We hope you will enjoy this edition of the Digest (vol. 4.3), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Complainant Relies on Odd Copyright Registration But Escapes RDNH (jye .com *with commentary)
‣ Refiled Complaint Succeeds But is this Cybersquatting or TM Infringement? (doncastercable .com *with commentary)
‣ Refiled Case Requires New Evidence Which Was Previously Unavailable (bayouwear .com *with commentary)
‣ Limited Factual Research Shows 3-Letter Domain Name Because of Complainant (vyv .info *with commentary)
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Complainant Relies on Odd Copyright Registration But Escapes RDNH
Panelists: Mr. Luca Barbero (Presiding), Ms. Iris Quadrio and Mr. Warwick A. Rothnie
Brief Facts: The Complainant is the owner of several trademark registrations for JYE, including International trademark registration (June 26, 2019); United States trademark (March 10, 2020); and Mexican trademark (June 10, 2016). The Complainant also registered a ‘JYE .COM’ logo in Mexico as copyright, on August 18, 2023. A certification of a notary public certifies that the Complainant is the sole inventor of ‘JYE .COM’ and was first disclosed to the public on January 1, 1995. The Complainant also promotes and offers for sale cosmetics on the “Alibaba website”, which reads “the company was established in 2016, manufactures and sells oils, creams, gel, brushes and accessories.” The Complainant is the owner of the domain names <jye .mx> and <jye .com .mx>, registered on February 9, 2016, and <jye .us> registered on July 9, 2015, all pointed to active websites promoting and offering for sale cosmetics under the trademark, JYE.
The disputed Domain Name <jye .com> was registered on March 7, 2000, and is pointed to a parking page with pay-per-click links, however, none of the links are related to the Complainant’s trademark or to cosmetic products. The Complainant alleges that the Respondent is intentionally interfering with the Complainant’s business activities, as the Complainant has been using the distinctive sign JYE since 1995, and this interference is aimed at undermining the Complainant’s market position and harming their business activities. The Respondent contends that he registered the disputed Domain Name in 2000 for use in connection with a bona fide legitimate service, namely, an online directory similar to the one at <yahoo .com> and submits that though the site at the disputed Domain Name today does not reflect such intent, the original site, operated as a directory until 2006.
Held: The disputed Domain Name was registered on March 7, 2000. The Complainant claims to have been using its trademark JYE since 1995 and provides in support of this claim a copyright registration certificate for the ‘JYE .COM’ logo in Mexico dated August 18, 2023, along with a certification of a notary public. It is not clear to the Panel, however, whether the Notary is certifying some fact which the Notary has personally witnessed or certifying something that has been represented to the Notary. The Panel notes that the earliest of the Complainant’s registered trademark rights only dates from March 3, 2016, i.e. the Mexico trademark registration No. 1645609. In addition, the Complainant registered its various “jye” domain names from July 9, 2015, onwards. The Panel also notes the description of the Complainant’s business provided on the Alibaba account of the Complainant dated after the Complainant’s trademark’s registration in 2016.
The Panel considers the nature of the disputed Domain Name as a three-letter acronym. The Panel notes that this type of domain name has inherent value just from the fact that they are made of only three letters and, therefore, considerable caution needs to be exercised unless there is clear evidence of targeting the Complainant’s trademark. In the case at hand, the Respondent appears to have registered several additional three-letter domain names besides the disputed Domain Name around the time the Respondent registered the disputed Domain Name. Moreover, none of the links displayed on the Respondent’s pay-per-click website referred to the Complainant, its trademark JYE or the products for which the JYE mark is being used. In view of the above, the Panel finds that the Complainant has failed to provide sufficient evidence to demonstrate that the Respondent registered the disputed Domain Name with the Complainant’s trademark in mind and intended to target the Complainant and its trademark.
Complainants’ Counsel: Self-represented
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel Zak Muscovitch and Editor-in-Chief, Ankur Raheja:
There are several factors which arguably lead to the question of whether this was an RDNH attempt, such as the copyright certificate submitted by the Complainant. The Copyright Certificate for ‘JYE .com’ was registered on August 18, 2023, however it was apparently accompanied by a notary certificate claiming that this logo was first used as of January 1, 1995. Why would one get a copyright for the domain name ‘JYE .com’ when it never owned the corresponding .com domain name – and get it just a few months before pursuing this UDRP matter? Moreover, if it was indeed used since 1995, why was no evidence was presented from earlier years? On a balance of probabilities, it certainly appears that this copyright registration was obtained in preparation for the UDRP. And it seems even more likely that it was a ruse as there was no reason to register a logo corresponding to a domain name owned by someone else – unless it was in furtherance of RDNH.
Furthermore, the description of the Complainant on Alibaba stated that the Complainant was established in 2016 and matched the evidence of use actually produced by the Complainant. Therefore given that the disputed Domain Name was registered in 2000 and the earliest credible evidence produced by the Complainant was from 2016, this appears to have been a possible case of Reverse Domain Name Hijacking.
What is most surprising about this decision however, is not that RDNH was not found – but that it was not expressly considered. After all, RDNH is a discretionary matter and the Panel could have conceivably had its reservations about making such a finding based upon the limited, if questionable, facts of this case. What is most surprising, is that the decision did not reflect any consideration of RDNH. The Respondent expressly requested that it be considered and even specified the claimed grounds for it:
“Finally, the Respondent requests that the Panel make a finding of reverse domain name hijacking, since: i) the Complainant ought to have known it could not succeed under any fair interpretation of the facts which were available to the Complainant prior to filing of the Complaint; ii) the Complainant failed to supply any evidence to support the claim for bad faith registration of the disputed domain name; iii) the Complainant was or should have been aware that the disputed domain name was registered long before the Complainant engaged in a bona fide commerce with the JYE mark and acquired any trademark rights in it and it was thus impossible for the Respondent to have registered the disputed domain name with the Complainant’s trademark in mind; iv) the Complainant has presented no evidence of actual use of the JYE mark until 2016; and v) the Complainant knew or should have known that a 1995 copyright registration from Mexico for a logo design is not proof, in and of itself, of engaging in business under the JYE mark and could not establish trademark rights in the JYE mark.”
As has been written numerous times previously in this Digest, Panelists are commanded by the Rules to consider RDNH in every case that warrants such consideration – whether they are requested by the Respondent to do so or not. Rule 15(e) states as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
By omitting any consideration of RDNH from the decision, we can only conclude that the Panel believed that after considering the submissions, there was no basis for finding RDNH. This is ultimately a discretionary matter for the Panel, however it is curious that the Panel avoided disclosing its considerations and findings on a matter that the Respondent specifically put before it and where the facts and Rules seem to warrant a consideration of this issue at a minimum. In our view, where an express request for RDNH is made, a Panel generally is obliged to expressly consider it in its decision, whether the Panel ultimately finds RDNH or not.
Insufficient evidence to apply “Telstra”
Panelist: Mr. Debrett G. Lyons
Brief Facts: The Complainant provides healthcare services and owns trademark rights in “HACKENSACK MERIDIAN HEALTH”, the earliest being registered on March 13, 2018, with the USPTO, used at least as early as 2016, following a merger between Hackensack University Health Network and Meridian Health. The disputed Domain Name was registered on October 22, 2023, and is not in use. The Complainant alleges that there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
The Complainant further cites Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) as authority for the propositions that “[t]he requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.” The Respondent failed to submit a Response in this proceeding.
Held: The Panel examines the issue of use in bad faith in line with the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”) decided before Twentieth Century Fox Film Corp. v. Risser. Telstra’s Panelist faced the question of whether the inactive, passive holding of a domain name could constitute “use” in bad faith. The consensus of cases which have followed since has been to consider proof of reputation indispensable and the cornerstone of whether it would be possible to conceive of plausible good faith use of the Domain Name. The Complaint states that it “is based on Complainant’s common law rights” and that “[a]s a result of … widespread, continuous, and prominent use, Complainant’s Marks have acquired significant goodwill and public recognition, as a means by which the public identifies Complainant’s goods and services.” The Complaint claims use of the trademark in connection with its goods and services and attaches undated screenshots from its website or social media pages but it does not establish a reputation in a trademark sense or prove any level of public awareness of the Complainant’s business thereunder.
The Panel observes that the USPTO Registration for HACKENSACK MERIDIAN HEALTH in fact claims a date of first use in commerce in 2017 but, in any event, the first use claim of the Registration is not a substitute for proof of actual use, still less of renown. The Panel is entitled to accept reasonable allegations set forth in a complaint; however, the Panel should deny relief where a complaint contains mere conclusory or unsubstantiated arguments (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003): “Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”). Applying that principle and following the line of authority starting with Telstra, the Panel has insufficient evidence before it that the trademark of the Registration, or another relevant trademark, is well-known. The Panel is, therefore, unable to find passive holding and “use” in bad faith. Examination of registration in bad faith becomes unnecessary.
Complainants’ Counsel: Sarah E. Bro of McDermott Will & Emery LLP, USA
Respondents’ Counsel: No Response
Case Comment by Panelist, Igor Motsyni:
Igor is an IP consultant and partner at Motsnyi Legal, <motsnyi .com>, “Linkedin”. His practice is focused on international trademark matters and domain names, including ccTLDs disputes and the UDRP. Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy.
The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
This case illustrates two points in UDRP jurisprudence:
1. Limitation of the “passive holding” (“Telstra”) doctrine
The passive holding doctrine is often taken lightly by UDRP complainants /their counsel. However, it requires fulfillment of certain criteria, including the need to demonstrate that complainant’s mark is highly distinctive and enjoys strong reputation and the implausibility of any good faith use to which the domain name may be put. “Telstra” does not apply by default to any case of passive holding and complainants are expected to provide evidence of their mark’s reputation.
The Panel in <hackensackmeridianhealth .xyz> was not satisfied with the evidence provided and found that “the Panel has insufficient evidence before it that the trademark is well-known”.
2. The second aspect of this decision has to do with the nature of UDRP proceedings – adversarial vs. inquisitorial and UDRP Panel’s role and authority, including its powers to conduct its own independent research.
Arguably, had the Panel conducted its own research in <hackensackmeridianhealth .xyz> it could have relatively easily found additional evidence of Complainant’s mark reputation, e.g. a “Wikipedia” article (see here) and numerous online publications (in addition to the evidence already provided by Complainant). Would this be enough to apply the “Telstra” doctrine also taking into account additional factors such as the nature of the disputed domain name – the exact match of Complainant’s trademark and Respondent’s location – New Jersey, the same as the location of Complainant? The same Complainant prevailed in over 20 (twenty) previous UDRP disputes involving its “Hackensack Meridian Health” trademark and one can wonder whether there can be any legitimate use of the domain name <hackensackmeridianhealth .xyz> (identical to Complainant’s mark) by Respondent from New Jersey.
Yet, UDRP panelists apply different approaches to independent research and this may result in different outcomes in seemingly similar factual circumstances.
In the <thenaturesconservancy .org> case another Panelist found that Complainant failed to argue the third UDRP element (“Complainant makes no allegations regarding this element of the Policy”), however the Panel decided to apply the principle “iura novit curia” (“judge knows the law”) and ultimately ordered transfer based on the “Telstra” principles, see case comment by Zak Moscovitch “COMPLAINT INADEQUATE BUT SUCCEEDS ANYHOW”, see here.
This leaves us to wonder whether such differences are inevitable given diversity of panelists’ backgrounds, including differences between common law panelists and civil law panelists.
I would welcome thoughts and comments from our readers.
Refiled Complaint Succeeds But is this Cybersquatting or TM Infringement?
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a manufacturer of wiring cables and flexible cords located in the city of Doncaster, United Kingdom, trading as “Doncaster Cables”. The Complainant holds United Kingdom trademark registration for DONCASTER CABLES, registered on November 21, 2008. The Complainant has also registered the domain name <doncastercables .com> that it uses in connection with a website to offer its goods for sale. The homepage prominently displays a logo consisting of the letters “dc” in the form of looped cables above the trading name “Doncaster Cables”. According to evidence presented by the Complainant, during the 12-month period ending October 31, 2023, its website received over 98,000 visits, including over 900 from users in China. The Respondent is a Chinese company that manufactures various types of cables.
The disputed Domain Name was registered on May 23, 2023 and resolves to a website in Chinese for the Respondent that provides information about the Respondent and its products. The homepage prominently displays a logo consisting of the letter “D” in the form of a looped cable above the name “Doncaster” and the phonetic transcription “唐卡斯特”. The social media icons on the Respondent’s website redirect Internet users to the Complainant’s website at “doncastercables .com”. The Complainant alleges that the disputed Domain Name is an example of typosquatting. The associated website mimics the Complainant’s website and the social media links resolve to the Complainant’s website. The Respondent did not file a response.
Refiled Complaint: The Complainant filed its previous complaint regarding the disputed Domain Name without the benefit of legal representation. The previous panel concluded that the Complainant had not shown, to its satisfaction, that any of the three elements of paragraph 4(a) of the UDRP were fulfilled. However, the previous panel rejected the previous complaint expressly on a “without prejudice” basis, wherein it stated: “it is essential to recognize that UDRP proceedings serve as a neutral, efficient, and effective mechanism for rights holders to safeguard their interests against potential infringements by domain name registrants. These proceedings are not intended to obstruct rights holders’ access to competent legal representation aimed at achieving a just outcome. In light of these considerations and in order to preserve the Complainant’s option to refile the complaint in the future, the current complaint is rejected without prejudice.”
The previous panel did not consider the merits of the case nor did it set out any conditions that it considered needed to be satisfied in order to justify a refiling. The Complainant submits that this is a case where it can satisfy all the requirements of the Policy upon submission of further arguments and/or evidence. The Panel notes that the Complainant has now engaged legal representation and presented arguments and evidence relevant to each of the three elements of paragraph 4(a) of the Policy. In view of the above circumstances, and noting that the prior case was decided on a “without prejudice” basis, the Panel has decided to accept the refiled complaint, see WIPO Overview, section 4.18.
Held: The disputed Domain Name resolves to a website that prominently displays a logo incorporating the name “Doncaster”, which is the initial element of the Complainant’s DONCASTER CABLES mark, and provides information about the Respondent’s cables, which is the same type of product that the Complainant manufactures. In the Panel’s view, this evidence indicates that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods and services, nor is it making a legitimate noncommercial or fair use of the disputed Domain Name.
The disputed Domain Name was registered in 2023, years after the registration of the Complainant’s DONCASTER CABLES mark. While the mark combines a city name (Doncaster) with a descriptive term (cables), there does not appear to be any reason for the Respondent to incorporate the same combination in the disputed Domain Name besides an attempt to approximate the Complainant’s trading name, mark, and domain name. Given that the Respondent is a manufacturer of the same type of product as the Complainant, this increases the likelihood that it was aware of the Complainant when it registered the disputed Domain Name.
As regards use, the disputed Domain Name resolves to a website for the Respondent, where it provides information about itself and its cable products. The Respondent’s incorporation in the disputed Domain Name of almost the entirety of the Complainant’s mark and domain name, omitting only the plural “s”, to offer the same type of products as the Complainant, indicates that the disputed Domain Name operates by attracting Internet users searching for the Complainant and diverting them to the Respondent’s website.
Complainants’ Counsel: Brandsmiths SL Limited, United Kingdom
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: I wrote about the original Complaint in Digest Vol. 3.44 and stated therein that “it is difficult to understand why the Complainant did not succeed here, unless perhaps this is a case of alleged trademark infringement by a similarly named competitor using a similar looking website for similar products”.
As the Panelist noted in the instant case, the original Complaint was dismissed without prejudice, meaning that it could be refiled, as the Complainant did. The Panel therefore properly allowed the refiled Complaint to proceed.
As the Panel noted in the instant case, the language of the Registration Agreement is Chinese. The Panelist considered the factors and ultimately allowed the matter to proceed in English despite the Complaint not being in Chinese. I am a little troubled by this as although the Panel properly considered factors such as the language of the domain name and absence of any objection from the Respondent, I am uncertain whether this is sufficient to get over the fact that a Respondent is generally entitled to receive a Complaint against it in the language of the Registration Agreement. Given a second kick at the can, I would have thought that the Complainant should have brought this Complaint in Chinese this time around rather than take a chance that the Panel wouldn’t permit it to proceed.
I am also concerned with whether this is a case of cybersquatting or of trademark infringement. The Respondent appears to be a legitimate business selling a legitimate products – although possibly in an intentionally infringing manner. As stated by the Panel: “the disputed domain name resolves to a website for the Respondent, where it provides information about itself and its cable products.” The Panel nevertheless states that “the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, nor is it making a legitimate noncommercial or fair use of the disputed domain name”. So which is it? A legitimate business allegedly using an infringing mark or a case of cybersquatting? Does the Complainant have trademark rights in China? Does the Respondent? Are the products genuine or counterfeit? These questions remain unanswered despite the Complainant’s second kick at the can. These facts and unanswered questions leave me concerned that trademark infringement claims that are inappropriate for the UDRP will nevertheless be adjudicated through the UDRP by using the resolution of the disputed domain name as a proxy for addressing the underlying infringement claims.
But on the other hand, the Panelist drilled down and identified some facts which to the Panel, appeared to help the Complainant’s case cross from trademark infringement into cybersquatting: “The Panel notes, when accessing the website of the disputed domain name and clicking the icons of social media on the website, the Internet users will be redirected to the Complainant’s website at “doncastercables .com, which shows that the Respondent intentionally attempted to confuse the Internet users regarding the lack of relationship between the Parties.” This kind of conduct, if intentional, would appear to be consistent with cybersquatting, but arguably also with intentional infringement and passing off. Ultimately, this may be a close call. Something bad appears to be going on here, but whether it is best addressed by the UDRP or by a trademark infringement or passing off action, seems to be debateable.
Refiled Case Requires New Evidence Which Was Previously Unavailable
Panelist: Mr. Debrett G. Lyons
Brief Facts: The Complainant describes this as a refiled case, a decision having been made in November 2023 in Art4Now, Inc. v. Gerald Waggoner / The Waggoner Law Firm, FA 2065343 (Forum Nov. 24, 2023). The WIPO Overview, considered at paragraph 4.18 the question “Under what circumstances would a refiled case be accepted?” in answer to which it is stated: “A refiled case is one in which a newly-filed UDRP case concerns identical domain name(s) and parties to a previously-decided UDRP case in which the prior panel denied the complaint on the merits.” The Complainant states “There are several materially relevant developments that warrant a closer look by the Panel … the gravamen of the reasons warranting this refiling is the overwhelming and extraordinary new material evidence concerning Respondent’s bad faith and lack of legitimate interest in the Disputed Domain, which would not have become available to Complainant during normal due diligence in preparation for the original UDRP proceeding.”
That material is, first, Complainant’s discovery “that Respondent has a history of engaging in dishonesty and misconduct and was recently suspended from the practice of law for two (2) years by the Supreme Court of Tennessee”, and secondly, Complainant’s discovery of “at least 101 other domain names registered in Respondent’s name. The sheer number of other domains associated with an individual may not be probative of malevolence but that same cannot be said of the Respondent’s claim to domains as preposterous as <harvardlawlibrary .com> and <sandalscasino .com>.” The Complainant’s submission is that “[t]he newly-discovered evidence regarding Respondent’s history of misconduct and overwhelming serial domain registrations undoubtedly supports a finding of bad faith and continuous modus operandi on the part of Respondent and warrants reconsideration of the instant dispute.”
Held: The Panel observes, firstly, that the Original Decision was not made on a “without prejudice” basis. The Complainant states that the Original Decision “… was denied by the [p]anel based on a finding that Complainant failed to establish bad faith registration… the previous [p]anel appears to have questioned Complainant’s rights in the BAYOUWEAR mark based on the fact that the Registration Certificates attached thereto listed ProCreations Publishing Company as the registering entity.” The limited circumstances in which UDRP Panelists have accepted refiled cases described by the WIPO Overview section 4.18 do not include challenges to legal findings. Whether or not the Original Decision questioned Complainant’s trademark rights is therefore not open to reconsideration. In any event, the Panel observes that the Original Decision states that by reason of the “dispositive finding on the issue of registration and use in bad faith, the [p]anel declines to address the question of whether the Complainant has rights in the BAYOUWEAR Mark.”
The Panel is not so convinced of the Complainant’s argument. Of the handful of exceptional circumstances identified by the WIPO Overview, it is only the issue of whether new and material evidence is presented that was previously unavailable to the Complainant which arises for consideration. The majority of the “recently-discovered domain names” were extant before the Original Decision. Likewise, the decision of the Tennessee Supreme Court was published in 2023 before the Original Decision but, in any case, the matter concerned a violation of legal professional conduct and lacks sufficient nexus to the creation of the disputed Domain Name. In terms of the criteria laid out in Ladd v. Marshall, the Panel finds that the new evidence could have been obtained with reasonable diligence and included in the first complaint and, in the case of the disciplinary ruling, also lacks sufficient materiality.
The Panel finds that the Complainant has not met its burden of demonstrating that the re-filed case falls within the limited grounds on which re-filed cases should be entertained.
Complainants’ Counsel: Benjamin W. Janke of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC, Louisiana, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel in this case quite properly held the Complainant to the requisite threshold for refiling a case based upon new evidence. Making a better effort to marshal evidence on the second time around clearly will not assist a dilatory Complainant if that evidence was available at the time of the original Complaint.
But an interesting question is raised here, generally; If a Complaint is dismissed for want of evidence but otherwise appears to potentially be meritorious should a Panelist dismiss it or dismiss it without prejudice? The general practice is to simply dismiss. This does however raise the threshold for refiling, as we saw in this instance. So should such cases be dismissed without prejudice, so as to leave the door open to a refiling? This issue needs more attention. I think that dismissing without prejudice can be used more often and more effectively, but on the other hand, we cannot permit Complaints to be refiled as a matter of course.
Limited Factual Research Shows 3-Letter Domain Name Because of Complainant
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a French mutualist health and social protection company, operating through various brands, with 500 contact points in France. The Complainant owns French trademark registrations for the ‘VYV’ mark, earliest registered on March 26, 2021, under numerous classes. The Complainant has also registered the domain name <groupe-vyv .fr> that it uses in connection with a website in French that prominently displays its name “Groupe vyv” and also registered the domain name <vyv .fr> on December 4, 2017, that redirects to <groupe-vyv .fr>. The disputed Domain Name was registered on June 26, 2023 by an individual located in China. It resolves to a webpage hosted by a domain name broker that offers it for the price of US $950 to “buy now”, or US $106 per month to “lease to own”.
The Complainant alleges that the disputed Domain Name has been registered and is being used in bad faith. The Complainant states that it is inconceivable that the Respondent ignored the Complainant’s earlier rights on the term ‘VYV’. The Respondent obviously had the Complainant’s name and trademark in mind when registering the contested domain name. The Respondent’s choice of Domain Name cannot have been accidental. Indeed, a simple search on an online search engine yields results only related to the Complainant. The Respondent acquired the disputed Domain Name to prevent the Complainant from reflecting its earlier trademarks in the corresponding domain name and in full knowledge of the Complainant and its earlier rights. The disputed Domain Name is offered for sale.
In his informal email, the Respondent requested withdrawal of the Complaint. He agreed to transfer the disputed Domain Name to the Complainant but only in return for some financial compensation.
Held: In the present case, the disputed Domain Name was registered in 2023, two years after the registration of the Complainant’s VYV mark. The disputed Domain Name is identical to that mark, however, “vyv” is a three-letter combination with multiple potential co-existing uses. Nothing indicates that the VYV mark has become famous like, say, IBM or BMW. Given these circumstances, the Panel does not consider that the identity between the disputed Domain Name and the mark by itself indicates that the Respondent was aware of the Complainant. The Complainant refers to its trademark registrations. However, the Panel does not consider that the Respondent should necessarily be deemed to have notice of the contents of the French trademark register or the WIPO Global Brands Database, and even if it did (contrary to the Complainant’s arguments) there are possible non-infringing alternate uses of the disputed Domain Name.
The Panel conducted Internet searches for the term “vyv” to weigh the Complainant’s evidence, and obtained very different results. All but one of the top results of the Google search conducted by the Panel are unrelated to the Complainant, while all the top results of a Baidu search are unrelated to the Complainant. Accordingly, the Panel accords little weight to the Complainant’s evidence of its Internet search results. The Complainant provides no other evidence of its reputation aside from its listed marks. There is no evidence that the Respondent targeted the Complainant or its VYV mark. While the Respondent offers the disputed Domain Name for sale, it is not suggested that the price reflects the Complainant’s or its competitors’ capacity to pay (based on their turnover) as opposed to that of unrelated third parties who may have a general interest in this short domain name. Nor is there evidence that the Respondent has registered other domain names incorporating trademarks from which certain inferences could be drawn.
Accordingly, based on the record of this proceeding, the Panel cannot find that the Respondent necessarily knew or should have known of the Complainant’s mark at any time before receiving notice of this dispute, or above all that it targeted the Complainant.
Complainants’ Counsel: IP Twins, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: I particularly appreciated this case for two reasons. First, I like how the Panel appropriately drew a distinction between a well-known three-letter acronym like IBM and BMW, and a lesser known one. In the latter case, there is no inherent presumption that the registrant registered the corresponding domain name because of the particular complainant – particularly when there are a variety of parties that all share the acronym.
Which leads me to the second reason. Here, the Panel conducted his own limited independent research by using Google and Baidu to verify the search results relied upon by the Complainant. I am generally apprehensive about Panels conducting their own research other than the most basic kind such as to verify a trademark registration in a database or verify the content of a website especially where the evidence isn’t put to the parties. The Panel expressly noted – ostensibly out of this very concern – it “considered putting the results of this limited factual research to the Parties in a procedural order but determined that this was not necessary because the mark is a three-letter combination with multiple potential co-existing uses and there is no evidence of targeting the Complainant’s mark”.
As Nat Cohen pointed out in his Case Comment on FBSolution. Info in Digest 3.36, when a Panel is making a determination, in the absence of a Response, about whether there is a plausible good faith use for a term, rather than rely solely upon the Complainant’s own self-serving submissions and the Panel’s own limited knowledge, it is appropriate for the Panel to conduct limited independent research so as to be able to make an accurate determination.
Panelists come from two legal traditions; the inquisitorial or the adversarial, depending upon which legal approach is used in their home countries. The role of the judge is quite different in each. In the inquisitorial system the judge commonly involves investigating the facts of a case, whereas in the adversarial system it left to the parties to do so. An unanswered question with major significance for UDRP jurisprudence, is which approach is the appropriate one for the UDRP.
As Nat pointed out in the FBSolution case, if the Panel had conducted a basic Internet search the Panel would have identified considerable third-party use of the term. In the instant case, that is what the Panelist found as well: “All but one of the top results of the Google search conducted by the Panel are unrelated to the Complainant, while all the top results of a Baidu search are unrelated to the Complainant (Baidu being the most popular Internet search engine in China, where the Respondent is located). Accordingly, the Panel accords little weight to the Complainant’s evidence of its Internet search results.”