Welcome to this week’s UDRP Digest (vol. 2.3), summarizing the most intriguing cases of the past week. Read about:
‣ Complainant’s Plan B and Attempt to Mislead, Results in RDNH Decision (bybt .com)
‣ Common Law Rights Upheld, with Use Since 1899 (marywashingtonhealth .com and more)
‣ Unbroken Chain of Title Since 1995 Defeats 2018 Trademark Registration (luma .com)
‣ PPC Links Not Determinative – Respondent’s Intent Must be Evaluated (equitytrustcompany .com)
‣ Complainant Fails in an Attempt to Claim Exclusive Rights to a PETRA BY NIGHT Well-Known Tourism Program (PetraByNight .com and more)
‣ Generic Domain Name Reseller of OCEAN READY Domain, Finds Safe Harbor Under the Policy (oceanready .com)
Enjoy !
Complainant’s Plan B and Attempt to Mislead, Results in RDNH Decision
Bybit Fintech Limited v. Liqian (李黔), WIPO Case No. D2021-3559
<bybt .com>
Complaint Denied (RDNH)
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant, established in 2018, operates a cryptocurrency exchange at <bybit .com> (note the “i” in contrast to disputed domain name, bybt .com). The Complainant filed trademark applications on June 24, 2021, in Hong Kong and China which registered during these UDRP proceedings on November 30, 2021. The disputed Domain Name was possibly acquired by the Respondent around January 7, 2020 and is used by the Respondent for a cryptocurrency futures and information platform known as Bybt (no “i”). The website displays banner advertisements for different cryptocurrency exchanges, including the Complainant’s, which the Complainant claims is without its authorization. There were attempts made between the Complainant and the Respondent to enter into a cooperation agreement, followed by an investment proposal by the Complainant in the Respondent’s business. The Complainant provides evidence that the disputed Domain Name was previously offered for sale as well as recently as September 24, 2021. At the time of this Decision, the disputed Domain Name now redirects to <coinglass. com>, which resolves to the same website, now rebranded as “coinglass”. The Respondent’s app has now also been rebranded as “coinglass”.
Held: The disputed Domain Name is used by the Respondent in connection with a cryptocurrency futures trading and information platform known as “Bybt”, has attracted millions of visitors, and appears to be the product of a considerable investment of resources. In these circumstances, it is improbable that the Respondent acquired the disputed Domain Name “primarily” for the purpose of selling it within the terms of the Policy. Besides, the evidence on record demonstrates that the Complainant itself asked the Respondent to display banner advertisements over a period of months, and provided necessary information for this purpose. In these circumstances, it is accurate for the Respondent’s website to give the impression that it is sponsored or endorsed by, or affiliated with, the Complainant. Hence, there is no evidence as to registration and use of the disputed Domain Name in bad faith.
RDNH: The Complainant has legal representation in this proceeding and the Complaint contains two serious defects. Firstly, the Complaint did not demonstrate any proper trademark rights at the time of filing of this Complaint, which is the requirement for standing under the Policy. Secondly, the Complaint includes a false or misleading statement, which reads “the Respondent has no connection or affiliation with the Complainant and the Complainant has not granted any authorization or consent for the Respondent to redirect to the Complainant’s official website”. Besides, the Complainant filed this Complaint one month after proposing to invest in the Respondent’s business and days before the Respondent gave its final answer declining the offer. The record indicates that the Complainant resorted to the Policy as “Plan B” in a failed attempt to gain control over the disputed Domain Name in the marketplace, or to increase its bargaining leverage.
Complainants’ Counsel: Norton Rose Fulbright Hong Kong, China
Respondents’ Counsel: Self-represented
Common Law Rights Upheld, with Use Since 1899
<marywashingtonhealth .com> and 18 other Domain Names
Transfer
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant, since 1899, has grown into a not-for-profit regional system of two hospitals, three emergency departments, and more than 50 healthcare facilities and wellness services in the US. The Complainant asserts common law rights in MARY WASHINGTON HEALTHCARE, citing numerous awards and accreditations that the Complainant has accumulated over the years. The Complainant has used MARY WASHINGTON HEALTHCARE or variations thereof continuously since 1899, and has used similar Domain Name <marywashingtonhealthcare .com> since 2009. The Respondent registered the 19 disputed Domain Names, all of which correspond to slight alterations of Complainant’s name and mark, between January and March 2021. The Domain Names are being used for websites composed of pay-per-click links, surveys, browser extensions, and malware, or to redirect to other such sites.
Held: The evidence provided by the Complainant arising from its continuous and extensive use since 1899 and the widespread recognition, at least in the absence of any challenge by the Respondent, is sufficient in the view of this Panel to demonstrate common law rights in the mark for purposes of the Policy. Further, the disputed Domain Names correspond to the Complainant’s common law mark, registered without authorization under privacy registration service, presumably to conceal the identity of the beneficial registrant. Besides, the Domain Names are being used to display pay-per-click links, to disseminate malware and for similar purposes. Such use does not give rise to rights or legitimate interests, rather the conduct is indicative of bad faith registration and use under the Policy.
Complainants’ Counsel: Justin B. Perri of Blackstone Law Group LLP, New York, USA
Respondents’ Counsel: No response
Unbroken Chain of Title Since 1995 Defeats 2018 Trademark Registration
Luma Institute, LLC v. Perfect Privacy, LLC / James Redfern/Luma, WIPO Case No. D2021-3129
<luma .com>
Complaint Denied
Panelists: Mr. W. Scott Blackmer (Presiding), Mr. Christopher S. Gibson, Mr. Richard G. Lyon
Brief Facts: The US Complainant, since 2009, has been offering “design thinking training, workshops, tools, and services” under its LUMA mark. The Complainant operates a website at <luma-institute .com> and holds a USPTO Trademark registration dated, February 13, 2018. The parties do not dispute that the Domain Name was registered by the Respondent on August 6, 1995 and resolves to a registrar’s landing page with words “Under Construction” and related PPC links to third-party advertisers for a variety of products and services. The Response outlines the 26-year history of the Domain Name. The Respondent, Mr. Redfern and Professor William Cook, with other computer industry colleagues, formed Luma, Inc. in June 1995. Mr. Redfern registered the Domain Name and “maintained ownership of the Luma.com domain name in his account, and effectively licensed it for use by Luma Inc. The Complaint attaches a DomainTools search of historical WhoIs records, which show that the registration details for the Domain Name have changed since 1995, naming the registrant organization variously as “Luma,” “Luma, Inc.,” and “Luma Exact”, before the change of registrant to a domain privacy service in November 2016. The Complainant argues that this last date should be considered as the date of registration for this Policy proceeding.
Held: The Respondent has held the Domain Name since 1995, before the Complainant’s mark existed, and even in 2016 likely retained the Domain Name for reasons other than an attack on the Complainant’s mark. The Panel considers the chain of registration unbroken since then. The Respondent used “Luma” in the names of two corporations over the years and has used the disputed Domain Name for websites and emails, before the Complainant acquired a trademark. The disputed Domain Name has been used in good faith over the past 26 years and may be so used in the future, even if only for email. Thus, the Respondent unquestionably had legitimate reasons to register (in 1995) and use the Domain Name that has nothing to do with the Complainant or its unregistered mark and even if the later date such as November 2016 is considered as the relevant registration date.
Complainants’ Counsel: GTC Law Group LLP & Affiliates, United States
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
PPC Links Not Determinative – Respondent’s Intent Must be Evaluated
Equity Trust Company v. Domain Vault / Domain Vault LLC, NAF Claim Number: FA2112001976315
<equitytrustcompany .com>
Complaint Denied
Panelist: Mr. Alan L. Limbury
Brief Facts: The US Complainant is a corporation that administers retirement plans. It has rights in the EQUITY TRUST COMPANY mark based on registration with the USPTO on May 25, 2010, claiming first use in commerce in 2003. The disputed Domain Name was registered on June 2, 2005 and resolves to a website with links to direct competitors of the Complainant, offering similar financial services. The Complainant served the Respondent with a cease-and-desist letter, but did not get any response.
Held: The disputed Domain Name was registered almost 5 years before the registration of the Complainant’s earliest mark. The application for registration of that mark made on July 30, 2009 claimed first use of the mark in commerce on May 31, 2003, some two years before the Respondent registered the disputed Domain Name. However, the date of first use in commerce claimed on a trademark application is of limited evidentiary value and amounts to a mere assertion which would still require to be suitably evidenced, for the purposes of the present proceeding. Although the disputed Domain Name resolves to a website with links to direct competitors of the Complainant offering similar financial services which can be evidence of bad faith use. However, such evidence is not necessarily conclusive. In this case there is no evidence that the Respondent’s intent was to unfairly captialized on the Complainant’s nascent trademark rights, and therefore the Panelist is not satisfied that the Domain Name was registered in bad faith.
Complainants’ Counsel: Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA
Respondents’ Counsel: No Response
Complainant Fails in an Attempt to Claim Exclusive Rights to a PETRA BY NIGHT Well-Known Tourism Program
Mohammad Harb Suleiman Al Farajat v. laura leader, Discover Jordan, WIPO Case No. D2021-3803
<PetraByNight .com> and 3 other domain names
Complaint Denied
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant is a Jordanian tour business registered and operating since 1998 under the trade name “Zaman Tours”. The Complainant owns Jordanian trademark registrations dated October 30, 2016 for a figurative trademark prominently featuring the English words PETRA BY NIGHT and claims prior common law rights since 1999 and provides supporting evidence of his usage of the phrase since then. The Petra Development & Tourism Region Authority in an October 2021 letter recognized the Complainant as the “official founder and organizer” of the Petra by Night program since 1998. The disputed Domain Names were registered in 2012 by Discover Jordan Tours. The Domain Name <petrabynight .com> redirects to Respondent’s business website <discoverjordan .com>, while the other three Domain Names are parked, with one of them, listed for sale at USD 40,000. The Respondent did not reply to the Complainant’s warning letter dated, June 16, 2016.
Held: Although the Authority furnished a letter recently recognizing the Complainant as the founder and organizer of the Petra by Night program, the Authority’s ‘Petra by Night’ web page does not mention the Complainant at all. The Response demonstrates that the term ‘Petra by Night’ is descriptive and used by several other tour operators, not necessarily associated with the Complainant exclusively. The redirection of the disputed Domain Name <petrabynight .com> to the Respondent’s website advertising Jordanian tourist services, sufficiently demonstrates the Respondent’s use of <petrabynight .com> in connection with a “bona fide offering of goods or services”. The Complainant failed to establish the third element of the Complaint, bad faith, with respect to all four of the Domain Names.
Complainants’ Counsel: Talal Abu Ghazaleh Legal, Egypt
Respondents’ Counsel: HGF Limited, United Kingdom
Generic Domain Name Reseller of OCEAN READY Domain, Finds Safe Harbor Under the Policy
GXI, LLC v. Hola Domains / Hola Dominios Limitada, NAF Claim Number: FA2111001975093
<oceanready .com>
Complaint Denied
Panelist: Mr. Terry F. Peppard
Brief Facts: The Complainant is a wholly-owned subsidiary of Carnival Corporation, a popular cruise line. It holds a registration for OCEANREADY with the USPTO, registered on March 13, 2018. The Complainant employs the OCEANREADY mark to manage and market an online guest platform offering travellers personalized services. The Respondent is a domain name reseller and registered the disputed Domain Name on November 4, 2021 which it offers it for resale. The Complainant argued that the Respondent has exhibited a pattern of bad faith as demonstrated by a series of UDRP decisions issued against him.
Held: The Complainant’s mark comprises two generic terms which, even in combination, retain their generic character. That this is so is perhaps exemplified by the fact that the service mark OCEAN READY registered with the USPTO by a third party in connection with personal concierge services for vacationers at coastal beach towns. The Respondent has adequately demonstrated that it is a practicing generic domain name reseller and that its holding and marketing of the disputed Domain Name as a “bona fide offering of goods or services” thereby establishes its rights to and legitimate interests in, the Domain Name. The Respondent requested an RDNH ruling. Upon consideration of the facts, the Panel declines to do so despite it being a close question since the Trademark had a prior registration date and there has been no attempt by the Complainant to mislead.
Complainants’ Counsel: Jaime Rich Vining of Friedland Vining, P.A., Florida, USA
Respondents’ Counsel: Andrii Raiersky, Attorney at law, Ukraine