Trademark Infringement and the UDRP
Notably, the Panel properly rejected the doctrine of “constructive notice” in the context of the UDRP. As noted in UDRP Perspectives at 3.4, there is no place for the concept of “constructive notice” of trademarks under the Policy. The essence of a Complaint is an allegation of bad faith targeting of the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant’s trademark and must have intentionally targeted the trademark to unfairly take advantage of the mark’s goodwill or selected the Domain Name for reasons other than the Complainant’s trademark, then bad faith registration will not be found. Continue reading the commentary here.
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We hope you will enjoy this edition of the Digest (vol. 4.50), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Trademark Infringement and the UDRP (getneuron .com *with commentary)
‣ When the UDRP was a Wrong Route for a Complainant (epta-agencies .com *with commentary)
‣ The “Conceivability” test of Telstra (dvv-services .com *with commentary)
‣ Responsibility Of a Domain Name Investor to Conduct Due Diligence (tortoisecapital .com *with commentary)
‣ Which Golf Club Did the Respondent Target? (wentworthhillsgolf .com *with commentary)
Trademark Infringement and the UDRP
Optimal Satcom, Inc. v. Leslie Grant, ESpace Networks, Inc, WIPO Case No. D2024-4309
<getneuron .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant, a 2002 spin-off of Lockheed Martin and COMSAT, is a provider of enterprise computer systems and services for designing and optimizing satellite communications (“SATCOM”) networks and capacity. One of the Complainant’s products since 2019 is NEURON, which performs real-time resource management for large SATCOM networks, as described at <optimalsatcom .com/neuron>. The Complainant holds a US trademark for NEURON registered on March 24, 2020; first use in commerce: June 17, 2019. The Complaint claims that it acquired “far-reaching common law trademark rights” in its NEURON-inclusive domain name based on its use in commerce since “at least as early as 2019”. The disputed Domain Name was registered on May 14, 2018, in the name of a domain privacy service.
The Complainant alleges that the Respondent is in “direct competition” with the Complainant, offering computer software related to network performance, and the disputed Domain Name diverts Internet traffic by suggesting that the Respondent is somehow connected to the Complainant. The Respondent claims a legitimate interest in the disputed Domain Name, as it has been offering a product named “NEURON” since February 2020, which is reflected in a pending application for trademark registration and that it is also commonly known by the name “Neuron”, as it has been conducting its entire business under that name since December 2023. The Respondent further contends that it is not a competitor of the Complainant… the Complainant’s NEURON product is for satellite capacity management, while the Respondent’s is for multi-WAN management, serving different purposes as customers can readily discern.
Court proceedings: The Respondent reports that the Complainant filed a complaint in federal court for trademark infringement against the Respondent on November 5, 2024, Optimal Satcom, Inc. v. Espace Networks, Inc., Case 1:24- cv-01973 (U.S.D.C., E.D. Va., Alexandria Division). Neither party has requested suspension or termination of the current UDRP proceeding as a consequence. The Decision in this mandatory UDRP proceeding is not, of course, binding on a court of competent jurisdiction, but it may offer prompt and limited relief within the confines of the UDRP framework. As noted in WIPO Overview 3.0, section 4.14.1: “Appointed panels are reluctant to suspend a UDRP case due to concurrent court proceedings, most notably because of the potential for indeterminate delay.” Accordingly, the Panel in this instance will proceed to a Decision.
Held: In the present case, the Panel observes that the Complainant by its own account began using NEURON as a mark in June 2019 on a sub-domain of its website, in connection with a specialized software platform for operators of large satcom networks. The mark was registered in March 2020. The record indicates that the Respondent acquired the disputed Domain Name in October 2023 and employed it starting in December 2023 in connection with its offering – not only of its specific software-based services that had been branded as NEURON since 2020 but also a rebranding of the entire company and its commercial offerings. This would satisfy the example of rights or legitimate interests given in the Policy, paragraph 4(c)(i).
The record does not support the Complainant’s claim that the Parties are direct competitors. The Panel notes that the NEURON mark is also a dictionary word in English, referring to a specialized cell in the nervous system. This makes an apt descriptive or suggestive metaphor for a digital communications network such as those involved in both of the Parties’ NEURON-branded software offerings. The Panel is further not willing to embrace the doctrine of “constructive notice” advanced by the Complainant without some supporting evidence of likely targeting of the Complainant’s mark (see WIPO Overview 3.0, section 3.2.2). The Complainant’s mark is not highly distinctive or long-established, and the record does not indicate that it is well-known outside a rather limited and specialized circle of potential customers not shown to overlap with the Respondent’s.
In the totality of these circumstances, the Panel considers it more likely that the Respondent selected the disputed Domain Name for its descriptive or suggestive sense, rather than any debatable value it would have in emulating the Complainant’s then nascent brand. The Parties may litigate their respective trademark claims and defenses in the context of the pending USPTO and federal court proceedings, but for UDRP purposes the Panel does not find it probable that the Respondent registered and used the disputed Domain Name in bad faith to target the Complainant’s NEURON mark.
Complaint Denied
Complainant’s Counsel: Holland & Knight LLC, United States
Respondent’s Counsel: Potomac Law Group, PLLC, United States
Case Comment by ICA General Counsel, Zak Muscovitch
Notably, the Panel properly rejected the doctrine of “constructive notice” in the context of the UDRP. As noted in UDRP Perspectives at 3.4, there is no place for the concept of “constructive notice” of trademarks under the Policy. The essence of a Complaint is an allegation of bad faith targeting of the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant’s trademark and must have intentionally targeted the trademark to unfairly take advantage of the mark’s goodwill or selected the Domain Name for reasons other than the Complainant’s trademark, then bad faith registration will not be found. If the mere existence of a trademark registration was sufficient to give the Respondent constructive knowledge, thousands of innocent domain name registrants would be unjustifiably subject to UDRP proceedings (see; Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan, NAF FA2110001970005 <lumos .com>, 3-member, Denied, RDNH; and also see The Way International, Inc. v. Diamond Peters, WIPO Case No D2003-0264]:
“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant? If the existence of a trademark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly.”)
Notably, the Complainant had already commenced a federal court action for trademark infringement. Trademark infringement in contrast to cybersquatting as understood by the UDRP does not require intention. Cybersquatting falls within the scope of the UDRP whereas trademark infringement alone, does not. Trademark infringement may exist even where there is no awareness of a Complainant’s mark nor intent to unfairly take advantage of it. The key to bad faith under the Policy is a Respondent’s intent to take unfair advantage of Complainant’s trademark, in other words, targeting.
For instance, registration and use of an identical or confusingly similar domain name to create a copycat website or other instances of impersonation with intent to take commercial advantage of a Complainant’s mark, is both a trademark infringement and cybersquatting. In contrast, a Respondent who happens to use a domain name that is identical or similar to a trademark for similar goods or services may be infringing but may not be cybersquatting if the Respondent did so unknowingly. In some instances, however, cybersquatting and trademark infringement may both exist, such as where a Respondent intentionally registers and uses a confusingly similar domain name for similar goods or services and does so with the purpose of misdirecting visitors and passing itself off as the Complainant.
Despite this potential overlap between cybersquatting and trademark infringement, however, Panels must take care to differentiate between cases that primarily sound in trademark infringement instead of cybersquatting. Where a dispute is best characterized as a trademark dispute involving competing claims of rights or where the domain name is part of a larger dispute, or where the Respondent has raised credible defenses to the claims, or where the dispute involves a reseller, or where the Respondent is engaged in a genuine business rather than counterfeit or intentionally passing itself off as the Complainant, the dispute may properly be deferred to the courts which are better equipped to resolve such cases.
For instance, while a Respondent may be clearly aware of and targeting the Complainant in its choice of the disputed domain name, if the Complainant’s mark is used in a descriptive sense to accurately describe the Respondent’s good or services that relate to Complainant’s goods or services, then the Respondent may have a fair use defense.
Moreover, Panels must exercise caution by requiring that Complainant’s adequately demonstrate through evidence that the Respondent intentionally targeted the Complainant’s trademark. For example, where parties are in different jurisdictions and where a Complainant’s mark is not well known in the Respondent’s jurisdiction, a Complainant will need to provide evidence that it was genuinely the intentional target of the Respondent rather than a mere unintentional infringer.
Panels should also exercise caution in effectively shutting down a Respondent’s genuine business through the UDRP where the dispute is more appropriately decided in courts. While the UDRP is suitable for shutting down clear cases of cybersquatting it was not intended to provide a route around trademark infringement court actions where a Respondent may have defenses available in court that are not available in the UDRP or where discovery and a greater examination of the facts and circumstances are appropriate than are generally provided for in the UDRP.
The Panel in the present case properly dismissed the Complaint because the case did not sound in cybersquatting as understood by the Policy, noting that “for UDRP purposes the Panel does not find it probable that the Respondent registered and used the disputed domain name in bad faith to target the Complainant’s NEURON mark”. That being said, the Panel also noted that the “Parties may litigate their respective trademark claims and defenses in the context of the pending USPTO and federal court proceedings” which is equipped and intended for such disputes which do not involve an intentional targeting of a mark but rather involve competing trademark claims. The Policy should not be applied inter alia to “good faith disputes between competing right holders or other competing legitimate interests…” (see par. 172 of the WIPO Final Report 1999).
[Editor’s Note: The above commentary is adapted from a forthcoming version of UDRP Perspectives which is co-authored by Igor Motsnyi and Zak Muscovitch.]
When the UDRP was a Wrong Route for a Complainant
European Union Intellectual Property Office (EUIPO) v. Henry Travis, CAC Case No. CAC-UDRP-107041
<epta-agencies .com>
Panelist: Mr. Neil Brown
Brief Facts: The EUIPO is a recognised agency of the European Union and its sole official agency responsible for the registration and administration of various kinds of intellectual property rights, including trademarks. The Complainant has continuously used the EUIPO trademarks since their registration to designate the services it provides under the trademarks. On September 10, 2022, the Respondent registered the domain name <epta-agencies .com> and caused it to resolve to a website. That website promotes itself as being the European Patent and Trademark Agency (“the EPTA”) and provides “patent watch services”, “trademark watch services”, “database administration” and “examination activity”. The Complainant alleges that the disputed Domain Name is confusingly similar to the EUIPO trademarks because it contains without the permission of the Complainant the word “epta” and the word “agencies”, and gives the false impression that the Respondent is an official European institution and is repeated in the aforesaid trade name of the Respondent.
According to the Complainant, the Respondent has also been using the disputed Domain Name and its website to send out purported invoices from “EPTA European Patent and Trademark Agency” for the “Registration of Your Community Trade Mark”, but which also include the expression “Data publication from EUIPO-European Union Intellectual Property Office”, and other references to “Community Trademark”. The purported invoices require payment of a specified fee and give details of a bank account into which payment is to be made to the benefit of “EPTA-Agency.” Accordingly, the Complainant further alleges that the registration of the disputed Domain Name, its use in the resolving website and in the purported invoices, are calculated to give the false impression that the EPTA is an official agency for the processing of EU trademarks, to pass itself off as the Complainant and to obtain payment for the illegitimate services allegedly offered by the Respondent. The Respondent did not file a Response.
Held: In the present case, the disputed Domain Name was registered on September 10, 2022 and the registered trademarks on which the Complainant relies were registered in the moths of July and August 2023, all of which dates are subsequent to the registration of the domain name. Accordingly, if the Complainant wishes to rely on its asserted unregistered trademarks, it must show by evidence that it acquired its unregistered trademark rights by September 10, 2022, which it has not done by evidence. Moreover, the disputed Domain Name could not be said to be confusingly similar to either of those trademarks as they do not contain either the word “epta” or “agencies”. Here, it must be emphasised that UDRP panels have long held and on good grounds that in making the comparison required, a panel must have regard only to the words of the disputed Domain Name and the wording of the relevant trademark, without regard to any extraneous considerations such as surrounding circumstances or, in particular, how the domain name has been used. The Complaint is therefore seriously deficient in not addressing or citing any factor showing either similarity or confusing similarity.
Furthermore, it is and has long been an accepted principle in this field of arbitration that if there were no such trademark in existence at the time the disputed Domain Name was registered, the registration of the domain name cannot be said to have been in bad faith. Nor could the present case conceivably come with any of scenarios listed in the WIPO Overview of exceptions to this well-established principle, as there is no evidence that the domain name was registered in contemplation of the Complainant’s nascent trademark rights. The current Panel would also add that the notion of the registration having been in bad faith is further negated by the fact that the disputed Domain Name registered was in any event not confusingly similar to any of the four trademarks that the Complainant registered two years later, contained no part of the subsequently registered trademarks and there has been no attempt to prove on the established tests a common law or unregistered trademark or when it arose. Accordingly, the Complainant has not shown that the disputed Domain Name was registered in bad faith at a time when the Complainant had the trademark rights it relies on.
RDNH: The Complainant must have realised that its chances of succeeding on the case it presented and the evidence it used to prove that case were slim and probably non-existent. The trademarks were applied for and registered well after the registration of the disputed Domain Name and the domain name could not have been registered in bad faith. Moreover, it opted for the submission that the disputed Domain Name was confusingly similar to the trademarks, but a simple comparison between the two should have told it that it could not that sustain that submission.
The Complainant therefore should not have filed this proceeding, knowing of these substantial defects in its case and yet it went ahead. In the interests of maintaining the integrity of the UDRP and ensuring that when the UDRP is used it is used properly and capable of being supported by evidence, the Panel therefore finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking or primarily to harass the domain-name holder within the meaning of Rule 15 (e).
Complaint Denied (RDNH)
Complainant’s Counsel: Mgr. Rudolf Bicek Ph.D. (Schönherr Rechtsanwälte GmbH, organizační složka)
Respondent’s Counsel: No Response
Case Comment by UDRP Panelist, Igor Motsnyi:
Igor is an IP consultant and partner at Motsnyi IP (dba Motsnyi Legal) in Belgrade, Serbia, “Linkedin”. His practice is focused on international trademarks and domain names, including ccTLDs disputes and the UDRP. Igor has over 22 years of experience in international TM and IP matters. Igor is a UDRP panelist at the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy. Note: The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
I will focus on the following two aspects of this decision: i) confusing similarity and ii) RDNH finding.
1. Confusing Similarity
Anyone who deals with trademark matters is familiar with misleading invoices that are sent to trademark owners by persons pretending to represent national or regional intellectual property offices. The European Union Intellectual Property Office (EUIPO) is one of the IP Offices affected by that activity. EUIPO even published a statement on misleading invoices on its website and provided samples of such invoices. In the <epta-agencies. com> dispute the Complainant tried to shut down one of the websites behind “misleading invoices” activity.
The UDRP can be a very efficient tool in fighting cybersquatting and abuse of trademarks, however it has its limitations. One of the limitations is that the Policy can only be used against domain names identical or confusingly similar to trademarks. The UDRP does not provide a universal solution to all kinds of online infringements and abuse. The Complainant relied on the “EUIPO” and “EUIPO EUROPEAN UNION INTELLECTUAL PROPERTY OFFICE” marks while the disputed domain name was <epta-agencies .com>. As noted by Andrew Allemann in his article: “EUIPO has a good reason for wanting this domain name taken down”.
However, the similarity between the trademarks and the disputed domain name was questionable, to say the least or as the Panel noted proving confusing similarity was: “next to impossible”. In some cases when similarity is weak panels may rely on broader circumstances (e.g. content of the websites, see 1.7 and 1.15 of WIPO Overview 3.0). “UDRP Perspectives” highlight: “Sometimes Panels may consider broader circumstances of a case to establish confusing similarity such as content of the website, registrant’s conduct, any use of the mark by the Complainant (e.g. use of an abbreviation of the mark). However, “broader circumstances analysis” should be used as an additional factor in assessing confusing similarity rather than a substitute for a confusing similarity test” (see sec. 1.8).
In the <epta-agencies. com> “broader circumstances” could not help as there was no similarity between the marks and the domain name.
This decision is another reminder to complainants and their counsel that the UDRP should not be used in all cases of online abuse and infringements. When there is no confusing similarity between a trademark and a domain name, trademark owners should consider other mechanisms.
2. RDNH finding
Another interesting aspect of this decision is the Panel’s finding of RNDH. The Panelist noted that “the Complainant has the right to take proceedings to prevent its trademark from being tarnished or compromised…”.
However, the Panelist found RNDH “in the interests of maintaining the integrity of the UDRP and ensuring that when the UDRP is used it is used properly and capable of being supported by evidence”.
Some UDRP panels are reluctant to find RDNH when a respondent does not come “with clean hands”, see “HCCI Professional Protective Services, LLC v. Jonathan McMaster / Anonymize, Inc.”, WIPO D2022-1668: “the Panel believes that the Complainant approaches the conduct necessary for a finding of RDNH. However, neither has the Respondent’s conduct been exemplary” and “Breazy Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / VR PRODUCTS I LLC”, WIPO D2021-1486.
Other panelists, however, are ready to make an RDNH finding when clearly deficient complaints are filed despite possible respondent’s nefarious behavior, see e.g. “Vantage Solutions, LLC v. zhu yan”, Forum FA2312002076392: “On balance the Panel believes that exercising reasonable skill and judgement the Complainant must have realised that whilst it may have a right to challenge use of the Domain Name using other channels… it had no right to call for the transfer of the Domain Name in this case under the UDRP and this Complaint was bound to fail” and “Securus Technologies, LLC v. Domain Administrator”, WIPO D2021-3383: “The Panel is aware that some panels have taken the view that bad behaviour on the part of the Respondent should neutralise any criticism of the behaviour of the Complainant, but that is not how the Panel reads Paragraph 15(e) of the Rules, which makes no reference to the behaviour of the Respondent.…”
In the <epta-agencies. com> the Panel’s RDNH finding was based on deficiencies in the complainant’s submissions.
At the same time, some other panelists may have been reluctant to find RDNH in case when respondent’s behavior was not innocent.
I wonder what our readers think of this topic and your comments are welcome.
The “Conceivability” test of Telstra
Belfius Assurances SA / Belfius Verzekeringen NV v. Miguel Valladares, WIPO Case No. D2024-4193
<dvv-services .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant claims to be a renowned Belgian bank insurer (wholly owned by the Belgian government) with a solid reputation in Belgium and beyond, with its group having 5,000 employees and 650 agencies. The Complaint adds that the Complainant’s group activities are focused on the Belgian territory, but its trademark is also shown outside Belgium through sponsorship of several national sports teams and sports events. The Complainant is the owner of Benelux trademarks for DVV, which were registered on April 11, 2005, and November 17, 2020, respectively in class 36. The disputed Domain Name was registered on April 8, 2024, and does not resolve to an active website. Nor is there any evidence of any other form of use. No response has been filed.
The Complainant points out that the disputed Domain Name was registered some 20 years after the registration of the Complainant’s first trademark and that its corporate group has established a very substantial presence on the Internet. As a result, the Complainant alleges that the Respondent must have known of their trademark or should have known of it as a good faith search would have disclosed it. The Complainant further alleges that registering the disputed Domain Name with that knowledge, or constructive knowledge, constitutes bad faith and, in reliance on the well-known line of cases starting with Telstra Corporation v Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of the disputed Domain Name constitutes registration and use in bad faith.
Held: The Panel is conscious that the potentially distinctive feature of the disputed Domain Name is the three letters “DVV” which may potentially form an acronym or abbreviation. There are many uses to which such an acronym or abbreviation may be put. In many cases, such uses would not conflict with the Complainant’s rights and would not require permission from it. The Respondent could potentially have rights or legitimate interests to use the disputed Domain Name in connection with such activities. In the absence of any evidence from the Respondent, however, the Panel is not prepared to find that the Respondent has rights or legitimate interests in the disputed Domain Name.
The Panel accepts, as the Complainant contends, that the fact that the Complainant’s business operations focus on Belgium while the Respondent is apparently based in the United States does not of itself preclude a finding of bad faith given the global reach of the Internet. However, this is not a case where the trademark is so inherently distinctive or demonstrated to be so famous that the chances of the Respondent choosing a domain name so closely resembling it is implausible, for example, in the Telstra case. Instead, it concerns a trademark for a three-letter acronym or abbreviation which may represent any number of people, things or activities and the descriptive word “services”.
Moreover, there is no evidence at all of any targeting of the Complainant or other attempt to take advantage of the Complainant’s reputation in the trademark. Finally, the fact that the Respondent used a privacy service when, or upon, registering the disputed Domain Name without more is an insufficient basis to find bad faith particularly as many registrars include this service these days. In these circumstances, the Panel is unable to find that the Respondent has registered and is using the disputed Domain Name in bad faith.
Complaint Denied
Complainant’s Counsel: Internally Represented
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.
Especially in the absence of a response, a Complainant’s invocation of the Telstra doctrine regarding passively held domain names places a responsibility on the Panel to determine whether the “conceivability” test of Telstra has been met:
“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”.
“Conceivability” is a challenging standard to apply in an objective manner. Hamlet’s line, “There are more things in Heaven and Earth, Horatio, Than are dreamt of in your philosophy”, speaks both to the subjectivity and to the lack of specificity as to what is conceivable.
A Panelist assessing conceivability has two choices. One is to remain ignorant. The other is to inform herself of possible good faith uses for the Disputed Domain Name. As argued in the zoracompanies.com comment, a Respondent has no obligation to rebut the allegation of lack of a good-faith conceivable use for the Disputed Domain Name, for Telstra is a panelist created expansion of the Policy that places a burden on the Panel, not on the Respondent, to make an accurate assessment of conceivability.
A responsible Panelist therefore will conduct independent research to assess the conceivability of good faith uses for the Disputed Domain Name. Fortunately, such research takes but a moment. Conducting a search of the mark on Google or on a similar search engine will usually suffice. A search will return examples of third-party use of the mark, if such uses exist, which will thus inform the Panel as to the conceivability of good faith independent uses of the Disputed Domain Name.
In the dvv-services .com dispute, the Panel took the responsible step of conducting such a search:
Further, whatever may be the case in Belgium (about which the Panel does not have evidence), the Panel’s own searches of DVV and DVV services via Google return results for a DVV Media, apparently a global publishing house, a Finnish digital and population data services agency, DVV Entertainment which appears to be a film production company, “DVV International: Education for Everyone”. There are also three images under the Heading Images on the first results page; two of which are for DVV Entertainment and the middle one features the Complainant’s logo from the site “Wikidata”.
Thus informed, the Panel denied the Complaint.
Responsibility Of a Domain Name Investor to Conduct Due Diligence
<tortoisecapital .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainants are affiliates in the Tortoise Capital group, “an asset management company focused on traditional energy and power infrastructure investing” since 2002. The group operates a website at <tortoiseadvisors .com>, a domain name created in November 2002. The Complainant’s United States trademark registrations include TORTOISE MLP INDEX (word) dated February 1, 2011 and TORTOISE GLOBAL WATER ESG INDEX (word) dated January 15, 2019. The Complainant also claims that TORTOISE CAPITAL has attained distinction as an unregistered word mark associated with the Complainant’s asset management services in the energy and power infrastructure industry over the past twenty years.
The Registrar reports that the disputed Domain Name was created on March 5, 2000, and is registered to the Respondent, ‘E-Promote’. That domain name does not resolve to an active website at the time of this Decision, however, in recent months, the disputed Domain Name has resolved to a landing page with layers of “sponsored” (pay-per-click or “PPC”) advertising links to various third parties. The Respondent is not the original owner of the disputed Domain Name. The Complaint attaches screenshots showing that the Complainant itself used the disputed Domain Name from 2000 through at least July 2013. Thus, the Respondent acquired the disputed Domain Name at some point after that.
The Complainant alleges that the Respondent has no permission to use the marks in the disputed Domain Name and no other rights or legitimate interests, as a PPC parking page exploiting the reputation of a third party does not represent a bona fide commercial offering. The Complainant alleges further that the Respondent has engaged in a pattern of abusive registrations to prevent trademark holders from reflecting their marks in corresponding domain names, identifying thirteen other UDRP proceedings where the Respondent was found to have engaged in cybersquatting, most recently in Infojobs Brasil Atividades de Internet Ltda. v. Domain Admin, E-Promote, WIPO Case No. D2022-4909.
Held: The PPC use of a domain name does not represent a legitimate interest “where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users” (WIPO Overview 3.0, section 2.9), as has been the case here. Further, the Complainant furnishes evidence that the Respondent is a long-time domainer who is the registrant of over 18,000 domain names. The Respondent likely automates the process of purchasing domain names with expired registrations and parking them on a landing page for PPC revenues pending eventual resale, where the hosting company’s algorithms serve up links to potentially relevant advertisers. This does not relieve the Respondent of its responsibility under the registration agreement to refrain from using a domain name in a manner that infringes on the rights of others. Failing to do so constitutes bad faith under the Policy.
Professional domainers certainly may be expected to be aware of the risks of trademark infringement if they automate purchases without review, and the Respondent in this case has already had several domain names taken away in UDRP proceedings because they were identical or confusingly similar to trademarks. The disputed Domain Name in this instance is comprised of dictionary words, but the words “tortoise” and “capital” are not normally combined, apart from the Complainant’s distinctive and fanciful name and mark. Thus, this proceeding does not arguably concern innocent, automated speculation in a dictionary term alone such as “capital .com”. Moreover, the reference at the head of the Respondent’s landing page to the domain name being “no longer in business” is not typical of PPC landing pages and seems to reveal awareness that the Complainant itself formerly used the disputed Domain Name to advertise its business. In these circumstances, the Panel finds that the Respondent’s conduct reflects bad faith as exemplified in the Policy, paragraph 4b(iii).
Transfer
Complainant’s Counsel: Husch Blackwell LLP, United States
Respondent’s Counsel: No Response
Case Comment by Newsletter Editor and UDRP Lawyer, Ankur Raheja:
This decision emphasizes the responsibility of domain name investors to conduct due diligence before registering or acquiring a domain name at auction, ensuring that it does not infringe on the rights of third parties. Refer to WIPO Overview, section 3.2.3: “Willful blindness and the duty to search for and avoid trademark abuse.” In addition, the Panel warns on the deployment of AI tools to detect dictionary word domain names: “Professional domainers certainly may be expected to be aware of the risks of trademark infringement if they automate purchases without review.” The conclusion in this case appears to have been influenced by factors such as the Respondent’s jurisdiction of USA; previous involvement in UDRP proceedings and also the fact that the Complainant was the original registrant of the disputed domain name, which worked against the Respondent.
Alternatively, UDRP case law offers numerous instances where a domain name registrant has been found to have a legitimate interest when the domain name consists of a combination of two widely used words. (See for example; Commercial Vehicle Group, Inc. v. Worldwide Media, Inc., NAF Claim Number: FA1309001518310 (“Considering that <roadwatch .com> consists of two common words, the Panel believes that Complainant cannot have an exclusive monopoly regarding those words”); see also Andtech Corporation v. Portmedia Domains / Portmedia Holdings Ltd., NAF Claim Number: FA1310001523495 (respondent has rights and legitimate interest in <andtech .com>, composed of two common words).
Which Golf Club Did the Respondent Target?
WG Acquisition Limited v. Zsolt Bikadi, WIPO Case No. D2024-4073
<wentworthhillsgolf .com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant is the investment and intellectual property holding company for Wentworth Club, a privately owned golf club and health resort in Virginia Water, Surrey, England, founded in 1922. The Complainant’s Club has hosted many famous golfing events since its founding, e.g. the inaugural Ryder Cup. The club’s primary website is operated from the domain name <wentworthclub .com>. The Complainant owns trademark registrations for its WENTWORTH mark in numerous jurisdictions, including the European Union Trademark, having a registration date of September 15, 2006. The disputed Domain Name was registered on July 2, 2024, and currently does not resolve to an active website.
The Complainant alleges that the disputed Domain Name was registered and has been used in bad faith to take advantage of confusion with the Complainant’s well-known WENTWORTH trademark. In an informal response, the Respondent stated: “I am a domain investor buying expired domain names for their traffic based on their website history. Hereby I confirm that registering the domain name was based on the domain name’s existing backlinks and I did not have the Complainant’s trademark in mind. Also, the domain was listed for sale for $395 (sale link shown on the domain itself) with a floor price of $100 but I was never contacted by the Complainant.”
Held: The panel finds that it is more likely than not, on the balance of probabilities, that the disputed Domain Name was not registered with the Complainant in mind. The Panel has independently established that the Respondent has a history of registering domain names that have been allowed to lapse by trademark owners. In this case, it is likely that the third-party golf club allowed the disputed Domain Name to lapse and that the Respondent registered it without knowing of its similarities with the Complainant’s trademark.
The composition of the disputed Domain Name is more consistent with a targeting, if any, of the third-party golf club rather than the Complainant, incorporating as it does “wentworthhills”. Internet searches for that term, as well as for the entire second level portion of the disputed Domain Name, return results overwhelmingly relating to the third-party golf club, and none relating to the Complainant. The analysis of the third element under the Policy typically requires that bad faith be directed at the Complainant (and not some third party).
The Complainant has not produced any evidence showing that it is associated with the term “Hills” in the form of “Wentworth Hills”, nor any hill/s for that matter, thus if the intention was to target the Complainant, the addition of “hills” seems somewhat incongruous. Finally, the Respondent’s response, although informal and not accompanied by the certification required by the Rules, does align with the facts set out above, in particular the Respondent’s history of having registered expired domain names.
Complaint Denied
Complainant’s Counsel: Murgitroyd & Company, United Kingdom
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
As the Panel observed, the composition of the disputed domain name is more consistent with a targeting, if any, of the third-party golf club rather than the Complainant, incorporating as it does “wentworthhills”. Moreover, as the Panel pointed out, “the Complainant has not produced any evidence showing that it is associated with the term “Hills” in the form of “Wentworth Hills”, nor any hill/s for that matter, thus if the intention was to target the Complainant, the addition of “hills” seems somewhat incongruous”.
A good point, indeed. The UDRP is not intended to be a general court to determine all matter of disputes involving domain names, let alone determine which party “deserves” a domain name more. Rather, the UDRP’s jurisdiction is limited to cases where a particular Complainant is targeted, as the Panel noted; “the Policy typically requires that bad faith be directed at the Complainant (and not some third party)”, referencing 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.”).
As noted in UDRP Perspectives at 3.3, 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 a 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 a specific Complainant or its trade mark, or at least had a specific Complainant in mind, when it registered the disputed Domain Name. In this case, arguably the Respondent targeted a different Complainant, and it is that Complainant that may have a bona fide Complaint under the UDRP. Under the circumstances, the Panel did the right thing by dismissing the Complaint because it is not for the Panel to award a Domain Name to a covetous Complaint that another party may be entitled to, nor is it the Panel’s job to determine who is more deserving of a Domain Name absent satisfying the specific requirements of the UDRP.
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.