Welcome to this week’s UDRP Digest (vol. 2.5), summarizing the most intriguing cases of the past week. Read about:
‣ ADNDRC: 22 Year Delay Results in Unanimous Loss for Hong Kong Stock Exchange (hkex .com, hkex .net and hkex .org)
‣ FORUM: Unrelated Third Party Usage of Combined Common Terms Defeats Relatively Small Trademark Owner (JointMax .com)
‣ CIIDRC CDRP: Consolidation Permitted Where in Reality, There is a Single Registrant (ManuLifeTrustCompany .ca)
‣ WIPO: Competing Trademark Dispute Better Resolved in Court (approve .com)
‣ CAC: Near Immediate Complaint Loses Since Respondent Did Not Have Enough Time to Put Domain Name to Use (VivendiPM .com)
‣ FORUM: ProQuest Gets ProGuest in Undefended Case (ProGuest .com)
Enjoy !
ADNDRC: 22 Year Delay Results in Unanimous Loss for Hong Kong Stock Exchange
<hkex .com>, <hkex .net> and <hkex .org>
Complaint Denied
Panelists: Ms. Shahla Ali, Mr. Douglas Clark and The Hon. Neil Brown Q.C.
Brief Facts: The Complainant, incorporated on July 8, 1999, controls the only securities and derivatives exchange in Hong Kong. It registered the HKEX trademark in Hong Kong and other jurisdictions in April, 2000 and the registration lapsed in 2017. The Complainant owns additional registered trademarks including the figurative trademark, HKEX, registered in 2015 in multiple classes in Hong Kong. It also owns various domain names incorporating its mark, such as <hkex.com.hk> dated January 3, 2000, which is used for its official website. The Respondent, a Hong Kong company, and its predecessor registered <hkex.com> on October 6, 1999, <hkex.org> on October 6, 2001 and <hkex.net> on March 23, 2002 and operates a website hosting, design and domain name registration business.
Held: There is evidence that in December 2001, <hkex.com> resolved to a page where links related to the Complainant’s business were present. Although, ‘HKEX’ commonly refers to the Complainant, there are other possible uses, like “HK” and “Ex” are short for “Hong Kong” and “exchange” and can also be acronyms for other cities or have other meanings respectively. Given the other possible uses of the disputed Domain Names, the doctrine of passive holding is not applicable in this case. Besides, a delay of over 22 years in bringing a Complaint where the only possible evidence of use in bad faith dates back 20 years is too long. The Complainant registered various domain names incorporating “HKEX” since 2000 and, in doing so, must have been aware of the disputed Domain Names, and yet took no action until now. Therefore, the Respondent did not use the disputed Domain Name <hkex.com> in bad faith. Besides, given the disputed Domain Names <hkex.org> and <hkex.net> have never been used and there is no other evidence of any use in bad faith.
Complainants’ Counsel: Hogan Lovells, Hong Kong
Respondents’ Counsel: Michael Pang & Co., Hong Kong
FORUM: Unrelated Third Party Usage of Combined Common Terms Defeats Relatively Small Trademark Owner
Healthy Pets, Inc. d/b/a Pet Health Solutions v. Kwangpyo Kim, NAF Claim Number: FA2112001976154
<JointMax .com>
Complaint Denied
Panelist: Ms. Antonina Pakharenko-Anderson
Brief Facts: The Complainant is a wholesaler, retailer, and distributor of pet health related products including pet joint supplements, namely “Joint Max”. Since August 2001, the Complainant owned and used the disputed Domain Name and promoted it by referencing the Domain Name on its Joint Max products and other product labels. These labelled products have annual sales of over USD $1.2 million and the Complainant’s advertising budget exceeds USD $200,000 annually. It owns the rights in the JOINT MAX mark, having registered with the USPTO on March 11, 2003. The Complainant, on learning that it lost ownership and control of the Domain Name in early 2021, attempted to reach the Respondent but received no response to its communications. The Respondent acquired the disputed Domain Name in an auction on September 15, 2020 and hosts pay-per-click hyperlinks related to arthritis and/or joint health related goods and services. The Respondent contended that it registered the disputed Domain Name solely because of the combination of the words “joint” and “max” — a common combination that the respondent believed no party could claim exclusive rights.
Held: A business based on investing and trading in common word domain names constitutes a bona fide offering of goods or services under Policy. The Respondent’s use of the disputed Domain Name to host pay-per-click links is a bona fide offering of goods or services because the disputed Domain Name is composed of common words and did not refer to the complainant or its products. The Respondent lists other common word domain names that it also owns, which include a descriptive word and “max”: <keymax.com>; <gamemax.com>; <megamax.com>; <climbmax.com>; <seniormax.com>; <drivemax.com>; <studiomax.com>; <grassmax.com>; and <bonejoint.com>, thereby suggesting that the Respondent did not target the Complainant’s trademark of third party usage of the term “jointmax” that are unrelated to the Complainant.
Complainants’ Counsel: Jeffrey Sonnabend of SonnabendLaw, New York, USA
Respondents’ Counsel: Self-represented
CIIDRC CDRP: Consolidation Permitted Where in Reality, There is a Single Registrant
<ManuLifeTrustCompany .ca> and 8 others .ca domain names
Transfer
Panelist: The Honourable Neil Anthony Brown, QC
Brief Facts: The Canadian Complainant, founded in 1887, is a leading financial services company with international operations. Its well-known name and reputation have been acknowledged by extensive awards and public recognition. It owns a series of trademarks including MANULIFE, MANULIFE TRUST, MANULIFE TRUST COMPANY and other marks covering a broad range of goods and services. The disputed Domain Names were registered between August 22, 2021 and October 02, 2021 with three different WHOIS profiles and used in a similar phishing scam. The Complainant made a strong case for consolidation of the Complaint along with relevant evidence and also argues it is highly improbable that unconnected third parties would register these Domain Names in such a short span of time.
Held: The proceedings may go forward in the present form, on the basis that there is in reality one registrant, and the proceedings against each of the three named Registrants be consolidated into one proceedings and be heard and determined together. By registering the disputed Domain Names that incorporate Complainant’s marks in their entirety, merely adding related terms, the Respondent registered the domain names that are confusingly similar to Complainant’s trademarks. As such, the Respondent demonstrates a knowledge of and familiarity with the Complainant’s brand and business. The Respondent’s objective is to deceive internet users by including the Complainant’s logo on the disputed Domain Names’ websites in an effort to take advantage of the Complainant’s fame and goodwill. Indeed, the Respondent used the Domain Names in connection with a phishing scam, where they seek to impersonate the Complainant and is a clear case of Bad Faith registration and use. Additionally, the number of infringing domain names registered demonstrates a pattern of cybersquatting.
Complainants’ Counsel: Korie Walters, Digital Brand Services Group AB, Sweden
Respondents’ Counsel: No Response
WIPO: Competing Trademark Dispute Better Resolved in Court
Approve Me, LLC v. Shlomy Amsalem, Swift Development Ltd, WIPO Case No. D2021-3398
<approve .com>
Complaint Denied
Panelist: Mr. Christopher S. Gibson
Brief Facts: The Complainant provides e-signature solutions and related services through <approveme .com>, having served over 50,000 customers since 2013. The Complainant, since 2014, owns various trademarks registered with the USPTO including ‘Approve Me’ and ‘Approveme.com’. The Respondent acquired the disputed Domain Name on July 12, 2020 and later changed its name to Approve.com Ltd. The Respondent used the Domain Name from July 2020 until April 2021, when it was acquired by Tipalti Solutions Ltd. Tipalti uses the disputed Domain Name for its website in connection with its “Tipalti Approve” procurement tool and owns a recent trademark registration for ‘Approve.com’. The Complainant alleges that the Respondent purchased and developed the Domain Name with the intention of piggybacking off Complainant’s APPROVEME.COM mark by injecting confusion into Internet searches for the Complainant’s business to redirect consumers to the Respondent’s services, especially as the Respondent is known as Tipalti and has only recently developed branding around the “Approve” name. The Respondent denies any knowledge of the Complainant and its trademark when it purchased the Domain Name in 2020.
Held: The founder of the Respondent corporation testifies that he had no knowledge of the Complainant at the time of acquisition of the Domain Name. Besides, given the nature of the disputed Domain Name itself corresponding to the descriptive word “approve” and the Complainant having submitted little evidence of the extent of the reputation, goodwill or distinctiveness of its marks in July 2020, the Respondent cannot be assumed to know or should have known that the disputed Domain Name would be identical or confusingly similar to the Complainant’s mark. This is a case wherein both the parties have legitimate business operations and both own federally registered trademarks in the United States. These issues effectively involve alleged infringement of the Complainant’s registered trademarks and the relevance of the Respondent’s rights in its own registered trademarks and as such would be better settled in a court, where a complete record and detailed arguments under United States federal trademark law can be considered.
Complainants’ Counsel: Solace Law, United States
Respondents’ Counsel: Antoinette M. Tease, P.L.L.C., United States
CAC: Near Immediate Complaint Loses Since Respondent Did Not Have Enough Time to Put Domain Name to Use
Vivendi v. Maria Diaz, CAC Case No. 104240
<VivendiPM .com>
Complaint Denied
Panelist: Mr. Mike Rodenbaugh
Brief Facts: The Complainant is a French multinational mass media conglomerate in the music, television, film, video games, telecommunications, tickets and video hosting services business. With 42,526 employees in 82 countries, the Complainant’s total revenues amounted to € 16,090 million worldwide in 2020. The Complainant owns and communicates on the Internet through various domain names, such as the domain name <vivendi .com> registered on November 12, 1997. The US Respondent registered the disputed Domain Name on December 11, 2021 and it currently redirects to a blank page. The Respondent stated that it is in the process of forming a company named Vivendi Property Management LLC.
Held: The Complainant filed the complaint just three days after the domain name was registered. The Respondent did not have enough time to put the Domain Name to use and submits as having intent to operate a property management business in Florida. It would likely be a legitimate interest in the domain name since the Complainant appears to have no right to preclude the Respondent from such a business name and/or trademark use in the United States. It is reasonable for the Respondent to have an inactive domain name, just three days after registering it. The Complainant offers no evidence as to the distinctiveness of the Complainant’s trademarks and reputation in the United States, in relation to the Respondent’s alleged business or otherwise. The Complainant offers no other evidence of bad faith, either.
Complainants’ Counsel: Nameshield S.A.S.
Respondents’ Counsel: Self-represented
FORUM: ProQuest Gets ProGuest in Undefended Case
ProQuest LLC v. Simon Martin, NAF Claim Number: FA2112001977718
<ProGuest .com>
Transfer
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant is a global information-content and technology company. The Complainant owns a PROQUEST mark through its registration with the USPTO dated Sept. 10, 1991. The Complainant claims that the disputed Domain Name, <ProGuest .com>, is confusingly similar to the Complainant’s PROQUEST mark as it incorporates the mark in its entirety and replaces the letter “Q” with the letter “G”. The disputed Domain Name, registered on September 23, 2004 is presently inactive, while prior to the commencement of the proceeding resolved to a page featuring pay-per-click advertisements, including advertisements that refer to Complainant’s information content services. The Respondent, Simon Martin, who did not respond, is listed as in Vietnam according to the Whois.
Held: Although the language of the Registration Agreement in this case is Vietnamese, given the persuasive evidence adduced by the Complainant that the Respondent is conversant and proficient in English, the Panel decides that the proceeding should be in English. The Panel found that the <proguest. com> domain name is confusingly similar to the Complainant’s PROQUEST mark as it is a common and obvious misspelling of the PROQUEST mark, merely substituting the letter “q” with a “g” and adding the gTLD “.com”. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to the Respondent’s Website which featured pay-per-click advertisements, including advertisements that refer to Complainant’s information content services (services that provide access to various copyrighted materials and archives), for which the Respondent is likely to receive revenue. This is not a bona fide offering or a legitimate non-commercial or fair use. On the balance of probabilities, in 2004, the Respondent had actual knowledge of Complainant’s PROQUEST mark as it would be unlikely for a party to acquire a domain name that is almost identical to the PROQUEST mark (14 years after the Complainant commenced use of the mark) and redirect it to a pay-per-click website with links directly describing Complainant’s services. In the circumstances, the Respondent registered and used the Domain Name in bad faith to create confusion with Complainant’s PROQUEST mark for commercial gain.
Complainants’ Counsel: Tsan Abrahamson of Cobalt LLP, California, USA
Respondents’ Counsel: No Response