Complainant’s ‘Sincere Belief’ Runs Contrary to Policy But Saves it from RDNH
The denial of RDNH in this case, is frankly difficult to comprehend. On the facts as presented in the decision, this indeed seems to be amongst the very clearest of RDNH cases. First, the Respondent had an overt and clearly legitimate interest in the Domain Name… continue reading commentary
We hope you will enjoy this edition of the Digest (vol. 4.12), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Complainant’s ‘Sincere Belief’ Runs Contrary to Policy But Saves it from RDNH (mermet .com *with commentary)
‣ Brandable Domain Name Investors Must “Show Their Work” (nestra .com *with commentary)
‣ A Good Faith Registration, Does Not Change to Bad Faith by Passage of Time (wholesalesuite .com *with commentary)
‣ Was Denial of RDNH Justified Because Complainant Didn’t Have Respondent’s Identity and Explanation? (pitstop .com *with commentary)
‣ Complainant Needs to Demonstrate Secondary Meaning in Support of Unregistered Mark (thegardensavvy .com *with commentary)
Complainant’s ‘Sincere Belief’ Runs Contrary to Policy But Saves it from RDNH
Mermet S.A.S. v. Didier Mermet, WIPO Case No. D2024-0151
<mermet .com>
Panelist: Ms. Christiane Féral-Schuhl
Brief Facts: The Complainant is a French company created in 1951, which specialises in the designing and manufacturing of hi-tech fabrics to provide visual and thermal comfort to occupants of various buildings. The Complainant was founded by Henri Mermet and joined the Hunter Douglas group of companies in 2005. For its activities, the Complainant is the owner of several domain names incorporating the MERMET sign, such as <mermet-industries .com> and <sunscreen-mermet .com>, registered in 1998 and 2004. The Complainant is also the owner of several trademarks including the European Union Trademark MERMET, registered on December 14, 2007. The disputed Domain Name was registered by the Respondent, a natural person located in France whose last name is Mermet, on February 20, 1998.
The Complainant alleges that the disputed Domain Name was registered and is being used in bad faith, considering that the Respondent has not made any use of the disputed Domain Name since its registration. In particular, the Respondent has registered at least eight domain names with the term “mermet”, while not having an active website on any of these Domain Names. The Complainant further highlights that the Respondent is offering the disputed Domain Name for sale to the Complainant, for an excessive amount of money for EUR 150,000, which is an obvious intent to abuse and monetize the Complainant’s commercial need to own the disputed Domain Name identical to its brand, which is now not possible due to the Respondent’s passive holding.
The Respondent contends that the disputed Domain Name is identical to his family name “Mermet” and that the disputed Domain Name has been in use since 1998 and is an active website dedicated to genealogical research on the “Mermet” name, allowing Internet users to search for persons named “Mermet” throughout the world. The Respondent adds that it has registered many domain names containing the term “Mermet” to offer to Internet users dedicated email addresses that correspond to their last name. Finally, the Respondent explains that he fixed the selling price of its domain names, including the disputed Domain Name at EUR 150,000 considering the longstanding use of them, the meaning of them and the large investments made by the Respondent since their creation.
Held: The Panel finds that the Respondent has made a legitimate non-commercial or fair use of the disputed Domain Name. See WIPO Overview 3.0, section 2.5. Indeed, the Respondent has provided evidence that the disputed Domain Name is dedicated to genealogical research on the “Mermet” name, allowing Internet users to search for persons named “Mermet” throughout the world. The Panel finds based on the available records that the second element of the Policy has not been established.
The evidence in the case file, as presented, does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark. Indeed, the Panel considers that even if the Complainant asserts that there is currently no active website accessible by the disputed Domain Name, the Respondent has provided evidence that he was using the disputed Domain Name in relation to his family name. Moreover, even if the Respondent proposes to sell to the Complainant its domain names, including the disputed Domain Name, for an amount of EUR 150,000, the Complainant does not demonstrate that the disputed Domain Name was registered in 1998 primarily for the purpose of selling it to the Complainant.
Furthermore, the Panel finds that the Respondent did not register the disputed Domain Name in bad faith targeting of the Complainant or its trademark rights because the Complainant had no trademark rights at the time that the Respondent registered the disputed Domain Name. WIPO Overview 3.0, section 3.8.1. The Panel finds based on the available records that the third element of the Policy has not been established.
RDNH: The Panel here finds that the Complainant sincerely believes that the Respondent is attempting to profit from the registration of the disputed Domain Name. Therefore, the Panel considers that the Complaint was not initiated in bad faith and does not constitute an attempt at Reverse Domain Name Hijacking.
Complaint Denied
Complainants’ Counsel: Windt Le Grand Leeuwenburgh B.V., Netherlands (Kingdom of the)
Respondents’ Counsel: Selarl AXE AVOCATS, France
Case Comment by ICA General Counsel, Zak Muscovitch:
The denial of RDNH in this case, is frankly difficult to comprehend. On the facts as presented in the decision, this indeed seems to be amongst the very clearest of RDNH cases.
First, the Respondent had an overt and clearly legitimate interest in the Domain Name. According to the Panelist herself, the Respondent was known by the Domain Name, noting that the Respondent’s surname corresponds to the Domain Name. Moreover, the Panelist found that the Respondent used the Domain Name for a genealogy website related to his surname. Despite these facts, the Complainant proceeded with the Complaint and incredibly claimed – and apparently falsely – that the Respondent had no right or legitimate interest “given that he is not making any use of the disputed domain name since its registration in 1988”.
Second, the Panelist concludes that the Respondent could not have registered the Domain Name in bad faith since the Complainant had no trademark rights at the time of the Respondent’s 1998 Domain Name registration.
These two sets of facts alone clearly establish not only that the Complainant made apparently false factual claims, but also that the Complaint had no chance of success due to the chronology.
Despite this, the Panel denied the Respondent’s request for an RDNH finding because the Panelist found that “the Complainant sincerely believes that the Respondent is attempting to profit from the registration of the disputed domain name”. A “sincere belief” that runs contrary to the Policy and the established case, in combination with apparently false factual allegations, does not provide a basis for denying RDNH. It is well established that in such circumstances, RDNH is entirely warranted. A party, especially one represented by counsel as it was here, has an obligation to be familiar with the Policy and the established case law and not abuse the Policy by embarking on a “sincerely held” but totally meritless misadventure at the expense of the innocent Respondent. As the Panel well knew, the WIPO Overview clearly sets out some of the well-established bases for finding RDNH, including the first three which undoubtably directly relate to the circumstances of this particular case:
- facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights,
- facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the Whois database,
- unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument,
Moreover, it is well-established that where as here, a Respondent clearly has rights and a legitimate interest in the Domain Name, he is free to sell it for a profit (See for example, Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654). It doesn’t matter if the Complainant “sincerely believes” this should be otherwise. Indeed, such a belief should be censured by the Panel because it is a product of wilful ignorance of the Policy and the established case law.
Brandable Domain Name Investors Must “Show Their Work”
<nestra .com>
Panelists: Mr. Mathias Lilleengen (Presiding), Mr. Olivier E. Itéanu, and Mr. Alan L. Limbury
Brief Facts: The Complainant uses the name NESTRA in its real estate business and owns the trademark in Hungary (registered on April 25, 2019). The Complainant previously owned the disputed Domain Name, after it acquired the Domain Name for USD 1,200 on February 19, 2018. The Complainant used it as its main website until 2023 when it forgot the annual renewal. The Respondent is in the business of investing in domain names. On August 23, 2023, the Respondent bought the Domain Name in a Domain Name auction and is offering the Domain Name for sale. The Complainant alleges that there is no evidence of the Respondent’s use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, as the Respondent has not used the Domain Name other than to put it up for sale. The Complainant further alleges that the Respondent’s offer to sell the Domain Name is at a price much higher than the market price, and this is evidence of bad faith. Moreover, the Respondent is the holder of more than 14,000 domain names and it is unlikely to believe that the Respondent is reasonably exploiting all these domain names.
The Respondent contends that the Domain Name corresponds to a dictionary word in different languages such as “window” in Italian and “nest” in Hungarian and it did consider price, length, meaning, syntax, usage and potential usage, and catchiness before buying the disputed Domain Name. It owns over 100,000 such domain names and does not register domain names that correspond to well-known brands. The Respondent further contends the fact that “nestra” was used by various businesses worldwide did not stop the Complainant when it registered the Domain Name in 2017. The Respondent rhetorically asks why the same fact should stop it from buying the Domain Name in 2023. The Respondent clarifies that it did not register the Domain Name when the Complainant’s registration lapsed on June 19, 2023, but had the winning bid at an auction in August 2023. The Respondent describes its business of buying generic, descriptive, acronym, numeric, suggestive and brandable domain names, which can constitute a legitimate interest under the Policy.
Held: The Complainant argues bad faith inter alia based on the Respondent’s alleged knowledge of the Complainant, the offer to sell the Domain Name to the Complainant for a price “much higher than the market price”, and the fact that the Respondent holds more than 14,000 domain names. As to prior knowledge, the Respondent states (under penalty of perjury) that it had never heard of the Complainant when it bought the disputed Domain Name. The Complainant’s trademark is not well-known outside Hungary and there is no evidence to support global fame for the trademark. The Complainant’s trademark is not known or readily accessible in the Respondent’s location. The Complainant’s trademark is not inherently distinctive; it corresponds to a dictionary term in certain languages and may have been evaluated by the Respondent which is in the business of investing in domain names for resale as a valuable domain name for this reason. There is therefore little reason to expect that the Respondent should have known of the Complainant and its trademark when the Respondent registered the disputed Domain Name.
The Respondent asserts it has made such good faith efforts. Based on the case file, the Panel does not believe that the Respondent deliberately acted under the concept of willful blindness (see WIPO Overview 3.0 section 3.2.3). The Panel notes the practice of registering domain names for subsequent resale would not by itself support a claim that the Respondent registered the Domain Name in bad faith. The Domain Name has a descriptive nature in different languages. It is not likely that the Respondent knew of the Complainant’s rights, and the Complainant has not documented a pattern of abusive registrations by the Respondent. The list of the Respondent’s registrations appears to contain mostly descriptive domain names. The list does not prove a pattern of bad faith in the meaning of 4(b)(ii) of the Policy. Importantly, there is no evidence that the Respondent has targeted the Complainant in any way. There is no evidence of abusive use of the Domain Name. There are several stakeholders globally with an interest in “nestra”.
Complaint Denied
Complainants’ Counsel: Laidebeur & Partners, Luxembourg
Respondents’ Counsel: Muscovitch Law P.C., Canada
Case Comment by Editor-in-Chief, Ankur Raheja: The Respondent in this case was represented by ICA General Counsel, Zak Muscovitch. This case demonstrates that when it comes to brandable domain names, they are protectable by domain name investors under the UDRP, but Respondent’s must “show their work”, i.e. demonstrate a compelling reason and rationale for having selected the particular domain name, as was done here.
This case also demonstrates the importance of proving reputation if you are a Complainant. Having a trademark alone is insufficient. A Complainant must prove targeting, which generally means awareness of a trademark, and that in turn means that the Complainant must prove that its reputation extended to the Respondent and that it was the primary reason for the registration rather than some other factor.
A Good Faith Registration, Does Not Change to Bad Faith by Passage of Time
Rymera Web Co Pty Ltd v. Brian Harris, NAF Claim Number: FA2402002084506
<wholesalesuite .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant owns trademark registrations with the USPTO for the WHOLESALE SUITE word and logo marks (applied for on November 4, 2021, claiming first use in commerce in May 2015), both of which are used with its on-going business activities of “downloadable software for managing prices and orders of products being sold on e-commerce websites.” The disputed Domain Name resolves to a homepage advertising ecommerce plug-ins, which is similar to Complainant’s own ecommerce plug-ins homepage. The Complainant alleges that the Respondent’s website at the disputed Domain Name <wholesalesuite .com> does not use the term “Wholesale Suite” to identify its products and services but the mark WOOSUITE. The Respondent has registered and used the Domain Name in bad faith as the Respondent is merely trying to benefit from confusion by operating its website at the domain name using the Complainant’s mark in an attempt to attract, for commercial gain, Internet users to the Respondent’s website. The Respondent did not submit a Response.
Held: The Complainant refers to the domain name’s WHOIS information but does not annex a copy. The WHOIS information provided by Forum to the Panelist shows that the <wholesalesuite .com> domain name was registered on June 3, 2016, more than five years before the Complainant applied to register its WHOLESALE SUITE word and logo marks with the USPTO and just over one year after Complainant’s claimed first use of those marks in commerce. There is no evidence to support the conclusion that the Respondent, based in the United Kingdom, was likely to have been aware in June 2016 of the Complainant’s use of either mark before registering the domain name. The Complainant’s rights in its registered marks did not accrue until, at the earliest, November 4, 2021. Accordingly, even assuming that the Respondent, at the time of the filing of the Complaint, had no rights or legitimate interests in the domain name and that the Respondent is presently using the domain name in bad faith, the Complainant has not shown that the domain name was registered in bad faith.
The Complainant contends that the Respondent’s use of the disputed Domain Name demonstrates bad faith registration and use, according to Policy ¶ 4(b)(iv). However, although bad faith use of the kind identified in Policy ¶ 4(b)(iv) is evidence of both bad faith registration and bad faith use, such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. As stated in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085: “Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations.” In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”.
RDNH: There is no mention in the Complaint of the date of registration of the domain name, of which the Complainant’s Counsel must have been aware since the WHOIS information is mentioned in the Complaint. That date is fatal to the success of the Complaint since the Respondent could not have had the Complainant or its marks in mind when registering the domain name. This persuades the Panel that the Complainant, represented by Counsel, appreciated that its Complaint should fail. The Panel, therefore, finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Matthew G. McKinney of Allen, Dyer, Doppelt and Gilchrist, P.A., Florida, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case demonstrates the importance of Complainants investigating the Respondent’s date of registration. Here, as the Panel pointed out, not only did the Complainant fail to provide the Panel with the Whois for the Domain Name, but failed to address the apparent impossibility of registration in bad faith given the chronology with respect to the trademark registration and absence of evidence of common law trademark rights. As noted by Andrew Allemann of DNW.com, “based upon the record before him, [the Panelist’s] decision makes sense…but I think [the Complainant’s lawyers] made some mistakes”.
On its face, this initially appears to be one of those exceedingly few and very far between cases where initial good faith registration and use eventually turned into bad faith use, but that is likely not in fact the case. What actually appears to have occurred as pointed out by DNW.com above, is that there was never any good faith registration to begin with when the Domain Name recently changed hands, unbeknownst to the Complainant.
Was Denial of RDNH Justified Because Complainant Didn’t Have Respondent’s Identity and Explanation?
Distribuidora Automotiva S.A. v. Jeff T Muzzy, Black Moon Designs, WIPO Case No. D2023-5318
<pitstop .com>
Panelist: Mr. Andrea Mondini, Mr. Wilson Pinheiro Jabur and Mr. David H. Bernstein
Brief Facts: The Complainant is a Brazilian company active in the field of the distribution of automotive parts. The Complainant owns several Brazilian trademark registrations comprising the element “PIT STOP”. The earliest trademark registration for the design mark PIT STOP AUTO CENTER was filed on September 28, 1995, and registered on March 2, 2004. Although not mentioned in the Complaint, the Respondent also has cited another of the Complainant’s trademark registrations: the word mark PIT STOP, filed on July 22, 1993, and registered on April 2, 2002. The Complainant further holds the Domain Name <pitstop .com .br>, which was registered on July 16, 1997. The Respondent, Mr. Jeff Muzzy, is a software engineer and the sole governor at Blackmoon Designs. The disputed Domain Name was registered on July 5, 1994, and currently resolves to a registrar parking page with geo-targeted advertising of automotive products. The Complainant alleges that the trademark PIT STOP has been extensively used to identify the Complainant and its services in the Brazilian automotive parts market. There is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed Domain Name in connection with a bona fide offering of goods and services. To the contrary, the disputed Domain Name resolves to a website with links, in the Portuguese language, to third-party sites engaged in activities covered by the Complainant’s trademarks, specifically automotive parts and accessories targeted at the Brazilian market.
The Respondent contends that this dispute involves a dictionary word domain name, which was initially registered for a project in the context of the Respondent’s work as a software engineer, as is reflected in the oldest WHOIS record listing the corporate address for Microsoft. When the disputed Domain Name was not used for its original purpose, the Respondent continued to personally maintain the domain name and to pay the renewals for purposes relating to why Respondent chose ‘PITSTOP’. The Respondent further contends that his registration of the disputed Domain Name predates all of the trademark registrations asserted by the Complainant, of whom the Respondent has never heard before this dispute. The notion that the Respondent would have gone out of his way in 1994 to register a domain name corresponding to a pending Brazilian trademark application is “absurd” since neither the Brazilian trademark database nor the Complainant was online at that time. Finally, the Respondent disputes that the Complainant has been operating in the Brazilian market for over a century, by stating that the earliest corporate record for the Complainant is of February 12, 1990, and that on its website, the Complainant states that it was founded in 1998, i.e., even after the registration of the disputed Domain Name.
Held: The Respondent’s submissions appear to imply both that the disputed Domain Name was potentially registered at the request of or for the benefit of his then-employer, but also that the Respondent registered the disputed Domain Name from the outset for a car-themed purpose. It is also not entirely clear when the disputed Domain Name would have passed from one purpose to the other, and when the registrant became the sole registrant (as opposed to the Admin/Tech contact, but not the Registrant); the next WHOIS record provided shows this to be in 2013. Ultimately however, given that the Respondent incorporated Pitstop(.com) Inc. as a Washington corporation in August 1999, there is sufficient corroborating evidence of the fact that the Respondent’s bona fide / non-infringing use of the disputed Domain Name between 1998 and 2008, as a racing car online resource. The Panel finds that the latter use is sufficient to establish rights or legitimate interests.
The Respondent makes a compelling case for not being aware of the Complainant and its trademark at the time of registration of the disputed Domain Name. The Complainant does not advance a single reason to believe that the Respondent, based in the United States, at the time of registering the disputed Domain Name in July 1994, should have known of the Complainant or, for that matter, should have known that PIT STOP was used for an auto parts business in Brazil. The Panel also notes that none of the Complainant’s trademark registrations predates the registration of the disputed Domain Name (although at least one of the registrations was merely a pending application at that time). Therefore, the Panel finds that the disputed Domain Name was not registered in bad faith. In light of this finding, there is no need to decide whether the disputed Domain Name was used in bad faith.
RDNH: Although the Respondent did not expressly request a finding of reverse domain name hijacking (“RDNH”), it is a Panel’s obligation to consider whether such a finding is appropriate. Rules, paragraph 15(e). On balance, the Panel declines to award RDNH here.
At the time of the Complaint, the Respondent was concealing his identity behind a privacy shield. That prevented the Complainant from investigating the Respondent and ascertaining his potential rights and legitimate interests and his potential bad faith use and registration of the disputed Domain Name. Such a privacy shield also can hide the effective date on which a Respondent acquired or registered the disputed Domain Name. The Complainant had a good faith basis to be concerned when it saw its trademark being used as a domain name for pay-per-click advertising by an unnamed entity; the greater clarity that has emerged since the privacy shield was lifted and since the Respondent explained his history with the disputed Domain Name does not undermine the bona fide of the Complainant’s initial concerns.
Complaint Denied
Complainants’ Counsel: Newton Silveira, Wilson Silveira e Associados – Advogados, Brazil
Respondents’ Counsel: John Berryhill, Ph.D., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel in this case dutifully considered RDNH despite it not being expressly requested. This is the proper approach to fulfilling a Panel’s duty as I have written about in these Digests, extensively.
After considering RDNH, the Panel declined to find RDNH because the fact that the Domain Name’s registration details were hidden behind a privacy screen “prevented the Complainant from investigating the Respondent and ascertaining his potential rights and legitimate interests and his potential bad faith use and registration of the disputed Domain Name”. Generally, this is correct. When a domain name’s registration details are privacy protected (as is generally the case across all registrars since 2018), a prospective Complainant will be unable to determine for example, if the Respondent’s surname corresponds to the Domain Name, which is a big defense to a cybersquatting claim, as we saw with the Mermat .com case, above. Here, the Complainant’s inability to identify the name of the Respondent could have prevented the Complainant from apprising itself of the unlikelihood of the Respondent being a cybersquatter. This in turn could have hindered the Complainant from utilizing DomainTools in order to try to ascertain the Respondent’s date of registration, which could have also dissuaded the Complainant from proceeding. As the Panel pointed out, as it stood without such information, the Complainant “saw its trademark being used as a domain name for pay-per-click advertising by an unnamed entity” and therefore had a good faith basis to proceed with a Complaint.
Or did it?
Good practice by Complainant attorneys often involves sending a ‘demand letter’ prior to commencing proceedings. This is an important and prudent first step especially where a Complainant is in the dark as to a registrant’s Whois details. Sending such a letter can often result in explanations and defenses being provided by the registrant which will have the effect of dissuading a Complainant from embarking on a UDRP proceeding, or at least narrow the issues. Although the UDRP does not require that a demand letter first be sent out, it seems to me that a Complainant who fails to issue one where circumstances clearly would have warranted one, should have a more difficult time claiming that ‘it was simply unaware’ of the exculpating facts that came out via a Response. Like with the principle of wilful blindness often applied to Respondents in the case of bulk contemporaneous domain name registrations, wilful blindness seems to have a role to play with Complainants too. A Complainant who fails to conduct a proper investigation or who fails to issue a demand letter where clearly warranted, can be found to have been wilfully blind to facts which would have otherwise demonstrated to a Complainant that a Complaint should not have been commenced.
There is however another interesting aspect to the Panel’s denial of RDNH. It is true that at one point in the proceeding, the Respondent’s Whois details were under privacy but at another point, the Respondent’s details were provided to the Complainant:
“On December 28, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Perfect Privacy, LLC) and contact information in the Complaint.
The Center sent an email communication to the Complainant on January 2, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 2, 2024.” [emphasis added]
As can be seen above, the Complainant was provided with the Respondent’s details and then proceeded to amend its Complaint. At that point, the Complainant was in the very same position it would have been in had the Respondent’s contact details not been under privacy to begin with. The Complainant proceeded despite being advised of who the Respondent was. It is unclear whether the disclosure of the Respondent’s identity alone warranted discontinuing the UDRP procedure as additional information supporting such a discontinuance was provided in the Response, as suggested by the Panel.
Nevertheless, combined, the Complainant had in its possession at this point, BOTH the identify of the Respondent and the Respondent’s full exculpatory explanation yet decided to proceed ahead headlong. Should not that have resulted in RDNH? Well, it could be argued that the proceeding had already commenced at that point so it is impossible to find at that point that the proceeding had been commenced in bad faith, i.e. RDNH. However, at that point not only did the Complainant have the Respondent’s identity and full defense in its hands – but also paid the WIPO top up fee, and crucially, as pointed out to me by Respondent’s counsel, effectively recertified its amended Complaint. When amending a Complaint, it is either deemed recertified or is expressly recertified. That means that the proceeding was effectively recommenced by way of an amended pleading which changed the name of the Respondent.
In other words, whatever the Complainant’s bona fide initial concerns were, it had all the relevant and exculpatory facts before it prior to recertifying and paying for its Complaint, thereby calling into severe question, the Panel’s position that RDNH was declined because the Complainant did not have the benefit of the clarifying identity and history as provided by the Respondent. It seems to me that the Complainant unquestionably decided to proceed headlong with all the material facts at its disposal and as such the Panel’s denial of RDNH in the circumstances seems inappropriate.
Complainant Needs to Demonstrate Secondary Meaning in Support of Unregistered Mark
<thegardensavvy .com>
Panelists: Mr. Paddy Tam (Chair), Mr. Charles A. Kuechenmeister, and Mr. Flip Petillion
Brief Facts: The Complainant has used the domain name <gardensavvy .com> since 2019 and “garden planning” has been advertised on the related website providing information about gardening and a mechanism for connecting sellers of garden-related products with buyers. The Complainant’s mark is not registered with the USPTO and the Complainant does not claim the exclusive rights to use the word “savvy” or “garden”. The disputed Domain Name was registered on August 17, 2022. The goods and services advertised by the Respondent on its website include “garden bed design.” The Complainant alleges that the disputed Domain Name <thegardensavvy .com> was registered by the Respondent in August 2022 approximately three years after the Complainant started to use its domain name <gardensavvy .com>. As the existence of the Complainant’s domain name would be disclosed by performing a basic Google or similar search, the Respondent was aware of or certainly should have been aware of it. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant claims that it filed a trademark application with USPTO for the mark “Garden Savvy” but the application was rejected. On this basis, the Panel is of the view that the Complainant has failed to prove that it has registered trademark rights on “Garden Savvy”. The Complainant also asserts that it has used its domain name <gardensavvy .com> since 2019 but failed to present any evidence about the use of the domain name or the development of a secondary meaning in terms of WIPO Jurisprudential Overview 3.0 at ¶ 1.3.
For the foregoing reasons, the Panel finds that the Complainant fails to establish unregistered or common law trademark rights due to a lack of evidence provided to support that the mark “Garden Savvy” has generated a secondary meaning. The Complainant has not satisfied Policy ¶ 4(a)(i). As the Panel concludes that the Complainant has not satisfied the first element in the present case pursuant to Policy ¶ 4(a), it is not necessary to rule on the second and third elements pursuant to Policy ¶ 4(a). See TL Software Inc. v. Randy Roberts, FA 2075183 (Forum Feb. 1, 2024).
RDNH: Although the Respondent did not respond to the Complaint within the required period of time, the Panel is still obliged to review if the Complaint was brought in bad faith due to the failure of proving all three elements under Policy ¶ 4(a) by the Complainant.
Having reviewed the circumstances of the present case, the Panel is of the view that the Complainant genuinely believes that it has the prior rights on “Graden Savvy” despite the fact that no trademark has been registered. There is no fact demonstrating that the Complainant knew it could not succeed as to any of the required three elements or clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint. Therefore, the Panel declines to make a finding of Reverse Domain Name Hijacking.
Complaint Denied
Complainants’ Counsel: John Ehrling, New York, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: First of all, good for the Panel for considering RDNH even where no Response is filed, as it should where circumstances warrant.
Also, contrast this case with the Merat .com one, above. In both cases the Panel relies on the Complainant’s “genuine belief” to decline RDNH. In the instant case, the Complainant failed to provide evidence of common law trademark rights even though it was possible for it to have such evidence given that it apparently began using its website three years prior to the Domain Name registration. In such circumstances, the Complainant apparently if not likely, had, a sound basis for believing it was a victim of cybersquatting, based upon the Policy. A Good faith belief must be more than a genuinely or sincerely held belief. It must be a reasonable belief consistent with the law.