The Challenge of Applying the Passive Holding Doctrine in the Absence of a Response by Nat Cohen.
While most disputes are undefended, that usually poses little problem for a Panel as the Disputed Domain Name is often put to an obvious bad faith use or it is often the typosquat of a famous, distinctive mark. Read here
We hope you will enjoy this edition of the Digest (vol. 3.35), as we review these noteworthy recent decisions, with commentary from experts. (We invite guest commenters to contact us.)
‣ Limited Panelist Research Results in Dismissal (terravita .shop *with commentary)
‣ Plausibility is the Key to Passive Holding Cases (altalaval .org *with commentary)
‣ Respondent Credibly Shows Registration for Perceived Value Rather Than to Target Complainant (kvasir .com *with commentary)
‣ Dealing With Notice in War Torn Regions / Panel Has “No Serious Doubt” That Respondent Registered and Used Domains in Bad Faith (starstablefree .com *with commentary)
‣ IP Illustration v IPR Illustration – Descriptive Use of the Domain Name (ipr-illustration .com)
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
The ICA will attend the Domain Days Dubai meeting Nov 1-2, 2023. This is one-of-a-kind event in the MENA region’s domain industry. The conference brings together a diverse crowd of Domain Investors, Registrars, Registries, Monetization & Traffic, Web 3.0 Domains, Hosting & Cloud Providers, SaaS providers, and Industry Enthusiasts.
Kamila Sekiewicz, Zak Muscovitch, and Ankur Raheja will be representing the ICA. We’d love to meet with any members of our UDRP Digest community attending, so please get in touch if you have plans to be there.
Limited Panelist Research Results in Dismissal
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant is a French producer of food supplements which it has sold for fifteen years under the TERRAVITA and TERRANATURA brands, notably through its website at <terravita .fr>. The Complainant owns various trade mark registrations for its TERRAVITA mark, including International Trade Mark Registration designating, amongst others, Switzerland, (dated March 10, 2021). The disputed Domain Name was registered on June 20, 2023, and resolves to a parking page of the e-commerce platform Shopify. The Complainant alleges that the Respondent deliberately registered the disputed Domain Name identical to the Complainant’s well-known and registered TERRAVITA mark with the intention to divert Internet users from the Complainant’s website to the Respondent’s, rendering the Respondent’s registration and use of the Domain Name in bad faith under the doctrine of passive holding. The Respondent did not file a response.
Held: The disputed Domain Name resolves to a parked Shopify page and has apparently not been used for an active website. The Complainant therefore relies upon the doctrine of passive holding. The factors that panels typically consider under the doctrine of passive holding are set out in section 3.3 of the WIPO Overview. Factor (ii) is in the Complainant’s favour. The rest are not, with factor (iii) not being applicable. Further the Panel’s own limited Internet searches for “terravita” reveal that there are many third parties that use TERRAVITA as a trade mark, including within the Complainant’s own supplements and related products industry. This is so globally and in the Respondent’s country of Switzerland specifically. In fact, when the Panel searched for “terravita”, unrestricted to any particular region, the Complainant did not feature on the first few pages of search results at all. If such searches are limited to pages published in Switzerland, where the Respondent is ostensibly based, none of the results featured on the first few pages of search results relates to the Complainant.
Based on the Panel’s trade mark searches limited to European trade mark registries, there are also many trade mark registrations consisting of or incorporating “terravita” in the names of parties ostensibly unconnected to the Complainant, including in classes relevant to the Complainant’s business. The Panel is not therefore convinced that the evidence in the record establishes, on the balance of probabilities, the Respondent’s targeting of the Complainant. The Domain Name resolves to a generic parking page offered by the e-commerce platform Shopify. There is nothing on that page, or otherwise in the record, that indicates any targeting of the Complainant specifically. Without more, the Respondent’s website could just as conceivably be targeted at any of the other “terravita” offerings listed above as it could at the Complainant, or at none of them for that matter. In the circumstances, factors (i) and (iv) of the passive holding doctrine are against the Complainant. Given that the onus is on the Complainant to prove its case on balance of probabilities regardless of the Respondent’s default, the Panel finds that there is insufficient evidence of bad faith targeting of the Complainant.
Complainants’ Counsel: Coblence Avocats, France
Respondents’ Counsel: No Response
Case Comment by ICA Director, Nat Cohen:
The Challenge of Applying the Passive Holding Doctrine in the Absence of a Response
While most disputes are undefended, that usually poses little problem for a Panel as the Disputed Domain Name is often put to an obvious bad faith use or it is often the typosquat of a famous, distinctive mark.
Yet when a Complainant asserts the passive holding doctrine and there is no response, as in the Terravita .shop dispute, a Panel is placed in a potentially difficult situation. The Disputed Domain Name is not put to any use that could guide the Panel and the asserted mark is not highly distinctive, such that in the absence of a response the Panel may not have enough information to make a well-informed decision. The Complainant is unlikely to include evidence that rebuts its allegations. The Panel’s own base of knowledge may be insufficient to assess the plausibility of the Complainant’s allegations. What is a Panel to do under these circumstances?
The passive holding doctrine, as set forth initially in the seminal and oft-cited Telstra decision from 2000, enumerates several factors to be assessed in determining whether “non-use” can be considered “bad faith use” for the purpose of the Policy. As noted by the Panel in the Terravita .shop dispute, section 3.3 of the WIPO Overview describes the factors as:
(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
Factor (iv) is particularly challenging to evaluate in the absence of a response. Demonstrating the “implausibility of any good faith use to which the domain name may be put” requires proving a negative. A competent response would include evidence of widespread third-party use of the mark, if such evidence existed, to undercut both the Complainant’s allegations that its mark is distinctive and that there is no plausible good faith use to which the domain name may be put.
Yet when there is no response, how is a panel to know whether the mark is subject to extensive third-party use? And in the absence of knowledge of the prevalence of third-party use of the mark, how is a panel able to fulfill its responsibility under the passive holding doctrine to assess “the implausibility of any good faith use”?
As I argued in my comment on the fbsolution .info dispute, the correct approach cannot be that plausibility is determined by “a Panel searching its own mind”. In other words, when a complainant makes such an allegation but does not provide adequate evidentiary support regarding third-party use, or the lack thereof, and in the absence of a response, it is not sufficient for a panel to determine the matter by saying, in effect, since I personally am not aware of third-party usage of this term, my own lack of awareness is sufficient evidence to make a finding that there is no plausible good faith use for the disputed domain name.
I believe that there are four better alternatives available to a Panel when it seeks to assess the implausibility of a good faith use of the Disputed Domain Name…
Plausibility is the Key to Passive Holding Cases
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant’s business was originally founded in Sweden in 1883 and adopted the name Alfa-Laval AB in 1963. The Complainant holds a very large number of trademarks registered around the world for ALFA LAVAL with the earliest Swedish registration dating from 1897. The US mark was filed in 1962 and registered on February 4, 1964; a registration in Canada dates from 1996 and amongst others, a registration in the European Union, was filed in 2003 and formally registered on March 3, 2005. The disputed Domain Name was registered on March 15, 2023, and currently does not resolve to an active website. The Complainant contends that having regard to the renown of its trademark ALFA LAVAL around the world, the Complainant has exclusive rights in the trademark and the Respondent could not legitimately conduct activities under the highly similar name “Alta Laval” without infringing the Complainant’s rights.
The Respondent, an IT services provider (based in Quebec, Canada) in an informal Response, claimed to have registered the disputed Domain Name for a client that it identifies as ALTA Laval, but does not provide evidence in support. According to the Respondent, the client is a non-profit organisation that provides transportation services for handicapped individuals. Laval is one of the 17 administrative regions of Quebec, Canada and the third most populous city in the province of Quebec.
Held: A simple Internet search conducted by the Panel of “Alta Laval” does return numerous results for the Complainant’s business. However, it also features a result in the right-hand “featured” pane for Association Lavalloise pour le Transport Adapté (ALTA) <altalaval .ca>, described as a non-profit organization in Laval, Canada, which was founded in 1987 to defend the rights and promote the interests of handicapped users of transport. The website also invites users to contact the organization through the email address “[ ]@altalaval-ass .org”. It is at least theoretically possible that this is all a ruse and that the Respondent is not associated with the Quebec Laval organization and it would certainly have been prudent for the self-represented Respondent to provide some correspondence or other documentary corroboration of the relationship with that organisation.
On the other hand, there are objectively verifiable facts that there is a place in Quebec called Laval and there is a non-profit organization in Laval, Canada that uses both the acronym ALTA and, at least in domain names, “Alta Laval”. Moreover, contrary to the Complainant’s submission, it is plausible that such an organization could use its name and acronyms in connection with its services without infringing the Complainant’s rights. In these circumstances, there does not appear to be a sufficient basis to disregard the Respondent’s claims that it registered the disputed Domain Name for an organisation which appears to have rights or legitimate interest in using the disputed Domain Name.
The Panel finds that on the balance of probabilities and having regard to all the known circumstances the Complainant has not established that the Respondent does not have rights or a legitimate interest in the disputed domain name insofar as the Respondent appears to have registered the disputed domain name on behalf of the Laval Canada organisation.
Complainants’ Counsel: Advokatbyrån Gulliksson AB, Sweden
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
This was the 23rd UDRP Complaint brought by the Complainant and the first one that it lost. It was also the first Complaint that was defended, although as the Panelist pointed out, it was not defended very well.
As a Canadian, Laval is very well known to me as a Canadian city but I have never heard of the Complainant. As such, it is credible to me that someone would register a domain name incorporating the well-known city of Laval in a domain name in combination with another term, as was the case here. Nevertheless, having been involved in domain name disputes for 24 years, it would also not be a surprise to me if the Respondent’s explanation was a “ruse”, as the Panelist noted was possible, particularly given the absence of supporting documentary evidence.
The Panelist in this case could have decided that in the absence of evidence of use of the Domain Name and in the absence of evidence supporting the Respondent’s claim that he registered it for a Laval-based nonprofit organisation, that the Domain Name should be transferred. Instead, the Panelist determined that contrary to the Complainant’s allegation that “the Respondent could not legitimately conduct activities under the highly similar name “Alta Laval” without infringing the Complainant’s rights”, it was indeed plausible given the existence of an identically named organisation in Laval which already used the .CA version of the domain name.
Plausibility is the key. When a disputed Domain Name is unused, Panels may rely upon the Telstra test as thoroughly discussed above by Nat Cohen. But as he points out, the Telstra test requires that there be ‘no plausible’ use of the Domain Name given the fame of the Complainant. In this case, the Panel invoked this key principle and found that the circumstances indeed disclosed a plausible explanation for the registration of the disputed Domain Name and thereby properly dismissed the Complaint.
The requirement to find no plausibility in such ‘passive holding’ cases must not be overlooked by Panelists and it is comforting to see that the Panelist did not in this case. It is also important to put the “plausibility” requirement into the context of the overall burden of proof in the UDRP. “Plausibility” is defined in the Cambridge Dictionary “the quality of seeming likely to be true or possible to believe”. Plausibility therefore, need not be more likely than not – it just needs to be possible to believe or have some reasonable degree of believability. Contrast this with the common understanding of the civil standard of “balance of probabilities” which is understood to mean that something is “more likely than not to have occurred”. This standard really equates to 50.1% likelihood, yet that is a much higher standard than plausibility which means that something just needs to be reasonably believable. What does it take to be “reasonably believable”? Certainly not as high a likelihood as 50.1%, but probably not as low as 1%.
In any event, if a Complainant is required to prove that there is no “plausible” explanation or use for a passively held domain name, then invoking the plain civil standard of 50.1% or “balance of probabilities”, i.e. ‘more likely than not’, is clearly erroneous since a denial of a Complaint merely requires at most, a “plausible” or reasonably believable prospect that there is a non-infringing or good faith use of the Domain Name, even if it is not necessarily “more likely than not” to be the case.
As a result, we can say that the UDRP does not uniformly involve the civil standard of “balance of probabilities” – or “more likely than not”. This understanding of the UDRP is also consistent with the originating mandate of the UDRP which is to decide only “clear cut” or obvious cases of cybersquatting rather than affording a remedy in all cases, including even close or unclear cases.
Respondent Credibly Shows Registration for Perceived Value Rather Than to Target Complainant
Panelist: Mr. Edoardo Fano
Brief Facts: The Complainant is a Danish company operating in the field of biofuel technology, and operates online at <kvasirtechnologies .com>. It owns the trademark registrations for KVASIR in the European Union (applied for on June 17, 2021, and registered on October 22, 2021) and the United States (applied for on October 26, 2021, and registered on July 11, 2023). The Complainant attempted to buy the disputed Domain Name in an auction at DropCatch .com in July 2022, but could not succeed. The disputed Domain Name was registered on July 25, 2022, by the Respondent, after winning it as the highest bidder for USD $7,175 on July 28, 2022. The disputed Domain Name was previously resolved to a webpage in which it was offered for sale for USD $124,700. The Respondent is engaged in acquiring and developing or reselling valuable and brandable domain names.
The Complainant alleges that the Respondent has registered and is using the disputed Domain Name in bad faith since the Respondent is trying to sell the disputed Domain Name to the highest bidder because of the value that other parties have brought to the name KVASIR. The Respondent contends that in Norse mythology “Kvasir” is a poet, often regarded as the wisest of all men and also as a God, and that the Complainant is not the only company having trademark rights on the term “Kvasir”, but instead there are several trademark registrations all over the world, as well as several domain name registrations. The Respondent further contends that its business is to acquire the most valuable and brandable domain names, as it did in the past by registering other names corresponding to Gods and mythological figures, and therefore has the right to register the disputed Domain Name for its potential, moreover since selling a common, dictionary word domain name is recognised to be a legitimate, good faith use of a domain name.
Held: The Panel considers that the Respondent selected and acquired the disputed Domain Name because of its perceived value, rather than because it corresponds to the Complainant’s trademark, and at the same time the Panel considers it unlikely that the Respondent was aware of the Complainant’s trademark at the time it selected and acquired the disputed Domain Name. As stated in section 2.1 of the WIPO Overview 3.0, “[…] Over the course of many UDRP cases, panels have acknowledged further grounds which, while not codified in the UDRP as such, would establish respondent rights or legitimate interests in a domain name. The Panel does not consider that the right to register such dictionary words is unlimited since, by knowing of a complainant’s trademark, and registering a domain name that copies the trademark, or by using it to target the trademark owner, the registrant of that domain name would put at risk its claim to have acquired rights or legitimate interests in the domain name. However, in the present case, the Panel deems that the above factors are absent as there is no evidence suggesting that the Respondent has targeted the Complainant.
Although the Panel’s finding above would be sufficient to enable a decision to be reached in relation to this Complaint, the Panel also finds that there is no evidence that the disputed Domain Name has been registered and used in bad faith. As stated in section 3.2.2 of the WIPO Overview 3.0 “[…] On the other hand, where the complainant’s mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name, if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark.” Therefore, the Panel finds that the Respondent did not register the disputed Domain Name to target the Complainant and its trademark. In view of the above, the offer for the sale of the disputed Domain Name to the highest bidder is not evidence of the Respondent’s bad faith registration and use of the disputed Domain Name.
RDNH: The Panel also bears in mind that the Complainant in this case is represented by Counsel and, therefore, it should be held to a higher standard in terms of WIPO Overview 3.0, section 4.16. As detailed in the above analysis of the second and third elements, the Panel finds that the Complainant and its Counsel have contravened the above RDNH bases, because of their knowledge of a lack of the Respondent’s bad faith directed towards the Complainant, making the assertion that the Respondent must have been targeting the Complainant highly unlikely. Finally, as it has been stated in previous decisions, a complainant is at risk of an RDNH declaration when its attempt to try and buy a domain name is not successful, and it tries to obtain it by using, or rather “abusing”, the UDRP.
Complaint Denied (RDNH)
Complainants’ Counsel: Chas. Hude A/S, Denmark
Respondents’ Counsel: Lewis & Lin, LLC, United States
Case Comment by ICA General Counsel, Zak Muscovitch:
This case should be bookmarked. Panelist Eduardo Fano provides an excellent explanation of the principles governing the registration of domain names by investors. Let me try to list some of the principles that he employs:
- Did the Respondent select the disputed Domain Name for its “perceived value” rather than because it corresponds to the Complainant’s trademark?
- Is there evidence that the Respondent “targeted” the Complainant?
- Aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can provide rights and legitimate interest under the Policy, even without a corresponding trademark and without use other than for resale.
- If a Respondent can credibly show that the Complainant’s mark has a limited reputation and is not known or accessible in the Respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark.
- The offer for sale of a disputed domain name to the highest bidder is not necessarily as evidence of the Respondent’s bad faith registration and use of a disputed domain name.
- Where a Complainant, especially where represented by counsel, assert that the Respondent “must” have been targeting the Complainant when they know are ought to have known that there was no bad faith directed towards the Complainant, it can be an abuse of the proceeding, i.e. RDNH, particularly when combined with having first trying to purchase the Domain Name.
The above list is not exhaustive of all of the principles involved in such cases but provides a set of clear considerations that when properly employed, can help in reaching a just and proper decision under the Policy.
Dealing With Notice in War Torn Regions / Panel Has “No Serious Doubt” That Respondent Registered and Used Domains in Bad Faith
<starstablefree .com , <starstableplay .com>, <starstableonlinedl .com>, <star-stable-online .com>
Panelist: Mr. Andrew Lothian
Brief Facts: The Complainant, founded in 2010, is the developer of a popular online adventure game named “Star Stable Online”, featuring horses and mysteries. In 2017, the game was reported to have 12 million registered users and has a substantial following on social media. In addition to the Complainant’s STAR STABLE registered trademark, the Complainant owns a domain name portfolio containing domain names such as <starstable .com> (2007), <starstableonline .net> (2013), <starstableonline .org> (2013), etc. The disputed Domain Names <starstablefree .com> and <starstableplay .com> were registered on August 2, 2021, while the disputed Domain Names <starstableonlinedl .com> and <star‑stable‑online .com> were registered on December 30, 2022.
The websites associated with each of the disputed Domain Names suggest that it is a fan site of Complainant’s game, reproduce the Complainant’s logo and invite the user to download the Complainant’s game for free. The look and feel of the websites associated with (1) <starstablefree .com> and <starstableonlinedl .com>, and (2) <starstableplay .com> and <star‑stable‑online .com> are markedly similar. However, the links on the home pages of <starstablefree .com> and <starstableplay .com> were previously redirected to a website featuring numerous games to which users are redirected via affiliate links. The Complainant issued a cease-and-desist letter to the Respondent on October 4, 2021, in respect of <starstablefree .com> and <starstableplay .com> but received no reply.
The Complainant alleges that given the fame of the Complainant’s mark, the name “Star Stable” in the disputed Domain Names is bound to lead users to infer that the disputed Domain Names have an association or nexus with the Complainant, resulting in confusion and deception. The disputed Domain Names <starstablefree .com> and <starstableplay .com> each engaged in a previous commercial use through the publication of links that redirected users to a site featuring multiple games with affiliate links. The other two disputed Domain Names, <starstableonlinedl .com> and <star‑stable‑online .com>, have configured MX servers.
Procedural Issue: The Respondent’s mailing address is stated to be in Kharkiv, Ukraine, which is subject to an international conflict at the date of this decision. This may impact case notification, and it is therefore necessary to consider whether the proceeding should continue.
However, the Panel has been provided with no reason that would suggest that the Respondent is unaware of the proceeding or has no control over the disputed Domain Name. It is noted that two of the disputed Domain Names were registered prior to the current conflict, the second two were registered (and therefore must necessarily have been configured by the Respondent) after the commencement of the conflict. In all cases, the Respondent supplied the same contact address to the Registrar, such that it is reasonable to infer that the Respondent is capable of receiving communications there. Moreover, neither the written notice of the Complaint nor the advice of delivery thereof was returned to the Czech Arbitration Court. Moreover, the Complainant has adopted the mutual jurisdiction of the Courts of the location of the principal office of the concerned registrar, which is outside the conflict zone affecting the Respondent’s stated contact address.
Finally, for reasons which are set out in this decision, the Panel has no serious doubt (albeit in the absence of any Response) that the Respondent registered and has used the disputed Domain Names in bad faith and with the intention of unfairly targeting the Complainant’s goodwill in its trademark. The Panel concludes that the Parties have been given a fair opportunity to present their case, and in order that the administrative proceeding takes place with due expedition the Panel will proceed to a decision.
Held: The Panel finds taking Complainant’s assertions into account, it is sufficient to constitute the requisite prima facie case that the Respondent has no rights and legitimate interests in the disputed Domain Names (see, for example, section 2.1 of the WIPO Overview 3.0). The Panel further finds that the disputed Domain Names have been registered and are being used in bad faith. The Complainant has established a substantial following and considerable popularity for its online game corresponding to its STAR STABLE trademark. Given the use of such mark in each of the disputed Domain Names, the reference to the game on the associated websites, and the use of the Complainant’s logo on the associated websites, it is clear that the disputed Domain Names were registered in the knowledge of the Complainant’s mark and with intent to target the same. Although the Respondent claims on the websites associated with the disputed Domain Names that they are fan sites, the Panel has already found that this is unlikely to be the case. Two of the disputed Domain Names have been used by the Respondent for a commercial purpose and the Panel is unconvinced that the remaining two, which are broadly similar in appearance, could be considered to be operating genuine non-commercial fan sites. Furthermore, the Respondent did not make any relevant assertions despite having received an opportunity to do so.
In the case of all of the disputed Domain Names, no attempt is made to make it clear by way of a prominent disclaimer that the associated websites are not official sites of the Complainant. The composition of the disputed Domain Names, with the Complainant’s mark as the first and dominant part, and without any use of distinguishing expressions, such as “fan”, “fans”, “unofficial” or similar, indicate an affiliation between the Parties when there is none. The use of the Complainant’s logo on the associated websites reinforces the impression that they are official and suggests that they provide a legitimate method of access to the Complainant’s game when they do not. In the Panel’s opinion, a reasonable person who visits the Respondent’s website would be likely to be misled in relation to the source, sponsorship, affiliation or endorsement of such website and the products purportedly made available therein. In all of these circumstances, the Panel finds that the disputed Domain Names have been registered and are being used in bad faith.
Complainants’ Counsel: Silka AB
Respondents’ Counsel: No Response
Case Comment by Digest Editor in Chief, Ankur Raheja: It is a typical cybersquatting matter, wherein the Respondent tried to mislead that it is operating a Fan site, while the Internet users were either redirected to other commercial websites or MX servers were configured for some of the disputed Domain Names.
Importantly the Panelist in terms of Paragraph 10 of the Rules takes note of the fact that the Respondent is from Ukraine, which is subject to international conflict. As a result, the Panelist takes into account various factors to determine if the Ukrainian registrant has been duly notified of these proceedings and is in a position to prefer an appeal if required, given that the mutual jurisdiction chosen is that of the USA. In fact, the Respondent had registered two domain names in 2021, the remaining post the conflict in December 2022 and put up developed websites on the later registered Domain Names as well, evidencing that he is active online. Moreover, the Panelist was convinced that the Respondent registered and used the disputed Domain Names in bad faith and with the intention of unfairly targeting the Complainant’s goodwill in its trademark. Hence, the Panel decided to continue with these proceedings and ordered the transfer of the disputed Domain Names.
The standards that the Panelist applied in this case were also noteworthy. The Panelist stated that he had “no serious doubt” that the Domain Names were registered and used in bad faith. The Panelist also stated that “it is clear” that the disputed Domain Names were registered with intent to target the Complainant. This is the appropriate standard and is consistent with the fundamental purpose and limited mandate of the UDRP, namely to transfer domain names only in “clear cut” cases of cybersquatting, and this appears to be precisely such a case.
IP Illustration v IPR Illustration – Descriptive Use of the Domain Name
Panelist: Mr. Héctor Ariel Manoff
Brief Facts: The Complainant operates in the field of patent/trademark illustration and has used <ipillustration .com> since 2004. The Complainant operates under the names IP Illustration, IPI, and Intellectual Property Illustration and has owned the IP ILLUSTRATION trademark since 2016. The Respondent operates the website at <ipr-illustration .com> as of June 2016, which is used for advertising patent services but started its activities as an Intellectual Property law firm (a full-service patent illustration and drafting company) in 2007. In addition, in 2015 Respondent had registered the domain name <ip-illustration .com> but later registered the disputed Domain Name, when the Complainant communicated its reservations on the first domain name. The Complainant alleges that the Respondent, a direct competitor to IP Illustration, is using the disputed Domain Name because they can no longer use <ip-illustration .com> per a prior agreement and seeks to cause confusion and profit from the Complainant’s positive reputation.
The Respondent contends that the Clients are very educated and will not be led into confusion since the mark is a combination of 2 commonly used and generic terms “IP” and “ILLUSTRATION”, while the disputed Domain Name contains a “hyphen (-)” which separates 2 commonly used terms “IPR” and “ILLUSTRATION” along with an additional letter ‘R’. Moreover, the trademark rights on IP ILLUSTRATION cannot be claimed because of the generic terms which refer to the class of products or services it identifies. The Respondent further contends that IPR Illustration has provided bona fide services since 2010 and has been using <ipr-illustration .com> domain name openly, exclusively, uninterruptedly and at a very extensive level and that he is making legitimate fair use of the domain name, without any mala-fide intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. The Respondent clearly mentions all the contact details and details about its US company “KA Filing LLC” to avoid a likelihood of confusion. Moreover, there are various similar domain names using commonly used terms such as “IP” and “ILLUSTRATION” and providing similar services.
Held: The Respondent has provided bona fide services (in relation to patent illustration, drafting and other IP services) to patent law firms, companies, and individual inventors since 2010. Thus, the Panel concludes that the Respondent is at least making fair use of the disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Moreover, Respondents proved to have registered the domain <ip-illustration .com> in 2015 (which was identical to the Complainant´s trademark), before the Complaint’s trademark registration. Thus this Panel does not find clearly evidence that the cited domain name and the disputed one (<ipr-illustration .com>) had been registered in reference to the Complainant’s trademark. It seems possible that the coincidence had been due to the generic terms: IP (Intellectual Property) and Illustration. This Panel agrees with Respondent that the references to all the contact details and details about its US company “KA Filing LLC” on its website at <ipr-illustration .com>, show good faith and the intention to avoid any confusion or likelihood of confusion. On the evidence available, the Panel concludes that the Complainant has failed to prove that the Respondent has intended to trade off the goodwill and reputation of the Complainant by registering and using the Domain Name as it has. For the reasons set forth above, the Panel finds that Respondent has rights and legitimate interests in the Domain Name.
Even though the Domain Name was registered after the Complainant’s trademark was granted, there is no evidence of bad faith. It cannot be proved based on the fact that the trademark is formed by two generic terms which describe the services for which the trademark is used. The ground cited by the Complainant that Respondent would be using <ipr-illustration .com> only because they can no longer use <ip-illustration .com> per a prior agreement has not been proved. The cited agreement was not submitted and this fact would be out of the Policy. The reason why Respondent first (and prior to the Complainant’s trademark registration) registered <ip-illustration .com> and then decided to register and start using a new one and <ipr-illustration .com> is not relevant for this case. However, the registration date of <ip-illustration .com> before the granting of the Complainant’s trademark proves that there was no bad faith by the Respondent. Since the Panel has concluded that Respondent has rights or legitimate interests in the <ipr-illustration .com> domain name, the Panel finds that Respondent did not register or use the disputed Domain Name in bad faith.
Complainants’ Counsel: David Hassan, Texas, USA
Respondents’ Counsel: Self-represented