the link on the website “Fragrances” took the browser to another website which in addition to offering for sale fragrances offered other fashion items including a swimsuit range under the label “Victoria Beck”, which is not used by or associated with either of the Complainants.
Held: Consolidation of the Complaint is appropriate as the Complainants’ share a common surname “BECKHAM”, which has been registered by the second Complainant as a trademark (in respect of clothing, fragrances and fashion accessories). The disputed Domain Name was registered long after the trademark registration and also well after the first Respondent’s fashion label was launched and had gained widespread recognition in both the United Kingdom and the United States. The use of a confusingly similar domain in connection with competing or rival goods does not qualify as use in good faith under the Policy. Bad faith is also demonstrated by the title of the website “BECKHAM® Official Online Boutique”, which is a misrepresentation that the operator of the website is the owner of BECKHAM registered trademark.
Complainant’s Counsel: Demys Limited, UK
Respondent’s Counsel: Self-Represented
A Dog of a Domain Name Transferred
Panelist: The Honorable Charles K. McCotter, Jr. (Ret.)
Brief Facts: The Complainant markets and sells hair care products and other related products since 1919 under the WAHL mark throughout the United States and in 165 countries worldwide through retail stores and online retailers. The trademark “WAHL” was registered with the USPTO in November 1985. The Respondent registered the disputed Domain Name on May 18, 2021. The website at the disputed Domain Name displays several sponsored hyperlinks including links that display the WAHL mark and also terms related to the Complainant’s products.
Held: The Respondent is neither licensed or authorized to use the Complainant’s WAHL mark nor is commonly known by the disputed Domain Name. The Respondent does not have rights or legitimate interests in the disputed Domain Name because he doesn’t use the disputed Domain Name for a bona fide offering of goods or services or legitimate non-commercial or fair use under Policy. Rather, the Respondent registered and uses the disputed Domain Name to display third-party commercial hyperlinks and thereby attracts users to its webpage for financial gain. Use of a confusingly similar domain name to display third-party commercial hyperlinks is evidence of bad faith under the Policy.
Complainant’s Counsel: Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA
Respondent’s Counsel: No Response
Yes We Can, Take Away Cybersquatted Domains
<obamapresidentialcenter .com>, <thebarackhobamapresidentialcenter .com>, <thebarackobamapresidentiallibrary .com>, <barackhobamapresidentialcenter.com>, <barackhobamapresidentialcenter .org>, <thebarackhobamapresidentialcenter .org> and <thebarackhobamapresidentiallibrary.com>
Panelist: Mr. Clive L Elliott Q.C. (Chair), Mr. Ho-Hyun Nahm, Esq., and Mr. Professor David Sorkin
Brief Facts: Former United States President Barack H. Obama owns common law rights to the marks “BARACK OBAMA” & “OBAMA” and has licensed use of Complainant’s Marks to the Complainant, the Obama Foundation. Two Domain Names were registered shortly after President Obama became a front runner for the Democratic Party in the 2008 presidential election, and the other five Domain Names were registered immediately after President Obama was inaugurated as the 44th President of the United States. The Respondent claimed that Complainant was established in 2014, five years after the registration of the Domain Names. The Respondent further claimed he registered the Domain Names to use as free speech forums.
Held: Long before the Respondent registered the Domain Names, the OBAMA Marks had become distinctive and famous through President Obama’s extensive public promotion and use of the OBAMA Marks in U.S. commerce in connection with advertising and providing a wide range of services and activities, including having authored several books. Therefore, former President Barack Obama owns common law rights in the “OBAMA” Marks. The disputed Domain Names resolve to pages displaying third party links and no legitimate use is evident. The Respondent registered the multiple Domain Names in bad faith opportunistically since the disputed Domain Names were registered in anticipation of former President Barack Obama’s political career.
Complainant’s Counsel: James R. Davis, II of Perkins Coie LLP, District of Columbia, USA
Respondent’s Counsel: Self Represented
Instagram UDRP Goes Up In Smoke
Panelist: Mr. Remco M. R. van Leeuwen
Brief Facts: The Complainant is currently a well-known online photo and video sharing social networking application. The Complainant’s application launched on October 6, 2010 and its first EU trademark was registered on March 15, 2012. The Complainant was however, named Burbn Inc. until October 2010, when it renamed to Instagram. The Respondent registered the disputed .nl Domain Name on December 22, 2010, and at that time the .com was not owned by the Complainant. The Respondent submitted that while he does not question Complainant’s current popularity, in 2010 the Complainant was hardly known in the United States, let alone in the Netherlands and that it was profoundly unforeseeable that Complainant would subsequently gain worldwide popularity. The Respondent claimed that he registered the Domain Name for a cannabis courier service under the name “Insta Gram”, referring to a “gram” of cannabis.
Held: The Respondent provided two affidavits to demonstrate that he had been making preparations to use the Domain Name in connection with a bona fide offering of goods or services, prior to notice of the dispute. Nevertheless, the Panel noted that insufficient information was provided by the Respondent such as documentation showing steps taken to bring his business plan to fruition over the past 10 years. There was insufficient evidence before the Panel to determine whether Respondent unfairly sought to take unfair commercial advantage of Complainant when registering the Domain Name. There are questions of fact here that require resolution of a kind that is better suited for a court of law,
Complainant’s Counsel: Hogan Lovells (Paris) LLP, France.
Respondent’s Counsel: Houthoff Coöperatief U.A., the Netherlands.
Tags: WIPO, Denied, Social Network
A Vaccine Trademark Registration Is Not Enough
Panelist: Ho-Hyun Nahm, Esq., Panelist
Brief Facts: The Complainant is a technology company specializing in storage and delivery of vaccines, having rights in the “VITRIVAX” mark. The trademark has a recent registration of August 2021 showing use since October 31, 2018, but the Complainant claimed common law rights since 2014. The Respondent is the vice president of a Company that develops thermostable powders, including vaccines under the “VITRILIFE” mark and registered multiple websites with variations of that mark. The Respondent registered the disputed Domain Name on February 08, 2018 to prepare to promote vaccine materials while it awaits FDA approval of its product.
Held: To establish unregistered or common law trademark rights for purposes of the UDRP, the Complainant must show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services. The Panel finds that merely showing the date of the first use of the name ‘VitriVax’ based upon a press article, coupled with the additional material from the Complainant’s website is insufficient to establish Complainant’s common law rights prior to the registration of the disputed Domain Name. The USPTO records otherwise show the first use in commerce by the Complainant being October 2018, while the disputed Domain Name has prior registration date. Therefore, the Complainant has failed to establish that the Respondent registered the disputed Domain Name in bad faith.
Complainant’s Counsel: Laila S. Wolfgram of Polsinelli P.C., Missouri, USA
Respondent’s Counsel: Cy Bates, California, USA
ICA Weekly UDRP Case Summary Digest – Volume 1.3
Domain Name: >>TorosTarim .net<<
Panelist: Mr. Dilek Ustun Ekdial
Brief Facts: The Turkish Complainant was founded in 1974 in the agricultural sector. Since 2005, the Complainant’s tradename has been Toros Tarım Sanayi ve Ticaret Şirketi and Complainant owns the ‘TOROS’ device mark, regarded as well-known in Turkey. The Complainant operated a website at <toros .com .tr> since 1997. The disputed Domain Name TorosTarim .net was registered on June 6, 2020 and has an active website. Since 2015, the official trade name for the Respondent is Toros Fidancılık Özel Ağaç Tarım ve Hayvancılık Pazarlama Ticaret Limited Şirketi.
Held: Toros is a geographic descriptive term referring to a mountain range in Turkey and Tarim means agriculture. The word ‘Toros’ has been part of Respondent’s company name since 2015 and the Respondent demonstrated a bona fide offering of goods and services. The Panel noted that to the extent the Complainant considers it may have a broader trademark or unfair competition claim against the Respondent, nothing in the present decision precludes them from addressing that in a competent court.
Complainant’s Counsel: Gün & Partners, Turkey.
Respondent’s Counsel: Self Represented.
Domain Name: >>GNP .com<<
Panelists: Mr. Nick J. Gardner (Chair), Mr. Kiyoshi Tsuru, Mr. Gerald M. Levine
Brief Facts: The Mexican Complainant operated since 1907 in the insurance sector as “GNP”. It has substantial business in Mexico and trademark rights for the term GNP in stylised form since 2006, as well as several other similar Mexican trademarks. The Respondent’s business offers .com domain names for sale and promotes them with its own designed logos. The Respondent invests in many three-letter (acronym) domain names. The disputed domain name was originally created on August 27, 1991. At one stage it was linked to an automatically generated “parking page” containing links to third party websites but now it resolves to a ‘for sale’ page.
Held: A domain name comprising a three-letter combination can readily be purchased for its inherent value as a general acronym. As a general rule it is likely that in such cases the registration will be for bona fide purposes. The evidence does not come anywhere close to establishing that the term GNP was so well-known as to mean a third party based outside Mexico, and operating in a completely different field, either was or should have been aware of the Complainant and its use of the term GNP. The Panel sees no reason to disbelieve the Respondent when he says he had never heard of the Complainant and the contemporaneous correspondence corroborates that fact.
The Respondent has a legitimate interest in marketing domain names as those names seem to have been chosen for their generic nature and do not seek to capitalize on the Complainant’s trademark. So far as the parking page relied upon by the Complainant is concerned it is unclear exactly when and why that page was displayed, therefore, the probative value of this evidence is low, so as to hold any kind of bad faith.
Complainant’s Counsel: Legarreta y Asociados, Mexico.
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States of America.
Panelist: Mr. Edoardo Fano
Brief Facts: The American Complainant has a well-known ‘JBL’ brand operating in the field of audio technology. It owns several trademark registrations for JBL, including a Colombian trademark registration since April 4, 1986. The disputed Domain Name was registered on April 17, 2010 and resolves to an inactive website. On August 14 and September 3, 2020, the Complainant’s legal representatives sent a cease-and-desist letter to the Respondent but did not receive any reply.
Held: The Respondent’s company Comercializadora JBL Jesus Bermudez S.A.S. was incorporated on November 17, 2011, which demonstrates that the Respondent’s name substantially corresponds to the disputed Domain Name. The Panel, in accordance with its powers to consult matters of public record, found that the Wayback Machine online archive showed that the disputed Domain Name resolved to a website in 2013 and 2014, demonstrating what appears to be a bona fide offering of products, different from the Complainant’s products. Therefore, the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant’s Counsel: Estrategia Juridica Nacional e International S.A.S., Colombia.
Respondent’s Counsel: Self Represented.
Atlas Numismatics, Inc. v. C Alexander, Atlas Rare Coin Wholesale, Inc., Atlas Rare Coins, Inc., Christian Antonelli, Jason Sullivan, Atlas Collectibles, Inc. f/k/a Atlas Gemstones, Inc., Brandon Mizrahie, WIPO Case No. D2021-1920
Domain Names: >>Atlasgemstones .com<< and >>Atlasrarecoins .com<<
Panelist: Mr. W. Scott Blackmer
Brief Facts: Since 2013, the Complainant operated a rare coin dealership under the name ‘Atlas Numismatics’ and holds a corresponding trademark USPTO registration since 2016. The Domain Name <atlasgemstones .com> was registered on July 30, 2016 and <atlasrarecoins .com> was registered on September 18, 2020. Screenshots from the Internet Archive’s Wayback Machine show that the Domain Name, <atlasgemstones .com> was used from 2016 for a website headed “Atlas Gemstones & Rarities” selling gold and other precious metals, gemstones, rare coins, and jewellery. In 2020 and 2021, the website listed the operator as Atlas Gemstones & Rarities, Inc., with a postal address in New York, United States.
Held: The Domain Name <atlasgemstones .com> was registered on July 30, 2016 and was used for the business of selling precious metals, gemstones, rare coins, and jewellery. There is no evidence in the record concerning the volume of the Complainant’s sales or its market recognition in 2016 or even in 2020, when the second Domain Name, <atlasrarecoin .com> was registered. “Atlas” is a dictionary word that is widely used for information resources about gems, coins, and investments. The “Atlas” portion of the Complainant’s mark is not highly distinctive or renowned and there are other, legitimate reasons for the Respondents to use “Atlas” in their names. Indeed, there is no evidence that the Complainant is known as “Atlas” rather than by its full mark. In the absence of other evidence supporting the inference that the Respondents had the Complainant’s mark in contemplation, the Panel did not find bad faith in the registration and use of the Domain Names.
Complainant’s Counsel: Law Offices of Armen R. Vartian, United States.
Respondent’s Counsel: Self Represented
DomainName: >>ValoService .com<<
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainants are part of Valeo Group which is in the automotive parts business. They have 191 production sites and over 111,000 employees. Group sales in 2007 were EUR 9,555 million rising to EUR 19,200 million in 2019 and EUR 16,400 in 2020. The first French trademark was registered in 1966 and in the USA, it has been registered since 2009. The Respondent is a domain name investor, who acquired the Domain Name in aftermarket in October 2020 and the domain name has been on sale at DAN for EUR 2,288.
Held: The sales of the group are very substantial and the Complainant’s VALEO trademark is well known. The Respondent categorically denies any knowledge of the Complainants and their trademarks. Importantly, the Respondent has provided evidence demonstrating that trademark / Google searches for “valo” do not show the Complainant trademarks. The Respondent is a domain name investor and registered a number of domain names because they correspond to descriptive words in foreign languages. The Respondent provides evidence demonstrating that “valo” in Finnish translates to “light” or “lamp” in English and conveys the idea of a service relating to lights. The Respondent’s explanation of how he came to register the disputed Domain Name is arguably unusual, but it is supported to an extent by his own past practices as evidenced by other domain names he has registered and also the trademark and Google searches. Accordingly, the Complainants have not established that the Respondent registered the disputed Domain Name in bad faith and the Complaint must fail.
Complainant’s Counsel: Tmark Conseils, France.
Respondent’s Counsel: Cylaw Solutions, India.
Domain Name: >>ParcelHub .com<<
Panelist: Mr. Douglas M. Isenberg
Brief Facts: The Complainant is the owner of U.K. trademark PARCELHUB since 2011 for use in connection with packaging of goods and storage container rental. The Complainant alleged that Domain Name redirects to the website of a competing company. The Respondent acquired the Domain Name for £8,825.01 and submitted that the disputed Domain Name is an apt name for the global package distribution platform that it is building. The Respondent also stated that the disputed Domain Name had previously redirected to a competing website but the Respondent did not cause this redirection himself and has since requested the withdrawal of this redirection.
Held: The Complainant provided no evidence that Respondent lacks rights or legitimate interests. Similarly, the Complainant has not specifically cited any of the bad faith circumstances set forth under the Policy. The Complainant sets forth no theory of bad faith other than a broad statement that the previous redirection of the disputed Domain Name caused confusion with the Complainant’s brand. This theory cites no evidence or precedent under the Policy (and, indeed, Complainant’s entire Complaint and additional submission is devoid of any such authority). Accordingly, in the absence of any evidence or relevant arguments from the Complainant, the Complainant has failed to prove the second & third elements of the Policy.
Complainant’s Counsel: Lewis Owen of Field Seymour Parkes LLP, United Kingdom
Respondent’s Counsel: Christiana Loizides of Sheridans Solicitors, United Kingdom.
Domain Name: >>DewberryDesigns .com<<
Panelist: Mr. Christopher Gibson
Brief Facts: The Complainant is an engineering, architecture, real estate and emergency management firm with more than 50 locations in the United States. It has a website at <dewberry .com> which was registered on October 5, 1998. The Complainant’s service marks for DEWBERRY were registered on September 6, 2005. The disputed Domain Name was registered on April 13, 2021 using a privacy service. The Registrar confirmed the Respondent’s contact details, including that her last name is Dewberry and that she is located in Tennessee. The Respondent sent informal email communications to the Center in which Respondent indicated she stated: she is “a simple artist who debated selling earrings I haven’t even made on Shopify a while ago. I have obviously never done that, much less developed the site… “I am not working, I just had surgery, I have two kids. Whatever this is, I don’t have time for it.”
Held: The Panel noted that somewhat surprisingly, the Complainant maintained its allegation in its amended Complaint, even after the Respondent had been identified by the Registrar with the last name being Dewberry. The Complainant provided no evidence of the Respondent’s bad faith registration and use of the Domain Name to show that the Respondent targeted the Complainant’s DEWBERRY mark when registering the Domain Name, nor did it show improper use of the Domain Name for an active website or for any other bad faith purpose.
Complainant’s Counsel: McCandlish Lillard, P.C., United States.
Respondent’s Counsel: Self Represented.
Domain Name: >>MarineTravelLifts .com<<
Panelist: Mr. Richard Hill
Brief Facts: The Complainant, founded in 1954, is a manufacturer of mobile boat hoists. In 1965, it began selling boat hoists under the mark MARINE TRAVELIFT and registered the trademark in the United States in 1984. The Complainant used <MarineTraveLift .com> as its primary website since at least 2002. The products are sold throughout the United States and internationally. The Complainant alleges that the Chinese Respondent used the disputed Domain Name to promote and sell products which compete with those offered by the Complainant and that the disputed Domain Name constitutes ‘typosquatting’. In a previous UDRP between the same parties, <MarineTraveLlift .com> was transferred. No Response was filed.
Held: The disputed Domain Name consists of the generic terms “marine travel lifts”. The term “travel lift” is a generic term that describes a certain type of hoist often used for boats and in marinas. Thus the disputed Domain Name is not so much a misspelling of Complainant’s mark, as a description of certain products. Past panels have found that, when a disputed Domain Name describes a Respondent’s business, it is used for a bona fide offering of goods or services under UDRP. The previous case cited by the Complainant had a different set of circumstances as the resolving website displayed images taken without authorization from the Complainant’s website. The Panel noted that the instant Complaint was filed three years after the registration of the disputed Domain Name and thereby weakens the Complainant’s arguments as well.
Complainant’s Counsel: Thomas A. Agnello of Michael Best & Friedrich LLP, Wisconsin, USA.
Respondent’s Counsel: No Response
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Complaint Denied with RDNH ruling
Panelist: Mr. Luca Barbero (Presiding), Ms. Emmanuelle Ragot and Mr. Andrew D. S. Lothian
Brief Facts: Complainant is a French law firm originally formed in 2006. There have been changes in the constitution of the firm but the name, ‘LERINS’ has consistently been used. The Complainant obtained a 2007 LERINS trademark registration via a transfer agreement on December 08, 2020. Respondent is GoDaddy’s subsidiary dealing in purchasing and offering for sale, domain names composed of generic terms. The domain name was acquired by Respondent in December 18, 2020 for its intrinsic value, as the word “Lerins” also corresponds to a French or Scottish family name.
Held: Complainant failed to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name as it did not demonstrate that the Respondent intended to target the Complainant’s trademark. Further, the Respondent demonstrated it has a legitimate interest in the disputed domain name since it registered the disputed domain name for investment purposes due to its own intrinsic value as a surname and was thereby of potential interest to several third parties. The three member panel concluded that the Complainant’s action in bringing these proceedings constituted Reverse Domain Name Hijacking. The Complainant’s case was based on the argument that offering a disputed domain name for sale for an amount exceeding the related out-of-pocket costs, independently of any awareness of the Complainant and its trademark. The Complainant should have contemplated that it could not succeed with such an argument. The circumstances of the case clearly show that this was a speculative case brought by the Complainant after its failure to purchase the disputed domain name from the Respondent’s predecessor in title.
Panelist: Mr. Mathew Kennedy
Brief Facts: The Complainant is an American design studio that launched its first product, a table lamp under the TRUEING brand, in October 2016. The product was promoted in design magazines including in Chinese publications from November 2016 to January 2017. The domain name was registered on February 20, 2017 following its expiry and a public auction. The Complainant registered the TRUEING trademark on July 31, 2018 in the USA claiming first use in commerce since November 20, 2016. The Chinese Respondent denied that the mark was known in China and denied that he was aware of the mark when he registered the domain name. His claimed intention was to use the disputed domain name which corresponds to an English dictionary word, in connection with a food website. The domain resolved to a landing page advertising the disputed domain name for sale. The Complainant made several offers to purchase the domain name prior to commencing the proceeding.
Held: The disputed domain name is identical to the trademark which corresponds to a dictionary word, albeit an uncommon word. The Complainant launched its first product with the TRUEING mark as reported in Chineses magazines prior to the registration of the disputed domain name. The relatively short period between the appearance of these publications and the registration of the disputed domain name “did not appear coincidental”. The Respondent provided no plausible explanation for his choice of the disputed domain name despite “trueing” being a dictionary word. The Panel found it “more likely than not” that the Respondent registered the disputed domain name in bad faith in anticipation of the Complainant’s rights in the TRUEING mark rather than because it corresponded to a dictionary word. Domain transfer ordered.
Blackhawk Network, Inc. v. 1337 Services LLC, Robert Mkhitarian, Proxy Protection LLC, Lilith Brown, Withheld for Privacy efh, Lilit Dagie, Mike Twin, Adam Adamyan, Jensen Mars, Took Herassa, John Adamyan, The Perfect Gift Services LLC, Robert Smith, Roger Vance, Mario Velez, Juan Vanailita, Lamino Piking, Divine Design, Bella Tovmas, WIPO Case No. D2021-1611
>>heperfectgift.com<< and 22 more [27 Disputed Domain Names]
Panelist: Mr. Ian Lowe
Brief Facts: Since 1999, the Complainant has been in the gift card business and began selling gift cards in grocery stores in 2001. It now provides a range of branded payment programs in 28 countries using physical gift cards, as well as online, in digital wallets and via social media, and by smartphone apps. In connection with the provision of its various services, the Complainant has used the mark, GIFT CARD MALL since 1999, the mark THE PERFECT GIFT since 2006, and the mark, MY PREPAID CENTER since 2011. 26 of 27 disputed domain names were registered recently. The Complaint was filed against multiple named Respondents and was accepted by the Panel based upon evidence of “common control” by the single person.
Held: The Panel is satisfied on the balance of probabilities that all the disputed domain names are under common control and that the Complaint may be consolidated, in particular, all the disputed domain names target the three trademarks and the Complainant has pointed to the content of the webpages, to the identity or similarity between registrants and/or their contact details, adduced detailed technical analysis of the IP address, redirection between linked disputed domain names and of the commonality of the Google Analytics Tracking ID of a number of the disputed domain names. The Complainant was able to satisfy all three elements of the UDRP and the domain names were ordered transferred.
Bella Belle LLC v. Brigitte Braun / Whoisprotection.cc / Domain Admin / Anne WEBER, NAF Claim Number: FA2107001954879
Split decision >>bbshoesforsale.com<< not transferred
Panelist: Mr. Debrett G. Lyons
Brief Facts: Complainant sells footwear under the trademark, ‘BELLA BELLE’, registered with the USPTO since March 28, 2017. The Respondent registered the domain names during March-April 2021 with different WHOIS profiles. The domain names resolved to essentially identical websites advertising footwear under the Complainant’s trademark. The Complainant alleged that the domain names were effectively controlled by a single person or entity operating under several aliases, and accordingly brought a single Complaint.
Held: The Panel did not accept that <bbshoesforsale.com> is confusingly similar to the trademark. The letters “bb” themselves are not enough to connote the trademark in the absence of better evidence, such as use of those letters and common law trademark rights in them. Therefore the Complaint was denied as to <bbshoesforsale.com>. The resolving web pages for the other two domain names show ladies footwear for sale under the Complainant’s registered trademark which is not a bona fide offering of goods or services, legitimate fair use under the Policy. The other two domain names incorporating trademark were ordered to be transferred.
Panelist: Mr. Luca Barbero
Brief Facts: The Complainant is a French company founded in 2000 specializing in high-end camping villages located in France, Spain, and Portugal. It owns the EU Trademark for YELLOH registered on February 28, 2014 and also owns the domain names <yellohvillage.fr> and <yellohvillagepro.com>. The disputed domain name, <yellohconsultancy.com> was registered on May 3, 2021 and was pointed to the parking page of the concerned Registrar. Previously, the disputed domain resolved to a pay-per-click (“PPC”) web page with sponsored links related to the Complainant’s field of activity. The Respondent stated that he purchased the disputed domain name because he is the owner of a marketing consulting and consultancy company called “YellOh! Consultancy”. He also claimed that he registered the disputed domain name in order to link it to his existing domain name <yell-oh.co>, indicating that he is also the owner of the domain name <yellohconsultancy.de>.
Held: The Respondent appears to have been operating mainly in the consulting field in Germany and Arab United Emirates and provided a plausible explanation about its reason for its selection of the sign “YellOh! Consultancy”. The Respondent also used a logo which differed from the Complainant’s trademark, YELLOH. The Respondent may not have got its website set up properly at the time of filing the complaint. The record supported that the Respondent came with the name independently of the Complainant’s trademark and has been using the disputed domain name in connection with an apparent bona fide offering of its services. Complaint Denied.
Panelist: Mr. Ike Ehiribe
Brief Facts: U.K. Govt’s HM Revenue & Customs department, established in 2005, is responsible for the collection of taxes, the payment of some forms of state support and the administration of other regulatory regimes. The Complainant is the registered proprietor of United Kingdom trade marks, HMRC (2008) and HM REVENUE & CUSTOMS (2017). The Complainant also operates a website within the United Kingdom Government’s official portal at “www.gov.uk” and can also be accessed at <hmrc.gov.uk>. The Disputed Domain Name <taxrebateform-hmrcuk.com> was registered on February 14, 2021. The website associated with the disputed domain name resolves to a registrar’s parking page featuring several advertisements.
Held: When a domain name incorporates a complainant’s mark in its entirety it is confusingly similar to that mark despite the additions of other words. The totality of the evidence adduced by the Complainant demonstrates that at the time the Complaint was filed, the disputed domain name’s website resolved to the parking page featuring several advertisements and in addition the disputed domain name had been flagged by at least two reputable third parties as having been used for phishing or other criminal activity. The Panel finds that such conduct by the Respondent cannot be described as legitimate noncommercial or fair use activity within the Policy. Domain transfer ordered.
The Internet Commerce Association is pleased and excited to announce that, commencing today, August 23, 2021, the ICA will be offering a free weekly UDRP Case Summary Digest by email. UDRP cases of note will be summarized weekly and sent out every Monday, beginning today.
The ICA believes that this new service will provide an additional and helpful resource for UDRP practitioners, UDRP panelists, and domain name registrants to assist them in keeping current on new cases of note as they are released. While WIPO and NAF send out daily emails listing newly decided cases, it is a time-consuming challenge to distinguish from among the many routine cases the few which are noteworthy.
We are pleased to welcome Mr. Ankur Raheja as the Editor of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for nearly ten years, representing clients from all over the world in UDRP proceedings. Ankur Raheja is an accredited UDRP panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. We are grateful to Ankur for undertaking this project to identify and summarize noteworthy UDRP decisions as they are published, which we hope will be a benefit for all who wish to keep up-to-date with UDRP jurisprudence. Ankur will be sending tweets with the highlights of individual cases of note and will also be preparing somewhat longer summaries of noteworthy cases for the weekly UDRP Case Summary Digest which is delivered by email.
To sign up for the ICA’s free weekly case summary digest service by email, please click here, and please make sure to select the “UDRP Newsletter” field. To receive Ankur’s tweets during the week with selected case highlights, follow @ICAdomains on Twitter.
Panelist: Mr. Petter Rindforth
Australian based Complainant claimed usage of mark BrickWorks since 1934 but had a recent Trademark registration of 2018. Respondent had registered the domain name in 1997 but was not making active use of the domain name, though was listed as Brickworks in business documents from third-parties and also for email communication. Proper evidence in support made available by the Respondent.
Held: The disputed domain name is a common and descriptive term. The Respondent provides masonry services and utilizes the domain name to communicate with customers and vendors. Respondent is commonly known by the <brickworks.com> domain name under the Policy. No evidence adduced by the Complainant in relation to common law rights in the mark since 1934. No registration in Bad Faith. The Panelist held that the Doctrine of Laches does not apply to the UDRP because the remedy under the UDRP “is not equitable”, whereas laches is an equitable remedy. Complaint Denied.
Panelist: Mr David H. Bernstein
The domain name VOCL.com was purchased on March 09, 2021 and on March 11, 2021 the new owner, Mr. Lindell, filed for a trademark registration and expressed his intentions to run a social media service called VOCL.com. On getting served with C&D notice soon thereafter by an existing VOCAL trademark owner, the disputed domain was transferred from Lindell to a new owner, ‘Epik’ at 75% of the original purchase price. ‘Epik’ initially claimed that it had been the original owner and that there was no Bad Faith as Mr. Lindell never acquired the domain name. Soon thereafter, the Respondent under a sworn affidavit admitted the facts as to the change of hands in March 2021.
Initially, the Panelist analyzed the role of a domain Registrar – Epik – as the Respondent in the matter and noted that these relationships create an inherent conflict of interest since the Panel relies on the Registrar to provide accurate information in response to the verification request from the dispute resolution provider. Further, the information provided in the Response was materially inaccurate and it was only after the Panel issued procedural orders seeking clarification that the Respondent corrected the record and admitted the factual circumstances. Even then, there remained unexplained inconsistencies in the documentary material submitted by the Respondent. The Panelist asked WIPO to share the decision with ICANN and questioned if there should be restrictions on Registrars, their agents or employees in owning domain names. Domain transfer ordered.
Note: Similar requirement is already there for .IN Registrars as an Advisory: Sales of .IN Names restricted for Registrars– https://www.registry.in/registry-advisory-la01sales-of-in-names-by-registrars.
Complaint Denied with RDNH
Panelist: Mr. Ho Hyun Nahm, Esq., (Chair), Gerald M. Levine, Ph.D., Esq., and Fernando Triana, Esq.
GoSecure Inc. a computer and data security company, had a recent USPTO trademark registration dated June 28, 2016. The domain name however, pre-existed it, having been registered in 1999 as a generic combination for use in relation to Respondent’s business related to security and biometrics. The domain name was in active use from 2002-11 and later for email services. The Complainant alleged phishing, passive holding, incomplete whois, renewal of domain name since 2016 is in Bad Faith and Respondent’s offer to sell at an excessive price. Respondent denied these allegations and provided evidence as to its previous use and future plans.
The domain name was registered and used prior to the Complainant’s trademark rights, though recently unused for an active website and only currently used for email operations. There was no evidence of any phishing. Respondent additionally demonstrated that it maintains a blog by a similar name and is developing a project for the website. This evidence supports Respondent’s claim of making “demonstrable preparations to use” the domain name in terms of UDRP and hence Legitimate Interests in the domain name. The Panel determined that this was a “Plan B” case, as the Complainant initiated these proceedings only upon failed commercial negotiations and was therefore “Reverse Domain Name Hijacking.
Panelist: Mr Robert A. Badgley
Indian Complainant had applied for ‘2DG’ Trademark in May 2021, after it announced 2DG as the name for an anti-Covid drug. The Complainant already had rights in ‘2DeeGee’ since 2015. The Complainant claimed that it is a large and successful company and that its principal markets include the United Kingdom. The UK-based Respondent registered <2dg.com> in 2002 and claimed to own 100 more 3-character domain names.
The Panel concluded that Complainant has failed to prove that Respondent registered the domain name in bad faith. Complainant claimed that Respondent registered the domain name with actual knowledge of Complainant’s rights in the 2DG mark but there is absolutely no evidence in the record of the degree of the renown of the marks or that the Complainant ever used the marks prior to 2002, when the domain name was registered. Panel further noted domain names containing only three letters are generally regarded as desirable for a variety of reasons. Complaint denied.
We were delighted to host a panel of new gTLD experts who shared their expertise and predictions for the next round of the new gTLD application process in a webinar earlier this week. The ICA would like to extend a big thank you to our wonderful host, Christa Taylor, and the panelists, Jeff Neuman, Jothan Frakes, and Phill Buckingham. You’ll find more information on our speakers in our previous post.
If you missed the webinar, we are making a recording of it available for everyone to watch here