Domain Name UDRP’d Twice, by Different Complainants

Kate Dwyer UDRP, UDRP Case Summaries

Thank you for tuning in!  This week’s digest is covering a handful of compelling recent decisions; <kosmos .com>, <redgrass .com>, <exclusivebeauty .com>, <kiltandkilts .com> and <amiweb .store>.  Our General Counsel, Zak Muscovitch has added commentary as well.  Enjoy!

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Domain Name UDRP’d Twice, by Different Complainants   

Kosmos Global Holding, S.L. v. Jewella Privacy – 00a3b, Jewella Privacy LLC Privacy ID# 924265 / Domain Manager, Orion Global Assets, WIPO Case No. D2022-2408

<kosmos .com> 

Panelists: Mr. Flip Jan Claude Petillion, Mr. Fernando Triana and Mr. Nick J. Gardner

Brief Facts: The Complainant invests in sports, media, and entertainment companies, which was founded in Spain on November 3, 2017. The Complainant claims to have applied for several trademarks including the figurative trade mark for KOSMOS before EUIPO registered on August 6, 2018.  The disputed Domain Name was registered on April 4, 1998. The Respondent did not provide information as to the date of acquisition of the disputed Domain Name but provided evidence as to the renewal of the disputed Domain Name in March 2017. The disputed Domain Name resolves to a web page offering the disputed Domain Name for sale. The Complainant alleges that the Respondent registered the disputed Domain Name and other domain names while targeting the Complainant and attempting to sell the disputed Domain Name to the Complainant.

 The Respondent contends that “kosmos” is a common dictionary word and it possessed the disputed Domain Name prior to the Complainant’s existence. The Respondent further contends that the Complainant omitted an email of the Complainant’s counsel to the Respondent’s authorized broker, which included an offer to buy the disputed Domain Name and that the present case is yet another “Plan B” UDRP proceeding, in which a junior trademark registrant attempts to purchase a domain name from a senior domain registrant, is unsatisfied or ignorant of normal market pricing, and instead launches a UDRP while omitting evidence of its purchase attempt. However, the Complainant suggests that it was contacted by a broker from the company Lumis with regard to the sale of the disputed Domain Name, who is in fact linked to the Respondent.

Held: The two UDRP decisions referred to by the Complainant are part of specific UDRP jurisprudence dating from more than 10 years ago, finding a so-called “retroactive” bad faith registration. It is well-understood that this concept has not been followed in subsequent UDRP cases. 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. In the present case, the disputed Domain Name consists of the dictionary word “kosmos”, as confirmed by both parties in a previous UDRP case relating to the disputed Domain Name. In view of the above and lack of targeting the Complainant or its mark, the Panel finds that the Respondent has a legitimate interest in registering and holding the disputed Domain Name.

 The Panel observes that based on undisputed evidence, the Respondent showed that it registered the disputed Domain Name before the Complainant’s very existence. Moreover, the Panel found no conclusive evidence regarding any bad faith use of the disputed Domain Name either. However, based on the evidence provided by both parties, the Panel is inclined to believe in the broker’s independence. In the Panel’s view, the Complainant does not show that the Respondent actively contacted the Complainant regarding the disputed Domain Name. On the contrary, the evidence suggests that the Complainant took the initiative to contact the Respondent’s authorized broker with an offer to buy the disputed Domain Name. In view of the above, the Panel finds that the Complainant did not establish that the disputed Domain Name has been registered and used in bad faith.

 RDNH: The Respondent did not formally request a finding that the Complainant engaged in Reverse Domain Name Hijacking. However, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting 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 Complainant misrepresented the facts regarding its trademark rights. The Complainant stated several times that it owned various or even “a family of” registered trademarks. It appears that a lot of these trademarks are not validly registered (yet). The Complainant also omitted relevant evidence, notably an email from its counsel to the Respondent authorized broker.

 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 element of the Policy for the reasons set out above. In particular, given that the Complainant’s representatives quoted extensively from UDRP case law, the Panel thinks it is unlikely that they were unaware of the current overwhelming view of UDRP panelists as to the need to prove registration as well as use in bad faith and that the more than 10 year old cases cited in that regard are no longer relevant. Accordingly, the Panel finds that the Complainant has abused the administrative proceeding and engaged in reverse domain name hijacking. 

Complaint Denied (RDNH)

Complainants’ Counsel: MERX IP, Spain

Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States

URL: https://www.wipo.int/amc/en/domains/decisions/pdf/2022/d2022-2408.pdf

Tags: WIPO, Denied, RDNH

Case Comment by ICA General Counsel, Zak Muscovitch: Whole articles could be written about this egregious case, however for the purposes of this Digest, we will briefly focus on three particular aspects. 

A notable aspect of this case is that to the Panel’s credit, they recognized that despite no express request for a finding of RDNH, the circumstances so egregiously warranted it that they considered and ultimately made such a finding. As written in this Digest previously, a Panel is actually obliged under Rule 15(e) to make an RDNH finding where warranted.

A second notable aspect of this case is that this was the second time that this Domain Name was subjected to a UDRP, by two different complainants. This is demonstrative of the widespread value of certain kinds of domain names beyond one particular trademark owner. Particularly given that this second case resulted in RDNH, it is also demonstrative of the lengths that unscrupulous or ill-informed complainants will go to get a valuable domain name for free. The UDRP serves an immensely important purpose of addressing cyberquatting. However it is also regularly employed by covetous companies who see in the UDRP, a cheap shot that they can take to save themselves significant sums, despite having no legal entitlement to the desired domain name. For a respondent on the receiving end of a Reverse Hijacking attempt, it is little consolation that the UDRP is mainly used for proper purposes.

A third notable aspect of this case is that Panelist Triana appears to have fortunately abandoned a very troubling position which he had previously held. In Snap Inc. v. Domain Administrator / Domain Professionals, LLC / Domain Master / Global Personals, LLC / Domain Master / Worldwide Connect Partners, LLC, Forum Claim Number: FA2102001933412 (May 11, 2021) (Snapsext .com), Panelists Triana along with Panelist Sandra Franklin, purported to resurrect the long-discredited theory of “retroactive bad faith/renewal in bad faith (See for example, “The Rise and Fall of the UDRP Theory of Retroactive Bad Faith“, CircleID, 2017). The theory of “retroactive bad faith/renewal in bad faith” was rightfully discredited because it undermines a core tenet of the UDRP; that a domain name that was registered prior to trademark rights being accrued by the complainant cannot have been registered in bad faith. It is therefore fortunate that in the present Kosmos.com case, Mr. Triana adopted the correct application of the UDRP and did not attempt to apply the discredited and abandoned theory as apparently urged by the Complainant.

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RDNH Found but Dissenting Opinion Additionally Finds Legitimate Interest

Redgrass SA v. Domain Admin, HugeDomains.com, WIPO Case No. D2022-2433

<redgrass .com>

Panelists: Mr. Matthew Kennedy (Presiding), Mr. Rodolfo Rivas Rea and The Hon Neil Brown Q.C.

Brief Facts: The Swiss Complainant, established on June 23, 2020, sells miniature paintings and operates a website at <redgrassgames .com>. The Complainant holds trademark registrations in multiple jurisdictions, including China (registered on August 14, 2020 and March 28, 2020), European Union (registered on March 24, 2021) and US (registered on December 28, 2021). In December 2015, the Complainant’s legal representative Mr. Fabrice Massad established a French company named Redgrass SAS for the purpose of software publishing, which later voluntarily liquidated in April 2019. On June 9, 2017, Mr. Massad established another French company named RedgrassGames SAS for purposes related to accessories and applications for board games and figurines. “RedGrassGames” is also a YouTube channel that publishes various videos about miniature painting. The Complainant claims that it held unregistered trademark rights prior to the Respondent’s acquisition of the disputed Domain Name. 

The Respondent acquired the disputed Domain Name on June 22, 2017 and advertised it for sale on that website for the price of USD $14,095. The Respondent is a reseller of domain names and owns a large portfolio, including many that begin with “red”, and end with a plant species, such as <redalmond .com>, <redchestnut.com>, <redclove .com>, <redflax .com>, <redmoss .com> and more. The Complainant, through its legal representative, sent an email to the Respondent dated February 23, 2021 claiming that the Complainant should legitimately own the disputed Domain Name and inter alia alleged that it was suffering economic losses as a result, to which the Respondent responded the next day on merits. The parties further exchanged further emails on March 1, 2021, in which the Complainant made an offer to buy the disputed Domain Name for USD $3,500 and the Respondent made a counter-offer of USD $13,995, or a payment plan of up to 12 months based on the list price.  

Held: The Panel begins by noting that the Complainant was not incorporated until three years later, in June 2020, and that the earliest applications for any of its marks were not filed until August 2019. Although the Complainant refers to two Companies founded in 2015 and 2017 respectively, it neither provides evidence of the companies’ activities prior to the registration of the disputed Domain Name or prior ownership of any trademarks. In sum, there is no evidence of use of “Redgrass” or “Redgrassgames” that could show that either became a distinctive identifier that consumers associated with goods or services of a particular trader prior to the registration of the disputed Domain Name. 

The disputed Domain Name is a combination of two dictionary words that forms part of a series of “red” and “grass” formative domain names registered by the Respondent. The Respondent also points out that the disputed Domain Name is identical to a botanical term defined in at least one English dictionary. Based on the record of this proceeding, the Panel considers that the most plausible explanation for the identity and similarity between the disputed Domain Name and the later-registered REDGRASS and REDGRASSGAMES trademarks is that this was a coincidence. Therefore, the Panel does not find that the disputed Domain Name has been registered in bad faith. Accordingly, it is unnecessary to consider whether the disputed Domain Name is being used in bad faith. 

RDNH: The Complaint suffers from a serious defect with respect to the timing of the accrual of the Complainant’s trademark rights. The Respondent gave the Complainant full notice of the timing of its acquisition of the disputed Domain Name and its position on the merits of this case over a year before the filing of the Complaint. The Complainant having legal representation tried to remedy this defect by reference to two company name registrations and evidence of later events when it knew, or should have known, that the Complaint could not succeed under any fair interpretation of the facts. 

Further, the Complaint is motivated by the Complainant’s dissatisfaction with the price of the disputed Domain Name and the Respondent’s unwillingness to offer a substantial discount. In the Panel’s view, the record indicates that the Complainant resorted to the Policy as “Plan B” in case it failed to gain control over the disputed Domain Name in the marketplace or to increase its bargaining leverage. Either is a highly improper purpose for a complaint under the Policy and constitutes a further basis to find Reverse Domain Name Hijacking. Therefore, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 

Separate Decision (The Hon Neil Brown Q.C.): The Complainant has no case in this proceeding, not even an arguable one, and that should be said at the outset. I am of the view that the Panel should deal with and reach conclusions on the issue of rights and legitimate interests, as it concerns some important and relevant issues raised by the parties that should be resolved. The Respondent has right or legitimate interest in the Domain Name because the Respondent registered it and was entitled to do so on the principle that applies to all domain names, namely that first come is first served. There was no trademark standing in the way of the Respondent acquiring a complete right and interest in the Domain Name. 

In any event “red” is clearly generic, as is “grass” and there seems to be no reason why anyone could claim that the combined word is not generic when it clearly is. Accordingly, the Complainant cannot claim that it has an exclusive right to a word, or in this case two words, which are available to all the world to use legitimately, as the Respondent has done. right or legitimate interest in the domain nameAs a generic word, it is additionally regarded as legitimate in the domain name field as a bona fide offering of goods and services when it is used in a domain name that is available for sale. Not only is the unchallenged evidence that the Domain Name itself is part of the Respondent’s stock in trade, but it also stocks more similar domain names invoking both the word “red” and the word “grass”. The retention of <redgrass .com> by the Respondent as part of its stock in trade as a buyer and sell of domain names is therefore entirely consistent with this established and legitimate business practice.

Complaint Denied (RDNH)

Complainants’ Counsel: Riccardo Ciullo, Spain 

Respondents’ Counsel: Self-represented 

URL: https://www.wipo.int/amc/en/domains/decisions/pdf/2022/d2022-2433.pdf

Tags: WIPO, Denied, RDNH 

Case Comment by ICA General Counsel, Zak Muscovitch:  The Panel made the correct determination in refusing the requested transfer and additionally finding that the Complainant engaged in RDNH. Interestingly, while the majority held that it was “unnecessary” to evaluate whether the Respondent had a legitimate interest in the Domain Name, Panelist Neil Brown differed and he would have affirmatively found that the Respondent did indeed have a legitimate interest in the Domain Name.

We see Panels skipping a Respondent’s legitimate interest in many cases. This is often done for reasons of judicial economy, as strictly speaking a case can be dismissed on one prong of the three-part test and therefore the decision need not address any additional, extraneous grounds. Nevertheless, there is a compelling argument to be made that Panelists owe it to Respondents in some cases, to make affirmative findings of their rights and legitimate interests. 

This is so for a couple of reasons. First, a Respondent who has had its bona fides challenged and been falsely accused of what essentially amounts to a type of fraud, will often want some vindication and confirmation that indeed the disputed property belongs to them. Though strictly speaking a Panel need not make such a finding and may simply dismiss a Complaint, justice may dictate at least in some cases, that a Panel provide some satisfaction to the Respondent. Second, if Panels were to consistently skip over affirmative findings of legitimate interest in favour of respondents, it has a deleterious effect on bona fide registrants, particularly investors. Their business of lawfully investing in domain names is given short shrift, but more importantly, the case law is thereby not permitted to as fully embrace their bona fide business as it might otherwise be if panelists acknowledged a Respondent’s rights and legitimate interests more often and where appropriate. 

Lastly and of perhaps the greatest significance, is that the Policy itself pursuant to Paragraph 15(c), expressly enables a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:

“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):…”

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Domain Name Corresponding to Disclaimed Words Ordered Transferred

Exclusive Beauty Club, LLC v. Domains By Proxy, LLC, United States / Leah Parks, Parks Avenue, United States, WIPO Case No. D2022-2374

<exclusivebeauty .com> 

Panelist: Ms. Lynda M. Braun

Brief Facts: The Complainant is a boutique e-retailer located in Florida that offers skin care and beauty products. The Complainant owns USPTO trademark registrations for “EXCLUSIVE BEAUTY CLUB” and design, registered on February 6, 2018 (indicating as first use in commerce July 13, 2016);  and also for EXCLUSIVE BEAUTY and design, registered on July 2, 2019. The Complainant owns the Domain Name <exclusivebeautyclub .com>, which resolves to the Complainant’s official website. The disputed Domain Name was created on February 14, 2004, and was acquired by the Respondent probably in 2020 but at least after May 10, 2018, for which Respondent purportedly paid a significant sum to the registrar. The disputed Domain Name resolves to a Facebook page that provides <skinbeautifulrx .com> as its domain name and provides “[…]@skinbeautifulrx .com” as the contact email address. The website at <skinbeautifulrx .com> states that “Exclusive Beauty” is its skincare spa in the Columbus, Ohio area. 

The Complainant submitted a certificate from the State of Ohio according showing the Respondent as the registered agent for “Exclusive Beauty LLC”, originally filed on August 29, 2020. The Respondent submitted a reply to the Complainant’s contentions on July 26, 2022, at first the Respondent requested that the Panel deny the remedy requested by the Complainant but later the Respondent stated it was unaware of the existence of the similarly-named domain name. The Respondent stated that it would cancel the use of the disputed Domain Name, although it would not transfer the ownership of the disputed Domain Name to the Complainant.

Held: The Panel notes that the website at the disputed Domain Name is operated by an entity named “Exclusive Beauty”, however, the Complainant’s EXCLUSIVE BEAUTY Mark predates the Domain Name registration and there is no explanation or evidence submitted by the Respondent regarding the identity of “Exclusive Beauty LLC”. Rather,the Respondent appears to go by “skinbeautifulrx” online and on social media. The Respondent did not submit any substantive arguments or evidence to rebut the Complainant’s prima facie case. Although the Respondent claims that the disputed Domain Name was “purchased for the use of marketing medspa services” and “not for the purpose of ecommerce product sales” (which is what the Complainant provides), the Panel finds both uses may be easily connected, and that both Parties operate in the same general sector.

While the disputed Domain Name combines two dictionary terms, associated with the beauty sector, the Panel finds that the circumstances of the case appears to reflect an awareness of the Complainant and its mark and services. These circumstances would indicate that the Respondent had the Complainant in mind when it acquired the disputed Domain Name, and used it to take unfair advantage of the confusing similarity with the Complainant’s EXCLUSIVE BEAUTY Mark. Moreover, the current inactive or passive holding of the disputed Domain Name by the Respondent (as here) does not prevent a finding of bad faith. Here, the disputed Domain Name resolves to a landing page with no content, and considering the previous use of the disputed Domain Name, the Panel notes that the current passive holding does not prevent a finding of bad faith under the Policy.

Transfer 

Complainants’ Counsel: Berger Singerman LLP, United States 

Respondents’ Counsel: Self-represented 

URL: https://www.wipo.int/amc/en/domains/decisions/pdf/2022/d2022-2374.pdf 

Tags: WIPO, Transfer 

 Case Comment by ICA General Counsel, Zak Muscovitch:  The Complainant relied upon two USPTO trademark registrations, namely for EXCLUSIVE BEAUTY CLUB (design plus words mark, Registration No. 5,394,132), and EXCLUSIVE BEAUTY (design plus words, Registration No. 5,794918). Both of these trademarks expressly disclaim the words apart from the mark. Indeed, the USPTO Examiner required the Complainant to disclaim the wording, EXCLUSIVE BEAUTY, “because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark”. The Examiner went on to state that “An Applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or their services in the marketplace”.

 Yet somehow, the Complainant was able to leverage its design mark trademark registrations – which disclaimed the descriptive words apart from the remaining design aspects of the mark – in order to obtain the transfer of the Domain Name which corresponded to those disclaimed words.

 There is no reference to the disclaimers in the UDRP decision. Surely had the Panelist been aware of the disclaimers, either as a result of the Complainant disclosing them to the Panelist or by the Panelist’s own review of the trademark registrations, the Panelist would not have conferred exclusive rights upon the Complainant and then used such non-existent rights to transfer away the Respondent’s Domain Name.

 The WIPO Overview 3.0, which is extensively referenced in the decision’s text, also happens to address this particular issue which was inadvertently not addressed in the decision itself:

”….Where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP”

 This appears to be precisely the case at hand. The lesson here is that Panelists must scrutinize a Complainant’s trademarks. Unfortunately, Panelists cannot always rely on Complainants to disclose material disclaimers or other limitations on their relied upon trademarks.

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Trademark / Copyright Infringement Issues Are Outside UDRP’s Scope 

Highland Kilt Company LLC v. Saad Aftab, CAC Case No 104767

<kiltandkilts .com> 

Panelist: Gerald M. Levine, Ph.D, Esq.

Brief Facts: The Complainant is using the HIGHLAND KILT Trademark since 2007 and it operates a website using the domain name <highlandkilt .com> that offers for sale kilts, clothing, and accessories. The parties had a recent encounter in a UDRP proceeding for the domain name <highlandkiltstore .com>, wherein the Respondent did not file a response and the Panel in that case found that the evidence supported cybersquatting, it issued a decision awarding Complainant the disputed Domain Name. The disputed Domain Name was registered on January 20, 2022 and is in use by the Respondent in relation to sale of kilts and accessories, under the name of “Highland Kilts Store”. 

The Complainant alleges that as in the Highland Kilt Store case, again the Respondent is continuing to use Complainant’s trademark although not in the domain name this time but on its website to sell kilts and accessories. The Complainant further argues that “[s]ince the Complainant and the Respondent operate in the same field, the Respondent was likely aware of the Complainant’s trademark and registered the Domain Name to prevent the Complainant from reflecting the trademark in a domain name that is confusingly similar to the Complainant’s trademark.” The Respondent contends that it did not know about the previous UDRP until its website disappeared and it learned about the transfer of <highlandkiltstore .com>. It contends that it is a Pakistani producer of kilts and accessories and includes in its Response a copy of a “Taxpayer Profile Inquiry” from the Pakistani Federal Board of Revenue that shows Respondent is a registered business in Pakistan under the name of “Highland Kilt Store” registered July 20, 2020.

Held: There are problems with this Complainant’s argument, since there are many kilt companies on the Internet offering kilts and accessories it is equally likely that Respondent had no specific knowledge of Complainant, or if it did, that it was simply that it was one of many competitors. Further, the disputed Domain Name is not identical or confusingly similar to Complainant’s mark so it cannot be said that its registration “prevent[ed] the Complainant from reflecting the trademark in a domain name.” The Panel finds that the disputed Domain Name includes the word “kilt,” which describes the goods Respondent offers and he is conducting a business registered in Pakistan that produces kilts. Hence, the disputed Domain Name is being used in connection with a bona fide offering of goods or services. 

In contrast to the Highland Kilt Store case in which the disputed Domain Name was virtually identical to the trademark, here the only identity is with the word “Kilt” which, even if had not been disclaimed “could not be regarded as associated exclusively with the Complainant in the minds of consumers”. From the Panel’s brief look at kilt companies advertising on the Internet, if Respondent is infringing Complainant’s copyright then so too are the other competitors that appear to be using stock photographs of kilts. There is also the argument that Respondent is using Complainant’s trademark on its website, but this suggests trademark infringement not cybersquatting, and this theory too, as with copyright infringement claims, is outside the scope of the UDRP. While it is obvious the parties are competitors, the totality of the circumstances before the Panel in this case does not establish that the Respondent registered the disputed Domain Name in bad faith as that concept is understood under the UDRP.

Complaint Denied 

Complainants’ Counsel: Dr. Daniel Dimov

Respondents’ Counsel: Self-represented

URL: https://legacy-udrp.adr.eu/adr/decisions/decision.php?dispute_id=104767

Tags: CAC, Denied

Case Comment by ICA General Counsel, Zak Muscovitch: Panelist Gerald Levine thoroughly explained why the Complaint was meritless in his usual erudite and clear manner. As noted in the decision, this Respondent recently lost a UDRP in respect of the domain name, HighlandKiltsCompany .com, as reported in Digest Volume 2.36. Interestingly, the Respondent in this present case claimed that he was unaware of the previous proceeding until his website went down. Although we are unable to judge the veracity of this, we have seen some anecdotal evidence and similar claims in other cases over the years. It therefore seems advisable that we revisit the notice requirements for UDRP proceedings, with a view to somehow improving them. One possibility is to require the registrar to also provide some form of notice to its customer, the Respondent.

As noted by Panelist Levine, the disputed Domain Name isn’t confusingly similar to the Complainant’s trademark. It isn’t even close, in fact. But apparently the Complainant got a taste of just how effective the UDRP can be in quickly transferring a domain name and therefore came back a second time, although with far broader ambitions. We see this happen on occasion. That is why it is important for Panelists to hold the line even in default cases as otherwise it can inadvertently encourage complainants to bring meritless cases in the hopes that they will once again run into a defaulting respondent and receive little scrutiny from a Panel. 

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URS Requires Clear and Convincing Evidence 

AMI (FR) v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf (IS)

<amiweb .store>, <amiltd .store>, <amistreetwear .store>, <amisweatshirts .store>, <amishirt .store>, <amitee .store> and <amishirts .store> 

Examiner: Eugénie Chaumont

Brief Facts: The Complainant is a well-known fashion house founded in 2011 by the designer Alexandra Mattiussi, specializing in prêt-à-porter (ready to wear) and fashion accessories. The Complainants asserts that it owns 20 stores in six countries and 395 other points of sale across 40 countries. The Complainant alleges to own an extensive number of registered trademarks worldwide, all emphasizing the word “AMI”. The Complainant mentions the website <amiparis .com> and indicates that it was registered on November 15, 2014 and is in active use since then. The Complainant underlines the fact that the disputed Domain Names point to websites displaying a copy of previous advertising campaigns of the Complainant (February 2021), or to websites selling competing goods. The Complainant further alleges that use in the disputed Domain Names of generic words that describe or are close to its field of activity, and of websites that impersonate the Complainant show that Respondent has registered and is using the disputed Domain Names in bad faith. 

Held: The Complainant name provided is AMI and the Complainant mentions 3 international trademarks and 2 French trademarks detailing their numbers, date of registration, classes and date of renewal. Among the Annexes the Complainant provides a table mentioning the more relevant trademarks, but without mentioning the trademark owner, nor enclosing any registration certificate or providing any proof of use. The WHOIS of the Complainant’s domain name <amiparis.com>, attached to the Complaint, indicates owner AMI PARIS. The previous UDRP decisions also mentions AMI PARIS as the Complainant. Therefore, there is an inconsistency in the name of the Complainant in the Complaint and in the trademark databases, WHOIS and previous UDRP decisions. In a similar case, a UDRP Panel would have asked for an amendment of the Complaint but this is not possible in a URS procedure. Therefore, it can be concluded that the Complainant did not give clear and convincing evidence that the disputed Domain Names are identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use. Therefore, the Examiner finds that the requirements of the URS Procedure have not been satisfied. As the first element is not satisfied the Examiner will not detail the other elements which are nevertheless relevant and deny the relief requested. 

Complaint Denied 

Complainants’ Counsel: IP Twins (FR)

Respondents’ Counsel: No Response 

URL: https://urs.mfsd.it/system_data/source_pdf/ECC38B4D.pdf

Tags: URS, Denied