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.