Respondent Fails to ‘Clearly and Accurately Disclose’ Relationship With Complainant
Although the Oki Data test has consistently been applied since 2001, it is best used as a guide and adapted as necessary by Panels. In other words, it is not enshrined in stone, but rather can be a helpful yardstick by which to measure the good or bad faith of a particular reseller. (Read commentary)
We hope you will enjoy this edition of the Digest (vol. 4.6), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Respondent Fails to ‘Clearly and Accurately Disclose’ Relationship With Complainant (siemensmx .com *with commentary)
‣ Being Aware of a Trademark Does Not Mean Bad Faith (christus .org *with commentary)
‣ Respondent Proves He is Malo (malo .com)
‣ Targeting is Key to Indian Footwear Dispute (desimochi .com)
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Respondent Fails to ‘Clearly and Accurately Disclose’ Relationship With Complainant
Panelist: Mr. Steven Levy Esq.
Brief Facts: The Complainant, founded more than 170 years ago, is a trademark holding company and is a subsidiary of Siemens Aktiengesellschaft, one of the world’s largest corporations, providing innovative technologies and comprehensive know-how to benefit customers in 190 countries. It operates its business under the trademark SIEMENS and is the owner of numerous trademark registrations around the world including Mexico and has conducted business in Mexico since 1894. The Complainant also owns the domain names <siemens .com> and <siemensus .com> that reflect its trademark. The disputed Domain Name was registered on July 2, 2023, and resolves to a website that displays the SIEMENS logo and photos of the Complainant’s products and claims to offer such goods for sale. However, the site contains no postal address or phone number, and an insufficient disclaimer buried at the very bottom of the page.
The Complainant provides a screenshot of the resolving website associated with the disputed Domain Name, which prominently displays the title “Siemens Mexico” followed by the text “Leaders in automation equipment”. It further displays a photo which incorporates most of the Complainant’s graphic SIEMENS logo and its tagline “Ingenuity for life”. The site also contains various photographs of the Complainant’s products allegedly for sale as well as a quote from a named individual who is listed simply as “CEO”. The Complainant alleges that the Respondent had prior knowledge of the SIEMENS mark at the time of registering the disputed Domain Name and that the Respondent uses the disputed Domain Name “to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit”.
Held: The selling of a complainants’ products, whether as an authorized or unauthorized dealer, is subject to the now-familiar four-part test set out in the seminal UDRP decision of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Here, the Panel finds that the disputed Domain Name features the Complainant’s SIEMENS trademark and adds only the letters “mx” referring to the country of Mexico. This clear attempt to create an association with the Complainant, combined with the use of the trademark on the Respondent’s website and the lack of a disclaimer that is likely to be noticed by users fails to clearly and accurately disclose its lack of a relationship with the Complainant under the third element of the Oki Data test. Thus, the Respondent fails to use the domain name in connection with a bona fide offering of goods or services under Policy paragraph 4(c)(i), or a legitimate non-commercial or fair use per Policy paragraph 4(c)(iii).
The Respondent’s website makes prominent and multiple uses of the Complainant’s trademark, the Panel finds it quite certain that the Respondent knew of the trademark at the time that it registered the disputed Domain Name. Further, the website associated with the Domain Name makes prominent and repeated use of the Complainant’s mark and logo and displays various of its products allegedly for sale. It asserts that “[t]he Respondent had a clear intention of taking predatory advantage of the goodwill of the Siemens Group, by diverting Internet traffic, intended for the legitimate global and local (Mexico) website of Siemens Group”. The Panel agrees and finds that the Respondent registered and uses the disputed Domain Name to commercially benefit from confusion with the Complainant’s trademark in bad faith under Policy paragraph 4(b)(iv).
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch and Editor-in-Chief Ankur Raheja: The OKI Data test lays down the following principles as a part of four-part test, to determine if the disputed Domain Name is being used legitimately:
- Respondent must actually be offering the goods or services at issue.
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
- The site must accurately disclose the registrant’s relationship with the trademark owner.
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Although the Oki Data test has consistently been applied since 2001, it is best used as a guide and adapted as necessary by Panels. In other words, it is not enshrined in stone, but rather can be a helpful yardstick by which to measure the good or bad faith of a particular reseller.
Here, the Panel found that the Respondent’s website really didn’t adequately disclose that it was a reseller, leaving the impression that it was perhaps an official Siemens website. As such, the Panel properly invoked one of the principles of the Oki Data test and ordered the transfer of the Domain Name.
Being Aware of a Trademark Does Not Mean Bad Faith
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant was formed as a Catholic not-for-profit health system in 1999 by two other Catholic health systems, which together provided nearly a century of healing ministry. The Complainant claims that it is a global health system made up of more than six hundred centres, including hospitals, clinics, and long-term care facilities across the United States, Mexico, and South America. The Complainant holds numerous registrations for the mark CHRISTUS, the mark CHRISTUS HEALTH, and related marks, including US registration for the word mark CHRISTUS (Registered: December 11, 2001; First Use: February 1, 2000). The Complainant owns the domain name and operates a commercial website via <christushealth .org> domain name. The disputed Domain Name was registered on August 11, 1997, and as of November 28, 2023, the disputed Domain Name resolved to an error page.
The Complainant alleges that the Respondent is on constructive notice, as the CHRISTUS trademark is a registered trademark, combined with over twenty (20) years of use in the United States. Given the Complainant’s reputation and the ubiquitous presence of Complainant’s distinctive CHRISTUS Marks on the Internet and hospital and healthcare service signage throughout the United States and other countries, it can only logically follow that the Respondent was aware of the CHRISTUS Marks before registering the disputed Domain Name, which consists of the trademark in its entirety. The passive or inactive holding of a disputed domain that incorporates a registered trademark, without a legitimate Internet purpose, clearly indicates that the domain name is being used in bad faith. The Complainant does not allege, or provide evidence, that the Respondent was not the original registrant of the Domain Name. The Respondent did not file a Response.
Held: Merely reciting the elements of bad faith under the UDRP, even when adorned with a “clearly,” does not suffice for a domain name transfer. Further, the Complainant argues that the Respondent received “constructive notice” of its CHRISTUS mark, but that the fact does not establish bad faith registration under the UDRP either. The concept of constructive notice, a legal incident to having a registered trademark under United States trademark law, may support an infringement action in a court of law under certain circumstances, but it is no substitute for actual notice, which is what is generally considered under the UDRP’s “bad faith” concept. It is axiomatic under the UDRP that a complainant must show, on a balance of probabilities, that the respondent more likely than not had the complainant’s trademark in mind when registering the subject domain name. Such a showing has not been made here.
The word “Christus” is Latin for Christ, and one can readily imagine myriad legitimate uses of that word in a domain name which have nothing to do with the Complainant and its services. The record here shows no use of the Domain Name or other conduct which might suggest that the Respondent registered the Domain Name to target the Complainant’s mark. Moreover, the Complainant has not argued or provided any supporting evidence that the Respondent acquired the Domain Name after the Complainant began to use its CHRISTUS mark in commerce back in 2000. As noted above, the Domain Name was registered in 1997, three years before the Complainant’s CHRISTUS mark came into being. Absent any argument or evidence that the Respondent first acquired the Domain Name at some point after the Complainant’s trademark rights were established, there simply can be no finding that the Respondent registered the Domain Name with the Complainant’s mark in mind.
Complainants’ Counsel: Dykema Gossett PLLC, United States
Respondents’ Counsel: No Response
Newsletter Comment by Editor-in-Chief, Ankur Raheja: In the Siemens matter, the actual knowledge of a complainant’s trademark was evident from the contents of the website.
The concept of constructive notice is sometimes raised by a misguided Complainant despite it being inapplicable under the Policy. For example, in The Way International v. Diamond Peters [WIPO-D2003-0264], the Panel correctly stated:
“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant? If the existence of a trademark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly”.
The Panel in the Christus case similarly dismissed the constructive notice contention, noting that merely being aware of a trademark in any event, is not necessarily bad faith. The key, as the Panel pointed out, is registering a domain name because of a Complainant’s trademark. Registering a domain name for a valid reason despite knowledge of a Complainant’s trademark may be perfectly acceptable as it was here.
Common Dictionary Word or Cybersquat?
Panelist: Mr. Nick J. Gardner
Brief Facts: The French Complainant sells a range of sneakers, ready-to-wear and fashion accessories for men, women and children. In 2018, it had 188 stores and 50 affiliated stores in France and 27 stores located internationally. The Complainant owns various registered trademarks for the term “courir” that includes the International trademark dated September 25, 2007. The disputed Domain Name was registered on November 24, 2023, and resolves to a parking page with commercial “click-through” links. The Complainant alleges that the disputed Domain Name was registered and is being used in bad faith as the Domain Name is linked to a parking page with click-through links and the Respondent offers it for sale on SEDO for a price of USD 3,950.
The Respondent contends that he is an elite track and field athlete who started running over 40 years ago and that he registered the disputed Domain Name for use in connection with an athletics-related blog but has not yet created that blog. The Respondent also argues that “courir” is an ordinary French word being the verb “to run” and the Complainant is trying to hijack the dictionary word. The Respondent finally contends that the SEDO listing offering the disputed Domain Name for sale was a mistake and exhibits SEDO records showing he has not earned any money from the parking of the disputed Domain Name.
Held: The Respondent provides limited documentary evidence to support this claim that he is an “ex elite track and field athlete”. The online information reveals that the Respondent is a club record holder for some event. The Panel does not know whether he is (or was) an “elite athlete” but assumes that his apparent position as at least a record holder at Belgian club level indicates he is (or was) at least a competitive amateur athlete. Given the Respondent’s athletics background his account that he registered the disputed Domain Name because of its ordinary dictionary meaning – “to run” – is at least plausible and credible. However, the Respondent has produced absolutely no contemporaneous evidence corroborating his claim to having intended to produce a blog of some kind linked to the disputed Domain Name. This makes it difficult to determine whether or not the Respondent has successfully rebutted the inference the Complainant has raised. In all the circumstances the Panel thinks it is unnecessary to reach a conclusion on this issue, given the Panel’s finding on bad faith (below).
Ultimately a finding of bad faith registration or use depends upon showing that the Respondent was in some way targeting the Complainant or its trademark. It seems to the Panel, more likely than not, that his choice of the disputed Domain Name was for its dictionary meaning and not because of any connection with the Complainant. The Respondent has stated clearly that he does not wish to sell the disputed Domain Name and the offer for sale the Complainant identified appears to have been discontinued. It is not clear to the Panel that any links that may be present on the associated parking page target the Complainant or its trademark. Accordingly, the Panel is not persuaded that this evidence shows the Respondent’s intent was to target or take advantage of the Complainant or its trademark, as opposed to registration of the word for its dictionary meaning (“to run” in English), given the Respondent’s background as an athlete and runner. As a result, the Panel declines to find that the disputed Domain Name has been registered or is being used in bad faith.
Complainants’ Counsel: Nameshield, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: One can appreciate the Complainant’s suspicions about the registration of the Domain Name considering it exactly reflects the Complainant’s French brand and the Respondent just happens to live next door in French-speaking Belgium. The Respondent however, did must enough evidence to raise a plausible explanation for his registration. What is a Panel to do in such a situation? Some Panelists would have doubted the Respondent and would have given the Complainant the benefit of the doubt. Others would have done as the Panel did in this case and determine based upon the limited evidence, that it was more likely than not that the Respondent registered the Domain Name due to its value as a dictionary term. In my view, where the evidence is unclear either way, a third approach exists; to dismiss the Complaint not on which story is “more likely than not”, but rather because the UDRP is only suited for clear cut cases.
Respondent Proves He is Malo
Panelist: Mr. Piotr Nowaczyk
Brief Facts: The Complainant is a manufacturer of high-end clothing and accessories, including cashmere knitwear. It is a successor of the Manifatture Associate Cashmere S.p.A. producing clothing and accessories under the MALO brand since 1972. The Complainant is the owner of several MALO trademark registrations, including the EU registrations for MALO (word) dated May 11, 1998 and for MALO (figurative) dated June 11, 2003. The Respondent is an expert in the field of digital analytics, a book author, a professor at the University of Lille, and the founder of a digital analytics consulting company. The Domain Name was registered on November 7, 1999, and resolved in the past to a website featuring information that was used for the project “to join people who are called ‘Malo’ (Last Name)”. At the time of submitting the Complaint and as of the date of this Decision, the Domain Name has resolved to a parking WordPress webpage. The Respondent points out that the Complainant attempted to buy the Domain Name from the Respondent several years before the filing of the Complaint.
The Complainant alleges that the Domain Name has been registered to sell, rent, or otherwise transfer the Domain Name registration to a third party. Furthermore, the Complainant suspects that the Respondent gained an economic advantage from a pay-per-click (“PPC”) system at the website connected to the Domain Name and finally, reiterates that the Domain Name has been held passively since its registration. The Respondent contends that the Complainant has not satisfied the elements required under the Policy for a transfer of the Domain Name, while the Respondent had registered the Domain Name before the Complainant registered most of its MALO trademarks. The Respondent further contends that the Domain Name is composed of his surname Malo and in the past, he actively used the Domain Name for a personal project.
Held: The Panel finds that the Respondent’s claim to be commonly known by the surname Malo corresponding to the Domain Name is legitimate. The Respondent presented a government-issued ID showing that his surname is Malo. Moreover, the Respondent referred to his other personal domain name incorporating the Respondent’s surname, as well as to the Respondent’s social media accounts. In addition, the Respondent pointed out his professional publications under the surname Malo. Thus, it appears that the Respondent registered the Domain Name to be identified by his surname. The Respondent presented evidence that in the past, at least between 2000 and 2014, he actively used the Domain Name for a project “to join people who are called ‘Malo’ (Last Name)”. There is no evidence before the Panel indicating that the Respondent attempted to divert consumers or tarnish in any way the Complainant’s trademark at any point since the registration of the Domain Name nearly 25 years ago. In sum, the Panel finds that the Respondent succeeded in proving that he has rights and legitimate interests in the Domain Name.
The Panel notes that the evidence in the case file does not indicate that the Respondent’s aim in registering the Domain Name was to profit from or exploit the Complainant’s trademark. It rather appears that the Respondent had no intention to use the Domain Name for commercial purposes, but for private ones. As indicated above, the Domain Name resolved in the past to a website featuring information that was used for the purpose of the project “to join people who are called ‘Malo’ (Last Name)”. There is no evidence in the case file proving the Complainant’s allegation that the Respondent used the Domain Name to generate profit from the PPC system. At the time of submitting the Complaint and as of the date of this Decision, the Domain Name has resolved to a parking WordPress webpage. The Panel does not find that passive holding of the Domain Name amounts to bad faith of the Respondent in the circumstances of this case, as there are no facts in this dispute supporting such a finding.
RDNH: The Respondent has not directly sought a finding of RDNH. However, the Panel so finds and will briefly address this issue. The Panel believes that the Complainant should have appreciated at the outset that its Complaint could not succeed. In particular, the Complainant has not demonstrated any circumstances indicating that it was being targeted via the Domain Name and that it would be able to prove registration in bad faith. It appears to the Panel that the Complainant only launched the Complaint after unsuccessfully attempting to acquire the Domain Name in the past. The Complainant suggests the importance of the Domain Name for its business claiming that “a business activity in a global world makes a TLD “.com” useful for global business”. In the Panel’s opinion, these circumstances point in the direction of a finding of RDNH.
Complaint Denied (RDNH)
Complainants’ Counsel: Porta & Consulenti Associati S.p.A., Italy
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States of America
Targeting is Key to Indian Footwear Dispute
Panelist: Mrs. Harini Narayanswamy
Brief Facts: The Complainant is in the business of retailing footwear and garments and claims to have extensively used the MOCHI trademark for over four decades. The Complainant owns an Indian trademark for MOCHI (device mark) dated June 6, 2005, and also owns word mark registration for MOCHI, registered in 2023. The Complainant states that it has 223 retail outlets in several cities and towns across India where its mark is prominently displayed and has its website at <mochishoes .com>. The disputed Domain Name was registered on September 12, 2017, and is used by the Respondent in connection with its footwear business. The webpage also displays an address and phone number and has drop-down menus for various categories of footwear products. The bottom of the page displays links, such as “Customer Service” and “About Us”.
The Complainant contends that in August 2022 it came across the disputed Domain Name and sent a notice to the Respondent. Later, the Complainant also came across the Respondent’s trademark application for DESIMOCHI under application number 3752268 in class 25 which was objected to under the Trade Marks Act 1999. Notably, the Complainant contends that the word MOCHI means “cobbler” in Hindi and that the Respondent’s trademark DESIMOCHI which translates to “Indian Cobbler” was objected to as being a descriptive term. In its brief reply, the Respondent contends that the disputed Domain Name consists of generic dictionary words and implies that the Complainant lacks exclusive rights in the term “mochi”. The Respondent has submitted that it has registered copyright protection for the logo of its brand MD DESIMOCHI which was obtained in the year 2018.
Held: The Panel visited the Respondent’s website and has carried out limited searches, in the Panel’s general discretion, see WIPO Overview 3.0, section 4.8. The Panel finds there is merit in the Respondent’s submission that the overall appearance of the Respondent’s website does not falsely suggest any connection with the Complainant or display any intention to benefit from the Complainant’s goodwill. In particular, the Complainant has emphatically argued that the Respondent’s mark DESIMOCHI has been objected to by the Indian Trademark Office as being nondistinctive and not capable of distinguishing goods. Although the Complainant has argued that the Respondent’s use of the disputed Domain Name is a deliberate infringement of its rights in its mark, no evidence has been submitted by the Complainant to support its assertions. Given the persuasive evidence of the use of the name by the Respondent before receipt of notice of this dispute, and the lack of evidence on the part of the Complainant to demonstrate its claims of deception to the consuming public, the Panel is inclined to find that the Complainant has not discharged the requirement of establishing that the Respondent lacks rights or legitimate interest in the disputed Domain Name.
Both parties have acknowledged that the word “mochi” in the Hindi language means cobbler and there is no dispute that the word is considered common to the trade in which the parties offer their products, namely shoes, footwear and related services. Common descriptive word trademarks are intrinsically weak, therefore the onus on the Complainant to demonstrate secondary meaning in the term ‘Mochi’. The Complainant’s word mark registration for MOCHI, without additional evidence of the mark having acquired secondary meaning, does not give it unencumbered rights, under the circumstances of the present case. The evidence, facts and material in the present case file do not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or to exploit the Complainant’s trademark. There is no evidence of targeting, no evidence of consumer confusion, there is no evidence that the Respondent has engaged in a pattern of conduct or other activity which is indicative of intentionally trying to benefit from the Complainant’s mark. Bad faith cannot be found when the Respondent has been found to have shown legitimate rights and interests in the disputed Domain Name.
Complainants’ Counsel: Kayser & Company, India
Respondents’ Counsel: Self-represented