Welcome to this week’s UDRP Digest (vol. 1.9), summarizing the most intriguing cases of the past week. Read about:
‣ IP Law Firm claim of generic meaning in ‘LEGO’ rejected (legoip .com)
‣ Law Firms battle it out for the ‘Torrent Defenders’ title! (torrentdefenders .com)
‣ Lack of credible explanation leads to Transfer of descriptive Domain Name (vetexpert .com)
‣ The server company fails to deploy streamline arguments (streamlineservers .com)
‣ Attempt to set up a fake Drug Development Lab foiled (drugdevelopmentlabcorp .com)
‣ Is surrendering of a Domain Name – the Best Way Out? (hp-go .com)
Enjoy!
IP Law Firm claim of generic meaning in ‘LEGO’ rejected
LEGO Juris A/S v. Kamal Mahmoud, WIPO Case No. D2021-2354
<legoip .com>
Transfer
Panelist: Mr. Evan D. Brown
Brief Facts: The Complainant owns LEGO trademarks for its construction toys and other LEGO branded products in numerous jurisdictions. This includes Egyptian trademark registration dated August 27, 1964 in the home country of the Respondent. The disputed Domain Name has registration date of March 5, 2021 and hosts an active website related to intellectual property legal services. The Respondent argues that the word LEGO is a generic word that cannot be monopolized and its products differ from those of the Complainant.
Held: The record contains no information that shows the Respondent is known by the disputed Domain Name or otherwise the Complainant has given no license or authorization of any other kind to the Respondent to use the trademark LEGO. Given the notoriety of the LEGO mark (despite Respondent’s claim it is a “generic word”), any use of the mark that the Respondent would make in a Domain Name would likely violate the Complainant’s exclusive trademark rights, and thereby show a lack of any legitimate rights or interests. The mark LEGO is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith. Where a Domain Name is obviously connected with such a well-known name and products… its very use by someone with no connection with the products suggests opportunistic bad faith.
Complainants’ Counsel: CSC Digital Brand Services Group AB, Sweden
Respondent’ Counsel: Self-represented
Law Firms battle it out for the ‘Torrent Defenders’ title!
<torrentdefenders .com>
Complaint Denied (with RDNH ruling)
Panelist: Mr. Brian J. Winterfeldt (Presiding), Ms. Francine Tan and Mr. Richard G. Lyon
Brief Facts: The Complainant is a Chicago based law firm providing legal services including legal defense services for parties accused of copyright infringement, including uploading files to BitTorrent (file-sharing) sites. It owns a wordmark registration for the TORRENT DEFENDERS that registered on April 9, 2019 under Class 41 and 45. The Complainant uses the <torrent-defenders .com> domain name, to provide a blog offering information on developments in copyright infringement issues. The Respondent is also a Law Firm having offices throughout the United States and the legal services include defense of parties accused of uploading files to BitTorrent sites. The disputed Domain Name has a registration date of August 23, 2016. The Respondent uses the disputed Domain Name to redirect to <vondranlegal .com/bittorrent-defense-lawyer/>, which inter alia, offers information on Respondent’s BitTorrent defense services.
Held: The Respondent has demonstrated that it is using the term “torrent defenders” in its descriptive sense to describe the subject matter of the website to which it redirects the disputed Domain Name. It contains information and articles about defending copyright infringement claims related to “torrent” file sharing sites, and to describe its provision of related legal services. As the Respondent is using the disputed Domain Name in connection with this offering of services since 2016, before receiving any notice of the Domain Name dispute at issue in this proceeding, Respondent has satisfied the requirement set forth by Paragraph 4(c)(i) of the Policy. For similar reasons, there is no evidence of bad faith in the registration and use of the disputed Domain Name.
RDNH: In the circumstances of the case, a finding as to Reverse Domain Name HIjacking is appropriate here. Several of the factors set out in section 4.16 of the WIPO Overview 3.0 that support such a finding are present: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements; (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview; (viii) basing a complaint on only the barest of allegations without any supporting evidence. Further, the Complainant, himself an intellectual property lawyer, is represented by counsel, a factor that some panels have found and the Panel majority finds here, should be held to a higher standard.
Complainants’ Counsel: Weaver Robinson Law Firm, PLLC, United States of America.
Respondent’ Counsel: John Berryhill, Ph.d., Esq., United States of America.
Lack of credible explanation leads to Transfer of descriptive Domain Name
Vet Planet Sp. z o.o. v. Yang Kyung Won, WIPO Case No. D2021-1874
<vetexpert .com>
Transfer
Panelist: Mr. Moonchul Chang
Brief Facts: The Polish Complainant has developed solutions in veterinary diagnostics, medicines and nutrition. The Complainant has registrations for the figurative trademarks for VET EXPERT in many jurisdictions including the European Union since 2009. The disputed Domain Name <vetexpert .com> has registration date of November 9, 2011. At the time of submission of the Complaint, the Respondent’s website contained only pay-per-click links and information on the sale of the disputed Domain Name. Currently, the website at the disputed Domain Name is redirected to <cafe.naver .com/farhold> which the Respondent asserts to be an automobile fan club. The Complainants also assert that the Respondent has prior adverse UDRP decisions against him.
Held: From the archives, it seems the Respondent has registered and used the disputed Domain Name for the purpose of selling it for a profit or for operating a pay-per-click website. Later, after the filing of this Complaint, the disputed Domain Name is currently being redirected to another website which the Respondent asserts to be an automobile fan club. However, there is no link between the Respondent’s activity and the disputed Domain Name and rather the current website fails to create the impression that the Respondent conducts bona fide activities. The Respondent, during the proceedings, asked to clarify what bona fide activities he conducts or intends to conduct in association with the disputed Domain Name, the Respondent failed to explain as to why he had to make such changes in the span of at most a few months or why he chose the disputed Domain Name for such use in the first place. Interestingly, the Respondent now indicates the future business plan to use the disputed Domain Name for a VET coin business. Noting no further credible explanation for the use of the disputed Domain Name is available from the Respondent, indicates bad faith.
Complainants’ Counsel: Hasik Rheims & Partners, Poland
Respondent’ Counsel: Self-represented
The server company fails to deploy streamline arguments
GSL Networks Pty Ltd. v. Domains By Proxy, LLC / Alex Alvanos, Bobservers, WIPO Case No. D2021-2255
<streamlineservers .com>
Complaint Denied (with RDNH ruling)
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Australian Complainant (incorporated in 2017) claims to have used the name “Streamline Servers” for various businesses since 2009, without providing any supporting evidence. The Complainant is providing high performance server hosting services through a website operated under the domain name <streamline‑servers .com> and lists other 24 similar Domain Names. The Complainant is the owner of Australian & US Trademarks in respect of the figurative mark S STREAMLINE SERVERS, registered in the year 2020 in classes 38 and 42. Said mark claims a “first use in commerce” date of April 1, 2016 and includes a disclaimer in respect of the exclusive right to use the word “servers” apart from the mark as shown. The disputed Domain Name has a registration date of June 24, 2004 and is currently inactive but in April 2021 disputed Domain Name redirected to a competitor website at <gameservers .com>. The earliest Internet Archives from “Wayback Machine” dating from 2004, 2005 and 2010 demonstrate that the Respondent operated a game server hosting business from the disputed Domain Name.
Held: There is no suggestion or evidence on the present record that in registering the disputed Domain Name in 2004, the Respondent anticipated and intended to target any then-nascent rights of the Complainant. The Complainant did not itself exist until 2017 and, on its own assertion, its predecessors or affiliates did not commence trading as “Streamline Servers” until 2009. This is sufficient to dispose of the Complainant’s case on registration in bad faith, the Complaint therefore fails. Turning to use in bad faith, neither the Response nor the Respondent’s annexed declaration attempt to explain the apparent affiliate link at the disputed Domain Name. Though, the onus of proving falls upon the Complainant and it has put forward no evidence of such use as well. The present notoriety of the Complainant’s mark and the extent and reach of its rights cannot be assessed, based purely upon the list of customer numbers available. Therefore, the Complainant has failed to demonstrate use in bad faith on the balance of probabilities.
RDNH: Herein, the Complaint accepts that the disputed Domain Name has registration date of 2004. Such a Complaint is doomed to fail at the outset as the Complainant could not prove registration in bad faith. Indeed, the Complainant’s failure, or that of its representatives, to carry out basic research into the history of the disputed Domain Name before resorting to its Complaint under the Policy, together with the representatives’ apparent lack of familiarity with Policy precedent on the relevant issue, places this particular case into RDNH territory. Based on the Respondent’s submissions, undoubtedly the Respondent has suffered inconvenience and expense, and therefore the circumstances call for the sanction which is available to it as to RDNH.
Complainants’ Counsel: Dowd & Company, Australia
Respondent’ Counsel: Lewis & Lin, LLC, United States
Attempt to set up a fake Drug Development Lab foiled
Laboratory Corporation of America Holdings v. Hope Lee, NAF Claim Number: FA2109001962152
<drugdevelopmentlabcorp .com>
Transfer
Panelist: Mr. Petter Rindforth
Brief Facts: The Complainant is the world’s leading health care diagnostics company, having rights in the LABCORP trademark for the last many years. The Complainant also operates through a subdomain <drugdevelopment .labcorp .com>. The disputed Domain Name has a registration date of June 23, 2021 and redirects visitors to a parked website with linked advertisements, some of which promote products and services of competitors of Complainant. The Complainant alleges that the Respondent has a pattern of bad faith registration and use of infringing domain names as demonstrated by three prior UDRP decisions against the Respondent.
Held: The Complainant has made a prima-facie case that Respondent does not have any rights or legitimate interests in the Domain Name, but the Respondent has not come forward with a response. The Complainant provides a screenshot of Respondent’s homepage, which features hyperlinks advertising for “Labcorp,” “Lab Test Locations Nearby,” “Testing,” “Pharmaceutical Company,” “Mental Health Assessment Tool” etc. The said use of a Domain Name to host competing hyperlinks does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy. Additionally, the Complainant has identified three prior UDRP decisions against the Respondent, which is bad faith in terms of Policy ¶ 4(b)(ii). The Respondent also takes advantage of users who mistype the URL of Complainant’s <drugdevelopment.labcorp .com> website by leaving out the “.” between “drugdevelopment” and “labcorp” in creating the disputed Domain Name, which amounts to typosquatting and bad faith in terms of Policy ¶ 4(a)(iii).
Complainants’ Counsel: David K. Caplan of Kilpatrick Townsend & Stockton LLP, USA
Respondent’ Counsel: No Response
Is surrendering of a Domain Name – the Best Way Out?
<hp-go .com>
Transfer
Panelist: Mr. Richard Hill
Brief Facts: The Complainant is a global provider of printers, printer supplies, mobile devices, and IT solutions and services. The Complainant has rights in the HP mark based upon its registration in the United States since 1979. The Complainant alleges Respondent doesn’t use the disputed domains for any bona fide offering of goods or services or legitimate non-commercial or fair use. Instead, the Respondent passes off as Complainant and displays fake HP security seal validation pages which facilitate the sale of counterfeit goods. The Respondent has failed to submit a Response but in an informal email, inter alia, Respondent states: “Hello, I don’t want to dispute the domain, I want to give up, cancel, delete, delete, transfer, transfer”.
Held: The parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitration as well as national court proceedings, this Panel cannot act ‘nec ultra petita nec infra petita’, that is, it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy. Therefore, there is no need to analyze the elements of the Policy.
Complainants’ Counsel: James F. Struthers of Richard Law Group, Inc., Texas, USA.
Respondent’ Counsel: Self-represented