Failure to Amend Basis for Complaint Upon Revelation of Whois Details, is RDNH
This case raises two particularly interesting issues. The first is whether a party that registers a domain name in good faith pursuant to an intellectual property rights policy can later be found to have registered the domain name in bad faith. The second particularly interesting issue that arises from the case at hand, is the Panel’s finding of RDNH. (read commentary)
We hope you will enjoy this edition of the Digest (vol. 4.20), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Failure to Amend Basis for Complaint Upon Revelation of Whois Details, is RDNH (lubuntu .net *with commentary)
‣ The Policy Supports Resale of Domain Names Where No Evidence of Targeting (alpha .fund)
‣ Is a Campaign Slogan Use in Commerce? (barbosaforcongress .com *with commentary)
‣ Wellgreen Health is not Walgreens (wellgreenhealth .com *with commentary)
‣ “Mai RE Group” Belongs to a Real Estate Agent (mairegroup .com *with commentary)
Failure to Amend Basis for Complaint Upon Revelation of Whois Details, is RDNH
Canonical Limited v. Phuc Hau Dang, Mat Biec Ltd., WIPO Case No. D2024-0996
<lubuntu .net>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant launched the Ubuntu distribution of the Linux family of open-source software on October 20, 2004. The Complainant claims that there are some 40 million desktop computer users with the Ubuntu distribution installed. The “Lubuntu” is the Complainant’s “lightweight operating system”, based on Ubuntu and its first preview version was made publicly available in October 2008. The Complainant has provided a list of 46 registered trademarks around the world for UBUNTU it claims to own and in particular it owns two registered trademarks for LUBUNTU covering the European Union and the United Kingdom (since 2004). The disputed Domain Name was registered on January 2, 2009, and the Complainant adds that the disputed Domain Name was registered by Mr. Mario Behling.
The circumstances in which the disputed domain name became registered are not clear. The Complainant contends that the disputed domain name was registered by a Mr Mario Behling. Mr Behling apparently “spearheaded” the development of the Lubuntu operating system “supported by a vibrant community of developers” (according to the Respondent). As the Panel understands the Response, the Respondent was (or claims to have been) part of that founding team. The Complainant asserts that Mr. Behling previously operated the disputed Domain Name as part of the Complainant’s Lubuntu community and was bound by the Complainant’s intellectual property rights policy which, amongst other things, required members to accept that the Complainant is the exclusive owner of its intellectual property. The Complainant further adds that Mr Behling, having left the Lubuntu community, ceased to have any rights in the disputed Domain Name. The Respondent denies registration and use in bad faith and advances a number of contentions in rebuttal.
Held: The publicly available WHOIS information indicated that the registrant was a privacy protection service. However, the Complainant contended in the Complaint was filed, that the registrant was in fact, Mr. Behling. The Panel proceeds on the basis that the Complainant seems to accept the original registration of the disputed Domain Name was in good faith as the Complainant accepts the disputed Domain Name was originally registered in connection with the Complainant’s permission in connection with the Complainant’s Lubuntu community. The Panel further is prepared to accept that the Respondent is a “related entity” to Mr Behling and a transfer to the Respondent (or another member of the “team”) is readily explicable upon Mr Behling (or whomever) leaving the project. It is also clear on the materials before the Panel that the disputed Domain Name has been used continuously in the same manner and to the same ends. Accordingly, the Panel would be prepared if necessary to treat the present case as falling within the limited exception to the general rule that good faith registration is assessed at the date of transfer to the Respondent (if the disputed Domain Name was transferred to the Respondent rather than registered by him).
The Respondent’s continued retention of the disputed Domain Name may be in breach of the contractual arrangements, if any, applicable. The Panel expresses no concluded view on this issue as it is unnecessary to do so. As cases such as SPECS Surface Nano Analysis GmbH v. Rickmer Kose / Domain Name Administrator, PrivacyProtect.org, WIPO Case No. D2010-1173, show, the consequences of such a breach (if any) must be resolved in forums other than under the Policy. Given the extensive debates in the formulation of the Policy ending in the adoption of the conjunctive form of the third requirement, panels have repeatedly recognized that a Policy amendment is required to extend its scope to cover cases of use in bad faith following registration in good faith.
RDNH: The Complainant initiated this proceeding on the basis that it accepted the disputed Domain Name had been registered in good faith or, which for present purposes amounts to the same thing, with the Complainant’s permission. The Complainant was mistaken about the identity of the registrant, given the use of the privacy protection service. However, the Complainant did not seek to change the basis of its claim once the identity of the Respondent was revealed through the Registrar’s verification response.
It merely sought to add the Respondent to Mr Behling (formally addressed as a Respondent in the initial Complaint). As discussed above, since the rejection of the so-called retrospective registration in bad faith theory advanced in cases such as City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643, it has been long settled under the Policy that registration in bad faith must be demonstrated, not just use in bad faith. See WIPO Overview 3.0, section 3.2.1.
Once the Complainant was on notice of the identity of the registrant, it was incumbent on the Complainant to provide a basis on which a conclusion could be reached that the disputed Domain Name was registered and used in bad faith by the Respondent. Merely amending the Complaint to change the identity of the Respondent to add the newly disclosed registrant as a Respondent falls far short of attempting that.
Complaint Denied (RDNH)
Complainants’ Counsel: Bristows, United Kingdom
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This case raises two particularly interesting issues.
The first is whether a party that registers a domain name in good faith pursuant to an intellectual property rights policy can later be found to have registered the domain name in bad faith. As the Panel rightly pointed out, such retroactive bad faith has been firmly rejected by Panels. Nevertheless, can an argument be made out that if a domain name was registered pursuant to a licensing or distributorship type agreement (which was not the case here, rather it was a “community policy” and it is unclear to what extent if any, the Respondent was bound to it), and upon breach of that agreement, bad faith registration can be constructively concluded?
Yes, it is possible to make such an argument, but it fails. One could argue that a trademark licensing agreement for example, that allows a party to register a domain name for so long as certain conditions are met, for example, only extends good faith registration to the extent that the domain name’s use remains compliant with the terms of the licensing agreement. That still, however, would not eliminate the original good faith registration pursuant to the license agreement. But suppose that the licensing agreement conferred a sort of constructive trust upon the licensee domain name registrant, in the sense that the domain name registration is considered held by the licensee registrant only for the benefit of the licensor – in other words; the owner of the domain name and exclusive rights holder would be the licensor, not the licensee registrant. Upon lawfully revoking that trust upon breach or otherwise, the licensee registrant could be deemed to have registered the domain name in bad faith because the constructive trust either expressly or more likely implicitly, only acknowledged good faith registration during the period of the constructive trust and once gone, so too goes the good faith registration. This was the gist of the approach identified but rejected by the Panel in Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805 since it would “require an extension of the Policy’s clear language”:
Although not articulated exactly this way, the rationale of the panel decisions cited in the preceding paragraph appears to be as follows: The domain name was registered by the distributor/web designer for the distributor/web designer’s use under certain conditions or for certain discrete purposes. If the conditions no longer obtain or the use exceeds the specified purposes, registration in bad faith may be inferred, because the complained-of use (e.g., use after the distributor has been terminated or after the web designer has completed its specified tasks), if contemplated by the parties at the time of the registration would have been bad faith. In this decision the Panel refers to this line of cases as the “Consent to Register” cases or theory.
Make sense? Perhaps, but these sort legal gymnastics are totally uncalled for under the Policy and lead to the same sort of overstep that resulted in the original retroactive bad faith fiasco (See Cohen and Muscovitch, “The Rise and Fall of the UDRP Theory of Bad Faith”, CircleID May 8, 2017). The plain reading and intention of a law is no obstacle for creative and well-intentioned counsel and jurists who wish to fashion a desired remedy, however such inclinations must be resisted. Rather, if there is a need for such a remedy, then the law should be changed to allow for the remedy rather than twisting the law to enable a remedy. When it comes to licensor-licensee relationships, manufacturer-distributor relationships, business owner-web designer relationships and the like, the UDRP is unable to order transfer in the absence of bad faith registration to begin with. Yet, we sometimes see those cases where justice may seem to demand that transfer be ordered and are left to punt such cases to the courts. That is arguably a feature of the Policy rather than a flaw because the UDRP is intended to provide a relatively speedy and inexpensive method to remedy cybersquatting rather than a means of resolving all types of disputes.
As noted by the Panelist in the case at hand, however; “Given the extensive debates in the formulation of the Policy ending in the adoption of the conjunctive form of the third requirement, panels have repeatedly recognized that a Policy amendment is required to extend its scope to cover cases of use in bad faith following registration in good faith.” Is a Policy revision called for to change the conjunctive “and” to “and/or”? It seems to me that such a revision may be far too broad if called for at all since cases where “and/or” would provide any otherwise unavailable remedy appear by and large limited to these “manufacturer-distributor” and “business owner-web designer” type relationships. Accordingly, rather than changing the conjunctive “and” to “and/or” when it has served the UDRP well aside from arguably this distinct class of case, a targeted addition to address such cases could be considered and thereby avoid the turmoil and host of issues that would arise from changing the conjunctive 25 years after the establishment of the Policy.
The second particularly interesting issue that arises from the case at hand, is the Panel’s finding of RDNH. The Panel found RDNH based upon; a) the fact that the Complainant accepted that the Domain Name had been registered in good faith but proceeded anyhow despite no retroactive bad faith being possible under the Policy, and; b) that upon receiving the registrar’s verification which identified the registrant, the Complainant did not seek to change the basis of its claim. The aforementioned first basis is well established however it is this latter basis which I think is particularly important to highlight here. As noted by the Panelist, “Once the Complainant was on notice of the identity of the registrant, it was incumbent on the Complainant to provide a basis on which a conclusion could be reached that the disputed domain name was registered and being used in bad faith by the Respondent”. This is an important lesson for both counsel and Panelists. It is not acceptable to learn of the actual underlying registrant via the registrar verification and just proceed as if one is oblivious to the newly learned facts and indeed this is a basis for a finding of Reverse Domain Name Hijacking as the Panel did in this case.
The Policy Supports Resale of Domain Names Where No Evidence of Targeting
Alpha Bank S.A. v. Ehren Schaiberger, WIPO Case No. D2024-0818
<alpha .fund>
Panelists: Mr. Flip Jan Claude Petillion (Presiding), Ms. Delia-Mihaela Belciu and Ms. Diane Cabell
Brief Facts: The Complainant is a Greek bank founded in 1879. The Complainant is the owner of various ALPHA BANK trademarks, including Albanian (October 20, 2000); North Macedonian (May 16, 2006); European Union (August 4, 2009). The Complainant also appears to operate a website linked to the domain name <alpha .gr>. The disputed Domain Name was registered on March 25, 2023, and currently resolves to a webpage offering the disputed Domain Name for sale for USD $19,999.
The Complainant alleges that considering the substantial notoriety and significance of the Complainant’s trademarks, the Respondent, particularly in the deliberate registration of the “.fund” domain, knew or should have reasonably known about the Complainant’s business and trademark protection. The Complainant further alleges that the disputed Domain Name is registered and used for the unique purpose of selling and the primary objective of the sale is to target either the Complainant or a competitor of the Complainant.
The Respondent contends that it is using the disputed Domain Name in connection with a bona fide offering of goods or services because it is in the business of curating and supplying domain names to new business entities. The Respondent further adds that an alpha fund is also a financial product… it is an investment fund that aims to achieve alpha and outperform a benchmark index or the entire market. The Respondent has the right to sell the disputed Domain Name for whatever price it deems appropriate regardless of the value that the Complainant or an appraiser may ascribe to the disputed Domain Name.
Held: The Complainant’s main argument is the fact that the Respondent’s registration and use of the disputed Domain Name is speculative and unmistakably targets the Complainant. The Respondent does not deny registering the disputed Domain Name for the purpose of resale. However, the Respondent asserts it did not target the Complainant. Generally speaking, the Panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP, provided that this is not done with the intent to target the complainant. See WIPO Overview 3.0, section 2.1 and Zydus Lifesciences Ltd. (formerly known as Cadila Healthcare Ltd.) v. Jewella Privacy LLC / DNS, Domain Privacy LTD, WIPO Case No. D2022-0880.
In the present case, the disputed Domain Name consists of the word “alpha”. The Panel notes that the word “alpha” is a dictionary word, being i.e. the first letter of the Greek alphabet or something that is first. In the Panel’s view, the fact that the disputed Domain Name’s gTLD is “.fund” does not mean that the Respondent is targeting the Complainant. In fact, as evidenced by the Respondent, the term “alpha” appears to be widely used in the specific finance sector and can thus not be exclusively linked to the Complainant or the Complainant’s ALPHA BANK marks. According to the Panel, there is insufficient evidence showing that the Respondent specifically targeted the Complainant or its marks when registering the disputed Domain Name.
While it is true that the Respondent seems to be a professional domain name reseller, which may imply some good-faith effort to avoid registering and using domain names corresponding to trademarks, this does not mean that the registration of the disputed Domain Name would automatically be considered to be in bad faith. See WIPO Overview 3.0, section 3.2.3. For all the reasons mentioned above, and especially the wide use of the term “alpha” even in the financial sector, the Panel finds that there is insufficient proof of the Respondent specifically targeting the Complainant with the disputed Domain Name. In view of the above, the Panel finds that the Complainant has not established that the disputed Domain Name has been registered and is used in bad faith.
RDNH: The mere lack of success of a complaint is not in itself sufficient for a finding of RDNH. In the case at hand, the Panel finds no evidence that the Complaint was brought in bad faith. The Complainant has valid trademark rights and seems to have been legitimately convinced that, when registering the disputed Domain Name, the Respondent was targeting the Complainant. The Complainant may have erroneously believed that the registration of the disputed Domain Name for resale purposes constitutes a strong argument in support of bad faith together with the fact that the disputed Domain Name was registered under a gTLD which may be related to its financial activities.
Moreover, the Respondent seems to have misunderstood the concept of the “Plan B case”, which is a case where someone attempts to purchase a domain name, is unsatisfied by the negotiations or ignorant of normal market pricing, and instead launches a UDRP while omitting evidence of its purchase attempt. The Respondent does not show any evidence that the Complainant tried to purchase the disputed Domain Name prior to filing the Complaint. The Panel therefore declines to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied
Complainants’ Counsel: Ubilibet, Spain
Respondents’ Counsel: Self-represented
Is a Campaign Slogan Use in Commerce?
Jennifer Barbosa v. Serhii Bulhakov, NAF Claim Number: FA2404002093787
<barbosaforcongress .com>
Panelist: Ms. Sandra J. Franklin
Brief Facts: The Complainant claims common law rights in the BARBOSA FOR CONGRESS mark, used in 2019 and 2020 in connection with running for the U.S. House of Representatives. The Complainant widely used the disputed Domain Name until after her 2020 campaign. The Respondent registered the disputed Domain Name on July 28, 2022, and uses it to pass off as the Complainant. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name and that the Respondent registered and used the disputed Domain Name in bad faith. The Respondent did not file a Response.
Held: The Complainant argues that the Respondent does not use the disputed Domain Name for a bona fide offering of goods or services or a legitimate non-commercial or fair use by using it to pass off as the Complainant. The Complainant provides a screenshot of the website at the disputed Domain Name, showing that the Respondent copies the Complainant’s website, including the Complainant’s mark and images and a link to “CLICK HERE TO DONATE”. The Panel finds that this is not a bona fide offering of goods or services or a legitimate non-commercial or fair use, and thus the Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). Additionally, the WHOIS identifies “Serhii Bulhakov” as the registrant. Therefore, the Panel also finds that the Respondent is not commonly known by the disputed Domain Name, and thus has no rights under Policy ¶ 4(c)(ii).
The Panel finds that the Respondent registered and uses the disputed Domain Name in bad faith under Policy ¶ 4(b)(iv) to pass off as the Complainant for the Respondent’s commercial gain. The Panel thus finds bad faith. The Complainant further alleges that the Respondent registered the disputed Domain Name with knowledge of the Complainant’s rights in the BARBOSA FOR CONGRESS mark based on the Respondent’s use of the mark to pass off as the Complainant. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii).
Transfer
Complainants’ Counsel: Sarah S. Brooks of Venable LLP, California, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: It is well settled both in trademark law and in the UDRP case law that no trademark rights may be found in the absence of use in commerce. Here, the Panelist appears to have found common law trademark rights despite the only evidence being the Complainant’s use of the slogan in a political campaign rather than in commerce. This clearly doesn’t qualify since a political campaign is decidedly non-commercial. As noted by UDRP Panelist Mihaela Maravela in her blog post, “Protecting Personal Names Under the UDRP: and Overview of Recent Cases”, Emmanuel Macron and former NY Governor, George Pataki both succeeded in their respective UDRPs because they had used their personal names in commerce for example, by promoting speaking engagements and publishing books – i.e. beyond use merely in a campaign which is not use in commerce.
Wellgreen Health is not Walgreens
Walgreens Boots Alliance, Inc. and Walgreen Co. v. Amit Bugalia, NAF Claim Number: FA2404002091886
<wellgreenhealth .com>
Panelist: Mr. Jonathan Agmon
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS: The Complaint was filed by two Complainants against a single Respondent. The Complainants are the holders of the WALGREENS and/or WALGREENS HEALTH marks. The Complainants and their predecessors, through their affiliates and licensees, have extensively advertised and promoted the WALGREENS and/or WALGREENS HEALTH mark all over the world. The Panel finds that the Complainants have a common grievance against the domain name registrant as they have a common legal interest in the trademark rights on which this Complaint is based, and it is equitable and procedurally efficient to permit the consolidation of their complaints.
Brief Facts: The 1st Complainant is an integrated healthcare, pharmacy, and retail leader. It was formed in 2014 when the 2nd Complainant merged with Alliance Boots. The 1st Complainant has since been the parent company to both the 2nd Complainant and The Boots Company PLC. The Complainants’ portfolio of brands includes Walgreens, Boots, Duane Reade, the No7 Beauty Company, Benavides, and Ahumada. The 1st Complainant’s presence extends beyond the United States and throughout the world. The Complainant claims that for over 130 years, the WALGREENS brand has become a distinctive symbol of high-quality products and services and substantial goodwill. The Complainants are the registered proprietors of various WALGREENS trademarks, including U.S. registration (January 25, 1977); India registration (September 20, 2007); and EU registration (April 20, 2022). The disputed Domain Name, <wellgreenhealth .com>, was registered on November 14, 2022, and resolves to a website purporting to offer a variety of healthcare services, information in connection with healthcare, health and wellness, medical consultations, and telehealth medical services.
The Complainant alleges that the Respondent intentionally attempted to divert the Complainant’s customers by creating a likelihood of confusion, and that the Respondent used the Complainants’ marks to disrupt and/or compete with the Complainants’ business. The Complainant further alleges that since both parties are in closely related fields of practice and their marks WALGREENS and WELLGREEN are similar, the Respondent’s use of the disputed Domain Name is in bad faith. The Respondent contends that he is a medical doctor and under his Diplomate of the International Board of Lifestyle Medicine (DipIBLM), he is authorizing Walgreen Health to deliver healthcare and Lifestyle Medicine services within his rights. To this end, the Respondent provided evidence of his qualifications.
Held: The Panel notes that the Respondent appears to be either working for or operating Wellgreen Health and that Wellgreen Health appears to be conducting telehealth consultations using the disputed Domain Name. However, it is important to note the distinction between the Company and the Respondent in relation to the ownership of the disputed Domain Name. The disputed Domain Name is registered to the Respondent and not to the company for which he is designated as the Designated Partner. The Respondent has not submitted that the disputed Domain Name was registered on behalf of WellGreen Health. The Panel notes that the Respondent is aware of this, from the facts that (1) his submissions were amended to reflect that Wellgreen Health is the Respondent instead of himself, and (2) in the submissions, he has used separate terms to refer to himself and Wellgreen Health. The Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and therefore that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names under the Policy. The Policy ¶ 4(a)(ii) has been satisfied.
Further, the Respondent did not deny that he was aware of the Complainants and their trademarks prior to registering the disputed Domain Name. In fact, he stated that “and to the best of our knowledge, the complainant lacks a meaningful or popular business presence in India”. Further, the Respondent was educated in and obtained qualifications in the United States, where the Complainants have a significant presence. He would therefore be well aware that the Complainants’ primary area of business is in the healthcare/pharmaceutical sector. Given the above, the Panel finds it hard to accept that the Respondent was unaware of the Complainants and their WALGREENS and/or WALGREENS HEALTH trademarks at the time of registration of the disputed Domain Name. However, the finding that the Respondent was aware of the Complainants and their trademarks is not sufficient. It is indicative of bad faith but the Panel is instructed to consider the totality of the circumstances.
The Panel finds that the use made by the Respondent’s connected entity Wellgreen Health is only somewhat competitive since the services offered by the Respondent under the Wellgreen Health website and mark are in the general field of health. The Panel also finds that there is no evidence to show that the Respondent targeted the Complainants or their trademarks. The Complainants’ evidence does not show that the Respondent used the disputed Domain Name to gain economic advantage by riding on the reputation the Complainants have in their trademarks. The parties’ websites are not similar and the Wellgreen Health website employs a different color scheme and structure. The Respondent is shown clearly as the provider of medical and/or Lifestyle medicine-related services, which Internet users are not likely to associate with the Complainants. It is well established that the UDRP jurisdiction does not extend to resolving disputes for alleged trademark infringement. Rather, it is focused on abusive registrations.
In this case, there is no evidence to show that the Respondent is taking advantage of the Complainants’ marks in such an abusive manner, especially given the particular circumstances of the case, which include the existence of concurrent registrations of the parties’ marks in India, the differences between the parties’ websites, the difference in services offered and the different jurisdictions where the parties operate. The Panel finds that the Complainants have failed to establish Policy ¶ 4(a)(iii).
Complaint Denied
Complainants’ Counsel: Tiffany D. Gehrke of Marshall, Gertein & Borun LLP, Illinois, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: It is gratifying to see that the Panel properly decided this dispute on the basis of the Policy itself and did not stray into deciding what at most amounts to a claimed case of trademark infringement. Without evidence of targeting and where it is not a case of cybersquatting, the case should be dismissed as it was here.
“Mai RE Group” Belongs to a Real Estate Agent
Maire S.p.A. v. Anwar Mai, CAC Case No. CAC-UDRP-106312
<mairegroup .com>
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant, formed in 2005, is part of a large industrial group active in various countries. The Complainant is the owner of the domain name <mairetecnimont .com> registered on 21 September 2012, which resolves to its official website. The Complainant’s majority shareholder GLV CAPITAL S.p.A. is the owner of the trademark registrations for the sign “MAIRE”, including the EU registration (12 January 2010) and the International registration (8 July 2009). The disputed Domain Name was registered on 10 September 2021 and currently resolves to a webpage with the title “MAI REAL ESTATE GROUP”, which describes services related to real estate properties. The webpage indicates the phone number of the Respondent, as provided by the Registrar (with the phone code for San Francisco, California), and an email address set up at the disputed Domain Name.
The Complainant maintains that the MAIRE trademark is highly distinctive and widely known in relation to the Complainant’s business and as it is the company name, any use of the disputed Domain Name which would not infringe the Complainant’s rights is inconceivable. The Complainant alleges that the fact that the MAIRE trademark is combined with the dictionary word “group” shows that the disputed Domain Name was registered to mislead potential consumers, to tarnish the trademark and prevent the Complainant from reflecting it in a corresponding Domain Name. Lastly, the Complainant adds that the disputed Domain Name is not used and has never been used and that the Respondent’s contact details are redacted.
The Respondent contends that he is a licensed real estate agent in the State of California and holds a license issued by the California Department of Real Estate and that he registered the disputed Domain Name on 10 September 2021 after receiving his license on 13 August 2021. The Respondent further contends that it has rights or legitimate interests because the disputed Domain Name contains his name, Anwar Mai, and the abbreviation “re” for “real estate” – the business in which the Respondent is active and that it was intended for information use for the Respondent’s real estate business. He explains that the disputed Domain Name serves as a portfolio for past transactions in which he has participated, and is used to represent Mai Real Estate Group, the business practice of the Respondent.
Held: The evidence in the case shows that the disputed Domain Name was inactive previously, but it currently resolves to a website showcasing the activities of Mai Real Estate Group and indicating the phone number of the Respondent. There is also support for the argument of the Respondent that “re” is a common abbreviation for “real estate”. In this light, it seems plausible that the disputed Domain Name can be regarded as a combination of “mai”, “re” and “group”, thus reflecting the name of the Respondent, the business sector in which he is active, and the name “Mai Real Estate Group”, the entity through which the Respondent operates his business.
On the other hand, the Complainant has submitted no evidence that it is active or well-known in the United States, and all media articles that it has submitted about its media recognition are only in Italian. All this taken together makes plausible the Respondent’s explanations for the registration and use of the disputed Domain Name and leads the Panel to the conclusion that it is more likely than not that the Respondent has registered the disputed Domain Name not to target the Complainant, but in furtherance of what appear to be legitimate business activities in the real estate sector in California. Therefore, the Panel finds that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed Domain Name.
Complaint Denied
Complainants’ Counsel: Claudio Tamburrino (Barzanò & Zanardo Milano S.p.A.)
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: A solid dismissal by the Panelist. Indeed, once the Response was filed fully explaining the Respondent’s reasons and basis for registering the Domain Name, I wonder why the Complainant did not withdraw its Complaint at that time.