We hope you will enjoy this edition of the Digest (Vol. 3.6) as we review these noteworthy recent decisions with commentary from our General Counsel, Zak Muscovitch:
‣ Did a Foxy University Instructor Turn to ‘Crime’ 27 Years Later? (fox .org *plus comment)
‣ Tarnishment of Reputation Cannot be an Objection to a Criticism Site (imetpolanski .com *plus comment)
‣ Complainant ‘Either Knowingly or At Least Negligently, Misrepresented the Factual Matrix’ (lolo .com)
‣ Pending Trademark Application Does Not Count Absent Evidence of Common Law Trademark Rights (impossiblekick .com)
‣ Is Protection Available to State Registered Marks? (1dollarmontana .com)
This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Did a Foxy University Instructor Turn to ‘Crime’ 27 Years Later?
Fox Media LLC v. Bill Biersdorf, WIPO Case No. D2022-4600
Panelist: Mr. William F. Hamilton
Brief Facts: The Complainant, a wholly owned subsidiary of Fox Corporation, is one of the world’s largest entertainment and media companies. The Complainant owns numerous registrations around the world for the trademark FOX. While the earliest registration was obtained on November 30, 1993, the Complainant and its predecessor companies have used the Mark for over 100 years since 1915. The Complainant owns and operates the domain names <fox .com>, <foxnews .com>, and <foxsports .com> (in addition to numerous other domains incorporating the term “Fox”). The disputed Domain Name was registered on May 18, 1996 and does not resolve to an active website. The Complainant asserts that email accounts related to the disputed Domain Name were used to send fraudulent emails with the goal of phishing information from unsuspecting persons by impersonating the Complainant’s employee.
The Panel issued Administrative Panel Procedural Order No. 1. The Panel noted that all relevant means of communications proscribed by the Rules were employed by the Center when formally notifying the Respondent of the Complaint and that the Center’s case notification obligations had been duly satisfied. In reviewing the nearly 150 pages of annexes appended to the case file however, the Panel observed that in a cease-and-desist letter sent by the Complainant to the Respondent’s Registrar-confirmed email address, the Complainant included an alternate possible email address for the Respondent. The Panel notes that the Complainant’s investigation showed the Respondent seems to have previously worked for the University of South Florida (USF). It is also noted that the Respondent did not reply to the either Complainant’s cease-and-desist letter or its reminder using the USF email address. Out of an abundance of caution, the Panel instructed the Center to provide notice of the present dispute to the Respondent using the email address “[…]@usf.edu” and granted the Respondent a three (3) day period (through January 30, 2023) in which to indicate whether it wished to participate to this proceeding. The Panel extended the Decision due date to at least February 1, 2023. The Respondent did not submit any Response or otherwise communicate in respect of the case.
Held: The Panel finds the disputed Domain Name was registered and is being used in bad faith as the trademark is extremely well-known in the United States, and the Respondent is having a Florida, United States address. It strains credulity to believe that the Respondent was not aware of the mark and the Complainant’s services when registering the disputed Domain Name. Further, the Complainant has submitted evidence tending to show that the disputed Domain Name was utilized in connection with a phishing attempt. The Panel finds that the Respondent’s use of the disputed Domain Name to perpetuate a fraud by sending phishing emails while impersonating the Complainant’s employee amounts to use in bad faith for purposes of the Policy.
Besides, prior UDRP panels have also held that “the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”. Lastly, it is difficult to conceive of any use that the Respondent might make of the disputed Domain Name without the Complainant’s consent that would not involve bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Complainants’ Counsel: Greenberg Traurig, LLP, United States
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
Something about this case doesn’t add up. A university instructor registered an innocuous domain name corresponding to a common English word and 27 years later he began using it for a criminal fraudulent phishing scheme?
The UDRP Aims for ‘Actual Notice’ to Respondents
Judicial proceedings rely upon service of process. Ignoring or failing to respond to a notice of proceeding that has been served, will not generally cause lawyers or jurists to shed any tears. Indeed, we often have some degree of disdain for those that would ignore or fail to respond to a proceeding, and we tend to believe that they have contributed to, if not caused any unfortunate result that befalls them. We are comfortable in our view that had the outcome been sufficiently important or had they something important enough to say in their own defense, that they surely would have responded. In that sense, the difficulties appurtenant to an undefended case such this Fox[.org] case, could be avoided had the Respondent just responded and put forth any arguments that may be available in his defense.
Judicial proceedings do, however, have important safeguards against unfortunate outcomes where a responding party fails to respond. Judicial proceedings generally require notice to a responding party based upon “service of process”. Typically, such service of process is designed to achieve actual notice to a responding party by effecting “personal service” so that based upon an “affidavit of service” the court can have confidence that the proceeding came to the notice of the responding party and any failure to respond was the result of a conscientious neglect or refusal to participate.
The UDRP has the same objective of achieving actual notice of the proceeding to the Respondent, however without the gold standard of ‘personal service’ we can never enjoy the near certitude of actual notice which is enjoyed in judicial proceedings. We nevertheless tend to assume actual notice and hope for the best. Indeed, the UDRP contemplates that a proceeding can continue even in the absence of actual notice being achieved so long as the Provider has fulfilled its obligations to attempt notice through specified means. The relative lack of certainty of notice, or even the confirmed absence of actual notice in UDRP proceedings should cause us to temper any implications which we may be tempted to draw from a lack of a Response, particularly in circumstances which would appear questionable or dubious to an experienced Panelist.
Rule 2 of the UDRP Rules states that it is “the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent”. As such, the UDRP has the same objective, namely “actual notice” as that of judicial proceedings generally. How can UDRP Providers achieve “actual notice”? The UDRP Rules provide that a Provider may “discharge this responsibility” by sending notice by email to the Respondent’s email address as recorded in the Whois (now often referred to as the “Registration Data”), to the “postmaster@” address, and if there is an active web page associated with the domain name (other than a registrar or hosting provider’s standard holding page), “any email address shown or email links on that web page”. It is not clear that the latter obligation which I have bolded for emphasis, is always being done by Providers. What this means in practice is that Providers must manually review any associated website for any email address that is not included in the Registration Data, and Panelists should ensure that this has been done before assuming and confirming in his or her decision, that the notice to a Respondent has been properly effected under the Rules.
But the aforementioned steps are not the only ones required of a Provider under the UDRP Rules. A Provider is also required to send notice by postal mail and facsimile; a) shown in the Whois; and b) “supplied by the Registrar to the Provider for the registration’s billing contact”. A “billing contact” historically was often included in the publicly available Whois information but 2015 guidance from ICANN indicated that this field was optional. Importantly, a “billing contact” could differ from the “auxiliary” billing contact that the Registrar itself uses for billing of its client, the registrant. It appears likely that most Registrars only provide the “billing contact” that would have in the past appeared in the publicly available Whois records, as part of the “Registration Data” in accordance with the “Temporary Specification” (or “Temp Spec” which was issued by ICANN on May 25, 2018 as a result of GDPR which caused widespread concealment of previously publicly available Whois data), rather than providing any internal billing contact which remains private.
The Temp Spec defines “Registration Data” as “data collected from a natural and legal person in connection with a domain name registration” and requires that the Registrar “MUST provide the UDRP Provider with the full Registration Data…upon the UDRP Provider notifying the Registrar of the existence of a complaint”. Nevertheless, it seems unlikely as aforesaid, that “full Registration Data” actually comprises the Registrar’s own internal billing contact information despite the broader wording of Rule 2 of the UDRP Rules. Moreover, although Rule 2 clearly obligates Providers to send notice to the Respondent at a billing contact as provided by the Registrar, there is no express requirement that the Registrar itself provide its internal billing contact information to the Provider, beyond what is in the Temp Spec.
Is it Time to Update the Notice Requirements under the Policy?
In any event, since achieving actual notice to the Respondent is the objective of Rule 2, it is perhaps time that the requirements are updated. If Registrars can’t or won’t provide their internal billing contact information to a Provider, then they should be required to at least provide notice of the UDRP proceeding to their own client using all available email addresses. Not only would that provide greater assurance that actual notice was being achieved, but when contacted by its own service provider rather than a Provider that they may have never heard of before, a registrant will likely have more confidence that this is a genuine and serious proceeding that they ought to respond to. Moreover, the virtual absence of facsimile machines these days (which were previously an additional means of achieving actual notice”) means that registrants have lost a means of receiving notice. Providing the aforementioned new and additional means would be a good, if not superior, replacement.
Did the Respondent Receive Actual Notice of the Proceeding?
Which brings us back to the Fox case where the Respondent did not respond. A review of the website associated with the disputed Domain Name does not show any email address that could have been used to notify the Respondent, and we cannot know if a notification directly by the Registrar might have resulted in a response by the Respondent. We do know that the Panelist dutifully noted that “all relevant means of communications prescribed by the Rules were employed by the Center when formally notifying the Respondent of the Complaint and that the Center’s case notification obligations had been duly satisfied”, but nevertheless in reviewing the Complainant’s 150 pages of annexes, “observed that in a cease cease-and-desist letter sent by the Complainant to the Respondent’s Registrar-confirmed email address, the Complainant included an alternate possible email address for the Respondent”. The Panel also noted that “the Complainant’s investigation showed the Respondent seems to have previously worked for the University of South Florida (USF)…[and] that the Respondent did not reply to the either Complainant’s cease-and-desist letter or its reminder using the USF email address”. The Panelist therefore “out of an abundance of caution…instructed the Center to provide notice of the present dispute to the Respondent using the email address “[…]@usf.edu”, but the Respondent still did not respond.
In researching this matter, I also found an @usd.efu email address for the Respondent and a colleague attempted to contact him, however the email bounced back with the message that the email could not be delivered. Presumably the Center had received a similar notice of non-delivery yet the decision unfortunately does not indicate so and thereby leaves the impression that the Respondent received notice via this additional means yet intentionally did not respond.
Why did the Respondent Turn to Fraud and Phishing After 27 Years?
Clearly the Panelist was concerned with achieving actual notice to the Respondent and should be commended as aforesaid, for noting the availability of an alternative email address and ordering that it be additionally employed to provide notice. This kind of concern should be present in all cases generally but was likely more acute in this particular case given the circumstances. Here we have a Domain Name that; a) was registered in 1996 (27 years ago) by someone who worked at a University; b) corresponds to a common type of animal in the English language so it is not inherently infringing; and c) likely corresponds to thousands upon thousands of surnames, business names and trademarks worldwide. Moreover, ostensibly it was not until recently – after over two decades – that this common word and innocuous Domain Name was allegedly used for “fraud and phishing”, thereby causing a reasonable Panelist to wonder what would turn a university instructor into a criminal so late in his life or alternatively, why would he not respond to these serious allegations and explain why he is innocent?
What Did the Panel Get Wrong?
So what led the Panelist who was admirably sensitive to achieving actual notice in the curious circumstances of a Respondent failing to respond, to order the transfer of the Domain Name? In my view, the Panelist unfortunately made several questionable assumptions and reached several questionable corresponding conclusions.
- The Panelist stated that the Domain Name “unabashedly adopts the Mark in its entirety [and] carries a risk that any Internet user would assume the disputed domain name resolves to a website sponsored or affiliated with the Complainant”. On the contrary, given the generic nature of this common word Domain Name, it is hardly “unabashed” for someone to have registered it for an entirely lawful and innocuous purpose. Moreover, although FOX may be a famous media company, it is hardly the exclusive user of this word, even in business with thousands of people and companies all lawfully employing the same term, all over the world for a multitude of purposes.
- The Complainant’s first trademark registration was in 1993 and the Domain Name was registered only 3 years later in 1996. Although the Panel notes that the Complainant allegedly used its mark for over 100 years, the decision did not reference any evidence demonstrating that in 1996, the Respondent was likely to have been aware of FOX, which was not the behemoth and well-known company that it is today. Yet the Panelist merely notes that “the Mark is extremely well-known in the United States” without indicating when it became well known.
- The Panelist also stated that “it strains credulity to believe that the Respondent was not aware of the Mark and the Complainant’s services when registering the disputed domain name”, yet simple awareness of a mark, particularly where it is such a widely used descriptive term in the English language and is used by a multitude of third parties, does not mean that the Domain Name was registered in bad faith. Bad faith registration requires targeting of a particular Complainant’s mark at the time of registration. Such evidence is entirely lacking here.
- The Panelist inexplicably stated that “it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith”. The Domain Name is not as distinctive and unique as for example, Google, or Citi Bank, such that this conclusion can be reasonably made. The Complainant is not the only party in the world that can lawfully use the word, Fox, and it is therefore easily conceivable that use can be made of it without bad faith.
Inferences Made Without Adequate Factual Evidence
Which leaves us with the only apparent issue remaining in this case which on its face reflects very badly on the Respondent, namely the alleged phishing scheme which ostensibly employed the Domain Name. The Panelist notes that “the disputed domain name does not resolve to an active website but was used in a fraudulent email scheme” that apparently “impersonate[ed] the Complainant’s employee”. The Panelist stated that “the Complainant has submitted evidence tending to show that the disputed domain name was utilized in connection with a phishing attempt” [emphasis added]. The curious use of the word “tending” would seem to suggest something less than clear and unequivocal evidence, but let’s give that the benefit of the doubt.
Phishing schemes conducted via email are certainly common and can very well constitute bad faith use of a domain name under the UDRP. It is unknown how the Complainant proved the alleged phishing scheme, but phishing using email requires active MX mail records associated with the Domain Name. As noted by DNW and others, there may not have actually been any active MX records associated with the Domain Name such that phishing using the Domain Name was impossible. Crucially and as also noted by DNW, the headers of emails allegedly emanating from the Domain Name would need to be examined to ascertain that the emails were actually coming from the Domain Name. As many readers may be aware, spoofing a domain name in an email can be done without the sender owning the domain name. The fraudster merely makes it look like the email is coming from a trusted domain name, such as your bank or employer, but the headers would reveal otherwise. So, this may have been a case of “spoofing” the Respondent’s domain name rather than “phishing”. If that is in fact the case, the entire allegation of phishing using the Domain Name is groundless.
A Complainant Must Always Make its Case
This could have all been cleared up by the Respondent had the Respondent responded. We know that the Panelist went to additional lengths to try to achieve actual notice and we could perhaps assume that the Respondent conscientiously chose not to respond, even though allegations of fraud were being made against him. But it is as likely, if not considerably more so, that the Respondent in this case did not actually receive notice and was unaware of the proceeding. Regardless, a Respondent’s guilt is not to be assumed even if he defaults in responding. A Complainant must always make its case. ICA Director, Nat Cohen and I extensively reviewed the standard applicable in ‘no response’ cases in a 2019 CircleID article. We know that many Panelists are aware of the onus in such cases since as noted in the article, over 1,500 UDRP cases have been dismissed even when no Response has been filed, and in some cases the Panel even found Reverse Domain Name Hijacking.
But even assuming that this was genuinely a case of phishing using the Respondent’s Domain Name rather than merely spoofing it, is that sufficient to find bad faith registration and bad faith use? Clearly this would be bad faith use but does current bad faith use evidence bad faith registration 27 years prior? In theory, it can. For example, even if MyCitiBankLogin[.com] wasn’t used for phishing for 27 years since it was first registered, it is virtually inconceivable that it was not registered in bad faith. The same however, cannot be said for an innocuous dictionary word Domain Name like Fox[.org].
A prudent Panelist would be highly suspicious of the allegation that such an innocuous Domain Name registered by a university instructor was registered 27 years ago merely to one day use for a phishing scheme, thereby raising the specter that the presented evidence is not what it appears or perhaps that the Domain Name’s mail servers was hijacked by an unknown third party. In the latter case, the Respondent could not be said to have registered the Domain Name in bad faith, even if he is somehow held responsible for a criminal penetrating his email account. Ultimately what is missing here and in the decision is any credible explanation of why the Domain Name was ostensibly only recently put to bad faith use and the absence of any such explanation inextricably leads to the question of the veracity of the allegation of bad faith registration.
The Panelist included in the decision that the Registrar communicated that the registrant for fox.org is the Fox Research Institute. While this fact suggests the Respondent could have had a legitimate reason for and interest in the domain name, independent of any use made by the Complainant, the Panelist did not address this fact in his analysis. The import of this fact however, is difficult for the Panel to ascertain absent an affirmative defense and explanation provided by the Respondent. Nevertheless, in the same manner that a Panel must not jump to a conclusion regarding this fact in the absence of an explanation from the Respondent, a Panel must also not jump to a conclusion that the absence of an explanation supports the Complainant’s allegations in all cases.
As more and more years go by since the establishment of the UDRP, it will not be uncommon for disputed domain names to have been registered literally decades earlier. In such circumstances, it may not be uncommon for registrants to have not updated their Whois details, and that is their fault. Nevertheless, the UDRP is not a default-based procedure and therefore Panelists must always demand a strong and credible basis for a transfer of a disputed domain name, leaving cases in which uncertainties exist for another forum.
Faced with such a situation, a Panel should apply the same degree of skepticism to both parties so that the same way a Respondent is required to justify its actions in a credible manner, a Complainant must too. If that had been done in this case, the Panel may have concluded that although there is apparent evidence of bad faith use, without more, there was simply no basis to determine that the Domain Name was registered to target the Complainant 27 years earlier. That does not leave the Complainant without recourse. It just means that the UDRP was not able to provide the requested recourse in the circumstances.
Tarnishment of Reputation Cannot be an Objection to a Criticism Site
Roman Polanski v. Matan Uziel, WIPO Case No. D2022-4360
Panelists: Mr. Warwick A. Rothnie (Presiding), Ms. Marie-Emmanuelle Haas, and Mr. Brian J. Winterfeldt
Brief Facts: The Complainant is an award-winning film director, actor, and writer. His career spans at least six decades since at least 1962. In 1977, the Complainant was arrested in the United States and charged with unlawful sex with a minor. The Complainant pleaded guilty, but fled before being sentenced and remains wanted by the United States criminal justice system. Since that time a number of women have come forward alleging that the Complainant sexually abused them. The disputed Domain Name was registered on October 31, 2017. Since at least November 3, 2017, it has resolved to a website. The website is headed “Silence is the Enemy”. The website claims inter alia, that it is ‘dedicated to all the other victims of Roman Polanski, who were afraid to tell what happened years ago — but now, can tell their story knowing that it will not go unheard and will be shared to give others courage around the globe to put Roman Polanski in jail where he belongs’.
The Complainant points out that the website to which the disputed Domain Name resolves accuses the Complainant of being a sexual predator and contends the website relays “anonymous testimonies from unidentified persons” except for one person whom the Complainant contends subsequently dissociated herself from the practice. The Complainant denies these allegations and says he has never been prosecuted, let alone convicted, in relation to any of these allegations.
Held: The Final Report of the WIPO Internet Domain Name Process, April 30, 1999 explained the rationale that led to paragraph 4(c)(iii) of the Policy: “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would likewise not be considered to be abusive.” At the purely factual level, it is very difficult to characterise the website to which the disputed Domain Name resolves as tarnishing the Complainant’s reputation. More importantly, it cannot be an objection to a criticism or grievance or whistleblower site merely that the contents are alleged to tarnish the reputation of the trademark owner. The point of such a site, if genuinely for that purpose, is to expose some (claimed) shortcoming of or wrongdoing by or grievance against the trademark owner. The objective being to expose the wrong-ness of the repute associated with the trademark. It is not the Panel’s role, nor within its capacity, to rule on whether the criticism is right or wrong; the question before the Panel is whether the disputed Domain Name is being genuinely used for a fair use purpose.
The Complainant contends that the commercial nature of the Respondent’s activities associated with the disputed Domain Name disqualify him from reliance on the defence. The Panel accepts that an attempt to cash in on the reputation associated with a trademark can disqualify reliance on fair use. That can be seen for example in the Nicole Kidman case invoked by the Complainant, wherein there was no connection between the services being advertised and Ms. Kidman. As already noted, the present case is very different: on its face, the website appears to be seeking information about the Complainant with the intent of exposing claims of his alleged wrongdoing. The Respondent says these funds were sought to fund the making of his films and maintenance of his websites. On balance, the Panel considers these practices do not disentitle the Respondent from claiming fair use in this case; in short, they do not appear to be a pretext for cybersquatting.
It is a source of considerable concern that the Complainant brought this proceeding notwithstanding the failure of his defamation proceedings against the Respondent and, more so, after several years’ delay. Accordingly, the Panel finds the Complainant has not established the second requirement under the Policy. The Complaint therefore must fail.
Complainants’ Counsel: Delphine Meillet, France
Respondents’ Counsel: The GigaLaw Firm, Douglas M. Isenberg, USA
Case Comment by ICA General Counsel, Zak Muscovitch:
In an eminently sound and well-reasoned decision, the Panel provided a clear basis for ruling in favor of the Respondent. Echoing the sentiments of Panelist Richard Hill in the recent Graham C. Fisher case which cited an earlier case, the Panel noted that the Final Report of the WIPO Internet Domain Name Process, (April 30, 1999 at Paragraph 172) explained the rationale that led to Paragraph 4(c)(iii) of the Policy: “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would likewise not be considered to be abusive.” This is truly the crux of the matter. As I noted in Digest Volume 3.3, the limited scope of the UDRP requires a restrained approach when it comes to free speech matters as they are not in the nature of the ‘cybersquatting’ matters that the Policy is intended to address.
Notably, the Panel in this case assessed whether the website was ‘genuinely an exercise in free speech and fair use’, or whether it constituted a mere “pretext” for cybersquatting. I think that is ultimately the scope of a Panel’s required inquiry in such cases. Where a genuine exercise of free speech exists rather than free speech as a ‘pretext’, a Panel may dismiss a case because the disputed domain name is thereby not considered “abusive” as understood by the Policy and as a result, it beyond the UDRP’s remit regardless of the quality or accuracy of the criticism – something which is not for the Panel to assess. As the Panel astutely noted in this case; “It is not the Panel’s role, nor within its capacity, to rule on whether the criticism is right or wrong; the question before the Panel is whether the disputed domain name is being genuinely used for a fair use purpose”.
I particularly appreciate the way in which the Panel dealt with the Complainant’s argument regarding “tarnishment” of the Roman Polanski brand. Aside from pointing out that the brand had already undergone considerable tarnishment as a result of accusations made over many years before this website existed, the Panel stated:
It cannot be an objection to a criticism or grievance or whistleblower site merely that the contents are alleged to tarnish the reputation of the trademark owner. The point of such a site, if genuinely for that purpose, is to expose some (claimed) shortcoming of or wrongdoing by or grievance against the trademark owner. The objective being to expose the wrong-ness of the repute associated with the trademark.
One question remained for me after reading this decision. Did the Panel employ one of the established tests in free speech cases? For example, did it employ the so-called “impersonation test” suggested in the Dover Downs case which is also reflected in the WIPO Overview 3.0, namely that ‘the right to criticize does not necessarily extend to registering an identical of confusingly similar mark’? Or did it espouse ‘the second view’ being ‘that there is a legitimate interest in using a domain name comprised of a trademark for use with a criticism website’ as in the Graham Fisher case? Or did it espouse the “multi-factored” approach adopted in Everytown?
It does not appear however, that the Panel adopted a singular approach in this case. Rather, the Panel in this case seems to have straddled all three approaches to come to a just decision. The Panel recognized the potential for initial interest confusion based upon the Domain Name itself, and as suggested in Dover Downs, determined that the addition of “I met” in the Domain Name indicates that any associated website “is connected with someone other than the Complainant”. But on the other hand, the Panel also suggested that like in the Graham Fisher case, a domain name genuinely used for criticism is not considered “abusive” under the Policy and in any event the website content would dispel any potential confusion as to source. Ultimately, the Panel’s reasoning and approach in this case, may have generally followed the approach in Everytown which held that although an “impersonation test” is an important factor to consider, there are other factors that must be taken into account as well. We will keep an eye on this interesting issue as the jurisprudence evolves.
Complainant ‘Either Knowingly or At Least Negligently, Misrepresented the Factual Matrix’
Lolo, LLC v. Domain Admin, Xedoc Holding SA, WIPO Case No. D2022-3621
Panelists: Ms. Jane Seager (Presiding), Mr. John Swinson, and Mr. Georges Nahitchevansky
Brief Facts: The US-based Complainant provides relationship marketing services by allowing professionals to give gift cards to their clients via email. For the purpose, the Complainant owns US trademarks: LOLO (January 28, 2014) and LOLO GIFTS (May 29, 2018). The Respondent, a domain name investor, acquired the disputed Domain Name together with another four-letter domain name from a third party (“Registrant B”) in February 2019 and is offered for sale. It appears that Registrant B acquired the disputed Domain Name from a prior registrant (“Registrant A”) earlier in February 2019. The Respondent contends that the term “Lolo” is a dictionary term with meanings in Spanish and Tagalog and the composition consists of consonant-vowel-consonant-vowel (CVCV), and there are only 120 possible “CVCV.com” domain names, a number of which are already held by the Respondent, and that they are inherently valuable as rare, four-letter domain names.
The historic screen captures submitted by the Complainant indicate that between 2013 and early 2019, the disputed Domain Name resolved to a parking page provided by GoDaddy. The Complainant’s attempted to purchase the disputed Domain Name from Registrant A in January 2019, offering USD $1,000, which was rejected. In 2020, the Complainant had further communications with Registrant A, offering to purchase the disputed Domain Name for USD $5,000, which did not lead to any form of agreement. The Complainant refers to its prior correspondence with Registrant A, dating from January 2019, and infers from those communications with Registrant A that the Respondent knew or should have known of the Complainant’s interest in purchasing the disputed Domain Name, as well as the Complainant’s rights in the LOLO trademark, at the time that the Respondent acquired the disputed Domain Name.
Held: The Respondent has come forward with evidence that its business activities include engaging in the sale and purchase of domain names. The Respondent’s portfolio of domain names comprise dictionary terms, as well as three-and four-letter domain names, a number of which follow the same “CVCV .com” format as the disputed Domain Name. The Panel notes that while the Complainant asserts that its mark is well known, the Complainant provided almost no evidence of the degree of actual public recognition of its mark. Moreover, trademark searches for “lolo” via the USPTO website or WIPO’s Global Brand Database returns a substantial number of results from a wide range of jurisdictions.
The Panel further finds that there is insufficient evidence to conclude that Registrant A, to whom the Complainant’s purchase inquiries were directed in 2019, and later in 2020, was at any time acting as an agent for the Respondent, or that the Respondent had knowledge of the Complainant’s attempts to purchase the disputed Domain Name from Registrant A. The Panel further finds that the Respondent’s use of the disputed Domain Name to redirect to it’s another website, where it is listed for sale, does not give rise to any inference that the Respondent has sought to target the Complainant through the disputed Domain Name.
In the circumstances, the Panel considers there to be insufficient evidence to conclude that the Respondent registered the disputed Domain Name with direct knowledge of the Complainant or intent to target the Complainant’s LOLO trademark. Rather, the Panel finds the Respondent’s explanation that it acquired the disputed Domain Name as a bona fide purchaser of a four-letter, “CVCV .com”-format domain name as an investment for its inherent resale value to be credible.
RDNH: As noted above, the Respondent asserts that the present Complaint was brought subsequent to repeated failed attempts to purchase the disputed Domain Name, that during the course of these proceedings the Respondent repeatedly put the Complainant on notice that its allegations were incorrect and legally insufficient, that the Complainant ignored the evidence put forward by the Respondent and has failed to investigate, and that the Complainant should have realized that its claim could not succeed. Moreover, prior to submission of the Complaint, the Complainant obtained a compiled WhoIs report setting out the historic ownership of the disputed Domain Name, in which a change in registrant and registrar was documented that coincided with a change in use of the disputed Domain Name from which the Complainant could reasonably infer a break in the chain of registration.
While weakness in a complainant’s case does not alone provide a basis for a finding of RDNH, the Panel finds that the Complainant’s case was brought in a manner that either knowingly or at least negligently misrepresented the factual matrix surrounding the ownership of the disputed Domain Name in the Complainant’s attempt to prove bad faith, which in this Panel’s view amounts to an abuse of the administrative process. In light of the above, the Panel finds that the Complaint was brought in bad faith, and that the Complainant has engaged in RDNH.
Complaint Denied (RDNH)
Complainants’ Counsel: Kay Griffin, PLLC, United States
Respondents’ Counsel: Law.es, Spain
Pending Trademark Application Does Not Count Absent Evidence of Common Law Trademark Rights
Impossible Kicks Holding Company, Inc. v. DMT Namecheap, NAF Claim Number: FA2212002025781
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant owns several retail stores in the United States and an online store, where it sells designer shoes, clothing, and other apparel. In 2020, it started using the IMPOSSIBLE KICKS name in connection with these stores. The Complainant applied to register IMPOSSIBLE KICKS as a trademark with the USPTO, which is pending registration. The Complainant also asserts common law rights in IMPOSSIBLE KICKS based upon its use in Complainant’s literature, advertising and in the domain name <impossiblekicks .com> that the Complainant uses for its primary website. The disputed Domain Name was registered in November 2022.
The disputed Domain Name is being used for a website entitled IMPOSSIBLE KICK, with the name displayed in virtually the same stylized form as that used by the Complainant on its own website. The website offers products similar to those sold by the Complainant, but at “implausibly” discounted prices. The Complainant alleges that the Respondent is either selling knockoff products or engaging in other questionable business practices. The Complainant notes that the physical address that appears on the Respondent’s website is actually the address of a different entity that has no connection to the Respondent, and asserts that the same address also appears on other fraudulent websites.
Held: The Complainant does not own a trademark registration; its application to register IMPOSSIBLE KICKS is currently pending before the USTPO. A trademark registration is not necessary to establish rights under the Policy, provided the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. A complainant relying on rights arising solely at common law has a fairly steep evidentiary burden under the Policy. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.
The Complainant has failed to support its claim of common law trademark rights with evidence of acquired distinctiveness. The Complaint does not indicate the volume of sales under the claimed mark, the nature or extent of advertising, or the degree of public recognition; it merely refers without elaboration to Complainant’s “successful marketing,” “literature and advertising,” and “well-known branding.” The fact that the Respondent appears to be targeting and attempting to create confusion with the Complainant is relevant but not sufficient to demonstrate the trademark rights required under the Policy. The Panel, therefore, finds that the Complainant has not demonstrated the requisite rights in a relevant trademark.
Complainants’ Counsel: Russell Anderson of Pullman & Comley, LLC, United States
Respondents’ Counsel: No Response
Is Protection Available to State Registered Marks?
All Day $49 Montana Registered Agent, LLC v. Nathan Resnick, 1 DollarMontana, Street Legal Registration and Wasatch Real Estate LLC, WIPO Case No. D2022-4302
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant, operating since 2008 in Kalispell, Montana, United States, offers services online at <49dollarmontanaregisteredagent .com>. The Complainant assists non-residents in establishing Montana corporations or limited liability companies, or registering as a foreign business in Montana, etc. and advertises a registered agent service charge of USD $49 per year, as reflected in the name of the company. The Complainant does not have a national registered trademark, but owns similar registered marks in the State of Montana, since September 2022, claiming first use in January 2015. The disputed Domain Name was registered on January 22, 2022, and is used for a website advertising the services of “$1 Montana” acting as a registered agent for residents of other states to form Montana corporations or limited liability companies and similar services.
The Respondent competes with the Complainant, using a similar business model and its website openly engages in comparative advertising, referring to the Complainant by name. The Respondent contends that the Complaint is grounded on state-registered service marks, which require a showing of acquired distinctiveness, and largely argued on the basis of the Complainant’s domain name and website content rather than trademark rights. The Respondent argues that the Complaint lacks evidence of acquired distinctiveness (or “secondary meaning”) for these state-registered marks, which are also comprised of descriptive terms (such as a number, “dollar” or the dollar sign, and the state name “Montana”) and in any event are not confusingly similar to the disputed Domain Name.
Held: The first element of a UDRP complaint “functions primarily as a standing requirement” and the foundational issue is whether the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Where a complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement for standing. However, here the Complainant’s service marks are state registrations in the State of Montana, and such registrations are affected without the same level of examination as national or regional trademark registrations. Mindful of this difference, the Panel looks to the record for supporting evidence that the Complainant’s state-registered service marks have acquired distinctiveness, beyond simply registering online with a state, paying a fee, and claiming a first-use date.
The two marks first listed include a symbol representing the United States dollar and the name of the state, “Montana”, so they are the most similar to the disputed Domain Name, even though they are not a close match. But these marks do not appear on the Complainant’s website at the time of this Decision, and the Complaint provides no examples of their use, past or present. Historical evidence of use is also lacking for the other nine marks listed in the Complaint, which bear little resemblance to the disputed Domain Name other than the fact that seven of them include the name of the state, “Montana”, which is a descriptive geographic term.
The Panel considers that such unexamined, state-registered marks of a descriptive nature are not entitled to deference with regard to standing for purposes of the first element of the Complaint but require evidence of acquired distinctiveness, which is lacking on this record. In the context of the above, the Panel does not find persuasive evidence in the current record of trademark or service mark rights sufficient to establish standing for a UDRP complaint. The Panel concludes, then, that the Complainant fails on the first element of the Complaint.
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: MC Law, PLLC, United States