Does Cybersquatting History Always Matter? ICA UDRP Digest – Vol 2.22

Welcome to this week’s newsletter summarizing the most intriguing cases of the past week for you. Read about decision on faca .com, camco .com, officialglock19shop .com, and greenyourlab .org!

 

Faca.com decision highlights evolution in views towards domain name investors over the past decade

Sergio Juan Canamasas Español v. Whois Privacy Services by Domainca, Spsoft Co., Ltd / Lee Wongi, WIPO Case No. D2021-4392

<faca .com>

Panelists: Mr. Ik-Hyun Seo (Presiding), Mr. Albert Agustinoy Guilayn and

Mr. Ilhyung Lee

Brief Facts: The Spanish Complainant is the owner at Plásticos FACA, S.A. which is in the business of manufacturing high-end plastic containers and packaging for cosmetic products for more than 50 years. The Complainant owns Spanish trademark since 1998 and the domain names <facapackaging .com> and <facasa .com> since January 11, 2017, and March 17, 1999, respectively. The disputed Domain Name was registered on September 18, 2001 by a Korean Individual, and resolves to a domain parking page with pay-per-click links. The Complainant asserts that the Respondent is commercially profiting from the fame of the FACA mark and the disputed Domain Name is parked for sale for USD $55,000. The Respondent explains that he is in the business of registering domain names and selling it later for profit and registered it for its potential commercial value since it consists of four letters only and is easy to pronounce and remember. The Respondent later became aware that the keyword also means “knife” in Portuguese and there are more than 1.5 billion Google results under this search term, most of them not referring to the Complainant at all.

Held: Based on the Respondent’s submissions which are supported by a simple Google search, this term correlates to a slew of other meanings wholly unrelated to the Complainant, including a Portuguese term for “knife”. Further, the disputed Domain Name is parked with a parking service but this is not per se illegitimate under the UDRP, especially for a Domain Name which consists of a dictionary term like “faca” and hosts pay-per-click links actually relate to the dictionary meaning of the word (knives and similar tools) with no evidence of trading on the trademark of the Complainant or its competitors. Although history may suggest the Respondent as a cyber-squatter, the record in this case does not support a finding of bad faith. There is no evidence to suggest that the Respondent knew of the Complainant at the time of Domain Name registration. Further, the offer to sell the disputed Domain Name or the Respondent’s use of the disputed Domain Name for Sedo parking, without additional supporting factors, do not necessarily indicate bad faith here. Therefore, based on the available record no reasonable inference can be made that the Respondent specifically targeted the Complainant in bad faith to free ride on the reputation and fame of the Complainant’s mark by registering and using the disputed Domain Name.

Complaint Denied

Complainants’ Counsel: Ferran Farré de Febrer, Spain

Respondents’ Counsel: Self-represented


 

Refiled Complaint Attempts to Target Domain Name on Sale

Camco Manufacturing, LLC v. Brian Wick / CheapCo .com, NAF Claim Number: FA2204001992264

<camco .com>

Panelists: Dr. Katalin Szamosi (Presiding), Ms. Diane Cabell and Mr. Richard Hill

Brief Facts: The Complainant, incorporated in 1968, is an international manufacturer and seller of products related to ATVs, RVs, boats, camping, cleaning supplies, plumbing, and towing. The Complainant states that “This present action is a refiling of an action commenced by the Complainant on March 18, 2011 where the Forum dismissed (without prejudice) the previous action” (hereinafter “Camco I”). The Complainant argues that, prior to the Camco I decision, it had already established common law rights in the CAMCO mark; further, since the Camco I decision, it acquired numerous federal trademark and service mark registrations for the CAMCO mark. The disputed Domain Name was registered on September 08, 2003 and is being used as a platform to resell domain names. The Respondent contends he buys, sells, markets, develops, promotes and advertises generic, intuitive, geographic, surname and commonly used terms on the Internet. The Respondent reserved disputed Domain Name 19 years ago, when the Complainant was nowhere to be found in a sea of countless other CAMCOs all over the world, which is evident from the USPTO database, Secretary of State Filings and WIPO database as well. The Respondent began buying numerous domains ending in “….co .com”, such as Camco .com, Cheapco .com and Glassco .com – some of which are identified in the Response.

Held: The Panel finds that it need not determine whether the term “camco” should be considered to be generic, in the sense, it is a combination of the generic terms “cam” and “co”. The Panel agrees with the Respondent that the term “camco” is a commonly used term and the term was in common use by multiple parties at the time the disputed Domain Name was registered. The Complainant did not provide any evidence showing that the Respondent was targeting the Complainant in particular or that the Respondent had reason to expect that the Complainant had any exclusive rights in the term when the disputed Domain Name was registered. And even now, the Complainant’s rights are not exclusive except as to the limited class of goods for which the mark was registered. Further, the Respondent provided evidence containing amongst others screenshots of his business at <cheapco .com>, the center of the Respondent’s business network of generically held domain names for sale. Based on the foregoing, the Respondent has shown that prior to the dispute and the registrations of the CAMCO marks, the Respondent used the disputed Domain Name in connection with a bona fide offering of goods and services.

Complaint Denied

Complainants’ Counsel: Blake P. Hurt of Tuggle Duggins P.A., North Carolina, USA

Respondents’ Counsel: Self-represented


 

A Case for Multiple Respondents

GLOCK, Inc. v. Shawn Peterson / Ndeta Innocent, NAF Claim Number: FA2204001993721

<officialglock19shop .com> and <glockarmouryshop .com>

Panelist: Mr. Richard Hill

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, the Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. The Panel finds that the Complainant’s allegations do not necessarily indicate that the domain names are under common control. More so, as the actual registrants disclosed by the privacy service at the request of the Forum are very different from each other. Further, the two resolving websites are different as well and the checkout pages of the website at <glockarmouryshop .com> only appear to require “FFL” information. Thus, the Panel finds that there is no sufficient evidence on record to find that both disputed Domain Names were registered by the same person or entity. Accordingly, the Panel will rule only on the <officialglock19shop .com> domain name, and it will dismiss, without prejudice, the complaint regarding the <glockarmouryshop .com> domain name.

Brief Facts: The Complainant operates a firearms manufacturing company. The Complainant was established in 1985 to market GLOCK pistols in the United States. Today, GLOCK pistols are the most popular pistol brand in the world and are especially popular within the United States law enforcement and military markets. The Complainant owns rights in the GLOCK mark based on its registration in the United States in 1992. The Complainant alleges that the Respondent purports to sell Complainant’s firearms online but cannot legally do so. The Respondent is either not shipping the firearms at all, or alternatively is illegally selling and shipping firearms online as there is no option to input legally required information as to “FFL”. The Respondent appears to be using the disputed Domain Name to phish for Internet users’ personal and financial information. The disputed Domain Name was registered on May 5, 2021.

Held: The resolving website purports to sell the Complainant’s products, whereas actually it cannot legally do so; the Respondent takes payment from consumers and gathers personal information from them, including their names and addresses; it does not ship any products or communicate with consumers in any way after it collects their information and money. This is not a bona fide offering of goods or services or a legitimate non-commercial or fair use per Policy. Indeed, the resolving website purports to offer the Complainant’s products for sale without the Complainant’s authorization to do so. This is disruptive to the Complainant’s business and demonstrates bad faith registration and use under Policy. Further, the Respondent registered the disputed Domain Name with actual knowledge of the Complainant’s mark: the resolving website displays pictures of the Complainant’s products. The Panel finds that the Respondent had actual knowledge of the Complainant’s rights in the mark prior to the Respondent’s registration of the disputed Domain Name and that this too constitutes bad faith under the Policy.

Split Decision

Complainants’ Counsel: Gavin M. Strube of Renzulli Law Firm, LLP, New York, USA

Respondents’ Counsel: No Response


 

Complainant’s Reliance on Disclaimed Trademark, While Respondent Makes Descriptive Use

My Green Lab, Corp. v. Domain Administrator, See PrivacyGuardian .org / Green Your Lab, WIPO Case No. D2022-1262

<greenyourlab .org>

Panelist: Mr. Andrew D. S. Lothian

Brief Facts: The Complainant, established on May 24, 2013, is a non-profit corporation committed to building a global culture of sustainability in science. The Complainant operates at <mygreenlab .org>, registered on March 14, 2013, whereby it provides resources regarding waste, energy, water, and other topics. It also provides certification programs, and education resources. The Complainant is the owner of Trademark for the word mark MY GREEN LAB, registered on December 2, 2014 before USPTO, which is subject to a disclaimer stating that no claim is made to the exclusive right to use “Green Lab” apart from the mark as shown. The disputed Domain Name was registered on April 15, 2020. The Respondent is a volunteer-run free network involved in the green labs movement.

The Complainant asserts that the Respondent’s founder became an ambassador of the Complainant in October 2020 and used the Complainant’s contact list in July 2021 to reach out to other members of the Complainant’s ambassador network to beta-test the Respondent’s network and website, claiming an affiliation between the two organizations. The Parties had been in discussion in April/May 2021, during which the Complainant’s Chief Executive Officer emailed the Respondent’s founder stating “[…] We have considered creating a similar network [to that of the Respondent] but perhaps we could just point people to yours and partner with your organization. […] We are always excited to see more green lab initiatives gaining traction and look forward to supporting and partnering with your efforts.” Following said email: the Respondent’s founder says that meetings were held with the Complainant’s principals in the context of which said founder believed that the Parties were working in partnership and that the Respondent was entitled to send certain emails to the Complainant’s list.

Held: The Panel is satisfied that the Respondent is using the disputed Domain Name in connection with an offering of services on a non-commercial basis and that it commenced such use before notice to it of the dispute. The Respondent does make use of the term “green lab” in its materials but this use is descriptive and thus was disclaimed in the Complainant’s mark. There does not appear to have been any deliberate intent on the Respondent’s part to cause confusion and indeed the Panel doubts that any confusion would have arisen, were it not for the emails which the Respondent appears to have mistakenly sent to the Complainant’s mailing list. The Respondent plausibly explains as arisen from a misunderstanding or miscommunication and according to the Respondent, was corrected and never repeated.

In addition to the Panel’s own impression that the Respondent’s service was intended to co-exist legitimately with that of the Complainant, it should not be overlooked that the Complainant itself did not, at least at first, see the Respondent’s activities as anything other than complementary to its own. Although both the Parties inevitably use similar expressions and iconography in their website content, including the use of the words “green” and “lab” or the phrase “green lab”. There are some similarities in the Parties’ names, but any such similarities are a consequence of the descriptive quality which they both have rather than being indicative of any bad faith intent on the part of the Respondent. The Panel notes for the Parties’ convenience that whether or not the use of the disputed Domain Name constitutes an infringement of the Complainant’s registered trademark within the Complainant’s jurisdiction is an issue beyond the scope of this proceeding.

Complaint Denied

Complainants’ Counsel: Lee & Hayes, United States of America

Respondents’ Counsel: Self-represented