Six Times Unlucky: Spanish Government Agency Fails Again to “Protect” Alhambra Monument
What this case ultimately came down to, was the Complainant’s conflation of the reputation of the monument itself, with the Complainant’s trademark. As the Panel observed, “there is nothing before the Panel that suggests that the Complainant would be entitled to conflate such notoriety and goodwill as it may have built up in its trademark since being tasked with protection of the monument in 1985 (which goodwill is not sufficiently evidenced here) with the notoriety of the monument itself”. That makes six losses in a row for the Complainant… continue reading
We hope you will enjoy this edition of the Digest (vol. 4.15), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Six Times Unlucky: Spanish Government Agency Fails Again to “Protect” Alhambra Monument (alhambra .com *with commentary)
‣ “A complex and unusual scenario”: common law trademark, free speech, “impersonation” and more (familypolicyfoundation .org *with commentary)
‣ Caged Chickens and the Confusingly Similar Test (wynncruelty .com *with commentary)
‣ Making RDNH Together (musictogetherofmarin .com *with commentary)
Article: THE ROLES OF CERTAINTY AND DOUBT IN UDRP DISPUTES
by Mr. Gerald M Levine
There are two invariables in UDRP proceedings: the first is that 95% of all cybersquatting disputes result in cancelling registrations or transferring disputed domain names to complainants’ accounts; and the second is that respondents in this group rarely respond because the claims are indefensible; and when they do respond (speaking only of clear cut cases of cybersquatting) they generally fail to understand the evidentiary burdens demanded by the Policy. Now, this failure to understand the demands of the Policy also infects losing complainants in the 5% balance of disputes. Some claims should either never have been asserted because the disputed domain names predate the corresponding marks or on the balance of probabilities they fail because complainant’s proof is insufficient to state a claim.
Regardless whether respondents appear and defend, complainants must prove that their statutory rights have been violated. They cannot succeed simply by contending respondents’ lack rights or legitimate interests or their registration and use are in bad faith. Contentions alone are insufficient to prove anything. For certainty, it requires something more, and generally this is delivered in the form of documentary evidence sufficient, at least, if not in whole, in such amount to support a reasonable inference, that the respondent is liable for cybersquatting. If “such amount” is equally balanced or if there is any uncertainty of motive, the complaint must be dismissed, for the obvious reason that if any doubt there be, the benefit must go to the respondent… continue reading.
Six Times Unlucky: Spanish Government Agency Fails Again to “Protect” Alhambra Monument
Patronato de la Alhambra y el Generalife v. Domain Admin, Indefinite Ltd, WIPO Case No. D2024-0182
<alhambra .com>
Panelist: Mr. Andrew D. S. Lothian (Presiding), Mr. Edoardo Fano and Mr. Jeffrey Neuman
Brief Facts: The Spanish Complainant is entrusted with the protection, administration and conservation of the Monumental Complex of the Alhambra and the Generalife, which was declared a World Heritage site by UNESCO in 1984. The Complainant maintains a portfolio of registered trademarks consisting of, or containing, the ALHAMBRA mark, which includes EU Trademark for a figurative mark, registered on October 7, 2011. The Complainant has brought five previous cases under the Policy, in each of which its complaint was denied. The disputed Domain Name was acquired by the Respondent, a domain name investment firm, on or about December 15, 2023, along with 197 other .com Domain Names and offers the disputed Domain Name for sale at a six-figure sum.
The Respondent contends that it was unaware of the Complainant when it acquired the disputed Domain Name, adding that it conducted Google searches at or about the time of purchase and concluded that the disputed Domain Name consisted of a commonly used term over which no one had any monopoly. The Complainant’s rights do not prevent a domain name dealer from using the disputed Domain Name for nominative fair use, or for PPC advertising relating to its meaning, or as an investment corresponding to a common descriptive word and historical landmark that is likewise suggestive and used by countless parties for all manner of goods or services.
Held: It is true that being tasked with the preservation of a world-famous monument might give rise to a certain notoriety on the Complainant’s part, particularly in the locality concerned, but there is insufficient evidence of the wider existence of, extent, or reach of any such notoriety on the present record, and there are no facts or circumstances before the Panel from which these matters might reasonably be inferred. The Respondent’s denial of awareness of the Complainant’s mark is plausible based upon the present record, as is its submission that it took reasonable steps by way of a Google search to identify whether the term “Alhambra” denoted a particular rights holder. It follows that the Complainant has not proved that the Respondent acquired the disputed Domain Name in the knowledge of the Complainant or its rights.
It is not the case that the term “Alhambra” could only sensibly refer to the Complainant, from which knowledge and also targeting might reasonably be inferred. The Panel finds that “Alhambra” means many things to many people, and it could just as easily be used to refer to a new product, new business, or any entity which wished to call to mind a character of sophistication, opulence or grandeur. Indeed, many, if not most, of the usages of this term will have their origin with the monument, which is both ancient and world-famous, but the Panel accepts the Respondent’s case that neither this nor the Complainant’s interest in the monument necessarily mean that the Complainant has exclusive rights in the name “Alhambra” and/or that the Respondent’s acquisition of the disputed Domain Name as an investment proposition necessarily targeted the Complainant and therefore was in bad faith within the meaning of the Policy.
The Panel notes in any event that the alleged conflation of ancient or culturally significant and/or protected monuments with those responsible for them and their trademarks is a relatively complex question. The Policy was enacted to address obvious cases of cybersquatting. In this context, the Panel notes that its Decision does not constitute a determination as to whether the use of the disputed Domain Name would or would not infringe any trademark or violate national law in the territory where the Complainant is based. Such questions are beyond the scope of the Policy. The Panel finds the third element of the Policy has not been established.
RDNH: The Panel considers that, while potentially ill-advised, this case was not brought in bad faith and/or bound to fail at the outset. The Complainant is the legal custodian for its eponymous world-famous monument and is the owner of related trademarks, while the disputed Domain Name is identical to the name of such monument and to certain of the Complainant’s trademarks. The disputed Domain Name had been acquired by a domain name investor. The Panel considers that the Complainant was entitled to put the Respondent to the proof on the question of knowledge and intent to target. While the Panel has not found it so, it is not wholly implausible that the disputed Domain Name could have been registered with a view to it being sold to the Complainant specifically at a substantial profit.
That is largely an evidential question and the Complainant failed to provide adequate evidence of the notoriety of its trademark when weighed against the evidence of other uses of the term “Alhambra”. Such failure does not necessarily equate to bad faith. The Complainant was entitled to attempt to argue that its mark is famous, even though the Panel ultimately drew a distinction between the fame of the monument and the fame of the Complainant and its mark. The failure of the Complaint in that respect may also be considered a consequence of a failure to provide sufficient evidence. The Panel does however wish to record its concerns regarding the fact that the Complainant appears to have overreached itself regarding the statement of its rights and that the Complainant did not reinvestigate the use of the disputed Domain Name after the Respondent’s identity was revealed by the Registrar.
Complaint Denied
Complainants’ Counsel: Iberpatent S.L., Spain
Respondents’ Counsel: Muscovitch Law P.C., Canada
Case Comment by ICA General Counsel, Zak Muscovitch:
What this case ultimately came down to, was the Complainant’s conflation of the reputation of the monument itself, with the Complainant’s trademark. As the Panel observed, “there is nothing before the Panel that suggests that the Complainant would be entitled to conflate such notoriety and goodwill as it may have built up in its trademark since being tasked with protection of the monument in 1985 (which goodwill is not sufficiently evidenced here) with the notoriety of the monument itself”. That makes six losses in a row for the Complainant. The Panel noted that while this Complaint was “potentially ill-advised, this case was not brought in bad faith and/or bound to fail at the outset”.
Beyond the interesting facts and outcome of this well-written decision, the Panel’s decision on the language of proceedings is noteworthy. The Panel “identified no special circumstances from the Complainant’s submission that would reasonably indicate that any departure from the language of the Registration should be made” [emphasis added]. This is the appropriate test for determining whether there should be a departure from the default, i.e. the language of the registration agreement. While a Complainant may have various reasons for wanting the proceed in a different language, reasons alone should not be sufficient, per se. Rather, such reasons must amount to “special circumstances”. Special circumstances by definition must be more than ordinary circumstances. Panels may properly exercise their discretion in determining whether to depart from the default language, however, Panels must recognize that a departure from the default which is clearly established by the Rules for good policy reasons, requires more than mere ordinary convenience for the requesting party.
I represented the Respondent in this case.
“A complex and unusual scenario”: common law trademark, free speech, “impersonation” and more
Family Policy Foundation v. John Skinner, WIPO Case No. D2024-0098
<familypolicyfoundation .org>
Panelist: Mr. Christopher S. Gibson (Presiding), Mr. Andrew D. S. Lothian and Mr. Richard Hill
Brief Facts: The Complainant, a nonprofit organization, has been in existence since January 2014, initially under the name “CL Foundation”, which was changed in July 2016 to “Family Policy Foundation.” The Complainant indicates that it is a separate legal entity from a sister organization named the “Family Policy Alliance,” another non-profit corporation. The Complainant indicates that the two organizations share employees, office space, and certain administrative functions according to a contractual arrangement. The Complainant’s word mark, FAMILY POLICY FOUNDATION, was registered with the USPTO on its Supplemental Register on September 6, 2016, with a date of first use in commerce listed as March 24, 2016. The registration states “[n]o claim is made to the exclusive right to use the following apart from the mark as shown: ‘FOUNDATION’.”
The Complainant claims that before the Respondent registered the disputed Domain Name on April 7, 2020, the Complainant’s service mark had acquired distinctiveness or secondary meaning, thereby allowing the Complainant to rely on its trademark registration, or in the alternative, the Complainant had common law trademark rights in the mark. The Complainant states that in February 2023, the USPTO accepted the Complainant’s Section 8 Declaration of Use and/or Excusable Nonuse of Mark in Commerce. In response to the Complainant’s initial application, the USPTO sent an Office Action letter dated November 4, 2015, to the Complainant’s legal counsel, which stated in the relevant part: “The Registration is refused because the applied-for mark merely describes a feature of the applicant’s goods and/or services….” The Complainant owns the four domain names, each of which consists of the name “family policy foundation” registered in a different generic Top-Level Domain (“gTLD”), including .com, .net, .info and .biz.
The Respondent, a software developer, registered the disputed Domain Name on April 7, 2020, and uses it to criticize the Complainant’s organization. The Respondent contends that he is a member of the LGBTQ community and is materially harmed by laws which deny or abridge LGBTQ civil rights. The Respondent further contends that the Respondent observes that the Complainant itself accepts that registration on the USPTO Supplemental Register is not sufficient to establish trademark rights for purposes of the Policy [See WIPO Overview 3.0, section 1.2.2]. The Respondent, therefore, claims that the Complainant’s service mark registered on the Supplemental Register should be disregarded because it does not establish trademark rights. The Respondent further points out that all of the evidence provided by the Complainant consists of conclusory allegations of the Complainant’s officer, website screenshots of the Family Policy Alliance website, internal email correspondence, and other irrelevant evidence, none of which establishes common law trademark rights.
Held: The Respondent does not dispute that the disputed Domain Name is “identical or confusingly similar” to the Complainant’s asserted FAMILY POLICY FOUNDATION mark; however, the Respondent has mounted a serious challenge on the issue of whether the Complainant has rights in that mark for purposes of the Policy. Both parties recognize that although the Complainant has registered its mark on the USPTO’s Supplemental Register, this “does not by itself provide evidence of distinctiveness to support trademark rights,” and the Complainant is therefore “expected to show secondary meaning to establish trademark rights.” See WIPO Overview 3.0, section 1.2.2. The Panel considers that the Complainant’s claimed FAMILY POLICY FOUNDATION mark, on its own, is descriptive and lacking in distinctiveness concerning the services for which the Complainant has indicated its use.
In assessing whether the Complainant has rights in a trademark for purposes of the Policy, there is also the related issue of timing. The Complainant’s arguments on this point, with a focus on showing acquired rights by the date the disputed Domain Name was registered, are possibly made with a view to the third element of the Policy. Based on the evidence presented, the Panel has found no appreciable recognition of the Complainant’s mark as a distinctive identifier of its services by the relevant segment of the public. Moreover, this finding is bolstered because some of the evidence introduced by the Complainant would appear to undermine its arguments that its mark has become a distinctive identifier, or that the Complainant has otherwise acquired common law rights.
In particular, this evidence indicates that the Complainant has been inconsistent in the use of its mark, having frequently offered services in combination with, or under the very similar name of a closely aligned sister organization, the Family Policy Alliance, which is an organization that the Complainant has confirmed is a separate legal entity. The Respondent has also emphasized that the Complainant has provided little evidence of third-party recognition of its name to demonstrate distinctiveness and secondary meaning. Instead, the materials (e.g. emails and fundraising letters) presented are either internal communications or outward communications from the Complainant itself. In conclusion, in view of all of the evidence and on the balance of the probabilities, the Panel concludes that the first element of the Policy has not been established.
Complaint Denied
Complainants’ Counsel: Barth Law LLC, United States
Respondents’ Counsel: Motsnyi Legal, Serbia
Case Comment by Panelist, Igor Motsnyi:
Igor is an IP consultant and partner at Motsnyi Legal, <motsnyi .com>, “Linkedin”. His practice is focused on international trademark matters and domain names, including ccTLDs disputes and the UDRP. Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy.
The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
As the Respondent’s counsel in this dispute, I fully appreciate the challenges that the Panel had to deal with. This was by far an atypical UDRP dispute and the Panel described it as “complex and unusual scenario”.
The Respondent registered and used the disputed domain name for criticism of the Complainant. His criticism was non-commercial. The Complainant had only a mark on the US Supplemental register and alleged common law trademark rights. The disputed domain name was identical to the alleged trademark and the Complainant relied on “impersonation” for the purpose of establishing both the second and the third UDRP elements.
I will focus on the following three points of the <familypolicyfoundation. org> decision:
- Panel’s analysis of the first UDRP element.
- The second and the third UDRP elements of the case and
- Panel’s approach to “Parties’ Contentions” section of the decision.
1. The Panel provided a detailed and thorough analysis of the common law trademark rights under the UDRP. The Complainant acknowledged that its Supplemental Register mark is not enough for the UDRP purpose and tried to allege common law trademark rights and acquired distinctiveness in the terms “Family Policy Foundation”. Yet, demonstrating that the mark has become “a distinctive identifier which consumers associate with the complainant’s goods and/or services” as required under sec. 1.3 of WIPO Overview 3.0, is not an easy task. Otherwise, the scope of the Policy would include names other than trademarks and services mark. In this dispute the Complainant relied on its corporate name and provided some evidence that was insufficient.
Here the Panel took into account nature of the evidence presented by the Complainant (mainly internal or outward communications and evidence related to the use of its corporate name), prosecution history of the Complainant’s alleged mark, including a USPTO office action letter, disclaimer of the word “Foundation”, and existence of other entities using similar names (e,g. “Family Foundation”). The Panel concluded that the Complainant failed to establish secondary meaning in the terms “Family Policy Foundation”.
The Panel was correct in pointing out that descriptive marks require stronger evidence of acquired distinctiveness/secondary meaning.
Another noteworthy point in the Panel’s first-element analysis is recognition that targeting per se, in the absence of other evidence or where evidence is weak, is not enough to establish the existence of common law trademark.
The Respondent did not question targeting, as the very reason for his registration and use of the disputed domain name was to criticize the Complainant and therefore targeting was obvious.
Some Panels may nevertheless be willing to find common law TM in descriptive/generic terms in case of targeting, see e.g. case comment by Zak Muscovitch “Multi-Problems with this ‘Generic .com’ Decision”.
The <familypolicyfoundation. org> Panel was correct in relying on “CEMEX UK Operations Ltd. v. Privacy Service Provided by Withheld for Privacy ehf / Cargo Logistics Transportation Services, et al, WIPO Case No. D2022-1445: targeting is no substitute for lack of sufficient evidence of common law trademark rights and as “CEMEX” Panel noted: “If that was not the case then the test would be entirely circular...”
I believe that the <familypolicyfoundation. org> decision may be used by future UDRP panels in cases of unregistered trademarks and in particular, as an illustration of some aspects of Section 1.3 of WIPO Overview 3.0, such as; there is “a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning” for descriptive marks and targeting per se does not eliminate a complainant’s obligation to present sufficient evidence of acquired distinctiveness.
2. The Panel had a chance to provide its views on highly contested issues in UDRP jurisprudence such as free speech use of a domain name as a legitimate interest and the notion of bad faith. This was a case where both Parties provided detailed arguments as to the proper application of 4(c)(iii) of the Policy, free speech as a legitimate interest, proper application of the “impersonation test” to free speech and criticism UDRP cases and the “holistic” approach to such cases. Another interesting issue in this dispute was bad faith and proper scope of the UDRP.
Unfortunately, these questions were not answered in the decision. It is hard to blame the Panel since its duty is to decide a case and if, in its view, analysis of one element is enough, analyzing the remaining elements is unnecessary.
The <familypolicyfoundation. org> case presents a clear example of a genuine non-commercial criticism, here is a screenshot of the homepage of the Respondent’s website.
Does the impersonation test mean that panels should look at the domain name composition only (as Complainant suggested)? Or it is a more nuanced test as was suggested in “Scrum Alliance, LLC v. Contact Privacy Inc. Customer 1247644697 / Matthew Barcomb”, WIPO Case No. D2021-2932; “A more nuanced assessment of all the factors is required” and the impersonation test also requires “a rigorous assessment of whether the domain name and website at issue are likely to be seen as impersonating the Complainant”? The Respondent believes that any initial confusion is dispelled by visiting the website and there is no impersonation under these circumstances. The fact that the disputed domain name is identical to the alleged mark does not deprive the Respondent of his legitimate interest under 4(c)(iii) of the UDRP.
The Respondent also argued the application of the “holistic” approach to this dispute. The holistic approach to free speech and criticism UDRP cases was initially suggested in “Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman”, WIPO Case No. D2022-0473 and supported by another panel in “Watch Tower Bible and Tract Society of Pennsylvania v. Vincent Moore”, WIPO Case No. D2023-2034: “it would be readily apparent to Internet users (including Jehovah’s Witnesses) upon visiting the Website that it is not the Complainant’s website, but is rather a website critical of the Complainant”.
Another important consideration both for the second and the third-elements analysis is the scope of the Policy.
The UDRP was designed to fight cybersquatting and was not intended to deal with all domain name disputes as confirmed by both “Final Report of the WIPO Internet Domain Name Process” and ICANN “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy”.
Its scope is relatively narrow and while forms of mischief became more sophisticated and cybersquatting in 2024 may be different from cybersquatting in 1999, using a domain name for criticizing certain political, religious or other ideas should not, in my opinion, be viewed as cybersquatting.
I had a chance to discuss the outcome of this case and the UDRP in general with the Respondent, John Skinner, and his conclusion is:
“The organization I criticized is a lobbying organization. Because it seeks to set public policy, I believe it opens itself to a high level of public scrutiny. The UDRP should not become a weapon in ideological battles. As I understand it, the original purpose of the process was to address cybersquatting. An attempt to use the UDRP to take down a non-commercial website with strong free speech protections is well outside of that purpose”.
3. As the Respondent’s counsel in this dispute and a UDRP panelist myself, I commend the Panel’s approach as set out in the Parties’ Contentions section of the decision.
While the Panel did not deal with the second and the third UDRP elements, it provided a rather detailed summary of both Parties’ arguments on all UDRP elements in the decision.
This allows readers of this decision to appreciate the Parties’ positions and make their own conclusion.
The arguments summarized by the Panel may also serve as possible directions to any future UDRP parties and panels.
While some important questions were left unanswered, UDRP stake holders can still view the arguments and decide which position they would follow.
Sometimes UDRP Panels skip Parties’ arguments and provide only very brief information. This may be justified in obvious cybersquatting cases but in highly contested cases where there is a response and every UDRP element is argued, in my view, providing Parties’ arguments in a rather detailed manner is important.
I would love to hear from our readers and find out what they think about the issues discussed in this decision. You can reach me at: motsnyi@motsnyi.com
Caged Chickens and the Confusingly Similar Test
Wynn Resorts Holdings, LLC v. Equitas Global, NAF Claim Number: FA2403002086400
<wynncruelty .com>
Panelist: Mr. Jeffrey M. Samuels
Brief Facts: The Complainant is a wholly owned subsidiary of Wynn Resorts, Limited, the owner and operator of the luxury casino resorts Wynn Las Vegas and Encore in Las Vegas, Nevada, and Wynn Macau, in Macau, China. Since at least as early as April 28, 2005, Wynn has continuously used the WYNN trademark in connection with casinos, hotel resorts, restaurants, bars, spas, and entertainment services, among other goods and services. The Complainant owns many U.S. Trademark Registrations for its WYNN mark and has spent substantial sums of money to advertise, promote, and protect the WYNN mark in print, broadcast, and internet media, including through the websites <wynnlasvegas .com> and <wynnmacau .com>. The disputed Domain Name was registered on February 9, 2024, and is being used in connection with a website to publicly criticize the Complainant for its failure to properly address this food safety and animal cruelty issue.
The Complainant alleges that “[s]uch accusations contain false and disparaging statements about the Complainant’s business that are designed to tarnish Complainant’s well-known hospitality brand around the world… As such, use of the Infringing Domain Name in this manner is not in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy.” The Complainant further alleges that the Respondent has reached out to Wynn with threatening statements, attempting to strongarm Wynn into conforming with the Respondent’s idealistic views, stating that, if Wynn does so, the Respondent will take down its website.
The Respondent Equitas is a charitable group whose mission is to prevent discriminatory practices that cause food safety risks to consumers and cruelty to animals in international markets. According to the Respondent, the Complainant, while making good progress towards this goal in regards to shell eggs directly sourced by the company for its U.S. properties, has failed to set a public timeline for shifting to using only cage-free eggs and egg ingredients at its Asia properties and has failed to set a public timeline for making all egg ingredients used in products sold or sourced for its U.S. customers cage-free. The Respondent maintains that it is making fair use in a domain that was registered for and is used for legitimate public criticism and his use is also consistent with Section 2.6.3 of the WIPO Overview 3.0.
Held: Before launching the disputed website, the Respondent contacted the Complainant to inform it of the Respondent’s plans to launch a public campaign regarding the Complainant’s failure to enact a global cage-free egg policy and would hold off doing so if the Complainant enacted such a policy. The Respondent indicates that it was directly informed by guests visiting Complainant’s Asia properties that many of the shell eggs being sourced for those properties are from battery cage egg producers. Concerning the Complainant’s U.S. properties, the Respondent asserts, upon its exercise of due diligence, that the Complainant does not appear to have a public commitment to only allow cage-free eggs and egg ingredients to be sold and served.
The Panel finds that the Respondent’s criticism site is noncommercial, genuinely fair, and not misleading or false. The Panel further finds that the content on the disputed website is noncommercial. The Respondent does not solicit contributions, advertise for the sale of any product, or otherwise seek commercial advantage. A review of the factors outlined in Section 2.5.2 of the WIPO Overview, 3.0 supports a finding of rights or legitimate interests. The disputed website clearly states it is run by a charitable group, there is no evidence of misdirected correspondence, there is a clear connection between the use of Complainant’s WYNN mark in the disputed Domain Name and the content of the site, and the evidence indicates that the disputed website is consistent with other actions undertaken by the Respondent criticizing the Complainant.
Moreover, the Panel deems it relevant on the issue of “bad faith” that the Respondent exercised due diligence before launching its <wynncruelty .com> site. The Respondent indicates that it searched all public websites, social media accounts, sustainability reports and similar public documents before registering and using the disputed Domain Name. In so doing, the Respondent reasonably believed the truth of the assertions outlined in the challenged website. Under such circumstances, in the Panel’s opinion, it cannot be said that the Respondent acted with the requisite bad faith to support the transfer of the disputed Domain Name. Also relevant in establishing the absence of bad faith, in the view of the Panel, is the fact that the Respondent edited the initial version of the disputed website to “refine[] the language to be more clear… to ensure correct understanding on the part of other readers.” The above actions are inconsistent with a finding of the requisite “bad faith.”
Complaint Denied
Complainants’ Counsel: Peter H. Ajemian of Brownstein Hyatt Farber Schreck, Nevada, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA Director and Domain Name Investor, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
The WynnCruelty.com decision raises a couple of hot-button issues in UDRP jurisprudence: what is meant by “confusing similarity” and what is meant by “legitimate” noncommercial speech.
Starting with the last, what does the qualifier “legitimate” mean in 4.c.(iii) of the Policy?
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A challenge in answering this question is that “legitimate” has several meanings. One sense of legitimate is “lawful” or “genuine”. Another sense of legitimate is “reasonable” or “justifiable”.
These meanings may conflict. A statement may be “lawful” and a “genuine” expression of belief, and yet an observer may find that the statement is not “reasonable” or “justifiable”.
The Panel in WynnCruelty.com was confronted with this question of what meaning to ascribe to legitimate. The Respondent asserted its criticisms of the Complainant, such as that the Complainant “continues to serve guests eggs from filthy, cruel battery cage egg farms”, were lawful and genuine.
The Complainant asserted that “[s]uch accusations contain false and disparaging statements about Complainant’s business… Spreading falsehoods are not the type of conduct protected under the Policy… As such, use of the Infringing Domain Name in this manner is not in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy.”
The Panel stated:
The key issue in this case is whether Respondent’s criticism site supports a finding that it has established rights or legitimate interests under the Policy. Under the facts of this case, that determination turns on whether the content of the <wynncruelty.com> website is noncommercial, genuinely fair, and not misleading or false.
Thus, the Panel apparently adopted a meaning of “legitimate”, not in the sense of “lawful” or “genuinely believed”, but in the sense of “reasonable” or “justifiable”.
This put the Panel in the position of having to determine the accuracy of the Respondent’s criticisms. The Panel then extensively examined and analyzing the supply-chain of the Complainant’s eggs and the relative health benefits of cage-free compared to battery cage eggs. Having determined that the Respondent’s criticisms were sufficiently evidence-based, and that the criticism was noncommercial, the Panel found in favor of the Respondent.
Yet how have we arrived at a point where applying a Policy intended to remedy clear-cut cybersquatting requires assessing the accuracy of arguments about the health risks of battery cage eggs? We must have taken a wrong turn somewhere, and perhaps more than one wrong turn.
One wrong turn is adopting the wrong meaning of “legitimate”. Noncommercial criticism is “legitimate” because it is “lawful”. Full stop. It is entirely inappropriate to adopt the role of censor to suppress lawful criticism, no matter how extreme or ill-considered. As noted by Panelist David Bernstein in his 2004 decision on <hjta.com>:
fair use criticism like Respondent’s, even if libelous, is not prohibited by the Policy, as interpreted in the United States.
The unfortunate misconception that it is a panel’s role is to assess the accuracy of noncommercial criticism to determine whether the criticism is legitimate may result in a panel acting not to remedy a harm, but to create a harm, as I discussed in a CircleID article in connection with the StopSpectrum.com decision. In the StopSpectrum.com/SpectrumKills.com decision, the Panel shut down a noncommercial criticism site because (incorrectly as it turns out) he found the criticism to be ill-supported and abusive.
Panelists are entrusted with, in practice, unlimited power to terminate ownership rights to a disputed domain name. A responsible panelist will exercise such power with restraint. A panel that assumes the role of suppressing noncommercial criticism because the panel finds the criticism poorly supported or excessive is not exercising the appropriate restraint.
Yet the Panel, despite ultimately reaching the right decision on dismissal, unfortunately took not one wrong turn here, but two wrong turns. There was a bridge to a simple resolution of the dispute that would have avoided the Panel needing to take its plunge into the treacherous waters of assessing the legitimacy of the criticism.
It is clear on its face that no visitor to “WynnCruelty.com” would experience the least confusion as to whether Wynn Resorts is the source of the content found therein. The WIPO Overview has taken a wrong turn in ignoring the meaning of “confusingly similar” and most of the panelist community has followed – whether willingly or under compulsion.
The Wal-MartSucks.com decision from 2000, as I discussed in my comment on the fuck3cx.com decision, effectively rewrote the UDRP and guts the first factor as a meaningful test. The decision redefines “confusingly similar” to eliminate “confusingly”. The decision declares that the first factor whose substance is about whether there is confusion as to source shall henceforth not be a test as to whether there is confusion as to source (emphasis added):
Thus, the Panel concludes that a domain name is “identical or confusingly similar” to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.
The decision effectively rewrote the first factor of the Policy from:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
to:
(i) The trademark or service mark in which the complainant has rights is identifiable within your domain name;
This is a very different test. If ICANN had wanted the UDRP to have this alternate formulation, it was free to do so. Yet it adopted different language with a different meaning and with different consequences. WynnCruelty.com would fail the first element as the Policy was adopted by ICANN, but it passes the replacement test asserted in Wal-MartSucks.com.
The original WIPO Overview codified as the “majority view” the reformulation of the first factor found in the Wal-MartSucks.com case, citing it as the seminal relevant decision:
1.13 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant’s trademark? (“sucks cases”)
Majority view: A domain name consisting of a trademark and a negative term is confusingly similar to the complainant’s mark. Confusing similarity has been found because the domain name contains a trademark and a dictionary word; or because the disputed domain name is highly similar to the trademark; or because the domain name may not be recognized as negative; or because the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark.
Relevant decisions:
Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale D2000-0662, TransferThe original meaning of the first element of the Policy also appeared in the original WIPO Overview, but as a “Minority View”:
Minority view: A domain name consisting of a trademark and a negative term is not confusingly similar because Internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term.
By WIPO Overview 2.0, the usurpation is complete. The minority view has disappeared.
The triumph of the replacement version of the first element is consolidated in WIPO Overview 3.0:
A domain name consisting of a trademark and a negative or pejorative term (such as <[trademark]sucks.com>, <[trademark]구려.com>, <[trademark]吸.com>, or even <trademark.sucks>) is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element. The merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements.
This replacement of the first element with substitute, watered down, language promulgated in WIPO’s Overviews increases the risk that panels will suppress noncommercial criticism by finding such sites illegitimate. It makes it harder for panels to distinguish between what is cybersquatting and what is not. It leads to a panelist wading into the world of caged chickens in a search for justice and clarity.
All that is required to put a panel back on the right track is to exercise independence of judgment and to take seriously the responsibility to apply the Policy as it is written. In other words, a bold assertion that WynnCruelty.com is not confusingly similar to WYNN would have avoided this misadventure and produced an immediate and correct resolution of the dispute.
Making RDNH Together
Music Together, LLC v. Justine Chadly, In Harmony Music, WIPO Case No. D2023-5355
<musictogetherofmarin .com>
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant offers a musical education program to children under the MUSIC TOGETHER trademark at more than 3,000 locations in over 40 countries. The disputed Domain Name was initially registered by one of the Respondent’s predecessors in interest in 2007 and was then sold to another of the Respondent’s predecessors in interest, who in turn sold the disputed Domain Name to the Respondent in 2019. Like its predecessors in interest, the Respondent was a licensee of the Complainant at the time it acquired the disputed Domain Name. That license was terminated in August 2023. The Respondent has operated In Harmony Music since 2003. Since the Respondent acquired the disputed Domain Name, it has redirected internet visitors to the Respondent’s In Harmony Music website, which offers music courses in Marin County, California. The Complainant alleges that the Respondent is creating a false association with the Complainant by using the disputed Domain Name to attract would-be customers to the Respondent’s website. Therefore, the Complainant alleges, that the Respondent cannot claim that it is using the disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent contends that it has rights or legitimate interests in the disputed Domain Name because it has operated a music education business since 2003, and because it purchased the disputed Domain Name from a third party who had used the disputed Domain Name under license from the Complainant and who represented that she had the right to use the disputed Domain Name. The Respondent further asserts that it notified the Complainant of the Respondent’s use of the disputed Domain Name in connection with its own business as early as 2019 via email, and that the Complainant raised no objections at that time. Further, the Respondent contends that it has not diverted customers through the use of the disputed Domain Name; to the contrary, it distinguishes its services by adding the geographical reference “of Marin” in the disputed Domain Name and offers music classes under the “In Harmony Music” name, rather than under the MUSIC TOGETHER trademark.
Held: The Complainant has conceded that the Respondent used the disputed Domain Name under license until August 2023. The precise terms of that license are unclear, as neither the Complainant nor the Respondent has submitted the license agreement. Regardless, the fact that the Respondent was a licensee of the Complainant shows that, for at least some period, the Respondent had rights and legitimate interests in the disputed Domain Name. Further, given that the Respondent was a licensee of the Complainant when it acquired the disputed Domain Name, coupled with the absence of any evidence that the Respondent was not entitled to register the disputed Domain Name given its role as a licensee of the Complainant, is dispositive of the issue of bad faith registration.
If the license agreement prohibited the Respondent from registering the disputed Domain Name (or any domain name containing the licensed mark), then the registration may well have been in bad faith. However, the Complainant has not submitted any such evidence to the Panel, even though the burden is on the Complainant to prove bad faith registration by a preponderance of the evidence. The fact that the Complainant allowed the Respondent to remain a licensee for four years, and only terminated the license agreement in 2023, supports an inference that the Respondent was within its rights to register and use the disputed Domain Name during the license period, which undermines any argument that the registration was in bad faith.
The Complainant goes on to argue that the Respondent’s continued use of the disputed Domain Name following the termination of the license constitutes bad faith use. Depending on the terms of the license agreement, that may well be true. But the Policy requires both bad faith use and bad faith registration; proving only bad faith use is not sufficient.
RDNH: Given that the Complainant knew that the Respondent was its licensee at the time that the Respondent registered the disputed Domain Name and the inference, based on the record – notably the lack of the Complainant’s provision of the relevant license, which it is therefore assumed does not operate to its favor in this case – and arguments presented, that the Respondent was authorized to register the disputed Domain Name at that time, there could not have been bad faith registration. That means that the Complaint was doomed to failure. The Complainant, represented by counsel, only heightens the bad faith conduct that underlay the filing of this Complaint. Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an attempt at RDNH.
Complaint Denied (RDNH)
Complainants’ Counsel: Riker Danzig LLP, United States
Respondents’ Counsel: Kinney Law, P.C, United States
Case Comment by ICA General Counsel, Zak Muscovitch:
The Panel’s determination with respect to supplemental filings is noteworthy. The Complainant submitted a supplemental submission in order to respond to the Respondent’s submission that since it was a licensee of the Complainant at the time when the Respondent purchased the Disputed Domain Name. The Panel noted that “all of the points that the Complainant made in its supplemental submission are points that the Complainant could have anticipated and addressed in the Complaint, and any necessary information or documentary evidence should have been provided at that time”. Holding the line on supplemental pleadings as the Panel did in this case is crucial. As noted in Viacom v. Rattan Singh Mahon, WIPO Case No. D2000-1440, supplemental filings are limited it to “exceptional cases” only, as otherwise it would defeat the intention of the UDRP, which is to provide for expeditious and streamlined dispute resolution with minimal resources being expended.
This case is also noteworthy for the Panel’s finding of Reverse Domain Name Hijacking. The Panel noted inter alia, that given inter alia that the Complainant knew that the Respondent was its licensee at the time that it registered the Domain Name, the Respondent could not have registered it in bad faith it was “doomed to failure” and that the fact that “the Complainant was represented by counsel only heightens the bad faith conduct”. The Complainant’s failure to produce the license agreement was also a factor considered. The UDRP’s usefulness in providing an expedited resolution of certain kinds of domain name disputes, i.e. clear cases of cybersquatting, is often abused by parties who try to shoehorn other kinds of disputes into it. Here, this was clearly a license dispute and as such it should never have been brought for adjudication to the UDRP. Why does this happen? Certainly there are some complainants and counsel who conscientiously ignore the established parameters of the Policy and take a shot. But others are misled by the absence of guidance in the Policy itself. After all, the Policy relies upon years of interpretive case law which must be consulted in order to fully appreciate the contours and limitations of the UDRP. The Overview and other resources assist counsel in appreciating how the UDRP has come to be implemented in practice and are readily available. As such, it is no excuse to be unaware of them or to ignore them. On the other hand, the detachment between the Policy and guidance must be addressed so that unwary but well intentioned parties and counsel are unable to proceed with a UDRP without being bluntly advised of the importance of understanding the important role of the case law in applying the UDRP.