Does Res Judicata Apply to Refiled UDRP Complaints?
Looking back at the original case, the Complainant’s arguments (as summarized in the second decision) do not seem to quite match what transpired there.
The US trademark registration application was filed on the same day that the complainant’s domain name was registered, January 23, 2019. The Complainant’s trademark registration application was filed on an intent-to-use basis and claims first use as of June 2019. Remarkably, the disputed domain name is registered the same day – January 23, 2019. Not the greatest of coincidences at a 1/365 shot, but still impressive. There is some lag in accessibility of USPTO applications online, so the disputed domain registration could not have been informed by the trademark filing. Continue reading the commentary here.
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We hope you will enjoy this edition of the Digest (vol. 4.37), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Does Res Judicata Apply to Refiled UDRP Complaints? (scoopsoldier .com *with commentary)
‣ Panel: Complainant Breached Duty of Candor and Compelled Respondent to Expend Substantial Resources Defending Spurious Complaint (pools123texas .com *with commentary)
‣ Panel: “Rudimentary Evidence Filed by the Complainant in Support of Extraordinarily Extravagant Allegations” (wegrow-together .com *with commentary)
‣ Panel: Complainant is a Fraudster Impersonating the Respondent (qw .com *with commentary)
‣ WandaFilms v. WandaFilm – Operating in Different Geographical Regions (wandafilm .com *with commentary)
Does Res Judicata Apply to Refiled UDRP Complaints?
Scoop Soldiers Services Company, LLC v. Top Paw Distributing LLC, NAF Claim Number: FA2408002109450
<scoopsoldier .com>
Panelist: Mr. Eugene I. Low
Brief Facts: In its Amended Complaint dated August 9, 2024, the Complainant explained that it previously filed a complaint in respect of the disputed Domain Name on July 19, 2023, which concluded on August 29, 2023, against the Complainant’s favour. See Scoop Soldiers Service Company, LLC v. Carl Gregory, FA2307002053790, decided by a three-member panel. The Complainant argues that the First Proceeding should have targeted Top Paw Distributing LLC, the current Respondent, instead of Carl Gregory, who did not object to being listed as the Respondent. The Complainant requested a rehearing, even if the current matter is barred by res judicata.
The Complainant alleges that the previous panel conducted serious misconduct when they found the Complainant’s trademark SCOOP SOLDIERS was “merely descriptive,” undermining the Complainant’s trademark rights. Despite acknowledging that the disputed Domain Name was registered three years after the Complainant’s trademark, the panel concluded that the Complainant lacked trademark rights. Additionally, the panel allowed the First Proceeding to proceed with the wrong registrant. Lastly, the likelihood of GoDaddy recommending a domain name like SCOOP SOLDIER(S) is implausible. Therefore, the Complainant requested a rehearing due to reliance on misrepresentations influencing the outcome of the First Proceeding.
The Respondent contends that the Complainant is appealing every aspect of the previous decision and that this appeal lacks merit as the appeal period expired over a year ago. The Complainant provided no proof in its earlier Complaint and relied solely on “allegations,” which the previous panel deemed insufficient. A year later, the Complainant continues to use the same allegations but now cites case law. The Respondent further contends that Carl Gregory remains the owner of the disputed Domain Name, as established in the First Proceeding and that this is a Reverse Domain Name Hijacking case.
Held: Generally speaking, re-filed UDRP complaints would be barred by the principle of res judicata. It is only under highly limited circumstances that panelists may accept re-filed UDRP complaints, e.g. where there was serious misconduct in the original proceedings (e.g. perjured evidence); or where new material evidence that was reasonably unavailable in the original proceedings is now presented. See Paragraph 4.18 of WIPO Overview 3.0. Further, the Policy does not provide for an appeal mechanism – a complainant cannot appeal a UDRP decision to a subsequent panel. Here, the Complainant is essentially arguing that the principle of res judicata does not apply or that the matter should be reheard anyway, for two reasons: (i) a wrong respondent was named in the previous UDRP proceedings; and (ii) the previous panelists committed “serious misconduct”. Contrary to the Complainant’s contentions, this Panel is not aware of any rule or principle which would warrant a UDRP case to be reheard by a subsequent panel notwithstanding that the principle of res judicata applies.
Based on the parties’ submissions and evidence, this Panel considers the principle of res judicata applies and bars the current Complaint. The Panel considers that the two reasons put forward by the Complainant are not valid reasons to warrant a re-hearing of this case. Furthermore, in terms of substance, it appears to this Panel that the Complainant has not raised any new evidence or change of circumstances since the First Proceeding which might or would warrant a re-hearing of this case by this Panel; the only noticeable difference in the current Complaint is that the Complainant has named a “correct” Respondent but the Respondents in both cases appear to be the same person or at least belong to the same group of business. The Complainant is not suggesting that there has been a change of ownership which has broken the chain of registration (which might be a reason for a subsequent panel to re-consider the case). For the above reasons, this Panel dismisses the Complaint based on the principle of res judicata.
RDNH: It appears to this Panel that this is a case where the principle of res judicata clearly applies (and the Complainant was clearly aware of this risk). The reasons for re-hearing put forward by the Complainant are inappropriate and insufficient – in particular, the Complainant ought to have realized that alleging serious misconduct against panelists is a very serious matter and those allegations should not have been lightly made without credible supporting evidence. What the Complainant argues here is really its disagreement with the previous panelists’ determination of the matter on merits – this is not an issue of the panelists’ conduct (or misconduct) at all. To this Panel, this case is a speculative re-filing of the previous complaint and the Complainant (especially since it is legally represented) knew or should have known that this re-filed Complaint could not reasonably succeed. For these reasons, this Panel makes a finding of Reverse Domain Name Hijacking against the Complainant.
Complaint Denied (RDNH)
Complainants’ Counsel: Anthony Davis of Santomassimo Davis, LLP d/b/a OGC Solutions, New Jersey, USA
Respondents’ Counsel: Self-represented
Case Comment by John Berryhill:
John Berryhill, a Prominent UDRP Lawyer has successfully handled hundreds of contested UDRP cases since the beginning of UDRP.
Looking back at the original case, the Complainant’s arguments (as summarized in the second decision) do not seem to quite match what transpired there.
The US trademark registration application was filed on the same day that the complainant’s domain name was registered, January 23, 2019. The Complainant’s trademark registration application was filed on an intent-to-use basis and claims first use as of June 2019.
Remarkably, the disputed domain name is registered the same day – January 23, 2019. Not the greatest of coincidences at a 1/365 shot, but still impressive. There is some lag in accessibility of USPTO applications online, so the disputed domain registration could not have been informed by the trademark filing.
But given that use of the alleged mark did not, by the Complainant’s admission begin until June of 2019, the registration of the domain name in January 2019 could not have been undertaken in view of a mark. There is no stated factual support for the case falling into one of the exceptions involving insider information or announcement of plans.
There isn’t anything that supports the Complainant’s contention about the “wrong party” having been named in the respective proceedings. The first decision states that GoDaddy identified the registrant/Respondent. Now, it appears that the named respondent in the first case was an agent for the named respondent in the second case, which doesn’t really change the overall beneficial ownership on behalf of the business entity in question.
If the Respondent in the second proceeding is in privity of some kind with the original respondent, then I don’t see a problem with the outcome, absent some kind of knowledge in January 23 that the complainant was proceeding with the alleged mark.
The first Respondent, Carl Gregory, is the registered agent for Top Paw LLC <https://ecorp.azcc.gov/BusinessSearch/BusinessInfo?entityNumber=L17809505>
Top Paw LLC, is the registered agent for the second Respondent Top Paw Distributing LLC at the same address <https://ecorp.azcc.gov/BusinessSearch/BusinessInfo?entityNumber=L17898130>.
So, the first respondent and second respondent are clearly related in some way, and the change was probably more along the lines of cleaning up their contact data to name the company instead of an individual associated with it in some way.
Both decisions seem to miss the point that the domain name was registered before any common law rights or registered rights in the mark.
Also frustratingly, neither case mentions the apparent owner of the domain name Top Paw Distributing LLC having also been the Respondent in this proceeding: https://www.adrforum.com/domaindecisions/1865158.htm
“Respondent served as a distributor for Complainant’s pet waste products from about February 2007 until its sales of Complainant’s products fizzled out in the following years. While a distributor of Complainant’s products, Respondent operated under the name “Poopy Do Services, which fact was known by Complainant’s VP for Sales.”
I don’t see how it is possible to name a ‘wrong party’. ADRForum is very picky about who gets named as a party. Even if the “Registrant Organization” is a large corporation who adopts the practice of also having some IT employee named as administrator, they will require both names or actually not allow the complaint to proceed, instead of leaving it to the panel to sort out claims of respondent identity.
So, with that claim, and that allegations concerning the panelists in the first proceeding, it seems the complainant was flailing about in all directions, and the “wrong party” allegation was one of many allegations without a lot of support or explanation.
—
Also see the DNW article on it: https://domainnamewire.com/2024/09/16/thats-smelling-poop-scooping-company-tries-reverse-domain-hijacking/.
Panel: Complainant Breached Duty of Candor and Compelled Respondent to Expend Substantial Resources Defending Spurious Complaint
Pools123 Houston LLC v. John J Mehrman, Aquamarine Pools of Texas, WIPO Case No. D2024-1195
<pools123texas .com>
Panelist(s): Mr. Frederick M. Abbott (Presiding), Mr. William F. Hamilton and Mr. Steven M. Levy
Brief Facts: The Complainant is the listed registrant of the service mark POOLS123 on the Principal Register of the USPTO (dated August 4, 2020). The Complainant asserts prominent use of the POOLS123 mark for over four years, providing a PDF image of a webpage identified as “POOLS123,” but has not provided additional evidence of its commercial activity. The disputed Domain Name was registered by the Respondent on March 7, 2023, and is being used to host a commercial website using the heading “Pools123 Texas”. Additionally, the Respondent has owned and controlled the domain name <pools123 .com> since 2014. The Respondent created a Texas limited liability company, “Pools123 Texas LLC”, on August 30, 2023. The Complainant’s Pools123 Houston LLC was created on December 30, 2019, and is owned by partners, or former partners, of the Respondent.
The Respondent has provided evidence that the Complainant requested that its POOLS123-branded business be linked to the Respondent’s website for Houston area leads. The parties are in dispute regarding ownership of the trademark for POOLS123. The Respondent acknowledges the USPTO registration is under an entity owned by the Complainant but argues this contradicts a prior agreement involving their attorney to assign the mark to an IP holding company for mutual protection. The Respondent cites a long history of association with the Complainant, and further refers to ongoing federal court litigation related to this dispute, without detailing the specifics.
Held: In contradiction to the Complainant’s bald and misleading claim of ownership of the domain name <pools123 .com>, the Respondent has provided evidence of its ownership of the domain name and its use in connection with a web page devoted to the sale of pools back at least to February 2016. The Complainant has failed to acknowledge the Complainant’s extensive history and commercial relationship with the Respondent. There is evidence that even through May 2024, the Complainant was making payments to the Respondent, and it may be that at that stage, the Complainant was managing the <pools123 .com> website while the Respondent was managing and linking (at the Complainant’s request) the <pools123texas .com> website. It is apparent from the evidence that the Respondent was using the domain name <pools123 .com> in connection with an active commercial website long before it registered the disputed Domain Name. The Respondent has established rights or legitimate interests in the disputed Domain Name because it has been commonly known by that name and used a corresponding name to make a bona fide offer of goods and services before notice of this dispute. WIPO Overview 3.0, sections 2.2 and 2.3.
The Respondent registered the disputed Domain Name in March 2023, after the service mark POOLS123 was registered by the Complainant at the USPTO in 2020. The parties are in dispute regarding legal ownership of that mark, while the Respondent contends that it is the senior user of the POOLS123 mark. Based on the limited information and the trademark registration presumption, the Panel believes the Respondent has raised enough doubts about the Complainant’s ownership and exclusive rights in the POOLS123 trademark. Therefore, this presumption alone is insufficient to establish the Complainant as the senior user or prove the Respondent’s bad faith in registering the disputed Domain Name. The Respondent was demonstrably using the term “Pools123” in connection with its business; sufficient to mean that the Complainant has not established that the Respondent lacks rights or legitimate interests in the disputed Domain Name. It would be incongruous for the Panel to determine that the Respondent had registered the substantially similar disputed Domain Name in bad faith.
RDNH: Given an apparent long history of dealings between the Complainant and its principals, on one side, and the Respondent on the other, the Panel considers that the Complainant has breached a duty of candor towards the Panel. The Complainant failed to acknowledge a history of commercial involvement between the parties and the Complainant’s knowledge that the Respondent’s <pools123 .com> website long predated their registration of the POOLS123 mark. The Complainant must have been aware that the Complainant could not establish that the Respondent lacked rights or legitimate interests in the disputed Domain Name well before it refused to withdraw its Complaint during a mutually agreed suspension and this essentially compelled the Respondent to expend substantial resources defending a spurious Complaint. The Complainant acted in bad faith and abused this administrative proceeding. The Panel determines that the Complainant engaged in Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Chamberlain Hrdlicka, United States
Respondents’ Counsel: ESQwire .com PC, United States
Case Comment by ICA General Counsel, Zak Muscovitch: This is a good opportunity to refresh our memory about the requirement for certification of pleadings in the UDRP. In the case of Complainant’s, Rule 3(b)(xiii) requires that inter alia, the following statement be made and “followed by the signature” of the Complainant or its authorized representative:
“Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
This is not a frivolous or easily met requirement. Rather, this requirement imposes a serious burden upon Complainants and their counsel, to ensure that their Complaints are to “the best of Complainant’s knowledge, complete and accurate”. Generally, this requirement requires Complainants and their counsel to disclose all material facts about the dispute, including but not limited to the history of the parties. In the case at hand, the Panel found that the Complainant’s failure to inter alia, “acknowledge a history of commercial involvement between the parties and the Complainant’s knowledge that the Respondent’s <pools123 .com> website long predated their registration of the POOLS123 mark”, constituted a breach of the Complainant’s duty of candor. That duty is found in Rule 3(b)(xiii). As the Panel rightly found, failing to disclose such a material history is unacceptable and deserving of sanction. Moreover, as suggested by the Panel, it ultimately results in self-servingly mis-portraying a Complaint as a run-of-the-mill cybersquatting case when the material history – had it been disclosed, would have shown otherwise.
Panel: “Rudimentary Evidence Filed by the Complainant in Support of Extraordinarily Extravagant Allegations”
Financiere B & B Hotels v. Sylvain Moreau, WIPO Case No. D2024-3170
<wegrow-together .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The French Complainant, incorporated in April 2003, owns three registered trademarks for WE GROW TOGETHER, that includes the French mark (registered on May 20, 2022); International mark (December 30, 2021); and UK mark (August 25, 2023). The Complainant also owns 14 domain names based on “we grow together”. The disputed Domain Name was registered on June 13, 2024, and resolves to the Registrar’s parking page displaying the Registrar’s typical advertisement for its domain brokerage service. The Complainant alleges that the Respondent “clearly” has no specific intention to use it. The Respondent denies any knowledge of the Complainant’s trademark and contends he is a pupil of Geoff Lawton and claims he registered the disputed Domain Name in connection with a project he is starting to establish a Permaculture school under the name “Wegrowtogether” on land he owns in Spain.
The Respondent contends that prior to registering the disputed Domain Name he undertook Google searches of the expression “We grow together”. These searches did not disclose any information about the Complainant or its trademark, rather there were many other uses of “We grow together” – none of whom were by the Complainant. The Respondent also contends that if the Complainant had approached him before filing the Complaint and making what the Respondent considers to be allegations against him “bordering on defamation”, he may have been prepared to transfer the disputed Domain Name to the Complainant for twice the registration cost of EUR 12.16. In its supplemental filing, the Complainant argues that the Respondent should also have undertaken trademark searches rather than Google search and such a search would have revealed the Complainant’s registered trademark. The Complainant also cites paragraph 4(b)(i) of the Policy in support of its argument.
Held: Given the lack of distinctiveness of the expression, “We Grow Together”, this alone is fatal to the claim. Apart from the registrations, the Complainant has not provided any evidence of use or promotion of its trademark or even of the domain names. The mere fact that the disputed Domain Name was registered after the Complainant acquired its Registered Trademarks is insufficient alone to establish this link, especially when both the trademark and the disputed Domain Name concern the common and grammatical English expression “We Grow Together”. Accordingly, the Panel is unable to make a finding that the Complainant’s trademark is well-known. The Respondent has also not provided any documentary materials in support of his claims. However, the Panel’s searches on the Internet reveal that Geoff Lawton is a British-born Australian permaculture consultant, designer, teacher, and speaker working around the world. Moreover, there is also no evidence that the Respondent has used the disputed Domain Name in any way to target the Complainant or its trademark.
There are numerous cases where a failure to conduct appropriate trademark searches has contributed to findings of abusive registration. Typically, these cases involve circumstances where the respondent had some reason to suspect the existence of an incumbent, or the disputed Domain Name is distinctive and not descriptive or comprised merely of dictionary terms and there is evidence of an attempt to take advantage of the complainant’s trademark. On the evidence in this proceeding these factors are absent in this case. The Panel is also not prepared to treat the Respondent’s statement as falling within the scope of paragraph 4(b)(i) of the Policy in the circumstances of this case. It may be arguable that the Respondent’s proposed activities infringe the Complainant’s trademark registered in the European Union. Whether or not there is or would be an infringement is not clear to the Panel. In these circumstances, it would not be appropriate to treat the present case as a case of cybersquatting.
RDNH: The very rudimentary evidence filed by the Complainant in support of some extraordinarily extravagant allegations brings this case very close to qualifying as abusive. After almost 25 years of operation of the Policy, the Complainant and their advisers should be well aware that it is not sufficient merely to point to the fact of registration of a trademark, or a domain name, to support a claim that the trademark is famous. After careful consideration and with more than some hesitation, the Panel will not make a finding of reverse domain name hijacking in this proceeding. The Respondent’s identity was unknown until the Registrar’s verification response (which the Panel does not find objectionable in itself) and it appears that the Complainant’s cease and desist letters prior to filing the Complaint went unanswered.
Complaint Denied
Complainants’ Counsel: Fiducial Legal By Lamy, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
Panelists have a duty to consider RDNH when warranted. That does not necessarily mean that in all such cases where consideration of RDNH is warranted, that RDNH must be found. Indeed, that is precisely what the Panelist rightly in the case at hand did, noting that, “After careful consideration and with more than some hesitation, the Panel will not make a finding of reverse domain name hijacking in this proceeding” [emphasis added].
As noted in UDRP Perspectives at 4.1, a Panel will not have satisfactorily discharged its duty under the UDRP without an express consideration of RDNH where the facts and circumstances warrant. This is so, not just because of Rule 15(e) which requires a Panel to consider RDNH, but also because RDNH is essentially a kind of “counterclaim” that the Respondent is entitled to adjudication of. Indeed, it has been considered expressly “unfair” to deprive a Respondent of the adjudication of its request for a finding of RDNH – even when the Complainant purports to withdraw its Complaint, as the parties are to be treated “equally” under Paragraph 10(b) of the Rules. Even when RDNH is not expressly requested by a Respondent – indeed even in ‘no response’ cases – a Panelist must still consider RDNH where appropriate (see for example, Neurocog Pty Ltd v. Domain Administrator, CentralNic Ltd, WIPO D2024-1076, <neurocog .com>).
I also find it noteworthy that the Panelist commented; “After almost 25 years of operation of the Policy, the Complainant and their advisers should be well aware that it is not sufficient merely to point to the fact of registration of a trademark, or a domain name, to support a claim that the trademark is famous”. Well said. As I said in these pages last week, “Having a trademark is not enough”. A Complainant must prove this, though we often see Complainant’s merely make the allegation that their mark is famous without supporting evidence (see for example, The Vanguard Group, Inc. v. Pieter van Staden / Jobz4Afrika (Pty) Ltd, Forum FA2202001983161, <vanguard-wealth .com>, Denied).
Panel: Complainant is a Fraudster Impersonating the Respondent
Quickware, Inc. / Williams Fred v. Quickware, WIPO Case No. D2024-2516
<qw .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant “Quickware, Inc. (Williams Fred)” claims to be the registrant of the disputed Domain Name and claims that the disputed Domain Name was hacked. In contrast, the Respondent contends plausibly that the Complainant itself is a fraud. The Complainant initially filed the Complaint against “THE HACKER” and then amended the Complaint to name itself as the Respondent to correspond with the registration details. The Complaint attaches the WhoIs record for the disputed Domain Name, showing “Quickware” as the registrant and “Williams, Fred” or “Fred Williams” as a contact, along with a copy of the 2007 Certificate of Incorporation for the Complainant Quickware, Inc from the State of Georgia, United States. The Registrar reports that the disputed Domain Name was created on September 14, 1995, and is indeed registered to the named Respondent Quickware, showing a postal address in Marietta, Georgia. Mr. Williams (whose legal name is Alfred J. Williams) has filed an affidavit and submitted correspondence identifying himself as vice president of Quickware, Inc., a Georgia corporation formed in May 2007, as documented by a certificate of incorporation and articles of incorporation annexed to the Response.
The disputed Domain Name resolves to the Respondent’s website headed “Quickware”, with the tagline “Unisys Mainframe Connectivity including superior Terminal Emulation” followed by a contact telephone number. The Panel notes that the Internet Archive’s Wayback Machine has archived screenshots of a similar website as early as April 1997. The online database of the Georgia Secretary of State shows that an Arizona corporation with this name, of which Mr. Williams was the registered agent, was registered as a foreign company doing business in Georgia in 1995 but dissolved in 2000. The same database shows that the Georgia corporation by this name, of which Mr. Williams was also the registered agent, was formed in 2007 but dissolved in 2011. Thus, it is not evident that there is currently a legal entity known as Quickware Inc., the registrant of the disputed Domain Name and the entity ostensibly operating the associated website for nearly 30 years. Absent evidence of a legal entity or other persons with an interest in the disputed Domain Name, the Panel will treat Mr. Williams as the real party in interest and the registrant “Quickware Inc.” as his alter ego.
Held: The question is, who is the real Fred Williams? The Respondent Quickware furnishes correspondence with the Registrar dating from May 2024, showing that the Registrar had received repeated requests to change the password or email associated with the disputed Domain Name. The Respondent also received an email from the same gmail account cited in connection with the supposed “hacker” named in the Complaint, announcing a hack and demanding payment of USD $20,000 in Bitcoin. And of course, the actual person involved in the Quickware company went by the name Fred Williams, not “Williams Fred” as the Complainant called him, a mistake that accords with the English spelling and grammar errors found throughout the Complaint. The real telling error, of course, is that the Complaint purports to be grounded on a trademark registration for QUICKWARE as a word mark, United States trademark registered on September 8, 1987 (long before Quickware, Inc. came into existence). But this trademark is registered to an unrelated company, Quickware Engineering & Design LLC of Waltham, Massachusetts, United States, and has nothing to do with Quickware Inc.
On the available record, the Panel finds that there is no current, relevant legal entity known as Quickware, Inc. The disputed Domain Name, comprising an inherently valuable two-character string, is registered to “Quickware,” which is a fictitious name or alter ego of Fred Williams used for an apparently long-established information technology business. The unknown Complainant in this proceeding is neither Fred Williams nor a legal entity known as “Quickware”. Rather the record indicates that the Complainant is a fraudster impersonating the Respondent, and there is no evidence that Quickware Inc. continues to exist as a legal entity. Pertinently, the trademark cited by the Complainant is held by an unrelated company, Quickware Engineering & Design LLC of Waltham, Massachusetts. There is no trademark on which to ground a UDRP complaint even if the Complainant were a proper party. Thus, even if the Complaint were allowed despite the apparent fraudulent nature of the proceeding, the first element of the Complaint would not be established.
Complaint Denied
Complainants’ Counsel: Self-represented
Respondents’ Counsel: Internally Represented
Case Comment by ICA General Counsel, Zak Muscovitch: As the Panel noted, the Disputed Domain Name is an “inherently valuable two-character string”. Indeed, two-letter .com domain names are often worth millions of dollars (See for example, jamesnames.com and domainnamewire.com).
Where there is big money, attempted fraud often follows, as it apparently did here. Panelists must be aware that on occasion, unscrupulous parties will attempt to perpetrate a fraud using the UDRP itself. The Panelist in this case was apparently well on guard and thereby avoided becoming an unwitting participant in a potential fraud.
WandaFilms v. WandaFilm – Operating in Different Geographical Regions
<wandafilm .com>
Panelist: Mr. Sebastian M.W. Hughes (Presiding), Ms. Iris Quadrio and Mr. Roger Staub
Brief Facts: The Spanish Complainant, incorporated in 1992, specialising in the production and distribution of Spanish, Latin American, and European films for the Spanish speaking market, under the trademark WANDA FILMS (the earliest Spanish registration: April 16, 1994). The Complainant is also the owner of the domain names <wandafilms .com> and <wandavision .com>, registered in 2002. The Respondent is a listed Chinese Company, incorporated in 2005, operating under the name Wanda Film since 2017. The Respondent is part of the Dalian Wanda Group, a large Chinese corporate group established in 1988, and is one of the largest cinema operators in China. Prior to its name change, in 2017, to Wanda Film Holding Company Limited, the Respondent operated its Chinese language website to promote its business at <wandacinemas .com> and since 2017, it has used the disputed Domain Name to promote its business via the same, Chinese language website targeting the Chinese speaking market, at <wandafilm .com>.
The Respondent’s two applications filed in 2022 to register the trademark WANDA FILM in China have been refused by the Chinese Trademarks Office. However, the Panel notes the CNIPA’s website shows that the Respondent has two valid registrations in China for the trademark WANDA, with a registration date of July 14, 2009, and June 14, 2014 respectively. The Complainant alleges that the Respondent is using the disputed Domain Name in an attempt to tarnish the goodwill of the trademark for the purpose of creating confusion among users and to take advantage of the prestige acquired by the Complainant. The Respondent contends that the Complainant’s three trademark registrations are restricted to Spain, whereas the Respondent is domiciled in China and operates the Respondent’s Website exclusively in Chinese, the Complainant cannot assert any of its rights in the trademark in relation to the disputed Domain Name, under the Policy.
Held: The Panel finds that, before notice to the Respondent of the dispute, the Respondent has used the disputed Domain Name in connection with a bona fide offering of services, and that the Respondent has been commonly known by the disputed Domain Name (WIPO Overview 3.0, section 2.2 and 2.3). The Panel further notes that the Respondent has valid registered trademark rights for the trademark WANDA in China. Furthermore, the evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark. The Panel finds the second and the third elements of the Policy have not been established.
RDNH: This is a proceeding in which, on the facts, the Complainant and its legal representatives ought to have recognised it would not be possible to establish both the second and third elements under the Policy. First, the Complainant operates exclusively in the Spanish-speaking market, possesses trademark registrations in Spain only, and does not have any operations in China. Secondly, the Respondent operates exclusively in the Chinese-speaking market and does not have any operations in Spain or the Spanish-speaking market. Thirdly, the Complainant was aware of the Respondent’s long-standing use of the Wanda Film name and mark in the Chinese-speaking market since 2017. In light of the Complainant’s clear knowledge of the Respondent’s rights or legitimate interests in the disputed Domain Name (WIPO Overview 3.0, section 4.16), the contentions made by the Complainant in the Complaint are entirely devoid of merit.
Complaint Denied (RDNH)
Complainants’ Counsel: Sabatellini & Associats, S.L.P., Spain
Respondents’ Counsel: Schellenberg Wittmer Ltd., Switzerland
Case Comment by ICA General Counsel, Zak Muscovitch: Well done on finding RDNH. For further reading on when RDNH is appropriate, See UDRP Perspectives at 4.2.