Welcome to this week’s UDRP Digest (vol. 1.14), summarizing the most intriguing cases of the past week. Read about:
‣ Chinese Fitness Brand Fails in an Attempt to Grab Matching .Com (sloli .com)
‣ Dissenting Panelist Recommends RDNH! (gdaycomau)
‣ Lack of Response & Redirection, Leads to Transfer of a Generic Combination (safetykerb .com)
‣ Complaint in a Wrong Forum, Under Wrong Standards! (payexou .com)
‣ Consolidation is Allowed in Exceptional Circumstances (onclouddamen .com and more)
‣ Complainant Fails to Produce Proper Evidence, in a Close Case (sanbenedetto .com)
Enjoy!
Chinese Fitness Brand Fails in an Attempt to Grab Matching .Com
Hangzhou Huihong Technology Co., Ltd. v. Cai Ruizhen, ADNDRC Case No HK-2101540
<sloli .com>
Complaint Denied
Panelist: Ms. Julia Hongbo ZHONG
Brief Facts: The Chinese Complainant is a fitness brand promoted by celebrity Ms. Chen Nuanyang, and operates at <sloli .store>. The Complainant filed applications in China and other countries to protect the trademark SLOLI, as early as 2016. The Complainant claims that from 2015 to 2017, it sold more than 6 million products, served more than 2 million customers, and that the Respondent holds a number of domain names including some corresponding to well-known brands. The registration date of the disputed Domain Name is September 25, 2019 and displays a coming soon page. The Respondent submits that he registered the disputed Domain Name as a combination of ‘s’ with the word ‘loli’ and the Complainant acquired various SLOLI trademarks in China by assignment on 13 September 2020.
Held: It is evident that the Complainant acquired rights in Chinese Trademarks by assignment in September 2020, while prior registered rights in the jurisdictions of U.S.A., the E.U. and Japan, cannot establish Bad Faith. Besides, Complainant’s evidence including media reports mainly refers to the other brand “暴走的萝莉”. As a result, there is no evidence to prove that the Respondent should have known of the Complainant and/or its trademark SLOLI at the time of registration of the disputed Domain Name. The letter “S” is a common acronym in English and “loli” is a common word, no one is able to claim a monopoly on such a combination. The Respondent also owns other domain names comprising combinations of common dictionary words, descriptive terms or initial, which are common ways to coin a word. In addition, there is no provision in any law or regulation restricting the number of domain names that anyone can register or own in their own name. The “coming soon” page indicates the Respondent’s intention of using the disputed Domain Name rather than the Complainant’s allegations of an attempt to prevent the Complainant from registering the same domain name.
Complainants’ Counsel: Hangzhou Chofn Intellectual Property Agency Co., Ltd.
Respondents’ Counsel: Self-represented
Dissenting Panelist Recommends RDNH!
<gday .com.au>
Complaint Denied
Panelist: Mr. Nicholas Weston (Presiding), Mr. Warwick Rothnie, The Hon. Neil Brown Q.C.
Brief Facts: The Australian Complainant established in 2004, operates a caravan, holiday and resort park business with more than 280 branded destinations. The Complainant holds a portfolio of registrations for the trade mark G’DAY, and variations of it, in Australia since 2017. The acquisition date of disputed Domain Name is May 31, 2021 and resolves to a pay-per-click parking webpage promoting links that include that includes terms such as “Adelaide Australia”, “Australia Accommodations”, “Australia Flights”, “Australia Hotels”. The Respondent submits that the term “g’day” means ‘hello’ and is a widely used word in the Australian vocabulary. The Respondent purchased the disputed Domain Name for AUD $10,000 from a public drop-catch auction, initially parked it using default registrar parking options, and the demonstrable preparations to use the disputed Domain Name commenced on or by June 10, 2021.
Held: A domain name investor, or anyone else, can register a commonly used word as a domain name and hold it provided that the circumstances do not indicate illegitimate conduct or bad faith. The Respondents’ evidence suggests steps taken to have a logo designed by a graphic designer and the registration of the proposed business name G’day Marketing. The PPC parking page does not exclude a good faith offering in the circumstances of this case where there is evidence of demonstrable preparations to use the disputed Domain Name in connection with a good faith offering of services and the PPC use appears to have been removed promptly. It now resolves to a page which features one of the G’day Marketing logos prepared by the graphic designer and the words “Gday Marketing coming soon”. Accordingly, the Complainant could not establish the Respondent does not have rights or a legitimate interest in the disputed Domain Name. As a result, no good purpose would be served by considering the third requirement under the Policy.
Dissenting Opinion (The Hon. Neil Brown Q.C.): The acquisition date of disputed Domain Name is May 31, 2021, and the date of filing of the Complaint is June 21, 2021. The Respondent, therefore, had limited time to make demonstrable preparations to use the domain name. In any event it seems clear that the case of the Respondent falls within paragraph 4(c)(i) of the Policy because it made “demonstrable preparations to use in connection with an offering of goods or services…” and it is bona fide. The Complainant must realise that it filed a completely unmeritorious claim and one which should not succeed, in view of the highly generic nature of the domain name. The domain name is the most classic example of a commonly used word which the Respondent is within its right to use, as does anyone else, provided that it does not target a trademark owner, mislead or confuse the market or engage in some other inappropriate manner. There is no evidence of Bad Faith, but nevertheless, the Complainant went ahead with this claim which is completely baseless. That justifies a finding of Reverse Domain Name Hijacking!
Complainants’ Counsel: Minter Ellison, Australia
Respondents’ Counsel: DBR Domain Brokerage
Lack of Response & Redirection, Leads to Transfer of a Generic Combination
Novartis AG v. See PrivacyGuardian.org / Dhfjhgryr Yuan Han, WIPO Case No. D2021-3204
<safetykerb .com>
Transfer
Panelist: Mr. Steven A. Maier
Brief Facts: The Swiss Complainant is a pharmaceutical company and a supplier of a prescription medicine named “Tykerb”, used in the treatment of advanced or metastatic breast cancer. The Complainant is the owner of registrations for the trademark TYKERB in multiple territories, including US, EU and WIPO and the owner of the domain name <tykerb .com>, registered on June 26, 2003. The registration date of the disputed domain name is August 8, 2021. The disputed Domain Name resolves to a Chinese language website at “safetykerb .com”, offering both gambling services and pornographic content.
Held: The disputed Domain Name could be argued to comprise a combination of two dictionary words, “safety” and “kerb” but the Respondent’s use of the disputed Domain Name for a website offering gambling and pornographic services bear any obvious relation to either or both of those terms. Besides, the trademark has been used in numerous countries around the world for well over a decade in connection with the Complainant’s relevant product. The Complainant’s submission that the addition of the term “safe” to the name of a pharmaceutical product, TYKERB, suggests that the Respondent may have had the Complainant’s product in mind at the time of registration of the disputed Domain Name. In these circumstances, and in the absence of any contrary submission from the Respondent, the Respondent registered the disputed Domain Name with the Complainant’s TYKERB trademark in mind. Further, the Respondent’s address as supplied to the Registrar appears to be materially nonsensical and no such address exists. This factor exacerbates the impression of bad faith intent on the Respondent’s part.
Complainants’ Counsel: Dreyfus & associés, France
Respondents’ Counsel: No Response
Complaint in a Wrong Forum, Under Wrong Standards!
Swedbank PayEx Holding AB v. Vasiliy Koshkin, WIPO Case No. D2021-2889
<payexou .com>
Complaint Denied
Panelist: Mr. Robert A. Badgley
Brief Facts: The Swedish Complainant is a financial services company that provides payment transfer services under the trademark PAYEX and holds an international trademark registration since 2006. The Complainant provides no evidence of the size and scale of its operations under the PAYEX mark. The Respondent Payex OÜ is a corporation incorporated in Estonia on May 25, 2018, for rendering “virtual currency service.” While the Respondent operated at the domain name <payex .one>, the Complainant issued a cease-and-desist letter, to which the Respondent committed that he will stop using the word ‘Payex’ and will only use ‘Payex OÜ’. The Complainant, unsatisfied with the Response, wrote further on March 30, 2021, while the Respondent registered the disputed Domain Name on April 6, 2021. It resolves to a website at which it offers various payment services.
Held: There is no evidence that the Respondent registered the disputed Domain Name in bad faith. Initially, when the Complainant sent its cease-and-desist letter, the Respondent replied that it had never heard of Complainant or its PAYEX mark, at the time of the registration of <payex.one>. Further, the Respondent offered to take measures to alleviate Complainant’s concerns, and suggested to cease using Payex on its own and begin using Payex OÜ. The Respondent later registered the disputed Domain Name on April 6, 2021, and migrated its crypto-fiat exchange website to that Domain Name. The disputed Domain Name exactly reflects Respondent’s duly registered corporate name, a name that the Respondent adopted before. This conduct does not suggest a clear case of cybersquatting, which is what the UDRP is chiefly designed to address. It appears that the Complainant has pursued its grievance against Respondent in the wrong forum (and thereby, under the wrong standards).
Complainants’ Counsel: Joachim Lindbo Hansen, Sweden
Respondents’ Counsel: PLL Legal & Cross-Border Practice, Switzerland
Consolidation is Allowed in Exceptional Circumstances
<onclouddamen .com>, <oncloudrunnersireland.com> and 8 more
Transfer
Panelist: Mr. Taras Kyslyy
Brief Facts: The Complainants are providers of high-end sports apparel and shoes, sold in over 50 countries and operating an online shop at “on-running .com”. The Complainants have rights in a large number of trademarks containing the words ON, CLOUD, CLOUDS, RUN, and RUNNING. The disputed Domain Names previously resolved to websites of similar design copied from the Complainants’ respective website, prominently featuring the Complainants’ trademarks and offering for sale the Complainants’ goods. At the time of this Decision, the majority of the disputed Domain Names are inactive.
Preliminary Issue: The present dispute is by two Complainants against six Respondents as a consolidated, “unitary” complaint. The Complainants appear to be related corporate entities and have a common legal interest sufficient to justify consolidation of the Complainants. On the other hand, the Complainants assert that the Respondents should be treated as one respondent in this proceeding, as the Respondents appear to be the same person controlling connected websites with identical design. The arguments are accepted in favor of consolidation and the request to consolidate is granted.
Held: The Complainants did not license or otherwise agree for use of their prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed. In exceptional circumstances, the resellers, distributors, or service providers using a domain name containing a complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods but subject to the criterion laid down in OKI Data Test, which the Respondent fails to completely satisfy here. The disputed Domain Names primarily resolve to websites featuring the Complainants’ trademarks and falsely pretended to be official Complainants’ websites to intentionally attract Internet users by creating a likelihood of confusion with the Complainants’ trademarks as to the source of the websites and its products. The above confirms the registration and use of the disputed Domain Names in bad faith.
Complainants’ Counsel: Rentsch & Partner, Switzerland
Respondents’ Counsel: No Response
Complainant Fails to Produce Proper Evidence, in a Close Case
<sanbenedetto .com>
Complaint Denied
Panelist: Mr. Reyes Campello Estebaranz
Brief Facts: The Italian Complainant produces and sells mineral water, carbonated and non-carbonated beverages, since 1956, having six production sites in Europe, and commercializing its products in 100 jurisdictions. The Complainant operates at <sanbenedetto .it> and is the owner of various registered trademarks for “San Benedetto”. The registration date of the disputed Domain Name is June 30, 2001 and is inactive. Initially, the Respondent redirected to a website promoting vocational offerings in a tourist resort located in the Italian region of Abruzzo. The Respondent is in the business of acquiring and using generic domain names, and owns more similar domain names.
Held: The use of a domain name to host a page comprising PPC links would be permissible where the domain name consists of actual dictionary words or common phrases and is used to host PPC links genuinely related to the dictionary meaning of these words or phrases, and not to trade off the complainant’s (or its competitor’s) trademark. Herein, the disputed Domain Name never used in generic sense rather used in connection to a parked page displaying a wide spectrum of PPC links, some of which may interfere or compete with the Complainant and its products. In the circumstances, the Respondent did not rebut the Complainant’s prima facie case to hold legitimate interests in its favor. But going further there is no evidence on record that indicates whether the mark was used in any relevant jurisdiction at the time of the registration of the disputed Domain Name in 2001. As a result, there is no evidence that suggests the Respondent would have had any particular knowledge of or any contact or connection to the Complainant, or any other circumstance that may lead to consider that the Respondent acted in bad faith.
Complainants’ Counsel: Studio Torta S.p.A., Italy
Respondents’ Counsel: Studio Legale Regina & Partners, Italy