We hope you will enjoy this edition of the Digest, as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch:
- kof.com (with comment by Zak Muscovitch)
- projectpay.com (with comment by Zak Muscovitch)
- floridafamilyinsurance.com (with comment by Zak Muscovitch)
- habi.com (with comment by Zak Muscovitch)
- zerobouncerate.com (with comment by Zak Muscovitch)
For those interested in UDRP case law research, this Digest was prepared using UDRP.tools which offers a large searchable database of UDRP decisions, robust search functionality, and specialized tools for panelist research.
Major COCA-COLA Bottler and Counsel Found to Have Engaged in Reverse Domain Name Hijacking
Panelists: Mr. Edoardo Fano (Presiding), Mr. Mauricio Jalife Daher, and Mr. Adam Taylor
Brief Facts: The Complainant is a Mexican company operating as the largest franchise bottler of Coca-Cola products. Its stock ticker symbol, ‘KOF’ has been in use since 1993. The Complainant owns registrations for ‘KOF’ and ‘KOF .com’ in Mexico (registered on August 23, 2021) and also registrations in Costa Rica and Uruguay. The Respondent is a Company in the business of investing in descriptive, generic and acronym domain names. It acquired the disputed Domain Name on April 20, 2013. The disputed Domain Name is currently inactive. The Complainant alleges that the Respondent registered and is using the disputed Domain Name in bad faith, namely with the only purpose of transferring it for a valuable consideration in excess of the registration fees. On May 5, 2021, the Complainant, without identifying itself, contacted the Respondent in order to negotiate the purchase of the disputed Domain Name; the Respondent replied that it would not consider offers below USD $85,000 and the Complainant considered it too high. In August 2021 the Complainant, through a broker and again without identifying itself, offered to purchase the disputed Domain Name for USD $324,350; the Respondent accepted but the Complainant subsequently resiled from it.
The Complainant further claims that its trademarks are widely known and that the Respondent, who trades on domain names, registered the disputed Domain Name to take advantage of their reputation. On the other hand, the Respondent contends that it was unaware of the Complainant’s trademarks, and that it could not have had knowledge of them since there is no evidence of the Complainant’s use of KOF as a trademark in relation of goods and/or services, prior to the disputed Domain Name registration, but only as a stock ticker symbol to identify the Complainant’s corporation. The Respondent further contends that around the time it registered the disputed Domain Name, it registered several other comparable three-letter “.com” domain names and that there is widespread third-party and common use of the term “kof”, that is wholly unrelated to the Complainant.
Held: The Respondent selected and acquired the disputed Domain Name because of its length and inherent value, rather than because it corresponds to the Complainant’s trademarks, and it is unlikely that the Respondent was aware of the Complainant’s trademark at the time of Domain Name acquisition. The members of the Panel concur that the Complainant did not provide adequate evidence in order to demonstrate that its stock ticker symbol KOF was used and known as a trademark before the Complainant acquired its registered trademarks, and even the declaration of first use in the Mexican trademark registration is not supported by evidence.
The Panel finds, based on the record, that the Complainant’s stock ticker symbol KOF, before being registered as a trademark, appears to have been used essentially to identify the Complainant’s corporation in a very limited, specialist context. The Respondent, which does not operate in the same sector, could hardly have become aware of the Complainant’s stock ticker symbol KOF at the time of the acquisition of the disputed Domain Name, even if use of the ticker were to be treated as generating unregistered trade mark rights.
Therefore, the Panel finds that the Respondent did not register the disputed Domain Name to target the Complainant and its trademarks. In view of the above, also the request for a consideration exceeding the out-of-pocket costs sent in reply to the Complainant’s inquiry is not sufficient, in this case, to demonstrate the Respondent’s bad faith registration and use of the disputed Domain Name.
RDNH: The Panel finds that the Complainant and its Counsel have contravened the RDNH provision. Given the lack of properly-evidenced relevant trademark rights as of the date when the Respondent acquired the disputed Domain Name and knowledge of a lack of the Respondent’s bad faith directed towards the Complainant, making the assertion that the Respondent must have been targeting the Complainant highly unlikely.
Moreover, there is an attempt to mislead the Panel by stating that “the Respondent requested a much larger amount of money than the first time for the transfer of the disputed Domain Name to the profit of the Complainant (i.e. USD $324,350). Given the aforesaid, no agreement was reached between the parties”, whereas it is evident that the Respondent did not request this amount, as it was an unsolicited proposal by the Complainant, and that the Respondent did actually agree to sell at that price.
Finally, as upheld in many previous decisions, a complainant is at risk of a RDNH declaration when its attempt to try and buy a domain name is not successful, and it tries to obtain it by using, or rather “abusing”, the UDRP.
Complaint Denied (RDNH)
Complainants’ Counsel: Chevez Ruiz Zamarripa, Mexico
Respondents’ Counsel: Zak Muscovitch*, Muscovitch Law P.C., Canada
* General Counsel, Internet Commerce Association
Case Comment by ICA General Counsel, Zak Muscovitch:
I was counsel for the Respondent in this proceeding.
Here, the Panel noted that it was not merely the Complainant that engaged in Reverse Domain Name Hijacking, but also its counsel, expressly finding that, “the Complainant and its Counsel have contravened the above RDNH bases” [emphasis added]. As previously discussed in this space in Volume 2.28 in connection with the Enodo[.com] case, the reality is that “sometimes and perhaps more often than not, complainant counsel are primarily responsible for bringing RDNH cases. Indeed, in some circumstances a complainant found to have engaged in RDNH may not have even been aware that it was engaging in RDNH since it relied upon legal counsel to advise and guide it”. It is therefore gratifying to see a Panel acknowledge the reality that it is counsel who are usually the ones responsible for bringing abusive UDRP proceedings.
What is perhaps most concerning about RDNH is that despite it being a relatively rare occurrence within the context of the overall volume of UDRP cases, it continues to occur with regularity. As noted by RDNH.com, there have been 39 instances of a Complainant being found to have engaged in RDNH so far in 2022 alone. In 2021 there were 48 such instances. In any other forum such as a court of law, it would be scandalous if counsel brought such egregiously abusive cases with such regularity. The fact that it happens with the UDRP likely means that a significant number of complainant counsel have no qualms about acting in a manner that they would never dare to in a court of law. The significant number of RDNH findings also likely means that as stakeholders, we are not doing enough to prevent such abuse of the procedure from occurring. Greater education and warnings are required so that complainant counsel do not abuse the UDRP with regularity.
Complaint Filed Despite Prior Domain Name Rights
Panelists: Mr. Willem J. H. Leppink, Mr. Haig Oghigian and Mr. Douglas M. Isenberg
Brief Facts: The Complainant is in the business of providing an online payment and accounting platform for use in the construction industry. The Complainant owns various trademark registrations for PROJECTPAY (word mark), including the Australian trademark (registered on May 29, 2017); United Kingdom trademark (registered on December 7, 2018) and Canadian trademark (registered on May 11, 2022). Additionally, the Complainant is also the owner of the United States trademark registration on the USPTO Supplemental Register on July 30, 2019. The Complainant registered the domain names projectpay.com.au on May 26, 2017, and projectpay.co.uk on January 12, 2018. The disputed Domain Name was registered on June 27, 2001, for prospective development by the real estate development company with which the Respondent is engaged.
The Complaint alleges there is no evidence that the Respondent uses the disputed Domain Name to offer any goods or services or had legitimate website at any time since registration, rather the Respondent used the disputed Domain Name to advertise and display pornographic video content. The Respondent denies that the disputed Domain Name was used to advertise and display pornographic video content. The Respondent further contends the disputed Domain Name simply could not have been registered in bad faith by the Respondent in 2001 in relation to the Complainant’s then non-existent rights and that the Complainant’s professional representative must have known that one of the elements of the Policy was not going to be met and shows an alarming unfamiliarity with the UDRP.
Held: The Complainant simply failed to argue the registration of the disputed Domain Name in bad faith. Importantly, the Respondent’s registration of the Domain Name at least 14 years before the Complainant was established and the rights to the Trademark were acquired also precludes a finding of bad faith since the Domain Name registration was made at a time when the Complainant had not been established and had no rights in the Trademark. The Respondent could not have known about the Trademark and could not have been aware of the Complainant and its business when the Respondent registered the disputed Domain Name.
Therefore, the Panel finds that there is no evidence that the Respondent actually knew the Complainant or knew of the Complainant’s intentions to use the Trademark when the Respondent registered the Domain Name.
RDNH: The Panel finds that the Complainant in fact knew or at least should have known at the time that it filed the Complaint that it could not prove one of the essential elements required by the UDRP, namely, it is very clear that the Respondent registered the Domain Name many years before the Complainant came into existence, filed and registered the Trademark. The Complainant (or rather, its attorney) must have been fully aware of the cumulative requirements of registration and use in bad faith when filing the Complaint.
In fact, the Complainant clearly confirmed that the disputed Domain Name was registered in 2001 and still alleges that the Respondent registered and is using the disputed Domain Name in bad faith, pursuant to the Policy. And concluded: “All of the Respondent’s activity described above clearly constitutes bad faith registration and use of the disputed Domain Name under the Policy and the Rules on several established grounds”.
To conclude, the Panel finds that, based on the above, the Complaint was filed in a bad faith attempt to deprive the Respondent of the Domain Name. These facts justify a finding of Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Dentons Canada LLP, Canada
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States of America
Case Comment by ICA General Counsel, Zak Muscovitch:
Here, the Panel stated that “the Complainant in fact knew or at least should have known at the time that it filed that Complaint that it could not prove one of the essential elements required by the UDRP, namely it is very clear that the Respondent registered the Domain Name many years before the Complainant came into existence, filed and registered the Trademark”.
But who was really supposed to know this? The Complainant or the lawyers the Complainant hired to advise it and who filed the UDRP on behalf of the Complainant? We can suppose that a Complainant should itself research the UDRP procedure and case law before agreeing to accept its lawyers’ advice and permit its lawyers to file the procedure. But the reality is that most Complainants will have no familiarity with the procedure and may not have even heard of it prior to contacting their lawyers. Complainants will typically rely upon their lawyers to ensure that they are not acting unlawfully or attempting to seize property without colour of right. And that is why the Panel to its credit, led by Willem Leppink, expressly stated that, “the Complainant (or rather, its attorney) must have been fully aware of the cumulative requirements of registration and use in bad faith when filing the Complaint”.
Which brings us back to how troubling it is that law firms will act in such a manner when they generally would not dream of doing so in another forum, such as a court of law? Here, Dentons, a prestigious firm which is considered to be the largest multinational law firm in the world and 4th largest by revenue, was the law firm which brought the abusive Complaint despite being aware that it was meritless. There are at least three accredited UDRP panelists that hail from Dentons, namely Isabelle Leroux from France, Carol Anne Been from Chicago, and Andrew J. Park from Washington D.C., according to the WIPO list of accredited Panelists. I hope that these colleagues of the Complainant’s counsel will have a word with them about engaging in such conduct lest it bring disrepute to their firm and to the UDRP generally.
Trademark Rights in Descriptive Term
Panelist: Mr. Ho-Hyun Nahm, Esq.
Brief Facts: The Complainant is engaged in the offering of property insurance in the state of Florida. The Complainant owns rights in the FLORIDA FAMILY INSURANCE mark through its registration with the USPTO (registered on July 19, 2011). The disputed Domain Name was registered on March 26, 2000. The Respondent uses the disputed Domain Name to host commercial hyperlinks to third-party websites. The Complainant alleges that some of these hyperlinks to goods and services that are similar and/or competing with Complainant’s goods and services, which the Respondent uses in order to attract users with a false impression of association with the Complainant and receives profit from click-through fees. The Complainant further alleges that the Respondent appears to be offering the disputed Domain Name for sale at a price much higher than the typical out-of-pocket costs related to registering a disputed Domain Name.
Held: The Complainant provides a screenshot of the disputed Domain Name’s resolving website hosting hyperlinks, some of which link to goods and services that are similar and/or competing with the Complainant’s insurance services. The Panel finds that the Respondent does not use the disputed Domain Name for any bona fide offering of goods or services, nor any legitimate non-commercial or fair use within the meaning of Policy. Hosting competing or unrelated hyperlinks for financial gains is evidence of bad faith disruption of a complainant’s business under Policy and an attempt to attract users for commercial gain under Policy. Therefore, the Panel finds Respondent’s bad faith registration and use of the disputed Domain Name under the Policy.
In addition, the Panel notes that the landing page of the disputed Domain Name invites Internet visitors to “Buy this domain” for USD $11,299. The Complainant contends that the Respondent appears to be offering the Domain Name for sale presumably in hope of soliciting an offer from the Complainant to buy the disputed Domain Name. The Panel finds that the Respondent’s offering the disputed Domain Name incorporating Complainant’s FLORIDA FAMILY INSURANCE mark in its entirety for sale for USD $11,299 to the general public constitutes bad faith registration and use of the disputed Domain Name under the Policy.
Complainants’ Counsel: Matthew D. Witsman of Foley & Lardner LLP, Illinois, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
“Florida Family Insurance” sounds like a descriptive term. Yet as correctly noted by the Panelist, it is a registered trademark belonging to the Complainant. How did the Complainant manage to obtain a trademark registration for what appears to be a descriptive term? We can see from examining the trademark registration and the prosecution history which is publicly available online, that the USPTO amended the application to claim “FLORIDA FAMILY” had acquired distinctiveness under Section 2(f) of the Trademark Act. This section of US trademark law permits registration of marks which, while descriptive, have become known among consumers as indicating a particular source. For example, “American Airlines” is an American airline, but they have been using that mark since 1939 and consumers understand this to mean one particular airline.
One way to claim acquired distinctiveness is by claiming five years of substantially exclusive and continuous use in commerce or it can be accomplished by providing appropriate evidence showing the duration, extent, and nature of the use in commerce and advertising expenditures, verified statements, etc.
The “FLORIDA FAMILY INSURANCE” application was filed in 2010 with a statement that the owner believed the mark to have acquired distinctiveness “at least” on the basis of five years of such use immediately prior to 2010. The date of claimed first use of the mark in commerce was 1996, but it should be obvious that a mark registered under Section 2(f) was, by definition, not distinctive as of the date it was first used.
So how did the Complainant demonstrate that its trademark rights pre-dated the March 26, 2000 Domain Name registration? From the decision, all that we apparently know is that the Complainant obtained a trademark registration in 2011 claiming acquired distinctiveness as of its 2010 filing date. But the Domain Name was registered in 2000. The date of first use of 1996 as claimed in the Complainant’s trademark registration is not enough to establish common law trademark rights in a mark (Stacy Hinojosa v. Tulip Trading Company, FA1704001725398 (Forum May 24, 2017; stacyplays.com). As was held in Franki Global Inc. v. Privacy service provided by Withheld for Privacy ehf / Golden Dream, The Stay Gold Co / Samantha Jurashka, WIPO Case No. D2021-2901 (December 13, 2021):
“… the date of first use in commerce claimed on a trademark application is of limited evidentiary value in administrative proceedings brought under the Policy. For the purposes of the present proceeding, this date amounts to a mere assertion which would still require to be suitably evidenced. Absent additional supporting evidence, which is lacking on the present record, the Panel is not prepared to find that Complainant had unregistered trademark rights in a relevant trademark at the material time.”
For marks based on acquired distinctiveness, panels have looked to the date of claimed acquired distinctiveness versus the registrant’s registration date as in Asset Data Corporation v. Name Administration Inc. (BVI), NAF Claim Number FA0605000699525 CheapHotels.net (July 10, 2006):
“Respondent contends that it registered the cheaphotels.net domain name in June 2001. The evidence shows that at the time of domain name’s registration, the mark had not acquired secondary meaning. Consequently, Respondent likely did not know of the mark’s existence.”
The Panelist did not specifically address the Domain Name registration date issue. Accordingly, it is concerning that the Complainant may have obtained a transfer Order based upon trademark rights which post-dated the Domain Name registration – if the Complainant’s mark had not acquired distinctiveness by the Domain Name registration date of March 26, 2000. Without evidence of the Complainant’s mark having acquired distinctiveness prior to March 26, 2000, the Panel cannot reasonably conclude that the Complainant’s trademark rights predated the Respondent’s Domain Name registration. Moreover, in the absence of such acquired distinctiveness at the time of the Domain Name registration, there would seem to be no basis for the Respondent to be aware of the Complainant’s then non-existent mark.
If we accept (despite no apparent evidence) that the Complainant’s mark acquired distinctiveness immediately upon the completion of five years of ‘substantially exclusive and continuous use’ just prior to the trademark application filing date in 2010, then the Domain Name registration was senior to the trademark right since the Domain Name was registered in 2000. Even if we generously accept that the Complainant’s mark acquired distinctiveness after five years from the claimed date of first use of January 30, 1996, then the earliest date of acquired distinctiveness on that basis would have been January 31, 2001. The Domain Name however, was registered on March 26, 2000, seemingly thereby indicating that came before any acquired distinctiveness, particularly in the absence of any evidence provided by the Complainant to the contrary.
Interestingly, in cases involving 2(f) registrations, a Panel could question whether the Respondent’s own use of the disputed Domain Name at the material time period, demonstrates that the Complainant does not actually have the claimed and requisite “substantially exclusive” use of the mark.
The intricacies and unique provisions of national trademark law, such as with the American 2(f) provision in its Trademark Act, may be beyond the reasonable knowledge of a UDRP panelist from another jurisdiction. Nevertheless, when a trademark registration contains certain features such as a disclaimer or a Section 2(f) registration, then further inquiries may be appropriate.
Thank you to attorney John Berryhill for kindly and generously consulting and advising on the nature and implications of Section 2(f) registrations.
Respondent Applied for Trademark Before Complainant Existed
Panelist: Mr. John Swinson
Brief Facts: The Complainant, established in July 2019, operates an online platform at habi.co, which allows sellers of real estate to sell properties online. The Complainant owns trademark registrations in Colombia, Mexico and Peru for stylized mark HABI, for the word TUHABI and HABIMETRO. The Colombian registration filed on September 27, 2019 includes HABI in logo format. The entity Habi Partners (incorporated on April 5, 2019) controls the disputed Domain Name and the website located at the disputed Domain Name. The Respondent acquired the disputed Domain Name from a previous owner around December 22, 2020, wherein negotiations began in April-May 2019. Habi Partners filed for a US trademark on April 29, 2019 for HABI in relation to mobile phone software that can be used for home financing, the same is pending before the USPTO.
In March and April 2022, Mr. Whiting, CEO of Habi Partners noticed a significant amount of traffic on the website at the disputed Domain Name coming from Colombia. He researched the issue and contacted the Complainant to discuss a solution. As part of these discussions, the Complainant asked Mr. Whiting whether he would be interested in selling the disputed Domain Name. Mr. Whiting said that he was not interested. After further discussions, in which the Complainant appears to have pushed Mr. Whiting for a sales price, on July 1, 2022, Mr. Whiting responded to the Complainant that his Board was prepared to sell the disputed Domain Name to the Complainant for the cost of rebranding, which was USD $12,500,000 paid over three years, or USD $5,000,000 plus equity in the Complainant.
The Complainant alleges that the Respondent’s main purpose of acquiring the disputed Domain Name was to offer it to the Complainant. The Respondent contends that the Respondent’s purpose in registering the disputed Domain Name is to serve the Respondent’s HABI-branded business, and the Respondent made repeated efforts in good faith to reduce and avoid any confusion with the Complainant.
Held: In this case, there is clear evidence that the Respondent selected HABI as its brand in March or April 2019. The Complainant was not established until July 2019, and there is no evidence of use of HABI by the founders of the Complainant prior to this date. Accordingly, the Respondent could not have selected HABI as its brand to target the Complainant who did not exist at that time. However, both the Complainant and the Respondent had the opportunity to buy the disputed Domain Name from the owner, and in fact, the Respondent attempted to do so in April 2019 (before the Complainant existed), and then successfully purchased the disputed Domain Name in December 2020, when the Respondent had raised capital and could afford the asking price. Moreover, the evidence is clear that the Respondent did not purchase the disputed Domain Name because of the Complainant.
The Respondent purchased the disputed Domain Name to implement its original plan from April 2019, and to replace its gohabi.com domain name with the disputed Domain Name to better match its brand and corporate name. There is also no evidence that the Respondent acted in bad faith in using the disputed Domain Name. The Complainant requested the Respondent sell the disputed Domain Name to the Complainant. In the circumstances, the price offered by the Respondent to the Complainant for the disputed Domain Name, although high, is not in the circumstances evidence of bad faith – a sale of the disputed Domain Name would require the Respondent to rebrand, and the disputed Domain Name is an intrinsically valuable four-letter domain name with many possible legitimate uses. The Complainant did not demonstrate that the Respondent registered or sub sequential used the disputed Domain Name in bad faith.
RDNH: The Panel finds that this is a case of RDNH. The Complainant tried to buy the disputed Domain Name from the Respondent and was unsuccessful and at that time, the Complainant made no allegations that the Respondent was acting in bad faith or was not entitled to own the disputed Domain Name. There is no persuasive evidence in the record that the Respondent at any time targeted the Complainant’s rights in the Complainant’s trademarks.
The Complainant, when filing the Complaint, was aware that the Respondent had filed a US trademark application for HABI before the Complainant existed. The Complainant should have been aware from this fact alone that its chances of success in this dispute were grim. But the Complainant proceeded with its Complaint. Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Holland & Knight LLC, Colombia
Respondents’ Counsel: Stoel Rives, LLP, United States
Case Comment by ICA General Counsel, Zak Muscovitch:
Panelist John Swinson in finding RDNH noted that, “The Complainant, when filing the Complaint, was aware that the Respondent had filed a United States trademark application for HABI before the Complainant existed”.
If the Complainant’s lawyers knew this, what made them bring an abusive UDRP Complaint to deprive a lawful Domain Name owner of its Domain Name? The Complainant’s lawyers were from Holland & Knight, an American multinational law firm with more than 1,700 lawyers and other professionals in 35 offices.
The Complainant originally tried to buy the Domain Name but considered the sale price too high. Rather than pay the asking price, the Complainant ostensibly was advised by counsel to bring a UDRP despite having no chance of proving bad faith registration. Or perhaps the Complainant was advised not to bring a UDRP but insisted its counsel do so nonetheless. Was this a purely expedient business calculation that despite the reputational risks of being labelled a hijacker, it was still worth the shot? Is the reputational harm caused to a law firm for bringing such a Complaint on behalf of a client, insufficient to deter it? Clearly in such cases we are not doing enough to deter Complainants and their counsel from bringing such abusive cases. Taking the most generous view of such matters, we should at least be providing Complainant counsel with blunt warnings to deter such Complaints, even if such warnings are only effective when presented to conscientious but misguided Complainants and their counsel.
Old Evidence of Preparations to Use Domain Name, Still Counts
Panelist: Ms. Stephanie G. Hartung
Brief Facts: The German Complainant was founded back in 1972 in Munich, and ever since has expanded and is meanwhile delivering customers with furniture all over the world. The Complainant owns word mark GO IN before the German Patent and Trademark Office (registered on January 11, 2001) and International Registration before WIPO (registered on August 5, 2003). The Complainant is also the owner of various domain names relating to its GO IN trademark, inter alia, the domain names goin.de, goin.eu, goin.ch, as well as goin-furniture.com, each resolving to individual websites promoting Complainant’s furniture products. The disputed Domain Name was acquired by the German Respondent in 2014 and redirects to a website that displays links to the Respondent’s Twitter account (established in January 2021) and the Respondent’s Reddit account (established in June 2014).
In or around November 2021, the Complainant contacted the Respondent via a domain name broker with the offer of EUR 1,500 in response the Respondent expressed his expectations in the range of EUR 150,000. On December 23, 2022, the Complainant sent a letter through legal representatives and also issued a reminder thereafter in March 2022. On April 13, 2022, the Respondent sent an email to the Complainant’s legal representative, indicating that the disputed Domain Name had been acquired by the Respondent for a specific project which had nothing to do with the Complainant’s business; therefore, it was unrealistic in the eyes of the Respondent that the Complainant was interested to submit an offer as interesting as that the Respondent would be willing to give up such project. Finally, the Complainant offered an amount of EUR 20,000 for the disputed Domain Name, to which the Respondent stated that offers in such a range would be a waste of time to both parties.
Held: The Panel realizes that it’s been quite some time since the year 2014 when the Respondent acquired the disputed Domain Name and started with documented preparations to build up a website project thereunder, and that apparently nothing much happened ever since. Still, the Panel also recognizes that apart from this timing dimension, there is no reason to devalue the submissions and accompanying documentary evidence put forward by the Respondent had started at least demonstrable preparations to make use of the disputed Domain Name in connection with an Internet project thereunder, which was neither targeting the Complainant nor its business, but allegedly was meant to create an event space. Further, the letter combination “goin” carries a broad meaning, making it even more likely that the intended project under the disputed Domain Name had nothing to do specifically with the Complainant’s GOIN trademark, and thus, should be considered bona fide within the meaning of the Policy.
The case before this Panel gives no reason at all to believe that the Respondent registered the disputed Domain Name primarily for the purpose of disrupting Complainant’s business. The mere fact that the Complainant wishes to also own the disputed Domain Name which it considers best to present its international website on a “short and easy URL” is no justification whatsoever to find for a bad faith registration of the disputed Domain Name by the Respondent, especially in light of the Respondent’s credible claims regarding the inherent value of a four-letter domain name comprised of dictionary terms with broad meaning.
It goes without saying that the final offer placed by the Respondent in the range of EUR 150,000 is obviously well in excess of the costs connected to the acquisition of the disputed Domain Name. It is, however, as well true, that the Respondent ever since 2014 has undertaken demonstrable preparations to use the disputed Domain Name in connection with a bona fide Internet business, which the Respondent apparently was only willing to give up for an extremely interesting, thus high, sales price. Such circumstance alone, however, is insufficient to show that the Respondent was taking unfair advantage of or abusing the Complainant’s trademark within the meaning of the Policy.
Complainants’ Counsel: Busse & Partner Law Firm, Germany
Respondents’ Counsel: GRIP LEGAL, Germany
Respondent Stipulates to Transfer
Panelist: Mr. Debrett G. Lyons
Brief Facts: The Complainant provides email validation services under the trademark “ZeroBounce”, registered with the USPTO on January 15, 2019. The disputed Domain Name was registered on July 14, 2022 and resolves to a website that sells digital marketing courses. The Respondent contacted the Forum offering to transfer the domain name after it received the UDRP Complaint.
The Panel is in the circumstances where the Respondent consents for the transfer, permitted to order immediate transfer of the Domain Name but takes the view, for reasons which follow, that the Respondent acted in bad faith and considers that a decision on the record is in the general interest.
Held: The Complainant provides screenshots of the resolving web page which show services on offer which may or may not be of the same description as those provided by the Complainant under the trademark. The Panel need not decide that point since, in either case, the use does not give rise to rights or a legitimate interest. Either the use is in respect of similar services and clearly in bad faith, or the use draws Internet users genuinely seeking the Complainant’s goods and services away from that business. There is no basis for legitimate rights or interests under the Policy.
The Panel already found the disputed Domain Name to be confusingly similar to the trademark. In terms of the Policy, the Panel finds that the Respondent intentionally uses the domain name to attract, for commercial gain, Internet users to the resolving website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website. The Panel finds registration and use of the disputed Domain Name in bad faith and so finds that the Complainant satisfies the third and final element of the Policy.
Complainants’ Counsel: Sarah R. Frankfort of Diego Law LLC, US
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
Here the Respondent offered to transfer the Domain Name when it received the Complaint. Under the circumstances, the Panelist could have accepted the stipulation to transfer as if often done by Panelists where both parties have requested the transfer (See for example, Panelist Richard Hill in Parchment LLC v. Robert ten Bosch, Forum Claim Number: FA2109001963652 (October 5, 2021) where Panelist Hill states “In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that 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” (Panelist Richard Hill appears to have relied upon this doctrine for over 150 transfers where the Respondent stipulated to a transfer, according to UDRP.tools).
In this case however, the Panelist chose to proceed on the merits, which the Panelist is entitled to do. But when examining the merits, the Panelist found an apparently active and genuine website in a different though related field. The Complainant provides email validation services under “ZEROBOUNCE”. The Respondent offers courses and information in digital marketing under the ZEROBOUNCERATE[.COM] Domain Name. A zero bounce rate is a well-known term of art in digital marketing which relates to the degree of interest that a visitor has in a website. Given these facts, the Panelist might have concluded that despite the Respondent’s stipulation to transfer, the Complainant had not demonstrated any intent to target the Complainant and that the Respondent had demonstrated bona fide preparations and use of the Domain Name. The Panelist however appears to have assumed targeting of the Complainant without any apparent basis other than the similarity between the Trademark and the Domain Name, despite the Domain Name corresponding to a well-known descriptive term of art and despite it being used for an apparently bona fide and difference business. It may be that the Panelist found comfort in ordering the transfer given the Respondent’s stipulation to transfer, but once the Panelist decided to engage on the merits, the Panelist must satisfactorily consider whether the available evidence rises to the level required to transfer a domain name, regardless of the stipulation to transfer.