Complainant Stumbles on Creation Date vs. Registration Date, and RDNH Found
This was tough luck for the Complainant but as the Panel noted, “the Complainant has not attempted to deal with the basic problem that the disputed Domain Name was first registered some three years before the Complainant was founded”. The Domain Name was created in 1995 – before the Complainant was founded – and apparently there was no effort by the Complainant to address, let alone prove, that the Respondent was not the original registrant in 1995 but had later become the registrant… continue reading
We hope you will enjoy this edition of the Digest (vol. 4.16), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Complainant Stumbles on Creation Date vs. Registration Date, and RDNH Found (lifeware .com *with commentary)
‣ Gauging Alleged Common Law Trademark Rights in Descriptive / Generic Terms (graingauge .com and graingauge .net *with commentary)
‣ Did the Respondent Have Rights or Legitimate Interest in Because .com? (because .com *with commentary)
‣ ‘Global Celery Juice Movement’ Domain Name Transferred (medicalmedium .store *with commentary)
‣ Competing Interests of Respective Branding Agencies Results in Dismissal (nomenagency .com *with commentary)
‣ Was Four-Letter .INFO Targeting the Complainant? (snet .info *with commentary)
Complainant Stumbles on Creation Date vs. Registration Date, and RDNH Found
Lifeware SA v. Chris Smith, WIPO Case No. D2024-0556
<lifeware .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Swiss Complainant, incorporated in 1998, has been providing computer software to provide a complete, fully integrated, web-based solution for the management of life insurance products. In addition to the domain name <lifeware .ch> which it registered in 1998, the Complainant has registered several other domain names in ccTLDs. Each of these domain names redirects to the Complainant’s main website at <lifeware .ch>. The Complainant is the owner of the two Swiss trademarks, registered on February 23, 2000, and August 22, 2023, respectively and has a trademark application pending before the European Union, which was filed on August 22, 2023. The disputed Domain Name was registered on July 23, 1995, and has over time resolved a variety of different web pages, currently the disputed Domain Name resolved to a Runtime Error page.
In 1995, the website captured by the Wayback Machine involved “Lifestyle Software and Sacis” promoting the sale of electronic titles such as Betty Crocker’s “New Choices Cookbook”. In December 2000, resolved to a website showing unreadable content and broken links; in June 2004, resolved to a simple landing page displaying “LIFEWARE | TEK”; in 2008 and 2010, resolved to a broken landing page; in 2012, resolved to a page showing an HTTP Error 404; in 2014 and 2017, resolved to a page titled “Lifeware” with a promotional link to “Cortana – a glimpse into the future of artificial intelligence”, and a statement “It seems we can’t find what you are looking for. Perhaps searching can help” then showing a search bar; in 2019 and 2021, resolved to page “My site is launching soon”; and there were no captures by the Wayback Machine in 2022.
Held: In the present case, the evidence shows that the disputed Domain Name was registered in 1995 some three years before the Complainant was incorporated and started carrying on business. Given the length of time, the disputed Domain Name was registered before the founding of the Complainant, there does not appear to be any basis to infer that the original registrant registered the disputed Domain Name to take advantage of the Complainant’s plans to start a business under the LIFEWARE trademark, see WIPO Overview 3.0, section 3.8.1 and 3.8.2.
The changing history of the use, or non-use, of the disputed Domain Name revealed by the Wayback Machine extracts included in the Complaint suggest that there may have been changes to the registrant of the disputed Domain Name over time. That conclusion, however, is a matter of speculation. There is not sufficient evidence before the Panel to conclude that the current registrant was not the original registrant or if the Respondent was not the original registrant when the Respondent became the registrant. In these circumstances, the Panel is not prepared to find that the disputed Domain Name was registered in bad faith.
RDNH: The Complainant argued that the disputed Domain Name was registered and used in bad faith by reference to the well-known passive holding principle citing WIPO Overview 3.0, section 3.3. The Complainant further cited 12 prior decisions under the Policy in support of that proposition including Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Despite this detailed familiarity with the Policy, the Complainant has not attempted to deal with the basic problem that the disputed Domain Name was first registered some three years before the Complainant was founded.
Instead, the Complainant argued that the Respondent has no rights or legitimate interests in the disputed Domain Name and that the disputed Domain Name should be transferred to the Complainant because the Respondent is not using it. That alone is not sufficient to warrant an order of transfer under the Policy. At this stage in the life of the Policy, the Complainant should have known it needed to address the registration of the disputed Domain Name several years before the Complainant came into existence and could not simply rely on the apparent non-use of the disputed Domain Name. In these circumstances, the Panel considers a finding of reverse domain name hijacking is appropriate.
Complaint Denied (RDNH)
Complainants’ Counsel: M. ZARDI & CO. SA, Switzerland.
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
This was tough luck for the Complainant but as the Panel noted, “the Complainant has not attempted to deal with the basic problem that the disputed Domain Name was first registered some three years before the Complainant was founded”. The Domain Name was created in 1995 – before the Complainant was founded – and apparently there was no effort by the Complainant to address, let alone prove, that the Respondent was not the original registrant in 1995 but had later become the registrant.
The Complainant’s trademark rights go back to at least 2000, the year of its first registered trademark. So, if the Complainant had proven that the Respondent had registered the Domain Name subsequent to 2000, it would at least have been possible to claim bad faith registration. The Complainant however only researched the Wayback machine apparently and as the Panel noted, without more, it would be “speculation” to conclude that the Respondent was not the original registrant or, if the Respondent was not the original registrant, when the Respondent became the registrant.
The Complainant should have used the tools available such as DomainTools or DomainIQ. A search of historical Whois records appears to show that the Respondent only became the registrant in 2014 meaning that he was apparently not the original registrant in 1995. Had the Complainant obtained this crucial information, it would have improved its chances and possibly even avoided the RDNH finding, because at least then the Complainant would have addressed the registration date, which was the primary reason for finding RDNH. By obtaining and providing the change of registrant date, I only say that the Complainant could have “improved” but not necessarily succeeded in this case, because even with this knowledge at hand, there does not appear to be evidence of targeting the Complainant. A Google search and trademark search shows that there are numerous third party users of this combination of two common terms. As the Panel noted, in particular, the argument that a disputed Domain Name should be transferred to the Complainant merely because the Respondent is not using it is insufficient under the Policy. Therefore even with the change of registrant data, the Complainant likely would have lost.
Gauging Alleged Common Law Trademark Rights in Descriptive / Generic Terms
<graingauge .com> and <graingauge .net>
Panelist: Mr. David P. Miranda, Esq.
Brief Facts: The Complainant claims to be the exclusive owner of the GRAIN GAUGE and design trademark, and design for “Level gauges”, claiming a date of first use in commerce of at least as early as February 1, 2013. As part of the prosecution of the GRAIN GAUGE design mark, the Complainant’s predecessor disclaimed the words “GRAIN” and “GAUGE.” Further, on September 15, 2023, the Complainant filed an application for the GRAIN GAUGE word mark with the USPTO, which is pending registration. The Complainant claims to be the owner of prior common law trademark rights to the distinctive GRAIN GAUGE mark, based on claimed substantially exclusive and continuous use of the GRAIN GAUGE mark for over a decade. The Complainant claims that it along with its predecessor have collectively spent approximately $25,000 on advertising, marketing, and promotional efforts related to products and services under the GRAIN GAUGE mark, received media coverage.
The Complainant’s registration of the <graingauge .com> domain inadvertently lapsed in or around September 2020. The Respondent registered <graingauge .com> on or about February 8, 2023, and set up a URL redirect to reroute all traffic meant for that domain to a website on which the Respondent advertises and sells its own, competing products. The Complainant alleges that the Respondent is using the GRAIN GAUGE mark as the disputed Domain Name for commercial gain and on the resolving webpage, such as to attract those customers looking for the Complainant’s products and direct them instead to own products and the purchase of the same through a link to an Amazon listing. In direct response to Complainant’s counteroffer to cover purchase and registration costs, the Respondent represented that its “costs” associated with the Domains exceeded $25,000.
The Respondent denies the Complainant’s contentions and contends that the Complainant knowing the generic use of the term in the industry by multiple parties, has no right to the exclusive use of a generic term “grain gauge”. The Complainant used the term “grain gauge” as a noun for years before it attempted to take the Domain Name from the Respondent. The Respondent further contends that it uses the Domain Names in connection with its grain gauge business. It designed a website at <graingauge .com> to teach farmers what a grain gauge is and how it operates. It had a legitimate right to use the generic term “grain gauge” to describe its products, which are grain gauges.
Held: The Complainant must establish that it has trademark rights to the disputed Domain Name. Non-distinctive terms, words, or devices are not exclusive to a single party and are available to the “free use of the public.” (see Fabricators & Manufacturers Assn, Int’l v. Domain Admin., FA1728625 (Forum June 1, 2017) and B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Forum June 5, 2001). The disputed Domain Names comprised of descriptive or generic terms, which are not generally considered in determining confusing similarity, and cannot satisfy the confusing similarity requirements per Policy ¶ 4(a)(i). The Complainant’s trademark registration (the term “grain gauge” and design) was refused registration of the mark as displayed until the Complainant agreed to disclaim the entirety of the term “grain gauge” from the mark.
In addition to failing to establish a trademark registration for the words at issue, the Complainant failed to establish sufficient common law rights to the mark, via secondary meaning or otherwise, to the words at issue. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint. The Complainant has failed to set forth proof sufficient to establish sufficient trademark rights in “grain gauge”. The Complainant’s prior use includes “grain gauge” as a noun that is a category of products used to measure grain levels in a grain bin. The Complainant claims to have spent $25,000 in advertising but does not provide factual or legal support sufficient to establish necessary trademark rights. Thus, the Complainant has failed to establish a trademark registration for the words “Grain Gauge” and has failed to submit proof sufficient to establish common law rights to those words.
Complaint Denied
Complainants’ Counsel: Michael Gale-Butto of Winthrop & Weinstine, P.A., Minnesota, USA
Respondents’ Counsel: William Schultz of Merchant & Gould, P.C., Minnesota, USA
Case Comment by ICA General Counsel, Zak Muscovitch:
This decision is spot-on in a number of important respects.
First, the Panelist appears to have properly disregarded the Complainant’s pending trademark application. A merely pending trademark application as a mere application affords no rights until registered (See for example; Horizon Publishing, LLC v. Opulence Communications Ltd., NAF Claim Number: FA1302001487500; “it is well settled that an application, without issuance, does not establish a Complainant’s trademark rights under the Policy”).
Second, the Panelist properly took account of the fact that the Complainant’s trademark registration expressly disclaimed the words “GRAIN GAUGE”. It is unclear whether the Complainant’ counsel alerted the Panel to the disclaimer or whether it was the Respondent’s counsel. Regardless, it is an important reminder for panelists to examine the relied-upon trademark registration to ensure that it contains no disclaimers. Where a trademark registration disclaims a term, a Complainant cannot rely upon that trademark for protection of that term. Rather, the Complainant will then have to demonstrate common law trademark rights, if possible.
Third, the Panel took an appropriately circumspect and cautious appraisal of the Complainant’s claim of common law trademark rights and found them wanting. Crucially, the Panel appropriately held the Complainant to the correct threshold for proving secondary meaning in a descriptive term. Descriptive terms are capable of acquiring distinctiveness or secondary meaning, but the more descriptive the term is, the more evidence will be required to establish a secondary meaning. When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue. Here, the Panel cited Broadband Voice, LLC v. Nilay N Patel, Forum Claim Number: FA1409001582384 (November 5, 2014) for the principle that where a claimed trademark is descriptive, the burden on a UDRP complainant to show that its mark has acquired secondary meaning is great. While not impossible to show secondary meaning, the Panel appropriately found that the Complainant had failed to do so given its very limited evidence of $25,000 in advertising, and notably, given that the Complainant itself used the term as a noun for a category of products.
Panels should be wary of easily conferring common law rights upon complainants where the claimed trademark comprises what appears to be a mere common descriptive term. In such cases, the conferral of common law rights upon a merely descriptive term may serve to unjustifiably provide standing to a Complainant under the Policy when in reality the Complainant is just one of many users of a common descriptive term in the marketplace. As Lord Herschell wrote in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks, [1898] AA.C. 571 at p. 580: “The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using it for purposes of description, a word which has reference to the character of quality of the goods.”
The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.
Did the Respondent Have Rights or Legitimate Interest in Because .com?
OEE Ltd, Because Music SAS v. Matthew Klein, WIPO Case No. D2024-0709
<because .com>
Panelist: Mr. Willem J. H. Leppink (Presiding), Mr. Emmanuelle Rago and Mr. Andrew D. S. Lothian
Brief Facts: The Complainants are two related companies. The Complainant Because Music SAS is an independent music label from France, founded in 2005. The Complainant OEE Ltd. owns several trademarks in relation to the word mark BECAUSE, including the French trademark BECAUSE (word mark), applied for on September 14, 2004, and the European Union trademark BECAUSE MUSIC (word mark), applied for on September 19, 2019. The Respondent, a domain name investor, acquired the disputed Domain Name through the online platform SEDO in 2022 after the Complainant failed to renew the disputed Domain Name. The disputed Domain Name is linked to a PPC parked page and is, according to a WhoIs page provided as evidence by the Complainant, offered for sale for USD $999999.99. The Respondent has a wide portfolio of domain names and states that he began accumulating domain names related to “because” before acquiring the disputed Domain Name.
The Complainant states that the disputed Domain Name was previously owned by the Complainant who did not renew the disputed Domain Name in due course. The Complainant alleges that the disputed Domain Name was reserved in bad faith by the Respondent, to be sold to the Complainant for a financial consideration greater than the Respondent’s costs directly related to the disputed Domain Name. The Respondent contends that the mere offering for the sale of domain names consisting of dictionary words is not in itself an illegitimate activity, in the absence of targeting of a particular trademark owner. The Respondent further contends that there is no evidence that the Respondent’s primary purpose in acquiring the disputed Domain Name was driven by the Complainant’s mark or that the Respondent’s purpose was to sell the disputed Domain Name to the Complainant.
Held: The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark and thus there is no evidence that the Respondent targeted the Complainant. The Respondent has acquired the disputed Domain Name for resale on the secondary market. There is evidence that the Respondent’s primary intent in acquiring the disputed Domain Name was to sell it, in a general offer for sale, for valuable consideration in excess of its out-of-pocket costs. However, there is no evidence, or at least, there is not sufficient evidence, that the Respondent acquired the disputed Domain Name due to its value in connection with a trademark, and consequently with the intent to sell it to the Complainant or a competitor of the Complainant.
There is insufficient evidence of the fame of the Complainant’s mark, and absolutely no evidence that any such fame has displaced the dictionary word usage in the minds of the public. There is evidence of multiple other parties selecting the word or mark “because” for numerous different uses (including the Respondent in its domain name acquisitions that predate the availability of the disputed Domain Name to purchase on the secondary market). The word “because” does not uniquely or even predominantly refer to the Complainant. The Panel appreciates that it can be harsh for a domain name registrant as the Complainant to lose a domain name as a result of a non-timely renewal, but that in itself does not impact the assessment of whether the Respondent has been in bad faith when registering the disputed Domain Name.
Complaint Denied
Complainants’ Counsel: Cabinet Herrburger, France
Respondents’ Counsel: John Berryhill, Ph.d. Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch:
The Panelists made short work of this decision, but perhaps too short. The Complainant purchased an obviously common dictionary word on the secondary market from Sedo .com in 2007. The Complainant let its expiration lapse in 2021 and had purchased it also via Sedo .com. The Respondent publicly offered the Domain Name for sale as part of its inventory of domain names and had even registered other ‘because’ related domain names prior to acquiring the disputed Domain Name. The Panel found that “there is no evidence that the Respondent targeted the Complainant”. The Panel also found that the Domain Name corresponded to “such a common dictionary term” and that there was “absolutely no evidence” that any reputation of the Complainant had displaced the dictionary word usage in the minds of the public. The Panel found “evidence of multiple other parties electing the word or mark ‘because’ for numerous different uses and concluded that “the word ‘because’ does not uniquely or even predominantly refer to the Complainant”.
It sure sounds like this Complaint was doomed to fail. The Complainant had no evidence of targeting whatsoever and surely was aware of the widespread use of the exceedingly common dictionary word, “because”. Under such circumstances, one cannot help but wonder why the Panel didn’t even expressly consider RDNH.
But if RDNH was not to be expressly considered, what about the Respondent’s rights and legitimate interest? Especially on the usual standard of balance of probabilities that panels regularly apply when it comes to a Complainant’s onus, it does seem rather clear that the Respondent established that it has rights or a legitimate interest in the Domain Name. When it came to addressing this element however, the Panel stated that “in light of its assessment under 6.C., the Panel will not discuss the second element”. As I have mentioned several times in the Digest including in Digest Vol. 2.37, we too often see panels skipping a Respondent’s rights and legitimate interest. Although often done on the basis of judicial economy (as a case can be dismissed on one prong of the three-part test and therefore the decision need not address any additional, extraneous grounds), Panelists are obliged to make affirmative findings of a Respondent’s rights and legitimate interests where circumstances warrant.
The Policy itself pursuant to Paragraph 5(c), expressly enables a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):…” [emphasis added]
So, did the Respondent demonstrate that it had rights or a legitimate interest in the Domain Name as a domain name investor in a dictionary word with no intent to target the Complainant? Surely it did, especially on the balance of probabilities test, as aforementioned. It is well established that trading in domain names when done without intent to profit from other’s trademarks can in and of itself, constitute a “legitimate interest” under the Policy (see for example; Audiopoint, Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001) and also see; Havanna S.A. v. Brendhan Hight, Mdnh Inc., WIPO Case No. D2010-1652. Domain Name investing even constitutes use of the domain name in connection with a bona fide offering of goods or services, i.e. the sale of the domain name itself (see for example, Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016).
A Respondent who has had its bona fides challenged and been falsely accused of what essentially amounts to a type of fraud, aka cybersquatting, deserves the vindication and confirmation that the Policy enables, indeed requires. Judicial economy is hardly an excuse when plenty of time and effort is regularly taken to adjudge a Complainant’s rights under the Policy – particularly when a Respondent has made out its case for rights and legitimate interest. Moreover, the regularly skipping over of a Panel’s obligations to consider and find a Respondent’s rights has a deleterious effect on bona fide registrants, particularly investors who are regularly deprived of the affirmative finding of their rights that they are entitled to. The UDRP is too important a tool to permit accusations of bias to fester, particularly in light of Rule 10(b) which expressly states that “the Panel shall ensure that the Parties are treated with equality”.
‘Global Celery Juice Movement’ Domain Name Transferred
Anthony William, Inc. v. health benefit, NAF Claim Number: FA2403002090424
<medicalmedium .store>
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant is the owner of the trademark MEDICAL MEDIUM registered, inter alia, for alternative healing services in the USA since 2010. It operates online at <medicalmedium .com>. The disputed Domain Name registered in 2021 has been pointed to a site offering competing health-related services using the Complainant’s MEDICAL MEDIUM mark in its masthead. The Complainant alleges that the disputed Domain Name has been pointed to a site offering competing health-related services using the Complainant’s MEDICAL MEDIUM mark in its masthead. This is not a bona fide offering of goods or services or legitimate use. It is registration and use in opportunistic bad faith confusing Internet users for commercial gain and disrupting the Complainant’s business. The Respondent failed to submit a Response in this proceeding.
Held: The website attached to the Domain Name used the Complainant’s MEDICAL MEDIUM mark in its masthead to offer competing health-related services. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name.
The use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as the Complainant’s MEDICAL MEDIUM mark is used in the masthead of the Respondent’s web site which offers competing health-related services. The Respondent has not replied to refute the allegation that it is using the Complainant’s mark to falsely associate itself with the Complainant and take advantage of the Complainant’s goodwill and the Panel is entitled to make adverse inferences from the Respondent’s failure to respond.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website and services offered on it likely to disrupt the business of the Complainant. As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith.
Transfer
Complainants’ Counsel: Michael Oliver of Oliver & Grimsley, LLC, Maryland, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
When it comes to new gTLD domain names such as .store, a Panel must generally assume that the registrant was of course aware that the corresponding .com had been taken and therefore availed itself of the new gTLD instead. Here, although there is no reference to this reasonable, indeed obvious assumption in the decision, we must take it into account. That means that the Respondent was very likely to have been specifically aware of the Complainant’s website and domain name which existed at the .com and that it was involved in the “medically related” the promotion of the “global celery juice movement”, a movement that I had not been previously aware of.
Anyhow, the Complainant then used the version for the sale of non-prescribed pharmaceuticals, something also medically related. Of course, it is hardly surprising that a Domain Name which includes the word, “medical” is used by the Respondent for a website about something medical, but the combination of words in the Domain Name is unquestionably unusual; “medical medium” and as such, on a balance of probabilities, it appears that the Complainant was targeted by the Respondent and accordingly, the Panel’s transfer decision was justified in the circumstances even if it could have been expressed more specifically in terms of targeting and bad faith registration, as the decision seems to mainly focuses on the Respondent’s use of the Domain Name.
Competing Interests of Respective Branding Agencies Results in Dismissal
NOMEN International v. Niklas Järvikare, Proaudit Oy, WIPO Case No. D2024-0803
<nomenagency .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant is an entity based in France and asserts that it is “a well-known naming agency specialized in names creation”. The Complainant is the owner of two registered trademarks for the word mark NOMEN, namely the French Trademark, registered on April 3, 2002, and the European Union Trademark, registered on March 2, 2005. The Complainant produces a search engine result for “nomen” showing that its agency appears at the top of the listing. Neither the identity of the search engine concerned, nor the URL of the page displayed is specified. The disputed Domain Name was registered on September 14, 2023, resolves to a website titled “Nomen Agency / Maximize the Value of Your Brand’s Name”, operated from Finland and specializes in providing video and photography solutions to its clients.
The Complainant alleges that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks. The Respondent contends that it is a duly registered company in Finland named Nomen Agency Oy and that it selected the disputed Domain Name to reflect this and to establish a consistent online presence. The Respondent contends that it was unaware of the Complainant and its activities before receiving the Complaint, adding that while both the companies may be engaged in similar services, the Respondent primarily specializes in providing video and photography solutions to its clients. The Respondent further states that it is open to making necessary adjustments to the information presented regarding its services and states that it acknowledges the importance of avoiding any confusion for Internet users.
Held: The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark. The only evidence before the Panel from which such knowledge might be inferred is the Complainant’s Google search for the term “nomen”, showing the Complainant’s presence in the first two results. The remainder of the Complainant’s case is based entirely upon conclusory allegations that it or its mark is well-known, which are not supported in the record by any other evidence. The Panel is not prepared to find, on the balance of probabilities, that the Respondent had prior knowledge of and targeted the Complainant’s rights when it registered the disputed Domain Name on the strength of the Complainant’s Google search alone. Rather, there is evidence even within the search result in itself, from the third entry, that the term “nomen” has a variety of ordinary meanings such that it is not exclusively referable to the Complainant’s name or mark.
Nevertheless, the Panel’s own Google search for “nomen” (which might well be similarly localized) does not show the Complainant’s presence in the first results but considerably further down the page, after multiple dictionary definitions of the term as a German and Latin word. Further, there is no evidence before the Panel tending to suggest that the Respondent’s agency is not a genuine business but is rather a pretext for cybersquatting. The Panel is conscious of the fact that both Parties are, or claim to be, branding agencies. The Panel is aware from its knowledge that the term “nomen” is the Latin word for “name”. It would also appear to be the German word for “noun”. Given these facts, it is perhaps an apt term for a branding agency such as the Respondent’s alleged agency and is one that it might plausibly have chosen independently of any knowledge of the Complainant or its mark.
Based on the present record, the Panel considers that the Parties most likely have competing interests in the name “nomen”. The Policy is limited in scope and is designed to address cybersquatting rather than to act as a general domain name court addressing such competing interests. That said, the Panel has not overlooked the fact that the Complainant and the Respondent appear to be in a very similar, if not identical, line of business and that the Complainant is the owner of a prior registered trademark for the NOMEN mark which has effect across the European Union, including in Finland where the Respondent is based. The Panel notes that whether the Complainant could make out any case of trademark infringement against the Respondent in a competent forum is a separate inquiry outside the scope of this proceeding.
Complaint Denied
Complainants’ Counsel: Legi-Mark, France
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
This is a very well-analyzed and written decision that I urge you to enjoy reading.
Was Four-Letter .INFO Targeting the Complainant?
Banque et Caisse d’Epargne de l’Etat, Luxembourg v. yali, WIPO Case No. D2024-0983
<snet .info>
Panelist: Mr. Edoardo Fano
Brief Facts: The Complainant, a Luxembourgish company operating in the banking field and owning several trademark registrations for S-NET, a denomination used by the Complainant for its banking app, among which Benelux trademark, (registered on August 1, 1999); European Union trademark (July 1, 2012); and United Kingdom trademark (July 1, 2012). The Complainant also operates on the Internet, <bcee .snet .lu> being its official website. The Complainant claims its trademark S-NET is known in the banking field and it was ranked among the 10 safest banks in the world in 2019. The disputed Domain Name was registered on January 22, 2024, and resolves to the website <dan .com>, in which it is offered for sale for USD $300. The Complainant alleges that the Respondent has registered and is using the disputed Domain Name in bad faith since the Respondent registered the Domain Name essentially to resell it to the Complainant for a high price likely in excess of the Respondent’s costs related to the disputed Domain Name. The Respondent did not reply to the Complainant’s contentions.
Held: The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed Domain Name. The disputed Domain Name redirects to a website in which it is offered for sale for USD $300, a price more likely than not in excess of the Respondent’s costs related to the disputed Domain Name. Noting the composition of the disputed Domain Name, that the Complainant uses a domain name consisting of “snet” without the hyphen (when compared to the Complainant’s trademark) for its main website, and that the Complainant’s banking app operates under the trademark S-NET, the Panel believes that the offer for sale of the disputed Domain Name with this price would be of interest mainly to the Complainant (or by someone trying to trade off the Complainant’s trademark rights).
In the present case, regarding the registration in bad faith of the disputed Domain Name, the reputation of the Complainant’s trademark S-NET in the banking field is clearly established, and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed Domain Name in bad faith. The Panel further notes that the disputed Domain Name is also being used in bad faith, since the offer to sell the disputed Domain Name for a price of USD $300, a price which is more likely than not in excess of the Respondent’s costs related to the disputed Domain Name that the Panel believes would be of interest mainly to the Complainant, is evidence of bad faith within the meaning of paragraph 4(b)(i) of the Policy. Furthermore, the Panel considers that the nature of the inherently misleading disputed Domain Name, which includes the Complainant’s trademark in its entirety, with the mere deletion of the hyphen (in the same manner as used by the Complainant for its main website), also noting the Complainant’s use of S-NET for its banking app, further supports a finding of bad faith. WIPO Overview 3.0, section 3.2.1.
Transfer
Complainants’ Counsel: Office Freylinger S.A., Luxembourg
Respondents’ Counsel: No Response
Note: Check out Andrew Allemann’s article on this case in Domain Name Wire, here, “This SNET UDRP decision doesn’t sit right”.