Welcome to this week’s UDRP Digest (vol. 1.4), summarizing the most intriguing cases of the past week. Read about:
‣ Gooooal! Beckhams Score a Domain Transfer (usBeckham .com)
‣ A Dog of a Domain Name Transferred (wahl .dog)
‣ Yes We Can, Take Away Cybersquatted Domains (obamapresidentialcenter .com and more)
‣ Instagram UDRP Goes Up In Smoke (instagramnl)
‣ A Vaccine Trademark Registration Is Not Enough (virtivax .com)
Enjoy!
Gooooal! Beckhams Score a Domain Transfer
<usBeckham .com>
Transfer
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainants are wife and husband. The first Complainant started her “Victoria Beckham” fashion label in 2008 and her fashion products are offered for sale from an official website and are available in more than 450 stores in 50 countries worldwide. The second Complainant is a former English footballer who has worked with world-leading fashion and lifestyle brands. He is the owner of two registered trademarks in the United States – “BECKHAM” (since 2007) in classes 9, 16, 25 (includes clothing), 28, and 41 and another “BECKHAM” (since 2012) in Class 3 (which includes fragrances). The U.S. Respondent registered disputed Domain Name on July 8, 2020 and it resolves to a website offering competing fashion products. The products on offer from the Respondent’s website are not products made or offered by the First Complainant’s business or endorsed by the Second Complainant. By clicking on the link on the website “Fragrances” took the browser to another website which in addition to offering for sale fragrances offered other fashion items including a swimsuit range under the label “Victoria Beck”, which is not used by or associated with either of the Complainants.
Held: Consolidation of the Complaint is appropriate as the Complainants’ share a common surname “BECKHAM”, which has been registered by the second Complainant as a trademark (in respect of clothing, fragrances and fashion accessories). The disputed Domain Name was registered long after the trademark registration and also well after the first Respondent’s fashion label was launched and had gained widespread recognition in both the United Kingdom and the United States. The use of a confusingly similar domain in connection with competing or rival goods does not qualify as use in good faith under the Policy. Bad faith is also demonstrated by the title of the website “BECKHAM® Official Online Boutique”, which is a misrepresentation that the operator of the website is the owner of BECKHAM registered trademark.
Complainant’s Counsel: Demys Limited, UK
Respondent’s Counsel: Self-Represented
A Dog of a Domain Name Transferred
Wahl Clipper Corporation v. Gabriella Garlo, NAF Claim Number: FA2107001957588
<wahl .dog>
Transfer
Panelist: The Honorable Charles K. McCotter, Jr. (Ret.)
Brief Facts: The Complainant markets and sells hair care products and other related products since 1919 under the WAHL mark throughout the United States and in 165 countries worldwide through retail stores and online retailers. The trademark “WAHL” was registered with the USPTO in November 1985. The Respondent registered the disputed Domain Name on May 18, 2021. The website at the disputed Domain Name displays several sponsored hyperlinks including links that display the WAHL mark and also terms related to the Complainant’s products.
Held: The Respondent is neither licensed or authorized to use the Complainant’s WAHL mark nor is commonly known by the disputed Domain Name. The Respondent does not have rights or legitimate interests in the disputed Domain Name because he doesn’t use the disputed Domain Name for a bona fide offering of goods or services or legitimate non-commercial or fair use under Policy. Rather, the Respondent registered and uses the disputed Domain Name to display third-party commercial hyperlinks and thereby attracts users to its webpage for financial gain. Use of a confusingly similar domain name to display third-party commercial hyperlinks is evidence of bad faith under the Policy.
Complainant’s Counsel: Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA
Respondent’s Counsel: No Response
Yes We Can, Take Away Cybersquatted Domains
<obamapresidentialcenter .com>, <thebarackhobamapresidentialcenter .com>, <thebarackobamapresidentiallibrary .com>, <barackhobamapresidentialcenter.com>, <barackhobamapresidentialcenter .org>, <thebarackhobamapresidentialcenter .org> and <thebarackhobamapresidentiallibrary.com>
Transfer
Panelist: Mr. Clive L Elliott Q.C. (Chair), Mr. Ho-Hyun Nahm, Esq., and Mr. Professor David Sorkin
Brief Facts: Former United States President Barack H. Obama owns common law rights to the marks “BARACK OBAMA” & “OBAMA” and has licensed use of Complainant’s Marks to the Complainant, the Obama Foundation. Two Domain Names were registered shortly after President Obama became a front runner for the Democratic Party in the 2008 presidential election, and the other five Domain Names were registered immediately after President Obama was inaugurated as the 44th President of the United States. The Respondent claimed that Complainant was established in 2014, five years after the registration of the Domain Names. The Respondent further claimed he registered the Domain Names to use as free speech forums.
Held: Long before the Respondent registered the Domain Names, the OBAMA Marks had become distinctive and famous through President Obama’s extensive public promotion and use of the OBAMA Marks in U.S. commerce in connection with advertising and providing a wide range of services and activities, including having authored several books. Therefore, former President Barack Obama owns common law rights in the “OBAMA” Marks. The disputed Domain Names resolve to pages displaying third party links and no legitimate use is evident. The Respondent registered the multiple Domain Names in bad faith opportunistically since the disputed Domain Names were registered in anticipation of former President Barack Obama’s political career.
Complainant’s Counsel: James R. Davis, II of Perkins Coie LLP, District of Columbia, USA
Respondent’s Counsel: Self Represented
Instagram UDRP Goes Up In Smoke
Instagram, LLC v. A. Bourik, WIPO Case No. DNL2020-0034
<instagram .nl>
Complaint Denied
Panelist: Mr. Remco M. R. van Leeuwen
Brief Facts: The Complainant is currently a well-known online photo and video sharing social networking application. The Complainant’s application launched on October 6, 2010 and its first EU trademark was registered on March 15, 2012. The Complainant was however, named Burbn Inc. until October 2010, when it renamed to Instagram. The Respondent registered the disputed .nl Domain Name on December 22, 2010, and at that time the .com was not owned by the Complainant. The Respondent submitted that while he does not question Complainant’s current popularity, in 2010 the Complainant was hardly known in the United States, let alone in the Netherlands and that it was profoundly unforeseeable that Complainant would subsequently gain worldwide popularity. The Respondent claimed that he registered the Domain Name for a cannabis courier service under the name “Insta Gram”, referring to a “gram” of cannabis.
Held: The Respondent provided two affidavits to demonstrate that he had been making preparations to use the Domain Name in connection with a bona fide offering of goods or services, prior to notice of the dispute. Nevertheless, the Panel noted that insufficient information was provided by the Respondent such as documentation showing steps taken to bring his business plan to fruition over the past 10 years. There was insufficient evidence before the Panel to determine whether Respondent unfairly sought to take unfair commercial advantage of Complainant when registering the Domain Name. There are questions of fact here that require resolution of a kind that is better suited for a court of law,
Complainant’s Counsel: Hogan Lovells (Paris) LLP, France.
Respondent’s Counsel: Houthoff Coöperatief U.A., the Netherlands.
A Vaccine Trademark Registration Is Not Enough
VitriVax, Inc. v. Alexander Segal, NAF Claim Number: FA2108001959542
<virtivax .com>
Complaint Denied
Panelist: Ho-Hyun Nahm, Esq., Panelist
Brief Facts: The Complainant is a technology company specializing in storage and delivery of vaccines, having rights in the “VITRIVAX” mark. The trademark has a recent registration of August 2021 showing use since October 31, 2018, but the Complainant claimed common law rights since 2014. The Respondent is the vice president of a Company that develops thermostable powders, including vaccines under the “VITRILIFE” mark and registered multiple websites with variations of that mark. The Respondent registered the disputed Domain Name on February 08, 2018 to prepare to promote vaccine materials while it awaits FDA approval of its product.
Held: 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 Panel finds that merely showing the date of the first use of the name ‘VitriVax’ based upon a press article, coupled with the additional material from the Complainant’s website is insufficient to establish Complainant’s common law rights prior to the registration of the disputed Domain Name. The USPTO records otherwise show the first use in commerce by the Complainant being October 2018, while the disputed Domain Name has prior registration date. Therefore, the Complainant has failed to establish that the Respondent registered the disputed Domain Name in bad faith.
Complainant’s Counsel: Laila S. Wolfgram of Polsinelli P.C., Missouri, USA
Respondent’s Counsel: Cy Bates, California, USA