We hope you will enjoy this edition of the Digest (Vol 3.8), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and Special Guest, Panelist Igor Motsnyi.
‣ Enterprising Panel Adopts Nuanced Approach to PPC Links and Rethinks Privacy Protection (enterpriseproductsllc .com *plus comment)
‣ <Altron. ltd>: the importance of filing a response in UDRP cases (altron .ltd *plus comment)
‣ Two Complainants’ “Common Legal Interest” Sufficient in Typical Cybersquatting Case (airindiaexpress .com)
‣ Small Variations Between a Trademark and Domain Name Can Avoid Confusing Similarity (hexcarb .com *plus comment)
‣ Be Real: ‘No Basis for Finding of Targeting’ (breal .com *plus comment)
This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Enterprising Panel Adopts Nuanced Approach to PPC Links and Rethinks Privacy Protection
Enterprise Products Partners L.P. v. Domain Admin / Media Matrix LLC, NAF Claim Number: FA2212002025287
Panelists: Mr. Charles A. Kuechenmeister (Chair), Mr. Michael A. Albert, Mr. Kendall C. Reed
Brief Facts: The Complainant provides midstream energy services to producers and consumers of petroleum products. It has a USPTO registration for ENTERPRISE and claims common law rights in ENTERPRISE PRODUCTS based upon years of use in commerce. The disputed Domain Name was registered on May 22, 2018 and resolves to a website displaying links for “Job Recruitment Sites”, “Virtual Data Room”, “Intranet Platforms”, “Customer Service”, and “Newswire Press Release Distribution”.
The Complainant alleges that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use, but instead is using it to divert internet users to its webpage for commercial gain. The Complainant also alleges that the Respondent uses a privacy shield and had actual and constructive knowledge of Complainant’s rights in the ENTERPRISE and ENTERPRISE PRODUCTS trademarks. The Respondent did not file a response.
Held: While Complainant alleges that it has used the ENTERPRISE PRODUCTS mark in commerce along with the ENTERPRISE mark for some fifty-three years, it submitted no evidence in support. There is no evidence before the Panel that the ENTERPRISE PRODUCTS mark has acquired a secondary meaning or has become associated exclusively with Complainant. Accordingly, the Panel finds that Complainant has not demonstrated its rights in the ENTERPRISE PRODUCTS mark and will proceed only considering Complainant’s rights in the ENTERPRISE mark. Using a confusingly similar domain name to attract Internet traffic to a webpage that offers pay-per-click links to goods and services, whether related or unrelated to a complainant’s business, is neither a bona fide offering of goods or services within the meaning of Policy nor a legitimate non-commercial or fair use within the meaning of Policy. There is nothing inherently wrong with operating a pay-per-click website. It becomes wrongful only if the respondent seeks to attract Internet users to its website by creating confusion as to the source, sponsorship, endorsement or affiliation of the website with the complainant. That cannot be proven if the respondent was not aware of the complainant and its rights in the relevant mark.
The evidence does not support a finding of actual knowledge in this case. The Complainant’s ENTERPRISE mark is a common English word (meaning “business” among other things) and is not fanciful. The Complainant presented no evidence that it is famous, or even widely known. Arguments of bad faith based on constructive notice are generally rejected, and Panels have most frequently decline to find bad faith based upon constructive knowledge.
The Complainant also argues that Respondent’s use of a privacy service to register the Domain Name is, in and of itself, evidence of bad faith. The Registrars allow the use of privacy protection and as such it cannot be taken as ipso facto evidence of bad faith. There are any number of plausible reasons a registrant might choose to use a privacy service that do not involve bad faith. The Complainant’s argument in this regard is rejected. For the reasons stated above, the Panel finds that the Complainant failed to prove that the Respondent registered and is using the disputed Domain Name in bad faith.
Complainants’ Counsel: Russell T. Wong of Blank Rome LLP, US
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Complainant apparently faltered due to the lack of evidence it presented about its reputation. Given the nature of the words, “enterprise products”, in combination with the absence of infringing PPC links, it became necessary for the Complainant to prove through evidence, that it was the target of the registration but it failed to do so. Had the Complainant marshalled the required evidence, including evidence of common law trademark rights, the outcome may have been different.
The Panel made two additional findings that are particularly noteworthy.
Assessing the Foundation for Finding Bad Faith on the Basis of PPC Links
The Panel noted that PPC links are ‘not inherently wrong’. It noted that it becomes wrongful only if the respondent seeks to attract internet users to its website by creating confusion as to source, etc. [emphasis added]. The Panel’s reasoning focuses on “seeks”, connoting “intention” and intention in turn requires “awareness” of a Complainant’s marks. Absent intention, it cannot be said that the appearance of PPC links was the result of the Respondent “seeking” to create confusion. As such, the Panel required “awareness” as a foundation for the intentionality required in order to find PPC links wrongful. Since the Complainant failed to provide sufficient evidence of reputation which leads to awareness, the Panel was unable to find intentionality. This nuanced approach is particularly interesting because its logic is apparent and it served the Panel well since it avoided making an unsupported inference that the PPC links evidenced bad faith, in the absence of foundational facts.
Contrast this with, for example, the registration of any PEPSI-formative domain name. Such registration would connote awareness of the Complainant regardless of the nature of PPC links on an associated website because of the notoriety of the highly distinctive PEPSI mark. In other words, whether the PPC links are PEPSI-related or not, it can be inferred that the respondent likely intended to capitalize on the complainant’s mark. However, the same easy conclusion cannot readily be reached when the domain name is not shown to particularly well-known, and the PPC ads are not related to the complainant, as was the case here; Neither the Domain Name itself nor the PPC links necessarily ‘pointed’ to the Complainant thereby rending the PPC links inconclusive since they did not suggest intentionality.
If the PPC links had been related to the Complainant, then the Panel could have inferred awareness, but in the absence of related PPC links, the Panel had no basis to assume awareness because the Complainant’s trademark did not closely correspond to the Domain Name which was composed of common words, and the Complainant’s mark was not shown to be particularly well-known or fanciful. Given the foregoing, the Panel was unable to logically infer awareness, which is generally the key component of targeting. Absent targeting, there is generally no bad faith and that is why the PPC links were insufficient alone to prove bad faith in this case. Of course, had the Complainant demonstrated common law rights in ENTERPRISE PDODUCTS as it ought to have, then the Panel’s conclusion would likely have been different.
The Panel clearly appreciated that it was illogical in the circumstances, to simply assume awareness based upon PPC links alone, whether they were related or non-related to the Complainant. Panels ought to consider, as the Panel in this case did, whether PPC links in the context of a particular disputed domain name, enable a panel to properly infer awareness, which is the basis for a finding of targeting.
Reconsidering Whois Privacy
The second aspect of the Panel’s decision which I find even more noteworthy, is its rejection of the argument that a respondent’s use of a privacy service “in and of itself, evidences bad faith”.
Interestingly, Godaddy and I believe many other registrars since GDPR, now set domain name registrations to privacy by default or at least redact the Whois details:
“…Privacy protection will be active by default, ensuring nobody will be able to see the customer’s contact information. In addition, customers will be provided with a private email address for domain inquiries, to prevent spam…
Limiting the personal information that domain registrants have on the open web is another way GoDaddy supports small and growing businesses and helps enhance their safety online. To learn more, please visit GoDaddy Domains Privacy and Protection.”
As such, standard privacy protection itself does not provide any of the perceived intentional obfuscation that it has in the past. Indeed, it is mandated by the EU and most registrars abide by it wherever they are located in the world.
We still however, see Complainants make an argument such as the following one even though it no longer makes any sense in light of GDPR and registrar practices:
“The Complainant further contends that the fact that the Respondent is using a privacy protection service to hide its identity may in itself constitute a factor indicating bad faith, even if such privacy is based on the GDPR privacy mechanisms. Such conduct shows the intention to hide its identity in order to uphold and strengthen the false impression that the Complainant endorses its Website.”
The new reality was addressed well by the Panelist in this case:
At this point, the Panel wishes to make certain observations regarding the Complainant’s submission that a finding of bad faith should also arise from the fact that the Respondent’s name and contact details were concealed prior to the Registrar’s verification. In the seemingly never-ending struggle of trademark owners against cyber-squatters, the latter commonly resort to hiding behind fictitious details and privacy filters to thwart the recovery efforts of the former.
Many past panels, some dating from as far back as the early days of the Policy (e.g., TTT Moneycorp Ltd. v. Diverse Communications, WIPO Case No. D2001-0725), have reasoned that such cloak-and-dagger techniques are an obvious cybersquatting calling-card and accordingly evidences bad faith. Such reasoning, although sound on the face in the past, may have to take into account recent developments in technology, best practices and policy.
The world is progressing inexorably into a new information age where data has become an increasingly valuable commodity. The WhoIs databases are a public treasure trove of personal and business data which fall easy prey to web-crawlers and data-scraping bots, unfortunately exposing WhoIs details of domain name holders to abuse (e.g., spam, cyberstalking, identity theft).
Following high profile data hacking incidents in recent times, regulators have also entered the fray. Most notably, the General Data Protection Regulation (i.e., GDPR) of the European Union, which took effect in 2018, potentially subjects entities around the world to stiff penalties in the interest of protecting the data of European Union citizens worldwide. Domain name registrars and operators readily offer and recommend free or bundled data privacy services to domain name registrants (many of whom are not cybersquatters) to protect their data. Not surprisingly, domain name registrants buy-in to such services for their own protection.
In the light of these developments, the Panel is of the opinion that the mere fact that the WhoIs details of a respondent are protected by a privacy filter alone cannot be sufficient to support a finding of bad faith within the meaning of the third limb of paragraph 4(a). In addition, section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) emphasizes that there are recognized legitimate uses of privacy services. Therefore, the surrounding circumstances must also be considered. Further, ICANN’s Temporary Specification of gTLD Registration Data obliges registrars to operate a Registration Access Data Protocol and to provide UDRP providers like the Center with full registration data upon notification of a complaint. As such, WhoIs details cannot be effectively hidden from proceedings such as the present, and ineffective or fictitious WhoIs details which support a finding of bad faith should become apparent during the course of proceedings.
Proxy services on the other hand, may be a somewhat different kettle of fish. See ICANN’s ‘About’ page about the differences. With proxy services, the proxy service becomes the registered name holder of record, and its identity and contact information is displayed in Whois data. Although a registrant may have a reason for employing a proxy service, in the normal course most registrants would not go out of their way to employ one instead of the usual registrar privacy protection service. I think proxy services could provide a better reason to be suspicious, but all of the surrounding circumstances would still need to be considered, and in and of itself without more, I doubt using one would be a good indicator of bad faith.
<Altron. ltd>: the importance of filing a response in UDRP cases
Altron Limited, Altron TMT Limited v. ALTRON LIMITED DOOEL export-import Skopje, WIPO Case No. D2022-4163
Panelist: Mr. Steven A. Maier
Brief Facts: The South African Complainant provides technology solutions aimed at digital transformation and service clients operating in the fintech, healthcare, safety and security, and skills development sectors. The Complainant is the owner of various registrations for the trademark ALTRON in South Africa, the earliest registration dates back to December 22, 1993. Additionally, the Complainant provides evidence of device marks including the name ALTRON registered in India and Mauritius in 2019, Australia, Botswana, and Kenya in 2020, Mozambique in 2021 and United Arab Emirates in 2022. The disputed Domain Name was registered on October 16, 2021 and resolves to a GoDaddy parking page which links to “Altron South Africa”, “Altron Michigan”, “Altron Minnesota”, “Altron Incorporated”, “Altron Inc”, and “Altron Arrow”.
The Complainant argues that the name ALTRON is an invented and fanciful word coined by the Complainant’s predecessor many decades ago and is not a common or dictionary word. It further alleges that it is not possible to understand how the Respondent may have independently coined and conceived of the disputed Domain Name and that it must therefore be assumed to have had knowledge of the Complainant’s trademark, given also the fact that the Respondent also operates in the software sector. The Complainant adds that the sponsored links on the Respondent’s GoDaddy webpage include websites offering electronic components and printed circuit boards, which are among the goods covered by the Complainant’s trademark registrations in South Africa and elsewhere.
The Respondent provides a certificate of standing describing its main activity as “wholesale of computers, peripheral equipment and software”, which provides its contact email address as “[…]@altronltd .com”. The Respondent also exhibits a Facebook page in the name of “Altron LTD” which appears to have been active since at least 2018, with 83 “likes”. The Respondent accepts that the name ALTRON is not a common or dictionary word, however, it states that it chose the name of its company for personal and sentimental reasons, in that it combines the name of the founders’ firstborn child and their favourite movie, “Tron Legacy”.
Held: In this case, the Panel finds that the Respondent produced official documentation to establish that it was duly registered under the laws of North Macedonia on January 16, 2015. The Panel, therefore, finds that the Respondent has made out a prima facie case that it has been commonly known by the disputed Domain Name. However, despite the Respondent having established a prima facie case as set out above, the Complainant may still succeed in its Complaint if it can establish that the disputed Domain Name was selected, not for the purpose of reflecting a legitimate company name, but instead for the purpose of targeting the goodwill which attached to the Complainant’s ALTRON trademark.
The Complainant contends, in particular, that the Respondent must have known of its trademark when it registered the disputed Domain Name and can have chosen it for no reason other than to take advantage of the Complainant’s reputation in the technology sector. While the Panel accepts that the mark ALTRON is a coined term which may well have been devised by the Complainant’s predecessor, however, the Panel does not find the Complainant’s use of the name to be so notorious or so distinctive that the Respondent must be assumed to have registered the disputed Domain Name (or its business) with the Complainant’s trademark in mind. The Respondent offered an explanation for its choice of the disputed Domain Name, the veracity of which is beyond the scope of the UDRP further to investigate. Further, the Respondent also provided evidence not only of its registration, but also of its ownership and use of the domain <altronltd .com> since 2015 and of some level of presence on social media.
The Panel concludes in the circumstances that the Complainant is unable to establish, on the balance of probabilities, either (a) that the Respondent must have registered the disputed Domain Name in the knowledge of, and in order to target, the Complainant’s ALTRON trademark, or (b) that the Respondent’s registered business, under a name corresponding to the disputed Domain Name, is merely a pretext for a registration which targets that trademark. The Complainant does not therefore defeat the Respondent’s assertion that it has commonly been known by the disputed Domain Name, and cannot therefore establish that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Complaint must therefore fail.
Complainants’ Counsel: Edward Nathan Sonnenbergs Inc., South Africa
Respondents’ Counsel: Self-represented
Special Guest Case Comment by Igor Motsnyi:
Igor Motsnyi is an IP consultant and partner at Motsnyi Legal in Belgrade, Serbia.
Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy. Igor has been the Panelist in over 40 UDRP cases (See: https://udrp.tools/?s=fd6013f9). The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
<Altron. Ltd> could have been a potentially easy case for the Complainant, a large South African business, had it been a default case.
- The Complainant’s marks were registered years before registration of the disputed domain name. The Complainant provided proof of media coverage of its business, proof of social media presence and appears to have a rather long history of the mark’s use. The disputed domain is identical to Complainant’s mark.
- The disputed domain name resolved to a parking page with links some of which seemed to be related to the Complainant and its business (e.g. “Altron South Africa”). The Complainant also argued that the disputed domain name was offered for sale.
- “Altron” is not a descriptive term, a dictionary word or a combination of descriptive terms. It is an invented word.
- The Complainant contended (as described in the “Parties Contentions’” section of the decision): “without a plausible and justifiable explanation for the Respondent’s choice of the disputed domain name, the only reasonable explanation is that the Respondent registered the disputed domain name for the purpose of taking unfair advantage of the Complainant’s trademark”.
- The registrant, after registrar’s verification, turned out to be an individual with no apparent connection to the disputed domain name and the term “Altron”.
The UDRP is a simplified procedure where each party has to make its case and convince the Panel. Respondent’s failure to respond may often be fatal to the respondent. What made the <altron .ltd> case interesting is that the Respondent actually filed a response, albeit an informal one and then responded to Panel’s Procedural Order providing further explanations. The Respondent in <altron. ltd> provided convincing arguments in relation to the second UDRP element and absence of targeting and made its own story “believable” (as noted by Gerald M. Levine” “respondents have to be believable”, see “The Importance of Protecting Credibility: Claiming and Rebutting Cybersquatting”, October 20, 2016).
First, the Respondent explained why “Altron LTD” from North Macedonia should be the proper respondent in this dispute rather than the disclosed registrant.
Second, the Respondent provided further details as to its rights and legitimate interests, namely:
- Registration details of “Altron Ltd” in North Macedonia as of January 16, 2015.
- Evidence of social media presence of the Macedonian company “Altron Ltd”.
- Explanations for the Respondent’s choice of the disputed domain name <Altron>.
- Evidence that while the name “Altron” is a coined word, it is not associated only or primarily with the Complainant and there are other businesses operating under the same name in the same business field.
- Explanations regarding PPC links (registrar’s standard parking page that the Respondent does not manage) and evidence that the disputed domain name was not offered for sale contrary to the Complainant’s contentions.
The Panel found Respondent’s arguments persuasive enough, in particular noting that “the Respondent has produced official documentation to establish that it was duly registered under the laws of North Macedonia”, while “the Complainant has established significant business goodwill attaching to that mark in South Africa and, potentially, in other territories in which it is active, the Panel does not find its trademark to be unique or so distinctive as to be overwhelmingly associated with the Complainant” and “the Respondent has offered an explanation for its choice of the disputed domain name, the veracity of which it is beyond the scope of the UDRP further to investigate…”
The “Altron” decision demonstrates the importance of a filed response in UDRP cases. Here the Respondent (on the record, without a legal representative) successfully defended its domain name. Sometimes respondent’s rights or LI can be evident to the Panel even in default cases, for instance based on the disputed domain name (e.g. a dictionary term), manner of use of the domain name and/or Whois information. This was not the case in <Altron. Ltd> where the initial Respondent as disclosed by the registrar had no obvious connection to the domain name, the domain name itself was a made-up word and the Complainant provided evidence of its marks’ reputation (albeit limited geographically).
I could think of a somewhat similar case in <alrosa. com>, filed by a large Russian diamond company, ALROSA v. Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. and Elisa Marina Mendoza Rosa / Whois Privacy Services Pty Ltd, Domain Hostmaster, WIPO Case No. D2013-0256, where the Respondent established the second element by providing the evidence that she acquired the disputed domain name “for future use of her now seven-years-old child Alejandro Rosa, commonly known as “Al Rosa”.
In such cases failure to respond may result in transfer and thus in distortion of the original purpose of the UDRP to fight only “abusive registrations” (cybersquatting and cyberpiracy)” per ICANN’s “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy”.
I often talk to small business owners about domain names and various legal issues. They are usually afraid of any legal disputes and try to avoid them at any costs. Some believe that if they face any claims by a large company, they have no real chances to defend their rights. The <altron .ltd> UDRP case is an example showing that if you are not a cybersquatter and you receive a UDRP Complainant, you should respond and try to defend your rights over a domain name.
Two Complainants’ “Common Legal Interest” Sufficient in Typical Cybersquatting Case
Air India Limited and Air India Express Limited v. Nanci Nette, Name Management Group, WIPO Case No. D2022-5020
Panelist: Ms. Mihaela Maravela
Brief Facts: The Complainants are headquartered in India and operate domestic flights within India and to locations across the globe. The First Complainant registered various trademarks consisting of AIR INDIA or AIR-INDIA, including the Indian trademark registration for AIR-INDIA dated January 3, 2018 and the Indian trademark registration for AIR INDIA (figurative) dated February 23, 2012. The Complainants operate their official websites at <airindia .in> and <airindiaexpress .in>, where customers can find details of the flights operated by the Complainants and book their flight tickets.
The disputed Domain Name was registered on August 3, 2018, and resolves to a parking page with pay-per-click (“PPC”) links to third party service offerings in the field of air flights booking. The Complainants alleges that the website at the disputed Domain Name leads to a shell webpage where the Respondent claims to be providing ticketing services for the Complainants’ flights and that the Respondent was aware of the Complainants and their aviation related business under the trademarks AIR INDIA and AIR INDIA EXPRESS and knowing the same, the Respondent registered the disputed Domain Name with clear mala fides motive in mind.
Preliminary Matter – Multiple Complainants: The Complainants contend that the First Complainant, the owner of trademark registrations for AIR INDIA or AIR INDIA EXPRESS trademarks, is the parent company of the Second Complainant that was permitted to use such trademarks. As such, the two entities have a sufficient common legal interest in the trademarks included in the disputed Domain Name to file a joint Complaint. In addition, the Complainants have been the target of common conduct by the Respondent, who has engaged in bad faith registration and use of the disputed Domain Name comprising their trademarks. The Second Complainant is a wholly owned subsidiary of the First Complainant; hence the co-Complainants have a common grievance against the Respondent, as they share common interests. In the circumstances, and absence of any objection on behalf of the Respondent, the Panel accepts the single consolidated Complaint against the Respondent, which it finds fair and equitable to all the parties and will accept both the Complainants as party to the proceedings.
Held: There is no evidence that the Respondent is using the disputed Domain Name in connection with a bona fide offering of goods or services, nor does the Respondent appear to engage in any legitimate non-commercial or fair use of the disputed Domain Name. Rather, according to the unrebutted evidence put forward by the Complainants, the disputed Domain Name is used to redirect to parked pages comprising PPC links to competing services. In this case, the PPC links are related to the Complainants’ business and generate search results with competing services to those offered by the Complainants. In this Panel’s view, such use does not amount to a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed Domain Name within the meaning of the Policy.
The disputed Domain Name was registered after the Complainants have obtained registration of their AIR INDIA trademarks and used them in commerce. The website associated with the disputed Domain Name contains PPC links related to the services offered by the Complainants. Under these circumstances, the Panel considers that the Respondent has registered the disputed Domain Name with knowledge of the Complainants and their trademarks and that it targeted those trademarks. Further, given the confusing similarity between the Complainants’ trademarks and the disputed Domain Name, and that the PPC links operate for the commercial gain of the Respondent or of the operators of those linked websites, or both, the Panel considers that the disputed Domain Name is intended to attract Internet users by creating a likelihood of confusion with the Complainants’ trademark within the meaning of the Policy. Based on the evidence and circumstances of this case, the Panel concludes that the disputed Domain Name was registered and is being used in bad faith.
Complainants’ Counsel: Anand & Anand, India
Respondents’ Counsel: No Response
Small Variations Between a Trademark and Domain Name Can Avoid Confusing Similarity
ARCELORMITTAL v. ERA GEMS DMCC, CAC Case No. CAC-UDRP-105126
Panelist: Mr. Steven Levy Esq.
Brief Facts: The Complainant is the largest steel producing company in the world and is the market leader in steel for use in automotive, construction, household appliances and packaging. In 2020, the Complainant began using the trademark XCARB to bring together all of its reduced, low and zero-carbon products and steelmaking activities. The Complainant owns trademark registrations for the marks XCARB (2021) and EXCARB (2020) as well as a number of domain names such as <xcarb .net>, <xcarb .uk>, <xcarb .green>, <excarb .net>, and <excarb .eu>.
The disputed Domain Name <hexcarb.com> was registered on November 24, 2022 and resolves to a registrar parking page displaying monetized links in relation to car parts and electric vehicles. The Complainant alleges that the disputed Domain Name it is confusingly similar to the asserted trademarks as it “incorporates the dominant ExCarb element of the mark in its entirety, merely adding the letter “H” (which is a reference to Hydrogen and has a role in the strategy of the decarbonization of the steel industry…”). The Complaint further adds that this will lead internet users to wrongly believe that the domain name originates or is endorsed by the Complainant. The Respondent did not file a Response.
Held: The first clause of the Policy requires that the Complainant demonstrate its ownership of trademark rights and that the disputed Domain Name is confusingly similar to such trademark. The Complainant produces evidence that it owns registered rights to its asserted XCARB and EXCARB trademarks in multiple jurisdictions, filed in late 2020 or early 2021. Registration with national offices is found sufficient to satisfy the threshold requirement of proving trademark rights under the Policy. However, past decisions have noted that, in certain instances where a disputed Domain Name takes on a new and independent meaning, small variations from a trademark can avoid a finding of confusing similarity under Paragraph 4(a)(i) of the Policy. See for example: Namecheap, Inc. v. KY SONG, FA 1537272 <namechap .com> (“the disputed Domain Name consists of two generic terms ‘name’ and the ‘chap’, each with its clear meaning of its own and declined to find confusing similarity”) and Google Inc. v. Andrey Korotkov, FA 1463221 <woogle .com> (“[w]hile changing a single letter is often not enough to differentiate a mark from a domain name, in this case the letter at issue is the first letter. This Panel does not believe Respondent’s disputed Domain Name can be confused with the Complainant’s mark”).
In contrast to the Complainant’s characterization, the Panel views the disputed Domain Name as consisting of two abbreviations “hex” and “carb” which have generic meanings, both separately and together. The term “hex” is a Latin prefix and is often used as shorthand for the word “hexagonal”. The term “carb” also has Latin roots and is often used as an abbreviation for the words “carbohydrate” and, of most relevance to the present case, “carburetor”, which is a component of certain vehicle engines. Together the terms are commonly used to refer to specific automobile parts known as a “hex carb” or “hex carb fitting” which are hexagonal pieces used in the operation of an engine’s carburetor. This generic meaning of the term “hex carb” is reinforced by the appearance of links to automobile parts in the disputed Domain Name’s resolving website and leads the Panel to conclude that the domain name carries a specific generic meaning and overall impression of its own and is therefore sufficiently different from the Complainant’s trademarks so as to fall outside the scope of Paragraph 4(a)(i) of the Policy.
In the present case, the screenshots of the Respondent’s website, which have been provided by the Complainant, show that the site includes links denoted as “Pièces Commander” (order parts), “Acheter Pièces Automobiles” (buy car parts), and “Véhicule Éléctrique” (electric vehicles). While it may be that the Complainant produces steel that is ultimately used in vehicles under its XCARB mark, the submitted evidence is not specific on this point and it is unclear to the Panel whether the Complainant’s steel is used in vehicle parts or only in structural frames and bodies. However, the links at the Respondent’s website directly relate to the generic meaning of the term “hex carb” for an automobile part. As such, the Panel finds that the Complainant did not make out a prima facie case and, upon a preponderance of the evidence before it, the Panel finds that the Respondent does make a bona fide offering of goods or services using the disputed Domain Name and/or makes a fair use thereof in terms of the Policy.
Complainants’ Counsel: NAMESHIELD S.A.S.
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Panelists should always look upon cases with an open mindset and not fall into the habit of relying upon rote analysis and conclusions. It would have been easy for a Panelist to conclude that the small difference between the Complainant’s mark and the Domain Name met the ‘low threshold’ for confusing similarity under the UDRP, but in this case the Panelist demonstrated that each case must be assessed upon its own merits and the particular circumstances. Here, the addition of a single letter transformed the meaning of the disputed Domain Name and therefore avoided a finding of confusing similarity: “The Panel views the disputed domain name as consisting of two abbreviations “hex” and “carb” which have generic meanings, both separately and together”.
Be Real: ‘No Basis for Finding of Targeting’
PAULINE v. Domain Vault, Domain Vault LLC, WIPO Case No. D2022-4231
Panelist: Mr. Edoardo Fano
Brief Facts: The Complainant is a French company operating in the field of women fashion, and is online at <breal .net>. It owns several trademark registrations for BRÉAL, that includes the earliest French trademark registration dated May 26, 1988 and also an International trademark registration dated July 22, 2013, designating the United States. The disputed Domain Name was registered on September 18, 2003, and currently resolves to a parking page.
The Complainant alleges since the registration of the disputed Domain Name, the Respondent has been either not using it, or using it in connection with a parking page, or redirecting it, in some case to the Complainant’s website. Further, the Complainant suspects that the Respondent might also use the disputed Domain Name in connection with phishing or fraudulent email communications, since the MX records attached to the disputed Domain Name have been activated.
The Respondent asserts to have rights in respect of the disputed Domain Name, since it was registered as an investment, being a valuable, generic term, likely to mean “be real” to most English speakers, and is in wide third-party use. The Respondent further contends that there is no evidence of the disputed Domain Name being used in connection with email services or that it was redirected to the Complainant’s website.
Held: The Panel finds that the term “breal” is likely to be understood as an expression “b real” by English speaking users and that it is not proved that, when the disputed Domain Name was registered in 2003, the Complainant’s trademark was necessarily widely known and therefore it cannot be stated that based on the evidence before the Panel the Respondent knew or at least should have known of the Complainant and deliberately registered the disputed Domain Name. In this regard, the Complainant primarily relies on the redirection which the Respondent denies; even if there was such redirection in 2020 per the Complaint, this may show knowledge at the time but not necessarily some 20 years prior.
As regards the past use of the disputed Domain Name, currently redirecting to an parking page, the Panel, in accordance with its powers to consult matters of public record, checked the Wayback Machine <archive .org> and found out that the disputed Domain Name has been either not used or used in connection with parking pages only, while it has not been possible to find a redirection of the disputed Domain Name to the Complainant’s website. For the same reason, “passive holding” as claimed by the Complainant cannot be considered as the Respondent’s bad faith use of the disputed Domain Name. In light of the above, the Panel finds that the Complainant failed to prove that the Respondent has registered and is using the disputed Domain Name in bad faith, in accordance with the Policy.
Complainants’ Counsel: INLEXIP EXPERTISE, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel is to be commended for its approach to this case. Faced with a disputed Domain Name that was a near exact match to the Complainant’s brand and not corresponding to any dictionary word, the Panelist still astutely determined that the Domain Name could nonetheless be understood to be an English expression. Moreover, since there was no evidence that the Complainant was widely known when the Domain Name was registered in 2003, the Panel concluded that there was no basis for finding that the Respondent targeted the Complainant. It was also nice to see the Panelist note that purported evidence of bad faith use 20 years after registration is not necessarily evidence of bad faith registration 20 years prior. Had the Panel made a similar finding in the Fox[.org] dispute which we discussed in Volume 3.6, the outcome may have been different.