Welcome to this week’s UDRP Digest (vol. 1.8), summarizing the most intriguing cases of the past week. Read about:
‣ No Bad Faith, ‘Givn’ the weak Evidence (givn .com)
‣ Well-known mark (medtronic) v. Legitimate interests (medo+tronic) (medotronic .com)
‣ This UDRP did not click with majority Panel (clickbetter .com and clickbetter .info)
‣ Indonesian distributor meets OKI data Test (thermomixindonesia .com)
‣ NGO fails to prove common law rights in the pending mark (itjpsl .org)
Enjoy!
No Bad Faith, ‘Givn’ the weak Evidence
GIVN Goods, Inc. v. Domain Administrator, Tiburon Holdings, Inc., WIPO Case No. D2021-2589
<givn .com>
Complaint Denied
Panelist: Mr. Robert A. Badgley
Brief Facts: Complainant sells bottled water under the GIVN trademark since April 9, 2014. The Complainant registered GIVN mark with USPTO soon thereafter and operates at <givnwater .com>. Complainant claims its GIVN trademark is “famous” but there is no indication in the record about Complainant’s sales, advertising expenses, consumer recognition, etc. The Respondent acquired the Domain Name on May 20, 2021 at a public auction. Respondent claims to have received an offer of $1500 from the Complainant, which the latter declined. Currently, the Domain Name does not resolve to an active website.
Held: The gTLD .com Domain Names may be inherently valuable notwithstanding anyone’s trademark rights. Respondent as well submits that it acquired the Domain Name because it is short and represents an abbreviation of a common word. Complainant asserts that its mark has become “famous” but that conclusion simply cannot be accepted on the strength of the evidence presented. Therefore, the Complainant has failed to prove that Respondent has registered and used the Domain Name in bad faith. Based on the rather thin record here, and viewing the matter on a balance of probabilities, it cannot be concluded that it is more likely than not that Respondent had Complainant’s GIVN trademark in mind when registering the Domain Name. Absent such a finding, there can be no bad faith registration, and hence the Complaint must fail.
Complainants’ Counsel: Gearhart Law, United States.
Respondent’ Counsel: Pillsbury Winthrop Shaw Pittman LLP, United States.
Well-known mark (medtronic) v. Legitimate interests (medo+tronic)
<medotronic .com>
Complaint Denied
Panelist: Mr. Nick J. Gardner (Presiding), Mr. A. Justin Ourso III and Mr. Ugur G. Yalçiner
Brief Facts: The US Complainant is one of the largest medical device and technology companies in the world, offering goods and services under the mark MEDTRONIC since 1949. The Complainant’s product is sold in over 150 countries with annual revenue totaling tens of billions of US dollars and operates online at <medtronic .com>. Besides, it owns trademark registrations in over 100 jurisdictions worldwide since 1976 including a recent International Registration enforceable in Turkey. The Respondent is a Turkish company, known as “Medo Tekstil Elektronik Alim” since 2005, wherein ‘ME+DO’ has been derived from the first two letters of the names of Company promoters. The Respondent registered the Disputed Domain Name on May 2, 2018 and resolves to a website where the Respondent promotes consumer electronic related products and components.
Held: The demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or service are evident here. But the words “bona fide” must encompass the Respondent’s knowledge and motives in choosing the name in question. The origin of the term “medo” as part of the Respondent’s name and supported by documentary evidence – it had nothing to do with the Complainant. Besides, Turkish law prohibits use of non-Turkish words in company names. The word “elektronik” is the Turkish translation of the English word “electronic”. In these circumstances, the addition of “tronic” to the existing business “medo” term, to evoke electronics connection, as opposed to the Turkish variant “tronik” is entirely credible for a business seeking to portray itself as an international seller of electronic products. Therefore, the Respondent has rights or a legitimate interest in the disputed Domain Name.
Complainants’ Counsel: Snell & Wilmer, LLP, United States.
Respondent’s Counsel: Christopher K. Leigh, United States.
This UDRP did not click with majority Panel
<clickbetter .com> and <clickbetter .info>
Complaint Denied (with Dissenting opinion)
Panelists: Ms. Marilena Comanescu (Presiding), Mr. The Hon Neil Brown Q.C. and Mr. Warwick A. Rothnie (Dissenting)
Brief Facts: The Complainant is a UK company incorporated in October 2012. The promoters of the Company included two associates, Sean Clark (the Complainant’s representative) and Justin Michie (the Respondent – silent partner). The Complainant provides Internet advertising services and claims common law trademark rights for the “Clickbetter” name. The disputed Domain Name <clickbetter .com> has registration date that of August 23, 2014 (registrar verified) and the registrant is the Respondent Justin Michie; the disputed Domain Name <clickbetter .info> has registration date that of August 22, 2013 and the registrant is ClickBetter LTD, UK (i.e. the Complainant although the address is different). At the time of filing the Complaint both disputed Domain Names redirected to a third party website, where services similar to those of the Complainant are promoted.
Held: The disputed Domain Names and corresponding websites are subject to common control of the Respondent and it would be equitable and procedurally efficient to decide the consolidation of multiple disputed Domain Names. The Complainant has failed to discharge the burden of proof on it, of establishing its common law trademark rights under this first element of the Policy. Moreover, it is apparent from the case file documents, that, the parties involved in this proceeding have business collaboration for more than ten years, wherein Respondent claims 50% ownership in the Complainant. The facts are further complicated by allegations of unfair competition, taken down websites, blocking and intercepting emails, stealing funds, loans and many further facts presented in a contradictory manner by the parties, supported by huge evidence. In order to get to the bottom of these issues, it will be necessary to have further evidence including cross-examination, discovery of documents and interrogatories or their equivalent. A UDRP panel does not have those mechanisms and has no power to order them. Therefore, the current dispute is not suitable for resolution under the UDRP and accordingly it should not examine the issues that arise in a UDRP proceeding.
Dissenting (Mr. Warwick A. Rothnie): The evidence is sufficient to establish that the Complainant has a relevant reputation in its claimed trademark to qualify as an unregistered trademark for the purposes of the Policy, hence standing in these proceedings. The Complainant remained the registrant of both disputed Domain Names until February 2021 when the first disputed Domain Name got transferred into the Respondent’s name and control. The second disputed Domain Name did not formally transfer out of the Complainant’s name but, at the same time, came under the unilateral control of the Respondent and, like the first disputed Domain Name, redirected to the site of one of the Complainant’s competitors. Moreover, the Respondent relies on a Silent Partnership Agreement between himself and Mr. Clark, whereby each has an equal 50 per cent interest in the business. The said arrangement directly contradicts the Respondent’s claim to unilaterally transfer the disputed Domain Names into his sole control. In these circumstances, the Complainant has established a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed Domain Names which the Respondent has not rebutted. The said factor indicates Bad Faith, in addition to the fact that the Respondent used the Domain Names to redirect people seeking the Complainant’s business to the business of one of its competitors.
Complainant’s Counsel: Adlex Solicitors, United Kingdom.
Respondents’ Counsel: ESQwire .com PC, United States.
Indonesian distributor meets OKI data Test
Vorwerk International AG v. Esther Gunawan, Elektrik Serbaguna, WIPO Case No. D2021-2368
<thermomixindonesia .com>
Complaint Denied
Panelist: Mr. John Swinson
Brief Facts: The Argentinian Complainant is a family enterprise, selling the product under the mark THERMOMIXsince 1970. The Complainant and the Respondent entered into a distribution agreement in 2011, with an understanding for the Respondent to choose and purchase its own Domain Name as the Complainant already reserved Domain Name <thermomix .co.id> for its subsidiary. Accordingly, the Respondent registered the disputed Domain Name on January 12, 2014. Later, the Respondent closed its office on October 31, 2015 due to difficulty importing the product but the Complainant did not exercise the option to repurchase the left over stock of THERMOMIX TM31. Therefore, the Respondent continued selling the remaining stock through its website at the disputed Domain Name.
Held: It is concerning that the Complainant did not inform the Panel of the business relationship between the parties and also suggests that the THERMOMIX products offered on the Respondent’s website did not originate from the Complainant, but the evidence before the Panel provided by the Respondent is to the contrary. The addendum to that agreement appears to state that the Respondent has the exclusive distribution rights for Indonesia for an indefinite period. Additionally, the Respondent provided invoices from the Complainant and shipping documentation to demonstrate the purchases made in 2012, 2013 and 2014 and further evidence that the Complainant emailed the Respondent numerous times in 2014 at an email address that included the disputed Domain Name. Here, the Oki Data test is relevant. This test derives from the well-known decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO-D2001-0903. Relying on the Oki Data decision, many panels have recognized that resellers and distributors using a Domain Name containing a trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such Domain Name. On balance, here-in the Respondent meets the Oki Data test.
Complainants’ Counsel: Moeller IP, Argentina.
Respondents’ Counsel: Internally Represented.
NGO fails to prove common law rights in the pending mark
The International Truth and Justice Project v. Edward Ferdinand, President SLCA, CAC Case No. 103981
<itjpsl .org>
Complaint Denied
Panelist: Mr. Alistair Payne
Brief Facts: The Complainant is an NGO based in the United Kingdom that is focused on Human Rights in Sri Lanka. The Complainant asserts that it owns common law rights through use since 2015, not only in the name and in its combined word & logo mark that contains the words “The International Truth And Justice Project”. The Complainant has made a United Kingdom trade mark application for a logo mark including the words but it has not yet reached the point of registration. The Respondent registered the disputed Domain Name on 13 September 2020 and resolves to a website soliciting information concerning activists and makes use of a logo that appears to be identical or similar to the Complainant’s logo.
Held: The Complainant has submitted that while it does not own registered trade mark rights for its mark “The International Truth And Justice Project” as it only has a pending trade mark application in U.K., that it does own common law rights both in its name and in the combined logo mark. In support of this assertion the Complainant has provided the evidence as to archives of its active website at the disputed Domain Name since 2015 and its Twitter account. The onus upon the Complainant under this element of the Policy is to show that its name or mark has become a distinctive identifier which consumers associate with its services. Although the standard of evidence required for a non-commercial organisation’s name and mark may be lower in the particular circumstances than for the mark of a commercial product or service, there is a threshold evidential requirement which has not been met in this case. Besides, the Complainant’s name and mark, “The International Truth And Justice Project” is at least in part descriptive and is not in the panel’s view highly distinctive. Therefore, the Complaint fails for this reason under the first element of the Policy.
Complainants’ Counsel: Internally Represented.
Respondents’ Counsel: Hewage Law Group.