Website Content Assists in Demonstrating Confusingly Similarity and Bad Faith Registration
The three-member Panel rightly took note of the generic nature of the words comprised in the disputed Domain Name, noting that “Smoky Mountain” is a geographic signifier referring to “The Great Smoky Mountains that border Tennessee and North Carolina in the southeastern United States”… Read more here.
We hope you will enjoy this edition of the Digest (vol. 3.40), as we review these noteworthy recent decisions, with commentary from experts. (We invite guest commenters to contact us):
‣ Website Content Assists in Demonstrating Confusingly Similarity and Bad Faith Registration (mountainsmoky .com *with commentary)
‣ Nominative Fair Use Provides Defense and Leads to RDNH Against Insurer (countrycompaniesinsuranceclaimsajusting .com *with commentary)
‣ USPTO Supplemental Registrations Don’t Count Without Acquired Distinctiveness (iwoman .com *with commentary)
‣ Is Korian a Typo for Korean? (koriansex .com *with commentary)
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Website Content Assists in Demonstrating Confusingly Similarity and Bad Faith Registration
Panelist: Mr. Gerald M. Levine (Chair), Mr. Douglas M. Isenberg and Mr. Charles Kuechenmeister
Brief Facts: The Complainant in its joint operation is a family-owned business, conducting its boots business from as early as 1992. The Complainant’s representative Mr. Thorpe owns trademarks for the term SMOKY MOUNTAIN BOOTS in the United States and China (the jurisdiction in which Respondent is domiciled) and together with SMB operates retail operations for Western-style boots on its website at <smokyboots .com>. The disputed Domain Name was registered on May 16, 2022, and currently resolves to a webpage that impersonates the Complainant down to copying the Complainant’s logo and photographs of the boots as they appear on the Complainant’s official website at <smokyboots .com>, offering to sell its Western-styled boots at a discount. The Complainant calls the Panel’s attention to an earlier UDRP proceeding involving the Respondent impersonating another mark owner in the boot business in which the Panel found it liable for cybersquatting, Boot Barn, Inc. v. Domain Protection Services, Inc., Case No. D2022-3018 (October 10, 2022). The Respondent failed to submit a Response in this proceeding.
Held: “Smoky Mountain” is a geographic signifier and the Complainant is not the only mark owner who has chosen “Smoky Mountain” to prefix its product line. However, the Panels have long determined that inversion of letters and words may support confusing similarity in the proper case where the evidence establishes bad faith, in terms of WIPO Overview, 3.0, Sec. 1.15. The Panel finds that the Respondent is using the disputed Domain Name to pass itself off as the Complainant by activating a website that impersonates the Complainant. Under these circumstances, incorporating and inverting the dominant words of the Complainant’s mark are sufficient “to justify [the Complainant] moving on to the other elements of [its] claim for cancellation or transfer of a domain name,” Kidman, WIPO D2000-1415.
The Panel has further examined the evidence and finds that this faux website is a picture image of Complainant’s website at <smokyboots .com> down to copies of Complainant’s copyrighted logo and photographs of its offered boots. The impersonator invites Internet users to purchase Complainant’s goods at a discount and to pay for their purchases by credit card and by this means engages in a fraudulent scheme to dupe and scam innocent Internet users for their personal information and collect payments without delivering the goods. Taking this and the other circumstances together support the conclusion that the Respondent lacks rights or legitimate interests in the disputed Domain Name and is using the disputed Domain Name in Bad Faith. It follows from this that as the purpose is evidenced by its use, then the disputed Domain Name was also registered in bad faith.
Complainants’ Counsel: Lawrenceville, Georgia, USA, represented by Robert Thorp, Lawrenceville, Georgia, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch and Newsletter Editor, Ankur Raheja: The three-member Panel rightly took note of the generic nature of the words comprised in the disputed Domain Name, noting that “Smoky Mountain” is a geographic signifier referring to “The Great Smoky Mountains that border Tennessee and North Carolina in the southeastern United States”. Notwithstanding the inversion of the term, as geographic domain name it was open for registration by anyone, provided that the registration was in good faith. Here however, the evidence showed that the Respondent registered it as part of a scheme to pass itself off as the Complainant. The Panel noted the provisions of WIPO Overview 3.0, section 1.15, which reads: “In some instances, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed Domain Name.” Indeed, herein the Respondent has indulged in scamming internet users, by impersonating the Complainant, as the Panel notes in upholding Bad Faith: “Impersonation as a tactic to lure Internet users to purchase fake or nonexistent goods associated with a complainant is itself direct evidence of bad faith.”
Nominative Fair Use Provides Defense and Leads to RDNH Against Insurer
Panelist: Mr. Dennis A. Foster
Brief Facts: The Complainant is an established provider of various insurance services, having been in business in the United States since 1925. The Complainant conducts its operations under many registered service marks, including COUNTRY COMPANIES, which is registered with the USPTO (registered on Sept. 22, 1970). The Complainant operates online through its domain names <countrycompanies .com> and <countryfinancial .com>. The disputed Domain Name was registered on October 18, 2010, and resolves to a website that offers internet users access to insurance claims adjustment services against the Complainant.
The Complainant alleges that the Respondent’s website competes with the Complainant’s insurance services, even presenting the Complainant’s mark in the process. Furthermore, links on that website refer to Respondent’s offerings of insurance adjustment services with respect to some third-party insurance companies. Those uses are neither a “bona fide offering of goods or services”, nor a “legitimate noncommercial or fair use” in terms of the Policy. The Respondent cannot rely on compliance with the test suggested in the prior Policy decision, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). The Complainant further alleges that the Respondent is engaged in a pattern of registering and using domain names in bad faith with respect to more than twenty third-party marks attached to a phrase such as “claims adjusting.”
The Respondent contends that the Respondent is a public adjusting company whose business involves negotiating and adjusting claims against insurance companies such as the Complainant. As such, Respondent’s insurance claim adjustment activities constitute a legitimate business operation for which the disputed Domain Name is used. Moreover, the Respondent is an adversary of the Complainant, not a competitor of the Complainant. The Respondent further contends that the Complainant has engaged in reverse domain name hijacking. The Complainant is well aware of Respondent’s business, as the Respondent has adjusted claims against the Complainant for decades. The complainant has filed this Complaint in order to reduce the Respondent’s legitimate representation of claimants against the Complainant.
Held: As set forth in the UDRP decision rendered in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), the panel recognized that the Policy does not necessarily prohibit the inclusion of another party’s valid trademark or service mark within a domain name in all situations. To analyze the possible merits of nominative fair use in those circumstances, the panel in that case set forth the OKI DATA test. In this case, the Panel finds clear evidence that the Respondent is offering insurance claim adjusting services that make it not a competitor of the Complainant, but a legitimate adversary of the Complainant in seeking to alter insurance claims in favor of the Complainant’s clients and against Complainant’s monetary interests. Moreover, the Panel believes that any “contracting and repair services” offered at the Respondent’s website are simply a relevant and complementary part of insurance claim adjusting and, contrary to the Complainant’s contention, not a separate business operation conducted by the Respondent.
Furthermore, there is insufficient evidence in the Record to suggest that the Respondent is attempting to deceive internet users with respect to its offerings, as the website connected to the disputed Domain Name makes it clear that the Complainant is an adversary and not the owner of that website. Finally, as the Complainant has domain names based on its service marks, it is apparent to the Panel that the Respondent is not attempting to “corner the market” on similar domain names or to deprive the Complainant of reflecting its own mark in a domain name. Hence, the Panel is moved to find that, contrary to the Complainant’s contention in its filings, the Respondent can rely on satisfying the nominative fair use test enumerated in Oki Data Americas, Inc. v. ASD, Inc., supra, to legitimize its ownership of the disputed Domain Name, and it has done so. Accordingly, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed Domain Name.
RDNH: In this case, it has become clear to the Panel that the Complainant is well aware of who the Respondent is and the business that it conducts because the two have had an adversarial relationship for a decade and more. The Complainant failed to disclose this fact in the Complaint, which constitutes an element of bad faith. Moreover, given this relationship, the Complainant knew that the Respondent conducts legitimate insurance claim adjustment services under the disputed Domain Name, and thus would prevail as to the second element required under the Policy. Therefore, the Panel does find that the Complainant has engaged in RDNH in this case.
Complaint Denied (RDNH)
Complainants’ Counsel: Matthew L. Cutler of Harness, Dickey & Pierce, PLC, Missouri, USA
Respondents’ Counsel: Jason Harris, Illinois, USA
Case Comment by ICA General Counsel, Zak Muscovitch:
The facts are so similar to another case I recalled, that I figured it was another battle between the same parties. As it turns out however, it is a different Complainant but the same Respondent. The previous case that I had recalled was United Services Automobile Association v. Harris Claims Services, Forum Claim Number: FA2208002007801, September 27, 2022 <usaainsuranceclaimsadjusting .com>, a decision by a different Panelist, namely Gerald Levine. We covered the previous decision in Digest Volume 2.39. Like in the present case, both Panels denied the respective Complaints and found RDNH, upholding the Respondent’s right to use the Complainant’s trademark in the disputed Domain Names on the basis of the doctrine of nominative fair use.
Notably in both cases, the respective Panels applied the Oki Data test, but liberally construed it and took into account the broader circumstances of the Respondent being known to the respective Complainants as a legitimate claims adjuster and adversary of the Complainant.
If a third Complainant insurer considers bringing a similar case against the Respondent, let’s hope that they review these two previous and are dissuaded from bringing an abusive proceeding.
USPTO Supplemental Registrations Don’t Count Without Acquired Distinctiveness
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant is a social entrepreneur with a background in journalism, multi-media production, public relations, marketing, public speaking, and executive coaching. She owns the United States trademark registrations for the trademark “IWOMAN” (both registered on September 28, 2021 in the USPTO Supplemental Register; claimed first use: January 1, 2019). The disputed Domain Name was acquired by the Respondent in 2009 and currently resolves to a parked webpage. According to the archives available at the Wayback Machine, in 2014 the disputed Domain Name resolved to a website that contained information about pregnancy in women. The Respondent points out that the Complainant’s IWOMAN trademark is listed on the USPTO Supplemental Register, which means that it is descriptive and has not acquired distinctive status.
The Complainant alleges that the Respondent is not making a legitimate non-commercial or fair use of the disputed Domain Name, rather the Respondent is illegally cybersquatting and offering the disputed Domain Name for sale. Whereas, the Respondent maintains that he has legitimate interests in respect of the disputed Domain Name and that it was not registered and is not being used in bad faith. The Respondent contends that the disputed Domain Name was registered by him in 2009, and he developed a blog website at the disputed Domain Name in 2014 but it is currently down for further development and upgrades. The Respondent further contends that the disputed Domain Name consists of “common dictionary words ‘i woman’, which he has used to create a website addressed to women.
Held: As pointed out by the Respondent, the Complainant’s IWOMAN trademark is registered in the USPTO Supplemental Register. According to the official website of the USPTO, the Supplemental Register is a listing of non-mark designations (such as descriptive words) that are “capable” of eventually becoming a “mark.” The status of trademarks registered in the USPTO Supplemental Register is discussed in the WIPO Overview 3.0, section 1.2.2. The Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy, because under United States law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights. The Complainant has not put forward any evidence that its IWOMAN trademark has acquired secondary meaning or that it has become a “mark” that the relevant public associates with the Complainant. In the absence of such evidence, the Panel is unable to reach a conclusion that the Complainant has established rights in a trademark as required by paragraph 4(a)(i) of the Policy.
Since the Complainant has failed to establish trademark rights for the purposes of the Policy, it is not necessary to make a finding on the issue of rights and legitimate interests in the disputed Domain Name or the issue of bad faith. Nevertheless, the Panel notes that the Complaint would have failed on the other two grounds as well. The Respondent has submitted evidence that in 2014 the disputed Domain Name resolved to a website that featured content related to pregnancy in women. Further, as evident from the trademark certificates for the registration of the IWOMAN trademark, its claimed date of first use is January 1, 2019, which is almost five years after the date in 2014 for which the Respondent has shown use of the disputed Domain Name in relation to a website containing information about pregnancy in women, and almost ten years after the date in 2009 when the Respondent first acquired the registration of the disputed Domain Name.
RDNH: Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard. Panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH.
The present case is notable in that the relevant circumstances do not support any of the three elements of the Policy. The Complainant is represented by counsel who should have appreciated that the Complaint could not succeed as to each of these three elements, given the Complainant’s lack of relevant trademark rights and the registration and use of the disputed Domain Name years before the Complainant started using its IWOMAN trademark. In this situation, the Complainant must have known that it could not succeed but nevertheless filed the Complaint. This supports a finding that the Complaint was brought in bad faith.
Complaint Denied (RDNH)
Complainants’ Counsel: The Vanel Law Firm, P.C., United States
Respondents’ Counsel: Self-represented
Case comment by ICA General Counsel, Zak Muscovitch:
It is long-established that trademark registrations registered on the USPTO Supplemental Register don’t count, absent evidence of acquired distinctiveness. Panels should always examine US trademark registrations in order to confirm that they are on the Principal Register.
Something should also perhaps be said about Panelist Assen Alexiev’s finding of RDNH against the Complainant. Importantly, Panelist Alexiev notes that, “for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH”. As I have previously stated in my comments (See Digest Volume 2.18 and Digest Volume 3.22, for example):
“Some Panelists forget or decline to consider RDNH, especially in no-response cases, even though the Rules require the Panel to when the circumstances warrant. I have previously written in Digest 2.37 about Rule 15(e) and the obligation of Panelists to make an RDNH finding where warranted.”
The Panelist also properly noted that “some panels have held that a represented complainant should be held to a higher standard”, though being represented is not a requirement for an RDNH finding against a Complainant (See for example, Easton Corp Pty Ltd v. Privacydotlink Customer 951873 / DNS Admin, Best Web Limited, WIPO Case No. D2016-1975).
It is startling to think that the Complainant, having just registered her mark in the Supplemental Register in 2021, could think that she could somehow be entitled to a domain name long pre-dating her rights and without demonstrating any acquired distinctiveness. Indeed, in a USPTO Office Action dated April 28, 2021, the Complainant was specifically advised that her application for registration on the Principal Register was refused because it was “merely descriptive” and as a result, amended her application to the Supplemental Register. Her counsel in both the trademark application matter and this UDRP proceeding, was the same, the Vanel Law Firm so it seems pretty clear that her counsel was aware of the limited nature of her registration. In finding RDNH, the Panel correctly noted that, “the Complainant is represented by counsel who should have appreciated that the Complaint could not succeed as to each of these three elements, given the Complainant’s lack of relevant trademark rights and the registration and use of the disputed domain name years before the Complainant started using its IWOMAN trademark”. RDNH is important in part, because hopefully it serves as a deterrent to otherwise conscientious counsel not making the same mistake twice.
Is Korian a Typo for Korean?
Panelist: Mr. Willem J.H. Leppink (Presiding), Mr. Flip Jan Claude Petillion and Mr. Georges Nahitchevansky
Brief Facts: The French Complainant, established in 2003, is a leading company in Europe that provides care services to the elderly and the vulnerable, notably through the management of retirement homes and specialized clinics. The Complainant is the exclusive owner of several KORIAN marks worldwide, including European Union trademark (registered on August 29, 2007). The disputed Domain Name was acquired by the Respondent as current registrant in January of 2008 and currently resolves to adult content. The Respondent contends that Korian is a common typo of KorEan. Korian is not a unique or coined term associated only with the Complainant. “Korian” is also a family name. The domain name <korian .com> was first registered by Peter Korian, a resident of New York, in 1999. It was sold to the Complainant in 2015 – well after the disputed Domain Name was registered.
The Complainant alleges that the disputed Domain Name has always been used to redirect users to another domain name which resolved to a pornographic website where the sign “Korian” (or “Korean”) is never mentioned. In its response, the Respondent claims that the disputed Domain Name is “intended to function both as an attraction to Asian people, seeking adult content and as a portal to adult content that contains models or themes having an Asian look.” However, there is no reference to the Republic of Korea or Korean people on this website, which targets the French public. Most of all, the pages of the website are in French language, which demonstrates that the Respondent is willing to target the French public – which is the core country of interest for the Complainant’s primary business.
Held: The Panel finds that the Complainant has failed to provide conclusive evidence that the Respondent targeted the Complainant or its KORIAN mark and thus registered the disputed Domain Name in bad faith. Although it can be accepted that the Complainant is well-known in its field as of date, it did not provide sufficient evidence that this was the case in 2008 when the disputed Domain Name was acquired (and thus registered). It is not clear when the Complainant’s reputation in its trademark rose to a level justifying an assumption that it is implausible for the Respondent to have registered the disputed Domain Name without having the Complainant and its trademarks in mind.
While it is true that the Respondent seems to be a professional domain name reseller, which may imply some good-faith effort to avoid registering and using domain names corresponding to trademarks, this does not mean that the registration of the disputed Domain Name would automatically be considered to be in bad faith (WIPO Overview 3.0, Section 3.2.3). In light of the extensive evidence submitted by the Respondent, in particular that the disputed Domain Name was acquired as part of a portfolio of adult related domain names, it seems more plausible that the Respondent registered the disputed Domain Name as a typo version of the term “korean sex”, than having the Complainant’s KORIAN trademark in mind.
There are also no additional circumstances following from the use the Respondent has made of the disputed Domain Name, that would lead to any assumption that the Respondent sought to exploit the claimed notoriety of Korian. In the Panel’s view, the fact that the website linked to the disputed Domain Name is also available in French (in addition to other languages) is insufficient to show any targeting of the Complainant by the Respondent. If the use of the disputed Domain Name was such an issue to the Complainant, one would think that the Complainant would have mustered much more evidence to show its notoriety over the years as opposed to mostly relying on post 2019 evidence.
Complainants’ Counsel: Scan Avocats AARPI, France
Respondents’ Counsel: Law.es, Spain
Case Comment by ICA General Counsel, Zak Muscovitch:
It just seems so unbelievable that a Respondent in the business of adult website content would register the disputed Domain Name because of a French retirement home company, of all things. Most people who see the Domain Name, KorianSex .com would probably not associate it with the retirement home company even if they were aware of it, and certainly after visiting the website. The Panel in this case did not describe the issue as I have, but ultimately it reached a similar conclusion, finding that the “Complainant has failed to provide conclusive evidence that the Respondent targeted the complainant or its KORIAN mark”.
Nevertheless, the Complainant has a right to be upset when its brand is being used in connection with a sex website, but that is at most, a matter of alleged tarnishment belonging in the courts, if anywhere.
If you think that it is a stretch to allege targeting of the Complainant in KorianSex, you will likely find it even more of a stretch that KorianMassage was found to be targeting the Complainant. In another recent case brought by the Complainant however, that is exactly what was found. In the Massage case, the Complainant alleged confusing similarity between the domain name and the Complainant’s trademark, but also alleged that the disputed domain name was used for PPC links relating to the Complainant’s services. It is unclear what these “related services” were, but when I visited the website two weeks after the decision was released, it showed massage links. Assuming that the links at the time were more directly related to the Complainant’s services, it would be evidence of bad faith use, but not necessarily determinative of bad faith registration in the first place. Indeed, it seems at least, if not even more farfetched to have registered KorianMassage to target a French retirement home company, than KorianSex. In any event, the Respondent did not respond, and the domain name was transferred.