We hope you will enjoy this edition of the Digest (Vol. 2.39), as we review these noteworthy recent decisions:
‣ Policy Not Intended to Prohibit without Exception, Use of Complainant’s Trademark (usaainsuranceclaimsadjusting .com *with commentary)
‣ Registrants Should Not be Held Responsible for Registrar’s Own Default Parking Page (meta-statefarm .com *with commentary)
Our General Counsel Zak Muscovitch has added commentary as well. Enjoy!
The ICA looks forward to attending WIPO’s Advanced Workshop on Domain Name Dispute Resolution: Update on Precedent and Practice, in Geneva, October 12 and 13, 2022. Attending on behalf of the ICA will be Nat Cohen of the ICA’s Board of Directors and Zak Muscovitch, the ICA’s General Counsel. We look forward to seeing you then and hearing your feedback on our weekly ICA UDRP Digest!
Policy Not Intended to Prohibit without Exception, Use of Complainant’s Trademark
Panelist: Mr. Gerald M. Levine
Brief Facts: The US Complainant was founded in 1922 by 25 officers in the U.S. Army who banded together to insure each other’s Model-T Fords. Since at least as early as 1927, the Complainant has used the trade name USAA in connection with insurance and financial services. Its official website is at <usaa .com>. The Respondent registered disputed Domain Name in 2010. The Respondent is a licensed public adjusting firm and it uses the Domain Name for its business which is to negotiate and adjust insurance claims on behalf of policy holders “against” USAA. The Complainant alleges that the “Respondent is using the Domain Name to direct unsuspecting internet users seeking Complainant’s insurance offerings to a webpage dedicated to Respondent’s own directly competing and unaffiliated insurance business.”
The Respondent contends that the Complainant has no legitimate or logical reasoning for its assertions, which are false and it is not a competitor seeking to divert business from the Complainant, as it does not engage in the sale of insurance, banking or retirement solutions. The Respondent further adds that its business is similar in some respects to that of an attorney who represents client’s interests in resolving legal issues and it is using the disputed Domain Name nominatively to market its public adjusting services.
Held: The parties are in competition only in the sense that policy holders may prefer to work with independent adjustors rather than in-house adjusters whose loyalty is to USAA. Adjusting claims is not Complainant’s business, but incidental to it. Nevertheless, Complainant argues that consumers looking for USAA will be initially confused by arriving at Respondent’s website. Initial interest confusion is certainly a factor in determining bad faith, but not conclusive without other evidence specifically violating the circumstances set forth in Para. 4(b) of the Policy. As the Panel noted in Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002):
“[S]ome Internet users might initially be confused into thinking that, because of the use of the mark in the disputed domain name <legal-and-general .com> is the Complainant’s official website is, in the view of the majority of the Panel, of no moment. First, any such confusion would, in the view of the majority of the Panel immediately be dispelled by the content on the Respondent’s website. Second, and in any event, such a low level of confusion is, in the view of the majority of the Panel, a price worth paying to preserve the free exchange of ideas via the Internet.”
The principles established by the seminal Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 recognize that the Policy is not intended to prohibit, without exception, the incorporation of a third party’s trade mark within a domain name in all cases. The Panel finds that the Respondent satisfies each of the elements of the Oki Data test by offering public adjusting services independent of any relationship with the Complainant. The Respondent registered the disputed Domain Name to market its legitimate business as a public adjuster. The UDRP is designed to suppress cybersquatting, not competition, and for these reasons, the Respondent has legitimate interests in the disputed Domain Name. That the Complainant is irked that an insured would prefer to have an independent expert “on its side” is not the basis for a claim of cybersquatting. Finally, the Complainant argues that “Respondent’s bad faith is also evidenced by the fact that it owns no trademark or other intellectual property rights in the domain name.” If not owning a trademark were a disqualification to registering domain names 99.9% of domain names would be forfeit.
RDNH: The Counsel has crafted a complaint to mislead the Panel that the disputed Domain Name has only recently been discovered, that there is no history of Respondent’s representation of Complainant’s insureds over the years, and Complainant is “shocked” that the Respondent is representing Complainant’s insureds as a public adjuster in negotiating settlements of insurance claims. In failing to recognise this history, the Complainant has presented a false picture of the circumstances under which and for which the disputed Domain Name was registered and is being used.
The Panel therefore declares that this complaint was brought in bad faith in an attempt to deprive the Respondent of the disputed Domain Name.
Complaint Denied (RDNH)
Complainants’ Counsel: Caitlin Costello, Virginia, USA
Respondents’ Counsel: Internally-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The acute tension between trademark rights and registrant rights is evident in nominative fair uses cases such as this. On the one hand, the Respondent clearly incorporated the Complainant’s entire mark in the Domain Name without authorization and its use would lead to the public’s initial confusion. On the other hand, the Respondent’s Domain Name accurately described the business that the Respondent was legitimately in and any initial interest confusion would be dispelled by the content of the website. Such cases consistently challenge panelists and parties who struggle to determine where to draw the line between nominative fair use and cybersquatting, both in criticism cases as well as in commercial cases. As correctly stated by Panelist Gerald Levine, “the Policy is not intended to prohibit, without exception, the incorporation of a third party’s trade mark within a domain name in all cases”.
But when do these exceptions arise? Various Panels have attempted to provide much needed guidance on this question. The seminal case as noted by the Panelist, is the Oki Data case from 2001, which sought to set out specific criteria for determining whether a Respondent’s use of a domain name incorporating a complainant’s mark is “bona fide”. However, more recent cases have recognized the difficulty in determining where to draw the line between fair use or criticism and cybersquatting. For example, in the Dover Downs case (2019) which we discussed in ICA Digest Volume 2.15, Panelist David Bernstein acknowledged that there were two general approaches (within the context of criticism sites); Under the first approach, a domain name that is identical or confusingly similar is enough to find no legitimate interest, whereas under the second approach, a respondent would have a legitimate interest if the use of the domain name was fair and non-commercial. Although Panelist Bernstein preferred the second approach, he proposed a variation of the first approach as a compromise. An “impersonation test” would draw at domain names that are perceived by the public as being affiliated with or authorised by the complainant, even when used in relation to genuine non-commercial free speech, since this would create an “impermissible risk of user confusion”. As noted by Panelist Bernstein, under his proposed compromise, registrants remain free to select such a domain name so long as the domain name makes clear that the registrant is not affiliated with or authorized by the trademark holder, for example, by adding a derogatory word to the domain name.
Subsequent Panels have implicitly recognized the limitations of a set of finite criteria as espoused by the OKI Data test or a bright line test as proposed in Dover Downs. For example, in Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, WIPO Case No. D2022-0473, Panelist Georges Nahitchevansky supported the Dover Downs “impersonation test”, but had reservations about adopting a blanket use of it as if applied to broadly without looking at other factors, could create an undue burden on respondents for parties based only in the United States where the First Amendment could protect bona fide non-commercial criticism sites. In Fluke Corporation v. Erwin Bryson / fixmyfluke / Nelson Bryson, NAF Claim Number: FA2203001988399 (July 6, 2022; <flukerepair[.]com> and <fixmyfluke[.]com>), Panelists Steven M. Levy and Professor David E. Sorkin in the majority noted that the nature of the disputed domain names did not “immediately trigger an inference of affiliation though they also don’t overly indicate the contrary” and concluded that given the uncertainty, the “broader facts and circumstances, including the associated website content” need to be considered. The Panel then found that the “overall content of the site did not give the impression that it originates from or is formally associated with the Complainant”.
In the case at hand, had the “impersonation test” been strictly applied, it is likely that the Domain Name would have been found to be perceived as being affiliated with the Complainant. But by not adopting a “blanket” application of the impersonation test as in Everytown and by taking into account the “broader facts and circumstances” as in Fluke, the Panelist was able to find that if there was some initial confusion, it was quickly dispelled and that the Respondent had a legitimate interest in the Domain Name pursuant to the doctrine of nominative fair use. In other words, the facts and circumstances in this case, overcame the initial confusion presented by the Domain Name itself in a vacuum.
Cases involving use of a complainant’s mark will continue to challenge parties and panelists despite efforts at addressing the “schism” between the approaches. It may be that although a bright line impersonation test is straightforward in its application and admirable in its objectives, it may result in an unjustified finding of bad faith when the broader facts and circumstances of a particular case are not considered.
A “Classic Example” of ‘Plan B’ Case
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant, Boost Collective Inc., was incorporated in Ontario, Canada, on June 5, 2019. The Respondent’s company, Boost! Collective was registered in Washington State in 2015. The Domain Name <boostcollective .com> was registered by the Respondent on February 12, 2015 and has been used for email and for a website promoting communications and marketing services. The Canadian Complainant filed an application with the USPTO on August 29, 2019 to register the stylized mark BOOST COLLECTIVE, claiming first use in commerce as November 23, 2017. The Complainant complains that it is currently only able to operate its site on <boostcollective[.]ca> as “the Respondent is using our name and goodwill to gain traffic to her Domain Name and thus promote the Respondent’s services”. The Complainant states that it has “made numerous efforts to reach out to the Respondent for an amicable resolution by giving her a different domain that would not cause confusion (eg. boostcollective.org)”. The Respondent states that since 2015, she has been running a thriving, woman-owned small business called, “Boost! Collective” and that her Domain Name reflects her company name, the nature of the work that she does. The Respondent contends that she works in an entirely different sector and that Domain Name registration predates the Complainant’s, therefore, protected as a common law trademark.
The Respondent provided an email from the Complainant wherein the Complainant stated that; “I just want to be upfront – it means a lot to me to have this domain name. A lot more than you might ever imagine. And I truly understand that you were the first to have the ‘Boost! Collective’ name.”
Held: The Respondent registered the disputed Domain Name on December 2, 2015, some three and a half years before the Complainant was incorporated and applied for registration of its mark. There is no evidence of the kind mentioned in section 3.8.2 of the WIPO Overview from which it may be inferred that the Respondent had the Complainant in mind when registering the disputed Domain Name, nor that the Respondent’s intent in registering the Domain Name was to unfairly capitalize on any nascent trademark rights of the Complainant, which did not then exist. Hence the disputed Domain Name cannot have been registered in bad faith.
The Panel accepts that the Internet users searching for the Complainant may find themselves at the Respondent’s website. Given the similarity between the parties’ names and the fact that the disputed Domain Name was registered prior to the earliest use by the Complainant of its BOOST COLLECTIVE mark, the Panel is not persuaded that such confusion establishes bad faith use on the part of the Respondent. Indeed, the Respondent was subject to a large number of unwanted emails since declining the Complainant’s invitation to transfer the disputed Domain Name to the Complainant. Taking all the circumstances of this case into account, the Panel finds that the Complainant has failed to establish the Bad Faith.
RDNH: The Respondent has exhibited a copy of an email sent by Mr. Damian Barbu on behalf of the Complainant on August 22, 2019, enquiring as to whether a deal could be worked out to provide the disputed Domain Name to the Complainant. This was a week before the Complainant filed its application to register its mark. Hence the Complainant was fully aware that the Domain Name was registered before the Complainant acquired any rights in its mark and that the Respondent’s registration of the disputed Domain Name could not possibly have been in bad faith. The Panel finds this to be a classic example of a “Plan B” case of RDNH, as the Complainant had made an unsuccessful attempt to purchase the disputed Domain Name from the Respondent.
Complaint Denied (RDNH)
Complainants’ Counsel: Internally-represented
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: There can be no clearer case of a covetous Complainant abusing the UDRP than this. Here, the Complainant expressly acknowledged the Respondent’s senior rights and but just wanted the Domain Name so badly that it resorted to an attempted hijacking. Thankfully, Panelist Alan Limbury appears to have included the Complainant’s entire submission, which is startling in its brazenness and shocking in its ineptitude. It is well worth reading in full, if only to appreciate just how far off the mark a Complainant, particularly a self-represented one, can be. What is particularly interesting, however, is that the Complainant cited and relied upon the three-part UDRP test in its arguments. This wasn’t a case of a Complainant being unaware of the express requirements of the Policy. Rather, it was a case of a Complainant being aware of the requirements but completely misapprehending at best or misconstruing them at worst. In cases like this, it would surely be helpful for Complainants to be made aware of the established interpretation of the UDRP and be warned off their misadventure before it even begins. This would assist prospective complainants as well as unfortunate respondents who have to respond to such meritless and abusive Complaints.
Family Dispute is Not a Cybersquatting Dispute Suited for Resolution under the Policy
Panelist: Ms. Shwetasree Majumder
Brief Facts: In 1961, Mr. Suresh Subba Poojari (partner and father of the Respondent) started the business of sale of food, specifically, juices, north and south Indian dishes in Mumbai, under the trading style SUKH SAGAR. In fact, the Respondent and all the partners of the Complainant firm are related and members of the same family. The Complainant is the registered owner of the mark SUKH SAGAR in India, dated October 10, 1990. The Respondent did not register the disputed Domain Name in its name in 2001 but came to own it later by way of a successful UDRP complaint (WIPO Case No. D2007-1409) filed by the predecessors of the Complainant against a third party. The Complainant alleges that the Respondent was orally permitted to use the mark SUKH SAGAR for running a unit in Dubai. However, the Respondent was later removed from the post of director at the Complainant’s firm. Hence, the Respondent is a total stranger and has no authority to use the disputed Domain Name.
There is an ongoing legal proceeding for infringement filed by the Complainant against the Respondent concerning the mark SUKH SAGAR, before an Indian court. In the past, the Complainant has sent cease and desist notices to the Respondent dated May 29, 2021, through its partner Mr. Suresh Poojari (father to the Respondent) to which the Respondent expressed full right and privilege to use the trademarks of Sukh Sagar and Sukh Sagar International. The Respondent did not formally reply to the Complainant’s contentions under these proceedings. However, the Respondent admitted to the ongoing legal proceeding between the parties and stated “As the matter is already before courts in India, in respect of the same claim made by the Complainant herein, I believe that WIPO should wait until the order is passed in the Indian courts in respect of the same claim made by the Complainant.”
Held: The above facts make it clear this is not a garden-variety cybersquatting case. The only arguable reason that the Complainant is seeking relief in this forum is that the property at issue is a Domain Name. This Panel finds that it will be prudent for a court of competent jurisdiction in India, where the dispute between the parties is already pending to adjudicate the rights of the parties in the mark SUKH SAGAR. The Panel notes that the Complainant already instituted a suit against the Respondent at the City Civil Court, Bangalore, India. Hence, there are far wider issues which have been placed before the Panel in the present case. These issues, whether characterized as being of a commercial or a family law nature, are not suited for resolution under the Policy, which is designed to address clear cases of abusive cybersquatting. In these circumstances, the Complaint under the Policy must fail.
In reaching that conclusion, the Panel takes no position on the merits of any wider dispute between the Parties. The Complainant remains free to seek remedies in other fora and the Panel notes for completeness that the present finding is confined to the Policy and that it does not seek to influence any such subsequent proceedings, should they be raised.
Complainants’ Counsel: Holla Associates, India
Respondents’ Counsel: Self-represented
Registrants Should Not be Held Responsible for Registrar’s Own Default Parking Page
Panelist: Mr. Jeffrey J. Neuman
Brief Facts: The US Complainant has been doing business under the well-known name “State Farm” since 1930 in connection with underwriting auto, homeowners, life and fire insurance. It owns numerous trademark registrations in the United States including registration dated August 22, 2017 with a first use date in 1956. The Respondent is a medical professional and advocate of longevity, wellness and fitness industries. The disputed Domain Name was registered on April 23, 2022 and resolves to a registrar’s default parking page. The Complainant alleges that the Respondent does not use the disputed Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use but to disrupt business and divert customers for commercial gain, redirecting users to competing hyperlinks.
The Respondent contends that the Domain Name is at a GoDaddy parking page that does contain links to insurance-related sites, but he receives no financial benefit from the parking page. Further, he has made demonstrable preparations to use the disputed Domain Name in connection with its virtual reality programming to assist in the treatment of mental health issues, whereby he has already spent USD $100,000 till date. The Complainant contends that background information provided by the Respondent is irrelevant to this case and in a previously decided case <metaverse-statefarm .com> involving the same parties, the Panel found that the Complainant had proven all three elements required under the UDRP and ordered that the domain name to be transferred to the Complainant.
Held: The Panel agrees here with the Respondent – namely that registrants, especially those that do not buy or sell domain names for a living, should not be held responsible for parking pages that are stood up by default by its domain name registrar, especially where registrants derive no financial or other benefit from the content or links contained on the website other than letting others know that the Domain Name has been registered. Most registrants are likely unaware of this practice and like the Respondent receive no benefit, financial or otherwise, from such a landing page. Therefore, it would be unfair to hold registrants that are unaware of this practice accountable for the actions of its registrar. That said, it is the view of this panel that the Respondent otherwise has not demonstrated rights or a legitimate interest to the disputed Domain Name. The Respondent argues that it intends to use the disputed Domain Name in connection with a bona fide offering of goods or services but the Respondent’s carefully crafted declaration does not state that the money or any other partnerships he has created is dependent on the disputed Domain Name.
The Panel believes that both sides have made some good arguments, but at the end of the day, the Panel believes that based on a balance of the probabilities, the Complainant has successfully established the third required element – namely, that the Domain Name has been registered and is being used in bad faith. The Complainant’s mark STATE FARM has been found in a number of UDRP actions to be a famous or well-known mark in the United States. The Respondent fails to connect the disputed Domain Name to its business venture in any way to establish whether its use would be nominative fair use or not. Rather, the Respondent essentially concedes that it intended to register a Domain Name that resembled the Complainant’s mark because of the very nature of the service. Thus he admits that he intended to use the goodwill of the Complainant’s marks to create real-life simulations in a virtual reality world. For all of the reasons set forth above, the Panel believes that using the disputed Domain Name in the manner proposed by the Respondent would likely create a false impression of association with the Complainant.
Complainants’ Counsel: Internally-represented
Respondents’ Counsel: Wesley J. Paul of Paul Law Group, LLP, New York, USA
Case Comment by ICA General Counsel, Zak Muscovitch: Panelist Jeffrey Neumann appears to have reached the correct decision in ordering the transfer of the Disputed Domain Name despite what appears to be a valiant if incredible attempt by the Respondent to justify his registration. Of particular interest in this case was the Panelists acknowledgment that in some circumstances, a Respondent should not be held responsible for a registrar’s default parking page. For example, a grandmother who registers a domain name for her ceramic business and has no particular knowledge of domain names would be likely be entirely innocent, and indeed likely unaware, if her registrar erected a temporary parking page populated with advertising links shortly after she registered the domain name. As the Panel noted, this is particularly so when the registrant has no financial interest in the advertising links. The Panel noted that “it is an unfortunate common practice of registrars to place advertising on the landing pages of its customers’ domain name where its customers have not published any content of its own on the domain” and that “most registrants are likely unaware of this practice and like the Respondent receive no benefit, financial or otherwise, from such a landing page”. Such circumstances may be distinguishable from another class of registrant, namely those identified by the Panelist who are sophisticated registrants and who have themselves caused a website to display links that benefit them financially. Panelists should take care as the Panelist did in this case, to not impute knowledge or intention of PPC advertisements to all registrants regardless of the particular circumstances of the case. Similarly, it is not appropriate to impose a general rule that all registrants are all ultimately responsible for what their registrar does, regardless of the level of sophistication and knowledge of a particular registrant.