Welcome to this week’s UDRP Digest (2.12), summarizing the most intriguing cases of the past week, with commentary from Zak Muscovitch, ICA General Counsel. Read about:
‣ Unanimous Panel: Resale of “Brandable” Domain Names is a Legitimate Activity. RDNH Found. (bookker .com)
‣ Open Source Software Volunteer Harassed by Complainant Over Non-Commercial Website (WeMakeFedora .org)
‣ Conservationist Complainant Claims Common Law TM Rights in Common Surname (McGraw .org)
‣ Was Four-Letter Acronym Registered Because of a French Government Agency? (irsn .com)
‣ Is Passive Holding Enough to Uphold Bad Faith Registration and Use? (LionsHead .com *with commentary)
Enjoy !
Unanimous Panel: Resale of “Brandable” Domain Names is a Legitimate Activity. RDNH Found.
<bookker .com>
Panelists: Mr. Assen Alexiev (Presiding), Mr. Alejandro Touriño and Mr. Jeffrey Neuman
Brief Facts: The Complainants are affiliates and provide services that increase the efficiency in the use of office and parking spaces and other similar resources. They are respective owners of various BOOKKER trademarks, starting as early as 2019 and 2017 respectively, under classes 9 and 36. The disputed Domain Name, registered on August 16, 2014, redirects to a webpage located on the website <hugedomains .com>, which offers the disputed Domain Name for sale for a price of USD $6,095. According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it has offered the disputed domain name for sale for an unreasonable price. The Complainants add that the Respondent has not used the disputed domain name in a bona fide manner and is not known to them. The Complainants assert that they contacted the Respondent in an attempt to purchase the disputed Domain Name and in reply the Respondent requested the price of USD $6,095 to obtain an unfair profit.
The Respondent claims that it has operated as a domain name investor since 2003 and the disputed Domain Name is one of more than 1 million similar domain names that it registered over the years. The Respondent maintains that it registered the disputed Domain Name because it is a brand-able and desirable word and a typographical variation of the dictionary word “booker” with an extra letter “k”, and because the Respondent believed that no party could claim exclusive rights in it. The Respondent adds that “Bookker” is also a family name that is associated with third party profiles on Facebook and Twitter.
Respondent argues it is impossible to have registered the domain name with the Complainant in mind since the trademark did not exist at the time of Respondent’s registration of the domain name.
According to the Respondent, the registration for subsequent resale of independently attractive and memorable domain names, such as the disputed domain name, is permissible on a first-come, first-served basis; it is a legitimate business activity and ipso facto establishes the Respondent’s legitimate interest, provided the domain name was not registered with a trademark in mind. The Respondent further notes that by the date the disputed domain name was registered on August 16, 2014, the Respondent had already registered more than 100 similar brandable domain names. According to the Respondent, such pattern of brandable domain name registrations and sales supports an inference that the disputed domain name was not registered with the intent to target the Complainants.
Held: The Complainant BOOKKER CORPORATE S.L.U was established on September 24, 2018 and the other Complainant, THE GRAFFTER SL claims an earlier establishment date of October 15, 2012, but there is no evidence that either carried out any activity under the BOOKKER trademark prior to the date of registration of the Complainants’ domain name <bookkercorp .com> on July 9, 2018. There is evidence in the record however, that the first registration of the BOOKKER trademark took place on September 21, 2017. Meanwhile the Respondent’s explanation of the reasons why it chose and registered the disputed Domain Name finds support in the fact that it also registered a number of other domain names that all show a similar pattern, and this supports a conclusion that the disputed Domain Name is more likely to have been registered not with the intent to target the Complainants, but rather as part of a legitimate domain name investing business. The Panel is more inclined to find that the Respondent does have rights and legitimate interests in the disputed Domain Name. The registration and resale of domain names in and of itself is a legitimate activity provided that such activity does not trade off of the goodwill of trademark owners.
RDNH: Nobody knows better than the Complainants that they do not have earlier rights than the Respondent – and yet, this is what they stated in the Complaint, and certified their statements in terms of Policy Rules. The Panel regards this conduct of the Complainant as an attempt to mislead it. The only logical conclusion from the fact that the Respondent could not have known of the non-existent business of the Complainants at the time of registration of the disputed Domain Name is that it did not register it in bad faith. The Complainants must have appreciated this, but nevertheless as “Plan B”, they proceeded with the Complaint after an unsuccessful attempt to acquire the disputed Domain Name from the Respondent, without a plausible legal basis, and basing it on only the barest of allegations without any supporting evidence. The UDRP should not be considered a back-up plan to go after Registrants after unsuccessfully trying to negotiate the price of a domain name. This is especially egregious given the fact that the Complainants’ rights did not accrue until well after the disputed domain name was registered.
Complainant Denied (RDNH)
Complainants’ Counsel: Margareto IP, Spain
Respondents’ Counsel: ESQwire .com PC, United States
Open Source Software Volunteer Harassed by Complainant Over Non-Commercial Website
Red Hat, Inc. v. Daniel Pocock / Software Freedom Institute SA, NAF Claim Number: FA2201001980642
<WeMakeFedora .org>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant, a leading provider of open-source software, offers a range of products, including Linux platforms, cloud computing and related services. The Complainant used the FEDORA trademark since at least as early as September, 2001, and owns rights in the FEDORA mark through registration with the USPTO since 2007. The Respondent registered the disputed Domain Name on March 29, 2021 and hosts a non-commercial website as a contributor to the Complainant’s open source software project.
The Complainant alleges that it neither consented to the Respondent’s use of the disputed Domain Name nor authorized or licensed any rights to the Respondent in the FEDORA mark. The Respondent submits he clearly has an interest in the disputed Domain Name due to the communication from the trademark owner at the time of registration, public statements made by the Complainant encouraging users to engage in free ways of working and the longstanding history of joint authorship of the trademarked product, FEDORA. The web site at the disputed Domain Name doesn’t ask for money, doesn’t run banner advertising, and rather provides a disclaimer that includes a link back to the Complainant site.
Held: The Respondent has shown that he had been contributing for some years as an unpaid volunteer to the content of Complainant’s website and had received numerous badges in recognition of his efforts. In an email dated March 30, 2021, the Complainant consented to the Respondent’s use of the disputed Domain Name so long as the website followed the Complainant’s trademark guidelines relating to Community sites and accounts. The Panel finds that the Respondent is operating a genuine, non-commercial website from a Domain Name that contains an appendage (“we make”) that, as noted in the Response, is clearly an identifier of contributors to the Complainant’s website. In registering the Domain Name using an appendage that identifies the Complainant’s contributors, the Respondent is neither attempting to impersonate the Complainant nor misleadingly to divert Internet users. Rather, the Respondent is using the FEDORA mark in the disputed Domain Name to identify the Complainant for the purpose of operating a website that contains some criticism of the Complainant. Such use is generally described as “fair use” of a trademark. Accordingly, the Panel finds that the Respondent has rights or legitimate interests in the disputed Domain Name.
RDNH: Despite the Complainant having consented, on the day after the Respondent registered the disputed Domain Name, to the Respondent’s use of the disputed Domain Name for a website, so long as the Respondent complied with the Complainant’s trademark guidelines, the Complaint does not contain contend that the Respondent has failed to comply with those guidelines. Instead, the Complaint asserts that the Complainant did not consent to the Respondent’s use of the disputed Domain Name and that the Respondent’s adoption of a name that is virtually identical to Complaint’s registered trademark to offer or to discuss software and software design and development services does not constitute any right or legitimate interest in the domain name on the part of the Respondent. However, the Panel finds that the Complainant brought this proceeding despite having clear knowledge of the Respondent’s rights or legitimate interests in the domain name and that the proceeding was brought primarily to harass the domain-name holder.
Complaint Denied (RDNH)
Complainants’ Counsel: Maury M. Tepper, III of Tepper & Eyster, PLLC, North Carolina, USA
Respondents’ Counsel: Self-represented
Conservationist Complainant Claims Common Law TM Rights in Common Surname
<McGraw .org>
Panelist: Mr. Frederick M. Abbott
Brief Facts: The Complainant is a US based not-for-profit corporation, organized in 1962, engaged in activities relating to research regarding and preservation of wildlife. The Complainant claims unregistered or common law trademark rights in the term MCGRAW based on its use in various forms since 1977. Its revenues from contributions in 2019 exceeded USD $5 million and operates a website at <mcgrawwildlife .org>. The Respondent registered the disputed Domain Name on October 24, 2003. The webpage at the disputed Domain Name in the recent past redirected to a search parking page that includes generic search terms and displays a “Buy this domain” link at an asking price of USD $1,999. As of the date of this proceeding, the Respondent directs the disputed Domain Name to an Amazon webpage offering a song for play on Amazon Music and sale of an MP3 album.
The Complainant asserts it attempted an offer to purchase the disputed Domain Name from the Respondent for as high as USD $10,000. The Respondent did not respond to the offer under Response but points out that if it had intended to sell the disputed Domain Name, he probably would not have waited 18 years. The Respondent claims that it is close friends and business partners with a family in the country music business that includes a writer who has written a number of songs for the singer, Tim McGraw and was part owner of the royalty stream generated by those songs.
Held: The Complainant owns several pending MCGRAW-formative applications that it filed in 2021 before the USPTO. None of those are for MCGRAW standing alone as a word mark. As a matter of federal trademark law in the United States, the registration will be refused for a term that is “primarily merely a surname” unless it acquires significance to the public in connection with a good or service. The Complainant’s evidence of its use of MCGRAW standing alone as a common law mark refers to letters to its members and/or contributors going back at least in a limited way as early as 1977. This is not a use that would alert a wide public to an assertion of trademark rights by the Complainant. The Respondent had no reasonable basis for actual or constructive knowledge of the Complainant’s alleged MAGRAW trademark when it registered the disputed Domain Name, and was not attempting to impermissibly take advantage of the Complainant’s alleged rights in that trademark when it registered the disputed Domain Name. The Complainant’s arguments regarding the Respondent’s refusal to sell the disputed Domain Name are unpersuasive. The Panel concludes that the Respondent did not register and use the disputed Domain Name in bad faith.
Complaint Denied
Complainants’ Counsel: Buckley Fine, LLC, United States
Respondents’ Counsel: Self-represented
Was Four-Letter Acronym Registered Because of a French Government Agency?
<irsn .com>
Panelist: Mr. Edoardo Fano
Brief Facts: The Complainant is a French public body operating in the field of research and expertise about nuclear and radiation risks. It owns several trademark registrations for IRSN including France and an International Trademark registration that extends to the United States, and operates online at <irsn .fr>. The Respondent registered the disputed Domain Name on April 16, 2021 and it resolves to a parking page with sponsored links and it is offered for sale at the website <perfectdomain .com> for USD $29,999.
The Complainant asserts that the Respondent intends to make a profit either from the pay-per-click links or by selling it to the Complainant or to its competitor, and that the Respondent owns almost 1500 domain names, some of them corresponding to famous third parties’ trademarks. The Respondent submits the disputed Domain Name was acquired in connection with its legitimate business of buying and selling short, generic, otherwise appealing and inherently valuable domain names and it consists of an acronym used to identify many organizations, individuals, and concepts. He was not aware of the Complainant’s trademark as it consists of a French government agency whose mandate does not extend to the United States. The Respondent stated that the acronym “irsn” is used to identify many organizations, individuals and concepts, and that it is therefore entitled to buy the domain name corresponding to that acronym.
Language of the Proceedings: The Complaint was filed in French, while the Response is in English. The Registration Agreement for the disputed Domain Name is in English. The Complainant requests the language of the proceeding to be French because French is the language of the Complainant and because the content of the website at the disputed Domain Name is in French. The Respondent contends that the language of the content of the website at the disputed Domain Name is only French when viewed in France, since it consists of a parking page with pay-per-click links which are automatically generated. The Panel decides that the language of the proceeding will be English, since the language of the Registration Agreement is English, there is not an agreement between the parties to change it and the Complainant has provided no good reason for conducting the case in French.
Held: The arguments presented by the Complainant do nothing to create even an inference that it was being targeted. Where the Complainant’s mark is not inherently distinctive and is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters), if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark.
It appears on balance that the American Respondent has demonstrated that it was not aware of the Complainant – a French government agency – when it registered the disputed Domain Name, and that it acquired the Domain Name because of its 4-letter value rather than because of the Complainant. With regard to the other registrations of domain names including third party trademarks (which appear to be rather famous marks), the Complainant did not point out any notable features of the present case that would be evidence of any particular pattern of cybersquatting activities incorporating the disputed Domain Name.
Complaint Denied
Complainants’ Counsel: Cabinet Regimbeau, France
Respondents’ Counsel: Grant Carpenter, United States
Is Passive Holding Enough to Uphold Bad Faith Registration and Use?
<LionsHead .com>
Panelist: Mr. Charles A. Kuechenmeister
Brief Facts: The Complainant, Lionshead Specialty Tire & Wheel, obtained a US registered trademark for LIONSHEAD on October 26, 2021. The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name and registered and used the Domain Name in bad faith, because it has failed to make any active use of the Domain Name.
Held: The screenshot of the web page resolving from the disputed Domain Name depicts a blank page containing only the words, “Lions Head”. This is not an active use of the Domain Name. As such it is neither a bona fide offering of goods or services as contemplated by Policy. The evidence furnished by the Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The failure to make an active use of a domain name permits an inference of registration and use in bad faith. It may not fit within any of the circumstances described in Policy but that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties.
Transfer
Complainants’ Counsel: Daniel Tychonievich of Krieg DeVault LLP, Indiana, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
When evaluating a UDRP decision, one must be cognizant that a Panel often has facts in the record before it which were not included in the decision itself, and thereby the ability of observers to accurately evaluate the correctness of a decision may be limited. Nevertheless, a UDRP decision must stand on its own. It can be evaluated on the Panel’s recital of the facts and the Panel’s own reasoning. The facts and rationale set out in this decision raise significant concerns.
When there is no Response filed, a Panelist must nevertheless assess whether the facts support the Complainant’s contentions and justify a transfer under the UDRP. The evidentiary requirements in the Policy are rendered meaningless if a Panel treats unsubstantiated allegations as a substitute for the requirement that a Complainant support its allegations with adequate evidence. Treating a factually unsupported allegation as evidence is especially problematic when there is no response from a Respondent. The evidentiary requirement in no response cases is thoroughly discussed in “UDRP Panelists” Getting the Standard Right Where No Response is Filed” (Zak Muscovitch and Nat Cohen, CircleID, March 7, 2019).
In this case, the Panelist did correctly reference the appropriate standard (under “Findings”). Yet on the disclosed facts of this case, the Panelist apparently failed to make a sound determination as to whether the evidence actually justified a transfer.
We start with the Domain Name and the corresponding trademark itself, LIONSHEAD. A Panelist would likely immediately recognize that this term may possibly correspond to much more than a relatively unknown specialty tire company. For example, a simple Google search would reveal that it corresponds to geographical locations, pubs, and various third party companies. A search of the USPTO would show a third-party trademark by a brewery. A review of the Complainant’s own website would reveal that the Complainant appears to be a relatively modest family-owned business that does not appear to have any particular widespread reputation or fame.
As stated in the WIPO Overview at 4.8, “It has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision”. This can take the form of judicial notice, accessing trademark databases, and reviewing online resources, for example. In this particular case, given the nature of the Domain Name and the absence of a Response, a Panel would likely not be criticized for undertaking some limited independent research of this nature. In this case, the Panel apparently did not undertake such independent research despite it being arguably prudent in the circumstances. Nevertheless, a Panel is not necessarily required, nor should it necessarily engage, in any independent research when material facts are not disclosed by the Complainant itself in an undefended case. Indeed, we can give the Panelist the benefit of the doubt on that front, as if a Respondent does not care enough to defend its own case, it is not incumbent upon the Panelist to do it for him. There must, after all, be some price to be paid for not defending against a Complaint. Accordingly, the absence of independent research is not the primary concern arising from this decision.
The actual primary concern here is based solely upon the facts and rationale disclosed by the Panelist in the decision itself. What was the basis for determining that the Domain Name was registered and used in bad faith? Apparently, the sole evidence relied upon by the Complainant was that the Domain Name was “unused” except for a holding page displaying the words, “Lions Head”. The Complainant alleged, and the Panel found, that the “inactive” website and “passive holding” of the Domain Name “is evidence of bad faith”. Many UDRP cases have held that a respondent is under no obligation to use a domain name for a website or at all (see for example, Write Brothers, Inc. v. Dennis Pollack, NAF FA0210000127800: “Notwithstanding Complainant’s implications to the contrary, there is no requirement that a domain name registrant use or have any use for the domain name at the time of registration; not even for a domain name that might be similar to an existing trademark. A domain name holder is under no obligation to immediately begin operating a website upon registering the domain name”).
More importantly however, the doctrine of “passive holding” invoked by the Panelist, requires a finding of “bad faith registration” as a precursor to making a finding of bad faith based upon non-use (See Telstra Corporation Limited v. Nuclear Marshmallows at Paragraph 7.8 – 7.10). In the Telstra case, the panel first found bad faith registration based upon numerous trademark registrations, widespread reputation, a highly distinctive domain name, and the “inconceivability” of any legitimate use of the domain name other than by the complainant. It was only after making a well-supported finding of “bad faith registration” in the first place, that the panel in Telstra was able to continue on to find “bad faith use” based upon non-use or “passive holding” of the domain name. That is in stark contrast to the facts of the present case where the Panel leaped to “bad faith registration and use” based solely upon “passive holding” – without any evidence supporting bad faith registration in the first place. There was no evidence of widespread reputation or fame of the LIONSHEAD mark and no evidence of the mark being a particularly fanciful or unique term. All that the Complainant apparently offered – and all that the Panel apparently relied upon – was non-use without any evidence of targeting the Complainant. Accordingly, a critical UDRP element was missing here.
Moreover, the Panelist indirectly relied upon two highly distinguishable cases to support his contention that an inactive website was not a bona fide use and that by extension, it constituted bad faith registration and use. The Panelist first cited Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (an undefended case that the Panelist himself presided over in 2018), which concerned typos of the famous Morgan Stanley mark, namely morganstonley. com and morganstainley .com. The Panelist then cited 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name), when in the present case there was no offer to sell the Domain Name whatsoever.
A further issue of concern arises in connection with the chronology of this case. The Complainant relied upon its USPTO registration dated, October 26, 2021 (the “Trademark Registration”). Such a recent date of Trademark Registration would have immediately alerted the Panel that the registration of the disputed domain name may have predated the Complainant’s enforceable trademark rights, thereby precluding a finding of bad faith registration. The Trademark Registration did however, claim a date of first use of August, 2007. Even taking that date at face value (i.e. without requiring or looking at any evidence demonstrating use commencing as of this earlier date), the date appears to be well after the Creation Date of the Domain Name, which was October 31, 2002. The Panel acknowledged in the decision that it had before it the Whois information furnished to the Forum by the registrar. If the furnished Whois information did not include the Creation Date, that would have been available to the Panel by reviewing the Whois database pursuant to the Panel’s right to conduct limited independent research – particularly in the absence of a Response and in the absence of a Complainant providing basic facts.
It is unclear whether the Complainant provided any evidence of the actual registration date for the Domain Name. There is no mention at all in the decision of the date that the Domain Name was registered, and the Respondent defaulted. But what evidence did the Panel have to implicitly determine that the Domain Name was registered after the 2021 Trademark Registration? Apparently, none. The Panel appears to have assumed that the Domain Name was registered after the Trademark Registration in 2021, because there is no mention in the decision of any pre-existing common law trademark rights arising since the date of first claimed use in 2007. In the absence of a Response, was the Panelist entitled to assume that the Domain Name registration post-dated the recent 2021 trademark registration? That is a rather large assumption to make. The Panel could have made further inquiries of the Complainant in this regard or undertaken some limited research of its own. But perhaps the assumption was satisfactory considering that it is ultimately up to the Respondent to defend its Domain Name and the Respondent defaulted.
Interestingly, just weeks ago the very same Respondent won an undefended case involving the domain name, McCoy. com. In that case, the Panelist, Adam Taylor, stated that since “the Complainant provide[d] no evidence of a later acquisition date, and the Panel must therefore proceed on the basis that the Respondent acquired the disputed domain name on the creation date shown in the Whois, and held that since “the Complainant and its rights did not exist in 2001, the disputed domain name could not have been registered in bad faith at that time”. Mr. Taylor also noted that, “the principle of passive holding [isn’t] relevant in this situation as this involves an assessment of whether the totality of the circumstances indicate that a passively-held domain name was registered to target the complainant. Lastly, Mr. Taylor noted that “even if there had been evidence that the Respondent had registered the disputed domain name after the Complainant had acquired trade mark rights, this would not have been a straightforward case for the Complainant, notwithstanding the Respondent’s default and negative UDRP history, given the fact, unacknowledged by the Complainant, that “McCoy” is a common surname, as well as the lack of any evidence of reputation on the part of the Complainant or of use by the Respondent in connection with the Complainant’s industry”. Clearly the Panelist in the McCoy case was alert to all of the important concerns discussed above in relation to the present Lionshead case.
Ultimately, having regard to all of the circumstances, it certainly appears that the Complainant realized a windfall in obtaining an unjustified transfer of the Domain Name. One wonders about the many other companies whose brand is LIONSHEAD or LION’S HEAD and what they might think about this decision, given that there was no targeting of this particular Complainant and these other LIONSHEAD companies would presumably be equally entitled to and desirous of obtaining rights to the lionshead.com domain name. If the Complaint had been defended or if the Panel had approached the case similarly to the Panelist in the McCoy case, the outcome would likely have been very different. The fact that the Complainant won this valuable Domain Name despite the serious weaknesses and concerns outlined above demonstrates in the words of Domain Name Wire, “why companies file UDRP cases they probably shouldn’t”.