Today in UDRP HistoryOn July 18, 2002, the Ontario Superior Court of Justice issued a decision in Black v. Molson, overturning NAF Panelist Robert Merhige’s Order transferring “Canadian .biz” to Molson. Panelist Merhige had inter alia found that since the recorded registrant, “%2d%2d”, didn’t exist – despite it being an apparent URL encoding glitch – that neither “it” nor Mr. Black was the owner or beneficiary of the Domain Name. The Panelist had also found that the domain name registration was in bad faith because it was “four years subsequent to Complainant’s registration of its trademark, CANADIAN for beer, and almost 50 years subsequent to the Complainant’s first use of the mark”. In overturning the transfer Order, Justice Wright stated that, “simply because a domain name is identical or similar to a trademark name should not result in the transfer of the domain name to the trademark owner” and rejected the notion that the only party entitled to register the ‘Canadian’ domain name was Molson.
We hope you will enjoy this edition of the Digest (Vol. 3.29), as we review these noteworthy recent decisions, with commentary from our Director, Nat Cohen; General Counsel, Zak Muscovitch and Editor, Ankur Raheja. We invite guest commenters to contact us.
‣ Complainant’s Speculative Case Goes South (south32 .com*with commentary)
‣ Targeted Complainant Prevails in the Absence of a Registered Trademark (spacefalcon .com*with commentary)
‣ Licensing Dispute Between the Parties is Outside the Policy(lofficielarabia .com*with commentary)
‣ Case Can Proceed Against Multiple Respondents Only Where Same Name Holder (waterblastglock .com and more*with commentary)
NEWS: MOHU .COM UDRP Decision Overturned in Court
A court in China has overturned the UDRP decision transferring the Mohu .com. The domain name was transferred last year in a Forum decision issued by Panelist David Miranda.
A copy of the Google-translated Chinese language court decision is available here. Both parties were represented in the court proceeding.
The key finding of the court is (as translated):
“To sum up, the registration and use of the disputed domain name involved in the case did not involve malicious acts…Under the conditions of fair competition, Feng Wenjia’s process of obtaining the disputed domain name involved in the case was legal and valid. His request to the court to confirm that he enjoys the legal rights and interests of the domain name “mohu .com” involved in the case as the domain name holder is well-founded in law, and this court supports it.”
ICA General Counsel Zak Muscovitch commented upon the UDRP decision in Digest Vol. 2.17, stating in part as follows:
“In conclusion, this decision is very concerning. An otherwise distinguished and experienced Panelist with over 100 decisions to his credit appears to have issued a very questionable decision which may very well be appealed to the courts of China which has Mutual Jurisdiction in this case.
If overturned, it will not be a surprise and unfortunately may cast the UDRP in an unfavourable light. Anyone who values the UDRP and who cares about its successful reputation should be concerned when an apparently errant and unusual decision like this comes out and should wonder what caused this unfortunate situation to occur.”
At the time of the UDRP decision, Elliot Silver also wrote up the reasons why he was troubled by the transfer decision – https://domaininvesting.com/dont-like-the-mohu-com-udrp-decision/. This is a relatively rare instance of a UDRP decision being challenged in court and the court issuing a decision rather than the parties settling.
Complainant’s Speculative Case Goes South
South32 Limited v. South32, South32 is a trademarked film company, WIPO Case No. D2023-1808
<south32 .com>
Panelist: Mr. Andrew D. S. Lothian (Presiding), Mr. Nicholas Smith and Mr. Mohamed-Hossam Loutfi
Brief Facts: The Complainant is a mining and metals company headquartered in Perth, Australia. It carries on business operations in a large number of countries, including Australia, South Africa, the United States, Mozambique, and Colombia, and has 9,000 employees. Its website is at <south32 .net>. The Complainant was demerged from a larger mining company named BHP Billiton in May 2015 and branded “South32”. The Complainant owns various registered trademarks for the word mark SOUTH32, the earliest of which was filed on December 9, 2014, and registered on July 8, 2015. The disputed Domain Name was registered on April 3, 2012, and the current registrant name is “South32” and the registrant organization is “South32 is a trademarked film company”. The website associated with the disputed Domain Name contains material that is critical of the Complainant and at least one unrelated mining company.
The Complainant alleges that the use of a domain name for free speech purposes may in principle support a claim to a legitimate interest, the Respondent’s use of the disputed Domain Name to criticize the Complainant, the mining industry in general and other companies trading in the mining industry, does not amount to criticism which is fair use for the purposes of the Policy. The Respondent contends that it registered and operated the disputed Domain Name for three years before the Complainant’s company was named. There is evidence of the Respondent’s use of the disputed Domain Name in connection with a bona fide offering of goods and services, to produce films in the movie industry, as evidenced by the registration date. The Respondent is commonly known by the disputed Domain Name and is making a legitimate non-commercial or fair use of the disputed Domain Name.
The Complainant further produces a historic “WhoIs” report for the disputed Domain Name which does not cover its entire history and commences on September 14, 2015, and alleges that the WhoIs history reveals that the registrant and registrar details have changed since the disputed Domain Name was registered, which indicates that the Respondent acquired the disputed Domain Name after the Complainant acquired rights in its SOUTH32 trademark. The Respondent produces various materials relating to the disputed Domain Name to demonstrate its continuous control thereof from the date of registration in 2012.
Held: The only evidence produced by the Complainant in support of an alleged subsequent acquisition is its selected historic WhoIs records dating back to 2015. In determining whether there is an unbroken chain of possession here or a transfer of the disputed Domain Name between unconnected registrants, there are three evident anomalies in the invoices however, these anomalies are minor in nature and not fatal to the Respondent’s position. The common features between the two invoices, together with the fact that they are self-evidently in the Respondent’s possession, suggest to the Panel on the balance of probabilities that they were received by the Respondent in its capacity as the registrant of the disputed Domain Name at the relevant dates. There is nothing in this history to suggest, as the Complainant speculates, that there has been any transfer of the disputed Domain Name from an independent third party to the Respondent sufficient to reset the clock for the purposes of assessing registration in bad faith.
In all of these circumstances, the Panel considers that it is reasonable on the basis of the present record for it to find on the balance of probabilities that the Respondent is indeed the original registrant of the disputed Domain Name. Given that finding, there can be no suggestion that the Respondent registered the disputed Domain Name in the knowledge of the Complainant’s rights and with intent to target these since they were not in existence at the material date, nor could they be said to be “nascent” or capable of anticipation by the Respondent in any way. Having reached that conclusion, the Panel rejects the Complainant’s argument that such a finding should not prevent it from succeeding in the Complaint due to the nature of the remedies under the Policy. In the Panel’s view, the wording of the Policy is plain, calling for registration in bad faith, and the onus of proving this falls upon the Complainant. The registration in bad faith means bad faith at the point of registration, and not at any later date. Given the conjunctive requirement of proving both registration and use in bad faith, the Complaint must fail and the question of use in bad faith is moot.
Complaint Denied
Complainants’ Counsel: Griffith Hack Lawyers, Australia
Respondents’ Counsel: Internally Represented
Case Comment by ICA General Counsel, Zak Muscovitch:
This case ultimately turned on when the Respondent registered the Domain Name. The Panelists were presented with a somewhat unclear and confusing record of ownership yet managed to satisfactorily navigate through it and arrived at the correct determination.
Although the Complainant had registered trademark rights as of July 8, 2015, the very earliest date upon which the Complainant could conceivably claim (nascent) trademark rights, was December 8, 2014, which was the date of an Australian newspaper article announcing that the Complainant would be rebranded to South32. Accordingly, if the Respondent could beat that date, it would win because it would mean that the Respondent could not have possibly registered the Domain Name in bad faith.
The Complainant filed a historic Whois report which according to the decision, “does not cover its full history and commences on September 14, 2015”. It is unclear why the historic Whois report only commenced in 2015, as the one that I viewed from DomainTools stretches back to 2008. Remember, to beat the Complainant’s very earliest possible trademark right date, the Respondent need’s to have registered the Domain Name prior to December 8, 2014. Well, the DomainTools historical Whois report shows as of February 6, 2014 at the very latest, the Registrant Organization is “Kari Bian film company” with a Malibu address – ten months before the date of the Complainant’s earliest possible (nascent) trademark rights. One cannot help but wonder why the important 2014 historical records never made it into the case record before the Panel.
This early proof of registration is consistent with the other evidence before the Panel, namely the Respondent’s registration receipts which reference LosAngelesNews .com Inc., which I found to have been a California corporation which changed its name to LosAngelesNews .com Inc. on October 29, 2012 in articles filed by Kari Bian, thereby connecting the registration receipts to Kari Bian.
Interestingly, although only obliquely referenced in the title of proceedings and in the decision but readily apparent from the Domain Name’s current website which prominently features it, South 32 is a valid USPTO trademark registered to Kari Bian, dated April 26, 2016 for film production. Also, South32 is a registered trademark belonging to South32, LLC, a 2015 California company whose Agent is Luiji Bian. It is unclear why these trademark registrations did not fit more prominently into the case. Perhaps because the Respondent did not properly make proper submissions or perhaps these issues would have been dealt with had the Panel considered legitimate interests. Surely a corresponding company and registered trademarks would give rise to a strong case for rights and legitimate interests.
With a somewhat unclear and incomplete record and an unrepresented Respondent, the Panel consisting of Andrew Lothian, Nicholas Smith, and Mohamed-Hossam Loutfi, was left to sort through a rather confusing set of evidence, but to its credit the Panel capably found its way to the correct determination despite not being provided with all of the most helpful of evidence.
Now, I ask you though, what would have happened had the Respondent not responded? The Respondent’s submissions appear to have left a lot to be desired, but in their complete absence would the Complainant have prevailed? Likely not with an astute Panel like this one who would scrutinize the Complainant’s evidence and hold the Complainant to the requisite evidentiary standard. But I do fear that with a less astute Panel, the Complainant could have succeeded. Another Panel could have mistakenly claimed that it is “appropriate to accept as true all allegations of the Complainant” in the absence of a Response, based upon the false and misconstrued ratio in Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009, February 29, 2000 (talk-city .com), as explained in the 2019 CircleID article, “Getting the Standard Right Where No Response is Filed”. By incorrectly invoking this non-existent but often cited and mistaken reference, a Panel could have accepted the Complainant’s false allegation that “the Whois history…indicates that the Respondent acquired the disputed Domain Name after the Complainant acquired rights in its SOUTH32 trademark”. And such an ill-advised Panel could also have bought the Complainant’s self-serving and unjustifiable argument that the since the Respondent’s criticism was “not genuine, informed, or reasonable but [rather] misleading, offensive, and inflammatory in nature”, it does not constitute a legitimate interest under the UDRP.
As has been written about previously by Nat Cohen (CircleID, December 19, 2022), though “most panelists do not view the UDRP as an appropriate venue for assessing the validity of criticism” we have also seen cases where a Panel wades into a highly subjective and often problematic assessment of what constitutes proper or improper criticism. In my view, the UDRP has no business making judgment calls on good and bad criticism especially when a clear and bright line exists: ‘Is the criticism a pretext / a ruse?’. If not, it can be “legitimate non-commercial” use of the domain name within the express criteria set out at 4(c)(iii):
“(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
If one is to differentiate exact match domain name used for legitimate noncommercial use, namely criticism, on the basis that they inherently “impersonate” a trademark, then that effectively means the UDRP is being re-written to exclude exact match domain names from the safe harbor provisions of Paragraph 4(c)(iii). And if that had been the intention of the Policy, then wouldn’t the Policy have said so? For example, the Policy could have been written as follows:
(iii) [Except in the case of an exact match or otherwise confusingly similar domain name], you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
But this wouldn’t make any sense since under Paragraph 4(a)(i), the UDRP of course already applies ONLY to identical or confusingly similar domain names, so it is already a given that the domain name is identical or confusingly similar before one even considers Paragraph 4(c)(iii). Accordingly, the Policy would have had to omitted Paragraph 4(c)(iii) altogether because Paragraph 4(c)(iii) only applies to identical or confusingly similar domain names in the first place. In other words, the purported exclusion of identical domain names from Paragraph 4(c)(iii) would require a re-write of the Policy:
“(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Moreover, the ‘legislative history’ of the UDRP corroborates the intention that the UDRP not apply to cases of criticism. In Law Office of Graham C. Fisher, LLC v. Jack Toering / FindLocal, Inc, NAF Claim Number: FA2212002023163, which we covered in Digest Volume 3.3, Panelist Richard Hill, notes that domain names which correspond to trademarks when used for criticism websites were not intended to be “abusive” and were expressly not the target of the Policy:
“The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy….[which states at] 172:
… Domain name registrations that are justified by legitimate free speech rights or by legitimate non‑commercial considerations would likewise not be considered to be abusive.”
Lastly, even if one was to disregard the legislative history of the UDRP and illogically exclude ‘identical or confusingly similar’ domain names from Paragraph 4(c)(iii) of the Policy under a purported ‘impersonation test’ that runs contrary to the Policy, the fact remains that the UDRP is ill equipped and Panelists are certainly not paid enough to adjudicate free speech cases and should therefore be loath to wade into such fraught territory which is best left for the courts.
Targeted Complainant Prevails in the Absence of a Registered Trademark
Amit Kolambikar (Space Falcon LLC) v. John ladrok, CAC Case No. CAC-UDRP-105490
<SpaceFalcon .com>
Panelist: Mr. Fabrizio Bedarida
Brief Facts: The Complainant is an online game in the “Intergalactic Metaverse” that allows players to explore space while battling enemies with premium Sci-Fi NFTs from Cosmos and more. The Space Falcon game has its own crypto currency token ($FCON) for buying in-game items. The Complainant has an active online presence, including owning the domain name <spacefalcon .io> which has been used and registered since October 14, 2021. The Complainant is also active on social media and has generated a significant level of endorsement. The disputed Domain Name was initially registered on August 21, 2011. The Complainant submits and documents that the Respondent acquired the same from HugeDomains only on January 23, 2022, and therefore this should be the date to be considered for the purposes of this proceeding.
The Complainant submits that, before said date, it had already acquired common law rights in the distinctive SPACE FALCON trademark through open, continuous and extensive use thereof since its launch on October 14, 2021. The Complainant further alleges that the Respondent, after purchasing the disputed Domain Name from HugeDomains .com on January 23, 2023, embarked on a social engineering scam, by impersonating the Complainant‘s COO for the purposes of fraud. The Complainant brought the matter to the attention of the Domain Registrar, which led to the suspension of the disputed Domain Name in February 2022. The Respondent did not file a Response.
Held: The disputed Domain Name was initially registered on August 21, 2011. The Complainant has however submitted and sufficiently documented that the Respondent acquired the disputed Domain Name on January 23, 2022. Hence, for the purpose of this UDRP, the registration date is January 23, 2022, in terms of WIPO Overview 3.0, section 3.9. The Complainant here claims rights in the unregistered SPACE FALCON trademark through its open, continuous and extensive use since its launch on October 14, 2021. Although the evidence of the use and extent of the Complainant’s trademark covers little more than a year, considering factors such as the type and scope of market activities and the nature of the Complainant’s goods and services, namely “online gaming, block chain and NFTs”, and the fast growth shown in terms of users and followers, this Panel considers that there is nevertheless sufficient material in the present record to find that the SPACE FALCON trademark has acquired a secondary meaning and therefore that the Complainant has unregistered trademark rights therein for the purposes of the Policy.
The Complainant has documented that the Respondent has purposely registered and used the disputed Domain Name to attempt to defraud others by impersonating the former COO of the Complainant by fraudulently communicating via e-mail using an e-mail address that includes the Complainant’s SPACE FALCON trademark. This is neither a bona fide offering nor a legitimate non-commercial or fair use within the meaning of the Policy. This conduct is, in the Panel’s view, sufficient to show that the Respondent knew of the Complainant and its trademark and intentionally intended to create an association with the Complainant and its business at the time of the registration of the disputed Domain Name. The Panel finds that the Respondent’s use of the disputed Domain Name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy. Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed Domain Name in bad faith.
Transfer
Complainants’ Counsel: A Raheja
Respondents’ Counsel: No Response
Case Comment by ICA Director, Nat Cohen:
Congratulations to our editor, Ankur Raheja, for successfully representing the Complainant in its effort to secure the transfer of the SpaceFalcon .com domain name, which had been purchased from a domain name marketplace and then used in a financial scam to impersonate the Complainant, which operated on the SpaceFalcon .io domain name.
This played out on Twitter where a victim of the scam described how the scammers had used the SpaceFalcon .com domain name in their scam.
I commented at the time about the risks of running a business while failing to secure the matching dot-com domain name, and also suggested to the Complainant that it should consider filing a UDRP complaint.
https://twitter.com/domainarts/status/1492892168939261952
Fortunately, the Complainant decided to engage Ankur and to file a UDRP complaint.
The case was a very challenging one for Ankur as the Complainant had no registered trademark rights, had only registered its SpaceFalcon .io domain name about three months before the Respondent purchased the SpaceFalcon .com domain name, and the original creation date of the domain name predated the Complainant’s date of first use. Nor was the term “Space Falcon” highly distinctive. Indeed, SpaceX named its launch platform the Falcon (with the current model the Falcon 9).
Ankur relied on common law rights, as the Complainant had established significant awareness of its mark in the short time since its launch. It had 167,000 Twitter followers at the time of the Respondent’s acquisition of the SpaceFalcon .com domain name. It had also announced a $4 million investment and the launch of its own cryptocurrency $FCON in the days before the Respondent acquired the Disputed Domain Name.
The Panel found that the Ankur had provided sufficient evidence of common law rights to demonstrate acquired distinctiveness. The Panel also found that, as Ankur argued, Respondent’s targeting of the Complainant was itself evidence that the mark had achieved significance as a source identifier:
As noted in section 1.3 of the WIPO Overview 3.0, “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier”.
It is instructive to compare the transfer decision in this dispute with the denial issued on August 1, 2022 by Panelist Nick Gardner in the south-coast-company .com, et. al dispute. The fact situations in both disputes have many similarities. In both cases, the Complainant argued it had developed sufficient common law rights to have enforceable rights to its mark despite not having a registered trademark. Specifically, in both complaints, the Complainant relied upon Section 1.3 of WIPO Overview 3.0 in arguing that the Respondent’s use of the Disputed Domain Name to perpetuate a scam targeting its mark was itself evidence of its common law rights:
The Complainant however also relies on the fact of the Respondents’ use of the Disputed Domain Names is itself evidence that relevant unregistered rights exist. WIPO Overview 3.0 addresses this as follows (section 1.3): “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” The Panel takes the view that this approach may support a case where there is other evidence which is of a doubtful or marginal nature, but normally it would not constitute the sole evidence of unregistered rights. If that was not the case then the test would be entirely circular and any term used in a domain name could be said to support a finding of unregistered trademark rights – which is clearly not the intention of the Policy. This approach should be considered in light of the particular circumstances of a proceeding, and in the present case the Panel does not think, for the reasons explained above, that there is sufficient evidence of unregistered trademark rights subsisting as at the date of the Complaint. Hence it does not regard the use of the Disputed Domain Names enough to conclude or support a finding that such rights subsist.
In the south-coast-company .com dispute, despite Panelist Gardner issuing a Procedural Order giving the Complainant’s representatives, Stobbs IP, a second chance to provide sufficient evidence to support a finding of common law rights, Stobbs IP failed to do so.
Panelist Gardner also stated that while the website may have been used in furtherance of a scam targeting the Complainant’s customers, insufficient evidence was presented that the domain name itself played a significant role as a source identifier in misleading the Complainant’s customers:
Rather what seems to be happening is that the Respondents appear to be fraudulently obtaining customers by some other means, likely including Facebook Marketplace activity. That activity would appear to include reference to the Respondents’ Website. Presumably this is given as supporting material so that any prospective customer who checks it is given an impression of credibility and bona fides. Specifically it would appear from the email described above that the Respondents are including as part of their fraudulent activity “buyer Verification” material which includes reference to the Respondents’ Website. In essence the Respondents have created the Respondents’ Website in order to create a bogus corporate persona which they use to portray themselves as a bona fide credible company. It is not however, on the evidence, the Disputed Domain Names which are attracting the customers in the first place – it is whatever is taking place on Facebook Marketplace (or elsewhere) that is attracting the customers in question. The Panel does not have any evidence as to the detail of that activity or exactly how the Respondents are perpetrating the scam in question. Accordingly, the Panel does not think the use of the Disputed Domain Names supports the Complainant’s claim to having a public reputation in the term “South Coast Shipping Company”.
Panelist Gardner’s denial of the south-coast-company .com dispute for lack of sufficient evidence of common law rights despite the similar fact circumstances highlights the substantial evidentiary burden that Ankur had to overcome. Stobbs IP, which coincidentally or perhaps not, previously brought complaints which were found guilty of Reverse Domain Name Hijacking, in pinksheet .com (https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-1756) and in virginliving .com (https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-1961), chose not, or perhaps was not able, to support its allegations with sufficient evidence to the satisfaction of the Panel. Ankur took the evidentiary requirements seriously and went to great lengths to provide a wealth of supporting evidence which was sufficient to persuade the Panel that the Complainant’s allegations were well supported.
Once Ankur was able to demonstrate that his client had sufficient common law rights to meet the first test, he was also able to demonstrate that the Respondent had no legitimate interest and had registered and was using the Disputed Domain Name in bad faith.
Licensing Dispute Between the Parties is Outside the Policy
Les Editions Jalou v. Sidharth Saigal and Chalk Media FZE, WIPO Case No. D2023-1430
<lofficielarabia .com>
Panelist: Mr. Steven A. Maier (Presiding), Mr. Nicholas Westonand and Mr. John Swinson
Brief Facts: The French Complainant is a publisher and distributor of fashion magazines, including a French fashion and lifestyle magazine named L’Officiel, which was first published in Paris in 1921. The Complainant is the owner of numerous trademark registrations which comprise or include the mark L’OFFICIEL. Those registrations include the Bahrain trademark for DE LA COUTURE ET DE LA MODE DE PARIS (June 3, 2008); the EU trademark for the word mark L’OFFICIEL HOMMES (February 6, 2009); and European Union Trade Mark for the word mark L’OFFICIEL (August 26, 2021). The Complainant and the individual Respondent were the parties to a licence agreement dated June 2018 relating to the distribution of the Complainant’s magazine L’Officiel in the states of the Gulf Cooperation Council. The Complainant submits that it duly terminated the Licence Agreement by notice dated February 11, 2021, while the Respondent contends that the Licence Agreement was for a term of eight years from 2018 and that it is the owner of a United Arab Emirates trademark for the mark L’OFFICEL ARABIA, for which it applied on December 7, 2020.
The disputed Domain Name was registered on April 10, 2018. The Respondent has used the disputed Domain Name for the purpose of publishing content from, and expressly associated with, the Complainant’s publication L’Officiel. The Complainant alleges that, following that termination, the Respondent no longer had the right to use the Complainant’s L’OFFICIEL trademark and was obliged to cease operating its relevant website, and other related online media, in the Middle East territory. It contends that the Respondent is using the disputed Domain Name to free-ride on the Complainant’s goodwill by seeking to deceive Internet users into believing that it continues to be legitimately associated with a 100-year-old iconic French magazine. The Respondent contends that the Complainant must establish both registrations in bad faith and use in bad faith and that, in the circumstances set out above, it clearly unable to demonstrate the former. The Respondent further contends that the dispute between the parties is, accordingly, of a civil and commercial nature, based on the past relationship of the parties, and is beyond the scope of the UDRP.
Held: In this case, any determination of the contractual dispute between the Parties implicates a number of factors, including the factual matrix; the Licence Agreement (governed and construed in accordance with the laws of France); the Respondent relies on a force majeure clause within the Licence Agreement and so on. Since the Panel is not in a position to decide the applicability or otherwise of the arbitration clause to the dispute between the Parties, or any of these matters. The Panel finds that the determination of these issues clearly falls outside the scope of the UDRP and that it is unable, therefore, to determine whether or not the Respondent has rights or legitimate interests in respect of the disputed Domain Name. In these circumstances, it is impossible for the Complainant to establish that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name and the Complaint must necessarily fail.
As the Respondent correctly observes, the third element of paragraph 4(a) of the Policy involves the conjunctive requirement that a complainant must demonstrate first, that the disputed Domain Name was registered in bad faith and secondly, that it is being used in bad faith. In this case, notwithstanding the language of the Licence Agreement, the Complainant freely admits that the disputed Domain Name was registered with its knowledge and that it acquiesced in its registration and use during the currency of the Licence Agreement. While the Complainant submits that it only consented to the Respondent using the disputed Domain Name for the duration of the Licence Agreement, which it contends has now terminated, such termination, even if valid, cannot convert a good faith registration into a bad faith registration retroactively. The Panel finds that the Respondent registered the disputed Domain Name with the legitimate intention of using it in connection with its licensed publication of the Complainant’s magazine. Regardless of its submissions concerning subsequent breach and termination, the Complainant cannot, therefore, demonstrate that the Respondent registered the disputed Domain Name in bad faith and the Complaint must necessarily fail for that reason also.
Complaint Denied
Complainants’ Counsel: Clifford Chance, LLP, Hong Kong, China
Respondents’ Counsel: Scriboard Advocates & Legal Consultants, India
Case Comment by ICA General Counsel, Zak Muscovitch: Bookmark this case. It is a great example supporting the principle that business and licensing disputes fall outside the scope of the UDRP. Furthermore, the decision clearly explains that regardless of whether or not the license was validly terminated (which is outside the scope as aforesaid), the admitted fact is that the Respondent registered the Domain Name in good faith in connection with its licensed publication.
Case Can Proceed Against Multiple Respondents Only Where Same Name Holder
<hydroglock .com>, <summerglockzz .com>, <water-glock2 .com>, <water-glock .com>, <waterglock .co>, <splashyglock .com>, <glocksplash .com>, <glockwatergun .com>, <shopaquaglock .com>, <storewaterglock .com>, <supersoakedglock .com>, <waterblastglock .com> and <glockwatergunstore .com>
Panelist: Mr. Nicholas J.T. Smith
Preliminary Issue: Multiple Respondents: In the instant proceedings, the Complainant has alleged 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. However, the Panel finds that the Complainant has not sufficiently presented evidence demonstrating that the domain names are controlled by related entities.
The Complaint concerns 13 different domain names, registered to 13 different named registrants. Other than a shared technical contact detail, there appear to be no common contact details between the registrants. The disputed Domain Names were registered on different dates with four different registrars. The disputed Domain Names resolve to websites that do not share common elements (such as shared design, shared templates or shared contact details). While each of the disputed Domain Names contains the GLOCK mark and resolves or has resolved to a website purporting to offer water pistols under the GLOCK mark, the mere fact that the disputed Domain Names share a business model (and use Cloudflare) is by no means conclusive. The sharing of a common business model is not a basis to find that otherwise unrelated entities are under common control.
Moreover, in the course of the proceedings Forum has received communications in respect of the Complaint from four different entities; one formal response, two informal responses and one general query. This further indicates that the domain names (the subject of the Complaint) are not under common control. Forum Supplemental Rule 4(c) provides that if the Panel determines that insufficient evidence is presented to link the respective domain names, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel. The Panel, without prejudice to any future proceedings under the Policy, dismisses the Complaint against all domain names other than <waterblastglock .com> (“disputed Domain Name”) and against all Respondents other than ‘Marius’ (the “Respondent”).
Brief Facts: The Complainant manufactures and distributes firearms and related goods. It owns rights in the GLOCK mark through the registration of the mark with the USPTO (registered June 9, 1992). The Complainant alleges that the Respondent has not used the disputed Domain Names in connection with a bona fide offering of goods or services as the Respondent attempts to pass itself off as affiliated with the Complainant in order to steal consumer information and perpetrate fraud. The Complainant further alleges that the Respondent’s website disrupts Complainant’s business as the Respondent registered the disputed Domain Names to purportedly sell products with Complainant’s GLOCK mark and instead phish for users’ personal and financial information and otherwise commit fraud on them.
The disputed Domain Name <waterblastglock .com> was registered on April 24, 2023. The Respondent, in its response, denies any bad faith, indicates that it greatly regrets any confusion caused by this oversight and indicates that it is willing to cooperate to resolve this issue.
Held: The Complainant alleges, and provides clear evidence to support its allegation, that the Respondent has used the disputed Domain Name for a website that passes itself off as being associated with the Complainant by offering water pistols under the Complainant’s GLOCK mark. The Respondent’s use of the Domain Name to impersonate the Complainant for the purpose of commercial gain is not a bona fide offering of goods or services or a legitimate non-commercial or fair use per Policy. The Panel further finds that, at the time of registration of the Domain Name, the Respondent had actual knowledge of Complainant’s GLOCK mark since the Respondent’s website passed itself off as a website connected to the Complainant by offering water pistols bearing the Complainant’s GLOCK mark. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy.
The Panel finds that the Respondent registered and uses the Domain Name in bad faith as the Respondent uses the Domain Name to falsely assert that it is the Complainant and offer for sale water pistols bearing the GLOCK mark. Undoubtedly, the Respondent is seeking to profit commercially from confusion thus caused among Internet users as to the Complainant’s association with the Domain Name. Accordingly, the Panel finds that the Respondent registered and uses the Domain Name in bad faith pursuant to the Policy.
Transfer of <waterblastglock .com> and Complaint Denied for Other Domain Names
Complainants’ Counsel: Christopher Renzulli of Renzulli Law Firm, LLP, New York, USA
Respondents’ Counsel: Self-represented
Comment by Newsletter Editor, Ankur Raheja and ICA General Counsel Zak Muscovitch: Kudos to the Panelist for reaching the right conclusion in respect of the multiple Respondents pursuant to Paragraph 3(c) of the Rules read with Forum Supplemental Rule 4(c).
Indeed, the domain names were registered by different registrants on different dates with four different registrars, and it is evident they were not under common control. Therefore, the impugned domain names could not be subject to a single UDRP Complaint.
Contrast this case with the recent case of Wilson’s Gun Shop dba Wilson Combat v. Hieu Nguyen / Dane Schemel / Southern Trapper, Forum Claim Number: FA2305002044813 where the majority of the Panel invoked Rule 10(c) to proceed against unrelated Respondents despite Rule 3(c) which states; “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” The majority in this case felt that they could do “essential justice by construing Rule 3(c) as applying here, not at the moment of filing, but at the moment of decision”.
The Panel explained its reasoning, that “once the claim against Respondent Scheme has been disposed of by an agreed transfer of a single domain name between the two affected parties and the case has thus been terminated as to that Respondent, the unrepresented Complainant may proceed against the remaining Respondent without offending either the letter or the spirit of Rule 3(c). Importantly, our determination in this regard will work no injustice upon any party.” In other words, the majority Panel decided one case against one Respondent and then immediately decided another case against the remaining unrelated Respondent.
Aside from the fact that this approach deprived the Forum of its fees for a second case, the majority’s reliance on the general powers under Paragraph 10(c) are misplaced. If a Panel could override the express requirements of the Policy under its general powers, then it could override any provision of the Policy that it likes, which surely is not the case. Here, the majority of the Panel understandably wanted to find an efficient resolution for the Complainant that results in “no injustice to any party” and avoids a second case to have to be brought in the special circumstances of the remaining Respondent consenting to the transfer. But the simple fact is that the UDRP provides no authority for so doing despite the Panel’s best intentions. As noted however by the Dissenting Panelist, Steve Levy, “to protect the integrity of the Rules and avoid encouraging a gaming of the system in future cases, the present proceedings should result in a split decision”. In my view, despite the concern that the majority showed and its care and attention to trying to find a practical solution in the unique circumstances of this case, the minority got this exactly right. The integrity of the Rules is too important to overlook.