The Challenge of Properly Applying Telstra
The key element of the well-known Telstra standard: “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”.
while appearing to be simple and intuitive is quite challenging to apply. It is an odd standard that deviates from the three elements of the UDRP in not relying on an assessment of evidence, but rather an assessment of conceivability. It is thus a self-referential, solipsistic standard. Further, it is formulated as proving a negative: “not possible to conceive”. The Panel is invited to make findings under this standard by only consulting with itself. It was formulated by an Australian panelist assessing one of the most famous and distinctive Australian marks, “TELSTRA”, yet it has been adopted by countless panels to resolve disputes, almost none of which involve marks as famous or distinctive as TELSTRA itself… continue reading commentary here.
“UDRP Perspectives.org is where you can come to find a curated collection of up-to-date case law and commentaries on the UDRP. We hope that you will find these resources useful, whether you are a UDRP Panelist looking for inspiration and guidance, counsel looking for helpful case citations and insight, or a party looking to better understand the nature and scope of UDRP.
We called this resource “UDRP Perspectives” because it offers views on a selection of important UDRP topics. Our perspectives were developed after many years of careful study of the UDRP, and practical application of the UDRP as both party representatives and as accredited UDRP Panelists. We do not pretend to know all the answers and do not claim that the views expressed here are necessarily the only correct ones, yet we hope that you find them helpful in deepening your own understanding of the UDRP.
UDRP Perspectives also offers a curated collection of up-to-date case law and case commentaries on the UDRP for each topic. Notable decisions are included from five (5) out of the six (6) UDRP Providers, namely, WIPO, the Forum, the Czech Arbitration Court (CAC), the Asian Domain Name Dispute Resolution Centre (ADNDRC) and the Canadian International Internet Dispute Resolution Centre (CIIDRC).
UDRP Perspectives mainly focuses on more recent decisions although we have also included a small number of pre-2018 decisions where we believe such decisions are important to illustrate a particular topic. The decisions which we include contain more denials than transfers and the reason for this is that denials tend to illustrate certain principles better than transfers, particularly since the majority of transfers are in undefended cases. For the same reason, where possible we have included defended three-member Panel cases.”
We hope you will enjoy this edition of the Digest (vol. 4.46), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ The Challenge of Properly Applying Telstra (zoracompanies .com *with commentary)
‣ A Rush to Good Judgment (rushordertees .co and rushtees .com *with commentary)
‣ Panel: No Credible Evidence That Domain Name Was Registered and Used in Bad Faith (augis .com *with commentary)
‣ Domain Used for Email Fraud but No Website Use (ilhgs .com *with commentary)
‣ Descriptive or Common Terms in the Domain Name Offers Low Threshold of Similarity (fastercoupler .com *with commentary)
The Challenge of Properly Applying Telstra
Zora Labs, Inc. v. James Mullaly, NAF Claim Number: FA2410002119437
<zoracompanies .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant, founded in 2020, is one of the most prominent non-fungible token (“NFT”) marketplace platforms in which users can mint, buy, offer for sale, sell, and curate NFTs. The Complainant claims common law rights in, as well as both allowed and pending trademark applications in the well-known and distinctive mark ZORA. The Complainant has operated the websites at <ourzora .com> and <zora .co> since then. The Complainant’s NFT platform utilizes blockchain technology that offers secondary market value to digital files including photos, videos, audio, and music, and includes features such as drop alerts and notifications.
The Complainant alleges that the Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use since the Domain Name resolves to an inactive website. On information and belief, the Respondent registered the disputed Domain Name with the knowledge that the Complainant holds strong rights in its ZORA marks, whose use and renown long predate the Respondent’s registration of the Domain Name. Further, the Complainant alleges that the Respondent used a privacy service in connection with the domain name to hide its identity. The Respondent did not file a Response.
Held: The Complainant contends that the Respondent’s passive holding of the domain name demonstrates bad faith registration and use, citing Midjourney, Inc. v. Gadevski, Dimitar, FA2103821. In that case, registration in bad faith was found because the MIDJOURNEY mark is a unique, coined term associated exclusively with the complainant and is not the sort of name that would be selected independently, without knowledge of or reference to the complainant. Moreover, the respondent’s passive holding of the domain names was found to constitute a continuing use in bad faith on the basis inter alia that it is not possible to conceive of a plausible legitimate use of the domain names that would not infringe on the complainant’s rights. Similarly, in Zora Labs, Inc. v. Dirk Zagers, FA 2119423, the intention to cause confusion was evident. As to the present case, according to a Wikipedia search conducted by the Panel: “Zora is a gender-neutral given name of Arabic, Slavic, African origin…” and also ” an unincorporated community in eastern Benton County, Missouri, United States”. Further, a USPTO trademark search conducted revealed several live registrations of the ZORA mark by third parties.
In light of this publicly available information, the Panel finds that, although the Complainant has common law trademark rights in the ZORA mark in the field of NFT-related and software-related goods and services, unlike the Midjourney case, the word ZORA is not a unique, coined term associated exclusively with the Complainant and is the sort of name that may be selected independently, without knowledge of or reference to the Complainant. Further, unlike the recent decision in Zora Labs, Inc. v. Dirk Zagers, supra, the appended descriptive term “companies” does not describe a service commonly performed on the Complainant’s platform and does not in any way convey an association with the Complainant. For these reasons, the Panel is unable to conclude that the Respondent had the Complainant and its ZORA mark in mind when registering the domain name; that the Respondent’s use of a privacy service to conceal its identity cannot, without more, establish bad faith; and that the Respondent’s hitherto passive use of the <zoracompanies .com> domain name has not been shown to constitute registration or use in bad faith.
Should the Respondent use the domain name in the future to take advantage of the Complainant’s reputation in its ZORA mark in the field of NFT-related and software-related goods and services, the Complainant may bring a refiled case under the Policy.
Complaint Denied
Complainant’s Counsel: Merri C. Moken of Brown Rudnick LLP, New York, USA
Respondent’s Counsel: No Response
Case Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
The Challenge of Properly Applying Telstra
The key element of the well-known Telstra standard:
“it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”,
while appearing to be simple and intuitive is quite challenging to apply. It is an odd standard that deviates from the three elements of the UDRP in not relying on an assessment of evidence, but rather an assessment of conceivability. It is thus a self-referential, solipsistic standard. Further, it is formulated as proving a negative: “not possible to conceive”. The Panel is invited to make findings under this standard by only consulting with itself. It was formulated by an Australian panelist assessing one of the most famous and distinctive Australian marks, “TELSTRA”, yet it has been adopted by countless panels to resolve disputes, almost none of which involve marks as famous or distinctive as TELSTRA itself.
The Australian panelist who formulated the Telstra standard may have had sufficient knowledge independent of that presented in the dispute to make an informed finding as to the lack of a conceivable legitimate use of the Disputed Domain Name, Telstra.org, even in the absence of a response. Yet the “not possible to conceive” standard is applied in thousands of disputes involving lesser known and less distinctive marks where, in the absence of a response that presents rebuttal evidence, the Panel is insufficiently knowledgeable to apply the “not possible to conceive” standard.
When the Telstra standard is asserted with respect to a little known, nondistinctive mark in the absence of a rebuttal response, it creates a “damned if you do, damned if you don’t” situation for the Panel. If the Panel does not do independent research, the Panel may inadequately assess the conceivability of legitimate uses for the disputed domain name. For instance, in my view, the Panel in the fbsolution. info dispute, by failing to do independent research, was insufficiently informed to properly assess the lack of a conceivable legitimate use for the disputed domain name, resulting in a poorly supported decision. Yet a Panel that conducts independent research may be overstepping its proper role, doing the work of one of the parties for them, deciding the dispute based not on the evidence submitted by the parties, and improperly influencing the outcome of the dispute. The issue of over reliance on independent research came to the fore in the controversial fordirect.com dispute.
Independent panelist research is a particular issue under the UDRP because the assumptions on which the UDRP’s procedures are based frequently do not match the reality, such that there is a mismatch between the procedures available to a Panel and the procedures that are required to produce a well-informed and just outcome. The UDRP was developed on the assumption that it would only be used for instances of clear-cut cybersquatting and that if the respondent had a meritorious defense it would appear to present robust evidence in its defense. But the reality is that the UDRP has, over 25 years, morphed into a parallel court system for all manner of disputes involving domain names, that the issues are often complex and nuanced, that the procedures are often inadequate for resolving such disputes, and that Respondents rarely appear, even when they apparently would be able to offer a strong defense.
There are further complications. Complainant often submit sloppy complaints where their allegations are insufficiently supported by evidence. The procedure for notifying respondents is unreliable, such that a panel usually does not know whether a non-responding respondent received notice of the dispute. The lack of in-person engagement with the parties and their representatives, and the lack of discovery and of depositions, means that the panel may receive a partial evidentiary record that leaves it with unanswered questions about the completeness and accuracy of the evidence submitted, especially in the absence of any rebuttal evidence should the respondent not appear.
These circumstances can place a Panel in a difficult bind. They are faced with partial evidence, a non-appearing respondent, and tasked with reaching a decision. There is a philosophical divide between Panels as to what is appropriate under such circumstances. Some Panels find that the burden is on the Complainant to fully support all its key allegations with adequate evidence and will dismiss a Complaint that does not meet that evidentiary burden. Some Panels find that the burden is on the Respondent to appear to contest the Complainant’s allegations and that if the Respondent fails to appear, the Panel is justified in accepting plausible allegations by the Complainant as true. Yet another approach is a middle ground in which a Panel, especially in the absence of a response, will conduct limited independent research to assess the accuracy and completeness of the Complainant’s evidence.
The conundrum of whether to conduct limited independent research is particularly acute when, in the absence of a response, a Panel chooses to adopt the Telstra doctrine of passive holding. A Panel is under no obligation to adopt the Telstra doctrine of passive holding, of course, especially if the circumstances make it problematic to apply.
The decision on Telstra.org, issued on February 18, 2000, is one of the very first and one of the most influential decisions in the history of the UDRP. It proposes a set of criteria, that when met, would justify finding that a passively held domain name had violated the UDRP criterion regarding bad faith use – despite the absence of any actual use. The key criterion is the inconceivability of any legitimate use, as excerpted above.
If ICANN had wanted the UDRP to explicitly cover passive holding, a provision addressing passive holding could have been included in the UDRP after being refined through the multi-stakeholder policy development process. Instead, passive holding was not included in the UDRP. Rather, once the UDRP was adopted and turned over to the panelists to interpret, one of the first actions taken by a panelist was to unilaterally expand the UDRP to cover instances of passive holding.
This expansion of the scope of the UDRP to include passively held domain names did not benefit from the collaborative input of various stakeholders who could have raised concerns about the inconceivability test, or about a formulation that requires proving a negative, or who could have perhaps proposed an alternate, less problematic standard. The Telstra standard comes from the mind of a single panelist attempting to resolve a dispute with a very rarely found set of circumstances. Telstra may not be well-suited to disputes with different circumstances.
The Telstra standard places the burden on the Respondent to rebut the Complainant’s claim that there is no conceivable legitimate use for the Disputed Domain Name. Yet that burden is not properly placed on the Respondent. The Telstra standard is not part of the UDRP. Indeed, a Respondent reading the UDRP could reasonably believe that a passively held domain name would not violate the UDRP’s stricture against bad faith use.
A Complainant that wishes to expand the scope of the UDRP to cover a Disputed Domain Name that is passively held, and a Panel that wishes to assist the Complainant in such an expansion of the scope of the UDRP by relying on Telstra, take upon themselves the burden of meeting the inconceivability test. In the absence of a response, it is not a burden that a Complainant can meet alone, because the Complainant cannot prove a negative.
Even if the Complainant submits extensive evidence from search engines and trademark searches that it is the only conceivable user of the mark, a Panel that is employing the Telstra standard must assess the validity of the evidence by checking that the Complainant did not selectively present its evidence and leave out evidence of other legitimate uses of the mark.
This is similar to the Panel’s responsibility to assess the validity of the Complainant’s asserted trademark registration. As Zak Muscovitch commented on the vyv .info dispute:
I am generally apprehensive about Panels conducting their own research other than the most basic kind such as to verify a trademark registration in a database or verify the content of a website especially where the evidence isn’t put to the parties. The Panel expressly noted – ostensibly out of this very concern – it “considered putting the results of this limited factual research to the Parties in a procedural order but determined that this was not necessary because the mark is a three-letter combination with multiple potential co-existing uses and there is no evidence of targeting the Complainant’s mark”.
In my view, the limited research that a Panel should conduct when applying the Telstra standard in the absence of a response is similar to verifying a trademark registration or to conducting an online search to check on third-party usage of a three-letter combination, as noted above.
A unifying characteristic of such research is that it is publicly available, readily accessible, independently verifiable by both parties, and not exclusively known to either party.
In my view, a Panel should employ the following approach to implementing the Telstra standard, should it wish to do so.
- If the Respondent appears with a robust rebuttal, the Panel can rely on the evidence presented by both parties and there is likely no need to conduct independent research;
- If the Complainant fails to submit sufficient evidence to make a plausible argument that there is no conceivable legitimate use of the Disputed Domain Name, the Complainant has failed to meet its evidentiary burden, and the Complaint should be dismissed;
- If the Complainant submits evidence to make a plausible argument and there is no response, the Panel still has the responsibility to assess the adequacy of the submitted evidence by doing limited independent research as to other legitimate uses for the Disputed Domain Name.
It was the third circumstance that the Panel in the terravita .shop dispute found itself in. The Panel conducted limited independent research. The research revealed that the Complainant’s allegations of inconceivability were not well founded, such that the Panel, now sufficiently informed, denied the complaint.
In the recent ZoraCompanies.com dispute, the Panel also found itself in the third circumstance. The Panel conducted limited independent research to assess the sufficiency of the evidence submitted by the Complainant. This due diligence on the part of the Panel led it to the discover of many third-party uses and meanings for “ZORA” such that a legitimate use for ZoraCompanies.com was quite conceivable. The Panel found:
Accordingly, despite the absence of a Response, contrary to the leading case on passive holding, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Complainant has not demonstrated the implausibility of any good faith use to which the domain name may be put that would not amount to an infringement of Complainant’s rights in its ZORA mark.
The peculiarities of the panelist invented Telstra standard place a burden on Panels that wish to adopt it to verify the evidence presented as to inconceivability, much as Panels have a responsibility to verify the validity of an asserted trademark registration. The Panel in the ZoraCompanies.com dispute properly fulfilled this responsibility.
A Rush to Good Judgment
Printfly Corporation v. Domenico Muscillo, NAF Claim Number: FA2408002113611
<RushOrderTees .co> and <RushTees .com>
Panelist: The Honorable Neil Anthony Brown KC, Mr. Richard W. Hill and Mr. David L. Kreider (Chair)
Brief Facts: The Complainant offers custom printing of men’s and women’s clothing and accessories via its website at <RushOrderTees .com> registered since 2003. On October 23, 2018, the Complainant registered the USPTO trademark, RUSH ORDER TEES with the disclaimer: “No claim is made to the exclusive right to use the following apart from the mark as shown: ‘RUSH ORDER’”. Since 2003, the Respondent claims to have begun selling t-shirts across the New York – New Jersey region, and online using the domain name <stylusapparel .com> since 2007. Over the years, the Respondent began registering many other descriptive names related to custom printing and custom tee shirt services. The disputed Domain Names <RushTees .com> and <TushOrderTees .co> were registered on October 23, 2009, and on August 4, 2011 respectively.
The Complaint alleges that the Domain Names and their use by the Respondent are confusingly similar to the RUSH ORDER TEES Mark, purportedly offering the Rush Order Tees Services, and are being used in a manner to intentionally deceive consumers into believing they’re communicating with or ordering from the Complainant. The Respondent contends that the Complainant did not have trademark rights when the Respondent registered the Domain Names and that the USPTO agreed that the Complainant had no right to trademark protection and that the words “rush order tees” could not function as a trademark. In 2017, the Complainant repeatedly offered to buy the Domain Name <rushordertees .co>, which the Respondent initially declined. The Respondent later proposed a sale price of US $6,700, but the sale was never consummated.
Held: The Complainant did not provide any evidence showing that the Respondent’s fast turnaround custom tee shirt business was not a genuine service. Given the evidence before it, the Panel finds that the Respondent operates a bona fide custom tee shirt and apparel business under the Domain Names. The Panel concludes that the Respondent has rights or a legitimate interest in the Domain Names. The Panel further finds no evidence of bad faith registration or use. The Respondent registered the Domain Names simply because they were available and contained the descriptive common search terms that consumers use when searching for fast turnaround orders for custom tee shirt printing services.
With respect to the Respondent’s registration of <RushTees .com> in 2009, the Respondent’s rights to this Domain Name and ability to use the name in connection with his own custom tee shirt printing business cannot seriously be questioned. With respect to the second Domain Name <RushOrderTees .co>, while it is an exact match of the Complainant’s mark, the Panel notes that in 2011, the Complainant did not have recognized trademark rights in this descriptive search term that is very common in the industry. Further in 2015, the USPTO Examining Attorney identified many third-party uses of “rush order tees” in its Office Action refusing registration. The Panel finds from the evidence that none of the Respondent’s conduct reflects “bad faith” in any sense.
RDNH: The Complaint provides no evidence of bad faith registration or use of the Domain Names directed towards or “targeting” the Complainants. The Panel finds that the Complainant knew or should have known that they would be unable to prove that the Respondent lacks rights or legitimate interests in the Domain Names and that the Respondent registered and is using the Domain Names in bad faith. Moreover, the Panel finds that the Complainant has sought to use the UDRP as a Plan “B” option to attempt, wrongfully, to wrest the Domain Names from the Respondent after the commercial negotiations commenced by the Complainant had broken off. Based on the facts above described, the Panel finds that reverse domain name hijacking has occurred.
Complaint Denied (RDNH)
Complainant’s Counsel: Sophie Edbrooke of Gerben Perrott, PLLC, District of Columbia, USA
Respondent’s Counsel: Jason Schaeffer of ESQwire .com, P.C., New Jersey, USA
Case Comment by ICA General Counsel, Zak Muscovitch: An excellent decision in several respects. First, the Panel recognized that the Respondent’s tee shirt business was of course, on its face, “bona fide” as understood by the Policy and made an affirmative finding of rights and legitimate interest. Second, the Panel recognized the limitations of the Complainant’s trademark based upon the disclaimer included in the registration. Third, the Panel looked to the material time period to determine that at the time of Domain Name registration, the Complainant had no trademark rights. Well done.
Panel: No Credible Evidence That Domain Name Was Registered and Used in Bad Faith
AUGIS, ARTHUS BERTRAND v. Mira Holdings, WIPO Case No. D2024-3871
<augis .com>
Panelist: Mr. Nick J. Gardner
Brief Facts: The French Complainants appear to be related entities. The Complainant’s business is manufacturing and selling certain forms of jewellery, particularly commemorative medals and its main website is at <augis .fr> (in French). The Complainant owns trademarks for the word AUGIS – a French mark, registered on January 5, 1990, and the EU mark, registered on May 15, 2014. The Respondent acquired the disputed Domain Name in an auction on July 7, 2014, and it currently resolves to a webpage indicating it may be for sale. The Complainant alleges that as of August 2, 2024, the disputed Domain Name resolved to a webpage which contains links to third-party sites offering products which compete with those of the Complainant, some of which are counterfeits of the Complainant’s own products. The Respondent responds that the webpage which the Complainant says the disputed Domain Name resolved to was a dynamic parking page where the links in question are geographically dependent and it had no knowledge of what links were being displayed to visitors in France.
The Response firstly draws attention to the fact that the disputed Domain Name was originally registered in 1998 by the Complainant who held it until 2013, when its registration lapsed. The Response contends that it has a legitimate interest in acquiring the disputed Domain Name for resale given that the term “augis” is a name and points out the Complainant’s own use of the term derives from the fact it was the name of the Complainant’s founder. The Respondent further contends that its registration of the disputed Domain Name is also consistent with other surname domain names which the Respondent has registered for the same reason, including <cavanagh .com>, <obermaier .com>, <buccelli .com>, and <harck .com>, among others. The Response then indicates that it filed suit against the Complainant in the Arizona (US) Court for a declaration that the Complainants have no trademark rights in the Domain Name in the US jurisdiction and that the Respondent is entitled to registration, ownership and use of the domain name <augis .com>.
Preliminary Issue – suspension or termination of the present proceeding: In considering how to proceed, the Panel has considered whether the Respondent is correct to say that the Complainant has consented to the jurisdiction of the Arizona court in terms of paragraph 3(b)(xii) of the Rules. It seems to the Panel that the consent in question is only applicable if and when the Panel has made a decision to cancel or transfer the disputed Domain Name, which of course has not occurred. The Respondent in fact acknowledges this possibility but says the Arizona court will apply a wider test. In any event, the Panel considers this is a matter for the Arizona court.
The Arizona Proceeding is clearly a “ [….] legal proceeding[] initiated […] during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint” and hence the Panel accepts the Respondent is correct to say that paragraph 18 of the Rules applies and the Panel has the discretion to suspend or terminate the present case. The Panel declines to suspend or terminate the present case. It does so primarily because it considers its decision on the merits (below) may render the Arizona Proceeding otiose, and thereby assist the parties in saving costs and providing finality within a rapid timescale.
Held: The Panel notes that the Complaint records that the disputed Domain Name was originally registered in 1998, over 25 years ago, but says very little about its historical use. The Panel finds it difficult to believe that the Complainant’s advisers failed to investigate, as they would have quickly found the Complainant was the original registrant. The failure to describe the history is however perplexing, and the Panel suspects deliberate. It is also relevant to note that the Complainant allowed its United States trademarks to expire in 1989. Taking all of this together, the Panel considers it reasonable to infer that it is more likely than not that the Complainant deliberately allowed the disputed Domain Name to lapse in 2013, and chose not to inform the Panel of this history.
The Respondent asserts it had no knowledge of the Complainant or its business at the time of acquiring the disputed Domain Name, raising the question of whether this claim is credible. However, it is quite clear to the Panel that the disputed Domain Name has a potential value independent of any connection with the Complainant. The word “augis” is both a first name and a surname. Moreover, there is no evidence before the Panel of the Complainant having any business anywhere but France. Its website is entirely in French. There is no evidence of it being famous or having any reputation anywhere. In short, there is nothing to suggest that an organisation in the United States should have any knowledge of the Complainant or its business.
In summary, there is nothing on the record which would indicate to the Respondent that the Complainant had overarching rights which prevented the Respondent from purchasing a Domain Name which corresponded to a name used by a nontrivial quantity of people. The Panel further agrees with the Respondent that the Complainant does not appear to have fully appreciated how parking pages or Google search results work and in particular how the links or results in question are likely to be geographically-dependent. The Complainant presents the links to websites offering counterfeit products as being a conscious decision by the Respondent when it is clear that it was likely a French-specific result of which the Respondent had no knowledge of, and when it did learn of the position it disabled the parking page in question.
Accordingly, the Panel concludes there is no credible evidence to establish that the disputed Domain Name was registered and is being used in bad faith, and the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
RDNH: In the present case the Panel considers that it has been presented by the Complainant with materially incomplete evidence. That seems indisputable – the Complaint does not mention the Complainant was the previous registrant of the disputed Domain Name. It seems to the Panel more likely than not that this omission was a deliberate decision, but even if not, the Complainant could in its First Supplemental Filing explain what had happened and why it had not previously been mentioned. It did not do so.
The Panel is also concerned by the selective and inaccurate purported quotation from Haringey London Borough Council v. Host Master, 1337 Services LLC, WIPO Case No. D2023-1321. Specifically, the omission from the quotation of the words “[…] especially one who has repeatedly abused the domain name system […]” seems to the Panel to omit an important part of the panel’s reasoning in that case, which was in fact not present in the current case. The Panel considers it more likely than not that the omission was deliberate. In all the circumstances the Panel concludes that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Cabinet Herrburger, France
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch: Kudos to the Panel for recognizing the nuances of PPC links. The Panel noted in particular that “the Complainant does not appear to have fully appreciated how parking pages or Google search results work and in particular how the links or results in question are likely to be geographically-dependent”. The Panel further noted that “the Complainant presents the links to websites offering counterfeit products as being a conscious decision by the Respondent when it is clear that it was likely a French-specific result of which the Respondent had no knowledge of, and when it did learn of the position it disabled the parking page in question.”
As noted in UDRP Perspectives at 3.6, PPC advertising is often misunderstood. PPC advertisements are often a function of not only the subject matter of the domain name, but also the geographic location of the visitor and the visitor’s past Internet searches and interests derived from cookies stored on the visitor’s computer or known by the visitor’s browser. As such, care must be taken in assuming that what a Complainant sees is the same as what the Respondent or a Panelist sees. A similar observation was made by the dissenting Panelist in Saudi Arabian Mining Company (Ma’aden) v. Fundacion Privacy Services LTD, WIPO D2021-3590, and is worth noting:
“PPC link technology has evolved considerably since its early days where such links were either static, or if they were dynamic, they were based on the content of the site and the domain name itself. Putting the privacy implications aside, today many PPC links display advertisements based on previous search results of the user.
In this case, that is what I believe we have here. When visiting the disputed domain name, this Panelist did not get links to the Complainant or to any of its competitors, but rather links that were related to previous searches I performed (one related to my daughter’s college search and another about laptops that I was researching). Therefore, the evidence provided by the Complainant could just as likely have been based on the previous activity of the Complainant as opposed to the use of the domain name to profit off the third-party mark.”
Domain Used for Email Fraud but No Website Use
Six Continents Hotels, Inc. v. Tim Parsonson, WIPO Case No. D2024-3839
<ilhgs .com>
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainants are Six Continents Hotels, Inc. and its affiliate, Six Continents Limited, which are part of the IHG Hotels & Resorts hotel group (“IHG”) which own, manage, lease or franchise, through various subsidiaries, 6,430 hotels and 954,836 guest rooms in about 100 countries and territories around the world. The Complainant owns a number of trademark registrations for the IHG mark, including US trademark, registered on December 9, 2008; Canadian trademark for IHG GAME CHANGING ADVANTAGE, registered on January 13, 2016, and EU trademark for IHG, registered on December 21, 2006. The Respondent appears to be an individual with an address in the United States. The disputed Domain Name was registered on September 16, 2024, and does not resolve to any website with content. However, the disputed Domain Name was allegedly used for a fraudulent email scheme, impersonating one of the Complainant’s employees.
The Complainant alleges that the Respondent used the disputed Domain Name in connection with a phishing scam in which the Respondent impersonated one of the Complainant’s employees in a fraudulent attempt to collect payment for an insurance claim that was intended for someone else, which is not use of the disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant also alleges that the disputed Domain Name is not linked to a website with content, but under the doctrine of passive holding, this does not prevent a finding of bad faith on the part of the Respondent, especially given the distinctiveness and fame of the IHG mark, the Respondent’s use of a privacy service to conceal his identity, and the lack of any good faith use to which the disputed Domain Name may be put.
Held: Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The panels have held that the use of a domain name for illegal activity – here, claimed phishing and impersonation/passing off – can never confer rights or legitimate interests on a respondent, see WIPO Overview 3.0, section 2.13.1. Further, it is clear from the use that the Respondent targeted the Complainant when registering the disputed Domain Name and intentionally registered the disputed Domain Name which is confusingly similar to the Complainant’s IHG mark in order to carry out this scheme. Panels have held that the use of a domain name for illegal activity – here, claimed phishing and impersonation/passing off constitutes bad faith, see WIPO Overview 3.0, section 3.4.
Furthermore, the disputed Domain Name does not display any content, but from the inception of the UDRP, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Considering the use of the disputed Domain Name for phishing activities, the Respondent’s failure to submit a response or provide any evidence of actual or contemplated good-faith use, and the implausibility of any good-faith use to which the confusingly similar disputed Domain Name could be put, the Panel finds that the Respondent’s non-use of the disputed Domain Name does not prevent a finding of bad faith.
Transfer
Complainant’s Counsel: The GigaLaw Firm, LLC, United States.
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case is a good example of how the way that a Domain Name is used can impact the analysis of Confusing Similarity. Is IHG “Confusingly Similar” to ILHGS? The Panel found “the mark is recognizable within the disputed domain name”. In normal circumstances, one may easily find that there is some similarity between the trademark and the Domain Name, but not necessarily a confusing one. But given that the fraudulent use that the Domain Name was put to by the Respondent, clearly at least the Respondent himself believed that the two terms were sufficiently confusingly similar to assist with the fraud.
The Confusing Similarity combined with the fraudulent use of the Domain Name would seem to have been quite sufficient alone to find a lack of rights and legitimate interest, combined with registration and use in bad faith. Here however, the Panel took it one step further perhaps unnecessarily and found that “the implausibility of any good faith use”. Certainly in light of the way that the Respondent had fraudulently used the Domain Name, good faith use was implausible. But the implausibility test under Telstra was not intended to address cases of overt bad faith – as existed in this case. As such, it was not necessary in my view to take this extra step in this case, particularly because absent the clear evidence of bad faith in this case, there are indeed plausible good faith uses for an acronym such as ILHGS apart from being used to defraud the Complainant. If there had been no evidence of outright bad faith use and fraud in this case, it is questionable whether a Panelist could conclude that there is no plausible good faith use for this Domain Name, but that was not the issue in this case.
Descriptive or Common Terms in the Domain Name Offers Low Threshold of Similarity
<fastercoupler .com>
Panelist: Mr. William Lye Oam KC
Brief Facts: The Complainant claims to be a global leader in the design and manufacturing of quick-release hydraulic couplings. It claims that its extensive reach and esteemed reputation are built on decades of experience, technical innovation, and a commitment to quality, making the FASTER brand synonymous with excellence in hydraulic connection technologies across international markets. It represents its business online through the website <fastercouplings .com> since 2015. The Complainant is the owner of the EU trademark FASTER, registered on June 03, 2016, and April 03, 2007, and an International trademark registered on April 14, 2016. The disputed Domain Name <fastercoupler .com> was registered on July 19, 2024.
The Complainant alleges that the identity or confusing similarity of the disputed Domain Name to the “FASTER” trademark is likely to lead to confusion and/or association for the Internet users seeking the Complainant. The Complainant further alleges that the Respondent lacks rights or legitimate interests in the disputed Domain Name because the Respondent’s website redirects to a competitor’s site selling similar hydraulic couplings, indicating no bona fide use. The disputed Domain Name is designed to mislead consumers by mimicking the Complainant’s trademark and official domain <fastercouplings .com> for commercial gain. The Respondent did not file a Response.
Held: The disputed Domain Name contains the descriptive and textual term “coupler” and it is therefore not identical to the Complainant’s trademark “FASTER”. Further, when a trademark is also descriptive of a word that is commonly used by the public, the Panel considers that it is not as straightforward to merely pick out the textual parts that are identical to the trademark and ignore the broader case context. This case is borderline as the disputed Domain Name uses a common or descriptive term that is combined with a trademark and when comparing it with the Complainant’s official domain name, there is a low threshold of similarity. While the Complainant’s official domain name was registered prior to the disputed Domain Name and as such affords it with certain rights but without more, e.g. evidence of extensive use and reputation; or a trademark registration that includes the term “couplings”. The Panel considers that merely asserting priority of use or consumer recognition is insufficient to satisfy the jurisdiction element.
The contents of the disputed Domain Name prima facie show that there may be a legitimate interest that the disputed Domain Name was registered, this factor may negate any claims of confusing similarity. But even if the level of similarity is likely to create confusion, the Panel emphasises that there is a need to adduce evidence to satisfy the elements of the Policy, particularly where the evidence presented of legitimate interest and bad faith on the part of the Respondent is inconclusive. On balance, the Panel has carefully considered the available information; the evidence including its weight; and the Complainant’s contentions, noting that no compelling evidence of confusion or likelihood of confusion has been adduced, the Panel considers that it is open to infer that the disputed Domain Name is referrable to the Respondent and/or its associated entity’s business of providing its goods or services for sale. Accordingly, the Panel finds that the disputed Domain Name is not confusingly similar to the trademark to which the Complainant has rights.
Further, the website under the disputed Domain Name appears to be an active commercial website operated by the entity “Yancheng Jindong Hydraulic Machine Co., Ltd”, and the Panel reasonably infers that there is some kind of association between the Respondent and aforesaid entity but this remains unclear. In any event, there is no evidence to show that the Complainant’s competitor “Yancheng Jindong Hydraulic Machine Co., Ltd” is offering for sale the Complainant’s goods and/or using its trademark “FASTER”. From the Panel’s searches the entity “Yancheng Jindong Hydraulic Machine Co., Ltd” appears also to operate under the domain name <fastcoupling .com> which was registered more than four years ago. The terms ‘faster’ and ‘coupler’ are descriptive in the context of hydraulic connectors, implying speed and efficiency. This descriptive use suggests that the Respondent and/or the entity may be employing the disputed Domain Name to refer to the nature of its own products, which constitutes a bona fide offering of goods within the same marketplace. Such descriptive use may align with recognised legitimate interests under the Policy, particularly when there is no evidence adduced that the Respondent and/or the entity is using the disputed Domain Name to misleadingly divert consumers.
Complaint Denied
Complainant’s Counsel: Mr. Giorgio Gazzola Raffaele Ranieri (Notarbartolo & Gervasi S.p.A:)
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel: This is a very challenging case. For those of you who want to ‘test’ their Panelist skills, take a look at it and think through how you would have decided it. I appreciate how the Panelist took his work very seriously even in a no-Response case, and provided a detailed and thoughtfull analysis to explain how he reached his conclusion. On the other hand, I am not sure that I would have reached the same conclusion. I can certainly see how a different conclusion could be reached in this case and the Domain Name transferred. So, let’s try out an alternative analysis here and see where it takes us, for the fun of it.
Identical and Confusing Similarity: The Complainant’s FASTER trademark is wholly incorporated into the Domain Name, merely adding a term, “Coupler” which is descriptive of the goods offered by both parties. As such, based upon a side-by-side comparison, the two terms are confusingly similar.
Rights and Legitimate Interest: The Domain Name resolves to what appears to be a genuine business that operates under the corporate name, Yancheng JingDong Hydraulic Machine Co. Ltd.. The company and associated business appears to be entirely legitimate and the website shows its business certifications and registrations. It could be argued that the Respondent uses the Domain Name descriptively of its goods. On the other hand, “Faster Coupler” does seem like a rather awkward or somewhat unusual phrase, absent any evidence that it is a common term in the industry. A “quick” coupler would likely be a more apt descriptive term. Moreover, given that the Complainant uses the FasterCouplings.com Domain Name, it does seem odd that the Respondent competitor would just coincidently have landed upon such a similar Domain Name. Given the foregoing raises a prima facie case that the Respondent has no actual rights or legitimate interest in using a Domain Name which appears intended to mimic the Complainant’s mark and website, the Respondent should have come forth with its explanantion, but it did not. That being said, the proceeding should have been in Chinese since the Registration Agreement was in Chinese. Although the notification was in Chinese, the Complaint should have been provided in Chinese as well, and that is easily done these days with Google translate. That would have afforded the Respondent a better opportunity of understanding and meeting the allegations against it. Ultimatly, this case is perhaps best decided under Bad Faith.
Bad Faith Registration and Use: Given the parties are in the same industry there is some liklihood that the Respondent would have heard of the Complainant, though perhaps more evidence of this liklihood was required by the Complainant. On the other hand, the Respondent’s business name is not Faster Coupler so it intentionaly went out and registered a Domain Name that just so happens to correspond significantly to the Complainant’s brand and website. This doesn’t seem like a mere coincidence despite a potential argument that the term is descriptrive. Absent evidence of the term “faster coupler” being a common and apt term in the industry rather than an awkward and unusual term as it appears, on a balance of probabilities it appears that the Respondent registered and is using the Domain Name in bad faith to piggy back off of the Complainant’s goodwill.
So there you have it. Two different approaches. Something for you to think about.
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.