Is This a Trademark Dispute or Cybersquatting?
The Respondent in <ensure-nest .com> has an apparently genuine business and website selling ENSURE-branded bird nests, thereby demonstrating that this smacks of a trademark dispute rather than a cybersquatting dispute. Read more here.
We hope you will enjoy this edition of the Digest (vol. 3.38), as we review these noteworthy recent decisions, with commentary from experts. (We invite guest commenters to contact us):
‣ Is This a Trademark Dispute or Cybersquatting? (ensure-nest .com *with commentary)
‣ Suppositions Are Not Evidence or Proof (deltaplus .com *with commentary)
‣ An Unclear Case With Language Issues (hatarico .com *with commentary)
‣ Notoriety Key to Proving Targeting (redbul .io *with commentary)
‣ Respondent’s “Legitimate Business” and “First Use” Made for a Tough Case for Complainant (anantaraluxury .com *with commentary)
—–
This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
The ICA will attend the Domain Days Dubai meeting Nov 1-2, 2023. This is one-of-a-kind event in the MENA region’s domain industry. The conference brings together a diverse crowd of Domain Investors, Registrars, Registries, Monetization & Traffic, Web 3.0 Domains, Hosting & Cloud Providers, SaaS providers, and Industry Enthusiasts.
Kamila Sekiewicz, Zak Muscovitch, and Ankur Raheja will be representing the ICA. We’d love to meet with any members of our UDRP Digest community attending, so please get in touch if you have plans to be there.
UDRP Workshop registration:
For October 5, 2023 – register here
For October 12, 2023 – register here
Is This a Trademark Dispute or Cybersquatting?
<ensure-nest .com>
Panelist: Mr. Jeffrey J. Neuman
Brief Facts: The Complainant, founded in 1886, sells its healthcare products, consisting of diagnostics, medical devices, nutritionals and branded generic pharmaceuticals, in more than 160 countries. One of Complainant’s nutritional products, introduced in 1973, is ENSURE which as per the Complaint is the No. 1 doctor-recommended brand for oral nutritional products for patients. The Complainant has registered the ENSURE mark in dozens of countries around the world, including in Vietnam (filed on September 9, 2001). The Respondent registered the disputed Domain Name on May 4, 2022, nearly two decades after the Complainant applied for a trademark registration and entered the Vietnamese market for its ENSURE mark. The Complainant does considerable business in Vietnam including the distribution of hundreds of thousands of bottles of the ENSURE product there.
The Complainant alleges that the Respondent is using the disputed Domain Name to attract consumers to unrelated products, which is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use. The Complainant further alleges that Respondent’s registration and use of the disputed Domain Name was in bad faith because it had actual knowledge of the Complainant’s rights based on the use of the mark on the Website and further, it diverted consumers looking for the Complainant to its own products and services. The Respondent failed to submit a Response in this proceeding. The Complainant then cites a number of previous UDRP decisions including Microsoft Corporation v. Pengcheng Zhang, FA 1819611 (2019), Nike, Inc. v. Dias, FA 135016 (2002), and Fossill, In. v. Fong, FA 1116234 (2007) to support its claims.
Held: The Panel views this case differently than the above-cited UDRP cases. In both Microsoft and Fossil, the defaulting Respondent used the disputed Domain Names to link to pay-per-click ads or ad-driven third-party websites. In Nike, the Respondent used the disputed Domain Name to sell the same types of sporting equipment as actually sold by that complainant. In this case, however, the disputed Domain Name leads users to a live website in Vietnamese, which actually sells bird’s nests-related food items. The Panel notes that in many Asian countries such as Vietnam, Thailand, Japan and China, bird’s nests are in fact sold as food items, skincare products and as a popular source of gifts. The Complainant has not alleged that it also sells Bird’s Nests-related items.
The Panel believes that the determination of whether the Respondent has rights or a legitimate interest in the disputed Domain Name is dependent on whether or not the Respondent, in selling food items made from bird’s nests, is infringing on the Complainant’s trademark rights in the ENSURE mark. This determination, however, exceeds the scope of the UDRP and relies on complex legal issues which are more suitable for the courts to decide as opposed to being decided under the UDRP. The Policy’s primary purpose is to “combat abusive domain name registrations and not provide a prescriptive code for resolving more complex trademark disputes.” See Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007).
Complaint Denied
Complainants’ Counsel: Molly Buck Richard of Richard Law Group, Inc., Texas, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
This is a good example of punting an alleged trademark infringement case to the courts, because as the Panelist noted, “the determination of whether the Respondent has rights or a legitimate interest to the disputed Domain Name is dependent on whether or not the Respondent, in selling food items made from bird’s nests, is infringing on Complainant’s trademark rights in the ENSURE mark”. The Respondent has an apparently genuine business and website selling ENSURE-branded bird nests, thereby demonstrating that this smacks of a trademark dispute rather than a cybersquatting dispute:
Nevertheless, it was theoretically open to the Complainant to prove that this was indeed a cybersquatting matter. To do so, the Complainant would have had to submit substantial evidence of its renown in Vietnam such that it ENSURE is singularly if not predominantly associated with the Complaint and therefore it would be very unlikely, if not inconceivable that the Respondent didn’t select the domain name specifically to trade off of the Complainant’s goodwill. Of course, that is a difficult proposition considering that ENSURE corresponds to an English dictionary term that would not normally be considered the exclusive commercial property of any one trader. Compare ENSURE with, for example, PEPSI, ADIDAD, or MICROSOFT. In any event, however, it would not be easy to discount the Respondent’s business as not constituting a bona fide business given the existence of what appears to be a genuine website and different product.
Suppositions Are Not Evidence or Proof
Delta Plus v. Domain Admin, WIPO Case No. D2023-2698
<deltaplus .com>
Panelist: Mr. John Swinson
Brief Facts: The French Complainant, founded on March 24, 1977, is part of the Delta Plus Group of companies, being active in the design, manufacture, and distribution of Personal Protective Equipment (PPE). The Complainant owns a French semi-figurative trademark registration for DELTA PLUS filed on January 16, 1986. The Complainant owns trademark registrations in other countries, including for DELTA PLUS in Word format. The disputed Domain Name was registered on May 14, 1995, and presently redirects to a website at <romaarc .com>, which promotes a business called Roma Architecture located at a street named Roma Ave NW in Albuquerque, New Mexico, United States.
The Complainant alleges that considering the Complainant’s trademark is a well-known trademark that has been registered and used for many years and thus long predates the disputed Domain Name’s registration, the Respondent knew of the Complainant’s products and trademarks and deliberately intended to create an association with the Complainant and its business. The Respondent did not file a Response, so little information is known about the US Respondent. However, the WhoIs records for the disputed Domain Name do not indicate any change in ownership of the disputed Domain Name from that time. Moreover, the website to which the disputed Domain Name redirects does not appear to use DELTA PLUS in any way.
Held: The Complainant provided little evidence to demonstrate that a United States entity, in the position of the Respondent, would likely have been aware of the Complainant and would likely have registered the disputed Domain Name because of the Complainant’s reputation in 1995. The Complaint includes references to the Complainant’s website located at the domain name <deltaplusgroup .com>. This website, on the “Our organization” page, shows that the Complainant has a small presence in the United States at the present time in terms of an “intermediate warehouse”. The Complaint has no evidence of its presence or operations in the United States in 1995 when the disputed Domain Name was registered. The only evidence before the Panel of the Complainant’s existence in 1995 are two French trademark registrations.
Further, the Complainant’s allegations by the Complainant are a supposition, not evidence or proof. The Complainant did not provide evidence to show how the disputed Domain Name had been used from 1995 to the present date. The Panel has reviewed records of the Wayback Machine for the disputed Domain Name. In 2004, the disputed Domain Name resolved to a website for the Delta Plus Financial Services, Inc. In 2006, the disputed Domain Name resolved to a similar-looking website for the Delta Plus Commercial Mortgage Company, located in Florida, United States. According to Florida government records reviewed by the Panel, this company existed until 2010.
In short, there is no evidence that in 1995, when the disputed Domain Name was registered by the Respondent, that the Respondent was likely aware of the Complainant or registered the disputed Domain Name because of the Complainant.
Complaint Denied
Complainants’ Counsel: Cabinet Beau de Lomenie, France
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
In this case, the Complainant alleged what I said needed to be done for the Complainant to have had a chance to succeed in the above Ensure-Nest .com case, i.e. that “it is impossible for any other entity, including the Respondent, to have rights or legitimate interests in the Complainant’s trademark.”
Yet it still was not enough, as the Complainant’s allegation alone, was not proof. Panelist Swinson clearly laid out the requirement for actual proof:
“The Complainant carries the burden of proof. An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence.
To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof.
For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.
The Complainant provided little evidence to demonstrate that a United States entity, in the position of the Respondent, would likely have been aware of the Complainant and would likely have registered the disputed Domain Name because of the Complainant’s reputation in 1995 when the disputed Domain Name was registered. No evidence of the Complainant’s reputation in 1995 was provided in the Complaint.
For example, the Complainant alleged that, “Considering the Complainant’s trademark is a well-known trademark that has been registered and used for many years and thus long predates the disputed Domain Name’s registration, the Respondent knew of the Complainant’s products and trademarks and deliberately intended to create an association with the Complainant and its business.” But as the Panel correctly noted, “this assertion by the Complainant is a supposition, not evidence or proof”.
The Complainant’s problem in this case is a problem that I regularly see with Complaints. Complainants will regularly assume that just because they are extremely well known to themselves or even within their own country, that a registrant a world away must also be aware of them. That is a self-serving assumption that should fail unless supported with sufficient evidence. Such an assumption becomes more difficult the less fanciful and unique the domain name is, as indicated by the facts that the Panelist uncovered of prior existence other Delta Plus entities, such as Delta Plus Financial Services and Delta Plus Commercial Mortgage Companies, both in the United States.
An Unclear Case with Language Issues
Wanavit Manufacturing Co., Ltd v. Phan Van Thong, WIPO Case No. D2023-3198
<hatarico .com>
Panelist: Mr. Ian Lowe
Brief Facts: The Thai Complainant, founded in 1980, is a leading Thailand manufacturer of electronic fan products. The Complainant group owns the fan manufacturer Hatari Electric Co. Ltd founded in 1990 and claims profits of over USD $4.65 million from the export of HATARI products to Vietnam in 2021. The Complainant is the proprietor of a number of trademark registrations around the world in respect of HATARI. The Complainant also exhibits a copy of a certificate for Viet Nam trademark number 24015-001, which is renewed upto May 8, 2026. The disputed Domain Name was registered on September 4, 2020 and resolves to a website at the Domain Name which prominently features in the header of the home page the “Hatari logo” and offers for sale a number of electronic products including fans, water purifiers, air purifiers, and a range of other household electronic products all apparently carrying the HATARI brand. The Contact Info gives the name “CÔNG TY CỔ PHẦN HATARI” (which may be translated as “Hatari Joint Stock Company”).
The Complainant alleges that the Respondent has never been licensed or authorised by the Complainant to use the HATARI trademark and the Respondent registered and is using the disputed Domain Name in bad faith because it was clearly aware of the Complainant and its HATARI mark when it registered the Domain Name. The Complainant further alleges that although the Respondent’s website offers a wide range of products bearing the Complainant’s HATARI trademark, most of the products offered are not the Complainant’s genuine products. The Respondent did not formally reply to the Complainant’s contentions, however, at the last moment the Respondent sent an email to the Center stating that the Respondent was not good at English and had to rely on Google translate and did not understand why there was a domain name dispute. The Respondent stated that HATARI was its trademark and attached a copy of a Vietnam trademark certificate with registration number 394656, although it is not apparent what mark it relates to.
Held: The Panel has undertaken a search of the WIPO Global Brand database which records that Viet Nam trademark number 4-0394656-000 HATARI in international classes 11 and 35, was registered on August 3, 2021 in the name of “Công ty cổ phần thiết bị công nghệ Toàn Cầu”, which according to Google Translate means “Global Technology Equipment Joint Stock Company”. The WIPO Global Brand database also includes Vietnam trademark number 4-0024015-000 in international classes 7,8, 9, and 11, in respect of the Hatari logo that was registered on March 31, 1997, and recorded as having a new owner, the Complainant, on June 12, 2006 (or possibly December 6, 2006), but expired on May 8, 2016. The Panel notes that despite having relied on a report generated from the WIPO Global Brand database the Complainant makes no mention in the Complaint either of the database’s recording of the expiry of the Vietnam trademark the Complainant claims to be subsisting, or of the Viet Nam registration of the HATARI mark by a third party in 2021.
The Complainant ought clearly to have been aware of the inconsistency between the database records and the case it was advancing with the support of a letter from the Vietnam trademark office, given its reliance on the WIPO database. This called at the very least for some explanation by the Complainant. The Panel finds that the prima facie case established by the Complainant is displaced and that the Complainant has failed to establish that the Respondent does not have any rights or legitimate interests in respect of the disputed Domain Name. In light of the Panel’s finding in relation to rights or legitimate interests, the Panel does not need to consider whether the Respondent registered and is using the disputed Domain Name in bad faith. Moreover, the Panel considers that the issues arising in this proceeding are not well suited to a proceeding under the Policy and should more appropriately be dealt with in Court proceedings. So far as the Complaint is concerned, the Panel is conscious that its findings rely on a late informal submission filed by the Respondent, albeit supported by a search of the WIPO Global Brand database.
In those circumstances, and in light of the broader trademark issues which cannot be decided under the Policy, the Panel considers that the Complaint should be dismissed without prejudice.
Complaint Denied
Complainants’ Counsel: BMVN International LLC, Viet Nam
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
As the Panelist well noted, something is indeed strange with this case. The existence of a trademark registration in Vietnam for HATARI ostensibly belonging to the Respondent ought to have been pointed out to the Panel by the Complainant, as the Panel noted. Moreover, as the Panel noted, given the limited information, the relationship between the respondent, the complainant, and the trademark holder, were unclear. Unclear cases are not suitable for the UDRP and the Panel therefore properly dismissed the case, notably without prejudice however, so that the Complainant could file again to clear up the inconsistent evidence.
There is however, a troubling aspect to this case. As noted by the Panelist, although the Respondent did not file a formal Response, “the Respondent sent an email to the Center stating that the Respondent was not good at English and had to rely on Google translate and did not understand why there was a domain name dispute.” This led me to wonder whether the Complaint was filed in the proper language. The registrar is listed in the decision as “Mat Bao Corporation”, a Vietnamese registrar. Pursuant to Paragraph 11 of the UDRP Rules, the language of proceedings “shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” What language was the registration agreement in? There is no indication in the decision, however in a previous case involving domains registered at Mat Bao, The Manufacturers Life Insurance Company v. Do Tung Lam, WIPO Case No. D2021-2342, it is stated that:
“The Center sent an email communication to the Complainant on July 23, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On July 23, 2021, the Center sent an email communication to the Complainant informing that the language of the registration agreement is Vietnamese. The Complainant filed an amended Complaint on July 27, 2021, and requested the proceeding to be in English.”
The Vietnamese language of the registration agreement was confirmed in several other cases, such as BWX Ltd. v. Ong Nguyen Chi Cong, WIPO Case No. D2021-0015. Notably in the case at hand however, there is no mention of the language of the registration agreement. Accordingly, it appears that the Complainant filed in English and was not required to amend its Complaint, thereby resulting in the Respondent not being provided with a copy in Vietnamese as it was entitled to, subject to the Panel overriding the default rule.
Notoriety Key to Proving Targeting
Red Bull GmbH v. Redbull forex, redbulforex, WIPO Case No. DIO2023-0027
<redbul .io>
Panelist: Mr. Ian Lowe
Brief Facts: The Austrian Complainant is the producer of the known energy drink RED BULL, first sold in Austria in 1987, and internationally in 1992. It achieved worldwide sales of 11.6 billion units in 2022 and is sold in 174 countries all over the world. In addition, the Complainant recently entered the world of non-fungible tokens (NFTs) offering several NFTs for sale on the platform. The Complainant is the proprietor of numerous registered trademarks, including the International trademark number for RED BULL (registered on February 24, 1995), and the International trademark number for the RED BULL logo (registered on February 27, 2014, designating a number of jurisdictions, including India). The disputed Domain Name was registered on August 9, 2021, and currently resolves to a parking page of the Registrar. At the time of preparation of the Complaint, it resolved to a website comprising what appears to be a platform for dealing in “Redbul” cryptocurrency. The Respondent did not Respond.
Held: The Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, but rather has used it for a website featuring the slight misspelling of the word “Bull” and a logo comprising one red bull, alluding to the Complainant’s Red Bull Logo, soliciting users to purchase and sell cryptocurrency. The contact details on the website are inconsistent. The Panel considers it likely that the Respondent registered the Domain Name with a view to confusing Internet users into believing that the Respondent’s Website was operated by or authorised by the Complainant. Such activity does not give rise to rights or legitimate interests.
While the bull is an animal associated with the financial markets, particularly with a bullish trend, the red color is not usually connected to positive results in the financial markets, and the Panel notes that the Respondent did not provide any relevant explanation as to its selection. In light of the use of a logo similar to the Complainant’s Red Bull logo, the use of a slight misspelling of the Complainant’s name and Mark, as well as the undoubted notoriety of the Mark and the Complainant’s recent activity in the field of NFTs, the Panel considers it most likely that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name.
In the Panel’s view, the Respondent has registered and used the Domain Name to deceive Internet users into believing that the Domain Name is operated or authorized by the Complainant, and to attract Internet users by creating a likelihood of confusion with the Mark, no doubt for commercial gain. The Panel considers that this amounts to paradigm bad faith in both registration and use.
Transfer
Complainants’ Counsel: TALIENS Partnerschaft von Rechtsanwälten mbB, Germany
Respondents’ Counsel: No Response
Case Comments by Newsletter Editor, Ankur Raheja: In Zak’s Comment on the Ensure-net case he noted the difficulty in arguing that a common term is predominantly or singularly associated with a particular trader, but explained that it may be possible to do so where a mark is particularly renown. This was the case here, as REDBULL is recognized as a well-known mark world-wide, and is officially recognized in India as a well-known mark, in particular (where the Respondent resides) since 2003, see here (at sl. no 43).
It is therefore very likely that the Respondent registered the disputed Domain Name with the purpose of causing confusion and mispresenting an association with the Complainant. As noted by the Panelist, had the Respondent responded however, it might have nonetheless attempted to explain and justify its selection of the Domain Name: “While the bull is an animal associated with the financial markets, particularly with a bullish trend, the red color is not usually connected to positive results in the financial markets, and the Panel notes that the Respondent did not provide any relevant explanation as to its selection”.
The UDRP is most effectively used, generally speaking, to combat cybersquatting on well-known marks, as it makes proving targeting much easier. This is just such a case, which the Policy is well-designed to address and therefore resulted in the order for the transfer of the disputed Domain Name.
Respondent’s “Legitimate Business” and “First Use” Made for a Tough Case for Complainant
<anantaraluxury .com>
Panelist: Mr. John Swinson
Brief Facts: The Complainant and its affiliates operate the ANANTARA brand of hotels, resorts, and spas. Currently, there are over 50 Anantara hotels and 30 Anantara spas in countries in Asia, the Middle East, Africa, and Europe. The Complainant is in the process of launching an ANANTARA resort in India, to be located in Jaipur, Rajasthan. The Complainant has used the ANANTARA trademark since 2000 and also owns registered trademarks for ANANTARA and associated ANANTARA logos. The disputed Domain Name was registered by the Respondent on January 30, 2020, who is a real estate property developer in Goa, India.
The disputed Domain Name currently resolves to a website titled “Anantara Luxury Homes in Goa” promoting a luxury apartment development in Goa which is called ANANTARA ELYSIAN. The website includes the content along with the appropriate name, address and contact details for the Respondent, as well as a copyright notice as follows: “2020 © Anantara Living Spaces Pvt. Ltd. All Rights Reserved”. The Respondent has been in business since 2004 and its representative, Mr Parind Nachinolcar, applied for an Indian trademark registration in class 37 for ANANTARA and device on January 18, 2019, but has been opposed.
The Complainant alleges that the Complainant’s ANANTARA brand is well-known, the Complainant owns many ANANTARA trademark registrations, that the Respondent’s website slavishly copied the Complainant’s well-known brand, establishing the malicious intentions and dishonest adoption of the Complainant’s trademark. The Respondent contends that the Respondent used the disputed Domain Name in good faith since 2020 for its property development business, that the disputed Domain Name was not selected because of the Complainant, that the Complainant has no operations or reputation in India, and that the Respondent was unaware of the Complainant’s proposed operations in India or of the Complainant’s ANANTARA brand when deciding to use ANANTARA for its property development business.
Held: The evidence suggests that the disputed Domain Name resolved to a website at least since 2020 and used to advertise the Respondent’s services. The Respondent filed a trademark application for ANANTARA and device in January 2019. The Complainant does not specifically address any aspects of the Respondent’s business or the website at the disputed Domain Name when making its claims. On the face of it, relying solely upon the Respondent’s website (because there is no other evidence about the Respondent), the Respondent’s business itself appears to be legitimate. The website at the disputed Domain Name has a different “get-up”, logo and design to that of the Complainant’s branding and advertising, which clearly distinguishes the Respondent’s business from the Complainant’s Anantara resorts and spas.
The Complainant does not address the fact that the Respondent has a trademark application in India for ANANTARA and device (which is prior to the Complainant’s trademark applications in India). The Complainant does not directly deal with the fact that the Complainant does not yet have Anantara resorts or spas in India. It is also not clear whether the Complainant contacted the Respondent prior to filing the Complaint. The Respondent’s trademark application for ANANTARA and the device is opposed. The Respondent did not disclose this, and the Complainant did not address this. A respondent does not need a registered trademark to rely upon paragraph 4(c)(i) of the Policy. What is relevant here is bona fide use. Based on the available record, the Panel finds the second element of the Policy has not been established.
Complaint Denied
Complainants’ Counsel: Luthra & Luthra Law Offices, India
Respondents’ Counsel: Janaki A. Bhide, India
Case Comment by ICA General Counsel, Zak Muscovitch:
I happen to be familiar with the hotel brand, Anantara from travelling a bit in Asia and following the hospitality press. As such, ANANTARA to me, means the Complainant. I would also be skeptical of anyone in a substantial real estate business in India not having heard of ANANTARA, and therefore am likewise skeptical that the Respondent didn’t select its brand to possibly soak in some of the Complainant’s goodwill.
But as the Panelist appreciated, the inquiry does not end there. Trademark rights are jurisdictional and there was apparently evidence of the Respondent having used the mark first in India. There was also evidence of an apparently bona fide business via the Respondent’s website. There was also evidence of the Respondent being in a somewhat different business than the Complainant. When these facts are added up, it turns out that this is not a cybersquatting case for which the UDRP was intended. Rather, this is a trademark dispute that was being shoehorned into the UDRP. Sometimes the line between a trademark dispute and a cybersquatting dispute are not easily determined, but where there is a legitimate business operating on a disputed Domain Name, especially with a website using a different look and feel and a different good or service, it is once again, not a clear cut case and should be punted to the courts.