Welcome to the latest UDRP digest! It’s a busy week, with Zak, Ankur and several other ICA members traveling to ICANN75 in Kuala Lumpur. Bon Voyage! Nevertheless, here we are to report on some of the past week’s most interesting UDRP decisions.
Join us we take a closer look at:
‣ “Commercial Considerations” in Selling Price Does Not Establish Motive (CortexComputer .com *with commentary)
‣ Nominative Fair Use Defence Succeeds in Criticism Website Case (LeidosEmployees .com)
‣ In Battle Between Highland Kilt Companies, Who Shall Prevail? (HighlandKiltsCompany .com)
‣ Panelist: URS Complainant Abused Procedure (RKGuns .org)
“Commercial Considerations” in Selling Price Does Not Establish Motive
Panelist: Mr. Andrew F. Christie
Brief Facts: The Complainant designs and provides sophisticated electronic products and related services since 1990. The Complainant sold over 200 billion products under its ARM brand and its products and services reach over 70 percent of the world’s population. The Complainant’s processors, marketed under the CORTEX trademark, are used as the main Central Processing Unit for most mobile telephones. The Complainant owns numerous trademark registrations worldwide for the word trademark CORTEX, including in the United States, registered on November 13, 2007. The Complainant also owns several domain names that incorporate the CORTEX trademark, including <armcortex .com> and <cortex-a .com>. The disputed Domain Name was registered on June 3, 2018. In May 2022, the Complainant’s representative offered to pay the Respondent USD $1,000 to acquire the disputed Domain Name, but in response, the Respondent demanded USD $20,000 for settlement of the dispute as to the disputed Domain Name.
The Complainant alleges that the disputed Domain Name incorporates the Complainant’s CORTEX trademark in its entirety along with the word, “computer”, which is commonly associated with the Complainant and its goods and services and which makes the disputed Domain Name ripe for potential malicious use against the Complainant and the Complainant’s customers and vendors. The Respondent argues that being a graduate in neurotechnology studies, he has a professional (and a personal) interest in the field of neurotechnology, in particular in devices that are implanted in the cortex of the human brain and that interface with computers, and that he proposes to use the disputed Domain Name in a future entrepreneurial project in that area. The Respondent also owns similar domain names <computercortex .com> and <cortexcomputerinterface .com>.
Held: The Respondent’s case is rather loosely structured in its argument and somewhat light in its evidentiary support given the lack of legal assistance. Nevertheless, the Respondent’s claim as to his motive in registering the disputed Domain Name is not clearly fanciful and without basis. To assess the validity of the Respondent’s claim, the Panel has accessed various content about the Respondent (and his activities), presented at various websites and social media. That content plausibly establishes that the Respondent graduated from studies in the field of neurotechnology, conducts research in relation to brain-computer interfacing, and undertakes a range of entrepreneurial activities. This material is consistent with the Respondent’s asserted motive for registering of the disputed Domain Name and also for registering two other domain names not the subject of this dispute, for future use in relation to a device that is implanted in the cortex of the brain and connects to computers.
It is true that the Respondent assigned a “personal value” of USD $20,000 to the disputed Domain Name, which seemed to be certainly influenced by commercial considerations. However, being influenced by commercial considerations when assigning a value to a domain name is not, of itself, evidence that the holder of the domain name does not have rights or legitimate interests in it. In the context of the particular facts of this case, the Panel does not consider that the willingness of the Respondent to transfer the disputed Domain Name to the Complainant for a sum significantly in excess of his admitted out-of-pocket costs related to the domain name establishes that the Respondent’s motive in registering the disputed Domain Name was other than the one he asserted and supported with evidence. Having carefully weighed the evidence before it, the Panel finds, on the balance of probabilities, that the Respondent has rights or legitimate interests in the disputed Domain Name. Accordingly, the Panel finds that the Complaint fails.
Complainants’ Counsel: Quinn IP Law, United States of America
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: When faced with an unrepresented Respondent who appeared to have a genuine defence but only provided a rather “light” Response, the Panelist apparently accessed at his own initiative, a “various content about the Respondent (and his activities), presented at various websites and social media”, in order to assess whether the Respondent’s claimed motivation for registering the Domain Name, i.e. his background in neurotechnology, was bona fide. The extent of permitted Panelist research is a recurring issue. When is it appropriate to undertake such limited research? Is a Procedural Order more appropriate in some cases? Should the Panel share the results of its research with both parties prior to rendering a decision? Should a Panel be more like an investigating judge under the civil law system or be more like a judge in the common law system? These are all questions which deserve further attention and resolution by UDRP stakeholders.
Nominative Fair Use Defence Succeeds in Criticism Website Case
Panelist: Mr. Clive Elliott Q.C.
Brief Facts: The Complainant is an American defence, aviation, information technology, and biomedical research company. The Complainant is the owner of the trade mark LEIDOS registered with USPTO since September 27, 2013. The Complainant also owns the <leidos .com> domain name, among other authorized domain names incorporating Complainant’s trademark. The Complainant uses its authorized domain names to point to websites providing information externally to Complainant’s customers and internally to Complainant’s employees. The disputed Domain Name was registered on June 10, 2022 and currently redirects internet users to pages featuring third-party links to other service providers. The Complainant argues that the Respondent registered and is using the Domain Name in bad faith to profit from and exploit Complainant’s trademark and cause confusion.
The Respondent denies the allegation that its use of Complainant’s Mark in the Domain Name may cause confusion and points out that the current landing page of the disputed Domain Name conspicuously states “THIS WEBSITE IS NOT ASSOCIATED WITH NOR ENDORSED BY LEIDOS”. The Respondent further submits that the registration and use of the Domain Name is a fair use and a legitimate and protected free speech practice on the internet of commenting on the social policy of businesses and seeking information regarding businesses operating in the US. The Complainant under additional submissions, further alleges that at the time of filing of the Complainant, the Respondent’s alleged website offering fair use commentary did not exist, but instead resolved to a parked page redirecting internet uses to pages featuring third-party links to other service providers, and that a disclaimer was added to the Domain Name after this Complaint was filed.
Held: In the Panel’s view it is reasonably apparent that the website is critical of the Complainant, and it presents a very different view to the one espoused by the Complainant. However, the Respondent does make it reasonably clear that it is not associated with or endorsed by the Complainant. Further, Respondent’s argument that it did not add parked content to the resolving webpage and did not derive revenue from pay-per-click hyperlinks and replaced it with the current webpage in a timely fashion, while it created its website content, appears to be a reasonable one under the circumstances. That is in the context of a criticism site displaying what otherwise appears to be prima facie non-commercial and not misleading or false content.
In terms of any potential initial interest confusion, the Panel applies the reasoning from Legal & Gen. Group Plc v. Image Plus, (WIPO D2002-1019): finding initial interest confusion was displaced by the criticism content at the respondent’s website and that such a “low level of confusion is… a price worth paying to preserve the free exchange of ideas via the Internet”. Here, it appears that the Respondent is using the disputed Domain Name to host a non commercial critical website, and while one might question the content of the website it does purport to inform Complainant’s employees of what the Respondent alleges are their rights.
Complainants’ Counsel: Malcolm W. Thomas of Bean, Kinney & Korman, United States of America (“US”)
Respondents’ Counsel: Carter B. Cole of ENVISAGE LAW, US
In Battle Between Highland Kilt Companies, Who Shall Prevail?
Panelist: Dr. Darius Sauliūnas
Brief Facts: The Complainant is a US Company which sells traditional Scottish kilts. The company started its activities during 2007-2012 and has been operating the e-shop at its official website <highlandkilt .com>, since July 22, 2007. The Complainant is the owner of US word trademark HIGHLAND KILT COMPANY, registered since May 14, 2019, covering for tartan fabrics, kilts and t-shirts. The disputed Domain Name was registered on August 5, 2020 and resolves to the separate e-shop of traditional Scottish kilts and is used by the Respondent to sell traditional Scottish kilts. Some parts of the Complainant‘s website are copied and used by the Respondent in his website. The Respondent did not file a Response.
Held: The prima facie evidence remains unchallenged by the Respondent, as no administratively compliant response is made available to the Panel. The Panel concludes that the Respondent, when it registered the disputed Domain Name, meant nothing else except the Complainant’s trademark HIGHLAND KILT COMPANY. Therefore, the Respondent knew of should have known about the Complainant’s rights, which evidences bad faith. The Respondent’s name does not resemble the disputed Domain Name in any manner and the use of the disputed Domain Name does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use.
As the disputed Domain Name resolves to the separate e-shop of traditional Scottish kilts and is used by the Respondent to sell traditional Scottish kilts and even some parts of the Complainant‘s website are copied and used by the Respondent in his website, one can simply conclude that Respondent‘s knowledge about the Complainant‘s prior rights was inevitable. Therefore, by using the disputed Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his websites.
Complainants’ Counsel: Dr. Daniel Dimov
Respondents’ Counsel: No Response
Panelist: URS Complainant Abused Procedure
Examiner: Mr. Charles A. Kuechenmeister
Brief Facts: The US based Complainant applied to the USPTO for registration of the RK GUNS mark on May 4, 2022, the same is pending registration. The URS Complaint was submitted on August 25, 2022, wherein the Complainant requested that the Domain Name be suspended for the life of the registration in terms of URS Policy.
Held: The Complainant is required to make a prima facie case, proven by clear and convincing evidence, for each of the three elements to obtain an order that a domain name should be suspended. The Examiner finds there is no genuine issue as to any material fact. The Complainant applied for the trademark registration of the RK GUNS mark on May 4, 2022. The filing of an application for registration of a trademark is not sufficient to establish rights in a mark for the purposes of the URS procedure.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the Domain Name <rkguns .org> be RETURNED to the control of Respondent. The Examiner further finds the Complaint was brought in an abuse of the administrative proceeding. The URS Procedure is very clear as to the requirement for a valid national or regional registration of a mark, and there is no basis whatsoever for finding for Complainant on any of the other provisions of the Policy.
Complainants’ Counsel: Trademark Lawyer Law Firm, PLLC of Ann Arbor, USA
Respondents’ Counsel: No Response