Respondent Warned Complainant before UDRP Filed, but Complainant Persisted – ICA UDRP Digest – Vol 2.47

Ankur Raheja UDRP Case Summaries

We hope you will enjoy this edition of the Digest, as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch:

Respondent Warned Complainant before UDRP Filed, but Complainant Persisted (candycloud .com *plus comment)

Panelist Uses Google Search to Corroborate Complainant’s Claims (stylage .com *plus comment)

Greater Onus on Complainants in Cases Involving Common Law Marks Composed of Descriptive Terms (blackfoodie .com *plus comment)

Domain Name Used for Shocking Counterfeit Website (shock-doctor .com *plus comment)

Respondent’s Explanation for Registering Domain Name and offering it For Sale, Was “Forthright” and “Plausible” (citustech .com *plus comment)

Did the Panelist Misapprehend the Facts Yet Get the Decision Right? (rocksolar .com *plus comment)

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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.

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Respondent Warned Complainant before UDRP Filed, but Complainant Persisted

Candy Cloud IP LLC v. Mike Morgan, WIPO Case No. D2022-3368

<candycloud .com>

Panelists: Mr. Warwick A. Rothnie (Presiding), Mr. John Swinson and Mr. Steven M. Levy

Brief Facts: The Complainant provides food and drink under the CANDY CLOUD mark, which was registered with the USPTO on July 12, 2022. The said registration claims first use in commerce from June 1, 2019. The Respondent was the registrant of the Domain Name by May 12, 2008, the date of the earliest WhoIs record captured by DomainIQ. Until in or about 2017, the Domain Name’s parking page mostly displayed pay-per-click (“PPC”) links to candy and related items and since 2017 there have also been an increasing number of PPC links to cloud computing services. At least since 2017, the Respondent also offered the disputed Domain Name for sale.

The Complainant points out that the Respondent was and is offering the disputed Domain Name for sale for USD $40,000. When the Complainant contacted the Respondent and made a “fair” offer of USD $5,000, the Respondent rejected this, maintaining the USD $40,000 price but indicating some willingness to negotiate. The Complainant contends that this conduct was undertaken in circumstances where the Respondent has no rights or legitimate interests in the disputed Domain Name and, moreover, according to the Complainant, the Respondent is “squatting” on at least 768 domain names thus indicating an intention to commercialise them rather than use them.

Held: The fundamental problem confronting the Complainant is that the Respondent became the registrant of the disputed Domain Name more than a decade before the Complainant or its affiliate began using the Complainant’s trademark. The Respondent simply could not have known about the Complainant let alone been targeting it. Although the Complainant seeks to point to a third-party US trademark, which was cancelled in November 2009 that does not support an argument attributing bad faith to the Respondent in this case. It has nothing to do with the Complainant’s claim that its own trademark is being targeted. The Panel fails to see how an abandoned trademark can support the Complaint’s allegations of bad faith, especially on a record as thin as that propounded in this case.

The Complainant’s further evidence of the Respondent holding 768 domain names is a reverse WhoIs search on the name “Michael Morgan”. As the Respondent points out, however, even the cursory review of the WhoIs list provided by the Complainant reveals that the Respondent is not the registrant of many, if not all, of these domain names. Bearing in mind that the Respondent is located in Canada, whereas the registrants in the list include people from different professions located elsewhere. On this evidence, the allegation is groundless and must be rejected. In these circumstances, the Panel finds that the Complainant has failed to prove the disputed Domain Name was registered in bad faith.

RDNH: The disputed Domain Name was registered by the Respondent years before the Complainant’s rights accrued. The Complainant further attempted to circumvent that fundamental problem by invoking a cancelled registration wholly unrelated to the Complainant and which had apparently been abandoned by 2008. The Panel also notes the attempt to attribute ownership of some 768 disputed Domain Names to the Respondent on evidence which does not withstand even the most cursory inspection.

Finally, the evidence of correspondence with the Respondent, submitted by the Complaint, gives the impression that it was the Respondent who initiated contact with the Complainant in an effort to sell the disputed Domain Name. However, the Respondent’s evidence shows that it was, in fact, the Complainant who initiated such contact. This appears to be an act, by the Complainant, of withholding certain evidence in an attempt to mislead the Panel as to the facts of this case.

These factors mean the Complaint was always doomed to fail and, indeed, the Respondent pointed out to the Complainant, in correspondence before the Complaint was filed, that the disputed Domain Name predated the asserted trademark. Nonetheless, the Complainant persisted. In these circumstances, the Panel considers that a finding of reverse domain name hijacking is appropriate and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Complaint Denied

Complainants’ Counsel: WilliamsMcCarthy LLP, United States
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States

Case Comment by ICA General Counsel, Zak Muscovitch: What can be done to discourage Complainants from proceeding with complaints that are “doomed to fail”? Here, the Respondent’s counsel warned the Complainant before the Complaint was filed that the Respondent’s rights were senior, yet the Complainant proceeded headlong anyhow. Not only did the Complainant proceed with this misadventure, but tried to circumvent its “fundamental problem” by wrongly invoking an unrelated third party’s cancelled trademark. Moreover, the Complainant submitted evidence that did not “withstand even the most cursory inspection”.

The Panel appropriately censured the Complainant and noted the specific reasons why the Complainant had engaged in Reverse Domain Name Hijacking. As written about previously in the Digest, the Panel could have also possibly censured the Complainant’s counsel itself by noting that on the facts of this case, it was likely the Complainant’s counsel which bore some if not most of the responsibility for proceeding despite being warned that its Complaint was doomed to fail.

Nevertheless, I have suggested previously that “blunt warnings” to Complainants be included in educational materials or as part of the filing or certification process itself, in order to dissuade conscientious but misguided or uninformed Complainant counsel from proceeding further. Yet this case demonstrates how such blunt warnings may not in fact always succeed in dissuading a Complainant and its counsel from proceeding with an abusive Complaint.

The unfortunate part is that the Respondent’s counsel did everything that it could to avoid having to defend this meritless case yet ultimately still had to. The Respondent gains nothing from this proceeding other than keeping what it was legally entitled to in the first place, and had to expend legal fees for the privilege of doing so.

Are such unfortunate outcomes for a Respondent just ‘collateral damage’ from the UDRP which provides an important service to the vast majority of Complainants who are bona fide? Or is there something that stakeholders can do to reduce the frequency, if not eliminate altogether, abusive Complaints?


Panelist Uses Google Search to Corroborate Complainant’s Claims

Laboratoires Vivacy v. JUNGYUHKOOK, WIPO Case No. D2022-3364

<stylage .com>

Panelist: Ms. Kathryn Lee

 Brief Facts: The Complainant is a French manufacturer of cosmetic injectable medical fillers sold under the trademark STYLAGE. The Complainant owns a number of STYLAGE trademark registrations including International Trademarks (registered on June 19, 2008 and on May 18, 2015) and EU Trademark (registered on March 23, 2009). The disputed Domain Name was registered on May 30, 2017 by a Korean Respondent, and resolves to a website with no content. The Complainant contends that the STYLAGE mark is a coined term and the Respondent would have no reasonable explanation for choosing this name.

Further, the Complainant states that the Respondent attempted to sell the disputed Domain Name for USD $80,000 which is well in excess of his out-of-pocket costs directly related to the disputed Domain Name. In addition, the Complainant explains that the Respondent was involved in numerous prior domain name cases and holds more than 80,000 domain names including domain names with well-known trademarks. Lastly, the Complainant contends that the disputed Domain Name disrupts the Complainant’s business and causes harm to the Complainant’s brand image.

Language of Proceedings: The Rules provide that the language of the proceeding shall be the language of the registration agreement, which in this case is Korean, and both Parties have had an opportunity to argue their positions on this point. The Center issued a notice in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently chose not to submit any response.

The disputed Domain Name is composed of Latin characters. In addition, in terms of WIPO Overview 3.0, there are five prior WIPO UDRP decisions involving the Korean Respondent, and the panels in all the cases rendered decisions in English, deciding that the Respondent has sufficient knowledge of English to be able to understand the decision in English, or that he would not be unduly prejudiced by rendering the decision in English. Accordingly, the Panel determines that rendering the decision in English is fair and procedurally efficient, given the circumstances of this case.

Held: Herein, the evidence suggests that the Respondent likely knew of the Complainant when registering the disputed Domain Name, given that the “stylage” is a distinctive term, and the Respondent did not give any explanation for having registered this particular term. Further, the Panel’s Google search for “stylage” for the five-year period preceding registration of the disputed Domain Name showed plenty of results in connection with the Respondent and the “stylage” injections. Besides, the Complainant’s trademark registrations would have been discoverable through a trademark search. Therefore, the Panel finds that the Respondent more likely than not registered the disputed Domain Name with knowledge of the Complainant and its trademark in order to profit from the likelihood of association with the Complainant’s trademark and the products using the mark.

The disputed Domain Name does not display any content and there is no evidence it was ever put to any use. Therefore, considering the distinctiveness of the STYLAGE mark, the Respondent’s pre-Complaint correspondence with the Complainant wherein the Respondent offered the disputed Domain Name for sale for USD $80,000 that is likely well in excess of Respondent’s out-of-pocket expenses, and the failure of the Respondent to submit a response or provide any evidence of actual or contemplated good-faith use, the Panel finds that the Respondent’s non-use of the disputed Domain Name does not prevent a finding of bad faith. Lastly, the Panel takes note of the various prior UDRP decisions rendered against the Respondent that indicate a pattern of bad faith conduct on part of the Respondent.

Transfer

Complainants’ Counsel: Inlex IP Expertise, France
Respondents’ Counsel: No Response

Case Comment by ICA General Counsel, Zak Muscovitch: The scope of proper “limited independent research” by a Panelist has been discussed in this Digest previously (see for example, the Comment on the Fordirect.com case in Digest Volume 2.42).

Although this case does not appear to turn on Panelist independent research, I did note that the Panelist stated that, “the Panel’s Google search for “stylage” for the five-year period preceding registration of the disputed Domain Name showed plenty of results in connection with the Respondent and the “stylage” injections”. My sense is that by conducting this Google search, the Panelist was arguably performing a prudent test of the Complainant’s unopposed evidence.

The Complainant alleged that “the STYLAGE mark is a coined term and the Respondent would have no reasonable explanation for choosing this name”. Nevertheless, the term, “stylage” on its face could potentially be a term that is widely used by third parties or which has some sort of independent meaning aside from the Complainant’s mark. It is generally up to a Respondent to prove this if this is indeed the case, but the Respondent did not respond. Accordingly, in the absence of a Response, the Panel could have taken the Complainant’s broad and conclusory claims at face value and transferred the Domain Name without engaging in any independent verification. But such an approach can in some cases leave the Panel with uneasiness that it might be wrongly transferring a Domain Name corresponding to a widely used term.

Here, the Panel acknowledged that “the evidence suggests that the Respondent likely knew of the Complainant when registering the disputed Domain Name” and further noted that “stylage” was an apparently “distinctive term”. The Panel’s inquiry could have ended there, but the Panel went on to conduct a Google search, in my view because the Panel prudently wanted to ensure that there was a sufficient factual basis for concluding that the Complainant was the target of the Respondent’s registration, even in the absence of a Response. I suspect that Panels often engage in such independent research to verify the veracity of claims, even if the research isn’t reported in the decision itself, though this can of course be problematic as noted by the two co-panelists in the aforementioned Fordirect.com case.

Some observers could however say that the Panelist’s research in this case was conducted to unfairly assist the Complainant who may have not itself provided sufficient evidence to justify the transfer. On the facts of this case, however, it appears that the transfer order did not turn on the Panelist’s independent research, but rather it was conducted to test the Complainant’s claims and ultimately provided some corroboration. Ostensibly, if the Panelist’s search revealed that there were plenty of third party users of the term prior to the Domain Name registration date, or that the term had a common meaning independent of the Complainant’s mark, then the Panelist’s research could have ended up helping the Respondent. A good example of this appears in the below case concerning, BlackFoodie[.]com where the Panelist noted “that there are many instances of ‘black foodies’ online in addition to the ‘Black Foodie Friends’ site mentioned by the Respondent”.

As such, I tend to think that in the circumstances of this case, the Panel was prudent in conducting such a search in order to provide some additional comfort that the Domain Name would be properly transferred. I am nevertheless mindful that there are of course good arguments to be made that if there is such uncertainty in order a transfer that it occasions a Panelist to undertake independent research, then that should mean that the Panelist should decline to transfer. I think though that in the particular circumstances of this case, there was likely enough evidence to support a decision to transfer and the independent research was of a corroborative nature – and importantly, could have resulted in denying the Complaint had the results of the research been different. Further, if the Respondent had an innocent explanation for its registration of a coined term such as stylage.com, it was its responsibility to appear to present such an explanation.


Greater Onus on Complainants in Cases Involving Common Law Marks Composed of Descriptive Terms

 Black Foodie, Inc. v. Braxston Richmond, Black Chef / Black Foodie Finder, WIPO Case No. D2022-3536

 <blackfoodie .com>

Panelist: Mr. W. Scott Blackmer

 Brief Facts: The US Complainant operates an online international culinary platform featuring recipes, events, and food guides at <blackfoodie .co>. The Complainant does not have a registered trademark but has two pending applications to register BLACK FOODIE as a standard character mark in the United States and one pending in Canada. Both the US applications are currently suspended pending legal action, following refusals based on likelihood of confusion, the merely descriptive nature of the mark, and the identification of goods.

The disputed Domain Name was registered on June 17, 2009, and serves as a directory for food businesses and events, a kind of software as a service (SaaS) application. The Respondent registered BLACK FOODIE FINDER, on the USPTO Supplemental Register and cites 2022 articles about its business in Entrepreneur Magazine and on websites.

The Complainant argues that the Respondent acquired the Domain Name in 2022, long after the Complainant began using the BLACK FOODIE mark and that the Complainant’s website and social media sites reach “millions” of entrepreneurs, home cooks, and others. The Complaint also cites (without documentation) media recognition and awards and refers as well to participation in community and media events, festivals, and interviews, without supplying dates or citations.

The Respondent contends that the Complainant does not demonstrate having acquired common law rights in a BLACK FOODIE trademark or service mark for purposes of the Policy or of the law of the United States or Canada and states that the USPTO refusal to register the mark on the ground of mere descriptiveness reinforces the view that the mark did not acquire distinctiveness. The Respondent further contends that the parties focus on different content and are geographically separate, and each have a substantial but different audience.

Held: The Complainant’s “BLACK FOODIE” platform has been operating for seven years. The threshold challenge for the Complainant is that it lacks a registered trademark and does not offer persuasive evidence that it’s claimed BLACK FOODIE mark has “become a distinctive identifier which consumers associate with the complainant’s goods and/or services”. The claimed mark is inherently descriptive, online dictionaries define the word “foodie”, and the Complainant uses the term “black foodie” in its literal sense, referring to black people who love food and are interested in talking and reading about it. The Panel also notes that there are many instances of “black foodies” online in addition to the examples cited by the Respondent.

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are composed 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. The Complainant offers little supporting documentation for its conclusory claims about the audience and media recognition for the Complainant’s website and social media sites.

Importantly, the USPTO recently found that the asserted mark was not registrable because it is merely descriptive, and it appears that both United States and Canadian trademark offices found the Complainant’s attempts to identify its goods or services deficient. The Respondent itself registered a similar mark, BLACK FOODIE FINDER, but only on the USPTO Supplemental Register, presumably because that phrase is also descriptive. On this record, the Panel finds that the Complainant did not demonstrate that the claimed mark BLACK FOODIE acquired distinctiveness in identifying goods or services associated with the Complainant.

Complaint Denied

Complainants’ Counsel: Mitchell, Silberberg & Knupp, LLP, United States
Respondents’ Counsel: Solace Law, United States

Case Comment by ICA General Counsel, Zak Muscovitch: Panelist Scott Blackmer applied to the correct standard to domain names corresponding to descriptive terms. As he points out in citing Paragraph 1.3 of the WIPO Consensus View: 

“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. 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.” [emphasis added]

Contrast this case and the application of the appropriate test for domain names corresponding to descriptive terms with the BaseballCoachTraining[.com] case in Digest Vol. 2.44.


Domain Name Used for Shocking Counterfeit Website

Shock Doctor, Inc. v. lin lin, NAF Claim Number: FA2210002017027

<shock-doctor .com>

Panelist: Mr. Ho-Hyun Nahm, Esq.

Brief Facts: The Complainant has been selling protective gear for athletics for over 30 years. The Complainant owns rights in the mark SHOCK DOCTOR based upon registration with the USPTO dated, January 17, 1995. The disputed Domain Name was registered on August 26, 2022 and hosts a confusingly similar copy of Complainant’s legitimate website, which sells counterfeit Complainant goods bearing counterfeit SHOCK DOCTOR trademarks. The Complainant provides screenshots of the disputed Domain Name’s resolving website and Complainant’s own website.

The Complainant contends that the Respondent’s use of the disputed Domain Name to pass itself off as the Complainant in an attempt to defraud Complainant’s customers and disrupt Complainant’s business is clear evidence of Respondent’s bad faith registration and use under the Policy. The Complainant further adds that the Respondent fails to use the disputed Domain Name in connection to a bona-fide offering of goods or services or a legitimate non-commercial or fair use. The Complainant received several reports of third-parties being scammed by the Respondent. The Respondent did not file a response.

Held: The Panel finds that the use of the disputed Domain Name to pass Respondent off as the Complainant does not constitute bona fide offering of goods or services, nor any legitimate non-commercial or fair use. As the Respondent did not file a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondent has no rights or legitimate interests in the disputed Domain Name. Further, the use of a disputed Domain Name to pass off as a complainant and offer competing or counterfeited goods may be evidence of bad faith per Policy. The Panel recalls that the Complainant provided the Panel with screenshots of the disputed Domain Name’s resolving website which mirrors the design of Complainant’s own website and sells counterfeit goods under the SHOCK DOCTOR mark. Therefore, the Panel agrees and finds that the Respondent registered and used the disputed Domain Name in bad faith per Policy.

Transfer

Complainants’ Counsel: Brian S.S. Auerbach of Ballard Spahr LLP, Pennsylvania
Respondents’ Counsel: No Response

Case Comment by ICA General Counsel, Zak Muscovitch: This case is noteworthy because it provides an excellent example of the best use of the UDRP. On the facts of this case, the Domain Name was undoubtedly registered to target the Complainant since the Respondent’s associated website copied the Complainant’s own website and offered counterfeit goods bearing the Complainant’s mark. Clearly, the UDRP provided the Complainant with an effective and efficient resolution here and the Panel was able to confidently order the transfer with near certainty that the Panel was doing the right thing.

Contrast that with a variety of other kinds of UDRP cases where the Panel’s level of confidence doesn’t nearly approach the level of confidence that the Panel was able to have in this case. For example, a case where a Panel finds on a very thin and unsatisfactory record, that it is “more likely than not” that a Respondent targeted a Complainant, without having anything close to certainty, let along strong confidence and relying upon a mere 50.1% level of likelihood. The contrast between such cases at the outer extremes of the UDRP, serves to demonstrate how widely the UDRP is applied for transfers in diverse circumstances. At one end of the extreme we have counterfeiters and at the other end of the extreme we have registrants who “may have” targeted a Complainant but we are far from sure, yet in both kinds of cases, a transfer is ordered. The UDRP performs at its best when used for clear cases, not for uncertain situations.


Respondent’s Explanation for Registering Domain Name and offering it For Sale, Was “Forthright” and “Plausible”

CitiusTech Healthcare Technology Private Limited v. Anthony Moussa, Moo Companies, Inc., WIPO Case No. D2022-3813

<citustech .com>

Panelist: Mr. Robert A. Badgley

Brief Facts: The Complainant describes itself a leading provider of consulting and digital technology to healthcare and life science companies, operating in India, the US, UK, UAE and Singapore. The Complainant owns Indian Trademark registration for CITIUSTECH, registered on March 3, 2014. The Complainant claims that the CITIUSTECH mark was first adopted by the Complainant as its brand name and logo in the year 2005 when the company was established with the name Citius IT Solutions Private Limited in India and as a Complainant’s subsidiary company in the United States, CitiusTech, Inc. Because the Domain Name was registered in 2013, the Panel focused on the Complainant’s alleged trademark rights at the time the Domain Name was registered on May 15, 2013. The Complainant contends that it experienced significant revenue growth each year since 2013-2014. Due to this growth, more than 95% of Complainant’s cumulative revenue since 2005 was earned after the 2012-2013 year. Put another way, only about 5% of Complainant’s all-time revenues were derived prior to the 2013-2014 fiscal year.

The Respondent did not submit a formal Response in this proceeding, but sent various emails explaining his motives in relation to the disputed Domain Name, mainly denying the knowledge of Citius Tech in 2013. The Respondent argues that CITUS is a Latin word meaning ‘quick’, and is different from the Latin word Citius, and that he adopted the Domain Name as a new name for his IT Company. He further argues:

“I have every right to think of a name and hold it for my company because I believe it is a good name. I hold a portfolio of domain names and list them for sale, because owning over 200 domain names gets costly… I have every right as an entrepreneur to sell domain names, if I believe that while I may not use them for my specific business… In 2013 I spent significant time coming up with <CitusTech .com> as a possible name for a business and therefore I have money invested in the name and am due compensation if someone would like to purchase it. My initial listing price of USD $2,500 is extremely reasonable… I have increased the price of the listing for <CitusTech .com> to compensate me for the time and effort that I have put into dealing with this issue…”

Held: The Panel concludes that the Complainant did not carry its burden of proving that the Respondent registered the Domain Name in bad faith under the Policy. Various facts are relevant to the Panel’s determination. First, “citus” and “citius” are not the same word. Second, the Complainant had no registered trademark rights at the time the Domain Name was registered. Third, the record here does not establish that, as of 2013, the CITIUSTECH mark was so well known that someone in Respondent’s position would probably have been aware of the CITIUSTECH mark. Fourth, the record does not indicate the extent to which Complainant’s sales and operations prior to 2013 occurred in the United States as opposed to India and the other countries where the Complainant operates.

Lastly, the Respondent’s explanation why he registered the Domain Name strikes the Panel as plausible. The Panel cannot find any holes in Respondent’s story, and cannot find any internally inconsistent statements that could otherwise undermine the Respondent’s credibility. On the contrary, the Respondent’s account of his behaviour and motives appears rather forthright. The Panel therefore credits Respondent’s emphatic and clear denial of any knowledge of Complainant’s mark in 2013. On a balance of probabilities, the Panel notes that the Respondent more likely did not have the Complainant’s trademark in mind when registering the disputed Domain Name. Noting the plausibility of Respondent’s arguments, the Panel considers very unlikely that the Complainant could have provided any evidence or arguments proving the targeting of the Complainant and consequently, change the Panel’s finding.  Given Complainant’s burden of proof, this Complaint must fail.

Complaint Denied

Complainants’ Counsel: Vutts & Associates LLP, India
Respondents’ Counsel: Self-represented

Case Comment by ICA General Counsel, Zak Muscovitch: Panelist Robert Badgley handled this dispute well. I found a couple aspects of this case particularly interesting.

Firstly, this case demonstrates the importance of actually responding to a Complaint. Had the Respondent not responded, the Panel could have found persuasive the evidence in support of the Complainant’s uncontested allegations and ordered the transfer of the Domain Name. It was the Respondent’s credible and forthright explanations and denials which principally led to the Panel’s decision to deny the Complaint. Notably, the Panel stated that it “cannot find any holes in Respondent’s story and cannot find any internally inconsistent statements that could otherwise undermine Respondent’s credibility”. This yardstick is often used by Panelists in order to determine whether there are any factors which could enable a Panelist to discredit a Respondent’s denials and explanations. Where none are found, a Respondent’s denials and explanations can be determined, as the Panel did here, to be of sufficient credibility to undermine a Complainant’s allegations to the point where the Complainant cannot meet its burden of proof.

Secondly, I note that the Panel found that “Respondent more likely did not have Complainant’s trademark in mind when registering the disputed Domain Name”, yet at the same time found it “very unlikely that Complainant could have provided any evidence or arguments proving the targeting…”. Accordingly, although nominally decided on a “balance of probabilities” basis, the Panel in this case appears to have had a high degree of confidence that the Complainant could never meet its burden of proof in this case, even with additional evidence or argument. This case presents another example of circumstances that provide a Panelist with solid ground for making its order, in contrast to mere guesswork on a very thin record which only minimally meets the ‘balance of probabilities”.

Thirdly, this case provides a great example of an honest and forthright explanation of registering hundreds of domain names – and offering them for resale – even where the Respondent is not a “professional domain name investor”. The compelling rationale provided by the Respondent is quite common, even in relation to registrants of only a handful of domain names; they spend time creatively coming up with a domain name that they could conceivably use themselves and in the interim offer the domain name for sale to offset costs and in order to receive just compensation. There is nothing nefarious about this and I am glad to see that Panels have come to recognize this.


Did the Panelist Misapprehend the Facts Yet Get the Decision Right?

ROCKSOLAR TECHNOLOGY LLC v. RTH Domains, NAF Claim Number: FA2210002015315

<rocksolar .com>

Panelist: Mr. Sozos-Christos Theodoulou

 Brief Facts: The Complainant asserts rights in the ROCKSOLAR mark based upon registration with the USPTO (registered on April 25, 2017). The Complainant alleges that the Respondent registered and uses the disputed Domain Name in bad faith because the Respondent offered to sell the disputed Domain Name in excess of its out-of-pocket costs. The Respondent alleges that it registered the disputed Domain Name on April 13, 2007 well before the Complainant had any trademark rights and that the Complainant initiated purchasing the disputed Domain Name. The Respondent also alleges that it has rights or legitimate interests in the disputed Domain Name and that the Complainant failed to provide evidence to the contrary.

Held: The Complaint/Amended Complaint has not been filed in a way that would enable the Panel to learn sufficient facts for deciding on this case. The Panel, thus, attempted to make its own research on the Internet, so as to at least apprehend the basic elements of the dispute.

The disputed Domain Name incorporates the ROCKSOLAR mark in its entirety, merely adding the gTLD “.com”. Therefore, the Panel could normally find that the disputed Domain Name is identical or confusingly similar to the ROCKSOLAR mark under Policy. However, according to the USPTO online database, the owner of the ROCKSOLAR trademark is not the Complainant, but a Chinese company by the name of Shenzhen Sbase Electronics Technology Co., Ltd. The Complainant is mentioned as the “LAST LISTED OWNER” as evidenced from the Annex made available by the Respondent, and the Panel realizes that there was an assignment of rights from the Complainant to the benefit of the above Chinese company in January 2022. This is valid for both US trademarks on which the Complainant based its complaint.

Further to this finding, the Panel nevertheless tried to check online whether there is any legal affiliation between the two companies which could justify the fact that the Complainant had filed the present Complaint, despite not having trademark rights in the ROCKSOLAR trademark at the time of filing of the Complaint. No such indication is evident from the Complainant’s official website <rocksolars .com>. From other online sources, related to customs activity, it seems that the Complainant (buyer) occasionally imported goods from the Chinese company (supplier), but no other legal relationship between these companies has been traced. Therefore, the Panel concludes that the Complainant fails to establish rights in the ROCKSOLAR trademark.

Complaint Denied

Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Daliah Saper, US

Case Comment by ICA General Counsel, Zak Muscovitch: This is an unusual case. Here, although it is unclear precisely how, the Panelist noted that the Complaint seems to have filed an unsatisfactory Complaint such that the Panelist couldn’t figure out what was going on, and as a result initiated his own research.

Checking on a Complainant’s relied upon trademarks is perhaps the best example of a justified use of independent research by a Panel. Indeed, particularly where a Complainant has not even filed the registrations themselves, it is likely even an obligation of a Panel to verify their validity and scope.

Here, the Panel appears to have done that, but came to a troubling conclusion, possibly the result of a misapprehension. The Panelist prudently checked to see if the Complainant was the owner of the relied upon trademark registrations but noted that the owner “is not the Complainant, but a Chinese company”. If that were in fact the case, then the Panel would have been justified in dismissing the Complaint for want of standing. However, the Panel also noted that the Complainant was the “last listed owner”. The “last listed owner” as reflected in the USPTO, is in fact the current owner or registrant of the trademark. As such, since the US company is the last listed owner and also the Complainant, the Complainant appears to have standing as it owns a trademark corresponding to the Domain Name.

Nevertheless, the Panelist stated that, “thanks to Annex 1 of the Response, the Panel has realized that there had been an assignment from the Complainant to the benefit of the above Chinese company in January 2022”. This appears to be incorrect, as it appears to be the other way around. It was the Chinese company which assigned the trademarks to the US company, which is the Complainant, in January of 2022.

Based upon this apparent misapprehension, the Panel “tried to check online whether there is any legal affiliation between the two companies, which could justify the fact that the Complainant had filed the present Complaint, despite not having trademark rights on the ROCKSOLAR trademark at the time of filing of the Complaint.” The Complaint was submitted on October 10, 2022, which is ten months after the January 4, 2022 assignments from the Chinese company to the US company. Accordingly, it appears that the US Complainant did in fact have trademark rights at the time of filing the Complaint, as the assignee of the Chinese company’s trademark rights. As such, it was unnecessary for the Panelist to try to determine based upon his own online searches, whether there was any affiliation between the two respective companies, which could provide the Complainant with standing based upon the trademark rights of an affiliate.

The Panel ultimately dismissed the Complaint because it “has failed to establish rights in the ROCKSOLAR mark”, yet this appears incorrect as explained above. Nevertheless, the denial of the Complaint may have still been warranted on the basis of the Respondent’s registration of the Domain Name in 2007, since the Complainant’s trademark registrations were from 2017 and only cited 2016 and 2017 dates of first use in commerce.

Something appears to have unfortunately gone off the rails in this case.