We hope you will enjoy this edition of the Digest (Vol. 3.12), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and Editor, Ankur Raheja.
‣ UDRP Brought for Third Level Domain and No RDNH? (Slots .net *with commentary)
‣ Non-Use Versus Passive Holding (CocaineBear .com *with commentary)
‣ Prior Registered Domain Name – Common Law Rights? (GlassManager .com *with commentary)
‣ Informal Response Leads Panel to Determine Bona Fide Business (TuvPak .com *with commentary)
‣ Multiple Respondent – the Common Control Principle (FirstCallOnline .online and more *with commentary)
This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
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UDRP Brought for Third Level Domain and No RDNH?
Novomatic AG v. DomainClip Domains Inc., WIPO Case No. D2022-4590
Panelist: Ms. Ingrīda Kariņa-Bērziņa
Brief Facts: The Complainant is an international gaming technology company that produces gaming equipment, operates electronic and regular casinos and sports betting outlets, and offers services related to gaming and lotteries. It owns several trademark registrations, including the EU trademarks for PARTY SLOTS (August 7, 2008); CLEOPATRA QUEEN OF SLOTS (June 11, 2014); SLOTS PHAROAH’S FIRE (April 8, 2015) and N WORLD CHAMPIONSHIP OF SLOTS (September 28, 2015). The Complainant alleges that the disputed Domain Name is confusingly similar to Complainant’s marks containing the term “slots” and further combines the descriptive part of Complainant’s SLOTS trademarks with Complainant’s GAMINATOR mark at the third-level domain <gaminator .slots .net>, in order to mislead and poach Complainant’s clients.
The disputed Domain Name was acquired by the Respondent on January 18, 2011, who is engaged in the business of licensing domain names. The screenshot dated June 25, 2013 depicts a website with the header “slots .com”, and another screenshot dated March 17, 2018 depicts a site similar to the website at <slots.ca> to which the disputed Domain Name redirected at the time of this decision. The Respondent contends that he uses the term “slots” descriptively to provide the public with information that is connected to the dictionary meaning of that term. The Respondent further adds that it was unaware of Complainant or of the subdomain <gaminator .slots .net> until it received notice of these proceedings in December 2022 and that this subdomain does not return an IP record associated with the disputed Domain Name, indicating that it does not exist.
Held: As a threshold matter, the Panel notes Complainant’s references to its rights in the GAMINATOR trademark, which is or has been reflected in a third-level domain (subdomain) at <gaminator.slots.net>. The Panel notes that the UDRP is solely intended to resolve disputes between trademark owners and holders of second-level domain names which are identical or confusingly similar to the trademarks of the right holders. The UDRP applies to disputes involving second-level domain names because the ICANN Registrar Accreditation agreement requires ICANN accredited registrars to require second-level domain name registrants to agree to the UDRP. This is not (or at least not currently) the case in relation to third-level domains under the <slots.net> domain name. For that reason, Complainant’s arguments relating to any third-level domains will not be further treated in this Decision.
In comparing Complainant’s marks with the disputed Domain Name, the Panel finds that the disputed Domain Name is confusingly similar to the Complainant’s marks, as it comprises the word “slots”, which is a recognizable element of Complainant’s marks. However, the extent to which the “slots” component could be said to be dominant is not an issue the Panel needs to resolve in light of the overall findings.
The Panel notes that the Respondent registered a Domain Name consisting of a dictionary word and has, over a period of several years, used it to redirect to a website displaying information about online gaming, including slot machines, thereby using it in connection with the relied-upon dictionary meaning of “slots.” At the same time, however, given the ambiguous and contradictory nature of the evidence in the record, the Panel finds there is indeed some doubt as to how the disputed Domain Name was being used at the time of the filing of the Complaint. Given that the Respondent is not known by the name “slots”, and its control of the domain name <slots .ca> cannot be dated with certainty, and there is insufficient evidence to establish how the Respondent has used the disputed Domain Name at the relevant time. Therefore, the Panel finds that the Respondent has not clearly demonstrated its rights or legitimate interests in the disputed Domain Name.
The Panel is unable to find that the Respondent’s conduct amounts to bad faith. As mentioned, the Panel notes that the disputed Domain Name comprises a dictionary term. The Respondent provides credible evidence that the disputed Domain Name was used to resolve to websites at the domain names and with content corresponding to a dictionary meaning of the term “slots” coupled with the lack of any evidence that the Respondent targeted or even mentioned the Complainant, the Panel finds that the Complainant’s allegations of such targeting of its trademarks are not made out. In reaching this conclusion, the Panel notes the differences between the disputed Domain Name and Complainant’s marks. The Complainant has not established that attractiveness of the disputed Domain Name derives from Complainant’s trademarks rather than from other factors.
Complainants’ Counsel: GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria
Respondents’ Counsel: Gowling WLG LLP, Canada
Case Comment by ICA General Counsel, Zak Muscovitch: This week’s comments will regretfully have to be shorter than usual as I am taking a spring break. Many thanks to those readers whom I met in person at the recent ICANN meeting who told me that they enjoyed receiving and reading the weekly digest.
This is a very strange decision, I am afraid. Ultimately the Panelist got the disposition correct in denying the Complaint, however the route to getting there was difficult to comprehend. There is no question at all that the Domain Name is not confusingly similar to the Complainant’s trademark and the Panelist should have made this clear and dismissed on this ground alone. To consider that “slots” could be the dominative portion of the Complainant’s mark as the Panelist apparently did, cannot but make one wonder how the application of the UDRP to such a clear instance can be misapprehended.
Moreover, the Panelist’s failure to find legitimate interest despite evidence of use of the Domain Name in connection with its common dictionary meaning is inexplicable, though with some unclear evidence, we can perhaps give this a pass.
Somewhat baffling are the Panelist’s contradictory findings with regard to the scope of the Policy and RDNH. Here, the Panelist properly noted that the UDRP is simply not applicable to third-level domains and that was the thrust of the Complainant’s entire case, perhaps due to a lack of awareness of wildcard DNS settings. Yet the Panelist refused to grant RDNH despite an obvious misuse of the Policy, stating as follows:
”The conduct in this case does not fall under the category of Reverse Domain Name Hijacking. While Complainant did not succeed in establishing the three elements as required under the Policy, the Panel does not find that the Complaint was completely devoid of any facts or arguments that could support a finding that Respondent lacked rights or legitimate interests in the disputed domain name, nor its argument that Respondent must have registered and used the disputed domain name in bad faith. Rather, the Complaint put forward arguments that Complainant’s rights in a GAMINATOR mark could be linked to the disputed domain name through a third-level domain relying on evidence that was disputed as between the Parties and therefore inconclusive.”
Here it appears that the Complainant’s entire complaint was misconstrued for not only was the Complainant apparently not aware of wildcard DNS settings, it was also apparently not aware that the UDRP does not apply to third-level domain names, and was also apparently not aware that using a generic domain name such as slots.net for its dictionary use establishes legitimate interest. The Panelist’s unwillingness to make a conclusive statement as to the failures in the Complaint and the Panelist’s failure to make a deserved finding of RDNH falls short of the clarity of decision that could be hoped for from a Panelist in these circumstances.
Non-Use Versus Passive Holding
Kentucky for Kentucky LLC v. Camp Zinc, NAF Claim Number: FA2302002031224
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant owns rights in the COCAINE BEAR mark through registrations of two marks with the USPTO, registered since August 2022. The Complainant provides information that it owns the physical bear known as “Cocaine Bear”; sells Cocaine Bear Merchandise internationally through retail and the web; established the trademark and brand of “Cocaine Bear” with Amazon, where it was successful in blocking the sale of counterfeit “Cocaine Bear” merchandise. The disputed Domain Name was registered on May 28, 2022 and is passively held. The Respondent failed to submit a Response in this proceeding.
The Complainant alleges that it has licensed the name “Cocaine Bear” but not the IP to a multinational movie studio which produced and is releasing a film based on Complainant’s story (“Cocaine Bear” – Universal Studios), hence the Respondent has no rights to any of the Complainant’s intellectual property. The Complainant further alleges that the Complainant believes the Respondent is cybersquatting on the domain name with intent to sell it and relies on precedent of “…Mondich v. Brown (americanvintage .com) D2000-0004, the Panel determined that simple failure to make good faith use of the domain name indicated that the respondent’s primary intent was to sell.”
Held: The name “Cocaine Bear” is a well-known reference to a bear which died from an overdose of cocaine in 1985. The disputed Domain Name was registered on May 28, 2022, some three months before Complainant’s mark was registered with the USPTO and some weeks after the Complainant claims first use of the mark. However, there is no evidence of the extent of any such use by the Complainant from which it may be concluded that the Respondent, in Singapore, was aware of Complainant’s mark when registering the disputed Domain Name. The Complainant cites Mondich v Brown (supra) in support of its belief that the Respondent is cybersquatting on the domain name with intent to sell it. However, in that case the evidence supporting Complainant’s claim of bad faith included an offer by the Respondent to sell the Domain Name to the Complainant. Here there is no evidence that the Respondent sought or intends to sell the Domain Name to Complainant or anyone else.
The fact that the Domain Name does not resolve to an active website some eight months following its registration does not, without more, establish that it was registered and is being used in bad faith. In this respect, section 3.3 of the WIPO Overview 3.0 provides for important factors that a Panelist may consider given the totality of the circumstances in each case. Unlike the situation in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), the Complainant’s mark comprises ordinary descriptive words and there is no evidence that the mark is so distinctive or well-known that there is no plausible good faith use to which it may be put. Accordingly, despite Respondent’s failure to submit a response, the Panel finds that the Complainant has failed to establish that the Domain Name was registered and is being used in bad faith.
Complainants’ Counsel: Griffin Buckner of VanMeter, US
Respondents’ Counsel: No Response
Prior Registered Domain Name – Common Law Rights?
Tech To U Inc. v. Web.com Holding Account, CIIDRC Case No. 20207-UDRP
Panelist: Mr. Dhandapani Saravanan
Brief Facts: The “GlassManager” is the Complainant’s SAAS product (also available as web service), which was released in 2016 and has a number of North American Clients. The Complainant owns a USPTO trademark for “GlassManager” for over 10 months, which was filed on January 1, 2021 being first used in commerce on January 31, 2016. The State registration is valid from 24 May 2022. The disputed Domain Name was registered on August 21, 2017 and redirects to the registrar’s domain resale page.
The Complainant made a contact with the domain registrant through AfterNIC (a domain broker) for the purchase of the disputed Domain Name. The account executive of Afternic.com replied to the communication stating that they are brokering the disputed Domain Name on behalf of a private seller who listed it for sale with them and the seller is offering the Domain Name for sale at USD $50,000.
The Complainant alleges that the disputed Domain Name is being used as a redirection to Network Solutions domain resale page and the Respondent is demanding USD $50,000 for transferring the Domain Name and therefore, the Respondent has no rights or legitimate interest in respect of the disputed Domain Name. Further, that the Respondent’s only reason for registering the disputed Domain Name was to improperly profit from the sale of the disputed Domain Name or using it with parking services.
Held: Based on the documentary evidence being the certificate of registration of Trademark, it is proved that the Domain Name was registered with the knowledge of the Complainant. There is no evidence or defence at all rebutting the same. Hence, this Panel is of the considered view that the Respondent cannot have any ownership over the disputed Domain Name.
Based on the records, the Respondent does not have rights or legitimate interests in the disputed Domain Name as the Respondent’s current use is neither an example of a bonafide offering of goods and services nor is there a legitimate non-commercial or fair use of the disputed Domain Name. Further, the Complainant specifically asserted and proved that the registration of disputed Domain Name was only to improperly profit from the sale of the disputed Domain Name. There is no denial or evidence controverting the same by the Respondent. On the information before the Panel, the Panel finds that the Respondent registered and used the disputed Domain Name in bad faith.
Complainants’ Counsel: William Ross
Respondents’ Counsel: No Response
Comment by Newsletter Editor, Ankur Raheja:
CocaineBear .com GlassManager .com First Claimed Use June 5, 2022 December 31, 2016 Domain Name on May 28, 2022 August 21, 2017 Trademark on August 16, 2022 May 24, 2022
The above two cases bring out different approaches adopted by respective Panelists, given the similarity between the pattern of relevant dates. In the first matter of <CocaineBear .com>, in the absence of any evidence of common law rights, the Complaint was denied. However, the Panelist in <GlassManager .com> does not seem to have analyzed the evidence of Common Law rights given that the disputed Domain Name had a prior registration and the first use in commerce on a USPTO registration has no relevance.
Indeed, it is well established that the claimed date of first use in commerce on a US trademark registration certificate is, alone, not evidence of common law rights as of that date. Such assertions therefore need to be supported by evidence if they are to be used and they are frequently proved in these proceedings by evidence of the extent of the use of the claimed mark, advertising, sales, industry awards, media recognition and such like. But no such evidence has been adduced here by the Complainant, see: Empower Media Partners, LLC v. M. Jarrar, NAF Claim Number: FA2301002030007 (ICA Newsletter Vol. 3.11). For example, in Handy Guy Inc. v. Merlin Kauffman, FA 1998214 (Forum July 20, 2022), the Panel noted that “Nor is the claimed date of first use in the application definitive evidence that the mark actually was used and valid prior to the filing of the application.” See also JumpCloud, Inc. v. Peter Irion / SCS LLC, FA 1914971 (Forum Nov. 27, 2020) (with reference to the date of first use in commerce recited in Complainant’s US trademark registration certificate, the Panel noted that such “dates claimed by the trademark owner and not supported by evidence, has always been treated in UDRP proceedings with some reserve, rather than as evidence of when a trademark was in fact first used as a trademark.”).
Besides, the decision in <GlassManager .com> under the second and third prong of the Policy, seems to have mainly relied on the fact that the disputed Domain Name was offered for sale (Complainant contacted first), while the Domain Name investing (in dictionary words or combination thereof) has been universally accepted by UDRP, see: Academy, Ltd. v. Ramesh Singh, NAF Claim Number: FA2301002026883: “Respondent was very likely a domain investor and that this business is universally accepted as legitimate by UDRP panels. They also knew or should have known that their REDFIELD mark was relatively weak and in use by many individuals and entities throughout the United States at a minimum. Any reliance they may have placed upon constructive notice of their rights was utterly without justification in light of the almost universal rejection of that theory by UDRP panels, and they had no basis whatever to suppose that this Respondent had actual knowledge of them or their rights in the REDFIELD mark.” Also see our General Counsel Zak Muscovitch’s comment in ICA Newsletter Vol. 3.09, in relation to Redfield case, read here).
In this case, it is concerning that the Panelist issued a transfer order despite an apparent absence of evidence that the Complainant’s claimed few months of use of the term in commerce prior to the registration of the disputed domain name had developed secondary meaning in the minds of consumers such that the Complainant had established enforceable trademark rights in the “glass manager” term. Lacking such evidence, it would seem that the Complainant had no enforceable trademark rights in “glass manager” at the time of the domain name registration such that it would not be possible that the domain name registration could have been in made in bad faith to target the Complainant’s non-existing trademark rights in the term.
Informal Response Leads Panel to Determine Bona Fide Business
Tüv Nord AG v. ahsan rahman, tuvpak, WIPO Case No. D2022-4649
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant and its predecessors have provided independent testing and verification services under the mark TÜV since the 1860s. The Complainant’s group companies bear suffixes corresponding to their original geographical origin: TÜV SÜD, TÜV Rheinland, TÜV Nord, TÜV Austria, TÜV Saarland and TÜV Thüringen. The Complainant owns the German trademark (dated July 28, 1980), as well as the United Kingdom trademark (dated March 15, 1991). The disputed Domain Name was registered on January 5, 2021 and resolves to a website entitled “TUV PAK Inspection Services” with a logo including the words “TUV PAKINSPEC INSPECTION SERVICES”.
The Complainant alleges that given its distinctive trademarks are well-known in Europe and worldwide, the dominant element of the disputed Domain Name – “TUV” along with geographical suffix chosen by the Respondent reinforces the false impression of a connection with the Complainant. The Respondent sent an email during the proceedings, stating: “Greetings from Technical Unique Venture Pakistan (TUVPAK) This is for your kind information and record that “M/s TUVPAK” is registered in Pakistan with the name of Technical Unique Venture Pakistan as well as being taxpayer registered in Pakistan. Our logo and web is totally different and registered with us. We have nothing to do with your TUV and we have no affiliation with TUV which is mentioned in your email”.
Held: The Panel carried out some Google searches and found a Facebook page created in 2016, branded “TUV Pakistan Third Party Inspection” and bearing the same TUVPAK logo Websites of other businesses. The Panel duly issued the Order, inviting the Respondent to supply further evidence and also invited the Complainant to respond to any submission by the Respondent and/or generally to the Panel’s findings. Accordingly, neither the Respondent took the opportunity to explain its selection of its name nor the Complainant see fit to raise additional arguments under the second or third elements in light of the evidence of trading activity shown on the Respondent’s Facebook page.
However, it is apparent to the Panel that the Respondent seems to be carrying on a genuine industrial inspection business since at least 2016. Given the volume and nature of the Respondent’s Facebook posts, it seems highly unlikely that the Facebook page was designed to project a fake business, despite the dubiousness of some of the claims on the Respondent’s website. In this regard, the Panel also notes that the logos used by the Parties are materially different. In the Panel’s view, the fact that the disputed Domain Name reflects the name of an apparent genuine business that began trading at least four years or so before registration of the disputed Domain Name points towards the Respondent potentially having used the disputed Domain Name for a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy and/or having been commonly known by the disputed Domain Name under 4(c)(ii) of the Policy.
Nonetheless, it might still be open to the Panel to reach a different conclusion if there was clear evidence that the Respondent’s original adoption of its trading name was illegitimate. However, having carefully weighed up the available evidence in this case, the Panel does not consider that it is in a position to find that the Respondent’s registration and use of the disputed Domain Name were part of a broad scheme designed to illegitimately target the Complainant’s mark, and that the Respondent thereby lacked rights or legitimate interests in the disputed Domain Name. The Panel is mindful that the UDRP is a limited process, without the benefit of cross-examination, discovery etc., and it is not intended to be a substitute for intellectual property infringement court proceedings. This decision does not of course prevent the Complainant from litigating in a competent court if it considers that it has grounds to do so.
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This is an excellent example of a Panel conducting limited factual research based upon an informal Response and then taking the crucial step of inviting the parties to respond, which they both failed to do. The Panel then determined that the Respondent was a bona fide business absent any evidence showing otherwise.
Multiple Respondent – the Common Control Principle
O’Reilly Automotive, Inc. v. Priyal Parikh / VARUN REDDY DHONALA / zhang wei / zhangwei / Rasel Ahmmed, NAF Claim Number: FA2302002030466
<FirstCallOnline .online>, <FirstCallOnline .shop>, <FirstCallOnline .co>, and <FirstCallOnline .me>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant, an automobile supply company, owns rights in the FIRST CALL mark through trademark registrations with the USPTO (January 21, 1997). The disputed Domain Names were registered between 2020 and 2022 using privacy service. The Complainant alleges that the two of the Domain Names are used to pass off as the Complainant and one Domain Name is inactive. The Complainant further adds that the entities which control the Domain Names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. The Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents: The Panel is satisfied from the evidence that the Domain Names <firstcallonline .online>, <firstcallonline .shop> and <firstcallonline .me>, registered to Priyal Parikh / VARUN REDDY DHONALA / Rasel Ahmmed are owned / controlled by a single Respondent. Further, the Domain Names <firstcallonline .online> and <firstcallonline .me> resolve to identical unique websites, which is sufficient to indicate common control. However, the Panel finds that the Complainant has not sufficiently presented evidence demonstrating that the <firstcallonline .co> is controlled by the same entity that controls the disputed Domain Names.
The <firstcallonline .co> Domain Name is registered to a different named entity on a different date using a different registrar using different contact details. There is no evidence that the website at the <firstcallonline .co> Domain Name has anything in common with the Respondent’s websites; indeed the only similarity between the <firstcallonline .co> Domain Name and the remaining Domain Names is the nature of the Domain Name itself, which is not a sufficient basis to find the Domain Names are under common control.
Held: The Domain Name <firstcallonline .shop> resolves to an essentially inactive WordPress sample page, which does not by itself provide evidence of rights or legitimate interests. The Panel finds, on the balance of probabilities, that the Domain Name <firstcallonline .shop> is being held pending use similar to the remaining Domain Names. The remaining Domain Names resolve to the Respondent’s Websites which reproduce the Complainant’s mark, logo, and images of Complainant’s stores and provide other information about the Complainant.
The Respondent’s Websites purport to be official websites providing information about the Complainant’s online service portal and encourage visitors to provide their log-in details to them for the purpose of logging into Complainant’s online service portal. Such conduct is fraud or phishing and the use of a Domain Name to commit fraud does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use. The Panel finds that the Respondent registered and uses the Domain Names in bad faith as the Respondent used (or in the case of the Domain Name <firstcallonline .shop>, passively held the Domain Name <firstcallonline .shop> pending similar use) the Domain Names to impersonate the Complainant in furtherance of a phishing or other fraudulent scheme.
Transfer (Denied in Part)
Complainants’ Counsel: Ms. Renee Reuter, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This is an excellent example of a Panel appropriately weighing the evidence of common control and only transferring Domain Names that share the indicia of commonality. Sometimes Panels do not take this important step in differentiating based upon the evidence.