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Noteworthy Domain Name Decisions for 2019

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.

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.

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 (it 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.”

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 Complainant’s <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.”

Van der Graaf Inc. v. Privacydotlink Customer 3564326 / DUBAI DOMAINS, D2018-2236 (WIPO January 25, 2019) (<vdg.com>).
The General Data Protection Regulation (GDPR) effective May 25, 2018 will influence Panels determining RDNH because they will recognize that in commencing the proceedings complainants will lack knowledge of respondent until disclosure of redacted personal information and receiving the response. “[P]rior to the submission of the Complaint, the Complainant did not have access to information about the identity of the Respondent, and prior to the submission of the Response, the Complainant could not have been aware of the December 22, 2017 acquisition of the disputed domain name by the Respondent or by the entity that controls the Respondent. In such situation, the Panel finds no evidence that the Complainant was acting in bad faith when it based
its Complaint on the assumption that the Respondent had acquired the disputed domain name in April 2018.”

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.”

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.”

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