Hard-Hitting RDNH Findings and More – ICA UDRP Digest – Vol 1.16

Kamila Sekiewicz UDRP, UDRP Case Summaries, WIPO

Panelist Neuman Makes Extensive RDNH Finding Against Complainant Who Waited 20 Years and Failed to Prove Even Common Law Rights

Electrosoft Services, Inc. v. TechOps / SyncPoint, NAF Claim Number: FA2110001969515

<electrosoft .com> 

Complaint Denied (RDNH)

Panelist: Mr. Jeffrey J. Neuman

Brief Facts: The Complainant provides Information Technology and Cybersecurity services, primarily the US government. The Complainant admits that it does not have a registered trademark, but alleges that it has been using the term “Electrosoft” in connection with its trade name since 1997.  It alleges that its common law rights accrue by virtue of its registered business name in the State of Maryland (since 1997), and in the Commonwealth of Virginia (since 2003).  It also uses a logo and branding that includes the company name and the visible word “Electrosoft.”  Complainant claims that it regularly refers to itself as “Electrosoft” in proposals to its customers and has registered with the United States Federal Government procurement system under the name “Electrosoft Services, Inc.”. Other than the limited information above, the Complainant does not provide any evidence of (i) the amount of sales under the mark, (ii) the nature and extent of advertising using the mark, (iii) the degree of actual public recognition, or (iv) consumer surveys that are generally the types of evidence provided in by the holders of unregistered common law rights.  It simply concludes that because Complainant uses the term “Electrosoft” in its corporate name in a variety of forms, it has common law rights.

Held: The formation of a company alone does not qualify as having a trademark or service mark. The Complainant does have a website address, <electrosoft-inc .com>, which uses a logo “Electrosoft”. Even if this is considered as sufficient evidence of common law rights, the Complainant has failed to demonstrate that it established those common law rights and acquired distinctiveness (or secondary meaning) prior to the Respondent’s registration of the disputed Domain Name in 2000. Besides, the Complainant’s best evidence, its website, was not even registered and/or launched until more than a year after the Respondent acquired the disputed Domain Name.

RDNH: Although there is no concept of the defense of “laches” in the UDRP context, this type of extensive delay in the enforcement of its rights is a factor that may be considered in determining whether the Complaint was filed in bad faith. In its supplemental filling, the Complainant’s counsel didn’t even attempt to cure any of the deficiencies that are glaringly obvious with respect to the second or third elements of the Policy. It would have been highly improbable, if not impossible, for Respondent to have known about the Complainant’s existence at the time it registered the disputed Domain Name.  In addition to the Respondent being unable to know of Complainant’s existence, Complainant does not introduce any evidence that Respondent was somehow targeting Complainant nor seeking to profit from Complainant’s business goodwill.  Instead, Complainant makes the argument that the respondent is using the disputed Domain Name in bad faith because Respondent resells domain names. There is nothing in the Policy that prohibits the purchase and sale of domain names.  It is only a violation of the Policy if a registrant acquires a domain name primarily for the purpose of selling . . . the domain name registration to a Complainant who is the owner of the Trademark or to a competitor of the Complainant, for valuable consideration in excess of the registrant’s out-of-pocket costs directly related to the domain name.

This is a classic “Plan B” case where complainants that are unable to purchase a domain name through negotiation file UDRP actions in a last-ditch effort to try and acquire the domain name.  Complainant initiated the contact with the Respondent and made the first offer.  When this was rejected, it made a second offer.  Not satisfied with the Respondent’s higher counteroffer, Complainant filed this case.  This alone is indeed grounds for a finding of bad faith and abuse of the administrative proceeding by Complainant, especially in light of the lack of any showing that the Respondent was targeting Complainant.

Panels have traditionally held parties represented by counsel to a higher standard especially when deciding whether to make a finding of RDNH. Complainant’s counsel in this matter should have known that even if it could establish the common law rights of the Complainant in its Additional Submission, it could not have established that the disputed Domain Name was registered and used in bad faith.  In fact, Complainant’s counsel did not even try to address these other elements.  By not addressing these other elements, the Panel is left to conclude that counsel for the Complainant was trying to cure only the one element it thought it could solely to advance its argument that it is inappropriate to find RDNH where a Complainant has been successful in proving one of the required elements of the UDRP.  In this case, counsel for the Complainant should have recognized the deficiencies, requested that its Complaint be withdrawn without prejudice and if, in the unlikely case that the withdrawal was not accepted, make an alternative argument as to why the Panel should not find RDNH.

The Panel finds that even if the Complainant establishes that one (or even two) of the elements of the Policy have been met, a finding of RDNH may still be appropriate depending on the facts and circumstances of a case.  For example, a complainant that owned a trademark registration for a mark that happens to be confusingly similar to a domain name owned by a registrant who also a registered trademark for the same mark (in a different class of services) would have no adverse consequences for making frivolous claims regarding the Respondent’s lack of rights or legitimate interests in the domain name.  The Panel notes that adopting the proposed rule by the Complainant would significantly weaken the concept of RDNH.

Complainants’ Counsel: Kevin J. Thomas and Jason D. Rosenberg, Virginia, USA
Respondents’ Counsel: Brett E. Lewis and Michael Cilento of Lewis & Lin, LLC., New York, USA.


Panelist Nahitchevansky Finds RDNH on First Domain, Transfers the Other Ten to Complainant

Idaho Home Realty LLC v. Michael James Ohlson / Michael Ohlson / Bob Adams, VVG, WIPO Case No. D2021-2768

<idahomerealty .com> and 10 others 

Transfer, Denied (RDNH) in part

Panelist: Mr. Georges Nahitchevansky

Brief Facts: The Complainant is a real estate business based in Idaho, United States. It owns a trademark registration dated March 23, 2021 for a logo mark with the words “Idaho Home Realty Group LLC” (words disclaimed in the registration), claiming first use date of November 1, 2018. The Complainant further obtained an assignment of all rights in two marks that include IDAHOME REALTY in June 2020. The Respondent registered the disputed Domain Name <idahomerealty .com> on January 15, 2013, initially used it for promoting his real estate services and continued for the next few years. In March 2021, the Complainant attempted to purchase the disputed Domain Name through a broker and made a $6,000 offer, however the communications came to an end by April 15, 2021. On April 21, 2021, the Respondent registered 10 other IDAHOMEREALTY formative Domain Names and offered to sell them when contacted by the counsel for the Complainant.

Held: At the time of registration of <idahomerealty .com> in January 2013, the Complainant did not have any trademark rights. There is also no other evidence that conceivably could suggest that the Respondent was acting in bad faith at that time as regards <idahomerealty .com>. However, the Respondent registered the additional disputed Domain Names a few days after communications with Complainant’s broker regarding <idahomerealty .com>. It appears to the Panel that Respondent is claiming that his registration of the Additional disputed Domain Names in April 2021 was legitimate because Respondent had developed prior rights in IDAHOME REALTY through the registration and use of the <idahomerealty.com> disputed Domain Name in 2013. The evidence before the Panel, though does not support that claim. However, Respondent provided no evidence that he has made any use of IDAHOME REALTY with real estate services, or as a trademark owned by Respondent, at any time since 2013. Indeed, the evidence provided by Complainant shows that Respondent is no longer in the real estate business, no longer offers real estate services, and has been out of that field since at least as early as 2017 if not earlier. It also appears to the Panel from the evidence submitted by the parties that Respondent was more than likely aware of Complainant’s use of IDAHO HOME REALTY in connection with its real estate services and of Complainant’s acquisition of the IDAHOME REALTY GROUP trademark registration and pending application in 2020.  Given the Respondent’s lack of rights in IDAHOME REALTY in April 2021, use of the disputed Domain Names with parked pages full of real estate related links in April 2021 and ready willingness to sell all of the disputed Domain Names, four days after registering them, further underscores the lack of any legitimate interest in or claimed planned bona fide use of these newly registered disputed Domain Names.

RDNH: What is telling here is that Complainant and its counsel, who essentially claimed in communications with Respondent to be well versed in the UDRP as he claimed to have “won many of them,” failed to submit any documentary evidence establishing that Complainant had trademark rights in IDAHO HOME REALTY, IDAHO HOME REALTY GROUP, or IDAHOME REALTY GROUP in January 2013 when Respondent registered the <idahomerealty .com> disputed Domain Name. he Complainant and its counsel ought to have known that it could not succeed under any fair interpretation of the facts reasonably available prior to the filing of the Complaint as against the <idahomerealty.com> disputed Domain Name and that basing its Complaint as to that disputed Domain Name on the barest of allegations without any supporting evidence was doomed to fail and an abuse of the UDRP process.

Complainants’ Counsel: JMR Law Group PLLC, United States
Respondents’ Counsel: Self-represented


Three-Person Panel Finds RDNH: Complainant Continued to Prosecute Despite Futile Chronology

SD Wheel Corp. v. Dustin Hoon / TrailBuilt.com, NAF Claim Number: FA2109001967151

<trailbuilt .com> 

Complaint Denied (RDNH)

Panelist: Terry F. Peppard, Esq., (Chair), Christopher K. Larus, Esq., Georges Nahitchevansky, Esq. 

Brief Facts: The Complainant provides retail store services online featuring automotive wheels, tires, suspension components, and related clothing and accessories. The Complainant holds a registration for the TRAILBUILT service mark with USPTO, registered on October 6, 2020 claiming first use in commerce to be June 24, 2019. The disputed Domain Name was first registered on November 4, 2018, by Respondent’s predecessor in interest, and the Respondent acquired the Domain Name on June 10, 2019. The Respondent made a proposal to sell the Domain Name only after the Complainant specifically solicited such a proposal, not once but twice.

Held: The Respondent acquired the disputed Domain Name on June 10, 2019, while the Complainant obtained registration of its TRAILBUILT service mark nearly sixteen months later, on October 6, 2020. The Complainant filed its application for registration of the TRAILBUILT mark on September 16, 2019, more than 95 days after the disputed Domain Name was registered by the Respondent. Even the Complainant’s asserted common law rights in the mark date only from June 24, 2019 which was fourteen days after Respondent’s registration of the Domain Name. Accordingly, it would not establish that the Respondent registered the disputed Domain Name in bad faith.

RDNH: Firstly, throughout this proceeding the Complainant was represented by experienced counsel. Secondly, the Complainant should have known when it filed its Complaint that the Domain Name registration date was prior to the trademark application. Thirdly, the Complainant offered no evidence showing that the Respondent procured its Domain Name registration in anticipation of the Complainant’s trademark registration. Fourthly, the Complainant filed its Complaint only after its efforts to purchase the Domain Name from the Respondent failed. Lastly, the Complainant continued to prosecute this proceeding even after the Response showed that the Complaint couldn’t possibly succeed. As a consequence, Complainant is guilty of Reverse Domain Name Hijacking.

Complainants’ Counsel: Michael J. Bendel of Davis & Kuelthau. s.c., Wisconsin, USA
Respondents’ Counsel: Kleiman Professional Legal Services, California, USA


Respondent Claimed that “Khadi” is a “Dictionary Word”, Without Any Evidence

Khadi & Village Industries Commission v. Michael F Mann, Domain Asset Holdings, LLC, WIPO Case No. D2021-3242

<khadiindia .com> 

Transfer 

Panelist: Mr. John Swinson 

Brief Facts: The Complainant is a statutory body established by an Indian Act of Parliament, namely “Khadi and Village Industries Commission Act of 1956”. It provides large scale employment to rural people, including those belonging to scheduled castes, and scheduled tribes and rural women in India. The Complainant owns registered trademarks for KHADI in India and in other countries, since 2014. The Complainant also owns registered trademarks for a stylized logo that includes the words “Khadi India” in India. The Respondent is a domain name trader and registered the disputed Domain Name on May 17, 2015. At the time of filing the Complaint, the disputed Domain Name was offered for sale. Both the Complainant and the Respondent have been parties in many prior decisions under the Policy.

Held: The Respondent asserts that “khadi” is a generic term for a common item of clothing worn in India but failed to provide any evidence that “khadi” is a dictionary term, or any evidence of common and unlicensed use of the term “khadi”. In contrast, the Complainant provided significant evidence that KHADI is in fact a trademarked term, and even the previous UDRP panels did not consider KHADI to be a dictionary term. The Respondent also submits that the Complainant did not register trademarks in the USA. Such line of argument is not convincing, insofar as the Respondent is not trading domain names under the ccTLD “.us”, but under the valuable gTLD “.com”. Doing so certainly broadens the Respondent’s duty to look outside of the United States borders to find out about possible third parties’ conflicting trademark rights. If the Respondent had done so, and the obvious place to look first was India, the Respondent would have easily discovered at least one of the Complainant’s many trademark registrations in India. However, the Respondent provided no evidence as to what due diligence it actually did prior to registering the disputed Domain Name.

Complainants’ Counsel: Fidus Law Chambers, India 
Respondents’ Counsel: Leventhal, Senter and Lerman, PLLC, United States 


Complainant Failed to Overcome Domain’s Apparent Earlier Date of Registration 

Property Tax Partners, LP, LLP v. FCSE, NAF Claim Number: FA2109001964641

<ptp .com> 

Complaint Denied 

Panelist: Mr. Dennis A. Foster

Brief Facts: The Complainant operates a property tax preparation company, including government relations and legal services, within the United States. Since 2006, the Complainant has conducted its business under the PTP service mark which was registered with the USPTO on November 24, 2020. The disputed Domain Name was registered on April 26, 1995 and the Respondent claimed that he acquired that name in 1998. The Respondent claims that he has consistently used the domain name for “back end” operations in connection with at times used the disputed Domain Name in connection with his work as a systems engineer.

Held:  The Complainant’s recent USPTO registration for the PTP service mark shows that the PTP service mark was not used by the Complainant before September 22, 2006. The Respondent provides no concrete evidence to support its claimed 1998 registration date, however the Complainant presents no evidence to counter the claim.  As the overall burden of proof with respect to this element falls upon Complainant, the Panel must conclude that Complainant has failed to sustain that burden as required under the Policy since as of 1998, the Complainant had not yet used its PTP service mark and therefore the registration would not have been in bad faith.

RDNH: Not argued.

Complainants’ Counsel: Holly H. Barnes of The Law Offices of Holly Barnes, PLLC, Texas, USA
Respondents’ Counsel: Self-Represented


Alleged “Parody” Website Considered “Bad Faith”

Citadel LLC and its related entity CE TM Holdings LLC v. Christopher Britt / Priviley LLC, NAF Claim Number: FA2110001968516 

<citadelair .com> 

Panelist: Dr. Reinhard Schanda (Presiding), Ms. Diane Cabell and Mr. Richard W. Hill 

Transfer 

Brief Facts: The Complainant provides financial services in the United States and around the world. It holds rights in the CITADEL mark based on registration of the mark with the USPTO on February 27, 2007. The Complainant contends that the Respondent registered and uses the disputed Domain Name in bad faith to pass off as Complainant and divert users to a website for private airline services, which features a jet with the CITADEL logo on the wing. The Respondent contends that the domain name was registered in connection with his Twitter account which was used to post parodic criticism of the Complainant from the perspective of a luxury airline pilot. However, the Complainant claimed that neither the Domain Name itself not the associated website contain any actual humour, parody or criticism, and rather creates the false impression that it is a legitimate airline service of Complainant.

Held: While the Respondent alleges that he plans to use the disputed Domain Name to parody Complainant, and refers to a Twitter account to support its position,  the resolving website does not display any content that could be construed as parody and the Respondent did not provide any evidence of plans to post any such content. A majority of the Panel does not accept that Respondent’s conclusory allegations are sufficient to establish that it really intends to post parody content on the resolving website. Passing off by making use of the complainant’s mark and logo, thereby trading off the complainant’s goodwill to promote the respondent’s unrelated business is evidence of bad faith disruption of a complainant’s business under the Policy and an attempt to attract users for commercial gain under the Policy. A majority of the Panel therefore believes that an Internet user could be confused into believing that the resolving website is associated with Complainant and therefore finds that the Respondent lacks rights or legitimate interest in the Domain Name and registered and used the Domain Name in bad faith.

Appeal of the decision: The Respondent filed a lawsuit in Federal District Court in Arizona and asked the court to declare that his registration and use of the domain is not unlawful. The lawsuit reads: “This is simply a case of a multi-billion-dollar company trying to silence a private citizen who is critical of its operations and pokes fun at its CEO’s extravagant lifestyle.” Source: DomainNameWire.

Complainants’ Counsel: Laura M. Franco of Winston & Strawn LLP, California, USA
Respondents’ Counsel: Roberto Ledesma of Lewis & Lin, LLC, New York, USA

Comment by ICA General Counsel, Zak Muscovitch on <citadelair .com>

This case highlights the UDRP’s continuing challenge of reconciling trademark owner rights with freedom of expression and non-commercial use. This challenge of dealing with non-commercial criticism websites was discussed in Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC (WIPO Case No. D2019-0633) which identified two divergent approaches to evaluating whether a respondent has a legitimate interest in operating a genuine criticism site using a domain name that is identical or confusingly similar to a complainant’s mark; a) Under the first view, a respondent’s right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark; and b) in contrast, under the second view, a “respondent would have a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and non-commercial.” The second view is informed by United States law under which criticism sites are routinely protected, however the Panelist in Dover Downs proposed a ‘third approach’ which has also been incorporated into the WIPO Overview 3.0, namely an “impersonation test” wherein a registrant is not barred from using a domain name that contains a trademark plus an additional, distinguishing term.

This third approach has not to-date, been resolved by stakeholders and the issue of non-commercial criticism-related domain names continues to be problematic under the UDRP. For example, see the recent case of Arbec Forest Products Inc. v. Gilbert Tremblay (CIIDRC, May 11, 2021 >>LaPetitionArbec .com<<) wherein the Panelist ordered the transfer of the disputed domain name despite it arguably including an “additional, distinguishing term”, namely “La Petition”), and despite it apparently being used by the respondent in connection with an effort to increase employee and contractor wages and to boycott the Complainant – which the Panelist declined to characterize as “non-commercial” in nature.In the AirCitadel.com case, it was likely the particular facts which enabled the majority of the three-person Panel to determine that the Domain Name was not genuinely used in a non-commercial manner. The facts apparently did not demonstrate that the domain name was being used for an actual parodic website at the time that the case was filed (See for example, the historical screenshot from Archive.org), though the evidence did disclose that the associated website was not genuinely commercial in nature – as no airline services were actually being offered – and the Respondent’s reason for having registered it was likely related to his associated parodic Twitter account.

If the lawsuit filed under Paragraph 4(k) of the Policy to supersede this UDRP decision proceeds to a hearing, it will be very interesting to see how a U.S. court sees this case and whether it provides any guidance to UDRP Panels on this issue, at least from a U.S. perspective.