ICA Weekly UDRP Case Summary Digest – Volume 1.2

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LERINS & BCW v. Domain Administrator, NameFind Cayman Islands Ltd., WIPO Case No. D2021-1861

>>Lerins.com<< 

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.

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Trueing Studio LLC v. WangWenLong (王文龙), WIPO Case No. D2021-2023

>>Trueing.com<< 

Transfer

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.

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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

>>checkbalance-theperfectgiftsca-card.com<<
>>giftcardmall-mygift-balance.info<<
>>giftcardmall.group
<<
>>giftcardmall.services<<
>>heperfectgift.com<< and 22 more [27 Disputed Domain Names]

Transfer

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.

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Bella Belle LLC v. Brigitte Braun / Whoisprotection.cc / Domain Admin / Anne WEBER, NAF Claim Number: FA2107001954879
>>Bbshoesforsale.com<<
>>bellabelleshoessale.com<<
>>bellabelleshoesaustralia.com<<

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.
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Europe Plein Air – E.P.A. v. Tony Youssef, WIPO Case No. D2021-1682

>>Yellohconsultancy.com<<

Complaint Denied 

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.

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The Commissioners for HM Revenue and Customs v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Sam Bentley, Case No. D2021-2001

>>Taxrebateform-hmrcuk.com<<

Transfer

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.

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