Welcome to this week’s UDRP Digest (vol. 1.18), summarizing the most intriguing cases of the past week. Read about:
‣ A Respondent in a Different Jurisdiction Cannot Be Expected to Have a Constructive Notice of Trademark (caribou .com)
‣ A Term Can Be “Generic and Common” Despite not Appearing in an English Dictionary (lumos .com)
‣ Competitor Who Tries to Steal a Mark of Another, can be Stripped of That Right (perfectrecall .com)
‣ Complaint Lacks Candour, Did Not Provide all the Required Information in a Transparent Manner (metamask .com)
‣ Attempt to Mislead the Panel, Results in Reverse Domain Name Hijacking (regalgames .com)
‣ Respondents’ Consent to Transfer: The Panel has to Recognize the Common Request (ulta .fun)
Enjoy!
A Respondent in a Different Jurisdiction Cannot Be Expected to Have a Constructive Notice of Trademark
Scott Dylan v. K-Ventures FZE LLC, WIPO Case No. D2021-2977
<caribou .com>
Complaint Denied
Panelists: Mr. Matthew Kennedy (Presiding), Mr. Antony Gold, Mr. Gerald M. Levine
Brief Facts: The individual Complainant is a shareholder in a 2018 incorporated Company, which provides courier services and has an active presence at <wearecaribou .com>. He holds United Kingdom trademark registration dated May 10, 2019 for both CARIBOU and KARIBOU separately. The disputed Domain Name has a registration date of May 31, 1995 but was acquired on or about May 14, 2019 for USD 91,482.02 by DXB Domains LLC. The disputed Domain Name moved to the Respondent (under same beneficiary control) in June 2021 on its incorporation, which company holds similar premium domain names for sale. On July 23, 2021, after Caribou Biosciences announced its stock market listing on Twitter, a broker sent a tweet in reply offering to help it acquire the disputed Domain Name and reached out to other companies named Caribou, including the Complainant, soliciting interest in the caribou .com domain name.
Held: There is no reason why the Respondent should be deemed to have constructive notice of the contents of the United Kingdom trademark database, given the word “Caribou” is found in the dictionary to refer to a type of reindeer. Although, the Respondent, as a domain name investor and trader, is seeking a price in excess of USD 91,482.02, which is reasonable and does not indicate an awareness of the Complainant’s trademark rights either. The Respondent’s broker did send an unsolicited email to the ‘Caribou’ and corresponded with the Complainant but the Respondent provides a credible explanation for its prior choice to acquire the disputed Domain Name. Besides, the Response provides the results of a recent Internet search for “Caribou” conducted in Dubai, which shows that the Complainant appears on the third page. For the above reasons, the Panel is unable to find it more likely than not that the Respondent intended to benefit unfairly from the Complainant’s mark and/or to damage the business of the Complainant when it acquired the disputed Domain Name.
Complainants’ Counsel: Sheridans, United Kingdom
Respondents’ Counsel: Muscovitch Law P.C., Canada
A Term Can Be “Generic and Common” Despite not Appearing in an English Dictionary
<lumos .com>
Complaint Denied (RDNH)
Panelists: Mr. Kendall C. Reed (Presiding), Mr. Eleni Lappa, Mr. Gerald M. Levine
Brief Facts: The Complainant offers high speed fiber broadband internet, Wi-Fi voice, and streaming television services in regions of Virginia and North Carolina. The LUMOS mark has been continuously used in the U.S. since 2011 and has active registration with USPTO dated January 17, 2012. The Complainant argues that the Respondent should be deemed to have had constructive knowledge of the Complainant’s registered mark. The Respondent acquired the disputed Domain Name in an auction as an investment on October 18, 2020 for $22,722 and is passively held. The Respondent received enquiries for the disputed Domain Name through GoDaddy broker before these proceedings.
Held: A term need not be found in a dictionary to be common or generic. The term LUMOS is a generic and common term, including being a commonly employed trademark and service mark in the US and around the world. The Respondent is a professional domainer, and to her the disputed Domain Name is stock-in-trade and she is not required to make a functional use of its inventory in order to avoid the risk of it being taken away, hence legitimate interests. The Complainant has not demonstrated that the Respondent targeted the Complainant’s mark at the time of acquisition of the disputed Domain Name.
RDNH: The Complainant attempted to use the UDRP to obtain the disputed Domain Name from the Respondent as an alternative to negotiations, a form of abuse often referred to as a “Plan B” complaint. The Complainant is represented by counsel. In the circumstance, some panels have held that a represented complainant should be held to a higher standard. The Complainant reasonably can be charged with knowing that the term LUMOS is generic or common and that the Respondent did not target the Complainant or Complainant’s mark, as it offered no concrete evidence that it did. Based upon these facts, at the time the Complainant initiated this UDRP proceeding it knew or should have known that it had no real prospect of being able to demonstrate Respondent’s lack of rights or legitimate interests or its bad faith.
Complainants’ Counsel: Michael J. Hertz of Woods Rogers PLC, Virginia, USA
Respondents’ Counsel: Jason Schaeffer of ESQwire.com, P.C. The Domain Name Law Firm, New Jersey, USA
Competitor Who Tries to Steal a Mark of Another, can be Stripped of That Right
Hyperdoc Inc. v. Dan Siroker, NAF Claim Number: FA2111001972428
<perfectrecall .com>
Transfer
Panelists: Mr. Clive L Elliott Q.C. (Presiding), Ms. Anne M. Wallace Q.C. and Mr. David H. Bernstein
Brief Facts: The Respondent acquired the perfectrecall .com domain name after the Complainant announced the anticipated launch of it PERFECT RECALL service on an invitation-only social network and before the actual launch of the service. The Respondent denies any knowledge of Complainant’s plans and claims that he independently arrived at the PERFECT RECALL name as it is descriptive of its contemplated business for a product that would record and transcribe a video conference meeting with “Perfect Recall”. The Complainant offers services that feature software for recording and transcription of online video conference events. It owns a matching US trademark PERFECT RECALL, dated October 19, 2020 and website at <perfectrecall .app>. This .app domain name has registration of July 13, 2020, followed by a launch announcement on a social media site, the very next day. The disputed Domain Name has registration dated August 25, 2020 and resolves directly to the Respondent’s domain name <scribe .ai>, which the Complainant asserts is a direct competitor of the Complainant.
Held: The respondent is not credible in denying awareness of Complainant’s intention to launch a service named PERFECT RECALL. The Panel disagrees with Respondent’s claim that the term PERECT RECALL is descriptive of its service. The Respondent’s acquisition and use of the disputed Domain Name is therefore in bad faith. The timing of registration is suspicious, though the Respondent asserts in his declaration that he was not aware of the Complainant’s mark or its announcement. Given that “Perfect Recall” is not at all descriptive for this service, it strains credulity to conclude that the Respondent came up with that name on his own just a month after the Complainant publicly announced its intention to use that name for its nearly identical service. Finally, there is merit in the argument raised by the Complainant that it has rights, based on the principle that a competitor who deliberately tries to steal a mark of another, by misappropriating a nascent trademark right, can be stripped of that right. In the present context, the Respondent’s registration does not amount to good faith conduct and lacks legitimate interests.
Complainants’ Counsel: Rajesh Fotedar of Cognition IP P.C., California, USA
Respondents’ Counsel: Aaron Hendelman of Wilson Sonsini Goodrich & Rosati, California, USA
Complaint Lacks Candour, Did Not Provide all the Required Information in a Transparent Manner
Consensys Software Inc. v. Justin Pietroni, Netymology Ltd, WIPO Case No. D2021-3337
<metamask .com>
Complaint Denied (RDNH)
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant and its predecessors provide a web browser extension “MetaMask” through metamask.io, designed to facilitate various cryptocurrency / blockchain activities, since 2016. In 2017, a predecessor applied for a trademark before USPTO for METAMASK, claiming first use date of 2016, has registration as of July 3, 2018. The Complainant after incorporation in 2020, got the Trademark assigned to it. The disputed Domain Name has a registration date of January 28, 2005. On July 20, 2021, a person using the name Alex Schleifer contacted the Complainant expressing his interest in selling the disputed Domain Name and on Complainant’s request quoted the price in 6-7 figures. Later, the Complainant emailed and informed about some phishing scam being operated through the disputed Domain Name, the Respondent in response clearly denied any such involvement.
Held: It is not in dispute that the Respondent acquired the disputed Domain Name in 2005, whereas the Complainant’s trade mark rights only arose in 2016 at the earliest. As the Complainant and its rights did not exist in 2005, the disputed Domain Name could not have been registered in bad faith. This is fatal to the Complainant’s case, irrespective of the nature of any later use of the disputed Domain Name, as the Complainant is required to prove both registration and use in bad faith.
RDNH: The Complainant knew or at least should have known that it could not prove one of the essential UDRP elements. The Complainant quoted extensively from UDRP case law and it is unlikely that the Complainant is unaware of the current overwhelming view of UDRP panelists as to the need to prove registration as well as use in bad faith. Besides, the Complaint lacks candour in that it makes no mention of either the Complainant’s email to Mr Schleifer of October 5, 2021, as to phishing/fraud or, more importantly, the October 6, 2021, response from Mr Schleifer’s attorney confirming that Mr Schleifer did own the disputed Domain Name and denying his involvement in phishing/fraud.
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Lee & Hayes, United States
Attempt to Mislead the Panel, Results in Reverse Domain Name Hijacking
Regal Games LLC v. Wolfgang Sauer, NAF Claim Number: FA2111001974104
<regalgames .com>
Complaint Denied (RDNH)
Panelist: Mr. Luca Barbero
Brief Facts: The Complainant manufactures and sells children’s toys and games and claims common law rights in the REGAL GAMES mark. The Complainant’s website at <regal-games .com> is dedicated to its history, displaying examples of Complainant’s Bingo cards featuring the trademarks REGAL and REGAL GAMES with copyright lines dated from 2012 onwards. The Complainant asserts that the Respondent is a cyber-squatter – involved in at least 6 prior cases before the present one and the disputed Domain Name has recent registration. The disputed Domain Name has a registration of July 11, 1996 and currently resolves to a parking page with sponsored links. The Respondent asserted that the disputed Domain Name has been used initially starting 2002 to promote its business in the sale of game consoles.
Held: The Respondent has submitted evidence as to the use of the disputed Domain Name in connection with a bona fide offering of goods and services before receiving notice of the present dispute. On the other hand, the Complainant has provided little evidence to demonstrate its asserted common law rights in the REGAL GAMES mark before the registration of the disputed Domain Name. Where a respondent’s registration of the disputed Domain Name predates Complainant’s first claimed rights in the mark, the complainant generally cannot prove registration in bad faith in terms of the Policy, as the Policy requires a showing of both bad faith registration and use.
RDNH: In view of the circumstances of the case, the Complainant knew or should have known that it cannot prove that the Respondent lacks rights or legitimate interests in the disputed Domain Name and that the Respondent registered the disputed Domain Name in bad faith. In view of the foregoing and considering that Complainant’s provision of inaccurate information about the registration date of the disputed Domain Name might be seen as an attempt to mislead the proceedings, hence, the reverse domain name hijacking has occurred in this case.
Complainants’ Counsel: Randy R. Micheletti of Incubate IP, Illinois, USA
Respondents’ Counsel: Self-represented
Respondents’ Consent to Transfer: The Panel has to Recognize the Common Request
Ulta Salon, Cosmetics & Fragrance, Inc. v. Tien Pham Van, NAF Claim Number: FA2111001973979
<ulta .fun>
Transfer
Panelist: Mr Richard Hill
Brief Facts: The Complainant is one of the largest beauty retailers in the U.S., offers more than 25,000 products from over 500 well-established and emerging beauty brands. The Complainant operates 1,299 retail stores across 50 states and also distributes its products through its website <ulta .com>. The Complainant has rights in the ULTA mark based on its registration of the mark in the United States in 2001. The disputed Domain Name has registration as of October 24, 2021 and is used as a clear duplicate of the Complainant’s website. The Respondent expresses his intention to resolve the matter.
Held: The Respondent’s email can be interpreted as a consent to transfer the disputed Domain Name. In accordance with a general legal principle, it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy. Given the common request of the Parties, the disputed Domain Name be transferred from the Respondent to the Complainant.
Trivia: ‘Ulta’ in Hindi language means ‘Reverse’.
Complainants’ Counsel: Caitlin R. Byczko of Barnes & Thornburg LLP, Illinois
Respondents’ Counsel: Self-represented