Does a Dominant User Mean a Non-exclusive Domain Name is Off-limits? ICA UDRP Digest – Vol 2.25

Kamila SekiewiczUDRP Case Summaries

Welcome to this week’s newsletter summarizing the most intriguing cases of the past week. Read about:

Strong Dissenting Opinion by Panelist Neuman (victron .com)
Issaquah FC v Issaquah SC (issaquahfc .com)
Does Previous UDRP History Make Any Difference? (sobold .com)
Parties Collaborated for a Metaverse Art Project! (artmeta .io)
Complaint Claims Exclusivity to Descriptive Words (flexspace .nu)

Please note that the Digest’s Editor-in-Chief, Ankur Raheja, will be away next week, and we’ll be pausing the release of the newsletter. The Digest will be back the first week of July!

Strong Dissenting Opinion by Panelist Neuman

Victron Energy B.V. v. Privacy Administrator, Anonymize Inc. / SARVIX, INC., WIPO Case No. D2022-1186

<victron .com>

Panelists: Mr. Assen Alexiev (Presiding), Mr. Warwick A. Rothnie and Mr. Jeffrey Neuman (Dissenting)

Brief Facts: The Complainant, founded in 1975, designs and produces inverters, chargers, converters, batteries, solar panels and other energy supply solutions, that are sold worldwide. The Complainant is the owner of trademark registrations for the sign “VICTRON” in various jurisdictions including EU trademark registered on November 9, 2012 and the US trademark registered on January 24, 2017. The disputed Domain Name was acquired by the Respondent at an auction in March 2020 for a price of USD $7,000. In 2020 and 2021, the disputed Domain Name resolved to a landing webpage that informed visitors that it was available for sale and invited them to request a price quote. The Complainant alleges that at the time of obtaining the disputed Domain Name, the Respondent knew of the existence of the Complainant’s VICTRON trademark, registered earlier in many jurisdictions, including the United States. It offered the disputed Domain Name for sale to the Complainant on September 7, 2021, for an amount in the “five figure range”, which is substantially more than the “out of pocket” costs for registering the disputed Domain Name.

The Respondent is in the business of investing in and selling or leasing domain names and submits that rather the Complainant approached it to purchase the disputed Domain Name, but was unhappy with the asking price, so filed this Complaint. The Respondent states that prior to acquisition, it researched Google, looked at the history of the disputed Domain Name and checked the Wayback Machine. The Respondent then conducted a trademark search through the USPTO and discovered many registered trademarks, so the Respondent knew that the word “Victron” had some value as it had been used by various registrants over the years. The Respondent continued to research the word and found that it was not a “made-up” word, but rather was a Latin word for “conqueror”. The Respondent maintains that the website reflects no mention or reference to the Complainant’s business and cannot cause any confusion with the Complainant’s business.

Held (Majority Opinion): The Panel made independent research by checking the word “Victron” in various online dictionaries, and it appears to be a made-up word, and its distinctiveness is also acknowledged by the Respondent. Therefore, the majority of the Panel finds no basis to conclude that the disputed Domain Name was purchased by the Respondent due to an alleged dictionary meaning. The Complainant submits a printout of a Google search for the keyword “Victron”, and the primary results refer to the Complainant. Since the Respondent conducted a USPTO trademark search in 2020, one of the results must have been the Complainant’s US trademark VICTRON registered on January 24, 2017. The Panel therefore unanimously accepts that when the Respondent acquired the disputed Domain Name at the public tender, he was aware as a result of its Google search, that the Complainant also had a United States trademark for VICTRON.

There is no dispute between the Parties that the Respondent started offering the disputed Domain Name for sale immediately after its acquisition. In the response to the Complainant’s query, the Respondent was “looking for offers in the 5 figure range for this domain name” which is in excess of the Respondent’s documented out-of-pocket costs directly related to the acquisition of the disputed Domain Name. In these circumstances, the Respondent cannot portray itself as innocently minding its own business until an unsolicited offer came in. All the above leads the majority of the Panel to the conclusion that it is more likely than not that the Respondent purchased the disputed Domain Name because of its potential to be resold at a profit mainly to the Complainant or to one of the other parties having rights over the name “Victron”, and that the Respondent targeted any of them with the acquisition of the disputed Domain Name and its subsequent putting up for sale. The fact that more than one entity has been targeted by the Respondent does not mean that such targeting would be legitimate.

Dissenting Opinion (Mr. Jeffrey Neuman): Although I agree with a number of the points raised by the majority, I do not believe that the Complainant met its burden of proof in establishing that the disputed Domain Name was registered and used in bad faith. The Complainant’s evidence of bad faith targeting is not consistent with the WIPO Overview 3.0 Section 3.2.1, which provides a number of circumstances panels have taken into account in assessing whether the respondent’s registration of a domain name is in bad faith. In this case, we have such a thin record of facts to support a finding of bad faith: the fact that the Complainant did not demonstrate that its mark is famous or well-known; there is no content on the website other than essentially a “for sale sign”; the registration was not linked in time to any product release of the Complainant, but rather was bought at an auction when the original registrant’s 26+ year registration expired; there is no evidence that the respondent has a pattern of targeting trademarks; or any other indicia generally suggesting that the Respondent had somehow targeted the Complainant.

The fact that the Respondent acknowledged that there are a few trademark owners, it was merely specifying the diligence it performed prior to registering the disputed Domain Name. Further, if you go into the Google Translate app and convert “Victron” from Latin into English, Google does in fact display that it means “conqueror” in English. When evaluating the intent of the Respondent in registering the disputed Domain Name, the panel should not be substituting its own research for that which the Respondent did prior to purchasing the domain and for which it provides as evidence attached to its Response. Even if Google Translate is wrong, that doesn’t change the fact that the Respondent, when it registered the disputed Domain Name, believed Google translate was correct. The state of mind of the Respondent, when it can be shown, is a critical piece of evidence that cannot be ignored.

Thus, for over 26 years the disputed Domain Name was registered and being used in good faith by an entity that was not the Complainant. The fact that there was a prior user of the disputed Domain Name for so long means that even if you discount the Respondent’s argument that the term Victron translates to “conqueror” in Latin, the Complainant was not the only one entitled to use this non-dictionary term. In sum, the majority found registration and use in bad faith based upon a new generalized targeting standard to conclude that Respondent must have acquired the disputed Domain Name to “extract profit” from the Complainant or another entity that holds a trademark. But the standard is not a generalized standard, but a very specific one where the Complainant must prove that the Respondent registered the disputed Domain Name specifically to sell that name to the Complainant. However, there is simply no evidence in the record establishing that.

Transfer (with dissenting opinion)

Complainants’ Counsel: Leopold Meijnen Oosterbaan advocaten, Netherlands
Respondents’ Counsel: Howard M. Neu Law Offices, USA

Issaquah FC v Issaquah SC

Issaquah FC v. Paul Dolan / Dolan Enterprises, NAF Claim Number: FA2204001994474

<issaquahfc .com>

Panelist: Mr. Alan L. Limbury

Brief Facts: The Complainant, incorporated in 2016, is a non-profit, youth football (soccer) club named “Issaquah FC” (Issaquah is a small town in the state of Washington and FC being an acronym for “football club”). The Complainant asserts common law rights in the ISSAQUAH FC trademark as early as February 1, 2016. The Respondent registered the disputed Domain Name on April 3, 2015, while a member and President of an organization located in the same town as the Complainant, called ISC Gunners (business website at <iscgunners .org>). The Respondent is no longer a member of the ISC Gunners Board of Directors but the Domain Name resolves to a website at <iscgunners .org>, displaying an “ISC Gunners” logo and name.

The Complainant also offers services related to soccer clubs in Issaquah and argues that it would like to use the disputed Domain Name for its business, if the Respondent were not squatting on it as a 301 redirect to another local organization’s business website. The Respondent argues that the disputed Domain Name is highly similar to its own business name and mark, Issaquah Soccer Club, Issaquah SC and ISC. In June 2019, the Complainant’s Executive Director reached out to the Respondent’s Executive Director with the request to release the disputed Domain Name to the Complainant’s business. The ISC Gunners board denied the request to release the disputed Domain Name. The Respondent argues a mere refusal to transfer a domain name which the Respondent properly acquired and was using for a legitimate business purpose is not bad faith.

Held: The disputed Domain Name was registered on April 3, 2015, some 10 months prior to the incorporation of the Complainant on February 1, 2016. There is no evidence of the kind mentioned in section 3.8.2 of the WIPO Overview from which it may be inferred that the Respondent had the Complainant in mind when registering the domain name, nor that Respondent’s intent in registering the domain name was to unfairly capitalize on any nascent trademark rights of the Complainant. The circumstances otherwise also demonstrate that, before any notice to this dispute, the Respondent used the name ‘Issaquah Soccer Club’ corresponding to the disputed Domain Name in connection with a bona fide offering of services. The Panel considers that “Soccer Club”, “SC”, “Football Club” and “FC” have the same meaning and are interchangeable.

Given the similarity between the Issaquah SC and Issaquah FC names and the fact that the disputed Domain Name was registered prior to the earliest use by the Complainant of its ISSAQUAH FC mark, the Panel is not persuaded that the possibility of any such confusion establishes bad faith use on the part of the Respondent. Indeed, the communications between the representatives of the parties in 2019 made no mention of protecting the Complainant’s trademark or of confusion arising from the Respondent’s use of the domain name. Nor did those communications make any allegation of bad faith registration or use by the Respondent.

RDNH: The Complainant says it brought this complaint because it would like to use the disputed Domain Name in order to operate its business with the legitimate Internet assets. In the recent past, it attempted multiple times to get the Domain Name back with no luck, saying it believes the Respondent is operating in bad faith. Despite that asserted belief, the Panel finds that the Complainant knew its complaint was doomed to failure. The Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Complaint Denied (RDNH)

Complainants’ Counsel: Kelly Galloway, Washington, USA
Respondents’ Counsel: Christian Marcelo of Perkins Coie LLP, Washington, USA

Does Previous UDRP History Make Any Difference?

So Bold Limited v. Daniel Lahoti, TechOps, VirtualPoint Inc., WIPO Case No. D2022-1100

<sobold .com>

Panelist: Mr. John Swinson

Brief Facts: The Complainant Company, formed in 2014 in England, provides website development services at <sobold .co .uk>. The Complainant owns a UK trademark registration for SOBOLD, filed on November 12, 2021 and registered on February 4, 2022. The disputed Domain Name was acquired by the Respondent on October 6 or 9, 2021 for USD $2,048 in a “drop catch” auction. The Respondent owns other domain names that start with “so” namely <sogreen .com>, <sopure .com>, and <somod .com>. On October 26, 2021, the Complainant’s employee contacted the Respondent, offering to buy the disputed Domain Name for USD $400 and followed up on November 12, 2021, with a revised offer of GBP 1,000, to which the Respondent made a counteroffer at USD $23,000.

On December 22, 2021, the Domain Name resolved to a website that stated “ Site Name For Sale. Expected: USD $16,300. BUY IT NOW” and included on the right side of that webpage “15 Public Site Names Start With SoBold”. The website then listed several domain names including the Complainant’s domain name <sobold .co .uk> and one other domain name owned by the Complainant. The Complainant alleges the Respondent has a well-documented history and pattern of cyber-squatting. The Respondent argues that the Complaint is textbook “Plan B” attempt by the Complainant to reverse hijack the disputed Domain Name from the Respondent.

Held: The disputed Domain Name was acquired by the Respondent prior to the Complainant filing for or obtaining a registered trademark for SOBOLD. Accordingly, the evidence of common law reputation is even more important in this case. However, the Complainant’s SOBOLD trademark is neither unique nor even particularly widely known, nor any evidence of its reputation or claimed common law rights is on record. The Complainant provided no rationale as to why the Respondent would likely have been aware of the Complainant or the disputed Domain Name. Based on the evidence before the Panel, the Panel cannot conclude that it is more probable than not that the Respondent was aware of the Complainant when selecting the disputed Domain Name. Because the Complainant’s trademark is, arguably, a common term, the Complainant needs strong evidence to support his case of bad faith registration, and the Complainant did not provide such evidence.

The Respondent’s webpage that advertised the disputed Domain Name for sale also referred to the Complainant and a list of other businesses that had trademark rights to or prior use of SOBOLD. This, in itself, does not demonstrate that the Respondent knew of the Complainant or that the USD $16,300 price for the disputed Domain Name was because of its value to trademark owners. Further, the Panel does not take into account that the Respondent both lost and won prior cases involving Domain Names. Of course, losing in a prior UDRP or court case would not mean one is always in bad faith and prevailing in a prior UDRP or court case does not immunize a Respondent from a bad faith finding in a later case, as the facts of each case must be considered on their own.

Complaint Denied

Complainants’ Counsel: Carstens & Cahoon, LLP, USA 
Respondents’ Counsel: Lewis & Lin, LLC, USA

Parties Collaborated for a Metaverse Art Project!

ArtMeta AG v. Romain Donnot, N’Break, WIPO Case No. DIO2022-0018

<artmeta .io>

Panelist: Mr. Andrew D. S. Lothian

Brief Facts: The Swiss Complainant is developing and creating a metaverse consisting of a 3D world, in which artists and galleries of the traditional art market are offered new possibilities in the digital space, including NFTs. The Complainant is the owner of Swiss Registered trademark for the word mark ARTMETA, registered on March 23, 2022. From about November 2021 onwards, the Parties collaborated on the creation of a metaverse entitled the “ArtMeta” project. As a result, the disputed Domain Name was transferred to the Respondent from its previous owner on or before November 13, 2021. The associated website appears to be the “metaverse” developed by the Respondent, to which the Respondent claims the copyright ownership.

The Respondent produces a “Light Paper” document, which appears to have been intended for a fundraising exercise for the “ArtMeta” project, in which such “Founding Team” is specifically named, and in which the Respondent’s M. Donnot, is listed as “Partner, CTO, Head of Platform Development @ArtMeta .io”. In January 2022, disagreements arose between the Parties. From February 2022, there have been various abortive attempts between the Parties to reach a settlement involving the termination of their relationship on an agreed basis. At stake is the transfer of the disputed Domain Name, compensation for the Respondent’s work done in developing the metaverse and for the assignment of any related copyright vesting in the Respondent.

Held: The Respondent puts forward an undated “Light Paper”, in which the Respondent’s M. Donnot is described as a “Partner” and part of the “Founding Team” of the “ArtMeta” project. However, the provenance and authorship of this document, and whether or not it was endorsed by both of the Parties, is unclear. Overall, it appears to the Panel that the Respondent is characterizing the relationship between the Parties as something akin to a partnership or joint venture in which each of the Parties was making a substantial contribution to the “ArtMeta” project. While the Complainant contends for an agent/client relationship, and also an employment relationship, it accepts that the basis for the Parties’ dealings was verbally agreed, and was not reduced to writing at any point. Despite attempts to negotiate, the Parties have failed to agree on an ex post facto settlement agreement which might have clarified their relationship. The documentary evidence, such as it is, is not conclusive.

The Panel is not in a position to determine the nature of the Parties’ business relationship and whether or not such arrangement did or did not entitle the Respondent to place the disputed Domain Name into its own name upon transfer from the selling party. Given that the business relationship between the Parties was agreed verbally, the present dispute is better suited to resolution in the courts, where the Parties would have the benefit of oral testimony and cross-examination, as well as discovery procedures and interim remedies. Accordingly, while the Panel finds that the case is unsuitable for determination under the Policy, the present Decision should not be taken as a specific endorsement of the case adopted by either of the Parties in their respective pleadings, and it is not addressed to any particular forum that may ultimately be seized of the matter.

Complaint Denied

Complainants’ Counsel: Lenz & Staehelin, Switzerland
Respondents’ Counsel: Cabinet d’Avocat LBV, France

Complaint Claims Exclusivity to Descriptive Words

Flexspace No 2 LLP v. Cem Arslan, WIPO Case No. DNU2022-0001

<flexspace .nu>

Panelist: Ms. Mathias Lilleengen

Brief Facts: The English Complainant is a provider of flexible offices, workshops, industrial and self-storage spaces throughout the UK. The Complainant owns various UK and European trademark registrations that incorporate the textual element FLEXSPACE including EU trademark registered on December 22, 2017 and UK trademark registered on February 2, 2018. The disputed Domain Name was registered on August 21, 2021, currently resolves to an active web page in Danish offering flexible office solutions in Copenhagen, Denmark, and the surrounding area. The Complainant alleges that given its prior rights in the FLEXSPACE mark, the disputed Domain Name is intentionally used to attract Internet users to the Respondent’s website for commercial gain by creating confusion with the Complainant’s trademark. The Respondent did not file a response.

Held: The Domain Name results from the combination of two terms “flex” and “space” (a combination of terms that are naturally used in the context of flexible office and business space), and the Panel finds that there is not sufficient evidence to consider Complainant’s trademark to be widely known. Even if the Respondent had made a search for “flexspace” on an Internet search engine, he would be none wiser as it leads to millions of results, including among them different companies using the term and the concept of “Flex space”. Moreover, the Respondent appears to have run a genuine website offering such services (connected to the common concept of “flex space”, and not seeking to benefit unfairly from confusion with the Complainant’s trademark), which colors the reason why the Respondent may have chosen such terms for the disputed Domain Name. Therefore, based on the evidence in this case, the Panel believes it is more likely than not that the Respondent was unaware of the Complainant’s trademark when the Respondent registered the disputed Domain Name, and probably registered it due to its significance as two dictionary terms combined.

Complaint Denied

Complainants’ Counsel: Freeths LLP, United Kingdom
Respondents’ Counsel: No Response