We hope you will enjoy this edition of the Digest (Vol. 3.17), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and Editor, Ankur Raheja.
‣ Panel Finds Secondary Meaning but No Acquired Distinctiveness (droit-technologies .org *with commentary)
‣ Panel: Logical Conclusion is that the Respondent could not have Targeted a Future Trademark (ticketsms .com and ticketsms .net)
‣ RDNH Denied. No “Trouble or Expense” For Respondent to Hire a Lawyer and Defend Against Meritless Claim (sycomore .com *with commentary)
‣ Registrant’s Name Redacted Because Not the Actual Registrant (kroo-bank .com)
‣ Domain Name Registered For its Descriptive Value Rather than its Trademark Value (ebet .com.au)
YOU CAN JOIN US VIA ZOOM ON APRIL 27, 2023 at 3:00 PM ET, IN HONORING UDRP PANELIST, PRACTITIONER, AND SCHOLAR, GERALD LEVINE WITH A LIFETIME ACHIEVEMENT AWARD.
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
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Panel Finds Secondary Meaning but No Acquired Distinctiveness
Max & Zoe SRL v. Frederic Peters, CAC Case No. CAC-UDRP-105154
Panelist: Mr. Flip Petillion
Brief Facts: The Complainant is the holder of the domain name <droit-technologie .org>, (registered on August 4, 1998), which resolves to a portal/blog of articles and studies related to tech law, innovation and intellectual property. The Complainant claims to have unregistered trademark rights in the trade name “Droit & Technologies” and the domain name <droit-technologie .org>. The disputed Domain Name was registered on December 21, 2022, and resolves to a blocked web page. According to the Complainant’s evidence, a person with a name corresponding to the Respondent’s name sent an e-mail to Complainant’s director Mr. Etienne Wéry on December 1, 2017, announcing the registration of the disputed Domain Name. The Complainant also provides a screenshot, dated January 17, 2023, of a LinkedIn post sent under a name corresponding to the Respondent’s name. This post announces content to be posted on a blog linked to the disputed Domain Name and mentions the name of Mr. Etienne Wéry.
Held: The trade name and the domain name are composed solely of descriptive terms which are not inherently distinctive [Editor’s note: “droit” means “law” and “technologie” means “technology” in French]. Therefore, the Panel finds that the Complainant’s evidence regarding the acquired distinctiveness of the trade name “Droit & Technologies” is insufficient, as nearly all the evidence originates from the Complainant’s own website. However, the Panel finds that the Complainant’s evidence shows some form of secondary meaning acquired by its domain name <droit-technologie .org>. More importantly, the Complainant’s evidence indicates an intention of the Respondent to target the Complainant’s director and the Complainant’s domain name <droit-technologie .org>. According to the Panel, this circumstance supports that the Complainant’s domain name achieved some significance as a source identifier, also considering the Belgian case law and legal doctrine regarding trade names as referenced by the Complainant. In these circumstances, the Panel finds that the Complainant has established unregistered trademark rights in the sign “droit-technologie .org” for purposes of the Policy.
The disputed Domain Name is almost identical to the Complainant’s unregistered trademark and carries a risk of implied affiliation with the Complainant and cannot constitute fair use. The Panel further finds that the Respondent was undoubtedly aware of the Complainant and the website linked to the Complainant’s domain name <droit-technologie .org> at the moment the Respondent registered the disputed Domain Name and the said registration appears to the Panel, primarily to disrupt the business of the Complainant. The Panel observes that the Respondent is not presently using the disputed Domain Name but as mentioned above, evidence suggests that the Respondent announced the start of a blog linked to the disputed Domain Name. In view of the circumstances of this case, the Panel finds that there is a reasonable risk that the Respondent uses the disputed Domain Name to cause harm to the Complainant. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed Domain Name was registered and is being used in bad faith.
Complainants’ Counsel: Philippe Navez
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Panelist determined that the Complainant had not proven that the descriptive term had acquired distinctiveness, yet found that the very same term had nevertheless acquired “secondary meaning”. It is very surprising that “secondary meaning” can apparently exist in the absence of “acquired distinctiveness” and I question whether there is any support for this notion in trademark law. If a sufficient secondary meaning exists, that ipso facto means that a term has acquired distinctiveness. The corollary is of course, that if no acquired distinctiveness exists there is no secondary meaning.
Acquired distinctiveness and secondary meaning are generally treated as equivalent terms. The WIPO Overview 3.0 (as well as numerous secondary sources) use the term interchangeably:
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Perhaps a more precise way of looking at this is that a term which is descriptive of the related goods or services would need to acquire distinctiveness in order to rise to the level of a trademark, and the means of so doing is by acquiring a secondary meaning, i.e. acquiring a meaning other than its ordinary and original meaning such that it is distinctive of the party’s goods or services. It is also well-established of course, that the more descriptive the term, the more difficult it will be to demonstrate a secondary meaning.
Accordingly, if the Panelist was correct that the Complainant had failed to prove that the Complainant’s domain name, droit-technologie .org (meaning, technology-law) had acquired distinctiveness, then surely the Panelist was incorrect that a secondary meaning existed. After all, if there is no acquired distinctiveness, then there can be no secondary meaning, because these concepts are equivalent.
So how did the Panelist nonetheless purport to find a secondary meaning in the absence of acquired distinctiveness? The Panelist seems to have chiefly relied upon evidence that “indicates an intention of the Respondent to target the Complainant’s director and the Complainant’s domain name <droit-technologie .org>”:
“According to the Panel, this circumstance supports that the Complainant’s domain name has achieved some significance as a source identifier, also considering the Belgian case law and legal doctrine regarding trade names as referenced by the Complainant. In these circumstances, the Panel finds that the Complainant has established unregistered trademark rights in the sign ‘droit-technologie.org’ for purposes of the Policy.”
The Panelist appears to have taken the view that ‘the fact that the Respondent selected the Domain Name with the Complainant and its domain name in mind’ constituted “targeting” – and the targeting proved that the Complainant’s domain name had “achieved some significance as a source identifier”. In other words, if the Complainant’s domain name was well known enough for the Respondent to have purposefully registered a similar domain name, then it must mean that the Complainant’s inherently descriptive domain name had acquired a secondary meaning. In support of this approach, the Panelist referred to the WIPO Overview at Section 1.3 which states that, “the fact that a respondent is shown to have been targeting the complainant’s mark may support the complainant’s assertion that its mark has achieved significance as a source identifier” (emphasis added).
The Overview however, specifically employs the phrase, “may support”. It does not say “proves”. This is a crucial distinction, as support for a claim of common law trademark rights would normally require that there be another additional basis for a finding of trademark rights, apart from this factor which alone merely “may support” the finding but will not be sufficient alone. There is a very good reason for this. As in the CMEX case (which I referred to in Digest Vol. 3.10), this approach is only appropriate where there is evidence beyond the Respondent’s selection of the domain name itself. If it were otherwise, then as Panelist Nick Gardener put it, it would constitute a circular argument and would be contrary to the intention of the Policy:
“The Panel takes the view that this approach may support a case where there is other evidence which is of a doubtful or marginal nature, but normally it would not constitute the sole evidence of unregistered rights. If that was not the case then the test would be entirely circular and any term used in a domain name could be said to support a finding of unregistered trademark rights – which is clearly not the intention of the Policy.”
Accordingly, “targeting” alone isn’t enough under the UDRP. It must be targeting of a trademark. And in the absence of trademark rights, targeting alone does not prove the existence of a trademark. Let’s explain why, by taking an example of a domain name comparable to the disputed Domain Name in this case; IP-law .org. This is an inherently descriptive domain name for a website about IP law. If you became aware of this website a and wanted to lawfully compete with it or to lawfully criticize it, could you lawfully register IP-laws .org, i.e. the plural? You certainly could, unless, there were common law trademark rights in the IP-law .org domain name.
The fact that you registered a similar domain name, in and of itself, cannot alone prove that the IP-law .org domain name had acquired secondary meaning. Otherwise, anyone who registered a generic or descriptive domain name would have an effective monopoly on generic or descriptive terms and they could enjoin anyone else from using a similar domain name – even in the absence of the registrant having actual trademark rights. Indeed, trademark rights would no longer even be required, as mere “targeting” of another domain name would be all that it takes. This is far more than trademark law allows and the UDRP does not provide greater trademark rights than trademark law itself. Nor does the UDRP eliminate the need to prove common law trademark rights – indeed it demands such proof.
There is one more issue to address from this case, and that is the Panelist’s reference to “Belgian case law and legal doctrine regarding trade names as referenced by the Complainant”. The Panelist ostensibly determined that the targeting in combination with Belgian law regarding trade names, was the ‘additional factor’ present which the targeting “supported” as evidence of common law trademark rights. The thing is however, “trade names” are not within the scope of the UDRP, period, absent trademark rights in the trade name (See for example, Levin, Gerald, “Do Trade Names Qualify as Trade Marks for Purposes of the UDRP?”, CircleID, July 10, 2017: “Names, trade and personal qualify when their presence in the marketplace are perceived as distinctive of their activities, but not otherwise”). Accordingly, it matters not what Belgian law says about trade names – even if both parties are Belgian – unless, the Complainant has actual trademark rights as understood by the UDRP. Either the Complainant had trademark rights under the UDRP or it didn’t, but having trade name rights under Belgian law is otherwise of no significance whatsoever.
Panel: Logical Conclusion is that the Respondent could not have Targeted a Future Trademark
TicketSms s.r.l. and Mr Andrea Vitali v. Franklin Iziren, WIPO Case No. D2023-0442
<ticketsms .com> and <ticketsms .net>
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant Company, established in 2017, operates a digital ticketing system for event organizers. The Complainant owns the trademark registrations of the sign “TICKETSMS” before EUIPO and the United Kingdom Trademark Office, registered on November 10, 2020. The Respondent is the owner of the United Kingdom trademark TICKET SMS SIMPLE MANAGED SOLUTION (combined), registered on October 9, 2015. The disputed Domain Name, <ticketsms .com> was registered on June 8, 2009, and the disputed Domain Name, <ticketsms .net> was registered on June 9, 2009, and is currently parked. On February 8, 2014, the disputed Domain Name <ticketsms .com> was redirected to the website at the domain name <clickit4tickets .co .uk>, which belongs to the Respondent.
The Complainant’s founder contacted the Respondent in 2015 at the time of the start of this business, in response the Respondent asked for the amount of GBP 250,000. The Complainant alleges that the disputed Domain Names were registered and have been permanently renewed since 2009 just to be maintained as parked domain names and to offer to the Complainants for valuable consideration in excess of the Respondent’s out-of-pocket costs. The Complainants further alleges that even though its founder refused the offer, the Respondent continued to send him other emails aimed to maintain a connection and to entice him to buy the disputed Domain Names.
The Respondent points out that the Complainants have omitted their email of January 8, 2016, to the Respondent asking if there was “any news to buy the ticketsms .com domains?” On August 1, 2016, the Respondent emailed the Complainants referring to its <ticketsms .it> project, and the Complainants omitted for the Complaint this email as well. The Respondent further contends that before the first approach by the Complainants in 2015, he had acquired many other “ticket”-related domain names for use in connection with his various online ticketing projects.
Held: The Complainant’s founder started business activities under the TICKETSMS trademark in 2015, the Complainant Company was registered in 2017, and the TICKETSMS trademark was registered in 2020, while the disputed Domain Names were registered in 2009. The Complainants have not addressed the issue of how the registration of the disputed Domain Names could have been made in bad faith in these circumstances, and have not referred to any of the scenarios described in section 3.8.1 of the WIPO Overview 3.0. There is indeed nothing in the case to support a conclusion that in 2009, the Respondent might have anticipated that the Complainants would eventually start a business under the TICKETSMS trademark several years later. It is, therefore, implausible that the Respondent might have targeted them with the registration of the disputed Domain Names.
For the above reasons, the Panel finds that the Complainant has failed to establish that the disputed Domain Names have been registered in bad faith. As long as the Policy contains a cumulative requirement for registration and use in bad faith, this means that it is not necessary to address the issue of whether the disputed Domain Names were used in bad faith.
RDNH: In the present case, the Complainants were well aware that the Respondent could not have known and targeted them in 2009 when he registered the disputed Domain Names because they had started activities under the TICKETSMS trademark only in 2015. The Complainants, being represented by counsel, must have understood that the only logical conclusion from this is that the Respondent could not have registered the disputed Domain Names in bad faith under the Policy and that the Complaint could not therefore succeed. Nevertheless, the Complainants proceeded with filing it.
Taking into account the above and the findings under the Bad Faith clause, the Panel reaches the conclusion that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complainants’ Counsel: Studio Legale Antonio Gallo, Italy
Respondents’ Counsel: Adlex Solicitors, United Kingdom
RDNH Denied. No “Trouble or Expense” For Respondent to Hire a Lawyer and Defend Against Meritless Claim
Sycomore Vox France Société à responsabilité limitée (S.à.r.l.) v. admin web, WIPO Case No. D2023-0552
Panelist: Ms. Elise Dufour
Brief Facts: The Complainant is a part of the VOX group offering digital guiding solutions in the tourist and cultural sector. On April 8, 2021, the Complainant, known under the company name SIREDO SARL, acquired the French company SYCOMORE SA, created in July 1986, together with SYCOMORE SA’s industrial and intellectual property rights and changed its name to SYCOMORE Vox France SARL on March 15, 2022. The Complainant owns various trademark registrations in Europe, the earliest being SYCOMORE, a French semi-figurative trademark, with a registration date of May 21, 2019, and further claims that it has used the “SYCOMORE unregistered trademark on the market for about 18 years”. The disputed Domain Name was registered by the Respondent on June 20, 2004, and resolves to a parking page of Sedo, where the disputed Domain Name is for sale.
In December 2021 and again in January 2023, the Complainant offered to purchase the disputed Domain Name, but counter offers received of EUR 190,000 and EUR 9,990, were refused by the Complainant. The Complainant alleges that the Respondent acquired the disputed Domain Name on December 29, 2022, and that this date should be considered as the relevant date to assess bad faith. Hence, for the Complainant, the Respondent acquired the disputed Domain Name after the registration of the Complainant’s trademarks and for the sole purpose of selling, renting or otherwise transferring the disputed Domain Name to the Complainant or to one of its competitors.
The Respondent contends that at the time of initial registration of the disputed Domain Name in 2004, neither the Complainant, nor the Sycomore SA company owned any SYCOMORE trademark registration, and the term “sycomore” never was, nor is constitutive of a famous or well-known trademark. The Respondent further states that the term “sycomore” is a common and generic dictionary term used by many companies across the world in relation to various categories of products or services. The Respondent seeks a finding of RDNH be made against the Complainant.
Held: The Panel notes that the disputed Domain Name consists of the dictionary term “sycomore” that is the obsolete spelling of “sycamore” (name applied to several types of trees). In addition, the Panel notes that registering a domain name comprising a dictionary term without intent to target the trademark of an existing trademark owner, and offering this domain name for sale could be legitimate. However, given its finding under the third element, it is not necessary for the Panel to make a finding under the second element of the Policy.
The Respondent maintains that before these proceedings, it had no knowledge of the Complainant or its SYCOMORE trademarks and there was no reason for the Respondent to have believed that the registration of such a dictionary word was (or is) unlawful. According to the evidence produced, at the time of the registration of the disputed Domain Name, SYCOMORE trademarks were not registered by the Complainant. The mere claim that it has used the “SYCOMORE unregistered trademark on the market for about 18 years” is not sufficient, without any supporting evidence. Furthermore, in cases involving unregistered marks that are comprised of descriptive terms which are not inherently distinctive, there is a greater onus on the Complainant to present evidence of acquired Distinctiveness/secondary meaning in terms of the WIPO Overview 3.0.
The Panel considers on balance that it is difficult to consider that the Respondent targeted the Complainant and/or its trademarks when it registered the disputed Domain Name, before the registration and used by the Complainant of the dictionary term “sycomore” as trademarks. In the circumstances of this case, the Panel finds it highly unlikely that the Respondent had the Complainant in mind when it registered the disputed Domain Name. Under these circumstances, the Panel finds that the Complainant has not met its burden of establishing that the Respondent registered the disputed Domain Name in bad faith.
RDNH: According to the Respondent, the Complainant “knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.” Indeed, as the Respondent alleges, the Complaint was filed “in a so-called B Plan case”. The Panel considers that the Complainant first tried to purchase the disputed Domain Name through the website “sedo .com” and as the price was too high, the Complainant tried to obtain the transfer of the disputed Domain Name through an administrative proceeding.
However, the Panel is not persuaded that the Complaint was filed in bad faith and that the circumstances of this case justify a finding of reverse domain name hijacking. The Panel further notes that the launching of this proceeding does not appear to have involved the Respondent in any trouble or expense.
Complainants’ Counsel: ORSINGHER – Avvocati Associati, Italy
Respondents’ Counsel: Le 16 Law, France
Comments by Editor, Ankur Raheja: The comment by the Panelist that “the launching of this proceeding does not appear to have involved the Respondent in any trouble or expense” is surprising given the fact that the Respondent had to hire a professional Law Firm to defend the Domain Name against a Complainant’s meritless Complaint based upon trademark rights which post-dated the Respondent’s Domain Name registration. It is well-established that “initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed” (See, Software, Inc. v. Vertical Axis, WIPO Case No. D2006-0905). In particular, as appears to be the case here, “proceedings must not be commenced in a brash and totally unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that considerably pre-dates any trademark rights held by the complainant”, * see Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905 citing Sustainable Forestry Management Limited v. SFM .com and James M. van Johns “Infa dot Net” Web Services, WIPO Case No. D2002-0535.
It is incumbent upon a trademark holder, particularly one represented by counsel, to familiarized itself with the UDRP and not bring Complaints that are at odds with the established the case law. Failing to do so clearly does in fact cause unnecessary trouble and expense to a domain registrant. I can recall in a recent UDRP response, a Respondent expressed that “in addition to all the productive time lost, legal fees paid, there has been mental stress caused to him and his family”. Panelists should not discount a Respondent’s genuine trouble and expense in hiring a lawyer and filing a Response, as a means of improperly avoiding a justified finding of RDNH.
Registrant’s Name Redacted Because Not the Actual Registrant
Kroo Bank Ltd. v. Name Redacted, WIPO Case No. D2023-0500
Panelist: Mr. Ian Lowe
Brief Facts: The UK Complainant, established in 2016, is authorised and regulated as a bank by the UK Prudential Regulation Authority and Financial Conduct Authority. The Complainant owns a number of registered trademarks comprising KROO, including UK trademarks KROO registered on June 28, 2019, and KROO BANK registered on February 17, 2023. The Complainant operates a website at <kroo .com> promoting and marketing its financial services. The disputed Domain Name was registered on January 2, 2023, by an Individual located in Harrow, UK. However, the disputed Domain Name does not resolve to an active website.
Preliminary Issue – Redaction: The registrant address record gives two street addresses in Harrow, UK. One of the street addresses is the postal address of a company of which the Registrar identified the registrant as a director. In email exchanges with the Center on February 22 and 24, 2023, this person disclaimed any knowledge of the Domain Name or of the Complainant and denied that he was the registrant of the Domain Name or that he had registered the Domain Name. The registrant’s email address, according to the Registrar’s WhoIs record, is that of what appears to be a female name at a domain name that is a very slight misspelling of a well-known firm of UK estate agents. A person of that name is employed by those estate agents. In the circumstances, the Panel is satisfied that the person responsible for the registration of the Domain Name is very likely not the Registrar-identified individual, and has given false contact details.
Held: The disputed Domain Name is not being used for an active website. There is no information available as to the true registrant of the Domain Name, and in the Panel’s view, it is difficult to conceive a legitimate purpose for registering a domain name comprising the entirety of the Complainant’s KROO BANK trademark, particularly in light of the Complainant’s banking business. The Domain Name could only have been registered to deceive Internet users into believing that it had been registered by or operated on behalf of the Complainant and for purposes likely associated with phishing or other improper activities. This is all the more likely given the nature of the registrant contact email address as discussed above. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
In light of the nature of the Domain Name, comprising as it does the entirety of the Complainant’s neologistic name, there is little doubt that the Respondent had the Complainant and its rights in the KROO and KROO BANK marks in mind when it registered the Domain Name. As set out above, the only possible inference is that the Respondent registered the Domain Name for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the marks and to confuse Internet users into believing that the Domain Name was being operated by or authorized by the Complainant. The manner in which the disputed Domain Name was registered with misleading and false contact details follows a pattern of those engaged in phishing or other unlawful conduct and further supports a finding of bad faith registration and use.
While the Domain Name may not currently resolve to an active website, passive holding of a domain name does not prevent a finding of bad faith, as noted in section 3.3 of the WIPO Overview 3.0. Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
Complainants’ Counsel: Dentons UK and Middle East LLP, UK
Respondents’ Counsel: No Response
Domain Name Registered For its Descriptive Value Rather than its Trademark Value
Intecq Limited v. NHC Advisors Pty Ltd Case No. DAU2023-0013
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is an Australian company that holds the Australian trademark registrations for EBET, registered as a fancy wordmark in colors on May 27, 2009, and on September 7, 2016; and wordmark EBET, registered on October 12, 2016. The Respondent Company registered the disputed Domain Name on April 16, 2021, and describes itself as an e-commerce developer. The disputed Domain Name resolves to a landing page displaying Pay-Per-Click links related to betting, online gambling sports, and online sports books and also reads “This domain may be for sale”. The Complaint alleges that the Respondent infringes the Complainant’s trademarks by hosting advertisements for online gambling and betting on the website associated with the disputed Domain Name.
The Respondent contends “Ebet” is a common term used to describe “electronic betting” and that it registered the disputed Domain Name with the intention of developing it into an online electronic betting portal and parked it pending such development and it does develop generic or descriptive domain names into businesses, such as <broker .com .au>. The Respondent further points out that the Complainant provides electronic gaming technology to pubs and clubs. It is not licensed as a bookmaker in Australia and does not take bets from Australian consumers. In sharp contrast, the Respondent’s current and intended EBET service is directed at Australian consumers. Hence, the Complainant and the Respondent are not in competition.
Preliminary Issue – Additional Submissions: Accordingly, the Panel will only admit the Complainant’s supplemental filing into the record in exceptional circumstances, such as the existence of new facts, newly available evidence, or a material allegation in the Response that could not reasonably have been anticipated at the time of the Complaint.
The Panel has reviewed the Complainant’s supplemental filing and sees no exceptional circumstances that would justify admitting it. First, the allegations of new facts are not substantiated. Second, the new evidence is not newly available. The Complainant maintains its position that it does not have to provide evidence of its reputation because it has registered its trademarks. Third, the allegations in the Response regarding the nature of the term “ebet” and the terms of the Complainant’s trademark registrations could reasonably have been anticipated in the Complaint or can be judged on their face.
Therefore, the Panel finds that the Complainant was already given a fair opportunity to present its case in the Complaint. In the interests of ensuring that this administrative proceeding takes place with due expedition, the Panel declines to admit the Complainant’s supplemental filing as part of the record of this proceeding. Having declined to admit that supplemental filing, the Panel sees no reason to admit the chain of correspondence between the Parties that followed it.
Held: The disputed Domain Name was registered by the Respondent in 2021, years after the registration of the Complainant’s EBET mark in 2016 and its EBET fancy word marks in 2009 and 2016. The Respondent provides evidence that the terms “ebet”, “ebetting”, and “e-betting” are used by English-speaking overseas businesses in a descriptive sense and its position is that “ebet” is an abbreviation for “electronic betting”. The Respondent’s sole director provides a statutory declaration that at the time it purchased the disputed Domain Name, he was not aware of the Complainant or its mark. In view of these circumstances, the Panel finds it plausible that “ebet” was registered in the disputed Domain Name based on its descriptive sense rather than its trademark value. Even the Complainant maintains that it does not have to provide evidence of its reputation because it owns registered trademarks. The Panel is unable to infer from the evidence available that the Complainant had developed a reputation in the trademark EBET so as to render it more likely that the Respondent knew, or should have known, of its existence in 2021.
As regards use, the Respondent uses the disputed Domain Name to resolve to a landing page displaying PPC links. The links related to betting, online gambling sports, and online sports books; reflect the descriptive sense of “ebet”. None of them refers to the Complainant and nothing on the record shows that any of the linked websites offer services that compete with those of the Complainant. Although the Respondent fails to substantiate its alleged future plans to develop the disputed Domain Name into an online electronic betting portal, its current use of the disputed Domain Name is not an indication of bad faith. The Panel also takes note that the landing page associated with the disputed Domain Name indicates that it may be for sale, without displaying a price. Given the descriptive sense of the disputed Domain Name, the Panel does not find that the Respondent, by using the disputed Domain Name, sought to take advantage of the value of the Complainant’s trademark. For the above reasons, the Panel does not find, based on the balance of probabilities, that the disputed Domain Name was registered or subsequently used in bad faith.
Complainants’ Counsel: Wynnes Patent and Trademark Attorneys Pty Ltd, Australia
Respondents’ Counsel: Cooper Mills Lawyers, Australia