Retroactive Bad Faith is Unquestionably Long Dead
It is somewhat surprising to see the discarded and discredited concept of ‘Retroactive Bad Faith’ try to come back from the dead as it did in this case. Retroactive Bad Faith in unquestionably contrary to the Policy as thoroughly discussed in this article: The Rise and Fall of the UDRP Theory of ‘Retroactive Bad Faith’ (CircleID, 2017). (read commentary)
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We hope you will enjoy this edition of the Digest (vol. 4.27), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Retroactive Bad Faith is Unquestionably Long Dead (easyshake .com *with commentary)
‣ Complainant Fails to Demonstrate Rights at the Relevant Time (moelist .com *with commentary)
‣ Complainant Refuses Respondent’s Request for Termination (xiaomicolombia .co *with commentary)
‣ MARLINK v. MSARLINK – The Burden of Proof is on the Complainant (msarlink .com *with commentary)
‣ Panel: Parties Must Submit Their Arguments Correctly and Truthfully (medfuture .com)
Retroactive Bad Faith is Unquestionably Long Dead
Healthy Concepts dba EasyShake v. Ginesh Baratcumar, NAF Claim Number: FA2405002099201
<easyshake .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant has been in operation since October 11, 2018, with the business name EasyShake since January 1, 2020. The Complainant uses the EASYSHAKE mark in connection with beverage machines and drink pods and has rights in the mark based on registration with the USPTO (Registered: December 28, 2021; First use: September 5, 2020). The Complainant asserts that the Respondent acquired the Domain Name on May 27, 2020, from Buydomains .com, which had owned the Domain Name since July 2013. The Complainant acquired common law rights in the EASYSHAKE mark before the Respondent registered the disputed Domain Name. The Complainant alleges that the Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use since it resolves to a parked page of the registrar featuring click-through links and has done so since the date of Respondent’s acquisition in 2020.
The Complainant alleges that (a) the Respondent renewed its registration of the domain name on or about April 23, 2024, and, in doing so, violated its representations and warranties in paragraph 2 of the Policy; (b) the Respondent violates Paragraph 4(b)(i) of the UDRP Policy in that the Respondent counter offered to sell the disputed Domain Name to the Complainant for over US $12,350 (over and above the out-of-pocket costs) after the Complainant made an initial good faith offer (US $504) and a renewed offer (US $1,000). (c) the Respondent has not actively used its domain name at all in almost four (4) years… Panels have held that this failure to use the disputed Domain Names signals bad faith registration and use according to Policy Para. 4(a)(iii).
The Respondent contends that the disputed Domain Name was acquired in 2010, ten (10) years before the Complainant filed for a trademark in the same name in 2020 and has actively utilized the Domain Name in its business operations, offering a range of beverage-related products and services that align with the descriptive nature of the domain name. The Respondent further contends that the Domain Name, comprising common English words related to the Respondent’s business in the beverage industry, was chosen for its relevance and utility in describing and promoting the Respondent’s products. Finally, the domain name’s use has been solely in the ordinary course of business, and any inquiries or offers received regarding the sale of the domain have not been solicited by the Respondent, thus reinforcing the absence of bad faith.
Held: The EASYSHAKE mark is comprised solely of descriptive terms which are not inherently distinctive. The Complainant’s evidence shows that the disputed Domain Name was originally registered on May 23, 2010, and, contrary to the Respondent’s assertion, was acquired by the Respondent on May 27, 2020. This was several months before the Complainant applied to register the EASYSHAKE mark and several months prior to its claimed first use of the mark. The Complainant’s declaration states that the Complainant has been selling its EasyShake system and pod packs across the United States and internationally since 2020, and the Panel notes that the earliest invoice (to a buyer in California) is dated December 12, 2020, long after the Respondent registered the disputed Domain Name. Taking all these circumstances into account, the Panel is not satisfied that the Complainant has established common law rights in the EASYSHAKE mark prior to the registration of the Respondent’s Domain Name on May 27, 2020. Accordingly, the Panel finds that the Respondent, based in the UK, was unaware of the Complainant’s then non-existent mark when registering the Domain Name and did so in good faith.
As to the Complainant’s reliance on the concept of retroactive bad faith registration, the WIPO Overview, section 3.2.1 notes that a number of cases in 2009 and 2010 (including Mummygold, Octogen, Parvi and Jappy) explored the so-called “retroactive” bad faith registration; while this particular concept has not been followed in subsequent cases, UDRP paragraph 2 may be relevant on its own terms. Furthermore, as regards the Respondent’s counteroffer to sell the disputed Domain Name to the Complainant, it is clear from the timeline set out in the Complaint that the Complainant initiated the approach to the Respondent to ascertain whether the Respondent would sell the Domain Name to the Complainant and made the initial offers, which the Respondent did not accept. In light of the Respondent’s registration of the Domain Name prior to the acquisition of trademark rights by the Complainant, these circumstances do not support a conclusion that the Respondent registered or acquired the Domain Name primarily to sell, rent or otherwise transfer the Domain Name registration to the Complainant or a competitor of the Complainant.
Complaint Denied
Complainants’ Counsel: Matthew J. Lattig of Charter IP LLC, Virginia, USA
Respondents’ Counsel: Internally Represented
Case Comment by ICA General Counsel, Zak Muscovitch: It is somewhat surprising to see the discarded and discredited concept of ‘Retroactive Bad Faith’ try to come back from the dead as it did in this case. Retroactive Bad Faith in unquestionably contrary to the Policy as thoroughly discussed in this article: The Rise and Fall of the UDRP Theory of ‘Retroactive Bad Faith’ (CircleID, 2017).
Complainant Fails to Demonstrate Rights at the Relevant Time
Moelis & Company v. Lei Jiang, WIPO Case No. D2024-1990
<moelist .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant is a global investment bank that provides financial advisory services to corporations, governments, and financial sponsors. The Complainant states that it is known mainly as “Moelis” but does not provide independent verification of such assertion. The Complainant owns US Trademark for the word mark MOELIS & COMPANY, (Registered: February 23, 2016; First use: July 15, 2007). The Complainant is also the registrant of the domain name <moelis .com>, which it uses for its primary website. According to the Registrar verification, the disputed Domain Name was registered on September 9, 2023. However, the WhoIs record for the disputed Domain Name shows a registration date of June 21, 2013, and the website configured for the disputed Domain Name is passively held. The Chinese Respondent maintains that it is the original registrant of the disputed Domain Name dating back to 2013 and also adds that it registered the Domain Name <list .moe> in 2014.
The Complainant alleges that the first word of its mark is a unique, non-dictionary term and that this, combined with the fact that the disputed Domain Name is almost identical to the Complainant’s domain name <moelis .com> and that the disputed Domain Name may be used to capitalize inappropriately on the goodwill of the Complainant’s said mark, adding that such typo-squatting in itself indicates bad faith. The Respondent contends that the disputed Domain Name is composed of two words: a word from Japanese, “moe”, and the English word “list”, which means a “lovely list” as a whole, asserting that such meaning and composition has nothing to do with the Complainant. The Respondent further denies having been aware of the Complainant or its mark when it registered the disputed Domain Name 11 years ago and asserts that, as a Chinese citizen, the Respondent would not have been aware of a foreign company such as the Complainant in 2013.
Held: The Panel has no reason to disbelieve the Respondent when it says it is the original registrant of the disputed Domain Name, dating from 2013. In particular, the Respondent demonstrates that the domain name <list .moe> is under its control, which supplements the already registered disputed Domain Name. The registration date of the Complainant’s US trademark is February 23, 2016, between two and three years after the registration date of the disputed Domain Name. Subject to scenarios relating to domain names registered in anticipation of trademark rights, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. WIPO Overview 3.0, section 3.8.1. For the sake of completeness, the Panel considers the situation of the Respondent having acquired the disputed Domain Name at the Registrar-provided registration date. In the present case, there is insufficient evidence on the record before the Panel demonstrating that the Respondent might have had any such knowledge or intent to profit from or exploit the Complainant’s rights at the material time.
The Complainant argues that it is impossible to conceive of circumstances whereby the disputed Domain Name might have been registered without knowledge of its mark but produces nothing to show that the Respondent, a person based in China, would likely have heard of the Complainant, an investment bank based in the United States. Indeed, the only evidence that the Complainant produces as to the strength or reach of its mark is a small snippet from the homepage of its website at <moelis .com>. On the other hand, the Respondent asserts that it is a portmanteau of a Japanese and an English word meaning “lovely list”, using the Japanese word “moe” for the “lovely” element. Were it not for the Respondent’s additional registration of the Domain Name in 2014, the Panel would have found this reasoning difficult to believe based on the present limited record. Of greater significance is the fact that the Panel does not know and is not told by the Respondent exactly what the “lovely list” is to which the Respondent refers, and of what items it would consist. Importantly, there is no evidence that the Respondent has ever developed a website (whether consisting of a list of items or otherwise) under either the disputed Domain Name or <moe .list>.
On the assumption that the Complainant can substantiate the alleged international fame of its mark, notably reaching China, at the material date (whether 2013 or 2023) despite having failed to do so in the Complaint, the Panel considers that should new material evidence come to light in future that is reasonably unavailable to the Complainant at the time of the present proceeding demonstrating that the disputed Domain Name is targeting or has targeted such mark, it may be possible for the Complainant to refile the Complaint, subject to the typical considerations on refiling. WIPO Overview 3.0, section 4.18.
Complaint Denied
Complainants’ Counsel: Soteria LLC, United States
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:Interestingly, the Respondent provided a plausible explanation for its registration of the Domain Name despite the Complainant’s contention that it is a unique mark and “impossible to conceive of circumstances whereby the disputed Domain Name might have been registered without knowledge of its mark”. This is a good example of how important it is for a Respondent to come forward with evidence and argument rather than permit a Complainant to rely on
unopposed speculation.The Panel further noted that the Complainant did not provide sufficient evidence of the fame of its mark to support its claim that the Respondent, based in China, likely was aware of the Complainant. The Panel noted “should new material evidence come to light in future that is reasonably unavailable to the Complainant at the time of the present proceeding demonstrating that the disputed domain name is targeting or has targeted such mark”, that the Complainant may be able to successfully refile its Complaint. The Panel referenced 4.18 of the WIPO Overview on the topic, and appeared to specifically be referring to 4.18 (iv). The Panel reached the appropriate balance here in denying the Complainant for lack of evidence of targeting, while also alerting the Complainant that if the Respondent in the future makes use of the Disputed Domain Name in a way that is maliciously targeting the Complainant that this may be grounds that would permit a refiling.
Complainant Refuses Respondent’s Request for Termination
Xiaomi Inc. v. Fabian Dario Rada (Celulares Tienda Radar), CAC Case No. CAC-UDRP-106286
<xiaomicolombia .co>
Panelist: Mr. Douglas Isenberg
Brief Facts: The Complainant, founded in April 2010, states it is “a consumer electronics and smart manufacturing company with smartphones and smart hardware connected by an Internet of Things platform at its core”. The disputed Domain Name was created on August 12, 2002, and, according to the Complainant, “Respondent is using the disputed Domain Name to a website where it displays the official MI logo in relation to the sale of XIAOMI products, the authenticity of which Complainant is unable to ascertain at present.” The Complainant alleges that “Respondent is using the disputed Domain Name to direct internet users to a website that features the orange and white color scheme widely associated with Complainant, all as a means of deceiving internet users into believing that the website is associated with Complainant”; “Respondent is not an authorized reseller”; and Respondent has failed to meet the criteria for resellers as outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The Complainant further alleges that the “Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding” by not responding to an email sent on April 18, 2024. Although no administratively compliant response has been filed, the Respondent sent multiple emails in this proceeding, willing to transfer the Domain Name and added “I have already dismantled the website which is no longer operating.” The Respondent also submitted two signed settlement forms, one of which stated that the disputed Domain Name should be cancelled, and the other stated that the Domain Name should be transferred to the Complainant. The case file does not contain any indication from the Complainant that it accepted either version of the settlement agreement and, instead, the Complainant submitted a statement that “we would like to reinstate the current UDRP proceeding.”
Held: WIPO Overview 3.0, section 2.1, states: “…where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Panel finds that the Complainant has established its prima facie case and, without any evidence from the Respondent to the contrary (indeed, the Respondent has consented to a transfer of the disputed Domain Name), the Panel is satisfied that the Complainant has satisfied the second element of the UDRP.
Section 3.1.4 of WIPO Overview 3.0 states, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith…” Here, it appears that the XIAOMI Trademark is widely known, given the scope and length of the Complainant’s registrations and the scale and reach of its business. Further, by offering for sale on its website the same products that are associated with the XIAOMI Trademark, and without any indication that the Respondent is a reseller (indeed, the Respondent has agreed to transfer the disputed Domain Name to the Complainant), Respondent’s actions are likely to cause confusion and, therefore, constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Transfer
Complainants’ Counsel: Paddy Tam (CSC Digital Brand Services Group AB)
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Generally, a Complainant should agree to the expeditious resolution of a dispute where the Respondent has consented to transfer since it is in the Complainant’s own interest. But where a Respondent has forced a Complainant to proceed by failing to respond to pre-proceeding correspondence – as was the case here – it is understandable that the Complainant decided to proceed to a decision.
MARLINK v. MSARLINK – The Burden of Proof is on the Complainant
MARLINK SA v. ahmed mahmoud fakhr eldin, webeasystep, WIPO Case No. D2024-1591
<msarlink .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant, based in Belgium, specializes in providing telecommunications services and is particularly involved in cybersecurity in the maritime industry. According to the Complainant, it “operates internationally with related companies such as MARLINK SAS in France, MARLINK INC. in the USA, MARLINK AS in the Netherlands, (Kingdom of the).” The Complainant owns various trademark registrations for MARLINK, including the EU trademark, registered on October 4, 2016, and uses the domain name <marlink .com> to operate a commercial website. The disputed Domain Name was registered on April 4, 2024, 12 days before the Complaint in this proceeding was filed. The Domain Name does not resolve to an active website, however, for a few days after registration, the disputed Domain Name resolved to a parking page displaying at least one pay-per-click link established by the Registrar.
The Respondent contends that he selected the Domain Name because it is a combination of the English word “link” and an Arabic term, “msar.” According to the Respondent: “The term ‘msar’ […] derives from the Arabic word for ‘path’ or ‘track,’ aptly reflecting the educational pathway the academy provides to its students in the field of computer science and technology. The addition of ‘link’ to the domain name is intentionally chosen to symbolize the educational connection or link the academy aims to establish between high school and university levels of education. The Respondent further contends that his use of the domain name is closely associated with the established brand ‘webeasystep,’ which has been operational since 2014. The Respondent denies having been aware of the Complainant or its MARLINK trademark at the time he registered the disputed Domain Name.
Held: The Panel need not address the ‘legitimate interests’ element under the Policy, in part because the Panel’s conclusion below in the “Bad Faith” section renders this element moot, and in part because the Respondent did not provide enough record evidence to definitively corroborate his assertion of legitimacy. Nonetheless, the Panel concludes that the Complainant has failed to carry its burden of proving that the Respondent registered and used the disputed Domain Name in bad faith under the Policy. Based on the record provided, the Panel cannot conclude, on a balance of probabilities, that the Respondent more likely than not had the Complainant’s MARLINK trademark in mind when registering the Domain Name.
The Complainant has not provided enough information about the renown of its mark or the extent of its activities in Egypt (or the Arabic-speaking world) to lead the Panel to conclude that the Respondent probably targeted the Complainant’s mark. The Panel is not saying that it accepts at face value, the Respondent’s largely uncorroborated explanation for registering the Domain Name, but the Respondent’s account does not appear implausible on its face or contradicted by anything else in the record. Again, because the burden of proof rests with the Complainant in this proceeding, the lack of evidence on both sides here compels a denial of this Complaint.
Complaint Denied
Complainants’ Counsel: MIIP – MADE IN IP, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: I appreciate the Panel’s approach in this case. As the Panel noted, the Panel need not be entirely convinced of a Respondent’s arguments, particularly where they are largely uncorroborated, and can still dismissed the case because the burden is on the Complainant. It is the Complainant who must marshal sufficient evidence to convince a Panel on the balance of probabilities. Where the Complainant fails to do so, the case must be dismissed – not as a tribute to the defence of the Respondent but rather as a consequence simply of the burden of proof.
Panel: Parties Must Submit Their Arguments Correctly and Truthfully
Clinique Medfuture inc. v. Audrey Larose, Globulab, CIIDRC Case No. 23058-UDRP
<medfuture .com>
Panelist: Mr. Bart Van Besien
Brief Facts: The Complainant states that there has been a dispute in the past between the Respondent and Mr. Eric Tremblay. Mr. Eric Tremblay is the brother of Mr. Mario Tremblay, the representative (and director) of the Complainant. On June 21, 2018, the Superior Court of Quebec granted Mr. Eric Tremblay the right to buy back the shares of the Respondent in Myrrha Santé Inc. The Complainant further submits that the disputed Domain Name is identical or confusingly similar to the MEDFUTURE Trademark, which is registered and has acquired distinctiveness. The Respondent contends that she acquired the disputed Domain Name in August 2018. At that time, she was still married to Mr. Eric Tremblay, and Mr. Eric Tremblay “was running this new business”.
The Complainant alleges that the disputed Domain Name was registered in bad faith to harm or sell it for a high profit and that the disputed Domain Name is identical or similar to the domain name used by the Complainant, i.e. <medfuture .ca>. The Complainant further alleges that the Respondent’s holding of the disputed Domain Name is blocking its further international growth and that the Respondent owns a competing company called “Globulab Inc”. On the other hand, the Respondent further contends that she bought the disputed Domain Name not to cause harm to the Complainant, but to protect herself and reclaim her own Domain Name Globulab, which according to the Respondent was taken away from her by the Complainant and Mr. Eric Tremblay during the court proceedings regarding Myrrha Santé Inc. in 2017-2018.
Held: The Panel emphasizes that the parties must present their arguments correctly and truthfully. The Complainant should not claim that its trademark is registered if this is not the case. In the same sense, the Respondent should not claim that she registered the Domain Name in August 2018 when she was still married to Mr. Eric Tremblay, where from the decision by the Superior Court of Quebec of June 21, 2018, it appears that she had divorced Mr. Eric Tremblay in November 2017. Also, the Respondent should not state that the Complainant offered only US $1500 for the Domain Name, whereas from the Complainant’s email of March 22, 2024, it appears that the Complainant in fact offered US $3000. Finally, the Respondent made contradictory statements regarding the price she paid for the disputed Domain Name (she mentions prices ranging from US $5000 to $7000).
Be it as it may, the trademark that the Complainant relies on is not yet registered, and a pending trademark application does not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i). The question is whether the Complainant has unregistered or common law trademark rights in the MEDFUTURE Trademark. The Complainant refers to “sustained and significant use in commerce” and to evidence in the form of customer testimonials, advertising campaigns, reviews in industry publications, and significant traffic on its website. However, the Complainant did not provide any evidence in support. The Complainant also did not provide any evidence regarding the duration and nature of the use of the mark, the number of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, consumer surveys, etc. The Panel checked the website of the Complainant available via the Domain Name but could not find sufficient evidence of acquired distinctiveness.
The burden of proof is on the Complainant. The Panel finds that the Complainant has not established sufficient secondary meaning in the MEDFUTURE Trademark to create common law or unregistered trademark rights in the mark.
Complaint Denied
Complainants’ Counsel: NA
Respondents’ Counsel: NA