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, 2017 can be found here, and 2018 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). An Updated, Revised, and Enlarged Second Edition of the treatise with Index is scheduled for publication Spring 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. Learn more about the treatise and Supplement at Legal Corner Press. Available from Amazon and Barnes & Noble. Review and notices of the book here.
Dialoga Servicios Interactivos, S.A. v. Finlead AG, D2018-2768 (WIPO February 8, 2019) (<dialoga.com>),
DIALOGA predates registration of the domain name by many years, but it is a dictionary word. Even though the domain name was acquired “for sale on the open market” there is no evidence of bad faith registration. Respondent offered proof that buying and selling domain names was part of its business: “The Respondent shows that it holds a portfolio of domain names consisting of dictionary words and explains that it licenses, leases, or sells these.” The Panel accepted Respondent’s evidence and concluded
[T]he disputed domain name has value because it consists of a common word in no less than three languages which are spoken by many millions of people. The word itself is particularly attractive as a domain name, implying as it does both communication and dialogue.
The Panel concluded that “[t]his is the nature of its business.” But to be noted also, in terms of the evidentiary demands, is the Panel’s comment on the evidence: “What is lacking in the Complainant’s case is any demonstration that the Respondent took this action with the Complainant or third-party trademarks in mind and thus registered the disputed domain name in bad faith.”
Wisconsin Emergency Medical Technicians Association, Inc. DBA Wisconsin Emergency Medical Services Association, Inc. (WEMSA) v. Marsha Everts, EMS Professionals, Inc., D2018-2841 (WIPO February 7, 2019) (<emsprofessionals.net>)
“The mere use by Respondent of EMS PROFESSIONALS as a name on a sales catalog related to Respondent’s legitimate business does not establish, without more, that Respondent lacks legitimate interests in using the name EMS PROFESSIONALS for the completely different purpose of selling products online, nationwide, to emergency medical providers, first responders and law enforcement professionals. Again, what is missing is evidence that Respondent’s use of EMS PROFESSIONALS with its online supply services is being done to take advantage of Complainant’s rights in EMS PROFESSIONALS as the name of a publication with a limited distribution.”
TENICA and Associates LLC v. Privacydotlink Customer 2326444 / Kwangpyo Kim, MEDIABLUE INC, D2018-2647 (WIPO January 25, 2019) (<tenica.com>).
Note the emphasis on weak mark and lack of proof of reputation for a term that is also used by other businesses and is also a first and last name. “First, the Panel does not find this to be a case where the disputed domain name comprises a ‘coined’ term which can only have referred to the Complainant’s trademark.”
Second, “Complainant has failed to provide any evidence of the reputation of its trademark TENICA at the time the disputed domain name was acquired in 2013 that would enable the Panel to infer that the Respondent is likely to have been aware of that trademark.”
Ascension Health Alliance v. Prateek Sinha, Ascension Healthcare Inc., D2018-2775 (WIPO January 25, 2019) (<ascensionhealthcare.com>).
No subject matter jurisdiction for trademark infringement. “Complainant has failed to make out a prima facie case of Respondent’s lack of rights or legitimate interests in the disputed domain name. The website to which the disputed domain name resolves appears to offer bona fide healthcare-related services. Indeed, Complainant contends that Respondent provides healthcare management services that are ‘very similar, if not identical’ to those offered by Complainant, but Complainant does not contend that Respondent is offering counterfeit or deceptive services. The base line fact is that Complainant appears to concede that Respondent is in fact offering a real world service via the disputed domain name. Moreover, Complainant has neither alleged nor proved that Respondent imitates Complainant when it offers these services. Although Complainant may have the starting ingredients of an ordinary, trademark infringement case against Respondent, the Complainant has not demonstrated to the satisfaction of the Panel that Respondent is not making a bona fide offering of services. The UDRP is not appropriate to resolve such ordinary trademark infringement claims, which would be better resolved by a court of competent jurisdiction.”
Darryl Davis Seminars, Inc. v. Privacydotlink Customer 656889 / Domain Admin, Abstract Holdings International Ltd., D2018-2238 (WIPO January 21, 2019) (<poweragent.com>
It is not unlawful to have registered a domain name incorporating a generic term for use as PPC or sale. “The Panel also finds that, in view of the circumstances of the case, in particular the common and descriptive nature of the term incorporated in the disputed domain name, the Respondent’s offer for sale of the disputed domain name does not demonstrate that it registered and is using the disputed domain name in bad faith, i.e., with a view to selling it to the Complainant.”
ClearBank Limited v. Privacydotlink Customer 2450865 / Kwangpyo Kim, Mediablue Inc., D2018-2481 (WIPO January 15, 2019) (<clearbank.com>.
The website contained no links to Complainant but Complainant put its business name into the search field in order to fabricate evidence of a link to its business. The Panel agreed that the proof had “been clearly fabricated in an attempt to create evidence of the Respondent’s bad faith” and sanctioned it for reverse domain name hijacking. This is one of three other decided cases in the .org, .com, and .co spaces. There is a .net pending. In the .org, .com, and .co extensions, the registrations all preceded the trademarks and were dismissed.
Westgate Las Vegas Resort, LLC v. Domain Trustees, Domain Trustees UK Limited, D2018-2650 (WIPO January 7, 2019) (<superbook.com)
The domain name has been held by a number of earlier registrants dating back to 1996. “It might perhaps be argued that the Respondent was seeking merely to continue an existing usage of the term in connection with longstanding betting services.” No argument was made for laches,, and in any event, it would not have been effective. The Panel found that “it appears that from its first registration the disputed domain name has been used to promote betting services particularly to customers in the United States in apparent breach of the Complainant’s trademark.”