Welcome to this week’s UDRP Digest (2.6), summarizing the most intriguing cases of the past week. Read about:
‣ Fireworks Erupt Between Two Competitors (PhantomFireworksScams .com)
‣ Domain Name Resembling Distinctive Mark Carries a Risk of Implied Affiliation (blacksbaud .com)
‣ The Respondent Gets a House Edge, as Complainant Fails to Produce Additional Evidence (AltinClubCasino .com)
‣ Respondent Fails to Provide Explanation for his Choice of Domain Name Even When Asked, and Bad Faith Upheld (cyrgo .com)
‣ Respondent Allowed to Make Use of Common Words in Descriptive Sense (CustomWritings .co)
Enjoy !
Fireworks Erupt Between Two Competitors
<PhantomFireworksScams .com>
Complaint Denied
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant Phantom Fireworks Showrooms, LLC retails fireworks in the US under the registered trademark, PHANTOM FIREWORKS, and operates at <fireworks .com>. Additionally, the Complainant sells clothing and accessories branded with the PHANTOM FIREWORKS mark. The disputed Domain Name was registered on October 8, 2020, by the Respondent who is the registered agent of Seasonal Sales Inc. having the registered trade name as “Jurassic Fireworks”. The disputed Domain Name resolves to a criticism site headed “PHANTOM FIREWORKS SCAMS”, followed by the tagline “Free Should Mean Free”. The website details instances of alleged deceptive advertising in the Complainant’s promotions and encourages site visitors to sign a petition and contact a consumer protection agency. The Complainant claims that the Respondent’s website “tarnishes” the Complainant’s mark.
Held: The disputed Domain Name is not currently used as a pretext for advertising the Respondent’s products, or the goods and services of other parties, as in classic cybersquatting. The Respondent’s website is clearly critical of the Complainant and not designed to misleadingly emulate the Complainant’s website. The Complainant makes conclusory statements to the effect that the Respondent’s allegations are “lies and misstatements” but does not actually dispute the authenticity of the advertisements, prices and voice recordings published on the Respondent’s website. The Respondent’s substantive criticisms are detailed on the website associated with the disputed Domain Name, with supporting evidence in various forms. Those claims may be disputed, of course, in an appropriate forum, however UDRP proceedings do not lend themselves to an adjudication of underlying libel, fraud, or consumer protection controversies. The core issue is whether the Respondent is engaged in cybersquatting activity, and the Panel finds on this record, that it does not.
Complainants’ Counsel: Patton & Davison LLC, United States
Respondents’ Counsel: Self-represented
Domain Name Resembling Distinctive Mark Carries a Risk of Implied Affiliation
<blacksbaud .com>
Transfer
Panelist: Mr. William F. Hamilton
Brief Facts: The US Complainant is a software company providing cloud software, services, expertise and data intelligence services, online at <blackbaud .com>. The Complainant is the owner of the trademark registered with USPTO on September 5, 2017. The disputed Domain Name was registered on September 1, 2021 and is inactive. The WHOIS for the disputed Domain Name contains details of a third party. The Complainant argues confusingly similarity as the disputed Domain Name is composed by merely adding the single character “s” into the middle of the mark.
Held: The nature of the disputed Domain Name, which highly resembles the distinctive mark, carries a risk of implied affiliation. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s mark when registering the disputed Domain Name. Even if one were to accept the unbelievable proposition that the Respondent was unaware of the mark, wilful blindness is no excuse and does not avoid a finding of bad faith registration and use. Besides, the current passive holding of the disputed Domain Name does not absolve the Respondent of bad faith registration and use. The Respondent appears to have used the name of a third party when registering the disputed Domain Name. In light of the potential identity theft, the Respondent’s name is redacted from this decision.
Complainants’ Counsel: Soteria LLC, United States
Respondents’ Counsel: No Response
The Respondent Gets a House Edge, as Complainant Fails to Produce Additional Evidence
<AltinClubCasino .com>
Complaint Denied
Panelist: Ms. Ingrida Kariņa-Bērziņa
Brief Facts: The Dutch Complainant operates a Turkish-language online casino at the domain name <altincasino .com>. It owns the EU trademark for AC ALTINCASINO dated December 18, 2020 for services in classes 35, 38, 41 and 42. The disputed Domain Name, registered on June 20, 2020, resolves to a Turkish-language website headed by the name “Altincasino”. The website contains information and advertisements for various online gaming platforms. The Complainant claims Respondent’s website contains references to Complainant’s business, its competitors and also links to other websites that feature Complainant’s mark.
Held: The disputed Domain Name was registered on June 20, 2020 whereas Complainant registered its AC ALTINCASINO mark on December 18, 2020. The Complainant claims that its website was established earlier on April 25, 2019, but did not provide any supporting evidence. The Panel in its procedural order requested that the Complainant provide actual evidence of its rights in the AC ALTINCASINO mark at the time of registration of the disputed Domain Name, but the Complainant did not provide any such information. This case raises doubts regarding the reasons why the disputed Domain Name was registered in the first place. However, in the absence of relevant evidence, the Panel cannot assess when and how the Respondent would have been aware of the Complainant and its rights in the AC ALTINCASINO mark. Since the Complainant has failed to establish bad faith registration of the disputed Domain Name, it is not necessary to examine bad faith use at this time.
Complainants’ Counsel: (SMES) Solutions for Management and Employment Support N.V., Netherlands
Respondents’ Counsel: No Response
Respondent Fails to Provide Explanation for his Choice of Domain Name Even When Asked, and Bad Faith Upheld
Cyrgo S.A.S. v. Domain Administrator, Absord, WIPO Case No. D2021-3721
<cyrgo .com>
Transfer
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant, for the last 50 years, distributes construction materials in Colombia and operates a website at <cyrgo .com.co>. It owns a number of Colombian trademarks for CYRGO filed on May 10, 1991. The disputed Domain Name was registered on June 13, 2006 and resolves to a pay per click website listing the different topics including “FERRETERIA INDUSTRIAL” (meaning “industrial hardware”). The Respondent states that he has owned the disputed Domain Name “for many years”, that it is reserved for “a future project”, and that the PPC links on the parking page are automatically generated.
Held: The phrase “FERRETERIA INDUSTRIAL” denotes the kind of goods and services offered by the Complainant and leads to a page which makes reference to the Complainant. Hence, the use of the parking page in conjunction with the disputed Domain Name comprising the Complainant’s mark capitalizes on the reputation and goodwill of that mark. The Response did not disclose the date and reason of acquisition, knowledge of the Complainant and the plans for the future project. On the Panel’s subsequent invitation to answer these questions and supply supporting evidence, the Respondent failed to respond. In these circumstances, it is reasonable to infer that the Respondent registered the disputed Domain Name in bad faith with a view to targeting the Complainant’s distinctive mark. Even if the Respondent were not held responsible for the parking page, nonetheless the disputed Domain Name constitutes a “passive holding” in bad faith in terms of the Policy.
Complainants’ Counsel: Holland & Knight Colombia SAS, Colombia
Respondents’ Counsel: Self-represented
Respondent Allowed to Make Use of Common Words in Descriptive Sense
Writera Limited v. Baklan Iaroslav, CAC Case No. 104234
<CustomWritings .co>
Complaint Denied
Panelist: Mr. Claire Kowarsky, LL.M
Brief Facts: The Complainant, through its website <customwritings .com> provides services consisting primarily of custom writing services for various purposes. The Complainant is the assignee holder on record of the USPTO for the trademark CUSTOMWRITINGS.COM, with a priority filing date of 1 August 2018. The disputed Domain Name <customwritings.co> was registered on 30 December 2016 and the website associated thereto is currently used by the Respondent for promoting and offering services similar to those of the Complainant. The Complainant claims that the Respondent registered the disputed Domain Name for the improper purpose of attempting to create a likelihood of confusion with the Complainant.
Held: The disputed Domain Name was registered before the priority date of the Complainant’s registered trademark, while the Complainant failed to provide satisfactory evidence in respect of acquired distinctiveness and secondary meaning. The disputed Domain Name is descriptive of the services offered by both the Complainant and the Respondent; hence not necessarily the Respondent registered the disputed Domain Name in bad faith. Besides, the Complainant’s registered trademark “CUSTOMWRITINGS .COM” does not appear on the Respondent’s website and it has a substantially different look and feel to the Complainant’s website. In light of the above, the Complainant fails to prove that the disputed Domain Name use is in bad faith within the meaning of the UDRP.
Complainants’ Counsel: Self-represented
Respondents’ Counsel: Self-represented