Complainant Fails to Prove Prior Trademark Rights
The Panel was of course, correct that a trademark right must predate the disputed domain name for there to be bad faith registration. As noted in UDRP Perspectives at 3.2, for bad faith registration to have occurred, the trademark must predate the Respondent’s domain name registration. UDRP Panels routinely determine that a domain name could not have been registered in bad faith when the registration pre-dates a trademark right. It is axiomatic that a Respondent could not have registered a domain name in bad faith before a Complainant acquired rights in the corresponding trademark. Continue reading the commentary here.
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We hope you will enjoy this edition of the Digest (vol. 4.40), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Complainant Fails to Prove Prior Trademark Rights (voyeur-house .tv *with commentary)
‣ Panel: Complaint Relied on Hopeless Contentions, RDNH Found (polydec .com *with commentary)
‣ The Gall! Respondent Applied for Complainant’s Trademark (adeccostaffingsolutionsindia .com *with commentary)
‣ US Supplemental Registration Alone Does Not Cut It (judiciaryprocessserver .com *with commentary)
‣ Complainant Fails to Prove Reputation (vidsavefrom .com *with commentary)
Complainant Fails to Prove Prior Trademark Rights
Viking Exchange & Marketing Inc. v. Volodimir Chmil / Paysine Ltd, NAF Claim Number: FA2409002114188
<voyeur-house .tv>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant operates in the adult entertainment industry and owns rights to the trademark VOYEURHOUSE, which is registered with USPTO. The Complainant alleges that the Respondent’s use of the domain name causes consumer confusion by suggesting an affiliation or endorsement with the Complainant’s brand which does not exist. This misleading use exploits the Complainant’s trademark’s reputation and dilutes its distinctiveness, indicating a lack of legitimate interest or rights in the domain name and necessitating its removal to protect the Complainant’s trademark rights. This intentional exploitation of the Complainant’s trademark indicates bad faith registration and use, as outlined in Policy ¶ 4(b), necessitating the removal of this infringing domain name.
The Respondent contends that the words “voyeur” and “house” are generic and descriptive terms widely used in the adult entertainment industry. Since registration of the <voyeur-house .tv> domain name in 2015, the Respondent has continuously and legitimately used the domain name to provide a bona fide offering of services in the adult entertainment sector. The Respondent further contends that at the time of registration, the Complainant had no rights to the trademark and therefore the Respondent could not have registered the domain name in bad faith. The Complainant has not provided any evidence of bad faith use by the Respondent, which has operated its website independently and in good faith since 2015, without intent to deceive or mislead consumers.
Held: The <voyeur-house .tv> domain name was registered on September 28, 2015, many years before the Complainant registered its VOYEURHOUSE mark on September 24, 2024, with effect from the application date, September 28, 2023. There is no evidence before the Panel that the Complainant had previously acquired common law rights in the mark. The Respondent has produced Web archive screenshots showing that since November 2016 the Domain Name has resolved to websites featuring adult entertainment. This demonstrates that, before any notice to the Respondent of the dispute, the Respondent has used and is using the domain name in connection with a bona fide offering of goods or services. The Panel therefore finds that the Respondent has rights and legitimate interests in respect of the domain name. The circumstances set out above in relation to the second element satisfy the Panel that the Respondent could not have been aware of the Complainant’s then non-existent mark when the Respondent registered the <voyeur-house .tv> domain name and that the Respondent registered and is using the domain name in good faith.
RDNH: As noted, the Complaint states that the domain name should be considered as having been registered and being used in bad faith because the Respondent intentionally chose a domain name identical or confusingly similar to the Complainant’s trademark VOYEURHOUSE to capitalize on the Complainant’s established reputation. However, the Complainant had no established reputation in its then non-existent mark when the Respondent chose the domain name. The Panel considers that the Complainant must have known that its statement was false and that its Complaint should fail. The Panel, therefore, finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Tao Tran, California, USA
Respondent’s Counsel: Andrei Boiko, Bulgaria
Case Comment by ICA General Counsel, Zak Muscovitch:
The Panel was of course, correct that a trademark right must predate the disputed domain name for there to be bad faith registration. As noted in UDRP Perspectives at 3.2, for bad faith registration to have occurred, the trademark must predate the Respondent’s domain name registration. UDRP Panels routinely determine that a domain name could not have been registered in bad faith when the registration pre-dates a trademark right. It is axiomatic that a Respondent could not have registered a domain name in bad faith before a Complainant acquired rights in the corresponding trademark.
Of course, a Complainant can attempt to prove common law or unregistered trademark rights. There is no indication that the Complainant did so in this case. Here, the Complainant’s trademark registration indicated a date of first use of 2000, thereby long preceding the domain name registration in 2015. As noted in UDRP Perspectives at 1.7, however, it is well established that a claimed date of first use in commerce on a US trademark registration certificate alone, is not evidence of common law rights as of that date.
Such assertions therefore need to be supported by the same kind and volume of evidence required to demonstrate common law trademark rights, but as of the date of claimed first use in commerce. As noted in UDRP Perspectives at 1.1, for a Panel to award common law rights to any expression, thereby granting it the same status as a registered trademark, without proper evidence would be improper and unjust. To support a claim of common law trademark rights, the Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services. Proof of common law trademark rights cannot be based on conclusory allegations. A Complainant will have failed to establish common law rights in its mark where it makes mere assertions of such rights, which are insufficient without accompanying evidence to demonstrate that the public identifies a Complainant’s mark exclusively or primarily with a Complainant’s products.
In any event, it does not appear that the Complainant even attempted to prove common law trademark rights preceding the Domain Name registration in 2015.
Panel: Complaint Relied on Hopeless Contentions, RDNH Found
Polydec SA v. Domain Manager, Knauf Information Services GmbH, WIPO Case No. D2024-3456
<polydec .com>
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant, founded in 1985, supplies precision parts for the medical, watchmaking, automotive and electronics industries and has an online presence at <polydec .ch>. The Complainant owns a Swiss trademark for POLYDEC, (registered on April 3, 2019). The disputed Domain Name was registered on July 31, 1998, on behalf of the French POLYDEC group of companies that supplied building products. One of the companies in that group, Soc SAS formerly owned the French trademark for POLYDEC, (expired on July 12, 2023). Another group company, Polydec, SAS, formerly owned an International Registration for POLYDEC, (expired on November 20, 2023). Around March 2013, the Respondent’s group, which also supplies building products, acquired the French POLYDEC group. The Old Companies were subsequently dissolved. The Complainant asserts that the Respondent no longer has any reason to hold the disputed Domain Name as the Respondent no longer possesses any relevant rights and that there is nothing to suggest that it wishes to use the disputed Domain Name. The Complainant has expressed the wish to “recover” the disputed Domain Name by its trademark rights, the Respondent can be considered as having refused in bad faith to transfer the disputed Domain Name.
The Complainant further alleges that in the absence of evidence that the Respondent retains any rights in POLYDEC or that any connected company is using this name or intends to do so, the Respondent must be presumed to be keeping the disputed Domain Name primarily to damage the Complainant’s business. The Respondent is engaged in a pattern of “squatting” on domain names, i.e., not using them, probably to block competitors, as evidenced by the Respondent’s ownership of, amongst others, the domain names <fitterfriendly .com>, <alutop .com>, and <insulationmanual .com>. On the other hand, the Respondent contends that the disputed Domain Name was first registered in 1998, and acquired by the Respondent in 2013, whereas the Complainant’s trademark only dates from 2018. The responsible person at the Respondent has no record of receiving correspondence from the Complainant and the Respondent’s other domain names are entirely legitimate for, example, “Alutop” is a well-known product of the Respondent and keeping unused domain names to avoid cybercrime or reputational damage is standard practice.
Held: Here, the Panel will treat July 31, 1998 – when the Respondent’s predecessor in title acquired the disputed Domain Name – as the relevant date to assess registration in bad faith. While it could be argued that the Respondent’s acquisition of the disputed Domain Name in 2013 should be considered as a change in ownership given that the previous owner of the disputed Domain Name was a different entity from the Respondent, the Panel does not consider that the 2013 transfer amounted to a material change in ownership, because this occurred in the context of the Respondent’s acquisition of the business to which the disputed Domain Name related. In any case, both dates precede the Complainant’s registered trademark rights, which only arose in 2018. Accordingly, in the absence of any assertion, let alone detail or evidence, of earlier unregistered trademark rights, this is fatal to the Complainant’s case – because the Complainant is required to prove both registration and use in bad faith.
Even if the Complainant had invoked and proved its apparent unregistered rights dating back to the 1980s indicated on its website, the Complainant would still have failed to prove that the disputed Domain Name was registered in bad faith. This is because it is obvious from the undisputed facts that, whether one treats 1998 or 2013 as the material registration date, in either case, the disputed Domain Name was registered legitimately for use in an entirely different industry to that of the Complainant. This is evidenced by the, albeit now-expired, trademarks for POLYDEC owned by the Respondent’s predecessors. In the circumstances of this case, the Panel finds it reasonable to conclude that the Respondent did not have the Complainant in mind at the time that the Respondent acquired the disputed Domain Name. Accordingly, the Complainant’s evidence still falls far short of establishing that the disputed Domain Name was registered in bad faith, and indeed the Complainant does not seriously contend otherwise.
RDNH: The Complaint acknowledges that the disputed Domain Name was registered in 1998 and does not contend for a later material registration date, albeit that the Complainant refers to the Respondent’s acquisition of the business in 2013. Either way, the Complainant should have realised that both dates predated the Complainant’s registered trademark rights, and the Complainant should have addressed the reasons why such registration or acquisition of the disputed Domain Name should nonetheless be treated as having been undertaken in bad faith. The Complainant, or at least its representatives, must have appreciated that there was no prospect of proving that the disputed Domain Name had been registered in bad faith, a mandatory requirement of the Policy. Yet the Complaint made no real effort to establish registration in bad faith and instead confined itself to claiming use in bad faith. Even here, the Complaint relied on a number of hopeless contentions based principally on the alleged (and, indeed, unproven) “refusal” of the Respondent to comply with the Complainant’s request to transfer the disputed Domain Name to the Complainant.
Complaint Denied
Complainant’s Counsel: Infosuisse, Switzerland
Respondent’s Counsel: Internally Represented
Case Comment by ICA General Counsel, Zak Muscovitch:
Rule 12 Of the UDRP Rules (“Further Statements”) says that “in addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”. Why then, should a Panel have to wade through an unsolicited supplemental pleading, especially when it is immaterial to the issues at hand? And for that matter, why should a party be compelled to respond with its own supplemental in response to such an unsolicited and immaterial submission? That appears to be what unfortunately happened in this case. The Panel was compelled to review unsolicited and immaterial supplemental pleadings – without either party even seeking to justify their additional submission. In declining to admit such supplemental filings, the Panel did the right thing in the circumstances, but the Panel should never have been put in that position in the first place. A better solution is needed to supplemental submissions.
As noted by UDRP.group in its series of UDRP Proposals, “consistent, clear rules for Supplemental Filings is required”. The UDRP Group, of which I am a member, identifies the problem as follows:
Problem: Unclear, inconsistent procedures burden both complainants and respondents leading to the needless expenditure of time and funds in the preparation of supplemental filings that are often then rejected by the panel. Unclear procedures also raise issues of equity and timeliness. A panel upon receipt of a late-filed, unsolicited supplemental pleading by a complainant may not provide the respondent adequate, or any, time to prepare a responsive supplemental pleading. Addressing unsolicited supplemental filings may unduly delay an expeditious resolution of the dispute.
And proposes the following as a solution:
Solution: A party must request and obtain permission from the Panel before filing a supplementary or additional submission of any kind. The Panel should allow sufficient time after the filing of the Response (for example, at least three (3) days), for such a request to be made prior to the Panel issuing its decision. The request shall be limited to 300 words and shall only include the grounds for the request. The Panel shall permit a supplemental filing by a complainant where there are new facts and/or legal issues in the response that could not have reasonably been anticipated. If permission is granted, the Panel should ensure that: a) the requester is permitted an appropriate length of time to file the supplemental filing (such as for example, five (5) days); and b) the other party is provided with a reasonable opportunity to respond, with an additional submission of its own, within an appropriate length of time (for example, five (5) days).
Another unrelated aspect of this case which I wish to comment upon, is the Panel’s finding that the July 31, 1998 date – when the Respondent’s predecessor in title acquired the disputed domain name – as the relevant date for the purposes of assessing registration in bad faith. This is sound and exemplary reasoning to me, taking into account the objective of the UDRP itself. The intent of the original registration is what is material, rather than the date that it was conveyed as part of the sale of the business to the new owner, as on the latter date the actual intention in registering the Domain Name cannot be meaningfully assessed since the Domain Name was only nominally transferred at that time as part of the overall sale.
As in the voyeur-house .tv, above, the Complainant failed to provide “any assertion, let alone detail or evidence” of unregistered trademark rights which preceded the Domain Name registration (either the 1998 or even the 2013 later date).
As the Panel noted, this was “fatal to the Complainant’s case” – because in order for there to be bad faith registration, a trademark right must precede the Domain Name registration, as noted in UDRP Perspectives at 3.2.
Lastly, it is notable that the Panel found RDNH in this case inter alia because “the Complainant should have realised that both dates predated the Complainant’s registered trade mark rights, and the Complainant should have addressed the reasons why such registration or acquisition of the disputed domain name should nonetheless be treated as having been undertaken in bad faith”. Hear, hear. All too often we see Complainants simply fail to address what is obviously the material issue in a given case. The Panel demonstrated why doing so is ill advised and can result in RDNH. I especially appreciate how the Panel noted that “the Complainant relied on a number of hopeless contentions”. This too, is a firm basis for finding RDNH, as explained in UDRP Perspectives at 4.2.
The Gall! Respondent Applied for Complainant’s Trademark
Adecco Group AG v. RANJITH M (SUNRISE SECURITY SERVICES), CAC Case No. CAC-UDRP-106813
<adeccostaffingsolutionsindia .com>
Panelist: Mr. Gerald Levine Ph.D, Esq.
Brief Facts: The Complainant is a Swiss multinational that claims itself to be the world’s second-largest human resources provider and temporary staffing firm. The Complainant’s activities have a truly global reach, covering 60 countries and employing over 32,000 experts across the group’s subsidiaries. In India, the Complainant’s business operates through the Adecco and Akkodis brands. In India, Adecco operates through 16 offices spread throughout the national territory, with over 1400 employees. The Complainant is the owner of a large portfolio of registered trademarks for the term ADECCO, including in India, where the Complainant is the owner of, notably, a registered mark dated September 3, 2004. The Respondent registered the disputed domain name on September 2, 2023, and uses it to promote their (apparent) business in the staffing and labour recruitment sectors, where the Complainant is established.
The Complainant asserts that this business, owned by Ranjith M., is said to be an “exporter and service provider” established in 1992. However, the Complainant found no evidence of the Respondent using this name prior to the claim on their website. Additionally, after registering the disputed Domain Name, the Respondent filed a trademark application for “Adecco Staffing Solutions India” on a “Proposed to Use” basis, suggesting that the Respondent was not operating a legitimate business when the domain was registered. The Complainant further alleges that using the disputed domain name in this context will likely lead the public to think that the Respondent is somehow affiliated with the Complainant, which is not the case. The Respondent did not file a response in these proceedings.
Held: The Complainant has demonstrated that the Respondent is not offering a bona fide service, has not been commonly known by the name, and is not making a legitimate non-commercial use of <adeccostaffingsolutionsindia .com>. Rather, the Respondent has misappropriated the Complainant’s ADECCO trademark and is pointing it to an active website that appears to offer services similar to those of the Complainant and which to Internet users would appear to be the Complainant itself. The Complainant asserts that it did not authorize nor does the Respondent have permission to use ADECCO. As the Respondent has not refuted the evidence that it lacks right or legitimate interests in the disputed domain name, and for the reasons herein stated, the Panel finds that the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
The Complainant’s proof in this case focuses the Panel’s attention to clause 4(b)(iv) of the Policy. Here, the Complainant contends and submits proof that the disputed domain name lures consumers to an operating website that impersonates the Complainant by offering services similar to those offered by the Complainant. Misappropriating and using a complainant’s mark to offer competing goods or services is often held to disrupt the business of the owner of the relevant mark and is evidence of bad faith. See Southern Exposure v. Southern Exposure, Inc., Forum Claim No. FA 94864 (“The Respondent is using the domain name to attract Internet users to its website by creating confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Complainant’s website”). As the Complainant has demonstrated that the Respondent registered and is using the disputed domain name in bad faith, it has satisfied Paragraph 4(a)(iii) of the Policy.
Transfer
Complainant’s Counsel: Markus Rouvinen (Thomsen Trampedach GmbH)
Respondent’s Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja:
A simple Google search from India for ‘ADECCO’ reveals results predominantly related to the Complainant and its official websites including <adecco .co .in> indicating the Complainant’s robust presence in India. It is quite astonishing that the Respondent not only attempted to exploit the distinctive trademark of a well-established human resource company, but also made a trademark application for ‘Adecco Staffing Solutions India’ in India within the same class 35, where the Complainant’s mark has been registered since 2005. The trademark application was opposed by the Complainant.
In the facts and circumstances of the case, the Panel held in this cybersquatting matter that misappropriating and using a complainant’s mark to offer competing goods or services is often held to disrupt the business of the owner of the relevant mark and is evidence of bad faith and can never confer legitimate interests.
A simple Google search from India for ‘ADECCO’ reveals results predominantly related to the Complainant and its official websites including <adecco .co .in> indicating the Complainant’s robust presence in India. It is quite astonishing that the Respondent not only attempted to exploit the distinctive trademark of a well-established human resource company, but also made a trademark application for ‘Adecco Staffing Solutions India’ in India within the same class 35, where the Complainant’s mark has been registered since 2005. The trademark application was opposed by the Complainant.US Supplemental Registration Alone Does Not Cut It
<judiciaryprocessserver .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant operates a website at <judiciaryprocessservers .com>, where it advertises its business of serving legal documents in connection with judicial proceedings, “skip tracing”, and providing investigative services. The Complainant registered “Judiciary Process Servers” as a trading name in the State of Maryland on October 13, 2021, and on July 24, 2024, and it holds a US trademark for JUDICIARY PROCESS SERVERS (registered May 14, 2024; first use in commerce: January 2021). However, this mark is registered only on the Supplemental Register of the USPTO. The disputed Domain Name was created on November 12, 2023, and resolves to a website headed “Freestate Investigations, LLC” advertising the Respondent’s process serving, document delivery, investigation, and skip tracing services. The Panel notes that Maryland’s online database of registered companies shows that the Respondent is registered as a Maryland limited liability company that was established in November 2009, with a principal office in College Park, Maryland. The record shows that the Complainant and the Respondent are competitors and also that at times the Respondent has contracted with the Complainant to perform investigative services for the Respondent.
The Complaint attaches a copy of a letter sent from counsel for the Complainant to the Respondent dated July 19, 2024, seeking payment on several overdue invoices for services that the Complainant rendered to the Respondent The letter also demanded that the Respondent cease-and-desist from using the disputed Domain Name and “surrender ownership of that web domain”. The Respondent contends that the Complainant does not have a relevant trademark or service mark, as the UDRP complaint cannot be grounded on a trade name or a mark registered only on the USPTO Supplemental Register, and the Complainant has not adduced sufficient evidence of secondary meaning for UDRP purposes. The Respondent contends that it did not register or use the disputed Domain Name in bad faith with the intent to sell it to the Complainant or a competitor or to confuse Internet users but rather because it describes the Respondent’s own services. The Respondent requests a finding of Reverse Domain Name Hijacking, as the Complainant brought the Complaint without standing, failed to mention that it relied only on a registration on the USPTO Secondary Register, and failed to adduce evidence of secondary meaning.
Held: The Complaint cites two state trade name registrations, but the Policy protects only “trademarks” or “service marks” in which the Complainant has an interest. The Complainant relies on a United States trademark registration on the USPTO Supplemental Register, which cannot of itself ground a UDRP complaint but requires proof that the mark has acquired secondary meaning, as in the case of unregistered or “common law” marks. Barely five months before the disputed Domain Name was registered and the Complainant launched the current UDRP proceeding, the USPTO found that the Complainant’s claimed mark was merely descriptive and had not acquired secondary meaning. The Complainant accepted that finding by amending its application to seek registration on the USPTO’s Supplemental Register. The Panel is unwilling to conclude that within five months the Complainant’s mark suddenly became so distinctive and well-known that it now should be deemed to have acquired secondary meaning. The Panel concludes that the Complaint fails on the first Policy element.
RDNH: While the Respondent appears to be taking advantage of a disputed Domain Name emulating the Complainant’s trade name and domain name (and the Complainant may choose to seek legal recourse for such conduct in another forum), the Policy Complaint was ill-advised. It was expressly grounded on trade names rather than a trademark, as well as a very recent trademark registration that was only on the USPTO Supplemental Register. This meant that the Complainant itself had recently acknowledged that the mark was descriptive and would require time to acquire secondary meaning. The Complainant is represented by counsel and cannot be excused for overlooking such obvious flaws in the Complaint.
Complaint Denied (RDNH)
Complainant’s Counsel: Honos Law PLLC, United States
Respondent’s Counsel: GOODELL, DEVRIES, LEECH & DANN, LLP, United States
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel very clearly and properly found that a UDRP Complaint cannot rely alone on a US Supplemental Registration (see for example, OpenBots, Inc. v. Luciano Coelho, Forum, FA2206001999065, <openbots.com>, Denied, quoting WIPO Overview 3.01 at 1.2.2: “Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights.”
Complainant Fails to Prove Reputation
LTQ LIMITED DIGITAL COMPANY v. ginny kailyn, NAF Claim Number: FA2409002114826
<vidsavefrom .com>
Panelist: Mr Nicholas J.T. Smith
Brief Facts: The Complainant and its predecessors in title have operated, from its website at www.savefrom.net, an online downloader tool that allows users to download videos and other media from YouTube and other Internet sites. The Complainant has rights in the SAVEFROM mark based upon the registration with the USPTO (registered April 5, 2016). The disputed Domain Name was registered on July 3 2024. 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. Instead, the Respondent uses the Domain Name to pass off as the Complainant in order to offer competing services, namely a service described as a “Youtube video downloader”. The Complainant further alleges that the Respondent uses the Domain Name in order to promote a competing business and that the Respondent registered the Domain Name with knowledge of the Complainant’s rights in the SAVEFROM mark. The Respondent failed to submit a Response in this proceeding.
Held: The Domain Name consists of three generic words being “vid” (a common abbreviation of “video”), “save” and “from” which in the context of the use of the Domain Name, has an entirely descriptive meaning (referring to saving a video from a particular location). The Complainant, in its Complaint, submits that the Respondent is trying to misleadingly divert consumers from the Complainant’s Website. The Complainant asserts reputation in the SAVEFROM mark but provides no evidence of any reputation in the SAVEFROM mark or any use beyond its use on the Complainant’s Website. Furthermore, the mere registration of a trademark is not a basis for the Panel to conclude that the Complainant has any particular reputation or fame. The Respondent’s Website does not either explicitly or implicitly make any reference to the Complainant or otherwise suggest an affiliation. The record does not indicate that the Respondent has sought to register any other domain names incorporating the SAVEFROM mark or engage in any other conduct that suggests the use of the Domain Name is anything other than for a bona fide offering of services described in the Domain Name.
Given the lack of evidence provided about the reputation of the SAVEFROM mark in the field the Complainant and the Respondent trade-in, the Panel is not prepared to conclude that the Respondent’s registration and use of a domain name containing the words “vid”, save” and “from” was motivated by awareness of the Complainant, as opposed to the use of the Domain Name for its inherent meaning. The Panel notes that if further information arises that suggests the motives of the Respondent in registering or using the Domain Name related to the Respondent’s awareness of the Complainant’s SAVEFROM mark as opposed to the descriptive meaning of the words comprising the Domain Name there may be grounds to consider a refiled complaint, subject to the applicable criteria. The Panel acknowledges that the Respondent’s conduct may infringe Complainant’s registered SAVEFROM trademark or amount to passing off and the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding.
Complaint Denied
Complainant’s Counsel: LE THAC QUYNH, Virginia, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case once again demonstrates that reputation is everything, in life and in the UDRP. Here, the Panel noted that given “the lack of evidence provided about the reputation of the SAVEFROM mark in the field [that both] the Complainant and Respondent trade in, the Panel is not prepared to conclude that that Respondent’s registration and use of a domain name containing the words “vid”, save” and “from” was motivated by awareness of Complainant”.
Had the Complainant come forward with evidence of its reputation such that it was likely that the Respondent had selected the Domain Name because of the Complainant, the outcome would have been different, and accordingly the Panel duly noted that “in the event that further information arises that suggests the motives of the Respondent in registering or using the Domain Name related to the Respondent’s awareness of the Complainant’s SAVEFROM mark as opposed to the descriptive meaning of the words comprising the Domain Name, there may be grounds to consider a refiled complaint, subject to the applicable criteria”.
The Panel was also careful in acknowledging that despite the Complainant failing to demonstrate that it was targeted as aforesaid, the “Respondent’s conduct may infringe Complainant’s registered SAVEFROM trademark or amount to passing off and the Panel wishes to make it clear that other remedies may be available to the Complainant”. This is a sound and appropriately circumspect approach, as the Policy is not intended to resolve all kinds of disputes, as noted in UDRP Perspectives at 0.1. Rather, it is only designed and intended for clear cut cases of cybersquatting. Other disputes are not intended to be resolved by the expedited and administrative nature of the UDRP procedure and are left to the courts, as the Panel appropriately did here.
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.