We hope you will enjoy this edition of the Digest (Vol. 3.15), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch.
‣ Covetous Complainant Attempts to Withdraw and Brings Lawsuit (fieldd .com *with commentary)
‣ No Evidence That Respondent Was Aware of Complainant Despite Moroccan “CDM” Trademark (cdmbank .com *with commentary)
‣ Panel Cannot Find Bad Faith Due to Deficient Complaint (skilshare .com *with commentary)
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Panel Affirms Respondent’s Right to Register Dictionary Word Domain, Despite Pre-existing Trademark
Panelists: Ms. Lynda M. Braun (Presiding), Ms. Gabriela Kennedy and Mr. Nick J. Gardner
Brief Facts: The Complainant is a children’s products company dealing in Baby carriages; strollers; carts; prams; buggies and more. The Complainant owns various trademark registrations for the trademark GAGGLE in the United States (dated April 13, 2013) and other jurisdictions worldwide. The Respondent, a Domain Name investor, purchased the disputed Domain Name on September 19, 2019. The disputed Domain Name resolves to a parked landing page that contains a link to inquire about the purchase of the disputed Domain Name, as well as other pay-per-click hyperlinks.
The Complainant contends that the Respondent is not using the disputed Domain Name for any legitimate purpose, and offering to sell the disputed Domain Name for a large amount of money in excess of the Respondent’s out-of-pocket costs directly related to the disputed Domain Name, and is also infringing the Complainant’s GAGGLE trademark. The Respondent contends that it is likely that no member of the Panel in this case ever heard of the Complainant and that every panel member is aware that “gaggle” is a common dictionary word. The Respondent further contends that it made no infringing or illegitimate use of the disputed Domain Name because a general offer for sale of a non-exclusive, dictionary term does not implicate or violate the Complainant’s limited rights.
Held: The Panel finds that the Respondent has demonstrated that it has a legitimate right to register and use the disputed Domain Name. The Panel sees no reason to disbelieve the Respondent when it says that it had never heard of the Complainant prior to this dispute. The Complainant did not establish that its Gaggle Mark was so well known so as to cast doubt on the Respondent’s account. The Panel accordingly accepts that the Respondent acquired the disputed Domain Name because of its value as a dictionary word and there is no evidence presented that it targeted the Complainant or its GAGGLE Mark. The sale of domain names that are common, dictionary terms can be a valid enterprise.
Demanding a high price for a disputed Domain Name is not in itself bad faith since the registration of such a domain name is legitimate provided that, as is the case here, the Respondent did not target the Complainant. Besides, the fact that the Respondent offered the disputed Domain Name for sale cannot by itself be deemed to indicate that the disputed Domain Name was registered, or is being used, in bad faith. The Respondent did not, on the evidence, register or use the disputed Domain Name in bad faith since the Respondent legitimately purchased the disputed Domain Name as a dictionary term and the evidence presented does not show that the Respondent targeted the Complainant or its GAGGLE Mark in so doing.
Complainants’ Counsel: Walker & Jocke Co., LPA, United States
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch: This case is another important milestone in unequivocally recognizing the right to invest in a dictionary word domain name despite the pre-existence of a corresponding trademark. Too often Panels have avoided the express recognition of a Respondent’s rights and legitimate interest in a disputed Domain Name, by either; a) skipping over this second-prong of the test and making a finding under Bad Faith, or alternatively; b) just finding that the Complainant did not make its case under the second-prong, without making any affirmative finding in the Respondent’s favour (We have written about this previously, for example in connection with the Lawcloud .com case in Vol. 3.10).
In this case however, the Panel did make an affirmative finding in the Respondent’s favour, expressly stating, “The Panel finds that the Respondent has demonstrated that it has a legitimate right to register and use the Disputed Domain Name”. Kudos to the Panel for not avoiding the second part of the test and making an affirmative finding where the circumstances warranted it.
Covetous Complainant Attempts to Withdraw and Brings Lawsuit
Panelists: Ms. Ingrīda Kariņa-Bērziņa (Presiding), Mr. Matthew S. Harris and Ms. Diane Cabell
Brief Facts: The Complainant is a start-up company offering software and services to companies providing mobile services to consumers, and has online presence at <fieldd .co>. The Complainant applied for trademark registrations for the FIELDD sign in the United States and Australia on November 22, 2022, claiming use in commerce dating to November 12, 2019. The US Respondent previously, together with her wife, was co-owner of a Texas company called Fieldd Software Services L.L.C. and purchased the disputed Domain Name in 2014. At the time of this Decision, the disputed Domain Name resolved to a website stating that it is operated by “Fieldd Fence & Deck” and offers residential fence and deck construction services. The current website was established by the Respondent in late 2022, however, from 2014 to 2019, the disputed Domain Name hosted content related to Respondent’s earlier software business and the registrant name was listed as Respondent.
The Complainant alleges that the Respondent acquired the disputed Domain Name on August 18, 2022, when the Respondent became the sole and named registrant of the disputed Domain Name, because the previous registrant, Fieldd Software L.L.C., by that time had ceased to exist. The Complainant further alleges that the Respondent acquired the disputed Domain Name in 2022 for the purpose of selling it to the Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed Domain Name. On the other hand, the Respondent maintains that she has continuously controlled the disputed Domain Name since purchasing it on May 1, 2014, and that the changes since that time are only formal. The Complainant contacted the Respondent multiple times seeking to purchase the domain name offering a purchase price of USD $2,000, which was later reduced to USD $100, after filing of this Complaint.
Procedural Issue: Termination of Proceedings: On January 30, 2023, the Complainant, after receiving the Response but prior to Panel appointment, requested that the proceeding be terminated due to the fact that the Complainant had initiated civil proceedings for cybersquatting and trademark infringement against the Respondent. The Respondent promptly objected to termination of the proceedings and insisted on the continuation of the proceedings and the issuance of a decision on the merits, to justify her expense and trouble in preparing a Response to what she views as an unfounded Complaint; and a finding of RDNH.
The Panel considers these grounds for objection to be justifiable. Termination of the proceeding would potentially leave the Complainant free to refile a complaint under the Policy whereas continuing the proceeding will give the Respondent an opportunity to obtain findings regarding the merits of the Complaint. The Panel notes, in particular, that Complainant’s post-Complaint demand letter and communications with the Respondent indicate that the Respondent would be at a disadvantage if a decision were not rendered. Therefore, the Panel declines to terminate this proceeding and will proceed to render its Decision on the merits.
The majority Panel notes that, despite the initiation of litigation by the Complainant, there exist no circumstances that would prevent this dispute from being resolved under the UDRP.
Held: There is no allegation in the record that a formal transfer of rights took place at any time. The conduct of the Complainant demonstrates that the Complainant at all times knew and believed the Respondent to have been in control of the disputed Domain Name. The Complainant has not brought forth evidence that there was any break in the ownership continually held by the same named organization from 2014 to mid-2022. The Panel does not find the dissolution of the Fieldd Software Service L.L.C. entity in 2017 extinguished domain name rights. The fact that the domain name registration persisted following the dissolution of the entity supports Respondent’s contention that she, and not the organization, was the actual registrant.
The Panel does not find that Respondent’s establishment of a new website at the disputed Domain Name in 2022 is indicative of bad faith. The Respondent had operated websites at that domain name from 2014 to 2018. Having held the disputed Domain Name for a number of years, it does not seem improbable that she would use it for a new business in a sector (deck and fence construction) related to her previous business and remote from Complainant’s business of offering software to mobile service companies. There is evidence that the Respondent used the domain name in connection with its dictionary meaning in connection with “field services,” which the Parties both use as a term referring to services offered to customers at their place of residence or business.
The Panel notes that the Respondent at no point contacted the Complainant to offer the disputed Domain Name for sale. Rather, beginning in 2020, the Complainant repeatedly urged the Respondent to sell it the domain name. In the view of the Panel, the facts of this case indicate that the Complainant greatly desired to acquire the disputed Domain Name, but for a price less than the Respondent wished to receive for it. In these circumstances, the Panel is unable to find that the Respondent registered and used the disputed Domain Name in bad faith.
Dissenting Opinion (Matthew S. Harris):
What constitutes a fresh registration? Where a domain name is transferred between unconnected third parties there is clearly a fresh registration, in terms of section 3.9 of the WIPO Overview 3.0. This was the question that was faced by this panelist in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785, a case relied upon by the Complainant in this case. In the ehotel AG case the named registrant was changed from a private individual, Mr. Lutoborski, to a company controlled by that same private individual and I held that there was a fresh registration. A similar transfer between connected parties (in that case a Mr Lohoti and a company he controlled was also held to be a fresh registration for similar reasons in Certipost NV v. Virtual Point Inc. WIPO Case No. D2008-1183. That said, not all UDRP panels have adopted the same approach. For example, in Mirza Juddani v. CDN Properties Incorporated CDN Properties Incorporated WIPO Case No. D2014-1354, the UDRP panel disregarded a transfer from an individual to a Panamanian company controlled by that individual. Similarly in Van der Graaf Inc. v. Privacydotlink Customer 3564326 / DUBAI DOMAINS, WIPO Case No. D2018-2236 was a case where the domain name in issue appears to have been registered first in the name of a company controlled by an individual and then was changed into the trading name of that individual.
It, therefore, would appear that the UDRP panel in both the Mirza Juddani and Van der Graaf Inc cases concluded that what mattered was de facto control. However, why this was considered determinative was not really explained, and it is hard to understand why this is the correct approach. My fellow panelists have suggested that a number of past UDRP decisions in this respect can be understood as holding that there was a fresh registration notwithstanding the fact that the domain name remained under the control of the same person, where the transfer was made to conceal the Respondent’s identity or escape the consequences of their wrongdoing. This is consistent with the wording to be found paragraph 3.7 of the second edition of the WIPO Overview. It is also one potential reading of the decision in BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882. To conclude, I would suggest the correct approach is when a transfer of a domain name is between connected persons if they are separate legal entities will be a fresh transfer for the purposes of the Policy even if the domain name remains under the same de facto control. However, whether there is registration in bad faith at that time, still needs to be separately assessed and will depend upon the particular facts of the case.
The impact of the US litigation: Having reviewed the Complaint filed by the Complainant in the US court proceedings, it appears that many of the substantive disputes between the parties in these UDRP proceedings are indeed replicated in the US proceedings, including the circumstances surrounding the registration of the disputed Domain Name in the name of the Respondent and the Respondent’s motives when doing so. Both the Complainant and the Respondent in these UDRP proceedings are also located in Texas and this is where the court proceedings have been commenced.
In the opinion of this panelist it is, therefore, preferable that these be left to be determined by the US court, and that a decision by the Panel in this respect one way or another, which would not be binding on that court, would serve no useful purpose. Accordingly, this panelist would exercise its discretion under Paragraph 18(a) of the Rules to terminate these UDRP proceedings in accordance with the Complainant’s request.
Complaint Denied (with dissenting opinion)
Complainants’ Counsel: Wiley Rein LLP, United States
Respondents’ Counsel: Lewis & Lin, LLC, United States
Case Comment by ICA General Counsel, Zak Muscovitch:
I am friends and colleagues with both the counsel for the Complainant and for the Respondent, and in fact Counsel for the Complainant was the recipient of the ICA’s Lonnie Borck Memorial Award in 2017 for his pro bono representation of a grandmother sued for her domain name. Both are extraordinarily capable counsel who have my great respect and admiration. I also am familiar with the work of all three Panelists including two of them who I met while attending a WIPO Workshop in Geneva last year, and they too have my respect and admiration. With that said, I am nevertheless able to come to a very clear view of the issues discussed in this case, albeit from the text of the UDRP decision alone, and not having the benefit of having reviewed the pleadings.
Notably the decision includes a six and half page dissent from Panelist Matthew Harris. The primary focus of the dissent is not to challenge the outcome of the Fieldd .com dispute but to challenge the interpretation adopted by the Majority of the Panel as to the circumstances that trigger a “fresh registration” for the purpose of analyzing bad faith at the time of registration. Harris proposes adopting an analytic framework that results in a “fresh registration” in certain circumstances where the beneficial owner remains unchanged despite a change being made to recorded registrant of the domain name.
The registration date is particular significant in the Fieldd .com dispute since the Fieldd .com was already taken by the Respondent when the Complainant incorporated its business in 2019. The Complainant therefore had to content itself with Fieldd .co. But the Complainant coveted the superior .com Domain Name and therefore made numerous attempts to purchase it. According to the Respondent, over several years the Complainant sent her text messages to her personal phone number, visited her place of work, contacted her family and employees. The Complainant, however, never came up with enough money to purchase the Domain Name, despite the Respondent’s willingness to sell the Domain Name for as low as $9,500 in 2019. The most that the Complainant ever offered was $2,000, and in a November 2022 text message told the Respondent that, “If I had the money, I’d pay you. But we don’t.”
But that wasn’t the end of it, as the Complainant was intent on getting the Domain Name for itself. Shortly thereafter, he retained a lawyer who filed the UDRP proceeding on December 23, 2022, right before Christmas. The Complainant then offered the Respondent the sum of $100, ostensibly under threat of the UDRP which the Complainant had just filed. But there were significant issues for the Complainant in the UDRP. The Complainant would have to find a way around the Respondent’s 2014 registration date, as it pre-existed the Complainant’s trademark rights which arose at the earliest, in 2019. The Complainant ostensibly was aware of the historical Whois records, and therefore claimed that the registration was “new”, having been “transferred” from Fieldd Software to Ms. Duarte after August 18, 2022. However, the actual Registrant never changed, and the Complainant was apparently pinning its hope on changes to the “Registrant Organization” field, even though Ms. Duarte had registered the Domain Name prior to the incorporation of that business of which she was a co-owner along with her wife.
The Majority noted that there was no allegation of any formal transfer of rights that took place at any time, there was no lapse in the registration, and Ms. Duarte was the actual registrant the entire time despite Fieldd Software at some point being listed as the “Registrant’s Organization” and despite it since having been dissolved. The Dissenting Panelist acknowledged as much when he stated that:
“It appears to be clear that at all times the Respondent, Ms. Duarte, was recorded as the underlying “Registrant Name” for the Domain Name. It is also essentially undisputed that the Domain Name has been under the de facto control of the Respondent Ms. Duarte.”
The Complainant was pinning its hope on the change in the Registrant Organization field as a means of overcoming the fact that the Registrant registered the Domain Name before the Complainant even existed, let alone acquired common law trademark rights. As the Dissenting Panelist noted, if the change in “Organization” was treated as a new registration, “the clock is potentially resent when it comes to the assessment of whether a registration was in bad faith”. In other words, the Complainant knew it had no hope under the UDRP if the Registrant’s rights preceded its own, so it argued that the Panel should treat this as a new registration having occurred in 2022, rather than the original registration from 2014. Clearly in 2014 when Ms. Duarte registered the Domain Name, she could not have targeted the Complainant because the Complainant would not even exist until five years later, in 2019.
But a new registration can only be the result of a transfer from the original registrant to a new registrant, and there had been no actual “transfer” by way of an auth code or intra-registrar “push”, nor was there any formal transfer agreement between her and her company. Ostensibly, the Complainant was alleging that the mere change of the “Registrant Organization” field amounted to a transfer, despite the absence of any actual transfer. This is at odds with the plain meaning of the word, “transfer”, particularly where the actual “Registrant” herself, has remained the exact same throughout. That should end the matter, as in the absence of an actual transfer of the Domain Name from one Registrant to another, it is only the Respondent’s original registration date that matters. The Majority Panel in my view therefore reached the correct outcome in denying the Complaint.
The Complainant’s attempted reliance on a technical argument that the “Organization” field had changed, seems to be nothing more than an attempt by the Complainant to get around the well-established application of the UDRP which would have otherwise resulted in the Complainant not even having an arguable case. It nevertheless apparently caught the attention of the Dissenting Panelist, who may have seen in it a potential avenue for addressing situations where a domain name was registered in good faith but later used in bad faith. As the Dissenting Panelist noted, the UDRP does not address instances of bad faith use unless it is accompanied by bad faith registration. There were efforts afoot by a handful of Panelists many years ago, to introduce a theory of ‘retroactive bad faith’, but it was discredited and ultimately abandoned by consensus (See Cohen, Muscovitch, “The Rise and Fall of the UDRP Theory of ‘Retroactive Bad Faith’”, CircleID, May 8, 2017). Nevertheless, it caused havoc for a significant period of time. If there is one thing that we have learned from that troublesome exercise, is that any attempt to interpret the UDRP in a manner which effectively rewrites the Policy, upends years of jurisprudence, or amounts to a rebalancing of the Policy, is best left to the policy makers. Otherwise, the inevitable upheaval will detract from the stability, predictability, reliability, and credibility of the UDRP.
Unfortunately, I see some of the same troublesome ingredients in the Dissenting Panelist’s view. He seems to be searching for a way to ‘solve the problem’ of the UDRP not addressing instances of ‘registration in good faith, but use in bad faith’. This was also the intent of those handful of Panelists that pushed ‘retroactive bad faith’. The fact is however, that instances of a good faith registration being turned to bad faith use, are exceedingly rare. In all but perhaps a handful of edge cases, registrants who register a domain name in bad faith, tend to use it in bad faith, and registrants who register a domain name in good faith, tend to use it in good faith. I therefore cannot help but wonder if addressing such a small handful of instances is genuinely a problem, and if it is, it is assuredly a policy matter.
The Dissenting Panelist proposes treating a transfer from an individual to his or her wholly owned corporation, as a “fresh registration” in every case, thereby enabling the Complainant to allege bad faith registration not as of the date of the registrant’s original registration, but as of this “new” registration. In a manner comparable to the formalistic reliance on renewals under the discredited and rejected theory of retroactive bad faith, this suggested approach would essentially harness a similarly formalistic change in the nominal registrant, while disregarding the continuity of ownership held by the underlying beneficial owner. The Dissenting Panelist questions the relevancy of relying on ‘de facto control’ rather than on the formalistic change of registrant, and states that “it is hard to understand why this is the correct approach”. After all, as he points out there are various legal scenarios where “a change in ownership between distinct legal entities can, and often will have very significant legal consequences, whether that be under the law of insolvency or otherwise” and further states that, “this is so even if the transfer is, for example, between different companies in the same corporate group”. No doubt the Panelist is correct in this regard, however the answer as to why this is indeed the correct approach is that the UDRP seeks to answer the question of the ‘why’ someone registered a domain name in the first place in order to determine whether they registered it because of the Complainant’s trademarks, or not.
Elevating the formalistic legal change from a natural person to his or her wholly owned corporation doesn’t seek to answer the same question. Rather, it seeks to ask ‘At the time the domain name owner formed a corporation to hold his or her domain names, was the domain name owner targeting the Complainant?’ This approach asserts that a registration made by a beneficial owner in good faith can later convert to a bad faith registration depending on the circumstances and usage of the domain name made at the time of the restructuring.
This view disregards the original reason for registration and seeks to rely upon the legal fiction of a corporation being a distinct legal entity from its owner. While a valid distinction in law generally, within the context of the UDRP this would have the intended or unintended effect of providing Complainants with an opportunity to assess bad faith registration at a more recent and opportune time and amounts to rebalancing the UDRP, which is a fundamental policy matter rather than a routine question of interpretation. In other words, the Dissenting Panelist credibly laid out a way of interpreting the UDRP and the law in a manner which has a rational basis for assessing bad faith at a later, more recent date, but it should not be followed absent consensus amongst stakeholders at the policy level since this approach amounts to a major policy change and effectively re-introduces retroactive bad faith through a side door.
Notably, the Dissenting Panelist chiefly relied upon and discussed two cases in support of his proposed approach, namely ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785, and Certipost NV v. Virtual Point Inc. WIPO Case No. D2008-1183. The Dissenting Panelist noted that first case, eHotel, was relied upon by the Complainant and it appears likely that the Complainant nominated the Dissenting Panelist to the three-member Panel specifically because this is a case in the Complainant’s favor that the Dissenting Panelist decided. As we can see, who is appointed to a Panel, whether as a party nominee or through a list of candidates selected by a Dispute Resolution Provider, is a profoundly important issue since it can affect, if not determine, the outcome. Neither the Complainant nor the Dissenting Panelist may have known, however, that the eHotel decision was taken to court by the Respondent because the Respondent believed that the Dissenting Panelist’s view of the date for assessment of bad faith was grossly unfair to him in the circumstances as his partnership had been the beneficial owner throughout. I happen to know, because I was the lawyer that took this case to court immediately after the UDRP decision and it was favorably settled.
In the eHotel case, which ultimately was of no force nor effect following the court proceeding, the Dissenting Panelist acknowledged that “although there has been a change to the listed registrant of record, there appears to have been no change in control over the Domain Name”. Nevertheless, the Dissenting Panelist stated, as he did with his proposed approach here, that in his view, “where there has been a change in registration details from one legal entity to another, then in the opinion of the Panel there will typically be a fresh registration.” This formalistic harnessing of a meaningless change of registrant led to a disastrous decision for the self-represented Respondent. Despite having registered the Domain Name on behalf of his registered partnership in good faith, the Panelist used the Respondent’s change from his personal name to that of his partnership (while he always remained as the beneficial owner) as an opportunity to re-assess bad faith. The Panelist specifically acknowledged that the result might be seen as unfair but contended that the decision to award the Domain Name to the Complainant was fair because the Respondent ‘changed its use of the Domain Name after 2007’. The facts supporting this conclusion were somewhat convoluted, incomplete, and contested, however at the end of the day, it was the Panelist’s harnessing of the formalistic change of registration that enabled him to order the transfer of the domain name despite the conjunctive bad faith requirement of the UDRP, and which in turn led to this matter going to court and being settled.
Notably, the other case that the Dissenting Panelist discussed and relied upon, Certipost NV v. Virtual Point Inc. WIPO Case No. D2008-1183, also went to court. In the UDRP decision, a Panelist rejected the Respondent’s plea to ignore the mere change from the personal registrant to his company and suggested that by so doing he was producing a desirable the “side effect” of giving the Complainant an opportunity to invoke the Policy when it otherwise wouldn’t have had one due to the good faith registration. The Respondent ostensibly believed that it had been treated unfairly and that the Panelist seized upon a meaningless change of the registration to get around the usual confines of the Policy, and proceed to court where the matter was settled with the Complainant acknowledging the Respondent’s good faith and rights in the Domain Name while the Complainant paid an undisclosed sum to the Respondent.
I am hesitant to accept that it is coincidence that both of these cases which support the Dissenting Panelist’s approach went to court. Rather, I think that this is indicative of the Respondents’ rejection of the formalistic harnessing of a meaningless change of registrant and emblematic of the sense of unfairness that is seen by Respondents with such an approach. I think that the correct approach is where there is an uninterrupted beneficial ownership of a domain name, mere formal changes to the registration do not result in a “fresh registration”, though if the Panel assesses that the changes were made to conceal the Respondent’s identity or escape the consequences of its wrongdoing, this might provide evidence of the Respondent’s original intent in registering the domain name.
Lastly, regarding the Dissenting Panelist’s view that the matter ought to have been terminated in view of the Complainant’s lawsuit, which it commenced after receiving the Response, I again respectfully disagree. The established case law which was followed and cited by the Majority suggests that where a Respondent has been forced to respond and has requested RDNH, it is entitled to a hearing on the merits despite a Complainant’s attempt to withdraw its Complaint and avoid its consequences. Moreover, unless a withdrawal is with prejudice, a Complainant can then file its Complaint again at any time. I also cannot help but surmise that if the fact that a lawsuit “replicates many of the substantive disputes between the parties in these UDRP proceedings” is the primary consideration in deferring to the courts and terminating the UDRP proceeding, that would result in a virtually automatic termination if the shoe is on the other foot as well; i.e. if a Respondent commences a lawsuit upon receipt of a UDRP Complaint, a Panel should terminate the UDRP since the lawsuit covers what the UDRP covers. I very much doubt that Panels would always take such a deferential view of the courts in such circumstances.
There is a lot more that could be discussed about this case, but we will have to leave that for another day.
Fraudulent Use of Domain Name in Email Scheme
Panelist: Ms. Reyes Campello Estebaranz
Brief Facts: The Complainant operates various resorts, and offers real estate time-sharing services, including online consumer services related to its 22 resort and vacation time-share properties, under the trademarks WESTGATE, WESTGATE RESORTS, WG RESORTS, and WGRESORTS .COM. The Complainant has used these trademarks in commerce in connection with its services since 1982, and including in its corporate website at <westgateresorts .com> (registered on January 2, 1997), that provides its customers an online platform to perform a variety of actions related to its services, and another domain name (registered on April 3, 1998), which is used for email communications with its customers.
The disputed Domain Name was registered on August 18, 2021, and is held passively. According to the evidence provided by the Complainant, the disputed Domain Name has been used to contact some of the Complainant’s customers, through email communications displaying the Complainant’s WESTGATE RESORTS mark with the same or very similar graphic representation used by the Complainant. In these emails, the Complainant’s customers were requested to pay certain sums of money, and some of these clients effectively transfer as a “processing fee” the sum of USD $96,079.12, which was the same amount as the balance of these clients owed to the Complainant, to a bank account that does not belong to the Complainant. The Complainant argues that the registration and use of a domain name for an illegal activity – including impersonation, passing off, and other types of fraud – is considered evidence of bad faith.
Held: According to the evidence provided by the Complainant, the disputed Domain Name has been used to send emails to several of the Complainant’s customers impersonating the Complainant. These emails prominently displayed the Complainant’s figurative trademark (with the same or very similar graphic representation and the legend “official vacation headquarters”), to request payments from these third parties in a fraudulent scam. The use of a domain name for an illegal activity can never confer rights or legitimate interests on a respondent under the Policy.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed Domain Name. That includes the incorporation of the Complainant’s strong trademarks in the disputed Domain Name and the use of the disputed Domain Name to send impersonating emails to the Complainant’s customers, and requesting fraudulent payments from these third parties. Therefore, the Panel considers that the disputed Domain Name was registered and has been used targeting the Complainant’s trademarks as part of a fraudulent scheme, which evidences the Respondent’s bad faith.
Complainants’ Counsel: Greenspoon Marder, LLP, U.S.
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case shows how serious cybersquatting can be, particularly when the Domain Name is used for a fraudulent email scheme that seeks to redirect large sums away from the Complainant.
No Evidence That Respondent Was Aware of Complainant Despite Moroccan “CDM” Trademark
Panelist: Mr. Emre Kerim Yardimci (Presiding), Mr. Alexandre Nappey and Mr. John Swinson
Brief Facts: The Complainant is a Moroccan bank providing banking services to individuals and businesses with 90 years of history. The Complainant owns the Moroccan trademarks for CDM (registered on April 4, 2006 and September 30, 2022); CDM BANQUE DIRECTE (registered on April 11, 2014); and CDM BANK (registered on September 30, 2022). The Complainant operates online banking services with CDM CREDIT DU MAROC trademark under its website <creditdumaroc .ma> and is the owner of the several domain names <cdm .ma>, <cdmbank .ma>, <ca-cdm.ma> and <mycdm.ma> only the later resolving to an active website for electronic banking. The disputed Domain Name was created on August 31, 2019, which resolves to a website indicating that the disputed Domain Name is available for sale.
The Complainant alleges that the Respondent has registered and / or acquired the disputed Domain Name primarily for the purpose of selling the disputed Domain Name for valuable consideration in excess of the Respondent’s out-of-pocket costs and adds that the Respondent is making the business of registering domain names fraudulently. The Respondent contends that the acronym CDM means “Cash Deposit Machine” and the combination ‘CDM+Bank’ forms a descriptive generic domain name. The Respondent further contends that they are a domain name investing company holding over 1,000 domain names that are offered for sale including <cbrbank .com>, <fdnbank .com>, <gdcbank .com>, etc. and that they checked the term CDM at the USPTO before registering the disputed Domain Name and found not less than 50 entries but no trademark for CDMBANK.
Preliminary Issue: The Panel notes that the Complainant’s Supplemental Filings, sent to the Center after the Panel appointment, mainly contains comments about the Respondent’s failure to respond to the Complaint on time, and an Annex showing a screenshot that the search result in Google, even from the United States, would have shown the Complainant’s website. The Panel is dubious of the value of such search (which could have been submitted with the original complaint), and uncertain of the extent to which the same search if performed in 2019 at the time of the registration of the disputed Domain Name would have shown the same result. In any case, the Panel does not deem appropriate to admit such Supplemental Filings as they are unnecessary and do not add anything new or material to the case, noting, however, that considering these additional filings would not have changed the outcome of the case. The Panel, accordingly, does not admit the Respondent’s Supplemental Filing in responses to the Complainant’s Supplemental Filings.
Held: The Respondent’s assertion that it was unaware of the Complainant when registering the disputed Domain Name seems believable in the circumstances of the case. There is no evidence that the Moroccan Complainant has operations, trademark or otherwise reputation in the United States. Moreover, the Respondent appears to have a collection of bank related domain names in a similar format to the disputed Domain Name. Additionally, “CDM” is used in the banking industry to refer to “cash deposit machine”. Even though the Respondent is a professional domain name investor, on the facts of this case, the fact that the Respondent did not conduct searches of the Moroccan trademarks register is not evidence of bad faith. In this case, the Respondent does not seem to have had actual knowledge and should not have constructive knowledge of the contents of the Moroccan register.
The Complainant did not register its trademark for CDM BANK until after the Respondent registered the disputed Domain Name but otherwise had rights in CDM AND CDM BANQUE DIRECT marks only. The Panel specifically notes that CDM is a three-letters trademark, and that the Complainant did not provide sufficient evidence to show that the Respondent likely knew or should have known such trademark. The Panel concludes that the Respondent likely registered the disputed Domain Name because of its inherent value as a domain name and not because of the Complainant or the Complainant’s trademark.
The disputed Domain Name has value unrelated to the Complainant, and the Respondent’s explanation for the registration seems probable. Possibly, the disputed Domain Name has other uses, such as in respect of cash deposit machines, which would not be bad faith use. The Respondent’s business model appears to be registering disputed Domain Names that the Respondent can sell at a profit. Without more, this is not evidence of bad faith under the Policy. There is no evidence that the Respondent has acted dishonestly or fraudulently. Accordingly, the Panel concludes that the Complainant has not demonstrated that the Respondent registered and used the disputed Domain Name in bad faith.
Complainants’ Counsel: Daoud Salmouni-Zerhouni, Morocco
Respondents’ Counsel: Law Office of Howard M. Neu, PA, United States
Case Comment by ICA General Counsel, Zak Muscovitch: I was initially surprised by the outcome of this case. I initially thought, “That couldn’t be a coincidence that someone registered CDMbank .com when there is a bank called, CDM. But after reading the evidence, I recognized that the Panel was correct in dismissing the Complaint. As noted by the Panel, the Complainant’s CDM Bank mark was registered long after the Domain Name, meaning that at the time that the Domain Name was registered in 2019, the Complainant only had a CDM trademark, albeit in connection with banking.
Moreover, there was no reason for the American Respondent to have checked the Moroccan trademark database in the circumstances. This follows a long line of cases establishing that a respondent is not obliged to search the records of foreign trademark offices and that foreign trademark registrations do not put domestic domain name registrants on constructive notice of foreign trademarks (See for example, uwe GMbH v. Telepathy, Inc., D2007-0261 (Trademark registered only in Germany did not put U.S. respondent on notice of complainant’s mark); and see; Allocation Network GmbH v. Gregory, D2000-0016 (“Complainant has not provided any evidence of facts which might indicate that U.S. Respondent knew or should have known of its [German] trade name use or trademark registrations”).
Most crucially perhaps, is that the Respondent provided evidence that CDM is an acronym corresponding to “Cash Deposit Machine”, which provides a credible explanation for having registered CDM in connection with “bank”. Perhaps it is a somewhat awkward combination of words, but in the absence of the Complainant showing any reputation outside of Morocco and in particular in the U.S., the Panel correctly determined that there was no basis for finding that the Respondent targeted the Complainant.
Accordingly, this is an important example of how the evidence in a particular case can dramatically change initial reactions. The Panel in this case did an admirable job of reaching a conclusion based upon the evidence, and not reaching a conclusion first and then using the evidence to support it.
Panel Cannot Find Bad Faith Due to Deficient Complaint
Panelist: Mr. Steven M. Levy
Brief Facts: The Complainant offers online educational courses and materials in a wide variety of disciplines and hosts its website at <skillshare .com>. It asserts rights in the trademark SKILLSHARE based upon its U.S. common law trademark rights dating back to 2010 and its registration of the mark with the USPTO in 2022. The Complainant also operates an affiliate program through which it provides a financial benefit to any third party that uses its own website or social media account to generate new customers for the Complainant. The Complainant alleges that the Respondent registered and uses the disputed Domain Name in bad faith to create initial interest confusion with the Complainant and engages in typosquatting of the SKILLSHARE mark.
The Complainant further alleges that the Respondent does not use the disputed Domain Name for any bona fide offering of goods or services but had joined Complainant’s affiliate program and redirected the disputed Domain Name to Complainant’s website. The Complainant disabled this link and removed the Respondent from the affiliate program. Soon thereafter, the Respondent resolved the disputed Domain Name to a page that provides monetized hyperlinks to third-party websites offering online educational courses. The Respondent failed to submit a Response in this proceeding.
Held: Paragraph 4(a)(iii) of the Policy is stated in the conjunctive “bad faith registration and use”. A lack of evidence that a complainant’s trademark existed when the disputed Domain Name was registered suggests that the respondent could not have known of or anticipated the trademark and thus could not have targeted it in bad faith at that point in time. Besides, the Complainant’s earliest application date is of June 24, 2021, and a first use in commerce date of November 16, 2010. However, “the claimed date of first use in the application is not definitive evidence that the mark actually was used and valid prior to the filing of the application”. While the Complainant asserts that it “owns U.S. common law trademark rights in the mark”, the only supporting evidence it has submitted consists of a screenshot of its own home page at <skillshare .com> as well as that of its page titled “Become a Skillshare Affiliate”.
These recent screenshots do indicate some promotion of the SKILLSHARE mark but they, along with Complainant’s trademark registration certificates, do not, on their own, speak to the public perception, reputation, and scope of Complainant’s mark or provide sufficient evidence of common law trademark rights to meet the above-mentioned standard. Further, it appears that the Respondent acquired the disputed Domain Name prior to the earliest possible date on which the submitted evidence proves that the Complainant acquired rights in the SKILLSHARE trademark, the Panel is unable to find that the Complainant possessed rights to its mark at that time (common law or otherwise) and thus, that the Respondent targeted the mark in bad faith at the time it registered or otherwise acquired the domain name.
In view of the above-stated deficiencies in the Complaint and Complainant’s submissions, the Panel cannot, by a preponderance of the evidence, find that the Respondent registered the disputed Domain Name in bad faith under the Policy.
Complainants’ Counsel: Carissa L. Weiss of Law Office of Carissa L. Weiss, PLLC, New York, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Complainant’s failure to prove common law trademark rights which pre-existed the Domain Name registration, left the Panel with no choice but to dismiss the Complaint. Time and time again we see Complainant’s relying solely upon a trademark application, or a claimed date of first use in a trademark registration, or on conclusory statements of having acquired trademark rights. As the Panel noted, this is simply not enough.
Why does this happen with some regularity and what can be done to avoid it? There needs to be information and educational material available alongside the Complaint filing instructions. This is not the job of the Provider, which is supposed to be a neutral service. Rather, it is the job of stakeholders and ICANN to provide the material necessary for Complainants to avoid making this mistake. Yes, there is the WIPO Consensus View and case law databases, as well as Gerald Levine’s treatise, all of which are readily available to Complainants, so there is really no excuse. But it is evidently not enough as this continues to happen. Of course, no volume of information and educational material will ever eradicate deficient Complaints, but for those conscientious and well-intended Complainant counsel who would benefit from such materials, we can provide more assistance in order to avoid more deficient Complaints.