Panelist: ‘Respondent’s Asking Price is Relevant but not Determinative’ – ICA UDRP Digest – Vol 2.46

Ankur Raheja UDRP, UDRP Case Summaries

We hope you will enjoy this edition of the Digest, as we review these noteworthy recent decisions, with commentary from our Director, Nat Cohen and General Counsel, Zak Muscovitch:

Panelist: ‘Respondent’s Asking Price is Relevant but not Determinative’ (trx .com *plus comment)

Complainant Brought UDRP despite Knowing about Respondent’s Trademarks and Different Business (buildarocket .com *plus comment)

InTownSuites v. TownSuites (townsuites .com)

Panel Forgoes UDRP Analysis upon Registrant’s Consent to Transfer (subzerorepairsanantonio .com and another *plus comment)

Passive Holding Insufficient Without Evidence of Targeting (50 .com *plus comment)

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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.

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Panelist: ‘Respondent’s Asking Price is Relevant but not Determinative’

Fitness Anywhere LLC v. au tuu, NAF Claim Number: FA2210002016615

<trx .com>

Panelist: Mr. David E. Sorkin

Brief Facts: The Complainant provides fitness equipment and related products and services under the TRX mark. The TRX mark has been in use since at least as early as 2005, and the Complainant claims that it is well-known globally. The Complainant owns registrations for TRX in standard character form in numerous jurisdictions, including the United States and the European Union. The Complainant asserts that there is “no real other TRX use around the world that has any genuine traction”.

The disputed Domain Name was initially registered in March 1999 but it appears to have been registered to entities other than the Respondent until 2020 or early 2021, at which time it was transferred to a different registrar and registered in the name of a privacy registration service. The Complainant contends that the Respondent acquired the disputed Domain Name at this time and subsequently advertised it for sale for €1.2 million (later for an unspecified price). The Respondent failed to submit a Response in this proceeding.

Held: The disputed Domain Name corresponds to Complainant’s registered mark, and its sole apparent use (since its apparent acquisition by the Respondent) has been for a website promoting the Domain Name itself for sale. Such use does not give rise to rights or legitimate interests under the Policy. The Panel further notes that the domain registration information provided by the Respondent is incomplete and possibly fictitious; for example, it includes “Iceland”’ as both the street address and the city, along with what is likely an invalid postal code. The Respondent’s asking price of EURO €1.2 million for the Domain Name is relevant but not determinative, as such a price could plausibly have been based on either its trademark-related value or its value as a three-letter “.com” Domain Name.

Under the circumstances, and based upon the information available to the Panel, the Panel considers it to be more likely than not that the Respondent knew of the Complainant and its mark when the Respondent acquired the disputed Domain Name. The Respondent acquired the name with the intent to sell it at a profit to the Complainant or a competitor thereof and that the Respondent is using the Domain Name for that purpose. Accordingly, the Panel finds that the disputed Domain Name was registered and is being used in bad faith.

Transfer 

Complainants’ Counsel: Alain Villeneuve, United States
Respondents’ Counsel: No Response

Guest Comment by Nat Cohen: I appreciate the opportunity to offer some thoughts on this decision from the perspective of a long-time investor in three-letter dot-com domain names.

The TRX.com decision falls squarely within the bounds of UDRP jurisprudence. The Complainant owns an internationally well-known trademark and is the dominant global user of the mark. The Respondent apparently used false Whois information, set a hefty price for the domain name and did not respond to the complaint. Panelist Sorkin not unreasonably determined on the balance of probabilities that the Respondent had the Complainant in mind when it recently acquired the trx.com domain name and put it up for sale.

Yet the decision is nevertheless troubling. A valuable domain name was transferred based on little more than guesswork. No evidence was presented that the Respondent, by listing trx.com for general sale, was specifically targeting the Complainant.

Three-letter dot-com domain names can fetch substantial sums, including QNB.com for $1 million, DXL.com for $1.1 million and AFS.com for $2 million (https://www.embrace.com/recent-3-letter-com-domain-name-sales/).  A $1+ million asking price is ambitious, but not unreasonable to hope for. The asking price alone was not strong evidence that the valuation reflects the value of the trademark rights rather than the inherent value in the domain name. Sorkin recognized this in finding that the asking price was not determinative of bad faith:

Respondent’s asking price of €1.2 million for the domain name is relevant but not determinative, as such a price could plausibly have been based on either its trademark-related value or its value as a three-letter “.com” domain name.

The original TRX.com domain name predates the Complainant’s existence by many years. The Complainant chose to brand itself as TRX in 2006 knowing that the trx.com domain name was already registered and in use by a well-established travel transactions processing company (https://web.archive.org/web/20110528004200/http://www.trx.com/).  The TRX travel company and trx.com domain name were acquired in 2013 (https://www.travelweekly.com/Travel-News/Travel-Technology/Concur-acquires-TRX-and-GDSX). Last year, the domain name was acquired by a domain name investor and then apparently resold to the Respondent a short while later.

The Complainant, the fitness company TRX, is not the exclusive or even senior user of the TRX mark. The many commercial uses of TRX include:

  • TRX is the name of a coin on the TRON crypto network that retains a multi-billion USD market valuation. The #trx hashtag on Twitter refers to the TRX coin and auto-populates with its symbol.

  • TRX is a gold mining company (https://www.trxgold.com). TRX is its stock symbol.
  • TRX is a defense company (https://www.trxsystems.com/)
  • TRX is a new truck model, the 2023 Ram 1500 TRX

On what basis, then, did Sorkin find bad faith? He noted the asking price was relevant but not determinative. He noted that the reference to Iceland in the WHOIS contact details was likely inaccurate. He noted that the Respondent did not appear to contest the allegations.

On this thin record, he determined that it was “more likely than not” that the Respondent bought TRX.com to sell it to the Complainant or a competitor.

As Zak Muscovitch pointed out in his recent comment on the cloverskypay.com dispute (https://www.internetcommerce.org/udrp-case-summaries/respondents-infringing-clover-domain-name-for-payment-services-likely-targeted-complainant-ica-udrp-digest-vol-2-45/#cloverskypaycomzak), relying on the “more likely than not standard” means that a decision that has a 51% chance of being correct has a 49% chance of being wrong.

The scope of the UDRP is not self-limiting. It is up to the discretion of the panelists to determine whether the circumstances of the dispute are appropriate for resolution by an abbreviated procedure intended to resolve clear-cut instances of cybersquatting yet is often ill-suited for other types of disputes.

The UDRP is highly subjective as Panelists can declare whatever they wish to be bad faith.  It has a low standard of evidence in which a decision can be issued despite a panel self-assessing that they have a 49% chance of having made the wrong decision. The UDRP was designed to remedy clear-cut instances of cybersquatting. It is fit for that purpose. It is not fit to address more nuanced disputes.

The practical consequence of the TRX.com decision, in my view, is that the Complainant obtained an undeserved windfall of a domain name that the Complainant was not necessarily legally entitled to through the application of a Policy that was not well-suited to the circumstances in reliance on insufficient evidence of bad-faith targeting. Not only was the Respondent deprived of a valuable asset, but all the other commercial users of the TRX term, who likely would also have desired to own the TRX.com domain name, have been deprived of the opportunity to acquire the domain name in the open market.

Panelists may wish to consider whether a just outcome requires finding that unclear cases with a thin evidentiary record are not suitable for resolution under the UDRP. Panelists should hesitate to upset the status quo and normal operation of market forces by making a decision that has a substantial probability of causing significant unjustified harm, especially when the decision is based on speculation that is little better than flipping a coin to determine the outcome.

Editor-in-Chief: Nat Cohen is a Guest Commentator this week. Nat is an established domain name investor through his company, Telepathy Inc., and is also a Director of the ICA. Nat was recently invited to speak at a WIPO workshop on the UDRP to provide a domain name investor’s perspective. You can read a CircleID article based on these remarks here.


Complainant Brought UDRP despite Knowing about Respondent’s Trademarks and Different Business

Build a Rocket Boy Games Ltd v. Build a Rocket GmbH, Alexander Albrecht, WIPO Case No. D2022-3404

<buildarocket .com>

Panelist: Mr. Assen Alexiev

Brief Facts: The Complainant is an independent “AAA” game developer based in Scotland and led by Leslie Benzies (producer and developer of Grand Theft Auto). It operated under the name, Build a Rocket Boy Limited, since October 31, 2018 and owns trademark registrations for BUILD A ROCKET BOY in the U.K. (registered on August 17, 2018) and an International registration (registered on June 12, 2019). The Complainant made trademark applications for BUILD A ROCKET GIRL, BUILD A ROCKET BOY, and BUILD A ROCKET BABY, in various jurisdictions, which are currently pending. The Complainant’s official website is located at the domain name, <buildarocketboy .com>, registered on May 22, 2018.

The German Respondent provides advertising and consulting services regarding eSports and games and tournaments in the field of sports and event management. The Respondent’s business was started by the company, Build a Rocket UG, established on June 22, 2016. The Respondent was itself established on November 23, 2016, when it acquired and continued the business of Build a Rocket UG. The Respondent is the owner of the trademark registrations for “BUILD A ROCKET” that includes European Union trademark registrations dated January 18, 2020 and October 15, 2020. The Respondent operates the domain names, <buildarocket .de> and <buildarocket .eu>, both registered on October 31, 2014, and <build-a-rocket .com>, acquired on October 5, 2017.

The Parties are involved in a number trademark opposition and invalidation proceedings concerning some of the trademarks referenced above. The disputed Domain Name was registered in 2006, and was acquired by the Respondent on November 10, 2018 and resolves to the Respondent’s official website, which promotes Respondent’s services. The Respondent contends that the evidence submitted by the Complainant shows that the Complainant opened its studio only in 2018 – several years after the start of the Respondent’s business activity. The Respondent adds that the Respondent’s services and the Complainant’s services differ in their nature and purpose, usual distribution channels, and target different markets (businesses vs. the general public), so there is no competition between them.

Held: The Respondent’s company name is Build a Rocket GmbH, and the record confirms that it was duly registered in Germany in 2016. The Respondent proffered evidence that, apart from the disputed Domain Name, it is also the owner of three other similar domain names, and these domain names were registered or acquired in 2014 and 2017. There is also evidence that the Respondent provides services under its name since 2016. At the same time, the evidence submitted by the Complainant shows that it started its activities only in 2018, and there is nothing to support a conclusion that the Respondent could have known of the Complainant earlier. All this taken together satisfies the Panel that the Respondent is commonly known under a name that corresponds to the disputed Domain Name and used its company name and three Domain Names, all corresponding to the disputed Domain Name, for offering bona fide services.

As discussed above, the Respondent started using the name, Build A Rocket, as its company name and several corresponding domain names for a bona fide offering of goods or services in the period prior to the commencement of the Complainant’s activities in 2018, and the Respondent’s explanation that it acquired the disputed Domain Name to complement its other domain names and to use it for the same purposes is plausible. There is no evidence to suggest otherwise. On this basis, the Panel finds that the Complainant has failed to establish that the disputed Domain Name was registered and is being used in bad faith.

RDNH: In the present case, the Complainant is represented by counsel. There is no question that the Parties are involved in numerous trademark cancellation and opposition proceedings, and the Respondent provided evidence showing that the facts about the Respondent’s company name and its activities prior to the commencement of the Complainant’s activities in 2018 have been brought forward by it in these proceedings. The Complainant was therefore aware of these facts and ought to have known that it could not succeed as a result, but nevertheless proceeded to file the Complaint. The above is sufficient for the Panel that the Complainant engaged in RDNH.

Complaint Denied

Complainants’ Counsel: Marks & Clerk Solicitors, United Kingdom
Respondents’ Counsel: Osborne Clarke Rechtsanwälte Steuerberater Partnerschaft mbB, Germany

Case Comment by ICA General Counsel, Zak Muscovitch: Panelist Assen Alexiev correctly found that the Complainant had engaged in Reverse Domain Name Hijacking. As Panelist Alexiev noted, the Complainant was represented by counsel. This counsel ostensibly knew, or certainly ought to have known, that the parties were engaged in numerous prior proceedings, and as such was ostensibly well aware of the facts about the Respondent’s prior existence and rights. Yet (and as we have discussed previously in this Digest in connection with the Enodo[.]com case), it was not counsel who was declared to have engaged in RDNH, but the Complainant itself. This is in contrast to, for example, the Kof[.]com case which we discussed in Digest Vol. 2.43), where the Panel found that it was the Complainant and its counsel contravened the RDNH provisions of the UDRP.

As explained in Digest Vol. 2.43, the reality is that sometimes, and perhaps more often than not, complainant counsel are primarily responsible for bringing RDNH cases, since Complainants generally rely upon their counsel to advised and guide them and, in particular, rely upon counsel to determine whether the UDRP may properly be used in a given circumstance. In this particular case, it seems inescapable that the Complainant’s counsel was aware, or certainly ought to have been aware, of the factual history of this matter from the preceding disputes between these parties. Given this knowledge, it likely should have appeared obvious to the Complainant’s counsel that commencing a UDRP was ill-advised and could result in a finding of Reverse Domain Name Hijacking. Given the foregoing, it would seem that the finding of RDNH should be worn by the Complainant’s counsel as much as, if not more than, the Complainant itself, who is of course ultimately responsible.

In the circumstances, it is surprising that the Complainant’s counsel was Marks & Clerk, a 135-year-old UK-based firm of 300 practitioners in 15 offices, and which according to its website, is a “global leader” in intellectual property. Certainly, an excellent and established firm such as this would never knowingly proceed with a matter that was likely to result in such a stain as RDNH on its client. Accordingly, it is difficult to understand what led to this unfortunate event but I trust that it now knows that astute and expert Panelists, such as WIPO’s Assen Alexiev, will not hesitate to make a finding of RDNH where warranted, no matter who represents the Complainant.


InTownSuites v. TownSuites

InTown Suites Management, LLC v. Domain Admin, NAF Claim Number: FA2210002016369

<townsuites .com>

Panelist: Mr. Terry F. Peppard

Brief Facts: The US Complainant, founded in 1993, is an hotelier operating under the name and mark INTOWN SUITES. It holds a registration for the service mark INTOWN SUITES before USPTO (registered March 23, 1999). Since June 26, 1997, the Complainant has operated online via the domain name <intownsuites .com>. The Respondent registered the Domain Name <townsuites .com> on May 2, 2001. The Complainant asserts that the Respondent fails to use the disputed Domain Name in connection with either a bona fide offering of goods or services or a legitimate non-commercial or fair use. Instead, the Respondent merely holds the Domain Name passively and offers it for sale online. The Respondent failed to submit a Response in this proceeding.

Held: The disputed Domain Name incorporates the dominant portion of the mark. The deletion of the letters “in” and the space between its terms, plus the gTLD “.com” in forming the Domain Name do not save it from the realm of confusing similarity under the standards of the Policy. We conclude from a review of the record that the disputed Domain Name is confusingly similar to the Complainant’s INTOWN SUITES service mark.

The Complainant asserts, without objection from the Respondent, that the Respondent fails to use the contested Domain Name in connection with either a bona fide offering of goods or services or a legitimate non-commercial or fair use, but instead merely holds the Domain Name passively and offers it for sale online. This employment is neither a bona fide offering of goods or services by means of the Domain Name under Policy nor a legitimate non-commercial or fair use of it under Policy, such as would confirm the Respondent’s rights to or legitimate interests in the disputed Domain Name. The same reasons which persuade us that the Respondent has neither rights to nor legitimate interests in the disputed Domain Name also convince us that the Respondent has both registered and now uses the Domain Name in bad faith.

Transfer

Complainants’ Counsel: Patrick J. Concannon of Nutter, McClennen & Fish, LLP, US
Respondents’ Counsel: No Response 


Panel Forgoes UDRP Analysis upon Registrant’s Consent to Transfer

 Sub-Zero, Inc. v. Daniel Ellis / Joel Gonzalez / SEO Repair Shop / Elite Sub-Zero Repair, NAF Claim Number: FA2210002014882

 <subzerorepairsanantonio .com> and <elitesubzerorepairsanantonio .com>

Panelists: Mr. Richard Hill, Ms. Francine Siew Ling Tan and Mr. Nicholas J.T. Smith (Chair)

 Preliminary Issue – Consent to Transfer: The Respondent consents to transfer the first Domain Name <subzerorepairsanantonio .com> (registered on September 21, 2010) to the Complainant. In a circumstance such as this, where the Respondent has not contested the transfer of one of the subject domain names, the Panel is authorized to forego the traditional UDRP analysis for that domain name. This Panel, in recognition of the common request of the parties, in the interests of judicial expediency, and in the absence of any aggravating circumstances, has so decided to forego the traditional UDRP analysis and to order an immediate transfer of the <subzerorepairsanantonio .com> Domain Name.

 Brief Facts: The Complainant provides high-end residential kitchen appliances, including refrigerators, freezers, and similar goods. The Complainant asserts rights in the SUB-ZERO mark based upon registration with the USPTO (registered on June 13, 1989). The second Domain Name, <elitesubzerorepairsanantonio .com> was registered on December 8, 2020 by the Respondent, who provides repair services for SUB-ZERO appliances that are out of warranty. The website contains the following statement: “Sub Zero Refrigerator Repair – We only work on Sub Zero refrigerators. Very rarely, we will work on other high-end brands, but our business growth has been built on focus. We focus on out of warranty Sub Zero refrigerators and we focus on long-term customer relationships”, and at the bottom of the website there is the following disclaimer: “Copyright © 2022 Elite Sub Zero Repair | Elite Sub Zero Repair maintains no affiliation with Sub-Zero/Wolf nor are we Factory Certified”.

The Complainant asserts that the Respondent had actual and constructive knowledge of Complainant’s rights in the SUB-ZERO marks and that the disclaimers do not confer on the Respondent, any rights or legitimate interest in the domain names.

The Respondent contends it operates an independent, unauthorized repair service for Complainant’s SUB-ZERO refrigerators and has taken adequate measures on its Website to ensure consumers are not confused. The Complainant further contends that the Respondent’s use of the Domain Name is not legitimate or fair under the Policy or United States trademark law and does not satisfy the Oki Data Test, because the Respondent is not actually an authorized repair service provider for any SUB-ZERO brand appliances and also uses the second Domain Name to promote repair services for third-party appliance brands.

Held: The Panel is satisfied that the Respondent’s Website clearly identifies itself as independent of the Complainant, both by using the disclaimer, and by the nature of the various statements made on Respondent’s Website. There is no evidence to suggest that Respondent does not actually supply repair services for Complainant’s products and Complainant does not assert as such, only noting that Respondent is not an authorized repair service provider for Complainant’s products.

In the present case, the Respondent is offering SUB-ZERO repair services in San-Antonio. The Complainant submits that the Oki Data conditions cannot be satisfied as unlike in Oki Data, Respondent is not an authorized repair-service provider. This is an incorrect reading of the Policy and the case law. The Oki Data standard has repeatedly been applied in the context of unauthorized resellers/repair companies. Further, the Respondent’s Website does not advertise expertise in repairing any refrigerator brands other than those of the Complainant. Hence, it is not a case where the Domain Name is used for a “bait and switch” exercise. The Respondent’s use of the Domain Name for the Respondent’s Website is consistent with the stated purpose which is to advertise that the Respondent offers specialized repair services for Complainant’s appliances in the San Antonio area.  It appears that Respondent operates a legitimate business repairing Complainants appliances and there is no evidence that that Respondent is seeking to take advantage of any similarity between the Domain Name and SUB-ZERO Mark beyond that which arises from a truthful use of the SUB-ZERO Mark to describe the services that Respondents business provides.

The Panel notes that the present proceeding raises complex legal and factual issues that seem ill-suited to resolution through the Policy. Such proceedings are better resolved in a national court of law which has the benefit of a full range of evidentiary tools such as discovery, witness testimony and cross-examination. The Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable). Respondent here meets the Oki Data criteria and Complainant has failed to demonstrate that Respondent lacks rights or a legitimate interest in the Domain Name.

Complaint Denied (in Part)

Complainants’ Counsel: Matthew D. Witsman of Foley & Lardner LLP, US
Respondents’ Counsel: Arnold Anderson Vickery of VICKERY & SHEPHERD, LLP, US

Case Comment by ICA General Counsel, Zak Muscovitch: Kudos to the experienced and expert Panel consisting of Richard Hill, Francine Tan, and Nicholas Smith (Chair) for their thoughtful and thorough analysis of this case and for coming to the right conclusion.

There were two aspects of this case which I found particularly interesting. The first is the Panel’s decision to accept the Respondent’s consent to transfer one of the domain names, without engaging in any UDRP analysis. This is an approach which I noted in Digest 2.43 in connection with the Comment on the ZeroBounce case. I noted in the Comment that in some 150 cases, Panelist Richard Hill as a single Panelist, has employed the doctrine of “nec ultra petita nec infra petita” to accept a consent to transfer without engaging in a UDRP analysis. In the present case, a three-member Panel of which Panelist Hill was a member appears to have adopted this approach in accepting the consent to transfer without engaging in a UDRP analysis, “in recognition of the common request of the parties, in the interests of judicial expedience, and in the absence of any aggravating circumstance”. The WIPO Overview acknowledges this approach at Paragraph 4.10, stating that “many panels will order the requested remedy solely on the basis of such consent”. The WIPO Overview also notes however, that “in some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits”. The Panel in this case provides a helpful yardstick in determining when exercise its discretion in favour of accept consent to transfer without analysis: judicial expedience balanced with the absence of any aggravating circumstance. So, for example, where a Complainant expressly rejects the Respondent’s consent to transfer and provides a basis for the Panel proceeding on the merits, a Panel could decide exercise its discretion to proceed.

The second aspect of particular interest in this case, was how the Panel specifically noted that the UDRP is intended to deal only with clear cases of cybersquatting and that for example, proceedings involving complex legal and factual issues are ill-suited to resolution through the Policy. This is of course a well established principle of the UDRP as discussed previously in this Digest (see for example, last week’s Comment on the Clover case).

In this case the Panel on one hand noted that this particular case seemed ill-suited for resolution through the Policy, but on the other hand was able to apply the Policy and in particular apply the Oki Data test, and resolved the dispute under the Policy. So was this dispute really ill-suited for resolution, and if so why did the Panel proceed nonetheless? I think what the Panel was trying to convey here, was that the Complainant may have a case beyond the UDRP, but under the UDRP itself, the Complainant could not meet its burden of proving that this was a “clear case” of cybersquatting. In other words, the UDRP and the Oki Data test could in fact be applied to this case, and by doing so it becomes apparent that this is not a clear case of cybersquatting that the Policy is designed to address. Rather, to the extent that the Complainant has any actionable claim, it is one that the UDRP and the UDRP’s associated case law directs be deferred to another forum.

It is however conceivable that there is another approach available to handling a dispute such as this. A Panel could for example, simply take the position that when it comes to claims involving unauthorized repair services, disclaimers, and the like, then it becomes immediately apparent that this is a dispute left to the courts as it is not the clear case of cybersquatting that the Policy was designed to address. In particular, such cases smack of trademark infringement issues, complex nominative fair use claims, and business disputes – which are in contrast to classic cybersquatting. Here, the Panel appears to have attempted to balance or to reconcile to some degree, these two respective approaches, which is interesting.


Passive Holding Insufficient Without Evidence of Targeting

Johannes Schumann v. JACK LIU, NAF Claim Number: FA2210002017109

<50  .com>

Panelist: Mr. David E. Sorkin

Brief Facts: The US Complainant owns a United States trademark registration for a design mark composed of a red speech bubble with the number “50” within it. The mark is registered in class 45 (first used in commerce in November 2021), for leasing of internet domain names. However, the Complainant claims that the mark has been used in commerce since March 2015 at its website at <50languages .com>, which he claims has had over 20 million page views and over 50 million impressions in the last three years and that the Complainant’s apps have been downloaded millions of times.

The disputed Domain Name was initially registered in 1996 and currently held by the Respondent under the name of a privacy registration service. The Domain Name does not currently resolve to a website, and according to the Internet Archive it has not resolved to a website since late 2017. The Complainant alleges that the Respondent is not making any active use of the disputed Domain Name and that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The Respondent failed to submit a Response in this proceeding.

Held: These instances set forth in the Policy as to Bad Faith are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. In particular, a Respondent’s failure to make any active use of a domain name may support a finding of bad faith. However, passive holding alone is not sufficient, absent at least circumstantial evidence that the Respondent’s registration and use of the domain name has been targeted at the Complainant or its mark.

The Complainant further did not exactly point out the date on which the disputed Domain Name was registered or acquired by the Respondent, and the domain name registration record indicates that the Domain Name was initially registered in 1996, long before the Complainant claims to have commenced use of the corresponding design mark. Even if the Respondent did not acquire the Domain Name until 2017 or later, the Panel considers it unlikely that the Respondent was aware of the Complainant or its mark at the relevant time, or that such awareness would have had any influence on Respondent’s registration or acquisition of the disputed Domain Name. Accordingly, the Panel finds that the Complainant has not proved that the disputed Domain Name was registered and is being used in bad faith.

Complaint Denied

Complainants’ Counsel: Self-represented
Respondents’ Counsel: No Response

Case Comment by ICA General Counsel, Zak Muscovitch: This case provides an interesting opportunity to contrast it with the above TRX case which was also decided Panelist Sorkin. Panelist David Sorkin is one of the original UDRP Panelists who has served since the establishment of the UDRP. To his credit he has made many excellent decisions including from the very beginning, such as the Thyme.com case from March 20, 2000. The Thyme case was one of the first to consider RDNH and importantly, helped establish a principle which is often quoted and has long been followed by successive UDRP Panels, namely that; “Where the domain name and trademark in question are generic – and in particular where they comprise no more than a single, short, common word – the rights/interests inquiry is more likely to favor the domain name owner”.

The 50[.]com case and the above TRX[.]com case share some notable facts. In neither case did the Respondent respond. In neither case was there any evidence of infringing use of the disputed domain name. In both case, the domain names correspond to a short term; with TRX it is nominally an acronym, and in 50, it is of course a number. TRX was transferred, but 50 wasn’t. What was the reason? Certainly there were some distinguishing facts relied upon by the Panel in the TRX case, such as the Whois details and the listing for sale for €1.2 million. But ultimately, I believe what possibly tipped the balance in favour of the Complainant in TRX, was the nature of the ‘TRX’ domain name compared with the nature of the ‘50’ domain name. In TRX, the Panel only had the Complainant’s unrebutted allegation before it, that there is “no real other TRX use around the world that has any genuine traction”. As such, the Panel had no countervailing facts before it, such as evidence of third party use of the term (which we know now certainly exists, as per Nat Cohen’s above Comment on the TRX case).

However, neither did the Panel in the 50 case. But there the Panel was at least able to take the obvious judicial notice of the fact that this domain name corresponded to a common number which is surely used by millions of people the world over. That is why the Panel was able to confidently conclude in the 50 case, that it even if the Respondent had been aware of the Complainant at the time of registration, “such awareness would have [been unlikely to have] had any influence on Respondent’s registration or acquisition of the disputed Domain Name”.

What is a Panel to do when confronted with no Response to a Complaint about a domain name comprising a generic word, three-letter acronym, or the like? Surely a Panel is entitled to draw an adverse inference from a Respondent not responding, since the record shows that the Respondent was served in accordance with the Rules  and thereby ostensibly had the opportunity to review and rebut the serious allegations made against it. Of course, we cannot always be certain that the Respondent in fact received the Complaint and conscientiously declined to respond. Moreover, we cannot always be certain what the particular reason was that the Respondent did not respond. That is in part why, even in no-Response cases, a Complainant must still meet its burden and justify the transfer under the Policy (See “Getting the Standard Right Where No Response is Filed”, CircleID, March 7, 2019). So, can a Panel accept unrebutted allegations such as the Complainant’s in the TRX case, that ‘there is no real other TRX use’?

When it comes to generic terms and acronyms perhaps, a Panel should be more suspicious of such claims of exclusivity, as aside from a handful of famous marks, most generic terms and acronyms are usually shared. But what is a Panel supposed to do, even when suspicious, if there is no Response? A Panel is not engaged to investigate a Complaint and cannot properly do more than certain limited research of publicly available evidence, in accordance with the established case law. Could the Panel have performed a Google or trademark search to reveal ample third party uses? The Panel probably could have considering that the Complainant apparently made a bald and sweeping allegation that went to the root of its case, and since testing the allegation via limited independent research is likely permitted by the Panel. But even then, can the Panel not take notice of the indisputable fact that the Respondent must be deemed to have received the Complaint and thereby had notice of the Complainant’s allegation? In other words, the Respondent knew of the Complainant’s allegation that it was the only ‘real user of the term with any traction’ and that the ‘Respondent targeted the Complainant’, and conscientiously chose to not respond. It is entirely reasonable, and arguably inescapable for the Panel to conclude in such circumstances, that the Respondent believed that it had been ‘caught red handed’ and had ‘no defence to make to the allegations’.

But that still leaves us with the question of why not adopt that approach in the 50  case? There the Complainant had relied upon evidence of substantial alleged use, but the Panel was not convinced that it was the likely target. Could the Panel not have concluded that like in TRX, the Respondent didn’t respond because it thought it was ‘caught red-handed with no defence to make’? Ostensibly, yes, the Panel could have made that conclusion in the 50 case, but perhaps it was the fact a simple number like 50 is so commonplace and the Complainant’s reputation in the term is so grossly non-exclusive, that it is just a bridge to far to accept the conceivability of the Complainant’s claim of targeting, unlike in TRX in which it is at least plasubile.