When it Comes to 3-Letter .Coms, Complainants Usually Fail
Three-letter .com domain names are generally amongst the most sought after because they often correspond to common abbreviations or are otherwise broadly used by many parties. As such, rarely is their value primarily or exclusively attributable to a single trademark holder, with notable exceptions being such brands as IBM, BMW, and KFC. It is for this reason that Complainants should think long and hard about whether they have the necessary proof of targeting to succeed in a UDRP, as unless the Complainant is particularly renown or has specific evidence of targeting, they will likely lose… continue reading here.
We hope you will enjoy this edition of the Digest (vol. 3.42), as we review these noteworthy recent decisions, with commentary from experts. (We invite guest commenters to contact us):
‣ When it Comes to 3-Letter .Coms, Complainants Usually Fail (iba .com *with commentary)
‣ Panelists Need to Check For Trademark Rights (zerocoder .com *with commentary)
‣ Excessive Sale Price is not the Sole Determining Factor (otpbank .com *with commentary)
‣ Is it Safe to Offer a Common Word Domain Name for Sale? (cappuccine .com *with commentary)
‣ Requirement to Show Secondary Meaning, in Case of Disclaimed Trademark (perfume-oils .com)
When it Comes to 3-Letter .Coms, Complainants Usually Fail
Panelist: Mr. Nick J. Gardner
Brief Facts: The Belgian Complainant was founded in 1986 as a spin-off from a Belgian university. It is a manufacturer of specialized medical equipment and its name is an acronym for “ion beam application”. The Complainant is the owner of a number of “IBA” trademarks, word marks include the Benelux trademark (June 21, 2005); and international registration (August 23, 2005). Additionally, it also owns device marks including Benelux trademark (registered on March 8, 1990; expired on March 8, 2020). The Complainant, in 2021, instructed the broker to seek to obtain the disputed Domain Name and to offer USD $2,500 for it. The broker responded that the disputed Domain Name is a premium domain name and will likely cost over USD $25,000.
The US Respondent registered the disputed Domain Name on April 17, 1995, and claims to have traded as “International Business Automation” since 1995 (produces screenshot from 2000 archive). The Respondent also owns <iba .net> and uses the same for email. The Respondent contends that the disputed Domain Name was stolen from him in 2000 and he had to go to Network Solutions to recover it (the FBI also got involved). The Respondent also contends that he did not know the Complainant existed until he was contacted in 2001 when the Complainant sought to purchase the disputed Domain Name from him, while there are many organisations whose abbreviated name is IBA and some are actually named IBA. The Complainant relies upon the Respondent’s renewal of the disputed Domain Name as evidence of bad faith. It says these renewals were made “for the sole purpose of selling it to the Complainant at an exorbitant price…”.
Held: There is no evidence before the Panel to suggest that the Complainant is well known or has any significant reputation outside its specialized field of activity. There are some three-letter acronyms where an organisation may have developed an extremely strong reputation in the term that allows wider inferences to be drawn. The Panel considers there is no reason to doubt the Respondent’s evidence that he had no knowledge of the Complainant and its IBA trademark when he registered the disputed Domain Name. In 1995 the only relevant registered trademark the Complainant owned was in the form of the IBA Benelux device trademark (which is now expired). The Panel concludes that on the evidence it is more likely than not that the Respondent did not register the disputed Domain Name with knowledge of the Complainant’s trademark nor with the intention of taking unfair advantage of that trademark, and cannot therefore have registered it in bad faith for the purposes of the Policy. Since the requirement under paragraph 4(a)(iii) is conjunctive, i.e., the disputed Domain Name must have been both registered and used in bad faith, the Complaint must therefore fail.
The Panel would in any event add that it does not consider there is any evidence the disputed Domain Name has been used in bad faith. There is neither an obligation on a domain name holder to make use of a domain name nor renewal of a domain name amounts to an act of bad faith. Lastly, there is nothing inherently wrong in asking a high price for a domain name which is legitimately held and the fact that the disputed Domain Name is, as the broker put it “a premium domain name” would mean that such a suggestion was not surprising. The Respondent has subsequently indicated to the Complainant that if it wants to purchase the disputed Domain Name it should make an offer. There is nothing wrong with this. Offering for sale, or inviting offers to purchase, a legitimately held domain name is not per se a bad faith use. It may well be the case that the Complainant would like to own the disputed Domain Name and finds itself at a disadvantage if it cannot, but these are not reasons supporting a finding of bad faith.
RDNH: The Complainant is professionally represented in this matter and, in the opinion of the Panel should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered nearly thirty years ago. Given the nature of the Policy and the multiplicity of previously decided cases dealing with similar issues in relation to short acronym-type domain names where there was a lack of targeting of the complainant’s mark, this was a case that had no reasonable prospects of success. Moreover, the evidence shows that over 20 years ago the Complainant was aware that it would need to purchase the disputed Domain Name if it wished to acquire it.
It also appears that the Complainant carried out some research which led to it being aware that the Respondent may have used the term “international business automation” in relation to his business. The Panel considers the Complainant’s failure to fully disclose exactly what its research comprised and what it had learnt as a result to be a material omission. The above findings are sufficient in the opinion of the Panel to justify the censure of a finding of RDNH. The Panel does not, therefore, need to address all of the other grounds the Respondent relies upon in relation to this issue.
Complaint Denied (RDNH)
Complainants’ Counsel: Sybarius, Belgium
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Comments this week will be brief as I am attending ICANN78 in Hamburg. A warm hello to all Digest readers who are also attending. Please say “hi” if you see me!
Three-letter .com domain names are generally amongst the most sought after because they often correspond to common abbreviations or are otherwise broadly used by many parties. As such, rarely is their value primarily or exclusively attributable to a single trademark holder, with notable exceptions being such brands as IBM, BMW, and KFC. It is for this reason that Complainants should think long and hard about whether they have the necessary proof of targeting to succeed in a UDRP, as unless the Complainant is particularly renown or has specific evidence of targeting, they will likely lose. As noted in Digest Vol. 2.49 in the comment about the TOX .com dispute, “Transfers of three-letter .coms, such as the recent (and undefended) case regarding TRX[.]com (which we covered in Volume 2.46 and which is now the subject of a US federal lawsuit), are exceptional. As ICA Director Nat Cohen noted in his CircleID article (October 26, 2022), of the 80 disputes on three-letter .com domain names since January 1, 2012 where cybersquatting was alleged, 77 were denied and RDNH was found 20 times. Nat Cohen also noted that of the three transfer decisions, two (namely, ado[.]com and imi[.]com) were challenged in court and overturned at the cost of hundreds of thousands of dollars, and one (ehf[.]com) was, as of the publication date of the article, still pending in court.
Here, the Complainant contended that it was well known, but the evidence was insufficient to demonstrate that its reputation extended to the point that the Respondent would have likely been aware of the Complainant’s reputation. As noted by the Panelist; “Having a large and successful business does not in itself establish a reputation in the name of the business outside the areas in which the business operates…The Panel accepts that the Complainant has for many years had a reputation in the term IBA in its specialized field of activity. There is however no evidence before the Panel to suggest that the Complainant is well known, or indeed has any significant reputation, outside its specialized field of activity.”
Likely with some realization that it didn’t have the goods on the Respondent, the Complainant relied on two very weak and problematic arguments. The Complainant argued that ‘a renewal constitutes a new registration’. This has been unequivocally rejected by consensus amongst panellists (See WIPO Overview 3.0 at section 3.9). The Complainant also claimed that it had a “better right” than the Respondent to the domain name since the Respondent was not “using” it. As the Panelist noted, this is simply wrong;
The Complainant’s suggestion that it has a better right to the Disputed Domain Name than the Respondent because the Respondent is not using it is simply wrong. Even if the Respondent is not using the Disputed Domain Name (and the evidence on this is unclear) there is no obligation on a domain name holder to make use of a domain name. Whilst “passive holding” of a domain name can in some circumstances support a finding of bad faith this requires there to be other factors indicating bad faith also present – see WIPO Overview 3.0 at section 3.3. That is not the case here.
In order for the Complainant to meet the second part of the three-part test, the Panel must find that the Respondent has “a total lack of any right or legitimate interest”; not merely that the Complainant has a purported “better” right or legitimate interest. As was confirmed in Borges, S.A., Tanio, S.A.U. v. James English (WIPO Case No. D2007-0477):
“Respondent need only show that he has “a” legitimate right or interest – which is what he has done. Respondent does not need to show that his rights or legitimate interests are better (however measured) than those of Complainant.” [emphasis in original]
Given these two aspects of the case alone, the Panelist was justified in declaring RDNH. But there was even more reason as set out by the Panel. It is unfortunate that cases such as these continue to be brought. There needs to be a better way of ensuring that counsel are aware of prevailing case law before commencing an abusive proceeding.
Panelists Need to Check For Trademark Rights
Panelist: Mr. Eduardo Magalhães Machado
Brief Facts: The Complainant claims to own rights to ZEROQODE, registered with USPTO on March 24, 2020, and June 30, 2020, respectively, (first use since June 14, 2017) in relation to Software; educational services; consulting services and so on. The Complainant affirms that its trademarks entitle it to the sole use of the term zeroqode and any derivations thereof, which would include zerocoder and zerocode. The Respondent purchased the disputed Domain Name from HugeDomains on December 5, 2022, for USD $2,295. The Respondent contends that its site went live that same day and he also has a pending trademark registration for ZEROCODER, in international class 35.
The Complainant alleges that, as all the products sold on the marketplace provided by the Respondent would be goods and/or services under which the Complainant’s trademark protections extend (international classes 9 and 42), there would be additionally further cause to believe the Respondent’s use of the disputed Domain Name would cause reasonable confusion for a consumer. The Respondent contends that the terms “zeroqode” and “zerocoder” would constitute weak trademarks and even be considered “merely descriptive” as they both make reference to a technique that allows users to build web and mobile applications using drag-and-drop features, without needing a knowledge or understanding of software programming.
Held: The Panel finds that the Complainant has not submitted that it has a registered trademark, nor common law rights over such trademark. This is because the trademark certificates provided by the Complainant demonstrate that the rightful holder of the ZEROQODE trademark is Mr. Terteryan, with whom the Complainant did not prove to have any type of relationship, in addition to not providing any evidence of the Complainant’s use of the ZEROQODE trademark. Accordingly, the Panel finds that the Complainant has not provided sufficient evidence to support its assertion that it has a trademark registration or common law trademark rights pursuant to Paragraph 4(a)(i) of the Policy.
In view of the Panel’s finding that the Complainant has not satisfied Policy 4(a)(i), the Panel may decline to analyze the other two elements of the Policy. Nevertheless, in the interests of completeness and as the issue of Reverse Domain Name Hijacking may become relevant, the Panel will address the remaining elements. The Respondent has successfully demonstrated rights and legitimate interest in the disputed Domain Name through his trademark application, demonstrable preparations to use the domain name and its online presence. In addition, the Respondent claims that the terms “zeroqode” and “zerocoder” are “merely descriptive”, as a result, the Panel proceeded with independent research and found various websites with the term “Zerocode” or a variation of it in their domain names or in the content of a website to identify the said technique.
The Respondent purchased the domain name in 2022 after the alleged common law trademark rights, its purchase cannot be understood as made in bad faith, since, as already explained, the term can be seen as merely descriptive of the products and services it provides through the domain name. In view of Respondent’s constant use of the domain name to provide its services and products since the month it purchased it, with no evidence that it has been trying to confuse the consumers as to thinking, the Respondent is somehow associated with the Complainant or it has been using in any way to damage Complainant’s business, the Panel finds that the Complainant has failed to provide evidence to support the requirement of Paragraph 4(a)(ii) of the Policy.
RDNH: The Panel finds both that the Complaint was brought in an attempt at Reverse Domain Name Hijacking and that it was also brought to harass the domain name holder. That is because the only evidence the Complainant attached to the case files was trademark registration certificates that were not able to prove that the Complainant had any relation to the holder of such trademarks. Also, the Complainant did not even try to prove that the Respondent had no rights or legitimate interests, or that the Respondent registered and used the domain name in bad faith, not even making reference to these elements. Bearing in mind that a counsel is representing the Complainant, such should have known it could not succeed in this matter by not attaching any evidence to the case files, or by not even mentioning the elements provided by Paragraph 4(a)(ii) and (iii) of the Policy.
Complaint Denied (RDNH)
Complainants’ Counsel: David L Sterrett of Sterrett Law, Plc, Massachusetts, USA
Respondents’ Counsel: Leonard Grayver of Grayver Law Group, PC, California, USA
Comment by Panelist, Steven M. Levy, Esq.:
Steven M. Levy, Esq. is the principal of the Accent Law Group, Inc. and is also a UDRP Panelist for the NAF, CIIDRC and the ADNDRC.
As noted in the decision, the Complaint in this case suffered from many shortcomings. The one that bears the most attention is its failure to prove ownership of trademark rights. In finding RDNH, the Panel stated that this is “because the only evidence Complainant attached to the case files was trademark registration certificates that were not able to prove that the Complainant had any relation to the holder of such trademarks.” Proving ownership of a relevant trademark has often been described as a “threshold” element of the UDRP under par. 4(a)(i). Here, the Panel was quite observant and noticed that the owner of the submitted trademark registrations was not the named Complainant. This critical element has sometimes slipped by as appears to have happened in two recent cases, Lucas Alvarez v. Stefen Biahof, FA 2047627 (FORUM July 9, 2023) and Lucas Alvarez v. Lotto Samule, FA 2062178 (FORUM Oct. 13, 2023). A brief online lookup of the submitted Chilean trademark registration numbers in those cases revealed that the business entities named as the owners seemed to bear no relation to the individual named as the Complainant. In neither case did the respective Panels make mention of this issue and transfers were ordered in both instances leaving the reader to wonder whether the named Complainant is legitimately related to the trademark owner or whether it’s someone gaming the UDRP system for nefarious purposes. While Rule 3(b)(xiii) requires complainants to certify “that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate”, the reality is that pleadings and evidence are not always prepared to an ideal level of competence or completeness. It then falls to the Panel to be the last gatekeeper of reliability that the submitted pleadings meet all of the requirements and that a fair and well-reasoned decision is ultimately issued.
Excessive Sale Price is not the Sole Determining Factor
Panelist: Mr. Andrew D. S. Lothian (Presiding); Mr. Petra Pecar; and Mr. Alfred Meijboom
Brief Facts: The Complainant is a commercial bank, founded in Hungary in 1949. To the Complainant, the acronym “otp” stands for “Országos Takarék Pénztár” which it says means “National Savings Bank” in English. The Complainant owns several figurative marks for “OTP BANK”, the earliest of which appears to be a Hungarian Trademark dated May 17, 1993. The Complainant is the registrant of the domain name <otpbank.hu> (February 5, 1998), and <otpbank.eu> (August 5, 2006). The disputed Domain Name was registered on February 14, 2000, and resolves to the website featuring the statement “OTP Bank is an international war sponsor. Please take your money elsewhere!” in several different languages. The Respondent contends that this content results from the website being hacked by a third party. The Complainant provides evidence showing that, as of June 26, 2023, the disputed Domain Name was also being offered for sale at a price of USD $4,700,000.18 on a website provided by the Registrar.
The Respondent describes himself as an enthusiast for piggy banks who “sought to stake her claim in the world of online piggy bank commerce” at the “dawn of the 21st century”. The Respondent produces historic screenshots for the website associated with the disputed Domain Name dated August 10, 2018, June 15, 2021, and December 19, 2021. The former two of these depict a website built in WordPress with images of piggy banks entitled “Old Timer Piggy Bank / Your Vintage Piggy Bank Destination” while the latter is a page produced by the Registrar stating that the disputed Domain Name is for sale. The Respondent further contends that the pandemic in 2020 impeded the momentum of the Respondent’s business, leaving the website associated with the disputed Domain Name capable of being sustained only to mid-2021 when the Respondent decided to discontinue the venture and offered the disputed Domain Name for sale.
Held: There is no evidence presented by the Complainant, on which the burden of proof rests, that would reasonably suggest that it or its rights would more probable than not have come to the Respondent’s attention at the registration date of the disputed Domain Name in February 2000. However, the Panel has some concerns regarding the Respondent’s various submissions. In terms of the delay in using the disputed Domain Name, a period of eighteen years is a very long time for the disputed Domain Name to have remained undeveloped if it was intended for use with the Respondent’s piggy bank business. The Panel also has concerns about whether the related website per the 2018 historic screenshot is entirely genuine rather than pretextual, principally because there is no apparent e-commerce element, and no pricing is stated nor any details supplied regarding the Respondent’s business.
Finally, there is the question of the disputed Domain Name being offered for sale in more recent times. While the Panel is in no position to opine as to the value of this or any other domain name, the asking price being in excess of USD $4.7 million can only suggest that the Respondent has potential buyers with deep pockets in its sights. Having noted these concerns, however, the Panel does not consider that they are sufficient to impact the question of registration in bad faith. Having the intent to target the Complainant today, if that were a reasonable inference to be drawn from the offer of sale of the disputed Domain Name, is not the same as originally having registered the disputed Domain Name with any such intent. The record before it does not favor the Panel reaching those conclusions on the balance of probabilities.
In conclusion, the Panel finds that the Complainant has not proved that the disputed Domain Name was registered in bad faith. That finding renders the question of use in bad faith moot.
RDNH: Here, the Respondent asserts that the Panel should find Reverse Domain Name Hijacking. However, it should be remembered that by the time the Complaint was filed, the website associated with the disputed domain name was targeting the Complainant in the most obvious and direct fashion. The Complainant was not to know at that stage that the Respondent would claim that the website was hacked and would disavow the content. Equally, the Complainant did not know whether the Respondent was the original registrant of the disputed domain name or whether, as the Respondent puts it, the Respondent had “two decades of legitimate use”.
In the Panel’s opinion, the Complainant was entitled to put the Respondent to the proof on the issues raised by it in the administrative proceeding and the Panel does not find that the Complaint was brought in bad faith.
Complaint Denied (No RDNH)
Complainants’ Counsel: DANUBIA Patent and Law Office LLC, Hungary
Respondents’ Counsel: Self-represented
Comment by Newsletter Editor, Ankur Raheja: Around 2021, the website at the disputed Domain Name <otpbank .com> in fact resolved to an online store displaying various products (see the archive here), with the title ‘Old Timer Piggy (OTP) Bank’, which appeared to be a dummy site. The Panel also expresses concern regarding the Respondent’s submissions but given the conjunctive requirement under paragraph 4(a)(iii) of the Policy, it did not help the Complainant’s case. The Complaint rather concentrated on the bad faith use.
Firstly, on the use of the disputed Domain Name, which featured the statement “OTP Bank is an international war sponsor? Please take your money elsewhere!” in several different languages. Secondly, on the excessive price of USD $4.7 million, for which the disputed Domain Name was listed for sale. However, even the excessive price for sale did not help the case of the Respondent, unless the Complainant and/or its trademark were targeted at the time of Domain Name registration, in terms of clause 4(b)(i) of the Policy. Accordingly, the three-member Panel rightly points out:
“Had the Respondent registered the disputed Domain Name with knowledge of the Complainant (of which there is no evidence nor reasonable inference to be made) and had its primary intent been to sell the disputed Domain Name to the Complainant for an amount exceeding its out-of-pocket costs along the lines of paragraph 4(b)(i) of the Policy, the Panel would have concluded that the vintage piggy bank explanation was a complete fabrication and/or was wholly pretextual when there are at least some signs, albeit inconclusive, of genuine business activity.”
It is interesting to note that this was only the second time this Complainant (OTP Bank Nyrt.) has come under UDRP. On a previous occasion in 2020, it made an unsuccessful attempt to obtain transfer of the 2004-registered domain name, <otpgroup .com>, vide WIPO case no. D2020-3118 (see udrp.tools). Currently, it operates online through www.otpbank.hu and www.otpgroup.info respectively.
Is it Safe to Offer a Common Word Domain Name for Sale?
Panelist: Mr. Flip Jan Claude Petillion (Presiding), Mr. Alexandre Nappey and The Hon Mr. Neil Brown K.C
Brief Facts: The US Complainant is active in the beverage business and operates online at <cappuccine .net>. It invokes two registered trademarks for CAPPUCCINE, a US wordmark (July 15, 2008), and an International wordmark (March 9, 2022). The disputed Domain Name was registered on May 22, 2002, and previously resolved to a parking page including sponsored links. The Panel observes that currently the disputed Domain Name resolves to a parking page without any sponsored links and mentions that the disputed Domain Name might be for sale. The Complainant alleges that it is very likely that this parking page provides revenues to the Respondent, who is trading off the reputation of the Complainant’s trademarks.
The Complainant further presents two arguments as regards the lack of legitimate rights or interests on the part of the Respondent. Firstly, there is no way to verify whether the Respondent has legitimate interests in holding the disputed Domain Name because “the identity of the Respondent is hidden” and secondly, the Complainant has never authorized the registration of the disputed Domain Name. However, the Respondent claims rights or legitimate interests in the disputed Domain Name as a reseller of domain names based on dictionary words.
The Respondent further contends that it lawfully acquired the disputed Domain Name through its parent company’s acquisition of UniRegistry in 2020 and that the Complainant did not provide any proof of common law rights prior to the registration of the disputed Domain Name, nor any proof of reputation that would have been called to the Respondent’s attention in 2020. Finally, the Respondent requests a finding of Reverse Domain Name Hijacking based on the Complainant’s total failure to prove the allegations made in the Complaint.
Held: The Panel observes that contrary to what the Complainant claims, the identity of the Respondent is disclosed in the WhoIs record of the disputed Domain Name. As to the other argument as to lack of authorization, the Panel finds it irrelevant for the following reasons. Generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP (see section 2.1 of the WIPO Overview 3.0). In the present case, the disputed Domain Name consists of the word “cappuccine”. The Respondent states it acquired the disputed Domain Name in 2020 as part of a portfolio which used to belong to a third party. The Panel is not convinced by the Respondent’s arguments suggesting that such an acquisition should not be considered as a new registration of the disputed Domain Name.
However, given the nature of the disputed Domain Name and the lack of evidence regarding the reputation of the Complainant’s (registered or unregistered) trademarks, the Panel still finds that the Complainant did not make a prima facie showing that the Respondent lacked rights or legitimate interests in the disputed Domain Name. For the sake of completeness, the Panel adds the following regarding the alleged bad-faith use of the disputed Domain Name. According to the Complainant’s undated evidence, the disputed Domain Name appeared to resolve to a parking page with 3 sponsored links, including one reading “Coffee Shops”. Even if the Panel would consider such a parking page as detrimental to the Complainant, this is only due to the generic exception of the word “cappuccine”. The Panel observes that the disputed Domain Name currently resolves to a parking page without any sponsored links. In view of the above, the Panel finds that the Complainant has not established that the disputed Domain Name has been registered and is used in bad faith.
RDNH: The mere lack of success of a complaint is not in itself sufficient for a finding of RDNH. In the present case, however, the Panel finds the following circumstances to be particularly relevant. The Complainant is professionally represented in this matter and, in the opinion of the Panel, knew or ought to have known that it could not succeed as to the second and third elements of the Policy for the reasons set out above. In particular, the Complainant knew that the disputed Domain Name predated its trademarks, and still provided almost no evidence about any alleged unregistered trademark rights. The Complaint ignored to address the obvious dictionary meaning of the word “cappuccine” and the impact on the Respondent’s rights or legitimate interests in respect of the disputed Domain Name.
In these circumstances, the Panel finds that the Complaint has been brought in bad faith. Accordingly, the Panel finds that the Complainant has abused the administrative proceeding and engaged in reverse domain name hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Novagraaf France, France
Respondents’ Counsel: Levine Samuel, LLP, United States of America
Case Comment by ICA Director, Nat Cohen:
As suggested by the decisions covered in this week’s Digest, nearly all of which include a finding of Reverse Domain Name Hijacking (RDNH), this has been a record month for RDNH findings. It is commendable that Panels call out such abuse when it occurs, but so far this appears to have no deterrent effect.
As Attorney John Berryhill alertly noted, the Cappuccine .com decision is the fourth one in which the law firm of Novagraaf was found to have filed a complaint that was an abuse of the UDRP.
Moreover, Novagraaf.com brought a complaint against my company’s domain name SDT .com, which was terminated by majority decision at my counsel’s request as we had filed suit in U.S. Federal Court against the Complainant alleging Reverse Domain Name Hijacking under the AntiCybersquatting Protection Act. Yet Panelist Tony Willoughby dissented from the majority decision to terminate the dispute – as in his view the Complainant fully deserved a finding of RDNH for bringing such a baseless complaint:
In my view, the Complaint was fundamentally defective, the certification at the end of the Complaint that to the best of the Complainant’s knowledge the Complaint was complete and accurate was false and the Complaint should never have been filed. In my view this is a clear case of Reverse Domain Name Hijacking. Moreover, I regard paragraph 15(e) of the Rules as a mandatory provision. Having found that the Complaint was brought in bad faith Paragraph 15(e) requires the panel to so declare, irrespective of whether the Complaint is terminated or suspended. (WIPO D2014-1870).
If Tony Willoughby had had his way, the Cappuccine .com decision would have been the fifth instance that a complaint brought by Novagraaf had been found guilty of abusing the UDRP. The SDT .com Federal Court case eventually settled with a payment by the UDRP Complainant of $50,000, an equitable outcome not available through the UDRP.
If a Respondent is found to have violated the provisions of the UDRP, even if the violation is that the Registrar placed PPC links without the Respondent’s knowledge on a Registrar created default landing page, as happened in Decathlons.org and Ovation.com among others, the Respondent’s rights in its registered domain name may be terminated, despite no evidence of any actual bad faith intentionality on the part of the Respondent.
Yet when a Complainant Representative knowingly and intentionally abuses the UDRP policy, and violates its certification, and makes misleading statements and unsupported allegations, to “reverse hijack”, which is a garbled way of saying “steal”, a Respondent’s domain name, there is no meaningful sanction.
Perhaps the lack of meaningful sanction is why on a single day, October 17, 2023, three separate Panels at WIPO found the respective Complainants guilty of RDNH, in IBA .com (covered elsewhere in this Digest), in Cappuccine .com, and in Playhouse .com.
Perhaps the lack of meaningful sanction is why the Vanel Law Firm, PC., whose principal is New York State Assemblyman Clyde Vanel, brought two abusive Complaints in short order becoming the first law firm to be found guilty of two abusive complaints within a 10 day period, in iWoman .com, covered in UDRP Digest 3.40, and in Perfume-Oils .com, summarized below.
Perhaps the lack of meaningful sanction is why 2023 is on track to break last year’s record of 50 UDRP Complaints found guilty of RDNH. That does not include the roughly equivalent number of Complaints each year that many observers believe to be equally deserving of an RDNH finding but that those Panels at their discretion fail to call out for such abuse of the UDRP.
The lack of a meaningful sanction for RDNH has long been noted, going back to the early days of the UDRP. ICA General Counsel, Zak Muscovitch, and I wrote a couple of articles published on CircleID discussing, in part, the limitations of the RDNH finding, see here and here.
One idea that has been floated recently is that any law firm that has been found guilty of filing an abusive complaint shall lose the privilege of availing of the UDRP for some period of time. The UDRP community may consider that this idea merits further exploration.
It is worth recalling that the UDRP was imposed on the global Internet community as a mandatory proceeding with the promise that complaints would only be brought against parties clearly guilty of egregious instances of cybersquatting, as stated, for example, in Section 160 of the WIPO Final Report:
- It is considered that concerns about the mandatory nature of the procedure can be greatly alleviated, if not removed entirely, by confining the scope of the procedure to abusive registrations or cybersquatting, as proposed in the next section of this Chapter. Since the procedure would apply only to egregious examples of deliberate violation of well-established rights, the danger of innocent domain name applicants acting in good faith being exposed to the expenditure of human and financial resources through being required to participate in the procedure is removed.
Unfortunately, WIPO’s recommendation that the scope of the UDRP procedure be limited only “to egregious examples of deliberate violation of well-established rights” was not implemented. Further, many Panelists failed to heed Panelist Tony Willoughby’s advice in his early dissent in the RENFE.com decision that “the proper course is to amend the Policy, not to ‘stretch’ the Policy to deal with an activity that it was not designed to cover.” Those Panelists who stretch the Policy, and those who lower the evidentiary burden on Complainants in no-response disputes, encourage Complainants to treat the UDRP as a carnival game in which a speculative complaint is the entry ticket and a coveted domain name is the prize.
Therefore, contrary to the purpose of the UDRP as expressed in the WIPO Final Report, “innocent domain name applicants acting in good faith” are with a steady frequency “being exposed to the expenditure of human and financial resources” due to abuses of this mandatory procedure. A procedure intended to remedy one form of abuse has become a vector for, and an encouragement to, a new form of abuse for which there currently is no meaningful remedy. It is not right that repeat abusers of the UDRP continue to have access to the UDRP with unimpeded impunity.
Requirement to Show Secondary Meaning, in Case of Disclaimed Trademark
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Complainant owns a United States Trademark (registered on June 8, 2018, filed on March 11, 2017 and claiming a 1998 first use in commerce) for PO PERFUME OILS.” The registration carries a disclaimer: “No claim is made to the exclusive right to use the following apart from the mark as shown: ‘PERFUMES’ AND ‘OILS’.” The Respondent registered the disputed Domain Name on January 17, 2016 and offered to sell “Women’s Perfume Oils”, and similar products. The Complainant alleges (in a limited manner) that the Respondent is directly infringing on the Complainant’s trademark with the infringing domain name and website and that the Domain Name has been registered and used in bad faith. The Respondent contends that the terms “perfume” and “oils” are generic and that the Complainant’s trademark registration expressly disclaims any rights in these terms apart from the entire mark, which includes the letters “PO” and stylized elements (cursive script in blue).
Held: Although the Complainant’s trademark registration demonstrates that it has rights in the trademark PO PERFUME OILS, the registration disclaims rights in “perfume” and “oils” apart from the mark as a whole. If “the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms”, see WIPO Overview 3.0, section 1.2.3. The Complainant did not offer any evidence or argument to support a claim of secondary meaning. In fact, the Complainant offered no evidence describing or quantifying its use of “Perfume Oil”. Accordingly, the Complainant has failed to satisfy Policy paragraph 4(a)(i).
The Complainant asserts without explanation or argument that the “Respondent is directly infringing on Complainant’s trademark with the infringing domain name and website”. The Complainant offers no evidence of its own use of its mark so there is no basis to evaluate the allegation of “infringement”. Accordingly, the Complainant does not establish a prima facie case and therefore does not shift the burden to the Respondent to defend its use. The Respondent’s response nonetheless rebuts Complainant’s allegations. The Complainant fails to even discuss the Respondent’s website where the Panel finds, the Respondent uses the Domain Name “in connection with a bona fide offering of goods or services”.
RDNH: The Complainant is represented by counsel, who knew or should have known it could not succeed as to any of the required three elements of the Policy. The Complainant must have been aware that its trademark rights were severely limited but made no offer of evidence of its use of the mark and or any evidence regarding secondary meaning. The Complainant made no effort to explain why the Respondent’s website did not evidence of a bona fide online business. The Complainant similarly made no effort to support its allegations of bad faith. The Complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the Domain Name. The Panel finds RDNH.
Complaint Denied (RDNH)
Complainants’ Counsel: The Vanel Law Firm, P.C., U.S.
Respondents’ Counsel: Hollander Law, P.C., U.S.