We hope you will enjoy this edition of the Digest (Vol. 3.18), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch.
‣ Another Futile Three-Letter Domain Name Complaint Ends in Failure (vgw .com *with commentary)
‣ Complainant’s “Evidence-Free” Complaint Was Abusive (mundonatural .com)
‣ Common Request of the Parties to Transfer the Domain Name (textorn .com)
GERALD LEVINE, NOTED IP LAWYER AND SCHOLAR RECEIVES ICA LIFETIME ACHIEVEMENT AWARD
The ICA honored Gerald Levine, the respected intellectual property lawyer and scholar, with the Lifetime Achievement Award for his outstanding contributions to the world of domain name law. The award ceremony was held virtually last Thursday, April 27th, bringing together Gerry’s friends, colleagues and ICA members.
You can watch the highlights of a touching tribute Gerry’s friends and colleagues created for the occasion here
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Respondent Pays Complainant’s Fee
Panelists: Mr. Scott R. Austin (Presiding), Mr. Roderick Thompson and Ms. Sally M. Abel
Brief Facts: The Complainant is a law firm incorporated as a Florida professional association on February 8, 2018, and whose corporate name relates to the surname of its principal, Patrick M. Hale, Esq., in law practice since 2014. The Complainant is the holder of the US trademark GO TO HALE, registered on December 28, 2021 (claiming a first use date of May 13, 2020) and operates through <halelaw .com>. The disputed Domain Name was first registered on May 10, 2000, and the Complainant contends that the disputed Domain Name has not been used by the Respondent for over two decades and he attempted to contact the Respondent between April and July 2022 but did not receive any response.
The Complainant further alleges that the Respondent’s use is for unlawfully routing internet traffic towards the disputed Domain Name and for the purpose of either selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of Respondent’s out-of-pocket costs. The Respondent contends that for the past 23 years, he made legitimate use of the disputed Domain Name for an IT consultancy business incorporating his surname, “Hale Solutions” and also configured the email address for conducting his personal and professional business. The Respondent, further, contends that the Complainant fails here because the Complainant admits that the Domain Name was registered by the Respondent in 2000, at least twenty years prior to the Complainant’s first use of the claimed mark as set forth in the Complainant’s registration for the GO TO HALE Mark.
The Respondent duly filed its Response within the time permitted under the Rules and requested a three-member Panel and paid the Respondent’s $2,000 fee. After a month with no panel yet appointed, the Respondent asked the Provider what was going on. As it turned out, unbeknownst to the Respondent, the Provider had repeatedly asked the Complainant to pay its $500 top-up fee which became payable once the Respondent elected a three-member Panel, but the Complainant apparently failed to pay. The Respondent then paid the $500 outstanding fee on the Complainant’s behalf. The Complainant then attempted to withdraw its Complaint, with prejudice. The Respondent objected and demanded that the matter proceed to a decision. The Panel denied the request to withdraw, citing Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349, and stated inter alia:
“It is clear from the provisions of the Response, read with Respondent’s emails of March 21, 2023, that Respondent’s objections lie in the fact that Respondent has been put to the time and expense of preparing a Response to a Complaint which Respondent considers to be wholly lacking in merit, entitling Respondent to a finding of RDNH. Thus, terminating the proceedings at this stage would result in Complainant avoiding consideration of the merits in general and the issue of RDNH in particular, leaving Respondent in a disadvantaged position.”
Held: Prior UDRP panels have held that the use of one’s own surname in a domain name is generally sufficient evidence of a right or legitimate interest in a disputed Domain Name. The Respondent’s evidence also shows that he holds the legitimate right of priority, considering he registered the disputed Domain Name 20 years before the Complainant began using their GO TO HALE Mark. Prior UDRP panels have noted that domain name registration is a “first in time system” and typically the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes. Accordingly, the Respondent has demonstrated that he legitimately registered and has used the disputed Domain Name for more than two decades for legitimate purposes having nothing to do with Complainant’s claimed mark for legal services. The Respondent, therefore, has rights and legitimate interests in respect of the disputed Domain Name.
It appears obvious to the Panel that since neither the mark nor the Complainant existed at the time Respondent acquired the domain name, it is not possible to find the disputed Domain Name was registered in bad faith.
RDNH: The substance of the Complaint in respect of the second and third elements comprises six paragraphs taken almost word for word from the Complainant’s representative’s letter of demand of April 21, 2022. That letter contained no supporting evidence for Complainant’s claims and neither did the Complaint other than a parked page with links unrelated to Complainant’s legal services or Respondent’s IT consultancy services. In the view of the Panel, the Complainant must have known that without supporting evidence the Complaint was doomed to failure – at least from the moment of naming Respondent Hale in the Amended Complaint, especially given that Respondent filed first by twenty years. On the above grounds alone the Panel would have made a finding of RDNH.
Further, the Respondent produced evidence to show the registration of the disputed Domain Name 21 years before the Complainant registered its Mark and 18 years before the Complainant existed as a law firm. In that respect, the Complaint was incomplete as the Complainant did not address this issue in its Complaint. No attention appears to have been given to the resources available on the Center’s website, a primary resource being the WIPO Overview 3.0 in the drafting of the Complaint; alternatively, they were ignored. The Complaint is entirely devoid of citation to any UDRP case and relies solely on general unsupported assertions that included reference to the Lanham Act and the Anti-cybersquatting Consumer Protection Act.
Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard. With the benefit of apparently experienced intellectual property advisors, the Complainant should have been aware that, in these circumstances, its Complaint – at least as Amended – could not succeed. However, it proceeded with the claim. While it did seek to withdraw the case, this was not on learning the identity of Respondent – which would have been an understandable moment to seek to withdraw the case – but only once a Response was submitted. This is an abuse of the Policy and the Panel, therefore, finds this to be a case of reverse domain name hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Maxey-Fisher, PLLC, United States
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch: Aside from the noteworthy RDNH finding here against a law firm Complainant, this case involved some rather incredible procedural peculiarities. I encourage you to read the Procedural Issues section in the decision in its entirety.
What likely transpired here, is that when faced with a Response which sounded the death knell for a meritless Complaint and which also requested RDNH, the Complainant decided that it was in its best interest to kill the proceeding by not paying its share of the three-Panelist fee. The clever Respondent however, overcame the Complainant’s gambit by paying the $500 fee itself, thereby enabling the Panel to be appointed. Faced with the prospect of the proceeding actually continuing to a finding of RDNH, the Complainant then attempted to withdraw its Complaint, but the Panel correctly refused based upon the well-established case law regarding unilateral withdrawal attempts.
What is frustrating though, is that it should never have come to this. The Respondent should not have been forced to pay for the Complainant’s share of the fees. But what was the alternative? If the Complainant refuses to pay its fee, I imagine the Provider would dismiss the proceeding, unless the Provider agreed to waive the Complainant’s fee. If it did so, that would be unfair to the Respondent since the Complainant’s dilatory conduct would have been effectively cured by the Provider itself and the Complainant would then have the benefit of a proceed that it did not fully pay for.
I think there is another way of handling such things. Rather than the Respondent unfairly being compelled to pay the Complainant’s fee and rather than the Provider waiving the Complainant’s fee, where a Complainant fails to pay its top-up fee, the Provider should appoint a single member Panelist despite the Respondent’s request for a three-member Panel. The appointed Panelist however, should be apprised of what has transpired and should be required to make a ruling of RDNH against the Complainant as a matter of course, because there cannot be any more obvious abuse of the UDRP than failing to pay one’s own fees in contravention of the Rules.
A word should also be said about the delay in demanding the fees from the Complainant. It is unfair to the Respondent and disrespectful to the UDRP procedure, to allow Complainants to take all the time they want to pay the fee. This was never the intent of the Rules and there should be a strictly enforced deadline – the same way that a Respondent has a strictly enforced deadline for filing its Response. We cannot allow a dilatory Complainant to make a mockery out of the procedure by taking as much time as it likes to pay its fee.
Another Futile Three-Letter Domain Name Complaint Ends in Failure
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainant is an Australian company that operates an online social casino-style gaming portal with a domain name since 2010. It owns several trademark registrations for the VGW mark, its earliest Australian registration is dated April 4, 2016. The disputed Domain Name was registered on August 4, 2002, by a Korean Individual, and resolves to a parking page with an offer for sale and lease at an exorbitant price. The Complainant alleges that the Respondent never made use of the disputed Domain Name and since 2006, has offered the disputed Domain Name for sale.
The Complainant further states that the Complainant experienced rapid growth during 2019 and 2022, and the Respondent suddenly specified the offer price to USD 150 million for sale and USD $90,000 per month for lease in December 2021, which demonstrates the Respondent’s opportunistic bad faith. The Respondent contends that he registered the disputed Domain Name in 2002, well before the Complainant was formed as a company, and that the disputed Domain Name consists of a three-letter acronym which could have multiple interpretations, which does not target the Complainant or its trademark. The Respondent further asserts that the Complaint constitutes reverse domain name hijacking.
Held: In fact, the Complainant did not exist until eight years after the Respondent’s registration of the disputed Domain Name, and there is no evidence to suggest that the Respondent knew of the Complainant or its preparations to use the VGW mark when registering the disputed Domain Name. That is, there is no evidence that the Respondent improperly registered or obtained the disputed Domain Name with knowledge of the Complainant. Therefore, he could not have registered the disputed Domain Name in bad faith.
Neither is there evidence of the use of the disputed Domain Name in bad faith. The price that the Respondent asks for the sale or lease of the disputed Domain Name may be viewed as excessive, but the offer to sell a disputed Domain Name without additional supporting factors showing intent to take advantage of a trademark does not necessarily indicate bad faith. Therefore, the Panel does not find sufficient evidence of bad faith in this case.
RDNH: Here, the disputed Domain Name was registered well before the Complainant acquired trademark rights or even came into existence, so it would have been impossible for the Respondent to have registered the disputed Domain Name to target the Complainant and its mark. The Complainant should surely have known that the Complaint could not succeed based on these facts, and proceeding with this Complaint can only be viewed as an attempt to deprive a registered domain-name holder of a domain name. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Kiran Singh, Australia
Respondents’ Counsel: CyLaw Solutions, India
Case Comment by ICA General Counsel, Zak Muscovitch: It is nice to see the Panel make short work out of a clearly meritless Complaint. Congratulations to the Respondent’s counsel who is none other than our own Editor-in-Chief, Ankur Raheja.
Although RDNH findings are welcome and important for the UDRP, it is also dismaying when they arise. It is dismaying because it generally means that a Complainant filed a case that it shouldn’t have or conducted itself in a manner in which it shouldn’t have. RDNH is a false victory for Respondents since all it means is that the Respondent was put to significant cost, expense, and trouble, all for nothing as a result of an abusive Complainant.
Complainant’s “Evidence-Free” Complaint Was Abusive
Panelists: Mr. Evan D. Brown (Presiding), Mr. Dennis A. Foster and Mr. Richard G. Lyon
Brief Facts: The Complainant is in the business of providing vitamins, supplements and services related to those products. The Complainant owns rights in the mark MUNDONATURAL, registered with USPTO on August 30, 2022 (first used in commerce as early as September 15, 1998). The Respondent is a domain name investor and asserts that it acquired the disputed Domain Name in 2015 because of its value as an everyday phrase; mundo natural means “natural world” in English. The Respondent did not make use of the disputed Domain Name in connection with any active website but listed it for sale using a Registrar-provided page.
The Complainant asserts that the Respondent is concealing its identity through a privacy service and that the Respondent registered the disputed Domain Name for the main purpose of selling, renting or otherwise transferring it to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs. The Respondent contends that the Complainant’s record is void of meaningful evidence that the Complainant’s rights in the MUNDO NATURAL mark existed prior to the 2015 date on which the Respondent acquired the disputed Domain Name.
Held: The record shows that the words “mundo natural” mean “natural world” in Spanish, which is a commonly used phrase. The Panel credits the Respondent’s evidence that it is making a general public offer to sell a common descriptive phrase as a domain name and that does not violate any cognizable right of the Complainant. The Respondent meaningfully asserts that the Complainant has not shown how the Respondent’s acquisition of this common phrase and its offer for sale on the secondary market has either targeted the Complainant, was based on the Complainant’s claimed rights, or violates any cognizable right of the Complainant. Besides the fact that a company has used a trade name for many years in itself is not sufficient to show that the trade name functions as a trademark.
The Complainant did not provide evidence on which to conclude that the commonly-used words MUNDONATURAL functioned as a trademark prior to the Respondent’s acquisition of the disputed Domain Name. In terms of WIPO Overview 3.0 section 3.8.1, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. Moreover, even if the Complainant had established that its trademark rights accrued before the registration of the disputed Domain Name, the Panel finds no evidence in the record that the Respondent had the Complainant or the Complainant’s mark in mind when the Respondent registered the disputed Domain Name. For these reasons, the Panel cannot find bad faith on the part of the Respondent.
RDNH: The Panel finds that this situation is one in which a finding of RDNH is appropriate. The Complainant is represented by counsel who should be familiar with the relevant aspects of UDRP practice. More specifically, in this case, there was essentially no evidence in support of the necessary facts, most notably facts relating to trademark rights arising pre-trademark registration. Similarly, the Complainant did not address how the disputed Domain Name was initially registered prior to any proven trademark rights. And the Complainant should have, but did not, address whether the Respondent targeted the Complainant. Finally, the Panel believes that the Complainant’s failure to address long-standing precedent that states trafficking in domain names consisting of dictionary terms or commonly used phrases (as is the case here) is not per se illegitimate and contributed to the abusive nature of this proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Beléndez Law Offices, Puerto Rico
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
What Happens When a Registry Subsidiary Gets a UDRP Over a “Premium Domain”?
Panelist: Mr. Matthew S. Harris
Brief Facts: The Complainant is the holding company of one of the largest insurance groups in the world, and its history can be traced back to the 18th century, although the name “AXA” was only adopted for that business in 1985. Since 2018 it has been the world’s number one commercial property and casualty insurer and operates through <axa .com>. The Complainant is the owner of numerous trademarks around the world that comprise or incorporate the term “AXA”. The earliest International trade mark for AXA as a word mark was filed on December 5, 1984, and another on May 29, 2019, later covers the United States. The creation date for the Domain Name is recorded in WhoIs details as November 15, 2022. The Complainant alleges that the Respondent was aware of the Complainant’s AXA trademarks at the time that he acquired the Domain Name due to the undeniable reputation of AXA and its trademarks and further that the purpose of the Respondent’s registration was to sell it.
The Respondent is a wholly-owned subsidiary of Knock Knock WHOIS There, LLC (“Knock Knock”), the registry for the “.blog” gTLD, and is a subsidiary of Automatic Inc, which is also the parent company of WordPress. The Domain Name is one of approximately 85,000 domain names that the Knock Knock registry identified as “premium domain names”. Some of these took the form of common names or words combined with the “.blog” gTLD. Others took the form of various three letters and/or number combinations with the “.blog” gTLD. The Domain Name is one of a number of these domain names (said to be initially about 3,826 domain names) that has been subsequently released by Knock Knock for sale by the Respondent for sale through “aftermarket partners” such as <Sedo .com> and <Afternic .com>.
The Respondent contends that inherently a registry cannot hold a domain name in its own TLD in bad faith because it automatically manages all domain names within its top-level domain and “to hold otherwise would mean that all TLD registries are operating in bad faith because a potential domain name includes the name of one of the more than 17 million trademarks in the world.” The Respondent lastly adds: “If Complainant is able to prevail in this claim, all registries could be forced to give away almost any domain names for free, despite registries spending substantial resources to manage the domain names. The entire business model of the Internet would need to change.”
Held: In the present case the registry is not acting and dealing with the Domain Name for and on behalf of an unrelated third party merely as the technical operator of the .blog registry. It has instead decided to register and hold the Domain Name in the name of a wholly owned subsidiary with a view to onward sale to some third party. In so doing, its subsidiary has become the registrant of the Domain Name and is thereby subject to the UDRP like any other registrant.
The domain name system would not fall apart, nor would the business model of the Internet need to change, if this case were decided in favour of the Complainant. Such a decision would merely confirm that where a registry decides to become either directly or indirectly the registrant of a domain name in its own registry, it is subject to the same rules in relation to that registration as is every other registrant. However, notwithstanding this conclusion and albeit with some hesitation, the Panel has formed the view that in this particular instance, the Complainant has failed to satisfy the Panel on the balance of probabilities that the disputed Domain Name was registered and has been held in order to take unfair advantage of the Complainant’s trade mark rights.
The Respondent has explained in some detail how the disputed Domain Name was identified as a “premium domain” name at the time the registry was set up including how these “premium domains” were chosen. The process described strikes the Panel as reasonably credible on its face, is one that the Panel accepts is the same as or at least similar to that adopted by other registries, and it prima facie provides a reasonable explanation as to why the disputed Domain Name would be included in any list of premium domain names without any intent to take advantage of the Complainant’s use of, reputation in and registered trade mark rights in, the term “AXA”. Otherwise, the main reason for the Panel’s hesitancy is that notwithstanding that the Complainant has clearly and unambiguously asserted that the Domain Name was chosen with both the knowledge of the Complainant’s rights and with the intention of selling to the Complainant, the Respondent has never quite directly responded to those allegations.
However, insufficient evidence is proffered by the Complainant that supports its contention that at the time the disputed Domain Name was registered the Respondent specifically targeted the Complainant. In particular, the Complainant does not contend that the Respondent has sought a price for the Domain Name that can only be credibly explained by reference to its association with the Complainant and its rights, rather than its value as a three-letter domain. Besides, the Complainant expressly accepts in its supplementary submission that the Domain Name is one that might be legitimately used by third-party companies or individuals. Given that the Complainant has failed to satisfy the Panel that the disputed Domain Name was registered with the intention of unfairly targeting the Complainant or its marks, it follows that the Complainant has also failed to satisfy the Panel that the disputed Domain Name was either registered or used in bad faith.
Complainants’ Counsel: Selarl Candé – Blanchard – Ducamp, France
Respondents’ Counsel: Automattic Inc., United States of America
Common Request of the Parties to Transfer the Domain Name
Panelist: Mr. Richard Hill
Brief Facts: The Complainant, founded in 1923, is a well-known multi-industry company, which has grown into a network of businesses with total revenues of USD $12.4 billion, and operates online at <textron .com>. The Complainant is ranked 265th on the FORTUNE 500 list of largest U.S. companies and its companies include some of the most respected global brands in transportation, including Bell, E-Z-GO golf carts and Cessna aircraft. The Complainant asserts rights in the TEXTRON mark based upon its registration in the United States in 1978. The Complainant became aware of the disputed Domain Name <textorn .com> in March 2023 as part of its investigation into a phishing scam associated with a similar domain name (<textorn .net>).
The Complainant believes that, given its experience with similar domains, it is highly likely that the disputed Domain Name was registered with the intent of undertaking a phishing scam similar to the one carried out using the <textorn .net> domain. The Complainant further alleges that the Respondent is passively holding the disputed Domain Name and has engaged in typo-squatting. The Respondent failed to submit a formal Response in this proceeding. However, in an email to the Forum, it states that “we are a website development company and we buy domains for our client only… This domain was registered by mistake due to a spelling mistake; we didn’t use this domain anywhere till now… we are ready to transfer the domain to the actual trademark owner.”
Held: In the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, or more than requested by the parties. Since the requests of the parties, in this case, are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy. See Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Given the common request of the Parties, it is Ordered that the disputed Domain Name be TRANSFERRED from Respondent to the Complainant.
Complainants’ Counsel: Jeremiah A. Pastrick, Indiana, USA
Respondents’ Counsel: Self-represented