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. Ongoing Supplement to the book here. 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 and 2016 can be found here.
High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA1706001737678 (Forum August 9, 2017) (<voiceofhope.com>)
Trademark applicant’s declaration of first use in commerce is not conclusive of its truth; priority must be established concretely, not simply alleged. “The problem Complainant has in establishing common law trademark rights . . . is that the expression Voice of Hope is very generic and covers a multitude of possible meanings. That being so, Complainant has to show a secondary meaning of the expression as well as its primary meaning and a secondary meaning that links the expression with Complainant,” which is has failed to do.
Distinct Holdings, Inc., d/b/a Diversified v. Robert Schweitzer, FA1706001737080 (Forum July 27, 2017) (<onediversified.com>, <onediversified.info>, <onediversified.net> and <onediversified.org>)
The “objective bystander” test for determining confusing similarity. Not just “similar” but “confusingly so.” Respondent was formerly employed by Complainant. On the balance of probabilities he was more likely than not aware that Complainant was in the process of rebranding its diversified mark by adding “one.”
Commune de Versailles Collectivité Territoriale v. Kimberly Kubalek, Kubalek, LLC, D2017-0985 (WIPO July 24, 2017) (<visitversailles.com>).
In determining whether respondents have violated the Policy, Panels typically take into account respondents’ business histories by drawing distinctions among different business models. Registrants specializing in particular kinds of domain names, generic words, idioms, surnames, and three or four letter strings for example. In this case, Respondent has websites devoted to tourism. The Respondent in FPT Industrie S.p.a. and REM Industrie S.r.l. v. HugeDomains.Com, D2017-0842 (WIPO July 7, 2017) (<fastmill.com>) specialized in generic words and held many domain names that included the word “fast”. Respondents who include their histories are generally persuasive that their registrations are in good faith, although there are exceptions, for example Constellation Brands, Inc. and its wholly owned subsidiary Ruffino SRL v. Stanley Pace, FA1706001735061 (Forum July 20, 2017) (RUFFINO and in which Respondent has accumulated over 10,000 surnames, but Complainant pointed out in its additional statement that “U.S. Census Bureau (2010 Census) shows only 795 individuals with the surname “Rufino” in the U.S. making its surname usage de minimis.”) See below (Panel stepping into error), Respondent has commenced an ACPA action for a declaratory judgment that its registration was not unlawful.
Instances in which Panels have or may have stepped into error:
Lotto Sport Italia S.p.A. v. David Dent, D2016-2532 (WIPO February 13, 2017) (<lottoworks.com>, <lottostore.com>. Complaint granted; Respondent commences ACPA action for declaratory judgment that registrations were lawful. Pending action).
Constellation Brands, Inc. and its wholly owned subsidiary Ruffino SRL v. Stanley Pace, FA1706001735061 (Forum July 20, 2017) (<rufino.com>. Complaint granted; Respondent commences ACPA action for declaratory judgment that registrations were lawful. Pending action).
Bulbs 4 East Side Inc., d/b/a Just Bulbs v. Fundacion Private Whois/ Gregory Ricks, D2013-1779 (WIPO January 13, 2014) (Complaint denied, but successful in ACPA action, Bulbs 4 E. Side, Inc. v. Ricks, (S.D. Tex., Houston Div. July 18, 2017 together with an award of damages for $50,000 and attorney’s fees).
Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC., D2015-1593 (WIPO November 30, 2015) (<camilla.com>. Complaint granted; in a subsequent ACPA action Camilla Australia (now defendant) stipulated to vacate the UDRP award in its entirety. Mrs. Jello, LLC v. Camilla Australia Pty Ltd. 15-cv-08753 (D. NJ 8/1/2016).
Austin Pain Association v. Domain Admin / this Domain Is for Sale / HugeDomains.com, FA1312001536356 (Forum March 18, 2014) (<austinpain.com>. Complaint granted; Respondent commences ACPA action for declaratory judgment registrations were lawful; parties enter into stipulation July 21, 2014 setting aside the Forum award, plus $25,000).
Corporacion Empresarial Altra S.L. v. Development Services, Telepathy, Inc., D2017-0178 (WIPO May 15, 2017) (<airzone.com>.
Prevailing party, no RDNH but Respondent commences ACPA action for reverse domain name hijacking damages. Pending action.
Airbnb, Inc. v. Norman King / Target Marketing Group, FA1707001738345 (Forum July 27, 2017) (<air-bnb.org>.
Further to the laches issue discussed in a recent essay in circleid.com the passage of time is not a bar in filing a cybersquatting complaint under the UDRP. The Panel noted that “Respondent argues that, since Complainant could have registered the disputed domain name ten years ago, but did not do so, Complainant has implicitly admitted that ‘this domain has nothing to do with your [Complainant’s] Business or your Brand.’” That is not the law. The Panel held that the laches “defense is not admissible under the Policy. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, states under 4.17: ‘Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.’ The same holds for the situation where a complainant has, for many years, chosen not to register a domain name related to its mark: complainants have no obligation to register all possible domain names related to their marks, and they can initiate proceedings under the Policy at any time for any domain names that are confusingly similar to their marks.”
Steelcase Inc. v. Cimpress Schweiz GmbH, FA1706001737556 (Forum July 25, 2017) (<steelcasee.com>.
Actual knowledge of complainant and its mark cannot plausibly be denied where the domain name is being used for spamming or phishing. Bad faith is presumed rather than inferred. “In light of the mark’s notoriety and Respondent’s overt use of the domain name to impersonate an employee and officer of Complainant, there can be no doubt that Respondent was well aware of Complainant’s STEELCASE mark when it registered the confusingly similar <steelcasee.com> domain name.”)
Warner Bros. Entertainment Inc. v. David Haddad / Warner Bros, FA1706001736053 (Forum July 17, 2017) (<warnerbroscareers.com.co>).
Where the Registration Agreement is in both languages (of Complainant and Respondent) Complainant has a choice of which will be the official language of the proceedings.
David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA1706001734414 (Forum July 4, 2017) (21 years) and Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, LLC / Ravindra Patel, gbe, D2017-0807 (WIPO July 6, 2017) (<bankwest.com>) (20 years) .
There is no time bar under the UDRP and no laches as illustrated in these two cases. While complainants still have the overall burden of proving bad faith (easier with celebrity names as explained below) the principal drama for businesses revolves around the use of the domain name, namely whether respondent can prove a paragraph 4(c)(i) defense—that is, “before any notice” respondent has used the domain name “in connection with a bona fide offering of goods or services.” Such use would satisfy the “detrimental reliance” element of laches without expressly invoking that theory.
Celebrity names are strong marks (even though unregistered) and particularly resistent to any defense. Celebrities known not just for the goods or services associated with their names but for their personalities. This is made clear by the Panel in this case in pointing out that Respondent cannot claim any defense of detrimental reliance: “[T]he Panel finds that the record does not support a finding that registration alone of the disputed domain name for 21 years caused any Internet users to be confused as to the source or origin of any goods or services and there were certainly no lost profits or loss of business or goodwill.”
Owners of weak marks (BANK WEST may be distinctive but it comprises two dictionary words) have a heavier burden but in Commonwealth Bank of Australia Complainant was aided by Respondent holding the domain name passively and by its silence in explaining why it registered <bankwest.com>:
[T]he entire Response provides absolutely no information whatsoever about the Respondent other than to confirm he is resident in New Jersey. The Panel is not told whether he is in business and if so what that business is, whether or not he deals in domain names, whether this is the only domain name he owns, why and how he decided to register it, or indeed any other of the no doubt numerous factors which would bear on whether or not the Respondent acted in bad faith. It would have been an entirely straightforward matter for the Respondent to say (hypothetically), with appropriate evidence ‘I had never heard of the Complainant when I registered the Disputed Domain Name’ and ‘this was part of my strategy of registering names involving the word “bank” combined with a geographic identifier and I also registered (say) banknorth.com, banksouth.com, and bankeast.com.’
Respondent, then, was ultimately undone by its silence: “Given that the Respondent is represented the Panel is left concluding that this silence on such critical issues is not simply inadvertent but represents a deliberate decision.”
Everphone GmbH v. Privacydotlink Customer 2772294 / Kwangpyo Kim, Mediablue Inc, D2017-0698 (WIPO July 3, 2017) (<everphone.com>) and Baby Delice v. Registration Private, Domains by Proxy, Inc / Reuel Ghosh, Erevmax, Inc.,. D2017-0755 (WIPO June 3, 2017) (<togolo.com>)
One of the common themes in these two cases (they also have unshared issues noted separately) is that the parties reside on different continents. How would knowledge of the mark have reached respondents? Neither Complainants even begin to answer the question; or even thought there was any question which demanded they answer.
In Everphone the Panel notes “The Complainant, which only started trading in 2016, has provided virtually no evidence in support of its claim to have become widely known in Germany in a short period, still less internationally.” Then concludes: “The Respondent, located in the Republic of Korea, cannot be expected to have become aware of Complainant’s German trade mark application, simply on the basis of its publication on the website of the German Patent and Trade Mark Office.”
The Panel in Baby Delice asked the “how” question: “how might the Complainant’s trademark, registered in France, have come to the knowledge of the Respondent, an entity in the USA, on or prior to the date of creation of the disputed domain name? Does the reach of the Complainant’s trademark or the Complainant’s commercial activities extend to the USA, whether by trading, global or substantial Internet presence, business location or other reason? How and where, in general, has the Complainant’s trademark been used?”
Tupelo Honey Hospitality Corporation v. Reggie King, FA1705001732247 (Forum July 3, 2017) (<tupelohoney.com>)
Complainant loses because its mark postdates registration of the domain name (and is therefore guilty of RDNH); but more importantly, because the domain name is generic its registration and use can be lawful regardless whether the term is a registered mark (which in this case it is): “Tupelo Honey” is simply a variety of honey made across the world—with ‘Tupelo’ serving as a geographic identifier of Tupelo, Mississippi, and has become ubiquitous in the market as to the variety of honey. ‘Tupelo Honey’ is therefore generic and Complainant cannot assert rights therein.” The Panel agrees: “Respondent is free to register a domain name consisting of common terms and the domain name in dispute contains such common terms.”
O2 Worldwide Limited v. Dan Putnam / Rodolfo a. Barcenas / Rhonda Peterson / Bob Terry / Whois Privacy Service / Eric Chan / Cecil Morgan / Whois Privacy Service / Christopher Redding / Domain ID Shield Service / Mary Martin / Ella Gee / John White, Rebecca Graphics / Thomas Heard / Dotty Krause / Jess Brown / Whoisguard Protected Whoisguard, Inc. / Andrew Rollinson, LetUsClose, D2017-0658 (WIPO June 29, 2017).
Consolidation is appropriate for 1) procedural efficiency and 2) fairness to all parties. By procedural efficiency is meant unambiguous proof of connectedness. It is inefficient to waste providers’ and panels’ time in determining merits where there is apparent diversity of interest among respondents. Consolidating is not appropriate where it creates “a danger that separate Respondents in potentially different positions would be ‘tarred with the same brush’. That would not be fair and equitable.”
Qualcomm Incorporated v. Vladimir Portnov, FA1706001736578 (Forum June 28, 2017) (<qualcomm.support)
Delusional belief that because a domain name is available, the purchase must be legal. “[I] legally purchased the disputed domain name . . . from . . . <godaddy.com>.” Respondent was not represented.
Last month there was this: ““Please do not continue to harass our company or our employees. We consider this email a harassing email. we have notified our legal repetition (sic) and they advised us to sue for harassment should you or anyone continue to send threatening emails and letters to our company.” Coachella Music Festival, LLC v. Beaudoin, Denis / Denis Beaudoin, FA1703001724063 (Forum May 9, 2017).
In Red Bull GmbH v. Carl Gamel, D2008-0253 (WIPO April 14, 2008) () Respondent stated: “Please sue me!” and later “Try this I own ‘www.redbullsucks.com’ ‘http://www.redbullsucks.com’ and I will continue to promote my business! A.C.T. is the best an thats that! SEE YA!!! “.
Color Image Apparel, Inc. v. Whois Privacy Services by DOMAINCA / unitedeurope consulting, D2017-0650 (WIPO June 19, 2017) (<alo.com>).
Complainant (represented by counsel) mistakenly relies on the Octogen line of cases. It asserts that the Respondent has no rights or legitimate interests in the disputed domain name since it is not “genuinely us[ing] or at least demonstrably intend[ing] for such use in connection with the relied-upon meaning.” The Panel citing paragraph 4.16 of the WIPO Overview 3.0 that complainants represented by counsel “should be held to a higher standard” found Complainant liable for reverse domain name hijacking.
Wasatch Shutter Design v. Duane Howell / The Blindman, FA1705001731056 (Forum June 23, 2017) (<wasatchshutters.com>, <wasatchshuttersdesign.com>)
While complainants with registered marks have standing based solely on their registrations, those claiming unregistered marks have the higher burden of proving secondary meaning. For marks “comprised of generic, descriptive, or geographic words such as the words WASATCH, SHUTTERS(S) and DESIGN in the case at hand, there is an even greater onus on Complainant to present compelling evidence of secondary meaning or distinctiveness.” There must be evidence “showing a complainant’s efforts to promote and affiliate itself with a mark”, that the mark has “become a distinctive identifier associated with Complainant or its goods or services.” Alleging distinctiveness does not suffice.
Knud Jepsen A/S v. Rick Schwartz, Virtual Dates Inc., D2017-0679 (WIPO June 20, 2017) (<queen.com>)
On the issue of tarnishment, operating a pornographic website is not a per se violation of a complainant’s trademark rights. The three-member Panel cryptically stated the difference: “Where a domain name registrant tries to obtain financial gain by registering and using a non-generic domain name in which it has no rights or legitimate interests, the offering of adult content may be evidence of bad faith use, However, as the Disputed Domain Name [in this case, ‘queen’] has a dictionary meaning, those cases do not apply.”
Platterz Inc. v. Andrew Melcher, FA170500 1729887 (Forum June 19, 2017) (<platterz.com>)
The interesting construction here concerns paragraph 4(a)(ii) of the Policy, namely what constitutes a prima facia case. The Panel explained in one paragraph, but I’m breaking it into three parts:
1, The fact that Complainant’s mark may consist of a descriptive term is certainly relevant for determining other elements of Complainant’s case (namely, whether Complainant has established trademark rights), but it is not relevant for the purposes of Policy ¶ 4(a)(ii);
2. Similarly, the timing of Respondent’s registration of the domain name is relevant for determining other elements of Complainant’s case (namely, whether Respondent registered the domain name in bad faith), but again, that is not relevant to the question of whether Respondent has rights or legitimate interests in the domain name. And
3. In order to prevail on this element, Respondent must affirmatively identify some legitimate interest he has in the Domain Name.
Crestron Electronics, Inc. v. ATTN: crestronasia.com, Domain Discreet Privacy Service / Transtrade Hong Kong Co. Limited (formerly known as Crestron Asia Limited), D2017-0777 (WIPO June 9, 2017) (<crestonasia.com>)
Dispute grows out of a terminated distribution relationship. When the distribution agreement is silent on transferring domain names after terminating relationship there can be no bad faith registration. The question is whether the registrations of the domain names were authorized. According to Respondent, nothing in the distribution agreement specified that upon termination “the Respondent would be required to transfer the domain name, which it had been using.” According to Complainant, it should go without saying that refusing to relinquish the domain names is bad faith. However, “[t]here is no supported evidence of any kind from either Party as to the state of affairs at [the time the domain names were registered] insofar as requests for permission and grants of permission are concerned. Thus the Panel is left to look at the situation in the round and assess the probabilities.” And, having looked at the “situation in the round” the Panel dismissed the complaint and sanctioned Complainant for bringing a “case that should never have been launched.”
Tupras Turkiye Petrol Rafinerileri A.S. v. See PrivacyGuardian.org / Wizarc Computing, D2017- 0818 (WIPO June 6, 2017) (<hexmon.com>)
Panels have expressed different views about whether respondents must request RDNH or was an obligation if they did not (or defaulted). In the recently released WIPO Overview 3.0 it is now acknowledged that “following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH.” This now appears to be the standard. Overview 3.0 is cited by Panel in Tupras Turkiye Petrol Rafinerileri: “Although the Respondent does not make any allegation of Reverse Domain Name Hijacking (RDNH) against the Complainant, the Response by the Respondent acting in person makes it clear that he regards the Complaint as totally unjustified and oppressive. The Rules do not require the Respondent to have made an express allegation of RDNH. In the circumstances, the Panel considers it appropriate to consider the issue of RDNH of its own volition.”
Bloomberg Finance L.P. v. zhang guo jie, FA1704001727926 (Forum June 8, 2017) (<Bloomberg.site>.
Another case that should be read carefully by mark owners. If there’s no evidence, there’s no case. “[E]even taking account of the public use which has been made of the trademark, it is a common family name which might remain open to use in good faith by any number of traders. A very brief Internet search made by the Panel indicates that to be so in fact. This is not a case of an invented word with no connotation other than the goods or services of a single trader.”)
Complainant had previously lost in a URS proceeding in which the Panel wrote that “[t]he Complaint is …devoid of any allegations or proof of facts tending to show, even prima facie, … that the domain name was… being used by Respondent in bad faith.” The UDRP Panel noted that Complaint “took nothing from the experience and again did not present argument concerning bad faith use in these proceedings. The Panel finds that Complainant has not met even the lower burden of proof of bad faith use under the UDRP.”
Fabricators & Manufacturers Association, International v. Domain Administrator / Namefind, LLC, FA1704001728625 (Forum June 1, 2017) (<fabricator.com>)
In this dispute, Complainant owns THE FABRICATOR and claims <fabricator.com> is confusingly similar in that “fabricator” is the dominant element of the mark. Respondent argued “fabricator” is no more dominant than the article; either element alone is generic. For this reason the complaint must be dismissed because Complainant fails the standing requirement: domain names can be similar without being confusingly similar. The Panel agreed: “Complainant does not have any right to monopolize the dictionary word ‘fabricator’ alone…. [N]either the article ‘the’ nor the noun ‘fabricator’ is distinctive in its own right…. Complainant’s mark is distinctive only in its indivisible wholeness” (emphasis added).
Entertainment Technology Investments, Inc. d/b/a Gloo, LLC v. Contact Privacy Inc. Customer 011945202 / K Blacklock, D2017-0606 (WIPO May 31, 2017) (<gloo.com>)
Panelists have written priority out as a factor in determining the issue of standing (paragraph 4(a)(i) of the Policy); they have moved it to the third requirement as an absolute barrier to proving cybersquatting (paragraph 4(a)(iii)). Even though the domain name was registered fourteen years before the first use of the GLOO mark, complainant has standing. But it fails for lack of priority. In other words, it’s a bad faith issue, citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”): “Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?” Answer: “Subject to scenarios described in 3.8.2 below [which do not apply in the present proceeding], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
Richard Izzo Toughman Enterprises v. TJ Tryon, FA1704001728347 (Forum May 30, 2017) (<toughmaninindiana.com>)
Complainants (particularly those appearing pro se) beware! A core principle is that “even when a respondent does not submit a response in a proceeding, the complainant still must make a prima facie case.” The Panel continues: “A complainant fails to make a prima facie case when it fails to provide any evidence whatsoever of a respondent’s use of a disputed domain name.”
CORPORACION EMPRESARIAL ALTRA S.L. v. Development Services, Telepathy, Inc., D2017-0178 (WIPO May 15, 2017) (<airzone.com>)
Complainants beware! When respondent initiates the offer to sell it falls foul of paragraph 4(b)(i) of the Policy. When complainant initiates the offer (according to the three-member Panel) “[it] expressly disclaimed any legal rights over the disputed domain name.”
SOG Specialty Knives and Tools, LLC v. Val Katayev / Poise Media Inc., FA170400 1726464 (Forum May 23, 2017) (<sog.com>)
Three-member Panel affirming two core principles of domain name jurisprudence under the UDRP: 1) “At the time of registration, Respondent held the reasonable view that it was entitled to register the Domain Name because no one party had a monopoly on such a commonly used acronym [or in this case, dictionary word]”; 2) “The Policy requires Complainant to prove bad faith registration and use. Especially given that the Domain Name is composed solely of a common three-letter combination, absent direct proof that the generic Domain Name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use.”
Stacy Hinojosa v. Tulip Trading Company, FA1704001725398 (Forum May 24, 2017) (<stacyplays.com>)
“[A] date of first use alone is not enough to establish common law rights in a mark. In order to have common law rights, a complainant must establish secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder.”
FastTrak v. Virtual Point, D2017-0652 (WIPO May 16,2017) (<fasttrak.com>)
Complainant given “benefit of the doubt” on the issue of reverse domain name hijacking since it was “not represented by counsel.” The Panel concluded it could not “go so far as to determine the action was taken in bad faith [rather its complaint] was misdirected and generally wrongly pursued” and that Complainant “lack[ed] [a] robust understanding” of the UDRP.
Jason Johnson v. Ramesh Mahadevan, FA1704001727694 (Forum May 17, 2017) (<curvage.com>)
Complainant asserted it had common law rights in its CURVAGE mark—“[it claimed it had] consistently used the mark since 2007”—but there was contradictory evidence in the record. Complainant could not have consistently used the mark because the prior owner denied it:
“Its (sic) pretty obvious to everyone that Ive (sic) basically ignored this site for the last year. Truth be told, I lost my interest long before then. I feel Curvage will continue to languish from my lack of attention paid to it…. Ive (sic) got basically two choices: 1. Treat Curvage like a business. This would mean ads and doing things to attract more traffic. 2. Have someone else take it over. Im (sic) leaning strongly towards the latter. Is there anyone interested?”
Complainants’ problem in this and like cases (setting aside its decision not to retain counsel) is failure to marshal evidence of its right. Secondary meaning cannot be established without proving 1) continuous and uninterrupted use in commerce; and 2) reputation predating the registration of the domain name.
ATC Group Services LLC v. BatchMaster Software, Inc., FA1703001722646 (Forum May 15, 2017)(<atc.com>)
Complainant does not have to have a registered mark to have standing, but if it claims to have a common law mark it only has standing if it proves secondary meaning earlier than the registration of the domain name. Failure of proof warrants dismissal of the complaint.
In this dispute, “Complainant claims common law rights in the ATC mark based on its claimed extensive use and secondary meaning acquired in the mark…. Respondent argues Complainant has failed to show common law rights in the ATC mark…. Complainant, itself, has submitted proof of use of the letters ATC as part of various corporate names, but no proof of use of ATC as a trademark brand, let alone sufficient proof of secondary meaning. No proof has been submitted establishing how ATC has been used as a trademark by Complainant, the advertising revenue incurred to promote the ATC brand, or the extent to which the ATC brand is associated with Complainant by the relevant public community.… The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), as such, the Panel declines to analyze the other two elements of the Policy.”
RueDuCommerce v. Teo Group, CAC 101488 (ADR.eu May 11, 2017) (<rudecommerce.com>)
This case illustrates a rare occurrence in which a complainant in a different language community than respondent is claiming cybersquatting for a domain name that in English is a combination of two English dictionary words, namely “rude” and “commerce.” The Panel held that “[w]hile there is a small degree of visual and phonetic similarity, this is not overriding and the strong conceptual difference and identifiable meaning of the words ‘rude’ and ‘commerce’ means that in the opinion of the Panel the disputed domain name is not identical or confusingly similar to the Complainant’s RUE DU COMMERCE mark.”
Same Complainant lost a prior UDRP against a different Respondent:” Rueducommerce v. Chain Avocats, CAC 100866 (ADR.eu December 31, 2014) (“It must not be forgotten that the Complainant focuses on the French market and has no presence or trade marks in the USA where the Respondent is based. Thus the Panel is convinced that the Respondent is being honest in stating that it had never heard of the Complainant when it registered the disputed Domain Name.”)
Franke Technology and Trademark Ltd v. hakan gUlsoy, CAC 101464 (ADR.eu May 11, 2017) (<franke-servisi.com>.
In dismissing the complaint, the Panel refers to the seminal case on unauthorized use of trademark, Oki Data Americas, Inc. v. ASD, Inc, D2001-0903 (WIPO November 6, 2001) (<okidataparts.com>) and also a trademark case from the European Court of Justice that parallels later cases in the U.S. on nominative fair use, Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v. Ronald Karel Deenik, C-63/97 (European Court of Justice, 3 December 1998). The Panel summarized the law in this way “no trade mark owner (in the EU) . . . has the right to monopolise the servicing or repair or resale (of previously sold) of its products . . . [where another is using the mark to] promote valid and honest competition.” The Court in Bayerische Motorenwerke held that “Articles 5 to 7 of the [Trademark] directive do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller’s business is affiliated to the trade mark proprietor’s distribution network or that there is a special relationship between the two undertakings.”
Future Festivals, LLC v. Denis Beaudoin, FA1703001724061 (Forum May 9, 2017)
Not all is happiness when challenged for cybersquatting: “Please do not continue to harass our company or our employees. We consider this email a harassing email. we have notified our legal repetition and they advised us to sue for harassment should you or anyone continue to send threatening emails and letters to our company…. All of our websites clearly state that we are in no way affiliated with Coachella Music Festival, Desert Trip Music Festival, or Stagecoach Music Festival…. We purchased all of our domain names with the proper rights and we use are websites responsibly…. We obtained these websites legally and we will continue to run all these sites legally…. We respectfully request that you drop all claims and harassment against us…. Any further harassment issues will be forwarded to our legal team.
City Wide Franchise Company, Inc. v. Cheri Quillen / City Wide Janitorial Services, LLC,
FA1703001723195 (Forum April 30, 2017)(<citywideok.com>)
This case is a useful reminder to complainants of their burden of proof.
First: the Complainant is not the registered trademark owner and failed to explain its relationship with the registrant of CITYWIDE. It therefore fails in proving infringement of a right..
Second: “Complainant has never had a trademark for CITY WIDE, as the trademark granted to it disclaimed any exclusive right to use CITY WIDE other than in the diagram forming the entirety of its trademark.” Even if the relationship were demonstrated, it would still lack standing.
Third: “[The words are clearly generic, making it unlikely that they could be trademarked. There was therefore an obligation on Complainant to show why Respondent was acting in bad faith in using the two generic words “city wide” to describe its business, as so many other business owners have done.” Trademark owners have no monopoly of dictionary words.
In satisfying its burden “it must be remembered that the UDRP is a summary procedure where parties do not have the benefit of a full trial with the usual safeguards. That being so, panels do and are entitled to insist on full proofs of the requisite elements of the Policy such as evidence of a trademark and Respondent is entitled to submit that the lack of evidence of a trademark in which Complainant has rights is fatal to Complainant’s case.”
Although the Panel dismissed the complaint for lack of standing it nevertheless assessed the merits “[l]est it be said … that this result is based on a mere technicality.” And, on that assessment Complainant loses even if had standing because “the registration and use of the domain name was not contrary to any of the specific factors listed in Policy ¶ 4(b), which is a list of factors which, if established, show bad faith registration and use.”
CVS Pharmacy, Inc. and MinuteClinic, L.L.C v. Pham Dinh Nhut, FA1703001723633 (Forum April 30, 2017) (MINUTE CLINIC and <minuteclinics.com>)
There is no statute of limitations for cybersquatting under the UDRP although where the second level domain is composed of dictionary words and common phrases waiting will generally favor respondent unless the website at any time is shown to have taken or presently takes advantage of complainant’s mark. The issue is illustrated in this case, wherein the Panel notes that “Complainant fails to explain why it waited some 13 years to bring this complaint; however, as this Panel lacks equitable powers and Complainant has otherwise established all three elements under the policy, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.” (Emphasis added).
The latest example of mark owners tilting against windmills is the acronym “DCAC”—Denny Cherry & Associates Consulting, LLC v. Azeras LLC, FA1702001718995 (Forum April 16, 2017)—and the word string “myspectrumnews”—Charter Communications, Inc., Charter Communications Holding Company, LLC and Charter Communications Operating LLC v. Perfect Privacy, LLC / Sheri K Corwin, D2017-0040 (WIPO April 19, 2017). First use in commerce for both Complainants postdated the registrations of the domain names.
Lingjia Cai, Yongfang Xiang v. Maolin Zhang, D2017-0289 (WIPO April 6, 2017)
Complainant alleges 74 domain names fraudulently transferred out of its account. However, it submitted no evidence that any of the domain names are identical or confusingly similar to marks in which it has rights. As the Panel notes “the allegations of theft are outside the limited scope of the Policy and that the present decision does not leave the Complainant without potential redress in the courts.” There is no actionable claim for theft under either the UDRP or the ACPA unless there are marks in which complainant has rights.
Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA1703001719671 (Forum April 14, 2017) (<jireh.com>)
Complainant alleging common law rights dating back to 1983 denied standing because it “failed to provide any evidence of the kind that would satisfy its burden of proving common law rights.” The Panel continues: “Complainant’s evidence is limited merely to the statements that it has been using its JIREH mark initially on food processing equipment and later on oilfield equipment since 1983 and on nondestructive testing equipment for industrial applications since 2002.” The lesson: “Such assertions alone, without facts to support a claim of common law rights, are insufficient to satisfy the requirements of the Policy.” (See also Zeca S.p.A. v. Whois Privacy Protection Service, Inc. / Domain Vault LLC, D2017-0158 (WIPO April 3, 2017) (<zeca.com>, generic personal name, geographic location in Portugal, has a musical association. Complainant located in Italy, Respondent in the U.S.)
Group One Holdings Pte Ltd v. Steven Hafto, D2017-0183 (WIPO March 28, 2017)
A three-member panel including the author of Mummygold unanimously rejected the reasoning of that case thereby essentially declaring the retroactive bad faith view a dead end.
FLM (Maindron Group) v. Michael Maindron, D2017-0186 (WIPO March 15, 2017) (<maindron.com>)
While original registrants of domain names predating trademarks have rights superior to owners their successors’ are judged from their own registrations. So, for example, if the original registrant is using the domain name in bad faith (even though it may have registered it in good faith) the successor may have to answer for it. In this case “[t]he Panel finds that the Complainant approached the prior registrant of the disputed domain name via GoDaddy in January 2016, that a price of USD 15,000 was requested for the disputed domain name at that time, and that the disputed domain name was transferred to the Respondent very shortly thereafter.” The Panel noted that “this raises the prospect that the Respondent acquired the disputed domain name with the objective of selling it to the Complainant for consideration in excess of the costs of registration.” Nothing in the record “dispel[s] [the] inference that the transfer of the disputed domain name to the Respondent was directly connected with the Complainant’s interest in the disputed domain name.”
Imec International Stichting van Openbaar nut a/k/a Imec International v. IMEC Hosting, FA1702001716823 (Forum March 29, 2017) (<imec.com>)
Active use of domain names is not limited to websites. It includes email, servers, and personal use. Respondent alleged it had “been using <imec.com> for email since its inception: email@example.com; firstname.lastname@example.org; email@example.com; firstname.lastname@example.org; email@example.com, firstname.lastname@example.org, webadmin@ server.imec.com, and email@example.com.” This would bring it into legitimate use under Policy ¶ 4(c)(i). It also alleged (and the Panel accepted) that “it is currently engaging in legitimate noncommercial or fair use because it uses subpages at <imec.com> to store personal and other non-business related files and folders under a secure, password-protected system.” This would bring it into legitimate use under ¶ 4(c)(iii). The Panel cited RMO, Inc. v. Burbidge, FA 96949 (Forum May 16, 2001) (“A family information site is a legitimate non-commercial use.”).
Graftex Prodcom SRL and Graffitti – 94 R.B.I. Prodcom S.R.L. v. Piazza Affari srl, Michele Dinoia, D2017-0148 (WIPO March 22, 2017) (<bigotti.com>)
Respondent is Italian; “bigotti” (“bigot” in English) is a dictionary word.The Panel “considers the business of registering domain names including dictionary words to be, in itself, a legitimate commercial activity. It is readily apparent that a dictionary word in one language may function as a protectable trademark in another language, and examples of this are legion. The Panel also considers it unsurprising that a practice of registering domain names with dictionary words can, unwittingly, lead to disputes with the owners of these words as protectable trademarks.”
Indoor Air Technologies, Inc. v. Casey Janke / My Tech Company LLC / Privacy Administrator / Anonymize, Inc., FA1701001714547 (Forum March 14, 2017) (<iatcorpusa.com>, <indoorairtechnologies.net>, and <iatcorpusa.net>)
The Panel found the dispute outside the scope of the Policy: “Both parties agreed … that Complainant engaged with Respondent to make use of Respondent’s IT services in developing and promoting Complainant’s business.” Two earlier cases are cited and quoted that are precedential on this issue.
Love v. Barnett, FA 944826 (Forum May 14, 2007) (“the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.” Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) (“[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. . . . The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”)
Harow v. Future Media Architects, Inc., D2017-0134 (WIPO March 6, 2017) (<harow.com>)
The theory that an owner of a post acquired trademark has a better right to a domain name because of “Respondents failure to justify any right, use or legitimate interest” has long been laid to rest. In Harow, Complainant argued that “the anteriority of the first registration of [<harow.com>] to its trademark rights is irrelevant in light of Respondent’s failure to justify any right, use or legitimate interest before the filing of the trademarks.” For postdated trademarks, respondent does not have to”justify” its right; Complainant has to prove bad faith registration (bad faith use not a factor).
Clasen Quality Chocolate, Inc. v. Earthlink, Inc., D2017-0129 (WIPO March 1, 2017) (<cqc.com>)
Panel excused Complainant of reverse domain name hijacking because the complaint “appears, on balance, to be more misconceived than malicious in nature” (emphasis added). The head scratcher in this decision is that the Panel also stated that the “Complaint should not have been brought” which is the formulaic language used by panelists on the other end of the spectrum for finding abuse of the proceeding.
KION Material Handling GmbH v. Kion Printing Inc., D2017-0025 (WIPO February 24, 2017) (<kion.com>)|
While trademarks can be lost through abandonment, domain names can only be lost through lapse of registration. Complainant contended that Respondent no longer existed because its corporate registration was suspended. Panel found that Respondent’s right was not extinguished (“does not accept the Complainant’s assertion that the Respondent no longer exists.”) It concluded that
The filed evidence establishes the Respondent’s current status under California law is suspended, but it appears that such a suspension can in at least some circumstances be reversed. . . . The fact is that the Disputed Domain Name was registered by the Respondent long before the Complainant adopted the name KION and the Respondent is still the named registrant, even though its status under Californian law is suspended. That does not, in the Panel’s opinion, establish that the Disputed Domain Name has been registered and used in bad faith.
Dividex Management, LLC v. Rory Blake, D2016-2574 (WIPO February 17, 2017) (<dividex.com>).
Panel in a recent case declined to find reverse domain name hijacking because Complainant “at least [presented] a colorable argument” (albeit relying on a principle of bad faith that has essentially been rejected by other panelists). The Panel found this reliance (that renewal of registration with knowledge of a mark is bad faith) “was reasonable.” Some commentators would find that relying on a rejected proposition of bad faith is “not reasonable” at all, in fact dubious and particularly so where the mark was “not distinctive” and postdated the registration of the domain name by more than a decade, since in that factual context there could not have been bad faith registration.
NSK LTD. v. Li shuo, FA1701001712449 (Forum February 16, 2017) (<skfnsk.com>).
Complainant owns the NSK mark but has no interest in the SKF mark. Panel (Forum appointed) dismisses complaint because Complainant fails to allege any “nexus between it and the owner of the [SKF] mark” and concludes that “[a]s such, Complainant essentially has standing to bring this claim regarding the NSK mark but not the SKF mark.”
In contrast to the Forum, WIPO panelists have a long history of mulling over the problem of multiple marks incorporated into domain names. In Kabbage, Inc. v. Oneandone Private Registration 1, 1&1 Internet Inc. – www.1.and1.com/oert Hanssen, Ridiculous File Sharing, D2015-1507 (WIPO November 20, 2015) (<kabbage4amazon.com>) the Panel rested its reasoning on earlier decisions held that “where Complainant has fulfilled all the elements of Policy paragraph 4(a), expressed a strong preference for transfer over cancellation, and demonstrated to the satisfaction of the Panel that it is cognizant of its obligations to respect the rights of third-party trademark holders, the Panel is willing” to grant the request. The same Panel had previously mulled the problem three years earlier in Incase Designs Corp. v. Rogenie LLC, Rogenie Cordero, D2012-1491 (WIPO September 12, 2012) (<iponeincase.com> in which it concluded “[t]here is no indication in the record that Apple Inc. would consent to the remedy of transfer to Complainant, and indeed, Complainant appears to be disinclined to request Apple Inc.’s authorization. In these circumstances, therefore, the Panel has determined that it is most consistent with the Policy and its injunction of efficiency not to delay the proceedings by ordering Complainant to seek such authorization.
The Panel’s reasoning in NSK is a departure from WIPO appointed Panels. It accepts without other authority a recently created theory which itself cites no authority. NIKE, Inc. and Nike Innovate, C.V. v. Mattia Lumini and Yykk Snc. FA1606001679233 (Forum July 15, 2016) (<nikegoogle.com>). The reasoning comes from nowhere although there may be a clue in the use of “nexus” which is found in the Forum rule concerning multiple complainants. In any event, the “nikegoogle” dispute was refiled with both mark owners as complainants and the domain name transferred, NIKE, Inc., Nike Innovate, C.V., and Google Inc. v. Mattia Lumini / Yykk Snc, FA160800 1687597 (Forum September 20, 2016).
CIA. Industrial H. Carlos Schneider v. WHOIS Privacy Service Pty Ltd. / Domain Admin, Ashantiplc Limited, D2016-2167 (WIPO January 26, 2017)
Complaint denied where Complainant having allowed <ciser.com> to lapse in 2006 now attempts through the UDRP proceeding to regain it after expanding its geographic market. While the Panel recognized that “the term “-ciser” is sometimes used as a suffix in words such as ‘x-ciser’ or ‘shoulder-ciser’ it found “no evidence that the suffix ‘ciser’ has any generic meaning if used individually.” Nevertheless, the Panel held that “[i]n the circumstances of the case, and absent evidence to the contrary, it seems that Complainant acquiesced in Respondent’s registration of the disputed domain name.” Complainant failed to provide any “explanation as to why it abandoned the registration of the disputed domain name [in 2006] and waited for more than a decade to file a complaint.”
Bayerische Motoren Werke AG v. MIKE LEE / WHOISGUARD PROTECTED, WHOISGUARD, INC., Yang Xiao, Xiao Yang, Ning Li, Li Ning, MIKE LEE, D2016-2268 (WIPO January 6, 2017) (<bmw-icom.com> and several others); Fifty Shades Limited v. Domain Admin / Whois Privacy Corp., FA161100 1704616 (Forum January 17, 2017) (<fiftyshades2.com>).
There are two different senses of “counterfeit.” When it refers to a “spurious mark” registrants found to have registered domain names in bad faith are cybersquatters by definition. Noun infringements are the province of the UDRP/URS. However, more commonly we encounter counterfeiting as an adjective as it applies to spurious goods (counterfeit goods) –“made in exact imitation of something valuable or important with the intention to deceive or defraud.” Webster’s Ninth New Collegiate Dictionary. Under U.S. trademark law noun claims can be joined with adjectival claims under the Anticybersquatting Consumer Protection Act (ACPA) which is a section of the Lanham Act but adjectival claims are not actionable under the UDRP/URS.
Complainants in the following two cases initiated complaints for cybersquatting against respondents acquiring domain names by auction.
In Larry S. Nichter, M.D. and Jed H. Horowitz, M.D., a Medical Corporation, DBA Pacific Center for Plastic Surgery v. DOMAIN ADMINISTRATOR / THOUGHT CONVERGENCE, INC., FA1611001702547 (Forum January 3, 2017) (<biospa.com>)
In this case, Complainant’s predecessor owned a trademark that lapsed and Complainant applied for a trademark that was registered in 2016. Respondent acquired the domain name after it was abandoned by a third-party and later than the lapsed trademark but earlier than Complainant’s recently acquired trademark. Since Respondent’s registration of <biospa.com> is senior to Complainant’s filing date for the BIOSPA mark with the USPTO there can be no bad faith.
In Advanced Analytical Technologies, Inc. v. Hare, Myles / URL Enterprises Ltd., FA161100 1701430 (Forum January 1, 2017) (<aati.com>) the parties competed with each other (with many others) at an auction in which Respondent was the winning bidder. It then put the domain name up for sale within 24 hours. Complainant failed to prove rights to “aati.” Panel noted that “[l]ack of governmental registration of a mark may impute a lack of standing, especially where common law evidence is lacking.”
Sven Mark Sawatzki v. WHOIS PRIVACY PROTECTION SERVICE, INC., CAC 101337 (ADR.eu January 3, 2017) (<lunchmail.com>)
Domain name abandoned by earlier registrant and immediately registered by Respondent for its own account. Complaint denied even though Complainant’s mark has priority; weak trademark and no evidence of Respondent capitalizing on the mark.
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). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Supplement and Update through August 2016 published January 2017. It is available in print format from Amazon and Barnes & Noble but is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.