Thank you for tuning in to this week’s digest (Vol 2.33). In this issue, we review these noteworthy decisions:
‣ A UDRP is not a ‘Notice Pleading’ (titmouse .com)
‣ CIIDRC Panelist’s Research Reveals Respondent Engaged in “Ten-Year Scamming Spree” (esosuite .com)
‣ Steps .App Fitness App v Step .App Finance Fitness App: No Evidence of Targeting (step .app)
‣ Panelist Swinson: Complainant’s Conduct was “Woeful”, Results in RDNH over Surname Domain (schlossberg .com)
‣ Respondent’s Unauthorized Counterfeit Online Store Doesn’t Need OKI Data Analysis (foxracestore .com)
A UDRP is not a ‘Notice Pleading’
Panelist: Mr. W. Scott Blackmer
Brief Facts: The US Complainant, established in March 2000, offers little information concerning the Complainant’s business or reputation. However, the Complainant operates a website at <titmouse .net> indicating that the Complainant is an “independent award-winning animation production company” with hundreds of employees working at its studios in the US and Canada. The Complainant holds TITMOUSE-formative United States trademark registrations dated June 17, 2003, August 26, 2008, and October 21, 2014. The Complainant claims first use in commerce for the word marks in April 1992, possibly by a predecessor in interest as the Complainant was formed in March 2000. The disputed Domain Name was registered on March 6, 1998 by the Respondent and resolves to a landing page with PPC third-party advertising links for a variety of goods and services and there is no record that the Respondent developed a corresponding website at any time.
The Complainant alleges that on information and belief, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark. The Complaint further adds that on contacting the Respondent for the purchase of the disputed Domain Name, the Respondent verbally communicated to the Complainant that the Respondent would sell the disputes Domain Name to the Complainant for USD $3,000-$5,000, stating that this amount was ‘in the ballpark’. The Respondent argues for a legitimate interest in the disputed Domain Name based on a dictionary word (“titmouse” is a dictionary word referring to a species of bird) and denies any bad faith intent in registering and using the Domain Name. He further contends that he registered the disputed Domain Name in 1998 before the Complainant was founded in 2000 and registered its trademark in 2003.
Held: As the Respondent observes, the Complainant did not exist when the Respondent registered the disputed Domain Name in 1998, and there is no evidence that the Respondent had prior knowledge of the subsequent trademark. The Complainant claims earlier “first commercial use” but does not specify by whom and offers no proof substantiating an earlier common law mark, much less evidence demonstrating the probability that the Respondent was aware of this common law mark. On this record, there can be no finding of bad faith in the Respondent’s registration of the disputed Domain Name.
RDNH: A finding of RDNH is warranted when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence”. This is such a case. The Complaint entirely ignores the glaring difficulty that the Complainant must show bad faith in the registration of the Domain Name, which in this case preceded the existence of the Complainant itself as well as its registered marks. The Complaint entirely ignores the glaring difficulty that the Complainant must show bad faith in the registration of the Domain Name, which in this case preceded the existence of the Complainant itself as well as its registered marks. There are specific cases where a complainant can demonstrate that a respondent anticipated the trademark registration; some of these could arise in circumstances where the mark had already acquired distinctiveness in common law while owned by a predecessor in interest. However, the Complainant offered no evidence in this regard.
Instead, the Complainant made conclusory assertions “on information and belief” that the Respondent registered the Domain Name in bad faith, to demand an exorbitant purchase price from the (subsequent) trademark holder, prevent it from acquiring a corresponding domain name, or misdirect Internet users for commercial gain. A UDRP complaint is not notice pleading “on information and belief” that serves as a prelude to discovery and trial. The parties have a single opportunity to present evidence and argument, and in this instance the Complainant singularly failed to do so.
Complaint Denied (RDNH)
Complainants’ Counsel: Mandour & Associates, United States
Respondents’ Counsel: Self-represented
CIIDRC Panelist’s Research Reveals Respondent Engaged in “Ten-Year Scamming Spree”
Panelist: Mr. Gerald M. Levine
Brief Facts: For over 16 years, the Complainant has been in the business of producing computer software for recording, processing, archiving, evaluating, and transmitting medical data. The Complainant operates through <esosuite .net> and its primary customers are EMS agencies, fire departments, hospitals, and state EMS offices. It owns a trademark for ESO SOLUTIONS registered with the USPTO dated March 11, 2008 (disclaiming exclusive right to use “Solutions” apart from the mark as shown). It recently filed an application for the term ESO on February 24, 2022 which is pending registration.
The disputed Domain Name was registered on December 4, 2011. The Complainant contends that the disputed Domain Name “is currently being used to redirect visitors to sites that attempt to have users install software or visit revenue generating pages… ESO customers who visit this site [in error] are at risk of installing and paying for software they are misled to install.” The Respondent did not file a Response.
Held: The disputed Domain Name does not directly resolve to an active website without risk of infection. The Panel accepts the Complainant’s evidence of Respondent’s motivation, that it is using the disputed Domain Name for the sole purpose of committing fraudulent and criminal acts targeting Complainant’s customers as well as other Internet searchers. However, there is an open question as to whether it registered the disputed Domain Name in good faith and only later segued into bad faith. In this regard, the Panel exercised its discretionary power to undertake limited factual research into matters of public record. In particular, the captured pages from December 30, 2013, followed by other captures through 2022, show “403 Forbidden error” and other information indicating security issues and warnings in opening captured pages. It is evident that the Respondent did not change its stripes since registration and enjoyed a continuous ten-year spree at scamming innocent internet viewers including the Complainant’s customers who may have been unluckily caught in the Respondent’s trap.
Therefore, in the present circumstances, the Respondent’s registration of the disputed Domain Name which is confusingly similar to the mark of another, followed by exploitation of the Domain Name for profit and targeting of Complainant’s customers, constitutes a bad faith registration and use of the disputed Domain Name.
Complainants’ Counsel: NA
Respondents’ Counsel: No Response
Steps .App Fitness App v Step .App Finance Fitness App: No Evidence of Targeting
Panelists: Mr. Matthew Kennedy (Presiding), Mr. Reinhard Schanda and Mr. Richard G. Lyon
Brief Facts: The individual Complainant is the CEO of the Complainant company, StepsApp GmbH, which makes a pedometer app named, “StepsApp”. The individual Complainant is the proprietor of figurative marks registered before the EUIPO and WIPO since 2016. The Complainant Company uses the domain name, <steps .app> in connection with a website that promotes the STEPSAPP pedometer app and links to websites where the mobile application can be downloaded. The disputed Domain Name was created on May 6, 2018 and resolves to a website that promotes a “Step” development protocol for “fitness finance” and claims it turns fitness goals into income, powered by technology in the metaverse, augmented reality, and blockchain.
The Complainant alleges that its domain name and pedometer app were already widely used and known in the fitness interested consumer market at the time when the disputed Domain Name was registered. The Complainant further alleges that the similarity between the disputed Domain Name and the textual element of its mark is evidence that the Respondent targeted the mark and that there are similarities between the Parties’ respective websites. The Respondent contends that the USPTO initially refused the Complainants’ latter application because its software is used to count user’s steps and, thus, the wording merely describes the function and feature of the Complainants’ services. The Respondent has the right to use descriptive words in relation to its planned product.
Held: The Complainant provides scant details regarding its own domain names and does not indicate the date on which it registered the <steps .app> domain name. The evidence on record does not indicate that the mark is well-known or specially associated with the Complainant and, as the Respondent asserts, it is descriptive in nature. The Panel notes that the textual element of the Complainant’s mark is indeed a combination of the two English words “steps” and “app”, which together describe the function and feature of the Complainant’s app to count steps. The Respondent also shows the names of multiple pedometer apps incorporating the word “steps” or “step”.
Contrary to the Complainant’s submission, the incorporation of the gTLD “.app” does not indicate an awareness of the Complainant; rather, this gTLD is designed for apps, which the Parties agree is what the Respondent provides or plans to provide. In all these circumstances, the Panel considers that the combination of “step” and “app”, even where it spans the dot in the same way as the Complainant’s <steps .app> domain name, contains the singular of the word “steps” in the mark, and was registered afterwards, are insufficient by themselves to demonstrate that the Respondent targeted the Complainant or its mark. Accordingly, the Panel is unable to find on the evidence that the disputed Domain Name was registered in bad faith.
Complainants’ Counsel: Dr. Isabella Hödl, LL.M., Austria
Respondents’ Counsel: John Berryhill, United States of America
Panelist Swinson: Complainant’s Conduct was “Woeful”, Results in RDNH over Surname Domain
Panelist: Mr. John Swinson
Brief Facts: The Swiss Complainant produces and sells textiles for bath, bed and related goods. The Complainant owns trademark registrations for SCHLOSSBERG, including Swiss mark (registered on July 27, 1988) and United States Registration (filed on September 18, 2006 and registered on July 24, 2007). The disputed Domain Name was registered by Mr. Craig Schlossberg on February 6, 1996 and it resolves to a registrar generated “Under Construction” webpage. The Respondent company was founded by Mr. Schlossberg in 2004 and provides personal consulting services. He is the sole member thereof. The Administrative and Technical contact details for the disputed Domain Name are in the name of Mr. Schlossberg only.
The Complainant contacted Mr. Schlossberg in 2018 with the aim of buying the disputed Domain Name, knowing that the disputed Domain Name corresponded to Mr. Schlossberg’s name. The Complainant offered USD $1,500 as the purchase price, which was declined by the Respondent. The Respondent contends that he is commonly known by a name corresponding to the disputed Domain Name that constitutes prima facie support for a finding of rights or legitimate interests under the Policy. The Respondent further contends that the Complainant does not show that its goods bearing the SCHLOSSBERG trademark were being marketed or sold in the United States at the time the disputed Domain Name was first registered, while the Complainant owned just one Swiss trademark registration till 1996.
Held: The Panel finds that Mr. Schlossberg is the founder, controlling mind, and owner of the Respondent company. The Respondent’s owner is commonly known by the disputed Domain Name and in the present case, this is sufficient for the Respondent to demonstrate the Respondent has rights or legitimate interests in the disputed Domain Name. The Respondent registered the disputed Domain Name because it was Mr. Schlossberg’s name and in 1996 Mr. Schlossberg had not heard of the Complainant. This is believable. The Complainant’s United States trademark registration was not filed until 10 years after Mr. Schlossberg registered the disputed Domain Name. There is no evidence that the disputed Domain Name was registered to trade off the reputation of the Complainant or its trademark. Lastly, the Complainant’s argument that the Respondent did not use the disputed Domain Name for a long time is weak, and is not supported by the facts of this dispute.
RDNH: The Complainant, represented by an intellectual property law firm, did not address the Policy and offered little evidence to support the assertions made in the Complainant. The Complainant tried to buy the disputed Domain Name from the Respondent, and was unsuccessful. At that time, the Complainant knew the weakness of its position because the disputed Domain Name corresponded to Mr. Schlossberg’s name. The Complainant did not disclose relevant correspondence, which was helpfully provided by the Respondent. Even worse, the Complainant stated that “the Respondent has failed to respond to any of the several contact and buy attempts of the owner”.
Before filing the Complaint, the Complainant was aware or should have been aware of the extreme weakness of its case. If it was not, then it was made aware of the problems with its case in a letter from the Respondent’s attorneys of June 30, 2022, inviting the Complainant to withdraw its Complaint. The Complainant did not do so, putting the Respondent to the expense of preparing a Response. The Complainant’s conduct in this case was woeful. The Complainant attempted to use the Policy in bad faith to deprive a long-standing domain name holder of its domain name.
Complaint Denied (RDNH)
Complainants’ Counsel: Wild Schnyder AG, Switzerland
Respondents’ Counsel: Fross Zelnick Lehrman & Zissu, PC, United States
Respondent’s Unauthorized Counterfeit Online Store Doesn’t Need OKI Data Analysis
Panelists: Dr. Katalin Szamosi (Presiding), Mr. Douglas M. Isenberg and Mr. Paul M. DeCicco
Brief Facts: The US Complainant is a manufacturer of bicycle parts. The Complainant owns rights in the FOX and FOX Racing Shox mark through its numerous registrations with the United States Patent and Trademark Office (USPTO) and the China National Intellectual Property Administration (CNIPA) for over a decade. The Chinese Respondent registered the disputed Domain Name on December, 15, 2021 and resolves to an online store that sells counterfeit versions of the Complainant’s goods. The Complainant asserts that the disputed Domain Name is virtually identical and confusingly similar to the Complainant’s marks because it incorporates the “FOX” mark in its entirety and is confusingly similar to “FOX Racing Shox” mark. The Complainant further asserts that the Complainant did not authorize or license the Respondent any rights in the FOX mark and the Respondent does not use the disputed Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use. The Respondent did not file a Response.
Held: The WHOIS information may be used to determine whether a respondent is commonly known by the disputed Domain Name under Policy and there is no evidence in the record that otherwise suggests that the Respondent is known by the at-issue domain name. The Complainant also provides evidence of the disputed Domain Name resolving to a page displaying Complainant’s logo and mark and advertising for sale what it describes as counterfeit versions of products offered by the Complainant. Therefore, the Panel finds that the Respondent fails to use the disputed Domain Name for a bona fide offering of goods or services or legitimate non-commercial or fair use under Policy. Since the Complainant asserts that the disputed Domain Name is used for selling counterfeit versions of products offered by the Complainant and the Respondent did not rebut this assertion, it appears that the Respondent is not an authorized dealer of the Complainant’s products, therefore, the Panel need not further investigate the bona fide nature as in the Oki Data decision. For the reasons similar to above, the Panel finds that the Respondent registered and used the disputed Domain Name in bad faith.
Complainants’ Counsel: W. Bruce Patterson of Patterson + Sheridan, LLP, Texas, USA
Respondents’ Counsel: No Response