Challenging UDRP Awards in an ACPA Action (Special Guest Article Series)
CHALLENGING UDRP AWARDS IN AN ACPA ACTION: SOME PRELIMINARY OBSERVATIONS
It would be most unusual were there never any errors in deciding UDRP disputes. I’ll address these issues of error and “appeal” over several articles beginning here with some preliminary observations. Commentators have flagged a good number of errors over the years in which panels have awarded disputed domain names to complainants. Rarely is It the other way round, but neither is it unheard of.
The question that naturally arises is whether in these circumstances the losing party has any remedy from panelist error? It does, but not within the UDRP as there is no built-in appeal mechanism. However, the UDRP is a nonexclusive mechanism that contemplates either before or after an award the matter may be removed or the losing party can take its grievance to a court of competent. Removal before a matter has been adjudicated is almost unheard of (the rare example is <sdt.com> in which the registrant negotiated a settlement and retained control of the domain name). I’ll focus on post-award litigation to dramatize the process and outcome.
Contemplated subsequent court action is codified in paragraph 4(k) of the Policy. A losing respondent has a brief window of 10 business days to file a complaint in a court of competent jurisdiction before the transfer is carried out. Upon the filing of the complaint the transfer is stayed pending the final ruling of the court. In the US, the court of competent jurisdiction would be a district court for declaratory and injunctive relief under the Anticybersquatting Consumer Protection Act (ACPA), an Act within the Lanham Act of 1946 (as Amended). Most likely for the reasons I will briefly mention in a moment the complaint will be filed in a district court at the location of the registrar of the disputed domain name… Continue reading here.
We hope you will enjoy this edition of the Digest (vol. 4.31), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Can TLD Suffixes Sometimes be Taken into Account? (abnormal .ai *with commentary)
‣ Panel: Complaint Was Unfounded Due to Prior Domain Registration (1inch .com *with commentary)
‣ Was the Complainant Robbed of a Transfer? (eddiebauercostarica .com *with commentary)
‣ Should RDNH Have Been Considered? (parlorpizza .com *with commentary)
‣ Was the Respondent Aware of the Complainant? (epalatine .com *with commentary)
Can TLD Suffixes Sometimes be Taken into Account?
Abnormal Security Corporation v. Narendra Ghimire, NAF Claim Number: FA2405002099733
<abnormal .ai>
Panelist: Mr. Michael Albert, The Honorable Neil Anthony Brown KC and Mr. David S. Safran (Chair)
Brief Facts: The Complainant has rights in the marks ‘ABNORMAL’ and ‘ABNORMAL SECURITY’. The Complainant argues that the disputed Domain Name <abnormal .ai> is identical or confusingly similar to its trademark and that the .ai TLD should not be considered in evaluating this issue. The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name and that the Domain Name was acquired in bad faith since the Respondent must have known of the Complainant and that it is not actively using the Domain Name.
The Respondent contends that the disputed Domain Name <abnormal .ai> merely consists of a generic dictionary term and that the Complainant was not the owner of the original, lapsed domain name registration and thus the Complainant cannot base grounds for transfer on anything related to the prior Domain Name registration. The Respondent further contends that it did not know of the Complainant or the prior registrant before it acquired the Domain Name and that the Domain Name was legitimately acquired at auction.
Held: The Complainant has established its ownership of both the trademarks – ABNORMAL and ABNORMAL SECURITY. The disputed Domain Name is likely considered identical to the ABNORMAL trademark if the TLD “.ai” is ignored, following the traditional approach. However, “.ai” and other new gTLDs have an actual meaning and it is unrealistic to ignore them. The “.ai” suffix is universally and increasingly taken to mean “artificial intelligence” and those who register domain names with this suffix typically intend to indicate a connection to AI activities, not just Anguilla. Thus, realistically, the Domain Name in this proceeding means abnormal or abnormality as related in at least some way to artificial intelligence.
Accordingly, internet users would see the Domain Name as signifying the notion of “abnormal”, but only where it is related in some way with artificial intelligence and would have no reason to associate it with the Complainant’s trademark which covers security, not artificial intelligence. In that case, which in the Panel’s opinion is a more practical and realistic way of interpreting the present Domain Name, it is for the foregoing reasons not identical to the ABNORMAL trademark and is not confusingly similar to it. Nevertheless, as already noted, as the requirement in Policy ¶ 4(a)(i) has been construed by many panels as a minimal requirement to have “standing” to bring the proceeding, then ignoring the Top Level Domain and viewed from that limited perspective, the Complainant has met the formal requirement.
The Panel finds that the Respondent has a right or legitimate interest in the disputed Domain Name, having bought it at auction as part of its business of buying and selling domain names consisting of generic terms. The word “abnormal” is an ordinary dictionary word in the English language and therefore, in the absence of compelling evidence of bad intention or other reason to doubt the propriety of the Respondent’s conduct, it has the right to use it and hence a legitimate interest in it. The Complainant does not show by evidence that either of its marks is famous or prominent, despite their use and recognition. Thus, there is no evidence to rebut the presumption that the Respondent is entitled to use this dictionary and generic word in its domain name. Further, the evidence indicates that the Respondent was simply buying a generic domain name at an auction which is not bad faith, nor is doing so with the intent to resell it, unless in breach of the Policy. Nor does the evidence show that the Respondent has used the Domain Name in bad faith.
RDNH: While the Complainant’s case was weak, the Panel finds that it is not such that the Complainant could not have considered it possible that it might prevail. Rather, it is a case where the Complainant may well have considered on reasonable grounds that it could prevail and that it was therefore justified in bringing the proceeding. Thus, the Panel finds that Reverse Domain Name Hijacking has not been attempted.
Complaint Denied
Complainants’ Counsel: Britt Anderson of Perkins Coie LLP, USA
Respondents’ Counsel: Steve H. Lieberman of Greenberg & Lieberman, LLC, USA
Case Comment by ICA General Counsel, Zak Muscovitch: I appreciate that the Panel in this case explored the concept of “confusing similarity” and am glad that this concept has been revisited here. As I have written about previously, I am of the view that the concept has been whittled away somewhat to the point where some Panels are satisfied with mere similarity, without confusing similarity. In thoughtfully considering the concept in the context of the additional meaning provided by a TLD suffix, the Panel has caused us to think about whether TLD suffixes must always be ignored.
TLD suffixes do have meaning in some cases, as the Panel noted, and therefore cannot always be ignored when evaluating other aspects of the Policy. Such was the case in Tesco Stores Limited v. M.F., WIPO Case No. DCO2013-0017, involving the domain name, Tes.co and the well-known Tesco store chain. There, the Panel observed that;
“There is no rule either within the Policy or that might affect its application, that precludes panels from taking into account TLDs. It is the case that most panels do not, because most of the analysis that takes place is at the second level. And that is because, simply, the TLD, being generic in nature, does not usually form part of the trademark to which a domain name is being compared. But that does not establish any kind of rule that precludes TLDs being taken into account.”
As you can see with Tesco, it would be very difficult to ignore the effect of the TLD in such as case. So if a TLD suffix can be taken into account in favour of a Complainant such as in Tesco, surely it can also be taken into account in favour of a Respondent in comparable circumstances, such as where the inclusion of the suffix in combination with the second-level domain name creates a new word that renders it no longer confusingly similar to the trademark? Let’s take a look. A made-up example is, Painti.ng. (.ng being the ccTLD for Nigeria). Is this domain name confusingly similar to the (made-up) trademark PAINTI? As the Panel noted, to ignore the suffix in such a case would be “unrealistic”. I imagine that it could still be considered confusingly similar under the Policy, but the obvious reference to “painting” through this “domain hack” of sorts, would likely give a Respondent a significant defence to the accusation that the domain name was registered to target the trademark owner.
Panel: Complaint Was Unfounded Due to Prior Domain Registration
1inch Limited v. Kwang Lee, WIPO Case No. D2024-2132
<1inch .com>
Panelist: Mr. Flip Jan Claude Petillion
Brief Facts: The Complainant is the owner of several trademarks including the 1INCH word marks, registered in EU (May 21, 2021) and UK (December 3, 2021). The disputed Domain Name was created on October 25, 1999, and was mostly directed to “Under Construction” and/or “Coming Soon” web pages. The disputed Domain Name currently resolves to a standard web page of the Registrar, offering the disputed Domain Name for sale. The Complainant alleges that the Respondent attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and that the disputed Domain Name was registered with the purpose of selling to the Complainant.
The Respondent, in an informal response, contends that it initially created the disputed Domain Name for a potential LCD flat-screen monitor business in 1999. The Registrar’s free parking page now appears at the disputed Domain Name without having ever requested it from GoDaddy nor having received any compensation from it. The Respondent further contends that the Complainant tried to cover up their weakest point by failing to point out their trademark registration dates, as these registrations occurred years after the registration of the disputed Domain Name and that the Complaint is filed improperly and amounts to RDNH.
Held: The Panel finds that the Respondent did not register the disputed Domain Name in bad faith by targeting the Complainant or its trademark rights when the Complainant had no trademark rights at the time that the Respondent registered the disputed Domain Name, see WIPO Overview 3.0, section 3.8.1. The Panel observes that the disputed Domain Name was registered in 1999, more than 20 years before the registration of some of the Complainant’s 1INCH trademarks. The Complainant does not show any prior unregistered rights in the 1INCH sign.
Moreover, the Complainant does not explain how the Respondent could have targeted the Complainant or its trademark at the time it appears to have acquired the disputed Domain Name. Therefore, the Panel finds that the Complainant failed to prove that the Respondent registered the disputed Domain Name in bad faith. Finally, panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor), see WIPO Overview 3.0, section 3.1.1.
RDNH: The Panel considers that, when filing the Complaint, the Complainant must have been aware that the disputed Domain Name was registered more than 20 years before the Complainant registered its 1INCH trademarks. Yet, the Complainant failed to mention this pertinent fact in its Complaint and did not allege or seek to demonstrate that the Respondent acquired the disputed Domain Name after the Complainant acquired rights in the 1INCH trademark.
The Panel considers that this was a case which should not have been brought, or at least not presented in the manner it was. Given the relevant facts, the nature of the Policy, and the fact that the Complainant was represented internally by a legally qualified counsel, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Represented Internally
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: It never ceases to amaze me how Complainants can continually bring abusive Complaints when the case law is so clear that a domain name which pre-exists a trademark right cannot have targeted the non-existent trademark right. But it still happens with regularity. What is the reason? One major reason is that the Policy as written, inadvertently leads unwary, ill-informed, or unscrupulous Complainants down this unfortunate path.
Here, the Complainant alleged that it had a corresponding trademark – which it did, and our interpretation of the Policy has evolved to where it matters not whether it was registered before or after the domain name registration. Next, the Complainant alleged that the Respondent has no trademark, and that the Respondent hasn’t used the domain name and ostensibly that the Respondent had never used the Domain Name for anything other than an “under construction” or “coming soon” website – and that is unfortunately often enough for a Panel to find that a Respondent has no right or legitimate interest in a Domain Name. Finally, the Complainant alleged that the Domain Name was registered in order to prevent the Complainant from using the Domain Name, to mislead the Complainant’s customers, and attract Internet users for commercial gain. As readers will be well aware, this language is taken right out of Paragraph 4(b) of the Policy and the Complainant parroted right back to the Respondent and Panel.
It can easily be seen how the Complainant – ostensibly not being familiar with the case law or having disregarded it – could make out a prima facie “case” on the facts here and even believe that all three elements of the Policy were satisfied. Because the principle and indeed “rule”, that the non-existence of a trademark (at the time of domain name registration), precludes targeting and therefore precludes bad faith registration, is nowhere in the Policy itself, a visitor to the Policy could be unaware that this rule even exists. Yet the case law has evolved to clearly arrive at this point, so it has become an “unwritten” but powerful and important part of the “Policy”. There are many more examples of the “unwritten” Policy not being reflected in the written Policy itself.
This makes we seriously wonder whether we are doing a disservice to stakeholders by not codifying where we are in the evolution of the interpretation of the UDRP at this point. I have thought for some time that a companion to the Policy, such as the WIPO Overview or rather, a pan-Provider and stakeholder-built version thereof, would avoid parties misapprehending the Policy in such a manner. But I have come to the view, that parties availing themselves of the Policy must be expressly warned if the Policy does not include all of the law. A codification integrated into the Policy itself could be the answer, but if it is not, a pan-provider stakeholder driven companion must be inextricably and expressly linked to the Policy so that there is no longer any excuse for treating the four corners of the Policy as exhaustive of the law.
Was the Complainant Robbed of a Transfer?
<eddiebauercostarica .com>
Panelist: The Honorable Charles K. McCotter, Jr. (Ret.)
Brief Facts: The Registrar’s verification confirmed that the Respondent is the current registrant of the Domain Name.
The Complainant is the owner of the famous outdoors brand, EDDIE BAUER. The EDDIE BAUER brand is over 100 years old and is known for both its performance and casual clothing and outdoor equipment sold globally including on <eddiebauer .com>. The EDDIE BAUER brand is supported by a vast portfolio of intellectual property rights, including a global portfolio of over 900 trademark registrations covering a wide variety of goods and services (the “Eddie Bauer IP Rights”). The Eddie Bauer IP Rights include a valid trademark registration in Costa Rica for EDDIE BAUER. The Respondent registered the disputed Domain Name on October 20, 2023, and currently it resolves to a PPC link website.
The Complainant alleges that the Respondent has been actively using the Eddie Bauer trademarks in the disputed Domain Name to promote its website for illegitimate commercial gains by operating a pay per click website. The Complainant further alleges that the gap of decades between the registration of the Complainant’s EDDIE BAUER trademark and the Respondent’s registration of the <eddiebauercostarica .com> Domain Name containing the trademark shows bad faith registration and that the Respondent is intentionally trying to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement. Finally, the Respondent used a privacy shield to mask its identity, which makes it difficult for the Complainant to contact the Respondent and amicably settle a domain dispute. The Respondent failed to submit a Response in this proceeding.
Held: Unfortunately for the Complainant, the Respondent’s use of a privacy shield has masked the Respondent’s identity because the WHOIS does not list the name of a Respondent. The Respondent’s use of a Privacy service frustrates the purpose of the Policy and makes it difficult for the Complainant to protect its EDDIE BAUER trademark. The Registrar of the Domain Name <eddiebauercostarica .com> is ALIBABA .COM SINGAPORE E-COMMERCE PRIVATE LIMITED. However, the Complainant does not know the identity of the Respondent. Under RESPONDENT INFORMATION, the Complainant alleges: Although the WhoIs information does not specifically identify the name of the registrant, in Complainant’s experience, when the registrant state and country is listed as “Kuala Lumpur, MY”, the registrant is “Client Care / Web Commerce Communications Limited.”
The Complainant’s identity of the Respondent is a conclusory statement unsupported by evidence. See Ustream. TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598 (The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. The touchstone, however, is that 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, Panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.).
This proceeding is Dismissed. However, the dismissal is without prejudice as the Complainant may be able to bring this proceeding against a proper respondent in the future. The Complaint having not identified the Respondent; the Panel concludes that this proceeding shall be DISMISSED WITHOUT PREJUDICE.
Complaint Dismissed (without prejudice)
Complainants’ Counsel: Bridgette Fitzpatrick of Authentic Brands Group LLC, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: What happened here? The Panel dismissed the Complaint without prejudice to “bringing this proceeding against a proper respondent in the future”. Who is the “proper Respondent”? The proper respondent was confirmed by the registrar in its verification statement which is referenced under “Procedural History” and is ostensibly named under “Parties” in the decision, as “Web Commerce Communications Limited”. Seems clear, right? But something apparently threw the Panelist off. The Complainant mentioned in its Complaint that the “Respondent used a privacy shield to mask its identity, which makes it difficult for Complainant to contact Respondent and amicably settle a domain dispute”. But didn’t the Complainant know the identity of the Respondent at least as of when the registrar verification statement was released by the registrar?
What very well might have happened here, is that the Complaint was commenced while the Domain Name was under privacy, looking something like this:
That may have been why the Complainant stated that it did not know who the Respondent was. But in the ordinary course, the identity of the Respondent would have been revealed via the registrar verification statement issued immediately after the registrar was notified of the filing of the Complaint. And in the ordinary course, the Complainant would have been notified of the registrar verification statement and have an opportunity to revise its Complaint to reflect the actual registrant instead of the unknown Respondent. That may not have happened here. The Complainant may not have amended its Complaint to reflect the Respondent. In any event however, the Panelist would have certainly known the identity of the Respondent as the Panelist’s own decision references the registrar verification and names the Respondent both in the title of proceedings and in the “Parties” section.
Unfortunately, it seems that the Panelist for some reason seized upon the Complainant’s remark about not knowing the identity of the Respondent due to privacy, and possibly did not realize that the identity was known as a result of the registrar verification – if not to the Complainant, definitely to the Panelist.
As a result, we have a very strange decision which compels the Complainant to refile. If the Complainant failed to amend its Complaint after having received the registrar verification, it bears some fault for this. Nevertheless, the Panel could have and likely should have, brought this to the attention of the Complainant if that is what occurred. Certainly, the Panelist himself was well aware of the identity of the Respondent – which is expressly named as the Respondent. So it is confounding how the case was dismissed on the basis of the Complainant supposedly being unaware of the identity of the Respondent. If the Panelist wanted to dismiss because the Complainant failed to amend, that would be very technical but at least comprehensible. But dismissing a case against an identified Respondent because the Complainant stated that it did not know who the Respondent was at the time of filing, is another thing altogether.
Should RDNH Have Been Considered?
<parlorpizza .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant owns and operates three pizza restaurants, known as PARLOR PIZZA BAR, in the Near North area of Chicago, Illinois. The Complainant holds registered trademarks for PARLOR PIZZA BAR with the USPTO, registered on January 19, 2016 (design mark) and October 26, 2021 (word mark). Both marks have the date of first use in commerce as September 12, 2014, and disclaim the exclusive right to use “PIZZA BAR” apart from the mark as shown. The disputed Domain Name was registered on February 21, 2004, and currently resolves to a parking page stating that the Domain Name is for sale. For a time, the Domain Name was redirected to a website featuring an October 27, 2021 news article bearing the headline, “All Three Parlor Pizza Bars Shut Down After Raids from IRS and Police.” The Complainant asserts that this news story is inaccurate and misleading, as well as outdated.
The Complainant further alleges: “On or around April 4, 2022, Respondents offered to sell, acting through intermediary GoDaddy .com, the Domain Name to Complainant for $150,000 US. After further negotiations, Respondents asked for $140,000 US and later $85,000 US.” The Complainant also points out that the Respondent operates pizza restaurants called “Professor Pizza” and “Roots Pizza,” which are located in Chicago within a few miles of the Complainant’s restaurants. The Respondent denies registering or using the disputed Domain Name for nefarious purposes, such as impersonating the Complainant or trying to disrupt the business of a competitor. The Respondent also challenges the validity of the Complainant’s trademark rights, arguing generally that “pizza parlor” is a generic term for a restaurant serving pizza, and that numerous businesses have referred to their pizza restaurants as “pizza parlors.”
Held: The Panel concludes, on the record presented here, that the Complainant has failed to prove that the Respondent registered the Domain Name in bad faith. It is undisputed in this record and expressly alleged by the Complainant that the Respondent registered the Domain Name in February 2004. It is also undisputed in this record that the Complainant did not first use the mark PARLOR PIZZA BAR until September 2014, which is more than ten years after the Respondent registered the Domain Name.
The Panel also notes that, notwithstanding Complainant’s USPTO registrations, the Respondent is correct in asserting that many restaurateurs and patrons use the term “pizza parlor” descriptively or even generically. The Domain Name, of course, is a mere inversion of these two words. The fact that the Respondent appears to have registered the Domain Name before the Complainant ever made use of the trademark PARLOR PIZZA BAR makes it impossible to conclude that the Respondent registered the Domain Name with the Complainant’s mark in mind.
The Panel makes no finding as to the content temporarily hosted on the site or the offer to sell; they cannot in any event overcome this timing issue. Absent evidence of trademark targeting.
Complaint Denied
Complainants’ Counsel: Fuksa Khorshid, LLC, United States
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This was a solid dismissal but why no consideration of reverse domain name hijacking? As written in this Digest on several occasions and also as explained in UDRPPerspectives.org, at Section 4.2, it is important to remember that Rule 15(e) requires a Panel to consider RDNH in some circumstances:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding” [emphasis added]).”
Here, the Complainant brought a case that was doomed to fail from the outset because the Domain Name predated the trademark:
“It is undisputed in this record – and expressly alleged by Complainant – that Respondent registered the Domain Name in February 2004. It is also undisputed in this record (based on the USPTO trademark registration documents submitted by Complainant) that Complainant did not first use the mark PARLOR PIZZA BAR until September 2014, which is more than ten years after Respondent registered the Domain Name.”
It is of course well established that where a complainant should have known its case was fatally weak due to the absence of any evidence of targeting Complainant, RDNH may be found (See for example; Zenni Optical, LLC. v. DNS Administrator / Cykon Technology Limited, WIPO Case No. D2009-1594). Also, where a complainant disregards settled Policy precedent, such as those regarding the registration of a domain name before a complainant obtains trademark rights, RDNH may be found (See; Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653). In the circumstances, one would think that RDNH should at least have been expressly considered, even if not requested by the Respondent. There may have been good reasons for not finding RDNH, but unless a decision discloses them, we will never know.
Was the Respondent Aware of the Complainant?
Banque Palatine v. James Hotka, linkUwant .com, WIPO Case No. D2024-2498
<epalatine .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant, a French bank established in 1780 and based in Paris, is a subsidiary of Groupe BPCE and specializes in supporting small and medium-sized businesses and asset management. The bank adopted its current name in 2005 and owns French trademarks for PALATINE (registered on September 22, 2004) and EPALATINE (registered on April 15, 2009), as well as the domain names <palatine .fr> (registered on October 13, 2004) and <epalatine .fr> (registered on April 15, 2009). The disputed Domain Name was registered on February 9, 2006, by an individual running an online advertising business called “linkUwant .com,” which has been active since 1999. The Domain Name has been offered for sale since at least 2011, with the resolving website featuring sponsored links related to tourism, travel, restaurants, and shopping.
Held: There is no evidence before the Panel as to the extent or reach of the Complainant’s PALATINE trademark as of the disputed Domain Name’s registration date in 2006. The Complainant’s French registered trademark for the word mark PALATINE was registered on September 22, 2004, and its corresponding French domain name on October 13, 2004. Its EPALATINE mark and corresponding domain name were not registered until 2009. It is not known when the Complainant began to use the name internationally. There is no evidence suggesting that the Respondent, an individual based in Indiana, United States, would have been aware of the Complainant’s French PALATINE trademark when it registered the disputed Domain Name in 2006, and even if it was aware this fact would not obviate the pattern of the Respondent’s portfolio. The Respondent explains that the disputed Domain Name was registered for use as part of a network of domain names and websites providing an online advertising service linked to the geographical areas named in the domain names. The Panel is aware from its knowledge that such directory services were popular on the Internet in the early 2000s, prior to the rise in availability and widespread adoption of Internet search engines.
Accordingly, the evidence as a whole tends to suggest that the Respondent did not register the disputed Domain Name in the knowledge of the Complainant’s rights nor with intent to target these. While this would be sufficient to dispose of the Complaint, the Respondent goes further in terms of offering to prove that it adopted the geographic term “Palatine” in the manner of the disputed Domain Name at a much earlier date, namely from the date of registration of its domain name <palatinerealty .com> on February 22, 2004. The Panel accepts on the balance of probabilities the Respondent’s assertion that it was using the term “Palatine” in a domain name before any of the Complainant’s trademark rights came into being. Further, as to the present use of the disputed Domain Name, namely that it has been offered for general sale, the Panel finds no evidence that this activity was targeted to the Complainant or a competitor thereof along the lines of paragraph 4(b)(i) of the Policy. Also there is no evidence before the Panel tending to suggest that this was the Respondent’s primary purpose, when it registered the disputed Domain Name in 2006.
Complaint Denied
Complainants’ Counsel: KALLIOPE Law Firm, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: I especially appreciate how the Panel explained what is amongst the most crucial concepts in UDRP law; reputation. For a Respondent to have targeted a Complainant’s mark, the mark must have had sufficient reputation that the Respondent was aware of it. Here, the Panelist noted inter alia, that; a) There is no evidence before the Panel as to the extent or reach of the Complainant’s PALATINE trademark as at the date of registration of the disputed domain name; and b) There is no evidence suggesting that the Respondent, an individual based in Indiana, United States, would have been aware of the Complainant’s French PALATINE trademark when it registered the disputed domain name in 2006.
As noted in Section 3.4 of UDRPPerspectives.org, “There is no place for the concept of “constructive notice” of trademarks under the Policy.” And further, for “bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, it cannot sensibly be regarded as having any bad faith intentions directed at the Complainant.” Parties and Panelists alike would do well to focus-in on reputation, as it is at the crux of the issue of awareness. Without sufficient reputation, a Panel cannot reasonably infer that a Respondent is aware of a Complainant. Without such awareness there generally cannot be targeting, and without targeting there can be no bad faith.
Moreover, mere awareness of a Complainant’s trademark is not necessarily even determinative of bad faith registration. As stated in Dialoga Servicios Interactivos, S.A. v. Finlead AG, WIPO Case No. D2018-2768 (Dialoga.com):
“Finally, the Panel notes that even had the Complainant been in a position to demonstrate that the Respondent had been aware of the Complainant or its trademarks prior to registering the disputed domain name, which it is not, this fact on its own would not necessarily have led to a finding of registration in bad faith. Something more would have been needed to demonstrate on the balance of probabilities that the Respondent also had an intent to target trademark rights as opposed to merely benefitting from the presence and attractiveness of the dictionary word in the disputed domain name leading to a variety of possible uses which would not necessarily conflict with the Complainant’s rights.” [emphsis added]
Likewise, in the case at hand, even if the Respondent had been aware of the Complainant’s trademark at the time of registration, this alone would have been insufficient to prove bad faith registration. Something more would have had to have been proven in order to demonstrate that there was a bad faith reason for registration instead of the bona fide attractiveness of the term to the Respondent.