Dissenting Panelist Would Have Decided Case Wildly Differently – ICA UDRP Digest – Vol 2.26

Kamila Sekiewicz UDRP Case Summaries

Welcome back after a short break! Today’s digest complies some of the most intriguing UDRP cases of the past weeks. You’ll also find commentaries from Zak Muscovitch, ICA General Counsel, for most of them, notably in the case of <reza. com>.

Dissenting Panelist Would Have Decided Case Wildly Differently

Reza IP Holdings LLC v. Taha Alireza, Velvet, WIPO Case No. D2022-0945

<reza .com>

Panelists: Mr. Luca Barbero, Ms. Emmanuelle Ragot and Mr. Richard G. Lyon

Brief Facts: The US Complainant is in the jewellery industry. Its CEO, Olivier Reza, is the son of a Paris-based fine jewellery designer Alexandre Reza, who founded his eponymous jewellery house in Paris in 1981. The Complainant is the owner of trademark registrations for ALEXANDRE REZA (since 1983) and REZA (EU word mark registered on March 9, 2017). The Respondent acquired the disputed Domain Name in February, 2006 in his company name, Velvet Ltd. and it is pointed to a website where it is indicated that the disputed Domain Name is for sale. The Respondent belongs to a prominent Saudi family which has several companies that use the family name Reza, such as Reza Investment Co. Ltd. operating <RezaGroup .com>. The Respondent states that the Complainant presented no evidence of rights in a trademark REZA prior to its European Union trademark registration, filed in 2016, which is long after the Respondent, registered the Domain Name in 2006.

Upon receipt of the Complaint, the Respondent, through counsel, wrote to the Complainant’s counsel inter alia advising of the Respondent’s rights in the Domain Name and informing of a pending sale of the disputed Domain Name to Reza Investment Company and requested withdrawal of the Complaint. The Complainant’s counsel refused to withdraw the Complaint.  The Respondent stated that “Reza” is a popular name and surname in Saudi Arabia and that his surname, Alireza, is a combination of the names “Ali” and “Reza”, written as the two words “Ali” and “Reza” in native Arabic. The Complainant states that it tried to resolve the matter amicably offering to buy the disputed domain name for USD $15,000, an offer that was declined by the Respondent, who requested USD $250,000 to hand over the disputed domain name, which clearly shows the Respondent’s intent to use the disputed domain name for commercial gain.

Held (Majority Opinion): Based on the documents submitted by the Respondent to substantiate its allegations, the majority of the Panel finds that the Respondent has a legitimate interest in the disputed Domain Name in view of the correspondence of the same with his surname. The Complainant did not demonstrate that the Respondent, by registering and using the disputed Domain Name, targeted or intended to target the Complainant and its trademark REZA. Moreover, it is evident that the term REZA encompassed in the disputed Domain Name is a very common surname, especially in the Arabic and Persian countries, as well as a trademark also used by third parties – including the Reza Investment Company – to identify products and services different from the ones of the Complainant. In addition to the above, based on the record, there is no evidence that the Respondent might have directly offered the disputed Domain Name for sale to the Complainant. A Google search for “reza” yields about 1,770,000 results, and there’s no reference to the Complainant on at least the first ten pages of search results. Rather the listings include links to the last shah of Iran (which is now the Islamic Republic of Iran), restaurants, footwear, and many performers, lawyers, physicians, professors, and other individuals whose first or last name is Reza. This reinforces the Respondent’s evidence and the Wikipedia definition of the term as a common name. In view of the foregoing, the majority of the Panel finds that the Complainant has failed to demonstrate that the Respondent registered or used the disputed Domain Name in bad faith.

RDNH: The Complainant’s actions constitute Reverse Domain Name Hijacking as the Complainant, which is represented by counsel, should have appreciated the weakness of its case and the fact that the name “Reza” encompassed in the disputed Domain Name cannot be exclusively referable to the Complainant. Moreover, the Complainant ignores several settled UDRP precedents, among them the requirement of evidence to support critical allegations, not recognizing that warehousing domain names or even the response to an inquiry from a trademark owner to purchase the disputed Domain Name is not ordinarily improper. The circumstances of the case show that this may be a speculative “plan B case” launched by the Complainant after the failure to purchase the disputed Domain Name. The Panel majority finds it hard to believe that an individual himself named Reza would not be aware of the ubiquity of that name. The Complainant did not even address the possibility that the Respondent selected the disputed Domain Name because of his surname, whilst such circumstance could be indeed inferred from the registrant’s name shown in the public WhoIs records and indeed in the caption and text of the Complaint. Ignoring settled Policy precedent alone justifies a finding of abuse.

Dissenting Opinion (Ms. Emmanuelle Ragot): The Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed Domain Name in view of the correspondence of the disputed Domain Name with the Complainant’s well-known trademark REZA and the relevant amount of money requested by the Respondent to transfer the disputed Domain Name, which suggests a speculative intent. The Respondent registered the disputed Domain Name in bad faith because the Complainant acquired reputation in its trademark, also known and used as REZA to distinguish jewelries products internationally, for years long before 2016 in the jewelry sector. This Panelist also finds that the nature of the disputed Domain Name enhances the false impression that the disputed Domain Name is somehow officially related to the Complainant, as it may be perceived as used in connection with one of the Complainant’s official websites for sale, causing interrogation on the economic situation of the Complainant. Hence, this Panelist denies the finding of Reverse Domain Name Hijacking since she finds that the Complainant was successful in proving the three substantive requirements prescribed by the Policy.

 

Complaint Denied (RDNH), with dissenting opinion

Complainants’ Counsel: Dennemeyer & Associates S.A., Luxembourg

Respondents’ Counsel: John Berryhill, Ph.D., Esq., United States

 

Case Comment by ICA General Counsel, Zak Muscovitch:

The majority of the Panel reached the correct outcome in finding that the Respondent had a legitimate interest and that the Complainant had engaged in Reverse Domain Name Hijacking. Yet one of the Panelists dissented and would have reached a starkly different outcome, namely that the Respondent registered the Domain Name in bad faith because the Complainant had already adopted Reza as a brand and had acquired a reputation in it.

The dissenting Panelist stated that the “Respondent must have had knowledge and could not ignore the Complainant’s rights when it registered the disputed domain name”. The dissenting Panelist stated that by merely registering the Domain Name – which happened to correspond to a multitude of other persons and entities for the widest variety of goods and services – the Respondent “created a likelihood of confusion” as “it is likely that the disputed domain name could mislead Internet users into thinking that it is in some way associated with the Complainant”, despite no evidence of misuse or confusion and while ignoring the common nature of the word, “Reza”. Essentially, the Panelist was apparently of the view that the Complainant was entitled to the Domain Name simply because it was the first to adopt it as a brand and that it had essentially, exclusive rights in it despite vast evidence to the contrary.

Unfortunately, this view betrays an apparent lack of understanding of the UDRP and of trademark rights generally. Just because a jewelry maker has adopted a particular brand and acquired some limited reputation in it, does not mean that the Respondent could not have had its own reasons for registering the Domain Name and have every right to. Indeed, the evidence shows that “Reza” is a common name used by a multitude of people and businesses all over the world, including the Respondent’s own family’s business. The Panelist essentially conferred an unwarranted exclusivity for this word upon the Complainant, such that in her view, the Respondent should have stayed away from this Domain Name even when it corresponds to the name of his own family business and is an extraordinarily common name.

It is a first principle of trademark law that just because one entity may have trademark rights in connection with a particular class of goods or services in a particular jurisdiction, another entity isn’t prohibited from adopting the very same mark for something unrelated, particularly in another jurisdiction – unless of course, the mark is “famous” (and there was no evidence whatsoever of fame in this case). Moreover, it is well established that the UDRP requires more than merely having a pre-existing trademark and some reputation; the UDRP requires actual targeting of a Complainant and recognizes that there may be many people who can all co-exist under a similar domain name, particularly when it corresponds to a common word or name. The UDRP therefore requires that a Complainant prove that the reason for the registration was the Complainant’s brand – not merely that the Complainant had adopted the brand first.

Compounding matters, the Panelist did not recognize that this was a clear case of RDNH as was found by the majority. There is room for reasonable disagreement and different views amongst Panelists. Indeed, dissenting views are welcomed. But it is one thing to espouse a differing perspective while still being faithful to established UDRP principles and another one entirely, to depart from those established principles so substantially. It is a serious concern when the outcome of a UDRP case can change so dramatically depending on who is appointed to a particular Panel. The reliability and predictability of the UDRP has been greatly increased by Panelist fidelity to established UDRP principles approaches to interpreting the UDRP. However when a Panelist disregards established UDRP principles the reliability and predictability of the UDRP suffers. It cannot be ignored that had this Panelist heard the case alone, without the safeguard of two eminent and experienced Co-Panelists, there would have been an errant outcome and an unjust result. While Co-panelists should respect dissenting views, they may also speak up when a Panelist errantly departs from well-established interpretations and applications of the UDRP. And Providers must take care to supervise their roster so as not to permit Panelists to carry on despite demonstrating a lack of fidelity to well established principles of the UDRP.

 


Paycom Doesn’t Get Pay .com

Paycom Payroll, LLC v. Glorytime Trading Limited, NAF Claim Number: FA2204001993513

<pay .com>

Panelists: Ms. Dawn Osborne, Ms. Sandra J. Franklin and Ms. Nathalie Dreyfus

Brief Facts: The Complainant is a provider of technology solutions for human capital management and payroll goods and services. The Complainant owns rights in the PAYCOM mark through its registration with the USPTO, registered on February 15, 2000. The Respondent acquired the disputed Domain Name on November 17, 2020 and offers goods and services through it in connection with its activities as a software platform for facilitating financial transactions. The Complainant claims that the disputed Domain Name is virtually identical and confusingly similar to the Complainant’s mark because it incorporates the PAYCOM mark in its entirety and merely adds a period in the middle of the mark and uses the disputed Domain Name to offer competing goods and services. The Respondent argues that it is using the disputed Domain Name in the course of a bona fide offering of goods or services, whereby it offers a software platform for facilitating financial transactions.

Held: The Panel finds that the Respondent has rights in the disputed Domain Name because it is making a bona fide use of it. Moreover, the word “pay” is a generic word, which can be used by anyone, even to compete with the Complainant. However, the Respondent is not even using the disputed Domain Name to compete directly with the Complainant, while the services offered by the Respondent are different than those offered by the Complainant. There is also no similarity in trade dress or confusing wording. The Respondent provides supporting screenshots of the resolving webpage and services offered, as well as an affidavit by its CEO.

The Complainant makes conclusory allegations of bad faith but adduced no specific evidence that warrants a holding that the Respondent proceeded in bad faith at the time it registered the disputed Domain Name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith. Further, the Panel finds that the Respondent has rights and legitimate interests in the disputed Domain Name pursuant to the Policy. Therefore, the Respondent could not have registered or used the disputed Domain Name in bad faith pursuant to the Policy.

 

Complaint Denied

Complainants’ Counsel: Zachary A.P Oubre of McAfee & Taft A Professional Corporation, Oklahoma, USA

Respondents’ Counsel: Christian Morgan of Baker & McKenzie LLP, Illinois, USA

 

Case Comment by ICA General Counsel, Zak Muscovitch:

It is noteworthy that the Panel properly recognized that “pay” is a generic word and that the Respondent had every right to use. Clearly, the Complainant had no genuine claim of cybersquatting to make yet brought this UDRP anyhow. Missing from the decision however, is any consideration of RDNH. In a case such as this, it would appear that the Panel ought to have at least expressly considered RDNH even if it ultimately had reason to decline to make such a finding.  Otherwise, the Panel is indirectly encouraging meritless cases to continue to be brought as Complainant’s will rightly conclude that UDRP Panelists are not likely to even consider RDNH even in cases brought in bad faith.

 


 

Meritless Complaint Does not Result in RDNH

Samet Kalıp Ve Madeni Eşya Sanayi Ve Ticaret A.Ş v. Samet & Company, Inc., WIPO Case No. D2022-1449

<samet .com>

Panelist: Mr. Warwick A. Rothnie

Brief Facts: The Turkish Complainant, established in 1973, is a provider of furniture accessories. It owns various patents and has 300 outlets in Türkiye, in addition, exports products to more than 80 countries including the United States. To facilitate these operations, the Complainant established Samet US, Inc. in Miami, Florida in the United States in May 2018. The Complainant holds a substantial portfolio of registered trademarks and pending applications around the world including Turkish Trademarks (since 1993) and International Registration registered on December 31, 2004, designating a number of countries and jurisdictions including the United States. The Complainant also applied for the United States registration (registered on December 17, 2019), claiming first use in commerce in the United States on September 30, 2013.

The Respondent was incorporated in the United States on December 26, 1995.  Its principal is Dr. Michael G Samet, who was born in 1943. The Respondent registered the disputed Domain Name on March 22, 1996. The disputed Domain Name currently resolves to a parking page provided by the hosting service which displays a number of “related searches” such as “Sliding French Patio Doors”, “Sliding Patio Door Prices”, “Front Door Design Ideas” and the like. The Respondent argues the disputed Domain Name is in use to provide email addresses. Between June 2021 and November 2021, representatives of the Complainant made unsolicited approaches by email to the Respondent inquiring if the disputed Domain Name was for sale but did not receive any response.

Held: On the record in this proceeding, the Respondent has clearly established that it is commonly known by the disputed Domain Name in terms of the Policy given “Samet” is Dr. Samet’s surname and the incorporated companies, including the Respondent, using that name. In addition, it is not inherently implausible as, so far as the record in this proceeding shows, the Complainant does not appear to have begun operating in the United States until well after Dr. Samet incorporated the Respondent and, it must be borne in mind, the Complainant operates in a discrete and specialised field. The Complainant claims as the leading supplier, however, claim is not supported by evidence of the kind that would be directed to establishing reputation nor does the Complainant’s evidence indicates when that reputation had become so extensive it was likely to have come to Dr. Samet’s attention. Accordingly, the Panel finds the Complainant could not establish the second requirement under the Policy and, therefore, the Complaint must fail.

RDNH: In the present case, the disputed Domain Name does resolve to a website which is just a parking page with “related searches”. Clicking on them does (at least at the time of this decision) take one through to further search results and various businesses. These do appear to be the sort of links which are used to generate revenue. The Respondent contends this was done by the hosting provider without its knowledge and did not receive any benefit from the parking page. As the Respondent controls the disputed Domain Name, however, that would not be a defence in the absence of efforts by the Respondent to preclude such use or, at least, to prevent the display of results which take advantage of a complainant’s trademark. Were it not for the resolution of the disputed Domain Name to this sort of parking page, the Panel would have had no hesitation in finding Reverse Domain Name Hijacking.

Complainant Denied

 

Complainants’ Counsel: Koyuncuoğlu & Köksal Avukatlık Bürosu, Türkiye

Respondents’ Counsel: Manevitz Law Firm LLC, United States

 

Case Comment by ICA General Counsel, Zak Muscovitch: The Panelist in this case deserves recognition for at least expressly considering RDNH even though he ultimately (though hesitantly) declined to make such a finding. One may disagree with the decision to not find RDNH but unlike in the Pay .com case above, the Panel here at least gave it the serious and express consideration that it clearly merited.


 

Is the Descriptive Use of the Protected Mark in a Different Jurisdiction Allowed?

CollegeNet, Inc v. Qompas B.V., WIPO Case No. DNL2022-0017

<CollegeNet .nl>

Panelist: Mr. Wolter Wefers Bettink

Brief Facts: The US Complainant is providing web-based on-demand technologies to colleges, universities, and non-profit organisations. The Complainant owns rights in COLLEGENET trademark in the US since 1997 and in the EU, it owns both word and device mark for COLLEGENET, registered on September 26, 2005 and August 30, 2011, respectively. The Respondent acquired the Domain Name in 2018 and redirects to a website under the Respondent’s domain name <tkmst .nl> which provides a search engine for all higher educational institutions in the Netherlands. The Complainant submits that the Respondent is using the Domain Name to “trick, deceive, and confuse” Internet users seeking the Complainant’s goods and services. The Respondent claims the services offered and the target audience of the relevant websites are different. On June 5, 2019, the Complainant sent a cease-and-desist letter to the Respondent, to which the Respondent challenged the infringement allegation and refused to meet the Complainant’s demands. After further correspondence, the Respondent’s attorney in an email proposed transfer of the Domain Name against payment of EUR 20,000 and the transaction costs.

Held: In view of the differences in services, potential customers and geographical markets, the Panel finds that the parties are not competitors and that it is unlikely that colleges and universities based in the USA would access information on the Complainant or its goods and services under a domain name in the ccTLD “.nl”, and that if they nevertheless would, this would not cause harm to the Complainant. On the basis of the above mentioned circumstances, the Panel reaches the conclusion that the Complainant has not or has insufficiently substantiated its submission that the Respondent is trading off the goodwill of the Complainant or the Trade Marks.  Further, the Respondent’s use of the Domain Name as a redirector may raise certain questions; the Panel finds such use permissible in the mentioned specific circumstances of this case, including the Domain Name’s composition and the history of its registration and use. The Panel views no basis in the record before it to conclude that the Respondent’s offering of goods and services under the disputed Domain Name is not bona-fide. On the basis of all of the above, the Panel concludes that the Respondent has rights to or a legitimate interest in the disputed Domain Name.

Complaint Denied

 

Complainants’ Counsel: Linden & De Roeck sprl, Belgium

Respondents’ Counsel: Wille Donker advocaten, Netherlands

 


 

Another Unjust Transfer to FICO?

Fair Isaac Corporation v. Jessica Ruiz / FICOSAC, NAF Claim Number: FA2205001998211

<ficosac .com>

Panelist: Ms. Sandra J. Franklin

Brief Facts: The Complainant, a leading applied analytics company, holds registration for the FICO trademark with the USPTO dated August 31 1999. The Respondent registered the disputed Domain Name on February 4, 2015, and hosts an active website. The WHOIS information for the disputed Domain Name lists the registrant as “Jessica Ruiz / FICOSAC.” The Complainant contends that the Respondent lacks rights and legitimate interests in the disputed Domain Name since the Respondent is not commonly known by the disputed Domain Name and the Complainant has not authorized or licensed the Respondent any rights in the FICO mark. The Complainant also argues that the Respondent fails to use the disputed Domain Name for a bona fide offering of goods or services or a legitimate non-commercial or fair use, as the Domain Name resolves to a website offering competing services.

Held: The Panel finds that the Respondent is not commonly known by the disputed Domain Name as there is no evidence in the record to support Respondent’s listing of “FICOSAC” in the contact information. Moreover, the Complainant provides evidence that the disputed Domain Name resolves to a webpage advertising competing services. Therefore, the Panel finds that the Respondent fails to use the disputed Domain Name for a bona fide offering of goods or services or a legitimate non-commercial or fair use, and thus has no rights under the Policy. Further, using a disputed Domain Name to redirect consumers to competing goods or services evinces bad faith disruption of a complainant’s business under the Policy. The Panel agrees with the Complainant due to its extensive trademark registrations, the Respondent must have had knowledge of the Complainant’s rights in the FICO mark when it registered the disputed Domain Name and finds bad faith under the Policy.

 

Transfer

Complainants’ Counsel: Internally Represented

Respondents’ Counsel: No Response

 

Case Comment by ICA General Counsel, Zak Muscovitch: Recently in Volume 2.24 of our Digest, we noted that Fair Isaac Corporation appears to have obtained the transfer of a domain name which it should not have been entitled to, in a default case. It appears to have happened again here. From a cursory review of the website associated with the Disputed Domain Name, it is apparent that the Domain Name is being used in a bona fide and non-competing fashion by an apparently legitimate business in Peru, who even counts a law firm as one of its clients. Unfortunately the Respondent did not respond for unknown reasons, but that is not reason enough for the Panelist in this case to have apparently not undertaken a cursory review of the website which should have resulted in the Panelist dismissing the case. It is very concerning that this has apparently occurred twice now. Panelists, even in default cases, should undertake a critical review of the evidence and of course, review the associated website in order to determine whether the Complainant’s allegations pass basic muster. If the Panelist had done so she would have dismissed the Complaint or at least ought to have.

 


Nominative Fair Use Must Be Fair 

Shopify Inc. v. Don Shine, CIIDRC Case No. 17459-UDRP

<ExpertShopify .com>

Panelist: Mr. Zak Muscovitch

Brief Facts: The Complainant Shopify Inc. is a leading cloud-based e-commerce platform for the last more than 15 years. The Complainant is the registrant of SHOPIFY trademarks, inter alia, a CIPO trademark (registered on January 18, 2011) and a USPTO trademark (registered on August 31, 2010). The Complainant offers a program called “Shopify Experts” through a subdomain name, namely, <experts. shopify .com> and claims common law trademark rights for SHOPIFY EXPERTS since 2011. The Shopify Experts program provides certain terms and conditions that are applicable to participants in the program, such as inter alia, using the SHOPIFY trademark in a domain name.

The Respondent claims to be a “Shopify expert”, having worked with the Shopify platform since 2013 and provides legitimate development services through the associated website. The Complainant alleges that the Respondent uses the Domain Name to solicit Shopify merchants to assist them in setting up, configuring, and designing their online store using the Complainant’s SHOPIFY software platform, in competition with services provided by the Complainant and its affiliated website developers. The Respondent argues that his website does not provide a commerce platform in competition with the Complainant’s platform and therefore denies attracting consumers to the detriment of Shopify. The Respondent further argues that there are a number of links on his website to <shopify .com> and that he encourages people to sign up to the Shopify services.

Held: The Respondent claims that he registered and uses the Domain Name because it describes what he is and the services which he provides, namely he is a Shopify expert providing Shopify expertise. This is tantamount to a claim of nominative fair use, a doctrine which has been found by numerous Panels to be applicable to UDRP disputes. Panels have recognized that resellers, distributors, or service providers, as in this case, using a domain name containing the complainant’s trademark to provide sales or services related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Under the Oki Data test, the Respondent meets all tests except the third part, as he does not accurately and prominently disclose the registrant’s relationship with the trademark holder. The Respondent runs afoul of the third part of the test due to his express statement on his website; “Working with us, official Shopify partners…”, thereby apparently falsely claiming that he is in fact an official Shopify partner and thereby affiliated with and authorized by the Complainant.

The Respondent could have registered and used the Domain Name in good faith and could also have had rights and a legitimate interest in it, if he had not falsely represented that he was an “official partner” of the Complainant. After all, the term “Shopify experts” is descriptive and the Complainant itself uses it as such as aforesaid. The Complainant does not have exclusive rights to offer Shopify expertise and it is open to third parties to also offer such services under the most apt descriptive terms. But when seeking to rely upon such nominative fair use, a respondent must be scrupulously fair and forthright in its use of a Domain Name. It cannot be tolerated for a respondent to not only adopt a Domain Name corresponding to a complainant’s trademark, but to also misuse it and then claim safe harbour under the doctrine of nominative fair use.

 

Transfer

Complainants’ Counsel: Daniel Anthony of Smart & Biggar LLP

Respondents’ Counsel: Self-represented

Note by Digest Editor-in-Chief, Ankur Raheja:  The Panelist in this case was ICA General Counsel, Zak Muscovitch, a frequent contributor to this Digest.