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Quality Carriers, Inc. v. Bests, LLC, WIPO Case No. D2021-1807
QualityCarriers.com
Transfer
Panelist: Mr Robert A. Badgley
Summary: Generic-sounding QualityCarriers.com transferred in UDRP proceedings. Complainant had a long standing trademark. Respondent had record of prior cybersquatting. No proper response filed.
Brief Facts: Quality Carriers, Inc., USA filed UDRP over <qualitycarriers.com>. Complainant, a provider of transportation services, had a registered Trademark since 2001, claiming its usage date as 1985. The domain name was acquired in 2009 and was parked with ads of Complainant’s competitors. Respondent filed a brief response, just referring to domain as “very generic pair of words”, held insufficient by the Panelist.
Held: The parking of pages with PPC links to competitor websites and being named in previous UDRPs undermined Respondent’s credibility in general and no legitimate interests were found. Given the facts & circumstance, coupled with an earlier registered trademark, Bad Faith registration and use was found. Domain transfer ordered.
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Brickworks Building Products Pty Ltd. v. Brickworks LLC, NAF Claim Number: FA2106001951356
Brickworks.com
Complaint Denied
Panelist: Mr. Petter Rindforth
Summary: Complainant had recent 2018 trademark registration, no evidence as to prior common rights. Domain name registered in 1997, used by Respondent in descriptive sense, evidence produced. No active website but was used for email purposes.
Brief Facts:
Australian based Complainant claimed usage of mark BrickWorks since 1934 but had a recent Trademark registration of 2018. Respondent had registered the domain name in 1997 but was not making active use of the domain name, though was listed as Brickworks in business documents from third-parties and also for email communication. Proper evidence in support made available by the Respondent.
Held: The disputed domain name is a common and descriptive term. The Respondent provides masonry services and utilizes the domain name to communicate with customers and vendors. Respondent is commonly known by the <brickworks.com> domain name under the Policy. No evidence adduced by the Complainant in relation to common law rights in the mark since 1934. No registration in Bad Faith. The Panelist held that the Doctrine of Laches does not apply to the UDRP because the remedy under the UDRP “is not equitable”, whereas laches is an equitable remedy. Complaint Denied.
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Creatd, Inc. v. Privacy Administrator, Anonymize, Inc. / Robert Monster, WIPO Case No. D2021-1050
VOCL.com
Transfer
Panelist: Mr David H. Bernstein
Summary: Random 4L VOCL.com, phonetically similar to VOCAL ordered to be transferred after the new domain name owner expressed his intentions to run services in competition to an existing social media website named, Vocal.Media. On getting served with C&D notice, domain name changed hands and the new owner was held to have misrepresented the facts.
Brief Facts:
The domain name VOCL.com was purchased on March 09, 2021 and on March 11, 2021 the new owner, Mr. Lindell, filed for a trademark registration and expressed his intentions to run a social media service called VOCL.com. On getting served with C&D notice soon thereafter by an existing VOCAL trademark owner, the disputed domain was transferred from Lindell to a new owner, ‘Epik’ at 75% of the original purchase price. ‘Epik’ initially claimed that it had been the original owner and that there was no Bad Faith as Mr. Lindell never acquired the domain name. Soon thereafter, the Respondent under a sworn affidavit admitted the facts as to the change of hands in March 2021.
Held:
Initially, the Panelist analyzed the role of a domain Registrar – Epik – as the Respondent in the matter and noted that these relationships create an inherent conflict of interest since the Panel relies on the Registrar to provide accurate information in response to the verification request from the dispute resolution provider. Further, the information provided in the Response was materially inaccurate and it was only after the Panel issued procedural orders seeking clarification that the Respondent corrected the record and admitted the factual circumstances. Even then, there remained unexplained inconsistencies in the documentary material submitted by the Respondent. The Panelist asked WIPO to share the decision with ICANN and questioned if there should be restrictions on Registrars, their agents or employees in owning domain names. Domain transfer ordered.
Note: Similar requirement is already there for .IN Registrars as an Advisory: Sales of .IN Names restricted for Registrars– https://www.registry.in/registry-advisory-la01sales-of-in-names-by-registrars
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GoSecure Inc. v. Billa Bhandari, NAF Claim Number: FA2107001954083
GoSecure.com
Complaint Denied with RDNH
Panelist: Mr. Ho Hyun Nahm, Esq., (Chair), Gerald M. Levine, Ph.D., Esq., and Fernando Triana, Esq.
Summary: Domain was registered in 1999 by Respondent and used legitimately for a decade but wasn’t currently actively used. The Complainant, having a 2016 registered trademark continuously made unsolicited offers. Upon failed negotiations, Complaint filed. Held as Plan ‘B’ and RDNH finding made, by a three member panel.
Brief Facts:
GoSecure Inc. a computer and data security company, had a recent USPTO trademark registration dated June 28, 2016. The domain name however, pre-existed it, having been registered in 1999 as a generic combination for use in relation to Respondent’s business related to security and biometrics. The domain name was in active use from 2002-11 and later for email services. The Complainant alleged phishing, passive holding, incomplete whois, renewal of domain name since 2016 is in Bad Faith and Respondent’s offer to sell at an excessive price. Respondent denied these allegations and provided evidence as to its previous use and future plans.
Held:
The domain name was registered and used prior to the Complainant’s trademark rights, though recently unused for an active website and only currently used for email operations. There was no evidence of any phishing. Respondent additionally demonstrated that it maintains a blog by a similar name and is developing a project for the website. This evidence supports Respondent’s claim of making “demonstrable preparations to use” the domain name in terms of UDRP and hence Legitimate Interests in the domain name. The Panel determined that this was a “Plan B” case, as the Complainant initiated these proceedings only upon failed commercial negotiations and was therefore “Reverse Domain Name Hijacking.
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2DG.com
Complaint Denied
Panelist: Mr Robert A. Badgley
Summary: Complainant is India’s leading pharma company having trademark rights in “2DeeGee” since 2015. UK based Respondent registered the domain name in 2002,without active use. Respondent owns numerous 3-character domain names.
Brief Facts:
Indian Complainant had applied for ‘2DG’ Trademark in May 2021, after it announced 2DG as the name for an anti-Covid drug. The Complainant already had rights in ‘2DeeGee’ since 2015. The Complainant claimed that it is a large and successful company and that its principal markets include the United Kingdom. The UK-based Respondent registered <2dg.com> in 2002 and claimed to own 100 more 3-character domain names.
Held:
The Panel concluded that Complainant has failed to prove that Respondent registered the domain name in bad faith. Complainant claimed that Respondent registered the domain name with actual knowledge of Complainant’s rights in the 2DG mark but there is absolutely no evidence in the record of the degree of the renown of the marks or that the Complainant ever used the marks prior to 2002, when the domain name was registered. Panel further noted domain names containing only three letters are generally regarded as desirable for a variety of reasons. Complaint denied.
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