Complainant Attempts to “Monopolize” Common Indian Term
Under the first part of the test, the Panelist quite rightly denied confusing similarity despite the fact that both the Complainant’s mark and the disputed Domain Name contained the word, “jodi”. As the Panelist inter alia pointed out, not only were the marks not confusingly similar in a side-by-side comparison, but since the Complainant had no independent right to the common word, “jodi”, the Complainant could not claim a trademark right in this word alone. (Continue reading here)
NOTE: WE ARE TAKING A SHORT BREAK FOR THE HOLIDAYS! THIS WILL BE OUR LAST DIGEST OF 2023. WE WILL RETURN IN THE NEW YEAR!
We hope you will enjoy this edition of the Digest (vol. 3.49), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Complainant Attempts to “Monopolize” Common Indian Term (jodii .com *with commentary)
‣ Complainant Claims Extortion by Former Employee over Descriptive Domain Name (glassesshop .com *with commentary)
‣ Complainant’s Sunny Claim of Common Law Trademark Rights (floridasunweddings .com *with commentary)
‣ Panel Notes it is Ill-Equipped to Judge Domain Name Pricing (travelx .net *with commentary)
‣ Panelist Takes Restrained and Nuanced Approach in Denying Complaint (granitegearlab .com *with commentary)
‣ Infringement Claim Not Subject to UDRP (xstericlean .com)
Complainant Attempts to “Monopolize” Common Indian Term
Luxury India Solutions PVT. LTD. v. Domain Admin, Matrimony .com Limited, WIPO Case No. D2023-3976>
<jodii . com>
Panelist: Ms. Shwetasree Majumder
Brief Facts: The Complainant is in the business of providing matrimonial and match-making services in India. The Complainant’s trademark JODISEARCH .COM has been registered since December 1, 2014 in India. The disputed Domain Name was registered on July 24, 2010. The Respondent has been in the business of providing matrimonial services in India since 1999, while it launched a new product, “JODII” in the year 2021. The Respondent has filed Indian trademark applications for its JODII marks, all of which have been opposed by the Complainant. It is common knowledge and also a non-contested fact that in regional languages of India, the term “jodi” means a couple, pair or a partnership.
The Complainant alleges that the Respondent registered the disputed Domain Name with the motive to deceive the general public into believing that they are somehow associated, connected with or endorsed by the Complainant and to ride upon the goodwill and reputation associated with the Complainant. The Complainant requests that the Panel find that the disputed Domain Name is confusingly similar to its mark JODISEARCH MATRIMONIAL. The Respondent contends that the Complainant’s registrations are for the mark JODISEARCH .COM as a whole but the Complainant has attempted to make out a case as though it has obtained registration for the word “jodi” per se. The Complainant’s mark JODISEARCH .COM is not even remotely similar to the disputed Domain Name.
Before filing the Complaint, the Complainant had sent a notice to the Respondent to cease and desist from using the mark JODII and also its website “jodii .com”. The Respondent in its reply, had refused to comply with the Complainant’s demands.
Held: In the present case, there is no doubt that the Complainant has trademark rights in the mark JODISEARCH .COM, however it has no independent trademark rights over “jodi”. The Panel finds it difficult to agree with the Complainant’s contention that the disputed Domain Name is identical or confusingly similar to JODISEARCH .COM. It is clear that JODISEARCH .COM is not entirely subsumed in the disputed Domain Name. Also, the mark JODISEARCH .COM cannot be said to be recognizable in the disputed Domain Name. More importantly, the only common element between the disputed Domain Name and the mark is the term “jodi”, which is a dictionary word. This fact is admitted by both parties. Hence, the Panel is of the view that the term “jodi” cannot be treated as a dominant part of JODISEARCH .COM which is recognizable in the disputed Domain Name.
Further, the Complainant has failed to meet the standing requirement that it has rights in the mark JODISEARCH MATRIMONIAL. Firstly, the Complainant does not have any pending applications or registrations for this mark. Secondly, the Complainant has made conclusory allegations of having unregistered or common law rights in JODISEARCH MATRIMONIAL but has failed to substantiate it with specific evidence. Even assuming that the Complainant was able to establish unregistered rights in JODISEARCH MATRIMONIAL, the disputed Domain Name cannot be considered as identical or confusingly similar to this mark either. In view of the above, the Panel concludes that the Complainant has failed to satisfy paragraph 4(a)(i) of the Policy.
RDNH: The Panel concludes that the Complainant’s actions constitute Reverse Domain Name Hijacking. The Complainant, which is represented by counsel, should have appreciated the weakness of its case and the admitted fact that the term “jodi” which is the only common element in the disputed Domain Name and its mark JODISEARCH .COM, is a generic term. Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, past panels have held that a represented complainant should be held to a higher standard. The Complainant knew or should have known that the Respondent was not acting in bad faith, given the fact that registration of the disputed Domain Name was well before the Complainant acquired trademark rights.
The Complainant rather had clear knowledge of the Respondent’s rights or legitimate interests in the disputed Domain Name. By way of a letter dated May 25, 2023, the Respondent had drawn the Complainant’s attention to an Indian Court order, wherein the court ruled in the Respondent’s favour and held that the Plaintiff is entitled to protect the composite mark being JODI365 but not the element “Jodi”. The Complainant chose to ignore/ sidestep this judicial precedent which at its core upholds the Respondent’s rights and interests under its business website “jodii .com”.
Complaint Denied (RDNH)
Complainants’ Counsel: Ravi Verma, India
Respondents’ Counsel: KRIA Law, India
Case Comment by ICA General Counsel, Zak Muscovitch and Editor-in-Chief, Ankur Raheja: It is with great pleasure that our comment on this case is that the Panelist handled it perfectly. Under the first part of the test, the Panelist quite rightly denied confusing similarity despite the fact that both the Complainant’s mark and the disputed Domain Name contained the word, “jodi”. As the Panelist inter alia pointed out, not only were the marks not confusingly similar in a side by side comparison, but that since the Complainant had no independent right to the common word, “jodi”, the Complainant could not claim a trademark right in this word alone.
A good recital of the law in connection with this issue may be found in One.com Group AB v. Stan N [CAC Case No 103567; <0ne.com>]:
“No-one can own a number or dictionary word to the exclusion of the rest of the world. They are inherently lacking in the distinctiveness required for trade mark law. Trade marks are badges of origin that enable the public to identify the goods and services of a trader so they can make a repeat purchase safe in the knowledge that the quality should be the same the second time around. An ordinary word or number cannot function in that way for obvious reasons. That is, unless they have what we call “acquired distinctiveness” or secondary meaning so that they are so famous that it is the brand that the relevant public bring to mind and not the dictionary term. That is not easily possible with a number or a common word – so that in their original meaning, they remain the property of and available to, all. This forms the basis of the prohibition on descriptive and generic marks which recognises that many traders want to use descriptive terms for their informational values and that no one trader should be able to monopolise them. Those selecting such terms as marks have to tolerate confusion and the Policy reflects this by protecting such as fair or legitimate use.”
The Panel also to its credit, considered and declared Reverse Domain Name Hijacking, noting inter alia that Rule 15 requires the Panelist so declare if it is found to have occurred. Here, we see yet another unfortunate example of a Complainant abusing the UDRP in an attempt to deprive a Respondent of its lawful registered domain name. Panels must continue to declare RDNH where warranted to serve as a deterrent as the Panelist did in this case.
Complainant Claims Extortion by Former Employee over Descriptive Domain Name
Four E, LLC v. bin qin / submit11, NAF Claim Number: FA2311002070278
<glassesshop .com>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant and its predecessors in title have since 2008 operated an online eyewear store from the Complainant’s Website located at the disputed Domain Name. The Complainant asserts rights in the GLASSESSHOP mark based upon its application for registration with the USPTO and under common law through its use in commerce since 2008. The Complainant alleges that the Respondent provided web administration services to the Complainant and in that role transferred the Domain Name to itself… the Respondent is now working with a rogue former employee of the Complainant to blackmail the Complainant in exchange for reinstating the Complainant’s access to the Domain Name and the Complainant’s Website.
Specifically, the Respondent seeks the transfer of large sums of money, initially USD $150,000 and then USD $410,000 in exchange for returning control of the Domain Name and threatens to disrupt access to the Complainant’s Website located at the Domain Name. The Complainant further alleges that this conduct amounts to unlawful leveraging of the Domain Name in an attempt to extort over USD $500,000 from the Complainant. The Respondent failed to submit a formal Response in this proceeding. Under Additional Submission, the Complainant further submits that “it has now obtained a court order restraining the Respondent from any action to interfere with, shut down access to or transfer the Domain Name to a third party. The Respondent is in breach of the court order and has now shut down the Complainant’s Website until its payment demands are satisfied.”
Held: Notwithstanding the fairly descriptive nature of the mark, the Panel is satisfied from the evidence in the Complaint as to length and manner of use as well as evidence of reputation in the market that the Complainant’s use of the GLASSESSHOP mark for online eyewear retail is sufficient to establish secondary meaning in that mark and hence the Complainant has common law rights in the GLASSESSHOP mark for the purposes of Policy. Further, in the absence of a Response, the Panel accepts the Complainant’s version of events, namely that the Respondent has provided web administration services for the Complainant and as part of a scheme the Respondent has hijacked the Domain Name and is seeking to blackmail the Complainant. Presently, the Domain Name no longer resolves to the Complainant’s Website and is inactive. This conduct does not give the Respondent rights or legitimate interests in the disputed Domain Name.
The disputed Domain Name was registered in 2005 by the Complainant however after 2017, the Respondent transferred the Domain Name, without authorization, to itself. The Respondent did so knowing the Complainant’s use of the Domain Name for the Complainant’s Website and its rights in the GLASSESSHOP mark. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under the Policy. The Panel further finds that the Respondent’s present use of the Domain Name is in bad faith as well. The Panel accepts the Complainant’s uncontested evidence that the Respondent seeks the payment of nearly USD $600,000 in exchange for transferring the Domain Name back to the Complainant, and in the meantime, to blackmail the Complainant into making payment, is cutting off access to the Complainant’s Website. The Panel finds that the Respondent’s actions amount to the use of the Domain Name in bad faith, since in exchange for the transfer of the Domain Name, the Respondent seeks valuable consideration, well in excess of the Respondent’s documented out-of-pocket costs relating to the Domain Name.
Transfer
Complainants’ Counsel: Carrie A. Johnson of Eastman & Smith Ltd., Ohio, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: On first blush, one notices that the disputed Domain Name is clearly descriptive and as such would not normally be the subject of trademark rights. But then one sees the particular circumstances of the case wherein the domain name was alleged to have been stolen and used for an extortion scheme by a former employee along with the current registrant. In such circumstances one cannot help but be sympathetic to the Complainant and be inclined to provide the Complainant with its requested remedy of transfer pursuant to the UDRP.
The Panelist in this case was dutifully conscientious of the difficulty in doing so however, since the Complainant had no registered trademark right and only a pending USPTO application. That left only the possibility of common law trademark rights. Proving common law trademark rights in a clearly descriptive term is notoriously difficult as mere longevity of use, sales volumes, customer volumes, and visitors and followers may not be sufficient to imbue a descriptive term with a secondary meaning such that it is associated with a particular trader. Indeed, as I have written about previously (See Volume 3.9, for example), the burden of proof for acquired distinctiveness increases in direct ratio to the degree in which a word or words, is in common use as a descriptor of an article of trade or laudatory thereof. Here, there would need to be considerable evidence demonstrating that GlassesShop.com was not a descriptive term but rather in the minds of the consumer, meant the Complainant (see the ICA’s statement on the Booking.com case).
In the present case, the Panelist evaluated the considerable evidence of the Complainant’s longstanding use of the descriptive term and found that it was sufficient to establish a secondary meaning. When it comes to descriptive terms, substantially more is required to prove secondary meaning than with a non-descriptive term. Problematic findings of common law rights in descriptive terms were discussed in relation to BaseballCoachTraining .com in Volume 2.44 and in TampaWaterTaxi .com in Volume 2.31. I doubt that in the context of a case with less sympathetic circumstances, that the Panel would have come to the same conclusion, possibly lending credence to the saying that ‘bad facts make bad law’.
There is nevertheless an argument that in the context of the UDRP, its OK to lower the usual threshold found in trademark law for secondary meaning in descriptive terms. I don’t think that’s the case however since from the very beginning, the UDRP was not intended to “create new rights of intellectual property, nor accord greater protection to intellectual property in cyberspace than that which exists elsewhere”. There is also the argument that given the particular circumstances of a clear case of alleged conversion of the Domain Name, that the UDRP should be responsive in providing an appropriate remedy. With this too, I disagree in the sense that there is a definite need for an ICANN ADR program to address domain name theft, but the UDRP is not such a program, save and except where a Complainant inter alia has a trademark. Lastly, there is the argument that taking a liberal view of the threshold to demonstrate common law trademark rights was appropriate in this particular case due to the circumstances. With this, I do have some sympathy and I can see and appreciate why the Panel appeared so inclined in this case, but nevertheless it is a quagmire to wade into as demonstrated by the fact that on the very same day as the decision was issued, the USPTO issued a refusal for the Complainant’s application:
“Refusal – Mark is Merely Descriptive of Services Registration is refused because the applied-for mark merely describes a feature of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). The applicant is seeking the registration of GLASSESSHOP for “on-line retail store featuring eyeglasses and related optical goods used in conjunction therewith or complementary thereto.” As shown by the attached definitions from Collinsdictionary.com, the term GLASSES is synonymous with “eyeglasses” and the term SHOP is synonymous with “store,” making it at least descriptive of the subject matter and nature of the services. For the foregoing reasons, registration on the Principle Register is refused.”
That being the case, the USPTO still afforded the Complainant the opportunity to perhaps claim acquired distinctiveness, but I suspect that will be a challenging prospect. If the Complainant succeeds, that could support the Panel’s similar finding but if the Complainant fails, it will leave a significant and undesirable discrepancy with the way the Complainant’s trademark claims were treated by the USPTO and the UDRP, respectively.
Complainant’s Sunny Claim of Common Law Trademark Rights
Sun Weddings, LLC v. Sunan Kalisongo, NAF Claim Number: FA2311002070389
<floridasunweddings .com>
Panelist: Mr. Richard Hill
Brief Facts: Since 1997, the Founder and Manager of the Complainant, has been planning destination weddings in Florida under the SUN WEDDINGS trademark. The Complainant registered the disputed Domain Name back in May 2003 and used it ever since to market its beach wedding services. In 2015, the Complainant started using the FLORIDA SUN WEDDINGS trademark and has used it consistently ever since, in connection with thousands of weddings. Starting with the launch of the website at the disputed Domain Name twenty (20) years ago, prospective brides and grooms learned of Complainant’s services by visiting the site at the disputed Domain Name – this inexplicably ended when the disputed domain was transferred from the Complainant’s GoDaddy account on October 5, 2023, without the Complainant’s authorization, and sold on Afternic.
Despite renewing the disputed Domain Name with GoDaddy in May 2023 for two years, the Complainant’s domain name was hijacked and auctioned for $300, with GoDaddy refusing to prevent the fraudulent transfer. The disputed Domain Name is now being used to host a foreign-language gambling site, which has nothing to do with destination weddings in Florida. The Complainant has no idea how its GoDaddy account was compromised, and who is responsible for the hijacking of the disputed Domain Name. The Complainant never received notification from GoDaddy that the disputed Domain Name was either being listed for sale, sold, or transferred. All of the Complainant’s efforts to fix this matter directly with GoDaddy failed. The Complainant claims common law rights in the mark FLORIDA SUN WEDDINGS dating back to 2015. The Respondent failed to submit a response.
Held: The Complainant registered the disputed Domain Name in 2003, and used it to market its wedding services well before the registration of the disputed Domain Name. The Complainant presents evidence showing that it used its FLORIDA SUN WEDDINGS mark in various promotional and advertising materials, obtaining customer and media recognition. Therefore, the Panel finds that the Complainant established common law rights in its FLORIDA SUN WEDDINGS mark, with rights predating the Respondent’s registration of the disputed Domain Name. Further, the disputed Domain Name resolves to a website that offers gambling services. Previous Panels have found that this is not a bona fide or legitimate non-commercial or fair use of a disputed Domain Name.
The Respondent has not presented any plausible explanation for its use of the Complainant’s mark. Per paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when registering the disputed Domain Name. Further, the Complainant provides evidence showing that the disputed Domain Name was hijacked: its registration had been renewed by the Complainant, but GoDaddy inexplicably transferred it to the Respondent. Hijacking a domain name is an instance of bad faith registration and use under the Policy. Further the disputed Domain Name resolves to a website that offers gambling services and the WHOIS information for the disputed Domain Name is false. This too is evidence of bad faith registration and use under the Policy.
Transfer
Complainants’ Counsel: Roberto Ledesma of Lewis & Lin, LLC, New York, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: In contrast to “GlassesShop” which is a clearly descriptive term and as such tends to require more than the usual evidence of common law rights (as discussed above), FLORIDA SUN WEDDINGS is not clearly descriptive although arguably a highly suggestive and therefore the usual threshold for proving common law trademark rights was properly applied in this case by the Panelist. That being said, the UDRP is inadequate for helping Complainants who have had their domain name stolen absent the Complainant having a trademark right, and ICANN should create a new system specifically for domain name theft cases so as to provide a transfer remedy where no Complainant trademark right exists.
Panel Notes it is Ill-Equipped to Judge Domain Name Pricing
Travellers Exchange Corporation Limited v. Erol Basar, WIPO Case No. D2023-4023
<travelx .net>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is part of the Travelex group of companies, which operates a foreign exchange business in 60 countries, with over 1,000 retail stores and over 900 ATMs. The group has operated since 1976 and provided services to 39 million customers globally in 2019. The Complainant holds trademark registrations for TRAVELEX in multiple jurisdictions, including the UK (1991), the US (1992) and Türkiye (2009). The Complainant has widely advertised its goods and services under the TRAVELEX mark throughout the world, including to the public through print media, billboards, television, and on the Internet. An affiliate of the Complainant registered the domain name <travelex .com> on March 9, 1996, which the Complainant now uses to redirect to <travelex .co .uk> that resolves to its main website. That website prominently displays the TRAVELEX mark, offers currency for sale, including Turkish lira, and provides links to the Complainant’s international websites. The Respondent is an information technology professional and domain name investor based in Istanbul, Türkiye. He registered the disputed Domain Name on April 13, 2023, for the sum of USD $28. The disputed Domain Name resolves to a webpage hosted by a domain name broker that offers the disputed Domain Name for sale. Internet users can “buy now” for USD $99,999 or make an offer.
The Complainant alleges that it is implausible that the Respondent was unaware of the TRAVELEX mark by virtue of its global use and well-known status, as determined by previous UDRP panels and that the Respondent seeks to use the disputed Domain Name’s connection with the TRAVELEX brand as a means of enticing a sale, either to the Complainant or to a competitor of the Complainant… the price is so high as to indicate that the Respondent is seeking to benefit materially from any such sale. The Respondent contends that the disputed Domain Name implies travel to an unknown destination and is commonly used by travel businesses globally, while the Complainant did not deliberately elaborate as to how was it possible for the Turkish Respondent to have known of the TRAVELEX trademark. The Respondent further contends that the business of domain name investment gives rise to rights or legitimate interests as a bona fide offering of goods or services for the purposes of the Policy and the general offer to sell the disputed Domain Name and the price demanded by the registrant does not help the Complainant’s case.
Held: It is agreed that the Respondent registered the disputed Domain Name for the purpose of offering it for sale at a profit. However, it is well settled that the registration of a domain name in order to sell it to a third party is not a violation per se of the Policy, provided that the Respondent is not seeking to capitalize on the goodwill created by the trademark owner. The disputed Domain Name was registered in 2023, years after the registration of the Complainant’s TRAVELEX mark, including in Türkiye, where the Respondent is based. The Complainant asserts that the first natural result for a Google search of the term “travelex” is the TRAVELEX mark. However, the Panel recalls that the disputed Domain Name omits the second “e” in the mark. On the other hand, the Respondent shows that the top results of his Google search for “travelx” (the term that he registered) carried out in Türkiye (where he is based) relate to “TravelX”. The evidence also shows that the Complainant’s website appears only once in the top five pages of search results for “travelx”. The evidence further demonstrates that “TravelX” is a name used by various businesses, while it does not show that “TravelX” is a descriptive term or phrase, it does show that “TravelX” is an attractive brand for businesses in the travel industry.
However, regardless of whether the Respondent, as a self-described domain name investor, knew or should have known of TRAVELEX, based on this evidence, the Panel finds it plausible that he registered the disputed Domain Name primarily with “TravelX” in mind. The Panel has taken note of the disputed Domain Name being offered for sale at much higher (USD $99,999) than its purchase price. However, the Panel is ill-equipped to judge whether the Respondent’s asking price is more likely than not to reflect the value of the disputed Domain Name to the Complainant or its competitors as a typographical error (even of a global brand). The Complainant has not, for example, presented arguments or evidence to show that it (or a competitor) has been targeted insofar as it alone would be in a position to pay the asking price (based on its turnover) versus other third parties using “travelx” (who may not be in as strong a financial position) who would be incapable of realistically paying the Respondent’s asking price. There is no evidence that the Respondent has registered or used other domain names in bad faith nor any other circumstances from which the inference might be drawn that the Respondent’s primary purpose for the disputed Domain Name was to capitalize on the goodwill created by the Complainant, to cause confusion, or to disrupt the business of the Complainant.
In these circumstances, the Panel is unable to conclude, on the balance of probabilities, that the Respondent had the Complainant’s trademark in mind, and targeted that trademark, when he registered the disputed Domain Name and offered the disputed Domain Name for sale.
Complaint Denied
Complainants’ Counsel: Deloitte LLP, United Kingdom
Respondents’ Counsel: Archer Softech, India
Case Comment by ICA General Counsel, Zak Muscovitch: It is gratifying to see that the Panel dutifully acknowledged both that; a) it is well settled that the registration of a domain name in order to sell it to a third party is not a violation per se of the Policy, provided that the Respondent is not seeking to capitalize on the goodwill created by the trademark owner; and b) the Panel is ill-equipped to judge whether the Respondent’s asking price is more likely than not to reflect the value of the disputed Domain Name to the Complainant or its competitors as a typographical error (even of a global brand). It is also gratifying to see that the Panel appreciated that there was a credible reason to speculate in an”X” name despite the Complainant’s trademark. A well-handled case indeed.
Panelist Takes Restrained and Nuanced Approach in Denying Complaint
Granite Gear, LLC v. Cameron Douglas, NAF Claim Number: FA2311002069170
<granitegearlab .com>
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant is an outdoor equipment company that sells outdoor products such as backpacks, pouches, packing systems, canoe gear, ropes and haul systems, tactical gear, and accessories (operates online at: <granitegear .com>). In 1986, the Complainant first used the name “GRANITE GEAR” in connection with the sale of its products. In 2005, the Complainant first used the “GRANITE GEAR” design mark in connection with the sale of its products. In 2010, the Complainant filed two applications to register “GRANITE GEAR” with the USPTO for products including backpacks, luggage, tote bags and wallets, registered on July 5, 2011. Both trademark applications disclaim any exclusive rights in “GEAR,” apart from the mark as a whole. The Respondent registered the disputed Domain Name on October 4, 2023, and it currently resolves to a landing page that says “Launching Soon,” and provides an option for users to enter an e-mail address to subscribe to updates.
The Complainant alleges that the Respondent has chosen the disputed Domain Name to “profit and trade off the reputation and goodwill” associated with the Complainant’s marks, to “cause confusion among Internet users and third parties,” and to “prevent Complainant from owning the domain name.” The Complainant further alleges that the Respondent registered and is using the disputed Domain Name in bad faith given that the disputed Domain Name does not resolve to an active website and constitutes passive holding. The Respondent provides evidence that he had made demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of laundry services. The Respondent contends that his laundry services do not overlap with the goods and services offered by the Complainant and that he formulated the business name “Granite Gear Lab” and website independent of any knowledge of the Complainant.
Held: The Respondent has come forward with evidence that he made demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of laundry services before notice of the dispute. Although the documentary evidence is limited, the Respondent has certified the truthfulness of his claim that he intends to use the disputed Domain Name for a laundry service, and the evidence, the Respondent has submitted corroborates that claim. In the absence of evidence from the Complainant challenging the accuracy of these assertions, the Panel finds that the Complainant has failed to establish that the Respondent has not made demonstrable preparations to use the disputed Domain Name. The Panel has considered whether Respondent’s use of the disputed Domain Name for a proposed laundry service necessarily infringes the Complainant’s trademark rights, which would take it outside of being a bona fide offering. On the record presented, the Complainant has not established by a preponderance of the evidence that the Respondent’s use of the disputed Domain Name is likely to constitute trademark infringement. That said, nothing in this decision is intended to prevent the Complainant from asserting claims for trademark infringement in a court of law, nor is this decision intended to prevent the Complainant from filing a new UDRP complaint if the Respondent changes the nature of his planned use or fails to execute on the planned use within a reasonable period.
Further, the Complainant may be well known in the outdoor equipment industry, and its accolades in that market are impressive, the Complainant has not adduced evidence to prove that its reputation likely extends beyond the outdoor equipment industry such that parties like Respondent would necessarily be aware of the Complainant and its trademarks. The Respondent’s conduct constitutes “passive holding,” which supports a finding of bad faith use. To assess whether passive holding can give rise to a finding of bad faith, panels generally consider a totality of circumstances, as provided in WIPO Overview 3.0, section 3.3. Although the Complainant and its marks have gained recognition in the outdoor equipment industry, the Complainant has not submitted evidence that could establish that it is a famous, household name. Factors (ii), (iii), and (iv) similarly counsel against a finding of passive holding. In sum, although a more robust discovery process might shed light on the sufficiency of the Complainant’s allegations and the Respondent’s business plans, the Panel finds, on the record before it, that the Complainant has failed to establish that the Respondent registered and used the disputed Domain Name in bad faith.
Complaint Denied
Complainants’ Counsel: McDermott Will & Emery LLP, Illinois, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This is a very interesting case and a great example of how a Panelist employed a restrained approach and recognized the limitations of the UDRP. I suspect that many Panelists would have ordered a transfer in this case because they found it unbelievable that the Respondent registered the disputed Domain Name for a purported future laundry service which just so happened to correspond to a rather unique combination of words, GRANITE GEAR. The Panelist however, noted that the Respondent had provided evidence of demonstrable preparations to use the Domain Name in connection with a bona fide offering of laundry services. The UDRP at Paragraph 4(c)(i) clearly states that if the Respondent demonstrably prepared to use the Domain Name prior to notice of dispute, that the Respondent “shall” have demonstrated its rights and legitimate interests. This precise language of the Policy commands the Panel to adhere to it and as such, despite what the Panelist acknowledged was a “rather thin” record, it was nonetheless certified as true and the Complainant failed to prove otherwise.
The Panel also noted that in the absence of discovery and live testimony, it is difficulty to second guess the credibility of the Respondent’s assertion. This is in marked contrast to how other Panelists may have made a credibility determination based upon the allegations and facts alone.
Lastly, it is interesting how an infringement analysis came into play here. The Panelist noted that for laundry services, it was not an obvious case of infringement. If it had been, that could have helped the Complainant make the case that the Respondent’s intended use was not “bona fide”.
Ultimately, the Panel appears to have given the Respondent the benefit of the doubt here since the Complainant did not sufficiently prove its case, noting that the burden of proof always remains on the Complainant.
This case is instructive for Panelists and counsel in that is a good example of a Panelist recognizing the limitations of the UDRP procedure and in the absence of a Complainant clearly proving its case, allowing the status quo to remain, which is a suitably restrained and prudent course of action.
Infringement Claim Not Subject to UDRP
Steri-Clean, Inc. v. Jeffrey Dabdoub / Florida Property care llc, NAF Claim Number: FA2311002069041
<xstericlean .com>
Panelist: Mr. Jeffrey J. Neuman
Brief Facts: The Complainant provides comprehensive cleaning and decontamination services, with a focus on helping clients recover from traumatic events. The Complainant is online at <steri-clean .com> since 2006. The Complainant has trademark rights in the mark “STERI-CLEAN” through its registration of the mark with the USPTO (2012), claiming use since 1995. The Respondent registered the disputed Domain Name <xstericlean .com> on June 13, 2023, and currently points to a GoDaddy Parking Page. The Complainant alleges that the Respondent registered the disputed Domain Name containing the Complainant’s marks to deceive consumers into believing it is the Complainant’s Website and to profit off of the trademarks using pay-per-click links on the disputed Domain Name.
The Respondent is the owner of a business XSTERICLEAN LLC, registered on June 4, 2020 in the state of Florida. The Respondent contends that there are fixed assets, a bank account and phone numbers used for the Respondent’s corporation which bear the Identical name of the disputed Domain Name. The Respondent further contends that the term STERICLEAN is derived from the words “Sterile” and “Clean” and these terms are “not able to be trademarked by anyone including the Complainant” and that it does not profit off of the pay-per-click ads generated by the Registrar’s parking page.
Held: Although there is little information given by the Respondent about the business that it conducts under the XSTERICLEAN name, it has provided credible evidence that it formed a Limited Liability Company in 2020 in the State of Florida which bears the XSTERICLEAN name. Further, it appears that the “pay-per-click” ads contained on the website were generated by the domain name Registrar from which the Domain Name was purchased. See State Farm Mutual Automobile Insurance Company v. Robert Goldman / A4M, FA 2003300 (Forum Sept. 13, 2022), wherein the Complainant did meet its burden in establishing that the Respondent lacked rights or legitimate interests to the disputed Domain Name because unlike here, there was no affirmative evidence proffered by the Respondent that would demonstrate it had legitimate rights.
Here the Respondent does provide affirmative evidence of its use of the XSTERICLEAN name, and that evidence has not been disputed or contested by the Complainant. For the reasons above, the Panel finds that the Complainant has not met its burden to establish that the Respondent does not have rights or legitimate interests in the Domain Name. Finally, the Panel notes that the finding here that the Complainant has failed to establish all three elements of the policy does not in any way imply that the Respondent is or is not potentially infringing on the rights of the Complainant. The evidentiary and legal issues that are required to make a finding of infringement are not appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools.
Complaint Denied
Complainants’ Counsel: Sophie Edbrooke of Gerben Perrott PLLC, USA
Respondents’ Counsel: Self-represented