An Unrepresented Complainant is Still Responsible for Understanding the Policy
One of the most common mistakes that we see in Complaints is Complainants failing to provide background information about themselves. Often Complainants simply launch into their allegations and argument without so much as explaining who they are and what they do. In this particular case, the omission of background information about the Complainant may have been by design rather than by inadvertence since there are indications that the Complainant was relying upon a third party’s trademarks… Read further commentary.
We hope you will enjoy this edition of the Digest (vol. 4.9), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ An Unrepresented Complainant is Still Responsible for Understanding the Policy (startupislandtaiwan .com *with commentary)
‣ In Absence of Response, Complainant Fails to Present Prima Facie Case
(candleglow .info *with commentary)
‣ Matter of Typo-squatting – Elkem v Elkeem(.com)
(elkeem .com *with commentary)
‣ Trader Joe’s Loses Because This Wasn’t a “Straightforward” Case (traderjoe .com *with commentary)
‣ Failing the Telstra Test When Applying Passive Holding (barnessa .com *with commentary)
Follow this personal ICA series on domain investing by brandable domain investor and acquisition broker Sten Lillieström, and take the opportunity to gaze into the microcosm of domain investing.
Domain work part 1 – Acquisition
Domain work part 1 – Acquisition– Mr. Sten Lillieström
The domains which domain name investors select for acquisition can vary wildly as noted in the previous articles in this series. But regardless of successfully identifying a domain name with perceived value, nothing is accomplished without hard work by domain name investors. continue reading
An Unrepresented Complainant is Still Responsible for Understanding the Policy
<startupislandtaiwan .com>
Panelist: Ms. Ivett Paulovics
Brief Facts: The Complainant is a private company in Taiwan. No further information is made available by the Complainant on its business activities. The Complainant relies on several registered Taiwanese device trademarks (owned by the National Development Council) containing the terms “STARTUP ISLAND TAIWAN”, registered in Taiwan on 16 August 2020. No evidence has been provided by the Complainant on its relationship with the National Development Council. The Complainant also relies on the domain name <startupislandtaiwan .info>, registered on 25 August 2020. The only information concerning the registrant of .info domain name is: Registrant State/Province: West Yorkshire; Registrant Country: GB. The disputed Domain Name was registered on 18 December 2019 by Taiwanese Respondent, who has actively participated in the local startup community, fostering connections with numerous Taiwanese entrepreneurs.
The Complainant alleges that the website associated with the disputed Domain Name displays sponsored pornographic advertisements. The Respondent contends that the dispute has been initiated by the Complainant, a private entity which is not the owner of the Taiwanese trademark “STARTUP ISLAND TAIWAN”. Comparing the device trademark of the National Development Council and the logo present on the website linked to the disputed Domain Name, it is apparent that they are different and there is no likelihood of confusion between the two marks. The Respondent further contends that the disputed Domain Name consists of the generic words “STARTUP” “ISLAND” “TAIWAN”, to which the Complainant cannot claim exclusive rights and the Respondent has registered and is making a bona fide use of the disputed Domain Name.
Held: The disputed Domain Name consists of the generic and commonly used terms “STARTUP” “ISLAND” “TAIWAN”. The Respondent has provided a sufficiently plausible explanation of its choice to register the disputed Domain Name, being such dictionary terms related to its activities. The Respondent has also proved that the disputed Domain Name is genuinely used in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. The Panel, therefore, finds that the Respondent made out its claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy. The temporal proximity of the registration date of the disputed Domain Name (18 December 2019) and the filing date of the National Development Council’s trademarks (20 December 2019), there is no evidence before this Panel showing that the Respondent had been aware of or targeted the Complainant or the National Development Council’s marks with the registration of the disputed Domain Name.
The Panel is persuaded by the evidence presented by the Respondent that his website is dedicated to content related to startups in Taiwan, containing also advertising banners. The Panel has visited the website linked to the disputed Domain Name and has also consulted historical resources, such as the Internet Archive Wayback Machine on the website to obtain an indication of how the disputed Domain Name had been used in the relevant past. Such consultation returned the same or very similar website content to that currently in use online. No record of sponsored pornographic advertisement has been found by the Panel. For the aforementioned reasons, the Panel finds that the Respondent has demonstrated that the disputed Domain Name was registered and is being used in good faith.
RDNH: This Panel finds that the Complainant is engaged in RDNH and that the Complaint was brought in bad faith and constitutes an abuse of the UDRP because the Complainant clearly ought to have known it could not succeed as to any of the required three elements. The disputed Domain Name consists of generic and dictionary terms and is being used for a website in connection with the relied-upon dictionary meaning of such generic terms, and the Complainant’s clear knowledge of the lack of Respondent’s bad faith, given that the disputed Domain Name was registered before the invoked trademark (the registration date is resulting from and verifiable in the publicly accessible Whois database) and the Domain Name <startupislandtaiwan .info>, and the disputed Domain Name is being used genuinely as mentioned before. The Complainant has also tried to mislead the Panel by affirming that the disputed Domain Name is being used to display sponsored pornographic advertisements without providing any supporting evidence.
Finally, the Complainant has filed the Complaint without a plausible legal basis after an unsuccessful attempt to acquire the disputed Domain Name from the Respondent. The Complainant, which is a private company, seems to have tried to act on behalf of the Taiwanese National Development Council without however disclosing and proving to this Panel its relationship with such a public entity. The Complainant cannot even justify itself by saying, for example, that it ignored the Policy and the well-established UDRP case law. Parties are free to self-represent themselves in UDRP disputes, but they also have to bear the consequences of not seeking appropriate legal counsel. This is particularly true considering that the Policy has been in place for 25 years and the decisions rendered by UDRP panels are publicly available.
Complaint Denied (RDNH)
Complainants’ Counsel: NA
Respondents’ Counsel: NA
Case Comment by ICA General Counsel, Zak Muscovitch:
One of the most common mistakes that we see in Complaints is Complainants failing to provide background information about themselves. Often Complainants simply launch into their allegations and argument without so much as explaining who they are and what they do. In this particular case, the omission of background information about the Complainant may have been by design rather than by inadvertence since there are indications that the Complainant was relying upon a third party’s trademarks. Perhaps the Complainant was the media agency that assisted the Taiwan Development Council in creating the STARTUP ISLAND TAIWAN brand, but if this is the case the Complainant still doesn’t have standing and the Complainant should have been the Council.
Not only was important background information not provided, but the Complaint itself appears to have been entirely inadequate. The Panelist noted that it was “extremely poorly drafted Complaint (2 sentences for the first UDRP element and one sentence each for the second and third UDRP element)”.
The Panelist in this case made the important point that any such omissions or errors are the fault of the Complainant who didn’t even retain counsel on what is ostensibly an important matter. The Panelist also made the related point that after 25 years of the UDRP, it is no excuse not to be familiar with the requirements of the Policy. Panelists are well within their rights and indeed may be obliged to sanction a Complainant for embarking upon a UDRP misadventure without familiarity with the UDRP, whether they are represented or not.
Lastly, the Panelist notes that even though the Panelist may engage in some limited factual research of public records where the circumstances warrant, it is “the Parties’ job” to make their cases. As the Panelist rightly points out, this does not mean that the Panelist “should do most of the legwork to establish the Parties’ allegations”. Indeed, a Panelist has no obligation and should generally refrain from being an investigator or truth seeker. Panelists should adjudge the material that is put before them and not embark on a fact finding mission. Presenting the facts is the job of the respective parties, not the Panelist.
Notably, the Panelist considered issuing a Procedural Order which would have in effect provided an opportunity for the Complainant to correct and fill in the inadequate factual record which it presented. But the Panelist admirable refrained from so doing because inter alia, the Complainant had “the opportunity and sufficient time to prepare its case and draft its Complaint accurately” before launching the proceeding at a time of its own choosing. As the Panel noted, the Rules require parties to be treated equally and Panelists should generally not issue Procedural Orders which directly assist a particular party in rectifying or improving its position.
In Absence of Response, Complainant Fails to Present Prima Facie Case
Tassel Ridge Winery, LLC v. Rome Uata, NAF Claim Number: FA2401002080417
<candleglow .info>
Panelist: Mr. Steven M. Levy
Brief Facts: The Complainant has continuously used the CANDLEGLOW mark in commerce since at least as early as December 4, 2006. The Complainant is the owner of the USPTO registration for the CANDLEGLOW mark in connection with “Wine”. The disputed Domain Name <candleglow .info> was registered on January 11, 2024, and currently displays monetized links titled “Candel”, “Ordering Blinds”, and “Retail Blinds”. The Complainant alleges that the Respondent is inactively holding a domain name and does not display any content besides third-party links to unknown websites, hence using the Domain Name as a source of click-through revenue constitutes bad faith. The Respondent was on constructive notice of the Complainant’s trademark under 15 U.S.C. § 17021. The Respondent failed to submit a Response in this proceeding.
Held: There appears to have no connection with the subjects mentioned in the Respondent’s pay-per-click page and it does not appear to be competing with the Complainant’s wine business in any discernible way. Further, the Complainant has not made any assertion nor provided any evidence regarding the reputation of its CANDLEGLOW mark, other than a copy of its trademark registration certificate. As such, the Panel cannot conclude that the mark is well-known and that users seeing the <candleglow .info> domain name will likely associate it with the Complainant or its products bearing the mark. Although the Respondent has not participated in these proceedings to explain its actions, the Panel finds that the Complainant has not met its threshold burden of presenting a prima facie case that the Respondent has no rights or legitimate interests in the disputed Domain Name.
Relying upon constructive knowledge as evidence of bad faith is disfavored under the Policy unless it can be reliably demonstrated that both parties are subject to a national jurisdiction that applies such principle of law. Meanwhile, the Complainant does not address the issue of actual knowledge on the part of the Respondent. In an effort to give the Complainant the benefit of the doubt, the Panel conducted a Google search of the term “candleglow” but no mention was made of the Complainant or wine on the first page of results. Based on the lack of reputational evidence submitted by the Complainant and the results of the Panel’s limited research, the Panel cannot conclude that the Respondent had prior knowledge of the asserted CANDLEGLOW mark or that it registered the disputed Domain Name in bad faith.
The Complainant further argues that, “[f]irst, inactively holding a domain name is generally considered evidence of bad faith under Policy ¶ 4(b)(iii)” and “[s]econd, using the domain as a source of click-through revenue constitutes bad faith under Policy ¶ 4(b)(iv).” These are presumptions, however, and typically only apply where a preponderance of the evidence shows that a Respondent specifically targets a complainant’s mark with its disputed Domain Name and intends to confuse therewith. Where there is no evidence of targeting, and a likelihood of confusion is otherwise tenuous, bad faith may not be presumed. The Panel finds that the Complainant has not met its burden of proving by a preponderance of the evidence that the disputed Domain Name was registered and is used in bad faith.
Complaint Denied
Complainants’ Counsel: NA
Respondents’ Counsel: NA
Case Comment by ICA Director and Domain Name Investor, Nat Cohen:
Kudos to Panelist Steve Levy on a very well-reasoned decision.
It is a little odd that the Complainant, a winery, is accusing the Registrant of having registered <CandleGlow .info> in bad faith, when it is not the registrant of candleglow.com, which is in fact listed for sale for $3,995. (The Complainant owns candleglow .net.)
Further, the page at <CandleGlow .info> is a GoDaddy default landing page, with the advertising links provided by GoDaddy for its sole benefit.
The links, even if they had targeted the Complainant, which they did not, would not have been helpful evidence as to the Registrant’s intentions in registering the domain name. For an analysis of the appropriateness of drawing inferences of bad faith from PPC links appearing on a registrar default landing page, please see my comment on the Decathlons.org decision.
Since the Complaint against <CandleGlow .info> was filed a mere 12 days after the domain name was registered, it’s no great surprise that there isn’t a developed website on the domain name yet. As for other potential legitimate uses of a “candleglow” domain name, there is a <CandleGlow .nl>, which is the address of a website selling — candles!
The allegations that the domain name was registered and used in bad faith to target the Complainant are unsupported, as Levy recognized.
Yet it is somewhat disturbing to realize that although the evidence to support the allegations in the Complaint are utterly insufficient, it would not have been an aberrant outcome for a Panel to have issued a transfer decision. To order a transfer would be in line with the reasoning in many prior decisions, which would go something like this:
- prior trademark, duty to search and to avoid existing registered marks;
- monetization of traffic, likely intended for the Complainant, through PPC ads, thus an attempt to profit off of the Complainant’s goodwill;
- Respondent is responsible for the PPC links, even if placed by registrar with no knowledge of Respondent, thus use in bad faith can be found;
- No response by Respondent, thus none of the allegations by Complainant are rebutted, and the Panel is free to accept as true any reasonable allegations the Complainant has made.
It is a little disturbing how even in a case such as this, where the evidence does not support the speculative allegations of the Complainant, a Panel can rely upon the reasoning adopted in many prior UDRP decisions to justify making inferences that would lead to a transfer decision.
Even if the consensus among most panelists is that such an approach is unjustified, there is nothing that can be done currently to prevent certain panelists from continuing to order unjustified transfers in situations such as this one.
Matter of Typo-squatting – Elkem v Elkeem(.com)
Elkem ASA v. Jungyunkook, WIPO Case No. D2023-4737
<elkeem .com>
Panelist: Mr. Andrew J. Park
Brief Facts: The Complainant, a Norwegian company group founded in 1904, is a provider of advanced silicon-based materials used in connection with electric mobility, digital communications, health and personal care, as well as smarter and more sustainable cities. The Complainant has offices and facilities across five continents, with more than 7,300 employees worldwide. The Complainant has a registered trademark ELKEM in the United States and has been granted trademark protection in a large number of jurisdictions, including China, the European Union, and the Republic of Korea (registered in 1990), among others. The Complainant has had a business presence in the Republic of Korea for three decades and currently operates two offices and one facility in that country. The Complainant has its official website with the domain name <elkem .com>. The Respondent registered the disputed Domain Name on April 1, 2022, and it currently resolves to a pay-per-click website. The Complainant sent a cease-and-desist letter to the Respondent. The Respondent did not respond.
The Complainant alleges that the disputed Domain Name consists of the term “elkeem” which features a minor intentional misspelling of the Complainant’s trademark and intentionally chose the disputed Domain Name to generate traffic and income through a website displaying PPC links. In addition, the Respondent sought to sell the disputed Domain Name for $5000 and has engaged in prior cybersquatting activities by having registered numerous domain names that are confusingly similar to the principal domain names of other businesses, or that include third-party trademarks and cyberflight activities. The Respondent did not submit a formal response to the Complainant’s contentions. However, in the Respondent’s email of November 23, 2023, the Respondent claimed that it registered the disputed Domain Name in 2022 because it believed the disputed Domain Name had international character and therefore value. The Respondent further claimed that per its search on a Korean search portal, there were only results for the Complainant’s trademark ELKEM, and that there were no findings for “elkeem,” which is part of the disputed Domain Name.
Held: There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed Domain Name or has been commonly known by the disputed Domain Name. The Respondent registered the disputed Domain Name and created a website using the disputed Domain Name redirecting Internet users who visit the Respondent’s website by clicking the PPC links leading to third-party websites, all to confuse Internet users or consumers about the relationship between the Respondent and the Complainant and all without the Complainant’s permission or authorization. These facts demonstrate that the Respondent never had an intention to use the disputed Domain Name in connection with a bona fide offering of goods and or services.
The Panel further finds the Respondent intentionally registered the disputed Domain Name in bad faith. The Respondent registered the disputed Domain Name, which is confusingly similar to the Complainant’s trademark, ELKEM, while aware of the Complainant’s business and its trademark. The Complainant holds numerous registrations of the trademark ELKEM in various jurisdictions worldwide including in the Republic of Korea where the Complainant has had a business presence since the 1990s and where the Respondent is located. The Respondent registered the disputed Domain Name in 2022, which is almost three decades after the Complainant’s earliest registration of the trademark ELKEM. Thus, the Respondent must have targeted the Complainant’s distinctive and well-known trademark to show a business relationship between the Respondent and the Complainant or to otherwise benefit from the likelihood of confusion with the Complainant’s trademark.
The panel further finds that the Respondent has been using the disputed Domain Name in bad faith. The Respondent intentionally engaged in activities intended to mislead Internet users and cause confusion between the disputed Domain Name and the Complainant by associating the disputed Domain Name with a website that contains PPC links leading to third-party websites, all for commercial gain. Further, the Complainant submitted evidence of the Respondent having registered numerous additional domain names that are either confusingly similar or identical to the principal domain name of other companies and also the Respondent has a history of being a respondent in multiple prior UDRP complaints. This conduct by the Respondent is considered cybersquatting and cyberflight, respectively, and is indicative of bad faith use of the disputed Domain Name. Such a record of the abuse of domain name registrations is probative of the Respondent’s conduct in this case.
Complaint Denied
Complainants’ Counsel: Zacco Norway AS, Norway
Respondents’ Counsel: Self-represented
Case Comment by ICA Newsletter Editor, Ankur Raheja:
This matter involves a typo for a distinctive mark ELKEM that has been used by the Complainant for the last many decades. The Respondent claimed that it registered the disputed Domain Name in 2022 because it believed the disputed Domain Name had value and that as per Korean trademark search, there were only results for the Complainant’s trademark ELKEM, and that there were no findings for “elkeem.” However, the Respondent failed to provide any reasonable explanation for registering the disputed Domain Name for example if ‘ELKEEM’ has a meaning in any language. Additionally, the disputed Domain Name <elkeem .com> was parked displaying PPC links to inappropriately capitalize on the Complainant’s trademark. This is indeed a matter of typosquatting, wherein the disputed Domain Name contains an additional ‘e’ and could divert visitors from the Complainant’s official website <elkem.com>. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011:
Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith. Where the misspelled word or words are generic, there is no remedy under the Policy. Where, however, they are trademarks, even though they may also be generic in a different context from that for which they are registered and/or used, (for example the term “apple” should it be used in <apple .com> with respect to a web site offering fruit, namely apples, is in all likelihood, generic), nevertheless, given the reputation of those marks in another field with which the mark is associated and where the mark is clearly not generic, then the intentional registration and use of the misspelled word or words (for example <apple .com>) clearly manifests an intent to capitalize on the mark and constitutes bad faith under the Policy. Such is the case here.
Also see Wells Fargo & Company v. Ken Laidlaw [Claim Number: FA2102001932164]:
“Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark, or perhaps into a domain name or other mark related to or sponsored by the target trademark holder, and then registers the resulting string in a domain name. The domain name registrant hopes that internet users will:
1) inadvertently type the malformed string when searching for content related to the domain name’s target trademark and/or,
2) in viewing the domain name will confuse the domain name with its target trademark. The registrant then may use the confusion to inappropriately capitalize on the target trademark’s goodwill”.
Trader Joe’s Loses Because This Wasn’t a “Straightforward” Case
Trader Joe’s Company v. Domain Name, WIPO Case No. D2023-5344
<traderjoe .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant has used TRADER JOE’S and TRADER JOE’S-formative trademarks in connection with grocery store services and goods since 1967. The Complainant holds several trademark registrations with the USPTO for the mark TRADER JOE’S, including a USPTO registration dated December 9, 1986. The Complainant also owns the Domain Name <traderjoes .com> and uses it to host its commercial website. The Complainant claims that as a result of use, the mark ‘TRADER JOE’S’ has become a distinctive identifier associated exclusively with the Complainant’s goods and services. The disputed Domain Name was registered on October 11, 1998, and currently resolves to a fairly basic website that bears the header, “TraderJoe .com – Stock Market Trading for the Average Joe,” and then states, “TraderJoe.com since 1998.”
After a few lines of content related to investment activities, two educational videos concerning investing are purportedly made available. According to an archived screenshot dated March 1, 2000, the Respondent’s website was a fairly rudimentary site that featured various bullet-point items with apparent hyperlinks, including: “News and Internet Technology Information”; “Online Search Engines”; and “Online Investment Portal (Financial Information/Stocks/Options/Investing) – Send Email”. The Respondent’s website as of March 1, 2000, also bore a disclaimer and copyright notice.
The Complainant alleges that due to the close similarity of the Complainant’s TRADER JOE’s mark and the Domain Name, the actual confusion has occurred. Given the fact that the Respondent registered the disputed Domain Name under the registrant name “Domain Name,”; the fact that the Respondent’s website is fairly rudimentary, and the fact that, in March 2000, the Respondent’s website bore a disclaimer of affiliation with the Complainant. The Respondent contends that he has been using the domain for several years connected to goods and services, consulting, and advisory in the line of Stock Marketing, Trading, Investing, and Advisory. The Respondent has had the domain for approximately 25 years.” […] “The domain was registered to represent a ‘trader’ that being a ‘trader who trades stocks and options’ ‘joe’ being an ‘average joe’. In fact, a current and historical archive will show that the Respondent’s use of the domain referenced ‘joe’ to being an ‘average joe’, and not of the complainant whatsoever. The Respondent also states that he removed the disclaimer of affiliation with the Complainant (on the March 1, 2000 site) because it had become obvious that the Respondent’s business was unrelated to the Complainant’s.
Held: This is not a straightforward case in part because the record presented by the Parties leaves some open questions. The UDRP is designed to address clear cases of cybersquatting, and it is the Complainant’s burden to prove, on a balance of probabilities, that the Respondent more likely than not targeted the Complainant’s trademark for improper purposes. On the record provided here, the Complainant has fallen short of meeting its burden in this respect. There are reasons to suspect Respondent’s bona fides here. In sum, the Respondent presents a somewhat plausible, if internally consistent, account of his adoption of the term “Trader Joe” and his registration and use of the Domain Name, but does very little to corroborate his story with contemporaneous documentary evidence.
On the other hand, the Complainant has not put forward powerful reasons to support a finding of the Respondent’s bad faith. The Complainant has not shown that its TRADER JOE’S mark, although registered well before 1998, was sufficiently well-known by that time that the Respondent would have been aware of it or, even if he had been aware of it, that the Respondent would have known the mark is so strong that he should be wary of using “Trader Joe” in connection with his own business. Further, although the Respondent’s website is not among the most sophisticated sites on the Internet, the quality of one’s website is not necessarily dispositive and sometimes is not even probative of a respondent’s bad faith. What is apparent from the record is that, as early as March 1, 2000, the Respondent’s website was purporting to offer investment-related information and services.
Finally, and above all, the Complainant initiated this proceeding 25 years after the Respondent registered the Domain Name. Given the similarity of the Domain Name and the Complainant’s trademark, and the fact that the Domain Name has a gTLD “.com” – the most coveted of gTLDs – the Complainant’s inaction vis-à-vis this Domain Name for 25 years raises questions. The Complainant does not state when it first became aware of the Domain Name and does not explain why it did not send a cease-and-desist letter to the Respondent after learning that the Domain Name had been registered and had been used for 25 years. Although the doctrine of laches is generally not accepted as a viable defense under the UDRP, an extraordinary lapse of time (here, 25 years) may reflect the merits of a Complainant’s case. A review of the four non-exclusive bases for bad faith under the Policy, quoted above, does not yield a favourable outcome for the Complainant in the circumstances of this case.
RDNH: The Panel declines to make a finding of RDNH. The Respondent’s main argument in this connection is that the Complainant falsely put into evidence the October 21, 1997 website using the TRADER JOE’S mark (i.e., with the final “s”), even though the Respondent did not own the Domain Name at that time. The Panel does not view this as legerdemain on the Complainant’s part. Rather, the Panel interprets the Complainant’s use of that exhibit as a suggestion that the Respondent had reason to be aware of the Complainant’s mark because this 1997 site used TRADER JOE’S rather than “trader Joe.” Notably, the Complainant did not expressly assert that this site was put up by the Respondent (though the Complainant came close to doing so). In these circumstances, the Panel does not believe that the Complainant has attempted RDNH.
Complaint Denied
Complainants’ Counsel: O’Melveny & Myers, LLP, United States
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
Not all cases are as they may initially appear on first glance. It takes an experienced and astute Panelist to evaluate each case on its merits despite initial impressions. To Americans, Trader Joe’s is what I would consider a very well-known and probably famous brand of grocery stores. Seeing the singular, TRADERJOE .COM, therefore immediately raises a red flag that this is likely a case of cybersquatting. But after evaluating the evidence, this was not a “clear cut” case as the Panelist noted.
One of the primary questions in a case like this is, ‘when did the Complainant become well known”. Here, the Panelist noted that since the Domain Name was registered in 1998, for there to be an evidentiary basis for targeting of the Complainant, the Complainant would have had to have been well-known then too: “The Complainant has not shown that its TRADER JOE’S mark, although registered well before 1998, was sufficiently well-known by that time that the Respondent would have been aware of it or, even if he had been aware of it, that the Respondent would have known the mark is so strong that he should be wary of using “Trader Joe” in connection with his own business.”
The Panelist also astutely noted that the relatively rudimentary nature of the Respondent’s website was not determinative of bad faith. Of course, a rudimentary website can possibly be an indication that the website was a ruse or a pretext used to provide a justification for a domain name registration, but here the website nevertheless did indeed provide information about stock trading and the Respondent’s explanation was plausible. Given the plausibility, the Complainant failed to establish that this was a case of cybersquatting.
Nevertheless, as the Panelist noted, the Respondent “does very little to corroborate his story with contemporaneous documentary evidence” thereby providing “reasons to suspect Respondent’s bona fides here”, as the Panelist noted. Rather than make a very subjective judgment based upon incomplete facts within an expedited summary proceeding such as the UDRP, the Panelist reached the correct conclusion that the case should be dismissed because it is not a “straight forward” case which the UDRP was designed for. This is the appropriate safe harbour for Panelists to avail themselves of where the case is not a clear-cut case of cybersquatting but rather one with competing narratives.
Failing the Telstra Test When Applying Passive Holding
<barnessa .com>
Panelist: Ms. Ezgi Baklacı Gülkokar
Brief Facts: The Complainants are well-known real estate agents doing business in respect of high-end properties in several regions, namely 18 countries and 60 destinations. The Complainants use BARNES trademarks in relation to real-estate services and operate through various websites. The Complainants are joint owners of the “BARNES” trademark registrations before the USPTO, WIPO, EUIPO and different jurisdictions. The disputed Domain Name was registered on October 14, 2023, and is not accessible. The Complainants argue that the fact that the disputed Domain Name resolves to an inactive website does not prevent the finding of bad faith due to the doctrine of passive holding.
The Complainants further allege that the Respondent should be presumed to have known or should have known the Complainants’ trademarks given the international reputation of the BARNES marks and that the Respondent has knowingly registered the disputed Domain Name to mislead the consumers and create an impression of an association with the Complainants. The Complainants also point out that when the phrase “Barnes” is searched on the Internet, the website of the Complainants comes first among the 405.000.000 results. The Respondent did not file a Response.
Held: Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel further notes that the Respondent more likely than not was aware of the trademark BARNES, as the Complainants’ trademark registration predates the registration date of the disputed Domain Name. According to the evidence submitted by the Complainants the Panel finds that the Respondent knew or should have known about the Complainants’ rights (and such information could readily have been reached by a quick online search).
In addition, previous UDRP panels have held that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4). Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed Domain Name does not prevent a finding of bad faith in the circumstances of this proceeding. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed Domain Name, and finds that in the circumstances of this case, the passive holding of the disputed Domain Name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
Transfer
Complainants’ Counsel: MIIP MADE IN IP, France
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
I’ve never heard of the BARNES real estate agency. When I see BARNESSA.COM I think it looks like a surname. Indeed, a search on Facebook shows numerous people with Barnessa as a surname. Maybe it is even a misspelling of “Baronessa” or means something in another language. The Respondent never came forward with any explanation (more on this later) so all the Panel was left with were the Complainant’s allegations and facts.
Notably, the website doesn’t resolve at all so there is no evidence available from it for targeting of the Complainant. Really, all we have is the fact that the Complainant has a trademark for BARNES and says that the additional SA may refer to a French business entity or Saudi Arabia. This is hardly convincing evidence of targeting given that the term, BARNESSA, doesn’t seem to indicate the Complainant and there is no evidence of targeting. Nevertheless, the Panelist invokes the doctrine of passive holding and states that “the passive holding of the disputed Domain Name does not prevent a finding of bad faith under the Policy” [emphasis added]. Does not prevent, but does it establish? The Telstra test held that in order for passive holding to be used as a means of demonstrating bad faith, the trademark must be distinctive and famous (which it arguably is at least), but also there must be no plausible good faith use of the domain name. Here, there is at least one good faith use, namely corresponding to a surname or even a made-up word. Did the Complainant or the Panel consider that there may be plausible good faith uses of the Domain Name? It doesn’t appear so. Ultimately, it appears that there simply was no evidence of bad faith registration or use but the Complainant’s allegations alone were sufficient to win the day since the non-use of the Domain Name was used as evidence of bad faith despite the apparent departure from the Telstra principles.
Now, about the language of the proceeding. I am seeing Panelists depart far too easily from the Rule of general application that the language of proceedings be the language of the registration agreement.
11. Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.
Here, the Panelist’s reason for departing from the Rule is that “it would be inappropriate, given the circumstances of this case, to conduct the proceeding in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or respond to the Center’s communication about the language of the proceeding, even though communicated in Turkish and in English.” That is an insufficient reason on its own, in my view. Departing from the Rule requires something more than a failure to object to proceeding in another language – it requires a rationale on the merits beyond simple non-objection.
It is true that the Centre would have emailed the Respondent with a notice of the proceeding in Turkish and would have also requested in Turkish, submissions on the language issue from the Respondent. But the fact is that regardless, the Respondent was entitled to at least receive a copy of the Complaint against him in Turkish given Rule 11. When the proceeding was commenced, the Respondent had never received the Complaint in Turkish as is required and as such wasn’t provided with the allegations made against him in the language that he had selected by way of his selection of a registrar. The Rule only contemplates that a Panel may “determine otherwise” – but surely this should not be retroactive. After all, the proceeding had already begun upon issuance of the Notice of Commencement and delivery of the Complaint. It was only later, when the Respondent did not respond to a Complaint in a foreign language, that the Panel retroactively determined that the language should be English – and only because the Respondent didn’t respond, not because of any independent reason.
Now, I appreciate that most cases are no-response cases that are instances of cybersquatting. It’s a burden for Complainants to have to file a Complaint in a foreign language when chasing cybersquatters. Nevertheless, natural justice still requires that a Respondent get the allegations against him or her in the language of the registration agreement unless there is a good reason to determine otherwise. The solution to this balance between natural justice and expediency, is to simply require Complainants to file a Google-translated copy of their Complaint in the language of the registration agreement along with their Complaint in the language of their choice. Although frequently somewhat difficult to follow, machine-translated Complaints will at least provide a Respondent with an understanding of the charges made against him or her. In that manner, both sides are treated fairly.
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
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