We hope you will enjoy this edition of the Digest (Vol. 3.7) as we review these noteworthy recent decisions with commentary from our General Counsel, Zak Muscovitch:
‣ Complainant Loses Case on First Element (carryonnicotinepouches .com)
‣ False Whois Data Leads to Transfer Despite Absence of ‘Passive Holding’ (chainlinkblog .online)
‣ RDNH Where Trademark Post-Dates Domain Name Registration (unicaf .com)
‣ Fraudulent Website Used Typosquatted Domain Name to Deceive Customers (walkeredisons .com)
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Serial Cybersquatter Used Fraudulent Gun Websites
Panelists: Mr. Steven M. Levy, Esq. (Chair), Mr. Gerald M. Levine and Mr. Jeffrey J. Neuman
Brief Facts: The Complainant owns rights in the trademark, WILSON COMBAT, in relation to firearms and holsters based on registration with the USPTO (registered on Apr. 8, 2008 and on Sep. 11, 2018, respectively). It also operates websites at the domain names <wilsoncombat .com> and <shopwilsoncombat .com>. The disputed Domain Name was registered on August 19, 2021 and at the resolving website, the Respondent sells Complainant’s products with images (along with descriptive text) copied from third-party sites. The Complainant alleges that the Respondent operates a fraudulent website by purporting to have Complainant’s products in stock and ready to ship but which only allows for the usage of untraceable payment methods such as crypto-currency. The Respondent is the same person who owned and used the <wilsoncombatguns .com> domain name which was ordered to be transferred to Complainant in a prior UDRP proceeding. Formal complaints against Respondent’s website have been submitted to the United States Federal Bureau of Investigation’s (FBI) Internet Crime Complaint Center and to the registrar for the disputed Domain Name.
Held: The Complainant submits screenshots of the website at the disputed Domain Name, which displays the WILSON COMBAT mark and logo as well as images of Complainant’s firearms. The Panel thus finds that the presented evidence indicates that the Respondent had actual knowledge of Complainant’s rights in its mark at the time it registered the disputed Domain Name.
The Complainant further points to a recent decision, which involved the same Respondent and also the contents of the resolving sites are nearly identical and, the source code information for both websites identifies its author as “paulharry.” The Panel considers this to be an assertion that the Respondent has engaged in repeated bad faith conduct, i.e., a pattern of conduct under Policy. A complainant may use serial cybersquatting to substantiate an argument of bad faith under this paragraph of the Policy. As such, the Panel finds that the Respondent has engaged in a pattern of conduct which further supports its above conclusion that bad faith registration and use are present in this case.
Upon a preponderance of the evidence of an illicit passing off scheme, the Panel finds bad faith registration and use under Policy. This conclusion is consistent with a panel’s finding in a similar dispute initiated by the Complainant against the Respondent in Wilson’s Gun Shop dba Wilson Combat v. Paul Harry, FA 1990298 (Forum May. 11, 2022).
Complainants’ Counsel: Will Schmied, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
The Respondent did not respond yet this case was decided by a three-member Panel. That is because the Complainant elected a three-member Panel. The Complainant elected a three-member Panel at that time that it filed its Complainant while knowing that it was unlikely that the Respondent would respond since the Respondent was engaged in fraudulent activity and had also failed to respond to a previous similar case.
It is rare for Complainants to elect a three-member Panel, even in cases where they may anticipate a Response being filed. There are several reasons why Complainants typically decide to proceed with only a single-member Panel. The primary reason is that a three-member Panel and its higher associated cost, is considered unnecessary for a clear-cut case of cybersquatting where the Respondent typically does not respond. Nevertheless, on rare occasions we see Complainants elect three-member Panel cases. I think that the reason for this is most often, is that the Complainant’s counsel is not experienced with the UDRP procedure and believes that its client may best be served by the relatively modestly higher-priced and ‘best available’ service. Basically, such counsels probably believe that for the extra USD $1,330 for example, the Complainant might as well get the ‘gold-plated’ UDRP to ensure that all goes as planned. It is doubtful whether this extra cost really increases the likelihood and reliability of an expected transfer in garden-variety cybersquatting cases and that is why most often, Complainants prudently go with the standard single member Panel.
There are however, limited circumstances where Complainant counsel may conscientiously decide to go with a three-member Panel for good reason. Complainant counsels who have a particularly important or complex matter may determine that their client is best served by electing a three-member Panel because it enables the Complainant to put a desired Panelist onto the Panel. When proceeding with a single-member Panel case, the selection of the presiding Panelist is luck of the draw. It is solely up to the Provider to appoint a single-member Panel and there is no assurance for a Complainant that they will get a competent, experienced, and generally reliable Panelist that they will be content with. Experienced UDRP counsels are aware that the quality of Panelists varies widely and there is no ICANN oversight or quality control of Panelist accreditation. Moreover, there is no process for de-accrediting a Panelist once accredited. That means the Complainants must rely upon the reputation of Providers and trust that Providers will appoint a satisfactory Panelist, though that may not always be the case. Providers are of course under some pressure to provide satisfactory Panelists or they will find their customers going elsewhere. But that is of little solace to Complainants who have lost a case due to a rogue Panelist issuing an errant decision.
Despite the relative rarity of such circumstances, a Complainant may nonetheless elect to have its case decided by a three-member Panel as a precautionary manoeuvre. When filing its Complaint, the Complainant will nominate three prospective Panelists and one of which will generally be selected by the Provider and appointed to the three-member Panel. Where a Respondent does not respond as was the case here, the UDRP Rules are silent about how the Provider is supposed to proceed:
“6(e) In the event that either the Complainant or the Respondent elects a three-member Panel, the Provider shall endeavor to appoint one Panelist from the list of candidates provided by each of the Complainant and the Respondent. In the event the Provider is unable within five (5) calendar days to secure the appointment of a Panelist on its customary terms from either Party’s list of candidates, the Provider shall make that appointment from its list of panelists. The third Panelist shall be appointed by the Provider from a list of five candidates submitted by the Provider to the Parties, the Provider’s selection from among the five being made in a manner that reasonably balances the preferences of both Parties, as they may specify to the Provider within five (5) calendar days of the Provider’s submission of the five-candidate list to the Parties.”
Ostensibly, where a Respondent does not respond, the Provider will still proceed to appoint the chair of the Panel by transmitting its list of five nominees to both parties for ranking or striking as the case may be, but in the absence of a rank or strike from the Respondent, the Provider will select the chair based solely upon the ranking or striking of the Complainant. What is less clear however, is how the Provider selects the other ‘wing’ to the three-person Panel in the absence of any nominees provided by the Respondent. Can a provider select two Panelists from the Complainant’s nominees or two Panelists from the list of five chair nominees? Or randomly select the third Panelist? The procedure is not clear nor is it transparent how Providers treat such situations. In any event, a Complainant that elects to proceed with a three-member Panel in an expected no-response case, obtains the benefit of having sole control of one Panelist appointment and sole control of the ranking or striking of the chair position.
Not only does this provide a Complainant with more general comfort that the Panel will have at least one satisfactory Panelist, but a Complainant may also use the opportunity to put a Panelist on a case that has a particular expertise with an issue or an established history of ruling in a particular manner on similar facts. This can be of assistance in a particularly complex case or a case where a Complainant wants greater assurance that the Panel will be more likely to rule a certain way on a certain set of facts.
Complainant Loses Case on First Element
Panelist: Mr. James Bridgeman SC
Brief Facts: The Complainant is a manufacturer of nicotine pouches and owns rights in the ON! trademark. The Complainant further claims rights in the CARRY ON! NICOTINE POUCHES mark based upon its pending trademark applications before the USPTO. The Complainant asserts that as of December 31, 2021, it’s ON! branded products were available for sale in approximately 117,000 U.S. retail stores. The Complainant argues that the Respondent had knowledge of the Complainant and its mark, due to the fame of it’s ON! trademark. The disputed Domain Name was registered on May 7, 2022.
The Complainant points to the fact that the Domain Name was registered 3 days after the Complainant filed its application for registration of CARRY ON! NICOTINE POUCHES as a trademark on May 4, 2022 and points out that this timing is not a coincidence but indicates opportunistic bad faith pursuant to Policy. The Complainant further alleges that the Respondent fails to use the disputed Domain Name for any bona fide offering of goods or services, but offers it for sale for USD $995, which is an amount is in excess of Respondent’s reasonable out-of-pocket costs associated with the registration of the disputed domain. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant provides convincing, uncontested evidence of its rights in the ON! mark, established by the ownership of the portfolio of trademark registrations and its use of the mark to distinguish its nicotine pouch products. The Complainant makes no claim to have any registered rights in the CARRY ON! NICOTINE POUCHES mark but bases its claims on its ownership of a number of pending trademark applications. Further, the Complainant has not adduced any evidence of any trademark use of the phrase CARRY ON! NICOTINE POUCHES, which might have resulted in the establishment of common law rights in an unregistered mark. The marketing material which the Complainant exhibits to prove its reputation in the marketplace refers to it’s ON! mark but has no reference to any use of CARRY ON! NICOTINE POUCHES as a mark.
Since the Complainant has not proven any rights in the CARRY ON! NICOTINE POUCHES mark, this Panel proceeds to compare only the ON! mark with the disputed Domain Name. In this proceeding, the difficulty facing the Complainant is that when the disputed Domain Name <carryonnicotinepouches .com> is placed side by side with the ON! Mark, it is not visually similar. When the words “carryonnicotinepouches” or “carryonnicotinepouches .com” are spoken, they bear no aural similarity with the word “ON!”. Importantly the word “on” cannot be described as the dominant element in the disputed Domain Name. As noted in the WIPO Overview 3.0, it is frequently stated that a complainant will satisfy the test for confusing similarity once the mark is present in its entirety in the domain name at issue. In this proceeding however, it would make no sense to hold that once the letters “on” appear in a domain name, a panel should find that there is confusing similarity.
This Panel finds, therefore, that the disputed Domain Name is neither identical nor confusingly similar to the ON! mark in which the Complainant has rights.
Complainants’ Counsel: Corsearch, Inc., Texas, USA
Respondents’ Counsel: No Response
False Whois Data Leads to Transfer Despite Absence of ‘Passive Holding’
Panelist: Mr. Richard Hill
Brief Facts: The Complainant states that it owns and operates an innovative and highly successful blockchain supported network, CHAINLINK, used by thousands of consumers around the world. The CHAINLINK is open-source software and the industry standard oracle network, which the Complainant has been developing since June 1, 2017. The Complainant contends it is one of the most recognizable names in the blockchain industry, with its website at <chain .link> attracting tens of millions of page views per month. The Complainant asserts rights in the CHAINLINK mark based upon its registration in the United States in 2019, which the Complainant uses to provide blockchain services.
The disputed Domain Name was registered in 2022, uses false WHOIS information and is passively held. The Complainant alleges: “Under the circumstances of this case, ‘it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate [.]’ Telstra Corp. Ltd. V. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (finding bad faith use).” The Complainant further alleges that the Respondent registered the disputed Domain Name with actual knowledge of Complainant’s rights in the CHAINLINK mark and the Respondent even failed to respond to Complainant’s cease-and-desist letters.
Held: In accordance with the WIPO Overview 3.0, since the inception of the UDRP, panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, relevant factors have to be considered in applying the passive holding doctrine. Herein, the Complainant’s mark is not distinctive: “chainlink” can refer to a type of fence and “blog” can refer to legitimate information and/or criticism on anything related to the term “chainlink”, whether fences or Complainant’s products and services. Further, the Complainant’s mark is not well known. According to the Complainant its products and services are “used by thousands of consumers around the world”. Thus, the Panel finds that the Complainant fails to meet its burden of proof of bad faith registration and use under Policy on the grounds that the disputed Domain Name is not being used.
The Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In the absence of a response, in accordance with the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when registering the disputed Domain Name. The Panel, having conducted limited factual research, finds that the WHOIS does not include a valid street address, postal code or even the phone number. Thus, the WHOIS information is false, and this can evince bad faith registration and use under the Policy, in terms of decisions of various Panels. For example, see ABB Asea Brown Boveri Ltd v. Global Mgr, FA 1702001716963 (Forum Mar. 30, 2017) (“Complainant contends that the Respondent provided false contact information while registering the disputed domain. Registering a confusingly similar domain name using false contact information can evince bad faith registration.”). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy
Complainants’ Counsel: J. Damon Ashcraft of SNELL & WILMER L.L.P, Arizona, USA
Respondents’ Counsel: No Response
RDNH Where Trademark Post-Dates Domain Name Registration
Panelist: Ms. Marina Perraki
Brief Facts: The Complainant’s business is online at <unicaf .org> and <unicafuniversity .com>, registered on July 22, 2013 and March 14, 2014, respectively. The Complainant’s corporate name, UNICAF LTD, was registered with the Register of Companies, Cyprus on September 20, 2019, and previously as UNIC ONLINE LIMITED since January 25, 2012. The Complainant is the owner of EU trademark UNICAF (figurative), dated May 5, 2015 (filed on November 26, 2014). The disputed Domain Name was registered on November 18, 2011 and resolves to a Pay-Per-Click page which includes links related to university scholarships at the time of the filing of the Complaint. The Respondent contends that he registered the disputed Domain Name much earlier than the change of corporate name of the Complainant from UNIC ONLINE LIMITED to UNICAF LTD, that he had no intention of taking advantage of Complainant’s programs, and that the parked website is not similar to Complainant’s website.
Held: The Complainant has not demonstrated rights through registration and use on the UNICAF mark that are prior to the disputed Domain Name registration. On the contrary, the date of registration of the disputed Domain Name is prior to Complainant’s invoked registered trademark rights. The disputed Domain Name was registered on November 18, 2011, while the invoked trademark of the Complainant was filed subsequently, namely on November 26, 2014. 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 in terms of WIPO Overview 3.0.
Moreover, the Panel notes that the Complainant appears to have been initially incorporated on January 25, 2012, under the name UNIC ONLINE LIMITED, and registered its domain names in 2013 and 2014, respectively. Accordingly, there is nothing in the record to suggest that the Respondent might have had the Complainant in mind when registering the disputed Domain Name, or even that the Complainant was active at that time. Under these circumstances and on this record, the Panel finds that the Respondent has not registered and is not using the Domain Name in bad faith. In the present circumstances, the Panel further makes a finding of Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Self-represented
Fraudulent Website Used Typosquatted Domain Name to Deceive Customers
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant operates at <walkeredison .com> and owns the trademark WALKER EDISON in both word and logo form registered, inter alia, in the USA for furniture with first use recorded as 2006. The disputed Domain Name registered in 2022 is being used for a site purporting to be an official site of the Complainant using the Complainant’s logo as a masthead and copying and using material from the Complainant’s site without permission. The Complainant alleges that the use of the Complainant’s logo shows the Respondent had actual knowledge of the Complainant, its rights, business and services and also that the registration and use in opportunistic bad faith impersonating the Complainant. The Respondent failed to file a Response.
Held: The Panel finds this use is deceptive and confusing and as such it cannot amount to the bona fide offering of goods and services. Also the Domain Name appears to be a typo-squatting registration differing by only one letter from the URL of the Complainant at <walkeredison .com>, hence another indication of a lack of rights or legitimate interests. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the disputed Domain Name and that the Complainant has satisfied the second limb of the Policy.
Typo-squatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant’s business. Further, in the opinion of the panelist the use made of the disputed Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers products under the Complainant’s mark and logo, to give the impression that the site attached to the disputed Domain Name is official. The use of the Complainant’s logo and the Complainant’s material on the Respondent’s site also shows that the Respondent has actual knowledge of the Complainant and its business, products and rights.
Accordingly, the Panel holds that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products on it likely to disrupt the business of the Complainant. As such, the Panelist believes that the Complainant made out its case that the disputed Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Complainants’ Counsel: David P. Johnson, USA
Respondents’ Counsel: No Response