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.
Submission of incorrect and misleading statements 11/25/2020
Two recent cases have expressed concern about complainants making incorrect and misleading statements with both sanctioned.
The Panel in Ternio, LLC v. Domains by Proxy, LLC / Sedo GmbH, D2020-2215 (WIPO November 16, 2020) (<blockcard.com>) noted that such statements could lead to an injustice in the absense of a response. The Panel held that “[o]verall [it] has reached the conclusion that the Complaint deliberately overstates the Complainant’s case in a way which could well have misled the Panel, particularly if no response had been filed,” (emphasis added)).
Vertex Pharmaceuticals Incorporated v. Ramzan Arif, Vertex Medical (pvt) Ltd. , D2020-2334 (WIPO November 6, 2020) (<vertexmedical.com>)
“The Panel is also troubled by the Complainant’s submission regarding the alleged correspondence which is said to have passed between the Parties. The Complainant submits that this included a reply from the Respondent, yet none of this correspondence has been produced. . . . The nature of the incorrect and misleading submission regarding the use of “vertex” in a medical context coupled with an apparent failure to investigate the Respondent and a failure to put forward documentary evidence which was relied upon in submissions is all the more concerning given that the Complainant is represented by counsel.”
Common Law Rights are Protectable if Not Common to Many Other Users: 11/16/2017
To assert an actionable claim on the basis of common law rights, proof that the term is used by many other businesses significantly dilutes the strength of the mark. In Peoples Bank of Mississippi v. Domain Admin / Xedoc Holding SA, FA2007001906337 (Forum November 11, 2020) (<peoplesbank.com>), the Panel notes that ”
[a]lthough existing, Complainant’s common law rights in its mark are diluted nearly to the vanishing point based upon the number of third-party users thereof. This fact must have been known to Complainant given its longstanding participation in the field of banking.
In addition, the term “Peoples Bank” is commonly used by many banks thus manifesting just how diluted it is:
Respondent submits a variety of evidence showing a number of United States trademark registrations for marks that are owned by third parties and consist, in whole or in part, of the phrase “Peoples Bank”; a listing of hundreds of other banks by the relevant authorities of the United States and other countries which use this phrase in their titles …; and listings of over fifty unrelated banks in Complainant’s own state of Mississippi that use the name Peoples Bank. Based upon this evidence, Respondent states that “Complainant chose a ‘mark’ that is incredibly weak, knowing that it was descriptive and in widespread use by others.” Thus, it is “not linked uniquely to Complainant.”
Recent RDNH Decisions with Comments (10/17/2020)
Hints at either “negotiating leverage” or egregious ignorance of the law is most obvious in unsuccessful attempts to purchase domain names as an excuse for commencing the proceedings, the so-called “Plan B” cases. Recent examples are Daniel A. Rosen, Inc. d/b/a Credit Repair Cloud v. Michael Steele / Nemo Apps LLC, FA2008001910796 (Forum October 12, 2020) (<credithero.com>, Sahil Gupta v. Michal Lichtman / Domain Admin, Mrs Jello, LLC, D2020-1786 (WIPO September 15, 2020) (<spase.com> and Mountain Top (Denmark) ApS v. Contact Privacy Inc. Customer 0133416460 / Name Redacted, Mountaintop Idea Studio, D2020-1577 (WIPO September 1, 2020) (<mountaintop.com>). In Daniel A. Rosen, the Panel noted that
Here Complainant and its legal representative had clear knowledge of lack of Respondent’s bad faith registration because the <credithero.com> domain name was registered before Complainant acquired trademark rights in the CREDIT HEROES mark. Their clear knowledge is underscored by the deliberate[ly] [misquoting from prior decisions].
The lame argument that Respondent had constructive knowledge when it renewed the registration for the domain name is particularly egregious not only because marks that postdate registration of challenged domain names lack an actionable claim but in this particular case “the descriptive character of the domain name is such that, as submitted by Respondent, there are many plausible uses to which the domain name may be put without infringing Complainant’s mark or misleading Internet users. Hence any renewal of the domain name with such knowledge [even if the mark had predated the registration of the domain name] cannot be regarded as being in bad faith.”
In Sahil Gupta and Mountain Top, both Complainants express the belief they have superior rights regardless that their marks postdate the registrations of the domain names. Having standing to maintain a UDRP proceeding even though complainants have no actionable claim is not an excuse to put respondents to the expense of defending themselves. As a side-note, if the standing provision is ever reimagined, the UDRP should be amended to preclude this category of complaint.
For now, though: What should be the general rule where the facts either before the complaint or after the response dictate the outcome of the case? Several Panels over the years have suggested that the complaint either should never have been filed; or if it has been and after its filing facts become known that undercut the claim, the complaint should be withdrawn with prejudice. In some cases, mark owners have attempted to withdraw their complaints without prejudice, but these requests have been uniformly rejected absent respondent’s consent.
Several recent cases carry this view further along. Two cases stand out for the proposition that complainants have the obligation to withdraw their complaints, and failing to do so is grounds for RDNH: Picture Organic Clothing v. Privacydotlink Customer 4032039 / James Booth, Booth.com, Ltd., D2020-2016 (WIPO October 5, 2020) (<picture.com> and D’Agostinos Markets, Inc. d/b/a D’Agostino Supermarkets v. Louise Murphy / WebSiteText, FA2003001889900 (Forum April 29, 2020).
How Ignorance Can Lead Mark Owners Astray in UDRP Proceedings
The great problem with ignorance is that it leads to disaster when one acts in the belief he (and not infrequently a corporate “it”) is invulnerability to error. The Uniform Domain Name Dispute Resolution Policy (UDRP) is fundamentally a straightforward rights protection mechanism but as in all clearly written laws ignorance of its application and of its evidentiary demands can (and generally does) lead to disaster. Mark owners are not entitled to relief because they own marks; resellers are not liable as cybersquatters because they hold domain names identical or confusingly similar to complainants’ marks. Any complainant who has a mark, regardless of the timing of its first use in commerce, has standing to maintain a UDRP proceeding, but the catch—and here is where the uninformed need specialized counsel—if a mark postdates the registration of a domain name uninterruptedly held by a respondent the complainant has no actionable claim.
Such a circumstance is found in Sahil Gupta v. Michal Lichtman / Domain Admin, Mrs Jello, LLC, D2020-1786 (WIPO September 15, 2020) (<spase.com>). Complainant (by all measures innocent of any understanding of the UDRP and believing in the rightness of his cause) “asserts that the Respondent registered and is using the disputed domain name in bad faith [because it] has acquired a well-known and longstanding reputation of ‘domain squatting’ for the sole purpose of hoarding domains names to extort the trademarks of business owners.”
Setting aside Mrs. Jello’s reputation as a reseller of domain names, whatever it may be, it has a lawful right to “hoard[ ] domain names” in pursuit of its business, and if its acquisition predates the trademark or service mark, its domain name is invincible to forfeiture. If, and this is a big “if”, the domain name resolves to a website demonstrably infringing Complainant’s mark, there could possibly be a case of trademark infringement, but that’s not a claim actionable in a UDRP proceeding.
However, the evidence in this case is simply that Complainant acted in ignorance of the law, and now finds himself the butt of mock and jears which he finds humiliating (if I read the Tweet-leaves correctly). The decision indicates Complainant was “internally represented.” I trust this is a euphemism for the party himself without guidance from knowledgeable counsel. I will say, however, that despite his having done all the wrong things, he is an innocent; a small player. There have been far worse by complainants represented by lawyers in large and sophisticated law firms who really deserve censure. See, for example, also sanctioned with reverse domain name hijacking Mountain Top (Denmark) ApS v. Contact Privacy Inc. Customer 0133416460 / Name Redacted, Mountaintop Idea Studio, D2020-1577 (WIPO September 1, 2020) (<mountaintop.com>). Mocks and jeers should rather be reserved for complainants’ sophisticed counsel who litigate in ignorance of the law.
Fraudulent Transfer: Recovering Stolen Domain Names
Either because of laxness on the part domain name holders or cunning on the part of thieves, registrars have been duped into transferring domain names to fraudsters’ accounts. I discussed the matter last year in Recovering Domain Names Lost to Fraudulent Transfer. Mostly, these cases are filed in the Eastern District of Virginia, Alexandria Division for the good reason that the registry for dot com, Verisign, is located in that jurisdiction and the domain names are mostly recovered.
However, in a very recent case, Alston v. www.calculator.com, No. 20-cv-23013 (complaint dated July 20, 2020) plaintiff commenced the action in the Southern District of Florida and moved, successfully ex parte for a temporary restraining order and preliminary injunction which directed the registrar, GoDaddy.com “within one business day of receipt of this Order . . . [to] immediately transfer the Domain Name www.calculator.com to Plaintiff,” GoDaddy complied, and the purchaser, Stands4 Ltd. (an Israeli company), who paid $180,000 for the domain name, moved for an “Expedited Order to Dissolve the Temporary Restraining Order” which the Court denied:
[A]lthough it is likely that the monetary harm Stands4 will suffer pursuant to the TRO is significant, the Court gives more weight to the evidence Plaintiff submitted demonstrating the ongoing, irreparable injuries she is suffering due to the alleged theft of the Domain Name.
Following the denial, Alston dismissed the action against Stands4 (August 13, 2020) in a stipulation that Stands4 “will no longer contest the Plaintiff’s ownership of the mark and domain name calculator.com, and Plaintiff hereby states that she is satisfied that Stands4 did not act in bad faith in relation to the acquisition of the calculator.com domain name.”
There were in essence two victims in this action: for plaintiff, the heavy cost to recover the stolen domain name, and the purchaser, it’s out-of-pocket loss. It might be pointed out that Stands4 found itself in a precarious position since it could not have taken good title from a thief. The general rule at common law is that “[o]ne who purchases, no matter how innocently, from a thief, or all subsequent purchasers from a thief, acquires no title in the property. Title always remains with the true owner.” Kingdom of Spain , 616 F.3d at 1030, n.14 (quoting Marilyn E. Phelan, Scope of Due Diligence Investigation in Obtaining Title to Valuable Artwork , 23 Seattle U. L. Rev. 631, 633–34 (2000). See also Crocker Nat’l Bank v. Byrne & McDonnell , 178 Cal. 329, 332, 173 P. 752 (1918): “This notion traces its lineage to Roman law (nemo dat quod non habet , meaning ‘no one gives what he does not have.’”).
Assessing Intent to Cybersquat
It, perhaps, does not have to be said, that cybersquatting is an intentional tort. No one would expect the respondent to admit unlawful intention, but complainant’s proof must nevertheless support that contention. The Panel in Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc. FA2005001895951 (Forum July 31, 2020) reminds us that it takes more than bad faith use of a domain name to find cybersquatting, and in the process of analyzing the facts shows us the shortcomings of proof to establish bad faith registration.
As it happens, there is no issue of intention in Hastens. Respondent was well aware of Complainant’s trademark; in fact, admits targeting it but for a legitimate purpose: “[I]t asserts that [in registering <comparetohastens.com>] it intends to employ the disputed domain name, as well as the other ‘compare to’ domain names that it registered, in connection with its bona fide sales of commercial products.” Respondent explains that “consumers can compare its commercial products with Complainant’s at in-person retail locations.”
“Compare to” advertising has received attention in trademark and false advertising cases in the U.S, and most likely in other jurisdiction but (to my knowledge) this is its first appearance in a UDRP dispute. There is a question as to whether this matter is even within the scope of the UDRP. The Panel appears to have it both ways as indicated by the italicized final clause:
It is true that such a comparison website, if launched, may attract consumers to it. But, if the website is properly designed, it likely would not cause confusion as to source, sponsorship or affiliation; rather, it should be clear that the website does not come from Complainant but rather from a competitor of Complainant. It also is true that such a comparison website might be designed to divert business from Complainant to Respondent, but that is not the kind of disruption of a competitor’s business contemplated by the Policy as evidence of bad faith registration and use. (Emphasis added)
But instead of dismissing the complaint on this ground, the Panel finds an alternative reason which essentially contradicts the first:
Whether Respondent engaged in bad faith registration requires consideration of Respondent’s intent. Respondent asserts that it registered the domain name in order to establish a comparison website, which, as noted above, could be a permissible use of the disputed domain name. Although Respondent did not come forward with affirmative evidence to establish demonstrable preparations to create such a website (which is a specific requirement under the policy for establishing rights or legitimate interests in a domain name), a finding a bad faith requires more.
In following through on the alternative, the Panel continues:
It is not enough that Complainant show that Respondent failed to come forward with evidence of its demonstrable preparations; rather, Complainant must come forward with evidence the establishes, by a preponderance of the evidence, that Respondent in fact registered the disputed domain name with a bad faith intention to cybersquat on the domain name. Such evidence might include evidence of an intent to sell the disputed domain name to Complainant for a profit, to prevent Complainant from reflecting its own trademark in a corresponding domain name, to disrupt Complainant’s business, or to attract consumers to the website to which the domain name resolves by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website.
For a complainant to succeed it must submit “sufficient evidence to establish any of these examples of bad faith registration” but it has failed to do so, and this coupled with Respondent’s proof in the form of an affidavit which the Panel finds “credible with respect to Respondent’s intent at the time of registration” warrants dismissing the complaint.
The decision is remarkable in examining the facts and circumstances from different perspectives, which is highly educational, but it is also serpentine in the manner in which the Panel reaches its conclusion. The Panel was absolutely correct in noting that while a “compare to” domain name may have a disruptive impact on a complainant, it “is not the kind of disruption of a competitor’s business contemplated by the Policy as evidence of bad faith registration and use.” If this is so, cannot the bad faith analysis be dispensed with entirely? If a claim exists, it belongs in another forum.
Confusingly Similar But No Likelihood of Confusion
The word “confusion” in the Uniform Domain Name Dispute Resolution Policy (UDRP) signifies two separate states of mind. The first in ¶4(a)(i) appears in the phrase “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” It is a test to determine whether the mark owner has standing to maintain a UDRP proceeding. See The Perfect Potion v. Domain Administrator, D2004-0743 (WIPO November 6, 2004) (“The intent behind [the first requirement] is to ensure that the Complainant has a bona fide basis for the Complaint.”)
The second use of confusion appears in ¶4(b)(iv) in the phrase “likelihood of confusion.” This is a test to determine whether the registration and use of the challenged domain name amounts to cybersquatting. A word of caution here, though: the second phrase is not to be confused with the same phrase used in trademark infringement jurisprudence. Rather, “likelihood of confusion” in the UDRP context is to be understood as an answer to the following question: “is it likely that a consumer will be confused into believing that there is an association of the domain name with the mark owner?” The standard for making that determination in a UDRP proceeding is significantly less demanding and made applying different factors than in a trademark infringement case. See Smoky Mountain Knife Works v. Carpenter, AF-230ab (eResolution July 3, 2000) (holding “Respondent’s use of the Contested Domain Names appears to satisfy even the more stringent test of likelihood of confusion.”)
This understanding–and sometimes misapplication of the standard and factors–is illustrated in Truworths Ltd v. saichao dong, D2020-1189 (WIPO June 25, 2020). The Panel concluded that while there was confusing similarity there was no likelihood of confusion between <trueworths.com> and TRUWORTHS and dismissed the complaint. Setting aside the obvious question of typosquatting, which is an issue for the second and third requirements, the domain name is also identical to the mark, not in a side-to-side comparison of course, but aurally as homonyms: that is, when spoken the two are identical in sound. In any event, Complainant succeeds on the first requirement without controversy.
For the balance of the decision, though, the Panel steps into the error (although not in so many words) of applying the heightened trademark infringement standard. In a recent private comment I received about this case, the commentator noted: “[I] [d]on’t know if I have ever seen a UDRP decision that spends so much time dealing with what it does not know in order to deny a complaint.” This hits the nail dead-on, but in commending the decision the commentator also got it wrong: “I would wager to bet” said the commentator, “that most panelists would have readily found for the complainant based upon a list of presumptions that the panelist here calls into question.” My reading of the decision is not so approving. Frankly, the Panel’s methodology in paying more attention to the unkown than the known is astonishing.
Pondering on facts unknown and drawing inferences from what the unknown may reveal if they were known can never be a substitute for knowing. Where triers of fact fail to concentrate on what is known and draw inferences from what is not known they fall into error. An indisputable fact comes into being when a contention is supported by evidence. “Presumptions” on the other hand, are no more than speculations of facts. This is why contentions that are merely “presumptions” are not a formula for success in litigation or proceedings under the UDRP.
It is a fundamental law of reasoning that to treat established facts as presumptions compounds error by elevating those inferences above facts. This is precisely why the reasoning process in Truworths is skewed. Complainant submitted evidence, but instead of giving it weight the Panel preferred to ponder on what it did not know, and from what it did not know inferred what it might be.
It says that it “seems” to him
that the Respondent is using the Disputed Domain Name for the offering of gambling services which has nothing to do with the Complainant or the Complainant’s trademark and the fact that the Disputed Domain Name is in substance a typographical variant of the Complainant’s trademark is merely coincidental. The Complainant says the Respondent’s activities are illegal in China and illegal activities cannot confer a legitimate interest. Whilst the Respondent’s website is clearly written in Chinese logograms the Panel does not know whether it is based in or targeted specifically at China as opposed to readers of Chinese wherever they may be.
From these non-facts the Panel then infers that whatever confusion may exist “is merely concidental.” The error here is that Respondent did not appear to rebut the evidence but the Panel concludes that because the domain name resolves to a website having no connection to Complainant’s goods that it must be exonerated from having intentionally chosen a domain name that just happens to mimic Complainant’s.
Whether Chinese gamblers are in China or expatriates is irrelevant to the question whether Respondent intentionally registered the domain name for its trademark value. What are the Panel’s errors? First, it has misconceived the principle that informs “likelihood of confusion” by suggesting that domain names resolving to websites that “ha[ve] nothing to do with the Complainant” are noninfringing. This turns UDRP law upside down. It is true that where a respondent appears and rebuts complainant’s contentions it can succeed, but not because its motivation is unknown but because respondent has explained its motivation in certified testimonial and documentary evidence. There is a second error, namely giving greater weight to inferences than to the facts of record.
There is a menu of indisputable facts in Truworths; indisputable because supported by documentary evidence. One fact is that as soon as Respondent learned of a possible challenge to the domain name it cyber-flew to another registrar in the U.S. registering with a nonexisting address. The original registrar of <trueworths.com> “suspended this domain because of betting” (email response to Complainant from the registrar). It turns out that betting websites are illegal in China. (Respondent has 2,200 domain names pointing to betting websites!) Based on this illegality, Complainant asked a sensible question (reframed in my words): “Can the use of a domain name for illegal activities ever confer a legitimate interest?”
We know from numerous decisions that in certain circumstances—fraudulent and criminal conduct, for instance—complainant’s prima facie case that respondent lacks rights or legitimately interests must succeed, unless respondent rebuts the contentions by coming forward (the burden shifts to respondent) with evidence that it does have rights or legitimate interests. This is probably true also of illegal activities. There was, as I have already noted, no rebuttal in this case since Respondent defaulted in appearance, yet the Panel nevertheless decided to put aside the issue of whether Respondent has a right or legitimate interest to explore the issue of abusive registration, and found, lo and behold! which it had already predetermined that not only does Complainant fail on its prima facie case, it also fails to prove abusive registration.
The Panel’s explanation for accepting its inferences over undisputed facts is astonishingly misconceived. It says that
Taking the evidence as a whole the Panel is not satisfied that it establishes the Disputed Domain Name was chosen because of its similarity to the Complainant’s trademark. It seems to the Panel more likely that it was chosen as result of whatever methodology the Respondent uses to select domain names, and its similarity to the Complainant’s trademark is entirely coincidental. If that is the case there is no basis for a finding of bad faith unless further factors suggest otherwise.
The Panel’s fall back on Respondent’s “[unknown] methodology [in] select[ing] domain names” cnnot be explained. Whatever the “methodology” may be (completely speculative as even the Panel admits), there is still a likelihood of confusion, so that to conclude that <trueworths.com> was “more likely . . . entirely coincidental” makes no sense in light of the evidentiary facts which contradict it. Whatever the composition of the other 2,199 domain names Respondent holds, the evidence establishes that <trueworths.com> was chosen because Respondent knew Complainant’s mark was known to Chinese consumers. The choice of <trueworths.com> is not “coincidental” but intended to attract consumers to Respondent’s website because they recognize Complainant’s mark.
This is one of those decisions that should be vacated, and if ever challenged in a court of law; perhaps, even, in an in rem proceeding under the ACPA, it will be.
Exceedingly Close and Difficult UDRP Cases
The ordinary run of cybersquatting cases is neither “exceedingly close nor difficult.” Quote from Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Rebecca Nickerson / Rock City Harvest, FA2004001892080 (Forum June 26, 2020) which is one of those rare cases in which the case was exceedingly close and difficult. For 90% of the docket (the percentage has been creeping up since 2016), even when respondent appears (which it mostly does not) there is neither a defense nor merit to respondent’s contentions. The UDRP has hoovered-in cybersquatters by the tens of thousands.
Harvest Dispensaries is not one of those. The Panel explained that there are several “difficulties” in this case:
As a threshold matter, the Panel notes that the instant proceeding presents a complicated series of questions relating to the interconnected disputes between the parties and their affiliates…. Although some areas of the analysis in this decision may be rendered moot by the parties’ submissions or ancillary findings on the merits of this case [referring to an Arkansas case in which Complainant was not a named defendant and did not request relief with respect to the challenged domain name], the Panel still endeavors to provide a fulsome discussion of all factors considered in a typical UDRP proceeding.
There is, first, a collision between federal and state trademark rights. Ordinarily of course there is no issue as to which ultimately prevails in a court of law, but here—and for purposes of adjudication under the Uniform Domain Name Dispute Resolution Policy (UDRP)—Complainant’s federal registration predated registrations of the domain names but it consists of a dictionary word, “Harvest” which is descriptive at best. Respondent plausibly contended that it adopted “Harvest” and obtained an Arkansas trademark registration without knowledge of Complainant’s statutory rights.
Respondent offered documentary evidence that it began the process of entering the cannabis market intending to use the fictitious trade name “Harvest” and learned in January 2019 that it would receive a license from the Arkansas Alcoholic Beverage Control Division to operate a marijuana dispensary under the name HARVEST. This predated Complainant’s formal telephone conference assertion that the use of “Harvest” would be a trademark infringement.
On these documentary facts, turned the case, even though as the Panel noted “Respondent’s . . . actions are not free from suspicion” that it may have become aware of Complainant’s mark earlier than it claims, an issue that would be drawn out in a court proceeding. Complainant’s problem, again as noted by the Panel, and important for complainants to digest:
The Panel rejects Complainant’s argument that the registration of these two domain names was nevertheless in bad faith because Respondent had constructive knowledge of Complainant’s trademark registration. Although constructive knowledge may be relevant to certain issues under U.S. trademark law, see 15 U.S.C. § 1072, constructive knowledge is insufficient to support a finding of actual knowledge and bad faith under Policy ¶ 4(a)(iii).
Complainant’s federal registration priority over Respondent’s use of the term is unquestionable, but Respondent nevertheless prevails on the issue of right or legitimate interests: “Panel finds reasonable evidence within the record that Respondent is commonly known by the HARVEST name under Policy ¶ 4(c)(ii) prior to learning of Complainant and its trademark rights.” While this satisfies the tests for the UDRP, it does not foreclose a trademark and cyberdsquatting claim under the Lanham Act. (Disclosure, I was on the Harvest Panel).
When is Similarity Confusing? Cybersquatting and Abusive Registration
The case I’m reporting on today has garnered attention from a number of quarters. One commentator, Andrew Allemann (<domainnamewire.com>) tells us that “[he’s] struggling with this UDRP decision” and Nat Cohen of Telepathy Inc. in a couple of Tweets and private conversation is concerned that the holding could be a Trojan Horse by erasing the distinction between merely confusing and confusingly similar. The problem centers on the Panel’s holding that <everyfamily.org> is confusingly similar to EVERYTOWN when they appear to be only confusing. Everytown for Gun Safety Action Fund, Inc. v. IGI NA / IGI NA CORP, FA200500 1897076 (Forum June 23, 2020).
The Panel finds that “Complainant’s EVERYTOWN mark as [does] the Domain Name incorporates a dominant portion of the mark, EVERY, along with the descriptive term ‘family’ (which is a term associated with Complainant’s activism).” He finds support for confusing similarity in two places, first WIPO;s Jurisprudential Overview 3.0 and the Respondent’s bad faith use of the domain name. The Jurisprudential Overview states section 1.15: “In some instances, panels have . . . taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.”
Determining the standing requirement by focusing on the bad faith element is ordinarily and in most instances frowned upon. Here, the Panel finds the Respondent is using the domain name in bad faith and this settles the matter of confusing similarity in Complainant’s favor. From bad faith use he infers bad faith registration:
In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Name. The Panel finds that the intention of Respondent to mislead Internet users into thinking it is Complainant or connected with Complainant confirms the confusingly similar nature of the Domain Name.
Given the use of the website for deceiving consumers by collecting money from them by pretending to be Complainant, there is no doubt Respondent is a fraudster. But, and this is the point of concern: the Panel is reaching the outcome he wants but at the expense of short circuiting the requirement for a finding that the domain name is “confusingly similar” rather than simply similar in sharing a dictionary word, albeit dominant in the phrase.
As a suggestion for dealing with this kind of outcome, it is useful to draw a distinction between “cybersquatting” and “abusive registration.” Cybersquatting can be equated to “squatting” in real property as “one who settles on land without a right or title” whereas abusive registration carries a further connotation of mischief. Drawing such a distinction between the two concepts helps explain the correctness of the decision. The UDRP of course is crafted to combat cybersquatting. WIPO preferred the epithet “abusive registration” over cybersquatting, but there is it seems to me a subtle difference. No less cybersquatting but abusive conduct manifests another and higher level of mischief. The only rationale for peeking ahead to the third element is to see whether the respondent is using the domain name in bad faith, and if it is, justifying the determination that the similarity is confusing, which satisfies the standing requirement. The standing requirement has always been low bar.
Asserting but Not Proving Cybersquatting under the UDRP
Having trademarks (registered or unregistered) is the prerequisite for maintaining a UDRP but having one is not conclusive of either domain name holder’s rights or legitimate interests or its registration and use in bad faith. The cautionary tale in many of these cases especially for the complainant who has the burden of proof is that it has to satisfy each of the elements in the three subsections of ¶4(a) of the Policy. For the avoidance of doubt this means that contentions are fine as long as there’s also evidence, preferably concrete but circumstantial will do if the proffer is sufficiently high in quality to draw an inference of abusive registration. The Panel in Phumelela Gaming & Leisure Limited v. Danny Sullivan, D2020-0245 (WIPO June 19, 2020) is fulsome in giving advice to both parties. For Complainant, surmise is never sufficient to make a case. It asserted that “Respondent’s purpose was to confuse members of the public who know the SOCCER 10 brand, or to interfere with the business of the Complainant” but the three-member Panel pointed out that this assertion “rest[s] on the assumption that Respondent was aware of Complainant’s business and deliberately targeted that business. [But] Complainant offers no tangible evidence on these points.”
The Respondent had its own problem, and raises an entirely different issue, in that it responded in an email without certifying to the truth of the statements he was making, even failing to respond to a Procedural Order that request he do so. For this reason, as it must, the Panel set the response aside, which it had warned could have been fatal. Nevertheless, the Panel still found the Complainant had failed to prove bad faith. In doing so, it makes the following critical points: 1) “Complainant bears the onus of establishing its case on a balance of probabilities,” and 2) the Panel “does not have additional powers to exercise discretion or apply a lesser test if a complainant fails to discharge that onus.” So, Respondent wins not because it rebutted Complainant’s contentions, but because Complainant failed to prove its case.
It is useful to take a quick look at some other recent cases because they are enlightening about both procedure and substance of UDRP jurisprudence. What the Panel has to tell us in Phumelela Gaming is the consensus view. This is also true of the next two cases involving the first element in the UDRP, whether the challenged domain name is “identical or confusingly similar to a mark in which the complainant has rights.”
Proving a “Right”
The UDRP forum is available to all owners who believe their trademarks or service marks are being infringed by domain names identical or confusingly similar to marks in which they allegedly have rights. The “have rights” element, the first of three legs in proving bad faith registration and bad faith use, is a critical factor. It’s not sufficient that the challenged domain name corresponds to the mark if the mark owner has no actionable rights. So, for instance, a mark owner may allege a common law right, but that is only a right if there’s proof that it was distinctive before the registration of the domain name. Another such “right” arises where the mark is allegedly present in commerce but is registered on the supplemental register. the complaint must be dismissed. But there are also circumstances where there are rights but no proof of the elements of the other two legs. With these thoughts in mind:
1) In Nicolas Karl Reep v. Ali Bazzi, FA2004001891242 (Forum May 19, 2020) (<employeefax.com> the Panel holds that “[r]egistration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) but not if the trademark is on the Supplemental Register. If all that a complainant has is a registration on the Supplemental Register then that complainant does not have standing to file a Complaint under the Policy since by definition it will not have acquired distinctiveness. That proposition has been clearly established for many years.” It is possible, although Complainant in this case evidently did not pursue the issue, to have established (assuming supporting evidence) that notwithstanding its continued registration on the Supplemental Register it had had nevertheless achieved common law rights, that the mark had “acquired” distinctiveness.
2) In contrast, it is sometimes necessary to establish common law rights if, as in Bitrise Limited v. Dalton Kline, Bitrise Trade Ltd., D2020-0835 (WIPO May 29, 2020) the domain name, here <bitrise.trade>, was registered after Complainant applied for trademark registration but before registration issues. The Panel makes two salient points critical to understanding the law in this area. First, common law rights: “The Complainant asserts that it has built substantial goodwill in the “Bitrise” name since 2015 and points to its client base, press coverage, substantial fund raising, and number of monthly average users in support of this contention.” Second, the issue of a respondent’s actual knowledge of complainant or its mark: “In some circumstances, this might have suggested that the Respondent may not have had knowledge of the Complainant or its rights at the time when it registered the disputed domain name and that it had coincidentally combined the ordinary English words ‘bit’ and ‘rise’ independently of the Complainant’s rights. However, the Panel views this as unlikely on the facts of the present case. First, without evidence to the contrary, these words appear to be a relatively unusual and distinctive combination. Secondly, the Complainant’s BITRISE mark had attracted substantial notoriety in the field of online platforms over several years prior to the registration of the disputed domain name, as demonstrated by the above-described press coverage produced by the Complainant.”
Commentaries on Earlier Decisions
UMass Memorial HealthAlliance – Clinton Hospital v. Privacy.co.com Privacy ID# 1216460 / Savvy Investments, LLC Privacy ID# 1216460, FA2004001892419 (Forum May 18, 2020)
“[S]ince this decision is based upon a lack of sufficient evidence presented in this proceeding, this decision is issued without prejudice. Complainant may re-file a complaint involving the same domain name in a new administrative proceeding, provided that any such complaint be supported by evidence establishing that Complainant has common law rights in its claimed mark.”
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.”)