We hope you will enjoy this edition of the Digest (Vol. 3.11), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and Special Guest, Panelist Igor Motsnyi.
‣ Panel: Complaint Was ‘Patently Unjustified and Frivolous Plan B’ (empowermedia .com *with commentary)
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Panel: Respondent Likely ‘Acquired the Disputed Domain Name For its Inherent Value as a Three-letter Domain’
Panelists: Mr. Steven A. Maier (Presiding), Mr. Kiyoshi Tsuru and Mr. Andrew D. S. Lothian
Brief Facts: The Mexican Complainant is a provider of information technology infrastructure and operates high-security data centers located principally in Mexico and Central America. It owns various trademark registrations for or including the term KIO, including the registrations in Mexico for a design and word mark, registered on July 31, 2001 and January 18, 2013 respectively. In addition, it holds more registrations in the European Union (2015 and 2019), United Kingdom (2014), Dominican Republic (2019) and Guatemala (2020). The disputed Domain Name was acquired by the Respondent on February 8, 2015 and redirects to a page at the Respondent’s website at “dynamo .com/assets”. The Complainant produces evidence of the Respondent’s homepage at “dynamo .com”, which offers naming and branding services and displays a number of brand names and logos and alleges that the names in question were conceived by the Respondent and selected by a number of internationally well-known companies.
The Complainant submits that it “created and generated” the KIO name in order to distinguish itself in the technology services market and that it operates numerous websites and social media profiles which include the term “kionetworks”. It further alleges that the Respondent’s website makes clear that it is a reseller of domain names and is using the disputed Domain Name in an attempt to attract Internet users to its website for commercial gain. The Complainant also exhibits an email to the Respondent dated August 4, 2022 in which it expressed an interest in purchasing the disputed Domain Name in seeking to resolve this matter, however, the Respondent failed to respond.
The Respondent contends that, while the Complainant claims KIO to be a coined term, its own advertising states that it means “mirror” in Swahili and also provides evidence to show that KIO is in wide use. The Respondent further contends that it holds both generic and coined domain names in connection with domain business and that there is nothing new or obscure about this field of trade. Rather the three-letter brands are particularly desirable and that it took up the opportunity of investing in the disputed Domain Name accordingly.
Held: The Panels in cited cases of <zic.com> and <gnp.com>, found that a three-character domain name may legitimately be purchased for its inherent value, and that in such cases the registration will usually be for bona fide purposes. This is described as “a matter of common sense” in the cases in question. Nevertheless, the right to register such domain names is not unlimited and will not be binaries in circumstances where the registrant deliberately targeted the complainant’s trademark. However, in this case, the Complainant offers no direct evidence that the Respondent specifically targeted its KIO trademark mark and hence, the Panel does not see any persuasive basis upon which to draw such an inference. The Respondent rather provided an explanation for its acquisition of the disputed Domain Name, namely that three-letter domain names have inherent value and may legitimately be used by parties having a bona fide interest in the acronym which they represent.
The Respondent further explains that it offers naming and brand services which supplement its holding of domain names for sale. So far as the disputed Domain Name is concerned, the fact that the Complainant is a prominent and widely-known user of the KIO trademark in certain territories does not negate the fact that there are multiple other entities worldwide which also own registrations for the mark KIO and/or use that name in the course of business and which, crucially, could legitimately use the disputed Domain Name in conjunction with their independent rights in that name. In these circumstances, the Panel is unable to conclude, on the balance of probabilities, that the Respondent had the Complainant’s trademark in mind, and targeted that trademark, when it registered the disputed Domain Name. The Panel finds, on the contrary, that the Respondent is likely to have acquired the disputed Domain Name owing to its inherent value as a three-letter domain name.
RDNH: In this case, the Complainant has provided no evidence that the Respondent deliberately targeted its KIO trademark and relies upon an inference drawn from the alleged notoriety of that mark. However, in the view of the Panel, the Complainant knew or ought to have known that the term KIO was in widespread usage, other than to refer to the Complainant’s trademark and that there was no reasonable basis for any such inference to be drawn.
The Panel also takes account of the fact that the Complainant brought this proceeding after a failed attempt in August 2022 to purchase the disputed Domain Name from the Respondent (which includes no suggestion of wrongdoing on the Respondent’s part). The Panel also observes that, being legally represented, the Complainant is held to a higher standard than an unrepresented party to ensure that any proceedings under the UDRP are brought on proper grounds.
The Panel finds in the circumstances that the Complainant was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: González Calvillo, S.C., Mexico
Respondents’ Counsel: Self-represented
Panel: Complaint Was ‘Patently Unjustified and Frivolous Plan B’
Panelists: The Honorable Neil Anthony Brown KC (Chair), Mr. Michael A. Albert and Mr. Steven M. Levy
Brief Facts: The Complainant is a media agency founded in 1985, changed name to Empower Media Partners LLC in 2022. It owns rights in the EMPOWER mark through registration with the USPTO on June 12, 2018 (claimed use since 1999) and also claims common law rights in the EMPOWER and EMPOWER MEDIAMARKETING marks based on use of those marks since 1985. The Canadian Respondent, incorporated Technology Company Empower 360 Inc. on December 14, 2007, and has an active website at <empower360 .com> since 2009. The Respondent acquired the disputed Domain Name on September 14, 2010 and also registered /acquired six other domain names incorporating the word “empower”. The Complainant alleges that the Respondent is using the disputed Domain Name for commercial gain by resolving a website with PPC ADs competing with Complainant’s services and also offers it for sale for USD $50,000.
Additionally, the Complainant contends that the Respondent has a history of bad faith registrations and is concealing its identity from the WHOIS directory through a privacy shield. The Complainant made an unsolicited offer to buy the Domain Name on November 29, 2022 which was rejected, to which the Respondent contends that the present Complaint is a Part B plan to reverse hijack the domain name from the Respondent. The Respondent further contends it was commonly known by the dominant portion of the Domain Name, “EMPOWER” and the word “media” describes the services of his company, Empower 360 Inc. and that the use of the Domain Name made by the Respondent is a fair use, as the links displayed are only those related to the Respondent’s business. Moreover, the Complainant does not have exclusive rights to the words “Empower Media”.
Held: The Complainant places reliance on the registered EMPOWER trademark (first use in commerce from January 3, 1999) which was clearly registered some 8 years after the Respondent registered its Domain Name. Moreover, it is well established that the claimed date of first use in commerce on a US trademark registration certificate is, alone, not evidence of common law rights as of that date. Further, the Complainant had more trademark registrations before USPTO – THE EMPOWER GROUP, (cancelled on August 30, 2019), and EMPOWER MEDIA MARKETING, (cancelled on November 5, 2021), not disclosed in these proceeding. So far as the former claimed common law trademark, EMPOWER, is concerned, although the Complainant obviously used the word “empower” in its business, however, there is no evidence that it has done so “for the past 38 years” or at any time prior to the registration of the Domain Name. Importantly, the word “empower” is very generic and in wide use and the Panel is, therefore, entitled to see at least some evidence that would give it some of the connotations and cachet of a trademark, of which the Panel can see none.
The Respondent further has a legitimate interest in the disputed Domain Name, firstly given that the Domain Name is essentially generic, consisting as it does of two short, common words. Secondly, how the Respondent made first use of the Domain Name, throws light on its overall intentions, which is evident from a screenshot of the relevant website from the years 2010-2011. Finally, the evidence is that the Respondent formed the company Empower 360 Inc. on December 14, 2007 and another not-for-profit foundation on October 10, 2020. The evidence shows that the Respondent used in its business the name ‘Empower’, showing that he was commonly known by that name in business. It also shows his right to register the disputed Domain Name and the legitimacy of his retaining and using the Domain Name in his business and at a time long before the Complainant registered its EMPOWER trademark.
RDNH: Such a finding is not made where a complainant has been merely over-optimistic in bringing the claim and it is generally made only in a clear case of harassment or where the Complaint was brought recklessly and without good ground. The Panel finds that this is an appropriate case for making such a finding. It is clearly a case frequently referred to as a Plan B case, one where a complainant goes through the purported process of negotiating to buy the domain name but then resorts to filing proceedings to force the domain name holder to transfer the domain name. There is also a lot to be said for making the finding in suitable cases that will, hopefully, deter the bringing of patently unjustified or frivolous proceedings, of which this is one. In particular, the Complainant should have given the Panel correct information on the date when its trademark was registered but it did not do so.
The Panel finds that in all the circumstances it is appropriate to make a finding of Reverse Domain Name Hijacking, which the Panel now does.
Complaint Denied (RDNH)
Complainants’ Counsel: Matthew A. Homyk of Blank Rome LLP, Pennsylvania, USA
Respondents’ Counsel: Ankur Raheja, Cylaw Solutions, Agra, India
Case Comment by ICA General Counsel, Zak Muscovitch: Editor-in-Chief, Ankur Raheja, has once again demonstrated for us, his skill in representing parties in UDRP proceedings. Here, the Panel notably highlighted the most important reason for finding RDNH when appropriate: to deter complainants from bringing unjustified and frivolous cases. Not only do such cases waste a Respondent’s time and money, they waste the Panel’s time which is contributed to this process at a tremendous discount. Furthermore, if complainants know they are able to bring such cases without even the minor sanction that RDNH represents, it can only serve to encourage more such cases. Panelists therefore ought to make RDNH findings where appropriate as the Panel did in this case.
Was <Pharmagate. org> a Cybersquatting?
Panelist: Mr. Taras Kyslyy
Brief Facts: The Complainant, founded in 2011, provides support to pharmaceutical companies in research, regulatory approval, quality, and safety assurance of medicines, medical devices, and other healthcare products in Ukraine. The Complainant is online at “pharmagate(.com).ua” and “pharmagate(.kiev).ua”. It owns several registrations for its PHARMAGATE trademark in various jurisdictions, including for instance Ukrainian trademark registration dated October 25, 2012. The disputed Domain Name was registered on July 1, 2022 and resolves to a website where it is stated that it is operated by non-governmental organization (“NGO”) “Pharmagate”. The website criticizes certain global pharmaceutical manufacturers for importing and selling drugs in the Russian Federation and inter alia calls patients to refrain from buying drugs from particular companies.
The Complainant alleges that the potentially non-commercial nature of the Respondent’s website should not be decisive in assessing bad faith use of the disputed Domain Name, as it is not relevant that Internet users may appreciate the true nature of the Respondent’s website upon reaching that website, because they will unfairly have been attracted to that website in the first place by the misleading nature of the disputed Domain Name. The Complainant adds that the overall circumstances of the evidence that the Respondent sought to take unfair advantage of the Complainant’s trademark by attracting Internet users to the Respondent’s website by the misleading nature of the disputed Domain Name and, therefore, point to the Respondent’s registration and use of the disputed Domain Name in bad faith. The Respondent did not file a Response.
Held: According to section 3.2.2 of the WIPO Overview 3.0: “noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark…”. In the present case, the Respondent registered the disputed Domain Name identical to the Complainant’s trademark and used it to target users related to the same industry in Ukraine, similarly as the Complainant did for over a decade already. The Panel finds that under such circumstances on the balance of probabilities the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered trademark known in the pharmaceutical sphere in Ukraine, which confirms the bad faith.
The Panel further finds that the Respondent uses the disputed Domain Name for its criticism website, which is likely to be seen as a misrepresentation to Internet users that it would somehow be connected with the Complainant, or the disputed Domain Name would “catch by surprise” visitors intending to reach the Complainant’s website, which confirms the registration and use in bad faith. The Panel notes that it makes no finding – and it is not qualified to make a finding – in relation to the content of the criticism website which in the abstract the Respondent is free to engage in. The issue here is solely the nature of the identical disputed Domain Name to the Complainant’s mark, which the Respondent opted to register and use in conjunction with its website. The Respondent ignored its possibility to comment to the contrary and provide any explanations to prove its good faith while registering and using the disputed Domain Name.
The Panel notes in this regard that given that the domain name may be seen as having multiple meanings, i.e., the “gate” appendage being a generally-recognized signal of a scandal (irrespective of and coincidental to the Complainant’s mark), the Panel would have been prepared to assess any Respondent arguments in this regard. Considering the above, the Panel finds the Complainant has established its case under the third prong of the Policy as well.
Complainants’ Counsel: Asters Law Firm Attorneys’ Partnership, Ukraine
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.
The WIPO panelist transferred <pharmagate. org> to the Complainant, a Ukrainian company that owns “Pharmagate” trademarks and provides support services to pharmaceutical companies in the areas of research, regulatory approvals, etc.
The Respondent is a Ukrainian national who, based on the information available on the website by the disputed Domain Name, is a founder and head of “Pharmagate” which is claimed to be an NGO in Ukraine.
The website by the disputed Domain Name criticizes some international pharmaceutical companies “for importing and selling drugs in the Russian Federation” in both English and Ukrainian languages and contains references to “Pharmagate” NGO and links to its social media accounts.
The Respondent used the disputed Domain Name for criticizing other pharma businesses, not the Complainant.
The Panel’s reasoning in favor of the Complainant was mainly based on the following arguments:
1) The fact that the disputed Domain Name is identical to the Complainant’s mark registered many years prior to registration of the disputed Domain Name, both parties are from Ukraine, the disputed Domain Name is used for a website providing information “related to pharmaceutical industry in Ukraine” and this indicates connection with the Complainant. As the Panel noted: “such circumstances create a risk of user confusion by the disputed Domain Name through impersonation”;
2) The Panel found “on the balance of probabilities” the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered trademark and
3) Initial interest confusion due to the nature of the disputed Domain Name (identical to the “Pharmagate” mark and “the disputed Domain Name would “catch by surprise” visitors intending to reach the Complainant’s website”).
On the other hand, the following factors could also be taken into account:
1) The Respondent operates “Pharmagate” NGO (mentioned in the decision but disregarded by the Panel under the second element analysis);
2) The Respondent is not engaged in any commercial activity. Criticism of certain pharma companies is not the same as providing pharma related services. The Respondent’s use was non-commercial. One of the factors of bad faith analysis is website’s content. The content in this case does not seem to have any connection with the Complainant and contains criticism of the other companies;
3) The word “Gate” is often used in combination with other nouns to create a name for a situation that “causes public shock or disapproval” (see “Cambridge online dictionary”, https://dictionary.cambridge.org/dictionary/english/gate). The Panelist admitted himself that “the “gate” [is] a generally-recognized signal of a scandal (irrespective of and coincidental to the Complainant’s mark)”. The nature of the disputed Domain Name is arguably consistent with the website’s content (criticism and disapproval of certain pharmaceutical companies).
The <pharmagate> case was not a typical cybersquatting dispute and the Panelist seemed to have accepted that by stating: “The Panel makes no finding in relation to the criticism” and: “the Panel would have been prepared to assess any Respondent arguments in this regard”, had the Respondent submitted his response.
The original purpose of the UDRP is to fight cybersquatting or “abusive registration of domain names” and “domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations” are not considered to be abusive (see par. 172 of the “Final Report of the WIPO Internet Domain Name Process”, April 30, 1999). The Policy was intended only for the relatively narrow class of cases of “abusive registrations” (par. 4.1.c. of the ICANN “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy”, http://archive.icann.org/en/udrp/udrp-second-staff-report-24oct99.htm ).
As a Panelist myself, I appreciate that some cases can be particularly challenging for a Panel.
The <pharmagate. org> case was decided on the “balance of probabilities”.
The “Balance of Probabilities” standard itself and its proper application to UDRP disputes raises debatable issues (e.g. ICA UDRP Digest – Vol 2.45 and case comment by Zak Muscovitch on <cloverskypay .com>, see here).
The Respondent failed to respond and this was likely fatal to the Respondent, as subtly acknowledged by the Panel: “the Panel would have been prepared to assess any Respondent arguments in this regard…”
In my earlier comment for the ICA UDRP Digest I wrote about “the importance of filing a response in UDRP cases”, see “ICA UDRP Digest – Vol 3.8” here.
In the <pharmagate> case, the Respondent’s response could have changed the outcome.
However, one can wonder if transfer was a fair outcome even in Respondent’s default taking into account facts of the case and keeping in mind the original purpose of the Policy.
Was it a cybersquatting case or a more complex dispute more appropriate for the courts?
Was This ‘CIC’ French Bank Targeted?
Panelist: Ms. Ingrīda Kariņa-Bērziņa
Brief Facts: The Complainant, commonly abbreviated as “CIC”, is one of the oldest deposit banks in France, operating online at <cic .fr> and <cic .eu>. It owns trademark registrations for its CIC mark in France (since 1986); and Europe (since 2008). The Complainant serves more than 5.3 million clients, and more than 1,800 agencies are distributed in France and 37 abroad. The disputed Domain Name was registered on November 12, 2022 and resolves to a website featuring PPC links related to consumer financial services, with configured MX servers.
The Complainant alleges that the disputed Domain Name was registered shortly after the Complainant posted a vacancy for “Chargé de Marketing” on its official website and further that the disputed Domain Name is being used to redirect users to a website featuring PPC links. Moreover, MX servers have been configured for it, creating a threat that the disputed Domain Name will be used to send fraudulent e-mails.
The Respondent replied informally: “We just registered this domain for our marketing services and have no plan to take someone else’s brand. But we need this domain and planning to keep it for our website. We have already started working on the site, and it’s ready to publish. They had the chance to register the domain and protect their brand, and most importantly, this CIC is not specifically their unique brand name, and they can’t ask for it.”
Held: The Respondent states that it has registered the disputed Domain Name for its marketing services, however, it is in the process of creating a website. The Respondent does not provide any further information about its planned business or any evidence to substantiate these statements. Even interpreting these statements in the light most favorable to the Respondent, the Panel is unable to find that the Respondent has demonstrated its rights or legitimate interests in the disputed Domain Name. Besides, the Panel finds that the Complainant has demonstrated Respondent’s bad faith registration and use of the disputed Domain Names for the reasons below.
The Complainant’s rights in its CIC mark predate the registration of the disputed Domain Names by decades. The disputed Domain Name is identical to the Complainant’s CIC mark and its domain names at <cic .fr> and <cic .eu>. In connection with the fact that the disputed Domain Name resolves to a website featuring PPC links connected to the Complainant’s business, the Panel is unable to find that the disputed Domain Name was registered in good faith. The Panel is not persuaded by the Respondent’s statement that its selection of the disputed Domain Name has nothing to do with the Complainant.
Absent any plausible explanation for why the disputed Domain Name was selected, the Panel finds that the preponderance of the evidence supports a finding of bad-faith registration of the disputed Domain Name. The PPC links further indicate the Respondent is using the disputed Domain Name for commercial gain. The Panel finds that the timing of the registration of the disputed Domain Name and the establishment of MX servers for it are additional indicia of bad faith.
Complainants’ Counsel: Meyer & Partenaires, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This is perhaps not the most convincing transfer. The Complaint was brought two week after the Domain Name was registered, thereby hardly affording the Respondent a reasonable opportunity to erect a website and demonstrate use, or even preparations to use. As such, this Complaint was likely premature and could have been dismissed without prejudice on that basis. I am also troubled by the basis for ordering the transfer. Sure, the Respondent only informally replied and didn’t provide a full explanation of its reason for having registered the Domain Name. Nevertheless, let’s not reverse the onus here. It is not for the Respondent to prove its good faith, but for the Complainant to prove the Respondent’s bad faith. Here, there was a notable lack of any evidence supporting the targeting of the Complainant. As the Respondent pointed out, ‘CIC’ is hardly exclusively associated with the Complainant. A WIPO Global Brand Database search shows hundreds of CIC trademarks by all manner of third parties all over the world. The Complainant does not even own CIC .com. The PPC links that the Panel appeared to rely on were clearly on a registrar default landing page and not the product of the Respondent’s selection or monetization, but rather apparently that of the registrar:
Notably, the links automatically shown to me are in Spanish, because I am in Mexico attending ICANN76.
That seems to leave the Complainant’s only purported evidence of targeting, as its own advertising for a marketing chief, however this seems rather farfetched to me as the impetus for the Respondent’s registration. Regarding the setting of MX servers, this alone doesn’t pose any evidence of bad faith registration or use, let alone a “threat” particularly when there is no evidence of any misuse of emails. Ultimately, we can however fault the Respondent for not simply explaining why he selected “CIC” which ought to have been very easy. The Panelist naturally noted the absence of an explanation and as such appears to have drawn an adverse inference which was juxtaposed against the Complainant’s rather weak case.
Respondent Could Not Have Targeted the Complainant as Respondent Registered Domain Before Complainant Was Even Incorporated
Panelists: Mr. Gustavo Moser (Chair), Mr. Steven M. Levy Esq. and Dr. Fabrizio Bedarida
Brief Facts: The Complainant develops innovative technological solutions, products and provides services in three business areas, namely finance, gaming and betting. Among the Complainant’s range of products is the CASINOIN, whereby it provides online sports betting and casino services to end-customers and operates its activities through <casinoin .io> (registered in 2019). The Complainant’s trademark CASINOIN, is registered in multiple jurisdictions, however, the Complainant relies upon a EU registered figurative mark filed on 6 October 2021. The Respondent acquired the disputed Domain Name on 9 May 2018 and is being offered for sale for EUR 275,000. The Respondent filed on 8 February 2023 a trade mark application for “CASINOIN .COM” in South Korea.
The Complainant alleges that the absence of active content and the Domain Name being held for ransom purposes, with an aim to sell it to the Complainant or to a Complainant’s competitor at a higher price and that prior to being listed for sale on the domain broker SEDO, the Domain Name appeared to resolve to a parked page featuring PPC ADs for goods and services related to the Complainant’s business segment, which is an additional indicia giving rise to a presumption of bad faith use. The Respondent contends that he acquired the disputed Domain Name on 9 May 2018, well before the Complainant registered <casinoin .io>, therefore, it would have been impossible for the Respondent to have registered the disputed Domain Name for selling it to a non-existent Complainant or Complainant’s competitors.
Held: The disputed Domain Name was registered in 2003, and the Respondent appears to have purchased the Domain Name in 2018. These dates predate the Complainant’s registration of the trademark CASINOIN in 2021 by a significant margin. The Panel notes, with great concern, that the Complainant has failed to provide the basis upon which the Respondent shall be held to have targeted the Complainant’s trademark and registered the Domain Name in bad faith.
It appears that the Domain Name was acquired by the Respondent well before the Complainant’s own incorporation, let alone the use and registration of the Complainant’s trademark CASINOIN. The UDRP Policy requires evidence of bad faith registration and use of the Domain Name, and the available record does not indicate that the Respondent had targeted the Complainant or the Complainant’s trade mark at the time of registering the disputed Domain Name. The Complainant, therefore, fatally omitted to advance any basis for a finding of registration in bad faith under the UDRP Policy. The Complaint must therefore fail.
RDNH: The Complainant’s conduct in this UDRP administrative proceeding does not appear to fall into the realm of any of the mentioned RDNH circumstances. Furthermore, the failure to succeed in a UDRP administrative proceeding does not in and of itself establish a case for RDNH. Therefore, and noting that the Complainant was self-represented in this case, the Panel decides not to make a finding of RDNH on this occasion. The Panel however cautions the Complainant to only invoke the UDRP Policy in the future in circumstances under which the Complainant is able to identify the bases and adduce evidence in respect of all three UDRP Policy grounds.
Complainants’ Counsel: NA
Respondents’ Counsel: NA