We hope you will enjoy this edition of the Digest (vol. 4.1), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Respondent Had Right to Buy Trademarked Term at Auction (sleeprx .com)
‣ Non-Use of ‘GM Europe’ Leads to Inference of Bad Faith (gmeurope .com)
‣ Elementary Logic Leads to RDNH (elementlogic .com)
‣ Common Law Rights Claimed in Descriptive Words ‘Online Divorce’ (onlinedivorcer .com)
Respondent Had Right to Buy Trademarked Term at Auction
Panelists: The Honorable Neil Anthony Brown KC (Chair), Ms. Sandra J. Franklin and Mr. Alan L. Limbury
Brief Facts: The US Complainant is a registered medical device company that has been marketing and selling sleep aid products under the trademark SleepRx for over 10 years. The Complainant owns rights to the SleepRx trademarks, which are registered with the USPTO and are dated January 7, 2020 and November 16, 2021 respectively. The Respondent acquired the <sleeprx .com> domain name on July 10, 2022, in a public auction, and shortly after that activated it. The Complainant alleges that the Respondent registered and cyber squatted on the disputed Domain Name from 1999 up until 2020 and after the Complainant registered the SleepRx trademark, the Respondent activated the Domain Name. The Complainant further alleges that the Respondent does not use the Domain Name to sell any products, but uses it to sell referrals and also to direct consumers to diagnostic sleep companies.
The Respondent is a professional domain name investor with more than 1000 domain names under ownership for a decade that are offered for sale and claims that many of those domain names incorporate keyword names or common phrases such as “sleep rx”. The Respondent contends that since the Respondent acquired the disputed Domain Name it has parked the domain name and it has been available for lease or email purposes, as is the case with the other domain names owned by the Respondent. The Respondent further contends that he did not acquire the domain name to sell it to the Complainant and that there are no links on the Respondent’s parked page that infringe on the SleepRx trademark.
Held: The Respondent acquired legitimate rights and interests in the Domain Name from the time it bought it, as the Respondent runs a legitimate business of buying, developing and, where it occurs, selling domain names. The evidence also shows that the Respondent already owned similar domain names of the same genre, therefore, unless there was any impropriety involved, of which there is no evidence, it was entirely legitimate for the Respondent to buy the domain name and it had a right to do so. Such a legitimate activity has, on appropriate evidence, routinely been recognized by panels in this field to confer a right or legitimate interest in a domain name. Further, the Respondent has used the Domain Name to resolve Google ADs that promote interests that provide diagnostic sleep services. It involves no targeting, passing off or misleading internet users. Thus, the panel finds that the Respondent’s use of the domain name is a bona fide use of a domain name legitimately acquired and owned by the Respondent.
The sequence of events is not correct in the Complainant’s argument… the Respondent did not register or “secure” the domain name in 1999 but on May 15, 2022 in an auction. In any case, the Complainant has not established that the Respondent registered and used the domain name in bad faith. The Panel has found that the Respondent had the right to buy the domain name as it did at a public auction in which the Complainant did not bid for the domain name and as part of the regular process of conducting its business of buying, developing and selling domain names. In the course of doing so it therefore, on the evidence, acted in good faith, not bad faith. There was no apparent targeting of the Complainant and, again, the Respondent has simply bought a descriptive Domain Name and used it within its ordinary meaning.
RDNH: The essence of the Complainant’s case is that the Respondent registered its domain name in 1999 and upon the Complainant obtaining its trademark, the Respondent enlivened the domain name in bad faith and used it to “soil” the Complainant’s respected trademark by promoting sleep testing services to the extent that this is causing the Complainant a loss of more than US $1 million a year and amounts to holding the Complainant as a “financial hostage”. Apart from this being an obvious exaggeration, the Complainant should have known that it was making a series of false allegations. It should have known that if the domain name had not been used for nearly 20 years before the trademark was obtained, it would never have been able to show that the registration and use of the domain name had been in bad faith. Not only would such conduct not have been in bad faith, but making the allegation of cybersquatting was itself an act of bad faith.
Moreover, the domain name includes the ordinary use of an easily understood and common English word and a common term, “rx”. The Complainant could have studied the website and seen that the sleep studies being promoted easily came within the ambit of the domain name. Proper and reasonable enquiries by the Complainant would also have revealed that there were more than 20 other USPTO registered trademarks for SLEEP RX, showing that many other parties had rights to the same mark as that claimed by the Complainant. Having regard to all the circumstances, the Panel therefore finds that it is appropriate to make the finding that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: James Fallon of Apnea Sciences Corporation, USA
Respondents’ Counsel: Howard Neu of Law Office of Howard Neu, P.A., USA
Non-Use of ‘GM Europe’ Leads to Inference of Bad Faith
Panelist: Mr. Richard Hill
Brief Facts: The Complainant is a well-known manufacturer of cars and trucks, and is one of the world’s largest automakers. The Complainant’s vehicles are sold in the United States and more than 120 countries around the world, through four major divisions, namely, GMC, Cadillac, Buick and Chevrolet. The Complainant and its strategic partners produce cars and trucks in dozens of countries. In 1986, the Complainant established a subsidiary called General Motors Europe, which operated 14 production and assembly facilities in 9 European countries and employed around 54,000 people. General Motors Europe was often abbreviated and referenced as GM Europe before it ceased operations in 2017.
Before its exit, the Complainant had occupied the European market for 90 years. The Complainant recently announced that it will return to the European auto market in 2023. The Complainant asserts rights in the mark GM by registering in the United States in 1930. The mark is registered elsewhere around the world and it is famous. The Complainant alleges that the Respondent is not using the disputed Domain Name for a bona fide offering of goods or services, or a legitimate non-commercial fair use. Instead, the disputed Domain Name is not being used. The Respondent had actual or constructive knowledge of the Complainant’s mark. The Complainant cites UDRP precedents to support its position. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant has neither authorized the Respondent to use its mark nor is the Respondent commonly known by the disputed Domain Name in terms of policy. The disputed Domain Name is not being used. Failure to make active use of a domain name demonstrates that the Respondent is not using the disputed Domain Name for a bona fide offering of goods or services or a legitimate non-commercial fair use. Therefore, the Panel finds that the Respondent is not using the disputed Domain Name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). The Panel finds that the Respondent does not have rights or legitimate interests in the disputed Domain Name.
As already noted, the disputed Domain Name is not being used. Therefore, in terms of paragraph 3.3 of the WIPO Overview 3.0, the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In the present case, the Complainant’s trademark is well known. It is difficult to envisage any use of the disputed Domain Name that would not violate the Policy. There has been no response to the Complaint and the Respondent is making use of a privacy service, that is, it attempted to conceal its identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed Domain Name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Complainants’ Counsel: Anessa Owen Kramer of Honigman LLP, Michigan, USA
Respondents’ Counsel: No Response
Valuable Three-Letter .COM Not Registered Because of Complainant
Panelists: Mr. Edoardo Fano (Presiding), Mr. Thomas Hoeren, and Mr. Nick J. Gardner
Brief Facts: The Complainant is a German multinational company founded in 1911 and doing business in more than 60 countries in the field of installation systems for the electrotechnical equipment of buildings and plants. The Complainant is generally known by the abbreviation “OBO” and owns several trademark registrations for OBO in various countries, including EU trademark (November 26, 1999); and US trademark (March 23, 1999). The disputed Domain Name was registered on April 12, 2000, and redirects to the website <sell .com>, of which the Respondent is the President. In 2017, the Complainant’s employees attempted to purchase the disputed Domain Name from the Respondent, without succeeding.
The Complainant alleges that the Respondent has registered and is using the disputed Domain Name in bad faith since the Respondent is using a privacy service, is not using the disputed Domain Name and has registered it with the only intent to re-sell it. On the other hand, the Respondent contends that the disputed Domain Name was not registered and is not used in bad faith, since the Respondent was not aware of the Complainant’s trademark at the time it registered the disputed Domain Name, nor was the disputed Domain Name registered with an intent to profit from or otherwise abuse the Complainant’s trademark rights, but instead to provide an online marketplace for classified listings, in the ordinary course of its legitimate business in good faith.
Held: Having reviewed the available record, including the further facts that are detailed in the Response, the Panel finds that, before notice to the Respondent of the dispute, the Respondent used the disputed Domain Name in connection with a bona fide offering of goods or services. The Panel considers that the Respondent selected and acquired the disputed Domain Name for its bona fide business and because of its perceived value, rather than because it corresponds to the Complainant’s trademark. As stated in section 2.1 of the WIPO Overview 3.0, “[…] Over the course of many UDRP cases, panels have acknowledged further grounds which, while not codified in the UDRP as such, would establish respondent rights or legitimate interests in a domain name. For example, generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP”.
The evidence in the case does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark. As regards the use of the disputed Domain Name, the Respondent genuinely used it for almost twenty years in connection with an online marketplace for classified listings, and when it was contacted twice in 2017 by two Complainant’s employees with the request to sell the disputed Domain Name, the Respondent replied both times that the disputed Domain Name was not for sale, although it would have considered offers in the range of 6 to 7-digit. This consideration, considered “absurdly high” by the Complainant, seems to the Panel to be not particularly surprising – or at least subject to different interpretations – given that three-letter domain names are generally thought to be valuable. Based on the available record, the Panel finds the third element of the Policy has not been established.
RDNH: The Panel also bears in mind that the Complainant in this case is represented by Counsel and, therefore, it should be held to a higher standard. As detailed in the above analysis of the second and third elements, the Panel finds that the Complainant and its Counsel have contravened the above RDNH bases, because they knew or should have known that there was no evidence of the Respondent’s bad faith directed towards the Complainant, asserting that the Respondent must have been targeting the Complainant highly unlikely. Finally, as it has been stated in previous decisions, a complainant is at risk of a RDNH declaration when its attempt to try and buy a domain name is not successful, and it tries to obtain it by using, or rather “abusing”, the UDRP.
Complaint Denied (RDNH)
Complainants’ Counsel: Rechtsanwaltskanzlei Fuß & Jankord PartG, Germany
Respondents’ Counsel: Wiley Rein LLP, United States
Elementary Logic Leads to RDNH
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant, founded in 1985, was named “Arkiv & Lager AS” from 1985 to 2006. In 2006, it changed its name to “Element Storage Systems AS”, and in May 2009 changed its name to “Element Logic AS”. Besides these statements, the Complainant claims that it first registered to do business in Norway under the name of “Element Logic” in 2006. The Complainant is the owner of a variety of ELEMENT formative trademarks, the earliest of which appears to be Norwegian trademark for the word mark ELEMENT WMS (April 30, 2007) and another Norwegian trademark for the combined word/figurative mark ELEMENT LOGIC (October 22, 2021). The disputed Domain Name was registered on February 27, 2003. A screenshot dated 2011 features a draft blog site under the title “ElementLogic / Design and Web Development Boutique in San Francisco” posted on December 13, 2010. In 2013 and 2014, the site was reduced to an otherwise blank page, also with the legend “Hello world!”.
The Complainant alleges that the Respondent is not currently using the disputed Domain Name creates confusion with the Complainant’s similar business name and “in itself creates a presumption of bad faith”, adding that a finding of bad faith should be made under the doctrine of passive holding under the Policy. The Complainant observes that the Respondent changed its website from a personal blog to an unresolved website when the Complainant began using Element Logic as its brand. The Complainant also produces a reverse WhoIs search for the Respondent’s name, which features 32 domain names. The Complainant does not indicate that any of these are abusive, apart from its allegations regarding the disputed Domain Name, and the Panel likewise has not identified any prima facie obvious potential abuse, such as the presence of well-known trademarks, in the listed domain names. The Respondent did not file a response.
Held: The Respondent is the original registrant, dating from 2003, given that “Stimuli Labs” appears to be the alter ego of the Respondent itself. Therefore, the Panel considers that the Respondent registered the disputed Domain Name some four years before the first of the Complainant’s ELEMENT formative trademarks was registered. The Complainant asserts that it relies on its use of the “Element Logic” brand “in common use, not under trademark”. However, even according to the Complainant’s own submissions, it adopted the name “Element” or “Element Logic” no earlier than 2006. The Complainant identifies no point at which its trademark rights might have been regarded as nascent within the meaning of the WIPO Overview 3.0, section 3.8.2.
In these circumstances, there is nothing on the present record to indicate that the Respondent could have registered the disputed Domain Name in the knowledge of the Complainant’s rights and/or with intent to target these because the rights in question did not exist, and could not reasonably have been anticipated when the disputed Domain Name was registered in 2003. The Complainant’s assertion that the Respondent changed the website associated with the disputed Domain Name from a blog site to an inactive page after the Complainant’s rights had come into being is not relevant to the question of registration in bad faith. On the basis of the above analysis, therefore, the Complainant has failed to prove that the disputed Domain Name was registered in bad faith.
RDNH: The Complainant, represented by counsel, acknowledges that the disputed Domain Name was originally registered in 2003. It does not seek to qualify this acknowledgement in any way. Therefore, based upon the Complainant’s own submissions, the 2003 registration date predates any rights which the Complainant could have acquired in the term “Element” or “Element Logic”, whether unregistered or registered. Furthermore, the Complaint is lacking in supporting evidence and ambiguous as to the material question of when the Complainant began to use the term “Element Logic”. The Complainant hints that it wishes to rely on alleged unregistered trademark rights dating from, at the earliest, 2006, in reference to its brand “in common use not under trademark”. Yet the Complainant provides no supporting evidence of such rights at the relevant date.
It is not clear as to when the term “Element Logic” was first used by the Complainant, whether by way of a business registration in 2006, or by way of a company change of name in 2009, assuming that those two are independent occurrences. This level of ambiguity (and lack of evidence) as to a material issue relied upon by the Complainant should not be expected of a represented party, and panels have held that a represented complainant should be held to a higher standard, given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the Rules. The Panel concludes that the Complainant’s actions constitute Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Berkley Sweetapple Law, United States
Respondents’ Counsel: No Response
Common Law Rights Claimed in Descriptive Words ‘Online Divorce’
Panelist: Mr. Dennis A. Foster (Chair), Mr. Ho-Hyun Nahm and Mr. Alan Limbury
Brief Facts: The Complainant bought its business in 2020 from the previous owner and offers online divorce services at the domain name <onlinedivorce .com>, which the Complainant also acquired in 2020. The Complainant does not own a registered trademark for the name “online divorce”, however, claims that as a result of its substantial and continuous use of the ONLINEDIVORCE mark and the <onlinedivorce .com> domain name, the Complainant owns substantial common law rights in the mark. The Respondent is in the business of Search Engine Optimization (SEO) and website creation. The Respondent registered the disputed Domain Name on May 6, 2019, and used it to increase internet traffic to clients’ websites that offer online divorce services.
The Complainant alleges that the Respondent registered and is using the disputed Domain Name to suggest an affiliation with the Complainant as well as to misleadingly divert to the Respondent, the internet users searching for the Complainant’s domain name <onlinedivorce .com>… primarily to profit from and exploit the goodwill associated with the Complainant’s mark. On the other hand, the Respondent contends that it is abundantly clear that the Complainant’s use of the highly descriptive dictionary words is not as a trademark or brand identifier, but rather is a description of the services consumers would expect to see at the website. Further, given the nature of the Complainant’s own purely descriptive use of the generic keywords and lack of trademark rights and brand recognition, and without any proof that the Respondent has acted improperly in any manner, this case warrants a finding of reverse domain name hijacking (RDNH) as an abuse of the Policy.
Held: The Complainant admits that it does not own a registered trademark for the name “onlinedivorce”, instead claims that it has acquired common law trademark rights in the name “onlinedivorce” through its online divorce business at the <onlinedivorce .com> website which it has operated since 2020, and by way of its predecessor-in-interest, which operated the same business using the same domain name, from 2008 until the sale to the Complainant. The Respondent counters that the Complainant’s alleged common law trademark “onlinedivorce” is merely a description of its services and that the general public is free to use these same words concerning these same services. Thus, according to the Respondent, this explains why the Complainant does not have common law trademark rights in the name “online divorce”.
The Panel agrees with the Respondent. As Respondent shows, numerous, if not innumerable, internet entities use some variation of the name “online divorce” because they must do so to describe the services they offer, and because they are confident that the trademark law in jurisdictions that recognize both common law and registered trademarks allows them to do so. See WIPO UDRP Overview, 3rd Edition, Section 1.3: “In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
Having failed to show trademark rights in the name “onlinedivorce”, the Complainant has no standing to claim that the Respondent’s disputed Domain Name, <onlinedivorcer .com> is confusingly similar to a name, viz. “onlinedivorce”, in which the Complainant cannot prove it has trademark rights. Therefore, the Complainant has failed to carry its burden of proof under Policy ¶ 4(a)(i). Further, the Panel declines to grant Respondent’s request that it issue a finding of Reverse Domain Name Hijacking against the Complainant. The Panel finds that the Complainant brought this Complaint in good faith, not to harass the Respondent.
Complainants’ Counsel: Michael S. Denniston of Bradley Arant Boult Cummings LLP, USA
Respondents’ Counsel: Jason Schaeffer of ESQwire .com, P.C., USA