Welcome to this week’s UDRP Digest summarizing the most intriguing cases of the past week on:
‣ A Baffling Decision in Favor of the Respondent (CliffNotebooks .com *with commentary)
‣ WIPO Panel: “Particularly Egregious Case” of Reverse Domain Name Hijacking (Enodo .com *with commentary)
‣ Was this a Case of Reverse Domain Name Hijacking? (OpenBots .com *with commentary)
‣ American Credit Reporting Agency Obtains Moroccan Management Consultancy’s Domain Name (FicoNext .com *with commentary)
‣ Google Prevails With Transfer of 33 out of 34 Domains (gootgle .com and more)
You’ll also find significant commentaries by Zak Muscovitch, ICA General Counsel, on many of the cases. We hope you’ll enjoy another fantastic Digest!
A Baffling Decision in Favor of the Respondent
Panelist: Mr. Debrett G. Lyons
Brief Facts: The Complainant offers study guides under the trademark, CLIFFSNOTES, registered with the USPTO since October 16, 2001. The disputed Domain Name was registered on February 12, 2008 and actively used at least since 2008. The Complainant alleges that the Respondent is using the infringing Domain Name to attempt to disrupt Complainant’s business, as the disputed Domain Name resolves to a website that prominently displays its trademark at the top of the page and offers literary book reviews similar to the Complainant’s Study Guides. Hence, the Respondent has no rights or legitimate interests in the disputed Domain Name and that the Respondent registered and used the disputed Domain Name in bad faith.
Held: The landing webpage to which the disputed Domain Name resolves does not display the Complainant’s trademark, as asserted. What it does show in the form of a banner is the Domain Name underneath which is the strapline, “Books In A Page”. Nor, in the Panel’s assessment, is the website content similar to that of “study guides”. The first entry on the landing page under “Best Sellers” is a thumbnail overview dated June 23, 2020 of an autobiography by Edward Snowden, followed by summaries of other popular books. The Panel navigated the site and found it to be somewhat unrefined but not obviously a sham. The Panel is entitled to accept the Complainant’s reasoned allegations but may deny relief where allegations are merely conclusory.
Further, the disputed Domain Name was created in 2008 and there is no explanation as to why it took the Complainant 14 years to bring these proceedings or how the disputed Domain Name was used over that time. At present, a simple website resolves from the disputed Domain Name which does not trade on the Complainant’s reputation in study guides and does not use its trademark. The Panel is also mindful that both the trademark and the disputed Domain Name are composed of a commonplace name plus descriptive nouns and so the chance that the disputed Domain Name was coined in good faith is not unreasonable. In terms of the evidence presented, the Panel finds that the Complainant has failed to make a prima facie case that the Respondent lacks a right or interest in the disputed Domain Name.
Complainants’ Counsel: Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA
Respondents’ Counsel: No Response
Comments by ICA General Counsel, Mr Zak Muscovitch: As regular readers will know, the ICA UDRP Digest sometimes reports decisions which appear unfair to Respondents. But it also occasionally happens to Complainants, as this case appears to demonstrate. Here, the Panelist appears to have not taken note of the express and precise use of the Complainant’s registered trademark on the website. The Panelist stated that the website “does not, as asserted, display Complainant’s trademark”, when the fact is that it is used in every title on the website (e.g. “Permanent Record – Edward Snowden – Cliff Notes” [emphasis added]). Moreover, the content of the website appears to provide precisely what the Complainant does under its trademark. Yet the Panelist stated that “nor in the Panel’s assessment, is the website content similar to that of study guides”. Cliff Notes are a very well-known to publication used by students, often who have not taken the time to read the required material. They are generally marketed as “study guides” and that is what the Complainant’s trademark references. Nevertheless, they often comprise book summaries. Perhaps the Complainant did not adequately explain this and failed to present a compelling case, as appears to be the situation given the brevity of the recital of the facts presented by the Complainant. Accordingly, the outcome of this case may at least in part, be the fault of the Complainant.
The outcome may also partially be a factor of the location of the Panelist, who is Australian and had he been American he would have likely been very familiar with CLIFF NOTES. This latter point appears to have been a factor in the Panelist’s other curious statement that, “the Panel is at the same time mindful that both the trademark and the domain name are composed of a commonplace name plus descriptive nouns and so the chance that the domain name was coined in good faith is not unreasonable” [emphasis added]. Apparently the Panelist considered that this might be a mere coincidence, when it is obviously not the case. But again, the Complainant itself may be at fault for this as a result of providing a skeletal Complaint. On the other hand, given the apparent misapprehension of the factual evidence referenced above, there is certainly cause for concern that the Panelist simply got this case wrong. This is not the first instance of concern that this Panelist may have gotten a case wrong. In Digest Volume 2.16, I wrote about the Panelist’s very troubling decision in Cloudcover IP, LLC v. Richard Simpson / CloudCover USA LLC, NAF Claim Number: FA2202001985811, which transferred the domain name despite no apparent evidence of targeting and despite appearing to be used for a bona fide business, in what appeared to be at most, a case of alleged trademark infringement.
WIPO Panel: “Particularly Egregious Case” of Reverse Domain Name Hijacking
Panelist: Mr. Steven A. Maier
Brief Facts: The French Complainant incorporated on April 7, 2021, offers software and computer related services. The Complainant owns French trademark registration for a figurative mark ENODO, registered on October 15, 2021. The disputed Domain Name was registered on January 22, 2000 and does not resolve to an active website. The Complainant contends that the term, ENODO, has no meaning in English or any other language and the non-use of the disputed Domain Name harms the image of its company in the eyes of customers, prospects and competitors. The Complainant further contends that the disputed Domain Name is “the most effective domain name” for its own use. The Complainant alleged that while it contacted the Respondent concerning the disputed Domain Name, the Respondent gave only brief responses and showed no willingness to come to an agreement with the Complainant.
The Respondent contends that he registered the disputed Domain Name in January 2000 in connection with a proposed business venture which did not ultimately proceed. The Respondent provides evidence that Enodo is a Latin word meaning to untangle, unknot or elucidate, which he states had relevance to his proposed business venture. The Respondent further states that, despite having been approached over the years by a number of potential buyers including the Complainant, he does not have any particular interest in parting with the disputed Domain Name. The Respondent provided correspondence between the Complainant and himself dated April 27, 2021, wherein the Complainant offered to purchase the Domain Name.
Held: The Panel accepts the Respondent’s submissions that the name ENODO is a Latin word and that he registered it in January 2000 in connection with a proposed business venture. It is impossible for the Respondent to have registered the disputed Domain Name with the purpose of targeting the Complainant’s trademark, since the Complainant did not exist until April 2021. The Respondent is not required to demonstrate any active use of a Domain Name which he legitimately registered and which he passively held without any bad faith intent. The Complainant failed to establish that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. Further, it is impossible for the Respondent to have registered the disputed Domain Name with the Complainant or its trademark in mind, and with the objective of taking unfair advantage of that trademark, since the disputed Domain Name was registered over two decades before the Complainant was incorporated or any application for its relevant trademark was filed. The Complainant cannot therefore establish that the disputed Domain Name has been registered and is being used in bad faith.
RDNH: In the light of the fact that the disputed Domain Name was registered over 20 years before the Complainant came into existence or applied for an ENODO trademark, the Complainant’s misrepresentation that the term ENODO had no meaning in any language and the clear evidence of its approaches to the Respondent seeking to buy the disputed Domain Name, the Panel has no doubt that the Complainant brought this proceeding in bad faith, in what is known as a “Plan B” scenario, having failed in its attempts to negotiate a purchase of the disputed Domain Name from the Respondent. Furthermore, given that the Complainant is legally represented, the Panel finds this to be a particularly egregious case of attempted Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: LS Avocats, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: What role do complainant counsel have in RDNH? Here, an otherwise apparently respectable French law firm brought a case which the Panel determined to be “particularly egregious” since the Complainant was legally represented. The Complainant should have realized that this was a futile case because the Complainant was only recently incorporated and only had recent trademark rights. The Complainant had tried to purchase the Domain Name shortly after its incorporation and brought this UDRP as a “Plan B”. The Complainant represented to the Panel that “Enodo” had no meaning. These facts which led to RDNH were ostensibly known to the Complainant’s counsel thus leading to the Panel finding that this was a “particularly egregious case”.
This case demonstrates that sometimes and perhaps more often than not, complainant counsel are primarily responsible for bringing RDNH cases. Indeed, in some circumstances a complainant found to have engaged in RDNH may not have even been aware that it was engaging in RDNH since it relied upon legal counsel to advise and guide it. Surely a complainant is not generally expected to be familiar with the UDRP procedure and the associated case law, and instead relies entirely upon counsel to advise and direct it to employing the UDRP. Yet, it is the complainant rather than its counsel that is found to have engaged in RDNH. Such circumstances demonstrate the crucial role that complainant counsels have in serving as the gatekeepers to the UDRP. It is usually complainant counsels who are uniquely positioned to help a client avoid bringing an RDNH UDRP, either by dissuading them or by not advising them to bring one. And indeed, many complainant counsels often do this and thereby avoid bringing dishonor upon their clients. But at other times, complainant counsels fail to do this and their client is left holding the bag. Sometimes such conduct can be attributed to mere unfamiliarity with the UDRP which can often be a form of professional negligence. At other times it is unscrupulous counsel. But it is seldom the case that legal counsel is not responsible for RDNH and their client is, despite the fact that RDNH findings are made against the Complainant rather than their counsel.
Ultimately, the preferred objective of the UDRP when it comes to RDNH is not to penalize, but rather to avoid RDNH in the first place. If RDNH is caused by a merely unwitting complainant counsel, then greater education and warnings to them prior to initiating a UDRP would serve the purpose of avoidance. If on the other hand, RDNH is caused by unscrupulous counsel, then it would appear that education and blunt warnings are not the answer. Rather in such circumstances, Panels may choose to call out legal counsel who have caused or at least contributed, to their client engaging in RDNH. By doing this, counsel will take a greater share of the shame that is RDNH instead of just leaving the RDNH burden for their client to bear alone, and this may provide the deterrence that the UDRP requires in order to avoid RDNH cases being brought.
After all, even the greatest and most conscientious of counsel cannot be faulted for bringing a UDRP and simply losing the case, but bringing an RDNH case is something else entirely. It means that a case was brought with the assistance of professional legal counsel, in bad faith specifically in order to deprive a lawful registrant of its property – something that would be very unusual for a lawyer to engage in, in any other forum, and if it did would often result in serious sanctions and charges of professional misconduct.
Was this a Case of Reverse Domain Name Hijacking?
Panelist: Mr. Douglas M. Isenberg
Brief Facts: The Complainant is a full-featured robotic process automation (‘RPA’) platform and the first-ever Zero Bot Licensing RPA platform. The Complainant claims ownership to the trademark OPENBOTS registered with USPTO on July 6, 2021 (first claimed use: September 1, 2020). The disputed Domain Name was registered on September 21, 2003 and is passively held. The Complainant asserts bad faith, inter alia, it “resolve[s] to an inactive webpage”; “Respondent has taken active steps to conceal its true identity and used a privacy service”; and “[d]espite Complainant’s attempt to contact Respondent, Respondent has not come forward with any explanation for the selection of the Domain Name or its intended use.” The Respondent contends the Domain Name was registered over 20 years ago, with the intent of creating an open platform for the development of chatbots and using the name OpenBots as a part of his email addresses as well, since 2003. The Respondent denied having received any offer from the Complainant but adds regardless, I would be willing to sell the Domain Name to the claimant and settle this dispute as quickly as possible.
Held: The only evidence of trademark rights provided by the Complainant makes it clear that this registration is on the “Supplemental Register” at the USPTO. Hence, the requirement to show secondary meaning in order to establish trademark rights under the Policy in terms of WIPO Overview. However, other than conclusory, unsupported statements (such as, “Complainant has invested significant time and resources in developing and protecting its name and trademark”), the Complainant has shown no such secondary meaning. Accordingly, the Panel is unable to ascertain on the record whether the Complainant “has rights” for purposes of the Policy. Moreover, the record evidence that the disputed Domain Name was created on September 21, 2003, while the Complainant’s OPENBOTS Trademark registration was not issued until July 6, 2021 (claiming first use: September 1, 2020) – 18 years later. In terms of the WIPO Overview 3.0, a Domain Name typically cannot be registered in bad faith if, at the time of registration, the relevant trademark rights did not yet exist.
Complainants’ Counsel: Berenzweig Leonard, LLP, Virginia, USA
Respondents’ Counsel: Self-represented
Comments by ICA General Counsel, Mr Zak Muscovitch: As I have previously written in these Digests, finding RDNH is ultimately a discretionary matter, but some cases obviously demand that it be expressly considered by the Panelist. Here, the recited facts clearly raise the issue of whether the Complainant engaged in RDNH by relying on a Supplemental Registration and by alleging bad faith when the Domain Name pre-existed any trademark rights by 18 years. The Panelist in this case is an acknowledged expert in the UDRP and as such must have considered RDNH but ultimately exercised his discretion in the circumstances to not make such a finding. One must give the Panelist the benefit of the doubt, particularly since a Panelist will often have information in the record to consider beyond what is included in the decision itself. Yet the Panelist and the UDRP generally, would be best served by sharing with the parties and with UDRP stakeholders, the reasoning which led to not making an RDNH finding. Not only would the parties and stakeholders benefit from the explanation, but it would demonstrate that the Panel was duly exercising its discretion rather than avoiding RDNH, particularly in light of the fact that recently in Bert & Wetta Sales, Inc. v. Ron Seibold, NAF Claim Number: FA2201001980161, the same Panelist also did not expressly consider RDNH despite the facts appearing to demand it, as previously discussed in ICA UDRP Digest Volume. 2.9.
American Credit Reporting Agency Obtains Moroccan Management Consultancy’s Domain Name
Panelist: Mr. Dennis A. Foster
Brief Facts: The Complainant, founded in 1956, provides data for business use globally, with its revenue reaching US $1.32 Billion in 2021. Since as early as 1995, the Complainant has used its FICO service mark in connection with consumer credit scoring services and owns multiple registration for the FICO service mark globally including the USPTO registration dated August 31, 1999. The Respondent registered the disputed Domain Name on March 29, 2019 and is in use to offer services related to business management consulting.
The Complainant alleges that the Respondent employs the disputed Domain Name to redirect internet users to a competing website, which offers business and financial modeling services similar to those offered by Complainant. The Respondent contends FICO was chosen as an acronym based upon his career in finance (“FI”) and his master’s degree in Controlling/Comptrolling (“CO”) and that FICONEXT is registered with the appropriate Moroccan authorities as the name of Respondent’s company.
Held: The Panel finds that Respondent’s offering similar, and thus competing services under a disputed Domain Name that is confusingly similar to a long-established and internationally well-known mark does not conform to the requirements of Policy. Moreover, such usage of the disputed Domain Name also fails to constitute “a legitimate non-commercial or fair use” of that name pursuant to the Policy. The Panel does agree with the Respondent’s argument that the pertinent parts of the disputed Domain Name and his Company Name are exactly the same. However, the Panel’s examination of the Response and its annexes cannot sustain a finding that Respondent’s company is “commonly known” by its moniker in a specific substantial community − in Morocco or internationally. Hence, the Respondent has failed to meet the requirements described under the Policy for establishing its rights or legitimate interests in the disputed Domain Name.
In support of bad Faith contention, the Complainant provided sufficient supporting evidence that the Respondent uses the disputed Domain Name to host a website that offers services that compete directly with some of the services offered by the Complainant. The Panel determines that such usage causes disruption to the Complainant’s business and is intended for commercial gain due to likely confusion between the Complainant’s mark and the disputed Domain Name as internet users are redirected to Respondent’s own website. As a result, the Panel believes that Respondent’s actions fit neatly within the bad faith parameters set forth in Policy.
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Self-represented
Comments by ICA General Counsel, Mr Zak Muscovitch: Wow, this is the third time in recent weeks where the Complainant succeeded in obtaining the transfer of a Domain Name used by a foreign company in connection with an apparently bona fide business that was not genuinely competitive with the Complainant’s credit scoring business (see Digest Vol. 2.24; Fair Isaac Corporation v. Pritpal Singh / King IT Solutions, NAF Claim Number: FA2205001995244 >>FicoIndia.org<<; and also see Digest Vol. 2.26; Fair Isaac Corporation v. Jessica Ruiz / FICOSAC, NAF Claim Number: FA2205001998211 >>FicoSac.com<<. What distinguishes this case from the prior two is that in this case the Respondent responded but was unrepresented by counsel.
A cursory review of the Respondent’s website reveals that it is apparently a going concern offering management consulting services in Morocco. There is no indication that the Respondent’s services compete with the Complainant’s in any meaningful way. The Respondent provided a plausible explanation for his selection of the Domain Name. There is no evidence cited in the decision that the Complainant has any trademark rights in Morocco or that FICO is famous or even well-known in Morocco. What appears to have occurred here is that the Panelist has conflated what amounts to a case of alleged extra-territorial trademark infringement with a genuine case of cybersquatting. There is no apparent reason to believe that the Respondent targeted the Complainant’s foreign trademark here and accordingly, by all appearances this case appears to be the third in a chain of unjust transfers in favor of this Complainant. Of course, having obtained two previous transfers in comparable circumstances, one can hardly blame the Complainant for trying this third time. Unless Panelists take a critical view of the evidence and adopt the required circumspect and restrained approach to the application of the UDRP to non-cyberquatting type cases, we can expect this Complainant and others to keep this up and thereby allow the UDRP to continue to be unfairly used in inappropriate cases.
Google Prevails With Transfer of 33 out of 34 Domains
<gootgle .com>, <gtmail.com> and 32 more
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant operates one of the most well-known search engines (under the GOOGLE mark), e-mail services (under the GMAIL mark) and video sharing sites (under the YOUTUBE mark). The Complainant owns rights in the YOUTUBE, GOOGLE and GMAIL marks through Complainant’s registration of the marks with the USPTO since November 17, 2009 [YOUTUBE], September 14, 2002 [GOOGLE] and December 11, 2007 [GMAIL]). The disputed Domain Names were registered between 2000 and 2010, except for <gtmail.com> registered on November 14, 1997. The Complainant contends that the Respondent registered and uses the Domain Names in bad faith because the Respondent makes an offer to sell some of the Domain Names and all the Domain Names resolve to websites with hyperlinks or third-party content, including adult-oriented content. Further bad faith is evidenced through the Respondent’s registration of multiple Domain Names that are at issue in the present case and the Respondent’s use of a privacy service.
Held: The Domain Names either resolve to websites featuring pay-per-click links, third party websites which purport to offer competing services, websites offering the Domain Names for sale or fraudulent websites that appear on their face to deliver malware or require the entry of passwords or personal information. Such uses are not indicative of rights or legitimate interests per Policy. The Panel finds on the balance of probabilities that, at the time of registration of each of the Domain Names (save the <gtmail .com> Domain Name) between 2000 and 2010, the Respondent had actual knowledge of Complainant’s YOUTUBE, GOOGLE and GMAIL marks. Further, it is improbable that a party would register 33 Domain Names that consist of misspellings or incorporations of Complainant’s YOUTUBE, GOOGLE and GMAIL marks over a 10 year period in the absence of any awareness of these marks. Hence, it is a case for bad faith registration and use, as per Policy.
The Respondent’s registration of the <gtmail .com> Domain Name on November 14, 1997 predates Complainant’s first claimed rights in the GMAIL mark (which relates to a service launched in 2004), and thus Complainant cannot prove registration in bad faith per Policy, as the Policy requires a showing of bad faith registration and use. The Respondent could not have entertained bad faith intentions respecting the GMAIL mark because it could not have contemplated Complainant’s then non-existent rights in GMAIL mark at the moment the <gtmail.com> Domain Name was registered. Therefore, the Panel finds the Respondent did not register the Domain Name <gtmail.com> in bad faith.
Transfer, Denied in Part
Complainants’ Counsel: Perkins Coie LLP, District of Columbia, USA
Respondents’ Counsel: No Response