Welcome to this week’s UDRP Digest (2.15), summarizing the most intriguing cases of the past week, with commentary from Zak Muscovitch, ICA General Counsel. Read about:
‣ The Multi-factored Approach to Claimed Free Speech Cases (momsdemand .org *with commentary)
‣ Criticism Website Domain Ordered Transferred (hbznews .com *with commentary)
‣ DOH! IP Law Firm, Bartko, Found to Have Engaged in Reverse Domain Name Hijacking (bartko .com *with commentary)
‣ Complex Disputes are not Clearcut Cases of Cybersquatting (protanium .com)
‣ Can a Soap Company Stop a Gambling Website? (GrandDuke .com)
‣ A Box Maker Gets Boxed In (boxesmaker .com)
The Multi-factored Approach to Claimed Free Speech Cases
Panelist: Mr. Georges Nahitchevansky
Brief Facts: The US Complainant, a gun violence prevention organization, uses the mark MOMS DEMAND ACTION in connection with its advocacy efforts. It owns trademark registrations for the MOMS DEMAND ACTION and related marks in the United States, since July 2014 and uses the domain name <momsdemandaction .org> as its official website. The US Respondent registered the disputed Domain Name on February 26, 2021. At some point thereafter, the Respondent redirected the disputed Domain Name to a web page within a website at <defcad .com> which offers 3D printable firearm parts, and in particular a gun part with MOMS DEMAND ACTION embossed on it. The Complainant contends that the Respondent registered and used the disputed Domain Name in bad faith to misleadingly attract web users to a website that promotes a 3D printable firearm part and to interfere with the Complainant. The Respondent did not reply to the Complainant’s contentions but sent the Center an informal “response” in which he asserts that he registered and used the disputed Domain Name as an exercise of free speech and for “parodying the organization.”
Held: The disputed Domain Name consists of the common words “moms” and “demand” but it is clear that the Respondent did not register the disputed Domain Name to use it in any descriptive sense but in its trademark sense to specifically refer to the Complainant. Given that Complainant’s MOMS DEMAND ACTION advocacy efforts are focused on gun violence prevention and promoting safety measures and responsible gun ownership, the use of the disputed domain name as a redirect to a web page promoting a 3D printable firearm part featuring the MOMS DEMAND ACTION mark raises a question as to whether Respondent’s actions are legitimate as an expression of free speech. While the Panel supports an approach as expressed through an “impersonation test” as set forth in Dover Downs, the Panel nevertheless has reservations about adopting a blanket use of an “impersonation test.” Such an approach if applied too broadly or without looking at other case factors, could in the Panel’s view, create an undue burden on respondents in cases involving parties based only in the United States where a domain name identical to a trademark is being used for a bona fide non-commercial criticism site that would be protected under the First Amendment as applied by some United States federal court decisions. See, e.g., Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005).
The use of an “impersonation test” is an important factor to be considered in cases of claimed free expression involving a domain name that is identical or nearly identical to another’s trademark along with other factors that panels have focused on, such as (i) the genuineness and nature of the criticism or commentary, (ii) the possible pretextual nature of the respondent’s website, (iii) the commercial or non-commercial aspects of the respondent’s website, (iv) the nature of the domain name itself potentially including any additional terms or plays on words, (v) the use of disclaimers, and (vi) other factors that could inform whether a respondent is using the disputed domain for bona fide non-commercial criticism concerning a complainant or to take advantage of a complainant’s mark in a bad faith or abusive way for the benefit of a respondent. The Panel believes the approach should be more holistic and focus on the totality of factors and should not necessarily be determined, at least for parties legitimately based in the United States, on one factor alone (albeit one that perhaps sets the scene for the consideration of others).
There is nothing in the disputed Domain Name that would alert a web user that the disputed Domain Name is part of a parody and that the associated web page is not affiliated with or approved by the Complainant. Given the lack of any criticism or commentary in the disputed Domain Name and associated web page, it seems more likely than not that the Respondent’s intent is to use the disputed Domain Name as a way to draw consumers to the other website for Respondent’s benefit and not for some fair or legitimate use purpose such as a bona fide parody. Whatever parody Respondent might claim exists remains a mystery and does not justify essentially impersonating Complainant to attract web users to Respondent’s web page.
Complainants’ Counsel: Venable, LLP, United States
Respondents’ Counsel: Self-represented
Case Comment by Zak Muscovitch: The Panel’s decision is a significant contribution to the case law regarding legitimate non-commercial use of a domain name and provides important guidance for subsequent panels in dealing with such cases.
When we last looked at this issue in ICA UDRP Digest Volume 1.16, we were discussing the CitadelAir .com case and we noted that the Dover Downs case had proposed an “impersonation test” which is also reflected in the WIPO Overview 3.0 which states that;
“Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (including typos); even where such a domain name is used in relation to genuine non-commercial free speech panels tend to find that this creates an impermissible risk of user confusion through impersonation.”
You will recall that in Dover Downs the Panel was concerned with finding a “compromise” consensus between two “divergent” views amongst panelists in claimed free speech cases. Under the first view, a respondent’s right to criticize did not necessary extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. Under the second view, a respondent could have a legitimate interest in using a domain name that comprised a trademark for use with a criticism site. The second view was informed by U.S. law which protects non-commercial criticism sites even when the domain name comprises a trademark. In a nutshell and at risk of oversimplification; the first view generally doesn’t permit a respondent to use the complainant’s trademark even for a criticism website, and the second view in contrast, generally does permit a respondent to use the complainant’s trademark for a genuine non-commercial criticism site.
In Dover Downs the Panelist noted that adopting a uniform approach under the UDRP when gauging claimed free speech cases would provide “a more reliable system of law where the parties can anticipate a result under the UDRP that will not depend on the panel assigned”. The “compromise solution” proposed in Dover Downs was “to determine whether the domain name will be perceived by the public as being authorized by or affiliated with the trademark holder” and called this the “impersonation test”.
In the case at hand, the Panelist supported the “impersonation test” as set forth in Dover Downs, however the Panelist nevertheless expressed reservations about adopting the test “too broadly” without looking at other case factors. If adopted too broadly or without looking at other case factors, the Panelist noted that it could “create an undue burden on respondents, particularly where both parties are American and the use of a domain name even identical to a trademark can be lawfully used for a bona fide criticism site as a result of protections under the American First Amendment as applied in some United States federal court decisions”.
The Panel also observed that “a multi-factored approach seems implicitly consistent with part of the underlying rationale expressed in Dover Downs” as the Dover Downs case appropriately noted that “a court in the United States considering whether a finding of initial interest confusion constitutes a violation of the Lanham Act would need to weigh a number of fact-dependent considerations.” The Panelist noted that the “impersonation test” is an “important factor to be considered in cases of free expression” along with the “impersonation test” which perhaps “sets the scene” for the consideration of others factors to be considered. According to the Panelist the following are other factors to be considered:
- the genuineness and nature of the criticism or commentary;
- the possible pretextual nature of the respondent’s website;
- the commercial or non-commercial aspects of the respondent’s website;
- the nature of the domain name itself potentially including any additional terms or plays on words;
- the use of disclaimers; and
- other factors that could inform whether a respondent is using the disputed domain for bona fide non-commercial criticism concerning a complainant or to take advantage of a complainant’s mark in a bad faith or abusive way for the benefit of a respondent.
What then is the difference between the Dover Downs approach and the Everytown approach, if any? If the impersonation test were to be applied in this case, we would seek to determine if MomsDemand .org would be “perceived by the public as being authorized by or affiliated with the trademark holder”. Ostensibly we would be able to make that determination by simply concluding that the disputed domain name comprised a substantial if not dominant part of the Complainant’s trademark and thereby wrongly suggested to the public that the disputed domain name and associated website was authorized by the Complainant. Under the Everytown approach however, we might reach the same initial conclusion but would go on to consider whether the above-noted factors mitigated the public’s likely perception, such that on balance it would be just to deny a transfer because for example, whatever initial confusion might have existed from viewing the disputed domain name in a vacuum was countered by the obviously unauthorized content of the website or by the earnestness of the nature of the criticism.
The Panel in Dover Downs expressly recognized that if the impersonation test were applied in UDRP cases, that a subsequent court reviewing the situation could very well come to a different conclusion based upon a more thorough review of the evidence and the application of United States law. The Panel nevertheless concluded that there are “rational policy reasons” for using the “impersonation test” because it is relatively easy to apply and more difficult factual disputes can be left to a court should the parties subsequently go there. As such, there does appear to be a difference between the Dover Downs and the Everytown approaches; Dover Downs supports a brighter line test because it arguably affords greater consistency and is easier to apply, even at the cost of the respondent possibly having to subsequently go to court to get a review of mitigating factors and other considerations under the First Amendment. Everytown in contrast, supports affording the respondent a greater opportunity to defend its freedom of expression by looking at the particular circumstances of the case, even at the cost of the complainant possibly having to subsequently go to court to get the circumstances reviewed under applicable law.
As the Panelist notes in Everytown, the Dover Downs approach can impose an undue burden on respondents, particularly in cases involving parties based in the United States, when a domain name is used for a bona fide non-commercial criticism site that would otherwise be protected under United States law or comparable freedom of expression statutes worldwide. In effect, Dover Downs errs on the side of the UDRP protecting complainant trademark rights rather than respondent free speech rights by forcing Respondents to go to court if they want to protect those rights.
There may be respondents without the financial resources to undertake a court filing or who may be in a jurisdiction that offers no cause of action for overturning a UDRP, such that their free speech rights would be undermined by a UDRP panel without any effective remedy. Panels should therefore generally be reluctant to suppress free speech through what is acknowledged to be an abbreviated procedure without robust procedural and substantive safeguards that exist in courts.
Everytown implicitly recognizes that by disregarding the circumstances and equities in a particular case, Dover Downs may inadvertently be elevating simplicity and consistency over a more holistic evaluation of a case where crucial free speech rights are at stake. A possible example of this is discussed below in the <hbznews .com> comment.
A just outcome, particularly in the context of the abbreviated and limited nature of the UDRP, would seem to require that a Panel appropriately weigh the proposed enumerated factors in Everytown in order to determine whether the registration and use of the disputed domain name is for a bona fide criticism, which is expressly protected under the “legitimate non-commercial or fair use” safe harbor provisions of Paragraph 4(c)(iii) of the Policy.
In the present case, whether the Dover Downs or the Everytown approach was taken, the results would likely have been the same. Regardless, we commend the Panel for contributing to the evolution of the case law with this thoughtful and important consideration of the appropriate test to apply in claimed freedom of speech cases.
Criticism Website Domain Ordered Transferred
Panelist: Mr. Assen Alexiev
Brief Facts: The US Complainant founded in 2015, is an urban transportation company that allows users to instantly rent electric scooters directly from its mobile app. It is publicly listed on the Nasdaq under the symbol “HLBZ” and operates in 13 cities in the United States and 23 cities in Italy. The Complainant is the owner of a US trademark (registered on November 12, 2019) and Canadian trademark (registered on September 30, 2020) for “HELBIZ” and has operated its website at <helbiz .com> since 2015. The Complainant claims common law trademark rights in the HELBIZ trademark since 2015 in connection with its electric scooter rental business. The disputed Domain Name was registered on June 23, 2019. The Complainant asserts it resolves to a criticism website that is directed at the Complainant and includes the HELBIZ trademark prominently featured on it. The website contains a link at the bottom titled “Disclaimer”, which redirects to another subpage of the website that contains the statement “It’s the unofficial site of Helbiz News”. The Respondent did not file any response.
Held: The relevant part of the disputed Domain Name includes “hbz” as its dominant element and the word “news”. The sequence “hbz” includes the prominent letters of the HELBIZ trademark, which can be recognized in the disputed Domain Name. The disputed Domain Name resolves to a website that contains materials criticizing the Complainant but “contains no proper disclaimer for the lack of relationship with the Complainant”. It therefore appears that the Respondent registered and uses the disputed Domain Name to create an impression that the website at the disputed Domain Name is related to the Complainant and offers news about it, without making them aware of the lack of relationship between the Parties, and then going on to criticize it – i.e., effectively a bait-and-switch. Such use by the Respondent of the disputed Domain Name is not fair, but is misleading. The Panel concludes that in registering the disputed Domain Name, the Respondent attempted to unfairly capitalize on the Complainant’s then unregistered trademark rights.
Complainants’ Counsel: Stokes Lawrence, P.S., United States
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: It is perhaps arguable whether the disputed Domain Name, HBZnews .com is genuinely confusingly similar to the Complainant’s trademark for HELBIZ, but we can give the benefit of the doubt to the Complainant in that regard since there is no question that the Respondent selected the Domain Name because of the Complainant, ostensibly believing that it conveyed the Complainant’s name for the purpose of criticism. Indeed the Panelist notes that in specific instances it may be appropriate to evaluate confusing similarity within a broader context, taking into account the content of the Respondent’s website. On the other hand, perhaps the Respondent selected the Domain Name precisely because it was arguably not identical or confusingly similar. In any event, that is not really the primary concern with this case.
The more significant issue in this case is the Panel’s treatment of what appears to be a genuine criticism website. The Panel expressly recognizes that the Domain Name is used for a genuine criticism website when it states (“The evidence submitted by the Complainant shows that the disputed domain name resolves to a website that contains materials criticizing the Complainant”). However, the Panel noted (consistent with the Dover Downs “impersonation test” discussed above), that the “use of a domain name is not considered fair in circumstances where the domain name falsely suggests an affiliation with the trademark owner”, thereby allowing the Panel to conclude that it the Respondent had registered the Domain Name to create an impression amongst Internet users that the website is related to the Complainant. The Panel nevertheless (consistent with Everytown, discussed above), did take into consideration the Respondent’s use of a disclaimer, but found it wanting. It is questionable (after reviewing the website) whether the disclaimer was truly unsatisfactory, but assuming that it was, is that the end of the inquiry?
There is no real question that a reasonable Internet user visiting the website would realize that the HBZNews website was unauthorized by the Complainant. After all, it obviously contains abject criticism of the Complainant. If this is taken into account, the Respondent would likely have a legitimate interest in the website, particularly under the “second view” referenced in Dover Downs which allows for free speech even when the domain name is identical or confusingly similar. Moreover, under the Everytown approach, the Respondent may very well have a legitimate interest given that the website appears genuine in its attempt at criticism and exercise of free speech, appears non-commercial, includes a disclaimer, and doesn’t use the Complainant’s trademark in the Domain Name. Nevertheless, under the “first view” and now under the “impersonation test” of Dover Downs, none of this is taken into account. It is concerning that in its application, the Dover Downs test may effectively revert to the “first view” which Dover Downs had admirably attempted to overwrite through a proposed compromise solution.
DOH! IP Law Firm, Bartko, Found to Have Engaged in Reverse Domain Name Hijacking
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant is a 40-person law firm established 40 years ago, specializing in complex litigation, transactional real estate, and intellectual property. The Complainant claims use of BARTKO as an unregistered mark since December 1994. The Complainant filed an application for trademark registration with the USPTO on December 3, 2021, for BARTKO claiming first use in commerce “as early as” December 31, 1994. That application is pending at the time of this Decision, along with another application to register <BARTKO .COM> as a standard character mark.
The disputed Domain Name was created on April 21, 1998. The registrar identified the underlying registrant as Jan Bartko, an individual from the United States. The disputed Domain Name resolves to a parking page hosted by the registrar with pay-per-click (“PPC”) advertising links for third parties in diverse fields such as cryptocurrency trading, gas card sales, and postcard mailing services.
Held: The Complainant grounds its Complaint on its asserted common law rights since its trademark application remains pending. The Complainant is a long-established law firm, yet the only evidence it offers for the acquired distinctiveness of its claimed service mark are four recent press releases, three from 2020 and one from 2021 reproduced on its website. The Complaint includes no evidence of sales, advertising, or media recognition using the BARTKO mark. The Complainant’s website also displays signs of the law firm’s recognition within legal industry directories and in rankings of law firms, however, these publications do not refer to the Complainant using the claimed mark BARTKO, but rather use the Complainant’s full name or one of the several other shortened forms more commonly given by the Complainant itself: “BZ”, “BZBM”, “BartkoZankel”, or “Bartko Zankel Bunzel”. On this record, the Panel cannot find that the Complainant has established common law rights in the claimed service mark BARTKO for purposes of establishing standing under the UDRP. Even if the Complainant were able to establish standing, the Complaint would fail on the second and likely third elements. The name of the underlying registrant is “Bartko”, a name corresponding exactly to the Domain Name, which would normally establish the Respondent’s rights or legitimate interests in the Domain Name. It is unlikely that the Respondent acted in bad faith by registering a Domain Name corresponding to his own family name in 1998, purportedly to attack a common law mark of a California law firm that has sought to register such mark decades later.
RDNH: This Complaint is unusual in that it was brought both by and on behalf of a law firm that practices in the field of intellectual property law. The Panel calls attention to the fact that the Complaint was filed with the required certification of accuracy and completeness.
The Respondent did not submit a Response in this proceeding or request a finding of RDNH, but the Panel finds compelling reasons to do so. The cursory presentation of “Factual and Legal Grounds” is devoid of references to the Policy or the WIPO Overview and does not begin to address the difficulties faced by a UDRP complainant with a common law mark against a registrant who acquired a domain name by all appearances identical to his family name nearly a quarter of a century ago.
Once the registrar identified the underlying registrant as the Respondent Jan Bartko, an individual with a family name corresponding to the Domain Name, the Complainant should have amended the Complaint to address the obvious implications for its arguments concerning the Respondent’s prima facie legitimate interests and bad faith. The Complainant amended its Complaint, but only to add Mr. Bartko’s name to the caption. The Amended Complaint continues to say, under the second element, that the registrant’s identity is “unknown” and that the Complainant “is unable to ascertain the true purpose of the registrant’s use in the domain name at issue.”
In any event, the Complainant infers that the Respondent must have meant to sell the Domain Name to the Complainant – despite making no attempt to do so in 24 years. The Complainant offers no evidence concerning the notoriety of its business in 1998 (or any later acquisition of the disputed domain name, if there were any), which would be necessary to persuade a panel that the Respondent really chose the Domain Name in the hope of exploiting the Complainant’s reputation rather than because the Domain Name matched his own.
The Complainant makes incongruous arguments and egregious misstatements. Perhaps the most glaring is this: “Complainant has been prohibited from using its registered trademark as a domain name. Instead, Complainant has been forced to use the domain name, <bzbm .com>, which has made it more difficult for clients, including potential customers, to access the Complainant’s proper web page, and has unlawfully prohibited the Complainant from using its preferred domain name.”
The Panel finds that the Complainant brought the Complaint in bad faith in an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This is a startling case that is reminiscent of the proverb of the shoemaker without shoes. Here we have a complainant which is an actual IP law firm found to have brought a grossly deficient and abusive UDRP Complaint and was accordingly found to have engaged in Reverse Domain Name Hijacking. This highly embarrassing outcome demonstrates at least four things. Firstly, the UDRP should not be taken lightly and complainant counsel, even if an IP law firm, should acquaint itself with the case law before bringing a Complaint and should ensure that its pleading is of the quality that one would expect in a legal proceeding. Secondly, a Panel can and should find RDNH even in the absence of a Response where the circumstances warrant it. Thirdly, proving common law trademark rights arising prior to the domain name registration is crucial in the absence of a registered trademark and must be undertaken with adequate evidence. Fourthly, the reputational damage caused by a finding of RDNH can be severe. Colleagues, judges, panelists, clients and potential clients may learn of an RDNH finding, which can be akin to a finding of negligence, fraud, malfeasance, and the like. For further reading about RDNH, see “The Hidden Perils of Filing a Baseless UDRP Complaint” (Muscovitch and Cohen, CircleID, December 13, 2018).
Complex Disputes are not Clearcut Cases of Cybersquatting
Panelists: Mr. Luca Barbero (Presiding), Mr. Tobias Cohen Jehoram and Mr. Knud Wallberg
Brief Facts: The Complainant, incorporated on February 28, 2008 as part of the Accell Group, is a European market leader in e-bikes, bicycle parts and accessories. The Respondent was one of the shareholders (holding 20% of the shares) and a member of the board of the Complainant from 2008 to October 2015, when the Respondent left the company after executing a settlement agreement with the Complainant. The Complainant is the current owner of several trademark registrations for PROTANIUM, including Danish trademark registration dated January 27, 1995; European Union trademark registration dated September 11, 2008 and UK trademark registration dated September 11, 2008. The disputed Domain Name was registered on April 3, 2006 and is pointed to a website providing information about PROTANIUM products and history, although the last updates date back to 2014. The Respondent submits that the disputed Domain Name has always been (and still is) maintained and paid by himself and not by the Complainant, that he stopped working for the Complainant 6 years and 3 months ago, and that the Complainant owns its own official domain name <protanium .nl>, registered on March 25, 2016 but never used.
Held: The Panel finds that bad faith has not been sufficiently established by the Complainant, since its arguments concerning the rationale behind the registration are not convincing or plausible. Indeed, the Complainant asserts that the Respondent registered the disputed Domain Name in bad faith in 2011, since at that time he was a shareholder and board member of the Complainant and was thus aware of the Complainant’s trademark rights. However, according to the records, the disputed Domain Name was registered on April 3, 2006, whilst the Complainant was incorporated on February 28, 2008. In addition, the Complainant’s European Union and UK trademarks were filed in September 2007, whilst according to the public records, its Danish trademark registration, filed in 1994, have been transferred from prior predecessors in rights to the Complainant in 2008. Therefore, the Panel finds that the Complainant failed to demonstrate that the Respondent registered the disputed Domain Name in bad faith. The Panel notes that, considering the date of registration of the disputed Domain Name and the nature of the dispute between the parties, this is not a clear cybersquatting case to be handled according to the Policy but a complex dispute that should thus be more properly addressed in a civil Court.
Complainants’ Counsel: DLA Piper Nederland N.V., Netherlands
Respondents’ Counsel: Self Represented
Can a Soap Company Stop a Gambling Website?
Panelist: Mr. Igor Motsnyi / Mocni Konsalting doo
Brief Facts: The Complainant’s trademarks are recent and in connection with certain goods including soaps, cosmetics, and dentifrices The Complainant’s Japanese trademark was originally registered in 1977 but was later assigned to the Complainant. The assignment deed was not produced. The disputed Domain Name was initially registered in 2002 however the Complainant asserts that the Respondent registered the disputed Domain Name in 2012 or later, and provides details of previous registrants. The Complainant asserts that the website at the disputed Domain Name provides gambling services and is not a bona fide offering of goods or services particularly because the license of the operator was suspended by the UK Gambling Commission. The French Respondent did not file any response.
Held: The disputed Domain Name was registered before the registration of the Complainant’s trademarks, with the exception of the Japanese trademark owned by a different entity for which the Complainant failed to provide proof of proper assignment and its transfer to the Complainant. There is no relation between the content of the Respondent’s website (gambling) and the activities of the Complainant or its trademarks (soap, etc.), yet the Complainant spent a great deal of its Complaint explaining the bad reputation of Respondent’s online casino and even the bad reputation of previous registrants of the disputed Domain Name. This however, has nothing to do with the nature of this UDRP proceeding. The UDRP is not designed to punish online businesses for their bad behavior per se or for any violations of rules applicable to such online businesses. It is designed to deal with cybersquatting and tackle bad faith registration and use of domain names. The domain name consists of dictionary words “Grand” and “Duke” that are not associated exclusively or primarily with the Complainant’s trademarks and there is no proof of any reputation and popularity of the Complainant’s trademarks. The Panel does not see any evidence in this proceeding that the Respondent intended to take unfair advantage of the Complainant’s trademarks in any way or somehow had the Complainant in mind when he registered the disputed Domain Name.
Complainants’ Counsel: Dr. Daniel Dimov
Respondents’ Counsel: No Response
A Box Maker Gets Boxed In
Panelist: The Honorable Neil Anthony Brown QC
Brief Facts: The Complainant is a supplier of boxes and other packaging supplies, as well as offering the services of printing boxes, custom product labels, among others. The Complainant owns rights in THE BOXMAKER mark through its registration with the USPTO dated October 11, 2016. The disputed Domain Name (which includes an “es” as in “boxes”, in contrast to the Complainant’s mark which is singular, as in “box”), was registered on June 17, 2019 and offers competing goods and services at the resolving website. The Complainant submits that the Respondent’s offer of competing goods and use of a similar address indicate that the Respondent had actual notice of the Complainant’s rights in the THE BOXMAKER mark. The Respondent did not file a Response and previously the Respondent failed to respond to the Complainant’s cease-and-desist letters as well.
Held: The Panel has compared the Respondent’s and the Complainant’s respective websites to see if the Respondent has attempted to pass itself off as the Complainant. It is very apparent from such an examination that this is exactly what the Respondent did and intended to do. The Panel accepts the Complainant’s argument that the Respondent had actual notice of Complainant’s rights in THE BOXMAKER. Having regard to the totality of the evidence, the Panel finds that, in view of the Respondent’s registration of the disputed Domain Name using the THE BOXMAKER mark and in view of the conduct that the Respondent engaged in, when using the disputed Domain Name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainants’ Counsel: Catherine E. Maxson of Davis Wright Tremaine LLP, Washington, USA
Respondents’ Counsel: No Response