Parties to a UDRP Should be Careful with and Forthright in their Submissions
Complaint Denied (RDNH)
Panelists: Mr. Aaron B. Newell (Presiding), Mr. Gerald M. Levine, and Honorable Bruce E. Meyerson (Ret.),
Brief Facts: The US Complainant has a US trademark for INDOOR BILLBOARD in connection with, inter alia, custom logo mats and bathroom products that can be used for advertising. It claims that it received notoriety in its INDOOR BILLBOARD name in respect of its business, including distributorship services, and that it is unaware of anyone else using the “INDOOR BILLBOARD” name with its products and services. The Respondent acquired the disputed Domain Name at a competitive auction for resale. It argues that it acquired the disputed Domain Name for its inherent descriptive / informative value and there are numerous parties that use the name INDOOR BILLBOARD in generic and/or descriptive ways.
Held: The Complainant’s trademark rights predate the Respondent’s acquisition of the disputed Domain Name. However, the Complaint is composed of unsupported assertions and only makes unsubstantiated, bald allegations. The Complainant alleges notoriety in its mark but provides no evidence to demonstrate any reputation at all, either a decade ago or currently. The Respondent, by contrast, provides sufficient evidence to allow the finding that the Respondent registered the disputed Domain Name for its inherent value as a descriptive term. The Respondent also demonstrates that “INDOOR BILLBOARDS” is used by a number of businesses and industry organizations to describe a specific type of advertising. Therefore, there is no evidence of bad faith use and/or registration.
RDNH: It is difficult to accept that the Complainant was in fact “unaware” of anyone else using the INDOOR BILLBOARD name with its products and services. The Respondent provided persuasive evidence not only of third-party businesses using the name “indoor billboards” as honest descriptions of their activities, but also of an industry body called The Indoor Billboard Advertising Association that uses the tagline Helping Advertisers Get Indoors – Indoor and Restroom place based media provided by approved IBAA Members Firms since 1998 and appears to hold an annual conference for those in the “indoor billboard” industry. It is critical that parties to a UDRP dispute are careful with and forthright in their submissions. The Complainant, despite having the benefit of counsel, pursued its case without any supporting evidence. Importantly, by making assertions that appear to be inaccurate in a way that, unchecked by the Respondent, could have given the Complainant an unfair advantage in respect of the outcome of the proceedings. Accordingly, the Complainant abused the UDRP and engaged in reverse domain name hijacking.
Complainants’ Counsel: Shawn M. Lindsay, Oregon, USA
Respondents’ Counsel: Jason Schaeffer of ESQwire.com, P.C. The Domain Name Law Firm, New Jersey, USA
Complainant Commenced Meritless UDRP Out of Frustration, Gets Hit with RDNH
Complaint Denied (RDNH)
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The US Complainant obtained a US trademark registration for BYFY June 22, 2021 – five months prior to commencing the UDRP proceeding – for transport of persons and goods and delivery, etc. The registration claims a date of first use in commerce of November 4, 2020. The Respondent is the Chief Technology Officer and co-founder of Cart .com, Inc. and states that he registered the disputed Domain Name in 2013 or 2014. The Complainant claims that the Respondent is not using the Domain Name and is holding it to improperly realize a commercial gain, as evident by Respondent’s conduct during negotiations with the Complainant for the purchase of the disputed Domain Name.
Held: The Complainant provides no evidence that it was sufficiently well-known at the time of the acquisition of disputed Domain Name by the Respondent. Accordingly, there is no basis in the record for inferring bad faith registration on Respondent’s part. This is fatal to Complainant’s argument that the Respondent registered the disputed Domain Name in bad faith. Besides, it is not evidence of bad faith that a domain name owner merely engages in negotiations to consider the sale of a domain name. Complainant’s own evidence in the form of pre-Complaint correspondence in August 2020 and September 2020 shows the Complainant approached the Respondent with a purchase offer for the disputed Domain Name, not the other way around. Regardless, the practice of registering a domain name for resale and to ask for a high price to sell a domain name is not by itself improper unless the Respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner or competitor.
RDNH: The Complainant acknowledges that the Respondent registered or acquired the disputed Domain Name well before Complainant’s earliest use of its BYFY trademark. It was incumbent on the Complainant to justify departing from the general rule that bad faith registration will not be found where the disputed Domain Name was registered before the Complainant acquired trademark rights. The Complainant made no such effort, other than the contention that the mere fact of engaging in negotiations that the Complainant initiated was evidence of bad faith. The preponderance of evidence indicates that the Complainant filed this UDRP complaint out of frustration after a failed effort to purchase a domain name that it knew or should have known was not registered in bad faith.
Complainants’ Counsel: The Bobadilla Law Firm, United States
Respondents’ Counsel: Fish & Richardson P.C., United States
PornHub Loses Descriptive Porn Games Hub Domain Name Dispute
Panelists: Mr. John J. Upchurch (Presiding), Dr. R. Hill and Mr. J. Bridgeman
Brief Facts: The Complainant provides adult-oriented material through its website at <pornhub .com>. It owns rights in the PORNHUB Trademark based upon registration with the USPTO dated September 10, 2012. The Respondent registered the disputed Domain Name on 12 October 2016 and uses it in connection with adult-oriented games. The Complainant claims that the Respondent uses the disputed Domain Name to pass itself off as affiliated with the Complainant. The Respondent argues that it uses the disputed Domain Name in connection with a bona fide offering of goods and services because the resolving webpage is used for its legitimate business as a hub for adult-oriented games.
Held: In the view of the majority, the disputed Domain Name consists of descriptive terms that are used precisely in connection with their dictionary-related meaning. The Complainant alleges that the Respondent is involved in other related activities. The Respondent denies the same but even if accepted, this reinforces Respondent’s claim of legitimate interests. Accordingly, the Respondent does have rights or legitimate interests in the disputed Domain Name, and the Complaint fails as to the critical second element.
Complainants’ Counsel: ROBIC, LLP, Canada
Respondents’ Counsel: Vladimir Guržij, Czech Republic
Was the Wrong Complainant Awarded the Domain Name?
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a software company with over 9 million users of its products. Since 2002, it has offered certain building modelling software known as REVIT and has an online presence at <revit .com>. The Complainant has multiple registrations of the REVIT trademark dated as early as 2002 in multiple jurisdictions, including China under Class 9. The software is available in multiple languages, including Chinese. The disputed Domain Name was registered on December 6, 2020 by the Chinese Respondent and is passively held. It resolved to a website primarily in Chinese and partly in English offering pornographic videos and displaying hyperlinks to gambling websites and mobile applications for download.
Held: The disputed Domain Name was registered in 2020, many years after the registration of the Complainant’s REVIT mark, including in China, where the Respondent is resident. The disputed Domain Name wholly incorporates the REVIT mark while the suffix “am” seems to be a random pair of letters. The Complainant makes available REVIT software in Chinese and that most of the top search results for “revitam” in the Baidu search engine relate to the Complainant’s REVIT mark and products. The disputed Domain Name formerly resolved to a website offering pornographic videos and displaying hyperlinks to gambling websites and offering mobile applications for download. The said use of the disputed Domain Name was in Bad Faith within the purview of the Policy. The current passive holding of the disputed Domain Name does not prevent a finding of bad faith.
Complainants’ Counsel: Donahue Fitzgerald LLP, United States
Respondents’ Counsel: No Response
Comment from ICA General Counsel, Zak Muscovitch: This case raises the question of whether the Respondent was actually targeting this particular Complainant, or possibly a third party entirely. The Panel noted that although the Complainant’s REVIT trademark was “clearly recognizable with the disputed Domain Name”, the Domain Name actually “corresponds to trademarks for REVITAM owned by third parties such as Biolab Sanus Farmaceutica Ltds.”, a Brazilian company. The Panel also noted that “despite no apparent connection” of the website’s content to REVIT, it was still “more likely than not that the Respondent had the REVIT mark in mind when he registered the disputed domain name”. To explain the discrepancy between the Domain Name and the Complainant’s trademark, and to explain the fact that the Domain Name corresponds to third party trademarks, the Panel suggested that the suffix “am” was added as a “random pair of letters” to the targeted REVIT trademark rather than because of the third-party trademarks which were actually REVITAM.
Apparently recognizing that he may have awarded the Domain Name to the wrong party without the consent of the corresponding trademark owner, the Panelist stated in a footnote that transfer order was “made without prejudice to the rights of third parties in the trademarks for REVITAM”. It is not explained how the REVITAM trademark owner could prevail in a UDRP against the Complainant in this case, when the Domain Name was awarded by a UDRP Panelist pursuant to the Policy.
This decision follows another loosely comparable situation as identified by Domain Name Wire concerning maYoPorno .com a Spanish language porn site, where “Yo” means “I” in Spanish such that in the absence of any targeting it would appear merely a coincidence that the four letter sequence “mayo” corresponds to the “Mayo” of the Mayo Clinic and that the Mayo Clinic may not have actually been the target of the Respondent, but yet was still the recipient of the Domain Name.
Descriptive Domain Name Saved in UDRP despite Corresponding Trademark
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant specializes in weather forecasting and reporting and has a website at <weatherusa .net>. The Complainant has a USPTO registration for WEATHERUSA dated, November 12, 2019 and claims common law trademark rights since 2001 through its extensive use, promotion, advertising, and public awareness of the mark. The Respondent acquired the disputed Domain Name in 2013 and uses it in connection with information and advertisements related to weather. The Complainant argued that the Respondent’s general offer to sell the disputed Domain Name and previous adverse decisions against it in other UDRP proceedings demonstrate bad faith.
Held: The Complainant does not establish that its WEATHERUSA mark is so well-known and ubiquitous that the Respondent’s 2013 acquisition of a domain name containing the words “weather” and “usa” was motivated by awareness of the Complainant. The disputed Domain Name resolves to a pay-per-click page with advertisements predominantly for weather services in the United States, similar to those offered by the Complainant but the said advertised services correlate directly with the descriptive words that comprise of the Domain Name. There is no other evidence from the Respondent’s website to infer that the Respondent ever used the Domain Name to take advantage of any reputation of the Complainant in the WEATHERUSA mark, as opposed to the descriptive meaning of the words comprising the Domain Name. The Respondent’s general offering of the disputed Domain Name for sale for a significant sum, does not by itself satisfy the requirements of the Policy.
Complainants’ Counsel: Bryce D. Miracle, Ohio, USA
Respondents’ Counsel: William Silvey of The Silvey Law Firm, Louisiana, USA
One Domain Name and Two Trademark Claimants
Panelist: Mr. Petter Rindforth
Brief Facts: The Swedish Complainant is in the building and construction business and owns a Swedish figurative trademark registration for LIQUID RUBBER dated, November 5, 2021. The trademark registration is opposed by the Respondent and is therefore not in legal force. The Respondent registered the disputed Domain Name on September 27, 2010 and is the owner of a Swedish figurative trademark registration for LIQUID RUBBER registered on December 1, 2021 in different classes from the Complainant. The Complainant Company was originally registered based on a business agreement between the Respondent’s Scandinavian distributor and a Swedish physical person D.S., as part of activities to market and sell the Respondent’s goods and services in Sweden. Later, D.S. sold the company to the Complainant at the end of 2020.
Held: The disputed Domain Name was registered more than four years before the registration of the Complainant Company. Therefore, the disputed Domain Name was not registered in bad faith. From the documentation provided by the Respondent, the disputed Domain Name is being used to sell Liquid Rubber – branded products and services and the Respondent has the right to use and register LIQUID RUBBER in Europe, including Sweden. The Respondent’s right to the trademark are valid, alone or side-by-side with the Complainant, and hence the use of disputed Domain Name cannot be seen as use in bad faith. Based on the evidence, this dispute does not look like a cybersquatting issue, but more like a possible trademark infringement or unfair competition case, which belongs in another forum and is beyond the scope of these proceedings.
Complainants’ Counsel: Titov & Partners KB, Sweden
Respondents’ Counsel: Groth & Co KB, Sweden