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
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.
Zak Muscovitch, General Counsel of the ICA, was invited by the World Intellectual Property Organization (WIPO) to present at its symposium on the occasion of the 20th anniversary of the UDRP held in Geneva on October 21, 2019. This invitation was a rare opportunity to share the perspective of domain name investors to an audience of UDRP panelists. UDRP panelists are required to peer into the souls of domain name investors to determine whether the domain name investors’ actions are badly intentioned or not. UDRP panelists are usually quite familiar with, and sympathetic to, the views of trademark holders, as many indeed come from the trademark bar. Yet UDRP panelists too often have little familiarity with the domain name industry or with the perspective of the domain name investors whose actions they are judging from afar.
Presenting on two panels, Muscovitch explained that domain name investors are important stakeholders in the UDRP process and are not cybersquatters. Further, he made the point that the UDRP is not intended to only serve trademark interests, but also to protect the rights of registrants. This is a crucial and precarious balance and the UDRP must never fall prey to attempts to tilt it further in favour of trademark owners.
Since its establishment 20 years ago, the UDRP has proved to be a double-edged sword. On one hand, domain investors have, most of the time, been able to successfully use the UDRP to avoid court proceedings and to save their domain names from predatory attempts by trademark owners to seize valuable generic domain names. But on the other hand, over the years we have seen many very troubling and unfair decisions. Indeed, over the course of 20 years, we have even seen UDRP panelists change their mind about what is fair, transferring domain names in the past which they would not transfer now. Over the years, some panelists have often begrudgingly begun to accept that investing in inherently valuable and generic domain names is a bona fide business and is entitled to protection.
After many years of zealous advocacy by domain name lawyers and by the ICA, we are finally at a point where the UDRP has some degree of consistency, credibility, and stability, though we do continue to on occasion see very troubling outcomes and approaches by panelists. Moreover, there are numerous areas where procedural reform is required, as set out in our UDRP Reform Platform of 2018.
Yet despite that, there are those amongst the IP bar that are tempted to try to re-jig the UDRP to increase its breadth and scope, thereby directly harming domain name investors. One of the ways that has been floated is to change the “conjunctive” required bad faith registration AND bad faith use, to “bad faith registration OR bad faith use”. This could mean that a registration that was clearly registered in good faith, for example, prior to any trademark rights arising, could be taken away in the event of an unintended instance of a bad PPC link, or even perhaps, due to non-use.
Muscovitch made it clear to the assembled panelists, that in his view, this would be a severe and ill-advised change to the UDRP that would upset the 20 years of case law and balance that has been achieved to date. Moreover, attempts to introduce such radical substantive changes to the UDRP by trademark owners would surely be met with corresponding demands from registrants. In the ICA’s view, reform can be introduced to the UDRP via procedural changes and by clarification in the interpretation of the UDRP text rather than by changing its text. After hearing the ICA’s submissions, it appears that most of the assembled UDRP panelists have agreed – the UDRP should not see such radical changes.
The ICA would like to extend its gratitude to WIPO for inviting the ICA to participate in this important symposium on the UDRP and to thank the assembled panelists for the open and fair hearing that was received. The ICA believes that collaborative and constructive efforts to improve the UDRP remain possible without introducing any measures that would degrade investors’ ability to successfully defend their investments. The ICA looks forward to the work of the ICANN Working Group on the UDRP which will get underway shortly. The ICA hopes that trademark interests and investor interests alike will work together to ensure that balance exists in the UDRP as it was intended.
In the recent case concerning Chatroulette.org , the Panel demonstrated the responsible and prudent approach in evaluating evidence in the UDRP. The Panel stated as follows:
“The Panel takes the view that the Respondent’s denial of knowledge of the existence of the Complainant and his trade mark at that date is credible enough to require more from the Complainant to overcome. The Panel concludes that it would be unsafe on the evidence before it to reject the Respondent’s denial and conclude that the Respondent intentionally set out to acquire the Domain Name in bad faith to target the Complainant.” [emphasis added]
A Panel’s mandate and indeed its sole jurisdiction, is to only order domain names to be transferred in “clear cases”. It is crucial to recall what WIPO Panelist David Bernstein stated 18 years in his presentation to the WIPO, and what remains equally important today:
“Because of the truncated nature of the proceedings, electronic dispute resolution is not well suited to cases with hotly disputed factual assertions, requiring complex credibility determinations. Given the absence of a live hearing, cases that turn on disputed facts should instead be resolved in court, where discovery and cross-examination can permit a fact finder to navigate the shoals of conflicting testimony. [emphasis added]
A responsible and prudent UDRP panel that upholds the spirit and intent of the UDRP, will generally refrain from jumping to conclusions without an adequate evidentiary basis. This can sometimes be difficult to do, as UDPR panelists are often wise and experienced and may be tempted to resolve a dispute that otherwise should be left unresolved, since the UDRP is simply not equipped to handle disputes where there are competing rights or contested versions of material facts (See also for example, Quarterview v. Quarterview Co. Ltd., eResolution Case Numbers AF-0209a and AF-0209b) and Adaptive Molecular Technologies Inc. v. Priscilla Woodward (the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy).
The ICA acknowledges and appreciates the efforts and wisdom of the distinguished Panel in the Chatroulette.org case, which consisted of Tony Willoughby (Presiding Panelist), Alexandre Nappey, and Fernando Triana. They upheld the fairness of the UDRP procedure and employed the appropriate circumspect approach.
The Internet Commerce Association (“ICA”) is taking a leadership role in examining and reforming the UDRP. Over the following months and years during which the UDRP will be reviewed by the ICANN Rights Protection Mechanisms Working Group (the “Working Group”), the ICA will be developing policy reform proposals based upon extensive study and its consultations with ICA members who have first-hand experience with the UDRP. By publishing the 2018 UDRP Reform Policy Platform, the ICA intends to start a vigorous and constructive discussion. The ICA intends to seek broad support for these constructive reforms and to advocate for them both inside and outside the Working Group.
The UDRP although flawed in many significant respects, has been largely successful in being used to resolve thousands of domain name disputes since its inception in 1999. The language of the Policy provides for a generally fair and balanced approach to resolving these disputes, and accordingly the ICA’s policy proposals at this time encompass no substantive changes to the wording of the Policy itself. Rather, the ICA’s policy proposals encompass administrative and procedural reforms which will increase Accountability, Uniformity, Predictability, and Balance to the UDRP.
This is Version 1.1 of the ICA UDRP Reform Policy Platform. The ICA will continue to study the issues covered in this version and will additionally be publishing a Version 2.0 after consultation on Version 1.1 with UDRP stakeholders. Version 2.0 may therefore revise the policy proposals in Version 1.1, and will additionally propose further and more extensive policy proposals that the ICA is currently examining.
Proposal for ICANN Rights Protection Mechanisms Working Group
What do these Uniform Domain-Name Dispute-Resolution Policy (UDRP) filings have in common? —
The Internet Commerce Association (ICA), a non-profit trade group representing the domain industry, applauds the World Intellectual Property Organization (WIPO) for removing misleading guidance from the newly released updated version 3.0 of its Overview of WIPO Panel Views on Selected UDRP Questions that in the previous version had granted undeserved legitimacy to a misconstruction of the UDRP commonly known as the Retroactive Bad Faith theory. Read more