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Noteworthy Domain Name Decisions for 2016

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015) and Supplement and Update (2017). Learn more about the book and Supplement at Legal Corner Press. Available from Amazon and Barnes & Noble.  Review and notices of the book here.

More detailed analytical discussions of decisions can be found in recent and archival essays posted on the website and republished on udrpsearch.com and circleid.com. Noteworthy Domain Decisions for 2015 can be found here.

Igor Vaks v. WebmasterCast.com, FA1611001703551 (Forum December 29, 2016) (<socialedge.com>)
In a highly unusual decision, the Panel grants Complainant a second chance to make its case: “It seems clear [the Panel says] Complainant is proceeding pro se.  Therefore, the Panel grants Complainant leave to recommence proceeding.  The Panel admonishes Complainant to consult someone familiar with UDRP proceedings before re-filing.” Actually, it’s not at all clear the Complainant proceeded pro se because it was represented. What is clear is that the representative had no understanding of the UDRP requirements.

Souq.com FZ LLC v. Ruiling Wang, Comcom Communications LLC, D2016-2085 (WIPO December 12, 2016) (<kingsouq.com>)
Serving a cease and desist letter is a strategic choice. Failing to put a potential competitor on notice can have consequences under the UDRP. In this case, it “has allowed the Respondent to solidify its rights to the Disputed Domain Name” which supports its defense under paragraph 4(c)(i) of the Policy. Whether the use of the domain name infringes Complainant’s trademark is outside the Policy’s scope: “[T]he Panel is not seeking to make any finding as to United Arab Emirates law, it is simply applying the terms of the Policy. If the Respondent is, as the Complainant contends, infringing the Complainant’s trade mark rights, that is a matter to be dealt with by the relevant court.:

Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016) (<bestshopvac.net>).
This is a curious case of genericide. Respondent “provided pictures and links related to Internet searches in order to demonstrate that the terms ‘shop vac’ are commonly used in a generic manner to refer to wet/dry shop vacuum cleaners.” And Complainant submitted “exhibits of its recent attempts to prevent the use of its mark as a generic description of a type of vacuum cleaner, including correspondence in which it seeks the removal from Wikipedia of the statement: ‘Wet or wet/dry vacuum cleaners (commonly known by the generic trademark Shop-Vac)’ and the removal of ‘Shop-Vac’ from a Wikipedia list of generic trademarks.”
In denying the Complaint the Panel noted:

It is not clear whether or not Complainant has been or is likely to be successful in preventing use of the words “shop vac” to describe a type of vacuum cleaner. However, it appears on the material before the Panel that the word “vac” is commonly used in the industry as an abbreviation for “vacuum” and that the expressions “shop vac” and “best shop vac” are in common use with respect to vacuum cleaners other than those of Complainant.

Información, Control y Planificación, S.A. v. JA Powell, BD Stansky, CA Morris Jt Tnts, D2016-2005 (WIPO November 28, 2016) (<icp.com>)
A formal change of registration may point to a successor registrant chargeable for cybersquatting as of the date of its registration but proof of an “unbroken chain” of ownership of the domain name predating the existence of the trademark will rebut any presumption of successor liability. For this proposition the Panel cites WIPO Overview 2.0 at paragraph 3.7: “Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.”

Serverscheck BVBA v. Michael Starr, DCC Corporate, D2016-1958 (WIPO November 24, 2016) (<servercheck.com>)
When respondent defaults but prevails it’s an occasion to examine the Panel’s reasoning. In this case, the core question rested on the timing of the domain name registration, whether it pre- or postdated the trademark. Unusually, the Respondent is a registrar. Complainant argued that the date of registration should be the date of the last transfer which postdated the trademark (by a couple of months). However, while the current registrant is the registrar the domain name has always been for many years and continues to be associated with the individual Respondent.

Retail Royalty Company and AE Direct Co LLC v. Daniel Cormier, FA1610001698852 (Forum November 23, 2016) (<aeried.com>)
A dictionary word registered as a domain name that could be either legitimate or not, is not legitimate if passively held and respondent offers neither excusable explanation nor demonstrable evidence of future use.  “Aeried” for example could either be illegitimate if the added “d” is an intentional ploy, or legitimate if the registration was without intent to capitalize on AERIE. To overcome the inference of typosquatting respondent would have to “actually show [an] intent to use [the domain name in a manner] that did not encroach on Complainant’s protected commercial area.”  It was unable to do this and the domain name was transferred.

MasterCraft Boat Company, LLC v. Debbie Hayes, FA1610001696484 (Forum November 23, 2016) (<mastercraftaz.com>)
Generally, domain name disputes are between strangers, but this case illustrates a circumstance where the disputants had a contractual relationship. If a distribution agreement is properly drafted for domain name use to cease upon termination, then continuing use will be a violation of the Policy. Here, Respondent renewed the registration for the domain name and the domain name is forfeited.

TOBAM v. M. Thestrup / Best Identity, D2016-1990 (WIPO November 21, 2016) (<tobam.com>)
This decision has received chatter from domain investor and information blogs for arguing that renewal after trademark is live constitutes registration and use in bad faith because it violates Paragraph 2 of the Policy. Panel explained that “While there are a handful of UDRP cases around 2009-2010, including those cited by the Complainant, which considered alternative approaches based on the warranty in paragraph 2 of the UDRP and the wording of paragraph 4(b), amongst other things, the overwhelming approach of UDRP panels since then has been to affirm the literal meaning of paragraph 4(a)(iii) of the Policy and to require bad faith at the time of registration or acquisition of the disputed domain name.”
Respondent responded to the cease and desist notice with a warning that its registration predated the trademark by many years. The Panel noted that Respondent’s warning in response to Complainant’s cease and desist notice is a factor in determining reverse domain name hijacking: “This warning should have given the Complainant serious pause for thought but it ploughed on regardless.”

New Jersey Lawyers Service, LLC v. Guaranteed Subpoena Service, Inc., FA160900 1695657 (Forum November 10, 2016) (<lawyersservices.com>)
Trade names are denotative and not protectable as trademarks.  “[E]vidence of use of a trade name is insufficient to prove that Complainant has Common Law rights on a trademark and that such trademark has acquired secondary meaning through the use of a trade name. Previous panels have held that usage as a trade name does not serve to establish common law rights in a mark.”

Duke University v. David Hanley, FA1609001692961 (Forum November 9, 2016) (<duke careers.com>.
Mimicking complainant’s website and targeting particular consumers who are complainant’s natural constituency. Panel explains that the content of the resolving website creates “confusion by suggesting a connection between the website and Complainant through the display of Complainant’s trademarks and mimicry of Complainant’s use of such trademarks and the targeting of graduates of Complainant’s university.)

Amazon Technologies, Inc. v. Robert Nichols, FA1609001693499 (Forum October 20, 2016) (<amazoncarsandtrucks.com> and <amazonvehicles.com>.
Under the right circumstances, here the inclusion of a well-known, even famous mark, “Panels have considered exorbitant offers to sell disputed domain names as a further indication of a lack of a bona fide purpose.”)

GWG Holdings, Inc. v. Jeff Burgar, Alberta Hot Rods, D2016-1420 (WIPO October 13, 2016) (<gwg.com>)
The Panel noted four reasons for sanctioning Complainant a reverse domain name hijacker:
1. “[A] complete absence of evidence or any facts from which an inference could reasonably be drawn that the Respondent registered the disputed domain name [to take advantage of Complainant’s trademark]”;
2. Since Respondent registered the disputed domain name some eleven years before the Complainant was incorporated it was “impossible for the Respondent to have known of the Complainant or to have been motivated by bad faith towards a non-existent company when it registered the disputed domain name.”
3. “[T]he disputed domain name is clearly an abbreviation of the business name ‘General Web Group’ which, the evidence shows, is the name of the Respondent’s business and in connection with which it used the disputed domain name for many years before even the Complainant’s stated first use of the GWG trademark in commerce.”
Lastly, the Panel wanted to deliver a philosophical basis for sanctioning Complainant’s abusive conduct, namely the “importance of preserving the integrity of the UDRP for legitimate claims, an objective that is not enhanced by declining to make a finding of RDNH in an appropriate case, of which this is one.”

Totem Core Ltd v. Zhao Li, FA1609001693197 (Forum October 21, 2016) (idancer.com>)
Respondent acquired <idancer.com> through an auction operated by a drop catch service. A drop catch service is in the business of acquiring specific “dropped” domain names after registration expires and not renewed during the renewal grace period. Domains are typically dropped from the central registry 75 days after their expiration date. The fee-based service catches dropped domain names before they are re-released to the public. Since “drop catch services are only offered in highly desirable domain names, due to their traffic, popularity or interest..[they are] more valuable than a new domain name that has to be positioned in the market.” The Panel pointed out that this means that “Respondent knew or should have known of the existence of a previous owner of the disputed domain name when he applied for the drop catch service” and knowing this Respondent has the burden of explaining its right or legitimate interest in a domain name identical to the trademark.

JAGUAR LAND ROVER LIMITED v. parvez ali, FA1608001690453 (Forum October 1, 2016). The Panel found Respondent uses <rangeroverchauffeur.com> to advertise its business of providing Ranger Rover chauffeured cars for hire, thus lawful under the theory of nominative fair use. This is a particularly good illustration of the theory in a UDRP setting. A direct antecedent decision in federal court is Toyota Motor Sales USA Inc. v. Tabari, 610 F.3d 1171(9th Cir. 2010) (<buy-a-lexus.com> and <buyorleaselexus.com>) which has been favorably cited in a number of UDRP decisions. The Court held in that case that defendant “seek[s] to communicate the nature of the service or product offered at [respondent’s]  sites [and] to consumers, who would be deprived of an increasingly important means of receiving such information [if it were not allowed to do so].”

White Ribbon Australia v. Whois Privacy Protection Service, Inc / Erin Pizzey, D2016 -1234 (WIPO September 5, 2016) (<whiteribbon.org> and Fraternal Order of Moai, Inc v. Tim Glazneraim, FA160700 1686147 (Forum August 30, 2016) (<fraternal orderof moai.com> and <fraternalorderof moai.net>)
In rulings on “free speech” there is a split among panelists for what qualifies for protection, whether it extends to domain names as well as website content. The split is frequently based on engendered views of panelists and nationalities of the parties. Although the U.S. is not unique in protecting speech, it is unique in having it embedded as a Constitutional right. As a result, parties’ citizenships can make a difference to the outcome of a dispute. In the two cases noted here the domain names are identical to the trademarks. In White Ribbon the parties were Australian and U.S. citizens and the registration was found abusive. In contrast, the parties in Fraternal Order of Moai were both U.S. citizens and the Panel found registration and use of the domain name not abusive–the Panel also found Complainant lacked trademark rights which means that although it did not have to reach the second and third requirements it did so anyway.  View 1 panelists limit protection to content speech, and only to domain names that are adjectivally or adverbially qualified, such as <trademark+sucks>. View 2 panelists make no distinction; if website content qualifies for protection it makes no difference whether the domain name is identical or confusingly similar.

Hotwire, Inc. v. Ekramy Gaber El Said Ashry, D2016-1646 (WIPO September 20, 2016) (<hotwirebooking.com>, <hotwire.club>, <hotwireclub.com>, <hotwire-hotels.com>, <hotwire.one>, <hotwirereservation.com>, <hotwirereservations.com>, <hotwire.space>, <hotwire.top> and <hotwire.website>
Respondent displayed no understanding of trademark rights which is why he could candidly admit: “Hello, I didn’t use your trademark. Only I put for sale. It is parking domains. I didn’t use any thing bad to hotwire.com.” However, the use of the domain names and the extensions “all refer to the field of activity of the Complainant.”

Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, D2016-1349 (WIPO August 29, 2016) (<unmail.com>)
This case is noteworthy for two reasons.  First, for an overreaching trademark owner attempting to withdraw from the proceeding it commenced; and second, for the reverse domain name hijacking analysis.
For the first. Complainants don’t ordinarily request termination of proceedings under Rule 17(b) but for a successful request they need respondents’ consent. In this case, Respondent put Complainant on notice before it filed a complaint that Respondent had priority of right (savvy move!) and that it would demand reverse domain name hijacking if Complainant filed a complaint. Not unexpectedly, Respondent objected to Complainant’s request for voluntary termination (even with prejudice). The Panel agreed that the objections were “entirely reasonable”:

It is clear from the provisions of the Response, read with the Respondent’s emails of August 6 and 12, 2016 that the Respondent’s objections lie in the fact that the Respondent has been put to the time and expense of preparing a Response to a Complaint which the Respondent considers to be wholly lacking in merit, entitling the Respondent to a finding of RDNH. Thus, terminating the proceedings at this stage 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.

For reverse domain name hijacking: although the Panel does not specifically note the certification requirement it is implicit in the Panel’s finding:

it is not unreasonable for the Panel to expect and require that the Complainant and its counsel will be familiar with Policy precedent and will neither ignore nor gloss over matters on which well-established Policy precedent weighs directly against the Complainant’s contentions…. Here, the Complainant has entirely disregarded established Policy precedent regarding the need to prove registration in bad faith in that its submissions on that topic exclusively relate to the use of the disputed domain name. The Complainant also disregarded such precedent in its extensive citation of registered trademark applications, which it ought to have known would not provide the necessary foundation for UDRP-relevant rights.

Wagner v. Lindawagner.com, 16-CV-53 (E.D. VA, Alexandria Division, August 15, 2016).
For registrants who are not trademark owners inadvertently losing domain names can be an irretrievable loss, a point illustrated in a number of UDRP decisions and also with this case under the Anticybersquatting Consumer Protection Act.

CKL Holdings N.V. v. Paul Flammea, D2016-1340 (WIPO August 18, 2016) (<flammea.com>)
This dispute is one of several recently in which complainants appear to be registering trademarks for earlier acquired domain names apparently for the purpose of claiming cybersquatting. As with two recent Bigfoot disputes, panelists have deal with the claims by rejecting them out of hand.  In this case, the Panel noted that it “summarily [finds] that the disputed domain name was created a year before the Complainant’s trademark was applied for and nearly two years before trademark registration was granted. There is no evidence the Respondent had any privileged prior knowledge or reason to anticipate the trademark plans of the Complainant or of the trademark’s previous owner.”

TPI Holdings, Inc. v. Nikhil Jerath, Linxworks Solutions, LLC, D2016-1334 (WIPO August 16, 2016) (<heavyequipmenttrader.com>)
Consequences of default can be severe even though complainant has the burden of proof on each of the requirements. In this case, the result criticized by The Domains (Michael Berkens), the domain name was registered in 1998. The trademark application was filed in 1997 and registered in 1998, therefore it preceded the registration of the domain names under the relation-back doctrine. However, no proof was cited for the Panel’s finding that “the Respondent, when it registered the disputed domain name, was likely well aware of the Complainant, its HEAVY EQUIPMENT TRADER Mark and the Complainant’s exclusive rights in that mark, and the reputation of and the goodwill inherent in that mark.” “Likely well aware” is not proof, but circumstantial evidence is noted.

Kimmel Scrap Iron & Metal Co. v. Michael Bader, P-1 Enterprises, D2016-1148 (WIPO August 8, 2016) (<kimmelscrap.com>)
Important lesson for trademark owners who retain agents to purchase domain names and provide services for domain names who register them in their own rather than their principals’ names.  “The Panel is sympathetic to the Complainant’s plight; it is not the first company to realize that its agent has kept control of a domain name when their relationship ended. These problems can be avoided with appropriate contract provisions and supervision, and they may be amenable to legal remedies, but often not in a UDRP proceeding. The reason for that is simple: The Policy, paragraph 4(a)(iii) requires a showing of bad faith both in the registration and in the use of the Domain Name. It is typically difficult in such cases to establish bad faith at the time of registration, when the agent registered a domain name at the behest of the principal.’

Jeffrey Kaplan v. Societe des Produits Nestle S.A., FA1606001680748 (Forum July 28, 2016) (chipwich.com>)
Complainant specializes in registering abandoned trademarks; but Respondent has trademarks for CHIPWICH in other countries. “While it is true that Respondent has ceased marketing CHIPWICH products in the U.S., this does not negate its previous use of the Domain Name for that purpose. Based upon Respondent’s continuing and current registrations of the CHIPWICH mark in Europe and its acquisition of the Domain Name itself, all dating from at least three years before Complainant registered the CHIPWICH mark in the U.S., the Panel concludes that Respondent does have rights or legitimate interests in the Domain Name.”

Flowserve Corporation v. Domain Admin / Ashantiplc Limited, FA160500 1674825 (Forum July 12, 2016) (<sihi.com>)
Ordinarily, when complainants make the first move in the transactional dance to purchase (or inquire about) domain names and respondents are later challenged in a UDRP proceeding they often fall back on their business model of selling domain names, which gives them a certain degree of support for legitimate registrations. Mark Overbye v. Maurice Blank, Gekko.com B.V., D2016-0362 (WIPO April 15, 2016) (“Respondent’s offer to sell the disputed domain name to Complainant is not relevant as Respondent was first approached by Complainant to sell the disputed domain name.”) However, this fallback argument is not effective in inadvertent lapse disputes. In Flowserve, the Panel held it was not material; what is material is that “Respondent offered to sell the Disputed Domain Name for $100,000.00, which far exceeds the amount necessary to register the domain name,” citing earlier decisions, thereby violating paragraph 4(b)(i) of the Policy.

The Dow Chemical Company and E. I. du Pont de Nemours and Company v. Jung Chang Seap, D2016-0596 (WIPO July 13, 2016)
So low is the bar for confusing similarity that similarity without being confusing is rarely found. In this case the Panel granted standing for <dowduchemical.com>, <dowdu.net>, <dowdupontchemical.com>, <dudow chemical.com>, , and , but not for . Its reasoning: “DuPont’s rights to DUPONT cannot be reasonably expanded to cover uses of DU alone, a term that can also be viewed as a simple French article. Further, there is no evidence that would suggest that DUPONT is commonly abbreviated or referred to as DU alone.

8647844 Canada Inc. o/a eSteamCanada v. Registration Private, Domains By Proxy, LLC / Shadi Chaaraoui, SCHAAR, D2016-0777 (WIPO July 11, 2016)
In paper submissions credibility is as substantial factor in persuasion as appearing before a jury. How one presents oneself is neglected at peril of undermining one’s case. Parties are not served by withholding evidence or over or mis-stating their positions. The Panel in this dispute was “troubled by the absence of … documents” and “by certain statements made by the Complainant in light of the chronology of events.”

Tip Vy Spots LLC Vy v. Super Privacy Service c/o Dynadot, D2016-0872 (WIPO June 29, 2016) (<reveel.com>).
The decision to award reverse domain name hijacking sanction is discretionary with Panel, but the Majority in this case “believe” the sanction has to be requested even if there’s evidence of abusive use of the proceedings.
[Ftnote 2] The Concurring Panelist would find reverse domain-name hijacking. While we share his view that the record raises concerns about possible abuses, we do not read the Response as expressly requesting such a finding. Inasmuch as proceedings under the Policy are adversarial and party-driven, we believe it is not up to the panel to make findings not expressly requested by a party.

Etihad Airways v. Whoisguard Protected, Whoisguard, Inc / Hamza Ali, D2016-0615 (WIPO July 3, 2016) (<vetihadairways.com>).
Construing paragraph 4(c)(iii) to find noncommercial and fair use for a hobby website. The term “fair use” is typically associated with protected speech (criticism and commentary), fan websites, and nominative use of domain names (see earlier essay here) but it is not limited to those uses. It’s a flexible principle in both trademark and copyright law. Notice that the provision does not say “without intent for commercial gain”; it says “without intent for commercial gainto misleadingly divert” etc. In trademark and cybersquatting disputes it recognizes there may be a likelihood of confusion but accepts this possibility in favor of opening the market to lawful uses.

Oracle International Corporation v. Danny B / Admedia, FA1605001674542 (Forum June 27, 2016) (<oracl.com>)
Respondent claims to have registered the domain name 18 years ago—“unverifiable” according to Complainant “given that the domain name was registered to a privacy service at that time.” At times during the past 18 years the domain name was used to distribute malware and other times directed to adult web sites. He argues that he “was not in control of the <oracl.com> domain name during the time in which it was being used for malware. Respondent uses the domain as a shopping portal which sells products to end consumers, which is a legitimate non-competing business. The Panel, however, was not impressed:

While Respondent has claimed that he did not control the <oracl.com> domain name at the time that it was being used for malware, he remains responsible for the content associated with it…. Therefore, given the evidence that the <oracl.com> domain name has, for several years, been alternately used for malware, to redirect to pornographic material, and to advertise competing products, it is clear that it has been used in bad faith.

The principle here is that respondents are responsible for the contents and use of their domain names even when they deny culpability for use in bad faith; the “not me” defense is a sure loser.

NYLSTAR S.A. v. Domain Administrator, Meryl Blog, D2016-0561 (WIPO June 13, 2016) (<meryl.com>)
Respondent argued that the complaint is barred under the doctrine of laches. “In the Majority’s view it is not unreasonable that relevant delay can be taken into account. It seems extreme to say as some panels have said that it is irrelevant and cannot even be looked at.” The Dissent’s view (although concurring with the result) is that “it is more appropriate to address such issues squarely within the terms of 4(a)(ii) and 4(a)(iii) of the Policy.”
While Panels may not call their reasons for dismissing complaints laches the fact is that many complaints are dismissed for the reason noted in WIPO’s Overview, namely

that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith.

What is not accepted under the Policy, or for that matter under the ACPA, is to dismiss complaints under a defense that the claim is barred by the statute of limitations. However, on delay there is no reason to be rigid. It’s makes sense. A stale cybersquatting claim is dismissible because, as a result of the passage of time, complainant cannot marshal evidence that respondent registered the domain name in bad faith.
In the “meryl” dispute, Respondent “provided a sufficient explanation and justification for the use of the Domain Name” to satisfy paragraph 4(a)(ii) of the Policy.

Healthgrades Operating Company, Inc. v. Erick Hallick, FA1604001672836 (Forum June 9, 2016).
Generally, claims of abusive registration that cannot be disentangled from business disputes, that raise questions of express or implied contractual interpretation, are not ripe for the UDRP. If they are actionable at all they belong in court. To prevail on a claim in a UDRP proceeding there must be evidence in the record sufficient in litigation terms for summary judgment, and this calls for a disciplined understanding of the evidentiary requirements and a strategic sense of what belongs in the complaint.
In Healthgrades, Respondent (a member of Complainant’s Board of Directors as a representative of the former owner of the company) is accused of hacking and fraudulently taking control of the domain name. The claim is outside the scope of the UDRP because it raises fact issues that cannot be resolved without delving into the parties’ relationship and their contractual rights and obligations.

Petrofac Services Limited v. Petrofac Qatar WLL, D2016-0388 (WIPO May 16, 2016) (<petrofac-qatar.com>)
While similarity of name may be confusing in an abstract sense it cannot trump accrued rights to a trade name legitimately registered with a national registry even if the parties are engaged (although not as competitors) in servicing parties in the same industry. “If Respondent were some wholly illegitimate enterprise whose chief aim was to siphon business from Complainant through the deceptive appropriation of Complainant’s trademark, it is hard to imagine that Complainant would have approached Respondent in order to pitch to the latter its ‘metering’ services. The Panel has also taken into account that UDRP panels have recognized that a delay in bringing a complaint, as in this case between the registration of the Domain Name in 2005 and the filing of the Complaint in February 2016, while not fatal to the Complainant, may make it more difficult for the Complainant to establish its case on the merits, particularly with regard to the second and third elements of the Policy.”

Although Respondent prevailed on the second requirement (that it had a right or legitimate interest in the domain name) the Panel also commented on the evidentiary burden for the third requirement because Respondent offered to sell the domain name in an exchange initiated by Complainant:

[In order to prove bad faith under paragraph 4(b)(i) of the Policy] “the acquisition of the Domain Name would have to be ‘primarily for the purpose of selling’ the Domain Name to Complainant, and there is no evidence of this in the record. Moreover, the USD 3 million figure apparently included the transfer of Respondent’s trade name and associated goodwill, not merely the Domain Name.”

The Trustees of Columbia University in the City of New York v. George Billis, FA160400 1671587 (Forum May 25, 2016) (<Columbiauniversity.nyc>)
Respondent appeared and “mistakenly argues that Complainant does not have a trademark registration for the full domain name COLUMBIAUNIVERSITY.NYC” which is true if that means the string before the dot and the extension following it were to be considered as a whole, but that is not the case: “the UDRP merely requires that domain name be confusingly similar to Complainant’s mark,” which is the string of characters of the second level domain.

Kames Capital PLC v. Tom Harrison / Kames Capital Plc Limited, FA1604001671583 (Forum May 20, 2016) (<kclfx.com>)
Ordinarily, if there is no confusingly similarity on a side by side comparison (here, the first two (“kc”) and last two characters “fx” (foreign exchange) being acronyms of the complainant and its business), the complaint must be dismissed, except there may be circumstances warranting assessing the facts as a whole by looking ahead to the facts to be considered for the second and third requirements.

In Kames, the facts as a whole disclosed abusive conduct targeting consumers, phishing which warranted looking ahead to assess the issue of confusing similarity. The Panel stated that

[h]aving regard to prior UDRP decisions the Panel finds that it has some, although limited, discretion in determining whether or not to consider the content of the resolving webpage in making a Policy ¶ 4(a)(i) decision. Having regard to all the circumstances of the instant case, including the evidence of the fraudulent activities for which the domain name has been used, the Panel finds that it may have regard to the contents of the website and having done so finds that the disputed domain name is confusingly similar to Complainant’s trademark.

Heraeus Kulzer GmbH v. Whois Privacy Services Pty Ltd / Stanley Pace, D2016-0245 (WIPO May 2, 2016) (<kulzer.com>); and
Dreamlines GmbH v. Darshinee Naidu / World News Inc., D2016-0111 (WIPO March 8, 2016) (<dreamlines.com>).
Internet Archive contains a vast library of screenshots of websites that its Wayback Machine captures randomly over the course of domain names’ histories. While it doesn’t compile daily records it’s a unique and invaluable free service. How it’s used for supporting claims and defenses of cybersquatting is illustrated in a number of recent UDRP and U.S. federal decisions. Looking back over the database of UDRP decisions indicates that panelists’ positions on Wayback screenshots has been consistent in accepting them as direct evidence from the inception of the Policy as true representations of domain name contents at the time of their capture. This has not always been true in federal court in the early years of the Internet, but a recent district court case supports admission of Wayback screenshots string-citing a decisions in different circuits from 2013 onward that have reached similar conclusions.
Kulzer illustrates the use of the Wayback Machine to prove cybersquatting; and Dreamlines illustrates the use by Respondent to prove priority and right. In Marten Transport, Ltd v.Plattform Advertising, Inc. 14-2464 (D.C. District of Kansas April 29, 2016) the court took judicial notice that defendant’s websites “did contain references to Marten’s information on particular dates as set form in the screenshots from the Wayback Machine that have been made a part f the record of this case.”

Thule Sweden AB v. Cameron David Jackson, D2016-0414 (WIPO April 12, 2016).
After filing complaint Respondent registered another allegedly infringing domain name and Complainant requested that it be permitted to add it to the complaint. Respondent objected: ““I think it is very unfair that Thule group can or could possibly include another name in the same WIPO case. They should have to lodge another or separate WIPO case.”  The Panel agreed with Complainant for the following reasons:

[To] this Panel’s thinking the Respondent has it exactly backwards on equitable considerations or “fairness.” While the Respondent opposes such addition as “unfair,” he does not (as he did not in Cash Converters Pty Ltd. v. Cameron David Jackson, supra) explain why this might be so. According to the record, in particular the email correspondence between the Parties and the Respondent’s one-sentence reply to the Complainant’s request for such addition (quoted above) the only apparent reason the Respondent registered the third domain name was to increase his bargaining leverage against the Complainant, “a highly improper purpose.” by requiring the payment of a second fee to commence a second proceeding. In short, “The Respondent has not indicated that it would suffer any prejudice from consolidation of the complaints and no potential prejudice is apparent to the Panel.”

Mr. Olufela Olufemi Anikulapo Kuti v. Domain Administrator, NameFind LLC, D2016-0575 (WIPO April 28, 2016) (<femikuti.com>, Complainant’s stage name)
Common law trademark but what the Complainant couldn’t do for himself (proving he had a right to maintain the proceeding) Respondent (although defaulting) did for him: “very fortunately for the Complainant, the advertising links on the Respondent’s own website demonstrate that the Complainant has been performing and making records under his stage name since at least 1999 and that he has achieved a sufficient standard of fame for there to be a ‘Femi Kuti Concert’ at the Royal Albert Hall in London in about two months time from the date of this decision. One of the Respondent’s advertising links is offering tickets for the event.”

Kids & Us English, S.L. v. Target Success.Com, Incorporated, D2016-0356 (WIPO April 8, 2016) (<kidsandus.com>)
Respective registrations, trademark December 2010 and domain name May 1999. Nevertheless, despite Respondent having priority Complainant argued that Respondent was in violation of the Policy because it was using the domain name in bad faith.
However, bad faith use is insufficient to warrant forfeiture even though denying the complaint “can lead to outcomes which some WIPO panels have considered unjust [and for which reason] a number of panels have departed from the strict interpretation [of the UDRP] in certain categories of cases.” The Panel continued that “[i]n certain other cases, panels have considered the fact that, on a literal reading of paragraph 4(b) of the Policy, paragraph 4(b)(iv) does not require proof of registration in bad faith, because it deems the use of the domain name under that sub-paragraph to be ‘evidence of the registration and use of a domain name in bad faith. However, this is merely an evidentiary presumption which may be rebutted on a full consideration of all the circumstances of the case.” Generally, there are only a limited number of circumstance under which the evidentiary presumption can be rebutted.
The construction of the UDRP that presumes bad faith registration predicated on bad faith use has been overwhelmingly rejected.

Blue Ridge Fiberboard, Inc. v. Domain Asset Holdings, LLC, FA160200- 1661150 (Forum March 20, 2016) (<soundstop>).
There is an open question as to what extent high-volume registrants are chargeable with knowledge or awareness of an existing trademark, although there are some forceful decisions reasoning that high-volume registrants have enhanced investigative responsibilities akin to but avoiding the term “constructive notice.” Ordinarily, plausible denial involving domain names identical or confusingly similar to trademarks that are on the lower end of protectability could rebut bad faith.
At the time it acquired the domain name Respondent in Blue Ridge was purchasing names at the rate of 500 a day. Complainant has years of priority for the term. Is the phrase “sound stop” generic because each word is (as Respondent argues)? Or, is the phrase suggestive or arbitrary as it applies to the good Complainant offers? The Panel awarded <soundstop.com> to Complainant.
On April 11 the Respondent filed an ACPA complaint in the Western District of Washington at Seattle. What’s at stake here is whether the existence of a registration is constructive notice of a trademark that supports a claim of bad faith. This is an action we will be keeping an eye on.

Alpha Recyclying, Inc. v. Timothy Crosby, 14-cv-5015 (SDNY March 23, 2016)
ACPA action. Courts “have identified two ‘quintessential examples[s]’ of bad faith: where a defendant ‘purchases a domain name very similar to the trademark and then offers to sell the name to the trademark owners at an extortionate price,’ and where a defendant ‘intend[s] to profit by diverting customers from the website of the trademark owners to the defendant’s own website, where those consumers could purchase the defendant’s products or services instead of the trademark owner’s.'” Citing Giaconda Law Cgrp, PLLC v. Kenzie, 941 F.Supp.3d 424,434 (SDNY 2013), citing Utah Lighthouse Ministry v. Found for Apologetic Infor. & Research, 527 F.3d 1045, 1048 (10th Cir.2008).
It is not a defense that defendant “was motivated by malice, but not profit.” (To be developed into an analytical essay, forthcoming).

Jody Kriss and East River Partners, LLC v. Felix Sater / Larissa Yudina, FA1602001660728 (Forum March 22, 2016)
Choice of words and the manner of their ordering determine how statements are received. Respondent in Jody Kriss argued in defending his right and legitimate interest in the domain name that “[i]t is not a violation of the Policy to post disparaging content on the Internet. . . . Simply posting disparaging content, particularly directing attention to litigation pleadings and litigation summaries, has never been bad faith use under the Policy, and these disputes are outside the scope of the Policy.” The Respondent concludes that “gripe sites are legitimate use.”
The argument presupposes a commonality of intention between “commentary and criticism” and “disparagement and vindictiveness.” But these two communities of expression are separated by a chasm; one is legitimate; the other, out-of-bounds in so far as assessing bad faith registration and use. The latter is not just cybersquatting, it is registration of a domain name for abusive purposes. The Panel in this case explains why. (The “why” is developed more fully in Running the Gamut: Commentary, Criticism, Tarnishment, Disparagement, and Defamation).

Randall E. Kay v. Sebastian Kleveros / Comcept – Internet Ventures, FA1602001659119 (Forum March 18, 2016) (majority decision)
Cyberflight is essentially a dead issue since the July 1, 2015 amendment to the Rules, but transfers contemporaneous with the filing of a complaint can be contentious. To compare the distinction between transfer without intention to violate the Policy and cyberflight see the last cyberflight case before the amendment, David Briggs Enterprises, Inc. v. MARY DANNA, FA1503001611862 (Forum May 26, 2015) (<fattuesday.com>) (Respondent did not appear).

Kinon Surface Design, Inc. v. dongboyin / changzhouyikeruisiz huangs http:// www.adrforum.com/ domaindecisions/1659612.htm, FA1602001659612 (Forum March 11, 2016).
There is an evidentiary convention in assessing intention that allows for the drawing of negative inferences. For example, as against complainants when they allege but fail to marshal evidence of trademark rights; the natural inference is that they have no evidence to offer. In Kinon the inference against Respondent comes from facts visually apparent from the use of the domain name—that for example the domain name resolves to a website populated with links to businesses competitive with complainant. Phishing websites are also conclusive against respondents for abusive registration. Xilinx Inc. v. WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC., FA1602001659030 (Forum February 27, 2016); Insight Investment Management Limited v. Hossein Fazlollahi, DCO2016-0004 (WIPO March 3, 2016).

Cyberbit Ltd. v. Mr. Kieran Ambrose, Cyberbit A/S, D2016-0126 (WIPO February 26, 2016) (<cyberbit.com>).
There is a growing intolerance among Panels for overreaching complainants (particularly where they are represented by counsel) and an inclination to sanction them “[i]f abuse is apparent on the face of the case papers.” While the burden is ordinarily on respondent to prove abusive conduct the Panel in Cyberbit held (correctly, I think) that “such a finding is not dependent upon a request from the Respondent,” citing two decisions in support of this proposition. In Goway Travel Limited v. Tourism Australia, D2006-0344 (WIPO June 6, 2006) the Panel held that the “Rules specifically put the burden on the Panel to determine whether a complainant has tried to use the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” This holds true even “where no such finding has been sought by the respondent, but also in cases where there has been no response,” M. Corentin Benoit Thiercelin v. CyberDeal, Inc., D2010- 0941 (WIPO August 10, 2010).

Kosmos SAS v. Domain Hostmaster – Customer ID: 48322848242624 / Domain Admin, Ashantiplc Limited, D2015-2198 (February 19, 2016) (<kosmos.com>).
Good and bad examples of evidentiary narrative.
Complainant: 1) “In February and March 1998, [as] the shareholders of the Complainant were preparing to establish a company . . . [t]hey checked whether the name ‘Kosmos’ was available to be used as company name, trademark and domain name for their company project, and looked at various registers to make these searches. The name ‘Kosmos’ appeared to be free from third-party rights and available, so the shareholders decided to name their company Kosmos. On April 3, 1998, the Complainant was incorporated. The following day, someone registered the Disputed Domain Name. In the Complainant’s view, this was not a coincidence.” (Complainant a French company; Respondent a Hong Kong company. If not a coincidence the contention must be proved).
However, 2) it “confirmed” Respondent’s contention that “kosmos” is obviously a dictionary word used in many languages with the same or similar meaning “by acknowledg[ing] that ‘kosmos’ is a Greek word denoting the harmonious universe.”
Respondent “point[ed] out that ‘kosmos’ is . . . not exclusively associated with the Complainant in France or elsewhere, apart from in association with the particular services of the Complainant. The Complainant has provided no evidence of the reputation of the Complainant at the time the Disputed Domain Name was registered, and no explanation why the word ‘kosmos’ should be regarded as exclusively or strongly associated with the Complainant in France, given the large number of entities there that use the same word in association with various goods and services, including multimedia goods and services. The Respondent submits that there are other French companies and trademark registrations that include the word ‘kosmos’, which have an earlier incorporation date or priority date in comparison to the KOSMOS trademark.”

Labrador II, Inc. v. Viva La Pets Inc., D2016-0010 (WIPO February 19, 2016).
Respondent’s argument that its use of <onlinepetdepot.com> is legitimate is premised “on the notion that Complainant’s use of PET DEPOT [which predates registration of the domain name] has been for physical retail store services for pet supplies, while Respondent’s use of <onlinepetdepot.com> has been for online (Internet based) sales of pet supplies.” But as the Panel points out “[t]he distinction between physical and online retail sales of pet supplies is almost nonexistent as the services are essentially retail services for pet supplies through different means. Consequently, a consumer familiar with retail stores under the PET DEPOT mark is likely to assume that a domain name with the word ‘online’ and the identical PET DEPOT mark offering pet supplies is nothing more than an online version of the same PET DEPOT retail services for pet supplies.”
A giveaway that Respondent is using the domain name in bad faith is that it redirects it to its own company’s website; from which fact it is possible to infer that Respondent also registered the domain name in bad faith “for purposes of capitalizing on the association between the disputed domain name and Complainant’s PET DEPOT mark for retail services for the sale of pet supplies.”

Wild PCS, Inc. and Tom Yang v. Perfect Privacy, LLC / Choi Lam, D2016-0017 (WIPO February 17, 2016)
Complainants “produced very little in the way of evidence to support the existence of service mark rights,” but the Panel undertook a search in DomainsTools.com and “viewed screenshots of the website connected to the Domain Name dating from 2008 when the Domain Name was used by Wild PCS Inc.’s predecessor, Wild PCS Accessories, to the present day when the website relates to the business of Wild PCS Inc. as it has done since 2010.” This satisfied the Panel “that the name ‘Wild PCS’ has been in continuous use in trade for the last eight years by Wild PCS Inc. and its predecessor.” The question is whether the Panel is assisting a party who has not offered persuasive evidence of a trademark right? (To be discussed in a forthcoming essay).

Florim Ceramiche S.p.A. v. Domain Hostmaster, Customer ID: 24391572426632, Whois Privacy Services Pty LTD / Domain Administrato, Vertical Axis Inc., D2015-2085 (WIPO February 11, 2016)
In order to rebut the prima facie assumption of typosquatting an accused respondent would have to persuasively show a distinction between typosquatting and, as was the case in this dispute, a purposefulness in deliberately registering a “variant” of a dictionary word. Respondent holds a domain name which it claims is a purposeful variant of “credit.” If a letter is missing from or added to a term that appears to be taking advantage of a trademark and there is no explanation the assumption favors typosquatting. The burden would then falls on respondent to prove it was not typosquatting. Ordinarily, a typosquatting domain name starts with fractional changes to the trademark— and SHERATON (an “a” for an “o”)–but in this case Complainant charges that the omission of “r” creates a word that doesn’t exist in English but infringes its trademark.

LeBoeuf Corporation v. DOMAIN ADMIN, FA1601001655243 (Forum February 11, 2016) (represented by counsel).
While there may be some excuse for parties appearing without counsel who have no experience with the UDRP and fail to understand their evidentiary burden there is none for attorneys either ignorant of domain name law as it has been practiced for the past 16 years or subvert the process by falsifying the facts. See also China Ready and Accredited Pty Ltd v. Warren Weitzman, Caramba LLC, D2015-2164 (WIPO February 11, 2016) (“[T]the Panel considers that the Complainant could never have prevailed and that it is unlikely that this obvious deficiency in its case could have been overlooked by the Complainant, who is represented by counsel.”)

Raincat Online Services v. fluder, CAC 101125 (ADReu February 1, 2016) ((Transferred. AD6MEDIA and ).
Ordinarily, in comparing domain names for identity or confusing similarity with trademarks the procedure  is make the assessment on the basis of the second level domain. The top-level domain is not considered because it is merely a functional element. The Respondent in Raincat Online argued that the domain name was not identical or confusingly similar because “(t)he ICANN rules only apply to what’s left of the dot”. This is not the law.
The Panel explained that “the advent of the new gTLDs has meant that a new issue has arisen, namely whether the new gTLD should be taken into account. There is nothing in the rules to say that it must never be taken into account where the gTLD underlines and emphasizes the confusing similarity between the domain name and the trademark. The Panel believes that in some cases, such as the present, it should be considered, especially where the presence of the new gTLD goes to make up a complete expression that is identical with a trademark.”
The Panel’s reasoning follows the consensus as set forth in Paragraph 1.2 of the WIPO Overview: “[t]he applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark” [emphasis added].

Diamond Trust Consultancy (UK) Limited v. Kim, James, D2015-2051 (WIPO January 27, 2016) (Acquired through auction)
Registrations of lapsed or abandoned domain names returned to the general pool are not vulnerable to forfeiture simply because by happenstance the names correspond to trademarks, particularly where there is no proof they were registered to compete with mark owners or disrupt their businesses “whether the mark is a common law or registered mark.” The Panel’s concluding statement, “whether the mark is ‘strong’ or ‘weak,’” is questionable as to “strong” since that factor demands explanation.

Titan Enterprises (Qid) Ply Ltd v. Dale Cross / Contact Privacy Inc., D2015-2062 (WIPO January 13, 2016) (<bewaretitangarages.com>).
Concededly, a criticism website hence a degree of certainty Complainant could not succeed but no reverse domain name hijacking. There are two reasons for this conclusion: first “there are significant factual disputes between the parties relating to the conduct of both the Complainant and the Respondent in the proceeding. [And] [a]s noted in the WIPO Overview 2.0, WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances where there is a question of clean hands or factual accuracy on the part of both parties”; and second “submissions about misstatements on the site” are outside the scope of the Policy. . . . Such material may be relevant to a court proceeding however the Policy does not require operators of non-commercial criticism websites to justify the correctness of every statement made on their websites.” There is clearly a fine line between granting and not granting sanctions but since the burden rests on respondent to prove  complainant maintained the proceeding with abusive intentions its lack of success is not sufficient to support RDNH.

Bridgewater Associates, LP v. Private Registration, FA1511001650226 (Forum January 18, 2016) (Bridgewater 2) (BWATER and <bwater.site>) and Bridgewater Associates, LP v. Private Registration, FA1509001637996 (Forum October 19, 2015) (Bridgewater 1) (BRIDGEWATER and <bwater.site>).
Acceptance of a refiled complaint on the grounds of newly discovered material and credible evidence. In the interim between the award in Bridgewater 1 and the commencement of Bridgewater 2 Complainant received a Benelux certificate of registration for BWATER. It may be recalled that a pending application for trademark does not satisfy the first requirement unless there is sufficient evidence of secondary meaning which was the ground for denial cited by the Panel in Bridgewater 1.
Some panelists take the strict position that failure to prove standing for common law rights even if the evidence could be seen as conclusive on the second and third requirements of abusive registration the complaint must be dismissed. The Panel in Bridgewater 2 found that Complainant proved secondary meaning antedating, now reinforced by the newly registered trademark and granted standing; but the  Panel also recognized the abusive use of the domain name to phish Complainant’s customers.

Adam Milstein v. Benjamin Doherty, FA1511001647496 (Forum January 11, 2016).
The law as it applies to renewal of registration as a factor in determining abusive registration has reached maturity with this and several other cases in 2015. As these cases come down it is becoming increasing clear that the Panel in Eastman Sporto (2009) was right and the Panel in PAA (2004) was wrong. There are in fact circumstances that truly do compel finding renewal as a triggering factor particularly where the domain name was acquired for use in bad faith but also applied where that was not the original motivation. This reasoning does not contradict the principal first established that renewal is a continuation of ownership, but it recognizes a distinction that the right to continue holding a domain name can in some circumstances be contingent.

Citigroup Inc. v. dong huang / freedom, FA1512001652703 (Forum January 7, 2016) (<citigroup.club>).
For new TLDs a TMCH Trademark Claims Notice has been found sufficient to support respondent’s prior knowledge of third-party rights.

Verizon Trademark Services LLC v. Jimmy Seavey / Robert Tanguay, D2015-1832 (WIPO January 3, 2016).
Paragraph 1 of the Rules defines a “Respondent” as “the holder of a domain name registration against which a complaint is initiated.” However, as the Panel points out in Verizon the term “holder” is not limed to the domain name owner: “[i]ndeed, domain names are frequently held by one entity on behalf of another, such as where privacy services are used, and in such cases panels have typically recognized responses filed by the actual owners.” The critical notion here is that allowing a party to defend its right is no more than a first step; not dissimilar to the question of standing for a complainant. To prevail, it all comes down to proof! The evidence in Verizon which included the content of the website supported Complainant.

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