Complainant Failing to Meet Standing Requirement of the Policy, Reprimanded: The first element of the Policy serves as a “standing requirement” under the UDRP. The threshold inquiry under the first element of the Policy typically involves a relatively straightforward comparison between the Complainant’s trademark and the disputed Domain Name, read more. [Read further commentary]
We hope you will enjoy this edition of the Digest (vol. 4.5), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Complainant Failing to Meet Standing Requirement of the Policy, Reprimanded (knp376 .com *with commentary)
‣ Can the Respondent be Held Responsible for the Content on the Parking Page? (ingoldenvoice .com, ingoldenvoice .info and ingoldenvoice .net *with commentary)
‣ Domain Name Used for Impersonating the Complainant (traffictechllc .com)
‣ No Evidence of Targeting (garogroup .com)
‣ Passive Holding of the Domain Name, Not Always a Case for Bad Faith (fiveguys .se)
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Complainant Failing to Meet Standing Requirement of the Policy, Reprimanded
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant is the owner of the mark TEXT MECHANIC registered in the USA for Software as a service with the first use recorded as 2010. The disputed Domain Name was registered in 2023 and points to a replica of the Complainant’s website purporting to offer competing services to the Complainant. The Complainant alleges that this is not a bona fide offering of goods or services or legitimate non-commercial fair use. It is registration and use in bad faith designed to impersonate the Complainant and confuse Internet users to believe they are on the Complainant’s website when they are not. The Respondent did not reply to this Complaint.
Held: The first limb of the Policy requires a Complainant to prove that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. The disputed Domain Name consists of the character string ‘knp376’ and the gTLD .com. The disputed Domain Name does not bear any resemblance to the Complainant’s trademark TEXT MECHANIC, not containing any part of it. Accordingly, the disputed Domain Name is not confusingly similar to the Complainant’s TEXT MECHANIC mark. Since the Complainant has failed at the first hurdle it is not necessary to consider the issues of Rights or Legitimate Interests or Registration and Use in Bad Faith.
RDNH: The Complainant is an established business which has successfully used the Policy before in an unrelated case to obtain the transfer of a domain name because in that unrelated case, the domain name did contain the Complainant’s mark. In this case, the Complainant has not provided any evidence of trade mark Rights sufficient to properly call for the transfer of the Domain Name which bears no relation to the Complainant’s trade mark.
On balance, the Panel believes that by exercising reasonable skill and judgement the Complainant must have realised that whilst it may have a right to challenge the use of the Domain Name using other channels such as an Internet Service Provider takedown or the Courts it had no right to call for the transfer of the Domain Name in this case under the UDRP and this Complaint was bound to fail. The Panel makes a finding of Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Drew M. Smith of Resonate IP, LLC, USA
Respondents’ Counsel: No Response
Comment by Newsletter Editor, Ankur Raheja: The first element of the Policy serves as a “standing requirement” under the UDRP. The threshold inquiry under the first element of the Policy typically involves a relatively straightforward comparison between the Complainant’s trademark and the disputed Domain Name, see Sahil Gupta v. Michal Lichtman / Domain Admin, Mrs Jello, LLC, [WIPO-D2020-1786], although some Panels also look to the content appearing at the website of the Disputed Domain Name for confirming evidence of confusing similarity as noted in WIPO Overview, section 1.7:
In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation… may support a finding of confusing similarity.
In this matter, the content at the disputed Domain Name does contain content trading off the Complainant’s reputation, yet the Complainant’s ‘TEXT MECHANIC’ trademark is entirely dissimilar to the disputed Domain Name <knp376 .com>. Accordingly, the panel held: “The disputed Domain Name does not bear any resemblance to the Complainant’s trademark TEXT MECHANIC, not containing any part of it. Accordingly, the disputed Domain Name is not confusingly similar to the Complainant’s TEXT MECHANIC mark”. Although the registrant was impersonating the Complainant, purporting to offer competing services, such matters fall outside the narrow scope of the Policy and are dealt with in alternative forums. In other words, the Panel found that content targeting the Complainant on its own does not satisfy the first element when the Disputed Domain Name is entirely dissimilar to the Complainant’s mark.
The panel also took note of the fact that the Complainant has on previous occasions used the Policy successfully and declared it as an attempt to reverse domain name hijacking. As in this matter as well, “exercising reasonable skill and judgement the Complainant must have realised that whilst it may have a right to challenge the use of the Domain Name using other channels such as an Internet Service Provider takedown or the Courts it had no right to call for the transfer of the disputed Domain Name in this case under the UDRP and this Complaint was bound to fail”.
Can the Respondent be Held Responsible for the Content on the Parking Page?
<ingoldenvoice .com>, <ingoldenvoice .info> and <ingoldenvoice .net>
Panelist: Mr Alan L. Limbury
Brief Facts: The Complainant produces live music events and manages numerous entertainment venues. It claims common law and registered rights to its GOLDENVOICE trademark and service mark, which it and its predecessor-in-interest have used in connection with live music production, music festivals and concert venue management services for over 30 years. Additionally, it owns registered rights in the GOLDENVOICE service mark through registration with the USPTO (June 8, 1999). The disputed Domain Names were all registered on July 25, 2023, and they resolved to websites showing, as “Relevant searches”, pay-per-click links, including “Festival Schedule”, “Festival”, Wicked Tour”, “Venues Nearby”, Pantages Tickets” and Concert Tickets”. The Complainant alleges that the Respondent is not making a bona fide offering of goods or services at the Domain Names nor a legitimate non-commercial or fair use, since the domain names redirect to a commercial parking page displaying “relevant searches” links, including terms that are related to the Complainant’s business.
The Complainant sent a cease-and-desist letter to the Respondent, and the Respondent replied that it does not intend to stop using the Complainant’s GOLDENVOICE marks. Thus, the Complainant further alleges that since at least the receipt of the Complainant’s letter, the Respondent has had actual knowledge of the Complainant’s GOLDENVOICE marks and has continued willfully to use them in the domain names, which is further evidence of bad faith. The Respondent failed to submit a formal Response in this proceeding. However, in summary, the Respondent’s informal Response stated that she chose the NameSilo parking page for the domain names and was surprised to learn from the Complaint that the domain names no longer point to the NameSilo parking page but instead resolve to a Sedo parking page, where the links identified by the Complainant appear.
Preliminary Issue: The Respondent’s informal Response is deficient as it was unsigned and did not certify, as required by Rule 5(c)(vii), “that the Response was complete and accurate.” However, the Panel considers that, in the circumstances of this case, it is appropriate to take into account the Respondent’s informal Response as set out below.
Held: There is no evidence that the Respondent registered the domain names for any of the purposes set out in Paragraph 4(b)(i), (ii) or (iii) of the Policy. While the domain names are confusingly similar to the Complainant’s mark, the Panel considers the words “in golden voice” themselves to be descriptive of a way of speaking and therefore capable of use in a domain name in a way that does not infringe the Complainant’s mark. Having regard to the descriptive nature of the domain names and the Respondent’s reply to the cease-and-desist email, the Panel finds that the Complainant has not shown that the Respondent was aware of the Complainant or its mark when registering the domain names nor that the Respondent did so in bad faith. The Panel further accepts the Respondent’s explanation that she chose to park the domain names with the Registrar, NameSilo LLC, which did not display SEDO advertising links, and that she was unaware until receiving the Complaint that NameSilo had redirected the domain names to SEDO parking pages, where the pay-per-click links appeared.
As to whether the Respondent should be held responsible for the advertising links to which the domain names resolve. The WIPO Overview 3.0 at section 3.5 provides that a respondent cannot disclaim responsibility for content appearing on the website associated with its Domain Name. In the unusual circumstances of this case, the Panel finds that, by choosing to direct the domain names to the NameSilo parking page, the Respondent, at the time unaware of the Complainant or its mark, sought positively to avoid the kind of advertising links provided by SEDO on its parking pages. Contrary to the statement by Sedo: “This webpage was generated by the domain owner using SEDO Domain Parking”, it was NameSilo that decided, without informing the Respondent, to change their default name servers from pointing to their Name Silo parking pages, to point instead to Sedo-provided ones. Accordingly, the Panel finds that the Respondent is not responsible for the Sedo-generated pay-per-click links and has not used the domain names in bad faith.
Complainants’ Counsel: David J. Steele of Tucker Ellis, LLP, California, USA
Respondents’ Counsel: Self-represented
Comment by Newsletter Editor, Ankur Raheja: No formal response was submitted by the Respondent in this case. The Panel considered this as a deficient response, citing that “it was unsigned and did not certify, as required by Rule 5(c)(vii)”. Nevertheless, the Response was taken on record, given the fact that the Respondent had no legal representation. It is also worth noting that the domain registrant may not be familiar with the Policy and its procedural requirements as well.
Further, although WIPO Overview 3.0 in section 3.5 provides guidance that a respondent cannot disclaim responsibility for the content appearing on the website associated with its Domain Name. The WIPO Overview does not appear to consider circumstances where the respondent has no awareness of nor control over the content appearing on its website, particularly in circumstances when the registrar on its own initiative, and according to powers granted to it under its terms and conditions, creates and publishes a webpage on a domain name that is registered to one of its customers but that the customer has not yet developed. The essence of the UDRP is bad faith targeting by the Respondent of the Complainant’s mark, yet is such circumstances the content at the website is not necessarily evidence of any bad faith targeting by the Respondent, who had no role in creating the content that was placed on the Respondent’s domain name by the registrar (see related article: Are PPC Ads on a Registrar Supplied Default Landing Page Evidence of the Respondent’s Bad Faith?) The Panel in this dispute is to be credited for exercising independent judgment in looking not to a third party’s generalized guidance, but to the specific facts in the dispute which were that the name servers were pointed to SEDO by the Domain Name Registrar (Namesilo), without the knowledge or consent of the Respondent, and thus drew the appropriate inference that this did not support a finding of bad faith use on the part of the Respondent.
Domain Name Used for Impersonating the Complainant
Panelist: Mr. Zak Muscovitch
Brief Facts: The Complainant is a transportation logistics company that offers a variety of services such as customs brokerage services, customs clearance, warehouse facilities and transportation services. It was renamed “Traffic Tech Inc.” in 1988. The Complainant owns various trademark registrations for TRAFFIC TECH, in different jurisdictions, including the USPTO trademark dated April 8, 2008, and the UK trademark dated July 29, 2021. The Complainant alleges that the Respondent is using the disputed Domain Name in order to fraudulently redirect payments to itself by impersonating the Complainant. Although there is no website active in association with the disputed Domain Name, the Complainant alleges that the Respondent is somehow compromising the Complainant’s customer’s email accounts or computers as part of the scheme to intercept customer emails and fraudulently redirect payment.
The Complainant further alleges that the Respondent has even duplicated the Complainant’s Carrier Confirmation form in order to redirect payments away from the Complainant and fraudulently to the Respondent, and has provided an example of this. The Complainant alleges and the evidence shows, that the Respondent’s Carrier Confirmation is essentially identical to the Complainant’s, including the Complainant’s actual address and website, with the only change being to the email addresses, i.e. “@traffictech .com” is changed to “@traffictechllc .com”, and that these minor differences would be nearly undetectable to unsuspecting customers and partners of the Complainant. The Complainant emphasizes the substantial damage that this is causing or may potentially cause in terms of the Complainant’s finances and reputation.
Held: The evidence submitted by the Complainant to support the allegation of fraudulent usage is limited to a single email and a single Carrier/Supplier Confirmation without much in the way of further explanation or evidence as to the Complainant’s broader allegations. However, this instance alone is sufficient for the Panelist to find that the Complainant has made out a prima facie case. The Respondent has not rebutted any of the Complainant’s allegations and in particular has failed to explain how it is that he could have a legitimate interest in the Domain Name that is being used in a fraud scheme based upon impersonation of the Complainant to misdirect the Complainant’s customers.
The Complainant alleges that the email and Carrier/Supplier Confirmation Form submitted as evidence by the Complainant demonstrates that the Domain Name was clearly registered and used to disrupt the Complainant’s business and intentionally attempting to fraudulently redirect payments from the Complainant’s customers to the Respondent by impersonating the Complainant. From the evidence submitted by the Complainant and in the absence of any exculpatory explanation or evidence from the Respondent, it appears to the Panel that this is indeed the case. The Panel therefore finds that the Respondent both registered and used the Domain Name in bad faith, to target the Complainant in what appears to be a fraudulent scheme.
Complainants’ Counsel: Ms. Stefanie Kugler
Respondents’ Counsel: No Response
No Evidence of Targeting
Panelist: Ms. Ingrīda Kariņa-Bērziņa
Brief Facts: The Swedish Complainant provides goods and services related to electrical installations. It is the proprietor of numerous trademark registrations for its GARO mark, including EU trademark for GARO (device mark), registered on October 23, 2002. The disputed Domain Name was registered on March 18, 2004 and is offered for sale for USD 15,000. The Complainant alleges that it has used the GARO mark since 1939, and has been using the <garogroup .se> domain name since 2016. The Respondent was therefore aware of the Complainant and its rights. The disputed Domain Name, which wholly incorporates the Complainant’s well-known mark, has been offered for sale for several years for a price exceeding the costs of registration. The Respondent did not file a response.
The evidence in the record indicates that the disputed Domain Name was previously resolved to sites with similar content. For example, in 2008 a site operated by “The Garo Group,” described itself as a “small women-owned firm located in the San Francisco Bay Area” and states that it was founded in 1995 and offers consulting services. Similar content was recorded till 2015, however, the disputed Domain Name no longer resolved to an active website in 2016. On June 26, 2023, the Complainant sent a cease-and-desist letter to the Respondent but did not receive a response thereto. The Complainant further alleges that it is being passively held in bad faith and that the previous use was intended to divert the Complainant’s customers.
Held: The Panel finds that there is no evidence available that the Respondent is commonly known by the disputed Domain Name, or that there are any circumstances or activities that would establish the Respondent’s rights therein. There is no evidence of legitimate non-commercial use or a bona fide offering of goods or services at the relevant point in time, which is the present. See WIPO Overview 3.0, section 2.11. Further, the disputed Domain Name was registered in 2004, two years after the registration of the Complainant’s GARO mark in the European Union. However, there is no evidence provided in support of the Complainant’s assertion that its GARO mark is a well-known mark and that, on that basis, the Respondent knew or should have known about it at the time of registration of the disputed Domain Name. Rather the record indicates that from at least 2008 to 2016, the disputed Domain Name was resolved to a website operated by an entity calling itself the Garo Group, located in California, United States, offering various types of consulting services.
Noting the fact that the “Garo Group” website to which the disputed Domain Name resolved was disabled in 2016, the same year that the Complainant registered the <garogroup .se> domain name. The Panel considered whether the evidence available could support an inference that a new registration had been affected by a change of ownership behind the privacy shield, however, the Panel was unable to reach such a conclusion. Crucially, the Complainant does not assert such an argument and accordingly has provided no evidence whatsoever that would allow the Panel to infer that the current Respondent is not the original registrant of the disputed Domain Name. On balance, therefore, the Panel finds that the Complainant has not provided evidence of bad faith registration of the disputed Domain Name. Since the third element of the Policy is a conjunctive requirement, the Panel will not consider bad faith use.
Complainants’ Counsel: Ports Group AB, Sweden
Respondents’ Counsel: No Response
Passive Holding of the Domain Name, Not Always a Case for Bad Faith
Panelist: Mr. Peter Hedberg
Brief Facts: The Complainant is an American restaurant chain and owns several trademark registrations for FIVE GUYS, including, the EU Trademark (registered on October 21, 2008). The Complainant furthermore holds many other FIVE GUYS trademark registrations in several jurisdictions. The Complainant is continuously looking into expanding its operations across the globe, and grants to qualified persons the opportunity to own and operate FIVE GUYS restaurant(s), and utilization of the Complainant’s system and marks. The disputed Domain Name was registered by the Respondent on June 1, 2011 and resolves to an inactive website.
The Complainant alleges that the disputed Domain Name was registered in 2013, while the Complainant was already a well-known company around the world. The Domain Name has not been actively used since it was registered in 2013, and it is identical to the Complainant’s registered EUTM from 2008 which is valid in Sweden, the Respondent prevents or makes it difficult for the Complainant to register and use the Domain Name, meaning that the current use, or the absence thereof, is also in bad faith.
The Respondent contends that the Domain Name was registered in relation to a business regarding five guys working with IT, a completely different business than the business conducted by the Complainant. The Complainant does not have exclusive rights to the words “five” and “guys”, as these are generic both separately and as a combination. The Complainant did not conduct any business in Sweden in 2011 and to the Respondent’s knowledge, the Complainant is still not conducting any business in Sweden.
Held: The Panel cannot find that the Respondent has registered the disputed Domain Name in bad faith just because of the mere existence of the Complainant or rather, the Trademark. Further arguments, facts and evidence presented by the Complainant are needed to prove that the Respondent had knowledge of the Trademark in 2011 and then used this knowledge when registering the disputed Domain Name. The Respondent has put forward an explanation of the background in relation to the registration of the Domain Name and possible future use. The Panel cannot find that there are enough reasons to decide that the lack of use of the Domain Name shall constitute bad faith. The Complainant has so far not shown that it has conducted any business in Sweden using the Trademark and it seems that a desire to register the Domain Name is recent due to establishing new business in Sweden.
In summary, the Complainant has not shown any evidence indicating that the Respondent knew about the Complainant, nor its Trademark when registering the Domain Name. There are not any other convincing arguments why the Respondent shall be considered to have registered or used the Domain Name in bad faith. In the Panel’s view, the Complainant has failed to prove that the Respondent has either registered or used the Domain Name in bad faith. Based on the foregoing, the Petition is denied. The Panel‘s decision is without prejudice to the Complainant’s rights to file a new Petition in respect of the Domain Name in the event the Complainant develops new information not reasonably available at the time of the filing of the Petition in this proceeding showing that the Respondent is using the Domain Name in bad faith.
Complainants’ Counsel: Novagraaf Nederland B.V., Netherlands
Respondents’ Counsel: SALC Advokatbyrå AB, Sweden