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Noteworthy Domain Name Decisions for 2018

Noteworthy Domain Name Decisions is a running collection of annual decisions that taken together provide insight into the jurisprudence applied in UDRP disputes. More detailed analytical discussions of decisions can be found in recent and archived essays posted on the website and republished on circleid.com. Noteworthy Domain Decisions for 2015 can be found here, 2016 can be found here, and 2017 can be found here.

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 treatise and Supplement at Legal Corner Press. Available from Amazon and Barnes & Noble.  Review and notices of the book here.  An Updated, Revised, and Enlarged Second Edition of the treatise with Index is scheduled for publication January 2019, with Foreword by Neil A. Brown QC.  For those who purchased the First Edition of the treatise you can obtain a copy of the Second Edition 50% off the retail price by contacting Legal Corner Press or Mr. Levine.

Hims, Inc. v. Sharad Patel, FA1810001810653 (Forum November 16,2018) (<hims.com>.
Twenty-year registration with priority over Complainant, yet the three-member Panel rejected claim for sanctions (which would have been appropriate) because “Complainant had a colorable claim based on arguments of bad faith renewal of the disputed domain name, and therefore declines to find reverse hijacking.”  The decision is simply wrong because there can never be “bad faith renewal.” Renewal is a continuation of its “lawful” registration. For all the reasons Respondent advanced there should have been RDNH. Plan B complaint.

Below, two RDNH cases, both clear cut abusive complaints (domain name holders have priority over the mark), one represented by “competent” counsel, the other pro se. Complainant with counsel is sanctioned, pro se relieved of the ignominy of RDNH.

Pet Life LLC v. ROBERT RIESS / blue streak marketing llc, FA1810001810870 (Forum November 11, 2018) (<petlife.com>).
“Given PET LIFE’s trademark registration date and first use in commerce date being years after Respondent’s registration of <petlife.com>, Complainant –who is represented by competent counsel– knew or should have known at the time it filed the instant complaint that it would be unable to prove each of the three elements of Policy ¶ 4(a) necessary to prevail.”

And

WEDIA SA v. Office Yui Asia Limited, D2018-2083 (WIPO November 8, 2018) (<wedia.com>).
“Without evidence that the disputed domain name was registered in bad faith in 1997 (or that there had been a subsequent transfer in bad faith), the Complainant should have known that the proceedings were bound to fail. Nevertheless, the Complainant had sought to contact the Respondent prior to filing the complaint and made a reasonable offer of USD 3,000 to purchase the domain name but did not receive any reply from the Respondent. The Complainant appears to have prepared the complaint itself without taking external legal advice and does not appear to have been previously involved in UDRP proceedings. The Panel is, therefore, willing to give the Complainant the benefit of the doubt that it was not aware of the possibility of a RDNH finding. In the particular circumstances of this case, the Panel therefore determines that it is not necessary to make a declaration of Reverse Domain Name Hijacking.”

Grant A. Wright v. Robert Thompson / w& w / Richard Lanham / No Company, FA1809001805540 (Forum November 5, 2018) (<wrightandwrightlawlawoffice.com>)
Proving common law rights. Cannot be satisfied by earlier registered domain name without establishing “that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder.” The Panel cites Raptor Technologies, LLC v. sajima tan, FA 1693640 (Forum Oct. 25, 2016) for the proposition that “[m]ere allegations of the existence and use of a domain name do not establish secondary meaning.” It concludes that “[a] domain name registration alone establishes no protectable trademark rights.”

Jimdo GmbH v. Dong Da Yang, CAC 101940 (ADR.eu October 2, 2018) (<jimdo.top>.
UDRP Rule 11(a) contains two clauses. The first clause provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.” The second clause dilutes the imperative of the first by providing the decision is “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” In this case, the Panel terminated the administrative proceedings because it found “nothing in the case file to indicate that the Respondent has any understanding of the English language, and importantly nothing to show it has understood or is likely to understand any of the procedural aspects or submissions written in English in these proceedings…. There needs to be a fair balance between the interests of both parties in any UDRP proceedings.”

Federation Francaise De Tennis (FFT) v. Greg Harriott, FA1809001805323 (Forum September 30, 2018) (<frenchopen.bet>)
In the URS context complainants generally lose against domain names composed of dictionary words and common phrases (unless the extension to the right of the dot clearly references complainant’s business and mark). Respondent prevailed because Complainant failed to demonstrate that the domain name was identical or confusingly similar to the claimed trademark. Error on Complainant’s part in presenting its claim for “toiletries and cosmetics” rather than its well-known for its tennis competition. The Examiner explained that while “the words French Open are widely recognized as referring to the major annual tennis event held in Paris and finds that Respondent probably had that event in mind when registering the domain name, since the domain name <frenchopen.bet> conveys the idea of betting on that tennis event. That idea does not involve any representation of any official or authorized association with Complainant, nor has Complainant so contended. Since Complainant’s evidence shows that its FRENCH OPEN trademark is not registered for tennis but for toiletries and cosmetics, the Examiner does not accept Complainant’s unsupported submission that this is a blocking registration.”

Flying Dog Brewery, LLLP v. WhoIs Privacy Protection Services, Inc. / Phil Allen, Flying Dog Enterprises, D2018-1683 (WIPO September 22, 2018) (<flyingdog.com>)
Complainant’s misrepresentations of fact: “The Complainant submitted a bare bones complaint unsupported by any evidence, and blatantly misrepresented to the Panel that the Respondent had hired an undisclosed agent seeking to sell the disputed domain name to the Complainant at an exorbitant price. The record, however, confirms that it was the Complainant who retained a domain name broker. The Complainant’s blatant and intentional misrepresentation as described above constitutes a clear violation of section XIII, paragraph 21 of the Complaint.”

Zimmermann Wear Pty Ltd v. Sam Dumond, FA1808001802176 (Forum September 17, 2018) (ZIMMERMANN and <zimoutlet.com>)
The question is whether “zim” is sufficient to support the first test for having a right. Complainant offered no authority of this issue, but the Panel considered a number of decisions involving domain names that incorporate the first few letters of a longer mark and concluded that “zim” was not sufficient. Cited cases: Fuji Photo Film U.S.A., Inc. v. Center for Ban on Drugs, D2004-0970 (WIPO Feb. 25, 2005), <fujfilm.com> confusingly similar to FUJI “on the grounds that it combined the first three letters of the four-letter mark—”essentially the entirety of Complainant’s mark”—with a generic term for the complainant’s principal product. Chevron Intellectual Property LLC v. Linda Hearn, FA 1409285 (Forum Nov. 15, 2011) <chevoil.com> confusingly similar to CHEVRON, combining the first four letters of the mark with a term descriptive of the complainant’s products and services. Tesco Stores Ltd. v. Mat Feakins, DCO2013-0017 (WIPO Oct. 4, 2013) <tes.co> confusingly similar to TESCO, even though the second-level component of the domain name corresponded to only the first three letters of the mark, on the grounds that the domain name taken in its entirety was identical to the complete mark but for the intervening dot.

Hike Private Limited v. Jared Hanstra, D2018-1588 (WIPO September 14, 2018) (<hike.app>)
The choice of a TLD can be a determining factor in inferring intention. While dictionary words and common expressions registered as domain names in the dot com space may be insufficient to prove cybersquatting, the same strings coupled with new gTLD extensions can be found infringing. Respondent in this case argued that Complainant had previously lost on the dictionary word “hike” in Hike Private Limited v. Perfect Privacy LLC / Zcapital, D2017-0902 (WIPO August 26, 2017) (<hike.com>). However, the Panel explained that the circumstances were different because “the Complainant was unable [in the earlier case] to show that the domain name at issue was registered with the Complainant’s mark in mind, given that the domain name consisted of the dictionary term ‘hike’ and there was no significance arising from the TLD ‘.com.’” In contrast, and to be underscored, in the instant case “the use of the ‘.app’ TLD gives rise to an immediate suggestion of targeting which is fortified and confirmed, on the balance of probabilities, by the proximity of the registration of another domain name featuring the brand of another well-known and popular app. This does not suggest an incidental use of a dictionary word or phrase and it does not surprise the Panel that the Respondent now offers to transfer that particular domain name to the rights owner concerned.”

Elgi Equipments Limited v. Michael Zielinski, Worldengine Holdings LLC, D2018-1625 (WIPO
September 7, 2018) (<elgi.net>).
Complainant alleges “elgi” is an invented term, but Respondent demonstrates that it is a surname, a geographic term as the name of a river in Russia, is used by at least two other businesses around the world who use the letters as an acronym, one of whom has the dot com registration, and is an abbreviation for “electronic gas injection” in certain industries.

Geo Global Partners, LLC v. Ruby Administrator / Ruby Advertising, FA1807001797850 (Forum August 29, 2018) (<gardenique.com>)
In a recent blog post on Domain Name Wire, Andrew Allemann reflected on the advantage of hiring a specialist lawyer for domain name disputes. He particularly noted this case. It “mostly hinged on dates [he said]” Why? Because “The domain was registered in 1996. Geo Global Partners’ attorney tried to argue common law rights but did not make arguments sufficient enough to qualify in a UDRP case. Furthermore, even the common law rights claimed were after 1996.” “Here’s the thing [though]:

based on historical Whois records at DomainTools, it appears the current owner of the domain acquired it in late 2016 or early 2017. That changes things.

It certainly does change things! If the facts are what Mr. Allemann’s research discovered Complainant lost an opportunity, but being a cautious observer and not wanting to be categorical he also notes, “Perhaps the Complainant still would have lost for other reasons.” Whether that is true cannot be tested in a new UDRP proceeding because parties get only one shot to make their case.

Lights Out Holdings, LLC v. Bruce Gordon, FA1807001795430 (Forum August 23, 2018) (<lightsout.com>
No RDNH. Panel held complaint was “misconceived”: “Complainant might have had a legitimate, albeit misconceived belief that it had superior trademark rights and its claim was sustainable   [even though its trademark postdated the registration of the domain name by many years].”

Playboy Enterprises International, Inc. v. Alano Fernandez, E-Magine, D2018-1457 (WIPO August 21, 2018) (<centerfolds.com>, default and transferred).
Combining “Playboy” and “centerfolds” would obviously be infringing,  but “centerfolds” standing alone? The oldest extant registrations for CENTERFOLD alone date from November 1996, but the defaulting Respondent registered the domain name on April 25, 1995 (24 years ago!). Regrettably, Respondent did not appear and there was no explanation for a lawful registration. The Panel must evidently have been persuaded that Complainant invented the term “centerfolds” or by 1995 it was already so well-known or famous as an unregistered mark and awarded it the domain name. However, since the domain name had never resolved to a website there was no direct evidence of bad faith use. So, how does a Panel get from passive holding to registration and use in bad faith?

This is a puzzling problem. While it makes sense to infer bad faith registration from bad faith use it doesn’t work in reverse. If there is no proof of bad faith use (if the domain name is passively held), the complaint should be denied; at least that would seem to follow the logic. The problem was solved by the Panel in the third decided UDRP case, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The Panel explained that passive holding can be regarded as “use” when “it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by respondent that would not be illegitimate.”

Robert Bosch GmbH v. Above.com Domain Privacy, Above.com Domain Privacy / David Woo,  D2018-1549 (WIPO August 17, 2018) (<boschtoolservice.com>
Constructive notice. Limited application; it depends on the facts. “[W]hile constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain name in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as, the Complainant contends, is the case here.”

Courtney Cox, Ivy Lane Living v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Betsy Riot, Betsy Riot, D2018-1256 (WIPO August 16, 2018) (<ivy-lane-living.com>)
Although the UDRP is not centric to any particular legal system, when parties are domiciled in the same jurisdiction the law of that jurisdiction can be applied. “Here … applying relevant principles from UDRP jurisprudence and applicable law of the United States, where both Complainant and Respondent are located, the Panel finds that Respondent’s registration and use of the disputed domain name constitutes an adequate claim to fair use such that Complainant has not met its burden under the Policy.” Citing WIPO Jurisprudential Overview 4.15 

Westville Group Inc. v. Rob Waters, Robert Waters, D2018-1452 (WIPO August 10, 2018) (<westville.com>)
Use as an email address is bona fide. “Respondent states that the Disputed Domain Name has been in continuous use for the past 20 years as the email address of Respondent as well as other employees and associate.  … The Panel finds that the stated use by Respondent is in connection with a bona fide offering of goods and services. The evidence further satisfies the Panel that Respondent has not abandoned or ceased using the Disputed Domain Name.”

Mister Auto SAS v. Wharton Lyon & Lyon, D2018-1330 (WIPO August 3, 2018) (<mister auto.com>)
RDNH appropriate where Complainant commenced the UDRP proceeding “out of desperation as its prior attempt to contact the Respondent went unanswered (and the webpage did not resolve — revealing no clues as to the Respondent’s possible motives) but without a reasonable chance of success and as such in the circumstances constitutes an abuse of the Administrative Proceeding.” Although Respondent defaulted, the record included the Whois information (a required Annex) that Complainant’s right postdated the registration of the domain name.

Vantage Mobility International, LLC v. Michael Bilde / Embrand, FA1806001790831 (Forum July 29, 2018) (<vmi.com>)
Complainant had two arrows in its quiver; neither hit its mark. First, Respondent is the successor to a registrant who apparently offered to sell it the domain name. Second, the price Respondent was demanding for it.  Regarding the first:

The only allegation in the Complaint that could possibly support a finding of bad faith registration and use is Complainant’s allegation that a broker, representing the Respondent, reached out to the Complainant and offered to sell the Domain Name to the Complainant given that the Domain Name is the same as the abbreviation of the Complainant’s company name.  See Amend. Compl. Annex K.  If these facts were true, they would be powerful evidence of bad faith.

While “[t]here is no question but that the former registrant’s offer of sale constituted bad faith use of the Domain Name”,

that offer was made by email dated February 6, 2018.  The Respondent acquired the Domain Name on February 9, 2018, three days later.  It therefore appears that, in the days leading up to the former registrant’s sale of the Domain Name to the Respondent, the former registrant was trying to see if it could obtain a higher offer.  Having been unsuccessful, the former registrant apparently proceeded with the sale of the Domain Name to the Respondent.

Predecessor’s offer only taints the successor if there is evidence of collusion: “[i]t is possible that the Complainant could develop such evidence in discovery, where it to file suit against the prior registrant or the Respondent, but Complainant has not provided any such evidence to this Panel and therefore the Panel is constrained to find that the February 6, 2018 offer of sale is irrelevant to whether the Respondent registered and used the Domain Name in bad faith.”

The second arrow is “the fact that Respondent is offering to sell the Domain Name for $99,995.”  The Panel rejects this argument:

Complainant has adduced no evidence that Respondent’s offer to sell the Domain Name is intended to target the Complainant, or any other trademark owner.  It is axiomatic that bad faith can only be shown if the Respondent is acting in bad faith with respect to the Complainant’s trademark…  Rather, Respondent has indicated that it seeks to sell this Domain Name because short, three-letter domain names are perceived as being valuable.  If the value of this Domain Name were clearly tied to the value of Complainant’s trademark the offer to sell might well constitute bad faith use, but here, there is no evidence that would support such a conclusion.”

Indeed, Inc. v. Alvaro Lemos, FA1806001793156 (Forum July 18, 2018) (<indeed.one>) (Default)
Dictionary word mark, Complainant prevails on proof domain name used for phishing. “Respondent makes no active use of the <indeed.one> domain name except to employ it to facilitate a fraudulent phishing scheme by which it passes itself off as Complainant in order to collect Internet users’ personal and business information, including their email addresses and passwords, and to profit financially from the exploitation of that information.

Wiluna Holdings, LLC v. Privacy.co.com, Inc Privacy ID# 1100134 FA1805001789612 (Forum July 16, 2018) (<video4sale.com>) and AF Gloenco, Inc. v. CT PACKAGING SYSTEMS,  INC., FA1805001785831 (Forum June 28, 2018) (<shrinkfast.com>)
Resolved in favor of complainants. In both cases, Complainants delayed for long periods in filing complaints. In AF Gloenco the Panel held that the delay “has cemented Respondent’s business reliance upon the disputed domain name to conduct crucial online operations and constitutes an implied authorization for that use of the name by Respondent.” “Implied authorization” means “acquiescence.” This holding certainly brings us into equitable defense territory. In Wiluna Holdings, “Respondent points to the nine year delay in bringing legal proceedings. Therefore, the Panel may consider the doctrine of laches as additional evidence towards Respondent.”)

American Society of Hematology v. Maneet Tikku, D2018-1209 (WIPO July 16, 2018) (<ashmeeting.com>)
Example of a short string of letters that spells out a dictionary word but is also an acronym. The domain name “collects names, emails, telephone numbers, countries and special requirements information for registration for the 2018 ASH Annual Meeting and related housing.” Panel concludes it is clear that Respondent is using the Domain Name and the associated website for providing misleading and deceptive data entry forms to obtain personal data from Internet users who assume that they are providing such information to Complainant.”

ILQ Australia Pty Ltd v. Gidman, John, FA1806001790689 (Forum July 13, 2018) (<fairmarkets.com>)
Common expression, Complainant loses on proof it lacked rights. Not only did it failed the paragraph 4(a)(i) test; Panel also found reverse domain name hijacking. But this case is interesting (and perhaps even more so)  because of the allegations Complainant made about Respondent’s silence in responding to its offers. The Pane found “no evidence of Respondent having made material misrepresentations or of having attempted to somehow coerce Complainant to purchase the disputed domain name.” In fact, the Panel continues, the “contrary evidence is that it was Complainant who reached out to Respondent with a series of escalating offers to purchase the domain name, largely without reply or other encouragement from Respondent.” And the kicker is this: “The Panel finds that Complainant’s contention that the silence following Complainant’s offers were Respondent’s method to induce Complainant to increase its offer, wrongly characterizes the pre-Complaint dealings between the parties. The Panel’s assessment of the correspondence is that Respondent showed, on the whole, a general lack of interest in selling the domain name.”

Bper Banca S.p.A. v. Laurent Marteau, Transeo, D2018-0947 (WIPO July 9, 2018) (<bper.com>)
“[T]he evidence before the Panel does not include information about the size or geographic extent of the Complainant’s operations back in January / February 2000. The Complaint does include print outs of references to the Complainant as BPER Group (or the like) by a number of institutions, including French banks such as Exane SA and Societe Generale and in French publications including Le Figaro and LesEchos.fr. The earliest of these included in the Complaint is dated May 2011.” The Panel concludes: “As a result, the nature of the disputed domain name and the evidence provided by the Complainant are not sufficient to contradict the Respondent’s denial of knowledge of the Complainant’s unregistered trademark at the time of the registration of the disputed domain name.”

Fabricación de Maquinas, S.A . de C.V. v. WSC WorldSpace, WorldSpace Corporation, D2018-0462 (WIPO June 29, 2018) (<fama.com>)
Sanctioning for reverse domain name hijacking is discretionary and even where complainant has no actionable claim because the domain name registration predated the mark, there are Panel that will not find any abuse. In this case, the domain name predated the mark by many years and there was no evidence of common law rights, but the Panel rejected Respondent’s assertion that Complainant has engaged in RDNH. It found four reasons

(a) There is no basis to infer that Complainant knew it could not succeed as to any of the required three elements;
(b) Indeed, Complainant was successful in showing that it held relevant trade mark rights;
(c) There is no reason to conclude that Complainant ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint;
(d) There is no suggestion that Complainant has provided false or misleading evidence; and
(e) Finally, there is no basis to suggest that Complainant proceeded only on the barest of allegations without any supporting evidence.

These reasons make no sense, particularly item two because it would mean priority could never be a critical factor in determining overreaching. This Panel sits on one end of the spectrum.

Andrey Ternovskiy dba Chatroulette v. Domain Hostmaster, CustomerID: 61529007151882, Whois Privacy Services Pty Ltd / Xedoc Holding SA, D2018-0201 (WIPO June 27, 2018) (<chatroulette.org>)
Relief denied, but interesting reasons for a Complainant who generally prevails. The Panel found a “number of troubling aspects to this case; not least that by the time the Respondent acquired the Domain Name, the Complainant had been successfully exploiting its ‘Chatroulette’ name for nearly a year.” Additionally, “It is somewhat remarkable that the Respondent, operating in broadly the same area of online business activity, was not aware of it, when it acquired the Domain Name. Had the Respondent’s denial of knowledge been a bare denial unsupported by any evidence, the Panel would have had no difficulty in ordering transfer.”  BUT: “the Respondent has produced sufficient evidence of prior descriptive use of the term to raise doubts in the minds of the Panel as to the motive of the Respondent at the date that it acquired the Domain Name. The burden of proof is on the Complainant. The Panel takes the view that the Respondent’s denial of knowledge of the existence of the Complainant and his trade mark at that date is credible enough to require more from the Complainant to overcome.”

It is only in this analytical context that “The Panel concludes that it would be unsafe on the evidence before it to reject the Respondent’s denial and conclude that the Respondent intentionally set out to acquire the Domain Name in bad faith to target the Complainant.”

United States Postal Service v. William Morrison, FA1805001788161 (Forum June 26, 2018) (<expressmail.top>)
Yes, the USPS has a trademark for EXPRESS MAIL.

Pet Plan Ltd. v. Mark Higginbotham, D2018-0996 (WIPO June 26, 2018) (PET PLAN and <petplans.org>).
Two dictionary words and not particularly distinctive as a phrase. Respondent could have explained with proof of non-infringing use but instead in correspondence provided clear violation of paragraph 4(b)(i) of the Policy. “In Respondent’s email correspondence with Complainant in response to Complainant’s ‘Cease and Desist’ letter dated April 3, 2018, exhibited to the Complaint, he indicates that he acquired the disputed domain name “…to provide ‘pre-paid funeral plans’ for pets” asserting “As you can see this in no way would encroach on Petplan business as they are an insurance provider for veterinary bills.” The Respondent also offered to sell the disputed domain name saying “There is no good reason why I should not be financially compensated for relinquishing what was a legitimate purchase. If it means that much to protect your brand please feel free to make me an offer.”

Compañía Logística de Hidrocarburos CLH, S.A. tried in two different disputes to get and , against  DropCatcher.Info / Badminton, Inc., D2018-0793 (WIPO June 14, 2018) for the dot com and Privacy Administrator, Anonymize, Inc. / Sam Dennis, Investments.org Inc, D2018-0973 (WIPO June 25, 2018) for the dot info. Both Respondents are resellers. Complainant failed on the first dispute to rebut proof of evidence of ubiquity of the 3-letter string and on the second because it lacked proof of its reputation when the domain name was registered. It barely avoided reverse domain name hijacking in both, although in the second a concurring opinion recommended the sanction.

Ferrer Internacional, S.A. v. Domain Admin, Level2 LLC, D2018-0670 (WIPO June 18, 2019) (<sugarex.com>.
Split view in this decision, although the dissenting member is not identified—“One of the Panelists is of the view that the Respondent registered and used the disputed domain name in bad faith because, according to paragraph 2 of the Policy, the Respondent (especially being active in the domain name industry) should have represented and warranted that, when registering the disputed domain name, it was not infringing upon or otherwise violating the rights of any third party.” The majority held that

even though the Respondent could have detected the Complainant’s trademark through searches on online trademark databases, the mere fact of a domain name proving identical or confusingly similar to a third-party trademark pursuant to a search does not mean that such registration cannot as such be undertaken or would automatically be considered to be in bad faith (see section 3.2.3 of the WIPO Overview 3.0 noting “the possibility of co-existence of trademarks across jurisdictions and classes of goods and services, and the fact that trademarks which may be inherently descriptive in one context may be generic in another.”

Verdant Services, Inc. v. Michael Sheikh, VRDT Corporation, D2018-0856 (WIPO June 16, 2018) (<verdant.com>.
This is another case in which Complainant commenced a proceeding with knowledge of Respondent’s right to the domain name:

The weakness of the Complaint was all the more apparent once Respondent responded, with evidence not only of its good faith registration and its legitimate interest in the VERDANT mark, but also with evidence of its business interests that continue to operate under the name. These are facts that should have been readily apparent to Complainant, had Complainant investigated Respondent’s use prior to filing the Complaint. In light of the Complainant’s knowledge of Respondent’s prior bona fide use of the Domain Name and the other facts discussed above, it was improper for Complainant to file a challenge and claim that Respondent was defunct without adequate investigation of the true facts.

Dynamic Visual Technologies (Pty) Ltd v. Direct Privacy, Savvy Investments, LLC Privacy ID# 14448338, D2018-0738 (WIPO June 6, 2018) (<dvt.com>.
Reaffirming the consensus as it relates to short strings of letters. There are several factors to look at one of which can be particularly critical, namely number of persons interested in acquiring it. “The Panel does not accept that the value of a short acronym as a domain name is necessarily linked to its value as a trademark. As other panels have recognised, short acronyms are inherently valuable in themselves precisely because they are (a) short and (b) can reflect a wide range of different uses. The Panel accepts, however, that the value a person places on an acronym as a domain name could well be affected by its significance as a trademark. The value of the acronym as a domain name could also be affected by how many different persons are interested in acquiring it.” Also citing Jurisprudential Overview 3.0.

Green Bay Packers, Inc. v. Domain Administrator, D2018-0657 (WIPO May 28, 2018) (<Titletowntech.com>).
Incorporating a strong mark in a domain name that resolves to website offering unrelated goods or services “cannot be bona fide if the third party does not otherwise have rights to the trademark.” This is so “even if Respondent in fact intended to use the Disputed Domain Name in connection with a technical support consulting business.” Citing a number of decisions as authority including Time Inc. v. Max Martel, D2004-0122 (WIPO May 4, 2004) (<sportsbookillustrated.com>. “[T]here is no circumstance under which the Respondent, unless authorized by the Complainant, could legitimately use the Domain Name under dispute incorporating the [Complainant’s] mark without creating a false impression of an association with the Complainant”).

Advanced Personnel Systems, Inc., v. Domain Admin / Mighty Products, Inc.  FA1804001780243 (Forum May 25, 2018) (<smartsearch.com>)
In this case, the Panel found that Respondent’s links reflect semantic use of the domain name.   “Respondent has been utilizing the disputed domain name as a parking page for PPC advertising links.  None of the links appear to be related to Complainant, its trademark or its business.  Instead, the links seem to reflect descriptive matters that one might search for on the Internet, such as ‘games’ and ‘movies.’  Because these links are sufficiently related to a website that offers ‘smart’ ‘search’ on the Internet, and because none of the links are related to Complainant or its personnel staffing program, the Panel finds that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name.”

Bloomberg Finance L.P. v. Amir Hossein Ali Naseri, FA1804001782697 (Forum May 24, 2018) (<bloombergmortgagetradecentre.com>
Highly unusual case. The ruling centered on Bloomberg’s reputation when Respondent registered the domain name. “Respondent began to use the trade name “Bloomberg Mortgages” [in October 1993]to conduct business as an Abbey Life Associate, selling and advising upon financial products and services. Although the domain name <bloomberg.com> had been registered by Complainant a month earlier, there is no evidence that the word BLOOMBERG had acquired secondary meaning as an unregistered trademark in the U.K. by October 1993. The earliest trademark registrations on which Complainant relies were in South Korea in 1998. Nor is there evidence that the BLOOMBERG mark had become well-known by May 23, 2001, when Respondent was registered in the ICO register of data controllers with the trading name ‘Bloomberg Mortgage Trade Centre.’”

Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Tony Mak, D2018-0602 (WIPO May 17, 2018) , by all appearances a legitimate generic ensemble. Complainant owns HEETS and HEATSTICK.
But in this case “The Panel accepts the Complainant’s assertion that website content can be considered in order to assess confusing similarity. Such content may support a finding of confusing similarity…. In the present case, the Respondent’s website features the widespread use of the Complainant’s IQOS mark, the use of the word “sticks” as a menu item corresponding to an element of the Complainant’s HEATSTICKS mark and a large number of images bearing the Complainant’s branding.”

NLY Scandinavia AB v. Alexander Tchousov, PS Pay Solutions UG, D2018-0498 (WIPO May 8, 2018) (<nelly-model.com>).
It is rare for Panels to pass over the standing requirement; they generally acknowledge that requirement has been satisfied even if on the entire record Complainant fails to prove its claim.  In this case, the Panel went directly to the end:  “Since all the requirements of paragraph 4(a) of the Policy must be met, the failure on the part of the Complainant to demonstrate one element of the Policy will result in failure of the Complaint in its entirety. Accordingly, in light of the Panel’s below findings regarding the issue of registration and use in bad faith, it is unnecessary for the Panel to decide whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark or whether the Respondent has any rights or legitimate interests in the disputed domain name.”

Unplugg, Inc. v. JInsoo Yoon, FA1803001778023 (Forum May 7, 2018) (<unplugg.com>.
Regardless whether respondents use domain names in bad faith, if they acquired them in good faith there is no actionable claim for cancellation or transfer. The Panel explains that “Complainant goes to much effort in its Additional Submission arguing that Section 3, Third UDRP Element, of the WIPO Overview 3.0 permits it to ignore the first element of a UDRP proceeding, the requirement that the complainant have prior trademark rights in and to the trademark that is arguably confusingly similar to the disputed domain name. To support this claim, Complainant cites Americor Mortgage, Inc. v. Robert D. Bowman, Claim Number: FA0002000093548 (Forum April 22, 2002) (). This case does not support this proposition. In fact, this case stands for precisely the finding made by the Panel. In the American Mortgage case, complainant used its ZAPLOAN mark starting in 1995 in relation to mortgage lending services. Complainant registered the mark with the United States Patent and Trademark Office as Registration No. 2,144,120 on March 17, 1998. Complainant used the mark continuously and invested large sums of money into its promotion. That is, it had secondary meaning in the mark dating back at least to 1995. Respondent registered the disputed domain name on April 14, 1999, some 4 years after secondary meaning was established in complainant. As such, the Panel in that case appropriately found prior rights in and to the trademark upon which the claim there was based. This is precisely what Complainant here failed to do.”

Green Jacket Auctions, Inc. v. Augusta Nat’l, Inc. (S.D. Ga., April 26, 2018) (Action transferred to the United States District Court for the District of Arizona) Complainant establishes the mutual jurisdiction (Rules Definition and 3(b)(xii)), and if that is the principal office of the Registrar Respondent cannot file an action in a district court of its address.

Euronext N.V. v. Huang tian wei, D2018-0348 (WIPO April 12, 2018) (<aex.com>
The Respondent argues that the letters AEX are not exclusively associated with the Complainant and can have many different meanings. The Respondent contends that the Respondent’s business is known by a corresponding name and that the Respondent has a legitimate interest in using the string for the Domain Name and for Facebook and Twitter social media accounts, since the three letters are suggestive of an acronym for “asset exchange”, which describes the nature of the Respondent’s business.

WRONGLY DECIDED CASES
T & P Holding Company, LLC v. Wendy Webbe and Ancient Holdings, LLC, FA1802001773041 (Forum April 6, 2018) Two problems. First, the domain name was registered earlier than the unregistered mark YOU ARE OK (should have been dismissed for lack of standing) and second in finding for Complainant under 4(a)(iii) (infringing under 4(b)(iv)) Panel applied the wrong standard:

Per Policy ¶ 4(a)(iii), Complainant argues Respondent’s failure to make an active use of the <youareok.com> domain name indicates it was registered in bad faith. Respondents who make no active use of a domain name have been found to have registered and used said domain name in bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Here, Complainant avers Respondent’s domain name resolves only to an “under construction” page. See Compl. Ex. 4. Consequently, the Panel finds Respondent’s inactive holding of the domain name is in bad faith per Policy ¶ 4(a)(iii).

Complainant in Marsh (a supermarket) registered MARSH decades before the domain name. Respondent registered a domain name that combined “marsh” with “supermarket.” If a newly minted attorney had cited Marsh he would have been laughed out of court. That an allegedly seasoned Panel accepted the Marsh citation as support for the proposition that <youareok.com> infringes a later unregistered mark indicates a total failure to understand the law he is supposedly applying.

Rolyn Companies Inc. v. Mediablue Inc., D2018-0072 (WIPO April 4, 2018) (<rolyn.com>)
Respondent acquired domain name “openly [as] the highest bidder” in a public auction  following the demise of the original owner’s business. One Panel member filed a dissent but only on the issue of rights or legitimate interests. He draws an important distinction between domain names composed of common terms and domain names composed of rare words; one supports legitimate interests, the other does not: “The disputed domain name is a five-letter word, not a three-letter acronym with multiple meanings and extensive use by third parties. As noted above, the Complainant’s case that the name and trademark ROLYN is rare is reasonably substantiated.” (Emphasis added). The Panel continued: “The fact that the Respondent buys three or four-letter domain names as a part of its business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another.” (Emphasis added). This having been said, however, the Panel was unanimous in denying the complaint because Complainant had the same opportunity to acquire the domain name and, rare thought it is, there are other businesses with that name.

Delbert R. Terrill Jr. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org), FA1803001775784 (Forum April 2, 2018) (<snn.com>)
The question for unregistered rights is whether the claimed use of a string of letters functioned as a trademark or  used in a non-trademark way.  The Panel in this case found that “the evidence adduced is not sufficient to show that Complainant has trademark rights in SNN. Complainant’s submission is in effect that the Wayback Machine at www.archive.org shows that Complainant has a common law trademark in SNN and used it as such. Looking at the series of screenshots on the Archive website for the period during which Complainant owned and controlled the domain name, it is clear that Complainant did not use the letters SNN in a separate or stand-alone form that might suggest that Complainant was using SNN as its trademark. The screenshots certainly carry the expression Summerhome News Network, albeit with the first letter of each word in capitals.  There is, however, nothing on the site to show that the public or part of it probably regarded SNN or <snn.com> as the mark or sign under which Complainant promoted and sold its goods and services with respect to letting the property in question.”

Unusual in Delbert R. Terrill (and important for businesses or trades that have no trademark and cannot prove common law rights) is that Complainant alleged it previously held the domain name, that it had been stolen and registration changed. But since it had neither mark nor proof of secondary meaning it failed to pass the 4(a)(i) test. There is no actionable claim under either the UDRP or the ACPA for losing a registration (either stolen and not returned through a federal action or failure to timely renew) unless there is a provable right.

CSP International Fashion Group S.p.A. v. Domain Administrator, NameFind LLC, D2018-0163 (WIPO March 13, 2018) (<myboutique.com>)
The clearest possible statement of registrant’s rights where the registrant is a reseller of domain names. Complainant alleged an unregistered right but failed to establish accrual of any secondary meaning. As a result, it failed under Paragraph 4(a)(i) of the Policy. Particularly significant language includes the following:  “Trading in domain names happens in a marketplace. Prices are struck between buyer and seller and it is not a function of the Policy to interfere in people’s bargains…. As in any market for commodities, domain name broking is about matching supply with demand; in the absence of any indicia of bad faith, there is nothing wrong per se with what the Complainant characterises as an ‘excessive offer.”

Boxador, Inc. v. Ruben Botn-Joergensen, D2017-2593 (WIPO February 27, 2018)
A rare form of actionable opportunism concerns registrants found acting abusively in registering domain names under the guise of lawful conduct (in this case, having a USPTO registration). Because these disputes can test the jurisdiction of the UDRP they are sui generis. In this case, a three-member Panel unanimously rejected Respondent’s USPTO trademark as evidence of lawful registration of <brandbucket.org> and <brandbucket.shop> and found its conduct as well as its domain name registrations abusive):

While the Respondent has been at pains to explain that his business is in Norway/Europe, which he claims is a totally different territory from that in which the Complainant operates, he is, nonetheless engaged in online business and is well aware that for the most part websites connected to gTLDs are in general terms accessible from all jurisdictions. He knew that the Complainant’s business was conducted via its website connected to its “brandbucket.com” website and must have been aware of the high risk of confusion and diversion of traffic.

Oxyhealth, LLC. v. Benjamin Galbraith, FA1801001767229 (Forum February 22, 2018) (<oxyhealthused.com>. Offerings of goods or services properly identified and not competitive in the form of <trademark+modifier> or <modifier+trademark> support a finding of registration in good faith. In this case, Complaint denied because Respondent uses the domain name in a strictly descriptive and informative manner, namely selling used equipment manufactured by Complainant).

Kitchens To Go, LLC v. KTG.COM, Whoisguard Protected / HUKU LLC, D2017-2241 (WIPO February 6, 2018) (<ktg.com>.
“[T]he Panel does not accept the Complainant’s submission that, on inheriting a large portfolio of domain names, this imposed on Mrs. Haggippavlou a duty of due diligence to search worldwide to see if any of them might infringe any third party rights, prior to registering them in her name.” An heir stands in the shoes of her testator and is not to be classified as a subsequent (unrelated) successor whose rights are challengeable if the domain name postdates the mark. The decision in Archer-Daniels-Midland Company v. Shawn Downey, D2015-0415 (WIPO May 4, 2016) relied on by the Complainant is distinguishable: “In that case the complainant had extensively protected its 3-letter mark through trademark registrations and, moreover, the panel found that complainant’s trademark had developed substantial goodwill and reputation such that it was a well-known mark, including in the United States where the respondent was located.”

Autobuses de Oriente ADO, S.A. de C.V. v. Private Registration / Francois Carrillo, D2017-1661 (WIPO February 1, 2018) (<ado.com>)
Particularly interesting in that Respondent paid good money in acquiring the domain name from the original registrant who had used it in bad faith. The three-member Panel held that “[i]n light of the foregoing, and in view of Respondent’s position as a professional domainer who admittedly focuses on branding, the Panel considers, on the balance of the probabilities, that it more likely than not that Respondent was aware of Complainant and its ADO mark when purchasing the Domain Name, which Respondent is currently offering for sale for USD 500,000. Alternatively, even in the event that Respondent may not have been personally familiar with Complainant and its ADO marks, that does not excuse willful blindness in this case, as it seems apparent from the record that even a cursory investigation by Respondent would have disclosed Complainant’s mark especially given the use made of the Domain Name of which Respondent was aware when negotiating for the Domain Name” (my emphasis). See more extended analysis in What’s So Outrageous Asking High Prices for Domain Names

DME Company LLC v. unknown unknown / DME Online Services, Ltd., FA171100 1759818 (January 19, 2018) (<dme.com>)
What is knowledge when Complainant is a niche business?

In the present case, Respondent states emphatically that when it registered the Domain Name it had never heard of Complainant or its mark.  The Panel recognizes that it is easy for a respondent to say that it had no knowledge of a complainant’s business or trade name when it registered its domain name.  The plausibility of such denial diminishes as the fame or notoriety of the complainant increases.  Based upon the evidence in Complainant’s Exhibits 4-7, it is undeniable that Complainant is well-known and well-respected in manufacturing circles throughout the world, but its familiarity for general audiences is another matter.  It appears from those exhibits that Complainant sells its products to other manufacturers and not to the general public.  Certainly, Respondent is not in the same line of business as Complainant, and there is no direct evidence that it was aware of Complainant when it registered the Domain Name in 2001.
As Respondent points out, Complainant’s mark is just three letters, susceptible of many meanings and interpretations.  It could indeed stand for durable medical equipment or Domodedovo International Airport, or any number of other things (see, Response Annex C), every bit as well as Detroit Mold Engineering, which appears to have been the origin of the mark.

Further, and different point in this decision: Does mark owner have a remedy when the Panel finds that while the domain name is being used in bad faith there is no evidence of its having registered in bad faith? While there was split reasoning on right or legitimate interest—the Majority ruled for and dissent against—the important point (no dissent) is that there was no evidence of registration in bad faith. Where there is jurisdiction (for example under the Anticybersquatting Consumer Protection Act) mark owners have an actionable claim for cyber piracy.  See DSPT International v. Nahum, 624 F.3d 1213 (9th Cir. 2010). The Court held that “[e]ven if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. §1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom.” Also, Newport News Holdings Corporation v. Virtual City Vision, Incorporated, d/b/a Van James Bond Tran, 650 F3d 423 (4th Cir. 2011) (domain name holder “cannot escape the consequences of its deliberate metamorphosis.”)

Paul DiCocco v. Curtis Lee Mickunas / Curtis L. Mickunas / Curtis Mickunas, D2017-1982 (WIPO January 15, 2018)
Where respondent argues that its resolving websites are protected under free speech principles the question turns on the composition of the domain names. In this case, eight of the nine domain names were identical to Complainant’s mark without any linguistic indicator of protected comment or criticism and one which contains a pejorative, namely “failed predictions” in <gianpaolo-dicocco-failed-predictions.com>. (Respondent agreed to “renounce ownership” of three of the domain names). The Panel explains that to come within 4(c)(iii) of the Policy the criticism and purpose must be legitimate. If it is then

the use of the associated domain name is fair use … without any further examination of the specific content itself. Alternatively, if the purpose is illegitimate, then the use of the domain name does not fall within the fair use provision of paragraph 4(c)(iii). In either instance, the specific nature and extent of the criticism is irrelevant for purposes of assessing fair use. As such, the Panel does not evaluate critical content, other than just its presence, from the standpoint of its objectivity, accuracy, intensity or even whether it is likely to offend its intended target or audience or is composed of what might constitute personal attacks or even societally unacceptable speech. Should the target of that content find it defamatory or otherwise legally objectionable, appropriate redress does not lie with a UDRP panel – as the power to regulate speech lies well outside the jurisdiction of the panel – but rather through a suitable judicial forum applying pertinent federal and/or state laws.,,, After considering the totality of the circumstances here, the Panel finds the Respondent’s intent and purpose behind this conduct is illegitimate [as to the domain name identical to Complainant’s mark], thus precluding his use of these specific names as constituting a fair use under paragraph 4(c)(iii).

The Panel concluded by granting the requested remedy with respect to eight of the disputed domain names. Specifically, the eight disputed domain names [that are identical to Complainant’s mark] … However, the Complainant’s request to transfer the ninth disputed domain name <gianpaolo-dicocco-failed-predictions.com> is denied [because it contains a pejorative]”).

Voys B.V., Voys United B.V. v. Thomas Zou, D2017-2136 (WIPO January 9, 2018) (<voys.com>)
Complainant based in claim for cybersquatting on the following:
(a) The Domain Name has never been used and the webpage to which it has been connected since 2007 indicates that it is for sale;
(b) The Respondent is the registered proprietor of over 2000 domain name registrations and all of them are offered for sale;
(c) It is clear that the Domain Name was registered with a view to selling it at a profit;
(d) The Respondent has refused the Complainant’s offer of USD 3000 for the Domain Name and has indicated that he is looking for a much larger sum.
Concluding with the following statement: “Respondent’s registration of the domain name <voys.com> can therefore be regarded as ‘registration and use in bad faith’ as referred to under Article 4 of the UDRP – ICANN and WIPO Case No. D2001-0903 [Oki Data case].”
It then states: “The domain name voys.com has never been used by Respondent after its registration. Since 2007, this domain name is even offered for sale…. From this, it is evident that Respondent does not have a legitimate interest in the domain name voys.com” to which the Panel (3-member) states:

This is an extraordinary statement. It incorrectly assumes that (1) non-use of a domain name of itself prevents the registrant from acquiring a right or legitimate interest and (2) registration of a domain name for no reason other than to sell it necessarily deprives the registrant of a right or legitimate interest.

The Panel cites Informa Business Information, Inc. v. Privacydotlink Customer 640040 / Domain Manager, Web D.G. Ltd., 2017-1756 (WIPO December 11, 2017) (<pinksheet.com>) in holding RDNH: “With the benefit of experienced intellectual property advisors, the Complainant should have been aware that, in these circumstances, its Complaint could not succeed.”  Music to the ears of “experienced intellectual property advisors”!

Jana Partners LLC v Zhang Si, FA1712001760820 (Forum January 2, 2018) (<janaparters.com>)
What is expected of complainant? Complainant was represented by counsel in what should have been a shoe-in for cybersquatting, but fluffed the assignment. The Panel (over severely?) held that while “Complainant asserts that Respondent uses the disputed domain name with the intent for commercial gain, to defraud Internet users, to obtain goods at Complainant’s expense, or to tarnish Complainant’s marks … it provides no evidence of these assertions and no evidence whatsoever of Respondent’s use of the disputed domain name.” The result? The Panel concludes:

Failure by a complainant to provide evidence of a respondent’s failure to make a bona fide offering or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) is insufficient to support a finding that said respondent lacks rights or legitimate interests in the disputed domain name.  See O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”)

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