Welcome to this week’s UDRP Digest summarizing the most intriguing cases of the past week. You’ll read about HandyGuy .com, FlingPals .com, HcciProtection .com, MarvellExports .com, and Swim4Life .ca. We hope you’ll enjoy another fantastic Digest!
Panel: Complainant Should Have Bought the Domain Name
Panelists: Mr. David H. Bernstein (Chair), Ms. Sandra J. Franklin and Mr. Gerald M. Levine
Brief Facts: The Complainant is a California company that provides information on home contractor products and services to customers online. The Complainant acquired the domain name <thehandyguy .co> in 2011 and acquired the domain name <thehandyguy .com> in 2018. The Respondent acquired the disputed Domain Name in 2013 and uses the disputed Domain Name for a PPC website which displays advertising related to home improvement services and cellphones. Around March 2018, the Complainant attempted to purchase the disputed Domain Name for USD $5,000 but refused to pay Respondent’s requested $10,000 price. One month following this failed purchase, the Complainant’s CEO personally applied to register THE HANDY GUY and the design, as a trademark with the USPTO (registered on March 24, 2020) and subsequently assigned to the Complainant. The Respondent contends that it does have legitimate interests in the disputed Domain Name because it acquired the Domain Name before the Complainant had any proven trademark rights, and used the disputed Domain Name for pay-per-click advertising that is related to the dictionary meaning of the Domain Name.
Held: The Complainant did not submit evidence of the scope and extent of its use of the mark prior to the 2018 filing of its application. The only example of its use of the mark in the promotion of its services is a screenshot of its old website from 2012 and nothing that could have helped prove the secondary meaning. The Panel finds that the Complainant failed to show that it had trademark rights in 2013, when the Respondent registered the disputed Domain Name, and it was registered because of any trademark rights. Rather, the Panel finds that the Respondent registered the disputed Domain Name because of its descriptive nature with the intent of using the domain name for a PPC website related to the descriptive meaning of the domain name and to potentially thereafter sell it, as the Respondent sees fit. The Panel thus finds that the Complainant fails to prove by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
RDNH: The Complainant provided the Panel with extremely limited evidence of its claimed rights in the HANDY GUY trademark in the period prior to its 2018 application, and even acknowledged that other parties were using the “Handy Guy” name in connection with their own offering of handyman services. The Complainant also failed to address in its submissions the fact that the Respondent was using the disputed Domain Name for PPC links; rather, the Complainant incorrectly asserted that the Respondent was making no use of the disputed Domain Name except to offer it for sale. In the face of these facts, if the Complainant wanted this domain name, it should have bought it. Indeed, it tried to buy it, but rejected the Respondent’s USD $10,000 offer as exorbitant. The Complainant’s resort to the UDRP is a classic “Plan B” UDRP that reflects bad faith abuse of the UDRP by the Complainant. The Panel, therefore, finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: David J. Simonelli, Michigan, USA
Respondents’ Counsel: John Berryhill, Pennsylvania, USA
Limited Scope of Protection for Weak “Descriptive” Trademark
Panelist: Mr. Héctor Ariel Manoff
Brief Facts: The Complainant operates an adult dating service website and owns a trademark registration FLING with the USPTO, registered on December 4, 2007, which covers “providing website(s) featuring information and content in the fields of personal relationships and dating”. The Respondent registered the disputed Domain Name on June 25, 2020 and offers online adult dating services. The Complainant contends that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods and services or legitimate non-commercial or fair use as the resolving website offers competing services. The Respondent contends FLING is a common and generic word, used often in relation to the business of online dating and that the scope of protection of the Complainant’s trademark is different from the services for which it is used. The Respondent further argues that there are many domain names which include the term FLING and he is doing legitimate business under the disputed Domain Name. The Complainant under additional submissions argues that it is the owner of validly issued and enforceable trademark registrations for the mark “FLING” and that the USPTO made a determination that the “FLING” mark had inherent distinctiveness.
Held: The Panel finds that when a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. However, taking into account that the trademark is comprised of a descriptive term, its trademark rights are weak. This weakness also stems from the fact the specification of goods is very narrow, and is written in a way to try to avoid rejection by the USPTO based on the descriptiveness. This Panel concludes that the Complainant’s trademarks are at the very least quasi-descriptive for the services identified by it and it derives in an extremely narrow scope of protection. The Panel finds that the cited weakness along with the addition of the term PAL by the Respondent makes Domain Name is neither identical nor confusingly similar to a trade mark or service mark in which the Complainant has rights.
In this case, the Respondent added the term PALS which should not be necessarily considered a generic or common term in this context, specially taking into account the cited weakness of FLING and the coexistence proved by the Respondent that there are many domain names which included this generic word. The Panel agrees the word “fling” is generic and finds the Respondent did not infringe on the Complainant’s rights in the FLING mark and uses the disputed Domain Name for a bona fide offering of goods and services. The Panel finds that the Respondent has rights or legitimate interests in the disputed Domain Name and that the Respondent did not register or use the disputed Domain Name in bad faith pursuant to the Policy.
RDNH: The Panel finds that the Complainant’s filing of the Complaint was based on a good faith belief that the use of the disputed Domain Name which shares the first term was sufficient to establish bad faith. As such, the Complainant’s filing is not an abuse of the UDRP Policy. Even if the Panel should find that the Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of the Complainant in bringing the instant claim. The Panel cannot conclude that the Complainant acted in bad faith.
Complainants’ Counsel: Jason A. Fischer of Fischer Law, P.L., Florida, USA
Respondents’ Counsel: Daniel Berry of Penningtons Manches Cooper LLP, International
Issue of Bad Faith Registration is not “Policy Arcana”
Panelist: Mr. Evan D. Brown
Brief Facts: The Complainant Company, established in 2019, provides private security and related services. It retained the Respondent to provide the website development and other services for the Complainant, including the task of the registration of the disputed Domain Name, which was done on November 28, 2019. Though it appears the parties were at one time friends, the relationship between them deteriorated, and they parted ways, such separation being reflected in dramatic communications between them, whereby the Complainant demanded, inter alia, that the Respondent “return the domain to [the Complainant’s] control”. The Respondent did not turn over control of the disputed Domain Name and set the disputed Domain Name to no longer point at the Complainant’s business website.
The Complainant asserts it is operating under the trade name HCCI PROFESSIONAL PROTECTION SERVICES and shortened variations thereof since 2019. It submitted documents showing it registered the trade name HCCI PROTECTION with the Colorado Secretary of State. It further asserts that the Respondent has used the disputed Domain Name in bad faith by attempting to block the Complainant from using the disputed Domain Name and by attempting to sell the disputed Domain Name. The Respondent argues principally that the Complainant failed to establish any of the three elements required under the Policy, that the present situation is a business dispute outside the scope of the UDRP that would be better resolved in court, and that the Complainant has engaged in Reverse Domain Name Hijacking.
Held: The Complainant submitted the documents showing it has registered the trade name HCCI PROTECTION with the Colorado Secretary of State, but provided no evidence of use in commerce. The Panel therefore rejects the Complainant’s assertions that the Complainant established any trademark rights in either HCCI PROFESSIONAL PROTECTION SERVICES or HCCI PROTECTION. Meanwhile the webpage screenshots submitted as annexes to the Complaint show that the Complainant uses the mark HCCI PROFESSIONAL PROTECTIVE SERVICES to market and promote its services. The Panel finds in the circumstances of this case, where the Respondent was clearly aware of the Complainant’s use of its business name, evidence to support the Complainant’s rights in the mark HCCI PROFESSIONAL PROTECTIVE SERVICES.
The Respondent correctly observes that the Complainant did not allege bad faith registration of the disputed Domain Name. All of the assertions in the Complaint under this third element deal with how the Respondent is alleged to have used the disputed Domain Name. Moreover, the Complainant’s assertions undermine the claim that the Respondent was acting in bad faith when it registered the disputed Domain Name and under additional submissions, it doubled down on these assertions. Neither the Complainant’s assertions, nor the correspondence provided by the Complainant, support the notion that the Respondent was acting in bad faith by registering the disputed Domain Name. Instead, the record shows that by registering the disputed Domain Name, the Respondent was doing precisely what the parties had agreed the Respondent would do.
RDNH: Here the Complainant has entirely disregarded established Policy precedent regarding the need to prove registration in bad faith. The Complainant made no assertion seeking to justify an alternative legal argument. This issue of bad faith registration is “not Policy arcana”. Instead, the conjunctive requirement of both registration and use in bad faith is derived from the plain language of the Policy and longstanding, clear precedent. Moreover, the Complainant is represented by counsel from a law firm that self-identifies on its website as experienced in intellectual property and business litigation. It is not unreasonable for the Panel to require that the Complainant and its counsel will not gloss over matters on which well-established Policy precedent weighs directly against the Complainant’s contentions. Based on the above, the Panel believes that the Complainant approaches the conduct necessary for a finding of RDNH. However, the Respondent’s conduct is not exemplary; the Respondent appears to be engaging in self-help that is in the Panel’s view clearly unsavory. A finding of RDNH would make the Complainant the sole stigma bearer, which would not be equitable on these facts.
Complainants’ Counsel: Thomas P. Howard LLC, United States
Respondents’ Counsel: Archer Softech, India
Similar Logo Demonstrates Respondent’s Actual Awareness of Complainant
Panelist: Mr. Jeffrey J. Neuman
Brief Facts: The Complainant is a large multinational corporation with offices throughout the world, including in Australia, Brazil, Korea, UK, and the United States. The Complainant owns rights in the MARVELL mark through its registration of the mark with the USPTO (registered on December 24 2002). The Respondent registered the disputed Domain Name on April 15, 2022. The Complainant contends that the disputed Domain Name resolves a page that displays the Complainant’s logo in an attempt to pass off the Respondent as affiliated with the Complainant and after the initiation of these proceedings, the Respondent attempted to modify the website. In two very brief emails, which the Panel accepts as the Respondent’s response to this action, the Respondent states in the first e-mail that he registered the Domain Name for one of his clients. In the second email, the Respondent states that the client has no plans of violating copyrights and they just installed it with dummy content and the website is now taken down. The Complainant argues that the removal of infringing content on the disputed Domain Name is an acknowledgement that the Respondent lacked legitimate rights to the domain name and for purposes of the UDRP does not change the fact that the disputed Domain Name was registered and used in bad faith.
Held: The screenshots of the content displayed on the disputed Domain Name’s website, evidences that the website purports to sell goods unrelated to the Complainant’s business, the combination of the use of dummy text and the near identical copy of the Complainant’s logo make it clear to the Panel that the display of unrelated goods is really an attempt to make its site appear as if it is offering a bona fide service, when in reality it is more likely than not attempting to profit off of the goodwill of the Complainant. The Panel agrees with the Complainant that the Respondent must have had actual knowledge about the Complainant’s marks when it registered the Domain Name as it used a nearly identical copy of the Complainant’s logo on its own website. Although the Respondent argues that it took down the content from its website in response to the Complaint, the removal of such content not only does not cure the Respondent’s actions, but rather is a further demonstration of its lack of rights and legitimate interests in the disputed Domain Name.
As an initial matter, the Panel notes that the Respondent claims that the Domain Name belonged to its client and therefore implies that it is not the ultimate owner. However, the Respondent does not name its client, does not provide a copy of an agreement to do the work, nor any other indicia that supports his claims. Regardless of whether such proof was provided, however, previous Panels have found that “acting in the name or on behalf of a client does not waive any Registrant of the domain name of the obligation to show good faith in the registration and use of the domain name for which registration is sought.” For purposes of the Policy, even if there were a different beneficial owner of the Domain Name, liability under the Policy is borne by the named registrant in the registration agreement.
Complainants’ Counsel: Lisa Greenwald-Swire of Fish & Richardson, P.C., Minnesota, USA
Respondents’ Counsel: Self-represented
Actual Awareness of Complainant is Key, Even When Domain Corresponds to Prior Registered Trademark
Panelists: Mr. Alan Limbury (Chair), Mr. Richard Levy and Mr. Anton Melnyk, QC
Brief Facts: The Complainant is a well-known charitable organization that works to prevent drowning and water-related injury through its training programs in Canada. The trademark SWIM FOR LIFE has been used in Canada by the Complainant since at least as early as April, 2002 and was registered on October 18, 2006 for use in association with organizing and conducting instruction in water safety and swimming and the provision of education and training in aquatic safety. The Registrant uses the disputed Domain Name, which was registered on August 8, 2012, to advertise for sale to the public services relating to water safety and swimming instruction. The disputed Domain Name was, therefore, registered by the Respondent as a home start-up business and with a bona fide intention to provide her swimming program under this name.
In 2012, the Respondent developed a swimming program named NAGER POUR LA VIE AVEC KARINA RENAUD or in English SWIM FOR LIFE WITH KARINA RENAUD to teach children how to swim. She started referring to it as NAGER POUR LA VIE or in English SWIM FOR LIFE. The Domain Name was registered as belonging to “Nager pour la vie”. The Respondent contends on the same date in August 2012, she also purchased the French versions of the domain name: <nagerpourlavie .ca> and <nagerpourlavie .com> to market her swimming program. On November 28, 2013, Karina Renaud registered herself as a Sole Proprietorship with the Registraire des entreprises du Québec and added the tradenames NAGER POUR LA VIE AVEC KARINA RENAUD or in English SWIM FOR LIFE WITH KARINA RENAUD. On August 1st, 2017, Karina Renaud incorporated her business under the legal name “NAGER POUR LA VIE AVEC KARINA RENAUD INC.”
Held: The Complainant’s SWIM FOR LIFE trademark was registered with CIPO 6 years before the registration of the disputed Domain Name. The trademark, in essence, describes swim instruction services that can save a trainee’s life. If not “clearly” descriptive, it is highly suggestive. It corresponds to the English trade name of the Registrant’s company, the Registrant being a native French speaker whose business is based on the island of Montreal (albeit on the “West Island” which is majority English-speaking). These circumstances support the Registrant’s assertions that, when she registered the disputed Domain Name, the Registrant, although she is a member of the Québec branch of the Lifesaving Society, was unaware of the use and registration of the SWIM FOR LIFE trademark by its Alberta-North West Territories branch. The Panel finds that the Registrant used the mark “SWIM FOR LIFE” from 2012 to 2020, without any notice from the Complainant, as a trade name and corporate name for pre-school swim instruction, without misleading visitors of her website into believing that she is affiliated with or endorsed by the Complainant. Accordingly, the Panel finds that the Registrant has proven, on a balance of probabilities, that she has a legitimate interest in the disputed Domain Name.
Complainants’ Counsel: Heather Barnhouse of Dentons Canada LLP
Respondents’ Counsel: Karine Lefebvre of Morency Société d’avocats, LLP