Noteworthy Cases including Kididoc.com, Reassure.ie, Chagall.com, and Three Case Commentaries by ICA General Counsel, Zak Muscovitch – ICA UDRP Digest – Vol 2.9

Should a Fanciful Domain Name be Presumed Registered in Bad Faith?

Société Librairie Fernand Nathan-Fernand Nathan & Cie v. Domain Administrator, DomainMarket.com, WIPO Case No. D2022-0016

<kididoc.com>

Panelist: Mr. Edoardo Fano

This case highlights an important and evolving issue arising from the UDRP. Generally, made-up words are considered highly distinctive. Typically, a respondent who registers a made-up word when there is only a single pre-existing user of the corresponding trademark, would be deemed to have registered it in bad faith because the respondent could only have registered it with the Complainant in mind, or ought to have been aware that there was a Complainant who had exclusive trademark rights. Nevertheless, made-up words can sometimes have “semantic resonance”. In this case, the Respondent claimed that it independently came up with the Domain Name and that the combination of “kidi” and “doc” form a short creative brand that is well-suited for adoption by a third party in a field totally unrelated to the Complainant, such as  a paediatric doctor.  Further, the Respondent had registered many other “doc” domain names such as <canidoc .com>, <glassdoc .com>, <motodoc .com>, <blogdoc .com> and <edudoc .com>. Branding agencies engage in this kind of creative name development all the time.

One could argue that in the case of a famous made-up word, such as PEPSI, for example, there cannot be any legitimate interest or good faith registration or use. But in the case of a non-famous brand in a very limited niche in a particular country, is there room for others to adopt the identical brand in connection with another field entirely and in a different country? Trademark law does not generally afford international exclusivity across all classes of goods and services.  Yet under the UDRP, Panels often infer that a highly distinctive domain name must have been registered to target the currently exclusive brand owner. This approach, however, can sometimes ignore the well-established limitations of trademark rights and incorrectly infer that a made-up name that has semantic resonance and which corresponds to naming conventions using variations of common terms can only have been registered to target an existing brand owner.

Nevertheless, for a respondent who registers such a domain name, it is incumbent on him or her to satisfactorily explain its rationale for registering the domain name. Where a credible explanation is provided, a Panel may determine that the Respondent is genuinely in the name creation business and that there is potential value to third parties beyond the Complainant and that the asking price has nothing to do with the Complainant. There ought to be no hard and fast presumption that a domain name was registered in bad faith solely because it corresponds to a single existing brand, or at least there should be a rebuttable presumption that may be overcome by a credible explanation for the selection of the domain name, supported by sufficient evidence. Rather, panels need to gauge the circumstances of each case. Otherwise Panels may be affording trademark rights to Complainants which exceed that which they enjoy outside of the UDRP and may be inadvertently disregarding the legitimacy of the independent creation of fanciful domain names developed according to sound naming principles.

Transfer

Complainants’ Counsel: Internally Represented

Respondents’ Counsel: Brian H. Leventhal, United States.

Comment by ICA General Counsel, Zak Muscovitch:

This case highlights an important and evolving issue arising from the UDRP. Generally, made-up words are considered highly distinctive. Typically, a respondent who registers a made-up word when there is only a single pre-existing user of the corresponding trademark, would be deemed to have registered it in bad faith because the respondent could only have registered it with the Complainant in mind, or ought to have been aware that there was a Complainant who had exclusive trademark rights. Nevertheless, made-up words can sometimes have “semantic resonance”. In this case, the Respondent claimed that it independently came up with the Domain Name and that the combination of “kidi” and “doc” form a short creative brand that is well-suited for adoption by a third party in a field totally unrelated to the Complainant, such as  a paediatric doctor.  Further, the Respondent had registered many other “doc” domain names such as <canidoc .com>, <glassdoc .com>, <motodoc .com>, <blogdoc .com> and <edudoc .com>. Branding agencies engage in this kind of creative name development all the time.

One could argue that in the case of a famous made-up word, such as PEPSI, for example, there cannot be any legitimate interest or good faith registration or use. But in the case of a non-famous brand in a very limited niche in a particular country, is there room for others to adopt the identical brand in connection with another field entirely and in a different country? Trademark law does not generally afford international exclusivity across all classes of goods and services.  Yet under the UDRP, Panels often infer that a highly distinctive domain name must have been registered to target the currently exclusive brand owner. This approach, however, can sometimes ignore the well-established limitations of trademark rights and incorrectly infer that a made-up name that has semantic resonance and which corresponds to naming conventions using variations of common terms can only have been registered to target an existing brand owner.

Nevertheless, for a respondent who registers such a domain name, it is incumbent on him or her to satisfactorily explain its rationale for registering the domain name. Where a credible explanation is provided, a Panel may determine that the Respondent is genuinely in the name creation business and that there is potential value to third parties beyond the Complainant and that the asking price has nothing to do with the Complainant. There ought to be no hard and fast presumption that a domain name was registered in bad faith solely because it corresponds to a single existing brand, or at least there should be a rebuttable presumption that may be overcome by a credible explanation for the selection of the domain name, supported by sufficient evidence. Rather, panels need to gauge the circumstances of each case. Otherwise Panels may be affording trademark rights to Complainants which exceed that which they enjoy outside of the UDRP and may be inadvertently disregarding the legitimacy of the independent creation of fanciful domain names developed according to sound naming principles.

 

 

 

Did Respondent Branding Agency Register Dictionary Word Domain Because of Complainant?

Reassure Midco Limited v. John Foy, WIPO Case No. DIE2021-0005 

<reassure.ie>

Panelist: Mr. Adam Taylor

Brief Facts: The Complainant provides financial services, including pensions, life insurance and investments under the name “ReAssure” since 2011. The group was one of the largest life insurance groups in the UK in 2017 and has an online presence at <reassure .co.uk>. The Complainant owns a number of figurative trademarks including European Union trademark filed in 2011, registered on March 6, 2012, in class 36. The disputed Domain Name was registered on May 2, 2021 and as of October 26, 2021 resolves to a registrar parking page with the pay-per-click links related to pension and insurance. The Complaint asserts that there is no evidence of an alternative legitimate explanation for the Respondent’s registration of the disputed Domain Name other than awareness of the Complainant. The Respondent is in the branding industry.  He claims that he registered the disputed Domain Name legitimately and in good faith as a brand consultant in connection with a possible brand for a new home monitoring product that is due to be launched in Ireland. The Respondent contends that at the same time, the Respondent registered three other domain names based on descriptive terms and generated words, including <guarantee.ie>. Beforehand, the Registrant had searched each name, including “reassure”, in the Irish trademark database under classes 38 and 45, however the Complainant’s mark did not appear because its trademarks are not registered in these categories.

Held: The Response does indeed put forward a plausible good faith rationale, namely that the disputed Domain Name reflected one of four potential brand names that were selected for a new home monitoring product, unrelated to the Complainant’s industry. The Panel considers that the Respondent’s contemporaneous registration of <guarantee .ie> is particularly significant in that it reinforces the Respondent’s assertion that he selected the latter based on its generic meaning and not by reference to the Complainant’s mark. The Panel does not consider that knowledge of the Complainant is a significant factor in the circumstances of this case – where the disputed Domain Name reflects a dictionary term and the Respondent has provided credible evidence that he registered it for use in connection with an industry unrelated to the Complainant. Although the Complainant undoubtedly enjoys a substantial reputation in the UK, it has not provided any clear evidence as to the extent of its trading activity under the mark in the Republic of Ireland. The Respondent has provided compelling evidence of a good faith motive for registration of the disputed Domain Name, hence the Panel does not consider that the registrar’s PPC page should be treated as a bad faith use of the disputed Domain Name on the part of the Respondent.

Complaint Denied

Complainants’ Counsel: Keltie LLP, United Kingdom

Respondents’ Counsel: Self-represented

 

 

 

Is Chagall a Hebrew Word in addition to being the name of a Famous Painter?

Association pour la défense et la promotion de l’œuvre de Marc Chagall dite “Comite Marc Chagall” v. Miri & Isaac Shepher, WIPO Case No. D2021-4216 

<chagall.com>

Panelist: Mr. Adam Taylor

Brief Facts: The Complainant was incorporated by the estate of a well-known painter Marc Chagall (1887-1985). His paintings have been sold for millions of euros/dollars and are exhibited in famous museums worldwide. The Complainant owns various registered trademarks for CHAGALL including International trademark No. 505527 registered on September 15, 1986. The Respondent, a domain name investor, registered the disputed Domain Name on March 6, 2000. As of February 10, 2005, the disputed Domain Name was offered for sale, indicating a price range from USD $5,000 to USD $5 million. In August, 2021, the Complainant approached the Respondent to acquire the disputed Domain Name, to which the Respondent invited the Complainant to come up with an offer. On November 26, 2021, the Complainant sent a cease and desist letter to the Respondent. The Respondent argues during the proceedings that he was born in Israel and is a Hebrew speaker, that he selected the disputed Domain Name, not by reference to the name of the painter or the Complainant’s trademarks, but purely because it comprised an English transliteration of a generic Hebrew word with a sexual innuendo, namely the Hebrew word for “concubine”.

Held: On the face of it, the Respondent’s version of events may not seem convincing, but it is notable that the Respondent also owns the domain name <anak.com>, which is a transliteration of the Hebrew word for “giant”. Given that the disputed Domain Name forms part of an albeit small pattern of Hebrew-transliteration domain names, it seems at least conceivable that the Respondent did indeed select the disputed Domain Name based on its phonetic identity with a Hebrew word. The Panel is not in a position to value the disputed Domain Name, but aware that the values of domain names can be enhanced if they consist of short single words and also, as asserted by the Respondent, if they are sex-related. There was no unsolicited offer by the Respondent as it was the Complainant who approached in the first place.

This is a limited proceeding where the Panel does not have the benefit of the tools available in litigation such as disclosure of documents and examination of witnesses. All that the Panel can do is make its best assessment of the Respondent’s motive based on the evidence placed before it. Having carefully considered all the arguments raised by the parties, the Panel has found this to be a finely balanced case. Some factors favour the Complainant; others favour the Respondent. Ultimately, the Panel’s conclusion is that, while the Respondent’s explanation is not fully compelling, it falls into the category of “just about plausible”, and the Panel does not consider that it has been presented with enough supporting evidence to cause it to conclude otherwise. Bearing in mind that the Complainant is required to prove its case on the “balance of probabilities”, the Panel does not feel that there is sufficient evidence before it that would justify the Panel in dismissing the Respondent’s explanation and depriving him of the disputed Domain Name that he has owned for some 20 years.

Complaint Denied

Complainants’ Counsel: Cabinet Lambert & Félix Associés, France

Respondents’ Counsel: Krane & Smith APC, United States

Comment by ICA General Counsel, Zak Muscovitch:

This case highlights the challenge frequently faced by Panels, of whether or not to make a determination on the merits in an abbreviated type of proceeding with a limited evidentiary record. The UDRP was designed for and intended to address clear-cut cases of cybersquatting. Where the evidentiary record is lacking, where the issues are complex, or where, as here, the Panel found that the facts in each party’s favour were finely balanced, a Panel need not feel compelled to render a decision on the merits. Indeed, where a Panel believes that it is not in a position to reject a plausible explanation with the limited tools available in a UDRP proceeding, the prudent move may be to say so and the parties can then litigate the matter in a more appropriate forum.

 

 

 

Did the Complainant Engage in Reverse Domain Name Hijacking?

Bert & Wetta Sales, Inc. v. Ron Seibold, NAF Claim Number: FA2201001980161

<USgreens .com>

Panelist: Mr. Douglas M. Isenberg

Brief Facts: The Complainant states that it markets green food ingredients on a wholesale basis to companies who seek to use those ingredients in their finished product. The Complainant operates a website at <usgreens.net> and claims ownership to a US trademark registration dated October 15, 2019 showing first use in commerce May 1, 2014. The disputed Domain Name was created on August 7, 2001, and redirects to an active website at <kansaswheatgrass.com> that since 2017, purports to offer “quality green ingredients” and “the finest cereal grass products for your customers and for the whole planet”.

Held: The Complainant is not the owner of the trademark relied upon, namely a 2019 US trademark for USGREENS and design, in connection with processed vegetables etc., however the Complainant states that it owns the Complainant. The trademark disclaims USGREENS apart from the mark. Where the trademark registration entirely disclaims the textual elements, panels may find that the Complainant’s trademark registration is insufficient by itself to support standing under the UDRP. The disputed Domain Name was created on August 7, 2001, while the USGREENS trademark was not registered as a trademark until 2019 and claims use in commerce only as of 2014.  Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.

Complaint Denied

Complainants’ Counsel: Weston Bert, Kansas, USA

Respondents’ Counsel: Stephen C. McArthur of The McArthur Law Firm, PC, California, USA

Comment by ICA General Counsel, Zak Muscovitch:  

When should a Panelist consider Reverse Domain Name Hijacking? UDRP Rule 15 states that, “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Some have argued that the UDRP requires a Panelist to assess whether RDNH occurred, whereas others contend that it is up to the Panel in its discretion. On a plain reading of Rule 15, it is mandatory that a Panel declare RDNH (the word, “shall”), but only if the Panel determines that it is appropriate (the word, “If”). As such, it is ultimately discretionary and up to the Panel to consider having regard to the particular circumstances of each case.

Nevertheless, some cases call out for at least a consideration of RDNH, whether or not it is ultimately found by the Panel in its discretion. In this particular case, the Complainant was not the actual registrant of the trademark, no licensing agreement was provided, the relied upon trademark registration disclaimed the entirety of the mark other than the design element, and the Respondent’s use of the arguably descriptive term predated the Complainant’s claimed date of first use in commerce. In such circumstances, one cannot help but wonder what led the expert Panelist to not consider RDNH, or to at least not include in the decision the reasons why the Panelist did not find RDNH. There may have been good reason based upon the record that is not available to us, however the facts that are available surely merit an express consideration of the issue. Although there is no sanction for RDNH other than the censure itself, RDNH plays an important role in the UDRP by deterring frivolous or abusive Complaints and by extracting a reputational price, albeit modest and not monetary, from a party that brings such a case.

 

 

 

Strange Alleged Theft Case Difficult to Follow

Daodao Holding LLC v. niezhenxiang, NAF Claim Number: FA2201001979244

<dao .com>

Panelist: Mr. Fernando Triana, Esq.

Brief Facts: The Complainant alleges that it initially established a B2C e-commerce website at <daodaoly .com> for the Chinese market. In December 2010, the Complainant alleges that it purchased the disputed Domain Name through a broker and changed its website address to the disputed Domain Name. The Complainant alleges that a former employee stole the Domain Name. The Respondent alleges that the former owner of the Domain Name transferred the Domain Name to the Respondent in connection with a business relationship. The Respondent alleges that the actual former owner of the Domain Name has no relation to the Complainant and that the Complainant is attempting to hijack the Domain Name. Both parties accuse each other of forged notarized documents. The Complainant’s DAO e-commerce website was closed due to losses in early 2013. The Complainant nevertheless claims common law trademark rights in the DAO mark through the continuous use and the promotion of the mark since January of 2011.

Held: The Complainant claims to have common law rights over the trademark DAO.  Yet the limited evidence submitted to support its common law rights does not include the duration and nature of use, sales, advertising, consumer surveys, or consumer awareness. Therefore, the Panel concludes that the Complainant has not demonstrated rights in the trademark DAO for purposes of the Policy. Most of Complainant’s arguments are unsubstantiated. While Respondent fought Complainant’s contentions with notarized or legal documents, Complainant merely attacked the notarization with arguments without referring to the content of the document or proving its assertions by any other means. The Panel did not find any evidence supporting the registration or use in bad faith.

Complaint Denied

Complainants’ Counsel: May Ruoying Mei of Daodao Holding LLC, Delaware

Respondents’ Counsel: Jeffrey J. McMahan, Vermont, USA