We hope you will enjoy this edition of the Digest (Vol. 3.24), as we review these noteworthy recent decisions, with commentary from our Director, Nat Cohen; General Counsel, Zak Muscovitch; and Editor, Ankur Raheja.
‣ Why Doesn’t the Complainant Own its Exact Match .Com Domain Name? (rocketlab .com *with commentary from Nat Cohen and Zak Muscovitch)
‣ CRESSET and “Cresets” Are Capable Of Having Independent Meanings (cresets .com *with commentary)
‣ Panel Takes Note of the Previous Proceedings against the Respondent (ktm .me *with commentary)
‣ Side-by-Side Comparison Applies Despite Passing Off: pairofthieves vs. paihvesshop (paihvesshop .com *with commentary)
‣ Policy Requires both Bad Faith Registration and Bad Faith Use (dawsonacademy .com *with commentary)
‣ Domain Name Incorporating a Well-Known Mark Offered for Sale (adobes .us)
—
This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Why Doesn’t the Complainant Own its Exact Match .Com Domain Name?
Rocket Lab USA, Inc. v. RocketLab Inc., NAF Claim Number: FA2303002036243
<rocketlab .com>
Panelists: Mr. Luca Barbero (Chair); The Hon. Neil Anthony Brown KC and Mr. Charles A. Kuechenmeister
Brief Facts: The Complainant is a United States company founded in New Zealand, that manufactures spacecraft components and provides launch services for space vehicles. It operates its primary website at the domain name <rocketlabusa .com> (registered on September 1st, 2011). The Complainant owns trademark registrations (both word mark and figurative) for ROCKET LAB before USPTO, which includes the earliest registration date of July 31, 2018. The disputed Domain Name was registered by the Respondent on March 16, 2000, and is pointed to a website with restricted access displaying the indication “ROCKETLAB THIS SITE IS FOR AUTHORIZED USE ONLY All access is logged”. The Complainant points out that, during contacts between the parties prior to the filing of the Complaint, the Respondent mentioned to it that it had received an offer of $500,000 for the disputed Domain Name, suggesting that it would only consider an offer higher than the $500,000 previously offered.
The Complainant alleges that the “Respondent’s failure to use the domain, followed by its attempt to create a bidding war between the Complainant and its competitor are precisely the types of bad faith actions that the Policy seeks to prevent”. The Respondent contends that since its first registration, the disputed Domain Name was, and continues to be, actively used by the Respondent for multiple commercial purposes, including for email correspondence related to bank and investment matters, as well as for government correspondence and registrations, regulatory related matters, and as a formal and ongoing legal notification method, which is aligned with the Respondent and its founders’ business activities. The Respondent further contends that it is commonly known by the designation RocketLab and that it is using the disputed Domain Name in connection with a bona fide offering of services, while the Complainant knowingly operated under a name and applied for a trademark for a name and mark that it knew was already in use and whose associated Domain Name had already been registered by another party and was in use.
Held: The Respondent submits various documents showing that its company RocketLab Inc. was incorporated in 2001 and the Respondent traded under such company name over the years and that the email addresses based on the disputed Domain Name have been indicated as the contact address for the delivery of notices or communications in Agreements and Engagement Letters executed, well before the Respondent had notice of the dispute. On the basis of the documents submitted, the Panel finds that the Respondent has demonstrated that it is commonly known by a name corresponding to the disputed Domain Name according to Policy. Moreover, the Panel finds that the Respondent’s use of the disputed Domain Name in connection with email addresses used for business purposes is sufficient to demonstrate the Respondent’s use of the disputed Domain Name for a bona fide offering of goods or services according to Policy.
The Respondent’s registration of the disputed Domain Name predates the Complainant’s first trademark registration of the ROCKET LAB mark by eighteen years. Moreover, according to the Complainant’s allegations, “Rocket Lab was founded in 2006 in New Zealand”, six years after the registration of the disputed Domain Name. Therefore, the Respondent could not have been aware of the Complainant at the time of registration, as the Complainant did not exist at that time. Moreover, the Respondent has demonstrated that the disputed Domain Name, despite being pointed to a website not displaying any substantive content publicly available, has been used for the creation of email addresses, which have been used for business purposes since many years before the Respondent received notice of the present dispute. Furthermore, there is no evidence that the Respondent ever targeted the Complainant and its trademark in the use of the disputed Domain Name.
RDNH: The Complainant, who is represented by a lawyer, should have appreciated the weakness of its case in view of the fact that the disputed Domain Name was registered long before the Complainant acquired trademark rights in the ROCKET LAB mark and many years before the Complainant was founded. Further, the Complainant’s case appears to be based on the argument that the Respondent’s failure to use the disputed Domain Name in connection with an active website amounts to bad faith. The Panel finds that the Complainant should have contemplated that it could not succeed with such an argument since there is no evidence that the Respondent ever targeted the Complainant. The Complainant should have also known that the Respondent’s use of the domain name for its email correspondence qualifies as using the Domain Name in connection with a bona fide offering of goods or services. Lastly, the circumstances of the case clearly show that the Complaint was filed as a “Plan B” after the Complainant’s failure to purchase the disputed Domain Name from the Respondent. Therefore, the Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.
Doctrine of Laches: The Respondent submitted that the Complaint should be based on the doctrine of laches in view of the Respondent’s delay in bringing the Complaint. The Panel finds that the doctrine of laches does not apply as a defense in a UDRP proceeding, and correspondingly chooses to disregard the Respondent’s assertions in this respect. However, the Panellist Brown’s view on this issue is that it is possible on an appropriate set of facts to make out the defence of laches and that, although they are not precedents, there are numerous UDRP decisions where that defence has been recognized and applied.
In the present case, the Complainant has not vigorously pursued its claimed rights to the Domain Name and there are indications in the record of the proceeding that it has unduly delayed the prosecution of those rights. Accordingly, if laches were the only issue in dispute in this proceeding, Panellist Brown would have held that the Complainant could not succeed because of its laches or delay in bringing and pursuing its claim. Laches is, however, not the only issue in this proceeding and therefore, it is not necessary to make a finding on that issue. The Complainant has failed, not solely because of laches, but because it has fallen well short of the required proof of the more substantive and pivotal issues involved in the case.
Complaint Denied (RDNH)
Complainants’ Counsel: Ronald H. Spuhler of McAndrews Held & Malloy Ltd., US
Respondents’ Counsel: Joerg Sosna, Hong Kong
Case Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
Why doesn’t the Complainant own its exact match dot-com domain name?
As the Respondent here points out, if a Complainant is filing a UDRP to secure the exact match dot-com domain name of its mark, that is immediately suspicious as it raises the question, “if the mark is a term uniquely associated with the Complainant, why doesn’t it already own the exact match dot-com domain name?”
The answer is usually because the exact-match dot-com domain name was already registered by someone else and the Complainant chose its mark with the knowledge that the matching dot-com domain name was unavailable. The Complainant then attempts to use the UDRP as a cheap acquisition tool to obtain a domain name that it was not able to secure otherwise by enlisting the help of a compliant panel.
Case Comment by ICA General Counsel, Zak Muscovitch:
The Panel in this case made a sound and appropriate ruling on the merits, including on the issue of laches which the Panel unanimously found was not a determinative issue in this case and accordingly it wasn’t necessary to rule on it. Nevertheless, Panellist Brown’s view on this issue deserves to be set out in full as it is a good reminder that laches continues to raise its head now and then. His view is that:
“It is possible on an appropriate set of facts to make out the defence of laches and that, although they are not precedents, there are numerous UDRP decisions where that defence has been recognized and applied. In the present case, Complainant has not vigorously pursued its claimed rights to the domain name and there are indications in the record of the proceeding that it has unduly delayed the prosecution of those rights.
Moreover, it is not correct to say as it was said in Hebrew Univ. of Jerusalem v. Alberta Hot Rods, (supra) that the remedies under the UDRP are “not equitable”. They are certainly not common law remedies, as monetary damages are not available under the UDRP. The remedies in UDRP proceedings are very much akin to two well-established equitable remedies, namely (a) an injunction to order the Respondent to relinquish the domain name and transfer it to the Complainant or an order for cancelation of the registration of the domain name and (b) restitution to the Complainant of the benefit of the domain name to which it claims it is entitled.
Accordingly, if laches were the only issue in dispute in this proceeding, Panellist Brown would have held that the Complainant could not succeed because of its laches or delay in bringing and pursuing its claim. Moreover, despite the Respondent raising the issue of laches, the Complainant did not reply to it or explain the reasons for the delay, other than to say, under Reverse Domain Name Hijacking, that “As noted, the parties have been discussing this domain for quite some time, having exchanged multiple emails, participated in a call and now submitted briefs in this proceeding.” None of that is an excuse or explanation for why the Complainant has delayed bring its claim. Indeed, as the Respondent submitted in its Response:
“Since the date of creation of the Domain Name is a matter of public record in the WHOIS database, the Complainant knew full well that the Domain Name had already been registered by the Respondent at that early date, 16 March 2000, which is 18 years before the Complainant’s first trademark registration in the United States and 6 years before the Complainant’s start of business in New Zealand.”
There has therefore been a long and unexplained delay in the Complainant having pursued its claim for the domain name. Laches is, however, not the only issue in this proceeding and it is not therefore necessary to make a finding on that issue. The Complainant has failed, not solely because of laches, but because it has fallen well short of the required proof of the more substantive and pivotal issues involved in the case.”
It is important to distinguish delay from laches. Laches is more than delay and delay is different than a limitation period. There is no limitation period in the UDRP, unlike the .CN (Chinese Dispute Resolution Policy or the “CNDRP”). In the CNDRP, there is a three (3) year “statute of limitations”:
“Article 2 The Policy is applicable to disputes result from registration or usage of domain names. However, the Dispute Resolution Service Providers do not accept the Complaint regarding domain names with registration term of over THREE years.”
Ostensibly, this provision like similar “statutory limitation periods” is intended to bar claims that are brought too late, i.e. the Complainant sat on its rights. We do not have such a provision in the UDRP, nor has delay in and of itself generally been a reason to deny an otherwise meritorious Complaint. Gerald Levine has written on this issue and inter alia notes the distinction between delay and laches and points to the case of Impala Platinum Holdings Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd., D2020-2268 (WIPO November 13, 2020) which stated:
“[i]n certain circumstances, it may be that a respondent can point to some specific disadvantage which it has suffered as a result of a delay by a complainant in bringing proceedings, which may be material to the panel’s determination.”
Accordingly, laches requires a particular disadvantage to have been sustained by the Respondent, beyond the mere delay itself. Nat Cohen and I wrote about this issue extensively in “A Re-Examination of the Defense of Laches After 18 Years of the UDRP” (CircleID, January 15, 2018). There we note an example of this:
“An example of a defense of laches could be where someone builds a house over his property line, and the other property owner knows about the building and the property line but does nothing about it for many years before suing his neighbour for building the house over the property line. Normally, the law would require that the defendant, i.e. person who built on property that did not belong to him, remove the unlawful structure. Nevertheless, the defendant could possibly assert “laches” as a defense, because the delay in bringing the lawsuit was unreasonably long and the delay prejudiced him, as the house had already been built for many years and he was living there peacefully with his young family.”
As also noted in our article, the defense of laches exists in trademark disputes and also in domain name dispute court cases. For instance, we noted how in What-A-Burger of Va. v. Whataburger of Corpus Christi, 357 F.3d 441, 449 (4th Cir. 2004), the Court stated that; “Courts use the doctrine of laches to address the inequities created by a trademark owner who, despite having a colorable claim, allows a competitor to develop its product around the mark and expand its business, only then to lower the litigation boom”.
The UDRP does not forbid the defense of laches and indeed, as noted in our article, there are a handful of cases which adopt laches as a valid defense. As explained in our article, given that so many years have passed since the adoption the UDRP, a closer look at delay and laches is appropriate.
CRESSET and “Cresets” Are Capable Of Having Independent Meanings
<cresets .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The US Complainants provide financial advisory and wealth management services. The Complainants are the owners of various US trademark registrations which comprise or incorporate the mark CRESSET, including, for example, the US Trademark registered on July 31, 2018. The disputed Domain Name was registered on December 17, 2022, and currently resolves to a website headed “FreeKik” together with a symbol and the wording “FreeKik – Resalable Marketplace in Bangladesh”. The website appears to offer resources for the photo, design and mock-up applications and suggests that free downloads are available upon an account being created.
The Complainants allege that the Respondent knowingly registered the disputed Domain Name to capitalize on consumer recognition of their CRESSET trademark… the disputed Domain Name, being a reproduction of their trademark with one letter transposed, is “a condemnable, classic case of ‘typosquatting’”. The Complainants suggest in conclusion that “there is no plausible circumstance under which [the] Respondent could legitimately register or use the [disputed] domain name”. In its informal email to the Center dated May 15, 2023, the Respondent confirms that it is the owner of the disputed Domain Name and exhibits a receipt from the Registrar for the registration fee for the disputed Domain Name for one year.
Held: The Complainants submits that they have prominently and extensively used, promoted and advertised under their CRESSET trademarks for several years, however, the Panel notes that the Complainants provide no further details, nor exhibit any evidence, in support of their contentions made above, whether relating to, e.g., their corporate history and profile, customer or employee numbers, geographical areas of operation, sales turnover, funds under management, promotional spend, industry and media recognition, or social media presence. The Complainants also offer no direct evidence that the Respondent was aware of their CRESSET trademark when it registered the disputed Domain Name, and therefore necessarily invite the Panel to infer from the factual matrix that this is more likely than not to have been the case.
The Complainants argue that this is “a condemnable, classic case of ‘typosquatting’”. While the Complainants’ technical analysis is correct, however, the Panel views both CRESSET and “Cresets” as names that are capable of having independent meanings and applications in commerce (particularly in different geographical locations) and the Panel does not consider it obvious that the latter is parasitical upon, or necessarily calls to mind, the former. Nor indeed (based on the Panel’s own limited research) do the Complainants appear to be the owners of the domain name <cresset .com>, their principal websites appearing to operate from <cressetcapital .com> and <cressetpartners .com>, which would appear to dispel any suggestion that the disputed Domain Name was intended to impersonate the Complainants’ Domain Name.
Lastly, the Respondent did not provide a response explaining the reason for its choice of the disputed Domain Name, and also notable that it uses the name “Creset” as opposed to “Cresets” in one instance on its website, the Panel is not persuaded, on balance that the Respondent registered the disputed Domain Name with knowledge of, and in order to target, the Complainants’ trademark as opposed to coincidentally. Concerning the use of the disputed Domain Name, again the Respondent provides no explanation concerning its website and it is certainly one possible interpretation of that website that it is a sham or pretext for cybersquatting upon the Complainants’ trademark. However, the Panel finds it equally plausible that the website is merely a “work in progress” or possibly a project started and then abandoned by the Respondent. There is nothing on the website which indicates an obvious route to commercial gain for the Respondent, whether by the diversion of Internet users or any kind of fraudulent activity.
Complaint Denied
Complainants’ Counsel: Fuksa Khorshid, LLC, United States
Respondents’ Counsel: Self-represented
Case Comment by Newsletter Editor, Ankur Raheja: Kudos to the Panelist Mr. Steven A. Maier for a well-reasoned decision. Interestingly, the Complainant alleges that this is “a condemnable, classic case of ‘typosquatting’”. The Panel rightly held that both CRESSET and “Cresets” are capable of having independent meanings and applications in commerce. More importantly, the Panel notes that the Complainant does not even own the Domain Name <cresset .com>, so how could the Complainant allege that the Respondent’s use of the disputed Domain Name <cresets .com> could result in typo-squatting? In contrast, an interesting case <benltey .com> was covered under vol 3.2, see here, which was in fact “a condemnable, classic case of ‘typosquatting’” but this is indeed not a typical typosquatting matter.
Further, herein Complainant made various other allegations like the Respondent registered the Domain Name for the purpose of selling it to the Complainant; or that the Respondent is intentionally misleading customers in order to drive traffic to its own website; and in conclusion that “there is no plausible circumstance under which [the] Respondent could legitimately register or use the [disputed] domain name”. However, the Panelist took the right approach and did not blindly accept the allegations without evidence in this undefended case. This is an approach that deserves some consideration and thought, and we should keep it in mind as a possibly appropriate resolution for certain kinds of cases. Similar approach was taken by another Panelist in the matter of <altarae .shop>, that we covered under Vol. 2.49, (see here).
Lastly, the Respondent was provided with a proper opportunity to respond in the matter but did not come forward with an explanation for the choice or the use of the disputed Domain Name at the current website. Therefore, given that the disputed Domain Name was registered on December 17, 2022, the Panelist rightly held that equally plausible that the website is merely a “work in progress” or possibly a project started and then abandoned by the Respondent. Moreover, there is no evidence of targeting of the Complainant or its mark, so as to uphold any kind of Bad Faith against the Respondent.
Panel Takes Note of the Previous Proceedings against the Respondent
KTM AG v. Jurgen Neeme, WIPO Case No. DME2023-0005
<ktm .me>
Panelist: Mr. Scott W. Blackmer
Brief Facts: The Complainant, founded in 1934, is an Austrian multinational motorcycle, bicycle, and sports car manufacturing company headquartered in Austria and operates at <ktm .com>. It is also established with affiliates in Europe, India, and North America, the Complainant reported revenues of over EUR 1 billion in 2015 with sales under KTM and other brands. The wordmark KTM is registered as International Trademark, (registered on July 27, 2005, and April 2, 2007), both with designations for numerous countries. The disputed Domain Name was registered on August 18, 2016, and resolves to a landing page advertising the disputed Domain Name for sale for USD $4,930 and featuring PPC advertising links to unrelated third parties, including, at times, those selling products competing with those sold by the Complainant, such as e-bikes.
The Complainant alleges that the Respondent does not use the disputed Domain Name for a website of its own but only to allow others to advertise their products, including competing products. The Complainant infers that the Respondent was aware of the Complainant’s mark and targeted it in bad faith because the mark is well-known and long-established, the Respondent advertised the disputed Domain Name for sale for a high price, and the PPC links included advertising for products competing with the Complainants’. The Respondent did not reply to the Complainant’s contentions.
Held: The Complainant has demonstrated trademark rights and observed that the Respondent is not known by a corresponding name, while merely offering the disputed Domain Name for sale and allowing it to be used for third-party PPC advertising. This establishes a prima facie case, and the Respondent has not come forward with evidence of rights or legitimate interests in the disputed Domain Name. The PPC links to competing products may have been produced by an algorithm, and the relatively high price that the Respondent quoted for the disputed Domain Name may be attributable in part to the intrinsic value of three-letter domain names. But the fact remains that the Complainant’s brand is well established, and this is likely why the Respondent chose this particular disputed Domain Name. The Respondent has not come forward to offer an alternative explanation.
Moreover, the Panel notes that Mr Neeme was the Respondent in previous UDRP proceedings involving Facebook, Inc. [WIPO Case No. D2019-1582 and WIPO Case No. D2020-0403]; and Verizon Trademark Services LLC [WIPO Case No. D2018-1125]. In these cases, UDRP panels ordered the transfer of multiple domain names after finding that the Respondent registered confusingly similar domain names and parked them with PPC advertising links or attempted to sell them for amounts substantially in excess of out-of-pocket costs. Thus, there is evidence of a pattern of practice consistent with the Respondent’s conduct in this proceeding, supporting the inference of bad faith in this instance. The Panel finds bad faith in the registration and use of the disputed Domain Name on this record and concludes that the Complainant has established the third element of the Complaint.
Transfer
Complainants’ Counsel: Zivko Mijatovic & Partners, Serbia
Respondents’ Counsel: No Response
Case Comment by ICA Director, Nat Cohen: Panelist Blackmer apparently conducted independent research on the Respondent’s prior UDRP disputes which showed a pattern of bad faith conduct. This evidence, if obtained by Blackmer himself, appears to have influenced Blackmer to find that the registration of this particular three-letter acronym domain name was not innocent, but indeed targeted in bad faith at the Complainant’s mark. This raises a recurring question in UDRP jurisprudence of under what circumstances, and to what extent, is independent research conducted by the Panel appropriate?
One circumstance where I believe it is appropriate for a Panel to conduct independent research, as I have written about previously in this Digest at Volume 3.21, is when a Disputed Domain Name is passively held and there is no response. The test adopted in Telstra that there be no other plausible good-faith uses for the Disputed Domain Name obliges a Panel to conduct a search to accurately assess the plausibility of a good-faith use.
Side-by-Side Comparison Applies Despite Passing Off: pairofthieves vs. paihvesshop
Stateside Merchants, LLC v. rong liu, NAF Claim Number: FA2305002043263
<paihvesshop .com>
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant uses ‘PAIR OF THIEVES’ mark since 2014 in connection with underwear, socks, pajamas, and related products and services. The Complainant’s products are sold online at <pairofthieves .com> and in retail stores as well. The Complainant owns trademark registrations for ‘PAIR OF THIEVES’ in standard character form in the United States and other jurisdictions, along with registrations for related and other marks, including a Masked Bear design mark. The Respondent registered the disputed Domain Name in August 2022, which is being used for a website that mimics the appearance of the Complainant’s website.
The Complainant alleges that the Internet users searching for the Complainant online are likely to find the Respondent’s website due to the Respondent’s use of a confusingly similar domain name. The website prominently displays the Complainant’s PAIR OF THIEVES mark and Masked Bear design mark and offers for sale what the Complainant further alleges are unauthorized and counterfeit products bearing the Complainant’s PAIR OF THIEVES mark. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant notes correctly that a domain name can be confusingly similar to a mark even if it omits some letters from the mark, citing many UDRP precedents. All of the examples cited by the Complainant, however, involve significantly more minor alterations to the corresponding trademark than is the case here. Here, in contrast, the disputed Domain Name omits nearly half of the letters in the Complainant’s mark, including multiple consonants and the first letter of the most distinctive component of the mark (“thieves,” since “pair” is descriptive of some of the Complainant’s products). A more analogous example might be RK HOLDINGS, LLP v. Ying Bao, FA 2032319 (Forum Apr. 4, 2023), in which the domain name <lincolntters .com> was found not to be confusingly similar to LINCOLN OUTFITTERS; or possibly Zimmermann Wear Pty Ltd v. Sam Dumond, FA 1802176 (Forum Sept. 17, 2018), in which <zimoutlet .com> was found not to be confusingly similar to ZIMMERMANN.
The test for confusing similarity involves a side-by-side comparison of the letters, words, sounds, and other sensate aspects of the disputed Domain Name to the corresponding aspects of the relevant trademark; the manner in which the domain name is used, including the content of the associated website, is normally disregarded for purposes of this analysis. The fact that users searching for the Complainant’s mark may find themselves at the Respondent’s website (a claim made by the Complainant without supporting evidence) is likely attributable more to the content of the Respondent’s website, including its prominent and frequent use of the Complainant’s marks, than to any similarity between the disputed Domain Name and the Complainant’s PAIR OF THIEVES mark. In the Panel’s view, the Complainant has failed to meet its burden of proving that the disputed Domain Name is identical or confusingly similar to a mark in which the Complainant has rights.
Complaint Denied
Complainants’ Counsel: Lindy Herman of Rutan & Tucker LLP, California, USA
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja: In this dispute, the Respondent used the oddly chosen paihveshop.com domain name to create a webpage that passed itself off as the Complainant’s PAIR OF THIEVES branded website.
Here Panelist Sorkin adopted a strict construction of confusing similarity finding that the Complaint failed the first criterion of the UDRP, as the domain name is not confusingly similar to the Complainant’s mark:
The test for confusing similarity involves a side-by-side comparison of the letters, words, sound, and other sensate aspects of the disputed domain name to the corresponding aspects of the relevant trademark; the manner in which the domain name is used, including the content of the associated website, is normally disregarded for purposes of this analysis.
Although Sorkin cited to the WIPO Overview section 1.7 and 1.15, he chose not to adopt the alternate approach described there in which the content of the website, if it targets the Complainant’s mark, could itself be used as evidence of confusing similarity, as stated in WIPO Overview Section 1.15:
In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.
See for example Fenix International Limited v. Privacy Services Provided by Withheld for Privacy ehf / Rob Visser, WIPO Case No. D2022-1897, wherein the Complainant had rights in “ONLYFANS” and the disputed Domain Name involved was <onlycams .vip>:
“It has been recognised that, while the content of a website is usually disregarded, it is permissible to take into account the content of the website, to the extent there is any doubt, where it appears that the Respondent is seeking to target the Complainant’s trademark. See e.g. WIPO Overview 3.0 section 1.15.
Having regard to that content as briefly summarised in section 4 above, including, in particular, the get-up as well as the graphic content, the Panel considers it likely a user on the Internet would think there was an association between the Respondent’s website and the Complainant and its trademark”.
Policy Requires both Bad Faith Registration and Bad Faith Use
Dawson Center, LLC v. Domain Admin / TotalDomain Privacy Ltd, NAF Claim Number: FA2305002044617
<dawsonacademy .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant and its predecessor have been instructing practitioners on the evolving practice of dentistry for over four decades and operate the website <thedawsonacademy .com>. The Complainant owns rights in the mark THE DAWSON ACADEMY through assignment to the Complainant of the mark registered with the USPTO. The Complainant prominently and extensively used, promoted, and advertised the “THE DAWSON ACADEMY” mark and domain name for over 15 years, starting February 29, 2008. The Respondent registered the disputed Domain Name on April 25, 2009, and it resolves to a parked page that offers the domain name for sale.
The Complainant alleges that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services but rather registered and is using the domain name primarily for the purpose of selling the domain name to the Complainant. The Complainant further alleges that the website associated with the disputed Domain Name has no content other than banner ads related to its sale and, given that the domain name is nearly identical to the mark, the only potential buyer of the domain name is the Complainant (or a competitor of the Complainant). Moreover, the mark is unique and arbitrary such that it is unlikely that the Respondent devised the term on its own. The Respondent did not submit a response.
Held: The Complainant shows that, through assignment, it owns rights to the trademark THE DAWSON ACADEMY, which was registered on July 22, 2014, with the USPTO. The mark was initially owned by a different company called Dawson Center L.L.C., which assigned the mark to the Complainant, formerly known as Dawson Center Acquisition L.L.C., on January 1, 2017. The assignment was recorded by the USPTO on May 9, 2023.
The disputed Domain Name was registered on April 25, 2009. Leaving aside the fact that the Complainant acquired its rights in the mark on January 1, 2017, by assignment from a company with the same name as the Complainant’s present name, the Complainant provided no evidence that it or its predecessor had acquired common law rights in the mark prior to its registration on July 22, 2014, with the USPTO, despite the Complainant’s assertion that the mark has continuously been used in commerce since February 29, 2008.
The only screenshot of the Complainant’s website is dated 2023. Hence, the Panel is not persuaded that the Respondent had the Complainant’s mark in mind when registering the domain name on April 25, 2009. Accordingly, the Panel finds that the Complainant has failed to show that the domain name was registered in bad faith. Since the Policy requires proof of both bad faith registration and bad faith use, the Complainant has failed to establish the third prong of the Policy.
Complaint Denied
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: No Response
Case Comment by ICA Director, Nat Cohen: Like the RocketLab.com decision discussed above, this dispute also raises the question of why the Complainant does not own its exact-match dot-com domain name, especially as it claims a history going back four decades and further claims that its mark is “unique and arbitrary”. However, the dawsonacademy.com domain name was first registered by a third-party as far back as 2003 for use as a Toronto language academy (https://web.archive.org/web/20030807104929/http://www.dawsonacademy.com/), which predates the Complainant’s claimed first use of its mark as of February 29, 2008.
The RocketLab.com and DawsonAcademy.com are yet two more examples of why a Panel should be quite skeptical when a Complainant claims that its mark is “unique and arbitrary” and that there are no other plausible uses for the Disputed Domain Name other than to target its mark, and yet it cannot explain why it failed to register the exact-match dot-com version of its mark, which one would expect the Complainant to have done if it truly was the first to coin its “unique and arbitrary” mark.
Domain Name Incorporating a Well-Known Mark Offered for Sale
Adobe Inc. v. Andrei Bokov, NAF Claim Number: FA2305002044254
<adobes.us>
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant has used the ADOBE mark in connection with various software offerings since at least as early as 1986. The Complainant’s brand routinely ranks among the most valuable brands in the world. The ADOBE mark is the subject of numerous United States trademark registrations, as well as registrations in Russia and other jurisdictions. The Complainant asserts that the mark has become famous due to longstanding and widespread use. The Respondent registered the disputed Domain Name in April 2023 and is being used to offer a gaming software application player unrelated to the Complainant or its mark. The Complainant alleges that the Respondent is attempting to leverage the recognition and goodwill in the Complainant’s mark to attract users to this fake website. In addition, the disputed Domain Name is being offered for sale for USD $399 via a domain name marketplace. The Respondent did not submit a Response.
Held: The disputed Domain Name corresponds to the Complainant’s registered ADOBE trademark, adding a letter “S” and the “.us” top-level domain. These additions do not substantially diminish the similarity between the domain name and the Complainant’s mark. Further, the disputed Domain Name incorporates the Complainant’s registered mark without authorization. It is being offered for sale and is being used to attract users to an otherwise unrelated commercial website. Such uses are unlikely to give rise to rights or legitimate interests under the Policy.
The Respondent registered a domain name corresponding to the Complainant’s well-known mark. It is being offered for sale at what the Panel infers to be a premium over its registration cost, presumably in the hope of soliciting an offer from the Complainant or a competitor thereof; and to divert Internet users seeking the Complainant to an unrelated website, presumably for the Respondent’s commercial gain. Under the circumstances, the Panel considers it reasonable to infer that the Respondent registered the disputed Domain Name for these purposes and with the Complainant’s mark in mind.
Transfer
Complainants’ Counsel: Griffin Barnett of Perkins Coie LLP, United States
Respondents’ Counsel: No Response