Complainant Wrongly Claimed Continuous Right, Over Cancelled Trademarks
Complaint Denied (RDNH)
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a provider of medical textiles, including post-surgery garments. Initially, it held trademark registrations for CAREFIX in different jurisdictions starting in 1994 but all expired between 2004 and 2006. The Complainant’s new trademark registrations were applied for in 2009 and mostly got registered in 2010, while the disputed Domain Name has a registration date of June 19, 2008. The disputed Domain Name resolves to a landing page where it is offered for sale at the price of USD $24,500. The Respondent is a domain name reseller and has operated a domain name marketplace since 2003. He currently holds a portfolio of approximately 5,500 domain names, including domain names containing keywords: ‘care’ and ‘fix’. According to evidence provided by the Complainant, the Respondent or businesses in which he participated have been found in at least four prior proceedings under the Policy to have registered domain names in bad faith. According to a notarized declaration made by the Respondent, he appealed three of those four decisions to courts in the United States and subsequently and entered into settlement agreements involving the transfer of the domain names.
Held: It is evident that at the time when the disputed Domain Name got registered, the Complainant had no registered trademark rights anywhere in the world. Although the Complainant asserts that the CAREFIX mark is continuously used since its original registrations in 1994-96 up until the present, it provides no evidence in support of that assertion. Moreover, it provides no evidence of prior reputation or use of its CAREFIX mark that might have established that it held unregistered rights in that mark in 2008. The Complainant had apparently abandoned the CAREFIX mark before the Respondent registered the disputed Domain Name. Moreover, the Respondent has provided an explanation that he registered the disputed Domain Name as a combination of the dictionary words “care” and “fix”, further supported by the evidence showing that he has registered many other similar domain names containing combinations of dictionary words. The facts of the previous proceedings can be distinguished from the present dispute because the evidence on record does not show that any relevant trademark rights existed at the time of registration of the disputed Domain Name. In view of all the above circumstances, the Respondent did not register the disputed Domain Name in bad faith.
RDNH: The Complainant has legal representation in this proceeding. A crucial requirement for the Complaint is to show that the Respondent targeted the Complainant’s trademark at the time when he registered the disputed Domain Name in 2008. The Complainant provided details of its 1994-97 national trademark registrations and asserted that these “are replaced” by its 2009 international registration, without disclosing that it held no registered trademark rights in CAREFIX in any jurisdiction during a period leading up to and including 2008, when the Respondent registered the disputed Domain Name. Moreover, the Complainant expressly alleged that the Respondent could have ascertained the Complainant’s trademark rights through a trademark search, at the time when he registered the disputed Domain Name, the Complainant held no valid trademark registration for CAREFIX anywhere. Therefore, this constitutes a matter of Reverse Domain Name Hijacking.
Complainants’ Counsel: DAHL Lawfirm, Denmark
Respondents’ Counsel: Cylaw Solutions, India
Spanish Company Impersonates Famous Bank and This Happens
Panelist: Mr. Scott Donahey
Brief Facts: The Complainant is a banking and financial institution, having operations in more than forty countries. In Germany, more than 9.5 million customers utilize Complainant’s services and recently a German business magazine named Complainant “Germany’s most popular bank in 2021”. The Complainant owns numerous registered trademarks in countries throughout Europe, since December 23, 1999. The Respondent registered the disputed Domain Name on March 15, 2021 and it resolves to a website in the Spanish language that mimics the general appearance and colors used in the Complainant’s website. The Respondent offers investment services in Spain without having obtained authorization from the Spanish authorities.
Other Complaints: The Complainant filed a criminal complaint with the Cybercrime Department of the Spanish Police on July 15, 2021 alleging that Respondent committed financial fraud and an infringement of the intellectual property rights held by the Complainant. On July 19, 2021, the Spanish authorities issued a warning in this regard. Spanish investors have posted online complaints that the Respondent has deceived them and that they have lost money in their belief that they invested with the Complainant.
Held: The registrant details of the disputed Domain Name are “Ing Capital Group”, however, there is no evidence that such details correspond to a real entity. Rather it appears that the Respondent has attempted to impersonate the Complainant. The Respondent registered the disputed Domain Name that is identical to the Complainant’s well-known mark in a bid to impersonate the Complainant. The Respondent made false claims as to its reputation but in fact it is the subject of numerous complaints that it solicited and received capital from users and investors and has provided no services in return. In the circumstances, the Respondent most likely had Complainant and its trademark ING in mind at the time of registration of the disputed Domain Name, and that it has since sought to fraudulently impersonate Complainant for financial gain.
Complainants’ Counsel: Elzaburu, Spain
Respondents’ Counsel: Self-represented
Similar Domain Names in Respondent’s Portfolio Show Legitimate Interest
Panelist: Mr. Clive Lincoln Elliott Q.C.
Brief Facts: The US Complainant is a limited liability company formed in 2016 in the packaging, warehousing and logistics business. It uses the website <impactfs .com>. The disputed Domain Name was registered December 7, 2017 and is currently parked. The Respondent registered at least 12 domain names ending in “ifs” which refers to “international financial services”, including <eventifs .com>, which is a live website for event-based trading. The Respondent claims to be operating in finance which is a completely different industry from the fulfilment services provided by the Complainant. The Respondent points out that it registered the Domain Name in 2017, which is nearly four years ago and in that time the Complainant made no attempts to contact the Respondent or take any other action regarding the Domain Name.
Held: The use of a domain name in an entirely unrelated to a trademark holder’s business may still qualify as a bona fide offer of goods or services under Policy. The Respondent provides evidence as to ownership of over a dozen domain names involving the acronym “IFS”, suggesting that Respondent is not targeting the Complainant It can be inferred from the Complainant’s delay that the Respondent’s activities, including his registration of the Domain Name were not of sufficient concern to compel the Complainant to act sooner and this circumstance is taken into account. In the absence of any real evidence of the nature and extent of Complainant’s business or its reputation, there is no evidential basis to refute Respondent’s claim that it had never heard of the Complainant. For these reasons, it is concluded that Respondent did not register or use the Domain Name in bad faith pursuant to Policy.
Complainants’ Counsel: Self-represented
Respondents’ Counsel: T.C. Johnston, Arizona, USA
UDRP Doesn’t Help Recover Alleged Stolen Domain Name in Escrow
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant, Airbnb, Inc., operates a community marketplace for people to list, discover, and book accommodations around the world. The Complainant has rights in the TILT mark based upon registration with the USPTO via assignment dated July 2, 2019. The Complainant alleges that the Domain Name was stolen from its account. The Respondent is a lawyer/law firm and held the Domain Name as a third party escrow agent since July 19, 2021 in connection with an aborted transaction. The buyer cancelled the domain purchase and the Complainant and Respondent escrow agent unsuccessfully attempted to resolve the matter.
Held: The Complainant’s situation is sympathetic as it appears the Complainant is a victim of a Domain Name hijacking. In the present case however, the Respondent acquired possession of the Domain Name solely in the capacity as escrow agent to facilitate the transfer of the Domain Name from one entity to another. Upon being made aware of the circumstances relating to the hijack of the Domain Name, the Respondent took steps to transfer the Domain Name to Complainant. Negotiations broke down. It cannot be inferred from the Respondent’s conduct in those negotiations that it acquired the Domain Name in bad faith. The unusual nature of the present proceeding, and that the proceeding may have had a different outcome had the proceeding commenced against the intended seller or purchaser of the Domain Name, rather than the escrow agent.
Complainants’ Counsel: Nichole Chollet of Kilpatrick Townsend & Stockton LLP, Georgia, USA
Respondents’ Counsel: Self-represented
Insufficient Evidence to Show Reputation at Time of Domain Registration
Panelist: Mr. Reyes Campello Estebaranz
Brief Facts: The Complainant is a Brazilian record label established in 1993 with over 20 million albums and songs produced by the Complainant and available on digital platforms, and in films, documentaries, soap operas, and advertising soundtracks in Brazil and internationally. The Complainant is the owner of a registered trademark for the term “Azul Music” since 2005 in class 9 and has a corporate website at <azulmusic .com.br>. The disputed Domain Name was registered on August 12, 2017 and is currently offered for sale on <PerfectDomain .com> for USD $2,599.
Held: There is no evidence which suggests the Respondent would have any particular knowledge of the Complainant or the AZUL MUSIC mark at the time of the registration of the disputed Domain Name. The Complainant’s Facebook page has about 2,500 followers, its Twitter page has less than 400 followers, and its Instagram page has less than 800 followers. There is no evidence that suggests that the AZUL MUSIC mark was well known or had diffusion generally or in the United States at the time of the registration of the disputed domain name, or any other circumstance that may lead to consider that the Respondent acted in bad faith. The Complainant has not met its burden of proof.
Complainants’ Counsel: Pitanga Bastos Advogados, Brazil
Respondents’ Counsel: Law Offices of Grant G. Carpenter, United States