RDNH in Undefended Case: Evidence of Secondary Meaning and a Pre-existing Trademark is Required
Panelist: Mr. Terry F. Peppard
Brief Facts: The Complainant, established on November 14, 2013, provides water management and hydrocarbon reclamation services. The Complainant began using the ECOSTREAM mark to market its services on June 29, 2016 and it registered the Domain Name <ecostreamusa .com> on October 16, 2017. The Complainant argues it used the ECOSTREAM mark in commerce continuously since its inception and made significant investments in advertising and promoting its services under the mark, and thereby established common law rights in the United States.
The disputed Domain Name was first registered on May 5, 1999. The Complainant argues that though the Respondent used the ECOSTREAM mark in commerce before the Complainant, the Respondent abandoned it in 2008. Since October 2, 2016, the disputed Domain Name resolves to Respondent’s website at <eneco .co.uk>. Eneco is a venture capital and growth financing investor. The Complainant attempted to purchase the Domain Name from the Respondent on several occasions in 2016 and 2017, but the Respondent declined to sell it.
Held: The Complainant claims to use the mark in commerce since its inception without any evidentiary support as to sales revenues, advertising expenditures, or public awareness of the mark. The absence of such evidence makes Complainant’s claim of standing to pursue its Complaint against the Respondent insufficient to support a finding of common law rights in the mark satisfying the requirements of the Policy. The Policy requires the Complainant to prevail on each and every element of Policy in order to prevail in the proceedings as a whole. If, therefore, the Complainant fails as to any one of them, its case fails altogether. And, in that event, consideration of the Complaint may begin and end with examination of the element of the Policy as to which the Complainant failed to provide proof upon which it can prevail.
RDNH: The Complainant is represented by experienced legal counsel. The Complainant knew that the Respondent had acquired its Domain Name before the Complainant could have established common law rights in the ECOSTREAM mark. The Complainant offers no evidence to show that the Respondent procured its Domain Name registration in bad faith anticipation of Complainant’s acquisition of rights in its claimed mark.
The Complaint lacks merit and by proceeding under the Policy, the Complainant has attempted in bad faith to obtain the disputed Domain Name through abuse of the processes of the Policy what it could not obtain to its satisfaction through negotiation (often referred to as a ”Plan B” filing). As a result, the Complainant is guilty of Reverse Domain Name Hijacking as defined in the Rules.
Complaint Denied (RDNH)
Complainants’ Counsel: Eran Kahana of Maslon, LLP, Minnesota, USA
Respondents’ Counsel: No Response
RDNH in Undefended Case: Seventeen Year Old Domain Name
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant is the owner of the United States trademark GOODLIFE for clothing, registered on June 9, 2015. The disputed Domain Name was registered on September 24, 1998 and is inactive. The Complainant alleges that the Respondent did not use the disputed Domain Name in connection with a bona fide offering of goods or services or for any legitimate non-commercial purpose, but only for a landing webpage with no offering. The Complainant maintains that the Respondent is using the disputed Domain Name with the intent to mislead or divert customers for commercial gain by “holding the unused disputed Domain Name hostage for an exorbitant price tag”. The Respondent did not file any response.
Held: The disputed Domain Name was registered seventeen years prior to the registration of the Complainant’s GOODLIFE trademark and is composed of the dictionary words “good” and “life”, the combination of which can have various legitimate uses unrelated to the Complainant or its trademark. The Complainant does not explain the extent of renown of its mark in 1999 (its claimed first use in commerce) and moreover does not claim to have existed in 1998, when the disputed Domain Name was registered, and did not provide any evidence that the Respondent targeted the Complainant or its GOODLIFE trademark at any point of time. The Policy requires the Complainant to establish that the Respondent both registered and used the disputed Domain Name in bad faith. Since the Complainant failed to establish bad faith registration, the Complaint must fail, and it is not necessary to decide whether the disputed Domain Name has been used in bad faith. Nevertheless, the Panel notes that there is no evidence of any use of the disputed Domain Name after its registration, and the Complainant’s allegation that the Respondent attempted to sell the disputed Domain Name to it, is not supported by any evidence.
RDNH: The Complainant is represented by the counsel and should have taken into account that the Respondent owns the disputed Domain Name, seventeen years prior to the registration of the Complainant’s GOODLIFE trademark and nearly a year before its claimed first use in commerce, and should have appreciated the established Policy precedent as well. It would be incumbent on the Complainant to advance any facts supporting a claim to a later acquisition of the disputed Domain Name by the Respondent, if such fact exists. The Complainant should have also appreciated the lack of any evidence of targeting of the Complainant by the Respondent through the use of the disputed Domain Name. In view of the above, the Complainant should have appreciated that it would not be able to prevail on the issue of bad faith under the Policy. On the basis of the above, the Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Ritholz Levy Fields LLP, United States
Respondents’ Counsel: No Response
American Dentist vs. UK Trademark Owner – who got Dentally .com?
Henry Schein One, LLC, Software of Excellence United Kingdom Limited, Henry Schein One Australia and Henry Schein One New Zealand v. Arjang Raoufinia / Arjang Raoufinia DDS, NAF Claim Number: FA2203001990411
Panelist: Mr. Eugene I. Low
Brief Facts: The Complainant is a UK-based dental software and services company. The Complainant owns rights in the DENTALLY mark through the registration of the marks in EU and UK from February 29, 2020 and in Australia and New Zealand from 2021. Through its predecessor-in-interest NJ Technologies Ltd., the Complainant registered the Domain Name <dentally .co> on January 1, 2013 and began using the Domain Name to advertise and promote its DENTALLY product in 2014. The Complainant also owns and uses other Domain Names including <dentally .co.uk>, <dentally .com.au>, and <dentally .co.nz>. The Respondent purchased the disputed Domain Name from GoDaddy on June 10, 2021. The Respondent is a dentist in the United States and claims that he established a website to create a dental services subscription plan for new and existing patients who lack dental insurance. In August 2021, in response to an offer to purchase by Complainant’s agent, the Respondent offered to sell the disputed Domain Name to the Complainant in exchange for two bit-coins and also indicated to the Complainant that he was “about to launch our platform” and already “invested significant resources” marketing the disputed Domain Name. In addition, the Respondent expressly said to the broker: “I know dentally.co is one of your clients and this particular Domain Name will be a crucial asset which can only increase in value over time”.
Held: The Respondent’s platform is apparently a very simple website with no substantive or up-to-date content or offering of goods/services. While the Panel accepts the Respondent’s argument that there is no obligation on the Respondent to legitimize its interest or use of the disputed Domain Name within a certain timeframe, the relative inactivity and simplicity of its website does not sit well with its claim that the Respondent invested significant resources in purchasing and marketing the disputed Domain Name. This inconsistency is also highlighted by the lack of evidence from the Respondent to corroborate its claims about the marketing of the disputed Domain Name and that there is an established patient-base of subscribers using the Respondent’s ‘Dentally’ product. Further, when approached by the Complainant’s agent in August 2021, the Respondent expressed having knowledge about the Complainant.
The Panel further considers that there is a likelihood of confusion caused by the disputed Domain Name due to the confusing similarities between the disputed Domain Name and the Complainant’s mark, and that between the underlying goods and services which are both in the dental field. Based on the Complainant’s submissions, the Panel is satisfied that the Complainant has been using it’s DENTALLY mark for its dental software products on a worldwide basis, in particular in Europe, Australia and New Zealand. While it may or may not be true that the Complainant did not build up a reputation for its DENTALLY mark in the United States, this cannot dispel the likelihood of confusion in the Domain Name context because Internet users can come from anywhere in the world; when they search for the Complainant’s DENTALLY products on the Internet, they may well be confused when they see the disputed Domain Name and/or the content of the Respondent’s platform. Accordingly, the Panel considers that there are circumstances indicating that the Respondent has registered the disputed Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of out-of-pocket costs directly related to the Domain Name, and/or that by registering and using the Domain Name, the Respondent is attempting to attract, Internet users to his website by creating a likelihood of confusion.
Complainants’ Counsel: Lauren Timmons of Alston & Bird, LLP, Georgia, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This decision is very troubling because the Panelist invoked a trademark infringement test in finding bad faith registration and use under the Policy. Clearly the facts showed that Respondent’s credibility suffered in the eyes of the Panelist, however this alone was apparently insufficient to the Panelist and the Panelist additionally made a finding of “confusion” between the Domain Name and the Complainant’s mark as a basis for finding bad faith. The Panelist expressly stated that, “[there is a] likelihood of confusion in the domain name context because Internet users can come from anywhere in the world; when they search for Complainant’s DENTALLY products on the Internet, they may well be confused when they see the disputed domain name and/or the content of Respondent’s platform”. Likelihood of confusion is of course a well-established test for trademark infringement but such a concept has no place under the Policy except insofar as the first-part of the three-part UDRP test is concerned.
Indeed, the first part of the test is a mere “standing” requirement and it alone cannot be a basis for finding of bad faith registration and use. Otherwise, the three-part test would become a mere one-part test of “confusing similarity”. The Panelist thereby imported what amounts to a classic trademark infringement test to harness a finding of bad faith registration and use, despite the Policy providing no such basis. A Panelist is required to find that a Respondent intentionally targeted the Complainant’s mark and additionally used the Domain Name in bad faith. Mere confusing similarity without targeting is totally insufficient under the Policy – even if it would be sufficient in a court action for trademark infringement.
The Panelist therefore appears to have made a serious error in invoking a trademark infringement test as a basis for transfer when such a test is foreign to the Policy. Compounding the error is that the Complainant apparently had no trademark rights in the United States where the Respondent resides and there was apparently no evidence of use of the Domain Name where the Complainant did have trademark rights. The Panel nevertheless found what amounts to “global infringement”, thereby implicitly extending the Complainant’s trademark rights – which are limited territorially – to a jurisdiction in which it had none. Whether or not the Panelist ultimately reached the right conclusion in this case is beside the point. It is the rationale provided by the Panelist which is contrary to the intention and provisions of the UDRP which raise the serious concern.
A Common Female Name Should Belong to a German Bath Manufacturer?
Panelist: Mr. W. Scott Blackmer
Brief Facts: The German Complainant, founded in 1952, manufactures and sells designer baths, shower trays, wash basins, and accessories internationally through retailers. The Complainant holds several BETTE trademark registrations including German registration dated June 5, 2003 and International registration dated August 14, 2003 that covers the United Kingdom. The disputed Domain Name was registered on February 14, 1998 and currently is inactive. The Complainant attaches screenshots from February 2022, showing a German-language landing page with pay-per-click (“PPC”) advertising links to third parties offering competitive products and with a link to SEDO website offering Domain Name for sale for 35000 GBP.
The Respondent argues that he is the original registrant of the disputed Domain Name and argues “My plans when I registered the domain, was to establish a female facing online betting site: Bette.com – ‘for girls who fancy a flutter.’ Further, as the name Bette is a common derivative of the name Elisabeth and as first name Domain Names are highly sought after, I have refused numerous offers from potential buyers over the years.” A representative of the Complainant contacted the Respondent in 2015, threatening him with legal action and offering to purchase the disputed Domain Name for EUR 1,000 (the Respondent declined).
Held: The Policy requires evidence of bad faith both in the registration and use of the Domain Name and the record here does not establish the likelihood that the Respondent was targeting the Complainant’s trademark when he registered the Domain Name in 1998. The Complainant did not make a sufficient record in this proceeding to establish that it had a protectable unregistered BETTE trademark in 1998, even with the unsupported statements of sales in the period 1996-98 mentioned in the Complainant’s belated supplemental filing. In any event, the Respondent’s reasons for registering the Domain Name based on a common female name are plausible, and there is no compelling reason to conclude that the Respondent must have been aware of the Complainant in 1998 and meant to attack the unregistered mark of a German manufacturer of bathroom fixtures. Notably, the Respondent did not contact the Complainant to offer the Domain Name for sale and held it for years without listing it for sale.
Complainants’ Counsel: Krieger Mes & Graf v.der Groeben PartG mbB, Germany
Respondents’ Counsel: Self-represented
Conclusory Statements Unsupported by Evidence is Insufficient
Panelist: Mr. John Swinson
Brief Facts: The Complainant is a software company that assists charities and educational institutions raise funds and donations. The Complainant’s subsidiary called JG US, Inc. owns the trademark registration for JUSTGIVING, before USPTO, which was filed on September 19, 2018 and claims a date of first use in 2001. JG US, Inc. is owned by the Complainant since 2017. The disputed Domain Name was registered on March 4, 2022. At one time, the disputed Domain Name was resolved to a registrar-generated page that included pay-per-click links in the German language. At the present time, the disputed Domain Name does not resolve to an active website. The Respondent did not file a formal Response.
Held: The Complainant must demonstrate that the Respondent registered the disputed Domain Name because of the Complainant’s trademark rights. The Complainant cannot meet its burden by simply making conclusory statements unsupported by evidence. The Complainant provides no evidence regarding the fame or reputation of the JUSTGIVING brand, or how the Complainant is using JUSTGIVING. The Respondent is located in Algeria, and there is no evidence that the Complainant does business in Algeria or that it is likely that a person in Algeria would be aware of the Complainant. The Panel notes that the disputed Domain Name is composed of two dictionary terms “just” and “giving”, and the Panel considers that it is probably merely coincidental that the disputed Domain Name corresponds to the Complainant’s trademark.
The only evidence of use is a temporary parking page, which at some unknown date had links in German. There is no evidence that these links attempt to divert traffic to competitors of the Complainant or trade off the Complainant’s reputation. In relation to bad faith use, the Complainant does not rely on the doctrine of passive holding to demonstrate bad faith use, in accordance with the principles set out in well-known cases. However, even if the Complaint so relied on this doctrine based on the evidence before the Panel, the Complainant does not meet the passive holding test. Therefore, the Complainant is unsuccessful in respect of the third element of the Policy.
Complainants’ Counsel: Soteria LLC, United States
Respondents’ Counsel: No Response
Can the Domain Name Comprising a Distinctive Mark, Provide Legitimate Interests?
Panelist: Mr. Rodolfo C. Rivas
Brief Facts: The Complainant, founded in 2004, operates a leading cloud-based commerce platform and is among the top 10 largest publicly traded Canadian companies by market capitalization. The Complainant offers its services through various websites, including those accessible through the domains <shopify .com> and <shopify .ca>. The Complainant owns US and Canadian Registration for the “SHOPIFY” trademark, registered since 2010 and 2011 respectively. The Complainant alleges the Partnership Program is free to join and allows Partners to experiment with the Complainant’s platform and enjoy various benefits. However, the ability to participate in the Partnership Program does not provide the right to secure domain names incorporating the term “shopify” within the respective domain names. Instead, it only grants the right to reproduce certain Shopify works and trademarks on the website in a fair manner, subject to the terms of the Shopify Partnership Program Agreement. The Respondent was terminated effective February 22, 2022, from the Complainant’s Partner Program for being non-responsive to the Complainant’s communications, such as to cease using the disputed Domain Name and cease impersonating the Complainant on that website.
The Complainant argues after that date, any display of Shopify Creative or Shopify Trademarks on the website was expressly without permission or authorization and constitutes trademark and copyright infringement. The Respondent argues that it offers website development services for anyone who is using Shopify and enhances the product of the Complainant. The Respondent claims legitimate interests and asserts it is not diverting consumers or tarnishing the trademark Shopify because it provides a disclaimer on its landing page, which states that only subscribers to Shopify can use the Respondent’s services and that the two companies are not related. Additionally, the Respondent has removed the Shopify partner badge altogether from the website since the closure of the partner account by Shopify.
Held: The Respondent does not deny many of the arguments and evidence provided by the Complainant. In some instances, it even reinforces some of the claims, while in some other cases provides an explanation that is not persuasive for its cause. Although some use of the Complainant’s trademark may be necessary accurately to describe the Respondents’ services, this would essentially be limited to some references, but having the trademark as the dominant feature in a domain name, raises several questions since it is the first thing an Internet user sees and an important means of attracting Internet users. Moreover, a use cannot be deemed bona fide if the disputed Domain Name constitutes trademark infringement. The Respondent’s assertion that it provides services that add value to the Complainant’s platform is a matter that stretches beyond the limited scope of a UDRP panel. The Panel notes that such assessments are usually the exclusive domain of the trademark owner. In sum, the Respondent’s use of the term “shopify” in the disputed Domain Name is infringing and falsely suggests an affiliation with the Complainant; notwithstanding the use of a disclaimer, it cannot be bona fide.
In this case, both the registration and use of the disputed Domain Name in bad faith can be found under the Policy, given the reproduction of the “Shopify” trademark, as well as the offer of similar services for the benefit of competitors of the Complainant, which are available on the website that resolves from the disputed Domain Name, as per evidence provided by the Respondent. The limited disclaimer aforementioned in the Respondent’s website indicates full knowledge of the “Shopify” trademark and does not serve to remove any likelihood of confusion. The text of the disputed Domain Name itself establishes the Respondent’s knowledge of the Complainant and its trademark at registration, and the Panel finds that the Respondent chose the disputed Domain Name to target the Complainant.
Complainants’ Counsel: Daniel Anthony of Smart & Biggar LLP
Respondents’ Counsel: David A. Kaplan, Esq