Welcome to the latest UDRP digest (vol 2.35)! Here we are to report on some of the past week’s most interesting UDRP decisions. Join us we take a closer look at:
‣ Circumstantial Evidence of Hidden Registration Date (NeoMetals .com *with commentary)
‣ Deloitte Fails to Prove DontKYC .COM Targeted its DKYC Mark (DontKYC .com)
‣ Not a “Clear Case” of Cybersquatting (1voice .com)
‣ Bogus ‘Renewal in Bad Faith’ Argument Fails to Assist Complainant in Domain Name that Pre-dates Trademark Rights (AirDNA .com)
‣ Pania’s Vision No Match for Panavision (PaniaVision .com)
Circumstantial Evidence of Hidden Registration Date
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant was incorporated in 2001 with initial focus on gold and base metals exploration mining, and since evolved into exploration and development of advanced minerals. The Complainant changed its name to Neometals Ltd. on December 12, 2014, with the focus of its business upon “new” world metals and around the same time registered <neometals .com .au>, where it does online business. The Complainant is listed on the Australian Stock Exchange (“ASX”) and owns Australian word mark NEOMETALS (filed on December 18, 2014; registered on January 10, 2017) and another figurative trade mark. The disputed Domain Name was registered on August 5, 2012.
The Complainant asserts that the Respondent must have acquired the disputed Domain Name after this date. The Complainant provides screenshots from the Internet Archive of the corresponding website showing initial non-configured Apache server page on June 14, 2013; a hosting company’s parking page, without advertisements, on January 1, 2014; a website allegedly for a business named “NM Neometals” or “Neometals LP”, allegedly specializing in technology transfer for the clean mining and advanced metals sector on December 21, 2014; and apparent references to the Complainant’s business from about January 20, 2022. The latter incarnation of the website is entitled “NEOMETALS LP | Technology Without Borders” although it also uses the Complainant’s logo and figurative mark, together with an image of, and quotes from, the Complainant’s managing director contained in a press release dated June 20, 2017, and an investor briefing dated August 3, 2020. The footer of this site states “© 2022 NEOMETALS LP | WordPress Theme”.
Held: The Panel is satisfied that the disputed Domain Name is being used in bad faith. The associated website appears to impersonate the Complainant by reproducing an image and quotes from the Complainant’s managing director, and also features the Complainant’s NEOMETALS trademark. This demonstrates a clear intent to target the Complainant’s rights, potentially for the purpose of disrupting the business of a competitor or fraud, or perhaps to bring the disputed Domain Name to the Complainant’s attention with a view ultimately to engaging in purchase and sale negotiations. However, the creation date of the disputed Domain Name pre-dates the coming into existence of the Complainant’s trademarks, and even the Complainant’s change of name, by at least some two years. Nevertheless, in this case, the Complainant raised a compelling argument and as a result, the assessment of registration in bad faith would take place not as at the original date of registration in 2012 but as at the date of such acquisition.
For that reason, by way of Procedural Order No. 1, the Panel invited the Respondent to provide any evidence or a suitable explanation pertaining to the matter, with a warning that an inference might be taken. The Respondent did not reply, therefore, the Panel inferred from the Respondent’s silence on this matter that the Complainant’s suspicions are probably correct. The most reasonable assumption to make in the present case is that the Respondent acquired the disputed Domain Name around the time when the associated website began to display substantive content, that is, around the end of December 2014.
The Panel notes that the acquisition came almost immediately on the heels of the Complainant’s official announcement of its change of name, and the filing of the Complainant’s trademark applications. And it is clearly being used to target the Complainant’s rights in a manner which suggests opportunistic bad faith commencing around late December 2014. Accordingly, the record does not indicate any possible good faith motivation to the Panel which the Respondent might have put forward in this matter had it participated in the administrative proceeding.
Complainants’ Counsel: Wrays, Australia
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: We are all familiar with the additional obstacles presented by GDPR when naming a UDRP Respondent. Fortunately, the new resulting procedures at least afford the Complainant the opportunity to amend its Complaint once the Provider informs the Complainant of the underlying identity of the Respondent.
The other fallout from GDPR however, is the deterioration of historical Whois data. Helpful historical Whois data from 2018 (when GDPR went into force) onwards, is all but absent. Even prior to 2018, historical Whois data was often spotty as a result of privacy protection. Nevertheless, it was sometimes available, whereas since 2018, it rarely is. For Complainants who need to show that their trademark pre-existed a disputed domain name’s date of registration, the absence of helpful available historical Whois data can be a real problem.
We see how this lack of helpful data plays out in this case. The Panelist was put in the difficult position of making a decision based on an incomplete record, especially due to the failure of the Respondent to participate in the proceedings.
Here, the Whois records showed that the disputed Domain Name was created on August 5, 2012, but the Complainant was unclear on when the Respondent actually registered the Domain Name. The date upon which the Respondent registered the Domain Name was crucial for the Complainant as the Complainant only adopted its mark in 2014 and only obtained a trademark registration in 2017. Accordingly, the Complainant had to prove that its trademark rights pre-existed the Domain Name registration date or else it could not possibly be a case of bad faith registration, yet this historical Whois data from the crucial period was unavailable.
The Complainant tried to show that an “impersonating” website only began resolving in association with the Domain Name in 2014 and therefore encouraged the Panel to draw the inference that this likely represented a change in ownership of the Domain Name at that time. This kind of circumstantial evidence is precisely the kind that can assist Complainants in proving a registration date when historical Whois data is unavailable. Nevertheless, in the absence of any Response shedding some light on the registration date, the Panelist was unsatisfied with this circumstantial evidence alone, and prudently issued a Procedural Order inviting the Respondent to indicate when she first registered the Domain Name. When no response to the Order arrived, the inference was drawn that had the Respondent been able to produce evidence of an earlier registration date, she surely would have and therefore the Complainant’s suspicion of a registration date in 2014 were probably correct.
Ultimately, however, the Panelist was left with only the facts made available by the Complainant itself and the results of the Panel’s own limited factual research. The Panel noted that the Complainant raised a compelling argument to draw an inference of the registration date in 2014, based inter alia upon the “impersonation” of the Complainant via the website from 2014 onwards. Given the circumstances, and in particular given the Respondent’s failure to even respond to the Procedural Order, the Panelist concluded that the Domain Name registration likely occurred contemporaneously with the creation of the “impersonating” website in 2014, which must have occurred subsequent to the Complainant acquiring trademark rights.
Research conducted independently of the proceeding (and therefore not made available to the Panelist) seems to indicate that the registrar and webhosting for the impugned website appears to be the same consistently both before and after the alleged Domain Name transfer date, raising a question as to whether the Domain Name indeed changed hands in 2014 as alleged by the Complainant. Furthermore, the impugned website may not have been a ruse (despite a reasonable conclusion that it may have been in the context of this dispute), but rather may have actually been a somewhat odd but nevertheless genuine website belonging to a company called NeoMet, with its own additional website located at NeoMetTechnologies .com – a domain name which was registered by the same Respondent in 2010, and which uses the same registrar and webhosting service as the disputed Domain Name.
This other apparently related website also references the Complainant, seemingly indicating that the Complainant is in fact a “Project Client” of the Respondent. Although it cannot be said for certain, it does appear possible that the Respondent did register the Domain Name in 2012 – prior to the Complainant’s trademark rights – and that the associated website was not intended to impersonate the Complainant but rather was accurately indicative of an ongoing business relationship with the Complainant, and accordingly that may have been why the Complainant’s CEO was quoted on the Respondent’s website and that is why the Complainant’s logo appeared as well.
It would however, be hard to imagine that being the case since if it were, surely the Complainant would have been aware of this relationship and brought it to the attention of the Panel. Moreover, short of not receiving notice of the proceeding, it would be difficult to explain why the Respondent never came forward with this as an affirmative defence. But the Respondent never did come forward with this information and neither did the Complainant. As a result, the Panel was forced to adjudicate a case with only limited facts and it was therefore impossible to conclude with certainty, what the actual registration date was and what had transpired between the parties, if anything.
It is unfortunate that Complainants and Panelists are put into such difficult situations where there is inadequate supporting data and evidence on a crucial issue. Panelist Andrew Lothian is amongst the very finest that the UDRP has to offer and consistently delivers extraordinarily well reasoned and impressive decisions. Nevertheless, in the absence of sufficient evidence of when a domain name was registered, it is often impossible to draw inferences and conclusions with reasonable certainty in what already is an abbreviated type of proceeding. What can be done about this? Absent a reinvigoration of historical Whois details, Complainants should conduct robust investigations so that Panelists are furnished with as much information as possible and can thereby better reach a well-supported and more certain conclusion. Where a Complainant has not furnished sufficient evidence or has not undertaken a sufficient investigation, a Complainant should not expect a Panelist to undertake guesswork, even when a Respondent fails to respond. Ultimately, the absence of historical Whois data is a serious problem which should be solved. In the interim we are unfortunately sometimes faced with an untenable situation, but we mustn’t compensate for that by expecting Panelists to investigate Complaints on their own or to draw crucial inferences without sufficient evidence provided by the Complainant.
Deloitte Fails to Prove DontKYC .COM Targeted its DKYC Mark
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant is part of the Deloitte group which offers audit, assurance, consulting and advisory services worldwide for the last 175 years. Additionally, it offers a service for KYC operations, called DKYC, which is said to involve collecting and qualifying data and documents, risk scoring and due diligence level maintenance, and related services. The Complainant owns the Benelux and an International trademark, registered on June 19, 2021 and August 11, 2021, respectively, both for DKYC. The disputed Domain Name was registered on August 12, 2021. The Respondent did not reply to the Complainant’s cease and desist letter dated October 15, 2021. As of May 6, 2022, the disputed Domain Name resolves to a website, which read: “DKYC is the first fintech token with a sole focus on privacy and financial freedom for all” and invited users to “Anonymously Spend Crypto”. The site included a number of “D”-related heading/links, namely “DCashTM”, “DSwapTM” and “DPayTM”.
The Complainant alleges it is inconceivable that the Respondent was unaware of the Complainant when it registered the disputed Domain Name, given the fame of the Complainant’s group and the fact that the disputed Domain Name was registered on the same day that the Complainant’s international trade mark was filed can hardly be a coincidence. The Complainant further contends that the Respondent’s website is illegal, and it also damages the Complainant’s reputation as the Respondent promotes anonymous financial transactions, directly contrary to the purpose of the Complainant’s “know your client” service, which is concerned with identification and traceability of clients in the financial world. The Respondent argues that the Don’t KYC is a small community-based non-profit token operating on the Binance Smart Chain allowing end-users to use their dividends to fund micro-transactions and if it had set out to target the Complainant, it would be more likely to have chosen a Domain Name containing the acronym “DKYC” in some form, rather than the Respondent’s full unabbreviated name.
Held: One matter that the Panel is concerned about is the fact that the Respondent registered the disputed Domain Name the day after the Complainant applied for its international trade mark. The Respondent acknowledges that this appears sinister but that the events are merely coincidental, while it provides reasonable explanation. Although the offerings of both the parties have relevance to the concept of “know your customer”, however, it seems to the Panel that the parties approach the issue from opposite ends of the spectrum and that their services are markedly different. The complete name, “Don’t KYC”, may indeed be thought of as conveying the very opposite of the kind of service likely to be sought by the Complainant’s clients and therefore a far from obvious formulation to use if the Respondent was out to create confusion on the part of the Complainant’s clients.
In this regard, the Panel notes that the disputed Domain Name is not <dkyc .com> but, rather, <dontkyc .com> -which is reflective of the term “don’t know your customer” – and that, to the extent the Complainant takes issue with use of “DKYC” on the website at the disputed Domain Name, that is a matter beyond the scope of the present proceeding. Accordingly, while the Panel did not find this case straightforward and notwithstanding the lack of formal statement of truth from the Respondent, having carefully weighed up all of the above matters, the Complainant did not convince the Panel on the balance of probabilities that the Respondent either registered or used the disputed Domain Name in order to illicitly target the Complainant’s mark. Of course, it remains open to the Complainant to take the Respondent to court for infringement of its intellectual property rights, if it considers that it has grounds to do so.
Complainants’ Counsel: Office Freylinger S.A., Luxembourg
Respondents’ Counsel: Self-represented
Not a “Clear Case” of Cybersquatting
Panelist: Mr. Robert A. Badgley
Brief Facts: The US Complainant provides telecommunication and VoIP services and operates through <1voicetech .com> and <1voice .net>. It holds two registered trademarks for 1VOICE (including a word mark and a stylised mark) registered with the USPTO on April 26, 2022 (first use in commerce: May 3, 2013). The disputed Domain Name was acquired by the Respondent on July 6, 2018 via auction for USD $8,000 and currently resolves to a parking page with hyperlinks, including “Audio to Text,” “Phone Voip Service,” and “Speak to Text.” The Complainant alleges that these links lead the user to sites operated by Complainant’s competitors, and these links provide pay-per-click (“PPC”) revenue for the Respondent.
The Complainant annexed to the Complaint, a handful of invoices to its clients going back to 2015 and a number of marketing materials showing its use of the mark 1VOICE. The Complainant further annexed to the Complaint a copy of the Respondent’s curriculum vitae, which CV shows that Respondent is computer-savvy and well-versed in telecommunications software and the “Domain Name System”. The Respondent contends that he purchased the Domain Name as a part of a bona-fide business plan to build a social media platform for political discussion and voter engagement. The preparations and detailed planning occurred in 2016 and 2017 and till date the Respondent has spent “tens of thousands of dollars” and “thousands of hours” to develop the said business.
Held: The Panel concludes that the Complainant failed to carry its burden of proving bad faith registration of the Domain Name. For a complaint to succeed under the UDRP there must be a showing (among other things) that, on a balance of probabilities, the Respondent more likely than not had the Complainant’s trademark in mind when registering the domain name at issue. Here, that showing has not been made. Although the trademark registrations indicate a date of first use in commerce going back several years before the Respondent bought the Domain Name at auction, there is no evidence that the mark was well known enough that by July 2018, the Respondent would likely have been aware of it. The actual registration of the marks did not occur until well after the Domain Name had been acquired by the Respondent. In a sworn affidavit, the Respondent states that he had never heard of the Complainant or its trademark at the time he purchased the Domain Name.
The Panel also notes that the combination of words “one voice” (including as used with a number) is not unusual. This consideration, coupled with the lack of evidence of pre- registration strong common law rights in July of 2018, make Respondent’s flat (and sworn) denial of awareness of the Complainant’s trademark rather plausible. It bears noting that the UDRP is concerned chiefly with abusive domain name registration and use, and is not designed primarily to address disputes over competing trademark rights or questions of trademark seniority and the like. It suffices here to conclude that this case does not present a clear instance of cybersquatting.
Complainants’ Counsel: Vorontsov Law Firm, PLLC, United States
Respondents’ Counsel: Self-represented
Bogus ‘Renewal in Bad Faith’ Argument Fails to Assist Complainant in Domain Name that Pre-dates Trademark Rights
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant is a world’s leading provider of short-term vacation rental data and analytics, operating in over 120,000 global markets. The Complainant owns rights in the AIRDNA mark through registration with the USPTO dated May 21, 2019, claiming first use in commerce in April, 2016 and use in a different form at least as early as December 2014. The disputed Domain Name was created on August 30, 2011 and is held passively. The Complainant argues that there is nothing to conclude that the Respondent is the original registrant of the disputed Domain Name because the Respondent did not respond to the Complainant’s efforts to contact him in 2017, 2018 and 2022.
The Complainant further contends that the Respondent had constructive notice of Complainant’s rights dating back to at least May 2019 when the Complainant’s mark was registered, more than two years before Respondent renewed the Domain Name on June 19, 2021. Further, given the Complainant global presence, it is highly unlikely that the Respondent, regardless of its location, was unaware of the Complainant’s use of, and rights in, the AIRDNA mark at the time of, at least, the most recent renewal. The Respondent did not file a Response.
Held: The Panel is not persuaded by the Complainant’s efforts to contact the Respondent have any bearing upon the date when the Respondent registered the domain name. Accordingly, the Panel finds that the disputed Domain Name was registered by Respondent in 2011, several years before the first claimed use in commerce of Complainant’s AIRDNA mark, so Respondent could not possibly have had Complainant’s mark in mind at that time. The Complainant further bases its case on that renewal being in bad faith in breach of the Policy, as explained in Eastman Sporto Group LLC v. Jim and Kenny, Case No. D2009-1688 (WIPO, March 1, 2010). However, there is an important difference as in “Eastman Sporto”, the respondent used the domain name <sporto .com> between 1997 and 2008 for businesses that did not compete with the complainant. Thereafter all use was cybersquatting on complainant’s SPORTO mark.
The disputed Domain Name does not resolve to an active website and there is no evidence of any change in the inactive use of the Domain Name prior to or after Complainant’s first claimed use of its mark. Although panels have held passive use to constitute bad faith in certain circumstances, such as in the leading case of Telstra Corporation Limited, those circumstances predominantly involve domain names registered after the relevant trademark rights have arisen. Those circumstances are not present here. Hence the Panel is not persuaded that the Respondent’s renewal of the Domain Name registration amounted to registration in bad faith nor that the Respondent’s continued passive use of the Domain Name amounts to use in bad faith, either before or after Respondent’s renewal of the Domain Name registration.
Complainants’ Counsel: Amanda Marston of Holland & Hart LLP, Colorado, USA
Respondents’ Counsel: No Response
Pania’s Vision No Match for Panavision
Panelist: Mr. John Swinson
Brief Facts: The Complainants business was founded in 1954 to design and manufacture wide-screen film photographic and projection lenses. Currently, the Complainants provide ultra-precision digital imaging and visual cinematographic equipment, including cameras, optical lenses, photographic equipment, lighting, and accessories. The first Complainant owns more than 180 trademark registrations around the world for PANAVISION, including United States registrations dated May 22, 1956 and September 5, 1967. The disputed Domain Name was registered on January 8, 2022. On July 30, 2022, the disputed Domain Name resolved to a “HTTP Test Page” provided by a software program called CentOS Web Panel. Presently, the disputed Domain Name does not resolve to an active website.
The Respondent did not file a Response, but the Complainant provided a printout of a LinkedIn profile page for the Respondent, who appears to live in India and is said to be associated with the “Society for Animation in Delhi”. The Complainant adds that the Respondent cannot rely solely on his given name to establish a legitimate right to use the disputed Domain Name and must demonstrate that he is commonly known by the complete disputed Domain Name. Further, the Complainant relies on doctrine of passive holding and alleges, given its trademark is well-known globally, the disputed Domain Name is an obvious misspelling of the Complainant’s PANAVISION trademark.
Held: The Panel undertook some limited factual research and discovered that the Respondent appears to operate in the audio-visual media field (a field in which the Complainant is widely known) in India. Further, the Respondent may be using the term “paniavision” in relation to an online television station in New Delhi and related audio-visual presentations. The Procedural Order invited the Respondent to confirm his knowledge (or lack thereof) of the Complainant’s widely-known trademark PANAVISION and to clarify (and provide evidence of) his use of the term “paniavision” but no response was received. It is likely that the Respondent, Mr. Pania, who operates in a field of business in which the Complainant is well-known, selected “vision” as part of the disputed Domain Name because of the Complainant. The mere fact that the Respondent’s name is “Madan Pania”, does not per se entitle him to take advantage of the Complainant’s PANAVISION trademark for his own gain.
The Panel is of the view that the Respondent was aware of the Complainant and its distinctive and well-known trademark at the time of registration of the disputed Domain Name. It appears from the evidence provided by the Complainant that the Respondent has an interest in animation. The choice of the term “vision” instead of any other industry terms, such as “animation” or “media”, seems precisely intended to suggest an association with the Complainant and take advantage of the fame and recognition of the Complainant’s trademark. The disputed Domain Name is not being used and likely diverts Internet traffic away from the Complainant’s true websites. The passive holding of a Domain Name that is nearly identical to a well-known trademark, without obvious use for a legitimate purpose, or any explanation from the respondent, can be evidence of bad faith as required by the third element of the Policy.
Complainants’ Counsel: Bryan Cave Leighton Paisner LLP, United States
Respondents’ Counsel: No Response