We hope you will enjoy this edition of the Digest (Vol. 3.5), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and Editor Ankur Raheja:
‣ Can a Schwab Use a Schwab Domain Name for Financial Services? (schwabfinancialcare .com *plus comment)
‣ Ikea Puts Together a Strong Typosquatting Case (1kea .com *plus comment)
‣ Australian Home Builder’s Case Lacked Foundation (homebuilder .net .au)
‣ Did the Complainant Really Have a Trademark For ‘Colombian Coffee’? (colombiancoffee .com *plus comment)
‣ Complainant Demonstrated Respondent’s ‘Actual Knowledge’ of Complainant’s Marks (snaps7 .com)
Must Read: Westlaw Interviews – Domain Investor Nat Cohen
Q&A: Domain investor Nat Cohen on the ‘capricious’ legal foundation for dealing in resale domain names – Westlaw Today (powered by Reuters)
This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Can a Schwab Use a Schwab Domain Name for Financial Services?
Charles Schwab & Co., Inc. v. Simon Schwab, NAF Claim Number: FA2210002017845
Panelists: Mr. David E. Sorkin (Chair), Mr. Alan L. Limbury, The Honorable Neil Anthony Brown KC
Brief Facts: The Complainant has offered financial services, including investment and loan services, under SCHWAB-formative marks for nearly the last four decades. It owns numerous trademark registrations worldwide, including long-standing United States trademark registrations for SCHWAB. The Complainant acknowledges that the Respondent is listed in the Whois domain name registration record as “Simon Schwab,” but states that pairing Respondent’s purported surname, which is identical to Complainant’s SCHWAB mark, with terms that are descriptive of Complainant’s services does not establish that the Respondent has rights or legitimate interests in the resulting domain name. The Complainant further alleges that the Respondent is passively holding the domain name and adds that even if the Respondent actually provides financial services, such services would be closely related to those offered by the Complainant and therefore competitive and infringing.
The Respondent describes this proceeding as “a large brand owner bullying an individual who shares the same last name as the brand’s founder.” The Response describes Respondent as “a young entrepreneur” who began providing loans to customers during the pandemic. Respondent registered the disputed domain name in February 2021 and used it to create a website, which he started using to allow customers to apply online. Respondent notes that Complainant withdrew its original Complaint when Respondent’s name was revealed by the unmasking of the Whois information; that Respondent’s counsel subsequently placed Complainant on clear notice of Respondent’s rights in the domain name; and that Complainant re-initiated this claim despite its awareness of Respondent’s rights.
Held: The disputed Domain Name incorporates SCHWAB, which happens to be both Complainant’s registered mark and the Respondent’s surname. It is being used for a website that offers alternative lending services under the “Schwab Financial Care” name. The website was active nearly two years ago, long before the Respondent had any contact with the Complainant. As many previous decisions under the Policy have noted, an individual is entitled to register and use a domain name that corresponds to the individual’s actual name.
The inclusion of “financial” in the disputed Domain Name may suggest some sort of connection to the Complainant, but the Respondent has not actively contributed to any such confusion, and it is far from clear that the services he is offering compete directly with those offered by the Complainant. The Respondent denies having targeted the Complainant or its mark, and under the circumstances a majority of the Panel considers that denial to be plausible. To the extent that the Respondent’s activities are infringing, such a determination is not an appropriate matter for resolution in this proceeding. Accordingly, a majority of the Panel concludes that the Complainant has failed to prove that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
Finally, the Complainant must show that the disputed Domain Name was registered and is being used in bad faith. To have registered the domain name in bad faith, the Respondent must have been aware of the Complainant or its mark when he registered the domain name, and the registration must in some way have been targeted at the Complainant or its mark. However, the Respondent denies having registered or used the Domain Name with any intent to target the Complainant or its mark, and a majority of the Panel considers that denial to be plausible. Accordingly, the Panel finds that the Complainant has failed to prove that the Respondent registered and is using the disputed Domain Name in bad faith.
RDNH: The Complainant re-initiated the Complaint in this matter on December 2, 2022, knowing of the Respondent’s rights or interests in the disputed Domain Name. A letter from the Complainant’s counsel to the Respondent dated November 10, 2022, included the following statements: “Our client has recently learned that you registered the domain name schwabfinancialcare .com and are operating a website under the trade name SCHWAB FINANCIAL CARE that offers alternative lending services… Our client recognizes that ‘Schwab’ is your last name…”
The members of the Panel are unanimous in expressing concern regarding the lack of candor in the Complaint. The Complaint disingenuously refers to “Schwab” as the “Respondent’s purported surname.” The Complainant did not include any screenshots of the Respondent’s website, despite having itself accessed the website and having previously received such screenshots from the Respondent; indeed, the Complaint accuses the Respondent of “passively holding the domain name by directing it to an inactive website,” apparently based solely on Complainant’s counsel having received a delivery failure error notification after attempting to send a message to an email address that was displayed on the website. The Complainant is represented by competent counsel that should have recognized its inability to prove the elements set forth in the Policy. Accordingly, the Panel finds that the Complaint in this matter was brought in bad faith in an instance of reverse domain name hijacking and constitutes an abuse of the administrative proceeding.
Dissent Opinion by David E. Sorkin: Panelist Sorkin expresses concern regarding the lack of evidence that the Respondent has engaged in any bona fide business activity whatsoever using the disputed Domain Name or otherwise under the name “Schwab Financial Care,” noting that the only preparations that the Respondent appears to have made for use of the domain name over a period of nearly two years are to register the domain name and pay a small fee to a web developer to build the corresponding website. Where information is likely to be within the exclusive knowledge and control of one party, it is appropriate for the Panel to draw an adverse inference from its absence. Panelist Sorkin would find that the Respondent is not commonly known by the disputed Domain Name or “Schwab Financial Care”; that he has neither used nor made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; and that he selected the domain name with the intent to target and exploit confusion with the Complainant. Panelist Sorkin, therefore, dissented from the Panel’s finding on the issue of rights or legitimate interests.
Further, the Respondent knew of Complainant’s famous mark, chose to register a domain name combining the mark with a generic term for the Complainant’s industry, and is using it for a website purporting (apparently falsely) to provide services related to that industry. There does not appear to be a bona fide business operating as “Schwab Financial Care” or indeed any legal entity registered under that name, and the Respondent failed to come forward with any evidence of bona fide use occurring over the nearly two years since he registered the Domain Name and launched the corresponding website. Panelist Sorkin would infer that the Respondent registered the disputed Domain Name not for use in connection with a bona fide financial services business, as he claims, but rather to create and exploit confusion with the Complainant’s mark, most likely either by using the Domain Name to attract Internet users seeking the Complainant or possibly by selling the Domain Name to the Complainant or a competitor thereof. He therefore dissents from the Panel’s finding as to the issue of registration and use in bad faith as well.
Complaint Denied (RDNH)
Complainants’ Counsel: Amanda Martson of Holland & Hart LLP, United States
Respondents’ Counsel: Jason Schaeffer of ESQwire.com, P.C. The Domain Name Law Firm, United States
Case Comment by ICA General Counsel, Zak Muscovitch: Clearly there is a genuine issue with the Respondent using a domain name that corresponds to a famous mark in the same general field. Nevertheless, not all trademark issues are appropriate for resolution via the UDRP. In particular, it is well established that trademark infringement disputes are generally best left to the courts.
Although it is impossible to believe that the Respondent selected and adopted the disputed Domain Name without knowledge of the Complainant’s famous mark, it is less clear whether he lawfully used his surname in connection with an arguably different type of financial service. Framed as such, this dispute did not involve clear-cut cybersquatting, but rather a question of “competing rights”. As stated at Paragraph 135(i) of the Final Report of the WIPO Internet Domain Name Process states; “First, the scope of the [UDRP] procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith” [emphasis added]. The likely outcome of such a court dispute is immaterial to the UDRP procedure. Rather, once a Panel identifies that a case is not a clear-cut case of cybersquatting and that a genuine issue exists as to competing rights, a Panel must dismiss the Complaint as the majority did here.
The minority Panelist’s scepticism is not without sympathy but is nevertheless problematic because this is not a dispute that the UDRP is well-suited for. The minority Panelist has an arguable position that the Respondent; a) wasn’t known by the disputed domain name or “Schwab Financial Care”; b) that he has neither used nor made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; c) that he selected the domain name with the intent to target and exploit confusion with Complainant. But that is the point; these are arguable conclusions based upon inferences drawn from incomplete facts. Drawing merely ‘arguable’ conclusions on a relatively thin record in a case involving competing rights is not generally appropriate use for the UDRP. At least, arguably ;).
Ikea Puts Together a Strong Typosquatting Case
Inter IKEA Systems B.V. v. Jan Everno (The Management Group II), CAC Case No. CAC-UDRP-105061
Panelist: Dr. Federica Togo
Brief Facts: The IKEA Group, founded in 1943, is active in the home furnishing sector with more than four hundred stores and roughly 231,000 employees worldwide, reaching more than 60 markets and 822 million visitors per year. The Complainant is the worldwide IKEA franchisor and responsible for developing and supplying the global IKEA range. The Complainant uses the domain name <ikea .com> to connect to a website, launched in 1997, through which it advertises and sells its IKEA related products and services. The Complainant owns several trademarks worldwide consisting of and or containing the term “IKEA”, amongst others U.S. trademark (registered on October 22, 1991) and European Union Trademark (registered on October 1, 1998).
The disputed Domain Name <1kea.com> was registered by a US Respondent on November 13, 2017 and is offered for sale via Sedo platform (for a minimum offer amount of USD $500). On November 30, 2022 a cease-and-desist letter was sent by the Complainant’s authorized representative to the Respondent requesting to refrain from using the disputed Domain Name as well as to transfer the disputed Domain Name to the Complainant. There was no reply or compliance to this request and the Respondent did not file a response in these proceedings either.
Held: In Panel’s view, the mere substitution of the consonant “I” with the number “1” results to be a common, obvious or intentional misspelling of the trademark “IKEA”. Thus, the disputed Domain Name contains sufficiently recognizable aspects of the relevant mark. The Panel further notes that such an adoption of the disputed Domain Name, consisting of an intentional misspelling of the Complainant’s registered and well-known trademark “IKEA”, signals an intention on the part of the Respondent to confuse users seeking or expecting the Complainant with the intention to take advantage of the Complainant’s reputation. This Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed Domain Name.
The Respondent registered the disputed Domain Name primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant and offered it for sale for a minimum of USD $500 at SEDO. This Panel finds that this sum is in excess of any out-of-pocket costs directly related to the disputed Domain Name.
In addition, this finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following: (i) the nature of the domain name (i.e. a typo of a widely-known mark); (ii) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name; (iii) the Respondent’s failure to submit a response and to reply to the cease and desist letter.
Complainants’ Counsel: Michele Provera (Convey srl)
Respondents’ Counsel: No Response
Comment by Editor Ankur Raheja: This case reminds me of the matter I handled for a Ukrainian domain investor before CAC, in the matter of Domain Name <0ne.com> (starts with numeric zero), wherein the Complainant was One.com Group AB, who renders domain and hosting services through <one .com> and the Domain Name was parked for sale as well. See: One.com Group AB v. Stan N [CAC-UDRP-103567].
The contrast between 1kea.com and 0ne.com is obvious, as the former (1kea.com) is purely derived from a well-known distinctive mark and any registration or offer for sale would be considered Bad Faith, whereas 0ne.com is a derivation of the common word and numeral, “one” and the Panelist very clearly laid down that; “No-one can own a number or dictionary word to the exclusion of the rest of the world. They are inherently lacking in the distinctiveness required for trade mark law”. Hence, in that case, the Complainant could not satisfy the paragraph 4(b)(i) of the Policy and the Complaint was denied.
Australian Home Builder’s Case Lacked Foundation
Homebuilder .com .au IP Pty Ltd v. Luxury Home Developments Pty Ltd, WIPO Case No. DAU2022-0043
<homebuilder .net .au>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a property technology company that uses the domain name <homebuilder .com .au> in connection with an online platform to connect home owners to local home builders, architects and designers. The Complainant owns various trademark registrations in Australia and New Zealand, the earliest being an Australian figurative mark, registered on September 9, 2016. The Respondent is an Australian company registered on July 5, 2013, that acts as trustee of the Luxury Home Developments Trust. It operates its business in Victoria under the name “Luxury Homes” and its website <luxuryhomes .com .au>, provides information about itself and its business. The disputed Domain Name was registered by the Respondent on May 4, 2017 and it is passively held.
According to the Complainant, both the parties filed priority status applications for the domain name <homebuilder .au> in 2022. The Complainant sent emails to the Respondent seeking a commercial arrangement whereby the Respondent would either sell the Complainant the disputed Domain Name or remove its priority status for the .au domain name. The Complainant drew attention to its trademark rights and advised that its solicitors were preparing to initiate a proceeding to obtain its transfer through auDA. The Complainant claims its mark has a strong reputation and is widely known as evidenced by its substantial use over the past six years in Australia. The Respondent contends that the Complainant only launched its website on December 16, 2022, and it did not own the Domain Name <homebuilder .com .au> at the time that the Respondent registered the disputed Domain Name in 2017.
The Respondent further contends that “home builder” is a common term used to describe a business that builds homes and the Complainant provided no evidence that Australian consumers associate the words “home builder” with the Complainant outside its logos. The Complainant requests a transfer of the disputed Domain Name but its unsolicited supplemental filing adds that, in the event that the Panel does not find in its favor and does not order a transfer, the Complainant requests that the disputed Domain Name be cancelled in the alternative.
Held: The disputed Domain Name was registered by the Respondent on May 4, 2017, after the registration of the Complainant’s figurative mark in Australia, the country where the Respondent conducts its business. However, nothing on the record indicates that the Complainant used that mark prior to that date. Based on the record, the Panel is unable to find that the Complainant had any reputation at the time when the disputed Domain Name was registered. The Respondent, for its part, submits that it was unaware of the Complainant’s alleged trademark rights when it registered the disputed Domain Name, and that it registered the words “home builder” in the disputed Domain Name because they describe its business as a home builder. In view of all the circumstances, the Panel finds that to be the more plausible explanation as to why the disputed Domain Name incorporates the dominant element of the Complainant’s prior registered mark. Accordingly, the Panel does not find that the disputed Domain Name was registered in bad faith.
Based on the record, the Panel is unable to find that the Complainant has had a strong reputation or has been widely known at any time. Even though the Respondent operates in the same industry as the Complainant, the evidence of the Complainant’s use of its mark is too recent for the Panel to infer that even a home builder such as the Respondent should have been aware of the Complainant or its mark prior to the Complainant contacting the Respondent, or at least prior to both the parties filing priority status applications for the same domain name.
RDNH: The Panel notes that the Complainant has legal representation in this proceeding. The Complainant made little attempt to substantiate its assertion of a strong reputation while the evidence on record shows that its platform was operating for a period of mere days prior to the filing of the Complaint. The Complainant knew that “home builder” is a pair of dictionary words because it uses them in their generic sense on its website. It also knew that the Respondent was a home builder. While the Respondent did not disclose its plans for the disputed Domain Name prior to this proceeding, there were no reasonable grounds to believe that it had engaged in any bad faith conduct.
The record shows that the Complainant previously sought a commercial arrangement whereby the Respondent would either sell the disputed Domain Name or remove its priority status for the domain name. In the Panel’s view, the Complainant resorted to the auDRP as a “Plan B” to harass the Respondent or use the proceeding as leverage in procuring the “.au” direct domain name. Therefore, the Panel finds that the Complaint was brought in bad faith and that it constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: LegalVision ILP Pty Ltd, Australia
Respondents’ Counsel: Cooper Mills Lawyers, Australia
Did the Complainant Really Have a Trademark For ‘Colombian Coffee’?
Federación Nacional de Cafeteros de Colombia v. Vince Harasymiak, Domain Capital, WIPO Case No. D2022-4022
Panelists: Mr. Nick J. Gardner (Presiding), Mr. Mauricio Jalife Daher and Mr. Alan L. Limbury
Brief Facts: The Complainant, founded in 1927, is a non-profit organization that works for the well-being of Colombian coffee growers. The Complainant has operated a website linked to the Domain Name <cafedecolombia .com> since 1996. The Complainant says it owns several trademarks for the term CAFÉ DE COLOMBIA (which translates into “Colombian Coffee” in English). The only trademark it has provided details of is Colombian registration no 204269 registered on October 31, 1997. The trademark is a device or figurative mark containing text, see image.
The disputed Domain Name acquired by the Respondent on September 22, 2014 as a part of his business as a reseller of domain names. The disputed Domain Name, in the past resolved to a web page containing links relating to coffee, none of which directly referred to the Complainant’s mark. The Complainant alleges that the Respondent acquired the disputed Domain Name primarily for the purpose of selling it, and offered it for sale for approximately USD $15,000 which it says is an “excessively disproportionate amount”.
The Respondent contends that the Complainant does not use this mark as a trademark but as a geographic indicator/denomination of origin (“DO”) and that this means it does not have the necessary standing to bring a complaint and that in any event, the words “colombian coffee” is not confusingly similar to the CAFÉ DE COLOMBIA mark. It then says that in any event even if the Complainant does hold relevant trademark rights the words “colombian coffee” are not confusingly similar to the CAFÉ DE COLOMBIA mark given that the words in the mark are in Spanish, are in any event entirely non-distinctive and are “indisputably a descriptive combination of words”. The Respondent further contends that it acquired the disputed Domain Name as part of its business, whereby he offers domain names for sale comprising generic terms, establishes a legitimate interest and that its acquisition of the disputed Domain Name was not in bad faith.
Held: The Respondent says that the Complainant in fact uses the CAFÉ DE COLOMBIA mark as a DO and not as a trademark indicating the source of the goods in question. It says that means the present Complaint is not admissible. The term “Café de Colombia” is registered as a DO and it does appear to the Panel that the Complainant makes use of the CAFÉ DE COLOMBIA mark as part of its program supporting the DO and its use. It is not however disputed that CAFÉ DE COLOMBIA is a registered trademark in Colombia which would appear to give the Complainant standing to bring the Complaint.
The Respondent says that the Complainant in fact uses the CAFÉ DE COLOMBIA mark as a DO and not as a trademark indicating the source of the goods in question. It says that means the present Complaint is not admissible. The term “Café de Colombia” is registered as a DO and it does appear to the Panel that the Complainant makes use of the CAFÉ DE COLOMBIA mark as part of its program supporting the DO and its use. It is not however disputed that CAFÉ DE COLOMBIA is a registered trademark in Colombia which would appear to give the Complainant standing to bring the Complaint. In the present case it is perhaps debatable whether the design elements of the Café de Colombia figurative mark do comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, noting also that the words “Café de Colombia” are descriptive. It is not in the Panel’s opinion significant that the words in the CAFÉ DE COLOMBIA figurative mark are in Spanish whilst the words in the Disputed Domain Name are in English. Even if the Panel were to accept that the design elements of the mark do not overtake the textual elements in significance, an additional difficulty for the Complainant is that in either language those words are descriptive. Ultimately however the Panel does not need to reach a conclusion on this issue given its further reasoning as to legitimate interest and bad faith (see below).
The Panel agrees with the Respondent that the offering for sale of a domain name which comprises a generic or descriptive term, with no intent to target a complainant, may establish a legitimate interest. There is evidence that establishes the Respondent’s business involves holding and offering for sale a range of generic or descriptive domain names. In these circumstances, the Panel concludes that the Complainant fails to establish that the Respondent has no rights or any legitimate interests in the disputed Domain Name. The Complainant asserts that it is well-known on a worldwide basis, however, it has not produced sufficient evidence to support that claim. The Panel readily accepts that “Colombian coffee” is a well-known product likely to be familiar to many people around the world. That is not however the same as the Complainant and its mark being well-known. Conceivably the Complainant might be well-known in Colombia, or well-known to persons involved in the coffee business, however, there is insufficient evidence for the Panel to conclude, in the face of the Respondent’s signed statement to the contrary, that the Respondent had the Complainant in mind when the disputed Domain Name was acquired.
The Panel entirely accepts the Complainant’s case that in some circumstances offering for sale a domain name may of itself establish bad faith – the difficulty with the Complainant’s case is however that is not necessarily the case where the domain name in question comprises a descriptive term and is likely to be of value for that reason. In the present case, the Panel considers the evidence supports a finding that the Respondent acquired the disputed Domain Name because of its potential value as a descriptive term, and not because of any possible connection to the Complainant, who the Respondent asserts it was not aware of. The subsequent offer for sale of the disputed Domain Name is again seemingly based on the disputed Domain Name’s possible value as a descriptive term. In the opinion of the Panel, the Respondent’s actions cannot amount to either registration or use in bad faith.
Complainants’ Counsel: Cavelier Abogados, Colombia
Respondents’ Counsel: ESQwire .com PC, United States of America
Case Comment by ICA General Counsel, Zak Muscovitch: The Panelists reached the expected and correct outcome in this case. They additionally confirmed the well-established principle that generic and descriptive terms can have value independent of a Complainant’s corresponding trademark and as such, investment in such terms can constitute a legitimate interest under the Policy.
But what interests me more about this case are the issues surrounding the Complainant’s trademark. As the Panel pointed out, the Complainant had a valid Colombian trademark, even if it is primarily used as a denomination of origin. As such, it was likely a bridge too far and unnecessary for the Panel to look behind a valid trademark in the circumstances, despite the concerns that the mark was not being used as a trademark per se.
The issues surrounding the figurative aspects of the Complainant’s trademark are perhaps more troublesome. We can of course accept that the translation of the word components of the mark must be considered using the doctrine of foreign equivalents. That being so, a direct translation appears to be “Coffee from Colombia” rather than “Colombian Coffee”, but perhaps that is close enough. But what about the figurative aspect? As the Panel correctly noted from the WIPO Consensus View, where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP.
Here, it seems very unlikely that a credible national trademark office employing widely accepted standards regarding the prohibition on registration of descriptive marks, would allow a word trademark for COLOMBIAN COFFEE. And that is likely why the Complainant apparently only has a figurative mark as it could not possibly obtain a trademark for the descriptive term alone. The absence of a disclaimer is not determinative. It may be that the law in Colombia is similar to Canada’s for example, where disclaimers of the unregistrable portion of the mark are not required. Given the foregoing, this would seem to be the quintessential example of a trademark where the design element is the only portion of the mark which confers trademark rights on a Complainant, yet the Complainant sought to harness the words within its mark to deprive the Respondent of a domain name corresponding to a descriptive term over which the Complainant had no trademark rights.
The Panel was attuned to this issue, stating that, “it is perhaps debatable whether the design elements of the Café de Colombia figurative mark do comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence”, and ultimately determined that it “does not need to reach a conclusion on this issue given its further reasoning as to legitimate interest and bad faith”. It is of course a prudent approach by a Panel to decide a case on the clearest and most obvious aspects while punting on the less clear aspects which need not be determined to reach an overall conclusion on the case. Yet one cannot help but feel a little disappointed that this could have been a great opportunity to highlight a great example of a mark which does not confer rights in the constituent words for the purposes of the UDRP. Indeed, it seems highly disingenuous for the Complainant to try to harness this design mark to get at the Respondent’s domain name.
Complainant Demonstrated Respondent’s ‘Actual Knowledge’ of Complainant’s Marks
Snap Inc. v. hamdy shatah, NAF Claim Number: FA2212002025487
Panelist: Ms. Sandra J. Franklin
Brief Facts: The Complainant operates a social media platform and holds registrations for the SNAP mark with numerous authorities, including the USPTO (registered on June 4, 2013). The Respondent registered the disputed Domain Name on March 21, 2019. The Complainant alleges that the Respondent’s use of the disputed Domain Name to divert traffic to the Respondent’s website for commercial gain is not a bona fide offering of goods or services or a legitimate non-commercial or fair use, and evinces bad faith. The Respondent did not file a response.
Held: The Complainant provides evidence showing that the Respondent uses the disputed Domain Name to advertise services related to the Complainant’s services. The Panel finds that this unauthorized use of the disputed Domain Name is not a bona fide offering of goods or services or a legitimate non-commercial or fair use, and thus the Respondent has no rights under Policy. Further, using a disputed Domain Name to divert Internet users away from a complainant and for commercial benefit evinces bad faith attraction for commercial gain under Policy.
The Complainant argues that the Respondent had actual knowledge of the Complainant’s rights in the SNAP mark when it registered the disputed Domain Name. To support this assertion, the Complainant points to its trademark registrations and the reputation and recognition of the SNAP mark, as well as the Respondent’s use of the disputed Domain Name to offer services related to the Complainant and its display of the SNAP mark and logo on the <snaps7 .com> website. The Panel agrees and finds that the Respondent had actual knowledge of Complainant’s rights in the SNAP mark, and thus registered it in bad faith under Policy.
Complainants’ Counsel: Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, California, USA
Respondents’ Counsel: No Response