We hope you will enjoy this edition of the Digest (Vol. 3.14), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and Special Guest, Panelist Igor Motsnyi.
‣ Panel Applies the “Impersonation Test” to Domain Name Used for Criticism (tibtecag .com *with commentary)
‣ Complainant Must Disclose Prior Litigation and Faces RDNH Finding Despite Request to Terminate (jkdewberry .com *with commentary)
‣ No Conceivable Use of Domain Name Comprised of a Distinctive Mark (robloxeducation .com *with commentary)
‣ Complainant Must Demonstrate That Trademark Pre-exists Domain Name Registration, Even When No Response (retailinsite .com *with commentary)
‣ Failure to Prove Secondary Meaning Fatal to Complainant’s Case (www-optimism .com *with commentary)
‣ Bad Faith Use of the Domain Name Can Never Confer Legitimate Rights (frankesh .com *with commentary)
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Panel Applies the “Impersonation Test” to Domain Name Used for Criticism
Panelist: Mr. Andrew D.S. Lothian
Brief Facts: The Complainant is the owner of the International Registered Trademark for the word mark TIB- TEC, registered on November 5, 2021, and designated in respect of three territories. The disputed Domain Name, <tibtecag .com>, was registered on November 22, 2022 and the associated website substantially reproduces the background image from the website of the Complainant’s affiliate, Tib-Tec AG. Superimposed on this background is the message “TIB-TEC / DO NOT INVEST / Pump and Dump IPO”.
The Respondent’s said website goes on to claim that certain named individuals and companies (including Messrs. Vechik and Koekkoek) do not have rights to the technology in the Vechik/Koekkoek patent, applying epithets such as “fake inventor” and “fraud director” to various persons. The Complainant alleges that the disputed Domain Name and its related website do not qualify as providing permissible criticism under the Policy and even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark, including typos. Further, even where such a domain name is used in relation to genuine non-commercial free speech, this creates an impermissible risk of user confusion through impersonation. A disclaimer available on said website does not remove the implied affiliation.
Held: The disputed Domain Name is being used in connection with a website that is critical of the Complainant and affiliated entities, however, whether the criticism is commercial or not, the Panel must examine the disputed Domain Name in the context of the “impersonation test”. The Panels applying this particular test take the view that, for a Respondent to be able to claim fair use for the purposes of non-commercial criticism under the Policy, the domain name that is used for this alleged purpose must not impersonate the trademark owner and should signal to potential visitors that the associated website is likely to contain content critical of the trademark owner (the example often cited of such a signal is a domain name containing the trademark together with the word “sucks”). A domain name that is identical to a complainant’s trademark (i.e., <trademark.tld>) is generally regarded as falling foul of the impersonation test whereby panels typically find that it creates “an impermissible risk of user confusion” (see section 2.6.2 of the WIPO Overview 3.0).
In the present case, the disputed Domain Name does not consist exclusively of the Complainant’s mark but removes the hyphen and adds the letters “ag” to it. Its principal element is the Complainant’s mark and the additional letters suggest that the disputed Domain Name belongs to a corporate entity that would be closely related to that mark. In no way could it be described as signalling to potential visitors that the website associated with the disputed Domain Name contains content critical of the trademark owner. On the contrary, the Panel’s analysis suggests that the Respondent is using the disputed Domain Name in an attempt to expand the audience for its criticism by misleading Internet users as to the source, sponsorship or affiliation of its website. In the Panel’s opinion, such deliberate deception cannot confer rights and legitimate interests upon the Respondent.
In light of the fact that the related website content refers to and makes certain allegations regarding the founders of the Complainant, there can be no doubt that the Respondent registered the disputed Domain Name with an awareness of the Complainant and its rights, and with intent to target these. Further, given that these letters are typically used as a corporate identifier in certain countries, the Panel is of the view that the disputed Domain Name creates a high risk of implied affiliation with the Complainant. In these circumstances, the Panel finds that the disputed Domain Name is being used to divert confused Internet users to the Respondent’s website. Such users are not expecting to arrive at the Respondent’s website but rather are seeking an official website relating to the Complainant’s business, whether or not that happens to be the website of the Complainant or of its closely connected and similarly named (to the disputed Domain Name) affiliate. In all of the above circumstances, the Panel finds that the disputed Domain Name has been registered and is being used in bad faith.
Complainants’ Counsel: Brinkhof N.V., Netherlands
Respondents’ Counsel: No Response
Special Guest Case Comment by Panelist, Igor Motsnyi:
Igor Motsnyi is an IP consultant and partner at Motsnyi Legal in Belgrade, Serbia.
Igor is a UDRP Panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy. Igor has been the Panelist in over 40 UDRP cases. The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
UDRP and Free Speech: Is Consensus Ever Achievable?
This case is another illustration of the challenges UDRP panels face in “free speech and criticism” cases and different approaches to such disputes by different Panelists.
Final Report of the First WIPO Internet Domain Name Process April 30, 1999 in par. 172 states: “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would likewise not be considered to be abusive”. This reflects limitations of the Policy and its application only to “clear-cut” cases of cybersquatting.
However, UDRP panels have different views on when free speech rights are “legitimate” and when non-commercial use is “without intent for commercial gain to misleadingly divert consumers”.
Such differences are described by Gerald M. Levine in his treatise “Domain Name Arbitration”, 2019 as “View 1” (“no protection for domain names identical or confusingly similar with the owners’ marks”) and “View 2” (“focus on the content rather than the domain name itself”).
There is also a “Totality of Circumstances” view (see “Domain Name Arbitration”, 2019, page 395) or “more holistic approach” with focus “on the totality of factors” as elaborated by the WIPO Panelist in “Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, WIPO Case No. D2022-0473 (<momsdemand. org>).
“View 1” and “View 2” were reflected in the earlier versions of the “WIPO Overview” but a seeming consensus was achieved in the latest version of the Overview or “WIPO Overview 3.0” where it is stated (par. 2.6.2):
“a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark; even where such a domain name is used in relation to genuine noncommercial free speech…”
Why a ‘seeming’ consensus? Because different panelists may still come to different conclusions depending on the view which they support (“View 1” vs. “View 2”) or based upon their own interpretation of the “Totality of Circumstances” view.
The WIPO Panelist in <tibtecag. com> focused on “impersonation” and found that: “the disputed domain name creates an impermissible risk of user confusion… Its principal element is the Complainant’s mark and the additional letters suggest that the disputed domain name belongs to a corporate entity that would be closely related to that mark…The Respondent is using the disputed domain name in an attempt to expand the audience for its criticism by misleading Internet users as to the source, sponsorship or affiliation of its website. In the Panel’s opinion, such deliberate deception cannot confer rights and legitimate interests upon the Respondent… the adoption of an inherently deceptive domain name that impersonates the Complainant for use in connection with such a website constitutes registration and use in bad faith, which cannot be cured by the content of the Respondent’s website…”
The content of the website by the disputed domain name was clearly critical of the Complainant’s business with the prominent wording: “DO NOT INVEST” and some harsh language in relation to the individuals mentioned on the website. Critical nature of the website seems obvious and not pretextual.
Had the disputed domain name contained some “pejorative” or “derogatory” term, the outcome would most likely have been different as proven by the denial of the same Panelist in <akeliusslumlord. com>, WIPO Case D2022-3275: “The disputed domain name does not impersonate the Complainant by repeating the Complainant’s trademark either on its own or in a way that might suggest sponsorship or endorsement by the Complainant. On the contrary, the disputed domain name couples the Complainant’s trademark with the term “slumlord” or “slum lord”, which the Complainant acknowledges to be a derogatory term…”
Yet, as noted before, some UDRP panelists deny complaints even when disputed domain names contain Complainant’s mark in its entirety without any derogatory or pejorative terms as long as criticism is genuine and not pretextual, see the decision of the Forum panelist Richard Hill in <grahamcfisher. com>, January 05, 2023:
“While the disputed domain name is identical to what Complainant alleges is a common law trademark, Complainant has not presented any evidence to show that users were indeed misled or confused. Contrary to what Complainant alleges, there is no risk of actual confusion, because the content of the resolving website unmistakably consists of criticism of Complainant. No user would be confused into thinking that the resolving website is affiliated with Complainant…”.
This decision was discussed in the “ICA UDRP Digest – Vol 3.3” and Zak Muscovitch in his case comment noted: “While numerous prominent panelists have adopted an “impersonation test”, there remains a schism between the two views outlined above, such that a consistent approach remains elusive”, see here.
Two different views of the two highly experienced UDRP panelists in <tibtecag. com> and <grahamcfisher. com> demonstrate how challenging it is to achieve a uniform view in this area of the Policy. The debate over UDRP application to “free speech” cases goes on and, in my opinion, although always desirable, a real consensus is hardly achievable in the near future.
Complainant Must Disclose Prior Litigation and Faces RDNH Finding Despite Request to Terminate
Panelist: Ms. Ingrīda Kariņa-Bērziņa
Brief Facts: The US Complainant is an engineering, architecture, real estate services, and emergency management firm, having an online presence at <dewberry .com>. It owns the trademark registration for DEWBERRY both as a word mark and device mark (registered on September 6, 2005). The Respondent is a corporation owned by a person named John K. Dewberry, operating in various fields including philanthropy, horse racing, hospitality, and aircraft operation. The Respondent owns various US trademark registrations that includes DEWBERRY CAPITAL (2008), THE DEWBERRY (2016), D DEWBERRY FOUNDATION (2019) and D DEWBERRY HOSPITALITY (2020). The record reflects trademark litigation in connection with the DEWBERRY mark is ongoing between the Parties.
The disputed Domain Name was registered on October 5, 2022. It resolves to a parking page featuring pay-per-click (“PPC”) links unrelated to Complainant’s business. The Respondent contends that the disputed Domain Name reflects the initials and name of John K. Dewberry and was registered at his personal direction for his vanity email address. In addition, the Complainant has intimate knowledge of John K. Dewberry and his businesses, as there is and has been trademark litigation between the parties. The Respondent requests a finding of Reverse Domain-Name Hijacking for the reason that the Complainant provided intentionally incomplete material evidence, attempted to mislead the panel, and brought a complaint on only the barest of allegations without any supporting evidence.
Procedural Issue – Termination: Rule 17(b) provides that if, before the Panel’s decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.
In this case, the Complainant, after twice requesting that the Complaint be withdrawn, has withdrawn its request to terminate the proceeding. The Respondent insists on the continuation of the proceeding and the issuance of a decision on the merits that addresses the arguments contained in the Response. The Parties have not reached a settlement of their dispute. In these circumstances, it appears to the Panel that it has not become unnecessary to continue the administrative proceeding. Therefore, a termination of the proceeding would not be appropriate, and the Panel will proceed to a decision on the merits.
Held: Surprisingly, the Complaint is completely silent on Complainant’s detailed knowledge of the Respondent and the lengthy history of litigation between the Parties. The Complaint is likewise silent on any other possible justification for the selection of the disputed Domain Name, such as Respondent’s own DEWBERRY marks or the name of Respondent’s founder. On the other hand, the Respondent brought forth credible evidence that it registered and used the disputed Domain Name for its identity with the name of Respondent’s founder. While a relatively short time elapsed between the registration of the disputed Domain Name and the filing of the Complaint, the Respondent provided evidence of use of the disputed Domain Name for an email address for John K. Dewberry. UDRP panels have recognized the right to register domain names corresponding to personal names of registrants.
On the balance of probabilities, the Panel finds that the Respondent provided credible evidence that the disputed Domain Name was registered by entities acting at the direction of John K. Dewberry and for his benefit. The composition and use of the disputed Domain Name are consistent with this intention. For that reason, the Panel finds that the record supports a finding that it was entirely reasonable for entities controlled by John K. Dewberry to register the disputed Domain Name at his direction for the reasons substantiated by the record. The Complainant did not prove that the Respondent has registered and is using the disputed Domain Name to take unfair advantage of or otherwise abuse Complainant’s mark.
RDNH: The Panel finds that the Complainant has provided incomplete material evidence by failing, in its Complaint and Amended Complaint, to mention the litigation between the Parties and remaining silent on its extensive knowledge of the Respondent, its trademarks containing the word “Dewberry”, Respondent’s controlling shareholder John K. Dewberry, and the numerous entities related to the Respondent containing the name “Dewberry.” The Panel notes that the record contradicts Complainant’s professed ignorance. The Complainant proceeded as if the Respondent were a party unknown to it. If the Respondent has not provided a Response, the Panel would have considered an entirely different case.
Based on this record, there can be no doubt whatsoever that, by the time that the privacy shield was lifted, the Complainant was aware of Respondent’s identity and of its possible rights in the disputed Domain Name. Only upon receiving the Response did the Complainant recall these circumstances. The Complainant is represented by counsel that will be aware of the professional representations of Parties and their counsel initiating such proceedings.
Complainants’ Counsel: McCandlish Lillard, P.C., United States
Respondents’ Counsel: Wellborn, Wallace & Mullman, LLC, United States
Case Comment by ICA General Counsel, Zak Muscovitch: This is a notable decision by Panelist, Ingrīda Kariņa-Bērziņa, for several reasons.
First, it is apparent from a review of her decision, that the parties submitted a ton of material, including additional submissions, objections, and even objections to objections. Such circumstances are challenging for Panelists as Panelists are obliged to make decisions regarding the admission of supplemental submissions. Here, the Panelist appears to have upheld the appropriate principle regarding the admission of additional submissions in stating, “The Panel finds that the Supplemental Filing does not contain any new evidence or information necessary to the consideration of this matter, but consists of challenges to Respondent’s arguments”. Moreover, by not admitting the Complainant’s additional submission for the reasons cited, the Panelist also notably did not find it necessary to “refer it to Respondent for comment”. As seen here, a Respondent need not be asked or required to respond to an additional submission in every case. It is only where; a) the Complainant’s additional submission is admitted; and b) where the additional raises issues which a Respondent should in fairness, have an opportunity to respond to before the Panel renders a decision.
Second, the Panelist also identified the appropriate Rule and relied upon the appropriate case law in denying the termination of the proceeding. It is important for Panelists, as the Panelist did here, to not take the easy way out and simply terminate a proceeding upon a mere request of the Complainant. There are additional factors to consider as outlined in the case cited by the Panelist, including whether the Respondent has requested a finding of RDNH which should be adjudicated upon despite an attempt by a Complainant to terminate the proceeding upon being caught out.
Third, the Panelist took proper note of the Complainant’s inexplicable submission of a Complaint which ignored the prior trademark related proceedings between the parties and accordingly found RDNH. As eloquently stated by the Panel: “The Panel notes that the record contradicts Complainant’s professed ignorance. To name but one example of evidence presented by Respondent, in a discovery request in the course of civil proceedings that predated this proceeding, Complainant had requested information on Respondent’s use of “jkdewberry,” a term identical with the disputed domain name. Instead, Complainant proceeded as if Respondent were a party unknown to it… Only upon receiving the Response did Complainant recall these circumstances”. The Panelist also noted that parties, particularly when represented by counsel, are aware of the “professional representations” in initiating such disputes. The Panelist is referring to Rule 3(b)(xiii), which states inter alia, that “Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate”. It is generally considered a breach of this certification for a party to submit material which it knows is not complete nor accurate.
Can an Online Pharmacy Use a Pharmaceutical Domain Name to Market Retail Sales of that Pharmaceutical?
Panelist: Ms. Victoria McEvedy
Brief Facts: The Complainant, founded in 1885, is a global research-driven pharmaceutical enterprise. One of the Complainant’s products is MOBIC (generic name: meloxicam) a nonsteroidal anti-inflammatory drug (NSAID). The disputed Domain Name <mobic .store> was registered on 4 February 2023 and resolves to a page entitled “Buy Mobic (Meloxican) online – Best Price.” The tab “BUY SAFE” resolves to an online pharmacy entitled “Mobic – Pain Relief” where the Complainant’s MOBIC branded products are offered for sale. The Respondent did not file a Response.
The Complainant alleges that the unauthorized Respondent must have been aware of the Complainant’s trademark when it registered the disputed Domain Name, which resolves to a website making direct reference to the MOBIC products and offers these products for sale. The Complainant further alleges that the Respondent has registered and used the disputed Domain Name in order to deceive such Internet users seeking the Complainant’s product, so as to generate revenue from selling unrelated or competing pharmaceuticals, and it does not represent a bona fide offering of goods or services or a legitimate use.
Held: The first category of bona fide offering as set out in paragraph 4(c) of the Policy encompasses third parties such as resellers, sales agents and licensees who have a right in law to use the mark in issue. The third category maps to the various defences in international trade mark norms for free speech and descriptive and nominative use of marks. Both are potentially engaged here on the face of the matter. The Complainant submitted evidence which shows the disputed Domain Name used to resolve the webpage, where the Complainant’s MOBIC branded products are offered for sale. The Panel could not access the pharmacy site, but based on the evidence, the links were to advertisements for the Complainant’s own drug and the drug offered at that online pharmacy was the genuine drug, made by the Complainant.
This appears to be a reseller case where the pharmacy is re-selling the genuine MOBIC product even though it also stocks and offers other competing products (just as offline pharmacies do). This can be an honest descriptive and nominative use. In the Panel’s view, no greater commercial connection would be assumed by consumers than in the case of offline pharmacies. Here the use appears to be used by a genuine reseller. This is the case even if the pharmacy is an unofficial or unauthorized seller, or re-seller; this is prima facie legitimate use. This flows from the test in OKI Data, WIPO Case D2001-0903, which has specific requirements. Under EU law, point (2) and (3) of the OKI Data rule are too strict and as just as a bricks and mortar store can sell a range of products and advertise them by reference to their names and marks, provided it is in accordance with honest practices, so can online stores.
On the face of it, the Respondent has rights or a legitimate interest in and is making the fair use of the mark in the disputed Domain Name to offer the genuine item for sale under its name and mark. There is no representation that the Respondent is the Complainant or the manufacturer. The Panel finds that although the Respondent has not come forward, even on the face of it, it is making fair use and so the Complainant has not satisfied its burden on this limb of the Policy.
Complainants’ Counsel: NAMESHIELD S.A.S.
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case raises an interesting issue. The Panelist recognized that the UDRP permits nominative fair use of a trademark to sell the genuine goods, while also stating that that the well-established OKI Data test is “too strict” under EU law, in terms of the second and third branches of the test, namely; 2) use to sell only the trade marked goods; (3) a disclaimer to explain accurately the relationship (or not) with the trade mark owner. It would have been interesting and helpful to learn more from the Panelist how EU law is less restrictive than the OKI Data test, bearing in mind of course that the UDRP is international and need not be consistent with one particular jurisdiction’s laws. In any event, I went back and read the actual OKI Data decision to see exactly what the OKI Data decision said about these two particular elements:
2 – Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
3 – The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.
With regard to the second OKI criteria, the key consideration under this aspect of the test, is baiting and switching. Can an associated website sell more than the specific trademarked goods yet still avoid ‘baiting and switching’? It does seem conceivable as the Panelist points out; “Just as a bricks and mortar store can sell a range of products and advertise them by reference to their names and marks, provided it is in accordance with honest practices, so too can online stores.” It is uncertain however, how far this analogy gets us, as if someone were to erect a bricks and mortar Nike Store and then sell Nike shoes together with a variety of other shoes, would not an average consumer believe that the Nike Store was officially affiliated with the Nike brand owner? Perhaps a stronger argument in the circumstances of this case, is that strictly speaking, the disputed Domain Name did only offer the trademarked pharmaceutical – in compliance with the second limb of the OKI Data test, and it was only once the user visits the online pharmacy webpage by clicking on the “Buy Safe” tab, that the user is taken to an online pharmacy that features the trademarked pharmaceutical front and centre, with various other drugs ostensibly offered via its online catalogue (as depicted above in the screenshots). I think though, that this argument is probably an overly technical interpretation of the second limb of the test, as if a website forwards to another, it may still employ a bait and switch approach notwithstanding that the first web page complies with the literal requirements of the OKI Data test.
So was there a bait and switch going on here? In the same manner that the aforesaid argument is overly technical and avoids the substance of the test, a good interpretation of the test should focus on the substance rather than the form. I am uncertain whether it can be said that a bait and switch occurred here, as once a visitor gets to the online pharmacy, it is readily apparent from even the first website, that it self-describes as a pharmacy and a “drug store”, and once the visitor gets to the online pharmacy itself at http://worldpharm24.com/categories/Pain-Relief/Mobic, that it indeed appears to be an online pharmaceutical retailer and not the pharmaceutical company itself, and apparently directly offers the MOBIC branded medication.
That being the case, there still may be an issue here. Some Panelists would see the disputed Domain Name itself, as “impersonating” the Complainant trademark owner, particularly given the absence of any additional word which could serve to identify that the purveyor is not the Complainant itself. On the other hand, some Panelists would take into consideration, the nature of the associated websites themselves. Indeed, the OKI Data test clearly contemplates taking into account the associated website under the third branch of the test (see above). Notably, the actual language of the third branch of the OKI Data test in the OKI Data decision itself, does not require a “disclaimer” per se. Rather, it must accurately disclose the registrant’s relationship with the trademark owner, yet this can ostensibly be done in ways other than via an express disclaimer, as implicitly suggested by the language of the OKI Data test itself. Here, arguably the nature of the first and second websites makes clear the nature of the relationship if not expressly, impliedly given the nature of the obvious retail pharmacy services being offered.
Ultimately however, there will be some Panelists that would see any use of the exact trademark as impersonation – despite OKI Data’s implicit contemplation of such use being permitted provided that all elements of the test are met – whereas others will see nominative fair use where the underlaying relationship is evidence to the average consumer.
No Conceivable Use of Domain Name Comprised of a Distinctive Mark
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant is the creator of the internationally well-known ROBLOX platform for online gaming and experiences. Since the company’s launch in 2006, Complainant’s platform has grown in popularity dramatically, particularly with younger people and now has almost 60 million daily active users. In 2018, the Complainant began offering an education platform called Roblox Education which offers free resources to teach students coding, game design, digital citizenship and entrepreneurial skills. The Complainant operates websites at <roblox .com> and <education .roblox .com>. The Complainant owns trademark registrations for the coined and inherently distinctive ROBLOX mark in over 30 countries, including the USPTO. The Complainant alleges that the Respondent registered the disputed Domain Name in bad faith with actual knowledge of Complainant’s rights in the ROBLOX mark and passively holds the domain name in bad faith. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant’s trademark is a coined term with no meaning other than to distinguish the Complainant and its business. The disputed Domain Name was registered on June 20, 2019, many years after the Complainant’s ROBLOX mark and its <roblox .com> and <education .roblox .com> websites had become very well-known worldwide. The disputed Domain Name resolves to a webpage that indicates that the domain name is “parked”. These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of the Respondent.
The circumstances set out above in relation to the second element satisfy the Panel that the Respondent was fully aware of Complainant’s very well-known ROBLOX mark when the Respondent registered the disputed Domain Name and that the Respondent did so in bad faith with intent to take unfair advantage of Complainant’s mark. Although the disputed Domain Name does not resolve to an active website, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there is no conceivable active use that could be made of the domain name that would not amount to an infringement of Complainant’s rights in its ROBLOX mark. Accordingly, the Panel finds that Respondent’s passive use of the domain name demonstrates registration and use in bad faith.
Complainants’ Counsel: John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The term “passive holding” is often thrown around but often misunderstood even by those somewhat familiar with the seminal case from where the concept was derived, namely Telstra. Here, the Panelist correctly distilled the concept of “passive holding” which fundamentally requires three primary features in order to properly employ it, namely; a) a well-known mark; and b) non-use of the corresponding domain name; and c) no conceivable bona fide use of the domain name by the registrant. All three factors must be present to properly invoke Telstra and “passive holding”, as was the case here. Some Panelists err by purporting to invoke Telstra when the domain name involves non-use but does not correspond to a well-known mark, or fail to consider whether there is a reasonably conceivable good faith use of the domain name.
Complainant Must Demonstrate That Trademark Pre-exists Domain Name Registration, Even When No Response
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The Complainant has rights in the trademark RETAIL INSITE for leasing and sales of land, real estate, shopping malls, commercial buildings, and in the activity of real estate brokerage through registration of the mark with the USPTO (registered: November 8, 2022; claimed first use in commerce: July 26, 1999). The disputed Domain Name was registered on November 25, 1998 and redirects to another site which is owned by a direct competitor to the Complainant. The Complainant alleges that the disputed Domain Name redirects users to a competitor’s site and is cybersquatting on Complainant’s trademark, for commercial gain, based on a likelihood of confusion and unfair competition. Moreover, the emails sent to the Domain Name do not bounce back as undeliverable. The Respondent failed to submit a Response in this proceeding.
Lanham Act: The Complainant further claims that the disputed Domain Name and its activities are in violation of the Anticybersquatting Consumer Protection Act (the “ACPA” found at 15 U.S.C. § 1125(d)) which is part of the federal Lanham Act in the United States of America. While UDRP Panels have, on occasion, looked to the ACPA for guidance, see Twentieth Century Fox Film Corporation v. DISH Network LLC, FA 1350483 (Forum Nov. 22, 2010), however, claims that are primarily based on this United States statute are beyond the scope of the Policy due to its differing standards, the wide array of discovery and other investigative tools available in the courtroom setting, and the limited jurisdiction afforded the Policy by ICANN.
Held: The redirection of a disputed Domain Name to a competitor evidences bad faith use under Policy, however, the Panel declines to analyze it as no evidence is provided to indicate that the Complainant possessed trademark rights at a time prior to Respondent’s acquisition of the disputed Domain Name. Paragraph 4(a)(iii) of the Policy is stated in the conjunctive “bad faith registration and use” [emphasis added]. The lack of any evidence that the 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 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.
Further, given the 1998 registration, there is no evidence made available otherwise that indicates the Respondent acquired the Domain Name at a later date. As the registration date of the disputed Domain Name predates even the earliest possible date on which the submitted evidence suggests that the Complainant may have acquired rights in the RETAIL INSITE trademark, the Panel is unable to find that the Respondent targeted the mark in bad faith at the time it registered the domain name and this fails the conjunctive requirement of third prong of the Policy. 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: Jason Wallace, California, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
This case is very instructive for prospective Complainants. Complainants must of course, prove that their trademark rights pre-exist a disputed domain name. Savvy Complainant counsel will employ commercial tools such as DomainTools, to look up historical Whois information where a question exists as to whether the trademark pre-existed the domain name. Historical Whois information may disclose that a change of ownership occurred long after the original registration date of the domain name, thereby assisting Complainants with proving that their rights arose prior to the current registrant’s domain name registration. Nevertheless, as a result of registrars concealing Whois Data (whether on their own volition or as a result of GDPR), historical Whois searches have become far less useful since the data has deteriorated since 2018. No longer are Complainant counsel always able to discern from historical Whois Data, that a change of registration occurred. Yet we know that changes of domain name ownership occur with regularity and that a registration date may belong to a previous domain name registrant rather than to the Respondent. In such cases, Complainant counsel must look to other sources to help discern a more recent change of registration. This can involve circumstantial evidence, such as a change of DNS records, change of hosts, change of use of the domain name, etc. Nevertheless, such circumstantial evidence will likely not be determinative and as such, Complainants can still be at a disadvantage when attempting to show prior rights. In such cases, a prudent approach for Complainant counsel could be to provide as much circumstantial evidence as possible and openly state in the Complainant, why it believes that a registration date occurred at a particular time. If a Respondent does not respond and the provided evidence is reasonably sufficient, that may be enough for a Panel. On the other hand, if a Response is filed, it is generally incumbent upon the Respondent to step forward with its actual registration date as this information is generally only available to the Respondent.
Here, it appears that the Complainant did not provide any evidence when faced with a registration date which pre-existed its trademark registration. Had the Complainant made efforts to marshal whatever circumstantial evidence that it could, combined with the non-Response, it may have been sufficient for the Panel in this case, particularly given the evidence of bad faith use.
Failure to Prove Secondary Meaning Fatal to Complainant’s Case
Panelist: Mr. Darryl C. Wilson
Brief Facts: The Complainant operates in building, development, and running of software applications on the blockchain and operates online at <optimism .io> (registered in 2015). The Complainant filed a USA trademark application for the word mark OPTIMISM in 2021. No USA trademark registration is identified nor is there a trademark registration from any other nation state indicated. The Complainant started using the OPTIMISM mark in commerce in 2019 and claims that its mark has become associated with open-source access to Ethereum. The Complainant relies on asserted widespread use and recognition in a niche field as proof of common law rights to the mark OPTIMISM.
The disputed Domain Name was registered on or about November 21, 2022 by the Russian Respondent. The Complainant alleges that the Respondent fails to use the disputed Domain Name in connection with making a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Instead, the Respondent uses the disputed Domain Name to pass off as the Complainant. The Complainant further alleges that the Respondent had actual knowledge of Complainant’s rights in the OPTIMISM mark prior to registration of the disputed domain. The Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Language of the Proceedings: The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. The Complainant contends Respondent’s website available at the disputed Domain Name uses English characters and words, suggesting that the Respondent is at least proficient in the English language. Further, the Complainant is neither conversant nor proficient in the Russian language and would require delay and unnecessary costs to translate the document. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Held: The Common law rights in a mark may be established through evidence that the mark has acquired secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder. Secondary meaning generally requires the claimant to indicate length of use and amount of sales under the mark, the nature and extent of advertising, and consumer association through surveys and media recognition. The Complainant provides almost none of the specific above referenced evidence in its pleadings. The Complainant does indicate that his domain name was registered earlier as opposed to Respondent’s in 2022 but that alone does not indicate secondary meaning. The Complainant definitely had time from its 2015 registration to generate public association with the generic term “optimism” for purposes of successful trademark application in some jurisdiction or additional domain name registrations.
However, the Complainant did not begin to use the mark in commerce until 2019. The Panel recognizes that .io is popular with some tech enthusiasts, which may further explain in part Complainant’s choice of that top level domain, but that does not explain why no further steps were taken to protect the secondary level domain “optimism” as Complainant’s mark. No US trademark registration has been issued and while no specifics are provided, it is just as likely due to “optimism” being a generic term or merely descriptive without proof of secondary meaning. In short, nothing has been provided to indicate the public generally associates the word mark “OPTIMISM” with the Complainant. The Panel, therefore, finds that the Complainant has failed to show that it has common law rights in the OPTIMISM mark per Policy.
Complainants’ Counsel: Matthew Passmore of Cobalt LLP, California
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This is another instance of a Complainant failing to provide the required evidence in a no-Response case. Even here, where the evidence of bad faith use is compelling, it is incumbent upon a Complainant to meet the requirements of proving common law rights as understood by the jurisprudence. A Complainant cannot count on a Panel ignoring these requirements and must put in the minimal effort of marshalling appropriate evidence.
Bad Faith Use of the Domain Name Can Never Confer Legitimate Rights
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant, established in 2002, is part of the Franke Group, which provides devices and systems for kitchens, bathrooms, professional food services and coffee preparation. The Complainant uses <franke .com>, in connection with its official website where it provides information about itself and its products. The Franke Group operates in many countries, including China, where it has established Franke (China) Kitchen System Co., Ltd and Franke (Shanghai) Trade Co., Ltd, both based in Shanghai. The Complainant owns multiple trademark registrations in multiple jurisdictions, including the International trademark registration for the Franke logo, registered on October 24, 1991, designating multiple jurisdictions, including China, and another International trademark registration for FRANKE, registered on June 14, 2007, designating multiple jurisdictions, including China.
The disputed Domain Name was registered on June 2, 2021 by a Chinese Respondent. The disputed Domain Name previously resolved to a website mimicking the Franke Group’s website associated with the domain name <franke .com> by reproducing its structure as well as textual and design elements and expressly referring to the Franke Group. The disputed Domain Name now resolves to a website unaffiliated with the Complainant that advertises for sale water heater products that are not FRANKE products. The Complainant alleges that the registration of the disputed Domain Name – which includes the widely-known FRANKE trademark and the abbreviation of the city name of Shanghai “sh” – aims at creating a direct association with the Complainant’s domain name <franke .com> and the presence of the Franke Group in China.
Held: The disputed Domain Name combines the Complainant’s FRANKE mark with an abbreviated reference to the municipality of Shanghai, which risks implying that it will resolve to the website of one of the Complainant’s Shanghai-based affiliates. The Complainant submits that it has not licensed or authorized the Respondent to register or use the disputed Domain Name, and that the Respondent is not affiliated with it in any way. Nothing in the content of the website has any apparent connection to the Complainant’s FRANKE mark, nor to the operational element of the disputed Domain Name (“frankesh”). In view of these circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services, nor is he making a legitimate non-commercial or fair use of the disputed Domain Name.
As regards registration, the disputed Domain Name was registered in 2021, many years after the registration of the Complainant’s FRANKE mark, including in China, where the Respondent is resident. The website formerly associated with the disputed Domain Name displayed the Complainant’s Franke logo and the names of one of its Shanghai affiliates and its corporate group (albeit both misspelt). In view of these circumstances, the Panel finds that the Respondent had the Complainant and its FRANKE mark in mind when he registered the disputed Domain Name. As regards use, the Panel considers that by using the disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website within the terms of the Policy. Therefore, the Panel finds that the disputed Domain Name has been registered and is being used in bad faith.
Complainants’ Counsel: BrandIT GmbH, Switzerland
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case is illustrative of how important the associated website content can be in determining whether cybersquatting has occurred. Here, by looking at the term FRANKESH alone, one may not have sufficient reason to conclude that it was registered to target the Complainant, FRANKE brand owner. But by considering the associated website which passed itself off as the Complainant, it becomes clearer what the Registrant’s actual intentions were.