Welcome to this week’s UDRP Digest summarizing the most intriguing cases of the past week including <amadeus .co>, <tampawatertaxi .com>, <guess-that .com>, <sexican .com>, and more! You’ll also find commentaries by Zak Muscovitch, ICA General Counsel. We hope you’ll enjoy another fantastic Digest!
Does the Name, AMADEUS, belong to a Travel Tech Company?
Panelists: Mr. Steven A. Maier (Presiding), Ms. Reyes Campello Estebaranz (Dissenting) and Mr. Alan L. Limbury
Brief Facts: The Spanish Complainant is a provider of technology services and solutions dedicated to the travel sector. It owns over 150 trademark registrations comprising or including the name AMADEUS, dating from 1985 and covering a significant number of territories throughout the world. The Respondent acquired the disputed Domain Name on October 4, 2021 for USD $800. The Complainant provides evidence that, on various dates in November and December 2021, the disputed Domain Name resolved to a webpage at Afternic offering the disputed Domain Name for sale and inviting visitors to complete a form in order to obtain a price. The Complainant adds that it sent the Respondent a “cease and desist” communication dated May 13, 2022 to which no reply was received.
The Complainant further alleges that the Respondent registered over 100 domain names, some of which are trademark-abusive and correspond to the distinctive trademarks of individual brand owners. The Respondent contends that, since 2013, his business is that of a domain investor, or “domainer” and the disputed Domain Name is composed of a single-word generic and commonly used term. The Respondent adds that it is best known by association with Wolfgang Amadeus Mozart but is also a common surname.
Held (Majority Opinion): The mark AMADEUS is neither a coined term invented by the Complainant nor by any means the Complainant is the only user of that name in commerce. The fact that the Complainant may be a prominent and widely-known user of the AMADEUS trademark does not negate the fact that there are multiple other entities which also own trademarks for the term AMADEUS and/or use that name in the course of business and which, crucially, could legitimately use the disputed Domain Name in conjunction with their independent rights in that name. In these circumstances, the Majority Panelists are unable to conclude, on the balance of probabilities, that the Respondent had the Complainant’s trademark in mind, and targeted that trademark, when he registered the disputed Domain Name and offered the disputed Domain Name for sale. The Majority Panelists note in this regard paragraph 4(b)(i) of the Policy requires an intention to sell “to the complainant… or a competitor of that complainant,” and not to any one of a number of legitimate users of the name in question.
While noting that the Respondent paid USD $800 for the disputed Domain Name, the Majority Panelists do not consider this to be an unduly large price for a domain name reflecting a commonly-used term and do not find this factor to be indicative of an attempt to target the Complainant in particular. The Majority Panelists also incline towards the Respondent’s contention that the list of other domain names registered by the Respondent tends to support the Respondent’s rather than the Complainant’s case, as none of the examples cited by the Complainant appear to constitute obvious cases of cybersquatting. The Majority Panelists note further that, despite the Complainant’s assertion of a pattern of bad-faith registrations on the part of the Respondent, the Respondent has not been the subject of any prior adverse finding under the UDRP. The Majority Panelists find in the circumstances that the Complainant failed to meet its burden under the second element.
RDNH: The Panelist Limbury finds that the Complainant’s proceeding was brought in bad faith and constitutes an attempt at RDNH. He takes this view because he believes the Complainant must have been aware of the widespread use of the name “amadeus” in commerce, and also because of its false statement that “the Complainant is the only entity that is granted rights to exploit the trademark AMADEUS.”
However, the Panelist Maier finds it difficult to conclude that the Complaint was brought in bad faith in circumstances where the Panel has not reached a unanimous decision on the second and third elements under paragraph 4(a) of the Policy. Since Panelist Campello Estebaranz, as appears below, does not find that the Complainant was brought in bad faith, the Panel declines by a majority to make a finding to that effect.
Dissenting Opinion (Ms. Reyes Campello Estebaranz): This Panelist respectfully considers that there are several key circumstances not taken into account or into consideration by the Majority Panelists, which are relevant to the fair decision of this case. The Complainant’s trademark rights for the AMADEUS mark are registered in many jurisdictions around the world, including both Colombia and the United States, and the Complainant has continuously used the mark for over 30 years (since 1987), extensively and internationally. The Complainant’s business covers a broad spectrum of technological products and services available to general public, including “CheckMyTrip”, world leading travel app in 2018, “Amadeus e-Travel Management”, “Amadeus Hotel Platform”, “Amadeus B2B Wallet”, “Amadeus Xchange Payment Platform”, and many more.
The word AMADEUS is a rare first name of Latin origin or a rare surname, not included in any dictionary, which does not possess any particular meaning to the public and any search over the Internet reveals the Complainant, its reputed AMADEUS mark, and its websites; and any search over the USPTO, or any other trademark database, reveals the Complainant’s trademarks. The fact that there are various prior UDRP decisions referring to the Complainant’s AMADEUS mark, may indicate that this trademark is not only well-known, but a frequent target for cybersquatting. Under these circumstances, this Panelist considers that, in a balance of probabilities, the Respondent, being a “domainer”, knew or should have known about the existence of the well-known AMADEUS mark, and had it in mind when it registered the disputed Domain Name.
Complainants’ Counsel: Ubilibet, S.L., Spain
Respondents’ Counsel: Greenberg & Lieberman, LLC, United States
Case Comment by ICA General Counsel, Zak Muscovitch: When I hear the word, “Amadeus”, the first thought I have is the lovely bakery not far from my home that serves a wonderful Napoleon cake. Napoleon is a well-known manufacturer of BBQs, but I always think of the cake first. My mind then turns to the famous composer, Wolfgang Amadeus Mozart and the fabulous movie about him called, Amadeus. Finally, and because I am a bit of a travel geek, I recall the travel technology provider that has the Amadeus software system for booking flights. What is foremost in one’s mind is often determined by one’s location, knowledge and experiences.
However in this case, regardless of one’s personal location, knowledge, or experiences, the Dissenting Panelist is correct on her point that the Respondent was likely aware of the Complainant. The reason is that in this case, the Domain Name was a .co and was registered by a domain name investor. A domain name investor, like most people who would register a .co domain name, would likely have first checked to see what existed on the .com and thereby would have become aware of the Complainant if not already aware of the Complainant.
But that is not the end of the story. Awareness of a Complainant’s trademark is not alone a determinative factor under the UDRP. As the majority correctly stated, it must also be determined whether the Respondent targeted the trademark when he registered the disputed domain name. In other words, generally speaking it is permissible under the UDRP to be aware that a Complainant happens to have adopted a particular word as a brand, provided that the Complainant wasn’t the reason for the registration. Indeed trademark law does not bar parties from adopting an identical mark for different goods and services provided that the mark is not considered famous. AMADEUS, the travel technology provider, is not famous.
As the majority pointed out in this case, AMADEUS is hardly a term that the Complainant conceived of and is in fact shared by numerous parties for a variety of purposes. The Complainant is not as of right entitled to prevent any other party from adopting such a widespread and famous name which is capable of many uses beyond the travel industry. As such, it is difficult on the facts of this case to have any certainty as to what the Respondent’s primary reason for registering the Domain Name was, and in such circumstances a Panel should generally be circumspect and restrained in ordering a transfer. The Dissenting Panelist, determined upon a balance of probabilities that the Respondent was a cybersquatter, whereas the Majority determined otherwise. This case demonstrates how the luck of the draw can affect the outcome of a case. Had the Dissenting Panelist been hearing the case alone, the Respondent would have had his Domain Name transferred away. On the other hand, if Panelist Limbury had been hearing the case alone, the Complainant would have been found guilty of Reverse Domain Name Hijacking.
This points to an opportunity to improve the consistency with which the UDRP is interpreted as it is troubling when panelists are unable to agree on who is the abusive party in a dispute, the Complainant or the Respondent.
Right to Use the Generic Combination – Tampa Water Taxi?
Panelist: Mr. Aaron B. Newell, ESQ
Brief Facts: The Complainant traded as TAMPA WATER TAXI CO from a website at the domain name <tampawatertaxico .com> since at least as early as 2010, providing passenger transport services and tours by boat in / around the Tampa area. The Complainant owns an active Florida state trademark registration for TAMPAWATERTAXICO .COM which was filed on 27 July 2010 and which disclaims the terms TAMPA WATER TAXI and .COM. covering services such as: WATER SHUTTLE, WATER TAXI, CHARTER BOAT, & TOUR BOAT SERVICES. The Respondent trades as PIRATE WATER TAXI since 2016 providing passenger transport services, tours and entertainment events by boat in/around the Tampa area. It registered the disputed Domain Name on June 20, 2019.
The Complainant alleges that the Respondent, as a Complainant’s Competitor, registered the disputed Domain Name in 2019 in full knowledge of the Complainant, its business and its <tampawatertaxico .com> domain name, and used the disputed Domain Name to redirect website traffic to the Respondent’s website at <piratewatertaxi .com>. The Respondent contends that it adopted the disputed Domain Name as a good faith descriptor of its services and that the Complainant does not own a federal registered trademark, while Florida Registration is subject to disclaimers and the Complainant did not adequately substantiate its claim to common law rights in TAMPA WATER TAXI.
Held: The Panel finds that the Complainant did not provide sufficient information and evidence to substantiate the claim as to common law trademark rights in the name TAMPA WATER TAXI. However, the Respondent brought to the Panel’s attention the Complainant’s registered trademark rights on the Florida state register for TAMPAWATERTAXICO .COM. The fact that TAMPA, WATER TAXI and .COM are individually disclaimed, therefore, does not mean that their combination in the single sign TAMPAWATERTAXICO .COM is itself disclaimed. If that were the case there would be no point to the registration. While the respective signs are both on the “weak” and descriptive end of the distinctiveness spectrum, they remain highly similar and/or nearly identical. The inclusion of the term “CO” does not remove the risk of confusion between two near-identical signs. Hence, the Panel finds that the disputed Domain Name is confusingly similar to a “trademark or service mark in which the complainant has rights”.
While both businesses describe themselves as “water taxi” services that operate in “Tampa”, the Panel considers that any descriptive function of “Tampawatertaxi .com” is tempered by its similarity to the Complainant’s <tampawatertaxico .com> domain name and trademark, both of which had been used by the Complainant for nearly a decade and in competition with the Respondent at the time of registration of the Respondent’s domain name. Further, based on the evidence submitted by the Respondent, until it registered the disputed Domain Name, the Respondent was not known by the name “TAMPA WATER TAXI” and had not described itself in this way at any time. Its use of “Tampa water taxi” (as a descriptor or otherwise) appears to have originated with its registration of the disputed Domain Name. In the circumstances, on balance of probabilities, the Respondent adopted the domain name in the knowledge that it could have an adverse impact on the Complainant’s brand and business, and potentially see some of the Complainant’s internet traffic diverted to the Respondent’s <piratewatertaxi .com> domain name and business. The Panel considers that this is cybersquatting conduct, and finds that the domain name was registered and used in bad faith.
Complainants’ Counsel: Mark C. Johnson of Johnson Dalal, Florida, USA
Respondents’ Counsel: Brad F. Barrios of Turkel Cuva Barrios, PA, Florida, USA
Case Comment by Zak Muscovitch: This is a very troubling case. The Panelist transferred what appears to be a quintessentially generic phrase to the Complainant on the basis of a Florida trademark registration, despite finding no evidence supporting common law trademark rights. The Panelist noted that generally, U.S. state trademark registrations are considered insufficient to prove rights under the Policy, but identified a purported exception if a state trademark is subject to examination. Here, the Panelist concluded that the Florida state registration was subject to examination, on the basis that the “Complainant’s first application for TAMPA WATER TAXI was rejected based on an earlier mark, requiring that it reconsider its filing position and file TAMPAWATERTAXICO.COM as an alternative”. If that was all the evidence that the Panel had before it in order to be certain that Florida offered substantial examination, it may have been insufficient. Without evidence of what the Florida state trademark office actual does as a matter of practice, it could be concluded that the trademark office may simply reject an application that duplicated an existing registration and may not in fact undertake any meaningful examination of terms that are descriptive.
Nevertheless, even assuming that the Florida trademark registration is valid and involved a substantial examination (despite no apparent evidence of this), surely the Florida office did not intend to convey trademark rights over the quintessentially descriptive term, “Florida Water Taxi”. It is inconceivable that absent abundant evidence of acquired distinctives that such a term could ever be solely identified with a single business. Indeed, the subject Florida trademark registration disclaimed this entire term, leaving just the “co”. That would surely be evidence that neither the Complainant nor the trademark office believed that the Complainant had any rights over this generic phrase. Given the disclaimer, the only thing that the Complainant had left, if anything, was preventing someone from using an identical trademark – including the co – since the ambit of protection was so extraordinarily weak if it existed at all. Yet the Panelist nonetheless harnessed the transfer upon these highly dubious purported trademark rights. Compounding this apparent misapprehension, the Panelist stated that “there is a real risk that consumers will overlook the “co” element in the comparison between <tampawatertaxi .com> and TAMPAWATERTAXICO .COM”. That is not the Respodent’s problem given the descriptiveness of its Domain Name, and the Complainant should not have adopted such an incredibly weak mark if it didn’t want to run into precisely this kind of issue.
The Panelist went on to find bad faith registration and use concluding that the Respondent registered the Domain Name to cause confusion and draw traffic away from the Complainant. Yet the Respondent had every right to register the most apt and quintessentially descriptive term for its business, even with awareness of the Complainant and even believing that it could draw traffic away from the Complainant. This is not bad faith at all. Rather, this is a Complainant seeking to monopolize a descriptive term to the detriment of other traders. As Lord Herschell stated in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks,  AA.C. 571 at p. 580:
“The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using it for purposes of description, a word which has reference to the character of quality of the goods.”
The transfer of a common phrase to one trader as the Panelist has done here, despite dubious trademark rights, is very concerning. Unfortunately, this is apparently not the first instance of this Panelist transferring such a common descriptive term in questionable circumstances. The Panelist previously transferred the Domain Name, LiveVideo .com, https://www.adrforum.com/DomainDecisions/1957449.htm under highly questionable circumstances.
Andre Ponthier of Ponthier S.A.S. against Shannon Ponthier of Ponthier Enterprises
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant’s business was founded in 1946 in France when André Ponthier and his wife began growing and marketing fresh fruit and subsequently expanded by introduction of frozen fruit products. In 1993, the Complainant introduced a range of award winning frozen fruit purees and registered its first trademark PONTHIER in France and an International Registration designating China and few European jurisdictions. In 2015, the Complainant launched new ranges of vegetable purees in frozen and chilled versions, marketed under the Complainant’s “Ponthier” trademarks. The Respondent acquired the disputed Domain Name in 2015 and had incorporated Ponthier LLC and subsequently, on January 10, 2019, the Respondent also incorporated Ponthier Enterprises Inc. in Texas, United States. The Respondent is the President and the Director of Ponthier Enterprises.
The Complaint includes evidence that between January and May 2022, the disputed Domain Name resolved to a parking page provided by the Registrar which included pay-per-click (“PPC”) advertising links to competitors of the Complainant. However, the Response includes evidence from the Wayback Machine that since May 2015 the disputed Domain Name resolved to a parking page provided by the Registrar stating “This domain is registered, but may still be available. If you are interested, try our Domain Broker service.” In January and February 2022, the Complainant approached the Respondent through the Registrar’s Domain Broker service seeking to “buy” the disputed Domain Name for EUR 2,000. The broker reported back that the Respondent was not interested in transferring the disputed Domain Name.
Held: The Respondent’s own surname is “Ponthier”. In addition, the Respondent is operating through two different companies – Ponthier LLC and Ponthier Enterprises Inc. Although both companies were incorporated under their respective names long after the Complainant began using its trademarks, there is an obvious basis for derivation from the Respondent’s own name. Importantly, there is also evidence that the Respondent’s companies are carrying on business in providing IT consultancy services, which is a field quite remote from the Complainant’s business so that the risk of confusion, if it exists, is very low. There is evidence that the Complainant’s products are distributed in the United States. However, the evidence does not indicate the scale and extent of distribution, nor does it indicate when sales and promotion of the Complainant’s products by reference to the PONTHIER trademark started in the United States.
There is evidence of the disputed Domain Name resolving to a Registrar’s parking page with PPC links, which appears to be from searches in France, as undoubtedly the Complainant’s trademark is very well known in France. On the other hand, the Respondent’s evidence from the Wayback Machine shows captures in the English language which do not include PPC links. On the limited evidence of use in the United States, the Panel would not infer the Respondent was likely to have known about the Complainant and its trademark when registering the disputed Domain Name in circumstances where there is an obvious connection with the Respondent’s own surname. Given the facts, the Panel finds that the Complainant did not establish that the Respondent does not have rights or legitimate interests in the disputed Domain Name.
Complainants’ Counsel: Cabinet Nuss, France
Respondents’ Counsel: Edward J Tracy, Jr., United States
Is the Adult-Oriented Content Enough to Uphold Bad Faith, Guess That?
Panelist: Mr. Petter Rindforth
Brief Facts: The Complainant offers clothing, apparel, and accessories retail services. The Complainant owns rights in the GUESS trademark through registration with multiple trademark agencies, including the USPTO since 1992. The Complainant also owns a national Chinese trademark, registered on November 21, 1995. The disputed Domain Name was registered on March 3, 2022 by the Chinese Respondent. The Complainant contends that the Respondent does not use the disputed Domain Name for any bona-fide offering of goods or services, nor a legitimate non-commercial or fair use, but instead diverts internet traffic to an adult-oriented webpage. The Complainant further contends that the Respondent used a privacy service to hide its identity and registered the disputed Domain Name with at least constructive knowledge of the Complainants’ rights in the GUESS trademark. The Respondent did not file a Response.
Held: The Panel finds that the Respondent uses the disputed Domain Name by hosting adult-oriented content. It is neither use of the disputed Domain Name for any bona fide offering of goods or services, nor a legitimate non-commercial or fair use under the Policy. Under the Policy, the initial interest confusion and opportunistic bad faith may be demonstrated where a disputed Domain Name is obviously connected to a well-known mark, and is thus evidence of bad faith. The Panel recalls that the Complainants’ well-known trademark is incorporated into the disputed Domain Name. Thus, the Panel finds that the Respondent registered and used the disputed Domain Name in bad faith under Policy, which is further evident by: (a) using a disputed Domain Name to attract users to a resolving website for commercial gain; (b) diverting users and causing confusion as to the source and affiliation of the website with the Complainant; (c) Respondent’s use of privacy service to hide its identity.
Finally, the Complainant argues that the Respondent registered the disputed Domain Name with constructive knowledge of the Complainants’ rights in the trademark. While past panels have previously found that constructive notice is not sufficient for a finding of bad faith under the Policy, actual notice may be found based on the fame and notoriety of a mark. Although the Complainant does not argue that the Respondent had actual notice of the Complainants’ rights in the trademark, the Complainant provides evidence of the longstanding use of the GUESS trademark. Therefore, the Panel finds it most likely that the Respondent had actual notice of the Complainants’ rights in the GUESS trademark, and thereby finds bad faith under the Policy.
Complainants’ Counsel: Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Dear Reader, ask yourself this: When you hear the term, ‘Guess That’? Do you think of blue jeans or clothing? Do you think that the Respondent registered this Domain Name specifically because of the Complainant clothing company? Try Googling “Guess-That” or “Guess That” and see if the Complainant comes up.
Doctrine of Laches is Injunctive, Rather than Compensatory
Panelist: Mr. Luca Barbero
Brief Facts: The Complainant, established in 2000, manufactures and sells clothing and cosmetics under the trademark SEXICAN, which derives from a mix of the words “Mexican” (referring to the owner’s Mexican origins) and “sexy”, referring to the clothing style. The Complainant owns trademark registration for SEXICAN with USPTO, registered on November 30, 2021 (claiming first use on January 23, 2003). Previously, the Complainant owned the trademark for SEXICAN, registered on Aug. 17, 2004 but such trademark registration was cancelled in 2011 because the Complainant did not file a declaration of the trademark use. The Complainant is also the owner of the domain name <sexicanclothing .com>, which was registered on July 17, 2003 and is currently used by the Complainant to promote its clothing products under the trademark SEXICAN. The disputed Domain Name was registered on January 1, 2005 and redirects to a parking page provided by Uniregistry, displaying the following statement on the top of the page: “Click here to Buy SexiCan .com as your website name or call 1-561-898-0724”.
The Complainant alleges that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate, non-commercial or fair use, as it is offering the disputed Domain Name for sale and the Respondent implicitly requested an offer of over USD $30,000 to transfer the disputed Domain Name in an exchange of correspondence to the Complaint. The Respondent contends that he purchased it on March 30, 2017, for its inherent value as a generic common dictionary term made up of the two words “Sexy” and “Mexican”, with the intention of using it to develop a website, but could not publish any content due to the Covid-19 pandemic. The Respondent further contends that a search for the “sexican” term on Google returns 195,000 results but the first reference to the Complainant is on page 3 and that the Complainant’s claim is barred by laches since the disputed Domain Name was registered on January 1, 2005 by the Respondent’s predecessor.
Held: The Panel finds that the doctrine of laches does not apply to the present case since, as held in several prior cases, the UDRP remedy is injunctive rather than compensatory. However, the Panel notes that the Complainant’s delay in filing a complaint could make it more difficult for the Complainant to establish its case on the merits. In the present case, the Panel finds that the Complainant only made conclusory allegations of bad faith without adducing specific evidence to demonstrate that the Respondent registered the disputed Domain Name in bad faith. The Panel notes that, at the time Respondent acquired the disputed Domain Name, the first Complainant’s trademark had been already cancelled by the USPTO and the second trademark registration had not yet been filed by the Complainant. Moreover, the Complainant did not provide any evidence of use of its trademark SEXICAN either offline or online apt to demonstrate that the Respondent could have been aware of its trademark at the time of registration of the disputed Domain Name.
The Panel acknowledges that the Complainant registered its Domain Name <sexicanclothing .com> in 2003, but notes that no evidence has been submitted to demonstrate that such Domain Name was used by the Complainant in connection with its SEXICAN branded products till 2017. The Panel also consulted the Internet Archive to obtain an indication of how the Complainant’s Domain Name may have been used in the past but found no screenshots regarding its domain name. The Panel also notes that, based on a search for “sexican” on main search engines, such term appears to be used by several other entities and not to be exclusively referable to the Complainant. The disputed Domain Name is pointed to a parking page of the provider Uniregistry, where no reference to the Complainant’s trademark is displayed. Moreover, in the exchanges of correspondence submitted by the Complainant, there is no element suggesting that the Respondent registered the disputed Domain Name in bad faith with the primary intent to sell it to the Complainant. In view of the foregoing, the Panel finds that the Complainant has failed to prove that the Respondent registered and used the disputed Domain Name in bad faith under the Policy.
Complainants’ Counsel: Darren J. Quinn of Law Offices of Darren J. Quinn, California, USA
Respondents’ Counsel: Self-represented