Welcome to this week’s UDRP Digest (2.16), summarizing the most intriguing cases of the past week, with commentary from Zak Muscovitch, ICA General Counsel. Read about:
‣ Respondent is Known by the Domain Name Despite Complainant Trademarks (hispirit .org.au)
‣ No Bona Fide Interest in Domain Name Because Corresponds to Prior Registered Trademark, Despite Use for Website (CloudCoverSolutions .com and ccover .co *with commentary)
‣ Serious Issues like Phishing Require Speedy Resolution of Complaints (northssave .com)
‣ Refiled Complaint Succeeds After Language Issue Addressed (zalo .xyz)
‣ Respondent Attempts a Crazy Game (CrazyGamesLLC .com)
Enjoy !
Respondent is Known by the Domain Name Despite Complainant Trademarks
<hispirit .org.au>
Panelist: Mr. John Swinson
Brief Facts: The Complainant is a church established in 1955, whose principal place of business is in Seattle, United States. The Complainant owns United States and Australian registered trademarks for CHURCH OF HIGHER SPIRITUALISM, filed on October 16, 2019, with a claimed “date of first use in commerce” of November 15, 1980. The disputed Domain Name was created on March 24, 1998 and at present does not resolve to an active website but is appears to be used for email addresses. The website at the disputed domain name was recently moved to <hispirit .asn.au>. The website at that domain name appears to contain the content that was previously located on the website at the disputed domain name. The name of the Respondent in the WHOIS record is “Church of Higher Spiritualism”.
The Complainant asserts that Respondent is one of its former high-ranking members named Bruce Lowndes who was excommunicated from the church in 1996 due to his allegedly fraudulent activities and that he is the true and beneficial owner of the disputed Domain Name, even though his name does not appear in the WhoIs records. There is currently a pending dispute between Lowndes and the Complainant in the United States District Court for the Western District of Washington but the disputed Domain Name is not a subject of that litigation.
The Respondent submited a short Response and states that he moved the website that was at the disputed Domain Name to <hispirit .asn.au>. The moved website at the time of this decision displays a heading ‘Higher Spiritualism Incorporated’, with text “Sunkara invites you to participate in the Discussion and Commentary concerning the Teachings we Study. This is your opportunity to ask questions of the Founder of Higher Spiritualism… Please send comments or questions to SUNKARA […]@ hispirit .org.au”.
Held: The Complainant appears to accept that the Respondent is known by the disputed Domain Name but asserts that such use by the Respondent is unlawful. The Panel reviewed the Respondent’s website that is currently located at <hispirit .asn.au>, using “High Spiritualism” as its name on this website. This appears to confirm that the Respondent is commonly known by “High Spiritualism” and potentially by “hispirit” in terms of the Policy. The crux of the Complainant’s submission on the second element is however, that the use by the Respondent of “Higher Spiritualism” is not lawful or legitimate. In the circumstances of this dispute, this is an issue that is unsuitable for the Panel to decide. In addition, the disputed Domain Name was registered over 20 years prior to the Complainant obtaining any registered trademark rights. There is little evidence of reputation that the Complainant may have in CHURCH OF HIGHER SPIRITUALISM prior to 2019 (in Australia or elsewhere) when the Complainant filed for trademark registrations. Also there is no evidence of reputation that the Complainant may have in “hispirit”.
This is not a typical cybersquatting case of the type which the Policy was designed to address. The Panel notes that a similar conclusion was reached in the recent case of Aquarian Foundation, Inc. v. Domain Privacy / Richard Stewart / Sri Sunkara Sankacharya, aka Rev. Bruce Kimberley Lowndes, aka KIM, WIPO Case No. D2021-4176.
Complaint Denied
Complainants’ Counsel: Fasthoff Law Firm PLLC, United States
Respondents’ Counsel: Self-represented
No Bona Fide Interest in Domain Name Because Corresponds to Prior Registered Trademark, Despite Use for Website
Cloudcover IP, LLC v. Richard Simpson / CloudCover USA LLC, NAF Claim Number: FA2202001985811
<CloudCoverSolutions .com> and <ccover .co>
Panelist: Mr. Debrett G. Lyons
Brief Facts: The Complainant provides digital risk management services under the trademark CLOUDCOVER, which was registered with the USPTO on October 25, 2011. The disputed <ccover .co> Domain Name was registered on April 27, 2020 and the disputed <cloudcoversolutions .com> Domain Name was registered on July 15, 2021. The <cloudcoversolutions .com> Domain Name resolves to a website offering services related to those provided by the Complainant under the trademark, while the <ccover .co> Domain Name redirects internet users to the website at <cloudcoversolutions .com>.
The website resolving from the disputed Domain Name is well developed and states that the focus of the business “is to execute process-driven technology solutions for unique security challenges through concept development, systems integration, and advisory services, supporting decision-makers with solutions to the most complex security requirements.” The Respondent company has six employees and a not insignificant turnover. The Registrar confirmed that the Respondent is “Richard Simpson” and that the registrant organization is “CloudCover USA LLC”.
Held: The Panel finds that the <ccover .co> domain name is neither identical nor confusingly similar to the trademark and for that reason the Complaint fails in respect of that particular Domain Name. There is no evidence that the Respondent is known by the name, “CloudCover Solutions” [emphasis added]. There is ample authority in UDRP decisions for the proposition that a Domain Name, the use of which would infringe the Complainant’s registered trademark, is not considered bona fide, or at least not likely to give rise to a right or legitimate interest in the disputed Domain Name.
The term, “cloudcover”, is used not only by the Parties but seemingly by several other US businesses. That said, it is only the Complainant who holds a USPTO registration for the term as a trademark and it is not obvious to the Panel that the trademark has any commonly understood meaning in the IT security industry. The term may allude to the services provided by the Complainant but that is the character of many successful trademarks.
On balance, the Panel finds that the Respondent does not have a bona fide interest in the disputed Domain Name as it consists primarily of a distinctive term already registered with the USPTO from a time well before the establishment of the Respondent’s business.
The remaining issue might be the Respondent’s intention in using the domain name, but it is generally agreed that the required intent is satisfied if the outcome of the use is a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the resolving website. Accordingly, the <cloudcoversolutions .com> Domain Name is transferred to the Complainant.
Transfer (Partially Denied)
Complainants’ Counsel: Michael A. Bondi of Moss & Barnett, P.A., Minnesota, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch and Digest Editor, Ankur Raheja: This case is troubling because the UDRP has been employed to address what appears to be a trademark infringement case rather than a clear case of cybersquatting which the Policy is intended for and equipped to address.
In Cloudcover IP, the Whois information disclosed that the Respondent organization was “CloudCover USA LLC”. The associated website is acknowledged by the Panelist to be “well developed”. The Respondent is noted as having “six employees” with “not insignificant turnover”. And the Complainant appears to acknowledge that the Respondent has been in business since 2020.
Nevertheless, the Panelist found that the Respondent was “not known” by the Domain Name. The Panelist stated that because the Domain Name contained the word “solutions” – and there was no evidence that the Respondent was known by that precise moniker – that the Respondent was “not known” by the Domain Name, despite the aforesaid facts. It does seem like this is a particularly burdensome and unusual approach to impose upon the Respondent, when as the Panelist expressly notes, the word “solutions” is descriptive, and typically such descriptive add-on terms are not taken into account when comparing a disputed Domain Name with a trademark.
Perhaps more troublesome however, is the Panelist’s conclusion that despite what was an apparent case of alleged trademark infringement without any typical indicia of cybersquatting, it was nevertheless appropriate to adjudicate it under the UDRP. It is well known that the UDRP was intended to address only clear cases of cybersquatting, often directed at famous and well-known marks, rather than any kind of intellectual property dispute arising from the registration of a domain name (See for example, the WIPO Final Report, April 30, 1999). It is particularly well-established that trademark infringement disputes are generally inappropriate for adjudication by the UDRP.
In this particular case, the facts all appear to point to what is at most a case of alleged trademark infringement, rather than a clear case of cybersquatting. As held in Edelgard & Horst Liebl v. Drug-Aware Ltd., NAF Claim Number: FA1106001395617 (August 8, 2011), UDRP “proceedings must be considered summary proceedings that were never intended to serve as a vehicle for adjudication of traditional trademark disputes”. A similar conclusion was reached in Intel Corporation v. Intelsitio Mexico, WIPO Case No. D2012-0718 (June 21, 2012):
“It should be remembered that the Policy is of narrow compass and is intended to deal with cases of abusive cybersquatting. The present case strikes the Panel as a trademark infringement or unfair competition dispute rather than a complaint of abusive cybersquatting. As such, the proper forum is a court of competent jurisdiction.”
It was this properly restrained and circumspect approach that a different Panelist employed in one of the other cases which we summarized this week, namely the above <hispirit .org.au> case. There the Panelist concluded that it was “not a typical cybersquatting case of the type which the Policy was designed to address” and proceeded to dismiss the Complaint, deferring to the courts which are the appropriate forum for deciding cases that are “much more than a clear case of abusive cybersquatting”. You can read more about this issue in “UDRP Complainants should stop misusing the UDRP for business disputes and trademark infringement disputes” (Muscovitch, DNW.com, July 26, 2018). When it comes to trademark infringement disputes in particular, Panelists must recognize that trademark infringement proceedings often involve defenses that are not even available to Respondents in a UDRP proceeding, for example laches and the validity and scope of the Complainant’s trademark. This is yet another reason why Panelists should not adjudicate such disputes.
The other concerning aspect of this decision is the Panelist’s finding of bad faith registration and use in the absence of any apparent evidence of intentional targeting of the Complainant. The Panelist states that, “the only live issue might be Respondents intention in using the domain name, but it is generally agreed that the required intent is satisfied if the outcome of the use is a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the resolving website”. While this is the standard in trademark infringement disputes, it is not the standard in cybersquatting disputes under the UDRP. The essence of cybersquatting is the intentional targeting of the Complainant’s mark (See for example, Ancien Restaurant Chartier v. Tucows.com Co, D2008-0272; “It is in general essential to a finding of bad faith registration and use under the Policy, that a Respondent must have targeted Complainant or its trade mark, or at least had Complainant in mind, when it registered the disputed domain name”).
There was no evidence of intentional targeting in this case and the Panelist sidestepped this issue by invoking what amounts to an objective “constructive notice” standard, i.e. that ‘intention isn’t necessary when a Complainant has a prior trademark registration and the end result is likely confusion’. Such a standard has been widely rejected by prior Panels. For example, in The Way International Inc. v. Diamond Peters, WIPO D2003-0264, the Panel concluded that there was no place for the concept under the Policy:
As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner. If the registrant is unaware of the existence of the trade mark owner, how can he sensibly be regarded as having any bad faith intentions directed at the complainant? If the existence of a trade mark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly.
As noted in Domain Name Arbitration (Gerald M. Levine, Legal Corner Press, LLC, 2nd ed.) at page 250, later Panels have agreed with this view. In Advanced Drivers v. MDNH Inc., NAF Claim No. FA0509000567038, the Panel stated:
[I]f Complainant’s position were adopted, it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously- registered trademark, since constructive notice could be found in every such case. Such a result would be inconsistent with both the letter and the spirit of the policy, which requires actual bad faith.That is essentially the danger of the Panel’s wrongful invocation of this inapplicable standard and rejected approach in this case. Perhaps if the case had been defended it would have had a different outcome. Nevertheless, even in the absence of a filed Response, this case raises some troubling issues arising from a departure from well-established interpretation and application of the Policy.
Serious Issues like Phishing Require Speedy Resolution of Complaints
Northern Savings Credit Union v. Jennifer Lewis, CIIDRC Case No. 17134-UDRP
<northssave .com>
Panelist: Mr. Zak Muscovitch*
Brief Facts: The Complainant, a community-based and member-owned credit union, since 1940 is providing financial services to thousands in Canada. It registered its Domain Name <northsave .com> in 1996 and uses it as its official website. The Complainant is the registrant of the trademark, WWW. NORTHSAVE .COM, registered with the Canadian Intellectual Property Office (“CIPO”) on August 27, 2002. The Complainant alleges that the disputed Domain Name is a “lookalike” domain name which is being used to send fraudulent phishing emails to the Complainant’s employees, members, stakeholders and others since the Domain Name was registered by the Respondent on January 6, 2022. The Complainant provides three examples of “phishing” emails which it states have impersonated the Complainant’s staff in an attempt to trick recipients into clicking on a fraudulent link and to enter the recipient’s own credentials. The Respondent did not file any response.
Held: The Respondent selected the disputed Domain Name for a phishing scheme targeting a financial institution specifically because the Domain Name looks very similar to the Complainant’s trademark and the official domain name, thereby hoping that recipients of the phishing email would not notice the small difference in the disputed Domain Name and be deceived into providing credentials and/or confidential information to the Respondent. It is well established that a fraudulent phishing scheme involving a purposefully confusingly similar domain name cannot give rise to rights or a legitimate interest by a registrant. It is obviously not a coincidence that the Respondent selected a Domain Name that corresponds nearly identically to the Complainant’s trademarks and by extension, to the Complainant’s website and associated email addresses. The Complainant obviously purposefully registered the disputed Domain Name in bad faith to capitalize upon the deception that it would facilitate. The Panelist therefore finds that the Respondent was certainly aware of the Complainant and specifically targeted the Complainant’s trademarks when registering and using the disputed Domain Name in an unlawful manner.
This is a very serious instance of abusive domain name registration, as financial institutions in particular, cannot tolerate any form of fraud or abuse particularly when the fraud is intentionally misrepresented as emanating from the Complainant itself. The Panelist also notes that in such cases of serious and potentially ongoing fraudulent activity by a Respondent in clear contravention of the Policy, it is incumbent upon the Dispute Resolution Provider and the Panelist to act as quickly as reasonably possible to provide the requested remedy to the Complainant, particularly where other steps to stem the fraudulent activity have failed.
Transfer
Complainants’ Counsel: Kristél Kriel of MLT Aikins LLP
Respondents’ Counsel: No Response
*Zak Muscovitch is ICA General Counsel and this is his maiden UDRP decision.
Refiled Complaint Succeeds After Language Issue Addressed
Công ty Cổ Phần VNG v. Do Minh Thong, NAF Claim Number: FA2203001987815
<zalo .xyz>
Panelist: The Honorable Neil Anthony Brown QC
Procedural Issue: This is a re-filed Complaint arising out of a previously decided case (NAF Claim Number: FA2112001978275) from March 9, 2022. There, the Panelist Mr. Nicholas J.T. Smith had rejected the Complaint since the Complainant had not provided sufficient evidence to justify proceeding in English and therefore denied the Complaint. The Complainant has now refiled its Complaint and it says in effect that since it cannot have the proceeding conducted in English, it should be conducted in Vietnamese, as that is the language of the registration agreement. The Panel determines that the Vietnamese language requirement is satisfied through the Vietnamese language Complaint and Commencement Notification that have been filed and served. The Panel also finds that because the Respondent did not file any Response, the remainder of the proceeding may be conducted in the English language since it is fair to both the parties.
Transfer
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: No Response
Respondent Attempts a Crazy Game
Crazy Games LLC v. Justin Ligeri, NAF Claim Number: FA2203001988773
<CrazyGamesLLC .com>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The Complainant offers a variety of board games for sale on the Amazon platform. It owns rights in the trademark CRAZY GAMES based on registration of the mark with the USPTO dated Nov. 9, 2021. The disputed Domain Name was registered on January 25, 2022 and the public WHOIS record identifies the Respondent as “Privacy service provided by Withheld for Privacy ehf”. The resolving website for the disputed Domain Name displays the Complainant’s mark, product images and is offering Complainant’s goods for sale. The Complainant asserts that the Respondent had actual knowledge of the Complainant’s rights in the CRAZY GAMES mark and he is not using the disputed Domain Name for any bona fide offering of goods or services and otherwise makes no legitimate noncommercial or fair use thereof as the Respondent uses the Domain Name to impersonate the Complainant and offer Complainant’s goods for sale. The Respondent did not file any response.
Held: The use of a disputed Domain Name, whereby the Respondent seeks to pass itself off as the Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy. The Panel notes that the Respondent’s website contains no notice or mention of its lack of a relationship with the Complainant. This removes it from the realm of a potentially legitimate distributorship under the familiar four-step test set out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)
The Panel agrees that the display of the Complainant’s CRAZY GAMES products on the website at the disputed Domain Name provides substantial evidence that the Respondent had actual knowledge of the mark at the time it registered the disputed Domain Name. In addition, the Complainant’s screenshots show that the Respondent’s website invites potential customers to input their full names and addresses during the checkout process. This evidence indicates that the website seeks to pass itself off as originating with the Complainant and, the Respondent did not participate in this case, therefore, the Panel finds bad faith disruption of the Complainant’s business under Policy. Moreover, the Respondent utilized a privacy shield to protect WHOIS in a manner which materially adversely affects or obscures the facts of this proceeding. As such, it finds further support for its conclusion that the Respondent has registered and used the disputed Domain Name in bad faith under the Policy.
Transfer
Complainants’ Counsel: J. Mark Dickison of LAWSON & WEITZEN, LLP, Massachusetts, USA
Respondents’ Counsel: No Response