Complainants Must Establish Reputation as of Date of Domain Registration
We often see Complainants making the mistake of proving their reputation as of the time of filing the Complaint, but that is inadequate. Rather, the material date is the date of registration since that is the point in time that we must evaluate whether the Complainant’s reputation was the reason for the Respondent’s registration of the corresponding domain name. If a Complainant is able to show a pre-existing trademark but no reputation at the time of Domain Name registration, then it will be difficult to prove that the Respondent was aware of and targeted the Complainant’s trademark. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 4.45), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Complainants Must Establish Reputation as of Date of Domain Registration (diamondpoint .com *with commentary)
‣ Counsel Are Expected to Have Working Knowledge of UDRP Jurisprudence (valusync .com *with commentary)
‣ Certain Complainants Continue to Attempt to Hijack Valuable Domain Names (ekart .com *with commentary)
‣ Respondent’s Failure to Respond, Establishes a Prima-Facie Case in Favour of the Complainant (articulateai .com)
‣ Panel: Respondent Registered the Four-Letter Domain Name, Based Upon its Resale Value (afer .com)
Complainants Must Establish Reputation as of Date of Domain Registration
Jakob Ruben van Gelder v. Tech Ops, SyncPoint, Inc., WIPO Case No. D2024-3893
<diamondpoint .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant claims to be one of the leading (luxury) jewelry brands “Diamond Point” in the European Union, more specifically in the Benelux region. The Complainant claims that since 1987 it has also sold its products via “shops-in-shops” within “De Bijenkorf” stores, which the Complainant describes as Dutch luxury department stores with branches in prominent locations in the Netherlands. The Complainant provides evidence in the form of a press release dating from 2020, taken from the website at <debijenkorf .nl>, reporting that, in 2019, the said stores received 26 million visitors and that the said website received 116 million visitors online. The Complainant is the owner of three registered figurative marks for DIAMOND POINT, the earliest of which is Benelux Registered Trademark, registered on August 1, 1990. The disputed Domain Name was registered on March 14, 2001 and currently the website associated with the disputed Domain Name consists of a page offering the disputed Domain Name for sale at an asking price of US $243,700.
The Complainant alleges that the Respondent is a prolific cybersquatter based upon its involvement in previous disputes relating to domain names. The Complainant further produces an archived screenshot dated February 10, 2005 showing a single page collection of links featuring a search facility and “Popular Categories” covering diamonds and jewelry, real estate, finance, and “Lake George”. The Respondent contends that it registered the disputed Domain Name in 2001 with the intent of ownership due to its inherently descriptive nature, denying any knowledge of the Complainant’s trademarks or business operations at that time. The Respondent further contends that the February 2005 advertisements were automatically generated and that it should benefit from the doctrine of “laches” concerning the Complainant’s allegedly prejudicial (to the Respondent) delay in bringing the Complaint. The Respondent also argues that even if cybersquatting allegations in few cases were valid, they bear no relevance to the present Complaint as the facts are distinct.
Held: A problem for the Complainant’s case is that the evidence that it has brought forward regarding the length of its trading history is mostly self-generated and/or of recent date. It does not independently establish the fame of the Complainant’s mark at the date of registration of the disputed Domain Name in 2001. The Complainant does however show that the Respondent directly referred to the Complainant’s department store partner on one occasion in 2005 via the website associated with the disputed Domain Name. This claim lacks credibility given evidence that “diamond point” is a common term used independently across various industries and locations in the U.S. The Respondent’s interest in monetizing this term does not indicate bad faith, as there is no evidence it intended to exploit trademark value at the time of registration. Besides denying knowledge of the Complainant’s mark at the date of registration and referring to a dictionary value of the phrase “diamond point”, the Respondent’s case in answer falls into two parts – the February 2005 advertisements were automatically generated and that it should benefit from the doctrine of “laches”.
First, the problem for the Respondent here is that 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. However, the links appear some four years later, and the advertisements prior to that date appear to the Panel to be consistent with dictionary and geographic meanings of the phrase “diamond point” or to be unrelated either to the trademark use or the dictionary use. When placed in context, the apparent targeting in 2005 appears to have been inadvertent on the Respondent’s part, but, in any event, it does not demonstrate registration in bad faith in 2001. Secondly, the Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have declined to specifically adopt concepts such as laches or its equivalent in UDRP cases, see WIPO Overview 3.0, section 4.17.
Finally, the Panel considers that there is nothing in the evidence showing any kind of pattern of cybersquatting, moreover of which the disputed Domain Name itself forms part, such that this would be relevant to the present administrative proceeding. On the contrary, the fact that the Respondent may have registered other two-word phrases as domain names incorporating the word “point” as the second word might be seen as a pattern of registrations that is supportive of its case. As both Parties appear to recognize, each case under the Policy must be taken on its own merits, and the Panel here does not make any finding on the strength of the Respondent’s past history with domain name disputes.
Complaint Denied
Complainant’s Counsel: Bird & Bird (Netherlands) LLP, Netherlands
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: We often see Complainants making the mistake of proving their reputation as of the time of filing the Complaint, but that is inadequate. Rather, the material date is the date of registration since that is the point in time that we must evaluate whether the Complainant’s reputation was the reason for the Respondent’s registration of the corresponding domain name. If a Complainant is able to show a pre-existing trademark but no reputation at the time of Domain Name registration, then it will be difficult to prove that the Respondent was aware of and targeted the Complainant’s trademark. Similarly, although the Complainant in this case was able to show an inadvertent bad PPC link that appeared years after registration following years of innocuous links, that too was insufficient for the Panelist to find that it was proof of bad faith registration years earlier. This was similarly the finding in Venderstorm Ventures GmbH & Co. KG v. Domain Administrator, PTB Media Ltd, WIPO D2024-1287, <babista .com>, 3-member, Denied (Given that the screenshots were taken 19 years after the registration of the disputed Domain Name, they do not allow the Panel to infer anything regarding the intentions behind the registration of the disputed Domain Name in 2005).
A word about the PPC links as discussed in this case. Notably, the Panelist cited Section 3.5 of the WIPO Overview 3.0 which provides inter alia, as follows:
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. [emphasis added]
Take special note of the wording. There is a difference between “not preventing” a finding of bad faith, and “not resulting in” a finding of bad faith. The actual language of the Overview merely states that the fact that a registrar generated the PPC links on the registrar’s own landing page, may not prevent a finding of bad faith – but it also doesn’t necessarily result in it. For example, a Panelist may find that a given PPC page was erected without any knowledge of the Respondent and that it was entirely for the benefit of the registrar who did it by default. In such circumstances, a panelist may certainly ask how such conduct reflects in any way upon the intentions of the Respondent.
The Overview, which was last updated in 2017, does not always keep up with the emerging jurisprudence nor does it always comprehensively consider a given topic. When it comes to PPC links in particular, there are some nuances that are not adequately encapsulated by the Overview so Panelists should be prepared to consider such nuances rather than take a rigid view of PPC in all cases based upon the Overview alone.
As noted in UDRP Perspectives at Section 3.6, although PPC advertising can indeed be evidence of bad faith, it is often misunderstood. PPC advertising can be offered by a Respondent or by a domain name registrar, and it can sometimes be difficult to differentiate. For the purposes of gauging a Respondent’s bad faith, generally registrar-populated ads done on a default and automatic basis and where the Respondent does not receive any remuneration, is not genuinely 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.
Counsel Are Expected to Have Working Knowledge of UDRP Jurisprudence
Zelig AI, LLC v. dong xuyan, NAF Claim Number: FA2410002120196
<valusync .com>
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant claims that it has used the VALUSYNC for use in connection with financial services since at least as early as May 2023. On April 22, 2024, the Complainant filed an application with the USPTO to register the VALUSYNC mark; that application is currently pending. The Complainant owns the domain name <valusyncit. com> and uses it to provide information regarding its services. The disputed Domain Name <valusync .com> was originally registered in May 2013. However, the Complainant states that ownership of the domain name changed on multiple occasions and alleges that it was acquired by the Respondent on or about May 4, 2024. The Complainant states that the website associated with the domain name changed at that time to explicit and obscene content, and that more recently the website has been deactivated. The Complainant asserts that the VALUSYNC mark is associated exclusively with the Complainant. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant does not own a trademark registration for VALUSYNC; its application is currently pending before the USPTO. A pending application does not confer sufficient rights to satisfy paragraph 4(a)(i) of the Policy. A complainant relying on rights arising solely at common law has a fairly steep evidentiary burden under the Policy. See UDRP Perspectives on Recent Jurisprudence, supra, § 1.2 and also see section 1.3 of the WIPO Overview 3.0: “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…”
The Complainant has failed to support a claim of common law trademark rights with evidence of acquired distinctiveness. The Complaint does not indicate the volume of sales under the claimed mark, the nature or extent of advertising, or the degree of public recognition. Furthermore, Complainant’s assertion that it has been using the mark since May 2023 is contradicted by the fact that its trademark application was filed in April 2024 on an “intent-to-use” basis (i.e., basis 1(b), 15 U.S.C. § 1051(b)), meaning that Complainant was asserting an intention to commence use of the putative mark in the future. See, e.g., Aggressor Adventures, LLC v. web master / Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace***, FA 2095215 (Forum May 24, 2024). The Panel finds that Complainant has not demonstrated the requisite rights in a relevant trademark.
RDNH: The Complainant submitted no evidence of the acquired distinctiveness required to support a claim of common law trademark rights. The only evidence relevant to Complainant’s use of the putative mark is a screenshot of the Complainant’s website, and a USPTO trademark status page indicating that the Complainant has not yet commenced use of its mark in commerce. Under the circumstances, and noting that the Complainant is represented by professional trademark counsel, the Panel concludes that the Complainant or its counsel must have known that it did not have a colorable claim under the Policy.
Complaint Denied (RDNH)
Complainant’s Counsel: Matthew D. Witsman of Foley & Lardner LLP, United States
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
After 25 years of the UDRP, the requirements of proving common law trademark rights are not mysterious. The requirements are set out in the jurisprudence and even summarized in the WIPO Overview and in UDRP Perspectives, as noted by the Panelist. The Panelist in this case was easily able to reference the aforementioned secondary sources as well as relevant case law to support the conclusion that the Complainant had not proven common law trademark rights. The Complainant’s counsel could have just as easily found and referenced the same sources and thereby either proven the Complainant’s common law trademark rights or decided that the Complaint should not be brought.
Panelists have increasingly little patience for parties that are unaware of the relevant law or fail to follow it, as demonstrated by the Panelist’s citation of Hallmark Licensing, LLC & Hallmark Cards, Inc. v. Privacy Administrator / Anonymize, Inc., FA 1941032 (Forum June 1, 2021) (Levine, dissenting in part), (“noting consensus view that legal counsel are expected to have working knowledge of UDRP jurisprudence.”
Certain Complainants Continue to Attempt to Hijack Valuable Domain Names
Instakart Services Private Limited v. Ozguc Bayraktar, RS DANISMANLIK, WIPO Case No. D2024-4345
<ekart .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Indian Complainant commenced operations in 2009, originally under the name Flipkart, and currently offers courier delivery services under the names Ekart and Ekart Logistics. The Complainant is the owner of India trademark registrations for the word mark E-KART, registered on November 7, 2012. The Complainant claims that it has used the trademarks E-KART and EKART continuously in commerce since 2009 and that the marks have acquired “unparalleled goodwill and impeccable reputation” around the world. The Complainant operates websites at <ekartlogistics .com> and <ekartlogistics .in>. The disputed Domain Name was registered on December 29, 1999, and redirects to a website at <emlakilan .com>, offering various domain names for sale.
The Complainant alleges that the use of the disputed Domain Name to redirect to a website offering other domain names for sale does not amount to legitimate use of the disputed Domain Name, since it unfairly targets the goodwill attached to the Complainant’s trademarks. The Complainant further alleges that by registering the disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks. The Respondent contends that it registered the disputed Domain Name in 1999, while the Complainant did not commence any business activities until 2010. The Respondent further contends that “kart” is the Turkish word for “card”, and that a domain name referring to electronic cards is generic in nature.
Held: It is well-established under the UDRP that the registrant of a domain name cannot have targeted a trademark that was not in existence at the date that the domain name was registered (see Section 3.8 of WIPO Overview 3.0”). This is subject only to an exception in respect of “nascent” or otherwise forthcoming trademark rights of which the Respondent was aware, which exception has no possible application to this case. In this case, the disputed Domain Name was registered some ten years before the Complainant, on its own submissions, first commenced any use of the E-KART or EKART marks. The Respondent cannot therefore have had the Complainant’s trademark in mind when it registered the disputed Domain Name, and the Complainant must necessarily fail.
RDNH: The Panel considers this to be a clear case of attempted Reverse Domain Name Hijacking. The Complainant is represented by counsel who must be taken to have been aware that the Complaint could not succeed in circumstances where the disputed Domain Name was registered some ten years before the Complainant’s first use of any corresponding trademark. Despite the Complainant’s certificate “that the assertions in this Complainant are warranted under the Rules and under applicable law…” there is no basis upon which the Complainant could properly have asserted that the Respondent registered the disputed Domain Name to create a likelihood of confusion with its (then non-existent) trademarks, or otherwise to trade off its goodwill attaching to those trademarks. 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: Cyril Amarchand Mangaldas, India
Respondent’s Counsel: Self-represented
Comment by Newsletter Editor, Ankur Raheja:
Numerous domain dispute cases have been initiated by Indian complainants that were deemed to be RDNH, as there were no valid grounds for pursuing the complaints. While it is acknowledged that Ekart is a recognized brand in India today, this does not negate the necessity of establishing bad faith at the time the disputed Domain Name was registered in 1999. An intriguing case that arose in 2020 involved an Indian company disputing the valuable four-letter domain names SHIL(.com) and HSIL(.com) (see details here). Following the SHIL/HSIL(.com) decision, the registrant of the Domain Names created a website to provide comprehensive information about RDNH decisions made against Indian companies in domain name disputes, which can be found here. In short, the Complainants must conduct thorough due diligence prior to submitting such Complaints.
Visit RDNH.com for information on over 600 RDNH decisions.
Respondent’s Failure to Respond, Establishes a Prima-Facie Case in Favour of the Complainant
Articulate Global, LLC v. Arbit Chen / Articulate .AI, NAF Claim Number: FA2410002119541
<articulateai .com>
Panelist: Ms. Debrett G. Lyons
Brief Facts: The Complainant is a developer of e-learning and training software, some with integrated AI features, sold by reference to the trademark ARTICULATE. The Complainant is the owner of, inter alia, word mark ARTICULATE registered with USPTO on June 22, 2004. The disputed Domain Name was registered on May 7, 2021, by the Respondent using a false identity. The disputed Domain Name directs to webpages displaying the trademark in connection with AI assistant services under the banner, “A new generation of AI agents”. The Complainant alleges that the Respondent is using the disputed Domain Name to impersonate the Complainant or appear to be an authorized partner of the Complainant by hosting a website displaying the Complainant’s trademark and advertising AI assistant services highly similar to the Complainant’s services. The Respondent failed to submit a Response in this proceeding.
Held: There is no evidence that the Respondent has any trademark rights. Further, the Complainant states that there is no association between the parties. Furthermore, the disputed Domain Name resolves to web pages using the trademark. The Panel is not entirely convinced of the claim that the webpages impersonate the Complainant or create the appearance of an authorized partner of the Complainant but nonetheless finds that use of the trademark is without permission and that that the services on offer are competitive or at least similar services to the Complainant’s services. Such use does not give rise to rights or a legitimate interest. A prima facie case has been made and so the onus shifts to the Respondent. In the absence of a Response, the Panel finds that the Respondent has not discharged the onus and finds that the Respondent has no rights or interests.
The Panel has already found confusing similarity between the domain name and the trademark. That confusion attracts Internet users to an online location intended for commercial gain. Paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith: “by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.” The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied.
Transfer
Complainant’s Counsel: Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA
Respondent’s Counsel: No Response
Panel: Respondent Registered the Four-Letter Domain Name, Based Upon its Resale Value
Association Française d’Epargne et de Retraite (AFER) v. Afer, WIPO Case No. D2024-3530
<afer .com>
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainant, established in 1976, is a French association which provides financial advisory services. It owns many trademark registrations for the mark AFER including EU registration dated October 19, 1998. The Complainant is also the owner of the domain name <afer .fr> registered on August 17, 2000. The disputed Domain Name was registered on August 5, 2001, by a Korean Respondent, and currently resolves to a domain parking website displaying links to various goods and services under categories such as “Voyages”, “Finance”, “Immobilier”, and “Assurance”, meaning travel, finance, real estate, and insurance in English. The Complainant alleges that the page displaying links includes their services, along with a for-sale notice, and that such use does not represent legitimate interests on the part of the Respondent.
The Complainant further alleges that the Respondent is offering the disputed Domain Name for sale for USD 10,000 which is in excess of the directly related out-of-pocket costs of the disputed Domain Name and that the Respondent is trying to capitalize on the goodwill of the Complainant’s trademark in bad faith. The Respondent contends that he registered the Domain Name to sell it for a profit which is legal practice worldwide. Further, the Respondent contends that it did not have any intent to register or use the Complainant’s trademark in bad faith, as the term “afer” means “African” in Latin, and further, is a four-letter term used by a number of organizations.
Held: The panels have found that the practice of registering a domain name for resale (including for a profit) does not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to the trademark owner (or its competitor), see WIPO Overview 3.0, section 3.1.1. The disputed Domain Name was indeed registered after the Complainant commenced the use of the name AFER and registered it as a trademark. But the Panel takes note of section 3.2.2 of the WIPO Overview 3.0 which states that where the Complainant’s mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters), if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to a complainant’s mark.
In this regard, the evidence here shows that the Complainant appears to have a limited reputation in the Republic of Korea where the Respondent is located; the Panel’s search for AFER for the ten years preceding the date of registration of the disputed Domain Name on Naver, a Korean Internet portal site, does not yield any results on the Complainant. In the meanwhile, the disputed Domain Name is a combination of just four letters which make it attractive in the domain name resale market and the Respondent can have come up with the term on his own. Based on the foregoing, the Panel is of the opinion that the Respondent more likely registered the disputed Domain Name based on its resale value as a four-letter word domain name, not based on its reference to the Complainant.
Complaint Denied
Complainant’s Counsel: ARDAN, France
Respondent’s Counsel: Self-represented
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.