Swinson: Complainant’s “Feeble” Arguments Were “Wrong and Abusive” – ICA UDRP Digest – Vol 2.50

Ankur Raheja UDRP Case Summaries

We hope you will enjoy this edition of the Digest, as we review these noteworthy recent decisions, with commentary from our Director Nat Cohen and Editor-in-Chief, Ankur Raheja:

Swinson: Complainant’s “Feeble” Arguments Were “Wrong and Abusive” (matajer .net)

Respondent “Tarqets” Complainant’s Mark in Phishing Scheme (tarqet .com *plus comment)

A Great Example of a Trademark Dispute ‘Best Left to the Courts’ (rent-the-runway .com .au)

‘More Complex’ Disputes are Not Clear “Cyberquatting” Disputes Meant for UDRP (nv4geospatial .com)

Complainant’s Trademarks Were Not Even Similar to the Disputed Domain Name (magazineracksdirect .com)

Complainant Proves Common Law Rights the Second Time Around, With a Re-filed Complaint (libertypuzzle .com *plus comment)

Associated Websites Were “Abusive”, Not “Critiscism” (stopspectrum .com and spectrumkills .com *plus comment)

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

CircleID: Does the UDRP Interfere With Free Speech Rights? – The StopSpectrum.com Decision (by ICA Director Nat Cohen December 19, 2022)

The ICA wishes you Happy Holidays and Happy New Year. We will be taking next week off so there won’t be a Digest issued next week.

Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!


Swinson: Complainant’s “Feeble” Arguments Were “Wrong and Abusive”

 Majid Al Futtaim Properties LLC v. Ayman Bajnaid, WIPO Case No. D2022-4130

<matajer .net>

Panelist: Mr. John Swinson 

Brief Facts: The Complainant’s shopping mall portfolio, inter alia, includes five community malls (Matajer), which are in joint venture with the Government of Sharjah, having an online presence at <matajersharjah .com>. The Complainant commenced use of its MATAJER brand in connection with the operation of the Complainant’s “Matajer Al Quoz” mall which opened in October 2011. The Complainant and its joint venture “Sharjah Holding Co. PJSC”, own trademark registrations which the Complainant describes as MATAJER AL RAHMANIVA and MATAKER AL MUSALLA. Sharjah Holding Co. PJSC and also own trademark registrations for a device mark.

The disputed Domain Name was registered on January 5, 2006 by a South African resident and does not resolve to an active website. The Complainant alleges that such passive holding amounts to bad faith registration and use as there is no evidence of actual or contemplated good faith use of the disputed Domain Name and that the Complainant’s brand MATAJER gained protection almost 9 years preceding the Respondent’s renewal of the disputed Domain Name, coupled with masking the Respondent’s identity on November 22, 2020.

The Respondent contends that the disputed Domain Name was registered long before the registration of the Complainant’s trademarks as the Respondent believed that the word “Matajer” is generic, and no one can claim exclusive right to this word. The Respondent further contends that if the Complainant truly believed that the disputed Domain Name was being used in conflict with its trademark rights, the Complainant would have acted long ago and importantly, the Complainant had no bona fide basis for commencing this proceeding under the UDRP, and is culpable for reverse domain name hijacking.

Held: The fundamental problem confronting the Complainant is that the Respondent registered the disputed Domain Name more than 3 years before the Complainant began using or had any rights in the trademarks. At the time of registration of the disputed Domain Name, the Respondent simply could not have known about the Complainant let alone been targeting it. The Complainant attempts to overcome this difficulty by asserting that the Respondent renewed the disputed Domain Name after the Complainant obtained trademark rights. However, the time to look at whether the disputed Domain Name was registered in bad faith is when the Respondent registered or acquired the disputed Domain Name, not at the time of a subsequent renewal of the disputed Domain Name.

Further, there is evidence to support the Respondent’s good faith. The Respondent asserts, and the Panel believes, that the Respondent registered the disputed Domain Name (not knowing of the Complainant) because the disputed Domain Name is a term that means “shops” in Arabic and thus is intrinsically valuable as a Domain Name. The Complainant also fails to demonstrate that the Respondent used the disputed Domain Name in bad faith. The Respondent is not using, and there is no evidence that the Respondent has ever used, the disputed Domain Name. In an attempt to overcome this difficulty, the Complainant relies on the passive holding doctrine that was established in Telstra Corporation Limited v. Nuclear Marshmallows, [WIPO Case No. D2000-0003].

In the Nuclear Marshmallows case, the complainant’s trademark was one of the most famous in Australia, the complainant provided substantial evidence of its reputation in Australia, the respondent had an Australian address and was likely aware of the Complainant, and the Respondent used a fake name to conceal his or her identity. The Complainant in the present case did not provide evidence to establish that the Respondent registered the disputed Domain Name because of the Complainant, the term “Matajer” is not famous but a term in Arabic meaning “shops”, the Respondent is located in South Africa (where the Complainant does not have shopping malls), and there is no evidence that the Respondent is likely aware of the Complainant. Thus, there is no passive holding under the test set out in the Telstra case sufficient to establish bad faith use.

RDNH: The disputed Domain Name was registered by the Respondent years before the Complainant’s rights accrued. The Complainant attempted to circumvent that fundamental problem with feeble arguments regarding events that took place more than 10 years after the date of registration and that have no bearing on whether registration was in bad faith. The Complaint was always doomed to fail.

Additionally, the Complainant seriously overstates its case in many respects. In particular, the Complaint states there can simply be no question that the Respondent was well aware of the Complainant, its Mark and the Complainant’s exclusive rights in that mark, and the reputation of that mark when the Respondent registered the disputed Domain Name. This statement is completely false and is not supported by and is contrary to all the evidence. Further, this paragraph argues that the Respondent attempted to cause confusion by diverting the disputed Domain Name to the Respondent’s website. However, the disputed Domain Name does not divert to any website, as the Complaint later acknowledges.

The Complainant is represented by trademark and domain name specialist lawyers who ignored well-known and relevant UDRP decisions and filed a Complaint that should never have been filed. It is wrong and an abuse of process that the Respondent is forced to spend time and effort preparing his Response to this Complaint. In these circumstances, the Panel considers that a finding of reverse domain name hijacking is entirely appropriate and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Complaint Denied (RDNH)

Complainants’ Counsel: Talal Abu Ghazaleh Legal, Egypt
Respondents’ Counsel: Self-represented


Respondent “Tarqets” Complainant’s Mark in Phishing Scheme

Target Brands, Inc. v. Mary Jarvis, NAF Claim Number: FA2211002019991

<tarqet .com>

Panelist: Mr. James Bridgeman SC

Brief Facts: The Complainant owns and operates a chain of retail department stores and uses the TARGET trademark and service mark in its business. It offers its goods and services on its website at <target .com> and owns the US and EU trademarks, the earliest registration being dated November 8, 1966. The disputed Domain Name, registered on October 28, 2022, used to set up an email account which the Respondent is using to impersonate the Complainant and its employees for the purposes of phishing by sending emails to Complainant’s customers requesting payments on accounts. The Respondent availed of privacy service to conceal her identity on the published WHOIS but the Registrar confirmed that she is the registrant of the disputed Domain Name.

The Complainant alleges that the Respondent is not making a legitimate non-commercial or fair use of the disputed Domain Name but incorporates a typo-squatted version of the famous TARGET mark, which was used for the phishing attempt. The Complainant further alleges that the Respondent hacked the email account of one of Complainant’s suppliers and was able to obtain a legitimate email exchange relating to certain purchase orders, allowing the Respondent to create confusion by requesting payments without authority for the purpose of phishing. The Complainant relies upon Telstra Corporation Limited v. Nuclear Marshmallows, WIPO D2000-0003 and also argues that after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith”. The Respondent did not file a response.

Held: The uncontested evidence adduced by the Complainant shows that the disputed Domain Name was used to create an email account from which fraudulent emails have been sent. The copies of emails show that the Respondent sent emails impersonating actual employees of the Complainant in a phishing effort seeking to illegally lure Complainants’ business partners into a fraudulent scheme. In addition, the disputed Domain Name does not resolve any active website content, but only to a parking page, which does not amount to a bona fide offering of goods or services or a legitimate non-commercial or fair use under the Policy.

The disputed Domain Name was only recently registered on October 28, 2022, and given the similarity of the disputed Domain Name and Complainant’s distinctive mark, and also considering the unlawful use to which the disputed Domain Name was put so soon after being registered. Hence, this Panel finds that on the balance of probabilities the disputed Domain Name was chosen because it is a misspelling of Complainant’s TARGET mark and registered in bad faith, in an act of typo-squatting, in circumstances where the registrant was actually where of Complainant’s name, and mark.

This Panel, therefore, finds that on the balance of probabilities the disputed Domain Name was registered in bad faith with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s goodwill and reputation. In making this decision, this Panel is fortified by finding that the disputed Domain Name was chosen and registered in an act of typo-squatting.

Transfer

Complainants’ Counsel: Steven M. Levy of FairWinds Partners LLC, District of Columbia, US
Respondents’ Counsel: No Response

Comment by Editor-in-Chief, Ankur Raheja:

In the above two matters, the respective Complainants both relied on Telstra Corporation Limited v. Nuclear Marshmallows, [WIPO D2000-0003] in an attempt to argue “passive holding” as evidence of Bad Faith. The concept of “passive holding” in the UDRP is often misunderstood and requires more than mere “non-use” of a domain name for the concept to be properly invoked. The fame of a trademark is often a crucial factor in finding passive holding. As pointed out by Panelist John Swinson in <matajer .net>: “In the Nuclear Marshmallows case, the complainant’s trademark was one of the most famous in Australia, the complainant provided substantial evidence of its reputation in Australia, the respondent had an Australian address and was likely aware of the Complainant, and the Respondent used a fake name to conceal his or her identity”. In the Tarqet case, Complainant’s counsel, Steven Levy, who is also an expert and experienced UDRP Panelist, properly invoked the doctrine of passing holding by demonstrating the fame of the Complainant’s mark. In the Matajer case however, Complainant’s counsel (despite being “specialist” IP counsel as noted by the Panel, and from a major Middle Eastern law firm), failed to properly invoke the doctrine of passing holding, by not demonstrating the fame of the mark.


A Great Example of a Trademark Dispute ‘Best Left to the Courts’

Rent the Runway, Inc. v. Johnston, Julie Victoria, WIPO Case No. DAU2022-0032

<rent-the-runway .com .au>

Panelist: Mr. John Swinson

 Brief Facts: The US Complainant operates an online retail clothing store and related clothing rental service through the website at <renttherunway .com> (commenced in 2009). The Complainant owns Australian trademark registration for RENT THE RUNWAY that has priority date of April 26, 2016. The legal terms on the Complainant’s website at <renttherunway .com> state “The Services are controlled and/or operated from the United States, and are not intended to subject Rent the Runway to any non-U.S. jurisdiction or law…”. According to the WhoIs records, the registrant of the disputed Domain Name is “JOHNSTON, JULIE VICTORIA” who is a sole trader of an Australian registered business “RENT THE RUNWAY AU” (registered on March 9, 2021). The disputed Domain Name resolves to a website that allows consumers to rent dresses and the like, and also to purchase clothing within Australia.

The Complainant sent a demand letter to the Respondent on August 17, 2022, and followed-up on August 29, 2022, but the Respondent failed to reply. The Complainant alleges that the Respondent’s use of the disputed Domain Name in connection with retail store services for clothing clearly establishes that the Respondent registered the disputed Domain Name deliberately, with actual knowledge of the Complainant’s RENT THE RUNWAY trademark, and in bad faith. The Respondent contends that at the time of deciding to start her business in 2021, she completed a search on the Australian ASIC website to find the availability of the business name “Rent the Runway AU” and had absolutely no idea about the existence of the Complainant.

Held: The appropriate time to assess the Respondent’s claim to rights or legitimate interests in the disputed Domain Name is at the time when the Respondent became aware of the dispute about the Domain Name – which in this case is the time when the Complainant sent a demand letter to the Respondent on August 17, 2022. At that time, the disputed Domain Name resolved to a website that appears to be the website of a legitimate business and not a sham or fraud. However, if the Respondent had searched the Australian trademarks register, the Respondent (who appears to be a lay person) would have become aware of the Complainant’s Australian trademark registrations. In any case, the Complainant did not make submissions that the Respondent had a duty to search the Australian Trade Marks Register.

The Complainant is well-known in the United States but did not provide any evidence that the Complainant is known in Australia. Moreover, the Complainant’s website expressly states that it will not send clothing outside of the United States. In that regard, it is possible that the Australian Respondent was unaware of the Complainant when the Respondent set up her business in 2021. Further, one may ask whether it is more than a coincidence that the Respondent provides similar services as the Complainant under a very similar domain name to the Complainant’s trademark. The Complainant says that the Respondent’s use of an identical brand for similar services is evidence that the Respondent had actual knowledge of the Complainant (whose trademark may be considered suggestive). The Respondent provided no information as to why she selected that name.

In either case, it is not the role of the Panel to make determinations of trademark infringement. The tests applied under the Policy and in respect to Australian trademark infringement law differ in several respects. The Policy is designed to deal with clear cases of cybersquatting. In the circumstances of this case, a finding that the Respondent has “no” rights would involve making findings about what is essentially a trademark or passing-off dispute. This involves larger issues which are inappropriately resolved under the Policy. The Panel, therefore, finds that the Complainant failed to establish, on the balance of probabilities, that the Respondent has no rights or any legitimate interests in respect of the disputed Domain Name.

Complaint Denied

Complainants’ Counsel: Perkins Coie, LLP, United States
Respondents’ Counsel: Self-represented


‘More Complex’ Disputes are Not Clear “Cyberquatting” Disputes Meant for UDRP

NV5 Global Inc. v. NV4 Geospatial Consulting Private Limited, WIPO Case No. D2022-3689

<nv4geospatial .com>

Panelist: Mr. Steven A. Maier

Brief Facts: The US Complainant owns trademark registration for the word mark NV5, registered on March 19, 2013 for goods and services including engineering services, geological services and consulting in the field of structural and geotechnical engineering in Class 42. On June 6, 2022 the Complainant filed another US trademark application for a word mark NV5 GEOSPATIAL, which is pending registration but provides evidence of use at least since February 2021. The disputed Domain Name was registered on January 29, 2022 and resolves to a website operated by the Respondent offering services including “terrestrial laser scanning”, “photogrammetry and orthophotography” and “total station and DGPS survey”.

The Complainant alleges that the Respondent is not commonly known by the disputed Domain Name and it was aware of the Complainant and its use of the NV5 GEOSPATIAL mark since both parties have offices in Bangalore, India, offering identical services. The Complainant adds that on contacting, the Respondent “verbally offered to change the name” for a payment of USD $13,000, which is in excess of Respondent’s out-of-pocket costs directly related to the disputed Domain Name.

The Respondent provides evidence that it adopted the name as “NV4 Geospatial”, due to earlier rejection of the company name “V4 Geospatial”. It further tenders various documents as evidence that it is operating a bona fide business venture that includes company and tax registration documents; invoices issued to customers; rent agreement; photographs; etc. The Respondent further contends that the Complainant did not make available any evidence so as to establish common law rights in the unregistered ‘NV5 Geospatial’ mark and claims rights or legitimate interests in respect of the disputed Domain Name by virtue of its trading under the name “NV4 Geospatial Pvt. Ltd.”.

Held: The Panel is unable in this case to form a definitive view upon the veracity of the Respondent’s submissions and evidence. Its explanation for the choice of the business name “NV4 Geospatial” appears to the Panel to be somewhat contrived and also to be remarkably coincidental with the Complainant’s mark NV5 GEOSPATIAL. Yet at the same time, the Respondent provides persuasive evidence that it originally intended to call its business “V4 Geospatial” and added the character “N” once the registration of this name was refused. The Panel also accepts on the evidence that at least two of the founder directors of the Respondent Company appear to have had previous experience and employment in the geospatial consulting sector. As to the Respondent’s evidence of its actual business activities, the Panel finds items such as the incorporation and tax registration documents and the rental agreement to be persuasive, but can reach no firm conclusions concerning the remaining evidence.

The Panel’s difficulty with the evidence illustrates that this is not a suitable dispute for determination under the UDRP which, as the Respondent correctly observes, is a forum for resolving what essentially “cybersquatting” cases are and not for determining more complex business disputes. In view of this, and based on the Respondent’s at least prima facie evidence of legitimate trading, the Panel finds it impossible to conclude, on the balance of probabilities, that the Respondent’s business is not genuine and is instead a sham or pretext aimed primarily at targeting the Complainant’s trademark. In these circumstances, the Complainant cannot establish to the satisfaction of the Panel that the Respondent has no rights or legitimate interests.

For the same reasons, it is unnecessary for the Panel to make specific findings concerning the issues of registration and use of the disputed Domain Name in bad faith. However, the Panel further comments that it would not find the discussion between the parties involving USD $13,000 (if such figure was in fact discussed) to be conclusive of the Respondent’s registration or use of the disputed Domain Name in bad faith. The Panel accepts in this regard that the Respondent had not advertised the disputed Domain Name for sale, that the Complainant (or its predecessor) contacted the Respondent about the disputed Domain Name and that the discussion may have concerned issues of business names and branding beyond the ownership of the disputed Domain Name itself.

Complaint Denied

Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Ankur Raheja of Cylaw Solutions, India


Complainant’s Trademarks Were Not Even Similar to the Disputed Domain Name

Osiris Inc. v. Qiu Xiaofeng, CIIDRC Case No. 18825-UDRP

<magazineracksdirect .com>

Panelist: Mr. Peter Müller

Brief Facts: The Complainant is an international company with 117 retail locations across Canada and the United States. The Complainant’s website is available at <shopatshowcase .com>. The Complainant provided evidence that it is the registered owner of 54 Canadian trademark registrations for various words and designs. According to the list of marks submitted, none of the marks contains the words “magazine” and/or “racks” and/or “direct”. The website available at the disputed Domain Name is a copy of the Complainant’s website and duplicated not only its code, but also the Complainant’s corporate logos, product catalog, and customer service portal.

The Complainant contends that the Respondent provides a website which is identical to the Complainant’s one and violates its copyrights. It further states that the Respondent is fraudulently using the disputed Domain Name, which is not a bona fide use. The Complainant further contends that the Respondent is not making a legitimate non-commercial or fair use of the domain name. Finally, the Complainant states that the disputed Domain Name was obviously registered for the purpose of perpetrating a fraud. The Respondent did not file a response.

Held: The inquiry under the first element is in two parts. The first issue is whether the Complainant owns relevant rights in a trademark and the second is whether any such trademark is identical or confusingly similar to the disputed Domain Name.

The Complainant provides evidence that it is the registered owner of 54 Canadian trademark registrations for various words and designs. According to the list of marks submitted, none of the marks contains the words “magazine” and/or “racks” and/or “direct”. The Complainant did not provide evidence that the Domain Name is identical or confusingly similar to one of the Complainant’s registered trademarks. Furthermore, the Complainant did not even claim unregistered trademark rights which are identical or confusingly similar to the disputed Domain Name. As a result, the Panel finds that the Complainant failed to prove the standing requirements of the Policy. Hence, the Complaint is denied.

Complaint Denied

Complainants’ Counsel: Internally Represented
Respondents’ Counsel: No Response


Complainant Proves Common Law Rights the Second Time Around, With a Re-filed Complaint

 Liberty Puzzles, LLC v. Domain Manager / Data Point Limited, NAF Claim Number: FA2211002019843

<libertypuzzle .com>

Panelist: Mr. Alan L. Limbury

 Brief Facts: The Complainant, founded in 2005, is a small, family-owned company based in Boulder, Colorado, selling jigsaw puzzles in stores and online through its website <libertypuzzles .com> since July 2006. The Complainant claims of having acquired common law rights in the LIBERTY PUZZLES mark. The disputed Domain Name was registered on December 18, 2007, and provides competing hyperlinks. The Complainant alleges that the Respondent does not use the disputed Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use. Rather, the Respondent passes itself off as the Complainant for commercial gain to host competing hyperlinks. The Respondent did not file a response.

Held: The Complainant sells jigsaw puzzles in stores and online through its website, <libertypuzzles.com>, which it has used since at least July 3, 2006 and hence has acquired common law rights in the LIBERTY PUZZLES mark. The disputed Domain Name was registered more than a year after the Complainant has shown that it had, through use, acquired common law rights in its LIBERTY PUZZLES mark. The disputed Domain Name resolves to a website promoting crossword puzzles of competitors of the Complainant. These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent.

The circumstances set out above satisfy the Panel that the Respondent was fully aware of Complainant’s LIBERTY PUZZLES mark in 2007 when the Respondent registered the disputed Domain Name and that the Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source of Respondent’s website and of the goods promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under the Policy.

Transfer

Complainants’ Counsel: Chad T. Nitta of Kutak Rock LLP, Colorado, USA
Respondents’ Counsel: No Response

Comment by Editor-in-Chief, Ankur Raheja:

Though apparently not referenced in the decision, this Complaint appears to be a re-filing. Had the Complainant disclosed the fact that it had previously filed a case concerning this Domain Name, the expert and experienced Panelist, Alan Limbury, would have surely evaluated the refiled Complaint in terms of WIPO Overview, section 4.18 [also see: Unbiased Ltd trading as Unbiased.co.uk v. Development Manager, WIPO Case No. D2021-0113].

The previous Complaint was filed in April of 2022 (NAF Claim Number: FA2211002019843), wherein the Complainant failed to prove the first prong of the Policy. The Panelist concluded that the Complainant had failed to provide evidence of use in commerce, such as sales revenues and advertising expenditures, and had also failed to show of public recognition of the mark in the critical period between creation of its business in 2005 and the registration of the Respondent’s domain name in 2007. Accordingly, the Complaint was dismissed. [Previous case summary for <libertypuzzle .com> was covered by ICA’s weekly UDRP digest vol. 2.24]

This time around, the Complainant was able to establish Common Law rights in the mark, Liberty Puzzles based upon its use since July 3, 2006. That is, the time when the Complainant’s website was archived first time around, see: https://web.archive.org/web/20060703022913/http://www.libertypuzzles.com/.


Associated Websites Were “Abusive”, Not “Critiscism”

Charter Communications Holding Company, LLC v. Michael Presley, NAF Claim Number: FA2211002020166

<stopspectrum .com> and <spectrumkills .com>

Panelist: Mr. The Honorable Neil Anthony Brown KC

Brief Facts: The Complainant is a prominent United States company engaged in the telecommunications industry. The Complainant has established its rights in the SPECTRUM mark based on registration of the mark with the USPTO (registered April 6, 2021). The Respondent registered the disputed domain names on October 11, 2022 and October 19, 2022 respectively and uses them as complaint sites making various negative allegations about the Complainant’s business practices. The Complainant alleges that the Respondent’s use of the disputed domain names as complaint sites do not constitute rights or legitimate interests in the domain names. The Complainant further alleges that the Respondent had actual or constructive knowledge of Complainant’s rights in the SPECTRUM mark and registered and used the disputed Domain Names in bad faith. The Respondent did not file a Response in this proceeding.

Held: The <stopspectrum .com> and <spectrumkills .com> Domain Names are confusingly similar to the Complainant’s SPECTRUM mark. The Respondent has made a series of derogatory and other pejorative statements about Complainant and its employees. For a criticism site to be protected as free speech (protected by virtue of the First Amendment to the United States Constitution), it must first be shown that it actually is a criticism site. If and when that conclusion is reached, the panel or a court can then decide if it also passes muster as an exercise in free speech and is protected for that reason.

In the present context, it is clear that “criticism“ means the presentation of an opinion with enough substance in it to enable the recipient to understand what is being said against it so that it can reply to it. In the present case the substance of the content of the two webpages in question shows to the panel that its substance, intention and purpose is not to stimulate criticism or debate but to abuse and denigrate the Complainant and its employees and possibly others as well. That is made clear by the inherent absurdity of the allegations, their extraordinary width, and the absence of any invitation to reply or debate and the absence of any content that could rationally call for a reply or a defence. Thus, the webpages are not, in substance, criticism but abuse. More to the point, the content of the two web pages show that it would be impossible on the evidence to show that the Respondent has a right or legitimate interest in using the Complainant’s trademark to register the domain names and use them for a sustained attack on the Complainant and others who must be presumed innocent of the charges levelled against them.

By using the Complainant’s marks in the Disputed Domains, the Respondent positions itself as a competitor of the Complainant and thus violates 4(b)(iii) for its use is intended to disrupt the business of a competitor. It must also be surely the case that the Respondent is in breach of the terms of its registration agreement with Namecheap, its registrar, potentially negating any entitlement it has to the domain names.

For all of these reasons, the Panel finds that the Respondent registered and used the disputed domain names in bad faith.

Transfer 

Complainants’ Counsel: Craig Beaker of Holland & Hart LLP, Colorado

Respondents’ Counsel: No Response 

Comment by ICA Director, Nat Cohen:

The content published at <StopSpectrum .com> (archived here –  https://web.archive.org/web/20221218235515/https://stopspectrum.com/sample-page-2/) appears to me to be genuine non-commercial criticism.  I find it concerning that the Panel denies the Respondent the protections afforded to genuine criticism under 4(c)(iii) of the Policy.  The Panel justifies doing so by characterizing the commentary as abuse rather than genuine criticism and by holding that abusive content is not entitled to protection under the Policy, nor, it asserts, is it entitled to protection under the U.S. Constitution.

When UDRP Panels attempt to qualitatively evaluate critical content, if their assessment is incorrect, they risk suppressing genuine, lawful criticism.  Most panels exercise restraint and recognize that the UDRP is not the proper venue for evaluating non-commercial speech that may be unlawful.  Unfortunately the Panel in <StopSpectrum .com> did not demonstrate such restraint.

These comments are expanded upon in an article published on CircleID: Does the UDRP Interfere With Free Speech Rights? – The StopSpectrum.com Decision (CircleID, December 19, 2022). The article analyzes the <StopSpectrum .com> decision in greater detail.  It also raises broader concerns about the UDRP being used to resolve free speech issues beyond the scope of its competence in ways that can interfere with Respondents’ free speech rights.