Thank you for joining us for the Digest(vol. 2.38) as we cover some of the most interesting decisions from the past week:
‣ Complainant Attempts to Withdraw Complaint after Respondent Demands RDNH Ruling (veripro .com *with commentary)
‣ Domain Name Registered Before Complainant’s Existence (snugg .com)
‣ Panel Finds Absence of Secondary Meaning in Business Dispute (redreactive .com)
‣ Mambo Beach is Also a Geographic Location (mambo-beach .info)
‣ Personal Name Must be a Source Identifier to Qualify as a Trademark (jurgenneeme .com)
Our General Counsel Zak Muscovitch has added commentary as well. Enjoy!
Complainant Attempts to Withdraw Complaint after Respondent Demands RDNH Ruling
Panelists: Mr. Andrew D. S. Lothian, Ms. Elise Dufour, Mr. Tony Willoughby
Brief Facts: The French Complainant is a franchise network providing renovation and building services under the brand “Illico Travaux”. It also provides services under “VERIPRO” to check the financial and administrative health of craftsmen recommended by the agencies of the “Illico Travaux” network before recommending them to end customers. The trademark, VERIPRO, was originally filed on April 16, 2007 by the founder of “Illico Travaux” and the Complainant subsequently obtained a transfer of it on August 28, 2017. The disputed Domain Name was acquired by the Respondent in an expired domain auction on July 23, 2007 and currently resolves to a landing page. The Complainant alleges that MX records are configured in connection with the disputed Domain Name such that the Respondent could use it for sending fraudulent emails and receiving corresponding replies.
The Complainant further alleges that the disputed Domain Name was acquired by the Respondent more than 6 years after the Complainant has acquired trademark rights in its VERIPRO mark, noting that the current landing page was first archived on July 18, 2013. The Respondent contends that the Complainant does not have a monopoly over the VERIPRO trademark and that it had the right to register this non-exclusive term for its high potential as a possible corporate moniker. The Respondent further contends that the Complainant’s appendixes show that the Complainant started its rating activity under the name VERIPRO in 2010, three years after the Respondent acquired the disputed Domain Name. The Respondent requests an RDNH finding because the Complainant tried to mislead the Panel with “false statements”.
Preliminary issue – Complainant’s request to withdraw Complaint: On July 13, 2022, the Complainant’s representative wrote to the Center stating that it regretted the fact that the Complainant did not have information relating to the Respondent before the Respondent itself transmitted its Response, namely the fact that the Respondent is French and “accustomed to buying/registering/passive holding domain names that are surprisingly identical to trademarks”. In its communication, the Complainant’s representative also intimated that the Complainant “is withdrawing its Complaint for financial considerations resulting from the Respondent’s request to appoint a three-member panel”.
Accordingly, on July 13, 2022, the Center requested the Respondent’s comments on the Complainant’s request to terminate the proceeding. On the same date, the Respondent intimated that it objected to this. The Respondent asserted that the Complainant’s financial considerations were unmerited based upon the filing fee already paid by it, and the likely fees which it had incurred to its representative, adding that the Complainant more likely had noted that its Complaint was flawed and likely to fail.
Held: On July 23, 2007, both the Respondent and the Complainant’s predecessor were both based in France. The Complainant’s French national trademark had been filed some three months earlier, on April 16, 2007 and the application was formally published on May 25, 2007, i.e. some two months before the date on which the disputed Domain Name was acquired. However, beyond these facts, there is no basis on the record for suggesting that th Complainant’s mark might have come to the Respondent’s attention. There is no evidence that such mark had acquired any notoriety or was even in use by the relevant date, or that the parking of the page (2007-13) exploited the trademark value of the Complainant’s VERIPRO mark in any way.
In the circumstances of this case, the Panel finds reasonable, the Respondent’s case that it did not have the Complainant in mind at the time the Respondent acquired the disputed Domain Name at auction, due to the fact that “Veripro” did not appear to be exclusive to any particular rights owner, that it was an attractive name containing two elements which can be abbreviations for multiple words, and that it could be used for a wide variety of purposes. Therefore, absent any evidence that this use was specifically targeting the Complainant’s rights in its VERIPRO trademark, including evidence of the notoriety of such mark, the Panel does not consider that it constitutes use in bad faith within the meaning of the Policy.
RDNH: The Complainant in this case predicated its case upon a change in the website content associated with the disputed Domain Name in 2013. It asserted that this change must have coincided with a change of registrant of the disputed Domain Name to the present registrant. This assertion was incorrect and the truth would have been readily apparent upon proper investigation of relevant public resources. In fact, as the Respondent demonstrates, the disputed Domain Name was acquired shortly after the Complainant’s trademark had been registered in 2007. This was long before the Complainant’s rating system was introduced in 2010. Had there been no Response, the Panel would not have known that the Complaint was based upon a false premise and might simply have accepted the Complainant’s submissions as reasonable, with inevitable consequences for the Respondent.
The Complainant also makes the sweeping assertion that it “enjoys a high reputation in its field of specialty” and yet produces no substantive evidence to support this. The Complainant submits that its VERIPRO service was implemented in 2007, and likewise does not evidence this in any way. The evidence which it does produce is ambiguous, in that the timeline suggests that the ratings service began in 2010. There is no evidence of any fame or substantive reputation of the Complainant’s mark either in 2007, or in 2013, when the Complainant believed that the disputed Domain Name had been acquired. In short, therefore, the Complainant’s material factual allegations are bare and unaccompanied by any supporting evidence. The Complainant is represented by a law firm which claims a particular specialization in intellectual property. The Complainant therefore was, or should have been, familiar with the requirements of the Policy.
Complaint Denied (RDNH)
Complainants’ Counsel: Cabinet Bouchara, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
As we saw in this case, withdrawing a Complaint after a Response is filed is not always permitted. In this particular case, the withdrawal request was made after the Response was filed but before the Panel was appointed. The Provider asked the Respondent for its position on the Complainant’s request for withdrawal and the Respondent objected. Complainants sometimes want to withdraw their Complaint after receiving a Response that credibly and convincingly accuses them of bringing a Complaint in bad faith, i.e. Reverse Domain Name Hijacking. Respondents however, may in such circumstances want to see a Complaint proceed to a final determination where the withdrawal was not “with prejudice” – meaning that a Complainant could simply refile the Complaint at a later date. Respondents may also want their claim of RDNH adjudicated. This is so particularly since the Respondent may have already expended considerable time and money on defending against a meritless Complaint and it would be unfair to simply permit the Complainant to withdraw as if nothing had happened.
Indeed, permitting a Complainant to simply withdraw in such circumstances could encourage Complainants to try their luck with a meritless or bad faith Complaint, knowing that if they are unfortunate enough to have been called out for it by a defending Respondent, they can simply pick up their marbles and go home, no worse for wear and even ‘ahead’ since they would have afforded themselves an opportunity to get a coveted domain name for free despite having no entitlement to it, and perhaps even having made serious misrepresentations to support their meritless claim, with no repercussions levied against them.
The case law on Complainant withdrawals is well established. Possibly the first case which squarely addressed this issue was Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349, <Unmail[.]com> (August 29, 2016). The Panelist in that case, Mr. Andrew Lothian, was the same Panelist that presided in the present Veripro[.]com case. The Panelist noted in Unmail[.]com, that the Respondent had objected to the termination of proceedings because it would result in the Complainant avoiding consideration of the merits in general and the issue of RDNH in particular, leaving the Respondent in a disadvantaged position which would run contrary to Rule 10(b) which requires the parties to be treated equally. The Panelist noted that:
“The net effect of refusing an objection in these terms would be to allow any complainant to avoid the only form of sanction which the Policy provides for the making of a complaint in bad faith merely by applying for voluntary termination of the proceeding once it becomes aware that a response has been filed.
If such response requests the panel to make a finding of RDNH and, as in the present case, provides suitable grounds for this request such that it may not be dismissed out of hand, it would be unfair to a respondent to deny it the right to have the merits determined and such RDNH request addressed.
In reaching this view, the Panel makes particular reference to the requirements of paragraph 10(b) of the Rules, namely that the Panel shall treat the Parties with equality and ensure that each is given a fair opportunity to present its case.”
The Unmail[.]com case was subsequently followed by the unanimous three-member Panel (Matthew Harris, Philippe Gilléron, and David Bernstein) in Gstaad Saanenland Tourismus v. Domain Administrator, PrivacyGuardian.org / Dimitri Dimitriadis, WIPO Case No. D2016-2601 <Gstaad[.]com> (May 19, 2017). In this case the Complainant advised that it wish to withdraw and that it did not intend to re-file, however the Respondent objected on the basis that it wanted its claim of RDNH adjudicated pursuant to Rule 15(e). The Panel noted that “it is within the Panel’s authority to grant or deny a unilateral request to terminate a proceeding over the Respondent’s objection”. The Panel compared the circumstances to cases where a Respondent simply consents to transfer of a disputed domain name but the Panel nonetheless decides that the circumstances warrant a decision on the merits. The Panel concluded that where a Complainant requests termination, “if a respondent objects to that course of action, that will frequently be a good enough reason for the panel to proceed to issue a full decision…In the same way as a complaint is prima facie entitled to ask for a full decision so that its position is publicly vindicated, so is a respondent. This is particularly so where, as here, the respondent has actively sought a finding of reverse domain name hijacking”.
The third case which firmly established the correct approach in dealing with unilateral Complainant requests to terminate a proceeding, was Türkiye’nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi v. The Office of George Gould, WIPO Case No. D2021-1949 <togg[.]com> (September 1, 2021). There, Panelist Matthew Kennedy agreed that the Respondent’s reasons for objecting to the termination, were justifiable; namely that the Respondent wanted a decision on the merits to preclude a refiling and to use as persuasive authority elsewhere, and also that the Respondent had requested a finding of RDNH under Paragraph 15(e) of the Rules. The Panel stated:
“The Respondent had already been put to the time and expense of engaging legal representation before the Complainant purported to withdraw the Complaint.
Termination of the proceeding would potentially leave the Complainant free to refile a complaint under the Policy whereas continuing the proceeding will give the Respondent an opportunity to obtain findings regarding the merits of the Complaint and the Respondent’s request for consideration under paragraph 15(e) of the Rules.”
Accordingly, the case law is clear that where a Response has been filed, a Respondent may have a valid objection to a unilateral Complainant request to terminate the proceedings, particularly where; a) the Complainant has not asked for termination with prejudice; b) where the Respondent desires an adjudication on the merits; and/or c) where the Respondent has requested a finding of RDNH.
Domain Name Registered Before Complainant’s Existence
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant Company was incorporated on August 26, 2021 under the laws of England and Wales and trades under the name “Snugg”. The Complainant provides services in connection with providing or developing energy efficient homes under the tag line “Making energy efficient homes simple and affordable for everyone” and owns a trademark, SNUGG, registered in the United Kingdom in International Classes 36 and 42. The trademark application was filed on December 8, 2021, and entered on the Register on March 25, 2022. The Complainant provides information as to awards, press coverage and social media presence, however each of the examples are dated in 2022.
According to the Complaint, the disputed Domain Name was registered on August 23, 2020, and updated on August 16, 2021. The Complaint provides a screenshot of the webpage that appeared at the disputed Domain Name, displaying tabs for, “related searches”: iPad Air Cases, iPad Mini Cases, snugg cases, Smartphone Cases, iPhone Cases, and Macbook Covers. The said page further links to the URLs for <simplifyanswer .com> and <incredibilesearches .com>. The webpage resolves to a webpage which reads “This Page is Under Construction – Coming Soon!” In December 2021 and January 2022, the Complainant made attempts to contact the Respondent through broker service offering to purchase the disputed Domain Name for USD $5,000 but did not receive any response. The Complainant also contends that findings by other panels in other proceedings show that the Respondent registered multiple trademarks in bad faith.
Held: The Respondent not only registered the disputed Domain Name before the Complainant applied to register its trademark but even before the Complainant was even incorporated or began using its trademark. In terms of the WIPO Overview, in such circumstances, the panel will not normally find bad faith on the part of the respondent, unless it can be shown that the Respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights. So far as the record in this proceeding shows, circumstances of the kind referred to in section 3.8.2 of WIPO Overview 3.0 do not appear to apply in this case.
Even if the date of August 23, 2021, when the WhoIs record was last updated reflected the date of transfer to the Respondent, it was still three days before the incorporation of the Complainant. The Complainant did not identify any basis on which it could be held that the Respondent registered the disputed Domain Name with some intention of targeting the Complainant or its trademark at a time when the Complainant did not exist and had not even begun using the trademark. Accordingly, the Complainant did not prove that the Respondent registered the disputed Domain Name in bad faith. This is significant because, as noted above, both registration in bad faith and use in bad faith must be established and as the Complainant did not establish that the disputed Domain Name was registered in bad faith, therefore the Complaint must fail.
Complainants’ Counsel: Jerrold Temko, United Kingdom
Respondents’ Counsel: No Response
Panel Finds Absence of Secondary Meaning in Business Dispute
Panelist: Dr. Katalin Szamosi
Brief Facts: The Complainant offers light-based skin treatment. It owns rights in the RED REACTIVE mark based upon its application for registration of the mark with the USPTO, filed on March 7, 2022 and also asserts common law rights in the RED REACTIVE mark. The Complainant alleges that the Respondent was engaged as a contractor by a sister company of the Complainant and registered the disputed Domain Name as a direct part of his contractor duties. The Complainant further alleges that there were discussions of the Respondent becoming an equity owner of the Complainant, however this did not occur, and even if it had occurred, the Respondent nevertheless would not have had any direct ownership rights in the company’s assets.
The Respondent argues that he possesses and intends to enforce a legitimate ownership interest in the Complainant, and was not merely a contractor and he purchased the disputed Domain Name of his own volition, not at the direction of the Complainant, prior to the registration of the Complainant by the Complainant’s principal. The Respondent further contends that the Complainant lacks rights in the RED REACTIVE mark because the Complainant does not own the RED REACTIVE mark and he has thus not infringed upon it and that he has documentation stating legal ownership in the Complainant which he intends to legally enforce.
Held: The parties agree on the fact that they were involved together in a business relation in the past, even though it is not clear what the extent of the relationship was. The disputed Domain Name was originally purchased by the Respondent in conjunction with the Respondent’s work for the Complainant, but is registered in the Respondent’s own name. After the business relationship between the Respondent and the Complainant was terminated, the Respondent refused to transfer the domain name to the Complainant. The Complainant and the Respondent have no further business relationship.
Usually a business and/or contractual dispute between two parties falls outside the scope of the UDRP. However, the Panel finds that the dispute between the parties relates to the ownership of equity in the Complainant, therefore the question of contractual interpretation can be disregarded. Rather herein the Complainant fails to sufficiently establish rights that rise to the level of secondary meaning identified with the Complainant in the RED REACTIVE mark during the relevant time period. Therefore, the Panel finds that the Complainant did not satisfy Policy ¶ 4(a)(i). Thus, the Panel declines to analyze the other two elements of the Policy.
Complainants’ Counsel: Internally represented
Respondents’ Counsel: Mark H. Richards, Utah, USA
Mambo Beach is Also a Geographic Location
Panelists: Mr. Willem J. H. Leppink, Mr. Charles Gielen and Mr. Wolter Wefers Bettink
Brief Facts: The Complainant runs a shopping, leisure, and entertainment mall in Willemstad, Curaçao named “Mambo Beach”. It is the owner of the Curaçao trademark MAMBO BEACH (word mark), filed on November 15, 2002 and also of various other Curaçao trademarks including the word element MAMBO. The disputed Domain Name, registered on October 27, 2015, resolves to a website providing information about Mambo Beach and surrounding facilities such as hotels, beach clubs and restaurants. The Complainant alleges that the disputed Domain Name falsely suggests affiliation with the Complainant, as the Website targets visitors in the same area as where the Mambo Beach mall is located.
The Complainant further alleges that the beach is officially named the Seaquarium Beach, but has been also known as Mambo Beach over the years, due to the efforts and reputation of the Mambo Beach mall. The Respondent contends that the name of the beach rather comes from the name of the popular beach club “Mambo” that was located on the beach until 2012 and not that of the Complainant and that he uses the disputed Domain Name in connection with a bona fide offering of services as the Respondent provides information to tourists seeking to reside in the Mambo Beach area and informs them about restaurants, bars, hotels, etc. in close proximity of the Mambo Beach.
Held: The Respondent sufficiently demonstrates by references to Google Maps and a Lonely Planet guide that the Sea Aquarium Beach on Curaçao is popular and also commonly known as Mambo Beach. Also simple search engine searches for “Mambo Beach” result in a hotel and booking website with accommodation in that area. Therefore, Mambo Beach became a geographical term and it is irrelevant whether that term originates in the presence (until 2012) of the popular Mambo Beach Club, as suggested by evidence submitted by the Complainant and pointed out by the Respondent, or in the presence of the Complainant’s Mambo Beach mall, as stated by the Complainant.
Where the goods or services offered on a website specifically relate to the generic or descriptive meaning of the domain name, the registrant is making the very kind of bona fide offering that is sufficient to establish legitimate interests under the Policy. That principle is particularly appropriate in the context of a domain name that consists solely of a geographical term if, as in this case, the website to which it resolves contains information about that geographical area. Moreover, nothing on the Website, which provides information about this beach, would mislead Internet users into believing that it is the official site of the Complainant’s mall or any affiliation with such mall, the Complainant or the Trademark. The Complainant thus failed to show that the Respondent lacks a legitimate interest in its Domain Name.
Complainants’ Counsel: ICTRecht, Netherlands
Respondents’ Counsel: Lawfox Advocaten BV, Netherlands
Personal Name Must be a Source Identifier to Qualify as a Trademark
Panelist: Mr. Nick J. Gardner
Brief Facts: The Complainant and the Respondent are both individuals in business buying and selling domain names. They are in dispute about a transaction where the Respondent says that the Complainant reneged upon an agreement to sell him certain domain names but kept the money he was paid. As a result, the Respondent registered the disputed Domain Name on July 15, 2020, which resolves to a website in which the Respondent is highly critical of the Complainant. The Complainant does not have any registered trademark comprising the term “jurgenneeme” or any variation thereof. The Complainant contends that he bought and sold large numbers of domain names since 2011 using his name, hence “has acquired a certain fame and notoriety on the Internet”. He supports his arguments with evidence from Google search results, payment notifications from SEDO and UDRP decisions involving the Complainant.
The Complainant further alleges that when the Respondent was approached via email to address the conflict and find a solution, the Respondent requested USD $50,000 for transferring the disputed Domain Name to the Complainant. The Respondent contends “Jurgen Neeme does not use his own name to identify his business of selling domain names. He has no existing website or any materials under his name. The majority of search results for his name point to the many previous UDRP cases he has lost. For someone who owns tens of thousands of domains, he has not registered a single domain containing his own name. His domain business is conducted entirely through marketplaces like Afternic, SEDO, and DAN, which do not publicize his name. The invoices his lawyer attached are only sent to him after a sales transaction is completed. The only public identifier he uses to sell domains is TheDomain.io.”
Held: There is no dispute that Jurgen Neeme is the Complainant’s given name. It appears on the evidence that the name is unique to the Complainant and that the Complainant traded in domain names since 2011 in his individual name. However, there is no evidence from any third party that they regard the Complainant’s name as a source identifier in relation to the sale or purchase of domain names. The absence of evidence would seem to suggest that the Complainant’s name, despite being unique, has not been used in a manner which would give rise to unregistered trademark rights accruing in that name.
The Complainant has placed in evidence the results of a Google search against his name, which only appears to return nine results. The Panel is not convinced that any of these entries show the Complainant’s name being used as a source identifier in a business sense or establish common law rights in his name. Further, the Panel does not consider that the fact of the Complainant’s status as a losing respondent in a number of other UDRP cases can in itself establish a reputation that gives rise to common law rights in his name. Apart from these cases, search results and the quoted article, there is no evidence that the Complainant has any other fame or notoriety in his name. Taking all of this into account the evidence would seem to be precisely consistent with what the Respondent argues above. Accordingly the Panel declines to find that the Complainant has any applicable trademark for the purposes of the Policy.
Complainants’ Counsel: Defiende tu Idea, Chile
Respondents’ Counsel: Self-represented