Welcome to this week’s UDRP Digest (2.18), summarizing the most intriguing cases of the past week, with commentary from Zak Muscovitch, ICA General Counsel. Read about:
‣ Short Domain Name Value (mc5 .com)
‣ Commercial Negotiations Preceded UDRP (hdt .com *with commentary)
‣ Competitor Registered Domain Name? (ServiceTitan .org)
‣ Co-existence Using Coined Term (AuthentixPeru .com)
‣ Trademarked Italian Geographical Indication Basis for UDRP (gorgonzolawtf)
Short Domain Name Value
Panelist: Ms. Sok Ling MOI
Brief Facts: The individual Complainant owns the trademark MC5 in respect of “entertainment services in the nature of live musical performances” with USPTO registered on July 20, 2021, claiming first use in commence on April 1, 1967. The disputed Domain Name was registered on June 7, 2003 and redirects to a landing page in Chinese with some information in English offering the disputed Domain Name for sale. The Complainant asserts that the Respondent never used the disputed Domain Name in connection with any bona-fide offering of goods and/or services and is being offered for sale for USD $23,333. The Respondent sent an email in English and Chinese to the Center, claiming that he purchased the disputed Domain Name on February 4, 2019, for the price of CNY 19,341 (approximately USD $3,000).
Procedural Matter: The language of the Registration Agreement for the disputed Domain Name is Chinese. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent understands English, given the disputed Domain Name is registered in Latin characters, rather than Chinese script and the contents of the website to which the disputed Domain Name resolves have some texts in English. Additionally, the Panel notes that the Center duly notified the Respondent of the proceeding in both Chinese and English and also informed that it would accept a Response in either English or Chinese, and the Respondent sent an email communication in both English and Chinese. Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case.
Held: Apart from the trademark information, there is little information in the Complaint about the Complainant or his use of the MC5 trademark prior to the Respondent’s acquisition of the disputed Domain Name. The disputed Domain Name is offered for sale and the website also promotes the Respondent’s website at <08123 .com>, where Internet users may purchase short domain names composed of letters and/or numbers. Therefore, the Respondent seems to be in the business of domain name investment and sale of short domain names, which could be a legitimate business. Accordingly, it would appear that the Respondent acquired the disputed Domain Name due to its value as a short domain name rather than due to its significance as a trade mark owned/used by the Complainant.
Complainants’ Counsel: Blaise & Nitschke, P.C., United States
Respondents’ Counsel: Self-represented
Commercial Negotiations Preceded UDRP
Panelist: Ms. Stephanie G. Hartung
Brief Facts: The Irish Complainant is active in the computer software industry and owns European Union trademarks for “HDT” since December, 2021. The US based Respondent is engaged in monetizing domain names, including short and/or generic Domain Names. The Respondent acquired the disputed Domain Name on June 12, 2013, for a price of USD $8,500. The Complainant contacted the Respondent in July 2015 and offered a sales price of USD $11,000, while in response, the Respondent asked for USD $75,000. The Complainant was incorporated on August 4, 2015, and by then started using the HDT brand and the Domain Name <hdt-software .com>. The parties had further communication in 2020 which was initiated by the Respondent, and expressed his new expectations to the low six figure range. The Complainant recently contacted on February 6, 2021 to check whether the Respondent was still holding the disputed Domain Name and needed “to offload it at a discount?”, which the Respondent denied the very same day.
The Complainant alleges Bad Faith on the part of the Respondent as (a) since acquisition, the Respondent did not make fair use of it ever since, (b) the disputed Domain Name was clearly registered with the prospect of a significant gain derived from its sale and transfer, and (c) the Respondent contacted the Complainant in an unwanted solicitation of August 6, 2020, with a bogus claim to have received “an initial offer in the low six figure range” and invited the Complainant to place a higher bid, apparently expecting a profit in the 100-fold, which was way in excess of the acquisition value. The Respondent stresses that the Complainant omitted to mention that its principal had begun corresponding with the Respondent to buy the disputed Domain Name in July 2015, before the Complainant had even been formed as a company or started using its HDT trademark. Against this background, there was no “unsolicited” communication by the Respondent on August 6, 2020, in view of the Complainant’s own multiple solicitations to buy the disputed Domain Name for several years.
Held: The disputed Domain Name was acquired by the Respondent on June 14, 2013, however, according to the Complainant’s own contentions, it was incorporated on August 4, 2015, and only by then started using the HDT brand. In addition, the Complainant’s HDT trademark was registered even later, recently in December 2021. It is important to note UDRP panels’ consensus agreement that where a domain name is registered before a complainant acquires trademark rights; only in exceptional cases would a complainant be able to prove a respondent’s bad faith. In this regard, this Panel examined all of the Parties’ pre-procedural communications and in particular the negotiations on a possible sale of the disputed Domain Name by the Respondent to the Complainant in detail. There is simply no evidence that the Respondent would have had a view of the Complainant’s then-nascent trademark rights when it acquired the disputed Domain Name.
In sober reflection, what lays here on the table are sales negotiations, originally initiated by the Complainant itself, on the disputed Domain Name (which consists of a three-letter acronym with a wide range of possible meanings), and diverging price expectations of the Parties, with apparently only one offer ever submitted by the Complainant in an amount of USD $11,000, which does not much exceed the initial investments made by the Respondent in the disputed Domain Name. It is also true that, absent any abuse of the Complainant’s or other third party trademark rights, the Respondent is not at all compelled to accept any submitted offer, and under the given circumstances to this case is free to keep the disputed Domain Name as it sees fit.
Complainants’ Counsel: Represented Internally
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch:
The Panelist in this case reached the correct conclusion in denying transfer but apparently did not expressly consider whether this was a classic “Plan B” RDNH. A “Plan B” RDNH is of course, misusing the Policy after failing in the marketplace to acquire the disputed domain name (See for example, Nova Holdings Limited, Nova International Limited, and G.R. Events Limited v. Manheim Equities, Inc. and Product Reports, Inc. WIPO Case No. D2015-0202).
Here, not only was there evidence of the Complainant soliciting the sale of the Domain Name even prior to its own incorporation and prior to its acquisition of trademark rights, but the Complainant also apparently failed to disclose these prior communications – thereby possibly misrepresenting by omission, the facts of the case. Accordingly, not only were there grounds for examining whether this was a “Plan B” RDNH, but also for considering whether the Complainant breached its certification that the Complaint was “complete and accurate” pursuant to Rule UDRP Rule 3(b)(xiii) (See for example, Cheapstuff, Inc. v. Admin, Domain / NG9 Communications Pvt. Ltd, WIPO Case No. D2020-1354). Moreover, the Complainant’s case appears to have been so weak that the Complainant should have appreciated that the Complaint could not succeed (See for example; Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM (WIPO Case No. D2006-0905), thereby providing yet another basis for considering RDNH
Panels should be aware that RDNH plays a critical role in the UDRP by deterring abusive use of the Policy. A Panel will not have satisfactorily discharged its duty under the UDRP without an express consideration of RDNH where the facts and circumstances warrant. This is so not just because of Rule 15(e) which requires a Panel to consider RDNH, but also because RDNH is essentially a kind of “counterclaim” that the Respondent is entitled to adjudication of. Indeed, it has been considered expressly “unfair” to deprive a Respondent of the adjudication of its request for a finding of RDNH – even when the Complainant purports to withdraw its Complaint, as the parties are to be treated “equally” under Paragraph 10(b) of the Rules (See for example; Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349).
Competitor Registered Domain Name?
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant is a developer and marketer of software products and services and uses the SERVICETITAN mark in connection therewith. The Complainant owns various trademark registrations in the United States and other jurisdictions for SERVICETITAN reflecting the first use as early as 2011. The Respondent registered the disputed Domain Name in April 2021 and uses it for a webpage composed of pay-per-click links to third-party websites, some of which offer services related to those offered by the Complainant. The Complainant states that in response to an inquiry, the Respondent indicated through a domain name broker that he was seeking a price of USD $150,000 for the Domain Name. The Complainant further notes that the telephone number in the domain name registration record corresponds to that of the CEO of a competitor of the Complainant, and suggests that the Respondent may be using a false name and may be either a competitor of the Complainant or someone impersonating a competitor.
Held: The disputed Domain Name incorporates the Complainant’s registered mark without authorization, and with the sole apparent purpose to display pay-per-click links, including links to competitors of the Complainant. Such use does not give rise to rights or legitimate interests under the Policy. The Panel also notes that the physical address and email address, in addition to the telephone number, in the WHOIS record appears to refer to the CEO identified by the Complainant. The Respondent offered no explanation for his selection of the domain name and declined to participate in this proceeding. Based upon the available evidence, including the current use of the disputed Domain Name and the domain name broker’s response to the Complainant’s inquiry, the Panel considers it reasonable to infer that the Respondent’s intent in registering the disputed Domain Name was to create and profit from confusion with the Complainant’s mark, and that the Respondent is maintaining the registration for that purpose. Accordingly, the Panel finds that the disputed Domain Name was registered and is being used in bad faith.
Complainants’ Counsel: Mr. Steven M. Levy, District of Columbia, USA
Respondents’ Counsel: No Response
Co-existence Using Coined Term
Panelist: Mr. Matthew Kennedy
Brief Facts: The US based Complainant provides authentication solutions, including full product traceability of products from manufacturing to retail, globally. It holds multiple trademark registrations for “Authentix”, including international trademark registrations dated July 26, 2012 designating multiple jurisdictions, and specifying different classes. It was formed in 2003 and operates a website in English at “authentix .com”, wherein the contact address and telephone number are in the United States but the website notes that the Complainant is also located in Ghana, Saudi Arabia, Singapore, and the United Kingdom. The Respondent is an individual and her company, Authentix Peru Sourcing & Consulting [S.A.C.], established on August 26, 2019, and registered with the National Superintendence of Public Registries (“SUNARP”) on November 20, 2019, in Lima, Peru. The Respondent Company operates as an intermediary between factories, workshops, and artisans in Peru to create and design textiles and handicrafts for buyers abroad.
The Respondent registered the disputed Domain Name on August 30, 2019. The disputed Domain Name resolves to a website in English that prominently displays the Respondent Company’s semi-figurative AUTHENTIX PERU mark and provides information about the Respondent company, its services, products and news, accompanied by photographs. The website refers to shipping to North America, the European Union, and Asia. The Respondent Company holds Peruvian trademark registration for a semi-figurative AUTHENTIX PERU mark, registered on November 11, 2021 and specifying goods under class 24. The Complainant was alerted to the Respondent’s application for the above mark by its watch service but submits that it chose not to file an opposition “in lieu of having the [disputed] domain name changed to avoid confusion”. The Complainant sent a letter of demand dated October 15, 2021, to the Respondent Company via the email address on its website and sent a follow-up letter by email on October 26, 2021.
Held: The Respondent Company applied for its trademark in September 2021, prior to the Complainant’s letter of demand and obtained registration of that mark in November 2021, prior to this Complaint in December 2021. Although the trademark was registered over two years after the registration of the disputed Domain Name in August 2019, its textual elements (i.e., AUTHENTIX and PERU) are the same as the initial elements of the Respondent Company’s name “Authentix Peru Sourcing & Consulting S.A.C.”, which was formed four days prior to the registration of the disputed Domain Name in August 2019. The Respondent’s trademark is registered in Peru, and is in active use upon its website, but there is no other evidence of use of that mark. The Respondent Company’s trademark does not resemble the Complainant’s semi-figurative mark, although it does incorporate the exact term AUTHENTIX, which constitutes the Complainant’s wordmark. The Respondent individual provides an explanation for her choice of the term “authentix” in her corporate name and trademark, based on the meaning of the dictionary word “authentic”. Authenticity is clearly related to the use that the Respondent is making of the trademark, which is selling genuine textiles and handicrafts made according to ancestral techniques. Although “authentix” seems to be somewhat of a coined word, it is similar to the dictionary word “authentic”.
In the Panel’s view, it is plausible that the Respondent independently coined the same suggestive word. There is no evidence on record of the Complainant’s reputation, besides its own website and company brochure, from which the Panel could infer that the Respondent knew or should have known of the Complainant’s AUTHENTIX mark. The Complainant notes the reference to “traceability” on the Respondent’s website, which is related to the Complainant’s activities, but the evidence shows that reference to be somewhat incidental to the Respondent’s website content. The Complainant expressly conceded in the Complaint that the Respondent appears to be engaged in a different field of activity from the authentication services offered by it, although it later noted the importance of traceability to its own business. In these circumstances, the Panel is unable to find that the Respondent selected its company name and obtained its trademark primarily to circumvent the application of the Policy or otherwise to prevent the Complainant’s exercise of its rights. The Panel notes that administrative (trademark opposition) or court (trademark infringement) options remain available to the Complainant.
Complainants’ Counsel: Strategic IP Information Pte Ltd., Singapore
Respondents’ Counsel: Self-represented
Trademarked Italian Geographical Indication Basis for UDRP
Panelist: Mr. Wilson Pinheiro Jabur
Brief Facts: The Complainant was created under Italian law to protect the GORGONZOLA denomination of origin for a specific cheese, having the sole authority to certify which products may bear such denomination on the basis of territorial origin and specific qualities of the products. In addition to the rights arising from Italian law, the Complainant owns EU trademark registrations for GORGONZOLA, registered on July 4, 2012 and on September 11, 2017. The disputed Domain Name was registered on December 27, 2021 and presently does not resolve to an active webpage. The Complainant points out the disputed Domain Name is not currently in active use and asserts that in spite of the fact that ‘Gorgonzola’ is the name of a small town in Italy, a cursory search would easily reveal that the name GORGONZOLA evokes immediately the Complainant’s trademark as recognized in the previous UDRP matters. In addition to that, whilst, it is reasonable to think that it is intended to be used in the future in a way that would be commercial and detrimental to the Complainant’s interests, precisely because it is identical to a famous trademark and denomination of origin. The US based Respondent did not file a formal response but sent two informal messages, expressing confusion as to the UDRP process.
Held: The Complainant asserts that “There is no way that the Respondent may have not been aware of the association of ‘GORGONZOLA’ with the Complainant…”, however, it is evident that not the ‘CG GORGONZOLA’ but only ‘CG’ figurative mark is registered in the United States and neither is the Gorgonzola denomination of origin protected in the United States. Moreover, the evidence in the Complaint does not show that the Complainant and the denomination of origin ‘Gorgonzola’ has such a strong reputation in the United States that any person who sought to register a domain name featuring the word ‘Gorgonzola’ must have been aiming to take advantage of the confusion between the Domain Name and any rights the Complainant owns in words or marks corresponding to the Domain Name, as opposed to registering the Domain Name for its descriptive qualities.
In the present case, there are no circumstances that indicate that the Respondent registered the disputed Domain Name primarily for the purpose of disrupting the business of a competitor or that the Respondent is in the business of registering Domain Names for sale to trademark owners. Moreover, the inactive holding of the disputed Domain Name does not satisfy the passive holding doctrine in terms of WIPO Overview. The Panel considers that there is insufficient evidence to show that the disputed Domain Name was registered or has been used in bad faith. However, the Panel notes that in the event that further information arises that establishes the motives of the Respondent in registering the disputed Domain Name in such manner that is dispositive of an attempt to target the Complainant, there may be grounds to consider a re-filed complaint, subject to the applicable criteria.
Complainants’ Counsel: Jacobacci & Associati, Italy
Respondents’ Counsel: Self-represented