Panel: Complainant’s Representatives Likely Solely Responsible for RDNH – ICA UDRP Digest – Vol 3.1

Ankur Raheja UDRP Case Summaries

We hope you will enjoy this edition of the Digest (Vol. 3.1), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and special guest Steven M. Levy:

Panel: Complainant’s Representatives Likely Solely Responsible for RDNH (BeautyGarde .com *plus comment)

Mark Cuban’s Joke Results in Domain Name Transfer, Despite Free Speech Arguments (GoBlue .com)

Where Evidence is Lacking from Both Sides, UDRP is the Complainant’s Case to Make (SurfShark .ca)

Not an Appropriate Case to Advise Refiling, Domain Name has Prior Registration (bodynetic .com *plus comment)

Panel: Complaint May be Re-filed if the Complainant Can Establish that Respondent is not the Original Registrant  (caravana .com *plus comment)

Complainant Brought Proceedings after Numerous Attempts to Purchase the Domain Name (exxe .com)

Cybersquatter Gives Complainant a Headache with Job Scam (MigraineAgain .org)

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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.

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Panel: Complainant’s Representatives Likely Solely Responsible for RDNH

Sothys Auriac v. Nonie Creme, WIPO Case No. D2022-3862

<BeautyGarde .com>

Panelists: Mr. Adam Taylor (Presiding), Mr. William Lobelson and Mr. Robert A. Badgley

Brief Facts: The Complainant manufactures and distributes high-end cosmetic products to professionals in beauty institutes, spas and luxury hotels under the mark “Beauty Garden”, via a website at <beautygarden .com>. It owns a number of word and figurative trademarks for BEAUTY GARDEN including a French trade mark (registered on January 31, 1997) and later-filed trademarks in United Kingdom, Canada, Australian, European Union, and USA. The disputed Domain Name was registered on January 13, 2017 and offers cosmetic products (branded with BEAUTYGARDE), as well as related content such as tutorials about manicures and articles about various beauty topics.

The Respondent, who describes herself as “a serial entrepreneur in the beauty interest and a recognized beauty expert”, is the founder of BeautyGarde, LLC, which was incorporated in the United States on December 29, 2016. The Respondent owns a number of trade marks for BEAUTYGARDE in class 3, including US mark (registered on June 19, 2018), as well as later-filed trademarks dating from January 8, 2018, in Australia, Canada, Mexico, South Korea, and the United Kingdom. On October 6, 2021, the EUIPO rendered a default decision invalidating the Respondent’s International Registration for BEAUTYGARDE insofar as it applied to the European Union.

The Complainant alleges that the presumption of bad faith is strengthened by the fact that the Respondent failed to respect the EUIPO Decision as it continues to use its name as a trade mark and the disputed Domain Name to attract consumers, despite EUIPO recognition of the likelihood of confusion. The Respondent contends that the Complainant made various misleading statements about the EUIPO decision and exaggerated its importance, i.e. that the EUIPO Decision is limited to the European Union, and in any case it was obtained without the Respondent’s knowledge or participation.

Held: The Respondent submitted evidence that, for some six years and therefore starting long before any notice of the dispute, the Respondent has used the disputed Domain Name in connection with a bona fide offering of goods in accordance with the Policy. In its recent tax year ending 2021, the Respondent used the website at the disputed Domain Name to generate over USD $1 million in sales of its cosmetic products under the BEAUTYGARDE mark, in respect of which the Respondent owns trademarks in the United States and five other territories. In the Panel’s view, the Complainant places far too much weight on the EUIPO Decision and arguably read too much into it. The Panel also considers that the Respondent has established that it has been commonly known by (the operative part of) the disputed Domain Name for the purpose of the Policy, hence the legitimate interests in the disputed Domain Name.

RDNH: The Complainant failed to disclose the crucial point that the Respondent owned some six registered trademarks for BEAUTYGARDE, i.e., aside from the one invalidated by the EUIPO Decision. The Panel thinks it inconceivable that the Complainant was unaware of the existence of those marks when it filed its Complaint, and indeed the Complainant’s supplemental filing does not deny the Respondent’s assertion that the Complainant did know about them. The Complainant must have appreciated that the existence of those six trademarks seriously undermined its case under the second element, and no doubt that is the reason that they were not produced to the Panel. If this case had not been defended, as happened with the EUIPO proceeding, an injustice may well have been done.

For the above reasons, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Finally, the Panel would observe that it expects that the Complainant itself was unaware of the matters constituting RDNH and most likely, the fault lies solely with the Complainant’s representatives.

Complaint Denied (RDNH)

Complainants’ Counsel: PROMARK, France
Respondents’ Counsel: Atkins Intellectual Property, PLLC, United States

Case Comment by ICA General Counsel, Zak Muscovitch: It is encouraging that the Panel in this case, noted that the responsibility for the RDNH finding likely rested solely with the Complainant’s representatives. As discussed in Digest Volume 2.28, 2.43 and 2.46, the reality is that sometimes, and perhaps more often than not, it is complainant counsel who are primarily responsible for bringing RDNH cases since the complainants themselves rely upon counsel to advise and guide them. In this case, the Panel to its credit, correctly noted that it was likely the Complainant’s counsel who was in the position to know that bringing this Complaint would likely constitute an abusive proceeding, and therefore was likely responsible. Noting the responsibility of complainant counsel for RDNH is more than merely noting the obvious; it is an important deterrent to RDNH since complainant counsel may think twice about bringing an abusive proceeding if it is they themselves that are stung with the RDNH finding rather than their hapless client, alone.


Mark Cuban’s Joke Results in Domain Name Transfer, Despite Free Speech Arguments 

The Regents of The University of Michigan v. Jason Ferrantello, NAF Claim Number: FA2211002019913

<GoBlue .com>

Panelists: Ms. Nathalie Dreyfus (Presiding), Mr. Clive Elliott, Mr. Nicholas Smith

Brief Facts: The Complainant represents the interests of Michigan State University, founded in 1817. Since around 1975, the Complainant has been using the slogan “GO BLUE” for its goods and services, and owns trademark rights in the “M GO BLUE” mark before USPTO, earliest registration dates back to September 28, 1982. Besides, the Complainant owns the domain name <mgoblue .com> registered on December 28, 1996; used to promote Complainant’s football team activity and to offer goods such as athletic apparel for sale.

The Respondent is an employee of Mr. Mark Cuban. Mr. Cuban is portrayed, in the Response filed by the Respondent, as “a proud alumnus of Indiana University” and “an avid fan of its sports programs”. The disputed Domain Name was purchased by the Respondent on or around October 8, 2022, before a football game between Complainant’s team (Michigan) and Indiana University’s team. Before the game occurred, Fox College Football’s Twitter uploaded a video of Mr. Cuban discussing the purchase of the disputed Domain Name, the latter inviting all Michigan and Indiana fans to take a look at it. The disputed Domain Name resolves to the website <indiana .nil .store> featuring apparel of the university of Indiana, offered for sale.

The Complainant alleges that Mr. Cuban’s comments in the Twitter video are “ambiguous at best” and that some people may not perceive the joke, especially considering that his commentary is not posted on the litigious website, which is accessible to people from all over the world. The Respondent contends that the disputed Domain Name was acquired as a joke to tease Complainant and its team’s supporters, hence, is protected as free speech under the First Amendment of the United States Constitution.

Held: The Panel accepts that the disputed Domain Name may have been purchased as a joke at Complainant’s expense. However, the record shows that the Respondent did not intend to solely make an inoffensive joke on a game night. Indeed, for two months since, the disputed Domain Name resolves to the website this offers for sale a competing university’s goods. Moreover, neither an explanation for the alleged joke is available as a warning on the disputed Domain Name’s website nor is there a disclaimer. The Panel is of the view that if it was solely a joke, the Respondent would have proposed to transfer the disputed Domain Name to Complainant and/or at least would have removed the contentious content on the website that resolves to the disputed Domain Name.

The Respondent was aware of Complainant’s trademark rights when he registered the disputed Domain Name and admits he was targeting such trademarks when registering the disputed Domain Name. The Respondent is certainly aware that Internet users are constituted by a myriad of different people, not all familiar with US college sports. Hence, at least part of Internet users looking for Complainant’s products and landing on the disputed Domain Name could be confused as to the origin of the goods on the disputed Domain Name. Indeed, foreign Internet users looking to purchase college sports products, without supporting a specific team, could believe there is a connection between Complainant and the website in question. Such use is usually not considered good faith use.

Besides, the Panel disagrees with the Respondent that the registration and use of the disputed Domain Name in this manner correspond to free speech, protected by the First Amendment of the United States. No commentary is made on the website resolving to the disputed Domain Name as regards Complainant, no artwork has been created (contrary to Respondent’s arguments). The Twitter video, essential to understanding the alleged joke, is separated from the content presented on the disputed Domain Name. The disputed Domain Name, targeting Complainant’s trademarks, is still registered by the Respondent and still resolves to a website featuring competing goods. The joke therefore has a tendency to disrupt Complainant’s business and prevent the latter from reflecting its trademark in the disputed Domain Name. Consequently, the Panel finds that the disputed Domain Name has been registered and is being used in bad faith in accordance with the Policy.

Transfer

Complainants’ Counsel: Paul R. Fransway of DICKINSON WRIGHT PLLC, Michigan, USA
Respondents’ Counsel: Darin M. Klemchuk of Klemchuk LLP, Texas, USA


Where Evidence is Lacking from Both Sides, UDRP is the Complainant’s Case to Make

SURFSHARK HOLDING B.V. v. Goran Bajic, CCIIDRC Case No DCA-18783-CIRA

<SurfShark .ca>

Panelists: Mr. David Wotherspoon, Mr. Zak Muscovitch and Mr. Barry C. Effler

Brief Facts: The Complainant began providing VPN, antivirus and other cybersecurity services globally in 2018 and currently has over 3,000 servers operating in 65 countries, including Canada. The Complainant owns Canadian trademark SURFSHARK (registered on December 14, 2021) in association with providing VPN services. The Respondent registered the Domain Name on April 12, 2020 and links to a GoDaddy landing page. The Complainant claims that in 2020, Surfshark was one of ‘the most known cyber-security brands in Canada’ and Canada being one of “its top performing countries”. The Complainant further points out that the Respondent holds seventy (70) other domain names, including <teleworking.ca>, <legendbiotech.ca>, and <cybertruck.ca> which the Complainant claims correspond in part to “various well-known brands”.

The Respondent claims to be a “lifelong waterman that has been teaching water sports since the mid-1980s when [he] had his first job as a windsurfing instructor”. He further contends that “surfshark” is a colloquial term and he would like to use the Domain Name to create a website that would teach Canadians about surfing, windsurfing, stand up paddle-boarding, foiling and other such similar recreational water sports. The Respondent points to another domain name which is associated with a fairly rudimentary website, namely Foiling.ca about hydrofoil water sports, however he does not provide evidence that this website belongs to him nor provides any further information about the website.

Held: The Complainant submitted supporting evidence showing that the brand was “mentioned by over 200 influencers videos in Canada” in 2020, however did not provide evidence demonstrating when in 2020 this occurred or whether the viewers were located in Canada. The Complainant further provides evidence of 70 domain names owned by the Respondent, some of which include terms that appear to be associated with known brands such as <albertsons.ca.>, <zoominfo.ca>, and <ellesse.ca>. Beyond the list, no other evidence has been provided, such as other domain name proceedings with findings adverse to the Respondent. This leaves the Panel speculating, which is insufficient to establish the onus that must be met by the Complainant.

On the other hand, the Respondent claims that he has been teaching water sports since the mid 1980’s and is a Canadian Coaching Association coach, but failed to provide any evidence to support these claims as well. Beyond claimed future plans, the Respondent has not submitted support for his factual and legal claims. Lack of supporting evidence can in some cases be attributed to an unrepresented Respondent, however even if the Respondent had provided evidentiary support, this material would only possibly provide a credible explanation for the registration if the Respondent had also proven the descriptive meaning of the term, “surfshark”, which he failed to do, as aforesaid. The Panel finds that the Respondent has not provided sufficient evidence to claim that surfshark is a common colloquial term often used in the English language.

The Respondent acknowledges in his Response that he would be have been willing to sell the Domain Name to the Complainant, however the Panel does not interpret this to be an admission that this was the primary reason for having registered the Domain Name in the first place, particularly since at no point did the Respondent attempt to sell the Domain to the Complainant. Having regard to the totality of the evidence presented by the Complainant, the Panel finds the evidence lacking insofar as it does not satisfactorily demonstrate that the Respondent registered the Domain Name because of the Complainant’s trademark rights, rather than because of the Respondent’s independent interest in the term. That is not to say that the Panel does not have its suspicions, particularly as a result of the Respondent’s unsatisfactory explanation for his registration, but ultimately it is the Complainant’s case to make and accordingly, the Panel finds that the Complainant has not provided sufficient evidence that the Domain Name was registered in bad faith pursuant to the Policy.

Complaint Denied

Complainants’ Counsel: Not Available
Respondents’ Counsel: Self-represented


Not an Appropriate Case to Advise Refiling, Domain Name has Prior Registration

The Posture Lab Pte Ltd. v. Privacy Administrator, Anonymize, Inc., WIPO Case No. D2022-4181

<bodynetic .com>

Panelist: Mr. Andrew D. S. Lothian

Brief Facts: The Complainant, in about mid-2021, created and adopted the “Bodynetic” mark for use as a trading name and primary brand for its global business including in Singapore, Australia, and Viet Nam. Its principal activities are the provision of fitness centers, gymnasiums, and related fitness and health training. The Complainant applied for various trademarks in respect of the BODYNETIC mark, which are pending in Singapore and Australia. The disputed Domain Name was registered on December 16, 2018 and is listed for sale in the sum of USD $2,175. The associated landing page, describes the term “bodynetic” as “a combination of ‘body’ and ‘kinetic’ that suggests activity, health, and movement. Possible uses: A heart rate monitor. A fitness class; A personal trainer; An activity tracker; A running program”.

The Complainant alleges that the disputed Domain Name is being offered for sale, with an intent for commercial gain and the parked pages comprising pay-per-click (“PPC”) links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark… any perceived nexus between the disputed Domain Name and the Complainant’s mark will damage the Complainant’s goodwill and reputation. The Complainant also alleges that there is also a substantial risk that the Respondent may be using or intending to use the disputed Domain Name to take advantage of it for purposes other than hosting a website, such as sending phishing emails to obtain personal information or solicit payment.

Held: The Complainant does not possess UDRP-relevant rights in a registered trademark. The Complainant puts forward various pending trademark applications for the mark BODYNETIC but these by themselves are insufficient to establish rights in a trademark for the purposes of the first element under the Policy. Although the Complaint has already failed on the first element assessment above, the Panel notes for completeness that subject to certain scenarios involving nascent, usually as-yet unregistered trademark rights, panels under the Policy will not normally find bad faith on the part of a respondent where it registers a domain name before the complainant’s trademark rights accrue. That is the situation in the present administrative proceeding.

The disputed Domain Name was registered on December 16, 2018. By its own admission, the Complainant only adopted the BODYNETIC mark in mid-2021, namely over two and a half years later. The Complainant filed its earliest trademark application on September 15, 2022. There is no suggestion on the present record that the Respondent knew of the Complainant’s plans to adopt the “Bodynetic” brand when the disputed Domain Name was registered in December 2018 and that it therefore affected the registration of the disputed Domain Name in anticipation of the Complainant’s then-nascent trademark rights. In these circumstances, the disputed Domain Name does not appear to have been registered with the Complainant or its rights in mind, or with intent to target these. The fact that the disputed Domain Name is being offered for general sale does not alter this position.

Refiling: In these circumstances, had it been necessary to go beyond the question of the Complainant’s standing in the first element assessment, the Complaint would also have failed on the third element in that the disputed Domain Name does not appear to have been registered in bad faith. For that reason, the Panel does not consider it appropriate to indicate that the Complainant may consider refiling the present Complaint if it should be able to overcome the threshold issue, namely its lack of trademark rights, in future.

Complaint Denied

Complainants’ Counsel: Sparke Helmore Lawyers, Australia
Respondents’ Counsel: No Response

Case Comment by ICA General Counsel, Zak Muscovitch: Panelist Andrew Lothian has provided helpful guidance for Panelists who are considering whether to expressly open the door to a subsequent refiling. As noted in Volume 2.49 in discussing Panelist Yuji Yamaguchi’s decision in Altarae, in some cases it may be appropriate to for a Panelist to expressly open the door to the Complainant re-filing its Complaint in the future, if evidence of bad faith arises. In the present case however, the Panelist noted that it would be inappropriate to expressly open the door to the Complainant refiling, since even if it could subsequently provide “UDRP relevant rights”, the chronology precludes a finding of bad faith registration. Accordingly, Panelists should consider whether expressly indicating that a Complainant may refile is appropriate, where regardless, the Complainant could not in any event meet the three-part UDRP test.


Panel: Complaint May be Re-filed if the Complainant Can Establish that Respondent is not the Original Registrant

Carvana, LLC v. Privacy Administrator, Anonymize, Inc., WIPO Case No. D2022-3657

<caravana .com>

Panelist: Mr. Georges Nahitchevansky

Brief Facts: The Complainant operates an e-commerce platform at <carvana .com> for the buying and selling of used cars. The Complainant has used the CARVANA mark (registered on April 30, 2013 before USPTO) to promote and provide its online vehicle dealership services and for financing services in connection with the purchase of used cars through Complainant’s platform. The disputed Domain Name was registered on March 27, 2000, however the identity of the Respondent is unknown due to the use of a privacy service. Currently, the disputed Domain Name resolves to a web page that offers the disputed Domain Name for sale.

The Complainant alleges that the Respondent has registered and used the disputed Domain Name in bad faith as the Respondent has done so “to trade upon the reputation and goodwill of the Complainant and its CARVANA Marks for financial gain”. In that regard, the Complainant notes that in September 2022, the Respondent used the disputed Domain Name to attract and redirect web traffic through a series of URLs that ultimately lead to a web page within Complainant’s website at <carvana .com> for Respondent’s own commercial benefit.

Held: There is no evidence showing the disputed Domain Name having changed hands at any time since it’s registration on March 27, 2000. As Complainant’s trademark rights in CARVANA only arose in 2013, it appears that the Respondent registered the disputed Domain Name before the Complainant developed any trademark rights in CARVANA and thus could not have been acting in bad faith. Besides, the issue Complainant also faces is that the disputed Domain Name fully and solely consists of a common Spanish word for “caravan” or “trailer”. Thus, beyond showing that the disputed Domain Name was in fact registered after Complainant’s trademark rights in CARVANA arose in 2013, the Complainant would still need to show that the registration of the disputed Domain Name was done to take advantage of Complainant’s rights in CARVANA as a “typo” domain and not on account of its value as the common Spanish word for “caravan” or “trailer”.

The Panel is mindful that the Respondent has failed to appear in this matter and that the use of the disputed Domain Name in September 2022 as a redirect to a page within Complainant’s website appears to be in bad faith and to take advantage of Complainant’s rights in CARVANA. However, such a redirect in 2022 in isolation does not in and of itself shows evidence of the original registration of a Domain Name as having been done in bad faith. Certainly, the timing of an acquisition or registration of the disputed Domain Name in connection with its use could establish that the registration of the disputed Domain Name was as a typo version of the CARVANA mark and not based on its possible value as a common Spanish word. Here, however, that evidence is lacking and on the limited evidence submitted the Panel is constrained to conclude that the disputed Domain Name appears to have been registered before the Complainant developed any trademark rights in CARVANA.

Refiling: The Panel notes that in making this decision it has serious reservations on whether the disputed Domain Name has remained with the same owner since 2000, particularly in light of Respondent’s complete silence in this matter, and noting the redirection to Complainant’s own site. As such, it may be possible that evidence establishing a change of ownership of the disputed Domain Name after the Complainant developed trademark rights in the CARVANA mark could cast a different light on the Panel’s assessment of Respondent’s registration and use of the disputed Domain Name. Consequently, the Panel concludes that its ruling is without prejudice to the Complainant potentially refiling a Complaint in the event, the Complainant is able to establish with credible evidence that the ownership of the disputed Domain Name changed after the Complainant developed rights in the CARVANA mark.

Complaint Denied

Complainants’ Counsel: Represented Internally
Respondents’ Counsel: No Response

Special Guest Case Comment by Steven M. Levy: Steve Levy focuses on trademark domain name disputes and has personally researched, drafted, and filed over 600 domain name complaints. Steve serves as a Panelist at Forum and CIIDRC, accredited UDRP dispute resolution providers. He is a frequent speaker on the topic of domain name disputes and is eager to encourage greater awareness of, and participation in this field by stakeholders and practitioners. Prior to his current roles, Mr. Levy led the global intellectual property practice team at the Home Depot, was an associate at the New York office of the Proskauer law firm, and was in-house counsel to Sony Corporation based in Tokyo, Japan.

Two of the most often overlooked requirements of any UDRP complaint are that the complainant demonstrate trademark rights that predate the respondent’s acquisition of the disputed domain name (due to use of the word “and” in the bad faith registration and use requirement of par. 4(a)(iii)), and that claims be supported with sufficient evidence.

Practitioners who are unfamiliar with the UDRP frequently overlook or don’t understand the meaning of the conjunctive bad faith registration “and” use standard and its implication that bad faith registration or acquisition of a domain name (i.e., targeting of the complainant’s mark) is simply not possible at a time before the trademark even exists. The UDRP is not like seeking injunctive relief in a courtroom and so it may be counter-intuitive to some that no matter how strongly the current use of a domain shows bad faith, the fact that it may not have also been registered in bad faith results in a doomed case. Further, the Complainant in this case didn’t understand that the bad faith registration requirement of par. 4(a)(iii) has been interpreted, not only to apply to the original creator of a domain name, but also to a respondent who acquired the domain name more recently – often considered a new “registration”.

The second element mentioned above, adequate evidence, is also often lacking in UDRP cases. While it’s true that this venue does not have as strict evidentiary standards as a courtroom or all of the tools such as depositions, witness testimony, cross-examination, etc., the parties must still support their case with something beyond a simple textual claim or assertion. In this case, it was critical to review and submit into evidence archived Whois (ownership) records in an effort to show that the current Respondent may have registered or acquired the domain name after the Complainant’s CARVANA trademark came into existence and thus may have actually targeted the mark in bad faith. Of course, the rise in use of Whois privacy services and nondisclosure by registrars has hampered this effort so it may not be an easy task.

In the end, the Panel was rather generous in denying the claim without prejudice to a refiled complaint attended by the evidence necessary to support a claim of bad faith. It will be interesting to see whether Complainant takes up this challenge.


Complainant Brought Proceedings after Numerous Attempts to Purchase the Domain Name

Cetin Family Tekstil Gida Pazarlama Sanayi Ve Ticaret Limited Sirketi v. Tom Lamboo, Intron Sport, WIPO Case No. D2022-3960

<exxe .com>

Panelist: Mr. Steven A. Maier

Brief Facts: The Complainant operates a number of luxury fashion retail outlets in Türkiye and an online store at <exxeselection .com>. It owns Türkiye trademark registration for mark EXXE, dated September 26, 2002 and another later registration for EXXE SELECTION. The disputed Domain Name was registered on April 27, 1998 and the website, since at least January 2020, includes a logo comprising the term “exxe” in red against a yellow background.

The Complainant exhibits screenshots from the Internet Archive which suggest that the website at all material times comprised a “holding” or “under construction” page and alleges that the Respondent’s conduct represents a “passive holding” of the disputed Domain Name, which has been held to constitute bad faith in previous cases under the UDRP. The Respondent contends that it was registered for the purpose of a global exchange platform and concedes that the website has been “under construction” for some time but states that his project is on-going and includes outside investment.

The Complainant further provides that it attempted to buy the disputed Domain Name from the Respondent on several occasions over the past 22 years. In 2017, Respondent’s replied: “This domain name is not for sale. On the other hand you can try to offer an amount I can’t refuse.” The Complainant alleges that the Respondent was seeking to sell the disputed Domain Name to the Complainant for a sum well in excess of his out-of-pocket costs. The Respondent contends that the disputed Domain Name was never put up for sale in any manner and that the Complainant is seeking to misrepresent the meaning of the email exchange referred to above.

Held: The Complainant claims that it opened a physical store in Türkiye in 1997. However, it provides no evidence of the operation of that store or its trading name at that time. The Respondent registered the disputed Domain Name in 1998. The Complainant had no trademark registrations, or even applications, at that time and no Internet presence. The Respondent cannot have registered the disputed Domain Name in bad faith unless he was aware of, and targeted, the Complainant’s rights in the mark EXXE (if any existed) at the date of such registration, and the Complainant cannot therefore establish that the disputed Domain Name was registered in bad faith.

While the above is sufficient to dispose of this proceeding, the Panel also declines to find that the disputed Domain Name has been used in bad faith, given the Respondent’s explanation for his holding and use of the disputed Domain Name. Further, there is no evidence upon which to conclude that the Respondent sought to sell the disputed Domain Name to the Complainant for an inflated price. On the contrary, the evidence is that the Complainant made numerous attempts to buy the disputed Domain Name from the Respondent on a commercial basis.

So far as any “passive holding” is concerned, the decision cited by the Complainant (and other similar decisions) indicate that a passive holding does not preclude a finding of bad faith if all the other circumstances of the case point to that conclusion. Whether or not the Respondent’s holding of the disputed Domain Name could be regarded as passive, the Panel does not find any such circumstances to be present in this case.

RDNH: In the view of the Panel, the Complainant knew or ought to have known that it could not establish any arguable case that the Respondent had registered the disputed Domain Name in bad faith, i.e., in the knowledge of the Complainant’s use of the mark EXXE and with the intention of taking unfair advantage of any rights that the Complainant may have obtained in that mark. Moreover, the exchange of emails exhibited by the Complainant indicates that the Complainant made a commercial approach to the Respondent to buy the disputed Domain Name without any suggestion that the disputed Domain Name had been registered or used in bad faith.

The Complainant volunteers that it made numerous unsuccessful approaches to the Respondent and then launched the present proceeding, having failed in its legitimate efforts to purchase the disputed Domain Name from the Respondent. The Panel also notes that the Complainant in this proceeding is legally represented, which carries a greater obligation to ensure that any proceedings under the UDRP are properly brought. The Panel finds therefore that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Complaint Denied (RDNH)

Complainants’ Counsel: Arnold & Siedsma B.V., Netherlands
Respondents’ Counsel: Self-represented


Cybersquatter Gives Complainant a Headache with Job Scam

Everyday Health, Inc. v. Animashaun Olalekan, NAF Claim Number: FA2211002022046

<MigraineAgain .org>

Panelist: Ms. Sandra J. Franklin

Brief Facts: The Complainant is a global, multi-platform health and wellness company that owns and operates the Migraine Again brand and website. The Complainant holds a registration for the MIGRAINE AGAIN mark with the USPTO (registered May 31, 2022). The Respondent registered the disputed Domain Name on October 24, 2022, and uses it to pass off as the Complainant. The Complainant claims that it first used the MIGRAINE AGAIN mark in 2014, well before the Respondent registered the disputed Domain Name on October 24, 2022.

The Complainant asserts that the Respondent registered and uses the Domain Name in bad faith to cause confusion as to the source of its website or its affiliation in order to attract, for commercial gain, Internet users to its website. The Complainant also asserts that the Respondent registered the disputed Domain Name with actual knowledge of Complainant’s rights in the MIGRAINE AGAIN mark, as evinced by the attempted fraudulent job scam perpetrated by the Respondent.

Held: The Panel finds that using the disputed Domain Name to pass off as a Complainant is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. Thus, the Respondent has no rights under the Policy. The Complainant provides screenshot evidence of the Respondent’s job scam. This constitutes phishing and is evidence of bad faith under Policy. Using a disputed Domain Name to create a likelihood of confusion as to the sponsorship or affiliation of the resolving website for commercial gain is evidence of bad faith under Policy. Therefore, the Panel finds that the Respondent registered and uses the disputed Domain Name in bad faith under the Policy.

Transfer

Complainants’ Counsel: Alyssa Flores of Ziff Davis, LLC, New York, USA
Respondents’ Counsel: No Response