We hope you will enjoy this edition of the Digest (Vol 3.10), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and Editor, Ankur Raheja.
‣ Panel Finds RDNH but Makes No Finding on Rights or Legitimate Interest (LawCloud .com *with commentary)
‣ This Time, Rights and Legitimate Interest Found But No RDNH (LawCloud .eu .com *with commentary)
‘APPEAL’ ALERT: Respondent in Multitrack.com Case Sues to Overturn UDRP Decision [PDF].
In Digest Volume 3.39, we provided extensive critical commentary on the Multitrack.com UDRP decision dated, February 19, 2023. We also stated that the Respondent would likely file a federal lawsuit to overturn the UDRP decision. This has now happened.
The Respondent in the Multitrack.com UDRP dispute (and now Plaintiff in the U.S. District Court filing) disputes Panelist Newell’s finding that the Complainant in the UDRP dispute has enforceable trademark rights in the purported Multitracks marks and inter alia seeks a declaration from the Court that the Complainant has no rights to this descriptive term.
This is the second time in six months that a Respondent has sued to overturn a decision by Panelist Newell in which Newell found unregistered trademark rights in apparently descriptive terms. The previous federal lawsuit followed his UDRP decision regarding TampaWaterTaxi[.com] which we covered in ICA Digest Volume 2.31.
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Panel Finds RDNH but Makes No Finding on Rights or Legitimate Interest
Panelists: Mr. Luca Barbero, Mr. Andrea Mondini and Mr. Adam Taylor
Brief Facts: The Belgian Complainant offers computer consulting activities primarily to law firms under the trade name “Lawcloud”. The Complainant owns the Benelux figurative trademarks for LAWCLOUD (May 31, 2022), and the International trademark for LAWCLOUD (April 14, 2022), designating the United Kingdom (opposed) and Slovakia (granted). The Complainant also owns many Domain Names consisting of LAWCLOUD, including, <lawcloud .be> (May 9, 2017), and <law .cloud> (August 18, 2022), and used by the Complainant to promote its services under the trademark LAWCLOUD. The disputed Domain Name was acquired by the Respondent on October 19, 2016, and is not pointed to an active website, but offered for sale. The Complainant points out that the disputed Domain Name is offered for sale at the price of USD $98,000, and for lease at a monthly fee of USD $8,167, and alleges that the price for purchase or hire of the disputed Domain Name exceeds by many times, the registration fees.
The Respondent rebuts that the Complainant’s allegations are unfounded considering the Complainant was incorporated in 2017 and did not disclose that it was originally incorporated as “Integr8rs” B.V., but only changed its name to “Lawcloud” B.V. in December, 2021. The Respondent also underlines that she registered the disputed Domain Name, because she is a technology and e-commerce entrepreneur and domain name investor, who, in 2016, took note of the emergence of cloud computing and foresaw the application of cloud computing to many fields of human endeavor, including law. Moreover, the Respondent confirms that, since 2016, when she registered the disputed Domain Name, she began offering her domain names for sale via her website at <brandsly .com>, including the disputed Domain Name, which was offered to the general public in 2016, before the Complainant even existed.
Held: The Panel notes that, based on the record, there is no relationship between the parties and there is no evidence that the Respondent might be commonly known by the disputed Domain Name or may be the owner of trademark rights for the term encompassed in the disputed Domain Name. Moreover, the disputed Domain Name is not pointed to an active website and there is no evidence of use of the disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, the Respondent registered the disputed Domain Name for speculation and trading purposes. The Respondent asserts that such activities can indeed constitute a legitimate interest under the Policy. The Complainant has failed to demonstrate that the Respondent ever intended to target the Complainant and its trademark. Therefore, whatever the conclusion on the issue of rights and legitimate interest may be, the Complaint fails under the third element, and so it is unnecessary for the Panel to reach a conclusion under the second element.
The disputed Domain Name was acquired by the Respondent in October 2016, before the Complainant’s incorporation as “Integr8rs B.V.” in 2017 and the change of its name to Lawcloud B.V. in December 2021. The disputed Domain Name was acquired by the Respondent more than five years before the filing of the Complainant’s trademark LAWCLOUD in March 2022. Therefore, the Panel finds that the Respondent did not register the disputed Domain Name in bad faith as she could not have been aware of the Complainant and its trademark, which did not even exist at that time.
RDNH: The Panel concludes that the Complainant’s actions constitute Reverse Domain Name Hijacking since the Complainant, which is represented by counsel, should have appreciated the fact that it could not succeed in demonstrating that the Respondent registered the disputed Domain Name in bad faith, as the disputed Domain Name was acquired a year before the Complainant came into existence and even longer before the Complainant’s trademark was registered. Moreover, the Complainant also failed to provide any evidence to demonstrate that the Respondent used the disputed Domain Name in bad faith. The Panel makes a finding of Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Advocatenkantoor Desdalex LLC, Belgium
Respondents’ Counsel: Muscovitch Law P.C., Canada
Comments by Editor-in-Chief, Ankur Raheja: The Respondent’s representative in this case was the ICA’s General Counsel, Zak Muscovitch, who regularly provides case comments for our digest.
The facts and circumstances of this case accord with the WIPO Overview 3.0, Section 4.16, which identifies circumstances which support a finding of RDNH, inter alia, that “the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint”. As held by the Panel in Proto Software, Inc. v. Vertical Axis, WIPO D2006-0905, “Initiating domain name dispute resolution proceedings necessarily involves putting the domain registrant to a considerable expenditure of time and in many cases costs, and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in a brash and totally unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that considerably pre-dates any trademark rights held by the complainant”. Hence, RDNH ruling is necessitated in such circumstances to discourage Complainants from abusing the UDRP by bringing cases which are meritless and “dead on arrival”.
However, notwithstanding the Panel’s finding that the Respondent registered the Domain Name prior to the Complainant’s trademark rights and notwithstanding the resulting finding of RDNH, the decision notably declined to make an affirmative finding of the Respondent’s rights and legitimate interest in the disputed Domain Name. As explained in the recent case concerning Redfield(.com) which we reported in Volume 3.9, in upholding legitimate interests in the favour of a domain name investor, the Panel stated: “Investing in common-word domain names is a perfectly legitimate business and can qualify as a bona fide offering of goods or services so long as the Respondent did not target a specific complainant or protected mark with a particular domain name”.
In fact, UDRP Panels have long ruled in favour of domain name investor respondents when it comes to rights and legitimate interests since For example, speculating in and trading in domain names such as the Domain Name, can indeed constitute a legitimate interest under the Policy (See; Audiopoint, Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001). and also see; Havanna S.A. v. Brendhan Hight, Mdnh Inc., WIPO Case No. D2010-1652. As held in Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, “such a practice may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself)”.
However, in the matter at hand, the Panel did not reach any conclusion as regards to the second prong of the Policy, even when the Respondent specifically argued that she registered the disputed Domain Name for speculation and trading purposes, and that such activities can indeed constitute a legitimate interest under the Policy. What was the reason for this apparent reluctance? It did not appear to be merely a matter of judicial economy, but rather appeared to stem from the Panel’s apprehension of making an affirmative finding of rights by the domain name investor. Panelists must be cognizant that Paragraph 4(c) of the Policy merely provides examples of how a Respondent can demonstrate rights or legitimate interests, which are expressly “without limitation”, i.e. a Panel must consider indicia of rights and legitimate interest beyond the three examples enumerated. As set out above, the case law establishes domain name investing in domain names as a “perfectly legitimate business” and accordingly Panels ought not to avoid making such findings where appropriate.
This Time, Rights and Legitimate Interest Found But No RDNH
Panelist: Ms. Jane Seager
Brief Facts: The Complainant is a limited liability company incorporated under Belgian law on September 5, 2017. The Complainant offers computer consulting services, including an Internet application named “Lawcloud”, marketed to lawyers and law firms as a cloud-based platform for digital file storage. The Complainant is the registered owner of the following trademarks: International Trademark Registration No. 1671727, LAWCOULD (figurative), registered on April 14, 2022, designating Slovakia and the United Kingdom; and Benelux Trademark Registration No. 1461322, LAWCLOUD (figurative), registered on May 31, 2022. The Complainant is also the registrant of the domain names <lawcloud.app>, <lawcloud.be>, <law.cloud>, <lawcloud.fr>, <lawcloud.lu>, and <lawcloud.nl>, which redirect to the Complainant’s public-facing website at “www.law.cloud”. The Respondent is a lawyer providing legal services under a registered trade name in Slovakia, established on January 1, 2011. The disputed Domain Name was registered on September 18, 2016 and resolves to the Respondent’s main website, providing information in Slovak about the Respondent’s legal services.
On August 4, 2022, the Complainant’s lawyers sent a letter to the Respondent, putting the Respondent on notice of the Complainant’s rights, and requesting transfer of the disputed Domain Name. The Respondent did not reply to the Complainant’s letter. The Respondent, however, under these proceedings contends that his practice was established in January 2011, seven years before the Complainant, and that the domain names <lawcloud .eu> and <lawcloud .sk> were registered one year prior to the creation of the Complainant. The Respondent further contends that he registered its domain names, including the disputed Domain Name, in good faith and uses them to offer his services and products for legitimate purposes.
Held: The Respondent provides evidence that he is making use of the disputed Domain Name in connection with his legal practice, or in order to provide client-facing cloud computing services. In this regard, the Respondent produces screen captures of what is stated to be the interface for the Respondent’s services offered via the disputed Domain Name, as well as evidence of a software licence for file management software. Noting that the Respondent operates as a lawyer in the jurisdiction in which he is based, the Panel finds that the Respondent has come forward with a credible explanation for and evidence of his bona fide registration and use of the disputed Domain Name. The Panel finds that prior to any notice of the present dispute, the Respondent has used the disputed Domain Name in connection with a legitimate service offering, giving rise to a legitimate interest in the disputed Domain Name pursuant to Paragraph B(11)(e)(1) of the ADR Rules.
The Panel finds that the Complainant failed to demonstrate that the Respondent registered or used the disputed Domain Name in bad faith. Critically, the Complainant was incorporated on September 5, 2017, whereas the disputed Domain Name was registered nearly one year earlier on September 18, 2016. There is nothing on record to suggest that the Respondent could have had knowledge of the Complainant at the time that the Respondent registered the disputed Domain Name, nor has the Complainant put forward any evidence to suggest that the Respondent seeks to target the Complainant through use of the disputed Domain Name.
Complainants’ Counsel: Advocatenkantoor Desdalex LLC, Belgium
Respondents’ Counsel: Self-represented
Comments by Editor Ankur Raheja: This Complaint was brought by the same Complainant LawCloud B.V. and as a result of the Domain Name being registered before the Complainant’s trademark rights, the conclusion is similar as to Bad Faith. Interestingly, the Panel in this case did affirmatively find rights and legitimate interest, as the Respondent used the domain name in connection with “a legitimate service offering”. As noted in the Case Comment above, domain name investing can also be a ”legitimate service offering”.
Given the nearly identical issues regarding the priority of the domain name over the trademark in both cases, why was Reverse Domain Name Hijacking only found in the first case, particularly since the Respondent in this second case had an active cloud computing service to his law firm clients? Even though this was a .EU domain name, Paragraph 12(h) of the ADR Rules provides for declaring that a Complainant brought an abusive Complaint.
In similar circumstances, where the domain registrant had a legitimate website at the disputed Domain Name in relation to his business in Pakistan, the Panel in Vertex Pharmaceuticals Incorporated v. Ramzan Arif, Vertex Medical (pvt) Ltd. (WIPO Case No. D2020-2334) found RDNH against the NASDAQ-listed Complainant, and stated: “Furthermore, at least at the point where the Complainant became aware of the Respondent’s identity, it should have investigated the factual background further with a view to demonstrating a lack of legitimate interests on the Respondent’s part. It should also have considered the position specifically with reference to the date of registration of the disputed Domain Name. There is no suggestion that the Complainant made any such investigations before proceeding with the Amended Complaint, thus putting the Respondent to considerable inconvenience and expense in answering the same where the matter could conceivably have been addressed (or at least the issues narrowed) by way of correspondence between the Parties outside the context of the Policy.”
Language for the UDRP Proceedings: When is it OK to Proceed in English Despite Russian Registration Agreement?
Panelist: Mr. Igor Motsnyi / Mocni Konsalting doo
Brief Facts: The Complainant is a Swedish e-commerce company that provides payment services for online storefronts, that include direct payments, pay after delivery options and instalment plans in a one-click purchase flow. The Complainant provides a list of its numerous registered trademarks with the word element “KLARNA” protected in various jurisdictions including International trademark registrations dated December 21, 2010 and August 1, 2013 and EU trademark registration dated July 30, 2014. The disputed Domain Name was registered on September 20, 2022 and is not used for any website or a page.
The Complainant contends that the actual knowledge of Complainant’s rights at the time of registration of the disputed Domain Name can easily be assumed based upon the fame of the “KLARNA” trademark and incorporation of another Klarna’s brand – “SOFORT” in the disputed Domain Name. The Complainant relies on the passive holding doctrine and cites WIPO Overview 3.0 and previous UDRP cases and states that the non-use does not prevent a finding of bad faith under certain circumstances. In particular, the Complainant relies on the totality of circumstances principle including “the degree of distinctiveness or reputation of the Complainant’s mark” and “the implausibility of any good faith uses to which the domain name may be put”.
Preliminary Issue: According to the registrar’s verification, the language of the registration agreement is Russian, however, the Complaint asked to conduct this proceeding in English based on the fact that the registration agreement of the registrar – “Ru-Center” has both Russian and English versions and few other factors. The Panel needs to consider the interests of both parties to the proceeding and provide them with a fair opportunity to present their case and at the same time to ensure that the administrative proceeding takes place with due expedition.
Taking into account that the Complainant sent two (2) letters to the Respondent prior to filing the complaint, that the CAC sent a notification to the Respondent in Russian, that the disputed Domain Name is in the Latin script fully incorporating the Complainant’s mark plus another mark owned by one of the companies related to the Complainant and the Respondent’s failure to respond, the Panel finds that it would be unfair for the Complainant to order it to translate the complaint into Russian. Hence, the Panel agrees with the Complainant and decides to proceed in English.
Held: The Panel finds that the Complainant provided sufficient evidence that the disputed Domain Name was registered and is being used in bad faith based on the nature of the disputed Domain Name that includes both Complainant’s “Klarna” mark and the “Sofort” mark owned by a member of The Klarna Group; the evidence that its “Klarna” trademark is distinctive and enjoys significant reputation, at least in Europe; passive holding of the disputed Domain Name in the circumstances of this case.
Hence, the Panel finds that this is a clear case of targeting and an attempt to take unfair advantage of the Complainant’s trademark and reputation by the Respondent. There are no rights or legitimate interests of the Respondent taking into account evidence on the record and facts of this case and the only apparent reason for registration of the disputed Domain Name is intent of the Respondent to take advantage of the Complainant’s mark and business reputation.
Complainants’ Counsel: Silka AB, Sweden
Respondents’ Counsel: No Response
Lack of Common Law Rights
<SheldonSolow .com>, <SheldonSolow .org>, <SolowFoundation .com> and <SolowFoundation .org>
Panelist: Mr. Christopher S. Gibson
Brief Facts: The Solow Foundation was established in 1991 by Sheldon Solow. Mr. Solow is known for his financial success as a real estate developer and also known for his art collection which contains works from famous artists across different historic periods and geographic locations. Sheldon Solow and the Solow Foundation have no current trademark registrations. The Respondent is an activist and community volunteer who works in various social-minded capacities. The disputed Domain Names were registered by the Respondent on December 23, 2016 and they all point to the same website titled “Solow Art and Architecture Foundation”.
In approximately 2016, the Respondent became aware of a non-profit art museum in New York City associated with Sheldon Solow. The Respondent contends that to highlight the inappropriateness of Mr. Solow receiving tremendous tax benefits through his art foundation without opening its doors to the public, the Respondent registered the four Domain Names and created a parody website. The Respondent further contends that his site has been widely described in the mainstream, business, and artworld press as a parody intended to draw attention to an important legal and social issue.
Held: The Complainant acknowledges that it does not own registered trademark rights in the names “Sheldon Solow” or the “Solow Foundation” and, moreover, states that “Complainant has no website or online presence.” While there is no dispute that the Domain Names are identical to these names, the question thus is focused on whether or not the Complainant has common law rights in either of them. In this case, although the Complainant emphasizes the notoriety of the late Sheldon Solow as a real estate developer, art collector and philanthropist, it has failed to provide evidence that Mr. Solow’s name, or the name of the Solow Foundation, have been used in a trademark manner, so as to give rise to common law trademark rights in either name.
The Panel’s ruling that the Complainant failed to provide evidence of common law rights in Mr. Solow’s name or the name of the Solow Foundation, is further fortified by the unrebutted evidence that the Foundation has changed its name from the “The Solow Art & Architecture Foundation” to “The Soloviev Foundation”. Accordingly, the Panel concludes in the circumstances of this case that the Complainant failed on the record to demonstrate common law rights in the Sheldon Solow name and the name of the Solow Foundation.
However, the Panel notes its disagreement, as expressed in a number of prior cases, with the Respondent on the point of whether the Domain Names – which are identical to the name of Mr. Solow and the Solow Foundation – would qualify under a parody exception had the Complainant established any relevant trademark rights. The Panel finds that in this case, the Domain Names effectively impersonate Mr. Solow and his foundation, although the Complainant has failed to establish any relevant trademark rights.
Complainants’ Counsel: Tucker & Latifi, LLP, U.S
Respondents’ Counsel: The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, U.S
Case Comment by ICA General Counsel, Zak Muscovitch:
What a strange situation. The Complainant failed to provide evidence of common law rights in either the personal name or the name of the foundation, yet the Respondent was found to have impersonated them. You may recall my recent Case Comment discussing the “circular argument” that unregistered trademark rights can be found based upon ‘targeting’ of a Complainant and that if targeting is found, it proves common law trademark rights. I questioned this approach for the reasons cited by the Panel in the South-Coast case, namely that this approach only seems appropriate where there is evidence beyond the Respondent’s selection of the domain name itself. If it were otherwise, then as Panelist Nick Gardener put it in South-Coast case, “any term used in a domain name could be said to support a finding of unregistered trademark rights – which is clearly not the intention of the Policy” and is a circular argument. Let’s make a simple example: If the Respondent’s selection of LawBooks[.com] alone proves that the Complainant has common law trademark rights in “Law Books”, then the mere registration of any domain name could be used as the basis for finding that a Complainant has unregistered trademark rights in the corresponding term. That is not the case, so we must additionally look to other factors to prove common law rights.
In the case at hand, the Panel expressly stated that “the Domain Names effectively impersonate Mr. Solow and his foundation”. Note the reference to the “Domain Names” only, rather than to the related website. The Panel made no express finding of impersonation regarding the website, and noted his agreement with the statement in A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900: “In the context of domain names, the domain name itself, without reference to the content of the web site, must convey both of these separate messages”. Accordingly, the Panel did not appear to rely on the content of the website to determine impersonation, but on the Domain Names themselves, alone. Having found impersonation of the Complainant, it of course means that the Complainant was targeted, yet the Panelist did not find common law rights due to the lack of evidence provided by the Complainant. But wasn’t the fact that the Respondent targeted and impersonated the Complainant sufficient to prove common law trademark rights? Under the South-Coast analysis, this alone would be insufficient because there must be more evidence than the mere registration of the Domain Names themselves in order to prove common law trademark rights.
But can the associated website be the required additional evidence of common law trademark rights? The WIPO Overview at Paragraph 1.3 states that, “the fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier” [emphasis added]. Accordingly, if the website had also been taken into account by the Panelist as it arguably should have been, it is possible that the Panel would have also found that the website impersonated the Complainant – despite the Respondent’s claim of parody – and the Panel could have thereby found unregistered trademark rights.
If one believes that the combination of the Domain Names and the website clearly shows impersonation of the Complainant (which ipso facto means that the Complainant was targeted), then it is also reasonable to assume that as far as the Respondent itself was concerned, the Complainant had sufficient goodwill and reputation in the terms corresponding to the Domain Names such that the Complainant had unregistered trademark rights. In order to show common law trademark rights, a Complainant must establish that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods or services. Here, by clearly targeting the Complainant with the Domain Names and website, the Respondent has itself, implicitly acknowledged that the Complainant has apparently met this threshold, at least for the name of the foundation.
Common law trademark status for the personal name however, is less certain as the threshold for proving common law trademark rights in a personal name is arguably different than with a business name and the absence of sufficient evidence of use of the personal name as a trademark, could as the Panelist concluded, prevent the finding of trademark rights. That is not however, the case with the name of the foundation. The one curious factor there however, is that the Complainant apparently changed the name of it’s foundation, as noted by the Panel. Cessation of use can indeed result in termination of trademark rights, however in the circumstances it appears that this was very recent and at least as far as the Respondent is concerned, the Domain Name corresponding to the ‘former’ name of the foundation still apparently was a distinctive identifier of the Complainant and therefore likely still had common law trademark status. Having established common law trademark rights on this basis, the analysis should have then turned to the Respondent’s defense of parody, which unfortunately was not undertaken.