Welcome to this week’s UDRP Digest (2.17), summarizing the most intriguing cases of the past week, with commentary from Zak Muscovitch, ICA General Counsel and Editor, Ankur Raheja. Read about:
‣ Innocent Registrant Found to be a Cybersquatter? A Very Troubling Decision. (mohu .com *with commentary)
‣ Father and Son Fight it out for Control of a Domain Name (GaryPlayer .com)
‣ Cybersquatting or Trademark Infringment? (redmito .com *with commentary)
‣ The Compass Loses the Direction! (compass .computer)
Innocent Registrant Found to be a Cybersquatter? A Very Troubling Decision.
Panelist: Mr. David P. Miranda, Esq.
Brief Facts: The Complainant operates a TV antenna business and owns rights in the MOHU trademark based on registration with the USPTO dated January 22, 2013. The disputed Domain Name was acquired by the Respondent on June 14, 2021 in an auction and is currently inactive. The Respondent operates Henan Xinyifu Technology Co., Ltd. and Henan Mohuili Information Technology Co., Ltd., providing website development and promotion services. The Respondent owns rights in the registered mark 魔狐 (Pinyin is MOHU) filed on June 29, 2021 with the CNIPA.
The Complainant asserts the Respondent had actual knowledge of the Complainant’s rights in the MOHU mark based on the fame of the mark. The Complainant alleges that the Respondent previously offered the disputed Domain Name for US $25,000 and currently holds it inactively and may use it to distribute malware. The Respondent contends that the disputed Domain Name comprises a common and generic term and that the offer to sell the disputed Domain Name was made by another registrant, prior to Respondent’s acquisition of the disputed Domain Name.
Held: The WHOIS information can be used to show that a Respondent is not commonly known by the disputed Domain Name under Policy. Herein, the WHOIS information lists “FengWenJia” as the registrant and the lack of permission or authorization to use a mark constitutes a further showing that a Respondent is not commonly known by the disputed Domain Name. The inactive holding of a disputed domain name is not considered a bona-fide offering of goods or services or legitimate non-commercial or fair use under Policy. The Respondent did not apply for a trademark containing the MOHO mark until June 29, 2021, which has a different spelling than the Domain Name at issue. The Respondent lacks rights and legitimate interests in the disputed domain name.
The Complainant provides a screenshot showing the disputed Domain Name was previously offered for sale and copies of emails indicating a prior owner of the domain offered to sell the Domain Name to the Complainant for $25,000. An offer to sell a disputed Domain Name in excess of registration costs indicates bad faith under Policy, if the Respondent intended to make such an offer when registering the disputed Domain Name. The failure to make active use of a disputed Domain Name is evidence of bad faith under the Policy.
Complainants’ Counsel: Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA
Respondents’ Counsel: Self-represented
Comments by ICA General Counsel Mr Zak: As previously stated in my comments in this space, we must always be cognizant when evaluating a UDRP decision that the Panel may have had facts before it which we as observers are not aware of. Nevertheless, as also previously stated, UDRP decisions must stand on their own and this decision is very troubling on its face.
The Panelist apparently found bad faith based upon the fact that a previous registrant, i.e. not the Respondent, had offered to sell the Domain Name to the Complainant. This rational is very difficult to comprehend. The Respondent had apparently acquired the Domain Name at an auction and there was no evidence of any relationship between the Respondent and the prior registrant. Accordingly, there was no evidentiary or legal basis for imputing bad faith to the Respondent as a result of the actions of an unrelated registrant. It is very concerning that such an overt misapprehension would appear in a decision and bring disrepute to the UDRP.
The Panelist also appears to have disregarded the Respondent’s registered trademark for 魔狐 which is apparently “MOHU” in Pinyin. Absent exceptional circumstances (such as arguably the case of RED MITO, which is summarized and commented below in this Digest), having a trademark registration corresponding to the foreign language equivalent of the disputed Domain Name would seem to confer rights on a Respondent. Indeed, such a trademark registration would confer just as much right on the Respondent as the Complainant’s registration does on the Complainant. As a general rule, UDRP panels do not look behind a Complainant’s trademark registration and nearly invariably treat it as valid if it is valid on its face. Likewise, panels ought to not disregard a ‘valid on its face’ trademark registration belonging to a Respondent except in exceptional circumstances – and even then it may be more prudent in the circumstances to defer to the courts for adjudication of cases concerning competing trademarks and allegations of infringement.
The Panelist notes without explanation, that the Respondent’s trademark registration “is for a different spelling” and also makes a reference to a “MOHO” (i.e. not MOHU). It is unclear from the decision why the Panelist concluded that the Respondent’s registration is for a different spelling. A simple Google translate search would have shown that 魔狐 is transliterated as MOHU as claimed by the Respondent, and means “magic fox”. If there was a language issue here, perhaps it would have been prudent for the Panelist to not accept the Complainant’s request to have the matter conducted in English despite the registrar apparently being in China with Chinese as the language of the Registration Agreement. Paragraph 11(a) of the Rules of course requires that the proceeding be in the language of the Registration Agreement subject to the authority of the Panel to determine otherwise.
Moreover, the Panelist appears to have disregarded the fact that the Respondent’s corporate name contains “Mohuili”, thereby suggesting a correspondence between the Domain Name and the corporate name. The Panelist however appears to note that the Respondent is an individual rather than the corporation but apparently does not consider the Respondent’s claim that he established the corporation and therefore has indirect rights.
The Panelist in part based its finding of bad faith on the non-use of the Domain Name. First, it should be noted that the Domain Name was registered on June 14, 2021 and the Complaint was submitted on March 2, 2022 – a period of only about 8 months. It is hardly unreasonably to not have a website erected in less than a year from the registration of the Domain Name.
More importantly however, and as previously written about in this space, many UDRP cases have held that a respondent is under no obligation to use a domain name for a website or at all (see for example, Write Brothers, Inc. v. Dennis Pollack, NAF FA0210000127800: “Notwithstanding Complainant’s implications to the contrary, there is no requirement that a domain name registrant use or have any use for the domain name at the time of registration; not even for a domain name that might be similar to an existing trademark. A domain name holder is under no obligation to immediately begin operating a website upon registering the domain name”).
Moreover, the doctrine of “passive holding” invoked by the Panelist, requires a finding of “bad faith registration” as a precursor to making a finding of bad faith based upon non-use (See Telstra Corporation Limited v. Nuclear Marshmallows at Paragraph 7.8 – 7.10). In the Telstra case, the panel first found bad faith registration based upon numerous trademark registrations, widespread reputation, a highly distinctive domain name, and the “inconceivability” of any legitimate use of the domain name other than by the complainant. It was only after making a well-supported finding of “bad faith registration” in the first place, that the panel in Telstra was able to continue on to find “bad faith use” based upon non-use or “passive holding” of the domain name. Such analysis appears to be absent in this decision leaving unsupported and unsubstantiated the Panel’s determination of bad faith based upon an inactive website.
In conclusion, this decision is very concerning. An otherwise distinguished and experienced Panelist with over 100 decisions to his credit appears to have issued a very questionable decision which may very well be appealed to the courts of China which has Mutual Jurisdiction in this case. If overturned, it will not be a surprise and unfortunately may cast the UDRP in an unfavourable light. Anyone who values the UDRP and who cares about its successful reputation should be concerned when an apparently errant and unusual decision like this comes out and should wonder what caused this unfortunate situation to occur.
Father and Son Fight it out for Control of a Domain Name
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant Gary J. Player is a world-renowned professional golfer and public figure, while the Complainant Gary Player Enterprises, LLC is a Delaware-registered limited liability company formed by Gary J. Player to receive various intellectual property assets related to the GARY PLAYER name. The Respondent Gary Player Group, Inc. is a Florida corporation whose principal is Marc Player. The disputed Domain Name was first registered on July 1, 1996. In May 2000, the Complainant assigned the rights to many of the trademarks to the Black Knight Trust, naming Marc Player as agent of the Trust. In subsequent years, the Black Knight Trust registered additional trademarks related to the GARY PLAYER name and logo. On September 28, 2013, the Complainant Gary J. Player and the Respondent Gary Player Group entered into an Ownership Rights Agreement, which granted the Respondent exclusive rights to use the GARY PLAYER name, with the exception of those rights already held by the Black Knight Trust.
On January 21, 2019, the Complainant gave notice that he was revoking the Ownership Rights Agreement. The Respondent challenged that revocation through arbitration. In May 2020, the parties stipulated to the validity of the revocation and to the reassignment to the Complainant Gary J. Player of all rights that had been granted to the Gary Player Group through the Ownership Rights Agreement. On July 2, 2020, a Florida Circuit Court confirmed the award in a Final Order, which was followed by various parties entering into a settlement agreement. The said Agreement provided for assignment by the Respondent Gary Player Group to the Complainant Gary Player Enterprises of “all right, title and interest in any and all intellectual property rights of whatever nature…” and that the Respondent cease any and all use, including through company names, domain names, social media and email addresses,” of the GARY PLAYER trademarks.
Although the agreement allowed the Respondent’s temporary use of email accounts using the disputed Domain Name following execution of the settlement agreement, it otherwise required that the Respondent “expeditiously transfer to Gary Player or an entity he designates the domain GaryPlayer .com.” In a series of correspondences, the Respondent’s representatives failed to promptly effectuate the transfer, citing privacy concerns related to email addresses using the domain name. The record shows that the Respondent continued to use the disputed Domain Name to market various goods and services bearing trademarks owned by the Complainants.
Held: The Panel’s adjudication of this dispute has been hampered by the parties’ failure to address a number of critical facts in their submissions, and by the parties’ submission of incomplete copies of key documents. Most notably, neither the Complainant nor the Respondent submitted evidence related to the initial registration of the Domain Name, including when it was registered; by whom it was registered; whether the Domain Name has been transferred since its initial registration; and when and by whom the Domain Name registration was renewed. The Complainant also failed to provide a complete copy of the 2021 settlement agreement between the parties, including the portion of the agreement that addresses how disputes under the agreement should be resolved. The Respondent, for its part, submitted a Response that provided confusing assertions about the ownership of the various GARY PLAYER trademarks and purported to rely on the Black Knight Trust’s ownership of certain trademark registrations despite the fact that the Black Knight Trust agreed in the settlement agreement to assign those registrations to the Complainant.
Given the incomplete record, the Panel considered issuing a procedural order to request supplemental submissions to address these deficiencies. The Panel ultimately elected not to do so as they were very unlikely to change the outcome of this case. As the facts recounted above make clear, this is not a standard cybersquatting case. Rather, this case is a contractual dispute between parties with a long business and personal relationship. Moreover, the Complainant failed to make an adequate showing on the element of Bad Faith registration, the Panel must deny Complainant’s claim in this proceeding. The Panel encourages the Respondent to voluntarily transfer the domain name to Complainant to avoid the need for this unfortunate dispute between a father and son to continue in yet another forum.
Complainants’ Counsel: Mark D. Rasch, Maryland, USA
Respondents’ Counsel: Rupert Morris of Walkers (Guernsey) LLP, Channel Islands
Cybersquatting or Trademark Infringment?
Panelist: Mr. Sebastian M.W. Hughes
Brief Facts: The US Complainant and its predecessor in title have manufactured and sold red light therapy devices for use in the healthcare and beauty industry since December 2018, under the US trademark MITO RED LIGHT (registered on January 14, 2020). The disputed Domain Name was purchased by the Respondent on April 14, 2021. The Respondent is the owner of registered trademarks in various jurisdictions including the U.K. (Sep. 2021), Japan (Jan. 2022) and has pending applications in the US, EU and China. It is clear that, notwithstanding the Respondent’s assertion to the contrary, the Respondent manufactures and sells the same type of red light therapy products, under the RED MITO brand, as the red light therapy products manufactured and sold by the Complainant and its predecessor in title since December 2018. The Complainant also relies upon an email request from a customer as evidence of confusion – the customer having purchased the Respondent’s RED MITO red light therapy product from Amazon.
The Respondent contends that prior to receipt of the Complaint, it did not know of the existence of the Complainant and it registered the disputed Domain Name because “red mito” is an abbreviation of “red mitochondria”. The Respondent contends that it is heavily invested in terms of manpower and material resources (in total, about CNY 345,000), hoping to make RED MITO into a well-known brand of light physiotherapy products.
Prior to the filing of the Complaint, the evidence filed by the Complainant shows that the disputed Domain Name resolved to a ‘coming soon’ website in English on December 7, 2021. As at the date of this Decision, the disputed Domain Name resolves to an English language website, apparently unrelated to the Respondent, offering for sale handbags, travel bags, satchels, and shoulder bags, and with an address and contact telephone number in Las Vegas, Nevada in the United States.
Held: Although “red” and “mitochondria” are both dictionary words, their combination does not appear to be common. The red light therapy products manufactured and sold by the Complainant since December 2018 under the trademark are specialized, niche products. The Respondent’s trademark was pending for registration when it purchased the disputed Domain Name, and there is no evidence on record showing any sale of the products under the RED MITO brand prior to the Respondent’s purchase of the disputed Domain Name. In all the circumstances, the Panel considers it is more likely that the Respondent was aware of the Complainant and its products at the time it purchased the disputed Domain Name, applied for registration of its RED MITO trade mark in several jurisdictions, and commenced marketing and selling its RED MITO red light therapy products online, including to consumers in the United States, via Amazon, Wal-Mart, and other third party platforms.
There has been no evidence adduced to show that the Respondent used the disputed Domain Name for a bona fide offering of goods/service or he has been commonly known by the disputed Domain Name. The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed Domain Name. For all the foregoing reasons and the Respondent’s unexplained use of the disputed Domain Name in its Response, and the current use of the disputed Domain Name in relation to an unrelated third party bag retail website, provide further support for a finding of bad faith.
Complainants’ Counsel: RM Warner P.L.C., United States
Respondents’ Counsel: Self-represented
Comments by ICA General Counsel Mr Zak Muscovitch and ICA UDRP Digest Editor, Ankur Raheja: The Panelist is likely correct that the Respondent was aware of the Complainant’s MITO RED LIGHT trademark prior to adopting RED MITO as a trademark and registering the disputed Domain Name, and accordingly likely registered the Domain Name in bad faith in order to facilitate selling competing products under a very similar brand.
Nevertheless, when a Respondent has actual registered trademarks – even for similar goods – and in different jurisdictions from the Complainant, is this a case appropriate for adjudication under the UDRP? Or is this more of a case of competing trademarks and alleged trademark infringement? The Final Report of the WIPO Internet Domain Name Process (April 30, 1999) at Para 135 (i) and the Second Staff Report on UDRP (24 October 1999) at Para 4.1 clause (c), show that the UDRP was intended to address only clear cases of cybersquatting and that competing trademark and trademark infringement cases were to be left to courts to resolve.
Panels have an important job to do but they should feel confident that there are well-established court processes that are very well equipped to deal with cases of alleged trademark infringement. Courts have robust procedures including discovery, can award damages, and can order injunctions. Moreover, courts employ national laws which are often highly relevant to trademark infringement disputes since trademarks are territorial and use in one country may be lawful whereas in another country, it may be infringement. Courts can also employ appropriate tests to determine if confusion has occurred or is likely to occur, having regard to channels of trade and to similarity of the mark and goods. When faced with a case which appears to involve competing marks and trademark infringement), Panels should be extremely apprehensive in using the UDRP to resolve the dispute and should generally defer to the courts who are better equipped to address all legal issues rather than only cybersquatting. If a Panel defers to courts in such cases it will generally be a prudent decision and the Panelist will have successfully discharged its limited responsibilities in hearing a UDRP case.
The Compass Loses the Direction!
Panelist: Ms. Claire Kowarsky, LL.M
Brief Facts: The Complainant, founded in 1960, is an Italian credit institution, specializing in consumer credit, including loans and credit cards. The Complainant owns COMPASS trademarks in the EU, registered since 2000 and more formative trademarks in Italy. The disputed Domain Name was registered on February 19, 2022, by a US based individual and resolves to a registrar parking page containing pay-per-click links. The Respondent did not contest the Complaint.
The Complainant asserts that its trademark is well-known and the Respondent “could not ignore” Complainant’s European trademark(s), when he registered the disputed Domain Name. The Complainant further asserts that the Respondent cannot avoid responsibility for the content on the disputed Domain Name, even if such content is generated by a third party and the Respondent does not profit therefrom. The Respondent’s “sole scope” for registering the disputed Domain Name was to mislead potential consumers, to tarnish the Complainant’s reputation and to prevent the Complainant from reflecting its trademark in the corresponding domain name.
Held: In the present proceeding, there is no compelling evidence the Respondent intended to take unfair advantage of the Complainant’s trademarks in any way or somehow had the Complainant in mind when he registered the disputed Domain Name. In this case, the denomination “COMPASS” is a dictionary word which has an ordinary meaning, and is not per se associated with the Complainant. The Complainant did not provide evidence to support such a claim pertaining to the reputation of its trademark, that could give rise to actual or constructive knowledge about the Complainant’s COMPASS trademark on the part of the Respondent. Otherwise also there is no indication that an internet search of the term “Compass” or “Compass Computer” would lead to results pointing to the Complainant as previously held in the matter of <caribou .com>, containing a descriptive term. The same logic must be applied to the instant proceeding. Finally, the Panel rejects the claims related to the parked page and finds it to be plausible that the domain was registered for another purpose, given the nature of the domain name and the trademark, which is not well-known; there is no evidence available of any reputation and/or popularity of the Complainant’s trademarks, given the parties located in different geographic regions and no other indicia generally to suggest that the respondent was targeting the Complainant.
Complainants’ Counsel: Claudio Tamburrino
Respondents’ Counsel: No Response