Fair Criticism against Florida’s Power & Light Company Upheld
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant is the largest energy company in the United States, serving millions of customers across Florida. The group has received media recognition for its efforts in clean energy, sustainability, ethics, and diversity, and it ranked Number 1 in the electric and gas utilities industry in Fortune’s 2020 list of “World’s Most Admired Companies”. The Complainant operates a website at <fpl .com> and owns FPL trademarks including wordmark. The disputed Domain Name was registered on March 8, 2021 and the website displays the Complainant’s trademarked logo with the heading “Official Florida Power and Light Electricity Rate Notice”, along with two video clips. The videos are critical of the Complainant’s practices in raising funds for a nuclear power plant. Both videos contest the Complainant’s proposals for electricity rate increases. There is no commercial advertising on the Respondent’s website or content unrelated to criticism of the Complainant’s policies and practices. A footer at the bottom of the landing page states: “This is an official public service announcement.”
Held: The Respondents claim non-commercial fair use of the disputed Domain Name for a criticism site. While UDRP panels have looked to circumstances beyond the disputed Domain Name itself to assess claims of fair use for a criticism site, here the Respondents’’ website is by all appearances genuinely non-commercial and the use of the Complainant’s mark is mainly referential on a site devoted to commentary and criticism regarding the Complainant’s proposed rate increase. The Domain Name itself is composed of the Complainant’s trademark plus arguably ambiguous terms, rather than derogatory or clearly critical terms, so the Domain Name does not negate an implication of source or affiliation. Set against those facts are the plainly critical texts on the landing page and the videos displaying the name and logo of CRS, which indicate non-affiliation with the Complainant. The Respondents walk a fine line between using the Complainant’s marks to imply that they are making “official” announcements from the Complainant and presenting criticism of the Complainant’s rate proposals. On this record, the Panel finds that the Respondents’ use of the Domain Name represents a fair use for a legitimate criticism site.
Complainants’ Counsel: Quinn Emanuel Urquhart & Sullivan, LLP, United States.
Respondents’ Counsel: Self-represented.
SAAS Company Redacts Competitors’ Domain Name
Panelist: Mr. Dennis A. Foster
Brief Facts: The Complainant provides a cloud-based software service that allows businesses to permanently redact documents. The Complainant currently operates at <redactable .co> and holds the registered service mark REDACTABLE before USPTO since November 2019. The Respondent uses the disputed Domain Name to redirect internet users to the website of a company, PaperFree Corporation, for which he serves as president. The Respondent later on October 12, 2021 deactivated the redirection of the disputed Domain Name and contends that it uses the disputed Domain Name to offer internet users redaction goods & services and that the disputed Domain Name is composed of a generic term that refers directly to those services.
Held: The disputed Domain Name redirected to Respondent’s website that offers products designed for redaction of documents. However, the Complainant is itself in that business of redaction and many previous UDRP panels have found that where a disputed domain clearly duplicates a complainant’s valid existing service mark, using that name to redirect internet users to a respondent’s own competing website does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use under the Policy. Furthermore, both Complainant and Respondent agree that the disputed Domain Name is currently inactive. This inactivity fails to establish any sort of rights or legitimate interests in the disputed Domain Name and does not prevent a finding of registration and use of a disputed Domain Name in bad faith. In fact, the Respondent registered and is using the disputed Domain Name in bad faith to disrupt Complainant’s operations and to gain commercially through confusion between Complainant’s mark and the disputed Domain Name’s redirection to Respondent’s own website.
Complainants’ Counsel: Craig A. Beaker of Perkins Coie, Colorado, USA.
Respondents’ Counsel: Self-represented.
Dismissed in English
Panelist: Mr. Andrew J. Park
Brief Facts: The Australian Complainant started operating in 1974 with a focus on restoration and waterproofing of roofs and masonry facades in period buildings. With dedicated manufacturing facilities to control product quality, Shalex products are manufactured in Australia and distributed throughout Australia and internationally. The Complainant conducts business in manufacturing sealers and adhesives under the registered Australian company name of Shalex industries Pty Ltd (registered on February 24, 2014) and all marketing and communications use the Shalex brand. The Complainant owns the trademark registration for SHALEX and the domain name <shalex .com.au>. The Complainant requested English to be the language of proceedings on July 16, 2021. The Respondent owns more than 5,000 domain names and filed a Response in Korean. The Respondent registered the disputed Domain Name on March 31, 2011 and redirects to a blog, which nowhere makes any reference to Shalex.
Language (Held): The Registration Agreement for the disputed Domain Name is in Korean. In terms of rules, the language of the proceedings must be in terms of the registration agreement, subject to the discretion of the Panelist. Having considered the circumstances of the case, English be adopted as the language of the proceeding to avoid any undue delay. Besides, the Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments.
Held: The Complainant registered the trademark SHALEX in 2017 which is 6 years later than the date the Respondent registered the disputed Domain Name in 2011. While the Complainant is an Australian company that has a history of almost 50 years, the Complainant advances no arguments whatsoever why the Respondent would have known about the Complainant prior to 2011. Meanwhile, the disputed Domain Name redirects to an un-connected blog and is offered for sale at a price of USD 49,500, which is significantly more than the actual cost to register the disputed Domain Name. The Respondent has registration of more than 5,000 domain names. These factors support a finding of bad faith use, but it cannot overcome the fact that the registration date of the disputed Domain Name predates the Complainant’s registration date of its SHALEX trademark or its <shalex .com.au> domain name. Hence, the Complainant could not establish the registration of the disputed Domain Name in bad faith.
Complainants’ Counsel: Self-represented.
Respondents’ Counsel: Self-represented.
Three Panelists, Three Decisions
Complaint Denied (with a concurring and dissenting opinion)
Panelist: Mr. Reyes Campello Estebaranz (Presiding), Mr. Gary J. Nelson and Dr. Hong Xue
Held (Mr. Reyes Campello Estebaranz, Presiding): This is a complex dispute, where the evidence and arguments of both Parties are not conclusive. While there is an identity between the disputed Domain Name and the Complainant’s trademark and domain name, and some factors in this case may seem more than coincidental pointing to a possible target of the Complainant and its prior intellectual property rights, other factors may point to consider that the Respondent independently chose the name “M31 Capital” for its business with no intention of taking advantage of the Complainant’s prior rights. For these reasons, this case exceeds the relatively limited “cybersquatting” scope of the Policy and would be more appropriately addressed by a court of competent jurisdiction. Therefore, the Complaint should be denied without entering into a decision on its merits, emphasizing that it makes no finding as to whether the Respondent’s conduct is legitimate under the Policy.
Concurring View (Mr. Gary J. Nelson): In this case, while the Respondent’s M31 Capital Management company may very well be commonly known by the disputed Domain Name, though the Respondent as an individual failed to prove the same. Besides, the Respondent claims his M31 Capital Management company is running as a legitimate business beginning nearly two years prior to receiving notice of this pending dispute, and because the Respondent has provided actual evidence in support of this claim, and because the Complainant has not provided any actual evidence that contradicts the Respondent’s claim that his M31 Capital Management company is anything but a legitimate business. Hence, the Complainant has failed to prove the registration and use of the disputed Domain Name by the Respondent in bad faith. As such, he joins with the Presiding Panelist on the ultimate decision to deny the Complaint for the reasons stated in this Concurring Opinion.
Dissenting View (Dr. Hong Xue): The Respondent’s use of the disputed Domain Name is not in good faith in China where the Complainant resides and operates. The information on the website of the disputed Domain Name discloses that Shanghai, China, is not only highlighted in the Respondent’s business map but confirmed as one of the cities where the Respondent’s service operates. Even though the Respondent may not have physical existence in China due to the regulatory restrictions, the Respondent’s website does promote the service and may have solicited the investors in China especially through the Chinese-language webpages. Based on the evidence available, the Respondent’s offering the investment service through the website of the disputed Domain Name with the knowledge of the Complainant’s prior-existing mark M31 is not bona fide under the Policy. Besides, the Respondent’s knowingly use of the disputed Domain Name that is confusingly similar to the Complainant’s mark for the website offering the investment services similar to the Complainant’s is highly likely to cause the initial confusion to the Chinese investors with the Complainant’s mark regarding the source, sponsorship, affiliation, or endorsement of the Respondent’s website and service, which is the evidence of bad faith. Hence, the Respondent registered and used the disputed Domain Name in bad faith.
Complainants’ Counsel: Baker & McKenzie, China.
Respondents’ Counsel: Sullivan & Worcester LLP, United States.
Late Supplement Filing by Complainant Admitted, Makes No Difference
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant is a SAAS provider, started its business under the name “Observe” in 2017-18 and operates online at <observeinc .com>. In the last 12 months, the Complainant spent over USD 250,000 promoting its services under the “Observe” trademark to “thousands of people in person and online”. The Agile Wings Limited, a Hong Kong based Company held the disputed Domain name from 2013 until July 2018, providing a log-in to its OLogger platform and HTML programming scripts for users to track website usage. Mr. De Backer became the sole director and shareholder of Angel Wing in 2017 and later after becoming the sole director of the Respondent Company as well, the disputed Domain Name exchanged hands. In January 2021, the disputed Domain Name began resolving to a website with a single webpage. On February 12, 2021, the Respondent applied to register OBSERVE as a trademark in the United States under class 42, claiming use since 1997, which is pending.
Supplement Filing (Held): The Complainant has submitted its supplemental filing very late in the proceeding – almost three weeks after the Response and only four days before the decision is due to be submitted. The Response does, however, advance information about the history of the disputed Domain Name and the Respondent’s relationship with the former holder, Agile Wings, which could not realistically be known to the Complainant. In these circumstances but with considerable reservations, those parts of the Complainant’s unsolicited supplemental filing are admitted into the record in the proceeding. However, it is not necessary to ascertain the Respondent’s views about the proposed supplemental filing or provide the Respondent with an opportunity to respond.
Held: The Respondent denies the knowledge of the Complainant and its trademark when the disputed Domain Name got transferred from its related company to the Respondent. That claim is not inherently implausible or easily put aside in circumstances where the disputed Domain Name consists of an ordinary English word; also the disputed Domain Name already held by a related company and in fact held for many years prior to the Complainant’s adoption of its trademark; and even if the Respondent undertook trademark searches at the time of the transfer, the searches would not have revealed any registered rights or pending trademark applications in the Complainant’s name. Moreover, the Complainant’s business appears to be operating in a limited way during 2018 but has significantly expanded the scope of its activities and promotion of its business in the last 12 months or so in particular. Therefore, it cannot reasonably be inferred that a Google or other Internet search would have disclosed the Complainant or, if so, how prominently. In these circumstances, it cannot be inferred that the Respondent targeted the Complainant when the disputed Domain Name transferred from Agile Wings to the Respondent. Accordingly, the Respondent did not register the disputed Domain Name in bad faith.
Complainants’ Counsel: Cooley LLP, United States.
Respondent’s Counsel: Morrison & Foerster, LLP, United States.
Lack of Evidence Leads to Dismissal Even in No Response Case
Panelist: Mr. Andrew J. Park
Brief Facts: The Brazilian Complainant is part of the global corporate group Furukawa, founded 120 years ago in Japan. It has transformed into a global corporation that is engaged in diversified activities in metals, light metals, telecommunications, automotive systems, and energy, among others, forming an international network of industries in different countries in Asia, North America, Europe, Africa, and Latin America. The Complainant registered its earliest SOHOPLUS trademark on December 12, 2017 in Brazil and its earliest domain name <sohoplus .com.br> in 2008, followed by <sohoplus .net.br> in 2009. The disputed Domain Name has registration date of October 11, 2005 and resolves to a website offering the disputed Domain Name for sale. The Korean Respondent did not file any response.
Held: There is nothing in the record to suggest that the Respondent has made a legitimate non-commercial or fair use of the disputed Domain Name or is commonly known by the disputed Domain Name. The disputed Domain Name resolves to a parking page with an offer to sell the disputed Domain Name for USD 20,000, that is significantly more than the actual cost to register the disputed Domain Name. However, the Complainant registered the trademark SOHOPLUS in 2017, which is 12 years later than the date the Respondent registered the disputed Domain Name in 2005. Although the Complainant argues that it is a global company with a long history of using its trademark as identifiers of its products and that it also owns and is using many domain names which incorporate the trademark SOHOPLUS in its entirety, both of which are much later than the registration date of the disputed Domain Name. Besides, there is a clear lack of evidence showing that the Respondent, apparently located in the Republic of Korea, targeted the Complainant. Hence, the Complainant could not establish the registration of the disputed Domain Name in bad faith.
Complainants’ Counsel: Kasznar Leonardos Advogados, Brazil.
Respondent’s Counsel: No Response.