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.
Starting May 2020, I have shifted to a new format for reporting Noteworthy domain name decisions. Rather than extended essays, I’m commenting on specific decisions.
June 25, 2020 case: Confusingly Similar But No Likelihood of Confusion
Revision in progress
June 26 case: 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).
June 23 case: 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.
May 19 and 29 decisions: 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.”)