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 this 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 with Foreword by Neil A. Brown QC was released on July 10, 2019 and is now available. 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. Available from Amazon and Barnes & Noble. Review and notices of the book here.
FPK Services LLC DBA HealthLabs.com v. Contact Privacy Inc. Customer 1241257718 / Michael Gillam, D2019-1483 (WIPO October 10, 2019) (<healthlab.com>)
Without the unsolicited supplemental materials submitted by Complainant well after the Complaint was filed and the Response was received, the Panel was prepared to conclude that Complainant had failed to prove that it has rights in the claimed mark “HEALTHLABS.COM”. The mark is, at best, descriptive of the services that Complainant provides. The USPTO made this finding when rejecting Complainant’s application to register “HEALTHLABS.COM” on the USPTO’s Principal Register. Indeed, in its rejection of the application, the USPTO pointed out that several third parties were using the term “health labs” in a descriptive sense.
If a mark is merely descriptive, it lacks inherent distinctiveness and the mark owner must generally demonstrate that, despite its descriptiveness, it has acquired distinctiveness, i.e., it has acquired, through use in commerce, secondary meaning among consumers as a source identifier of the goods or services offered by the mark owner. In the original Complaint, Complainant made no showing whatever that its purported mark HEALTH LABS had acquired secondary meaning among consumers.
Nationwide Mutual Insurance Company v. Privacy Administrator, Anonymize, Inc. / “Manu Miglani”, Privacy Gods Limited / Epik Inc., D2019-1816 (WIPO October 10, 2019) (<nationwideexcessandsurplus.com>)
Registrar/Domain name portfolio holder called out for bad faith conduct (not just cybersquatting): “As both the Registrar and the registrant, it can reasonably be assumed that the Respondent profited from the PPC use of the parked Domain Name and also stood to gain from any eventual sale of the Domain Name in the related domain name marketplace. In any event, as the registrant, the Respondent remains responsible for the lawful use of the Domain Name, as indicated in the Registrar’s own Registration Agreement:
You may not use the Site or the Services … to violate the rights of any third parties, including, but not limited to, trademark, naming or publicity rights …
The Respondent as a registrar and domain name manager should be well aware of these obligations, yet there are indications of a persistent carelessness in its approach to the trademark rights of others.”
Pocketbook International SA / Batmore Capital Ltd. v. Domain Admin / SiteTools, Inc. FA1908001857174 (Forum October 3, 2019) (<pocketbook.com>.
As the Panel says: “This is a rather unusual UDRP case” because here “Respondent has owned a corresponding trademark registration since 2012 … nearly 10 years ago.” Further: “The parties are engaged in different fields of business. Complainant’s earliest trademark registration is subject to a disclaimer of the textual element ‘pocketbook’. Respondent also argues that ‘pocketbook’ has a descriptive meaning in relation to financial matters which mitigates or precludes any finding of bad faith. These are all factors which mitigate a finding of bad faith. In such circumstances, the Panel would require to see very clear evidence of bad faith on the part of Respondent if the Panel were to find in favor of Complainant.”
Tergus Pharma, LLC v. Domain Administrator, DomainMarket.com, D2019-1787 (WIPO September 24, 2019) (<tergus.com>.
Earlier registered domain name; later acquired trademark. However, as the Panel points out, now that a mark owner has made itself known the value of the domain name is diminished: “The Panel notes that at the time of this Decision, the Respondent, for whatever reasons, mentions the Complainant on the web page advertising the Domain Name on the Respondent’s website. Far from enhancing the value of the Domain Name, this may serve to warn a prudent bidder that it could be buying a lawsuit or a UDRP action” (emphasis added).
Armor v. Ozguc Bayraktar, Rs Danismanlik, D2019-1803 (WIPO September 17, 2019) (<kimya.com> [A generic Turkish word meaning “chemistry” in English], Complaint denied and RDNH.
On the alleged bad faith for overpricing the value of the domain name the Panel points out that “the business of monetizing domain names consisting of generic terms can be legitimate and is as such not a convincing indication of bad faith. This obviously still applies if the requested sales price appears too high from the point of view of the prospective buyer, here the Complainant.
And, in support of RDNH the Panel quotes from a Complainant’s documents: “[T]he provided domain name value report provided by the Complainant (cf. Annex 7 to the Complaint), it is explicitly stated under no. 2 “Meaning of the term” that the disputed domain name is a generic word in the Turkish language. The report even points out that the owner might probably have “registered this domain name due to its generic meaning and for monetization purpose”. Hence, the Panel is convinced that the Complainant was or at least must have been aware of the generic meaning of “kimya” in the Turkish language when filing the Complaint. “
Great American Hotel Group, Inc. v. Domains By Proxy, LLC / R Greene, D2019-1638 (WIPO September 2, 2019) (<greatamericanhg.com>)
Another example of a person authorized to acquire a domain name; is terminated and Complainant does not have control of the domain name. “He listed himself as the registrant, at the company’s address, but did not list an organization, and while this may raise a question, and his failing to do so is certainly not a corporate domain management best practice, there is no evidence that he was directed to do so or that the Complainant or its digital marketing consultants paid particular attention to the formalities of the Domain Name registration.” Ergo, bad faith use, not bad faith registration; complaint denied.
Capital One Financial Corp. v. AWT / Joe M, FA1908001855882 (Forum September 2, 2019) (<capitalonedatabreach.com>)
A thought that if acted on would undermine a legitimate interest defense is not evidence against respondent if the thought remains incipient: “Respondent did not say that he would do these things, only that he thought he might, and as noted above, he has not followed through with these thoughts. What Complainant states as a certainty is actually a mere possibility.” (Emphasis added).
Kentech Group Limited v. Qtechweb, D2019-1609 (WIPO August 30, 2019) (<kentech.com>.
Evidence necessary to support unregistered mark: “What is missing is anything showing use of the KENTECH mark or the way the KENTECH mark was used by Complainant, the extent and scope of that use, and the degree of actual public recognition of the KENTECH mark. For example, while Complainant claims to have registered the domain name <kentech.ie>, Complainant has not submitted any screenshots showing use of <kentech.ie> domain name in connection with a website. In view of these deficiencies, the Panel cannot conclude that Complainant had the strong common law or unregistered rights it claims it developed by November 2003, when the disputed domain name was registered. At best, from what is before the Panel it appears that Complainant had some common law or unregistered rights in Ireland in November 2003, where Complainant is based.”
BioSafe Systems LLC v. Donald Clark, FA1907001853762 (Forum August 24, 2019) <biosaphe.com>
Respondent’s domain name (and trade name) is a homophone of a stylized trademark. “The only distinguishing feature of Complainant’s trademark is the stylization of the word ‘BIOSAFE’ and it is very likely that this is the principal reason Complainant was able to secure registration with the USPTO of what is otherwise a descriptive mark. Likewise, the substitution of the letter ‘f’’ by the digraph ‘ph’ is the only point of interest of the homophone, ‘BIOSAPHE’. The Panel continues: “the stylization [shows] ,,, an oval shaped device [replacing the] … missing letter, ‘O’. The Panel is prepared in this instance to treat the registered mark as effectively a word mark, BIOSAFE SYSTEMS LLC.” Nevertheless, “[d]espite the similarity of the trademark and the disputed domain name, both terms are obvious choices for the parties’ goods of interest.”
AVK Holding A/S v. BEST WEB LIMITED, CAC 102513 (ADR.eu August 23, 2019) (<avk.com>)
Deficiency in complainant; not remedied; complaint dismissed. The Panel explained that “Complainant’s Complaint in this proceeding does not comply with this formal requirement … [of including] submit[ing] itself to the applicable Mutual Jurisdiction…. [A]s no Mutual Jurisdiction is specified “above” in the Complaint (or anywhere else in the case file), this covenant is without any material effect. As a result, the Complainant has not submitted to a Mutual Jurisdiction as required by Section 3(b)(xii) of the Rules [and is dismissed].”
Chesterfield Valley Investors, L.L.A dba Gateway Classic Cars of St. Louis v. Brock Winters, . D2019-1380 (WIPO August 16, 2016) (<gatewayclassiccars.info>).
In the context of a dispute over unwelcome criticism and commentary, responses that could under other circumstances be construed as “evidence of an illegitimate intent to extort money … while hiding behind a free speech argument, given the broader apparent history between the parties … [is] more likely a ‘knee-jerk reaction’ (albeit arguably an ill-advised one).” However, this is not dispositive in complainant’s favor “in view of the broader facts and circumstances that have been presented.”
Facele SPA v. Jason Owens, D2019-0140 (WIPO July 28, 2019) (<facele.om>. Denied).
Panel explains (perhaps the most important pointer to mark owners)” “[I]t is for the Complainant to prove its case, not for the Respondent to prove his defence.” Even if Respondent’s explanation “not entirely straightforward, [it] is [not] so implausible as not to be believed.”
Einwohnergemeinde Solothurn, Verein “Region Solothurn Tourismus”, Verein “Kanton Solothurn Tourismus” v. M.A. Stenzel, D2019-1164 (WIPO July 25, 2019) (<solothurn.com>. Denied).
The Report of the Second WIPO Internet Domain Name Process declined to recommend specifically extending protection to geographical terms as such under the UDRP.” Panel notes that “[u]nder the UDRP … it has generally proven difficult for an entity affiliated with or responsible for a geographical area (which has not otherwise obtained a relevant trademark registration) to show unregistered trademark rights in that geographical term on the basis of secondary meaning.”
Baylor University v. James Perry / GradVentures, LLC / Registration Private / Domains By Proxy, LLC, FA1906001847203 (Forum July 23, 2019) (<baylorfanatic.com>, <baylorgrad.com>, <bearsgrad.com>, <bugrad.com>, and <bigbearsfan.com>) (Respondent appeared and argued that “the disputed domain names were all registered in good faith, with the purpose of offering vanity email address graduates of schools having Baylor-formative or Bears-formative names (or mascots) associated with their school).
This is not a particularly noteworthy decision, but it does home in on a particular use that fails to support a right or legitimate interest: redirecting to a website promoting respondent’s own business. Four of the domain names “redirect[ ] to a vanity email address creation website, while <baylorgrad.com> does not resolve to any substantive content.” The Panel explains that “use of a disputed domain name to attract Internet users and redirect them to a business venture unrelated to the Complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).”
2 Decisions on unsatisfactory proof of common law rights, Numerix and Aurora:
Numerix LLC v. Dagmar Brebock, FA1906001846731 (Forum July 25, 2019) (<nurnerix.com>. Represented by counsel)
“Proof of such common law rights becomes the critical aspect of these proceedings and in that regard the single submission in the Complaint is that: “Our domain name Numerix.com has been registered and in use since at least 1998 with corporate formation in 1996.” The Panel continues: The only evidence related to that submission is a copy of WhoIs record for Complainant’s domain name <numerix.com> showing its creation on January 10, 1996. There is no evidence of use of the asserted trademark.”
Aurora Cannabis Inc., Aurora Marijuana Inc., Aurora Cannabis Enterprises Inc. v. Byron Smith, D2019-0583 (WIPO July12, 2019) (<auroradrops.com>. Represented by counsel)
High level of proof to establish common law rights. Not sufficient merely to assert a claim. “Complainants’ proof of common law rights in AURORA was deficient for purposes of this proceeding. If there was indeed common law use of the AURORA DROPS at any relevant time by the Complainants, proof of that use was also deficient. This may be a function of the fact that the marijuana market in Canada was only operational at full scale beginning in October, 2018. In any event, the Complainants’ evidence of common law rights has not satisfied the Panel that there was a substantial reputation as of April, 2017, when the disputed domain name was registered. The Complainants’ belated attempt to register AURORA DROPS has only served to muddy the waters.”
3 Decisions on acquiescence of registration of domain name, Forbo, NYX Development, and Pennsylvnia University
1. Forbo Financial Services AG v. Ashrad, D2019-1203 (WIPO July 16, 2019) (<sieglinggulf.com>. Represented by counsel
Failure to submit evidence of bad faith, although sufficient for use in bad faith. The problem is that the domain name was apparently registered with Complainant’s consent. “Although the Complainant has provided ample evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of / and the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Name, given the lack of evidence regarding clear registration of the Domain Name in bad faith, the Panel finds that the Complainant has not satisfied the third requirement under paragraph 4(a)(iii) of the Policy.”
2. NYX Development, S.A. de C.V. v. Media Insight, D2019-0897 (WIPO July 15, 2019) (<nyxcancun.com>, Represented by counsel).
“[T]here is no evidence that the Complainant has consented to the registration and use of the disputed domain name by the Respondent, but assuming it was aware of such registration there is no evidence that it has objected to the same either – the emails from the Complainant to the Respondent from 2016 do not contain such an objection or indeed any statement that the Respondent had engaged in any conduct that was not acceptable to the Complainant.”
3. The Pennsylvania State University v. MARK LAUER / KEYSTONE ALTERNATIVES, FA1906001847529 (Forum July 29, 2019) (<gopsurv.com>.
“The Panel therefore accepts the principal submission of the Respondent that the Complainant by its conduct, including via the agency of PSSP, authorized the Respondent to offer its services at PSU athletic events using the domain name that incorporates the Complainant’s PSU trademark and acquiesced in the Respondent doing so.”
LTTB LLC v. Redbubble, Inc. 18-cv-00509-RS (ND CA July 12, 2019)
What is registrable? And, even if registrable can trademark holder prevent others from using the term?
“No one suggests puns are copyrightable or patentable. This case presents the question of whether a pun may be protected under trademark principles. The answer is clear: while a source-identifying trademark may embody a pun, no one can claim exclusive rights to use the pun merely by printing it on t-shirts, other ‘[w]earable garments and clothing,’ ‘[p]aper for wrapping and packaging,’ or ‘tote bags,’ or similar products and calling it a ‘trademark.’ Even if a trademark embodying a pun is otherwise enforceable where there is a likelihood of source confusion, the trademark holder cannot prevent others from using the pun in contexts that do not imply source.” (Emphasis added).
Interesting Massachusetts Appeals Court decision, July 12, 2019: Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. michael Meehan, 18-P-325 (July 12, 2019) affirming trial court’s dismissal of Massachusetts common law trademark infringement claim—“In Massachusetts, the test for common law trademark infringement is the same as under the Lanham Act”. UDRP complaint previously denied Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. michael Meehan,: FA1701001715122 (Forum March 9, 2017) (ORDER MY OIL and orderyouroil.com>).
Epic Games, Inc. v. Host Master / 1337 Services LLC, FA1906001846617 (Forum July 10, 2019) (<fortnite.events>, <fortnite.games>)
The trademark FORTNITE is a misspelling of a dictionary word (“Fortnight”); the question is whether the registration of the misspelling is a clue to Respondent’s intentions? Panel: “Here, Complainant has provided the Panel with screenshots of Respondent’s resolving domain names that show Complainant’s marks prominently being displayed in hopes of confusing internet users that an affiliation exists between Respondent and Complainant.”
Farrer & Co LLP v. FARRER DOT COM LIMITED, D2019-1010 (WIPO July 4, 2019) (<farrer.com>
Footnote encapsulating Neil Brown’s comment on laches is the clearest possible account of when it may be applied: “[A]lthough there are decisions of UDRP panels to that effect, there are also a series of decisions, some of them unanimous decisions of three person panels, which have decided that laches may be considered and that the application of that principle may well influence the result of the proceeding. Indeed, delay on the part of a complainant in enforcing its rights, whether it be described as laches or in some other way, may give rise to a right or legitimate interest or negate what otherwise might be a finding of bad faith.”
And when it does not need to be: “In the present case, the Panel has been able to decide the case by reference to substantive issues and does not need to make reference to laches or delay.”
National Overspray Removal, LLC v. jeff suggs, FA1906001846645 (Forum July 2, 2019) (<nationaloversprayremovalservice.com>
The parties are competitors, but Complainant’s trademark application indicates a first use in commerce a month later than the registration of the domain name. “[T]here is no claim by Complainant nor any evidence in the record that the Respondent opportunistically anticipated the Complainant’s trademark by registering the disputed domain name.” Thus, as a UDRP issue the complaint must be dismissed because if the domain name registration predated the mark there can be no registration in bad faith. The parties are also in litigation for trademark infringement.
Pet Plan Ltd v. AD Burns, D2019-0755 (WIPO June 24, 2019) (<rxpetplan.com>)
Three things to observe: 1) the phrase “pet plan” while distinctive in a trademark sense is a common phrase; 2) it qualifies as a mark for its acquired distinctiveness; no one would ever accuse it of being inherently distinctive; and 3) Respondent is found to have actually offered Rx services before it could plausibly have had any knowledge of Complainant’s mark: “Respondent has provided evidence, to some extent acknowledged in the Complaint, demonstrating a prior use of the disputed domain name that is consistent with its meaning as a descriptive phrase for drug prescription plans for pets.”
Lakes Gas Co. v. Domain Administrator, DomainMarket.com, D2019-0830 (WIPO June 21, 2019) (<lakesgas.com>)
Not an outlier decision. Usual or common combinations of words goes to first to register versus the unusual combination with established market associations does not. “[T]he Panel does not disagree [‘lakes’ and ‘gas’] are both generic words. But this specific combination of words together has no real descriptive or generic meaning, and really only has meaning in the context of Complainant’s trademark.” The Panel concludes that “[i]n order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”)
Wickes Limited v. Privacy.co.com, Inc, D2018-0962 (WIPO June 21, 2019) (<wickes.com>)
When long-registered domain names are forfeited, particularly where the parties reside on different continents or in different regions, and regardless whether the domain names are identical or confusingly similar to marks or respondents default, it has to be asked what the evidence is for awarding them to complainants? The decision in this case falls substantially short of explaining the evidence for transferring a 24 year-old domain name registered by a U.S. resident to a UK business. See below Brooksburnett Investments Ltd. v. Domain Admin / Schmitt Sebastien, D2019-0455 (WIPO April 16, 2019) (<incanto.com>. 16 years, complaint denied)
Gas Monkey Holdings, LLC v. Tony Anastasia, FA1905001844555 (Forum June 12, 2019) (GAS MONKEY GARAGE and <fartmonkeygarage.com>. Complaint denied)
Right decision for the wrong reason. The domain name is certainly confusingly similar to the mark (although the Panel finds it is not!) but it would have been premature to find bad faith. In a humorous way, the domain name does suggest Respondent is ribbing Complainant but there is no concrete evidence of that. In the Panel’s humorless assessment “fart” and “gas” refer to different experiences; she rejects the words refer to flatulence. However, there’s clearly more going on here than the Panel’s exposition of “fart” and “gas.”
AutoZone Parts, Inc. v. Li Wenhan, FA1904001840813 (Forum June 12, 2019) (<zone-auto.com)
Tarnishment: Respondent uses the domain name to display pornographic images and other sexually explicit content. See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum January 31, 2014): “Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the … domain name to tarnish Complainant’s … mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”
John Summers v. The Chronicle of Higher Education, D2019-0682 (WIPO May 26, 2019) (<linguafranca.com>
Misplaced argument based on a rejected theory advanced in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 10, 2010). “The Complainant argues that bad faith should be found based on the Respondent’s renewal of the disputed domain name on January 3, 2019, at which time the registration of the Complainant’s mark was pending.” This is not a winning argument. UDRP panels have “consistently … held that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of bad faith.”
Slingshot Transportation, Inc. v. InBok Lee, FA1904001841279 (Forum May 25, 2019) (<slingshot.info>.
“[T]he Respondent was using the Domain Name to point to pay per click links relating to slingshots the weapon. There is no indication that it has been used to target the Complainant or for any other use except in relation to the weapon commonly known as a slingshot. There is no evidence the Domain Name has been used in relation to transportation services or has been pointed to commercial web sites using the goodwill of the Complainant in the mark SLINGSHOT for transportation services to attract interest on the Internet. In the opinion of the Panel, this is an ordinary and fair use of the Domain Name. Since slingshot is an ordinary generic term and it is being used in its generic sense, the fact that the Domain Name has been offered for sale in these circumstances is also legitimate and fair.”
State Farm Mutual Automobile Insurance Company v. Brian Christiansen, FA1904001840727 (Forum May 22, 2019) (<bigstatefarmagent.com>)
This is one of a small group of domain names in which the Complainant’s mark is recognizable within a string that could (as in this case) as easily be read as “‘Big State’ Farm Agent.” The others include: Philipp Plein v. Kimberly Webb, D2014-0778 (WIPO July 30, 2014) (PHILIPP PLEIN and <peopleincasinos.com> [denied]; Travellers Exchange Corporation Limited, D2010-1056 (WIPO July 29, 2010) (TRAVELEX and <travelexpensive> [denied] and <travelexexpensive> [granted]; Tesco Stores Limited v. Mat Feakins, DCO2013-0017 (WIPO October 4, 2013) (TESCO and <tes.co> [granted])
Amadeus IT Group, S.A. v. WhoisGuard, Inc., WhoisGuard, Inc. / PAVEL TREMBLAY, TREMBLAY WORLDWIDE CORPORATION, D2019-0744 (WIPO May 15, 2019) (<amadeus.host>)
While the SLD in this case is a personal name that would generally be thought of as generic and lawful for registration, here the gTLD is “host” which describes the business Complainant is in. Panel points out that AMADEUS is a well-known trademark … where Complainant is active in the field of hosting services…. [Thus,] the use of the term ‘host’ as gTLD extension increases the confusion.” The gTLD suggests that Respondent had knowledge of the mark and was targeting Complainant. This is supported by Respondent “us[ing] the disputed domain name to redirect to the Complainant’s actual main website. This implies also bad faith: such behavior includes the risk that the Respondent may at any time cause Internet traffic to redirect to a website that is not that of, or associated with, the Complainant.”
Several recent decisions denying complaints involving dictionary words alone or combined, include “incanto,” “dr muscle,” “the sun,” and “power agent.” <Dailymailnews> which is also a generic string was transferred because the evidence was sufficient to support abusive registration.
Sinclair Finance Company v. Nathaniel Young / SumValley, FA1903001835985 (Forum May 3, 2019) (SUN VALLEY and <sumvalley.com>,
Timing and lack of pretextuality can be, and in this case, are the essential factors. “Here, Respondent has provided evidence of use and substantial preparations for use predating notice of the dispute. Respondent adopted and registered SumValley, LLC as a business name. Respondent subsequently obtained an employer identification number from the Internal Revenue Service; opened a bank account; and contracted with and invoiced customers, all under the SumValley, LLC name. Although these actions were taken subsequent to the registration of the disputed domain name itself, there is no indication that they were pretextual, and the Panel considers Respondent’s explanation for the selection of the business name and corresponding domain name to be entirely plausible.’
Brooksburnett Investments Ltd. v. Domain Admin / Schmitt Sebastien, D2019-0455 (WIPO April 16, 2019) (<incanto.com>)
While laches is not formally applied, lapse of time from domain name registration has consequences, particular as the second level string declines to dictionary words. But, also there is a question of reputation. Present reputation, however exulted, is not probative of reputation when the domain name was registered. “The fact that the Complainant now holds numerous trademarks in many countries does not mean that the Complainant’s INCANTO mark is necessarily ‘world-famous’ [then or now], much less that it was ‘recognized throughout the world’ at the relevant time, 16 years ago, when the Respondent registered the Domain Name.” “Incanto” is a dictionary word.
Dr. Muscle v. Michael Krell, FA1903001833036 (Forum April 19, 2019) (<drmuscle.com>.
Particularly interesting here is that Respondent did not actually conduct any search at the time of registration, but the “the components of the domain name, “Dr.” and “Muscle”, are common terms.” “One fact that does give the Panel some pause is that Respondent, as a domain name speculator, does have some obligation under Paragraph 2 of the Policy to ensure that his domain name does not infringe or violate a third party’s rights. Respondent submitted evidence purporting to prove what a Google search in December 2018 might have shown; as discussed above, Complainant persuasively refutes the accuracy of those searches. What Respondent does not say is that Respondent actually did such searches, or took any steps to meet his obligations under Paragraph 2.” Nevertheless, Complainant has the burden of proving registration AND use in bad faith.
Micro Electronics, Inc. v. Shawn Downey / Sensible.Domains, FA1902001829812 (Forum April 11, 2019) (<micro.center>.
“Respondent argues that it is entitled to register and hold a domain name for sale. The Panel generally agrees. However, while Respondent is offering the Disputed Domain Name for sale, the Disputed Domain Name (is being confusingly similar to Complainant’s Mark) cannot be used to resolve to a website on which is presented active hyperlinks to Complainant’s competitors.”
News Group Newspapers Limited v. Privacydotlink Customer 2383026 / Blue Nova Inc., D2019-0084 (WIPO April 10, 2019) (<thesun.com>)
Panel found reverse domain name hijacking. The reasoning is contained in the following finding: “The Complainant has not presented any compelling evidence for the alleged bad faith on the part of the Respondent. To the contrary, the Respondent’s evidence which is not contradicted by the Complainant establishes that the disputed domain name was registered because it referred “to the star that our planet orbits” in our solar system and that the Respondent believed no party could claim exclusive rights in the word “sun”. In the circumstances of this case, the Panel finds it highly unlikely that the Respondent had the Complainant in mind when it registered the disputed domain name. Even if the Respondent knew about the Complainant’s trademark rights, the Complainant was anonymously bidding to purchase the disputed domain name for a very high amount (USD 300,000) and doubled the bid when it “came out” and offered USD 600,000 for the disputed domain name. This alone demonstrates the Complainant’s full awareness that the Respondent had a legitimate interest and was not acting in bad faith when it registered and was using the (highly generic) disputed domain name.”
Tambour Ltd v. Alexander Lerman, D2019-0229 (WIPO April 5, 2019) (<tambour.com>.
“The correspondence exchanged between the Parties prior to the dispute shows that it was initiated by the Complainant and that the Respondent did not offer the disputed domain name specifically to the Complainant but only indicated a price in response to the Complainant’s question about a possible sale of the disputed domain name. In its response to the Complainant, the Respondent stressed out that its valuation of the disputed domain name was based on its dictionary meaning in the French language. The Panel does not see how this exchange of correspondence could support a conclusion that the Respondent has targeted the Complainant or engaged in an illegitimate activity. It is well accepted that acquisitions of domain names by domain name investors would normally be legitimate as long as no third party trademarks are targeted.”
Groupement des cartes bancaires v. Domain Administrator, Coinbase, Inc., D2019-0263 (WIPO April 2, 2019) (<cb.markets>. RDNH denied
Respondent did not use the disputed domain name as a “public-facing service such as a website.” Panel held that “the fact that the use was not open to public inspection is a factor which must be taken into account in weighing the appropriateness under the Policy of the Complainant’s decision to bring the Complaint.”
Air Serv International, Inc. v. Stu Willcuts, FA1902001831670 (Forum March 31, 2019) Complainant argued that <alserve.org> was confusingly similar to its <airserv.org> domain name, but failed to offer any evidence that it had a mark. Respondent did not appear.
Emerson Elec. Co. v. Emerson Quiet Kool Co., C.A. No. 17-1846-LPS (D. Del., 2019) (<emersonquiettool.com>. Dismissed with permission to amend complaint).
Illustrates the requirement for alleging facts that “support a ‘reasonable inference’ of bad faith intent. “Plaintiff alleges that ‘Defendants registered the Infringing Domain Name with the bad faith intent to profit from the goodwill Emerson Electric has developed in the EMERSON Marks’…. However, Plaintiff’s allegation is merely a conclusory, speculative, bald assertion, lacking any ‘factual content’ to support a ‘reasonable inference’ of bad faith intent.”)
Beenverified, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA1902001831258 (Forum March 20, 2019) (<benverified.com>. Default.
Illustrates the characteristics of a strong mark composed of dictionary words, when the combination is surprising or inventive, that the words would not be expected to be combined. The typosquatting by omitting “e.” makes no difference. The combination of words without the typosquatting is surprising; omitting an “e” does not creat a distinctive new word. Differs from the illustration below with “daily”, “mail”, and “news.” “Daily Mail” is not surprising but it is a well-known, even famous combination in its niche, but adding “News” supports an inference of abusive registration, that it was registered and is being used to invoke a famous brand thereby taking advantage of its magnetism.
Wix.com v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Luciana Gomes, D2019-0264 (WIPO March 20, 2019) (<wixlinks.com>. Default
The domain name is confusingly similar and Complainant has rights but it fails to understand that it must allege and prove its contention of cybersquatting. Here, it “allege[s] no facts (and provide[s] no evidentiary basis) on which the Panel could conclude that Respondent targeted Complainant’s WIX mark and used it in bad faith within the meaning of the Policy. The Complaint fails.”
Mobisy Technologies Private Limited v. Ibrahim Kazanci, D2019-0273 (WIPO March 6, 2019) (<bizom.com>.
The anomaly of having a mark but no actionable claim. “At the time the Domain Name was registered, there simply was no BIZOM mark out there to target or infringe.”)
Assa Abloy Entrance Systems AB v. Murat Kara, D2019-0122 (WIPO March 5, 2019) (<mockdoor.com>)
Interesting about this dispute is the paragraph 4(b)(iii) violation. Complainant is the successor in interest to an international business building large doors; it acquired the assets including the intellectual property of its predecessor. Panel concludes: “On the evidence, the Respondent’s intention is found to be an attempt to attract former clients of Mock Doors to the website of the disputed domain name by confusion with the Complainant’s trademark, in the expectation that at least some visitors will follow the link to “www.shipyarddoor.com” and then deal with the Respondent in place of the Complainant. The Respondent’s conduct is found to amount to an intention to attract Internet users for commercial gain by confusion within the meaning of paragraph 4(b)(iv) of the Policy, and further found likely to be disruptive to the business of the Respondent’s competitor, the Complainant, within the contemplation of paragraph 4(b)(iii) of the Policy.”
Rosetta Stone Ltd. v. Digital Privacy Corporation / Stuart Thomas, D2018-2322 (WIPO February 27, 2019)(<rosettastone.app>, transferred over dissent)
Majority erroneously extends the Telstra principle of inconceivability to generic terms; it was intended for application to well-known and famous marks (Rosetta Stone is only well-known in its niche; Respondent is also a niche servicer but in a different market).
Associated Newspapers Limited v. Makhdoom Babar, Mail Group, D2019-0049 (WIPO February 25, 2019) (<dailymailnews.com>.
Assessing credibility: “In proceedings under the Policy, where there is no formal discovery or disclosure process, no opportunity to cross-examine witnesses under oath, and so forth, determinations of a party’s credibility are not always easy, and a panelist is often left with nothing more than the allegations by the parties, the documentary evidence placed into the record, points of common knowledge, and the application of logic, experience, and common sense. In this context, a party who makes an untrue statement, or offers an internally inconsistent set of allegations, or fails to corroborate with documentary evidence an assertion that can be easily corroborated if true, that party runs the risk of impairing its credibility in general.”
Responding or not to cease-and-desist notice: “[In the] Panel’s experience, someone using a domain name in a non-infringing manner and in furtherance of a legitimate enterprise would have responded to a cease-and-desist letter by asserting its bona fides. Respondent’s failure to do so here undermines its claim of legitimacy.”
PLAINWELL OVERSEAS CORP. v. NameTrust, LLC. CAC 102207 (ADReu February 22, 2019) (<options.events>)
More on dictionary words: “Despite the Complainant’s assertions, the Panel finds that the term ‘options’ is a dictionary term, and that its plural form does not exclusively connote the Complainant. The notion that the word ‘options’ in plural in and of itself denotes the Complainant simply does not hold water. As such, the evidence on record indicates that it is more likely than not that the domain name was registered in light of its dictionary meaning, for use in connection with the Respondent’s link-shortening services forming part of the Respondent’s domain name portfolio.”
Toner Connect, L.L.C. v. Privacy Protect, LLC / Realogue Corporation, D2018-2829 (WIPO February 21, 2019) (<tonerconnect.com>}
Panel did not believe Respondent’s assertion of good faith lawful registration, and it is clear why: “Given that the evidence submitted shows that Respondent’s sole owner and president is a direct competitor of Complainant, it is highly likely that Mr. Steffens knowingly registered or acquired the disputed domain name based on the TONER CONNECT mark and then started using the disputed domain name to gain a competitive advantage over Complainant.”
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. “Respondent has satisfied the Panel that it registered the disputed domain name for its inherent value as a domain name incorporating a common descriptive term, as part of its business as an investor in such domain names.”
CyberRiskPartners, LLC v. Drew Bartkiewicz / Drew, FA1812001821394 (Forum January 17, 2019) (<cloudinsure.com>
“Complainant fails to make any assertions or produce any evidence under Policy ¶¶ 4(c)(i) or (iii). Failure to make assertions or produce evidence may preclude a complainant’s claim under Policy ¶ 4(a)(ii). See Larry S. Nichter, M.D. and Jed H. Horowitz, M.D., a Medical Corporation, DBA Pacific Center for Plastic Surgery v. DOMAIN ADMINISTRATOR / THOUGHT CONVERGENCE, INC., FA 1702547 (Forum Jan. 3, 2017) (finding for respondent when complainant failed to adequately allege respondent’s lack of rights and legitimate interests in the disputed domain name); see also Tech Traders LLC / David Page v. Insuladd Environmental Products, FA 1738720 (Forum Aug. 3, 2017) (respondent had overcome complainant’s contentions under the Policy, because complainant failed to make the required prima facie showing of respondent’s lack of rights and legitimate interests in the disputed domain name).”
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.”