Totality of the Circumstances Point to Fair Use by Unauthorized Reseller
This case is yet another application of the nominative (fair) use doctrine under the UDRP, see par. 2.8.1 of WIPO Overview 3.0 and the “Oki Data test” (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Respondent offered “A320” aircraft training materials on his website and the Panel compared such use to that of “unauthorized resellers”. Read more here.
We hope you will enjoy this edition of the Digest (vol. 3.46), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Totality of the Circumstances Point to Fair Use by Unauthorized Reseller (a320guide .com *with commentary)
‣ Wizarding World v. World of Wizarding (worldofwizarding .com *with commentary)
‣ Panelist Defers to Court in Parallel Court Proceeding (routesrezworld .com)
‣ Adjudicating Contractual Complexities and Prior Business Relationships, Outside Panel’s Purview (suncitywaterworld .com)
‣ Trademark Infringement Matters Can be Dealt With in Alternative Forum (stardustmiami .com)
Totality of the Circumstances Point to Fair Use by Unauthorized Reseller
Panelist: Mr. Edoardo Fano
Brief Facts: The French Complainant operates in the aerospace field and its main website is <airbus .com>. It owns several trademark registrations worldwide for A320, in the name of its subsidiary that includes the International Trademark (July 15, 1991); UK Trademark (November 19, 1993) and the US Trademark (March 5, 1996). The disputed Domain Name was registered on March 25, 2015. The Complainant alleges that the disputed Domain Name resolves to a website on which unauthorized Airbus A320 training materials are offered for sale, as a “bait and switch” use, and the presence of a disclaimer about the Respondent’s lack of a relationship with the Complainant further demonstrates the Respondent’s awareness of the users’ confusion that can arise from the website at the disputed Domain Name. On June 8, 2023, the Complainant’s representative sent a cease-and-desist letter to the Respondent, to which an exchange of emails with the Respondent’s representative followed with no result.
The Respondent acknowledges that the term A320 is a trademark owned by the Complainant, however contends that this aircraft model is universally referred to solely by the term A320, and therefore the use of it in the disputed Domain Name is a need for unequivocal clarity, instead of any intention to infringe the Complainant’s rights. The Respondent further contends that no professional pilot would consider the materials provided on the website at the disputed Domain Name as official training manuals: it is clear to the relevant public that the only authoritative manuals for the operation of a transport category aircraft are those sanctioned by the manufacturer or the airline as the employing operator, while professional pilots may, at their discretion, procure additional educational materials that are secondary and can never replace the official manuals.
Held: The Respondent’s business is comparable to that of unauthorized resellers (of goods). According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the WIPO Overview 3.0, section 2.8.1, which is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. From an inspection of the Respondent’s website at the disputed Domain Name, the Panel finds that the Respondent is actually offering for sale only Airbus A320 training materials, as the disputed Domain Name implies, not using the Complainant’s trademark to “bait and switch” customers to other products and/or services: the Respondent appears to use the term A320 in a nominative fair use sense to refer to the Airbus A320, adding to it the descriptive term “guide” [WIPO Overview 3.0, section 2.8.2]. The Panel also notes that a quick search online appears to bolster the Respondent’s claim to be a pilot and shows a small handful of other (apparently self-published) airline industry-related publications.
In terms of the composition of the disputed Domain Name, this case presents a scenario where the added term can be seen as suggesting endorsement or sponsorship of the brand owner, or not, depending on the broader case circumstances. Here, the Panel is reluctant to find that the totality of case circumstances point to an impermissible use of the relevant mark. Based on the available record, therefore, the Panel finds that the second element of the Policy has not been established and that the disposition of this case touches on matters that would require a fuller evidentiary record, and may be equally addressed by a court of competent jurisdiction. The Panel does not find in the Complaint evidence supporting a finding or even an inference that the Respondent registered the disputed Domain Name as part of a plan to mislead Internet users for commercial gain.
Complainants’ Counsel: CSC Digital Brand Services Group AB, Sweden
Respondents’ Counsel: Self-represented
Guest Case Comment by Panelist, Igor Motsnyi:
Igor is an IP consultant and partner at Motsnyi Legal, <motsnyi .com>. 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.
Totality of the Circumstances Point to a Fair Use by Unauthorized Reseller
This case is yet another application of the nominative (fair) use doctrine under the UDRP, see par. 2.8.1 of WIPO Overview 3.0 and the “Oki Data test” (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
The Respondent offered “A320” aircraft training materials on his website and the Panel compared such use to that of “unauthorized resellers”.
The Respondent placed the following disclaimer in the top portion of his website:
While dealing with the four elements of the “Oki Data test” the Panel expressed some concerns regarding the Respondent’s position:
- Potential public safety implications of unauthorized publications in the area of air transport on the one hand, and on the other hand, the potential utility of third-party training materials;
- While the Respondent’s disclaimer was described by the Panel as “accurate and prominent” and, in the Panel’s view, served as an explanation that denied any affiliation with the Complainant, this disclaimer, in the opinion of the Panel, could “be removed with a single click” and
- The term “guide”, in the Panel’s opinion, may either be seen as “as suggesting endorsement or sponsorship” of the trademark owner or negate such endorsement or sponsorship, “depending on the broader case circumstances”.
The Panel finally relied on the “totality of factors” approach referring to the decision in Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, WIPO Case No. D2022-0473 (“Momsdemand”) and found in favor of the Respondent on the second UDRP element.
The “Momsdemand” decision dealt with a free speech/criticism case and considered “totality of factors” approach as an alternative (or in addition) to the “impersonation test” in free speech and criticism cases. The “Momsdemand” decision was analyzed in the ICA UDRP Digest by Zak Muscovitch (see here) and described as “a significant contribution to the case law regarding legitimate non-commercial use of a domain name”.
However, the <a320guide .com> case was about nominative fair use by resellers / service providers rather than criticism/free speech and the Respondent’s use of the “A320” mark was commercial. Yet the Panel felt necessary to rely on the “Momsdemand” decision to look for further guidance.
WIPO Overview 3.0 in par. 2.8.2 offers some additional assistance as to the composition of a disputed domain name in “nominative fair use” cases and notes that usually the “Oki Data Test” cases involve “a domain name comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”)”.
In the <a320guide .com> case the Panel, however, found that a descriptive term “guide” could be seen as a factor both for and against the Respondent and had to look at the broader circumstances of the domain name use by the Respondent.
Another interesting aspect of the <a320guide. com> decision is Panel’s analysis of the disclaimer and the third element of the “Oki Data Test” or “accurate disclosure of the site’s relationship with the TM owner”. Presence of a disclaimer is often, but not always, decisive, and the third “Oki Data” element is usually a crucial one in nominative fair use UDRP cases.
In <a320guide. com> the disclaimer helped the Respondent’s case, yet the Panel concluded that any disclaimer can easily be removed and this would change the site’s perception by the visitors and eliminate accurate and prominent disclosure.
It will be interesting to see how the third “Oki Data test” element (e.g. presence or absence of a disclaimer) will be viewed by UDRP panels in future and to what extent “totality of circumstances” will be taken into account by future UDRP Panels in “nominative (fair use)” cases.
Wizarding World v. World of Wizarding
Panelist: Mr. Dennis A. Foster
Brief Facts: The Complainant is an established film and television production company based in the USA that has existed for many years. One of its successful productions involves a motion picture with sequels based on the well-known Harry Potter novels. In conjunction with marketing many products related to this franchise, the Complainant has registered the WIZARDING WORLD service mark with several authorities, including the USPTO (July 7, 2020). The Complainant alleges that the Respondent fails to use the disputed Domain Name for a bona fide offering of goods or services or for legitimate non-commercial or fair use because the disputed Domain Name leads to a website that offers tickets to services and merchandise that suggests an association with the Complainant’s mark and thus infringe on and compete with the Complainant’s offerings. Further, the Respondent’s disclaimer, posted at the bottom of the Respondent’s webpage attached to the disputed Domain Name, does not legitimize the Respondent’s use of the disputed Domain Name.
The Respondent contends that it is an event-planning agency that for nine years has hosted a holiday event called “A Wizard’s Christmas.” This event features a fictional place in the magical world called the Alabaster School of Witchcraft and Wizardry, which offers dinner, theatre-style performances and a marketplace with magical shops, boutiques and food. It is marketed to audiences that include fans of books and films relating to Harry Potter, Lord of the Rings, Percy Jackson and The Hobbit. The Complainant under additional response alleges that the Respondent uses the disputed Domain Name to promote events that are designed to attract fans of the Harry Potter franchise, clearly infringing on Complainant’s marks and competing with the Complainant’s offerings, which is not “a bona fide offering of goods and services” consistent with the Policy.
Held: The Panel finds that the goods offered for sale on the Respondent’s website attached to the disputed Domain Name are quite similar to those offered by the Complainant under its service mark. This becomes very clear when the Respondent references Harry Potter fans as a target internet user audience, the same audience that the Complainant targets. Many prior Policy panels have decided that offering competing products via a domain name that is confusingly similar to a complainant’s mark fails to constitute “a bona fide offering of goods and services” under the Policy, and the Panel is in agreement with those decisions. Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name.
The Panel has found above that the disputed Domain Name is confusingly similar to the Complainant’s mark and that the website connected to the disputed Domain Name offers competing goods and services for sale. Therefore, the Panel concludes that the Respondent is intentionally attempting to attract, for commercial gain, internet users based on the likelihood of confusion with the Complainant’s WIZARDING WORLD mark as to the source, sponsorship, affiliation or endorsement of that website in bad faith pursuant to Policy. Further, the Panel notes that the disclaimer is barely noticeable and that the Respondent admits to creating that disclaimer only after having been recently contacted by the Complainant. Thus, in accordance with prior Policy decisions, the Panel decides that the disclaimer does not affect the Panel’s finding of bad faith in this case. Therefore, the Panel finds that the Complainant has proved that the disputed Domain Name was registered and is being used in bad faith.
Complainants’ Counsel: Annie Allison of Haynes and Boone, LLP, New York, USA
Respondents’ Counsel: Amy Sullivan Cahill of Vice Cox & Townsend PLLC, Kentucky, USA
Comment by Newsletter Editor, Ankur Raheja: The Complainant operates part of his business online through the <wizardingworld .com> Domain Name and registered the WIZARDING WORLD service mark with the USPTO on July 7, 2020. The disputed Domain Name <worldofwizarding .com> was registered on April 15, 2021, and redirects to a Shopify store named Wizard’s Christmas intending to target the same audience, that is, fans of books and films relating to Harry Potter. Accordingly, the Panel took the right view that offering competing products via a domain name that is confusingly similar to a complainant’s mark fails to constitute “a bona fide offering of goods and services” and also bad faith under the Policy.
Besides, the Panel noted that “the disclaimer is barely noticeable and that Respondent admits creating that disclaimer only after having been recently contacted by Complainant”, hence, it does not help the case of the Respondent, see Thirty & Co. v. Jake Marcum, WIPO D2016-1212, “Rather than curtail consumer confusion, the nearly undetectable disclaimer at the bottom of Respondent’s webpage merely confirms Respondent’s knowledge and bad faith disregard of Complainant’s rights.”). A similar position was upheld in the matter of Lemon Inc. v. Name Redacted, WIPO Case No. D2023-3892, wherein the Panel noted as well: “The disclaimer included at the bottom of the webpage does not alter the Panel’s finding, given the composition of the disputed domain name, any use is not likely to be considered ‘fair’ due to the risk of implied affiliation to the Complainant.” The disclaimer could be decisive in some cases, as pointed out in the previous comment but not in such matters involving a risk of implied affiliation.
The other way to look at this case, however, is that really this is not a cybersquatting dispute. Rather, the Respondent’s use of a Domain Name is merely ancillary and incidental to its business. The real question that arises is whether the Respondent’s event business, including its name, A Wizard’s Christmas, infringes upon the Complainant’s rights. That may not be a question suitable for determining under the UDRP. For example, see the matter of <stardustmiami .com> below, wherein the Panel held “the question of trademark infringement is beyond the scope of the present proceeding, which is summary in nature”.
Panelist Defers to Court in Parallel Court Proceeding
Panelist: Mr. Zak Muscovitch
Brief Facts: The Canadian Complainant is a car rental company with over 100 locations worldwide. The Respondent was previously an employee of an Indian Technology Company “Caledon”, which performed website development and IT work on behalf of the Complainant. The Complainant alleges that the Respondent is a party to and executed a certain Professional / Intellectual Property Purchase Agreement dated February 7, 2019, with Caledon, “which included domain names within the definition of Intellectual Property”. The Respondent subsequently resigned from Caledon on or about August 31, 2021, and agreed in writing as part of his resignation letter, to hand over all codes, passwords, tools, etc. There is, however, no specific mention of the Domain Name or any account holding the disputed Domain Name.
The Complainant further alleges that prior to the Respondent’s resignation, the GoDaddy account ostensibly holding the Domain Name “was transferred by Sam Athwal of Routes”, and seemingly indicating that Mr Athwal requested and arranged for the transfer of the Domain Name to his control on behalf of the Complainant. The Respondent contends that he purchased the disputed Domain Name in his personal capacity on October 28, 2019, and provides confirmation from GoDaddy. This confirmation, however, is not in respect of a new registration, but rather in respect of a “renewal” of the Domain Name. Accordingly, it appears that despite the Respondent’s contention, he in fact had registered the Domain Name prior to 2019 and subsequently renewed it in 2019.
Held: The IP Purchase Agreement does in fact include “domain names” as part of the intellectual property to be transferred. However, there is no specific identification of any domain names, including the disputed Domain Name. Besides, the email dated August 11, 2023, from GoDaddy provides for the transfer of the Domain Name, however, no details have been provided as to who transferred the Domain Name to Mr. Athwal – the Complainant or the Respondent. In any event, as of August 11, 2023, there is apparent documentary evidence demonstrating that the Domain Name was registered to the Complainant. However, it appears likely that prior to this point in time, the disputed Domain Name was registered to someone else, likely the Respondent who had likely registered it in his personal capacity on behalf of Caledon in his capacity as an employee of another organization. In other words, the Respondent’s registration of the disputed Domain Name was very likely to have been originally done on behalf of the Complainant or its affiliate, Caledon, who he was performing IT services for.
The Panel is concerned that despite both parties notifying the Panel in their respective pleadings that a lawsuit has been commenced by the Respondent in respect of the Domain Name and other related issues between the parties; neither party has provided a copy of the lawsuit to the Panel. Both parties appear to acknowledge that this lawsuit covers issues arising from the Domain Name to one extent or another and accordingly, the Panel is inclined to defer to the more robust abilities of a court to determine the just outcome in this dispute. This is particularly so given that the Panel is unable to determine whether the Domain Name was registered in good (i.e. at the Complainant’s behest) or bad faith (without the Complainant’s authorization) based upon the record. In short, the Panel is overall satisfied that with the more robust and suitable procedures available to the parties in a court proceeding, the parties will be able to obtain an appropriate determination of this dispute which appears to involve a somewhat broader business dispute rather than a discrete and straightforward case of cybersquatting.
Complainants’ Counsel: Shawn Ford of Henri & Wolf Inc.
Respondents’ Counsel: Vittal BR
Adjudicating Contractual Complexities and Prior Business Relationships, Outside Panel’s Purview
Panelist: Mr. Archibald Findlay SC
Brief Facts: The Complainant is a wholly owned subsidiary of Sun International Limited and part of the Sun International Group. The Sun International Group is a South African resort hotel and casino chain founded by the entrepreneur, Sol Kerzner. The Complainant owns and operates the internationally renowned SUN CITY resort and is the proprietor of the well-known trademark SUN CITY first used in 1979 and registered in many jurisdictions worldwide. The Complainant alleges that the Respondent acted in bad faith when registering the disputed Domain Name, especially considering the fact that the Respondent had been operating a water park located within the Complainant’s Sun City Resort, regulated over the years by a number of agreements, but that the terms of these agreements support the Complainant’s assertion that the Respondent was never authorized or entitled to register any domain incorporating the Complainant’s SUN CITY trademark.
The Respondent contends that his company had a close and mutually beneficial business relationship with the Complainant’s founder, Sol Kerzner and that the company name incorporating the Complainant’s mark was originally registered with his approval and authorization in February 1981. The Respondent further contends that the disputed Domain Name was in use and was the company’s official website until 2016 when it was changed to <suncitywaterworld .co .za>. Both parties admit that there is ongoing and pending litigation between them in the High Court of South Africa following the cancellation of certain agreements between the parties. The parties are awaiting a hearing date to be allocated.
Held: The Complainant has failed to provide sufficient evidence showing that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name because the Respondent’s company has previously used the disputed Domain Name in connection with a bona fide offering of goods. Accordingly, the Panel finds it sufficiently plausible the Respondent’s claim that authorization existed as early as 1981 and submits that the Complainant has failed to disprove the Respondent’s contentions. The submissions of both parties suggest that this case involves a business dispute that is beyond the scope of and not appropriate for a proceeding under the Policy but rather is more appropriately handled in a national court. (Luvilon Industries NV v. Top Serve Tennis Pty Ltd., WIPO Case No. DAU2005-0004: denying transfer where the respondent had previously been a distributor for complainant’s goods and noting that the UDRP’s purpose “is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trademark disputes”.)
The Respondent very likely registered the disputed Domain Name sometime during the existing contractual relationship between the parties. Allegations of bad faith aimed at a former distributor or licensee can only be properly understood in the full context of their prior history. It is also important to bear in mind that the Policy was designed to prevent cases of cybersquatting and it cannot be used as a means to litigate broader disputes involving domain names. The evidentiary and direct examination limitations inherent under the Policy do not permit the Panel to adequately address the questions and concerns raised above. As a result, the Panel finds that adjudicating the contractual complexities and business relationship between the parties, in this case, is beyond the Panel’s purview and the scope of a UDRP proceeding, which is designed instead to address circumstances of abusive cybersquatting. Therefore, the Panel believes that the dispute between the parties can only be decided in a more comprehensive forum.
Complainants’ Counsel: Adams & Adams Attorneys, South Africa
Respondents’ Counsel: Self-represented
Trademark Infringement Matters Can be Dealt With in Alternative Forum
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant is a casino and entertainment company, operating hotel and casino properties in the United States. The Complainant has rights in the STARDUST mark based upon the registration with the USPTO (January 30, 1990). The Complainant alleges that the Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use. Instead, the Respondent uses the Domain Name to pass off as the Complainant in order to offer competing goods and services. The Complainant further alleges that the Respondent registered and used the disputed Domain Name in bad faith, in order to promote a competing business. Also, the Respondent registered the disputed Domain Name with knowledge of the Complainant’s rights in the STARDUST mark. The Respondent did not file a Response during these proceedings.
Held: The Complainant submits (without supporting evidence) that the disputed Domain Name sometimes resolves to a travel booking website and hence the Respondent offers competing travel booking services. However, the disputed Domain Name resolves to a website, operated by the Respondent which, on its face, indicates that the Respondent operates an entirely legitimate business, namely a Miami hotel known as the “Stardust Hotel”. The Respondent’s Website does not either explicitly or implicitly make any reference to the Complainant or otherwise suggest an affiliation (other than the shared use of the trademark STARDUST for hotel services). However, the question of trademark infringement is beyond the scope of the present proceeding, which is summary in nature and hence the evidence that the Respondent operates a hotel in Miami is a sufficient basis to find that the Complainant has failed to demonstrate that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
The Panel acknowledges that the Respondent’s conduct may infringe Complainant’s STARDUST mark or amount to passing off and the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding. Panels have recognized that “[t]he Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”, see Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). The Policy is designed to deal with clear cases of cybersquatting, if the Complainant wishes to bring proceedings against the Respondent for trademark infringement or passing off such a proceeding is more appropriately brought in a court of competent jurisdiction.
Complainants’ Counsel: Daniel H. Bliss of HOWARD & HOWARD ATTORNEYS PLLC, Michigan, USA
Respondents’ Counsel: No Response