Welcome to this week’s UDRP Digest, summarizing the most intriguing cases of the past week, with two commentaries from Zak Muscovitch, ICA General Counsel. This week, a special case summary and comment focus on the 500th RDNH in the YouSwitch.biz case. You can also read more about this significant milestone in a Circle ID article co-authored by ICA Board Member Nat Cohen and ICA General Counsel Zak Muscovitch: The UDRP “Celebrates” Its 500th Reverse Domain Name Hijacking Case.
The 500th Reverse Domain Name Hijacking Case! Complainant Goes After Legitimate Domain Used for 15 Years; Is Found to Have Abused the Policy
USwitch Limited v. My Switch LTD, CAC Case No. 104446
Panelist: Ms. Victoria McEvedy
Brief Facts: The Complainant changed its corporate name to USwitch Ltd. in 2000. The Complainant is a consumer energy price comparison service at <USwitch .co .uk> and <USwitch .com>. The disputed Domain Name <YouSwitch .biz> was registered almost 15 years ago on December 9, 2007 and has been in continuous use since early 2010. The Respondent changed its name to YOUSWITCH Ltd. on January 8, 2008 and then to MY SWITCH Ltd in 2009. A dispute between the parties arose in 2009 and the outcome of that dispute was that the Respondent changed its name to MYSWITCH Ltd., but it retained ownership of the disputed Domain Name. The Panel requested evidence from the parties on the terms of the 2009 compromise, but neither produced any documentary proof in support. The Respondent provides support for the “Yolanda Origin Unified (YOU) Switch” and it uses the disputed Domain Name to route DNS traffic from the switches and for email. The “You” was an abbreviation of Yolanda Origin Unified.
Held: No-one can own a number or dictionary word to the exclusion of the rest of the world. They are inherently lacking in the distinctiveness required by trademark law. Those selecting such terms as marks have to tolerate confusion, and the Policy reflects this by protecting fair or legitimate use. This is the point that the Respondent is making in the response. The Complainant’s rights are weak and non-exclusive. It selected a highly descriptive mark and must live with the consequences. There is no evidence that the Respondent must have been aware of the Complainant when it registered the Domain Name. The Respondent engaged in honest concurrent use for many years. The Complainant also suggests that it would have a claim for trademark infringement in the UK, however, this is not a trademark infringement case or a passing-off case or an opposition. We are not concerned with anything other than the Policy.
This is neither a case of passive holding as the disputed Domain Name is in use in connection with a website for many years since it was registered almost 15 years ago nor is this typo squatting case due to its reference to the Yolanda Origin Unified (YOU) Switch. Before 2009, the Respondent was even known by it. Hence, the Panel finds that the Respondent had a legitimate right/interest in the disputed Domain Name. Further, the Panel neither finds that the Complainant owns a well-known mark nor that there is acquired distinctiveness. The Respondent submits a valid explanation for its selection of the disputed Domain Name and it had every right to make that selection given it included two common descriptive terms used in their original forms and for their informational values. The parties’ activities are in very different fields and no evidence of any confusion is evident. The Panel does not find that the Respondents registered or used the disputed Domain Name in bad faith.
RDNH: The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting” (See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187). That includes reverse domain name hijacking or RDNH. This is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” (see WIPO Overview 3.0, section 4.16). Panels have consistently found that the mere lack of success of the Complaint is not in itself sufficient to constitute RDNH. Section 4.16 of the WIPO Overview 3.0 sets out a number of the circumstances which UDRP panels have considered as supporting a finding of RDNH. These include: facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint; unreasonably ignoring established Policy precedent notably as captured in the WIPO Overview 3.0; filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis and basing a complaint on only the barest of allegations without any supporting evidence. In the present case, the Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered 15 years ago was likely to involve difficult considerations. The panel finds that this is a case of RDNH.
Complaint Denied (RDNH)
Complainants’ Counsel: Thomsen Trampedach GmbH
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This case happens to be the 500th RDNH finding since the UDRP was established in 1999. The Complainant was found to have abused the Policy by bringing the Complaint despite the fact that this was not a clearcut case of cybersquatting that the Policy was intended to address. Rather, at most it was a trademark infringement case and as the Panel pointed out, the Complainant should have appreciated that.
We published an article on the occasion of this 500th RDNH case, which you can read on CircleID. On one hand, we commend UDRP Panels for finding RDNH with increasing frequency. But on the other hand, we lament that such abusive Complaints continue to be brought against innocent registrants. We question whether a financial penalty for RDNH would even serve as an adequate deterrent, and instead ask whether greater education, resources, and even warnings could serve to assist unwitting or unscrupulous Complainants from bringing such cases in the first place.
Law Firm Found to Have Engaged in RDNH
Law and Business Enterprises Worldwide S.L. v. Ann Labe, WIPO Case No. D2022-1040
Panelist: Mr. Antony Gold
Brief Facts: The Spanish Complainant has provided legal, accountancy, securities assets management and tax services since 2009. Its income in 2021 was approximately EUR 15 million. The Complainant trades as LABE and is the owner of a figurative Spanish trade mark registration for LABE, registered on September 23, 2010. It is also the owner of a number of domain names comprising or including the word LABE such as <labe .es> which resolves to a website providing information about its services, as well as <labeabogados .com> and <labeabogados .net>. The Respondent is a real estate agent who registered the disputed Domain Name on June 9, 1998, and it previously resolved to a website containing information about her real estate practice including her biography. Currently, the Respondent’s website is inactive, although she continues to use email addresses associated with the disputed Domain Name.
Held: The Respondent produced evidence that her name is “Ann Labe” or “Rada Ann Labe”, including her Twitter Account, an online directory of real estate agents, her Arizona and California real estate licenses, and her biography on the website to which the disputed Domain Name previously resolved. As such, the Respondent met the standard usually applied by UDRP panels for the purpose of demonstrating that she is commonly known by her surname. Further, the Respondent registered the disputed Domain Name over ten years before the Complainant was established and approximately twelve years prior to the registration of the Complainant’s LABE mark. Accordingly, the Respondent could not have had the Complainant and its eventual use of LABE in mind when she registered the Domain Name, as the Complainant did not come into existence until over a decade later. The doctrine of passive holding does not apply to the circumstances of this case and in any event, the Respondent continues to use the disputed Domain Name for email.
RDNH: The Complainant made several false allegations, including the date on which it registered its domain names, and it misrepresented an EU filing receipt for a figurative mark as evidence of global trademark rights in LABE.
The WhoIs record shows that the Respondent’s registration of the disputed domain name pre-dated the Complainant’s registration of its LABE mark by over ten years. This should have made it apparent to the Complainant that it was likely to encounter substantial and likely insuperable, difficulties, in establishing, bad faith registration by the Respondent. Had the Complainant conducted a simple Google search, it would have been evident that the Respondent was, most likely, the registrant of the disputed domain name and that she had a right to register and use it, and this would have been confirmed once the registrar revealed the underlying registration data. The Complainant, therefore, had no basis for many of its assertions, but the Complainant’s decision to still proceed with its Complaint, notwithstanding its complete lack of merit, has put the Respondent in a position in which her only choice (other than acceding to the Complaint) was to file a Response. The Policy should not be misused in this manner.
Complaint Denied (RDNH)
Complainants’ Counsel: Labe Abogados, Spain
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
An Unbroken Chain of Possession…
Skillful Communications, Inc. v. Redacted for Privacy, Aquent / Aquent Aquent, Aquent, WIPO Case No. D2022-0910
Panelists: Mr. Georges Nahitchevansky, Mr. Gregory N. Albright, and Mr. Richard G. Lyon
Brief Facts: The Complainant is a provider of interview and career-related training for individuals and companies and operates through the domain names <skillfullydone .com> and <skill .net>. The Complainant has used the mark, SKILLFUL in connection with its services since at least 2010, and perhaps as early as 2007, and has used the mark, SKILL since April 2020. The Complainant owns trademark registrations in the United States for its SKILLFUL mark dated, September 6, 2016 and for SKILL, dated April 6, 2021. The Respondent is a staffing company and provider of temporary employees. The Respondent’s parent company is TRI Ventures, Inc. which was known as Laser Designs, Corp from 1986 to 1992, MacTemps, Inc. from 1992 to 1999, and Aquent, Inc. from 1999 to 2009. The Respondent was founded in 2001 as a 99.8% owned subsidiary of Aquent, Inc.
The parties are in disagreement as to the date that should be used for the registration of the disputed domain name. While Complainant acknowledges that the disputed domain name was originally registered in 1995, Complainant contends that a new registration occurred when the disputed domain name was transferred from Aquent, Inc. to Aquent, LLC in late 2007 or early 2008. Complainant also contends that a further acquisition of the disputed domain name occurred more recently, in early 2021, when the disputed domain name started to be used in connection with a website operated by Scout Exchange, LLC that the Complainant asserts is competitive with its business. The Respondent, on the other hand, maintains that the disputed domain name has remained within the control of the same corporate group of businesses since 1995 and that, as such, the transfers do not constitute new registrations/acquisitions. The Respondent also argues that the disputed Domain Name has not been transferred to Scout Exchange, LLC, remains in the name of Respondent, and has only been licensed to Scout Exchange, LLC, an affiliate of Respondent under common control by their parent company TRI Ventures, Inc.
Held: The transfer appears to simply be a change of which company within the TRI Ventures, Inc. (then Aquent, Inc.) corporate family would hold the disputed domain name, much in the same way that companies often move the ownership of their trademarks between holding companies and operating companies within the same corporate control group. As for the 2021 use of the disputed domain name by Scout Exchange, LLC, this does not appear to be a transfer of ownership of the disputed domain as Respondent has remained the listed registrant of the disputed domain name, as Complainant acknowledges.
There is no evidence before the Panel as to targeting of the Complainant given that the disputed Domain Name consists of a common word; the existence of multiple parties using the word “skill” in or as part of their trademarks; and the differences between the Complainant’s and the Respondent’s services. That is, the Panel does not see this matter as a case of cybersquatting. The Respondent having established an unbroken chain of possession in the disputed Domain Name since 1995, when the Complainant owned no rights in the SKILLFUL and SKILL marks, Complainant’s Complaint fails for not establishing bad faith registration of the disputed Domain Name by the Respondent.
Complainants’ Counsel: Chipperson Law Group, P.C., United States
Respondents’ Counsel: Wolf, Greenfield & Sacks, P.C., United States
Bad Faith Registration v. Bad Faith Use
CRF International Holding B.V. v. ThrottleUp Marketing LLC, WIPO Case No. D2022-1056
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant provides various services in the field of business and database management in addition to educational and certification services. The Complainant uses <top-employers .com>, which has served as the Complainant’s official website since 2009. It has 11 offices worldwide, having certified 1,857 companies as excelling in their roles as employers. The Complainant is the owner of trademark registrations for TOP EMPLOYERS INSTITUTE, registered between June 2019 and October 2020. The disputed Domain Name was registered on October 19, 1999 and resolves to a parking webpage containing pay-per-click (“PPC”) links. The Respondent did not file a Response.
Held: The disputed Domain Name was registered twenty years prior to the registration of the TOP EMPLOYERS INSTITUTE trademark and is composed of two dictionary words – “top” and “employers”. It appears to the Panel that this combination can be legitimately used in connection with its dictionary meaning and without trading off the trademark rights of the Complainant. The Complainant does not claim to have existed in 1999, when the disputed Domain Name was registered, and does not provide any evidence about the extent of renown of its trademark at this time or at any time prior to its first trademark registration in 2019. The Complainant’s domain name was registered in 2009, which is ten years after the registration of the disputed Domain Name. The Complainant is unable to explain how the Respondent could have registered the disputed Domain Name in bad faith in light of these circumstances. Moreover, contrary to the Complainant’s allegations, the parking webpage to which the disputed Domain Name resolves does not appear as similar to the Complainant’s website. In view of the above, there is no evidence that the Respondent knew of the Complainant at the time when it registered the disputed Domain Name or targeted it with this domain registration.
Complainants’ Counsel: Novagraaf Nederland B.V., Netherlands
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Despite no response being filed, this case appears to call out for a consideration of RDNH by the Panelist. Indeed, this Panelist to his credit has previously found RDNH in a no-Response case (see ICA UDRP Digest 2.20). Yet in this case, unfortunately RDNH wasn’t expressly considered. Finding RDNH is within the discretion of the Panel and there may be factual considerations arising from the evidence before the Panel that dissuades a Panel, on balance from finding RDNH. For example, perhaps the Panel considered the possibility that the current registrant had acquired the Domain Name more recently than its original registration. But on the other hand, such as descriptive and common phrase would seem to be beyond the grasp of the Complainant in any event. Moreover, the Complainant’s counsel in this case, Novagraaf, has the dubious distinction of having brought three prior RDNH cases on behalf of clients (See; the fertiplus .com case, the dll .com case, and the unive .com case), which raises the spectre that this may be the latest one. Novagraaf was also the recipient of a stinging rebuke from renowned Panelist Tony Willoughby in a fourth case concerning SDT .com, wherein the Panelist dissented with the majority’s decision to not consider RDNH, stating inter alia, “the Complaint was fundamentally defective, the certification at the end of the Complaint that to the best of the Complainant’s knowledge the Complaint was complete and accurate was false and the Complaint should never have been filed. In my view this is a clear case of Reverse Domain Name Hijacking”.
Even in cases where a Panel ultimately declines to find RDNH, it deserves to be expressly addressed, and of course where warranted, formally declared, as the same Panelist as the present case admirably did in the undefended matter of GL Concepts, LLC d/b/a Goodlife v. Perfect Privacy, LLC / Amitava Saha, Firstcry, WIPO Case No. D2022-0451 <GoodLife .com>. As we note in our recent CircleID article on the occasion of the 500th RDNH case noted above, RDNH is likely under-reported as a result of some Panelists being apprehensive about finding RDNH or failing to find it despite the facts warranting it.
Another Plan “B” RDNH
Xiatech Consulting Ltd v. Privacy Administrator, Anonymize, Inc., WIPO Case No. D2022-1072
Panelist: Mr. Matthew Kennedy
Brief Facts: The UK based Complainant provides technology consulting services, including data solutions and makes the use of a similar ccTLD domain name <xiatech .co .uk>. On March 25, 2022, the Complainant filed a United Kingdom trademark application for XIATECH, which is currently pending. The disputed Domain Name was acquired by the US Respondent on July 8, 2015 in a public auction. An archived screenshot provided by the Complainant shows that as at August 2018 the disputed Domain Name resolved to a website that offered for sale wireless Internet cards, WLAN adapters, and an MP3 player. At the time of this proceeding, the disputed Domain Name resolves to a webpage hosted by the Registrar that is offering disputed Domain Name for sale, the page, inter alia, displays the following text: “Start a payment plan for USD $1,775/mo”. After the Complainant contacted the Registrar regarding the disputed Domain Name, the Registrar informed it on February 1, 2022 that the owner had advised that the disputed Domain Name was only available by rental. On February 5, 2022, the Complainant replied that it was not interested in renting the disputed Domain Name and preferred to buy it.
The Respondent contends that he acquired the disputed Domain Name because it is a creative combination of two popular and generic words. The Domain names of this type have great value and are highly desirable throughout the world. Prior to bidding on the disputed Domain Name, the Respondent performed a trademark search in its home country (the United States) and found no records. The same search yields no results today. The Complainant asserts that because it was trading internationally in 2015 (for which it provides no evidence) it is “therefore inferred” the Respondent was aware of its presence. The Respondent categorically denies this assertion and was unaware of the Complainant’s fledgling home-based business operating some 5,000 miles away on another continent.
Held: The Complainant’s evidentiary showing is poor as to claim of common law rights. Nevertheless, the Panel is willing to accept all as claimed and sufficient for it to have rights in that mark for the purposes of the Policy. Even in this scenario, the Panel cannot find on the basis of the Complainant’s bare evidence and assertions that the Respondent targeted it in registering the disputed Domain Name. It is incumbent on the Complainant, especially when relying on common law rights, to support such a claim with sufficient evidence, which is not a case here. Even its unsubstantiated assertions (regarding its annual turnover, its sales volume, its marketing budget and its industry accolades) relate to the period after the registration of the disputed Domain Name. This does not show the Respondent’s purpose in registering the disputed Domain Name in 2015. On the basis of the record of this case, the Panel cannot find that the Complainant has satisfied the requirements of paragraph 4(a) of the Policy.
RDNH: The Panel notes that the Complainant is legally represented and repeatedly makes assertions that it fails to make any attempt to substantiate. The paucity of evidence as to how the alleged mark was used, particularly prior to the registration of the disputed Domain Name, is conspicuous considering that such evidence is essential to a claim of common law rights on which the Complaint is based. In view of all the circumstances, the Panel infers that the Complainant knew, or should have known, that the Complaint as it was presented, could not succeed under any fair interpretation of the facts that it placed on the record. Further, the Panel notes that the Complaint was filed a little under two months after the Complainant sought and failed to acquire the disputed Domain Name from the Respondent. In the circumstances, the Panel infers that the Complainant resorted to the Policy as “Plan B” after failing to acquire the disputed Domain Name from the Respondent, or to increase its bargaining leverage. Either is a highly improper purpose for a complaint under the Policy and constitutes a further basis to find Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Mishcon de Reya, United Kingdom
Respondents’ Counsel: Self-represented