We hope you will enjoy this edition of the Digest (Vol. 3.25), as we review these noteworthy recent decisions, with commentary from Experts. We invite guest commenters to contact us.
‣ Evaluating Confusing Similarity When Some Content Relates to the Complainant (xpornonly .com*with commentary)
‣ A Troubling Case Involving Consolidation and a California Trademark (dogandcatsshots .com and more*with commentary)
‣ OBuy v. OnBuy – A Close Call, not a Case for RDNH (obuy .com)
‣ Conclusory Allegations of Bad Faith does not Help Complainant’s Case (vanderhall .com)
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Respondent’s Argument an “Insult to Intelligence”
Panelist: Ms. Luz Helena Villamil J.
Brief Facts: The Complainant (including its predecessors) have owned and operated the domain <savefrom .net> since March 12, 2008, which allows users the ability to download videos for their personal use. The Complainant owns US Trademark for “SAVEFROM”, registered on April 5, 2016. The Complainant argues that it has spent years, countless efforts, and money in building its good reputation among users which the Respondent is currently trying to fraudulently assume. The disputed Domain Name was registered on 15 October, 2022 and resolves to a website that allows users to download and stream images and videos from the internet or converts multimedia in various formats.
The Complainant alleges that the Respondent’s ownership and operation of the disputed Domain Name is clearly violating the Complainant’s intellectual property rights in its ‘SaveFrom’ mark by impersonating the Complainant’s brand, title, and name considering the Respondent’s confusingly similar, explicit, and identical use of the ‘SaveFrom’ mark to provide similar products to that of the Complainant, i.e., video and multimedia downloads.
The Respondent contends that the disputed Domain Name consists of a generic word, for its inherent meaning, which aligns with the site’s purpose and motto of encouraging online users to ‘save their content from us.’ The Respondent further contends that his services differ significantly from those offered by the Complainant, and his website’s content and design are entirely dissimilar from that of ‘SaveFrom .net’ and the disputed Domain Name has a legitimate website.
Held: The Panel does not accept at all the Respondent’s assertion that his usage of the domain name does not intend to cause any confusion with the trademark ‘SaveFrom’ or to gain any undue advantages. This Panel has established and restated on several other cases that if a domain name entirely contains a previously registered trademark, the virtual identity is hardly the result of the casualty, and instead, it evidences an activity performed to deliberately lead people to fall into confusion. How can the Respondent deny that the domain SAVEFROMUS entirely contains the registered trademark SAVEFROM? Such an argument, instead of convincing of a possible right of the Respondent, in fact, confirms the bad faith of its actions. In addition, stating that SAVEFROMUS is a generic word is only a phrase with no evidentiary support. On the contrary, since according to the applicable regulations around the world no generic words can be registered as trademarks, the fact that SAVEFROM is a registered trademark totally contradicts the Respondent’s statement.
The virtually identical reproduction of a third party’s distinctive trademark within a domain name suggests a clear intention to cause confusion to those who have access to the name by leading them to believe it also belongs to the owner of the registered trademark, and thus benefit from said confusion. Further, the fact that the Respondent uses the disputed Domain Name to identify a website that allows users to download and stream images and videos from the internet or convert multimedia in various formats, which happen to be the same services provided by the Complainant through its website <savefrom .net> does indicate that the Respondent registered the disputed Domain Name attempting to attract internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark SAVEFROM. Thus, the bad faith in this behavior is undeniable.
Complainants’ Counsel: Nadezhda Minakova, Virginia, USA
Respondents’ Counsel: Self-represented
Case Comment from Newsletter Editor, Ankur Raheja:
In case Complainant’s website <savefrom .net> is visited from the US, where the Complainant owns registered rights, a visitor is redirected to the sub-domain https://us.savefrom.net, with the following message on the screen:
That is, while the Complainant in this matter is relying upon a US trademark to assert its rights under the UDRP, however, the Complainant has ceased offering services in the US since 2020. This raises an interesting question as to whether the Complainant violated its closing certification to provide a complete and accurate statement to the Panel of having ceased the use of the registered mark (Paragraph 3(b)(xiii) of the Rules).
Beyond that troubling issue which renders the Complainant’s relied upon registration arguably suspect, it may very well be that the Complainant could have established common law trademark rights in the term. Moreover, it does seem rather unlikely that the Respondent adopted such a similar brand to the Complainant’s rather arbitrary brand for essentially the same service The Panel takes a highly critical view of the Response filed by a self-represented Respondent, stating that,“this Panel considers it a real an insult to intelligence” and “stating that SAVEFROMUS is a generic word is only a phrase with no evidentiary support”. Just because the Respondent claimed that “This domain consists of a generic word, for its inherent meaning, which aligns with the site’s purpose and motto of encouraging online users to ‘save their content from us”, does not make its argument have any sense or credibility and the Panelist properly found so in this case.
Evaluating Confusing Similarity When Some Content Relates to the Complainant
Panelist: Mr. Kiyoshi Tsuru
Brief Facts: The Complainant owns and operates the website <onlyfans .com> to which the domain name resolves, and which is used as a social media platform that allows users to post and subscribe to audiovisual content. It is the 94th most popular website on the Internet and the 53rd most popular website in the United States, according to Similarweb. The Complainant is the owner of several trademark registrations around the world for both word and device marks (earliest registered on January 9, 2019). The disputed Domain Name was registered on August 30, 2021, and resolves to an online community created by the Respondent to upload and share X-Rated Pornographic Videos. The Complainant sent a cease-and-desist letter to the Respondent on March 8, 2022, without having any response.
The Complainant alleges that the Complainant’s trademark, ONLYFANS, has been recognized in numerous previous cases decided under the Policy as “internationally well-known amongst the relevant public”, and that “the associated website contains various references to the Complainant’s marks including video watermarks which include the <ONLYFANS .COM> Mark on certain of Respondent’s videos”. The Respondent contends that the Complainant has failed to show that the disputed Domain Name is identical or confusingly similar to the Complainant’s trademark, and likewise failed to show that the Respondent lacks legitimate interests in the disputed Domain Name. The Respondent further contends that the disputed Domain Name includes the term “porn” which is not owned as a trademark by any entity… “xpornonly” is a short form of saying “X-Rated Porn Only”, as it is easier to remember than “xratedpornonly”.
Held: In the present case, the disputed Domain Name, <xpornonly .com>, is composed of the letter “x”, the term “porn”, and a portion of the Complainant’s trademark, i.e., “only”, which term, taken independently, is a commonly used adverb or adjective of the English language, and a term that has not been coined, nor is it exclusively owned by the Complainant. Under section 1.7 of the WIPO Overview 3.0, “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusingly similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity”.
Pursuant to the powers under Paragraph 10 of the Rules, the Panel inspected the website to which the disputed Domain Name resolves and found that said website offers a pornographic video-sharing platform. However, the Panel found no apparent uses of the Complainant’s trademark that may indicate that the Respondent is trading off the Complainant’s reputation. Apparently, the main home page does not seem to display a substantive number of videos with an <ONLYFANS .COM> watermark, nor does the source code of the home page refer to the ONLYFANS Mark. However, some of the videos have within their titles, mention of “ONLYFANS” pointing towards the content being generated or leaked from the Complainant’s website. The Panel notes that it cannot assess whether such content is the dominant content of the website when compared to content originating from other sources. The Panel cannot ascertain from the website at the disputed Domain Name that the Respondent seeks to target the ONLYFANS trademark through the disputed Domain Name.
In its Response, the Respondent argued that the disputed Domain Name is a short version of the description of the videos contained in its website, namely “X-Rated Porn Only”. Taking into consideration the fact that the term “only”, is a commonly used term in the English language, that the Complainant does not own any exclusive rights to the term “only” taken independently, and that the website to which the disputed Domain Names resolves does not use (in a prominent manner) the Complainant’s trademark ONLYFANS (despite some of the videos abovementioned), this Panel considers that there is no confusing similarity since the trademark is not recognizable in the disputed Domain Name. Therefore, the first element of the Policy has not been established.
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
This case is a good example of how a Panelist employed the appropriate test and considerations to determine confusing similarity and resisted the temptation to find it despite some very limited evidence related to the Complainant. It is gratifying to see Panelist Kiyoshi Tsuru take the admirably dispassionate and restrained approach that he did in this case.
Contrast the Panelist’s approach and the outcome between this case and in the case concerning nudeof .com, both brought by Only Fans and both decided by Panelist Kiyoshi Tsuru. In xpornonly .com, the Panelist found the word “ONLY” within the Disputed Domain Name was insufficiently similar to the Complainant’s ONLY FANS mark and denied the Complainant as there was little content on the xpornonly.com website targeting the ONLY FANS mark. In contrast, in the nudeof .com dispute, the Panelist found that the incorporation of “OF” in the nudeof.com domain name resulted in confusingly similar to the ONLY FANS mark (because “OF” was an abbreviation of ONLY FANS) and ordered a transfer because the content at nudeof.com was targeting the ONLY FANS mark:
“The fact that the Respondent registered the disputed domain name, which includes the abbreviation of the well-known Complainant’s trademark ONLYFANS, alongside the term “nude”, and the fact that the website to which the disputed domain name resolved displayed references to the trademark ONLYFANS and a logo confusingly similar to the Complainant’s registered logo, shows that the Respondent has targeted the Complainant’s well-known trademark, and suggests opportunistic bad faith”.
A Troubling Case Involving Consolidation and a California Trademark
<dogandcatsshots .com> and 28 more domain names
Panelist: Mr. Claude Freeman
Preliminary Issue – Consolidation of Complaints: The Complainant filed three (3) Complaints against the respective Respondents with CIIDRC. However, no response was filed by any of the Respondents within the timeline. Thereafter, the Complainant’s counsel submitted a petition to consolidate the three Complaints. The Panelist has explicit authority, subject to the Panelist’s discretion, to consolidate multiple domain name requests under the UDRP “in accordance with the Policy and these Rules.” The overreaching facts in each Complaint are virtually identical, differing only in the different typos and number of domain names. All the Complaints allege the same supporting information, namely that the Complainant has been the owner of the domain name <dogandcatshots .com> and has been using this specific domain name since it was first registered in June 2015, along with the specific intellectual property rights held by the Complainant.
The facts surrounding the registration and non-use of the typo squatting names are also virtually identical across all three Complaints. Under the UDRP Rules, a Respondent’s failure to file a response shall cause the Panelist to make a decision based on the Complaint. Since the Complaints are all virtually identical, it would be economical for the Panelist and the Complainant to have all the matters disposed of concurrently in a singular written opinion. Therefore, having carefully reviewed and considered the Petition to Consolidate provided by the Complainant’s legal representative, including weighing that had the Proceeding not been consolidated, there is no reason to suggest or to conclude that the usual “tests” for such a proceeding would otherwise be individually different, not to mention the economic savings of a consolidation. The Panel, therefore, agrees to Consolidate the Complaints into one proceeding.
Brief Facts: The Complainant provides pet vaccination services, among other pet health products and has an online presence at domain name <dogandcatshots .com> (registered in June 2015). The Complainant and his family have been operating this business in California since 1978 as stated on his website and his registered trademark, thus having common law intellectual property rights through their exclusive use, in addition to their California registered trademark. The disputed Domain Names were registered by three different domain registrants, while 25 of the 29 Domain Names have the same registration date of August 11, 2022. The Complainant alleges that the unlawful domain name squatters are siphoning business from the overwhelming source of visitors to his own domain name of <dogandcatshots .com>, thereby resulting in significant financial damage, though the exactitude of the financial damages hasn’t been quantified.
The Complainant further alleges that a huge number of these domains have been recently registered and being so extremely similar and that none of them is being utilized for any legitimate business purpose, the Complainant alleges these have been fraudulently and improperly registered solely to capitalize on Complainant’s intellectual property rights and official Domain Name. Only one of the three Respondents (‘EdenMedia’) provided a Response… that their domain names (Dogsandcatshots .com and Dogsandcatsshots .com, initially registered in 2018) were acquired in October of 2022 as part of a monetization domain portfolio of 3,000 domain names used exclusively to direct users to paid advertisements selected by PPC or zero-click advertising networks that they partner with for domain name monetization purposes. They further indicate having performed a scan of the entire portfolio for potential infringed trademarks using Estibot, but that the domain name was not flagged, and to date, received no complaints.
Held: The Complainant has established that it has rights in the <dogandcatshots .com> for the purposes of paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds that the Domain Names are confusingly similar to the Complainant’s Trademark. The Domain Names were registered or otherwise acquired in 2022, well after the Complainant’s prior mark. The Complainant’s mark is well-known in the veterinary world or circles. It is also valid in the territory where the Respondent resides (the United States). The Respondents have not been authorized by the Complainant to use its mark, whether in a domain name or otherwise. There is no evidence that, before any notice to the Respondents, they used, or demonstrably prepared to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
Further, given the distinctiveness and the reputation of the Complainant’s prior mark acquired over the years, it is inconceivable that the Respondents could have registered the Domain Names confusingly similar to the Complainant’s trademark for a mere chance without actual knowledge of the Complainant and its mark and the intention to exploit such reputation by diverting traffic away from the Complainant’s website. Even assuming that the Respondents had no knowledge of the Complainant’s prior mark at the time of registration of the Domain Names there is no evidence that they omitted to verify that the Domain Names would have infringed the Complainant’s earlier rights. In this respect, the Paragraph 2 of the Policy states that it is the Respondent’s responsibility to determine whether a domain name registration infringes or violates a third party’s rights. Looking at the totality of the circumstances of the present case, the Panel finds that the Complainant has discharged the burden of proof to show that the Domain Names have been registered and are being used in bad faith.
Complainants’ Counsel: R. Shane Quigley of Parker Law Taylor Group, PC
Respondents’ Counsel: No Response/Self-represented (more than one Respondent)
The case was filed against multiple respondents. One defaulted, and two responded via email in some manner. The standards for consolidation of multiple domain names into one dispute can be flexible. But in this instance, two of the respondents answered in some way by email, indicating they were two different parties. The UDRP allows multiple related complainants, multiple domain names, and multiple related respondents where some connection can be shown. See UDRP Rule 10(e) and also see Policy Paragraph 4(f):
f. Consolidation.In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN.
The Panelist quotes the rule however appears to have misapprehended it. He correctly quotes; “In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel”, which says that ‘if there are multiple disputes between YOU (i.e. one registrant) and a complainant, then either party can petition to consolidate the disputes’. Clearly this provision envisions the consolidation of multiple disputes where those disputes are between the Complainant and a single Respondent. This is confirmed by Rule 3(c) which states:
“The Complainant may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”.
Accordingly, and as pointed out in Gerald Levine’s Domain Name Arbitration at Page 518, “the phrase ‘same domain name holder’ has been construed liberally to include registrants who are not the same person but circumstances suggest the domain names are controlled by a single person, entity or related entities. In the present case, there were clearly more than a single domain name holder and as such it was not open to the Panelist to consolidate the proceeding against multiple domain name holders.
There are many panelists who have dealt with consolidation issues, and there are a wealth of decisions on that score. Having represented respondents who have been lumped in with unrelated parties, I have never encountered a panel or a provider who would allow a case to go forward against multiple respondents who have identified themselves as separate parties. Again, while a panelist might make all sorts of reasonable inferences if no one shows up, the situation is different when separate respondents do actually show up in some way.
One of the fun things about UDRP cases is that it is hard to resist, upon just seeing the domain name(s) being contested, setting some early expectations of what one will expect to see proven, or not, by the complainant.
If the domain name is “DanskoShoesUK.com” then we already know who brought the case and what the probable outcome will be. It takes as long to decide that dispute as it does to read the domain name.
But when the domain name is “DogAndCatsShots.com”, you might think, “hmmm… does this have anything to do with veterinary services? And if so, will the complainant show acquired distinctiveness in this primarily descriptive term?”
Sure, enough, the Complainant is “Yolano Veterinary Clinic” thus answering the first question. Now, a veterinary clinic claiming exclusive rights in “dog and cat shots” is, to any trademark professional, something that should raise an eyebrow in the expectation of a strong showing of acquired secondary meaning or, mercifully, a registered mark of some kind thus relieving the panelist of that chore.
In the present case however, the Panelist appears not to have taken note of this issue. All he says is:
“The Complainant Dr. Geoffrey Antipa, dba Yolano County Vet as a general partnership in California, the owner and user of the registered domain name www.dogandcatshots.com, and provides pet vaccination services, among other pet health products.”
Okay, so the Complainant provides pet vaccination services, of which “dog and cat shots” is riding the line between descriptive and generic. The proof of distinctiveness had better be good:
“Dr. Antipa has been using this specific domain name since it was first registered in June 2015.”
So, he’s only been online for 8 years, which is not a lot, relatively speaking and particularly when it comes to acquiring distinctiveness in an otherwise descriptive or generic phrase. Nevertheless;
“Dr. Antipa and his family have been operating this business in California since 1978 as stated on his website and his registered trademark, thus having common law intellectual property rights through their exclusive use, in addition to their California registered trademark.”
By “this business” we are left to wonder whether that means “Dog and Cat Shots” or “Yolano County Vet”. Then, there are two references to a “registered trademark”. Having checked, I found there is no US federal registered mark, and so the only “registered trademark” is the California state one. The subject of US state registered trademarks is discussed extensively in many UDRP decisions rejecting their use as evidence of rights and is also discussed in Digest Volume 2.31 in connection with the alleged Florida state trademark for Tampa Water Taxi. The Panelist in the present case does not appear to have determined whether this state trademark qualifies as a mark under the Policy despite numerous cases on this topic. He simply suggests that because a business uses “Dog and Cat Shots” in some unspecified way, then it is a “trademark”, which does not even consider the requirement for more than mere use to reach acquired distinctiveness, particularly when it comes to descriptive or generic terms. This is another issue which was covered in Digest Volume 3.17 and also in Digest Volume 2.21 where it was noted that. “When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue”.
Incidentally, while the Complainant does get a lot of Google relevance as of 2023 for this term, they are by no means the only vet clinic that advertises “dog and cat shots”. That should really come as no surprise. I looked up that California registration. It was filed in 2022 for:
“A stylized pink dog bone with an image of a dog head in the upper left curvature of the bone and a cat head in the upper right curvature of the bone, both facing inwards, with text between both images stating “Dog and Cat Shots”. Both images and that text are just above text reading “By Yolano Vet” with that text just above the website url reading “www. DogAndCatShots.com.”
The mark, California Reg. No. 02023590 filed in 2022 looks like this:
Now, the Panelist apparently takes that as evidence that the business was “using the mark” since 1978, because their certificate says “Since 1978” on it, despite the fact that this is obviously far earlier than domain name were invented. Furthermore, the state registration document, which was filed in 2022, claims use of that entire logo since 2015, not 1978. But even though, like other states, California merely accepts trademark applications as-filed, the California registration includes a disclaimer of both “Yolano Vet” and “www. DogAndCatShots.com“:
Accordingly, the only evidence that the Complainant has, is a state trademark registration that is junior to all of the disputed domain names, and which that DISCLAIMS the phrase at issue, yet nevertheless the Panelist found “DogAndCatShots .com” to be a trademark based on a state trademark registration disclaiming it.
This troubling decision demonstrates the absolute imperative of UDRP Panelists being familiar with both UDRP jurisprudence and trademarks. While UDRP cases can be very fact-specific, and UDRP Panelists are not bound by a formal system of precedent, one would expect at least some sort of explanation when a UDRP Panelist deviates in a substantial way from the overwhelming majority trend, or applies a novel theory. After all, there are tens of thousands of UDRP decisions, so there are issues which have been encountered many times, such as consolidation of parties and US state trademark registrations. One might not agree with the majority position on an issue, but at least a relatively consistent application of a disliked principle renders outcomes predictable enough for lawyers to counsel their trademark or domain name clients.
OBuy v. OnBuy – A Close Call, not a Case for RDNH
Panelist: Mr. Paul M. DeCicco (Chair), Mr. Charles A. Kuechenmeister, and Ms. Carrie Shu Shang
Brief Facts: The Complainant is in the retail business and owns rights in the ONBUY mark based upon registration with the USPTO and EUIPO since 2015. The disputed Domain Name <obuy .com> was registered on January 21, 1999, and is in active use by the Respondent. The Complainant asserts that the Respondent does not use the at-issue domain name for any bona fide offering of goods or services but uses it to offer competing services. The Complainant further alleges that the Respondent registered and used its confusingly similar domain name to take advantage of the publicity surrounding the Complainant’s business. The Respondent contends that he made demonstrable preparations to use the disputed Domain Name and it does not disrupt Complainant’s business.
The Complainant sent a cease-and-desist letter to the Respondent. The Respondent asserts in its reply to the Complainant’s cease and desist letter that it registered <obuy .com> as a sister brand to its existing ‘Olight’ brand and further points out that “Obuy” has markedly been used in connection with the Respondent’s bona fide business interests. Prior to having notice of the parties’ dispute, the Respondent used “Obuy” in concert with its numerous registered trademarks that commence with “O” including “Olight”, “Oknife”, “Olamp”, “Ostation”, “Obuddy” as well as similarly formed brands. The Respondent requests a finding of reverse domain name hijacking.
Held: The Respondent shows that “Obuy” has markedly been used in connection with the Respondent’s bona fide business interests and prior to having notice of the parties’ dispute. The Respondent used “Obuy” in concert with its numerous registered trademarks that commence with “O”. Furthermore, the Respondent proffers an August 2022 copyright registration concerning “OBuy” titled software and has produced business records indicating that the Complainant was conducting meetings regarding “Obuy” in the third quarter of 2021. Notably, the Respondent’s website at the disputed Domain Name offers at least some of the Respondent’s “O” trademark branded products for sale.
The Panel thus finds that the Respondent made use of the disputed Domain Name in conjunction with its bona fide business interests prior to having notice of the instant dispute pursuant to the Policy. Further, the Respondent’s use of “Obuy” prior to the instant dispute in conjunction with the Respondent’s own business interests indicates that any coincidence between Complainant’s publicity and Respondent’s domain name activity was benign and not the result of a scheme by the Respondent to opportunistically trade on a confusingly similar version of the Complainant’s mark.
RDNH: In the instant case, the Complainant suggests that one reason for filing its complaint was the fact that the Respondent’s domain name and website seemed to become active shortly after much publicity concerning Complainant’s business. Thus it appeared to the Complainant that the Respondent was intent on opportunistically taking advantage of the spike in publicity to trade off Complainant’s ONBUY trademark. Although the Panel fails to find that the Respondent had any intent to trade off Complainant’s mark, the Complainant’s claim is not baseless and without more does not convince the Panel that the Complainant acted in bad faith in filing its complaint.
On the one hand, it appears that Complainant’s filing did not contain sufficient evidence to carry the day regarding the Respondent’s lack of rights and legitimate interest in the domain name. On the other hand, the Complainant prevailed under Policy ¶ 4 (a)(i) and it is not apparent from the record that the Complainant knew or should have known to a reasonable certainty that it would fail under either Policy ¶¶ 4 (a)(ii) or (a)(iii). On balance, the Panel finds that the Complainant did not engage in reverse domain name hijacking. Therefore, the Respondent’s request for a finding of reverse domain name hijacking is denied.
Complainants’ Counsel: Paul Wytch, England
Respondents’ Counsel: Nazly Bayramoglu, Nevada, USA
A Question of Timing – When was the Disputed Domain Name Registered and When were Common Law Rights Established?
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainant is the central bank of South Africa established in 1996. The Complainant wholly owns the South African Mint Company RF (Pty) Ltd which was founded in 1988 and which mints coins and coin products in South Africa. The Complainant owns the South African trademarks SOUTH AFRICAN MINT COMPANY (registered on June 3, 2013) and SOUTH AFRICAN MINT & Logo (registered on November 12, 2019). The Complainant further has a pending trademark application for SA MINT (filed on August 22, 2022). The Complainant asserts that the Complainant has used SA MINT extensively in the course of its business, for example, in the official domain name for the Complainant <samint .co .za> and on its official website going back to as early as 2005.
The disputed Domain Name was registered by the Korean Respondent in 2023 and resolves to a website displaying pay-per-click links. The Complainant alleges that the disputed Domain Name consists of the SA MINT mark and the Respondent is attempting to benefit from the association with the Complainant by trying to sell the disputed Domain Name and earn unlawful profit from Internet users that visit the website. The Complainant also adds that it cannot think of any possible way in which the Respondent can use the disputed Domain Name without infringing on the Complainant’s trademark rights or causing confusion/misunderstanding among visitors to the disputed Domain Name of some sort of connection with the Complainant. The Respondent did not file a response to the Complainant’s contentions.
Held: SOUTH AFRICAN MINT has been used as a trade name and trademark since 1980, and “South Africa” is commonly abbreviated as ‘SA”. Besides, the Complainant claims common law rights in the trademark SA MINT and in support, has submitted website pages from as early as 2005 showing the Complainant’s use of SA MINT in connection with its business, as well as the use of SA MINT as a Twitter handle, the name of its LinkedIn account, and its domain name. Further, the Complainant has submitted articles from media sources such as Business Insider South Africa, Business Tech, and SowetanLive using SA MINT to refer to the Complainant and the Complainant’s goods/services, showing that the term is commonly used as an identifier for the Complainant and its goods/services. As the disputed Domain Name consists entirely of “samint”, it is identical to the mark in which the Complainant has unregistered trademark rights for purposes of the Policy.
Furthermore, the evidence suggests that the Respondent more likely than not knew of the Complainant when registering the disputed Domain Name. The Respondent has given no explanation for having registered a Domain Name containing the term “samint”. Further, information on the Complainant and its trademark would have been easily discoverable through an Internet search. In fact, the top results of the Panel’s Google searches for “samint” and “SA MINT” for the ten-year period preceding the date of registration of the disputed Domain Name in 2023 are all in connection with the Complainant. Further, by linking the disputed Domain Name with a parking page displaying pay-per-click links displaying terms such as “South African Gold Coins”, “Coin Prices Online” and “Gold Coins” which are the very goods of the Complainant, the Respondent created a likelihood of confusion and benefited commercially from the confusion of Internet users that visited the site by mistake as per paragraph 4(b)(iv) of the Policy.
Complainants’ Counsel: Edward Nathan Sonnenbergs Inc., South Africa
Respondents’ Counsel: No Response
Case Comment from ICA Director, Nat Cohen:
The <samint .com> dispute appears to be a straightforward example of bad faith registration and use where the Respondent recently acquired the Disputed Domain Name and then monetized it to target the Complainant’s products. Yet it is not as straightforward as it first appears. The dispute raises several questions. When did the Respondent register the Disputed Domain Name? What was the status of the Complainant’s enforceable trademark rights at that time? Why is the Complainant, which claims such a long history, not already the registrant of the Disputed Domain Name? Panelist Kathryn Lee recognized that this dispute raised complex issues and put in a tremendous effort to reach her decision.
Like the rocketlab .com and dawsonacademy .com disputes from last week’s Digest which both resulted in denials, the Complainant, which uses <samint .co.za>, does not own the corresponding dot-com domain name for the exact match mark. This raises the question as to why the Complainant is having to resort to a UDRP dispute to secure it, especially since the Complainant claims a history dating back to 1890.
The Complainant itself dates to 1996:
“The Complainant is the central bank of South Africa established in 1996. The Complainant wholly owns the South African Mint Company RF (Pty) Ltd which was founded in 1988 and which mints coins and coin products in South Africa.”
It turns out that the Complainant does not have a registered trademark on “SA MINT”, only a pending application:
“The Complainant has also filed to register the trademark SA MINT (South African Trademark Application Number 2022/25600, filed on August 22, 2022).”
Lacking a registered trademark on “SA MINT”, the Complainant relies on the similarity of “SA MINT” to its registered trademarks incorporating “SOUTH AFRICAN MINT” and also alleges common law rights in “SA MINT”. As to the registered trademarks, it says:
“The Complainant owns the trademark SOUTH AFRICAN MINT COMPANY (South African Trademark Registration Number 2011/12962, registered on June 3, 2013) and SOUTH AFRICAN MINT & Logo (South African Trademark Registration Number 2016/06023, registered on November 12, 2019).”
These are relatively recent registrations. Yet, that shouldn’t be an issue since the decision states that the domain name was registered to the Korean Respondent in 2023:
“The disputed domain name was registered by the Respondent in 2023, and resolves to a website displaying pay-per-click links.”
Yet, according to the Whois record, that is unclear. The domain name shows a creation date of 2010.
Updated Date: 2023-03-03T00:46:06Z
Creation Date: 2010-10-06T18:25:33Z
The registrar verification indicates that a change of organization occurred in February:
“On February 21, 2023, Koreacenter.com co., Ltd. replied to the Center indicating that the disputed domain name was transferred to another organization on February 16, 2023.”
Yet if the new organization is related to the prior organization, perhaps there was not truly a change in control. If the Respondent actually gained control of samint .com in 2010, this would pose a challenge for the Panelist in analyzing whether the registration was made in bad faith and it would pose a challenge for the Complainant in demonstrating that it had enforceable trademark rights to “SA MINT” in 2010. The Complainant has no registered trademark in “SA MINT” and is relying on the similarity of “SA MINT” mark to its registered marks incorporating the phrase “SOUTH AFRICAN MINT” which were not registered until later.
The Complainant also alleges common law rights in SA MINT:
“Moreover, the Complainant has alleged common law rights in the trademark SA MINT and in support, has submitted website pages from as early as 2005 showing the Complainant’s use of SA MINT in connection with its business, as well as use of SA MINT as a Twitter handle, the name of its LinkedIn account, and its domain name.”
Lee issued a Procedural Order requesting further evidence of the Complainant’s trademark rights. Lee also conducted independent research reviewing 10 years of use of the term SAMINT:
“In fact, the top results of the Panel’s Google searches for “samint” and “SA MINT” for the ten-year period preceding the date of registration of the disputed domain name in 2023 are all in connection with the Complainant.”
Lee’s independent research supports a finding, at least as far back as 2013, that the Complainant likely had developed a degree of recognition and common law rights to the “SA MINT” mark. Thanks to Lee’s thoroughness, even if the current Respondent assumed control of the samint .com domain name closer to the 2010 creation date, Lee is nevertheless able to offer some evidence in support of common law rights going back ten years.
The original question of why the samint .com domain name was not originally registered by the Complainant remains unanswered. It is curious given that the Complainant claims to have been known as “SA MINT” well before the 2010 creation date reported for samint .com.
The answer, as is often the case in these circumstances, is that the Respondent is not the original registrant of samint .com. samint .com was registered back in 2000 to an Indian company using the abbreviation “SAM INT” – https://web.archive.org/web/20010515203323/http://samint.com/.
Record expires on 02-Feb-2004.
Record created on 02-Feb-2000.
After its registration expired, it was registered to another entity from 2005 to 2010:
Creation date: 19 Jul 2005 00:00:00
Expiration date: 19 Jul 2010 00:00:00
This suggests that the Complainant had at least three prior opportunities to register the Disputed Domain Name and failed to do so each time: 1) prior to 2000, 2) early in 2005, and 3) for a period in 2010.
This also suggests that the current Korean Respondent is at least the third registrant of the samint .com domain name. This undercuts the Complainant’s allegation that the only use of SAMINT.com could be to target its rights:
“The Complainant also adds that it cannot think of any possible way in which the Respondent can use the disputed domain name without infringing on the Complainant’s trademark rights or causing confusion/misunderstanding among visitors to the disputed domain name of some sort of connection with the Complainant.”
It also raises questions about Lee’s finding:
“evidence suggests that the Respondent more likely than not knew of the Complainant when registering the disputed domain name.”
Is it possible that the Korean registrant registered SAMINT .com in good faith without awareness of the South African Mint, especially if the relevant date is not 2023 but earlier? It seems not implausible given that the domain name was previously registered in good faith by an unrelated third-party and then again by yet another entity. But it is also possible that it was registered with the intention of targeting the Complainant.
This is a case that requires the Panelist to weigh the evidence and to decide based on her view of the balance of probabilities. Lee found that the Respondent had registered and used samint .com to target the Complainant’s rights in bad faith.
Initial appearances can be deceiving. Far from being a straightforward cybersquatting dispute, this turns out to be a complicated case that raises a wealth of issues and questions.
Lee could have ordered a transfer with only a cursory review and a minimal explanation. Instead, she put in a tremendous effort to try to reach the correct decision in this surprisingly complex dispute.
Conclusory Allegations of Bad Faith does not Help Complainant’s Case
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant manufactures hand-made three-wheeled autocycles for sports driving, touring, commuting, and city driving. The Complainant asserts rights to the VANDERHALL mark based upon the registration with the USPTO (registered on October 4, 2016), and other trademark offices worldwide. The Complainant alleges that the Respondent registered and uses the disputed Domain Name in bad faith, as the website to which Domain Name resolves, lacks basic security features and the Respondent is engaging in cybersquatting. The Respondent failed to submit a Response in this proceeding.
Held: The Panel finds that the Complainant fails to meet its burden of proof of bad faith registration and use under the Policy. “The Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that the Respondent proceeded in bad faith at the time it registered the disputed Domain Name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith”, see Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015).
The Respondent’s registration of the disputed Domain Name predates Complainant’s first claimed rights in the VANDERHALL mark, and thus the Complainant cannot prove registration in bad faith in terms of the Policy, as the Policy requires a showing of bad faith registration and use. “Whatever the merits of Complainant’s arguments that the Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail”, see Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017).
Here, the Respondent registered the disputed Domain Name, which consists of its surname, on June 26, 2000. The Complainant first used the VANDERHALL mark on July 2, 2012. The Respondent could not have entertained bad faith intentions respecting the VANDERHALL mark because it could not have contemplated Complainant’s then non-existent rights in VANDERHALL mark at the moment the domain name was registered. Therefore, the Panel finds the Respondent did not register the Domain Name in bad faith.
Complainants’ Counsel: Scott R. Cleere, Utah, USA
Respondents’ Counsel: No Response