Two-Letter Domain Names, the Big Game, and the UDRP, by John Berryhill
As a greater Philadelphia area practitioner, it is worth mentioning that the US held its football championship yesterday (real football, not soccer or that weird thing they do in Australia).
The cost of television advertising during this game averages something like US $8 million for a 30-second spot.
One advertiser chose to use their time to put this domain name in unmistakably large type on the screen.
The domain name is several times larger than their registered trademark or list of custom fit weatherproofing products also shown on the screen.
This company has been around for a while, but it seems they only recently purchased the domain name sometime in 2024. Continue reading here…
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We hope you will enjoy this edition of the Digest (vol. 5.6) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ A Tale of Two Enrons (enronenergy .com *with commentary)
‣ Registrar-Provided Parking Page Was Temporary (franco-suisse .com *with commentary)
‣ Defaulting Respondent Failed to Overcome Complainant’s Allegations (serveng .com *with commentary)
‣ Panel: Complaint Extraordinarily Incomplete and Likely to Mislead (canngo .express)
‣ Panel: Domain Name Consists of Commonly Used Medical Terms (omnidoc .com)
A Tale of Two Enrons
Enron Corporation v. Emir Nabavi, NAF Claim Number: FA2501002134263
<enronenergy .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant states that it is a company dedicated to solving the global energy crisis with innovation, adaptability, and a commitment to a brighter future. The ENRON mark is currently used by the Complainant for a variety of goods and services, including energy industry-related clothing items and has an online presence at <enron .com>. The Complainant asserts rights in the mark ENRON through its registration in the United States on June 1, 2021, application date May 13, 2020. The disputed Domain Name was registered on April 14, 2021, and is passively held. The Complainant alleges that the Respondent is not using the disputed Domain Name for a bona fide offering of goods or services or a legitimate noncommercial fair use. The Complainant further alleges that the Respondent has registered and is using the disputed Domain Name in bad faith. The disputed Domain Name is not being used. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant does not allege – much less present evidence to show – that its trademark is well known. A Panel may conduct limited factual research regarding disputed Domain Names. From an Internet search, the Panel found a Wikipedia article, according to which on December 2, 2024, the Enron website relaunched as satire, with Connor Gaydos as CEO, cofounder of Birds Aren’t Real. The website <enron .com> does indeed show Connor Gaydos as CEO. The Complainant did not provide the above information, nor did it explain why its satirical use of the name of the former Enron company would be well known, in particular to a registrant in Turkey. The Panel finds that the Complainant has failed to satisfy its burden of proving that its mark (as opposed to the name of the former Enron company) is well known.
As noted above, a key element required to establish bad faith registration and use for an unused website is that the mark be well known, see Coachella Music Festival, LLC v. Patrick Shanahan, FA 1889813 (Forum May 7, 2020) (“Bad faith can be found when a disputed Domain Name that infringes on a famous mark and is then left inactive under Policy ¶ 4(a)(iii).”); see also Bridgewater Associates, LP v. hamza hamed, FA 1894223 (Forum June 9, 2020) (“The fame of Complainant’s mark and the lack of evidence of legitimate use and bona fide offering of goods and services by the Respondent are the factors that, inter alia, support finding of passive holding as constituting bad faith registration and use.”). Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use cannot be inferred from the failure actively to use the disputed Domain Name. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Complaint Denied
Complainant’s Counsel: Susan Meyer of Gordon Rees Scully Mansukhani LLP, California, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: What in the world? As the Panel noted, this is not the Enron that we have all heard of and which went bankrupt in 2001 following an accounting and securities scandal, but rather a different Enron that apparently began as a satire website which the Panel notes “posits that birds are actually drones operated by the United States government to spy on American citizens”. The Complainant does indeed have a trademark for E ENRON, a design mark registered in 2021, but remarkably only for “Shirts and short-sleeved shirts; Polo shirts; T-shirts; Tee shirts”, not energy etc. like the previous corporation.
Very strange indeed. Some light is shed on this from the Wikipedia entry referenced by the Panelist: “On December 2, 2024, the Enron website relaunched as satire, with Connor Gaydos, the cofounder of Birds Aren’t Real, as CEO”, which refers to this article from December 2, 2024:
Anyhow, the Panel was clearly not persuaded by the Complainant’s arguments, and to its credit held to the well-established Telstra test which requires, inter alia, that in the case of non-use of a disputed Domain Name, that the Complainant’s mark be well known and that there be no plausible explanation for the Domain Name registration by the Respondent. Here, ENRON is, or shall we say, “was”, well known, but it is an entirely different ENRON from the Complainant. As the Panel noted, the Complainant “failed to satisfy its burden of proving that its mark (as opposed to the name of the former Enron company) is well known”, and the Complaint was properly dismissed. Well done.
Now, let’s contrast this decision with the one in a related case, but decided by a different Panelist: Enron Corporation v. PERSIAN SAZEH PERSIAN SAZEH / PERSIAN SAZEH
Claim Number: FA2501002134264 (Forum, February 5, 2025). The Panel (Dawn Osborne) transferred the disputed Domain Name, <enronpower .com> and found inter alia:
“Passive holding of a domain name containing a prior mark with a reputation is commonly held to be bad faith. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The Respondent has not responded to the Complaint and the Panel is entitled to make adverse inferences if a Respondent does not reply to a Complaint where there seems to be no explanation for the registration of the Domain Name other than it is taking advantage of a prior registered trade mark and is being passively held.”
Telstra requires a mark to have a “strong reputation”, not just to have “a reputation”. This is crucial, because it relates to one of the other requirements under Telstra, namely that in combination with; a) no evidence of any actual or good faith use of the Domain Name; b) concealment of the Respondent’s identity; and c) false contact information, 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 (see UDRP Perspectives at 3.7 for more background on Passive Holding).
As noted in UDRP Perspectives, Telstra would generally apply only where the disputed domain name corresponds to a particularly distinctive and famous mark. Where a domain name is unused, it may be considered to be “passively held”, but that alone does not amount to bad faith use absent meeting the narrow requirements of the Telstra test.
In this second case, did the Complainant’s trademark enjoy a “strong reputation”? According to the decision, the Panel found “some notoriety for purchasing the ENRON trade mark and using it for clothing”:
The Complainant is the owner of the mark ENRON (device mark) registered in the USA since 2021 for clothing. It is not connected with the ENRON energy company that no longer exists, but the Complainant has gained some notoriety for purchasing the ENRON trade mark and using it for clothing.
Based upon the limited factual information contained in the decision, we cannot determine the breadth and depth of the evidence provided as to the Complainant’s “notoriety” for having “purchased the ENRON trademark” and no details about this purchase are included in the decision.
As noted in the previous ENRONPOWER .COM decision discussed above, there was a trademark assignment apparent from the USPTO database. That assignment however, was not from the original and notorious ENRON company, but rather from “The College Company LLC”, which could have no apparent relationship with the original Enron company, since the trademark was only applied for in 2020 – i.e. long after the original Enron collapsed. Accordingly, the purchase – if any – was not from the well-known and defunct Enron, but from some other company, perhaps and even likely associated with the Complainant.
In any event, even assuming that there was in fact a “purchase” as stated in the decision, that does not generally make a mark well-known, per se, as the reputation must be associated with the goods or services sold under the mark. Here, the goods are shirts, and the decision does not reference any reputation in ENRON-branded shirts. Apparently, the Complainant attempted to, and indeed apparently succeeded in, conflating the reputation of the defunct ENRON, with its own. This resulted in the transfer of a Domain Name that was likely registered to target the original and defunct Enron company, rather than this particular company.
Nevertheless, it is conceivable that the Respondent was indeed targeting the present and little-known Complainant. But it is possible that in the second case, like the first case, the Complainant “failed to satisfy its burden of proving that its mark (as opposed to the name of the former Enron company) is well known”. What has gone on here apparently, is that the Complainant engaged in some very strange repurposing of a well-known mark by an unrelated party and managed to get its hands on a Domain Name that it may not have been the target of.
Registrar-Provided Parking Page Was Temporary
PROMOGIM GROUPE v. mehmet sahin, WIPO Case No. D2024-5149
<franco-suisse .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant claims it was founded over 50 years ago and is involved in the property development and construction sector. The Complainant is the owner of an International trademark for the word mark FRANCO SUISSE 2 LACS, registered on October 3, 2022, containing the disclaimer of the mark as a whole. The aforesaid mark is itself based upon a French Trademark, registered on April 21, 2022. The Complainant notes that it owns multiple domain names containing the words “franco” and “suisse”, both hyphenated and non-hyphenated. The earliest of these appears to be <francosuisse .fr>, registered on May 5, 2005. The disputed Domain Name was registered on November 13, 2024, and is offered for sale for EUR 2,856.97. Previously, it resolved to a website displaying pay-per-click (“PPC”) advertising with links such as “Real Estate Investment”, “Affordable Home Warranty”, and “What is Ai Agents”.
The Turkish Respondent has been involved in four previous cases under the Policy, all of them within about the last two years, in respect of each of which a finding of registration and use in bad faith was made. The Complainant alleges that the page offering the disputed Domain Name for sale is not evidence of a bona fide offering of goods or services, and it appears that the Respondent intends to take advantage of the use of the disputed Domain Name, which has a confusing resemblance to the Complainant’s trademarks. In an informal Response, the Respondent states that the disputed Domain Name is “generic” and it has a right to sell it. For example, the Respondent says that Google Translate in several languages renders the disputed Domain Name as meaning “Swiss Franc”, the currency (CHF) in Switzerland.
Held: The Panel noted that “Franco-Suisse” translates to “Franco-Swiss” in English, suggesting the term might be French. Recognizing “Suisse” means Switzerland, the Panel considered it akin to the English “Franco-Swiss.” The fact that the disputed Domain Name is a dictionary term or phrase does not, however, establish on its own that the Respondent had no intention to target the Complainant’s mark. That said, the Panel has no information on the present record that might suggest that any knowledge and awareness of the Complainant’s mark would necessarily have reached the Respondent in Türkiye. The Respondent has recently been found to have targeted the trademarks of third parties in no less than four recent cases under the Policy, but the Panel is not inclined to condemn the Respondent’s registration and use of the disputed Domain Name in the present case on that basis alone, particularly as the reputation of the Complainant’s marks appears to be limited to its line of business.
The following points may also be of some significance as matters in the Respondent’s favor. The Panel notes the presence of the hyphen in the disputed Domain Name and not in the Complainant’s trademark, particularly given the fact that the dictionary usage of the term “Franco-Suisse” seems to be most commonly, albeit not exclusively, used with the hyphen. Further, the Complainant’s word mark includes the element “2 LACS” that is not present in the disputed Domain Name and it cannot be overlooked that those of the Complainant’s trademarks that are closest to the disputed Domain Name are figurative, meaning that the protectable element is the mark as expressed with the graphical element rather than the words on their own. This does not suggest that the Complainant’s mark is likely to be strongly indicated by the phrase “Franco-Suisse” on its own or that the mark is distinctive in the absence of its graphical element.
Finally, the parking page displayed PPC links on December 2, 2024, that is, a matter of days after the registration date of the disputed Domain Name. By the following day, the screenshot shows that the PPC use had ceased and that the present use whereby the disputed Domain Name was offered for sale had begun. Importantly, this new use was not a response to the Complainant’s cease and desist letter of December 3, 2024, because the URL referenced in that letter, and the mention of the offer for sale of the disputed Domain Name, show that the present use had already commenced before the letter was sent. In these circumstances, the Panel is inclined to view the PPC use as merely temporary stemming from a Registrar-provided parking page that was displayed immediately after the disputed Domain Name was registered and before the Respondent could attend to it.
Complaint Denied
Complainant’s Counsel: Coblence Avocats, France
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Could it really be that a Panel is required to delve into such factual detail in order to properly discern whether the Complainant was entitled to the relief that it claimed? Yes. Here, the Panel carefully examined the facts, chronology, dictionary meanings, the PPC page, and the lack of evidence of reputation provided by the Complainant and determined that the Complainant was not entitled to transfer. Most UDRP cases will not involve such a detailed examination as they will be simple, clear-cut cases of cybersquatting. But in this particular case, a careful examination was necessary and the Panel duly undertook it to its credit.
Notably, the Panel appropriately discounted two of the Complainant’s primary allegations. The Panel noted that the PPC page appeared to have been erected by the registrar immediately following registration and was only available temporarily until the Respondent began offering the Domain Name for sale. This is a salient and particularly important distinction because PPC pages are only potentially reflective of a Respondent’s bad faith if they reveal an intention of the Respondent. Where as here, a PPC page is erected automatically by the registrar upon registration, it displays no intention of the Respondent whatsoever, and the allegation can appropriately be dismissed.
I particularly appreciated the Panel’s distinction between the Complainant’s trademark and the Domain Name. As the Panel noted, the absence of the term, “2 LACS” in the Domain Name cannot be overlooked when attempting to determine whether the Complainant was targeted, and neither can the inclusion of a hyphen. Such bits of evidence are important and were appropriately used to determine that absence of evidence of targeting of the Complainant.
Lastly, I also appreciated how the Panel did not put much weight on the fact the Respondent had previously been found to have engaged in bad faith on four separate occasions. Such evidence can be highly relevant, but a previous record alone cannot overcome the facts of the present case, as the Panel so found.
Defaulting Respondent Failed to Overcome Complainant’s Allegations
Serveng Civilsan S/A. Empresas Associadas de Engenharia v. RSQ Designs, WIPO Case No. D2024-5091
<serveng .com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant, founded in 1958, operates under its SERVENG CIVILSAN and SERVENG marks in the construction sector, building ports, airports, subways, railways, stadiums, hydroelectric plants, industrial assemblies, and renewable energy projects in Brazil. The Complainant owns the domain name <serveng .com .br>, which it uses for its primary website and which it registered in 1999. The Complainant’s marks are the subject of various trademark registrations in Brazil, including Trademark registration for SERVENG CIVILSAN, having a registration date of August 10, 1976; and Trademark registration for SERVENG, having a registration date of December 28, 2010. The disputed Domain Name was registered on February 13, 2003, and currently resolves to a website featuring pay-per-click (“PPC”) advertising for various services, including advertisements in Portuguese and for services offered in Brazil. The Complainant alleges that the disputed Domain Name was registered and has been used in bad faith in order to profit from confusion with the Complainant’s well-known SERVENG mark. The Respondent did not file a Response.
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. Although the Complainant’s SERVENG simpliciter mark was registered after registration of the disputed Domain Name, the Panel accepts that the Complainant had developed a reputation and unregistered rights in that mark by the time the disputed Domain Name was registered. Some of the PPC advertisements on the disputed Domain Name’s website target the Complainant’s jurisdiction of Brazil, where the Complainant is well known, suggesting an intention on the Respondent’s part to capitalise on the Complainant’s reputation. Use of a domain name to host PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation of the complainant’s mark, as in this case.
For the following reasons, the Panel finds that it is more likely than not that the Respondent registered and has used the disputed Domain Name to take advantage of confusion with the Complainant’s mark for the Respondent’s commercial gain, falling squarely within paragraph 4(b)(iv) of the Policy. Although the Complainant appears to be best known in Brazil, the Panel conducted limited Internet searches in Canada for the Complainant’s SERVENG mark. These searches returned results relating to the Complainant, showing knowledge of the Complainant within the Respondent’s jurisdiction. Some of the PPC advertisements featured on the disputed Domain Name’s website are in Portuguese and are for services offered in the Complainant’s country of Brazil, where the Complainant’s mark is undoubtedly well known, and which could very likely lead to confusion. This points to the Respondent targeting the Complainant.
Although the advertisements may be served programmatically by a third party, the Respondent cannot disclaim responsibility for them. The term “serveng” has no obvious generic or descriptive meaning that the Respondent could have been seeking to adopt in good faith. There do appear to be a limited number of other organizations that use the term; however, the Complainant seems to be the most well-known, which, combined with the fact that the PPC advertisements used at the disputed Domain Name’s website are, in part, targeted towards the Complainant’s jurisdiction where it is well known, suggests targeting of the Complainant. The Panel draws an adverse inference from the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for. WIPO Overview 3.0, section 4.3. The Panel finds that the Complainant has established the third element of the Policy.
Transfer
Complainant’s Counsel: Pinheiro, Nunes, Arnaud E Scatamburlo, Brazil.
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: When looking at a case, the first and fundamental question, is ‘why did the Respondent register the Domain Name?’. As the Panel noted, “servang” does not have any obvious generic or descriptive meaning that the Respondent could have been seeking to adopt in good faith. Given that, there are three remaining possibilities for the Respondent’s registration of the Domain Name; 1) Coincidence; 2) Targeting another company; and 3) Targeting the Complainant. Coincidence, or put another way, being attracted to a particular term for no reason related to the Complainant, is a perfectly valid and plausible explanation. But it is a plausible explanation that must generally be made out by a Respondent by coming forward and making the case. Yes, the overall onus is on the Complainant to make out its case and a Complaint will fail unless the Complainant meets its burden, but in the face of a word with no discernable meaning, a Panelist can reasonably infer that had the Respondent a plausible good faith explanation for its registration, it would have come forth with one, or risk a Panel finding that there was no such plausible explanation.
I wouldn’t quite put it as ‘drawing a negative inference’ from the absence of a Response, per se, because a Respondent has no obligation to make any Response, and a Complaint must stand on its own regardless of whether a Response is filed or not. Rather, I would say that where a Complainant has put forward a satisfactory case for bad faith, a Respondent will have to make some kind of argument in order to overcome that satisfactory case, failing which the satisfactory case will of course, prevail. In this case, that is the approach which the Panel effectively took, to its credit, despite the reference to ‘adverse inference’.
Panel: Complaint Extraordinarily Incomplete and Likely to Mislead
Dr. Can Ansay v. Jeppe Eriksen (EQUIOM CAPITAL INVEST Sp.zo.o.), CAC Case No. CAC-UDRP-107033
<canngo .express>
Panelists: Mr. Assen Alexiev, Mr. Petr Hostaš and Ms. Stephanie Hartung
Brief Facts: The Complainant owns the word mark “CANNgo”, registered in Germany with the application date of April 10, 2024. The Complainant acquired this trademark by transfer from the previous owner, company Wasma Solutions GmbH, on October 23, 2024. The disputed Domain Name was registered on March 26, 2024. The Respondent claims priority rights based on its business name “Canngo” and long-standing use of the domain for its telemedical platform, which provides medical cannabis services in Germany. The Complainant alleges that “The domain name is used for a website that was created by two employees of the Complainant while working as employees of the Complainant on a similar business enterprise. The domain name is an idea from the company of the Complainant for that business”.
The Complainant further alleges that the disputed Domain Name was registered and used in bad faith, citing prior relationship, and pattern of conduct. However, the Complainant didn’t provide specific evidence or details to support these claims. The Respondent contends that the trademark was originally applied for by a third party with no discernible connection to the relevant industry and later transferred to the Complainant after a court injunction barred the Complainant from using a similar trademark. The Respondent further contends that these actions demonstrate a pattern of obstruction and unfair competition, further supported by ongoing legal disputes in German courts over the trademark and related matters.
Under its unsolicited supplemental filing, the Complainant claimed that the Respondent’s acquisition of the disputed Domain Name and subsequent operations were based on actions by former employees who had used company ideas without authorization. Further, a German court has questioned the Respondent’s claims regarding the priority of its rights over the trademark. It noted that the Respondent only acquired the disputed Domain Name in May 2024, well after the trademark’s registration in April 2024. The Complainant emphasized the need for further evidence to substantiate the Respondent’s claims, disputing the legitimacy of the Respondent’s reliance on prior use of the domain name by predecessors.
Preliminary Matter: The Complainant didn’t show the relevance of its Supplemental Filing and why he was unable to provide the information contained in this Supplemental Filing in the complaint already. The Supplemental Filing contains the reaction to the Respondent’s response with the description of the ordinary court’s proceedings and decisions; however, it is up to the Complainant in the first place to inform the Panel in the complaint, that there are such other proceedings. Neither of the arguments contained in the Supplemental Filing was unforeseeable, and neither is grounded on evidence that was not available to the Complainant when the complaint was filed. Hence, the Panel finds it unnecessary and inappropriate to take into consideration the Complainant’s Supplemental Filing.
Held: In terms of the WIPO Overview, 3.0, section 2.1, the overall burden of proof in UDRP proceedings is on the complainant. It is not sufficient to repeat the text of the second element in the complaint only and contend that the Respondent does not have any rights or legitimate interest in the disputed Domain Name. The Complainant’s statement that the idea for the disputed Domain Name and the associated website was created by its employees lacks any details about the identity of the alleged creators of the disputed Domain Name and website, their relationship with the Complainant and the Respondent, the period when the alleged facts took place, does not explain why these facts support a conclusion that the Respondent does not have rights or legitimate interests, and is not supported by any evidence. It is not the role of the Panel to present the claim on the Complainant’s behalf, to supplement the grounds of the complaint and to search for appropriate evidence.
The Complainant again repeats the text of the third element only by repeating that the disputed Domain Name has been registered and is being used in bad faith. While in the case of the second element the Policy and the jurisprudence are required to make a prima facie case only, in the case of this third element the Policy sets far higher standards when it requires the Complainant to prove the bad faith registration and use. The Complainant’s claims regarding the idea for the disputed Domain Name and the associated website are again weak and do not explain why these claims support a conclusion that the disputed Domain Name has been registered and is being used in bad faith. The Panel must, therefore, repeat that it is not its role to present the claim on the Complainant’s behalf, supplement the grounds of the complaint and search for evidence.
Additionally, it is evident, that the dispute brought before this Panel is only one part of the much larger, complex disputes between the parties (and other persons), involving trademark rights, unfair competition issues and copyrights to employees’ works. It would be inappropriate to use the Policy to attempt to carve out and resolve the relatively minor, but interconnected, domain name dispute.
RDNH: The disputed Domain Name was registered for the Respondent almost 7 months before the Complainant acquired trademark rights and the Respondent therefore could not have been aware that the Complainant has the trademark rights at the moment of the disputed Domain Name’s registration. Besides, the Complainant didn’t provide any argument supported by appropriate evidence that the Respondent has been aware of the Complainant’s rights to the unregistered trademark. The Panel, therefore, finds and declares that the Complaint was brought in bad faith, primarily because the Complainant provided an extraordinarily incomplete complaint likely to mislead the Panel, and thus constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Panel: Domain Name Consists of Commonly Used Medical Terms
OMNIDOC v. Servicios Doc Medic de Santis, Servicios Doc Medic, Sapi de CV, WIPO Case No. D2024-5130
<omnidoc .com>
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant states that it is a French corporation specializing in the field of teleconsultation and e-MDT solutions for healthcare professionals and medical organizations. The Complainant asserted that it owns numerous trademarks worldwide. The only evidence the Complainant provided with respect to any trademark registration is the Complainant’s French trademark registration for OMNIDOC, which was filed on October 25, 2019, and registered on February 14, 2020. The Complainant owns at least two domain names incorporating the OMNIDOC mark, <omnidoc .fr>, which was created on November 26, 2018, and <omnidoc .de>. The Registrar reports that the disputed Domain Name was first registered on July 10, 2002, with GoDaddy, LLC and provided an address for the Respondent in Mexico. The disputed Domain Name currently resolves to an error page but evidence shows that in 2021 and 2022, the disputed Domain Name resolved to webpages in Spanish.
The Complainant alleges that regarding the significative reputation of the Complainant in France/Latin languages speaking countries in the field of teleconsultation and e-MDT solutions for healthcare professionals and medical organizations following the Covid-19 period and its prior rights on OMNIDOC, it is highly predictable that the Respondent was perfectly aware of the Complainant’s rights while purchasing the litigious domain <omnidoc .com> and then starting its activities to parasite the Complainant’s success and investments. The Complainant further alleges that it has not licensed its mark to the Respondent, that the Respondent is not using the disputed Domain Name in connection with a bodafide offering of goods or services, and that the Respondent is not commonly known by the disputed Domain Name. The Respondent did not file a Response.
Held: The webpage excerpts that the Complainant submitted from the Internet Archive Wayback Machine suggest the disputed Domain Name’s registrant may have offered medical-related services in 2021 and 2022, but it’s unclear what those services were or if they infringed on the Complainant’s rights. That website is no longer active, though, and it is unclear whether the Respondent was the owner of the disputed Domain Name at that time. Moreover, it is not entirely surprising that the disputed Domain Name has resolved to various medical-related websites over the years given that the disputed Domain Name could be read as a combination of the term “omni” (which means “all”) and “doc” (which can be an abbreviation for “doctor”). It is possible that the Respondent has used, or intends to use, the disputed Domain Name in connection with its medical-related services. However, once the Complainant has presented a prima facie showing that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to come forward with some evidence that it has rights or legitimate interests in the disputed Domain Name.
Assessing bad faith registration is complicated in this case by two issues. First, the Complainant has not submitted any evidence of when its trademark rights first arose. Second, it is also unclear when the Respondent acquired the disputed Domain Name. Herein, the timing is uncertain, and the Panel’s investigation suggests the Respondent likely acquired it after 2002, possibly after 2011, or even after 2022, though the exact date is unclear. Even if the record could support an inference that the Respondent acquired the disputed Domain Name after October 2019, the Complainant has nevertheless failed to establish by a preponderance of the evidence that the Respondent used the disputed Domain Name in bad faith. To fully assess the Complainant’s claims in that regard, the Panel has reviewed the entire website captured by the Internet Archive Wayback Machine as of December 2022. The website seems linked to a legitimate business providing “digital medical office” services to health professionals, which differ from those of the Complainant.
Complaint Denied
Complainant’s Counsel: AtlantIP, France
Respondent’s Counsel: No Response
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 the founder of Cylaw Solutions.
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.