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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 December 2018.  Important Note: If you 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.

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.”

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.

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.”

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.”

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.”

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).

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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