Noteworthy Domain Name Decisions is a running collection of decisions each year 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, 2018 can be found here, 2019 here, and 2020 here.
Alarming unfamiliarity with UDRP (3/4/21)
HSIL Limited, Somany Home Innovation Limited / SHIL Ltd., Brilloca Limited v. GOTW Hostmaster, Get On The Web Limited, D2020-3416 (WIPO April 4, 2021) (<hsil.com> and <shil.com>. “In sum, the Complainant’s professional representative betrays an alarming unfamiliarity with the UDRP and the two decades of precedent under it, to the point of including the Registrar as a respondent merely for performing its non-discretionary function of registering an available domain name. Such conduct in any court would result in a swift dismissal and appropriate sanctions for wasting the parties’ and the court’s time. This Panel is limited to a find of abuse, which it readily imposes.”
Divergent views (3/23/21)
Pharmactive Biotech Products, S.L. v. HugeDomains.com, D2020-3529 (WIPO March 23, 2021) (<affron.com>)
Divergent views among panelists.
(Majority) If the Respondent had no knowledge of the Complainant or of the AFFRON trademark when it registered the disputed domain name, it cannot have done this in bad faith. If it had conducted a trademark search in the United States, its home territory, it would have found no registration of the mark. The only United States registration of the mark was registered on November 24, 2020 in class 5 for various dietetic substances. The Respondent would have had no cause to question the legality of his registration and planned use of the disputed domain name. There is also no evidence that it has used it in bad faith, as it has not sought to target the Complainant, but has only offered the disputed domain name for sale to the general public without contacting the Complainant. The majority of the Panel finds nothing wrong with offering for sale a domain name which has been registered in good faith, and seeking a price in excess of the costs of registration.
(Dissent) In addition to the fact that the domain name is being offered for a sum in excess of any out of pocket expenses the Respondent can reasonably have incurred in acquiring it, the key point here falls under the failure of the Respondent to conduct a proper due diligence in advance of creating the disputed the domain name. The failure to conduct trade mark searches in advance may be evidence of bad faith within the meaning of paragraph 4(a)(iii) of the Policy
Refiling UDRP with different provider (3/23/21)
Unbiased Ltd trading as Unbiased.co.uk v. Development Manager, D2021-0113 (WIPO March 23. 2021)
There are circumstances under which Panels will access merits in a refiled UDRP complaint but not where there are no new facts to warrant such a review. As the concurring Panel states in this this case
it should not need a citation of the WIPO Overview as authority for rejecting the claim, as it is the practice of most courts and tribunals, as well as common sense, not to entertain repetitive litigation unless the facts have changed or there is some reason why it would be unjust to bar the litigant from bringing the same proceeding again.
The concurring Panel also underscores the consensus on censuring complainants where the complaint constitutes a abuse of the states another consensus Point:
A finding of RDNH should not be made lightly, but in the present case it should be made to mark the Panel’s and, one hopes, the domain name community’s disapproval of parties who flout well-established rules of practice and principle with no valid excuse for doing so. There was no ground advanced why the present proceedings should be allowed although it is a refiling. Indeed, the Complainant has made things worse for itself by not even disclosing in the Complaint the fact that there was a previous proceeding which it lost. Presumably this was done in the hope that no-one might notice the prior proceeding, but they did.
Confusingly similar or similar but not confusing? (3/5/21)
Dr. Reddy’s Laboratories Ltd. v. Direct Privacy- d8d53, Savvy Investments, LLC Privacy ID# 13508974 / Vishnu Vardhan, medi-infotec, D2020-2929 (WIPO March 5, 2021) (DR. REDDE and <drlede.com>).
There is a tendency look ahead and back into the answer to this question. If the facts support registrant is targeting the mark owner or its mark then the finding will be that the domain name is confusingly similar. Assuming mark owner has established it has a right, the threshold for proving confusing similarity low. A further reflection on this issue is presented in a Domain Name Wire piece by Andrew Allemann at https://domainnamewire.com/2021/03/12/is-this-trademark-infringement-or-cybersquatting/. Backing into bad faith is also noticed in Everytown for Gun Safety Action Fund, Inc. v. IGI NA / IGI NA CORP, FA200500 1897076 (Forum June 23, 2020), in which the Panel found that the dominant term in the trademark was “Every”, but actually drew inspiration for bad faith from the totality of facts.
Unregistered and common law rights (3/2/2021)
Whether called “unregistered” or common law the determination of an actionable right is assessed on the same factors. This extends the principle to all mark owners regardless of jurisdiction or whether the law in their jurisdictions recognize unregistered rights. Alstom v. NetSupport AskMySite, AskMySite.com LLC, D2020-3206 (WIPO March 2, 2021) (French company claiming unregistered CORADIA mark challenging <coradia.com>. “It is also of no consequence for the first element analysis that any such trademark may not be registered in the Complainant’s jurisdiction. Furthermore, the Panel finds that the Complainant has established unregistered trademark rights in the CORADIA mark dating from 1999 by virtue of its substantial global activities under such term.”)
Well-known and Famous, but dictionary word mark (2/16/21)
The question in these cases is whether the use infringes the mark, if it does the Panel works backward to find registration in bad faith. In Nike Innovate C.V. v. Contact Privacy, Inc. Customer 1243971962 / Ladinu, D2020-3067 (WIPO February 16, 2021) (<nike.dev>) the Panel held that “[o]n the record presented here, [it] simply cannot make the leap that Complainant urges, essentially on the sheer strength of its famous trademark. The Panel, weighing the record and the Parties’ submissions, does not perceive a sufficient basis on which to disbelieve Respondent’s claim that his purposes are entirely personal and noncommercial.…” This necessarily concludes the matter for this UDRP, although if the domain name is later used in an infringing manner it could return for a second round (“Respondent’s future conduct vis-à-vis the Domain Name might prove relevant to a potential future refiling under the Policy.”)
Change of Logo Appearance or Website Content (2/9/21)
Amazon Technologies, Inc. v. Adam Grunwerg / Finixio Limited, FA2012001924577 (Forum February 9, 2021) (<bitcoinprime.net>). Complainant argument that its PRIME trademark is the dominant word in the domain name. If this were the sole claim, and the domain name registrant was using it in a non-infringing manner, incorporating a dictionary word would not support cybersquatting, but in this case Respondent incorporating an infringing logo following notice from Complaint. “Any changes on the manner used in terms of logo appearance or even website content that may occur following the filing of the Complaint under review are not sufficient to rebut the element of bad faith use, for various reasons, one of them being the very same ability of changing back, at will, to any past or other potentially even more resembling variations on any given time.”)
The infringing logo undercuts Respondent’s alleged good faith, but some care has to be taken with such stark pronouncements. There are changes that are acceptable and others that are not. The Panel in American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Forum July 27, 2010) observed that “[m]odifying such a website … may attenuate the harm to a complainant” but not in that particular dispute. It also observed that Respondents should not be discouraged from “this positive behavior. . . . [T]he fact of a website’s remediation should not create an evidentiary inference adverse to the respondent.”
Close Case: Complainant’s Lack of Evidence (1/21/2021)
Empire Flippers, LLC v. Ansh Gupta / Jamkain Media Ventures, FA2012001925050 (Forum January 21, 2021 (<buysellempire.com>)
“Because the question of Respondent’s rights or legitimate interest in the disputed domain name raised a close question, the Panel wants to be clear about the limitations of this conclusion. The Policy provides a streamlined, efficient administrative proceeding for adjudication of certain domain name disputes. Proceedings under the Policy do not provide the parties with the opportunity to take discovery, and do not provide the Panel with the opportunity to assess credibility through live testimony. For these reasons, the Panel is ill-equipped to make a conclusive finding on whether Respondent’s domain name actually infringes Complainant’s trademark rights. If the parties were to engage in litigation, Complainant might be able to develop sufficient evidence to persuade a fact-finder that Respondent did infringe Complainant’s mark, and this decision does not foreclose such a remedy. However, Complainant has not carried its burden of making that showing on this record. Specifically, Complainant has failed to prove, by a preponderance of the evidence, that Respondent’s use of the disputed domain name to offer brokerage services was not bona fide.”
Accepting informal response (1/21/21)
Advokatfirmaet Danielsen & Co AS v. Steinar Vigdel Kolnes / Solar Harvest Ltd., FA2012001925950 (Forum January 21, 2021 (<advokat-danielsen.com>
Although no formal response was filed, Respondent communicated his contentions to the Forum by email. Pursuant to Rule 10(b) the Panel has taken Respondent’s contentions into account, so as to ensure that each Party is given a fair opportunity to present its case.
Holding clearly cybersquatting domains (1/19/21)
Finwise BV v. Anne-Jan Hempenius, NameAvenue, D2020-3135 (January 19, 2021) (<finwise.com>)
For the reasons given above, the Panel finds that the circumstances indicate that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, within the meaning of paragraph 4(b)(i) of the Policy.
The Complainant has provided evidence showing that the disputed domain name is not the only domain name in the Respondent’s inventory that is identical to a trademark registered in the European Union. The Respondent’s other domain names include <alterra.net>, <caerus.net>, <claritas.net>, <finova.net>, and <mentis.net>, in each of which the operative element is identical to a European Union registered trademark, while at least one, <hylion.com> is identical to the registered trademark “hyliion” but for a typographical error, and others may be similar to registered trademarks. This evidence indicates that the Respondent is, at best, indifferent to the possibility that his chosen domain names – including the disputed domain name – infringe third party trademark rights.
See below 1/15/21 for bad faith. Typosquatting supports bad faith (a per se violation). In Traxys North America LLC v. Joao Mota / Joao MotaInc, 14373-URDP (CIIDRC January 16, 2021) (TRAXYS and <tarxys.com>. “Respondent’s ‘typosquatting’ on Complainant’s strong and distinctive mark, standing alone, is sufficient to establish Respondent’s bad faith intention to confuse Internet users.” Complainant also adduced evidence of “spear phishing.”
“Spear phishing” is defined as targeting customers or associates of the Complainant in an attempt to steal money from the Complainant or its customer. See Pfizer Inc. v. Michael Chucks / Whoisguard Protected, Whoisguard Inc, D2014-0887 (WIPO July 28, 2014), “phishing” is a per se violation of the Policy. No explanation can bring it into the ambit of paragraph 4(c).
What is Bad Faith? (1/15/21)
It is easier to recognize bad faith registration of domain names where marks are well-known and famous but less so as marks weaken to the lower end of the spectrum, to dictionary words and common expressions. Registrants may not have rights or legitimate interests for domain names corresponding to weaker marks, but are they cybersquatting? Typosquatting is an easy example of bad faith, as with <raborthalf.com> and ROBERT HALF. But what about EAT RIGHT and <eatright.fit>?
The Panel in Academy of Nutrition and Dietetics v. syed nafeesa, FA201200 1925287 (Forum January 15, 2021) (EAT RIGHT and <eatright.fit>) may have reached the right conclusion in finding bad faith but the path of its reasoning is incomplete and lazy: “Offering a domain name for sale for a sum in excess of out of pocket expenses is registration and use in bad faith.” While “sum in excess” may be a factor in finding bad faith, it is not conclusive, particularly with weak marks. EAT RIGHT is not exactly stratospheric in strength.
In cases involving weak marks, it would more thoughtful to explaind why in this or that particular case, the only conclusion is bad faith. Panel often infer a respondent’s state of mind based on the totality of circumstances. In LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Titan Bahis, Titanbahis, D2020-3046 (WIPO January 12, 2021) (<lego.rest>), for example, even with a famous mark, the Panel was not content in simply concluding bad faith:
Looking at the totality of the circumstances in this case, and taking into account that the LEGO mark is highly distinctive; that the Complainant and the LEGO mark share a global reputation and goodwill; the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good-faith use of the disputed domain name; the Respondent’s failure to respond to the cease-and-desist letter sent on behalf of the Complainant on August 6, 2020; that the Respondent has used a privacy service to conceal its identity on the published WhoIs; that the disputed domain name is identical to the Complainant’s trademark, consisting of the mark in its entirety with no additional elements; and that it is most implausible given the distinctiveness and reputation of the LEGO mark, that the disputed domain name could be put to any unauthorized good faith use; this Panel finds that the passive holding of the disputed domain name by the Respondent amounts to use in bad faith for the purposes of the Policy.
2nd Amended Complaint to add a domain name (1/8/21)
It is not unusual for providers to invite complainants to amend their complaints following registrar identification of registrants, but it is unusual for Panels to accept amendments to include other domain names, where there is no concrete proof of any relationship between the two registrants.
In Seasonal Comfort Company, Inc. v. Irina Inkina, D2020-2567 (WIPO January 8, 2021) (SEASONAL COMFORT and <seasonal-comfort.com>) the Panel reviewed the facts and concluded that “[t]he fact that the content of Respondent’s website has been moved to Mr. Klyuev’s website is circumstantial evidence that there is some relationship between Respondent and Mr. Klyuev, but on this record, it is not strong enough evidence to justify adding Mr. Klyuev and his domain name to this pending proceeding given the disruption that such an amendment, after commencement of the proceeding, would cause to this pending matter.”
Panel do allow amendments where the evidence establishes relatedness and alter ego.