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 August/September 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.
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 (Forum January 19, 2018) (<dme.com>)
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? Split reasoning on right or legitimate interest. Majority ruled for and dissent against. But 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.”)