Welcome to this week’s UDRP Digest summarizing the most intriguing cases of the past week on initiv .com, Guess-Work .com, WanderList .com, and more! You’ll also find commentaries by Zak Muscovitch, ICA General Counsel, on two of the cases. We hope you’ll enjoy another fantastic Digest!
Complainant Attempted to “Deceive” Panel
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant is a multinational pharmaceutical company operating in more than 100 countries. The Complainant owns a number of trademarks for INITIV, the earliest of which is a French trademark, filed on December 19, 2019 (registered on April 10, 2020). The disputed Domain Name was registered on November 5, 2019 and used to resolve to a Registrar parking page with assorted pay-per-click (“PPC”) links such as “En Ligne Menu” (online menu), “Commande Course en Ligne” (order shopping online) and “Lancer une Boutique en Ligne” (launch an online store). The Complainant seeks to give the impression that the Complainant supplies pharmaceutical products for sale under the name “INITIV” and that such right predates registration of the disputed Domain Name by the Respondent. The Respondent did not file a response.
Held: The Panel treats the disputed Domain Name registration date of November 5, 2019, as the date when the Respondent acquired the disputed Domain Name. The Complainant did not contend that it had a later acquisition date. When invoking its registered trade mark rights under the first element, the Complainant implicitly acknowledged that its registered trade mark rights post-date the Respondent’s acquisition of the disputed Domain Name. The difficulty for the Complainant is given that its trademark registration post-dated the Domain Name registration, it failed to provide evidence that it acquired any common law rights in the term “INITIV” before registration of the disputed Domain Name. Accordingly, the disputed Domain Name could not have been registered in bad faith. This is fatal to the Complainant’s case irrespective of the nature of any later use of the disputed Domain Name because the Complainant is required to prove both registration and use in bad faith.
RDNH: The Panel was unable to find any evidence of any actual trading activity by the Complainant under the name “INITIV” within the voluminous annexes to the Complaint, or even when searching on Google. To clarify the Complainant’s position, the Panel issued Procedural Order No. 1, requesting that the Complainant provide, amongst other things, evidence of the date when it allegedly started trading under the name “INITIV” and of the extent of its alleged reputation in that name as of the date that the Respondent acquired the disputed Domain Name. The Panel also invited the Complainant to give reasons why the Panel should not make an order of RDNH against the Complainant if the Complainant was unable to provide the requested information.
The Complainant did not respond – and its failure to do so is telling. The Panel has no doubt that the Complainant was well aware of the requirement – and its inability – to establish prior trademark rights under the third element of the Policy. In the Panel’s view, the Complainant set out to deliberately mislead the Panel and this is a clear case of RDNH. The Panel acknowledges that the Complainant may well be unaware of the attempted deception undertaken in its name and that the fault may lay entirely with the Complainant’s representatives.
Complaint Denied (RDNH)
Complainants’ Counsel: Selarl Marchais & Associés, France.
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
Unsurprisingly, here we have another erudite decision by Panelist, Adam Taylor. Previously in Volume 2.11, I noted how in the undefended McCoy .com case, Mr. Taylor admirably took notice of, and addressed the crucial point that a complainant must be able to demonstrate rights accruing prior to the registration of the disputed domain name.
In the present case, the Complainant was remarkably found to have misled the Panel by giving the impression that it was entitled to the Domain Name notwithstanding that it provided no evidence of any such prior rights. Even when given the opportunity to provide such evidence, the Complainant apparently ignored the Procedural Order. This left the unmistakable impression that the Complainant had attempted to deceive the Panel into transferring a Domain Name which was apparently registered prior to the Complainant having acquired any rights. As the Panel noted, there is no clearer example of Reverse Domain Name Hijacking.
But where this case becomes even more interesting, is that the Panel observes that “the Complainant may not even have been aware of the attempted deception undertaken in its name and that the fault may lay entirely with the Complainant’s representatives”. As noted in my case comment regarding the Enodo .com case in Vol. 2.28, more often than not, it is Complainant counsel – rather than the Complainant itself – that are primarily, if not entirely responsible for bringing cases that amount to RDNH. As such, if RDNH findings are to have any deterrent effect, it is Complainant counsel who should also be called out for bringing such cases, as was done here.
Luke Guess Loses His Domain Name to Guess?
Panelist: Mr. Charles A. Kuechenmeister
Brief Facts: The Complainant is a well-known manufacturer and distributor of clothing, apparel and accessories. It owns rights in the GUESS mark through its registration of the mark with the USPTO dated March 17, 1987. The disputed Domain Name was created on February 29, 2012 and is currently inactive. The Complainant alleges that the Respondent had at least constructive knowledge of the Complainant and its rights in the GUESS mark when it registered the disputed Domain Name and it was registered using a privacy service. The Respondent did not file any response. However, the WHOIS information furnished to the Forum by the registrar and the WHOIS report submitted as amended Complaint lists “Luke Guess / Guesswork” as the registrant of the Domain Name.
Held: In the absence of evidence that a Respondent is authorized to use a complainant’s mark in a Domain Name or that a Respondent is commonly known by the disputed Domain Name, the Respondent may be presumed to lack rights or legitimate interests in the domain name. These names in the WHOIS are almost identical to the Domain Name and to the Complainant’s name but not conclusive because the evidence before the Panel gives no indication that the Respondent used either of these names for any purpose other than to register the disputed Domain Name. There must be some evidence, independent of the registration, that the respondent used the name in a business or some other undertaking, or that persons have by other means come to associate the Respondent with that name. Further, the passive holding of a domain name is evidence of bad faith. This may not fit within any of the circumstances described under the Bad Faith clause of the Policy but the non-exclusive nature of Policy allows for consideration of additional factors in an analysis for bad faith, and registering and using a Domain Name that is confusingly similar to a trademark with which the Respondent has no connection is evidence of opportunistic bad faith.
Complainants’ Counsel: Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This is yet another very troubling case in which Panelist Kuechenmeister ordered the transfer of an undefended domain name under questionable circumstances.
Readers may recall that in Vol. 2.12, I wrote about how Mr. Kuechenmeister transferred the undefended domain name, LionsHead .com. The Panelist had apparently assumed without evidence, that the very recent 2021 trademark registration predated the apparently longstanding Domain Name registration. Additionally, in Lionshead, the Panelist apparently misapprehended and misapplied the doctrine of passive holding under the Policy. The Panelist held that the non-use of a domain name constituted “passive holding” and that was evidence of bad faith. As pointed out in Vol. 2.12, this is a misstatement of the doctrine of passive holding as under the doctrine – bad faith registration is a precursor to finding that passive holding is evidence of bad faith. Indeed, as explained in Vol. 12, in the Telstra case (which originated the doctrine), the panel first found bad faith registration based upon numerous trademark registrations, widespread reputation, a highly distinctive domain name, and the “inconceivability” of any legitimate use of the domain name other than by the complainant. It was only after making a well-supported finding of “bad faith registration” in the first place, that the panel in Telstra was able to continue on to find “bad faith use” based upon non-use or “passive holding” of the domain name. In Lionshead, the Panelist leaped to bad faith registration solely on non-use of the Domain Name without any apparent evidence supporting bad faith registration in the first place, simply stating, “Passive holding of a domain name is evidence of bad faith”.
Remarkably, in the present guess-work .com case, the Panelist expressly repeated this apparent misstatement verbatim, along with the accompanying entire paragraph from his Lionshead decision. The below paragraph appears verbatim in both decisions:
“The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. As discussed above, the Domain Name resolves to an inactive web site. Passive holding of a domain name is evidence of bad faith. This may not fit within any of the circumstances described in Policy ¶ 4(b) but that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin – This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (FORUM Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Given the non-exclusive nature of Policy ¶ 4(b), failure to make active use of a confusingly similar domain name is evidence of bad faith. Caravan Club v. Mrgsale, FA 95314 (FORUM Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).”
In the present guess-work .com case, the Panelist once again has inferred bad faith registration based upon non-use of the Domain Name, despite the apparent absence of the factors required to invoke the doctrine of passive holding. Can it reasonably be said that it is “inconceivable” (as required under Telstra), that the Respondent could have any legitimate interest in the Domain Name despite “guess work” being an extraordinarily common phrase? We can accept the Panelist’s point that just because a Respondent lists his personal name in the Whois details as corresponding to the Domain Name is not in and of itself evidence of a legitimate interest, particularly where the case is undefended. Yet in the absence of any evidence of use of the Domain Name for something related to the Complainant, can it reasonably be said that the Respondent was likely targeting the Complainant, especially given the ubiquity of the English word, “guess”? If the Panelist had taken a critical view of the Complaint and required, as the case law demands, that a Complainant genuinely prove its case with evidence, the Panelist would likely have found that there was no factual or legal basis to transfer the Domain Name under the Policy (See “UDRP Panelists” Getting the Standard Right Where No Response is Filed” (Zak Muscovitch and Nat Cohen, CircleID, March 7, 2019).
It is unfortunate that this Panelist appears to be forming a pattern of transferring undefended domain without adequate justification. No panelist is immune from error and as such can inadvertently get a single case wrong on occasion. But here, we apparently have two cases which both demonstrate an apparent continued and express misapprehension and misapplication of the doctrine of passive holding in connection with a Domain Name which corresponds to a term which is not uniquely distinctive of the Complainant, therefore giving rise to serious concern that justice is being repeatedly miscarried.
It is tempting to fault the Respondent for not defending and conclude that this outcome is what it gets as a result. While it is acknowledged that there is a price to be paid by defaulting Respondents, that does not necessarily negate the general requirement that a Complainant prove its case and that the evidence, Policy, and jurisprudence must support the transfer.
Complainant Wanders the Wrong Path
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The US Complainant is a travel agency, owns rights in the WANDERLIST mark through registration with the USPTO dated September 6, 2011 (first claimed use of mark in commerce is October 5, 2009). The disputed Domain Name was registered on August 28, 1998 and is held passively. The Complainant contends that the Respondent fails to use the disputed Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use. The Respondent did not file a Response.
Held: In view of Respondent’s failure to submit a response, the Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. Here, the Respondent’s registration of the disputed Domain Name predates Complainant’s first claimed rights in the WANDERLIST mark, and thus the Complainant cannot prove registration in bad faith per Policy, as the Policy requires a showing of bad faith registration and use. The Respondent registered the disputed Domain Name, which consists of two descriptive words, on August 28, 1998. The Complainant first used the WANDERLIST mark in commerce on October 5, 2009. The Respondent could not have entertained bad faith intentions respecting the WANDERLIST mark because it could not have contemplated Complainant’s then non-existent rights in WANDERLIST mark at the moment the domain name was registered. Therefore, the Panel finds that the Respondent did not register the disputed Domain Name in bad faith.
Complainants’ Counsel: Shannon W. Bates of Harper & Bates LLP, Texas, USA
Respondents’ Counsel: No Response
Complainant Attempts a Wild Shot at an Unrelated Domain Name
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a provider of assessments and related services to assist with higher education admission. It holds multiple trademark registrations for ACT including United States trademarks, registered on September 28, 2004 and April 22, 2014, respectively. The Complainant makes active use of the domain name <act .org> in connection with a website where it provides information about itself and its goods and services. The disputed Domain Name was registered on July 8, 2015 and resolves to a website in English that used to make available for download copies of ACT practice tests and that currently makes available for downloads copies of practice tests from other providers. According to evidence presented by the Complainant, a panel in a prior proceeding under the Policy between the same Parties found that the Respondent had registered and used the domain name <crackact .com> in bad faith.
The Complainant alleges that the sole purpose of the disputed Domain Name is to trick unsuspecting customers who are looking for the Complainant’s ACT College and career preparation products and services into purchasing products and services that are not, in fact, affiliated with the Complainant in any way. The Respondent contends that the Respondent’s website provides GRE and GMAT test materials and only provides a few ACT test-related links on one page on the site and as soon as he received the Complaint, the Respondent deleted the links to ACT tests.
Held: The disputed Domain Name does not resemble the ACT trademark. It is neither identical nor confusingly similar to the ACT mark; it does not even contain any approximation of the mark, e.g., by initials or otherwise, such that the website content could reasonably affirm such resemblance at the level of the disputed Domain Name. While the content of the website associated with the disputed Domain Name can in some cases be taken into account to confirm a prima facie case that a respondent seeks to target a trademark through a Domain Name, such content is not a substitute for a notion of confusing similarity between the disputed Domain Name itself and the trademark.
The Complainant must satisfy the three elements in paragraph 4(a) of the Policy with respect to each disputed Domain Name. The fact that the Complainant prevailed as regards one domain name does not provide standing regarding another domain name, even one held by the same respondent and used in the same or a similar way. The broader context could be relevant if there were a prima facie notion of confusing similarity vis-à-vis the disputed Domain Name but that is not the case here. The Complainant alleges that the Respondent infringes its copyright in the ACT practice tests. The Panel recalls that claims of copyright infringement do not fall within the scope of applicable disputes set out in the Policy. Therefore, the Panel does not find that the disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
Complainants’ Counsel: Davis Graham & Stubbs LLP, United States
Respondents’ Counsel: Self-represented
Domainers’ “Obligation” to Avoid the Registration of Trademark-Abusive Domain Names
Panelist: Mr. Fabrizio Bedarida
Brief Facts: The Canadian Complainant filed for IDEACITY trademark on December 8, 2000 (registered on October 8, 2002). The Respondent purchased the disputed Domain Name at a NameJet public auction for USD $2,556 on December 14, 2019. The Complainant alleges the Domain Name (at the time the Complaint was filed) was used to redirect site visitors to <stripchat .com> i.e. a website that hosts pornographic material. However, the Respondent argues that the disputed Domain Name used to redirect users to different websites depending on the user’s cookies and past browser history. At the time of this decision, the Domain Name resolves to a page displaying a message advertising that the Domain Name might be for sale.
The Complainant further alleges that the redirect is being used to capture traffic based on users mistakenly typing <ideacity .com> instead of <ideacity .ca> and the Complainant could not find any evidence of content relating to a legitimate business providing goods or services. The Respondent contends to be a professional domain name investor (i.e. a Domainer) and was involved in a UDRP action in the past, but it prevailed in it. The Respondent further argues that it purchased the disputed Domain Name because of the generic value of the terms and owns numerous other domains with the words “idea” and “city” included.
Held: In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. The Panel observes that in this case the disputed Domain Name perfectly corresponds to a trademark that was already registered and in use for almost 20 years, and that the Respondent is a Domainer, therefore an expert in the field of domain name registrations. The Panel’s view is that the Respondent’s behaviour falls under the concept of wilful blindness, and that the Respondent knew or should have known of the registered trademark of the Complainant when registering the Domain Name. In addition the Panel notes that the Respondent disclosed that it was involved in a previous UDRP proceedings, however, the Respondent did not report any UDRP proceeding that it lost. The Panel, in accordance with its powers (as to independent research by UDRP panels) conducted an independent search and found that the Respondent was involved in several UDRP proceedings, and that it was the losing party in at least two prior UDRP proceedings.
The fact that before registering the disputed Domain Name the Respondent was involved in several proceedings, and more pertinently, the fact that it was also the losing party in two of them, reinforces the Panel’s view that as a Domainer and an expert in this field the Respondent has an affirmative obligation to avoid the registration of trademark-abusive domain names. In addition, from the proceedings in which Respondent was involved, it emerges that the Respondent also registered domain names that are not merely composed of generic terms (e.g. ucfs .com and paulmarius .com). Regarding the Respondent’s claim that it is not profiting by redirecting the disputed Domain Name to website links, the Panel observes that even if that were true, the Respondent is still promoting a commercial activity. Finally, the Domain Name is offered for sale. From all the above it appears that the Respondent registered the Domain Name with the intention of profiting from its correspondence to the Complainant’s trademark.
Complainants’ Counsel: Not available
Respondents’ Counsel: Not available