MedellinLiving .com, NFTpsg .com, Vanguard-Wealth .com and More Interesting Decisions – ICA UDRP Digest – Vol 2.13

Complex Dispute Over Medellin Website

Damijan Tuscana/Medellin Living, LLC v. Brad Hinkelman, NAF Claim Number: FA2202001984731

<MedellinLiving .com>

Panelist: Mr. Steven M. Levy, Esq.

Brief Facts: The Complainants own rights in the MEDELLIN LIVING mark based on registration of the mark with the USPTO on Dec. 4, 2018. The Complainant asserts that the Domain Name is identical to its registered trademark and registered business entity and is being used by the Respondent who has no legal entitlement. The Respondent argues that it purchased the disputed Domain Name from a third party. The Complainant asserts that the trademark attached to the original Complaint covers its business interests in Colombia and the US. The Respondent states that “MedellinLiving .com is a Colombian website focused on English content for readers in Medellin, Colombia, South America”.

Held: The Complainant has not met its burden of establishing a prima facie case in support of its assertion that the Respondent lacks rights and legitimate interests in the disputed Domain Name under the Policy. It is axiomatic that trademark rights are territorial and use of a mark in one country may not implicate the rights of a trademark owner in another country. National trademark laws often permit a party to obtain registered trademark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trademark having seen the use of that name in another jurisdiction. As Complainant’s only asserted trademark registration was issued by the USPTO and Respondent claims that its website is intended for readers in Colombia, the Panel finds that Complainant has not met it burden of establishing, by a preponderance of the evidence, a prima facie case in support of its assertion that Respondent lacks rights and legitimate interests in the disputed domain name under Policy. The Respondent’s “Bill Of Sale” purports to show that the disputed Domain Name, were transferred from a prior owner on February 1, 2016. A review of the Complainant’s USPTO registration reveals that it was filed on March 20, 2018 and issued on December 4, 2018, i.e. after the purported sale. The Complainant further claims that the mark was first used in commerce in the US on December 1, 1983, however, the Complainant has not asserted any such long standing use of its mark nor submitted any evidence thereof. Hence, the Complainant did not meet its burden of showing that the Respondent registered the disputed Domain Name in bad faith as the Respondent’s acquisition of the disputed Domain Name predates the earliest date on which the Complainant submitted proof of its trademark rights.

Complaint Denied

Complainants’ Counsel: Internally Represented

Respondents’ Counsel: Self-represented

 


 

A Spanish Football Club Gets Involved in Crypto and NFTs

Paris Saint-Germain Football v. Lukasz Stefan Wiewiora, WIPO Case No. D2022-0009 (Decision in Spanish)

<nftpsg .com> or <psgnft .com>

Panelist: Mr. Matthew Kennedy

Brief Facts: The Complainant is a professional sports company created in 1970 with headquarters in Paris, France. It won the French soccer championship “Ligue 1” numerous times and reached the final of the UEFA Champions League in 2020. The Complainant owns numerous trademarks for PSG, including French Trademarks since 2009 and EU Trademark registered on August 29, 2018. It also owns several domain names that incorporate the acronym “psg”, including <psg .fr>, registered on May 6, 1999, which the Complainant uses in connection with its website, having a Spanish version as well. The Complainant launched its own cryptocurrency ($PSG) in 2018 and on April 24, 2021 it put its first limited series of non-fungible tokens (“NFTs”) up for auction, which was advertised in the media, including online. The disputed Domain Names were created on June 6, 2021, and both point to a marketplace platform that offers them for sale that do not reflect a sale price currently but previously indicated a price of EUR 1,000 each. The Respondent argues that there are dozens of such market platforms and on the date of registration, there was no trademark either for PSGNFT or NFTPSG. The Respondent alleges that there are more than 100 companies that have managed to register their trademarks, including the acronym PSG in their names, which shows that the Claimant is not the only company that can use these acronyms exclusively.

Held: The Respondent does not explain why it uses the two disputed Domain Names other than to take advantage of the reputation of the Complainant’s brand. The Domain Names in dispute were registered in 2021, several years after the registration of the Complainant’s PSG trademark. The disputed Domain Names incorporate the PSG trademark, adding only the letters “nft” before or after the trademark. The six-letter second level element in each disputed Domain Name does not form a word. Given the facts, just six weeks after it was reported in the media that the Complainant was auctioning off its first limited series NFTs, the Respondent registered the disputed Domain Names. In these circumstances, the Panelist considers that the Complainant’s entry into the NFT market constitutes a plausible explanation for the registration of the disputed Domain Names. For its part, the Respondent alleges that other companies have already registered trademarks that incorporate the acronym PSG but does not demonstrate any link between them or their alleged trademarks and the letters NFT. Although the Respondent mentions hypothetical meanings of the letters “psgnft” and “nftpsg”, it does not claim to have registered the disputed Domain Names based on any of them nor does he provide evidence that would support such a claim.

Transfer 

Complainants’ Counsel: Plasseraud IP, France

Respondents’ Counsel: Self-represented

 


 

 Mark Holders Must Prove their Reputation 

The Vanguard Group, Inc. v. Pieter van Staden / Jobz4Afrika (Pty) Ltd., NAF Claim Number: FA2202001983161

<Vanguard-Wealth .com>

Panelist: Mr. Bart Van Besien

Brief Facts: The Complainant, founded in 1975, offers various finance-related services, including mutual fund, investment and other related services. It is one of the world’s largest investment companies, with more than 30,000,000 investors in about 170 countries and total assets under management of approximately $8.5 trillion. The Complainant owns numerous registrations for the VANGUARD mark and variations thereof in countries around the world, and its rights in the VANGUARD mark date back to at least as early as 1975. The Complainant owns and uses many VANGUARD- formative domain names to advertise, promote, and/or offer Complainant’s products and services including the domain name <vanguard .com>, used since at least as early as 1997. The Complainant claims it also advertises and promotes products and services under its VANGUARD mark online via social media and is having hundreds of thousands of followers. The Complainant alleges that the Registrant’s inclusion of the generic / descriptive term “wealth” heightens the confusing similarity of the Domain Name because the term has an immediate and obvious connection to the Complainant’s investment and financial services, which are offered in connection with the famous VANGUARD mark and the Respondent uses the disputed Domain Name for a website advertising and/or offering directly competing services, which does not constitute a bona fide offering of services or a legitimate non-commercial use. The South African Respondent did not submit any response.

Held: The Complainant’s trademark rights in its VANGUARD mark and variations thereof long predate Respondent’s February 2020 registration of the Domain Name. However, the fact that the Respondent offers services similar to the Complainant does not automatically in itself constitute a lack of bona fide offering of goods or services by the Respondent. The term ‘VANGUARD’ is an existing English word, meaning “advance guard” or “the forefront in any movement, field, activity, or the like”. From the screenshots of the Respondent’s website, it seems that the Respondent is using the term ‘VANGUARD’ in its dictionary meaning, specifically in relation to wealth creation services. It might well be that the Complainant‘s trademarks have a certain fame or status, but it is up to the Complainant to provide evidence thereof. The Panel finds that the Complainant did not provide sufficient argumentation or evidence that the Respondent had knowledge or should have had knowledge of its trademark rights. In particular, the Complainant did not substantiate that its trademarks are “well-known” or “famous”, let alone in South-Africa or otherwise it operates its business in South-Africa.

Complaint Denied

Complainants’ Counsel: Internally Represented

Respondents’ Counsel: No Response

 


 

Proving Facts to Support a Claim for Consolidation

Basic Trademark S.R.L. v. David Klein, Tom Nadel, Annett Mehler, Frank Sommer, Jens Schulze, Markus Wolf, Jens Scholz, Patrick Baier, Julia Eisenhauer, Dieter Theissen, Anja Abend, Christ Bieb, Andreas Rothstein, Annett Schmid, Daniel Kalb, ZhuangLi Feng (庄丽风), Jani Fassbin, Uta Freit, Karol Vog, Andre Mey, zhiling lin, Web Commerce Communications Limited, WIPO Case No. D2021-4255

<Kappa-Chile .com> and 33 other Domain Names

Panelist: Mr. Matthew Kennedy

Brief Facts: The Complainant is part of the BasicNet Group, which designs and markets clothing, footwear and accessories sold under various trademarks, including KAPPA. The Complainant holds an International trademark registration for KAPPA in classes 9, 16, 18, 25 and 28, registered on October 13, 2003. The Complainant operates <kappa .com> and <kappa-usa .com>, where it offers its products for sale. The Complaint initiates disputes in relation to 22 nominally different domain name registrants regarding 34 disputed Domain Names. The Complainant alleges that all the websites associated with the disputed Domain Names are identical and “mirror copies” of its official website at <kappa-usa .com> and are under the same control and also points out other commonalities in the disputed Domain Names. The Complainant requests consolidation of the disputes against the 22 nominally different Domain Name registrants pursuant to UDRP Rules. The Respondents did not submit any response.

Procedural Issue: The Panel notes that 11 disputed Domain Names are registered by the same domain name holder, while 21 other disputed Domain Names are registered in the names of 19 individuals all ostensibly resident in Germany. All these 32 disputed Domain Names were registered within the relatively short period of six months and they all follow the pattern of combining “kappa” with a geographical term and, in some cases, another word. All these 32 disputed Domain Names resolve to websites in different languages displaying similar product images from the Complainant’s online store and they all have the same layout. In these circumstances, the Panel is persuaded that these 32 disputed Domain Names or the associated websites are under common control and consolidation is permitted for 32 of the domain names.

However, the Panel does not find a sufficient basis in the record to infer that the remaining two disputed Domain Names <discountkappa .com> and <kappaclearance .com> are under common control, as they were registered over two years earlier, by registrants in China, and they do not follow the pattern of including a geographical term. Each is also registered with a different Registrar from those with which the other disputed Domain Names are registered. In these circumstances, the Panel is not satisfied that, on the balance of probabilities, these two disputed Domain Names are under common control with the other 32 Domain Names.

Held: The disputed Domain Names were registered in 2021; many years after the Complainant obtained its trademark registration for KAPPA. The disputed Domain Names all wholly incorporate the KAPPA mark and combine it with country names and abbreviations and, in some cases, another word. The disputed Domain Names all resolve to websites that display the KAPPA mark and product images from the Complainant’s website and offer for sale what is purported to be the Complainant’s KAPPA brand clothing. The websites do not display any disclaimer clarifying that there is no relationship between the Respondent and the Complainant. On the contrary, the websites prominently display the Complainant’s mark and logo and give the impression that they are operated by, or affiliated with, the Complainant. Regardless of whether the clothing offered for sale is counterfeit or not, these facts show that the Respondent’s use of the disputed Domain Names is not in connection with a bona fide offering of goods or services within the terms of the Policy. The Panel finds that, by using the disputed Domain Names, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s KAPPA mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the clothing offered for sale on those websites, within the terms of the Policy. Therefore, the Panel finds that the disputed Domain Names (with two exceptions) have been registered and are being used in bad faith.

Transfer (Denied in part)

Complainants’ Counsel: Studio Sindico e Associate, Italy

Respondents’ Counsel: No Response

 


  

What Happens if a Respondent has a Trademark?

NAOS v. Kalithasan Sevasamy, CAC Case No. 104256

<AdvanceBioderma .com>

Panelist: Mr. Dietrich Beier  

Brief Facts: The French Complainant is a major player in skincare using three brands; Bioderma, Institut Esthederm and Etat Pur. It was founded 40 years ago and ranks among the top 10 independent beauty companies. The products branded with BIODERMA are sold in over 90 countries. The disputed Domain Name was registered on March 5, 2018 and resolves to a website showing information about an US company, Advanced Bioderma with a contact address in Boca Raton, Florida, US. The Respondent is a shareholder and secretary of Advanced Bioderma Corporation founded in 2017. This Company is the proprietor of a European Union figurative Trademark, ADVANCED BIODERMA (fig.) in class 35, which was filed on December 5, 2018, however following an opposition proceeding, all goods in class 3 and certain services in class 35 were removed whereas the opposed trademark application which is now registered, still enjoys protection for other remaining services in class 35. The Complainant succeeded in a Forum ADR proceeding (FA2201001978937) against the Respondent with regard to a domain name <advancedbioderma .us>, wherein the Respondent did not submit a response.

Procedural Issue: The initial complaint was directed also against another Domain Name, <advancedbiodermacorporation .com> for which another registrant was indicated in the registry. Since the Panel could not find sufficient circumstances that both Domain Names are owned by the same entity or under the same control, the cases were not consolidated but split and only the present one was sent to the panel for decision.

Held: The Respondent is a shareholder with the company name, Advanced Bioderma Corporation which owns a valid European Union Trademark for ADVANCED BIODERMA. The color and the figurative element within the mark do not change the impression of the word “BIODERMA” as also the Complainant indicated in the complaint. The UDRP does not require a specific trademark right for the same goods or services as the Complainant has rights in or for which he is using his rights. The valid European trademark and eventually also the company name of the US company, Advanced Bioderma Corporation in which the Respondent owns shares, provides rights within the meaning of the Policy. In addition, the Respondent demonstrates that his company has used the disputed Domain Name for inter alia, manufacturing services for quite some time. The Panel concludes that the Respondent has rights or legitimate interests in the disputed Domain Name. In view of the above it is therefore not necessary any more to evaluate whether the disputed domain name was registered in bad faith and even used in bad faith.

Complaint Denied

Complainants’ Counsel: NAMESHIELD S.A.S.

Respondents’ Counsel: Self-represented