What is the Scope of the UDRP? Read this Week’s Cases! ICA UDRP Digest – Vol 1.15

Evidence of Good Faith Registration Outweighs Evidence of Limited Bad Faith Use 

360training.com v. DNS ADMIN / BEST WEB LIMITED – www.Bestweb.com, NAF Claim Number: FA2110001968877

<tips .com> 

Complaint Denied 

Panelist: Dawn Osborne, The Hon Neil Brown Q.C. and Mr. Alan L. Limbury

Brief Facts: The Complainant has rights in the TIPS mark based on use since 1983 and registration with the USPTO in 1989. The Complainant uses the TIPS mark to provide alcohol-related training. The Complaint annexed a screenshot of the website to which the disputed Domain Name resolved on October 12, 2021, which displayed five pay-per-click links, the first of which was “Alcohol Training”, contending that such use demonstrates bad faith registration and use under Policy. The Respondent acquired the Domain Name on March 2, 2006 and argues “Tips” is a commonly used English dictionary word which the Responded uses it in connection with its business of investing in generic domain names. The Respondent argues that it had never heard of the Complainant when it registered the Domain Name nearly 16 years ago and that the single inadvertent link was immediately removed once Respondent became aware of it.

Held: Bad faith use of the kind identified in Policy ¶ 4(b)(iv) is evidence of both bad faith registration and bad faith use but such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. The Panel accepts Respondent’s evidence that it registered the disputed Domain Name in 2006, together with many other dictionary-words, as part of its legitimate business of investing in generic dictionary-word and acronym domain names and that, at the time of registration and prior to the filing of the Complaint, Respondent was unaware of Complainant and its TIPS mark. Even assuming that Respondent’s use of the domain name in 2021 is bad faith use and constitutes some evidence of bad faith registration in 2006, the Panel finds that evidence outweighed by Respondent’s evidence. Accordingly, the Panel finds that Complainant has failed to establish that the domain name was registered in bad faith.

Complainants’ Counsel: Dwayne K. Goetzel, Texas, USA
Respondents’ Counsel: Zak Muscovitch of Muscovitch Law P.C., Canada


Bilingual Panelist Accepts Complaint in English and Response in Chinese

Klarna Bank AB v. 马腾 (Ma Teng), WPO Case No. DCN2021-0035

<klarnapay .com.cn> and others 

Transfer

Panelist: Mr. Matthew Kennedy

Brief Facts: The Complainant is a bank that provides online payment services since 2005 and in 2019, it processed about 35 billion U.S. dollars in online sales. The Complainant holds multiple KLARNA trademark registrations, including Trademarks in China and a Chinese website at <klarna.cn>. The Respondent is an individual located in China and argues registration on a first-come-first-basis. The registration date of the disputed Domain Names <klarnapay .cn> and <klarnapay .com.cn> is June 16, 2021 and for <klarnacloud.cn> and <klarnacloud.com.cn> it’s July 8, 2021. The Complainant requested that English be used as the language of the proceedings as the Respondent responded to the cease-and-desist letter in English which implies the Respondent understood the language.

Held: According to Article 8 of the Rules of Procedure: “Unless the parties agree otherwise or the expert group decides otherwise in special circumstances, the language used in the domain name dispute resolution procedure shall be Chinese.” The expert is familiar with Chinese and English. If the expert requires the complainant to translate the complaint into Chinese, it will cause unnecessary delays in administrative procedures and incur additional costs. In addition, the expert group believes that accepting the English version of the complaint and the Chinese version of the defense will not cause unfairness to both parties. The disputed Domain Names are recent registrations, while the Trademarks and <klanra .cn> were preceded them by almost a decade. KLARNA is a contrived word has no meaning in itself and is significant. The disputed Domain Names completely contained the Complainant’s KLARNA trademark, and added vocabulary related to the service provided by the Complainant, namely “cloud” or “payment” in English. Given the facts, the Respondent knew the Complainant’s KLARNA trademark when registering the disputed Domain Names, hence the Bad Faith.

Complainants’ Counsel: Silka AB, Sweden 
Respondents’ Counsel: Self-represented 


Trademark Issue of “natural Zone of Expansion” Beyond Scope of UDRP 

Swisher International, Inc. v. kirby mastrangelo, NAF Claim Number: FA2110001969097

<teamhempire .com> 

Complaint Denied 

Panelist: Mr. Jeffrey J. Neuman

Brief Facts: The Complainant is an international cigar company founded in 1861 and is a leading supplier of cigars and other tobacco products. The Complainant has trademark rights in “HEMPIRE” in connection with cigarette papers and cigarette rolling papers through its registration of the mark with the USPTO registered on September 7, 2010.  The registration has a first use in commerce date of October 31, 2005 and operates at <hempire .com>. The Respondent is the sole owner of the hemp boutique “Hempire LLC,” established in 2017, which originally operated as a brick-and-mortar CBD retail shop but during the COVID-19 pandemic the Respondent moved its business primarily online. The registration date of the disputed Domain Name is December 31, 2017. The Respondent argues that Complainant’s trademark rights in HEMPIRE extend only to the use of the term in connection with rolling papers and not to the products offered by the Respondent including CBD products, oils and creams containing hemp or hemp extract.  Complainant, however, argues that these products should be considered “related products” which cause a likelihood of confusion under United States trademark law. Complainant also asserts that Respondent was aware or should have been aware of Complainant’s well-known mark. It specifically claims that Respondent had an affirmative duty to conduct trademark clearance activities before adopting the subject domain.

Held: The requirement for registrants to conduct trademark searches was explicitly rejected by the drafters of the UDRP. Although there are some cases in which Panelists have required some level of diligence by professional domain name investors prior to the registration of a domain name, there is no evidence here that that Respondent is such a professional domain name investor. There are a number of disputed facts in this case that involve complex legal issues. To resolve these issues would require a complete evidentiary record, the opportunity to present witnesses, expert opinions, and to cross examine those witnesses and experts.  The evidentiary and legal issues, as well as others raised by this dispute, are not appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools. As such, the Panel here, like in a preceding case involving the Complainant, found it to be more likely than not that the present dispute is outside the scope of the Policy and that the status quo of the disputed domain name should be maintained until the parties can have its fate adjudicated through an appropriate forum.

Complainants’ Counsel: Elizabeth Lee D’Amore of Lucas & Mercanti, LLP, New York, USA.
Respondents’ Counsel: Steven J. Marullo of Law Offices of Steven J. Marullo, Massachusetts, USA.


Supplemental Filing Rejected in Dispute Over Descriptive Term 

Air Charter Service (Aust) Pty Ltd. v. AVMIN Pty Ltd, WIPO Case No. DAU2021-0029

<aircharterservices .com.au> 

Complaint Denied 

Panelist: Mr. Warwick A. Rothnie

Brief Facts: The Australian Complainant, incorporated in March 2012, offers air charter services and owns <aircharterservice .com.au> and <aircharterservice .com>. The Respondent is another Australian company, incorporated in 2011, offering similar services under the name “AVIM”. The registration date of the disputed Domain Name is December 4, 2020 and redirects to a website at <avmin .com.au>, with heading “AVMIN® AIR CHARTER SPECIALISTS”. The Complainant argues that the Respondent does not actually use that expression ‘Air Charter Services’ on its website.

Held: There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive, it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe. The expression “air charter services” is a descriptive term and is a fair and reasonable description of the services which the Respondent is offering through its website. The Complainant does not own a registered trade mark over the expression and apart from stating it adopted its corporate name and the domain names in 2012-13, the Complainant did not provide any further evidence to establish secondary meaning. As the Complainant does not rely on a registered trade mark, demonstrating the strength of its reputation in its name and any evidence of confusion and/or mala fide intentions of the Respondent was a core issue that it should have realized needed to be addressed especially given the descriptiveness of its name/mark. The obligation falls on the Complainant to advance the materials on which it relies in support of its case in its Complaint, not by way of a supplemental filing.

Complainants’ Counsel: Holman Webb Lawyers, Australia
Respondents’ Counsel: Self-represented


UDRP Not Appropriate Forum to Address Lapsed Domain

Dr. Alan Y. Chow, d/b/a Optobionics v. janez bobnik, NAF Claim Number: FA2110001967817

<optobionics .com> 

Complaint Denied 

Panelist: Mr. Aaron B. Newell

Brief Facts: The US Complainant has a registered US trademark for OPTOBIONICS in connection with medical devices, namely, retinal implants and accompanying apparatus, and surgical instruments used in their implantation and operation. The Complainant owned the Domain Name <optiobionics .com> up until sometime after 29 October 2020.Thereafter the Respondent acquired the Domain Name from Dropcatch and currently uses it to publish a blog relating to health and wellbeing. The Complainant approached the Respondent demanding that the Respondent return the Domain Name to it, to which the Respondent requested compensation of USD $1,850.

Held: There is a presumption that if someone acquires a lapsed domain name, the previous registrant is no longer interested in it. The mere fact that the Respondent acquired the Domain Name from Dropcatch is insufficient to raise a presumption that it should have constructive knowledge of the Complainant and its rights. The Respondent paid an elevated price for the Domain Name and is using the Domain Name for a health-themed blog. Accordingly, its request for compensation when contacted by the Complainant is not in and of itself evidence of bad faith registration. The circumstances where an active domain name lapses inadvertently are unfortunate. However, in the present circumstances, and based on the evidence made available to the Panel, the UDRP is not the appropriate mechanism for the Complainant to find satisfaction. If this was the fault of a third party as Complainant alleges, then Complainant may have other recourse.

Complainants’ Counsel: Timothy K. Sendek of Akerman LLP, Illinois, USA 
Respondents’ Counsel: Self-represented 


UDRP Best Suited for Clear Cases of Cyber Squatting 

Hostelworld.com Limited v. Contact Privacy Inc. / Jonathan Anderson, WIPO Case No. D2021-1851

<myhostelworld .info> 

Complaint Denied 

Panelist: Mr Robert A. Badgley

Brief Facts: The Complainant provides online travel agent and booking services for hostels and related services since 1999. The Complainant’s main website is <hostelworld .com>, was named in 2012 as the “Most Trusted Hostel-Booking Website” in a survey. The Complainant holds several registered trademarks for HOSTELWORLD .COM in various jurisdictions. The registration date of the Domain Name is February 15, 2021, while the Respondent claims that he registered the Domain Name previously in 2009 as well. The Wayback Machine shows that the website at the disputed Domain Name on June 11, 2011 as having a very rudimentary web page and references a company known as Pied-A-Terre. The Respondent states that he “re-registered” the Domain Name via Google Domains “for the purpose of solving an account security lockout issue with another email address” that Respondent is using. The Respondent states that his business includes inter alia, hostel management.

Held: This is a close call but ultimately, two key factors help the decision here. Firstly, there is insufficient evidence in the record that the trademark HOSTELWORLD. COM, even if registered at the time, enjoyed so much fame back in 2009 that one should conclude that Respondent was probably aware of the mark. Secondly, it appears that in 2011 the Respondent had a rudimentary website associated with the domain name and thereby provides some basis to conclude that the Respondent owned the domain name in 2009. Accordingly, the Respondent’s state of mind in 2009, not in 2021, is the material time. On this basis, the Panel is unable to conclude that Respondent more likely than not was aware of the Complainant’s trademark in 2009. Hence, the Domain Name registration is not in bad faith. The UDRP is designed to address clear cases of cybersquatting, while this dispute is perhaps best suited for a different forum, where allegations and evidence can be tested in a more rigorous manner than the UDRP process affords.

Complainants’ Counsel: Tomkins & Co, Ireland
Respondents’ Counsel: Self-represented