The Case of Ekart.com and UDRP Disputes by Indian Companies – Ankur Raheja
Is Reliance Industries the owner of the domain name Reliance.com?
The answer is simply “No” and there are additional examples.
Domain names are registered on a first-come, first-served basis. In domain dispute proceedings, the panel must determine whether the term is a unique, coined phrase associated exclusively with the complainant or if it is a name that could be chosen independently, without knowledge of or reference to the trademark holder. This is well established under UDRP, also evidenced by the UDRP decision pronounced recently in <zoracompanies .com>: (see here). Nevertheless, Indian companies continue to pursue valuable domain names through the UDRP/domain dispute process…
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My Year-End UDRP Roundup – John Berryhill
It’s hard to believe another year is winding down. I usually wait a while to post this, but it is unlikely I’ll be seeing another decision in a UDRP (or other dispute policy) defense this year. I have one ccTLD case on the burner, but the Response will not be due until mid-December, and so the decision won’t be issued until next year.
There seem to be some folks who don’t know what I do for a living. Representing parties in domain disputes is part of it. Obviously, nobody is making a living off of defending eleven cases a year. The fact of the matter is that, as the UDRP matures, the proportion of “interesting” or defensible cases has decreased dramatically. Of UDRP complaints that are denied, an increasing proportion of them are found to be abusive. I ran the numbers on those trends for a presentation at the @ICA meeting last year, and will probably update them after the numbers are in for this year.
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Join us in Vegas!
January 26-28, 2025
Resorts World
www.ICA.Vegas
We hope you will enjoy this edition of the Digest (vol. 4.51), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Panel Finds it is an Abuse of the UDRP to Assert a Trademark Infringement Claim (healthyhomeexperts .net)
‣ Shorter Domain Name Acquired Due to its Attractiveness, Not to Infringe on the Trademark (thy .co)
‣ Complainant’s Rights in Unregistered Trademark Affirmed (c2play .com)
‣ Telstra Test Requires More Than Just a Trademark and Passive Holding (rentalend .com)
‣ Not a General Domain Name Court (humboldtseeds .net)
Panel Finds it is an Abuse of the UDRP to Assert a Trademark Infringement Claim
My Healthy Home, LLC v. Joshua Harper / Home Health Experts, NAF Claim Number: FA2411002124448
<healthyhomeexperts .net>
Panelist: Ms. Nathalie Dreyfus
Brief Facts: The Complainant company owns the United States trademark HEALTHY HOME EXPERT since its registration on May 1, 2012, and includes services such as “foundation repair” and “waterproofing”. The disputed Domain Name was registered on October 25th, 2022 by the Indiana-based company Home Health Experts. The Complainant alleges that the Respondent registered the Domain Name ten years after the Complainant began using its trademark. It is very unlikely that he was unaware of the existence of the Complainant’s identical domain name in <healthyhomeexpert .com>. The Complainant further alleges that the abovementioned trademark includes services that are similar to the defendant’s websites’ advertised services, which demonstrated the Respondent’s use of the trademark in bad faith.
The Respondent contends that the Complainant fails to prove the risk of confusion between the disputed Domain Name and the Complainant’s trademark, as the services offered by the registrant’s business are unrelated to those offered by the Complainant and there is no overlap or direct competition between the two parties’ activities. The Respondent further contends that the evidence provided by the Complainant consists of vague screenshots highlighting generic terms like “healthy” and “home,” lacking any substantive proof of infringement. Finally, this Complaint is an attempt to improperly expand rights over the generic phrase “healthy home,” which is not exclusively protected by the Complainant’s trademark registration. According to the Respondent, his rights should be upheld, and the Complainant penalized for Reverse Domain-Name Hijacking.
Held: Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed Domain Name. The Panel finds there is clear evidence that all of those circumstances apply in this case. The Respondent Healthy Home Experts LLC, is an Indiana-based company, which provides construction and home improvement services, such as crawl space waterproofing and structural repairs, with branding prominently displayed on trucks, equipment, and team uniforms.
Therefore, the Panel believes that before any notice, the Respondent used the disputed Domain Name in connection with a bona fide offering of goods or services. The Domain Name is active and used to that end. The Healthy Home Foundation Repair’s website has 98 reviews on Google, with a 5-star rating out of 5, which demonstrates consumer recognition and satisfaction. Therefore, the Respondent has been commonly known by the disputed Domain Name. Furthermore, the website’s logo and the general appearance of the website significantly differ from the Complainant’s website or logo.
The Panel, therefore, finds that the Respondent did register and use the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Additionally, the Complainant has failed to prove the lack of legitimate interest in the disputed Domain Name, as he only affirms, “Registrant has no legitimate right to do so and must have known as such in choosing the domain name”. Thus, the Panel finds that the Complainant has not established the second element of the Policy.
RDNH: The landmark case, Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 underscores the need for both bad faith and harassment to establish RDNH. According to the decision, “to establish reverse domain name hijacking, the Respondent must show that Complainant was aware of the Respondent’s rights or legitimate interests in the domain name and that the Complainant engaged in harassment or similar behavior despite this knowledge.” Additionally, a recurring theme in prior panel decisions is the emphasis on the Complainant’s awareness—or lack thereof—of their ability to satisfy the burden of proof under paragraph 4 of the Policy. For example, see <carsales .com .au> Limited v. Alton L. Flanders, WIPO Case No. D2004-0047.
That said, it is critical to distinguish between a Complainant’s inability to substantiate their case and the demonstration of bad faith, which is the crux of paragraph 15(e). A weak case submitted in good faith does not constitute RDNH. However, when bad faith is evident, and the Complainant intends to deprive a domain name holder of their registered domain unjustly, this falls within the scope of paragraph 1 of the Policy. In the present case, the Complaint appears to have been filed with the intent of depriving the Respondent of their legitimate domain name. The Panel notes that the Complainant failed to present any valid arguments or evidence to support their claim. Based on the criteria in the <carsales .com .au> Limited case, the Complainant should have been aware at the time of filing that they could not meet the Policy’s essential requirements.
Additionally, the Panel would like to remind that the UDRP procedure is not intended to address complex trademark infringement cases but only to focus on the UDRP Policy: identity or similarity of the domain name, lack of legitimate rights, and bad faith in registration and use. The present procedure is specifically designed to address cases of cybersquatting, and not to resolve more complex disputes for which national courts would have jurisdiction.
Complaint Denied (RDNH)
Complainant’s Counsel: Michael J Feigin of Feigin and Fridman, New Jersey, USA
Respondent’s Counsel: John Walsh, Esq. of Drewry Simmons Vornhehm, LLP, Indiana, USA
Shorter Domain Name Acquired Due to its Attractiveness, Not to Infringe on the Trademark
Türk Hava Yolları Anonim Ortaklığı v. Domain Admin, FindYourDomain .com, WIPO Case No. DCO2024-0068
<thy .co>
Panelist: Mr. Assen Alexiev (Presiding), Mr. Uğur G. Yalçiner and Mr. David E. Sorkin
Brief Facts: The Complainant is the national airline of Türkiye (“Turkish Airlines”), operating since 1933. The Complainant is the owner of the international trademark THY, registered on April 3, 2006, in multiple jurisdictions, including the United States, where the Respondent is located. The Complainant also holds trademark registrations for “Türk Hava Yolları” and “Turkish Airlines” in Türkiye since 1996. The Complainant is the owner of the domain names <turkishairlines .com> and <thy .com>. The Respondent’s business involves the registration and resale of domain names. The disputed Domain Name was registered on July 21, 2010, and it resolves to a parking webpage containing links to various unrelated topics. At the time of filing the Complaint, the disputed Domain Name was offered for sale for a price of US $34,999.
The Complainant alleges that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent has deliberately chosen it to exploit the Complainant’s THY trademark and has offered it for sale. The Respondent contends that the Complainant is mostly known internationally as “Turkish Airlines”, and its domain name is <turkishairlines .com>, while the THY trademark is not the Complainant’s primary trademark. The Respondent further contends that the disputed Domain Name carries an inherent value due to its broad applicability across industries and uses and has potential for high user traffic because it is a memorable and valuable short dictionary word that is also generic as a place name, person name and acronym.
Held: There is no support for the Complainant’s assertion that it was the notoriety of the Complainant’s THY mark that motivated the Respondent to register the disputed Domain Name. The Complainant has not provided any evidence of the degree of fame of its THY trademark when the disputed Domain Name was registered in 2010 worldwide and in the United States, and it appears that the Complainant operates primarily under its Turkish Airlines name and trademark while the THY trademark is only a secondary trademark. In light of the foregoing, there is no basis for concluding that the Respondent targeted the THY trademark at the time the disputed Domain Name was registered.
As pointed out by the Respondent, the second level of the disputed Domain Name consists of only three letters and has a dictionary meaning (albeit an archaic one). Although it has not been used in connection with that dictionary meaning, there is also no evidence that the Complainant has been targeted. Therefore, it appears plausible that the Respondent acquired the disputed Domain Name and set its offering price not to target the Complainant but based on the attractiveness of the disputed Domain Name as a short dictionary word. On this basis, the Panel concludes that the Complainant has not established that the disputed Domain Name was registered in bad faith.
RDNH: The Panel considers that there is no support in the circumstances of this case for a finding of RDNH. The Complainant’s THY trademark was registered 14 years before the registration of the disputed Domain Name, including in the United States, where the Respondent is located, and the disputed Domain Name is offered for a five-digit price. The Complainant also seems to be the most prominent user of the brand THY, even if the Respondent is correct that other entities also use this term as a brand – and it is not clear why those third-party rights would vest the Respondent with a right or legitimate interest in the disputed Domain Name, so it cannot be concluded that the Complainant must have known that its Complaint cannot succeed.
Complaint Denied
Complainant’s Counsel: Turkticaret .net Yazilim Hizmetleri Sanayi ve Ticaret Anonim Sirketi, Türkiye
Respondent’s Counsel: Law Offices of Grant G. Carpenter, United States
Complainant’s Rights in Unregistered Trademark Affirmed
C2Play v. Adres Marka, CAC Case No. CAC-UDRP-106956
<c2play .com>
Panelist: Ms. Hana Císlerová
Brief Facts: The Complainant operates “c2Play,” a popular platform offering game servers for the video game Counter-Strike. Over the years, the platform has seen millions of players and active participation, including extensive use on platforms like YouTube. The Complainant claims unregistered rights in “c2Play” or “c2play”, which he has been using for the designation of the video game “Counter-Strike: Source” since December 2010. Apart from the unregistered right claimed over the denomination “c2Play”, the Complainant holds the following domain names: <c2play .de>, <c2play .org> and <c2play .net>. The Respondent operates a domain trading company established for buying and selling domain names. The Respondent purchased the domain <C2Play .com> in 2017 and contends that the domain name is generic and not associated exclusively with the Complainant’s business. The Respondent cites several other domains with similar naming conventions, such as <O2Play .com> and <Songs2Play .com>, which have been registered and sold by various domain investors. In 2024, the Respondent offered the domain for US $3,500, but the Complainant’s US $1,000 offer was refused.
The Complainant alleges that the Domain Name has been parked or listed for sale for nearly a decade without any meaningful or active use, which in view of the Complainant, suggests the Respondent had no intention to use the domain in good faith. Additionally, the Respondent’s communication with the Complainant, which was presumably done under a false identity, further highlights this lack of transparency and legitimate intention. Moreover, in October 2024, the domain name was listed for sale at a high price, further suggesting that the Respondent was attempting to profit from the domain without legitimate interest or use. The Respondent contends that the disputed Domain Name was purchased in good faith as part of their long-standing business in buying and selling domains, which they argue is a common and legitimate practice. Furthermore, the Respondent claims that the Complainant contacted them multiple times between 2017 and 2024 to purchase the disputed Domain Name. Still, the Respondent refused to sell at the price the Complainant offered, which it sees as a standard negotiation process.
Held: The Respondent’s actions, including the acquisition and use of the disputed Domain Name for the purpose of parking it and offering it for sale, do not demonstrate any legitimate interest in the disputed Domain Name. In fact, the practice of registering and trading domain names without any actual use or business associated with the domain is generally considered a legitimate business under the Policy, provided it does not infringe upon the rights of trademark holders or target widely used trademarks. In this case, however, the trademark in question is widely used and clearly associated with the Complainant’s services. This fact can be quickly and easily verified through a basic online search. This widespread use and recognition could indicate that the Respondent was aware of the Complainant’s rights and reputation when acquiring the disputed Domain Name, potentially supporting a finding of bad faith under the Policy.
Specifically, the Respondent does not show to have possibly other legitimate intentions by registering the domain name <C2Play .com> other than profiting from the Complainant’s reputation associated with the name “C2Play.” Furthermore, the Respondent’s conduct of selling the disputed Domain Name for a significant price, especially given the disputed Domain Name’s lack of actual use or legitimate business purpose, also supports the conclusion that the domain was registered primarily for the purpose of resale for a profit. Further, the Respondent’s actions in contacting the Complainant under a false identity (as “Michael Hoffmann”) in an apparent attempt to exert pressure on the Complainant, coupled with the failure to provide accurate and requested contact information, constitutes additional evidence of bad faith under the Policy. Notably, although the Respondent disputed the Complainant’s allegations, in view of the Panel, they did not provide sufficient evidence to rebut this conclusion.
Transfer
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Telstra Test Requires More Than Just a Trademark and Passive Holding
Talend S.A.S. v. Attila Balint Nagy, WIPO Case No. D2024-4696
<rentalend .com>
Panelist: Mr. John Swinson
Brief Facts: The Complainant is a software company that specialises in business intelligence and data visualization. The Complainant has over 7,250 customers worldwide. The Complainant owns a portfolio of trademark registrations for TALEND, including the EU Trademark, registered on September 25, 2015. The disputed Domain Name was registered on October 3, 2024, by a Hungarian resident and resolves to a website titled “Rentaland”, which states, “Hello world! Welcome to WordPress…”. The Complainant alleges that the only difference between the disputed Domain Name and the Complainant’s trademark is the addition of the prefix “ren” at the beginning of the Complainant’s mark TALEND. This minimal modification does not alter the visual, phonetic, or conceptual similarities between the disputed Domain Name and the Complainant’s established trademark, creating a strong likelihood of confusion among consumers.
The Complainant further alleges that the Respondent’s use of the disputed Domain Name constitutes passive holding. By conducting a simple online search regarding the term “TALEND”, the Respondent would have inevitably learnt about the Complainant, its trademark and its business. The Respondent contends that its intention for the disputed Domain Name was for a customer-to-customer rental platform, aligning with the Respondent’s plans for business expansion beyond Hungary. The name “RentALend” accurately describes this service, while ”TALEND” is unrelated to this industry, eliminating any intent to exploit the Complainant’s trademark. The Respondent further contends that the disputed Domain Name is not passively held. It is associated with a paid WordPress hosting service and is actively used as a sandbox for developing a customer-to-customer (C2C) lending and rental platform. Such usage is legitimate and constitutes preparatory work for a planned website.
Held: The disputed Domain Name is not identical to the Complainant’s TALEND trademark. According to the Complainant, the disputed Domain Name is formatted as <RentalEnd .com>. According to the Respondent, the disputed Domain Name is <RentALend .com>. Regardless, without further evidence, it is not evident to the Panel that the Respondent, in registering a domain name comprising “rentalend”, did so because of the Complainant’s TALEND trademark. These terms give a different visual impression. The Panel considers that a prominent feature of the disputed Domain Name is “rent” or “rental”, which are terms that are not present in the Complainant’s trademark.
Further, in Telstra, the complainant’s trademark was unique and one of the most famous in Australia; the complainant provided substantial evidence of its reputation in Australia; the respondent had an Australian address and was likely aware of the complainant. The Respondent used a proxy name (Nuclear Marshmallows) to conceal his or her identity. In the present case, the Complainant has not presented evidence to satisfy the test set out in Telstra. Unlike Telstra, the Panel here believes that there are uses of the disputed Domain Name that would be in good faith, e.g., as has been advanced by the Respondent, see WIPO Overview 3.0, section 3.3.
Finally, the Respondent provided evidence that he established a WordPress sandbox website for such development before notice of the present dispute and of other domain names that the Respondent plans to use, which do not include TALEND or similar. The Respondent has owned the disputed Domain Name for a short period, and it is believable that the Respondent has not yet developed or launched a commercial website in this period. Accordingly, the Panel does not consider that there is sufficient evidence to conclude that the Respondent has used the disputed Domain Name in bad faith to take advantage of the Complainant’s TALEND mark.
Complaint Denied
Complainant’s Counsel: Abion AB, Sweden
Respondent’s Counsel: Self-represented
Not a General Domain Name Court
Humboldt Seed Company LLC v. Pot Sistemak S.L., WIPO Case No. D2024-4349
<humboldtseeds .net>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a licensed cannabis seed provider founded in 2001 by Nathaniel Pennington and another individual in Humboldt County, California, United States. The Complainant obtained certain United States trademark registrations in 2019 (namely, HUMBOLDT SEED COMPANY and HUMBOLDT SEED COMPANY EST. 2001) but assigned them in 2022 to a corporation named HSC International, of which Ms. Pennington is an officer. The Complainant is the current holder of trademark registrations in other jurisdictions, including the EU trademark HUMBOLDT SEED COMPANY EST. 2001, registered on October 24, 2019. Ms. Pennington also registered the domain name <humboldtseedcompany .com> on October 14, 2010, which the Complainant has since used in connection with a website to commercialize its cannabis seeds. The Respondent was established in 2001 in Spain for the purpose of selling seeds, fertilizers, flowers, plants and chemical products and articles related to gardening and floristry. The Respondent has obtained multiple trademark registrations, including the EU trademark registration for a figurative HUMBOLDT SEED ORGANIZATION, (registered on February 19, 2014; expired on September 27, 2023).
The disputed domain name was created on August 7, 2012, and resolves to a website displaying the figurative HUMBOLDT SEED ORGANIZATION mark with the title “Welcome to the Humboldt Seed Organization.” The Respondent also uses the domain name <dinafem .org> in connection with a website for Dinafem Seeds, which offers seeds for sale. The Complainant alleges that the Respondent’s products are mostly known in the market as DINAFEM or DINAMED, and its trademarks are not related to the Complainant’s trademarks. The disputed domain name may mislead consumers or Internet users into thinking that the Complainant operates its associated website. The Respondent contends that Humboldt County is known in the cannabis sector, in which both Parties are engaged, as a region where high-quality cannabis plants are grown and produced. The Respondent has rights and legitimate interests in respect of the disputed domain name. In 2013, the Respondent reached private agreements with a United States national to establish its seed bank different from its existing seed banks, using seeds and plants from Humboldt County, California.
Held: The disputed domain name was acquired by the Respondent in 2013, years before the Complainant obtained its trademark registrations. The Panel recalls that where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent, see WIPO Overview 3.0, section 3.8.1. It is clear that the disputed domain name and associated website are parts of a broader, more complex trademark dispute between the Parties. The Complainant alleges that the Respondent impersonated the Complainant on its website. At the same time, the Respondent, for its part, refers to itself as “the real Humboldt Seed Organization”, implying that another entity (such as the Complainant) may be confused with itself.
The Panel recalls that it is not a general domain name court, and that the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy establishes a streamlined, inexpensive administrative dispute resolution procedure intended only for the relatively narrow class of cases of “abusive cybersquatting”. The UDRP is not an appropriate procedure to adjudicate a complex dispute such as this one, where the Panel does not have the benefit of witness testimony, disclosure of documents, or the other appropriate instruments that are typically available to assist a court in resolving parties’ disputes.
RDNH: The Panel has decided to deny the Complaint on broad grounds but that does not imply that it was brought in bad faith. In the Panel’s view, the fact that the Complaint was filed after the expiry of the Respondent’s trademark registration is not a sign of bad faith. The Respondent does not allege that the court procedure prevented it from renewing its figurative HUMBOLDT SEED ORGANIZATION trademark registration. The Respondent also alleges that the Complainant did not act in good faith when it submitted a recent screenshot showing that its access to the Respondent’s website was blocked. However, the Complainant did submit an archived screenshot of the website as well, and there is no reason to believe that it configured its Internet browser to mislead the Panel. Accordingly, the Panel does not find that the Complaint was brought in bad faith.
Complaint Denied
Complainant’s Counsel: Sugrañes, S.L.P., Spain
Respondent’s Counsel: Asegi Sunion, Spain
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.