Welcome to this week’s UDRP Digest (vol. 1.7), summarizing the most intriguing cases of the past week. Read about:
‣ Complainant Agrees to Purchase Domain Name, Then Brings UDRP and Loses, Gets Slapped with RDNH (transcrip .com)
‣ Sky Fail (skycell .com)
‣ Arigato, Mr. Roboto! (smart-robotics .com)
‣ $6,888 Domain Name – Complaint Brings UDRP Instead of Buying – and Loses! (cecia .com)
‣ Weak Common Law Right Evidence Leads to Loss Over Descriptive Term (themortgagelink .com)
Enjoy!
Complainant Agrees to Purchase Domain Name, Then Brings UDRP and Loses, Gets Slapped with RDNH
<transcrip .com>
Complaint Denied (with RDNH ruling)
Panelist: Mr. Robert A. Badgley (Presiding Panelist), Mr. Clive Duncan Thorne and Mr. Tony Willoughby
Brief Facts: The Complainant’s unsolicited offer to purchase the Domain Name was accepted by the Respondent. The Complainant then brought the UDRP. The Complainant claimed common law trademark rights and provided details as to the annual turnover in 2016 that it increased each year through 2020 and it has expended large amounts on advertising and promotion of the mark tranScrip. But the Domain Name was acquired by the Respondent in 2014. The disputed Domain Name resolves to a parking page, at the top of which it is reads that the Domain Name “may be for sale” and below has number of hyperlinks, such as “Transcription Jobs”, “Apply Jobs”, “Transcription Services”, and “Writing Services”.
Held: The monetizing of domain names in relation to their dictionary value is not in itself illegitimate, so long as there is no targeting of trademarks. The word, “transcrip” is an obvious reference to “transcript” and was acquired by the Respondent because of its meaning. There is no evidence that the Complainant possessed any trademark rights in the mark TRANSCRIP prior to the Domain Name registration in 2014. It is undisputed that Complainant actually approached Respondent in 2015 in an effort to buy the Domain Name as a part of a rebranding effort. This fact, coupled with Respondent’s credible sworn denial of knowledge of Complainant or its mark in 2014, leads to the conclusion that Respondent did not register the Domain Name in bad faith.
RDNH: Complainant should have known that its Complaint was doomed to fail, especially since Complainant was represented by counsel with a clear understanding of the UDRP. When the Complainant filed the Complaint, it may have not realized that the Respondent acquired the Domain Name in 2014 but once the Complainant received Respondent’s initial response it arguably should have withdrawn the Complaint. In its supplemental filing, the Complainant did not even attempt to assert any common law trademark rights in TRANSCRIP prior to April 2014, or offer any allegations or proof that Respondent targeted Complainant’s trademark in April 2014. The Complainant appears to have reneged on the deal to purchase the Domain Name – which Complainant had initiated – because it ultimately concluded that it could wrest the Domain Name from Respondent via the UDRP process and avoid paying the agreed price of GBP 12,000. The Complainant’s claim that it ‘could not recall’ prior negotiations commencing in 2015 may be implausible, but in any event the Complainant failed to undertake at least minimal due diligence before filing its Complaint.
Complainants’ counsel: Fox Williams LLP, United Kingdom
Respondents’ counsel: Muscovitch Law P.C., Canada
Sky Fail
<skycell .com>
Complaint Denied (with RDNH ruling)
Panelist: Mr. Steven A. Maier
Brief Facts: The Swiss Complainant is a provider of hybrid containers for the pharmaceutical industry and related services. It owns various trademark registrations for the mark SKYCELL since 2014 including an international registration. The disputed Domain Name has 1995 as year of registration, but the Respondent acquired it on March 20, 2008 as a part of his domain name portfolio for resale purposes. Currently, the disputed Domain Name does not resolve to an active website.
Held: The disputed Domain Name comprises a combination of two dictionary words: “sky” and “cell”. The Respondent is a domain name investor who has acquired other domain names including those containing the term “sky” at around the same time in 2008. The speculation in domain names is not inherently illegitimate and a registrant may obtain rights or legitimate interests in a domain name comprising dictionary terms, which it uses, or intends to use, in connection with those terms and not to target any third-party trademark. In such circumstances, registration in bad faith cannot be established, since the Respondent acquired the disputed Domain Name some five years before the Complainant or its trademark came into existence. Besides, the domain name is not in use, to hold any kind of Bad Faith use, as the Complainant alleges.
RDNH: In circumstances where the Complainant has failed to establish even a prima facie case in respect of bad faith, it can only be concluded that the Complainant had no reasonable or good-faith basis to invoke, or at least following receipt of the information provided by the Registrar: to continue with, the UDRP against the Respondent and brought this proceeding speculatively and therefore in bad faith. Therefore, the Complaint constitutes an attempt at Reverse Domain Name Hijacking.
Complainants’ Counsel: Internally represented
Respondents’ Counsel: Lewis & Lin, LLC, United States
Arigato, Mr. Roboto!
Smart Robotics B.V. v. Mary Anne Wehland, WIPO Case No. D2021-2259
<smart-robotics .com>
Complaint Denied (with RDNH ruling)
Panelist: Mr. Tony Willoughby
Brief Facts: The Dutch Company, founded in 2015, is engaged in the field of robotics and automation. It operates a website at “smart-robotics .nl” and has trademark registration in the EU dated June 04, 2018. The Domain Name has registration date of 2009 and is connected to a parking page featuring advertising links labeled “Robot Kits”, “Robotic Process Automation Microsoft”, “I Robot Vacuums”, “Robotics”, and “Robotics Engineering”, all of which appear to lead to sites matching those labels. In June 2021, a representative of the Complainant emailed the Respondent enquiring as to acquisition of the disputed Domain Name and also sent further reminders, but without receiving a reply.
Held: The use of a domain name to host a page comprising PPC links is permissible and therefore consistent with Respondent rights or legitimate interests under the UDRP in terms of WIPO Overview. Therefore, the Complainant has failed to satisfy the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that Respondent clearly had actual knowledge of Complainant’s rights in its name when the Respondent registered the infringing domain name. Though, the Complainant’s own evidence is to the effect that the Domain Name did get registered before the Complainant was founded and indeed before the Complainant’s trade mark registration. The Complainant’s case stands or falls on the predominant feature of the trade mark, the dictionary expression “SMART ROBOTICS”, and there is nothing in the Complaint to indicate why the Complainant should be entitled to exclusive rights in respect of that expression.
RDNH: The domain name has prior registration to the Complainants’ mark by years and “Smart Robotics”, the predominant element of that mark on which the Complainant relies, is a straightforward expression apt to describe the study of smart robots. Moreover, the Respondent’s use of the Domain Name to connect to a PPC parking page leads to links matching the Domain Name, namely websites concerned with smart robotics. The Complainant is legally represented by a law firm with expertise in the field and clearly knew or ought to have known that the Complaint was doomed to fail on both the second and third elements of the Policy. Hence, the Complainant has brought this Complaint in bad faith and constitutes an abuse of this administrative proceeding.
Complainants’ counsel: Taylor Wessing N.V., Netherlands
Respondents’ counsel: No response
$6,888 Domain Name – Complaint Brings UDRP Instead of Buying – and Loses!
CECIA v. Abid, AbidNetwork .com, WIPO Case No. D2021-2504
<cecia .com>
Complaint Denied
Panelist: Mr. Matthew Kennedy
Brief Facts: The French Complainant specializes in advice, surveys, design, and construction for the food processing sector. The Complainant, founded in 2000, has its name CECIA formed as the acronym for its complete Company name. The Complainant holds the French trademark registrations for CECIA since 1990, while its subsidiary IDEC Group registered the domain name <cecia .fr> in 2018, which provides information about the Complainant and its services. The Respondent is a domain reseller from Pakistan who trades under the business name “Abidnetwork .com” and operates a website at the same address. The website displays his portfolio of approximately 100 domain names including the disputed Domain Name. The Respondent acquired the disputed Domain Name at a public auction and registered on December 9, 2020. The disputed Domain Name is currently advertised for sale.
Held: The disputed Domain Name got registered many years after the registration of the Complainant’s CECIA mark in France. “Cecia” is a female name, but not a common name like “Cecilia”. The Complainant shows that it has gained a reputation through the provision of its specialized engineering services in France and otherwise on the Internet, but the Respondent submits that he has never visited France or ever heard of the Complainant prior to this dispute. Besides, the Respondent shows that the top results for the same Internet search conducted outside France mostly refer to Cecia as a female name and rarely makes any reference to the Complainant. The Respondent may indeed have been aware of the existence of the Complainant but prior awareness of the Complainant does not by itself demonstrate that the Respondent intended to benefit unfairly from the Complainant’s CECIA mark and/or to damage the business of the Complainant. The Respondent is offering the disputed Domain Name for sale at USD 6,888, this price may reflect the disputed Domain Name’s inherent value as a personal name and does not allow the Panel to infer that the Respondent acquired the disputed Domain Name “primarily” for the purpose of selling it to the Complainant or to a competitor of the Complainant in terms of the Policy.
Complainants’ Counsel: Niddam-Drouas Avocats, France
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States of America
Weak Common Law Right Evidence Leads to Loss Over Descriptive Term
The Mortgage Link, Inc. v. Maurice Hicks, NAF Claim Number: FA2108001961916
<themortgagelink .com>
Complaint Denied
Panelist: Mr. Debrett G Lyons
Brief Facts: The Complainant asserts common law trademark rights in THE MORTGAGE LINK based upon asserted use of that mark since 2002. The evidence in support of the claim to common law trademark rights in this case, just comprises of a document showing that Complainant got incorporated in the State of Maryland in 2001 and screenshots of the Complainant’s current webpages resolving from the domain names <themtglink .com> and <mymortgagelink .com>. Besides, the Complainant alleges Respondent has no rights or legitimate interests and that Respondent registered and used the disputed Domain Name in bad faith. Respondent failed to submit a Response in this proceeding.
Held: The common law trademark rights may be established through use and public recognition, such that it has come to acquire secondary meaning. In terms of WIPO overview 3.0, 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. The Complainant is a mortgage lender and the phrase “the mortgage link” is wholly descriptive of Complainant’s business. As such, the Complainant bears a greater onus to present evidence of acquired distinctiveness / secondary meaning. The Complainant’s evidence does not show public recognition of THE MORTGAGE LINK as a common law trademark, still less a reputation in that descriptive expression. In the circumstances, the Complainant has failed to show unregistered trademark rights in THE MORTGAGE LINK. No findings required under other two clauses because the Complainant must prove all three elements under the Policy, the Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary.
Complainants’ counsel: Rachel M. Wolf of Shumaker Williams, P.C., Maryland, USA
Respondents’ counsel: No response