Policy Requires That Bad Faith Must Target ‘Complainant, Specifically’, Not Unrelated Third Parties – vol. 4.42

Policy Requires That Bad Faith Must Target ‘Complainant, Specifically’, Not Unrelated Third Parties

We sometimes see Respondent’s misapprehend what a “generic” or “descriptive” term is. Here, the Respondent argued that the Disputed Domain Name “consists of two generic terms, ‘cyber’ and ‘nautic’, however as the Panel pointed out, this “does not establish that the combined term, “cybernautic,” is generic or descriptive”. If cybernautics, the combined term, was indeed generic as the Respondent contended, it would be incumbent upon the Respondent to demonstrate this with evidence, as the Panel also pointed out. Continue reading the commentary here. 

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We hope you will enjoy this edition of the Digest (vol. 4.42), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us): 

‣ Policy Requires That Bad Faith Must Target ‘Complainant, Specifically’, Not Unrelated Third Parties (cybernautics .com *with commentary) 
‣ A Respondent’s Default is Not Necessarily an Admission that Complainant’s Claims are True (boxhubcargocontainers .com *with commentary) 
‣ Nominative Fair Use by a Reseller Must be Fair, Here it Was Not (xiaomi .moscow *with commentary) 
‣ Current Bad Faith PPC Links Not Conclusive of Intent When Domain Registered (harmonetics .com *with commentary) 
‣ Dictionary Word ‘Manga’ has Inherent Value as a Domain Name (manga .io) 

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Policy Requires That Bad Faith Must Target ‘Complainant, Specifically’, Not Unrelated Third Parties

Cybernautic, Inc. v. Domain Vault / Domain Vault LLC, NAF Claim Number: FA2408002113352

<cybernautics .com>

Panelist: Mr. David H. Bernstein

Brief Facts: The Complainant operates a business that provides website design, hosting, and marketing services and is online at <cybernauticdesign .com> (registered on November 2, 1999). The Complainant owns rights to the CYBERNAUTIC trademark, registered with USPTO since October 4, 2022 (claimed first use date of January 1, 2006). Despite that claimed date of first use, the Complainant states in its Complaint that it first used the Cybernautic name at least as early as May 15, 2000, to the name “Cybernautic Design” in The Pantagraph, a local newspaper based in Bloomington, Illinois. Previous CYBERNAUTIC marks were registered between 1995-2002 and 1996-2003 by two inactive organizations, each unassociated with the Complainant. The Respondent registered the disputed Domain Name on April 4, 2001, and it resolves to a PPC website, featuring links to services that promote web design services in competition with the Complainant.

The Complainant alleges that, in addition to the Respondent’s infringing use of the disputed Domain Name, the Respondent registered the disputed Domain Name to divert consumers to its website for commercial gain by creating a likelihood of confusion with the CYBERNAUTIC mark owned by the Complainant and by other prior owners of the CYBERNAUTIC marks. The Respondent contends that its registration could not have been in bad faith because it registered the disputed Domain Name on April 4, 2001, before the Complainant’s purported trademark rights accrued. The Respondent further contends that it is in the legitimate business of investing in generic terms and that the disputed Domain Name encompasses a generic term by virtue of the combination of two generic terms – CYBER and NAUTIC.

Held: The Respondent contends that the disputed Domain Name “consists of two generic terms” but this does not prove that the combined term is generic or descriptive, see the U.S. Supreme Court decision in United States Pat. & Trademark Off. v. Booking.com B.V. The Respondent has not submitted any evidence to support its assertions that “cybernautic” is a generic reference for computer-related navigation. As the Respondent has failed to rebut the Complainant’s initial case, the Complainant has successfully established that the Respondent lacks rights or legitimate interests in the disputed Domain Name. Bad faith use alone however, is not enough to prevail under the UDRP, as a complainant must also establish bad faith registration. The Complainant claims prior trademark rights but the Complainant’s pre-April 2001 usage was extremely limited. While the Complainant registered <cybernauticsdesign .com> in 1999, it has not shown how it used that domain or whether it was used in a trademark capacity that would have made the Respondent aware of it.

Furthermore, the Complainant alleges that the Respondent registered the disputed Domain Name in bad faith because its registration was targeting third-party businesses that, at the time, were using and had registered the CYBERNAUTIC mark. Those other businesses, though, are not the Complainant here. For the Complainant to establish that the Respondent registered the disputed Domain Name in bad faith in 2001, the Complainant must show that the Respondent specifically targeted the Complainant with its registration in bad faith. That is because the Policy clearly references that the bad faith required must be towards “the complainant.” In sum, although the Respondent may be using the disputed Domain Name in bad faith, the Complainant has failed to show by a preponderance of the evidence that the Respondent registered the disputed Domain Name in bad faith to target the Complainant and its trademark rights, specifically.

RDNH: Although the Complainant now claims trademark rights dating back to the 1990s, which conveniently for the Complainant is shortly before the Respondent registered the disputed Domain Name, that contention is questionable given the limited nature of the trade name reference in that local Illinois newspaper and Complainant’s representation to the USPTO that it first used its trademark in 2006. Regardless, even if the Panel credits that earlier claim of first use, any reasonable investigation of the facts would have shown that the Respondent could not possibly have known of the Complainant or its alleged trademark rights at the time the Respondent registered the disputed Domain Name in 2001.

That finding is reinforced by the Complainant’s attempt to argue that the Respondent registered the disputed Domain Name in bad faith as to other, third-party trademark owners, rather than as to the Complainant itself. That argument is frivolous, entirely unwarranted under the UDRP, and further evidence of the Complainant’s bad faith in bringing this challenge. A finding of RDNH is further supported by the fact that the Complainant was represented in this action by counsel. Counsel should have known, and advised its client, that the Complainant’s position in this case is not supported by any reasonable interpretation of the facts or UDRP principles.

Complaint Denied (RDNH)

Complainant’s Counsel: David M. Van Allen, Illinois, USA
Respondent’s Counsel: Gary Schepps of Schepps Law Offices, Texas, USA

Case Comment by ICA General Counsel, Zak Muscovitch: We sometimes see Respondent’s misapprehend what a “generic” or “descriptive” term is. Here, the Respondent argued that the Disputed Domain Name “consists of two generic terms, ‘cyber’ and ‘nautic’, however as the Panel pointed out, this “does not establish that the combined term, “cybernautic,” is generic or descriptive”. If cybernautics, the combined term, was indeed generic as the Respondent contended, it would be incumbent upon the Respondent to demonstrate this with evidence, as the Panel also pointed out.

The larger important point made by the Panel in this case however, was that in order to prove bad faith registration, the Respondent must have targeted the particular Complainant, specifically. As noted by the Panel, the text of the Policy specifically references that the bad faith is required to be towards “the Complainant”. The Panel helpfully referenced the Panel’s own prior case supporting this requirement as well, namely Neurocog Pty Ltd v. Domain Administrator, CentralNic Ltd., WIPO Case No. D2024-1076 (“‘[t]he Policy makes clear that the bad faith must be in relation to ‘the complainant’ and ‘the complainant’s mark,’ not some unrelated third party or some third party’s mark.”). I would also add another case that supports this requirement, namely Kitchens to Go, LLC v. KTG.COM, Whoisguard Protected / HUKU LLC,WIPO Case No. D2017-2241) where in relation to Paragraph 4(b)(i) of the Policy and a general offer to sell the domain name, the Panel explained that the primary purpose of the registration must have been “to sell to Complainant or a competitor of Complainant”, i.e. specifically and not generally:

“On a number of occasions, the Complainant has incorrectly summarized the circumstances in which bad faith will be found, as set out at paragraph 4(b)(i) of the Policy.

It is insufficient for the Complainant to establish simply that the attempted sale has been “for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name” – which, it has asserted, “conclusively establishes  that the domain name has been registered and used in bad faith”.

The Complainant must also establish that the Respondent “registered or acquired the domain name primarily for the purpose of selling [emphasis added], renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant”. There is no evidence, even by inference, to support such a finding.”

The requirement to target a specific Complainant is also expressly set out in UDRP Perspectives at 3.1:

The onus is on the Complainant to prove its case and this includes providing evidence of the Respondent’s intention to target a specific Complainant rather than anyone who may have a trademark for the corresponding or similar term.

In the absence of evidence that Respondent registered the Domain Name specifically because of the Complainant or that its value was derived exclusively from Complainant’s mark, the Complaint must fail.

It is in general essential to a finding of bad faith registration and use under the Policy, that a Respondent must have targeted Complainant or its trade mark, or at least had Complainant in mind, when it registered the disputed domain name.

The key to demonstrating bad faith registration is “targeting”. Targeting is where the Respondent registered the domain name specifically because of a Complainant’s trademark to interfere with the Complainant.”

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A Respondent’s Default is Not Necessarily an Admission that Complainant’s Claims are True

Boxhub ApS v. De Dote, DeDote, WIPO Case No. D2024-3369

<boxhubcargocontainers .com>

Panelist: Mr. Adam Taylor

Brief Facts: The Complainant’s group of companies sells shipping containers, provides related shipping and logistics services, and has an online presence at <boxhub .com>. The Complainant owns the trademarks for BOXHUB, in class 6 before USPTO (August 31, 2020) and EUIPO (December 22, 2020). The disputed Domain Name was registered on May 11, 2020, and resolves to a website branded “BOXHUB CARGO CONTAINERS” and operated by “BoxHub Cargo Containers Trading LLC”, with Dubai contact details, which described itself as “one of the largest cargo container trading companies based in the Middle East”. The Complainant sent a cease to the LLC on March 25, 2024, but there was no response.

The Complainant alleges that the Respondent registered and used the disputed Domain Name in bad faith in order to create a likelihood of confusion with the Complainant’s mark as shown by the fact that the Respondent runs a business in an industrial sector parallel to the Complainant and uses the name “Box Hub” on its website and that the Respondent website copies text from that of the Complainant, rendering the websites similar. The Complainant further alleges that the site is selling products to people who might otherwise have bought the Complainant’s products but have arrived at the Respondent’s website by mistake. The Respondent did not file a response in these proceedings.

Held: The Panel will treat May 11, 2020, as the relevant date for assessing bad faith registration since the Domain Name was registered on this date, with no evidence of a later transfer. The Complainant’s registered trademarks (filed on August 31, 2020), post-date registration of the disputed Domain Name. Further, the Complainant simply says that it has used the mark BOXHUB “since 2020” but does not specify an exact start date, despite this being the same year when the Respondent registered the disputed Domain Name. Furthermore, the Complainant supplies no evidence of trading activity/reputation in respect of this mark either before or after May 11, 2020. Accordingly, the Complainant has failed to establish the existence of unregistered rights, let alone that they arose before the Respondent registered the disputed Domain Name. This is fatal to the Complainant’s case – because the Complainant is required to prove both registration and use in bad faith. The Panel further notes that the Complainant has provided no evidence to support its assertion that the Respondent copied text from the Complainant’s website, and also the cease and desist letter does not include any evidence of copying, or indeed mention the issue at all.

The Complaint makes no mention of the fact that the name of the LLC to which the Complainant had addressed its cease-and-desist letter, corresponds closely to the disputed Domain Name. Further, the Complainant invokes the Respondent’s use of a privacy service but legitimate uses exist and the disclosure of the name and contact details of the operator of the website at the disputed Domain Name indicates that the Respondent did not employ the privacy service merely to avoid being notified of a UDRP proceeding. Finally, to the extent that the Complainant relies on infringement of intellectual property rights, the Panel would observe that this is a matter for a court. In conclusion, for all the above reasons, especially the Complainant’s failure to establish prior rights in the mark BOXHUB and the lack of any evidence that the Respondent deliberately set out to target the Complainant, and despite the Respondent’s default, the Panel considers that the Complainant has failed to prove on the balance of probabilities that the Respondent registered and used the disputed Domain Name in bad faith.

Complaint Denied

Complainant’s Counsel: USA Denmark Law, Denmark
Respondent’s Counsel: No Response

Case Comment by ICA General Counsel, Zak Muscovitch: This case provides an important reminder that there is no such thing as a “default judgment” in the UDRP. As the Panel noted:

“While a panel may draw appropriate inferences from a respondent’s default (e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent), a respondent default is not necessarily an admission that the complainant’s claims are true.  In cases involving wholly unsupported and conclusory allegations advanced by a complainant, or where a good faith defence is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case.”

The Panel noted that also noted that the WIPO Overview specifically addresses this at 4.3 (“respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true”). In UDRP Perspectives at 0.8, it is noted that Panels have denied over 1,500 Complaints – even where the Respondent has not responded – because of a Complainant’s failure to meet its burden of proof, even finding RDNH in some of these cases, thereby demonstrating that Panels must take care in carefully evaluating cases no matter whether a Response is filed or not.

I would also add that the Panel of course rightly discounted allegations of “copied text” from the Complainant’s website – despite no response having been filed – because the Complainant “provided no evidence in support of its assertion”.

Lastly, I would encourage you to read this decision in whole, as it provides a very logical and well-reasoned explanation for the dismissal of the Complaint, and as such is an excellent example of the effort and analysis that goes into a good UDRP decision. After all, decisions are written primarily for the unsuccessful party so that it can understand and appreciate what led to its loss.

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Nominative Fair Use by a Reseller Must be Fair, Here it Was Not

Xiaomi Inc v. Artem Kuznecov, CAC Case No. CAC-UDRP-106859

<xiaomi .moscow>

Panelist: Mr. Igor Motsnyi

Brief Facts: The Complainant, founded in April 2010, is a consumer electronics and smart manufacturing company with smartphones and smart hardware connected by an Internet of Things (IoT) platform. The Complainant claims that its global user base exceeds 594 million, with an estimated 618 million IoT-connected devices. Its shares were listed on the Main Board of the Hong Kong Stock Exchange on July 9, 2018. The Complainant relies on various trademark registrations for “XIAOMI” including international trademark registrations (November 28, 2012 and April 14, 2016) and US trademark registration (May 13, 2014). The disputed Domain Name was registered on September 1, 2017, and resolves to a website that features the Complainant’s official “MI” logo and images of its “XIAOMI” branded products.

The Complainant alleges that the Respondent is not making a bona fide offering of goods or services or legitimate, non-commercial fair use of the disputed Domain Name. Rather, the Respondent’s use of the official “MI” logo throughout its website and the favicon will likely cause consumer confusion about the source of the disputed Domain Name and website. Further, there is no visible disclaimer on the website to clarify that the website needs to be endorsed or sponsored by the Complainant to explain the non-existing relationship with the trademark holder. The Complainant further alleges that the Respondent offers visitors a login page and registration page, possibly for gathering personal and financial information, which poses a security risk and may potentially be a phishing scam. The Respondent did not file a Response.

Held: Resellers (both authorized and unauthorized) can have a legitimate interest in respect of a disputed Domain Name under certain circumstances, see sec. 2.8 of WIPO Overview 3.0 and “Oki Data Americas, Inc. v. ASD, Inc.”, WIPO Case No. D2001-0903, <okidataparts.com>. Also, resellers’ use of domain names can, under certain circumstances, constitute “a bona fide offering of goods or services” under 4c (i) of the Policy. The Panel reviewed both screenshots of the website at the disputed Domain Name provided by the Complainant (translated into English) and under the powers available to the Panel to conduct its own research, reviewed the website at the disputed Domain Name on the date of the decision.

The Panel finds that the Respondent failed to comply with the nominative fair use test criteria. The Respondent failed to accurately disclose his relationship with the trademark owner, taking into account the absence of clear statements on his website, the false claim that it is the “official” or “branded” online shop for “XIAOMI” goods, and the nature of the disputed Domain Name. The website pretends to be a “branded” store of the Complainant without providing any information about the Respondent or his business, indicating an intent to create a false affiliation or endorsement. Additionally, the Respondent offers for sale goods from the Complainant’s competitors, which is considered unfair and against the principles of nominative fair use. To sum up, nominative fair use must be fair and the Respondent’s use of the disputed Domain Name in the circumstances of this case is not fair.

The Panel first notes that the failure to comply with the nominative fair use test does not automatically establish the respondent’s bad faith (see sec. 2.3 of UDRP Perspectives and “Thor Tech Inc. v. Eric Kline”, WIPO Case No. D2023-4275). If the respondent’s behavior does not fall within the scope of abusive domain name registration (or “cybersquatting”), there is no bad faith. Here the direct evidence indicates that the Respondent targeted the Complainant, and such targeting was with an intent to profit commercially from the Complainant’s trademarks. The Panel finds the disputed Domain Name registered and used in bad faith due to its similarity to the well-known “XIAOMI” trademark, with evidence showing intent to target the Complainant. The website misleads users by claiming to be an official store while promoting both the Complainant’s goods and competitors. This behavior constitutes cybersquatting and violates UDRP policies, confirming bad faith registration and use.

Transfer

Complainant’s Counsel: Mr. Paddy Tam (CSC Digital Brand Services Group AB)
Respondent’s Counsel: No Response

Case Comment by ICA General Counsel, Zak Muscovitch: Fundamentally, the question of nominative fair use of a domain name must ultimately determine whether the use of the domain name was “fair”, as the Panelist did in this case, rather than rigidly follow a formula set out in Oki Data. As set out in UDRP Perspectives at 2.3 (authored by the Panelist in this case and myself), although the Oki Data test has consistently been applied since 2001, it is best used as a guide and adapted as necessary by Panels. In other words, it is not enshrined in stone, but rather can be a helpful yardstick by which to measure the good or bad faith of a particular reseller.

As also noted therein, more recently, a modified version of the Oki Data test has been adopted by some Panelists which adopts a more holistic approach to the Oki Data criteria, in particular whether the absence of a prominent disclaimer necessarily makes the Respondent’s use illegitimate. Under this more holistic and less rigid approach, Panels look at multiple factors including domain name composition, website content that may either confirm or deny affiliation with the Complainant as well as any other circumstances relating to the use of the domain name and Respondent’s business. Ultimately however, it comes down to a question of fairness; whether the Respondent’s use is fair.

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Current Bad Faith PPC Links Not Conclusive of Intent When Domain Registered

Haemonetics Corporation v. Brent Bristow, WIPO Case No. D2024-2838

<harmonetics .com>

Panelist: Mr. Lawrence K. Nodine

Brief Facts: The Complainant, based in Boston, provides blood and plasma management services, including collecting blood and plasma from donors and then supplying it to the medical industry. Since 1971, the Complainant has used HAEMONETICS as a trademark (owns a US trademark dated February 1, 1977, and more). “HAEMO” is a word prefix that refers to blood, derived from the Greek word “haima”. The Complainant is publicly traded on the New York Stock Exchange and has an online presence at <haemonetics .com>. The Respondent registered the disputed Domain Name on May 30, 2024, which resolves to a parked page displaying PPC links to medical goods and services such as pain relief patches, clinical trials of depression medications, and diabetes drugs.

The Complainant alleges that the disputed Domain Name is a typosquatting version of its trademark and that the Respondent posts hyperlinks to third-party sites that offer medical goods and services and not to any music-related sites. The Complainant further alleges that the Respondent was aware of the Complainant’s rights in the Mark because it is well known and that the Respondent should be charged with constructive notice of the Complainant’s United States trademark registrations. The Respondent denies the allegation that the disputed Domain Name is similar to the trademark and further denies bad faith, asserting that he bought the disputed Domain Name to offer musical instruction regarding the harmonic qualities of the diatonic musical scale, which is the foundation of all popular music.

Held: The Respondent has offered no evidence demonstrating that he has taken any concrete steps to prepare a website for his stated purpose of offering in terms of Policy paragraph 4(c)(i). In addition, the PPC links published on the Respondent’s website “compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users,” they do not represent a bona fide offering. However, the Complainant has not carried its burden to prove that the Respondent registered the disputed Domain Name in bad faith. The Complainant offers no evidence to support its allegation that it is well-known. Consequently, there is no evidentiary basis for finding that the Respondent was probably aware of the Complainant when he registered the disputed Domain Name.

Further, the Panel finds plausible, the Respondent’s assertion that “[h]armonetics .com was created in order to offer musical instruction…”. This assertion is corroborated by the evidence that the Respondent is a musician with some experience as a music teacher. The Panel also finds that most people are familiar with the word “harmony,” but few are likely aware of the Greek root “haemo” which is the foundation of the Complainant’s Mark. Given this, and weighing the probabilities, the Panel finds that it is more likely that the Respondent had harmony and harmonics in mind when he registered the disputed Domain Name. The Panel acknowledges that the presence of PPC links to medical goods and services supports the Complainant’s bad faith arguments, but this evidence is not by itself sufficient to satisfy the Complainant’s burden.

Assuming the PPC links are evidence of current bad faith use of the disputed Domain Name, this is not conclusive as to the Respondent’s intent when he registered the disputed Domain Name. Furthermore, The Panel is also not persuaded that the Respondent has engaged in typosquatting. “Harmony” and “Harmonics” are valid words, not simply examples of “haemo” misspelt. The following syllable – “netics” – is often used with dictionary words and trademarks to mean something akin to “the study of” the subject of the preceding syllable. This is how the Complainant uses “netics.” The Respondent is plausibly creating a similarly structured portmanteau of “harmonic” and “netics” that exploits their respective dictionary and etymological meanings. This is not typosquatting.

Complaint Denied

Complainant’s Counsel: Sunstein LLP, United States
Respondent’s Counsel: Self-represented

Case Comment by ICA General Counsel, Zak Muscovitch: Does this look like a Respondent-generated or registrar-generated PPC page to you? And does it matter?

According to the decision, the Respondent provided evidence that he is a musician and the Panel found that the Respondent’s explanation for registering the Domain Name was plausible. Nevertheless, the Complainant had argued that the “Respondent has not used the Disputed Domain Name with respect to any website related to music” but rather for PPC links to medical goods and services.

The Panel noted that “it is well-known that registrar algorithms often automatically populate websites with PPC links…but the registrant usually has the option to stop the registrar from doing this [and] accordingly, the Respondent is generally responsible for auto generated PPC links”, referencing Paragraph 3.5 of the WIPO Overview, which states inter alia:

“Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name…

Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”.

The Panel further stated, based upon the WIPO Overview, that “evidence that automatically generated hyperlinks lead to websites that compete with Complainant will, along with other evidence, may [sic] support a finding of bad faith use”.

The WIPO Overview’s approach appears premised on imputing bad faith intent to a registrant despite no evidence of actual intent in creating, enabling, or permitting the registrar-generated PPC links to appear in connection with a very recently registered Domain Name. In a case like this and in particular with a registrant who apparently has no particular expertise or experience in registering domain names, should the registrant nonetheless be held responsible for the links which appear on the registrar’s apparently automatically registered landing page? As noted in UDRP Perspectives at 3.6, “registrar-populated ads done on a default and automatic basis where the Respondent does not receive any remuneration, is not reflective of a Respondent’s intentions in registering or using a domain name in bad faith, particularly where the Respondent was unaware of such PPC or where the Respondent is not a sophisticated domain name registrant.”

Is it nevertheless reasonable to conclude that the average registrant “permits” its registrar to populate the registrant’s newly registered domain name with PPC ads, when the only “authorization” granted by the registrant is generally limited to a line or two about this embedded in typically very lengthy set of terms in a registration agreement? Is it also reasonable to assume that such a registrant would have been aware that the links appearing on a website – that it had nothing to do with creating – were related to a trademark that the registrant had no reason to even be aware of? Such an average registrant is likely not even aware that according to one interpretation of an alternate dispute resolution procedure called the UDRP, he should have taken steps to disable ads that relate to a trademark that he was unaware of.

In such circumstances, in my respectful view, the existence of PPC ads are not genuinely probative of a registrant’s bad faith at all  – since they do not in any way, reflect the Respondent’s intention in registering and using the Domain Name.

The Panel in this case came to a similar conclusion, finding that the PPC ads  were not conclusive of bad faith registration in the first place, because the Respondent may have “registered the Disputed Domain Name in good faith without any intention to target Complainant”. At very most, one could reasonably conclude that the registrant “allowed or failed to prevent” his registrar from publishing PPC links, but in order to do so,  there must still be evidence that the Respondent knew or ought to have known that the registrar would automatically do this, which does not appear present in this case. It would in my view, be far more reasonable to conclude that given the Respondent’s likely good faith registration, he did not use the Domain Name in bad faith since he was not aware of the PPC links and/or their relationship to the Complainant’s trademark.

In my respectful view, an overly punitive approach to PPC links in such circumstances is not only inconsistent with a meaningful determination of bad faith use (which must be based upon intention or at least a wilful blindness). Moreover, invoking such a puntative rule even where there is no intention or wilful blindness, unnecessary compels fair minded Panelists to contort themselves in order to reconcile an innocent Respondent’s actions with the punitive approach.

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Dictionary Word ‘Manga’ has Inherent Value as a Domain Name

Mangas .io v. Marc Lassiter, WIPO Case No. DIO2024-0023

<manga .io>

Panelist: Mr. Flip Jan Claude Petillion (Presiding), Ms. Nathalie Dreyfus, Mr. Georges Nahitchevansky

Brief Facts: The French Complainant, incorporated in 2019, offers manga (Japanese comic books) to read on mobile devices in a subscription-based model. The Complainant is the owner of the Domain Name <mangas .io> and claims unregistered rights in “MANGAS.IO.” The Respondent is based in the US and according to the Respondent company’s website, the company offers various digital products designed for personal and business use across a range of industries, including AI tools and a historical reference platform. The disputed Domain Name was registered on July 5, 2023. On March 15, 2024, the Complainant emailed the Respondent, alleging that the website linked to the disputed Domain Name, confused consumers with the Complainant’s brand and distributed copyrighted comics without authorization. The Respondent promptly removed the indicated content. It now leads to a page allowing users to register for early access to an MMORPG. The Parties continued to correspond, and in particular discussing a potential sale of the disputed Domain Name, without resolving the dispute.

The Complainant alleges that the Respondent has registered the disputed Domain Name to sell it to the Complainant and is using it to facilitate the sale of counterfeit goods. The Complainant further alleges that the Respondent intended to disrupt the business of the Complainant when registering the disputed Domain Name, by creating an email address in the name of the founder of the Complainant’s company. The Respondent contends that “manga” is a dictionary word and that the Complainant’s website specifically targets the French market, while the website linked to the disputed Domain Name uses the English language. Therefore, this is not a case of “typosquatting.” The Respondent further argues that it did not reach out to the Complainant to sell the disputed Domain Name; rather, the Complainant contacted the Respondent. The reason the Respondent offered the disputed Domain Name for USD $100,000 was to use the proceeds from the sale to purchase the domain name <anime .io> and continue its manga game project with that domain.

Held: Noting also the availability of similar protection to trademarks under certain national legal doctrines (e.g., unfair competition or passing-off) and parity considerations, where acquired distinctiveness/secondary meaning is demonstrated, unregistered rights have been held to justify standing, including where the complainant is based in a civil law jurisdiction. Trade names and company names are protected in France under its trade practices, consumer protection law and general tort law concerning unfair commercial practices. The Complainant proves that its company name and trade name is “MANGAS .IO”. The Panel finds that the Complainant has produced sufficient evidence to successfully assert an unregistered trademark right for the sign “MANGAS .IO” in France in the context of the present proceedings.

The disputed Domain Name was used to resolve a website offering general content about manga and included a “Catalog” tab along with a list of manga. Whether this website included illegal or infringing content cannot be determined based on the evidence provided but both Parties agree that, when contacted by the Complainant, the Respondent immediately deleted the content which the Complainant claimed was illegally distributed. The Respondent ultimately appears to have completely changed the website linked to the disputed Domain Name, which currently appears to resolve to a webpage permitting users to register to get early access to a multiplayer video game. In the circumstances of this case and on the balance of probabilities, the Panel does not find it sufficiently proven that the Respondent intended to use the disputed Domain Name for illegal activity.

More importantly, the Panel finds no signs of any intention on the part of the Respondent to target the Complainant or to trade off its rights given that the Complainant has no registered trademark including the word “manga” and the Complainant’s activities appear to target a French-speaking audience exclusively. Further, the Complainant does not appear to be active or to enjoy any particular reputation in the United States of America, where the Respondent is located. In the Panel’s view, while it does raise a question, the fact that the disputed Domain Name is registered under the same “.IO” TLD as the domain name used by the Complainant is insufficient by itself to conclude that the Respondent has been or is targeting the Complainant. Further, the Panel finds that the Complainant cannot rely on the Respondent’s offer to sell the disputed Domain Name to claim any bad faith. The disputed Domain Name consists of a generic (i.e., dictionary) English term which may therefore have inherent value as a domain name, and it was the Complainant who initially contacted the Respondent.

RDNH: Panels have consistently found that the mere lack of success of a complaint is not in itself sufficient for a finding of RDNH. In the case at hand, the Panel finds no evidence that the Complaint was brought in bad faith. The Complainant seems to have been genuinely convinced that the Respondent targeted the Complainant by the registration and/or use of a domain name similar to the one it is using. Moreover, the Panel finds that the Respondent did not clarify all relevant circumstances of the case either (e.g., why the disputed Domain Name first resolved to a website appearing to be dedicated to the reading of mangas and later resolved to a website dedicated to a videogame). Therefore, the Panel is unable to conclude that the Complaint was brought primarily to harass the Respondent, nor that the proceeding was commenced in bad faith.

Complaint Denied

Complainant’s Counsel: INLO, France
Respondent’s Counsel: Mandelbaum Barrett PC, United States of America