We hope you will enjoy this edition of the Digest (Vol. 3.4), as we review these noteworthy recent decisions, with commentary from our Director, Nat Cohen:
‣ Confusing Similarity Leads to Likelihood of Confusion (airsculpting .com *plus comment)
‣ ‘Confusingly Similar’ Test Narrower Than Trademark Test of ‘Likelihood of Confusion’ (thetravelexchange .com .au)
‣ Conjunctive Nature of Third Element (sofortnovoline .com)
‣ CitiusTech (India) v. Citius-Tech (Indonesia) (citius-tech .com)
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Must Read: Westlaw Interviews – Domain Investor Nat Cohen
Q&A: Domain investor Nat Cohen on the ‘capricious’ legal foundation for dealing in resale domain names – Westlaw Today (powered by Reuters)
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Confusing Similarity Leads to Likelihood of Confusion
Panelists: Mr. Alan L. Limbury (Chair), Mr. John V. Swinson and Professor Mr. David E. Sorkin
Brief Facts: The Complainant provides cosmetic and plastic surgery procedures and owns rights in the AIRSCULPT mark based upon registration in 2015 with the USPTO. The Respondent registered the disputed Domain Name on April 29, 2021. The Complainant alleges that the Respondent uses the disputed Domain Name to offer click-through links to third-party sites unrelated to Complainant’s business and that the Respondent registered the disputed Domain Name with the purpose of selling it to the Complainant or a competitor of the Complainant for an excessive price. The Respondent contends that he is using the disputed Domain Name for a legitimate purpose as the Respondent is in the business of purchasing generic term domain names for resale and in the meantime is using the domain name to resolve to a parking website with links unrelated to Complainant’s business.
The Respondent further contends that at the time of registration, he searched the USPTO and found the trademarks for AIRSCULPT for cosmetic and plastic surgery. A Google search for Air Sculpt showed a wide third party use of AIRSCULPT for cosmetic and plastic surgery and felt that the disputed Domain Name would be a perfect fit for that type of business. Since it is a separate industry and both words are generic terms, the Respondent did not believe that he was cybersquatting Complainant’s trademark. The Respondent never approached the Complainant to try to sell the domain name to the Complainant, nor did he target the Complainant or its business. However, on October 19, 2022, through a third-party intermediary to Uniregistry (GoDaddy), the Complainant made an offer to buy the Domain Name anonymously. This Complaint is, therefore, a “Plan B” attempt to obtain the disputed Domain Name through the UDRP.
Held: The Panel accepts Respondent’s submission that the business of purchasing generic term domain names for investment and resale is legitimate and that the Respondent is engaged in that business. The Panel is also not satisfied that the anonymous approach instigated by the Complainant to purchase the disputed Domain Name from the Respondent and the response thereto, supports the conclusion that the Respondent registered the Domain Name primarily for the purpose of selling or transferring in terms of the Policy. Bringing this Complaint after that offer was rejected indeed constitutes a “Plan B”. However, these circumstances alone do not exculpate the Respondent from a finding of bad faith.
The Respondent admits that before he registered the disputed Domain Name, he conducted a trademark search that revealed Complainant’s AIRSCULPT mark. He says a Google search for Air Sculpt showed a number of websites using AIRSCULPT for cosmetic and plastic surgery. However, that Exhibit shows a search for “air dried sculptures”, not “Air Sculpt”, while the majority of the results of a Google search for “air sculpting” relate to body contouring treatment, including some that use the word “sculpting” in relation to such treatment.
Under these circumstances the Panel finds it likely, on the evidence before it, that, in light of the confusing similarity between Complainant’s AIRSCULPT mark and Respondent’s <airsculpting .com> domain name, many Internet users will mistakenly expect that the domain name and the site to which it resolves are connected with the Complainant. Accordingly, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. This demonstrates registration and use in bad faith to attract users for commercial gain under the Policy.
Complainants’ Counsel: Sarah E Bro of McDermott Will & Emery LLP, USA
Respondents’ Counsel: Howard M. Neu of Law Office of Howard M. Neu, P.A., USA
Case Comment by ICA Director, Mr. Nat Cohen:
The airsculpting.com dispute raises challenging questions about what constitutes legitimate domain name investment. In the airsculpting.com dispute, the Respondent argued that the domain name was comprised of two dictionary words, had third-party usage unrelated to the Complainant, the Complainant attempted to purchase the domain name before filing the Complaint as a Plan “B”, the Complainant filed for a trademark on AIRSCULPTING after the Respondent had registered the domain name, and the domain name was not being used to target the Complainant, and thus on the basis of all of the above, was legitimate. The Complainant argued that “airsculpting” is merely a minor variation on its well-known AirSculpt brand, that it is by far the dominant user of the term, that any other third-party use is negligible, and that any monetization of AirSculpting.com is an attempt to profit from confusion with its brand.
The arguments offered by both sides are recurring arguments that arise in UDRP disputes. Neither argument is correct or incorrect on its face – the specific facts in each dispute are determinative. In my view as a domain name investor, when an investor wishes to offer for sale a domain name that is a somewhat contrived combination of two dictionary words that is similar to a well-known brand, the UDRP panel is justified in making a rebuttable inference of bad faith targeting against the domain name investor. It is then the investor’s responsibility to rebut this inference of bad faith by making a compelling argument as to why the investor’s choice to register the domain name, likely with the awareness of the prior trademark rights, as in this case, was nevertheless in good faith.
An investor can, and will, usually argue that the disputed Domain Name has inherent appeal, that it is susceptible to other third-party use, that a trademark registration does not grant monopoly rights to all uses of a term such that it is permissible for other users to have the opportunity to acquire the domain name if they so wish, and that no use of the domain name was made to profit from the complainant’s goodwill.
Here, while the Respondent made many of these arguments, they failed to persuade the Panel. The Panel found that the combination of “air” and “sculpting” was arbitrary, that the Complainant was by far the dominant user of the term, that the Complainant’s services were also referred to by the term “airsculpting” and that any third-party use was negligible and not credible as a justification for registering the domain name. In addition, that the domain name was monetized, even though with non-infringing links, suggested an attempt to profit from confusion with the Complainant’s mark. In this case, the Respondent attempted, but failed, to rebut the inference of bad faith targeting.
I give credit to the Respondent for acknowledging awareness of the mark prior to registration. It would not have been credible to claim a lack of awareness, so I expect it helped the Respondent’s credibility to make that admission. Awareness of a prior trademark does not make a similar domain name registration off-limits, if the domain name has independent appeal.
AirSculpting.com could attract interest from a domain name investor merely from the appeal of the domain name on first impression alone without any research. In other words, it is a plausible to consider it an investment grade domain name. As discussed in “Smells Like Cybersquatting – How the UDRP Smell Test Can Go Awry”, that Qeido.com and Monvy.com were registered and then resold by a domain name investor demonstrates how vast the universe of investment quality domain names is. AirSculpting.com exists within this universe of domain names that could plausibly be registered by a domain name investor for their inherent appeal alone.
It may be useful to compare the facts in AirSculpting.com to the facts in the bodynetic[.com] dispute. In bodynetic, the domain investor registered the domain name before the Complainant could claim any rights in the BODYNETIC mark, so the Complaint was denied. See the UDRP Digest report in Issue 3.1. While in the bodynetic dispute the domain name came first, it serves to demonstrate that domain name investors register appealing coined terms independent of trademark use, such that it may be arbitrary whether the trademark use came first or the domain registration came first, and that the trademark registration came first may not necessarily delegitimize registering the coined term for investment. Could airsculpting[.com] be similar to bodynetic[.com] in that it could be viewed as an inherently appealing domain name registered without regard to the Complainant’s use?
The difficulty for the Respondent in the AirSculpting dispute is that the trademarked use came first and it has a dominant commercial presence on that term with the Complainant’s evidence showing that the first two pages of Google search results refer solely to the Complainant. When assessing the Respondent’s intent in registering and offering for sale the AirSculpting[.com] domain name, the Panel did not find Respondent’s argument that AirSculpting[.com] met the criteria for an investment grade domain name and was registered on that basis sufficiently compelling.
It likely would have been helpful to the Respondent’s defense in AirSculpting[.com] if the Respondent could have shown a pattern of registering similar formation domain names. But the Respondent did not do so, and with a claimed portfolio size of less than 100 domain names, may not have been able to do so. That the Respondent admitted to doing research on third-party usage, though it helped his credibility, likely hurt his case as it demonstrated that he registered AirSculpting[.com] in full awareness that it was similar to a dominant well-known brand and that there was little meaningful unrelated third-party usage. While not specifically addressed in the decision, Respondent’s argument that since Complainant’s mark AIRSCULPT is a noun while “airsculpting” is a verb serves to differentiate the two terms was undercut due to a primary competitor of AIRSCULPT operating under the COOLSCULPTING brand. It was likely fatal to Respondent’s case that he then monetized the domain name with PPC links. I wonder whether it would have made any difference to the outcome if the domain name had been merely offered for sale and the traffic had not been monetized.
The Panel Chair in the AirSculpting dispute has apparently wrestled with how to properly balance the rights of domain name investors with those of trademark owners in other recent disputes. The impression I have is that his position has evolved over time as he conscientiously and prudently sought to find the right balance. In ActionShip[.com], in which he was also Panel Chair, the decision adopted an approach which I consider overly broad. The Panel apparently imposed a duty for a domain investor to research trademarks and then to simply avoid registering any domain names similar to any trademarks they found:
Thus, as a professional domain name reseller, Respondent is to be taken to have registered and used the <actionship[.com]> domain name in bad faith by registering it and putting it up for sale without exercising reasonable diligence before registering it to ascertain whether the domain name conflicted with prior rights.
This imposition of a new overly broad obligation may however have been inadvertent and the intended finding was likely more modest and nuanced:
As a professional domain name reseller, Respondent is to be taken to be aware of existing trademark rights such that a Panel may assess bad faith intent with that awareness of prior rights attributed to the Respondent.
In contrast, this formulation does not create a blanket prohibition against registering domain names that are similar to a trademark but puts the Respondent on notice that he or she may be called upon to justify why they registered a corresponding domain name despite the existence of a Complainant’s prior rights.
The OutskirtPress[.com] dispute provided another opportunity to address similar issues. Here the non-appearing Respondent was given the benefit of the doubt, despite the Respondent failing to offer a justification for why such a non-intuitive combination was chosen that was so similar to Complainant’s OUTSKIRTS PRESS mark in which it had prior rights.
In AirSculpting[.com], I believe that the Panel found the right balance. Both sides presented strong arguments supported by evidence. The Panel weighed the evidence, applied the appropriate rationale to distinguish between a cyber-squatted domain name and a legitimate investment domain name, and reached the correct outcome.
‘Confusingly Similar’ Test Narrower Than Trademark Test of ‘Likelihood of Confusion’
<thetravelexchange .com .au>
Panelist: Mr. John Swinson
Brief Facts: The UK Complainant under its brand TravelEx provides services in respect of foreign currency exchange, across 60 countries. It operates TravelEx outlets in international airports and in major transport hubs, shopping malls, supermarkets, and city centres, including many such outlets in Australia. The Complainant owns several trademark registrations for or including the TRAVELEX trademark, including Australian Registration dated November 28, 1997, in respect of “money exchange services”. The Australian Respondent did not file a response, however, the Respondent appears to be a travel agent or tour specialist, and operates a website at <theviptraveller .com .au>.
The disputed Domain Name was registered on May 14, 2020 and currently resolves to a Registrar-generated parking page with links to “related searches” for “tour packages” and “Forex Trading” and the like. The Complainant contends that it is well known throughout the world and the Respondent “must have been aware of the Complainant” at the time of registering the disputed Domain Name. Further, it adds that the Respondent had the responsibility to determine if the disputed Domain Name infringe others rights, and the Respondent “in this case could easily have established that the Disputed Domain Name would infringe the Complainant’s rights”.
Held: The Complaint is unclear whether the Complainant is alleging both bad faith registration and bad faith use, or only bad faith registration. At no point does the Complaint explicitly allege bad faith use, and states that the disputed Domain Name is not in use. Generally speaking, a finding that a domain name has been registered in bad faith requires an inference to be drawn that the respondent in question registered the disputed Domain Name to take advantage of its significance as a trademark owned by the Complainant. Because the Respondent is a company in the travel business, the Panel is prepared to accept that the Respondent was aware of the Complainant’s TRAVELEX trademark in 2020. However, that does not necessarily mean that the Respondent registered the disputed Domain Name to take advantage of the TRAVELEX trademark.
There is no evidence before the Panel to suggest that the Respondent had bad faith motives vis-a-vis the Complainant. The Panel comes to this conclusion based on the factors such as: there is no evidence that the Respondent tried to sell the disputed Domain Name to the Complainant or otherwise is attempting to attract consumers via the disputed domain or is attempting to disrupt the Complainant’s business; the disputed Domain Name is not identical to the Complainant’s trademark; and even it is not clear that use of the disputed Domain Name by the Respondent would infringe the Complainant’s trademark rights in Australia. The test under the first element of the Policy is narrower than and thus different to the question of “likelihood of confusion” under Australian trademark law. It is debatable whether “The Travel Exchange” is deceptively similar to TRAVELEX so as to cause a likelihood of confusion.
In short, the Complainant has not presented evidence, circumstantial or otherwise, as to why the registration or use (albeit based on a registrar parking page) by the Respondent of the disputed Domain Name must be bad faith. Ultimately, the Panel concludes on the preponderance of the evidence, that the Complainant has not carried its burden of proving the Respondent’s bad faith as required by the Policy.
Complainants’ Counsel: Deloitte LLP, United Kingdom
Respondents’ Counsel: No Response
Domain Name Registered in 1996 – Does Doctrine of Laches Apply?
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant is a petroleum company headquartered in Sydney, Australia and is the registrant of numerous trademarks for AMPOL, including earliest Australia trademark registrations dated March 27, 1941 and November 21, 1947. The Complainant operates a website at <ampol .com .au>, at least since December 27, 1996. The Complainant states that it is listed on the Australian stock exchange and is the nation’s leader in transport fuels. It claims to currently provide over 1,900 branded sites and other facilities supplying fuel to over 80,000 customers across Australia and that its activities also extend to Singapore, the United States, New Zealand and the Philippines.
The disputed Domain Name was registered on July 25, 1996 and according to the evidence, it previously resolved at various times to content including to a website headed “Welcome to Australia Online!!! The Australian Magazine on the Internet” (On December 3, 1998) and to a page headed “Related Categories” and apparently containing links to “Petroleum”, “Mobil Gas Stations”, “Exxon Mobil Credit Card”, “Sunoco Stations”, and other similar links (On October 4, 2006). The Respondent denies that it has used the disputed Domain Name to redirect to or promote its “Australia Online” website and adds that the disputed Domain Name briefly redirected to that site between December 1998 and February 1999 owing to a programming error that was quickly corrected.
The Respondent contends that it used the disputed Domain Name for the purpose of a repository of documents of interest to the “Australia Online community”, that its website has not been publicly available… its non-commercial use of the disputed Domain Name and that the Complainant’s trademark AMPOL was virtually unknown in the United States in 1996 and was not a household name, whether then or now. The Respondent further contends that the disputed Domain Name was registered some 26 years ago and the Complainant having registered its own <ampol .com .au> domain name in 1996, and having made various approaches to the Respondent over the years to purchase the disputed Domain Name, the Complainant must have been aware of the registration. In these circumstances, the Complainant’s failure to object should be viewed as acquiescence in the Respondent’s use of the disputed Domain Name.
Held: In this circumstance of this case, the Panel finds on balance that the Respondent is likely to have been aware of the Complainant’s AMPOL trademark at the date of registration of the disputed Domain Name and moreover registered it with the intention of taking unfair advantage of the Complainant’s rights in that mark. The Panel makes these findings principally for the reasons such as: disputed Domain Name is identical to the AMPOL trademark, an invented term with no dictionary or generic meaning; the Complainant has traded in Australia under the AMPOL mark for nearly a century; US Respondent is in fact named “Australia Online”, while operated a website under that name including reference to major Australian corporations. Taking all of these matters together with the Respondent’s failure to provide any explanation for its choice of the disputed Domain Name, the Panel further infers that the Respondent registered the disputed Domain Name with the intention of taking unfair advantage of the Complainant’s rights in its AMPOL trademark.
Additionally, it is convenient at this juncture to consider two matters that have been raised by the Respondent. First, regarding the question of delay of 26 years, there is nothing in the Policy or Rules that expressly identifies a delay in bringing a complaint as a matter to be considered in assessing the merits of the case. Furthermore, it is generally accepted in jurisprudence under the UDRP that no doctrine of acquiescence of “laches” is typically applicable and that relevant cases must be decided on their merits under the Policy regardless of the timing of the complaint. Concerning the second matter, of the Complainant’s anonymous attempts to buy the disputed Domain Name from the Respondent and its commencement of this proceeding only when those approaches were unsuccessful, the Panel does not find these circumstances to undermine the merits of the Complainant’s case under the Policy. The Complainant may have had a number of reasons why it preferred first to attempt to obtain the disputed Domain Name on agreed commercial terms rather than enter into a legal dispute.
While the Respondent submits evidence of several instances over the years on which it rejected approaches for the disputed Domain Name, it accepts in its Response that it has been prepared to consider substantial offers for the disputed Domain Name in six figures. While the Respondent is right to say that asking a high price for a domain name is not evidence of bad faith per se, the Panel has difficulty in discerning to whom, other than the Complainant, the Respondent believed it might sell the disputed Domain Name for a sum in six figures. On full consideration of the circumstances, therefore, the Panel concludes on the balance of probabilities that the Respondent is most likely to have registered the disputed Domain Name in the hope of selling it to the Complainant. The Panel finds in the circumstances that the disputed Domain Name has been registered and is being used in bad faith.
Complainants’ Counsel: McCullough Robertson Lawyers, Australia
Respondents’ Counsel: Arthur R. Lehman L.L.C., United States
Conjunctive Nature of Third Element
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant, founded in 1990, produces, operates and distributes gaming technologies around the world. According to the Complaint, it employs more than 30,000 staff worldwide with offices in more than 50 countries and has some 255,000 gaming terminals and video lottery terminals in its own approximately 2,100 gaming operations or rental arrangements. In addition to physical premises, it also offers its games online. The Complaint includes evidence that the Complainant owns at least 41 registered trademarks beginning with “NOVO” including EU Trademarks NOVO LINE (March 26, 2008); NOVOLINE, (January 25, 2013) and BOOK OF RA (May 24, 2006).
The disputed Domain Name was registered on March 4, 2015 and resolves to a website from which what appear to be the Complainant’s games such as “Book of Ra”, “Book of Ra Deluxe” and “Columbus Deluxe” can be played. The Respondent contends that he registered the disputed Domain Name in 2015 to participate in an affiliate program being offered for the Complainant’s games by Stargames, wherein it was necessary to provide the domain name(s) that would be used to provide the affiliate services. In support of his contention, the Response includes information that indicates that Stargames is part of the Complainant’s corporate group and public media information indicating that Stargames is some sort of licensee or providing and marketing the Complainant’s games online.
Held: Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed Domain Name to take advantage of its significance as a trademark owned by (usually) the complainant. There is no dispute between the parties that the Respondent was well aware of the Complainant’s NOVOLINE trademark when he registered, or became the registrant of, the disputed Domain Name. On the materials provided by the Respondent, however, it appears that he registered, or became the registrant of, the disputed Domain Name in the belief that he was doing so to participate in an affiliate program being operated for the Complainant by Stargames.
The Complainant further does not dispute that Stargames is part of the Complainant’s corporate group or operating an affiliate program on the Complainant’s behalf. The extent of Stargames authority, if any, to authorise the use of the Complainant’s trademark is unclear on the record in this case but does not appear to have been challenged by the Complainant. Nonetheless, as Stargames was (and is) a member of the Complainant’s corporate group and appears to have been responsible for promoting the Complainant’s group’s products at least until recently, the Respondent can hardly be criticised for believing his registration and use of the disputed Domain Name was undertaken with the Complainant’s authority.
In these circumstances, the Panel does not think the Complainant has sufficiently proven that the Respondent registered the disputed Domain Name in bad faith for the purposes of the Policy whether he was the original registrant or became the registrant as a result of the transfer of the affiliate account from his business partner in 2016 (bearing in mind the relationship with Stargames appears to have continued for several years after that transfer without objection). In view of the conjunctive nature of the elements under the third requirement, therefore, the Complainant cannot establish that the disputed Domain Name has been registered and is being used in bad faith.
Complainants’ Counsel: Simmons & Simmons, Germany
Respondents’ Counsel: Self-represented
CitiusTech (India) v. Citius-Tech (Indonesia)
Panelist: Mr. Christopher S. Gibson
Brief Facts: The Complainant describes itself as a leading provider of consulting and digital technology to healthcare and life science companies, operating in India, the US, UK, UAE and Singapore. The Complainant operates at <citiustech .com> and owns Indian Trademark registration for CITIUSTECH, registered on March 3, 2014 and a US trademark registered on October 28, 2014 (“first use in commerce” from 2005). The Complainant claims that the CITIUSTECH mark was first adopted by the Complainant as its brand name and logo in the year 2005 when the company was established with the name Citius IT Solutions Private Limited in India and as a Complainant’s subsidiary company in the United States, CitiusTech, Inc. The Complainant changed its name in India to CitiusTech Healthcare Technology Private Limited on October 10, 2015. Since its inception until 2022, the Complainant generated sales revenue of approximately USD $1,256,249,229.
The Domain Name was registered on March 18, 2008 and resolves to a website titled “Citius Technologies Indonesia” and provides reference to a portfolio of projects that the Respondent has purportedly completed over time. The Respondent did not file a formal response, however, in an email state: “We are Citius InfoTek, a home based business consisting of a small team of freelancers who have been using this domain for email communications and project portfolio pages only. We have never heard of citiustech healthcare products or services before and their products are not popular in our country… As you know, Citius is a general word in Greek or latin means: faster, and Tech is a shortened word of technology(es)… We work in different industries; we don’t have registered trademarks or sell counterfeit products related to their products.”
Held: Having reviewed all of the evidence in this case, the Panel determines that the Respondent rebuts Complainant’s case, for several reasons. First, the Respondent registered the Domain Name in 2008, which is six years before the Complainant obtained its first trademark registrations in 2014 (in India and the United States). Besides, the Complainant claims to have common law rights acquired through continuous, exclusive and extensive use of the CITIUSTECH mark in India and United States “for around ten years”. Accepting this statement as true, this timeframe would reach back only to 2012, four years after the Domain Name was registered by the Respondent. Second, Complainant’s own sales and marketing figures (for India) show that the Complainant’s figures as of 2008 were fairly modest. There is no reason to believe that the Complainant had achieved goodwill and reputation by 2008 that would have extended more globally such that the Respondent would have been aware of the Complainant.
Third, despite Complainant’s conclusory allegations that the Respondent targeted Complainant’s CITUISTECH mark, there is insufficient evidence in the record to support this claim. Moreover, as noted by the Respondent, the word “citius” means “faster” in Latin. Therefore, unlike a completely made-up word, it is plausible that the Respondent chose this word as appropriate for its IT solutions company. Fourth, and finally, the Wayback Machine shows that the Respondent has been using the Domain Name consistently for at least 13 years (2009-2022) in relation to its IT business under the same or similar name. None of the numerous screenshots of Respondent’s site during that period demonstrates any targeting of the Complainant or Complainant’s trademark. Therefore, although the record suggests that Complainant’s CITIUSTECH trademark has increased in strength, reputation, and goodwill over time, this is not enough to demonstrate Respondent’s lack of rights or legitimate interests in the Domain Name.
Complainants’ Counsel: Vutts & Associates LLP, India
Respondents’ Counsel: Self-represented