Who Gets the Domain Name When There are Multiple Users of the Mark and No Specific Targeting of the Complainant?
Panelists: Mr. Reyes Campello Estebaranz (Presiding), Mr. James W. Dabney and Mr. Gerald M. Levine (Dissenting)
Brief Facts: The Chilean Complainant operates an online business at <reimex .cl> and provides various services in the agriculture field. The Complainant owns figurative registrations for its REIMEX trademark, in Chile since 2017. The disputed Domain Name was acquired by the Canadian Respondent in an SnapNames auction in November 2018 and resolves to a landing page, which indicates that it “may be for sale” including a contact form for more information.
Between October 17, 2021 and October 26, 2021, the Parties exchanged various email communications regarding the possible transfer of the disputed Domain Name. The Complainant alleges that the disputed Domain Name was registered or acquired on expiration mainly for the purpose of selling, renting or transferring its registration to the Complainant and on contacting the Respondent, it was offered the Domain Name for USD $28,000. The Respondent asserts that he was unaware of the Complainant’s trademarks when he acquired the disputed Domain Name. Prior to bidding on the Domain Name, the Respondent searched the Canadian and United States trademark databases and found no registrations. He also performed a Google search and he found that a number of unrelated companies around the world were all using the word ‘reimex’ for their corporate names or products thereby demonstrating that the Complainant has no exclusive rights to the word and that the Complainant was not the target of the Domain Name registration.
Majority Opinion: The majority of the Panel consulted the Internet web archive WayBackMachine regarding the Complainant’s website <reimex .cl> which appears to be continuously active since at least May 2004 and also conducted a search in the Global Trademark Databases but found limited results. The Panel notes that the term “reimex” is a coined term with no meaning in any language. The majority of the Panel considers that the use of a Domain Name in connection with a bona fide business of trading in domain names may, in appropriate circumstances, confer rights or legitimate interests under the Policy. However, by his own self-admission, the Respondent acquired the disputed Domain Name in sole consideration to the value that the disputed Domain Name would have to the Complainant and other third parties’ trademark owners, due to the identity or similarity of the disputed Domain Name with their respective brands. The majority of the Panel considers that such conduct cannot be considered a bona fide business of trading in domain names, and cannot confer rights or legitimate interests under the Policy.
The Respondent admits that he had specifically in mind the Complainant and his REIMEX mark when he acquired the disputed Domain Name; and this fact cannot be cured by the Respondent’s allegation that he had also in mind other potential interested parties in the disputed Domain Name. The Complainant further alleges that the Respondent acquired the disputed Domain Name, after the Complainant’s registration for it expired; indicating that the Respondent’s way to proceed consists precisely in acquiring expired domain names to sell them for a high sum to the respective legitimate trademark owners. In this respect, the majority of the Panel notes that the platform where the Respondent alleged he acquired the disputed Domain Name provides services for the acquisition of expired domain names, allowing its users to place notices to be informed about the expiration of a certain domain name. In these circumstances, the majority of the Panel considers that the Respondent’s offer for sale of the disputed Domain Name for USD $28,000 constitutes bad faith use of the disputed Domain Name.
Dissenting Opinion (Mr. Gerald M. Levine): The WIPO Overview illustrates the consensus view of the law, namely, to have an actionable claim there must be targeting. The evidence in this record does not support such a claim for the reason that “Reimex” is not a sign associated alone with the Complainant. The Panel majority emphasizes the length of time the Complainant previously held disputed Domain Name before Complainant allowed it to drop. While the Panel majority may find this a compelling and sympathetic fact, it cannot be the legal basis for reclaiming a Domain Name in a UDRP proceeding. The fact that a word may not be found in a dictionary cannot be the end of the inquiry. Had “Reimex” truly been a coined word solely associated with this Complainant, this Panelist would have joined the majority. If as the Panel majority conjectures “reimex” is coined, it certainly was not the Complainant’s coinage because if it were, the Complainant would surely have alleged that. But let it be assumed that “Reimex” is a coinage, it must logically follow that coinages when used by multiple others can be diluted and any distinctiveness lost to genericide.
The Panel majority misstates the evidence of record when it states that “the Respondent has admitted knowing about the Complainant and his prior rights, and targeting the Complainant and his REIMEX mark, together with other third parties’ trademarks containing or consisting of the term ‘reimex’, when he acquired the disputed Domain Name”. There is no evidence of any “admission” in the record. Importantly, “knowing about” is not the same as “actual knowledge of”. On the issue of reverse domain name hijacking, the record reflects that the Complainant reached out to the Respondent to purchase the domain name, and then finding that the price was unacceptable commenced this UDRP proceeding. This is generally regarded as a Plan B scheme that supports sanctioning the Complainant. For this reason, a reverse domain name hijacking sanction is the appropriate remedy.
Complainants’ Counsel: Luis Armando Alvarez Urbina, Chile
Respondents’ Counsel: Law Office of Howard M. Neu, PA, United States of America (“United States”)
Comment by ICA General Counsel, Zak Muscovitch: This case brings into focus what is arguably the very essence of the UDRP, namely targeting a Complainant’s trademark for registration as a domain name. It is well established that it is generally essential to a finding of bad faith registration and use under the Policy, that a Respondent must have targeted the Complainant or its trademark, or at least had the Complainant in mind when it registered the disputed domain name (See for example, Ancien Restaurant Chartier v. Tucows.com Co, D2008-0272). When it comes to a generic or descriptive term, the law under the Policy is even clearer. See for example; Ultrafem, Inc. v. Warren Royal (NAF FA0106000097682, where the three-member panel in ruling in favor of the owner of the common-term domain name, Instead.com, held that a bad faith showing would require the Complainant to prove that the Respondent registered Instead.com specifically to sell to the Complainant, or that the value of “instead” as a domain derived exclusively from the fame of its trademark.
But this case did not concern a dictionary word, rather a coined word. In cases where a Respondent registers a domain name corresponding to a unique term that is used exclusively by the Complainant as a mark, a Panel may sometimes infer that the Respondent was targeting the Complainant specifically in the absence of evidence of how and why the Respondent independently selected the term for registration (See for example; Teapplix, Inc. v. Johnny Gray / ArtWired, Inc., NAF Claim Number: FA2111001974009, January 4, 2021).
But what about when the disputed domain name corresponds to a fanciful term that is not exclusively used by a single party, the Complainant, and is shared by several unrelated parties? Can it then be said that the Respondent was nonetheless specifically targeting the Complainant even though the Complainant does not enjoy exclusive rights to the term? In some cases there may be evidence that despite numerous parties all sharing the term, it is clear that the Complainant was nonetheless targeted. This could take the form for example, of a Respondent’s use of the domain name for a website offering products similar to the Complainant. However in the absence of such actual evidence of targeting as appears to be the case here, can a Panel nonetheless find that the Respondent was targeting “more than one party”? It is possible in theory to register a domain name because it corresponds to numerous unrelated parties’ trademarks, but if numerous parties all coexist using the mark that may be evidence of widespread attractiveness in the term such that new entrants to the marketplace are therefore also likely to find the term attractive, thereby justifying the Respondent’s selection and registration of the Domain Name for resale.
Moreover, if that is the case, then the situation is not substantially unlike the case with dictionary terms which are also widely attractive to numerous parties and therefore are registrable as domain names on a first-come-first served basis absent any evidence of bad faith because no single party has exclusive rights in such terms (See for example, Zero Int’l Holding v. Beyonet Servs., D2000-0161 >Zero.com<).
The question also arises that if, as the Majority of the Panel in this case found, that there are numerous parties who were “all targeted” then ‘who gets the domain name’? There does not seem to be any firm basis for preferring one non-exclusive over another just because the Complainant happened to be the first party to bring a Complaint. That is another reason that actual targeting of a specific Complainant is the essence of the UDRP and must be required, because absent specific targeting, there is no evidentiary basis for determining that the particular Complainant is the party entitled to the Domain Name. Compare this to the example of a clearcut case of cybersquatting with for example, MyCitiBankLogin .com. There, it is obvious who the singular target is and it is nearly inconceivable of any good faith use by any party other than the Complainant. That is precisely the kind of case that the UDRP is intended to address and is well equipped for. In contrast, where a dictionary word or even a fanciful term has widespread appeal beyond a particular Complainant and there is no actual evidence of targeting the specific Complainant, Panels should be circumspect in nonetheless ordering a transfer as it may amount to a windfall for the party that merely happens to be first to bring a Complaint.
Interestingly, this week’s ICA Digest also contains below, a summary of the veho.com case. In that case, “veho” was demonstrated to be comparable to a coined term, in that it was a conjugated form of the Latin term “vehere”, to transport, corresponding to “I carry” and the Respondent showed that a number of companies engaged in transport services making use of the term. As you will see below, the Panel in that case noted that the Complainant’s rights were limited to jurisdictions in Europe and that despite “veho” not being a common dictionary term, determined that a plausible explanation for the Respondent’s registration of the disputed Domain Name was its potential value as a brandable four‑letter domain name.
Complainant’s TM Post-dates Domain Registration, But McAfee Files No Response
Panelist: Mr. Terry F. Peppard
Brief Facts: Since 2018, the Complainant has used the CYBERGUARD mark to market computer programming and computer security consultancy services. The Complainant holds a registration for the CYBERGUARD service mark with USPTO dated December 22, 2020, claiming a first use in commerce of October 1, 2018. The disputed Domain Name was first registered on January 6, 1998 however, the Respondent acquired and registered the Domain Name in its own name in 2008. The Complaint asserts arguments arising under the federal Anticyber-squatting Consumer Protection Act (ACPA) as well. The well-known Respondent McAfee software security company did not file any Response.
Held: The Complainant concedes that the Respondent registered the disputed Domain Name in 2008 and that its rights in its CYBERGUARD service mark date from its first use of the mark in commerce on October 1, 2018. Therefore, the Respondent’s Domain Name registration predates Complainant’s rights in the mark by about ten years. On these facts, we must conclude that the Respondent could not have registered the disputed Domain Name in bad faith within the meaning of Policy because the Complainant had no rights to the mark which could have been known to the Respondent at the moment of domain name registration, or, for that matter, for a decade afterward.
The Complainant’s arguments as to ACPA are inapposite to a proceeding conducted under the Policy, which permits the Panel to consider and decide only claims of abusive cybersquatting as specifically contemplated by its terms. Accordingly, the Complainant’s allegations of violations of the ACPA do not figure in this decision. Such questions may, however, be raised in a separate proceeding in a court of competent jurisdiction.
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: No Response
Comment by ICA General Counsel, Zak Muscovitch: It is gratifying to see the Panelist in this case make the appropriate finding that bad faith registration was chronologically impossible, despite no Response having been filed. As previously discussed in the Digest Volume. 2.9 in relation to Bert & Wetta Sales, Inc. v. Ron Seibold, NAF Claim Number: FA2201001980161, some cases seem to cry out for at least a consideration of Reverse Domain Name Hijacking. In this particular case, no response was filed and therefore no RDNH was even requested. With my usual caveat that observers do not always have all the facts available that the Panel had, when a Complainant itself brings a “dead on arrival” Complaint where by the Complainant’s own apparent admission its trademark rights post-date the Domain Name registration, a Panel may exercise its discretion to consider RDNH as a means of deterring such meritless Complaints from being filed in the future.
Veho is Not a Common Dictionary Word But is Used by Several Parties
Panelists: Ms. Jane Seager (Presiding), Mr. Tobias Cohen Jehoram and Mr. Gerald M. Levine
Brief Facts: The Finnish Complainant, established in 1939, is engaged in the importation of vehicles and online at <veho .fi>. The Complainant mainly operates in Northern Europe, employs some 2,200 people and the Complainant’s revenue was EUR 1.1 billion in 2020. The Complainant is the owner of a number of trademarks for VEHO, registered in many European countries, starting April 5, 1995 and also owns a separate European Union Trademark dated January 22, 2009. The Respondent claims to have acquired the disputed Domain Name around October 2009 and it currently resolves to a web page advertising the Domain Name as being “available for a strategic transaction”. The historic record indicates the disputed Domain Name from approximately October 2009 to October 2010, resolves to a web page stating “Welcome to veho .com for resources and information on auto purchase and auto insurance”.
From August 2016 to August 2020, the disputed Domain Name continued to be parked and offered for sale, during which time a stock photo of a group of trucks appeared on the web page to which the disputed Domain Name resolved. The Respondent submits that “veho” is a conjugated form of the Latin term “vehere”, to transport, corresponding to “I carry”. The Respondent asserts that a number of companies engaged in transport services make use of the term “veho” in their respective domain names.
In 2014, the Complainant’s counsel attempted to purchase the disputed domain name. Negotiations with the Respondent’s broker ended in October 2015. In March 2016, the Complainant’s counsel made another attempt to purchase the disputed domain name, offering USD 25,000. In August 2016, the Respondent’s broker countered with USD 250,000. There were subsequent communications from the Respondent’s broker in relation to the possible sale and purchase of the disputed domain name. In September 2021, the Complainant engaged a broker, and offered USD 50,000 for the disputed domain name. The offer was rejected. The Complainant followed up with an offer of USD 75,000, which was also rejected. The Respondent submits that, the Parties being unable to agree on an acceptable price for the sale and purchase of the disputed domain name, the Complainant proceeded to file a so-called “Plan‑B” Complaint under the Policy.
Held: The practice of registering a disputed Domain Name for subsequent resale would not by itself support a claim that the Respondent registered the Domain Name in bad faith with the primary purpose of selling it to a trademark owner. The Complainant is well established in its own market, however, commercial use of the “veho” name or brand is not limited to the Complainant. At the time that the Respondent acquired the disputed Domain Name, the Complainant’s rights in the VEHO trademark were limited to jurisdictions in Europe. There is no evidence of the Respondent having engaged in an abusive pattern of domain name registration targeting the Complainant or any third party. In the Panel’s view, the term “veho” does not appear to be a common dictionary term, however, a plausible explanation for the Respondent’s registration of the disputed Domain Name is its potential value as a brandable four‑letter domain name.
With regard to the display of sponsored links to operators in the automotive industry initially, this appears to be the result of action taken by the former registrant of the disputed Domain Name. Any prior evidence that would tend to support an inference of targeting resulting from the actions of the prior registrant appears to have been mitigated by the Respondent’s subsequent use. Later, the disputed Domain Name did display an image of parked trucks for a period between 2016 and 2020, in the Panel’s view this alone is insufficient to support the conclusion that the Respondent sought to target the Complainant through the disputed Domain Name. The Panel considers that there is insufficient evidence to support the conclusion that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark. The Panel finds that the Complainant fails to demonstrate, on the balance of probabilities, that the Respondent registered and is using the disputed Domain Name in bad faith.
Complainants’ Counsel: Dittmar & Indrenius Attorneys at Law Ltd, Finland
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch: In contrast to the Majority decision in the above Reimex.com case, the Panel in this case came to the conclusion that despite veho not corresponding to a common dictionary word, there was insufficient evidence to conclude that the Complainant was targeted, having particular regard to the fact that the term is used by other unrelated companies.
Nonetheless, with my usual caveat that observers do not have all the facts that the Panel had, it is surprising that the Panel in this case did not make a finding of Reverse Domain Name Hijacking. Although Respondents are not required to expressly request such findings and Panels can indeed (and arguably should in some cases) make such findings on their own even if not requested to do so in accordance with Rule 15, the extraordinarily clear circumstances of a potential classic “Plan B” situation would seem to at least merit a consideration of RDNH. A “Plan B” is of course, using the Policy after failing in the marketplace to acquire the disputed domain name (See for example, Nova Holdings Limited, Nova International Limited, and G.R. Events Limited v. Manheim Equities, Inc. and Product Reports, Inc. WIPO Case No. D2015-0202). Panels should be aware that RDNH plays a critical role in the UDRP by deterring abusive use of the UDRP and does have consequences even if there is no monetary penalty (See for example, “The Hidden Consequences of Filing a Baseless Complaint” by Zak Muscovitch and Nat Cohen, CircleID, December 13, 2018). Respondents can also often feel aggrieved if a Complainant can get away with an abusive Complaint without censure.
Buying and Selling Domain Names is a Legitimate Business
Panelist: Mr. Charles A. Kuechenmeister
Brief Facts: The Complainant distributes hair care products. It owns rights in the COCOCHOCO mark through its registrations of that mark with the EUTM and the USPTO on December 26, 2014 and March 23, 2021 (shows first use in January 2009) respectively. The US Respondent, in the business of buying and selling domain names, registered the disputed Domain Name on April 23, 2009. It claims that the business of reselling domain names is a bona fide offering of goods or services and this Domain Name is one of many domain names in its inventory due to the creative combination of two generic roots which refer to chocolate.
Held: The Respondent, a domain reseller, offers the Domain Name for sale along with many other Domain Names and is not using it in any misleading or deceptive way. The name itself consists of recognized abbreviations of the generic term “chocolate” and, notwithstanding its close similarity to the Complainant’s mark; there is no evidence of intent to target the rights of this Complainant. The Complainant’s rights in its COCOCHOCO mark first arose just three months earlier to the registration of the Domain Name, in January 2009 at the very earliest. There is no evidence showing how a US Respondent could have become aware of the Complainant (domiciled in Israel) or its mark in the three months between January and April of 2009. The Complainant offered emails which it claims demonstrate that the Respondent was making no active use of the Domain Name and registered it to sell at an exorbitant price to the Complainant. One of such emails appears to have been sent in 2012 from a person who claims to be a domain broker for the Respondent. These arguments are relevant to the Policy under the bad faith element of the case, but have no bearing under the rights or legitimate interests element. The Respondent is in the legitimate business of creating and selling Domain Names comprised of generic or descriptive terms. This is a bona fide offering of goods or services and is evidence of rights or legitimate interests in the Domain Name, not the contrary.
Buying and selling domain names consisting of generic, descriptive terms is a legitimate business, as long as there is no evidence that the respondent intended to target the business of a complainant or register a domain that appears to derive its value from an association with a specific complainant
Complainants’ Counsel: Aryeh Reif of Reif & Reif, Israel
Respondents’ Counsel: Brian Leventhal of Brian H. Leventhal, Attorney at Law, P.C., Maryland, USA
Case Comment by ICA General Counsel, Zak Muscovitch: It is gratifying to see the Panelist in this case uphold domain name investing as a perfectly legitimate business under the Policy. The Panelist provided an excellent recital of the supporting case law on this point, which is excerpted for your convenience, below:
“It is well settled that buying and selling domain names consisting of generic, descriptive terms is a legitimate business, as long as there is no evidence that the respondent intended to target the business of a complainant or register a domain that appears to derive its value from an association with a specific complainant. Platterz Inc. v. Andrew Melcher, FA 1729887 (FORUM June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity”), Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, Case No. D2016-1709 (WIPO Oct. 3, 2016) (“While the mere registration of such a domain name will not generally give rise to rights or legitimate interests in the name, the Panel finds that the offer of the disputed domain name for sale in accordance with the Respondent’s general business activities does give rise to a legitimate interest in this case”), Greenfort Partnerschaft von Rechtsanwälten mbB v. CheapYellowPages.com, Case No. D2016-0796 (WIPO June 16, 2016) (“Considering this against the background of the Respondent’s apparent business in marketing, developing, buying and selling generic, intuitive, geographic, surname and common use domain names over the years, and that there is no evidence of the Respondent intentionally targeting the Complainant and/or its business in using the Disputed Domain Name, the Majority of the Panel considers the Respondent has rights or legitimate interests in the Disputed Domain Name.”).”
Domain Names Can Have Value as a Result of Multiple Potential Users and Meanings
Panelist: Mr. Johan Sjöbeck
Brief Facts: The Swedish Complainant, founded in 2018, provides rental e-scooter services via mobile phone applications in Sweden. The Petitioner is the owner of the two EU trademark registrations (word and figurative) dated October 5, 2019 and May 4, 2021, respectively. The disputed Domain Name was registered by the Respondent on December 19, 2021, and does not resolve to an active website. The Complainant asserts the term bad faith “use” does not require an active act on the part of the Domain Holder. Instead, the Complainant alleges that passively holding of a domain name can constitute a factor in finding bad faith use. The Respondent was incorporated in July 2014, under the laws of Belize and claims it is primarily an online marketing company providing its clients in Europe with domain names, and directs traffic and leads in varied sectors. The Respondent denies knowledge of the Complainant and adds that generic and short domain names are considered valuable assets and most two- and three-letter domains have been registered for 15+ years. The Domain Holder owns a portfolio of 1,000+ two- and three-letter domain names under several top-level domains, including the .se ccTLD. These short acronyms often have dozens or even hundreds of meanings and cannot be deemed to be exclusive to any single party.
Held: There is no evidence on the record that demonstrates that the Respondent intended to target the Complainant or that the Respondent purchased the disputed Domain Name with the intention to sell it to the Complainant or its competitors. Instead, the circumstances of the case indicate that the Respondent, who appears to be engaged in the business of acquiring short domain names, registered the disputed Domain Name for its value as a three-letter acronym with multiple possible uses and many potential meanings without targeting the Complainant and its trademark. The Respondent’s acquisition of other similar two- and three-letter domain names appears to be consistent with the Respondent’s described business model and explanation. Thus, in the circumstances of this case and in the absence of any evidence to the contrary, the Respondent’s explanation for the acquisition of the disputed Domain Name appears credible. Consequently, the Panelist finds, based on the balance of probabilities and the evidence in the case that the Complainant has failed to prove that the Respondent registered the disputed Domain Name with the Complainant’s trademark rights in mind and with the intention to trade on the same.
Complainants’ Counsel: Brimondo AB, Sweden
Respondents’ Counsel: Self-represented
Comment by ICA General Counsel, Zak Muscovitch: It is noteworthy that in this case the Panel explains that RDNH isn’t available under the .SE policy. It is also noteworthy that the Panel clearly acknowledged that short three-letter domain names in particular have value with multiple users and have many potential meanings without targeting a particular trademark owner.