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, 2018 can be found here, and 2019 here.
In Loco Tecnologia da Informação S.A. v. Perfect Privacy, LLC. / Dermot O’Halloran, ZZG Ltd, D2019-2738 (WIPO March 24, 2020) (<inloco.com>.
Complainant’s attempt to dismiss proceeding “without prejudice” opposed and case decided with reverse domain name hijacking: “Respondent has raised justifiable objections regarding whether the termination should be with prejudice and whether Complainant has engaged in reverse domain name hijacking. Based on its review of the file and the history of matter, the Panel determines that Respondent is entitled to a decision on both issues raised by Respondent.”)
Garcia Carrion, S.A. v. Patanegra Soft S.L. / Antonio Jesus Gil San Julian, FA2002001881868 (Forum March 10, 2020)
The first question is, does complainant have rights? If it cannot demonstrate that it does, it will not have standing to maintain the UDRP proceeding. The Complainant “in this case does not appear to be the owner of the cited trademark registrations…. Therefore, the Panel finds that Complainant has not demonstrated its rights in the PATA NEGRA mark per Policy ¶ 4(a)(i) and thus lacks standing to bring the present case.”
Aktsionernoe Obshchestvo, Kontsern Radioelektronnye Tehnologii v. Titan Networks, Domain Hostmaster, D2019-3170 (WIPO February 27, 2020) (<Kret.org>
Octogen line of cases are no longer “good law”; well and truly dead. “As to the Complainant’s reliance on the Octogen Case and other similar decisions in connection with so‑called ‘retroactive’ bad faith registration, this concept has been rejected in subsequent cases. See section 3.2.1. of WIPO Overview 3.0…. [T]hat the 10-year old cases cited are no longer ‘good law.’”
Transamerica Corporation v. AMAZING GRACE / OBAREZE OPARAH, FA200200 1882685 (Forum March 5, 2020).
“In the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot … issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”
Royal Bank of Canada – Banque Royale Du Canada v. Registration Private, Domains By Proxy, LLC / Randy Cass, D2019-2803 (WIPO February 23, 2020) (<investease.com>.
Generic phrase? But registered opportunistically. “It is clear that where the facts of the case establish that the respondent’s intent in registering or acquiring a domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark, panels have been prepared to find the respondent acted in bad faith. Such scenarios include registration (or acquisition) of a domain name further to significant media attention e.g., in connection with a product launch.” Also WIPO Overview 3.0, section 3.8.2.
Ganeden Biotech, Inc. and Kerry Luxembourg S.à.r.l v. Rob Monster, D2019-3012 (WIPO February 13, 2020) (<BC30.com>)
Generic? Or, “highly distinctive and unusual trademark”? The Panel held the latter and Respondent commenced an ACPA action: “Where a complainant’s mark is widely known or highly specific, and a respondent cannot credibly claim to have been unaware of the mark, UDRP panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark.” Critical in defending a UDRP is an awareness that the Panel will make its determination based on the record. In this case, Respondent submitted the sparsest of records in the expectation of an easy win and RDNH. Its submission included a charged threat: “ [I]f we lose this complaint, we will take care to critique the outcome in the public theater.” Threat carried out by commencing the ACPA. We shall find out whether the district court is as unamused as was the Panel!
Insider, Inc. v. DNS Admin / Contact Privacy Service, FA1912001874834 (Forum February 3, 2020) (<businessinsider.tv) Complaint filed in 2019
“Business insider” is a simple two word term registered as a domain name earlier than the trademark, yet the mark owner prevails on common law grounds. The decision may be viewed critically as giving Complainant the benefit of the doubt on the bad faith requirement. The Panel reasoned that “while it is true that functioning as a domain name reseller may not alone be indicative of bad faith in the registration and use of domain names, it is also true that what a reseller does with a domain name while it is awaiting resale matters. That is why Respondent finds it necessary to include the phrase ‘by itself’ in its Response to the Complaint. As a consequence, where it is found, as here, that a respondent’s modus operandi can be summarized as registration of a domain name that is confusingly similar to the mark of another followed by exploitation of the domain name for profit while awaiting its eventual sale, the ‘reseller’ label will not serve to avoid a finding of bad faith in the registration and use of the domain name.” This is close to suggesting that holding the domain name for future sale is a factor in deciding bad faith.
Scalpers Fashion, S.L. v. Dreamissary Hostmaster, D2019-2937 (WIPO January 30, 2020) (<scalpers.com>)
“In light of the above,” the “above” being the following:
(i) the disputed domain name was registered by the Respondent long before the Complainant obtained relevant rights in the Trade Mark;
(ii) the Complainant’s legal representatives have unreasonably ignored established UDRP panel positions set out in WIPO Overview 3.0 (Para. 4.16)
(iii) the Complaint was filed after two unsuccessful attempts to purchase the disputed domain name, the first initiated by the Complainant in August 2017, and the second by the Complainant’s legal representatives in June 2019; and
(iv) the Respondent’s legal representatives wrote to the Complainant’s legal representatives after the filing of the Complaint, on December 16, 2019, pointing out that, in light of the undisputed facts, a finding of bad faith registration and use was impossible, and inviting the Complainant to withdraw the Complaint.
“the Panel agrees with the Respondent that the Complainant has filed the Complaint after an unsuccessful attempt to acquire the disputed domain name from the Respondent, and where the legally represented Complainant filed the Complaint without having any plausible basis for establishing, in particular, bad faith registration and use.”
Media Bridge Inc. v. Mediabridge Infosystems Inc., FA1912001873710 (Forum January 22, 2020) (<mediabridge.com>.
RDNH does not have to be expressly requested for the Panel to saction Complainant. “Respondent has not specifically requested that the Panel issue a finding of reverse domain name hijacking (“RDNH”) in this case but, given the egregious nature of this filing, the Panel believes that the subject must be addressed. In order to rule that RDNH has occurred, the Panel must find that Complainant brought the case in bad faith and engaged in an abuse of this administrative proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 4.16.
Scribe Opco, Inc. d/b/a BIC Graphic v. Ryan Ramsey, D2019-2543 (WIPO December 26, 2019) (<koozies.com>. 21 years. Dictionary-word domain name. Complaint denied not on laches grounds, which was never raised, but on lapse of time: “As Complainant has provided no evidence regarding the use of the KOOZIE mark and/or the extent of such use or notoriety of the KOOZIE name and mark prior to December 1998, it is difficult to assess 21 years after the fact whether Respondent was trying to take advantage of rights Complainant might have had in KOOZIE or was merely registering a common term, as Respondent contends it did, as part of its business of registering domain names based on acronyms, dictionary terms and common phrases.”)