Complainant’s failure to demonstrate timely trademark rights dooms complaint?
Especially because it was decided on other grounds, the dispute over <FreshKidz .com> offers an opportunity to consider the current state of classic cybersquatting in an era where domain name investors have registered millions of domain names that they believe have at least a whiff of inherent attractiveness.
We hope you will enjoy this edition of the Digest (vol. 4.11), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Complainant’s failure to demonstrate timely trademark rights dooms complaint? (freshkidz .com *with commentary)
‣ Can Doctrine of Laches Apply to a Complaint Filed After 23 Years? (katepal .com *with commentary)
‣ Unsubstantiated Arguments are Generally Rejected by the Panelist (solvaymedicals .com)
‣ A Case for Multiple Respondents (amazonbookpublications .co and 10 more)
‣ Civil Dispute, a Matter Beyond the Scope of the Policy (tsmsupply .com *with commentary)
Follow this personal ICA series on domain investing by brandable domain investor and acquisition broker Sten Lillieström, and take the opportunity to gaze into the microcosm of domain investing.
A Legitimate Question
A Legitimate Question– Mr. Sten Lillieström
No official effort to prohibit domain name investment has ever materialized in the 25 year history of the UDRP. That is a significant stamp of approval. So why does it still seem like buying and selling domain names is an illegitimate enterprise? Why are the most likely labels misnomers like “pirates”, “hi-jackers” and “squatters”? continue reading
Complainant’s failure to demonstrate timely trademark rights dooms complaint?
Fresh Brandz LLC v. Robert Wilcox / eWorldWideWeb, inc., NAF Claim Number: FA2401002078165
<freshkidz .com>
Panelists: Mr. Nick J. Gardner (Chair), The Honorable Neil Anthony Brown KC, and Ms. Sandra J. Franklin
Brief Facts: The US Complainant, incorporated on September 13, 2018, is in the business of manufacturing and selling deodorants and associated products to children and teenagers. Its principal website is at <myfreshkidz .com>. The Complainant owns registered trademark rights in the FRESH KIDZ Trademark, with first use in commerce as of December 31, 2018. The Complainant further claims to be the successor in interest to a UK company called Kind2Skin Ltd which owned the earlier FRESH KIDZ trademark (first use: 2014: cancelled: February 2022), however, it has not produced any evidence of any kind substantiating that claim or showing how it acquired any interest in the earlier FRESH KIDZ Trademark. The Respondent, a domain name investor, acquired the Domain Name at auction on March 18, 2018 and has subsequently offered the disputed Domain Name for sale.
The Respondent contends that he acquired the disputed Domain Name because of its inherent attraction as a combination of the ordinary words “fresh” and “kidz” with the latter word being a common misspelling or stylization of the word “kids”. He also adduces evidence that it owns a number of other domain names which include the word “fresh” – for example thermofresh .com; thermafresh .com; swissfresh .com; grilledfresh .com; and freshncrispy .com. It also owns one other domain name which includes the term “kidz” – wonderkidz .com. The Respondent also produces evidence to show that various other persons use the words “Fresh Kidz” in relation to activities unrelated to the Complainant’s area of business.
Held: The Complainant had no applicable rights at the date when the Respondent, in the course of its business as a domain name investor, acquired the disputed Domain Name. The Panel infers that it did so because of the inherent meaning of the words making up the disputed Domain Name, rather than for any reason relating to the Complainant. Insofar as the Complainant seeks to overcome this difficulty by claiming to be a successor in interest to the owner of the Earlier FRESH KIDZ trademark, it has entirely failed to show how (if at all) that interest or the trademark in question was transferred into its possession. The Panel also finds that even if a prima facie case has been made out, it has been rebutted by the Respondent. The Panel considers that trading in domain names which comprise ordinary English words (or variants thereof) establishes a legitimate interest, at least if done in a manner which does not seek to target a particular trademark holder. It does not matter that in the course of such trading; the domain name holder parks the domain name with a page which contains advertising links.
Registering a domain name prior to the existence of the Complainant or its trademark will not normally amount to bad faith, especially where the name in question comprises ordinary English words or common variants thereof. In the present case, the only possible reason for departing from this approach is the activities of Kind2Skin Ltd and/or the existence of the earlier FRESH KIDZ trademark. However, there is a complete absence of any evidence as to what activities that company carried out or as to how that trademark had been used or was transferred to the Complainant. The Panel concludes that it is not bad faith to register and use by offering for sale a domain name which comprises ordinary English words or common variants thereof where there is no evidence of targeting a specific trademark or its owner.
RDNH: In the present case the Panel considers that the Complainant knew or should have known that it was unlikely to be able to show the Respondent lacked a legitimate interest or had registered or used the disputed Domain Name in bad faith. In this regard, the Complainant must have known Respondent’s registration of the Domain Name predated the Complainant’s formation (a date which the Complainant failed to identify in the Complaint) and predated the claimed first use in commerce date claimed in the FRESH KIDZ Trademark application (again a date which the Complainant failed to identify in the Complaint).
To overcome this problem, the Complainant sought to rely on what it said was its predecessor in interest Kind2Skin Ltd and says it is the assignee of that company’s trademark rights in the earlier FRESH KIDZ Trademark. In doing so it was vague as to the relevant chronology but it must have been apparent to the Complainant and/or its counsel that evidentiary proof of such an assignment was required, but none was provided. The Complainant has failed to adduce any evidence at all to support its claim to be the successor in interest to Kind2Skin Ltd or its trademark, and it failed to disclose that the trademark had subsequently been cancelled for non-use. Taking all of these factors into account, the Panel finds that the Complainant’s actions amount to Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Timothy Frailly, USA
Respondents’ Counsel: Jason Schaeffer of ESQwire.com, P.C., USA
Case Comment by ICA Director and Domain Name Investor, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
Especially because it was decided on other grounds, the dispute over <FreshKidz .com> offers an opportunity to consider the current state of classic cybersquatting in an era where domain name investors have registered millions of domain names that they believe have at least a whiff of inherent attractiveness. How can it be that a domain name investor registers an exact match of a somewhat distinctive mark, as in “Fresh Kidz”, offers it for sale, and it not be an instance of cybersquatting? How can a Panelist maintain the integrity of the Policy whilst permitting a domain name investor to profit from the resale of a domain name which is the exact match of a somewhat distinctive mark?
This conundrum exposes the obsolete assumption which lies at the heart of the UDRP. The assumption is that there is a clear dividing line between good faith use and bad faith use. When the UDRP was developed, the assumption was that the world was cleanly divided into good faith actors: brand owners and others putting domain names to a legitimate good faith purpose, and bad actors: those who registered well-known marks with the sole intention of reselling them at a profit to the mark owners. It was easy to differentiate between the two.
Classic cybersquatting was a particular problem in the early days of the commercial Internet. Some Internet-savvy individuals recognized the value of domain names well before the companies themselves did. A cybersquatter would register the most desirable, intuitive domain name for an established business, usually the exact-match dot-com domain name and hold it for ransom. (An amusing and innocent example of this phenomenon is recounted in the DNJournal profile of Angie Graves. Angie, after failing to persuade her baffled father, a Coca-Cola executive, that Coca-Cola ought to register the Coca-Cola .com domain name, registered it herself and then turned it over to the company when someone there finally realized it was worth having.) Yet most such registrations were done with bad faith intent, and the UDRP was developed to provide a solution to classic cybersquatting.
As is often the case, however, by the time the solution was developed, the problem had changed. The conditions under which the UDRP was developed 25 years ago no longer exist. Start-ups now secure a matching domain name as one of their first acts. Well-known companies have long ago secured the domain names most important to them and maintain defensive portfolios of domain names that are variations on their marks, perhaps using the UDRP to do so. The formation of hundreds of thousands of new companies over the past 25 years, the essential role the Internet now plays in commerce, and a scarcity of unique, available “name spaces”, results in trademark congestion such that it is a rare company that can claim to be the sole, global, commercial user of its mark.
Further, the rise of the domain name investor has led to millions of appealing domain names being held for resale. Any domain name that a domain investor believes can appeal to a potential start-up such that it is worth the $10, or $50, or perhaps hundreds of thousands of dollars required to secure the domain name, may be speculatively registered for resale. Whether a term that matches the domain name (without the TLD) happens to be used by some company, somewhere in the world, for some commercial purpose, may not factor into the domain investor’s considerations, as the investor has identified the domain name as having an inherent appeal.
It is clear from the numbers alone that when millions of domain names have been registered speculatively, just in the dot-com TLD, that the universe of investment quality domain names has long since broken the bounds of only dictionary word or acronym domain names. We now live in a world where domain name investors are registering domain names like MONVY .com and QEIDO .com (see Smells Like Cybersquatting? How the UDRP “Smell Test” Can Go Awry), and like Plasticol .com (see Zak Muscovitch’s UDRP Digest comment), and like <FreshKidz .com>, as this decision demonstrates.
Where does that leave a Panel in assessing whether a registrant is indeed a domain name investor who registered the disputed domain name innocently for its inherent appeal, or is instead a cybersquatter posing as a domain name investor that registered the domain name to target the complainant’s goodwill?
Muscovitch provided the answer in his comment:
Nevertheless, we also cannot let domain name investors surreptitiously target a fanciful brand owner and then claim that it’s a merely a coincidence. So, what’s the answer? We need to protect the fanciful brand owners and also to permit domain name investors, in good faith, to invest in fanciful domain names as permitted by trademark law.
The way to accomplish this is highlighted in this case. It is perfect example of the evidence that a domain name investor in a fanciful domain name corresponding to a pre-existing trademark can provide to substantiate that the investor registered the disputed domain name due to its inherent appeal and not to target the Complainant’s mark. Here, the Respondent dutifully laid out his criterion for selecting this particular domain name. This is key, as if credibly done it will show the Panel that there were genuine considerations and reasons that made this particular domain name attractive for registration apart from the Complainant’s mark.
In the plasticol .com dispute, the Respondent was able to show a pattern of registering common words with “ol .com” appended, such as “elasticol .com” and “focusol .com”. In the <FreshKidz .com> dispute, the Respondent was able to demonstrate a pattern of registering various domain names incorporating “Fresh” and another with “Kidz”. Here we have the benefit of the Panel’s finding that the Complainant had not provided sufficient evidence of enforceable trademark rights at the time of the registration of the FreshKidz .com domain name. This is a compelling example showing that domain name investors can and do register domain names that are well along the spectrum towards the fanciful and distinctive ends and do so for their inherent appeal and not to target existing trademark rights.
Evaluating such disputes can be quite challenging as the dissenting decision in the tanishq.com dispute demonstrates. Here the Respondent apparently was not able to demonstrate that tanishq .com matched an investment thesis and pattern of registering similar domain names. Had he been able to do so, perhaps he would have prevailed in the dispute. While less directly on point, had the Registrant in the Lambo.com dispute (which also produced a dissenting decision), who claimed to go by the nickname “Lambo”, been able to demonstrate a pattern of registering similar domain names perhaps the outcome would have been different.
Indeed, though the dispute regarding OutskirtPress.com resulted in a denial, I would not have been troubled had the Panel ordered a transfer. In this dispute the disputed domain name is quite fanciful, and it is quite a close match to the Complainant’s Outskirts Press mark, such that I believe that the Panel could make a reasonable rebuttable presumption that the Disputed Domain Name was registered in bad faith to target the Complainant’s mark. If the Respondent had replied and articulated an investment strategy and explained how OutskirtPress .com fit with that strategy and demonstrated a pattern of registering other similar domain names according to that strategy, then perhaps the Panel would have found that the rebuttable presumption had been rebutted. But the Respondent did not respond.
This review suggests that where a domain investor can articulate a coherent registration strategy and demonstrate multiple registrations according to such a strategy, this may be viewed by a panel as compelling evidence of good faith registration, even if the domain name itself is somewhat fanciful and distinctive, and even if the disputed domain name is similar to an existing registered mark. Yet in the absence of such evidence, the balance of probabilities may shift to favor the complainant.
Can Doctrine of Laches Apply to a Complaint Filed After 23 Years?
Katepal Oy v. taeho kim, Dzone Inc, WIPO Case No. D2023-5188
<katepal .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Finnish Complainant is a provider of roofing and other building materials. The Complainant is or has been the owner of trademark registrations including Finland trademark registration (registered on November 14, 1962, expired on November 14, 2002); International trademark registration designates a total of 25 countries, including the Democratic People’s Republic of Korea (registered on September 4, 2002). The Complainant also refers to the Republic of Korea trademark registration for the mark KATEPAL, registered on November 27, 1997 (expired on November 27, 2017). The trademark was registered by Young Lee Co. Ltd, which the Complainant identifies as its importer in that country. The disputed Domain Name was created on December 14, 2000.
The Complainant submits evidence obtained from <archive .org> that, as of November 23, 2002, the disputed Domain Name resolved to a website at <000sex .com>, and from November 3, 2012, onwards to have resolved to web pages indicating that the disputed Domain Name is for sale. The Complainant alleges that the disputed Domain Name has never hosted any “decent” content and that the Respondent registered the disputed Domain Name only to sell it to the relevant trademark owner. The Complainant further alleges that the Respondent has demanded USD 29,000 for the disputed Domain Name, while the Complainant wishes to use the disputed Domain Name to publish its global websites.
The Respondent contends that in 2000, while it operated a domain registration and website development company in the Republic of Korea, it registered the disputed Domain Name on behalf of “an English Teacher cum a friend” who was associated with the Korea Association of Teachers of English (“KATE”). The disputed Domain Name was intended for the purpose of a networking site for members of that association, hence the addition of the term “pal”, meaning “friend”. The Respondent adds that the evidence of this nature is “kind of impossible to retrieve” after 23 years. The Respondent contends that it never heard from the Complainant as regards the sale of the Domain Name. However, it provides evidence of an anonymous offer received in January 2023 and refers to “many [of] such offers”, which it believes were made by people having the name “Kate Pal” or similar names. The Respondent also disputes the content of the Complainant’s further submissions, stating that they are unsubstantiated and conclusory.
Held: The Respondent does not produce evidence in support of its version of events, the Panel accepts that it may be difficult for it now to do so, given the period of 23 years that has passed between its registration of the disputed Domain Name and the filing of the Complainant. While Panels under the UDRP do not generally recognize a doctrine of laches or acquiescence as such, it is generally accepted that where a complainant delays significantly in bringing a complaint, then it may be more difficult for the complainant to establish the second and third elements under the policy (see e.g., section 4.17 of WIPO Overview 3.0”). The Panel also has regard to the paucity of the Complainant’s evidence (despite the opportunity presented by Procedural Order No. 1) of its commercial activities in the Republic of Korea prior to the date of registration of the disputed Domain Name.
The disputed Domain Name is identical to the Complainant’s trademark, and there are circumstances in this case which raise serious concerns with the Panel as to the veracity of the Respondent’s version of events. The Panel also finds the initial use of the disputed Domain Name, to resolve what appears on its face to be an adult entertainment website, to raise suspicions. All of these observations having been made, the Complainant nevertheless faces an uphill task in establishing the second and third elements under the Policy after a period of over 20 years since the registration of the disputed Domain Name. In this regard, the Complainant has done itself no favours by failing, despite two opportunities, to exhibit evidence of its business in the Republic of Korea at the material time, or otherwise to demonstrate why the Respondent was more likely than not to have been aware of its trademark at the time it registered the disputed Domain Name.
While the Respondent, too, has failed to exhibit relevant evidence, it is the Respondent who must receive the benefit of the doubt in circumstances where the Complainant has not been able to produce requisite historical evidence (in part no doubt due to the lapse of time). In the circumstances, the Panel finds that the Complainant has failed to establish that the Respondent knew or ought to have known of its trademark at the time it registered the disputed Domain Name, or that it did so to target the Complainant’s trademark. Bearing the Respondent’s explanation in mind, the Complainant is therefore unable to establish, at this distance in time, that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
Complaint Denied
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Archer Softech, India
Case Comment by Newsletter Editor, Ankur Raheja: Kudos to the Panelist for a well-reasoned decision in the facts and circumstances of the case, where the Complaint was brought after 23 years of Domain Name registration. The Panelist held: “While Panels under the UDRP do not generally recognize a doctrine of laches or acquiescence as such, it is generally accepted that where a complainant delays significantly in bringing a complaint, then it may be more difficult for that complainant to establish the second and third elements under the policy (see e.g., section 4.17 of WIPO Overview 3.0).”
Basically, the Complainant could not produce relevant evidence in relation to its commercial activities in the Republic of Korea prior to the date of registration of the disputed Domain Name. On the other hand, the Respondent also expressed his inability to produce evidence from the year 2000 and argued that the evidence of this nature is “kind of impossible to retrieve” after 23 years. As a result, the Panelist gave a benefit of doubt to the Respondent and pointed out: “it is the Respondent who must receive the benefit of the doubt in circumstances where the Complainant has not been able to produce requisite historical evidence (in part no doubt due to the lapse of time)”.
The Doctrine of Laches is indeed a matter open to debate. See the related article from 2018 by ICA General Counsel, Zak Muscovitch: A Re-Examination of the Defense of Laches After 18 Years of the UDRP which raises the issues surrounding the ‘Doctrine of Laches’, because it has been mostly rejected by Panelists who claim that it is “not available” under the UDRP. Consequently, the article highlights:
“Nevertheless, after 18 years of the UDRP, laches is a defense which should be considered anew, particularly in light of the breadth of delays in bringing a UDRP complaint which could not have been a significant factor back in 1999. As the UDRP matures, it is conceivable and even likely that UDRP complaints will be in the future be brought 20, 30, and even 40 years after a domain name’s registration, and such delays could very well cause prejudice to the registrant in particular circumstances, such that the registrant by all rights should be able to rely on the defense of laches.”
The article examines laches and demonstrates that the defense of ‘Laches’ does have an important role to play in the UDRP and should, therefore, be reconsidered. Read the Complete Article here.
Unsubstantiated Arguments are Generally Rejected by the Panelist
Solvay S.A. v. Techxora IT Solutions (Techxora), CAC Case No. CAC-UDRP-106168
<solvaymedicals .com>
Panelist: Mr. Peter Müller
Brief Facts: The Complainant is a Belgian multinational chemical company founded in 1863 and headquartered in Brussels, Belgium. In 2022, it realized a turnover of 13.4 billion euros. The Complainant’s official website is available online at <solvay .com>. The Complainant is the owner of numerous trademark registrations containing the word “SOLVAY” in many jurisdictions, including UAE (dated July 22, 2015), where the Respondent is located. The disputed Domain Name was registered on October 2, 2023 and is used in connection with a website of a certain company “Solvay Medical LLC” which, according to the evidence offers a range of products covering the fields of “Cardiology”, “IVF (In Vitro Fertilization)”, “Laboratory”, “ICU (Intensive Care Unit)”, “Operating Theater” and “Medical Consumables”.
The Complainant alleges that the products and services presented on the website available at the disputed Domain Name “are all inaccurately represented”, that there is no trademark registration for “solvay medical”, and that the Respondent has created “a counterfeit website with a confusingly similar title and logo to the famous SOLVAY trademark”. The Complainant further alleges that the Respondent registered the disputed Domain Name “seeking to capitalize on the goodwill of the Complainant’s pre-existing SOLVAY mark, and recognizing the importance of the Internet as a means of communication between the Complainant and the public”, and that the disputed Domain Name “redirected to a website which title is highly similar to the Complainant official website and its logo.” The Respondent failed to file a Response in these proceedings.
Held: The Complainant argues that the domain owner, as an IT company, has no expertise in the goods and services offered under the domain name. However, the website identifies another company, Solvay Medical LLC, as the operator of the website. The Complainant does not provide any further information about this company and only alleges that it is a “fake company”. The Complainant does not provide any evidence to support this claim, or at least any research that would indicate that Solvay Medical LLC does not exist. According to the Complainant, the Respondent also uses a “confusingly similar title and logo”. Except for the fact that both pages contain the word “SOLVAY” in blue font, the Panel finds that there is no other similarity that would indicate a clear link by the Respondent to the Complainant’s website.
The Complainant has also not further substantiated its claim. In particular, the Complainant does not even claim to be active in the field of “medical supplies and equipment” or provide any evidence to this effect. It is well established that Panels are generally unwilling to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even where the respondent is in default. As a result, the Complainant has not provided valid evidence that the website is not genuine. On the other hand, the website as such makes a thoroughly credible impression. After due diligence and consideration of the facts and evidence presented, the Panel finds that the Complainant failed to establish a prima facie case that the Respondent lacks rights or legitimate interests under the Policy.
Concerning the issue of bad faith registration of the disputed Domain Name, the Panel has no evidence that the Respondent must have actually known the Complainant when registering the disputed Domain Name. The Complainant has not provided any evidence concerning the scope of its business activities, such as sales figures or advertising expenses in the United Arab Emirates, where the Respondent is located. Further, the Panel has to stress the fact that the Complainant has presented the facts of the case in an incomplete and one-sided if not misleading manner. In many instances, the Complainant makes mere allegations of what the Complainant believes to be wrongful conduct by the Respondent without attempting to substantiate those allegations or matching them with the facts of the case, even in part.
Complaint Denied
Complainants’ Counsel: Xue Li (Thomsen Trampedach GmbH)
Respondents’ Counsel: No Response
A Case for Multiple Respondents
<amazonbookpublications .co>, <amazon-directpublisher .com>, <amazonkindleofficial .com>, <amazonpublishhub .com>, <kindledirectpublish .com>, <publishonamazonnow .com>, <wepublishonamazon .com>, <amazonpublishersltd .com>, <amazonpublishingmaestro .com>, <amzpublishingmaster .com>, and <publishatamazon .com>
Panelist: Mr. Richard Hill
Preliminary Issue: Multiple Respondents: The Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. In support of this allegation it states that the named registrant for the domain names <amazonkindleofficial .com>, <amazonpublishhub .com>, <publishonamazonnow .com>, and <wepublishonamazon .com> is the same. Further, the resolving websites for the domain names <amazonbookpublications .co>, <amazon-directpublisher .com>, <amazonkindleofficial .com>, <kindledirectpublish .com> display nearly identical graphical elements. The Panel finds that the evidence presented to support the above allegations is sufficient to establish that those domain names were registered by the same domain name holder.
However, the Panel finds that the evidence presented to support allegations as regards the other Domain Names is not sufficient to find that those domain names were registered by the same person or entity that registered the above domain names. In terms of Forum’s Supplemental Rule 4(c), the Panel will rule only on the domain names <amazonbookpublications .co>, <amazon-directpublisher .com>, <amazonkindleofficial .com>, <amazonpublishhub .com>, <kindledirectpublish .com>, <publishonamazonnow .com> and <wepublishonamazon .com>, and it will dismiss, without prejudice, the complaint regarding the domain names <amazonpublishersltd .com>, <amazonpublishingmaestro .com>, <amzpublishingmaster .com>, and <publishatamazon .com>.
Brief Facts: The Complainant is a well-known online retailer offering products and services in more than 100 countries around the world. The Complainant opened its virtual doors in July 1995, offering online retail store services featuring books via the website <amazon .com>. The Complainant has more than 300 million active customer accounts. The Complainant has registered trademarks for the marks AMAZON and KINDLE and uses and uses them to market its online retail business, which includes providing publishing services. The marks are well-known and were registered in 1997 and 2009 respectively. The disputed Domain Names were registered in 2023. Five of the resolving websites offer products and services that compete with those of the Complainant; two of the disputed Domain Names are not being used; one of the resolving websites displays the Complainant’s mark and distinctive logo; some of the resolving websites display disclaimers.
The Complainant alleges that the Respondent fails to use the disputed Domain Names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use and that the Respondent registered and is using the disputed Domain Names in bad faith. The Respondent uses five of the disputed Domain Names to attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant by using the Complainant’s marks and referring to services offered by the Complainant under that mark. The Respondent also uses those five disputed Domain Names to promote products and services that directly compete with the Complainant. Two of the disputed Domain Names are not being used. The Respondent had actual knowledge of the Complainant’s rights in its marks. The Respondent failed to submit a Response in this proceeding.
Held: Two of the disputed Domain Names are not being used. This does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). The Respondent uses five of the disputed Domain Names to offer competing goods or services. Use of a disputed Domain Name that incorporates a well-known mark to offer competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). For the reasons given below, the Panel also finds that the Respondent’s use of the disputed Domain Names is abusive of the Complainant’s trademark rights; the Panel also finds bad faith registration and use. Consequently, the mere existence of the disclaimer does not establish that the Respondent has rights or legitimate interests in the disputed Domain Names.
The Respondent registered the disputed Domain Names with actual knowledge of the Complainant’s mark: one of the resolving websites displays the Complainant’s mark and logo, and some of the resolving websites display disclaimers that refer to the Complainant. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). Two of the disputed Domain Names are not being used. According to WIPO Overview, paragraph 3.3: “From the inception of the UDRP, panelists have found that the non-use of a Domain Name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.
In the present case, the Complainant’s trademarks are well known. It is difficult to envisage any use of the disputed Domain Names that would not violate the Policy. There has been no response to the Complaint, the Respondent used some of the disputed Domain Names to compete with the Complainant, the Respondent has engaged in a pattern of bad faith registration and use of domain names, and the Respondent knew of the Complainant’s mark. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed Domain Name is not being actively used.
Transfer
Complainants’ Counsel: James F. Struthers of Richard Law Group, Inc., Texas, USA
Respondents’ Counsel: No Response
Civil Dispute, a Matter Beyond the Scope of the Policy
DNOW L.P v. Nut-Nae Art/ Tareina Hunt, CIIDRC Case No. 22633-UDRP
<tsmsupply .com>
Panelist: Mr. David L. Kreider
Brief Facts: The Complainant alleges that the Respondent operates a web and graphic design business under the name “Nut-Nae Art Website & Graphics”. The Respondent’s website at: <wedowebsites .ca> shows “TS&M Supply” as one of its clients. In 2006, the Complainant’s predecessor hired the Respondent to design, host and maintain websites under the Domain Name <tsmsupply .com> among other domains on behalf of the Complainant’s predecessor and, subsequently, the Complainant’s licensee DNOW Canada ULC (including its affiliates, subsidiaries, and related entities). The Respondent continued to provide web hosting services to the Complainant’s predecessors and subsequently to the Complainant’s licensee DNOW Canada ULC, until the Respondent’s services were formally terminated in November 2023 and the relationship ended. In November 2023, the Complainant’s licensee DNOW Canada ULC formally terminated the Respondent’s services and requested that the Respondent transfer the domain names, including the disputed Domain Name, to DNOW. The Respondent has refused to transfer the domain names.
The Complainant alleges that DNOW’s content previously at these domains has now disappeared and the domains now redirect to the Respondent’s web and graphic design business website indicating that the domains are for sale. The Respondent contends, verbatim, “I have owned the disputed Domain Name since 2006 and have no contract or relationship with ‘DNOW Canada ULC’. My previous client, TS&M neglected to pay for their domain. I carried them for over 4 months. I received an email from someone from DNOW saying that they no longer required the services that I had been providing for TS&M and requested that three domains be transferred over to them. The next communication I received was from a lawyer. I responded that their bills had been unpaid for months. This domain is for sale, ‘DNOW Canada ULC’ is welcome to purchase it. Please also see my client agreement (this is an online form that is agreed to electronically).”
Preliminary Dispositive Issue: The Policy Not Applicable to Disputes Between Parties with Competing Rights Acting in Good Faith. It is well-established in UDRP jurisprudence that the scope of the procedure is limited, such that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and does not apply to disputes between parties with competing rights acting in good faith. See, Final Report of the WIPO Internet Domain Name Process, THE MANAGEMENT OF INTERNET NAMES AND ADDRESSES: INTELLECTUAL PROPERTY ISSUES, (April 30, 1999), par. 135(i) and also see, ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 25, 1999), paragraph 4.1(c).
Thus, the Policy’s scope is limited to abusive registrations made with bad faith intent to profit commercially from others’ trademarks. Claims for breach of contract and fiduciary duty requiring the Panel to delve into the parties’ legal relations are generally outside the scope of the Policy, although the line of demarcation separating those disputes within from those outside the scope of the Policy can be elusive.
Held: It is apparent from the common facts alleged by the parties that at the time of registration of the Domain Name in 2006 and for years thereafter, the Respondent was under contract to provide web design and hosting services to the trademark holder. The parties had a falling out some 18 years later and the Respondent’s services were terminated. The Complainant concedes that the Respondent continued to provide web hosting and related services in connection with the Domain Name “to the Complainant’s predecessors and subsequently to the Complainant’s licensee DNOW Canada ULC”, until her services were “formally terminated in November 2023 and the relationship ended”.
That the dispute between the parties, at its core, is a commercial contract dispute is supported by the Respondent furnishing the terms of her online contract. By pursuing the present UDRP claim, the Complainant seeks effectively to “shoehorn” a long-running commercial contract dispute over web hosting services into an alleged case of abusive registration and use of the Domain Name under the Policy, which it prima facie is not based on the evidence and common allegations of both parties. For the above reasons, in accordance with Paragraph 4 of the Policy, Paragraph 15 of the Rules, and Rule 10 of the Supplemental Rules, the Panel orders that relief shall be DENIED and the disputed Domain Name shall remain with the Respondent.
Complaint Denied
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Self-represented
Note: Another Decision this week by Panelist Ms. Stephanie Hartung in the matter of FastVAT s.r.o. v. David Mika (Cluesto OU), CAC Case No. CAC-UDRP-106043 <fastvat .com> discusses the scope of the Policy as well:
Consequently, the Panel considers this dispute brought before it to exceed the typical “cybersquatting” scope of the UDRP and would be more appropriately addressed by a court of competent jurisdiction, or perhaps in mediation. Therefore, this Decision does not prevent either the Complainant or the Respondent from pursuing this dispute in relation to the specific and obviously yet unanswered question of who should own the disputed Domain Name in a competent ordinary court proceeding. In this context, the Panel recalls that the Policy is not designed to adjudicate all types of disputes that relate in any way to domain names, but rather the Policy establishes a streamlined, inexpensive administrative dispute resolution procedure intended only for cases of “abusive cybersquatting” (see e.g.: Boku, Inc. v. Phuc To, WIPO Case No. D2023-1338). As such, the UDRP is not an appropriate process to adjudicate such a complex (and perhaps even criminal) dispute, given that UDRP panels e.g. do not have the powers granted to a competent court to first enlighten and finally resolve disputes, including e.g. witness testimony, disclosure of documents, or other procedural instruments.