Welcome to this week’s UDRP Digest (vol. 1.10), summarizing the most intriguing cases of the past week. Read about:
‣ US Financial Broker Attempts to Take Advantage of Pre-IPO News of a Swedish Company (klarnapreipo .com)
‣ Swedish Complainant Could Not Protect its’ (Nordic) Nest (shopnordicnest .com)
‣ Respondent’s Identity Redacted in Exceptional Circumstances (securian .contact)
‣ Cannot Monopolize a Common Descriptive Phrase (atvtracksystems .com)
‣ .CA Registrant Commonly Known by the Domain Name (alstomconstruction .ca)
‣ Common Law Rights Must be Demonstrated Pending Trademark Registration (boltonmenk .com)
Enjoy!
US Financial Broker Attempts to Take Advantage of Pre-IPO News of a Swedish Company
Klarna Bank AB v. Dorin Keith, WIPO Case No. D2021-2603
<klarnapreipo .com>
Transfer
Panelist: Dr. Clive N.A. Trotman
Brief Facts: The Complainant is a Swedish financial institution, specialising in the provision of facilities enabling consumers to pay for purchased goods and services over a period of time (referred as “Buy Now, Pay Later” scheme). The Complainant operates online at <klarna .com>, has 3500 employees and operates in 18 countries. The Complainant has a number of registered trademarks for KLARNA including word mark before USPTO registered August 12, 2014. In early 2021, the Complainant announced plans to make a future Initial Public Offering (“IPO”) of shares to be listed on the London Stock Exchange. The disputed Domain Name has a registration date of April 18, 2021 and hosts a website inviting users to reserve Klarna Pre-IPO shares. The Respondent offered to settle the matter by transfer of the Domain Name but later did not respond.
Held: The Respondent did not respond formally but instead indicated to the Complainant’s representative that it would transfer the disputed Domain Name to the former’s control. The Complainant has moreover produced evidence that the website to which the disputed Domain Name has resolved displays prominently the Complainant’s name, trademark, and its stylised logo with the addition of the sign ® meaning registered trademark. The Respondent’s means of attracting clients to its website is by display of the Complainant’s trademark in the disputed Domain Name and on the website in conjunction with the phrase “preipo”, which the Panel finds likely to confuse at least some people seeking the Complainant and information about the IPO into believing erroneously that they are dealing with the Complainant or its authorised agent. Accordingly, on the totality of the evidence and on the balance of probabilities, the Respondent’s registration and use of the disputed Domain Name are in bad faith within the meaning of the Policy.
Complainants’ Counsel: SILKA AB, Sweden
Respondent’ Counsel: Self-represented
Swedish Complainant Could Not Protect its’ (Nordic) Nest
Nordic Nest AB v. Anette Grostad, WIPO Case No. D2021-2756
<shopnordicnest .com>
Complaint Denied
Panelist: Mr. Antony Gold
Brief Facts: The Swedish Complainant, founded in 2002, under the name “Scandinavian Design Center” but changed its trading name to “Nordic Nest” in May 2019. The Complainant markets and retails a variety of homeware products, including furniture, tableware, lighting, rugs, and textiles, which are sold in over 70 countries and has 350 employees. The Complainant has protected its NORDIC NEST brand through trade mark registrations in various countries since 2015 but the US Trademark registered on October 22, 2019. The disputed Domain Name has registration as of November 9, 2016. It resolves to a website branded as “Nordic Nest” which offers for sale a variety of products under the categories of “Gifts”, “Essentials”, “Kids”, “Lifestyle”, “Yarn Shop”, and “Scandinavian Candy”.
Held: The word “Nordic” in the disputed Domain Name denotes products which originate from Nordic countries, while “Nest” is an expression which is sometimes used in a retail context to denote products, services or activities which relate to the home. Accordingly, the words “Nordic Nest”, when used as a brand, are apt to be perceived as describing a business which supplies products sourced from Nordic countries which are intended for use in the home. It is a trading style capable of being conceived of and used, independently of the Complainant and there is no evidence to the contrary. The Respondent, acknowledges the knowledge of the Complainant selling rugs through a website at <nordicnest .com> at the date of registration of the disputed Domain Name. However, whilst the Complainant had an European Union Trade Mark at that point in time, it did not have a United States trademark. In these circumstances, the Panel does not find the registration and use of the disputed domain name to point to lack of bona fides on the part of the Respondent nor to indicate a cybersquatting intent.
Complainants’ Counsel: Hansson Thyresson AB, Sweden.
Respondent’ Counsel: Self-represented
Respondent’s Identity Redacted in Exceptional Circumstances
Securian Financial Group, Inc. v. [redacted], NAF Claim Number: FA2109001965252
<securian .contact>
Transfer
Panelist: Mr. Richard Hill
Brief Facts: The Complainant has rights in the SECURIAN mark through its registration in the United States in 2002. The Complainant has served clients since 1880 and has sixty-four billion dollars in assets under management; it provides financial security to over fifteen million people nationwide through insurance, investment, and retirement products. The disputed Domain Name has a registration date of December 28, 2020, initially used for PPC ADs related to the Complainant. The Respondent requests for redaction of his name and other personal information on medical grounds.
Held: The Respondent requests that its personal information be redacted for medical reasons. According to Policy, “all decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” Past panels have redacted respondent’s name in cases of identity theft. There is no allegation of identity theft in the instant case. Nevertheless, on an exceptional basis pursuant to Policy clause 4(j), Respondent’s request to redact its name and personal information is accepted. Besides, the parties have both asked for the domain name to be transferred to the Complainant. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
Complainants’ Counsel: William Schultz of Merchant & Gould, P.C., Minnesota, USA.
Respondent’ Counsel: Self-represented.
Editorial Comment by ICA General Counsel, Zak Muscovitch: The issue of ‘when is it appropriate if ever, to redact a Respondent’s identity’ is raised in this case. We may see more attention paid to this particular issue as a result of recent greater concern about protecting personally identifiable information, particularly in light of the ‘perpetuity’ of information on the Internet. Complainants however, often have an interest in identifying Respondents for the purpose of identifying any pattern of abusive registrations. On occasion, we have also seen circumstances where Complainants have requested redaction of the Complainant’s details.
In addition to the redaction issue, this cases is the second recent case where respected and experienced Panelist Richard Hill has explored how to treat cases where the parties both ‘request transfer’ (see Hewlett-Packard Development Company, L.P. v. Valdemi Barbosa Maciel, NAF Claim Number: FA2109001963901). It raises the interesting question of what procedure should be followed in such circumstances. Whereas transfer without examination of the merits based upon a ‘common’ request of the parties is an expeditious resolution that benefits both parties, some Complainants may nonetheless want a full hearing of the proceeding on the merits. It is an important policy question that deserves further attention.
Cannot Monopolize a Common Descriptive Phrase
<atvtracksystems .com>
Complaint Denied
Panelist: Mr. David H. Bernstein (Presiding), Mr. Georges Nahitchevansky and Mr. Richard G. Lyon
Brief Facts: Both the parties are located in Spokane, Washington, selling aftermarket accessories for all-terrain vehicles (“ATVs”). The Complainant owns the Domain Name <atvtracks .net> and has a pending Trademark application before USPTO. The Complainant and its predecessor have used that domain name continuously since 2005 to sell ATV tracks and additionally the Complainant also sells ATV tracks through its physical store in Spokane. The Respondent registered the disputed Domain Name on September 4, 2016 and uses it to sell competing ATV track systems. The Respondent argues that ATVTRACKS is a widely-used and purely descriptive term used in Respondent’s and Complainant’s industry to refer to the products sold by both parties and that the Complainant may not monopolize a common descriptive phrase.
Held: The Complainant is entitled to benefit from the Trademark Examiner’s finding that the subject mark has acquired distinctiveness. But this evidence does not establish that the <atvtracks .net> mark had acquired distinctiveness as of 2016, when the Respondent registered the disputed Domain Name. Besides, the disputed Domain Name is highly descriptive of a business that provides information about, or sells, ATV track systems, which is exactly the type of business Respondent operates through the disputed Domain Name. It would be inappropriate to give Complainant a wide monopoly over all domain names that incorporate the descriptive term. There is not enough evidence in the record to conclude that Complainant had common law trademark rights in 2016 when the Respondent registered the disputed Domain Name or that Respondent acted in bad faith by registering the disputed Domain Name based on a generic term. However, the Panel is sympathetic to the disruption that Respondent’s business may be causing to Complainant, but on the evidence, that is a consequence of Complainant’s selection of a weak trademark, consisting of a generic term for the parties’ products plus a TLD. To the extent Complainant believes that the totality of Respondent’s actions, including the alleged instances of actual consumer confusion, might establish a claim of trademark infringement or unfair competition, as Complainant appears to suggest in its submissions, any such claim is more appropriately adjudicated in another forum and not through the UDRP.
Complainants’ Counsel: Lee & Hayes, United States
Respondent’ Counsel: John Berryhill, Ph.d., Esq., United States
.CA Registrant Commonly Known by the Domain Name
ALSTOM v. Alan Farzami, Alstom Construction Inc., CIIDRC Case Number: 15860-CDRP
<alstomconstruction .ca>
Complaint Denied
Panelist: Mr. Michael Erdle (Chair), Mr. Barry Effler and Mr. James Plotkin
Brief Facts: The French Complainant operating since 1928 but changed its name to Alstom in 1998. The Complainant carries on business in Canada through two subsidiaries: Alstom Canada Inc. and Alstom Transport Canada Inc. The Complainant is the owner of the trademark “ALSTOM”, which it has used since 1998 and registered in Canada on May 23, 2002 in association with various services, including construction services. The Complainant is also the owner of the domain names <alstom .com> and <alstom .ca>. The disputed Domain Name has a registration date of December 4, 2018. The Registrant states that Alstom Construction Inc. is a legal company that registered in Ontario on December 9, 2013 and has a Business Number with the Canada Revenue Agency. The Complainant submits that the Domain Name is not the Registrant’s legal name. The Complainant relies on the letter it received from the Ontario Ministry of Government Services in 2017, showing “cancelled” status, as well as the certificate it obtained on August 27, 2021, stating that there is no business name registration for “Alstom Construction”.
Held: The Registrant submitted evidence that it incorporated under the name “Alstom Construction Inc.” in 2013 and that is its current legal name, as shown in the Certificate of Status dated October 6, 2021. It also submitted evidence that it is commonly known by the name “Alstom Construction”, as shown on its website. Additionally, produced its 2020 income tax filing, under the name Alstom Construction Inc. The Complainant’s mere reliance on the 2017 letter from the Ministry is a matter of concern and it did not provide further evidence of the current status of Alstom Construction Inc. or the full corporate history. This evidence would have been disclosed by a routine corporate search. The Registrant has proven that it’s legal name and the name by which it is commonly identified at the time it registered the Domain Name remains “Alstom Construction Inc.” Accordingly, the Registrant has proven, on a balance of probabilities, that it has a legitimate interest in the disputed Domain Name, as contemplated under the Policy.
Complainants’ Counsel: Bruno Barrette
Respondent’ Counsel: Self-represented
Common Law Rights Must be Demonstrated Pending Trademark Registration
Bolton & Menk, Inc. v. Chaiming Ming, NAF Claim Number: FA2109001963601
<boltonmenk .com>
Complaint Denied
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant offers services related to engineering and surveying under the name BOLTON & MENK since 1949. The Complainant has filed for registration of Trademark before USPTO on May 13, 2021. The Complainant owns the domain name <bolton-menk .com> and has used that Domain Name to offer its services since 1996. The Complainant asserts that the BOLTON & MENK mark has become well recognized by consumers as a result of its extensive use and promotion over many years. The Respondent registered the disputed Domain Name in March 2021 and is being used for a Chinese-language website composed of explicit videos and advertisements.
Held: The Complainant has a pending application to register BOLTON & MARK before the USPTO, and has not yet been published for opposition. A trademark registration is not necessary to establish rights under the Policy. However, provided the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. 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. Complainant states that it has used BOLTON & MARK for more than 70 years but otherwise has offered only vague, conclusory allegations regarding public recognition of the putative mark. It has presented no evidence (nor even any specific allegations) regarding sales volumes, advertising expenditures, number of customers or website views, or other information that might support a finding of secondary meaning. Thus, the Complainant’s submissions are insufficient to demonstrate common law trademark rights for purposes of the Policy.
Complainants’ Counsel: Rhett P. Schwichtenberg of Gislason & Hunter LLP, Minnesota, USA
Respondent’ Counsel: No Response