Welcome to this week’s digest summarizing the most intriguing cases of the past week, with a joint commentary from Zak Muscovitch, ICA General Counsel and Ankur Raheja, the Digest’s Editor-in-Chief on the FicoIndia.org case. Read about:
‣ Absence of Online Reputation and Plausible Good Faith Uses for Domain Name (DeltaLife .com)
‣ Evidence Required To Prove Reputation (dimsi .com)
‣ Proof of Public Recognition Required for Common Law Rights (LibertyPuzzle .com)
‣ Fairness in the UDRP Proceedings (FicoIndia .org *with commentary)
‣ Canadian Company Attempts to grab 3L under INDRP (cgi .in)
If you haven’t yet, make sure you check out this fantastic CircleID article, The UDRP “Celebrates” Its 500th Reverse Domain Name Hijacking Case, co-authored by ICA Board Member Nat Cohen and ICA General Counsel Zak Muscovitch.
Absence of Online Reputation and Plausible Good Faith Uses for Domain Name
Panelists: Mr. Antony Gold (Presiding), Mr. Larry Nodine and Mr. Jeffrey Neuman
Brief Facts: The US based Complainant is a provider of dental services mostly under its brand DELTA DENTAL. It also uses other brands including DELTALIFE, which is protected by a US Trademark registration dated May 11, 2021. In support, the sole evidence which the Complainant provided is a flyer promoting a product called “DeltaLife”, which offers Term Life insurance and Short-Term Disability plans. The Respondent acquired the disputed Domain Name at an auction, on December 21, 2021, for USD $3,555. The Complainant asserts that the Respondent should be deemed to have constructive knowledge of its registered DELTA LIFE mark. The Respondent contends that, as a resident of Korea, it had no duty to conduct a search in all countries worldwide, especially a search in the USPTO. But it could readily have conducted a search of widely available search engines such as Google or Naver.
In January 2022, the disputed Domain Name was listed for sale. The Complainant inquired about the sale price through an anonymous broker, to which after a few exchanges, the Respondent quoted USD $700,000. As at late January 2022, the disputed Domain Name resolved to a landing page containing pay-per-click (“PPC”) links, including for “Term Life Insurance Quotes”, “Whole Life Insurance Quotes”, and “Life Policy”. Following receipt by the Respondent of the Complaint, the PPC links on the landing page were changed so that they were travel-related. The Respondent is a domain names investor and owns many other domain names which include the words “delta” or “life”. The Respondent claims he purchased the disputed Domain Name because of its inherent value, which is subject to significant third party use.
Held: The parties differ over whether a duty to search arises in circumstances where the composition of the disputed Domain Name, being a combination of two common words, is such as to have imposed a duty to search on the Respondent. The position is not as straightforward as the Respondent seeks to suggest as, whilst “delta” and “life” are themselves dictionary words, their combination has no obvious meaning and can therefore give rise to a duty to search. But having regard to the lack of any online presence of the Complainant’s DELTALIFE mark, or other evidence that the Complainant’s use of DELTA was well known, the Panel is not prepared on these facts to impute constructive knowledge to the Respondent.
The Panel does not consider that the Respondent was under an obligation to have undertaken a search of the USPTO database. The reason for this finding is because it is also material to have regard to what the Respondent, as a resident of Korea, would have discovered if he had conducted an online search for “Delta Life”, using Google or another comparable database. Based on the search result provided by the Respondent’s counsel, the Panel finds that, had the Respondent conducted the above searches prior to its registration of the disputed Domain Name, it could reasonably have concluded that there were plausible non-abusive uses for the disputed Domain Name. In these circumstances, the Complainant did not establish its burden of showing that the Respondent’s registration of the disputed Domain Name was in bad faith.
Complainants’ Counsel: Neal, Gerber & Eisenberg, United States
Respondents’ Counsel: ESQwire.com PC, United States
Evidence Required To Prove Reputation
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainant is a French IT solutions and cloud hosting company incorporated on April 19, 2006. The Complainant uses the acronym of “DIMSI” as its trade name and applied for trademark registration in France on May 22, 2006. The registration subsequently expired on May 22, 2016, as a result the Complainant obtained a new trademark registration on February 26, 2021. The Korean Respondent claims to have registered the disputed Domain Name on October 29, 2005, whereas the Complainant contends the Respondent appeared as the registrant for the first time on June 15, 2007.
The Complainant further contends that the disputed Domain Name is advertised for sale and when the Complainant made an offer of USD $2,000, the Respondent counter offered with USD $29,888, which is well in excess of the costs that the Respondent would have incurred. The Respondent asserts that he has legitimate interests in the disputed Domain Name as a domain name reseller and registered it based on its inherent value, noting that there are 67,900 results for “dimsi” on Google. The Respondent further states that he intended to sell it to any willing purchaser but he had no intent to sell the disputed Domain Name to the Complainant.
Held: The Respondent provides a copy of an email dated October 30, 2005, sent from SnapNames confirming the recipient’s acquisition of the disputed Domain Name on October 29, 2005. The Panel finds that this establishes the Respondent’s date of registration of the disputed Domain Name as preceding incorporation of the Complainant and its use of DIMSI as its trade name and mark. Accordingly, the Panel finds it reasonable to conclude that there was no registration in bad faith. Further, offering to sell the disputed Domain Name per se, without additional supporting factors, does not necessarily indicate bad faith. Even if the registration date is in June 2007 (not October 2005), the Complainant would not succeed, given the significant lack of evidence. The Complainant was formed in April 2006 and the Complainant extended its activities to Southeast Asia in 2013. The Complainant asserts that its turnover in 2020 was EUR 3 million; in contrast, it provides merely a single invoice from June 2006 for EUR 13,000. This is a far cry from demonstrating a reputation between April 2006 and June 2007 so as to support an inference that the Respondent was targeting the Complainant.
Complainants’ Counsel: Darkanian & Pfirsch, France
Respondents’ Counsel: Self-represented
Proof of Public Recognition Required for Common Law Rights
Panelist: Mr. Terry F. Peppard
Brief Facts: The Complainant is a family-owned company formed on July 18, 2005, which sells unique, highly specialized jigsaw puzzles sold in stores and through its website at <libertypuzzles .com>. The Complainant claims common law rights in the LIBERTY PUZZLES mark based on its long, continuous and extensive use of the mark in commerce since 2005. The Respondent registered the disputed Domain Name on December 18, 2007. The Complainant contends that the Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Instead, the domain name resolves to a parked webpage which currently hosts an advertisement with links to the websites of three of Complainant’s commercial competitors, one of which sells wooden jigsaw puzzles and all of which sell puzzle products.
Held: The disputed Domain Name is incontestably confusingly similar to the Complainant’s claimed LIBERTY PUZZLES mark. But our analysis under Policy does not end with a determination of confusing similarity, because the Complainant must also show that it has rights in the claimed LIBERTY PUZZLES mark sufficient to demonstrate that its standing to pursue its claim in a UDRP proceeding. On this point, the Complainant asserts that it is using the mark in commerce continuously since the indicated date and advertised its products and services under the mark. However, the Complainant offers no evidence in support of its contentions. Markedly absent from its presentation is any proof of its sales revenues and advertising expenditures as well as a showing of public recognition of the mark in the critical period between creation of its business in 2005 and registration of the Respondent’s Domain Name in 2007. This failure of proof cannot support a finding of secondary meaning in the mark, and, therefore, of common law rights in it satisfying the requirements of Policy.
Complainants’ Counsel: Chad T. Nitta of Kutak Rock LLP, Colorado, USA
Respondents’ Counsel: No Response
Fairness in the UDRP Proceedings
Panelist: The Honorable Neil Anthony Brown QC
Brief Facts: The Complainant is a credit score analytics company providing risk technology to both corporations and consumers. The Complainant owns rights in the FICO mark based upon registration dated Aug. 31, 1999 with the USPTO. The Respondent registered the disputed Domain Name on October 1, 2019. The Complainant contends that the Respondent registered and uses the disputed Domain Name in bad faith because the Respondent uses it to offer for sale competing services for commercial gain. In addition, the Respondent had constructive and actual knowledge of Complainant’s rights in the FICO mark prior to registering the domain. The Respondent did not file a response.
Held: The Panel finds that the Complainant made out a prima facie case, while the Respondent did not file a Response or attempted by any other means to rebut the prima facie case against it. The Registration and use of a disputed Domain Name which is confusingly similar to a complainant’s mark and using that domain name to sell competing services is evidence of bad faith per Policy. The related and competing services offered on the disputed Domain Name’s resolving website is further evidence that the Respondent is attempting to lure confused consumers via its domain name to its resolving website for commercial gain. Therefore, having regard to the totality of the evidence, the Panel finds that, in view of the Respondent’s registration of the disputed Domain Name using the FICO mark and in view of the conduct that the Respondent engaged in, when using the disputed Domain Name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainants’ Counsel: Internally represented
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch and Editor-in-Chief, Ankur Raheja: The Findings section states that the “Respondent uses the disputed Domain Name to offer competing services for sale…” however the disputed Domain Name in fact hosts an active and apparently perfectly legitimate non-competitive website. The Respondent uses the Domain Name FICO because it corresponds to its corporate name, “Federation of Industrial and Commercial Organization”, located at Ludhiana, India, which is a non-profit trade organization for small businesses. The website includes detailed information as to events, news and also includes photographs, very clearly evidencing a legitimate use. Moreover, the Respondent’s corporate charter, evidencing the Respondent’s rights in its name, is publicly available for viewing right on the Respondent’s website. The WHOIS information seems to be in the name of a local website development company, raising questions as to whether the actual beneficial owner received notice of the Complaint.
The Complainant is in a totally different field than the Respondent, despite the Complainant’s claim that the Respondent offers competing services, as readily apparent from a review of the respective websites. This case raises serious questions as to whether an unfortunate miscarriage of justice inadvertently occurred. Panelists must be particularly vigilant when it comes to undefended cases and should not accept a Complainant’s contentions without a critical evaluation of the Complaint and its supporting evidence.
Canadian Company Attempts to grab 3L <cgi .in> under INDRP
Panelist: Ms. Punita Bhargava
Brief Facts: The Canadian Complainant, founded in 1976, makes use of CGI to provide IT and business consulting services and operates online at <cgi .com>. The Complainant owns registered trademarks for CGI and its formatives in different jurisdictions but mainly relies on Indian registration filed on February 13, 2013, claiming use since October 11, 2001. The disputed Domain Name was registered by the Respondent on its launch on February 16, 2005, along with additional common word and acronym-based domain names. The Complainant alleges that the disputed Domain Name does not resolve to an active website and as of November 2021, the disputed Domain Name redirected to a UAE based active website, <atools .me>. As a result, the Complainant claims that the Respondent used the disputed Domain Name to intentionally attract, for commercial gain, Internet users seeking the Complainant’s products and services, to a competitor’s website offering the same/similar goods and services.
The Complainant filed a reverse WHOIS search which shows that the Respondent owns other 263 domain names composed of different words/letters and it already lost a previous INDRP in 2021, hence he is a “habitual repeat offender”.
The Respondent submits that he is engaged in digital marketing and registered the disputed Domain Name to refer to the descriptive and common term, “Computer Generated Imagery”, along with more domain names including <animation .in> for development purposes. The Respondent did put the disputed Domain Name in use from 2011 till 2016 in relation to its common meaning and later since 2017 used it as the host name for provision of hosting services from Digital Ocean. The redirected website at <atools .me> is merely a website owned by a third party but hosted on the same IP address at the hosting company. The disputed Domain Name redirected to the said other website due to a technical glitch at the hosting company.
Held: The Respondent made legitimate use of the disputed Domain Name in line with its common meaning. The Complainant’s reliance on WIPO Jurisprudential Overview 3.0 section 2.10.1 and case law on the point is also to be read in favour of the Respondent as he used the disputed Domain Name in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. There is nothing placed on record by the Complainant to show that it had any exclusivity over this term in February 2005 when the Respondent registered the disputed Domain Name. Indeed, CGI as other three-letter acronyms has various meanings and does not refer exclusively to the Complainant. The Arbitrator is also mindful that the means and mechanisms to do searches/due diligence in India in 2005 were limited.
The Arbitrator does not find that there is a history of cybersquatting or that the Respondent is a “habitual repeat offender” as the Complainant alleged. Each matter is decided on its own merits and based on its own facts and circumstances. The Complainant’s allegation as to redirection is far-fetched as it tries to relate domain name registration in 2005 to redirection in 2021. The redirection is stated by the Respondent to be a technical glitch and he has given detailed explanation of how this has happened, which is entirely plausible. Accordingly, the Arbitrator finds no basis for inferring bad faith registration or use of the disputed Domain Name on the Respondent’s part.
Complainants’ Counsel: Anand & Anand, India
Respondents’ Counsel: Cylaw Solutions, India