NextBite.com, VogueTravels.com, TER.com and more interesting decisions – ICA UDRP Digest – Vol 1.17

Wild, Unsubstantiated Allegations of Fraud Lead to RDNH Ruling

Nextbite Brands, LLC v. Nextbite LLC, Nextbite General Trading Company, WIPO Case No. D2021-3114<nextbite .com> 

Complaint Denied (RDNH)

Panelist: Mr. Nick J. Gardner 

Brief Facts: The Complainant’s main company called Ordermark, Inc. provides hardware and software for restaurants. In 2018, Ordermark expanded as “Ghost Systems, LLC”, to supply menus for restaurants and later changed its name to Nextbite Brands, LLC (“Nextbite”) on February 12, 2019. The Complainant owns the US registered trademark for the word NEXTBITE, registered on April 7, 2020. The disputed Domain Name has a registration date of January 14, 2003 but the Respondent acquired it in 2017. The disputed Domain Name has a website with limited information including terms of use and a login facility. The Respondent claims use of the disputed Domain Name in connection with a bona fide offering of goods or services, based upon registrations in Kuwait. The Respondent also provides evidence as to the attempts made by the Complainant to purchase the disputed Domain Name up to USD 100,000, which were declined. The Complainant overall alleged fraud and forgery against the Respondent as to the company status, phishing, trademark registrations and even the time of acquisition of the disputed Domain Name.

Held: The Complainant’s allegations are extremely serious but the Complainant has failed to establish that the Respondent’s evidence is fraudulent. The evidence overwhelmingly supports the conclusion that the Respondent acquired the disputed Domain Name around July 26, 2017 and that the trademark certificates are genuine. The Respondent commenced a bona fide business which involved registration and use of the disputed Domain Name before any notice of the present dispute and indeed before the Complainant had itself adopted the term NEXTBITE. In those circumstances, the Respondent has rights and legitimate interests in the disputed Domain Name. Besides, once the timing as to domain name registration is appreciated, it becomes clear the Complaint cannot succeed and all other factors become irrelevant.

RDNH: The Complaint overstated the Complainant’s case and also made unsubstantiated allegations of “phishing” and fraud and claimed (incorrectly) that the Respondent’s “LLC” is a non-existent US corporation. Faced with a clearly set out Response, the Complainant then sought to deal with the problems with its case by making allegations of forgery and fraud. These were not sustainable and they should never have been made. To conclude, this Complaint has been brought to harass the Respondent as part of a strategy to acquire the disputed Domain Name, after having failed on earlier attempts to purchase it.

Complainants’ Counsel: Novian & Novian LLP, United States 
Respondents’ Counsel: Al Tamimi & Company, United Arab Emirates 


Legitimate Interests Upheld, Complainant Free to Challenge in the Court of Law

Advance Magazine Publishers Inc. v. Domain Admin, Privacy Protect, LLC (Privacy Protect.org) / Tarun Suri, WIPO Case No. D2021-2923

<voguetravels .com>

Complaint Denied

Panelist: Mr. Edoardo Fano

Brief Facts: The Complainant is operating in the field of publications and owns several trademark registrations for VOGUE, including USPTO registration since 1919 and Indian registration since 2004. The Complainant operates online mainly at <vogue .com> and other ccTLDs including <vogue .in>. The disputed Domain Name has a registration of December 19, 2005, currently resolves to an error page. However, the disputed Domain Name has been previously used for a website offering travel agency services. The active use is also evident from the active social media pages.

Held: The Respondent’s Partnership firm “Vogue Travels” established on September 10, 2005 and has a formal registration as well dated November 10, 2014. The disputed Domain Name has been used in connection with what appears to be a bona fide offering of travel agency services before any notice of the current dispute, promoting the Respondent’s own business without intending to trade off or exploit the Complainant’s trademark, which appears to be well known in a different field. Besides, there is no evidence to suggest that the Respondent registered and used the disputed Domain Name in bad faith within the meaning of the Policy. These proceedings are not court proceedings to decide upon civil disputes or trademark infringement, as the jurisdiction is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”.

Complainants’ Counsel: Rahul Chaudhry & Partners, India
Respondents’ Counsel: Cylaw Solutions, India [Note: Cylaw Solutions is the law firm of Ankur Raheja, the editor of this newsletter.]


 Subsequent Use Cannot Displace the Finding as to Initial Good Faith Registration

SNCF Voyageurs v. Whois Agent, Domain Protection Services, Inc. / Antonio Vaz, WIPO Case No. D2021-2718

<ter .com> 

Complaint Denied

Panelist: Mr. Adam Taylor

Brief Facts: The Complainant, the French national railway company, operates a public transport service in France called “TER”, which carries more than one million travellers daily. The Complainant is the owner of the French trademark since 1989 and well-known in France. The Portuguese Respondent acquired the disputed Domain Name on January 24, 2017 for resale purposes. As of June 21, 2021, the disputed Domain Name resolved to a parking page with the PPC ads related to railway services. The Respondent claims he did not know of the Complainant’s French railway service and that he registered the disputed Domain Name for resale purely based on its dictionary meaning (“to have” in Portuguese) and on its attractiveness as a short domain name likely to be of interest to many people. He also owns other three-letter domain names.

Held: The Complainant has not supplied any evidence indicating that it possesses a significant reputation outside France. On balance, there is no reason to disbelieve the Respondent’s assertion that he was unaware of the Complainant’s French railway service when he registered the disputed Domain Name and that it forms part of a pattern of attractive short domain names that the Respondent registered for potential resale to the world at large with “no particular target”. The Complainant’s case is primarily based on the subsequent use of a long-registered disputed Domain Name as a pay-for-click site that may have directed Internet users to competing links, which is insufficient to displace the finding as to Respondent’s knowledge of the Complainant’s mark at the time of registration of the disputed Domain Name.

Complainants’ Counsel: Cabinet d’avocats Guillemin Flichy SELAS, France
Respondents’ Counsel: self-represented 


Complainant Fails to Prove Common Law Rights in Lapsed Domain Name

Hudson’s Furniture Showroom, Inc. v. Boran Batur, NAF Claim Number: FA2110001971294

<hudsonfurniture .com> 

Complaint Denied

Panelist: Dr. Katalin Szamosi

Brief Facts: The Complainant is a company selling furniture under the “HUDONS’S FURNITURE” mark throughout the central Florida area where it has eighteen stores. It also advertises its goods under the “HUDONS’S FURNITURE” mark at its website located at <hudsonsfurniture .com> and via local newspapers. It claims common law rights based upon continuous use of the mark in connection with the sale of furniture for forty years. The Respondent acquired the disputed Domain Name through an auction on April 2, 2020 for almost $4,500 after Complainant allowed the registration to lapse.

Held: The terms HUDSON & FURNITURE are descriptive and lack distinctiveness and the Complainant has otherwise no registered trademarks comprising the terms. Besides, there is not enough evidence on record as to Complainant’s continuous use of the “HUDONS’S FURNITURE” mark, that may establish common law rights in the mark. Therefore, given the fact that the Complainant is only located in a small geographical area (taking into the global reach of a website) it cannot be established that “HUDONS’S FURNITURE” mark has acquired secondary meaning. The Complainant has not satisfied the first element of the Policy. Hence, no purpose would be served by analysing the other two elements of the Policy.

Complainants’ Counsel: Ava K. Doppelt of Allen, Dyer, Doppelt & Gilchrist, P.A., Florida, USA
Respondents’ Counsel: Rachel Hofstatter of Honigman LLP, District of Columbia, USA


Family Disputes are Out of the Purview of the Policy

Nalli Chinnasami Chetty v. Sambbasivam Nalli, Nalli’s SILKS SARI CENTRE, WIPO Case No. D2021-1831

<nalli .cloud> 

Complaint Denied

Panelist: Ms. Shwetasree Majumder (Presiding), Mr. Pravin Anand, Mr. Vinod K. Agarwal

Brief Facts: The Complainant and the Respondent have common ancestry and both share a common surname NALLI. The Complainant is carrying on a business of manufacturing and marketing goods such as clothing and readymade garments under the mark NALLI. The Complainant has registered the mark NALLI in several countries including India filed on May 27, 1987. The Respondent too has been using the mark NALLI in relation to manufacturing and trading of silk sarees and textile piece goods. The Respondent also has trade mark registrations for figurative mark NALLI’S, filed on September 10, 1993. There are several legal proceedings pending between the Complainant and the Respondent in various forums in India such as trade mark oppositions, appeals, writ petitions including the suit for infringement and passing off before the Bombay High Court, all with respect to the mark NALLI.

Held: There are far wider issues which have been placed before the Panel in the present case. These issues, whether characterized as being of a commercial or a family law nature, are not suited for resolution under the Policy, which is designed to address clear cases of abusive cybersquatting. In these circumstances, the Complaint under the Policy must fail. In reaching that conclusion, the Panel takes no position on the merits of any wider dispute between the Parties. The Complainant remains free to seek remedies in other fora and the Panel notes for completeness that the present finding is confined to the Policy and that it does not seek to influence any such subsequent proceedings, should they be raised.

Complainants’ Counsel: De Penning & De Penning, India
Respondents’ Counsel: CHADHA & CHADHA, Advocates, India


Prima-Facie Case Made Out by the French Complainant for Suspension 

Association Des Centres Distributeurs E. LECLERC (A.C.D. Lec) (FR) v. Withheld for Privacy Purposes, MFSD-URS DISPUTE NO. 450218EE

<sipleclerc .shop> 

Suspension 

Examiner: Mr. Ankur Raheja 

Brief Facts: The Complainant operates one of the largest supermarket / hypermarket chains in France and has an online presence at www.e.leclerc. It owns a number of trademarks and domain names, including the domain name extension ‘.LECLERC’. The Complainant’s European Union trademark LECLERC registered on 26 February 2004. In 2019, the Complainant’s turnover touched 48,20 billion Euros in France, and it employs approximately 133000 people. One of the Complainant’s companies named Societe D’Importation Leclerc (official acronym ‘SIPLEC’) is responsible for international purchasing for the group and has an online presence at www.siplec.leclerc. The disputed Domain Name has a registration date of 30 August 2021.

Held: The Complainant has met its burden by presenting a prima-facie case in this URS matter, while the Respondent has provided no response to the Complaint. The disputed Domain Name is parked with paid links / PPC ADs which mostly fall under the same category of products/services as being offered by the Complainant at its ecommerce store at www.e.leclerc. Besides, the keywords used within the disputed Domain Name, make reference to the Complainant only, as acronym ‘SIPLEC’ and the mark ‘LECLERC’ both are in active use by the Complainant. The Respondent is not offering any bona-fide goods or services upon the disputed Domain Name, rather it is an attempt to disturb the Complainant’s business. Besides, the active MX records also indicate the intentions that the Respondent has and the disputed Domain Name could be easily used for phishing or other similar cybercrime activities.

Complainants’ Counsel: Inlex IP Expertise (FR) 
Respondents’ Counsel: No Response