How is fuck3cx .com confusingly similar to 3CX?
The UDRP only applies where:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
The confusingly similar test is related to the legal concept of “likelihood of confusion…
Note: We will be taking next week off so there won’t be a Digest issued next week.
We hope you will enjoy this edition of the Digest (Vol. 3.32), as we review these noteworthy recent decisions, with commentary from our Director, Nat Cohen; General Counsel, Zak Muscovitch; and Editor, Ankur Raheja. (We invite guest commenters to contact us.)
‣ What is the WIPO Overview’s Approach to “Confusingly Similar”? (fuck3cx .com*with commentary)
‣ Is Complainant’s 20-Year Delay a Factor to be Considered in RDNH? (idealnutrition .com*with commentary)
‣ A School Eviction Proves Costly for the Complainant (victorinox-abuse .org)
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
The ICA will attend the Domain Days Dubai meeting Nov 1-2, 2023. This is one-of-a-kind event in the MENA region’s domain industry. The conference brings together a diverse crowd of Domain Investors, Registrars, Registries, Monetization & Traffic, Web 3.0 Domains, Hosting & Cloud Providers, SaaS providers, and Industry Enthusiasts.
Kamila Sekiewicz, Zak Muscovitch, and Ankur Raheja will be representing the ICA. We’d love to meet with any members of our UDRP Digest community attending, so please get in touch if you have plans to be there.
What is the WIPO Overview’s Approach to “Confusingly Similar”?
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant is the owner of International Trademark 3CX (figurative), registered on March 12, 2007, and it appears that the Complainant supplies computer-based telephone systems and software. The disputed Domain Name was registered on January 11, 2023, and the website associated with the disputed Domain Name is headed “an oppinion site” [sic]. Below a reproduction of the second level of the disputed Domain Name, the website contains the sub-heading “MY PERSONAL JOURNEY / with 3CX and accounts from compadres”. This material appears to be critical of the Complainant and/or its alleged business practices.
The Complainant alleges the website itself does not accurately disclose the Respondent’s relationship with the Complainant, the trademark owner; and the Respondent is trying to “corner the market” in all relevant domain names, thus depriving the Complainant, the trademark owner, of the ability to reflect its own mark in a domain name. The Complainant further alleges that by using the disputed Domain Name, the Respondent intentionally attempted to attract for financial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark. In an informal reply, the Respondent contended that the website associated with the disputed Domain Name is “an opinion site and is protected speech in the US where it is hosted”.
Held: The use of a domain name for non-commercial free speech can in principle support a legitimate interest under the Policy, see section 2.6 of the WIPO Overview 3.0. To support such fair use, a respondent’s criticism must not be a pretext for cybersquatting, commercial activity, or tarnishment. In the present case, the disputed Domain Name consists of a clearly expletive term coupled with the Complainant’s trademark and the content of the website associated with the disputed Domain Name describes the Respondent’s “personal journey with 3CX” and is critical of certain business practices in which the Complainant is alleged to have engaged, particularly with partner organizations. On an objective view of this composition, the Panel considers that it communicates to the English-speaking Internet user that there is no affiliation between the Respondent and the trademark owner.
On the whole, therefore, the Panel considers that Internet users viewing the disputed Domain Name and the related website would understand that it is very unlikely to be owned, sponsored, or endorsed by the Complainant. The Complainant has produced neither submissions nor evidence tending to show that the criticism concerned is commercial in nature and/or is a pretext for cybersquatting. The Panel notes for completeness that it does not require to assess whether the claims on the Respondent’s website are accurate, merely that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. At the same time, to the extent any content at a prima facie legitimate criticism site were proved to be false (and not merely asserted to be false) this could signal to the panel that the site (and the claimed criticism) was pretextual and not therefore likely to benefit from the Policy’s fair use safe harbor.
There is no evidence before the Panel that the disputed Domain Name has been registered and is being used in bad faith within the meaning of the Policy. Insofar as the Complainant may disagree with the website content, it may have other remedies in an alternative (court) forum.
Complainants’ Counsel: Alice Karlson, Cyprus
Respondents’ Counsel: Self-represented
Case Comment by ICA Director, Nat Cohen:
What is the WIPO Overview’s Approach to “Confusingly Similar”?
How is fuck3cx .com confusingly similar to 3CX?
The UDRP only applies where:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
The confusingly similar test is related to the legal concept of “likelihood of confusion”, which the U.S. Patent and Trademark Office explains as:
Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.
Is anyone seeing the fuck3cx .com domain name going to think, “That must be the website for the 3CX company”? No. There is no consumer confusion here.
Yet the Panel found fuck3cx .com to be confusingly similar to 3CX. The Panel found confusing similarity in reliance on WIPO’s Overview 3.0:
The Complainant’s mark is therefore recognizable in the disputed domain name, and that is sufficient for a finding of confusing similarity under the Policy. The fact that the additional word may be regarded as negative or pejorative is of no significance to the first element analysis (see section 1.13 of the WIPO Overview 3.0”).
Indeed, section 1.13 of WIPO’s Overview says in the relevant part:
A domain name consisting of a trademark and a negative or pejorative term… is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element.
This view is more fully expanded in section 1.7 of the Overview which states in part (emphasis added):
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
WIPO Overview’s approach to implementing the first element of the UDRP, as quoted in the excerpts above, is radically different than what the first element actually says.
WIPO Overview’s guidance is to disregard that confusingly similar is related to the likelihood of consumer confusion and instead to treat any domain name “where at least the dominant feature of the relevant mark is recognizable in the domain name” as confusingly similar.
Thus we find the following reasoning from the <ironfxscam .com> dispute, where in reliance on WIPO’s Overview, the inclusion of the word “scam” in the domain name is viewed as having no bearing at all on whether the domain name is confusingly similar to the mark:
Here the disputed domain name consists of the Complainant’s trade mark plus the negative term “scam”. Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The justification for disregarding the legal meaning of “confusingly similar” is that certain WIPO panelists believe that the Policy would be more effective if the “confusingly similar” standard was gutted of its meaning.
An early decision cited by the Overview for this approach is the <wal-martsucks .com> decision from 2000 (emphasis added):
The Panel specifically rejects Complainant’s argument that consumers are likely to be confused as to the sponsorship or association of a domain name that combines a famous mark with a term casting opprobrium on the mark…
The Policy was adopted to prevent the extortionate behavior commonly known as “cybersquatting,” in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners. This describes Respondent’s behavior. Thus, the Panel concludes that a domain name is “identical or confusingly similar” to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.
In other words, some panelists took the approach that despite it being obvious that associating a mark with a negative term in a domain name would cause no consumer confusion as to whether the domain name is associated with the mark owner, it would be better to ignore the confusingly similar requirement found in the UDRP since doing so would enable the Policy to address a broader range of cybersquatting. In adopting this approach, WIPO’s Overview in effect rewrites the Policy by replacing the well understood meaning of “confusingly similar” intended by the drafters of the UDRP with a new, rather meaningless, substitute definition of its own devising.
As WIPO expects its panelists to follow the Overview, and as new panelists are trained by WIPO to rely on the Overview, WIPO’s version of the first element has consistently supplanted the actual first element of the Policy as the operative way in which the first element is implemented in decisions issued by WIPO panelists.
Not all disputes are handled by WIPO and not all panelists choose to follow the WIPO Overview’s approach. Panelist David Sorkin argued in his dissent in the <vivendiuniversalsucks .com> dispute from 2001 (which predates the Overview):
On the other hand, the word “sucks” is used quite frequently within domain names (and elsewhere) to criticize, disparage, and ridicule — probably more frequently than any other single word in any language. The mere fact that some people may not fully comprehend the colloquial meaning of “sucks” is thus immaterial, at least absent evidence that many people understand the word to mean something that, when combined with the Complainant’s trademark, is confusingly similar to the trademark.
I would find that the domain name <vivendiuniversalsucks .com> is neither identical nor confusingly similar to the trademark VIVENDI UNIVERSAL, and would dismiss the complaint on this basis without reaching the questions of legitimacy and bad faith.
Sorkin reasons that to entirely ignore the meaning of words such as “scam”, “sucks”, “fraud”, “fuck”, etc. when assessing confusing similarity is unjustified. These are terms that bear directly on the likelihood of consumer confusion.
In the recent <paihvesshop .com> decision issued at Forum this past June, Sorkin considered WIPO’s Overview but chose instead to apply the Policy as it is written in finding that the <paihvesshop .com> domain name was not confusingly similar to the Complainant’s PAIR OF THIEVES mark despite the content at the website of the Disputed Domain Name reproducing the mark (See also the Digest comment here).
Sorkin is a Panelist at both WIPO (see here) and at Forum (see here). He was a panelist for short-lived UDRP provider, eResolution, before that. He has decided over 1,000 single-member disputes for Forum including over 100 so far this year alone. He was accredited as a WIPO panelist in 2001. Yet the record shows that WIPO has never, not once in 22 years, assigned him to a single-member panel.
How is this lack of appointment to be understood? Is WIPO putting its thumb on the scale by appointing panelists who adopt a trademark maximalist approach to re-interpreting the UDRP while sidelining panelists who adopt a more conservative approach of adherence to the Policy as written?
When the “confusingly similar” standard set forth in the UDRP is disregarding by WIPO panelists acting under the influence of WIPO’s Overview, findings of confusing similarity are made such as:
Perhaps it would improve the UDRP to remove the confusingly similar standard. Yet that is a policy decision to be made through ICANN with input from stakeholders, not unilaterally by a group of influential WIPO panelists who are dissatisfied with the UDRP as written and who took it upon themselves to rewrite it.
The WIPO Overview is not necessarily the final word in interpreting the UDRP nor does it necessarily reflect the view of all panelists, let alone stakeholders. Accordingly, panelists should continue to rely on the language of the UDRP and on their own critical thinking abilities and to take care to not elevate the Overview to the level of law as it is not always necessarily a reflection of a universally accepted view.
Is Complainant’s 20-Year Delay a Factor to be Considered in RDNH?
Panelists: Mr. Jeffrey J. Neuman (Chair), Mr. Scott R. Austin and Mr. Alan L. Limbury
Brief Facts: The Complainant is a healthy food manufacturer and provides healthy meals for delivery and sale through their retail locations. The Complainant has rights in the IDEAL NUTRITION mark through the Complainant’s registration with the USPTO (registered on July 14, 2020). The Respondent, an executive chef, registered the disputed Domain Name on October 30, 2002. The Complainant alleges that the Respondent has failed to make active use of the disputed Domain Name and that the Respondent offered the disputed Domain Name for sale to the Complainant through a broker. The Complainant further alleges that the Respondent uses the name “Ideal Nutrition” on its Website, and announces that a business identical to the Complainant’s business is coming soon. Lastly, the Respondent renewed its registration for the disputed Domain Name after the Complainant filed its trademark application, “so that the Respondent was on notice of the Complainant’s rights in the mark.”
The Respondent contends that the Respondent registered the Domain Name for the purpose of creating a website to provide e-commerce sales of products related to healthy eating and fitness and he created a website as early as 2003, while the Complainant did not even exist at that time. The Respondent further contends he did not initiate any attempt to sell the disputed Domain Name to the Complainant and only responded to the Complainant’s offer. The Respondent requests the Panel issue a finding that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding sufficient to support a finding by the Panel of Reverse Domain Name Hijacking.
Held: The Respondent here registered the domain name more than 14 years before the Complainant was organized as an LLC. The Respondent did not need any authorization to register and use the disputed Domain Name, which the Panel notes consists of two descriptive words that relate closely to the Respondent’s chosen profession. Moreover, a Respondent does not lose its rights or legitimate interests in a domain name simply because it does not maintain a website continuously. Nor does it lose its rights or legitimate interests in the domain name by responding and making a counter-offer to sell its domain name to a third party, including a subsequent trademark owner. In fact, even if Respondent’s only use of the domain name was to buy and sell this domain name, that would itself establish rights or legitimate interests under the Policy, provided the domain name was not registered to profit from and exploit a then-existing trademark owner.
The Complainant bases its argument on several UDRP decisions and believes the Policy does “not require a separate showing of bad faith use and registration, but suffices to establish both elements, even if the disputed Domain Name was registered prior to the trademark.” However, the Complainant’s reliance on these cases is misplaced and does not represent, nor has it ever represented, the consensus view of Panelists. This Panel agrees with the reasoning in Passion Group, Coolside, and South32, that the Complainant must prove that the disputed Domain Name was both registered and used in bad faith. Having failed to establish that the domain name was registered in bad faith, the Complainant cannot satisfy the bad faith prong of the Policy, as the Policy requires a conjunctive showing of both bad faith registration and use.
RDNH: After consideration of all of the evidence, the Panel is troubled by the fact that this action was taken more than 20 years after the domain name was initially acquired by the Respondent on October 30, 2002. Although there is no concept of the defense of “laches” in the UDRP context, this type of extensive delay in the enforcement of its rights is a factor that may be considered in favor of the Respondent having rights or legitimate interests in the domain name. The Panel believes it also may be considered in determining whether the Complaint was filed in bad faith. The Complainants represented by Counsel are held to a higher standard and as such should have known it could not succeed in this matter, also given that the disputed Domain Name was registered nearly 14 years before the Complainant alleged that it first used the mark.
Further, the Respondent never initiated contact with the Complainant to sell the domain name to the Complainant. It was the Complainant that initiated contact with the Respondent through a domain name broker. It was only after the Respondent rejected the Complainant’s offers that it initiated this action. This is a classic “Plan B” case: a complainant that is unable to purchase a domain name through negotiation files a UDRP action in a last-ditch effort to try and acquire the domain name. Moreover, the Complainant relies on a discredited legal theory espoused in a few cases between 2009 and 2010 on “retroactive bad faith” which does not, and has never, represented the Consensus view of UDRP Panelists. More specifically, the argument that the registration of the domain name in “good faith”, was renewed and transformed into a retrospective bad faith registration is in plain contradiction of what a complainant is obliged to prove under the Policy, namely bad faith registration and use.
Complaint Denied (RDNH)
Complainants’ Counsel: Michael Marcil of Gunster Yoakley & Stewart, PA, Florida, US
Respondents’ Counsel: Douglas M Isenberg of The GigaLaw Firm, Georgia, USA.
Case Comment by ICA General Counsel, Zak Muscovitch
Panelists are the unsung heroes of the UDRP. Typically, it is the successful party that receives the lion’s share of glory and it is their counsel who receives the lion’s share of fees. But Panelists are the ones that toil away in the background, often reviewing hundreds of pages of exhibits, analyzing complex facts and arguments, staying abreast of the case law, and delivering decisions which are open to criticism, all for relatively little in compensation. So when we see Panelists deliver particularly well-written decisions, which go well beyond what is minimally expected of them, particularly in light of their relatively modest compensation, their professional honour and contribution to the UDRP is to be commended. Such is the case here in the decision rendered by Scott Austin, Alan Limbury, and Jeffrey Neuman in his debut decision as chair of a three-member Panel. This decision is to be bookmarked for future reference as a very concise and helpful examination of retroactive bad faith and Reverse Domain Name Hijacking, in particular.
The facts and result in this case are not particularly unusual so I will not directly comment upon them. Rather, I will point out an interesting treatment of an issue. When analyzing whether the Complaint was deserving of a finding of RDNH, the Panel considered that “delay” could contribute to an RDNH finding. While recognizing that Panels generally do not treat delay as preventing a Complainant from filing a case or from potentially prevailing on the merits, the Panel nevertheless noted “that allowing more than twenty years to lapse prior to asserting rights to the disputed Domain Name is a factor to consider in Respondent’s favor…especially when looking at Respondent’s rights and legitimate interests in the disputed Domain Name and evaluating whether the disputed Domain Name was registered and used in bad faith”.
This is a considerably more robust formulation than what exists in the WIPO Overview 3.0 at Paragraph 4.17, which is also cited by the Panel and which merely states inter alia; “Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.” Nevertheless, it is the application of this consideration to RDNH that is most interesting. The Panel ultimately noted that “although there is no concept of the defence of laches in the UDRP context” [but see “A Re-Examination of the Defense of Laches After 18 Years of the UDRP”, Muscovitch and Cohen (January 15, 2018, CircleID], “this type of extensive delay in the enforcement of its rights is a factor that may be considered in favor of the Respondent having rights or legitimate interests in the domain name. The Panel believes it also may be considered in determining whether the Complaint was filed in bad faith.” Indeed, upon reflection, if a party brings a meritless Complaint as a Plan ‘B’ twenty years after the Respondent registered the Domain Name, surely that is a factor to consider when evaluating whether a Complaint is abusive and therefore deserving of a finding of RDNH.
Lastly, I also want to note the Panel’s particularly clear and unequivocal rejection of the concept of “retroactive bad faith”. The Panel stated, inter alia;
“Complainant relies on a discredited legal theory espoused in a few cases between 2009 and 2010 on “retroactive bad faith” which does not, and has never, represented the Consensus view of UDRP Panelists.” [emphasis added]
Complainant’s reliance on these cases is misplaced and does not represent, nor has it ever represented, the consensus view of Panelists.
In Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335, the three-member panel summed up the consensus view of panelists clearly by stating:
A small minority of UDRP panelists has in the past attempted to construe subsequent bad faith use of a domain name as reflecting back to bad faith registration, notwithstanding no evidence of any bad faith actually operating at the date of registration. This Panel does not adhere to that theory. The UDRP policy is clear in requiring that a complainant must show both that the domain name was registered in bad faith and that it is being used in bad faith.
Even those panelists who have advocated such an interpretation of the Policy still require there to be some evidence that the domain name has been used in bad faith in a manner which indicates a change of behaviour or other specific targeting of the complainant and its rights. The Complainant has not brought any coherent evidence even of any such bad faith use in this case.”
A School Eviction Proves Costly for the Complainant
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant has been the maker of the Swiss Army knife since 1884, which remains its core product. The Complainant is the owner of the VICTORINOX trademark, registered in multiple countries worldwide. The disputed Domain Name was registered on March 3, 2023, and the resolving website features a logo including a Swiss Army knife design which also states “STOP VICTORINOX” / “VIOLENCE AGAINST WOMEN”. The Complainant’s real estate management company owns a building in Tokyo, Japan, which was rented by a school for a number of years, with which the Respondent appears to be associated. At some point, a dispute arose culminating in the eviction of the school and its personnel from the building concerned. The Respondent and those associated with it are particularly aggrieved by the fact that the eviction allegedly took place during a day on which the school was in operation, resulting in injuries to the persons connected with the school.
The Complainant alleges that the disputed Domain Name comprises the Complainant’s mark plus a derogatory term not for criticism but rather for systematic disparagement in an extortionate manner, to demand a donation of a property, and a payment of USD $100 million, otherwise, the Respondent will not cease any and all media and social media campaign and protests. The Respondent contends that the disputed Domain Name is transparent and the associated website provides clear evidence for the allegations. The website protests against the alleged actions of the Complainant involving an unethical real estate contract, a claim for penalty fees in place of rent, and violence caused during an eviction ordered by the Complainant which proceeded without warning.
Held: Both of the Parties appear to accept the general principle that the use of a domain name for non-commercial free speech can support a legitimate interest under the Policy. (See for example, section 2.6 of the WIPO Overview 3.0). Here, the composition of the disputed Domain Name contains the Complainant’s mark with the word “abuse”, a term that the Complainant would be unlikely to use in order to describe itself. Thus the disputed Domain Name signals to an Internet user that there is likely to be material that is critical of the Complainant on the associated website. Moreover, the Respondent’s website content neither appears to be commercial nor to be tarnishment as it is generally understood within the framework of the Policy. This leaves the question as to whether the Respondent’s activities are genuine or merely a pretext for cybersquatting.
The Complainant effectively argues that the Respondent’s criticism goes beyond genuine non-commercial or fair use because the Respondent’s demands indicate that it is engaging in extortion and is threatening the Complainant with a continued media campaign unless these demands are met, including the payment of a substantial sum of money. In cases of this particular variety, involving alleged non-commercial criticism and issues of freedom of speech, the question of whether an act of one of the Parties might be defamatory, for example, is not something that the Panel is in a position to assess, albeit that this would typically trigger an assessment as to whether the criticism is pretextual. Here, the history of the Parties’ relations and dispute, which itself is independent of and long predates the registration of the disputed Domain Name, suggests that the Respondent’s criticism of the Complainant is not merely a pretext for extortion or cybersquatting.
The Respondent rather appears to hold a genuine belief that it, and those whom it represents, have been wronged by the Complainant and/or by the Complainant’s representatives. The Panel has greater difficulty in determining whether the Respondent’s belief could be said to be reasonably held (see item (ii) in section 2.5.2 of the WIPO Overview 3.0) as this would require a full analysis of the Parties’ landlord/tenant relationship, which is beyond the scope of this proceeding. It is conceivable that the Respondent’s activities might be curtailed by aspects of the civil or criminal law in whole or in part but the Complainant will need to explore those matters in other fora or with the competent authorities. In that context, the Panel notes that the present decision does not seek to endorse or condone the alleged actions of either of the Parties, and it is not addressed to the attention of any other forum that may ultimately be seized of the matter.
Complainants’ Counsel: Kellerhals Carrard, Switzerland
Respondents’ Counsel: Self-represented
Respondent Name Redacted Due to Identity Theft
<zelleandcustomer .com> and 48 others
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant supplies payment services under the mark ZELLE. In 2022, the Complainant processed some 2.3 billion transactions totalling USD $629 billion. The Complainant owns many trade marks for ZELLE including the US trademark registered on August 29, 2017. The Complainant operates websites at <zelle .com> and <zellepay .com>. The disputed Domain Names were registered between February and May 2023. There is no evidence that the disputed Domain Names have ever been resolved to active websites.
Procedural Issue: The Panel notes that the registrant names originally shown for each of the disputed Domain Names comprised the same privacy service customer identification number, which the provider’s terms describe as “unique”. All of the disputed Domain Names were registered during the same four-month period and with the same Registrar. The disputed Domain Names are in a similar format in that they all consist of the term “Zelle” followed by a range of descriptive terms, many of which are repeated in different domain names and none of them resolve to active web pages.
Moreover, none of the Respondents has come forward to object to consolidation. In these circumstances, the Panel is satisfied that the disputed Domain Names are subject to common control and that, in the circumstances, consolidation is fair and equitable to all parties, and also procedurally efficient.
Held: Having reviewed the record, the Panel notes the distinctiveness and reputation of the Complainant’s trade mark, the composition of the disputed Domain Names, the lack of any response, the likelihood that false contact details have been used, and the implausibility of any good faith use, and finds that, in the circumstances of this case, the passive holding of the disputed Domain Names does not prevent a finding of bad faith under the Policy.
The Center received a communication dated June 15, 2023, indicating that certain of the contact information used by the Respondent relates to an individual who has been a victim of identity theft. The Respondent appears to have included the contact details of one or more third parties when registering the disputed Domain Names. In light of the potential identity theft, the Panel has redacted each of the registrant names from this decision. However, the Panel has attached as Annex 1 to this decision, an instruction to the Registrar regarding the transfer of the disputed Domain Name, which includes the names of the various nominal Respondents. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated that Annex 1 to this decision shall not be published due to the exceptional circumstances of this case.
Complainants’ Counsel: Bryan Cave Leighton Paisner LLP
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
This case provides a good example of how Panelists should approach certain recurring fact situations and should be bookmarked for future reference.
When dealing with numerous cybersquatted domain names that are apparently registered to different respondents, it is important as the Complainant did here, to demonstrate that notwithstanding the different nominal registrants, common control exists. Inter alia, the Complainant provided evidence that the privacy service customer identification number was the same across all disputed Domain Names, the registrations occurred during the same four-month period, and the format of the Domain Names was similar. The Panel, therefore, was able to satisfactorily conclude that the same “name holder” registered all of them and they were therefore under common control.
Once in a while, we see cybersquatters using fake names to register domain names. But sometimes this is more than the proverbial “John Smith”. Sometimes this can take the form of actually using a real third party’s information even though they have nothing to do with the Domain Name. That was apparently the case here and the Panelist accordingly protected these innocent third parties by redacting the registrants’ names, but identifying them to the registrar so that the registrar would have a valid order upon which to effect the transfer. This appears to be a prudent course of action by the Panelist.
Lastly, Panelist Adam Taylor correctly considered inter alia, the crucial factors of; a) the degree of distinctiveness or reputation of the complainant’s mark; and b) the implausibility of any good faith use to which the domain name may be put, when determining whether “passive holding” can ground a finding of bad faith use. All too often, mere non-use of a domain name is the purported basis for a finding of “passive holding”, but this is incorrect. As the seminal case on passive holding, namely Telstra held, and as the WIPO Overview at Section 3.3 notes (which the Panelist cites), these aforementioned factors are crucial amongst several others in properly making a finding of passive holding.
Complaint Denied for Lack of Evidence
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant began operating in 2016, initially using its “innovative InQuik bridging technology… with the vision of providing disaster relief in the form of temporary bridges”. Over time, the Complainant’s products and services are used for “more permanent structures, which [are] quicker, safer, resilient and more cost-effective to build”. The Complainant holds various trademark registrations for the mark INQUIK, including Australian registration with a priority date of September 13, 2016, and a US registration dated March 13, 2017. The Complainant uses the domain name <inquik .com .au> to host a commercial website, since February 4, 2017. Apart from the details of two industry awards from 2019 and 2021, the Complainant offers no details or evidence about the extent of its advertising of the INQUIK mark or the actual degree of consumer renown attached to that mark.
The Domain Name was registered on January 7, 2006, and does not appear that it ever resolved to a well-developed website, or been put to any other active use. The website to which the Domain Name resolves shows a most rudimentary site with the following apparent hyperlinks: “HP Printer Ink cartridges”, “Fast”, and “Quick Lube Nearby”. The Complainant, through its domain name broker, had approached the Respondent with an offer to buy the Domain Name for USD $1,000. The Respondent never replied to this offer or to any follow-up message from the domain name broker. The Respondent did not file a formal Response in these proceedings, however, requested an extension to file a Response through an email communication. The Respondent further contends that it had registered the Domain Name ten years before the Complainant came into existence and began using the INQUIK mark.
Held: In view of the facts of the proceeding, the Panel has decided not to grant the Respondent’s extension request and will instead proceed with the decision.
The Panel concludes, on this record, that the Complainant has failed to carry its burden of proving that the Respondent registered and used the Domain Name in bad faith within the meaning of the Policy. The record shows that the Domain Name was registered a full decade before the Complainant even came into existence and began using the INQUIK mark. There is no basis in the record to suspect, much less conclude, that ownership of the Domain Name changed hands from a prior owner to the Respondent at some potentially relevant point in time, i.e., after the Complainant began using the INQUIK mark.
The record is also devoid of evidence supporting any allegation that the INQUIK mark is sufficiently well known that one might reasonably conclude that the Respondent, about whom little is known, was more likely than not aware of the mark when registering the Domain Name. Absent any evidence of bad faith registration of the Domain Name by the Respondent, the Complaint must fail.
Complainants’ Counsel: Coleman Greig Lawyers, Australia
Respondents’ Counsel: Schepps Law Offices, United States
Case Comment by Newsletter Editor, Ankur Raheja: The Complainant, represented by an attorney, appears not to have provided evidence addressing the issue of the Respondent’s claimed prior registration. In the circumstances where the Respondent claimed that the Domain Name pre-existed the Complainant by ten years, the Complainant should have undertaken at least some research in this regard before proceeding with this UDRP. Moreover, some research about the Respondent could have been assistance to the Complainant as the Respondent was apparently already named in a Transfer matter in 2021 (see here). As noted by the Panel, however, the Complainant failed to lead sufficient evidence to address these issues and the Panel appropriately dismissed the complaint on the record presented.
More interestingly, the Complainant initially filed this Complaint over two Domain Names: <inquik .com> and <inquick .com> (see here) and it seems that WIPO did not allow the Complainant to proceed against these Domain Names in a single Complaint, which were held by apparently different registrants. Therefore, the Complainant filed a fresh Complaint against <inquick .com> a month later in WIPO case no. D2023-2771 which was apparently subsequently terminated (see here).