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:
‣ Respondent Fraudulently Impersonated Australian Company (universalgiftcard .org)
‣ Complainant Obtains Domain Name from its Former Web Developer (baseballcoachtraining .com *plus comment)
‣ Complex Commercial Matter in Contrast to Cybersquatting (sterop .net)
New Article on CircleID! “Smells Like Cybersquatting? How the UDRP “Smell Test” Can Go Awry”, by ICA Director, Nat Cohen
Respondent Fraudulently Impersonated Australian Company
Panelist: Mr. Willem J. H. Leppink
Brief Facts: The Australian Complainant provides a range of prepaid card services and one of its main brands is Universal Gift Card, used since 2004. It owns an Australian trademark registration UNIVERSAL GIFT CARD and associated logo with a registration date of November 1, 2006. The disputed Domain Name was registered on January 9, 2021 and at the time of filing of this Complaint, redirects to a website at <universalgiftcard .ro> which fraudulently impersonates the Complainant by mimicking the Complainant’s website. The Website is being used to commit fraud on innocent customers and as least AUD $25,000 has been obtained by the Respondent from such customers who thought they were dealing with the Complainant.
A previous panel in Zenith Payments Pty Ltd v. BPW Mysin Vadim Yurievich, WIPO Case No. D2021-3217, found bad faith use and registration of <universalgiftcard .com>, which had almost identical facts to this case. Based on the name and location of the registrant from the WHOIS search, the Complainant alleges that the same party engaging in the fraud is also behind the same criminal conduct in this case. In two brief supplemental filings, the Complainant mentioned inter alia, that after filing of the Complaint, the Respondent changed the destination of the Domain Name. The Domain Name firstly diverted to <universalgifcard .com>, then to a misspelled Domain Name <universalgiftcardes .com>.
Held: The Respondent uses the Website for fraudulent purposes, in particular to mimic the Complainant’s website and thus to defraud visitors of the Website. The change in redirection to the destination website does not help the Respondent’s case. Hence, the Respondent’s use cannot be considered a legitimate noncommercial or fair use of the Domain Name either. Herein, the Respondent is clearly engaged in fraud which relies on confusion with the Complainant’s mark and is clearly with a view to dishonest financial gain. This is manifestly indicative of bad faith as held in many previous decisions under the Policy. Finally, although the lack of a response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent are in bad faith.
Complainants’ Counsel: Cooper Mills Lawyers, Australia.
Respondents’ Counsel: No Response
Complainant Obtains Domain Name from its Former Web Developer
Panelist: Mr. Michael Erdle
Brief Facts: The Complainant owns and operates a baseball coaching and training business in New Jersey, USA, under the name “Zoned Inc.” The business also operates under the trade names “Zoned Sports Academy” and “Dominate the Diamond”. The Complainant submits that he engaged the Respondent in 2017 to create a website and online content for his baseball coaching and training business under a contract, under which all of the deliverables relating to the project would be owned solely by the Complainant. The website was completed and is being actively used in connection with Complainant’s business since 2017. The Complainant further adds that upon completion, the project became known as “Dominate the Diamond”, in which the Complainant owns rights and also owns common law rights in the disputed Domain Name, as a result of use in commerce since 2017.
The Complainant further alleges that he subsequently terminated the Contract for convenience in accordance with the terms of the contract. The Complainant requested that the Respondent hand over all of the project deliverables including the Domain Name, in accordance with the terms of the contract. However, the Respondent demanded an additional amount for the transfer of the disputed Domain Name and recently renewed the Domain Name. The Respondent did not file a response in the proceedings.
Held: The evidence submitted by the Complainant shows that the website associated with the disputed Domain Name has been and continues to be actively used to market Complainant’s coaching and training services. Under the terms of the contract between the parties, the Complainant owns all intellectual property rights in the project deliverables, including any common law trademark rights arising from use of the Domain Name. Based on the evidence submitted, the Panel finds that the disputed Domain Name is identical to a trademark or service mark in which the Complainant has rights.
The disputed Domain Name was registered for the purpose of enabling the Respondent to perform the website and content development services under the contract. All rights to the disputed Domain Name were assigned to the Complainant under the terms of the contract. In the absence of the Response and based on the evidence submitted, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name. Based on the record before the Panel, it is reasonable to infer that after the contract was terminated, the Respondent registered the Domain Name in his own name, and that he renewed and/or continued to hold the Domain Name, primarily for the purpose of transferring it to the Complainant for an amount greater than Respondent’s expenses directly related to the Domain Name. The Panel finds that the Respondent acted in bad faith with respect to the registration and use of the Domain Name.
Complainants’ Counsel: NA
Respondents’ Counsel: NA
Case Comment by ICA General Counsel, Zak Muscovitch: This case provides a good opportunity to revisit common law trademark rights. A Complainant may prove common law trademark rights and thereby satisfy Paragraph 4(a)(i) of the Policy. As explained in the WIPO Overview 3.0 at Section 1.3:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.” [emphasis added]
Use of a mark is of course a crucial factor in proving common law trademark rights, however, use alone does not necessarily achieve the requisite acquired distinctiveness. The reason that use alone may be insufficient, is that mere usage of a generic or descriptive term, even for a length of time, does not necessarily confer common law trademark rights. As explained in the WIPO Overview:
“In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
As noted by Panelist Tony Willoughby in UK Betting PLC v. Pam Oldfield, WIPO Case No. D2005-0637 <UKBet.com> (August 31, 2005):
“Descriptive names are capable of acquiring distinctiveness (e.g. BRITISH AIRWAYS and BRITISH PETROLEUM), but the more descriptive the name, the more by way of evidence that a court will require to establish reputation and goodwill”.
This precept is well founded in trademark law. For example, the Supreme Court of Canada stated in Registrar of Trade Marks v. Hardie & Co. Ltd.,  S.C.R. 483, that the burden of proof for acquired distinctiveness “increases in direct ratio to the degree in which a word or words, is in common use as a descript[or] of an article of trade or laudatory thereof”. As Lord Russel stated in Canadian Shredded Wheat Co. v. Kellogg:
“But the onus on the person who attempts to establish this secondary meaning is a heavy one. Where the words are purely descriptive and in common use it is even more difficult to conceive a case in which they could acquire a secondary meaning.”
In the case at hand, the Complainant claimed common law trademark rights in the domain name, “BaseballCoachTraining.com”. Yet the Domain Name corresponds to a clearly descriptive term, if not a generic one. A generic term is the common name that everyone uses for a particular product or service. For example, ICE CREAM to sell ice cream or FITNESS TRAINER for the services of a fitness trainer. Here, we have BaseballCoachTraining.com to sell baseball coach training services. In the 2020 case of United States Patent and Trademark Office et al. v. Booking.com B.V., the U.S. Supreme Court noted that although generic terms are ordinarily ineligible for protection as trademarks, where a generic[.]com is perceived by consumers as referring to a particular source, the term would not be considered generic and is thereby entitled to protection. The ICA filed an Amicus Brief through its counsel, David Weslow of Wiley, in support of this position. Accordingly, the primary question before the Panel in the UDRP case at hand, was whether the Complainant had sufficiently demonstrated that consumers view BaseballCoachTraining[.]com as referring to the Complainant, or whether the Domain Name merely refers to or describes, the services being offered by the Complainant.
The Panel decision notes that; “The evidence submitted by Complainant shows that the website associated with the Domain Name has been and continues to be actively used to market Complainant’s coaching and training services.” In such circumstances, even if the Complainant showed use of the term “Baseball Coach Training” for 50 years in connection with baseball coach training, without proving consumer perception of the Domain Name as referring to the Complainant rather than referring to the services offered by the Complainant, it is unlikely that the Complainant would have sufficiently demonstrated acquired distinctiveness. Indeed, absent a truly impressive showing of consumer perception by way of consumer surveys and massive marketing expenditures, this term is of such a nature that, as Lord Russel stated above, it is difficult to conceive it ever acquiring secondary meaning.
Nevertheless, the Panel in this case found common law trademark rights based upon “the evidence submitted by Complainant [which] shows that the website associated with the Domain Name has been and continues to be actively used to market Complainant’s coaching and training services.” Ostensibly, the Complainant must have submitted more than mere evidence of active use, as use alone would not have met the “heavy burden” of demonstrating the acquired distinctiveness, i.e. consumer perception, necessary to prove common law trademark rights in what would otherwise appear to be a generic term.
We must bear in mind that if the Complainant was unable to prove acquired distinctiveness, the Complainant would have lost this UDRP despite the sympathetic circumstances of its web developer apparently refusing to transfer the Complainant’s Domain Name. As such, it would be an unfortunate circumstance for the Complainant, who would have had to avail himself of a court of law in order to obtain the transfer of the Domain Name. Yet, we must consider whether that is precisely what the UDRP intended in such circumstances. It is well established that the UDRP is not intended to address all manner of disputes involving domain names but rather only to “a narrow class of cases” that involve cybersquatting on another’s trademark. The Second Staff Report on UDRP (24 October 1999) at Para 4.1 clause (c), stated as follows:
“Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide.” [emphasis added]
Accordingly, the requirement that a Complainant have trademark rights is fundamental to the UDRP and is the manifestation of the drafters’ intentions. Other kind of rights, such as property rights of parties to a business dispute involving ownership of a domain name, must be adjudicated elsewhere, despite the temptation to harness what is a very effective dispute resolution mechanism. For more reading on the limited scope of the UDRP, see “UDRP Complainants Should Stop Misusing the UDRP for Business Disputes and Trademark Infringement Disputes” (Zak Muscovitch, Domain Name Wire, July 26, 2018).
Complex Commercial Matter in Contrast to Cybersquatting
Panelist: Mr. Steven A. Maier
Brief Facts: The Belgian Complainant is a pharmaceutical group, developing a range of goods including pharmaceutical products, medical devices, food supplements, and hygiene products. It owns various registrations for the trademark STEROP including Benelux trademark (registered on November 20, 1972); European Union Trade Mark (registered on October 22, 2012); UAE trademark registration (registered on February 18, 2020). The Respondent is a company registered under the laws of the UAE, incorporated on July 25, 2019 and owns a UAE figurative mark for STEROP (registered on March 1, 2020). The disputed Domain Name was registered on August 15, 2019 and resolves to a website which identifies the Respondent and prominently displays the figurative mark.
The Complainant submits that in December 2018 it authorized a company to develop its scientific activities in the UAE, however, that “Complainant and Respondent […] have no relationship whatsoever” and that the Complainant did not authorize the Respondent Company to use the STEROP trademark or to register any Domain Name incorporating that trademark. The Respondent contends that, contrary to the Complainant’s assertions, it was established with the full knowledge and approval of the Complainant and has made extensive good faith use of the STEROP mark in Nigeria and the UAE. The Respondent further adds that the Complainant unilaterally and unexpectedly terminated the business relationship between the parties at a meeting on June 4, 2022. The Respondent exhibits a series of 17 purchase orders submitted to the Complainant, dated between October 1, 2019 and January 5, 2022, upon its letterhead and also asserts that it maintains independent rights in these assets, even after termination.
Held: The Panel finds on balance that the Complainant acquiesced (on whatever terms) in the Respondent’s use of the STEROP mark and the disputed Domain Name, that the Respondent is known by a name which includes the STEROP trademark. In these circumstances, the Panel finds it impossible to conclude, within the ambit of the Policy, that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
While the Complainant clearly sought to terminate any and all such interests in conjunction with ending the parties’ business relationship, its entitlement to do so, which is contested by the Respondent on the grounds that it has independent rights or interests of its own, is moot. To reach such a conclusion would require not only a detailed forensic analysis of the terms of the parties’ business relationship, but also an assessment of the parties’ respective rights (if any) in the trademark STEROP and the validity of the figurative mark.
These are matters which depend upon the national jurisdictions in which the relevant trademarks are registered and implicate both legal and evidentiary matters which are beyond the scope of proceedings under the UDRP. While the UDRP is apt to determine cases of “cybersquatting”, it does not exist to resolve complex commercial or trademark disputes, which remain the province of the courts.
Complainants’ Counsel: Fieldfisher LLP, Belgium
Respondents’ Counsel: Crowell & Moring LLP, Belgium
Cybersquatted Domain Name with Active MX Records Looms as a Phishing Threat
Panelist: Mr. Ike Ehiribe
Brief Facts: The US Complainant is part of the TEVA Group, one of the world’s largest generic medicine producers. The Complainant is the owner of the distinctive mark AUSTEDO and owns several trademarks for the word mark AUSTEDO globally, mostly under Class 5. The earliest trademark registration was before EUIPO in 2016. The Complainant uses its mark in numerous Domain Names, such as <austedo .com>, registered on August 8, 2014. The disputed Domain Name was created on July 6, 2022 and resolves to a website displaying PPC links related to the health sector. The Complainant asserts that it is inconceivable that the registration of the disputed Domain Name was initiated and concluded without full knowledge of the existence of the Complainant and its well-known trademark, given that the parking page displays information about the health related products and services in a bid to exploit the trademark for commercial purposes.
The Complainant also provides the details of activated MX records pointing to amazon servers as further evidence of the Respondent’s actual knowledge of the Complainant and its trademark. As a result, the Complainant refers to the possibility of Internet users coming across the disputed Domain Name or an associated email ID ending with “[…]@austedo.co” who may assume it to be the Complainant’s website/email and instantly associate the same with the Complainant. The Complainant asserts in this regard that the threat of using the disputed Domain Name for sending phishing messages looms over the Complainant and these circumstances may be indicative of registration and use in bad faith, as previously held by UDRP panels.
Held: The Panel finds that the Complainant is entitled to refer to the fairly recent registration date of the disputed Domain Name on July 6, 2022 to underscore the submission that the Respondent has no rights or legitimate interests in the disputed Domain Name within the ambit of the Policy considering that the Complainant is using the AUSTEDO trademark since 2014. Leaving aside the distinctive nature of the Complainant’s trademark and the observation that the AUSTEDO trademark is certainly not a name that one would choose as a Domain Name in good faith, the Panel is satisfied with the factors the Complainant relied upon in its submission. The Panel accordingly finds that the Complainant has established the requirement of a lack of rights or legitimate interests in the disputed Domain Name.
On the question of registration and bad faith use, the Complainant referred to a number of factors that have enabled the Panel to hold and conclude that the Respondent deliberately registered the disputed Domain Name in bad faith with the intention of engaging in bad faith use. Specifically, the fact that the disputed Domain Name is parked at a domain monetisation service with hyperlinks to health related advertisements for third parties through which the Respondent earns PPC revenue. In addition to the fact that the disputed Domain Name has active MX records pointing to email servers is indicative of an intention to use the disputed Domain Name for phishing or other fraudulent purposes through the use of email IDs ending with “[…]@austedo.co”, or at the very least in a way that is likely to mislead Internet users to assume a connection with the Complainant that does not exist. The Panel is therefore satisfied that the Respondent registered and uses the disputed Domain Name in bad faith.
Complainants’ Counsel: SILKA AB, Sweden
Respondents’ Counsel: No Response
Longstanding Trademark Rights for Electrical Components Does Not Override Respondent’s Bona Fide Use of Identical Mark for Video Games
Panelists: Mr. William R. Towns, Mr. Luca Barbero, and Mr. Gareth Dickson
Brief Facts: The German Complainant, founded in 1951, is a manufacturer of components for electrical connections, including components for automation. The Complainant is known for its WAGO brand cage and clamp push-wire connectors, designed to make the splicing process easier without needing tools. The Complainant employs over 5,800 employees, and owns WAGO trademark registration in numerous jurisdictions, including USA (earliest registered in 1981), – European Union (registered on October 17, 2014); and International Trademark (registered on June 9, 2008). The disputed Domain Name was registered on May 12, 2015, and it resolves to a website with a login link and featuring several online video games. According to the Respondent, the website provides free resources to gamers to improve their gameplay experience.
The Complainant alleges that there is persuasive evidence that the Respondent sought to exploit the reputation of and fame of the Complainant’s WAGO mark in order to mislead potential customers as to non-existing relationships in a classic “bait and switch scenario”. The Respondent explains that it purchased the disputed Domain Name in the year 2020 for a significant sum, and emphasizes that its business is in video games, located on the Respondent’s website. The Respondent contends it has rights or legitimate interests in respect of the disputed Domain Name, and maintains it is using the disputed Domain Name in connection with a bona fide offering of goods and services, providing “Weak Auras” to gamers for the World of Warcraft and building a popular website with significant revenues and substantial global traffic rankings.
Held: The Policy is addressed to resolve disputes concerning allegations of abusive Domain Name registration and use. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of Domain Names”, also known as “cybersquatting”. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a Domain Name in violation of rights in trademarks or service marks.
The Respondent by all appearances registered and used the disputed Domain Name since it was first created on or about May 12, 2015. The Respondent appears to have maintained the disputed Domain Name primarily to resolve content related to video games, and without evidence to target the Complainant in some way does not in the Panel’s opinion constitute bad faith registration or use. The Complainant otherwise did not bring forth any credible or persuasive evidence that the Respondent intentionally registered the disputed Domain Name seeking to exploit and profit from the Complainant’s rights or the rights of other third parties. Accordingly, and for the reasons discussed, the Panel concludes that the Complainant fails to satisfy the requirements of the Policy.
Complainants’ Counsel: Bardehle Pagenberg Partnerschaft mbB, Germany
Respondents’ Counsel: Sheridans, United Kingdom