Welcome to this week’s UDRP Digest (2.10), summarizing the most intriguing cases of the past week. Read about:
‣ Large Texas Company Accuses Similarly Named Smaller Texas Company of Infringing (timecservices .com)
‣ Are Rudy, Rita, Rose, and Alice, All the Same Person? (thursdayboots-australia .com and 60 more)
‣ Should UDRP be Dismissed due to Concurrent Legal Proceedings and Complex Issues? (myka .com)
‣ Did the Respondent have a Legitimate Business? (landscentral .com)
‣ UDRP Used to Try to Recover Stolen Dictionary Word Domain Name (patterns .com)
‣ Complainant Claims Common Law Rights in Dispute with Former Partner (0456 .com and 9527 .com)
Enjoy !
Large Texas Company Accuses Similarly Named Smaller Texas Company of Infringing
<timecservices.com>
Panelist: Mr. Georges Nahitchevansky
Brief Facts: The Complainant is a provider of mechanical and construction services in the oil and gas industry and operates online at <timec.com>. The Complainant uses and owns the trademark TIMEC, which was filed on December 9, 2017 with the USPTO on an intent-to-use basis and issued to registration on October 13, 2020 with a claim of first use of July 13, 2020. The Complainant maintains that the actual first use date of the TIMEC mark was in 1971 and that it is in the process of amending its USPTO registration accordingly. The Respondent is the president of Timec Services Inc., which purports to provide oil and gas related tank inspection, environmental consulting, and commercial supply services and was incorporated on December 28, 2017. The Respondent registered the disputed Domain Name on October 12, 2017 and uses it in connection with a website providing information regarding the Respondent’s services. The parties engaged in limited negotiations, during which the Respondent offered to sell the disputed Domain Name for USD 100,000. No agreement was reached and the disputed Domain Name continues to resolve on the Respondent’s website.
Held: The Complainant relies on its United States trademark registration for TIMEC, which was filed on December 9, 2017 almost two months after the Respondent registered the disputed Domain Name on October 12, 2017. The registration of the disputed Domain Name does raise an issue of potential trademark infringement or unfair competition if, in fact, Complainant’s predecessor in interest had made use of the TIMEC mark since 1971 and enjoyed some reputation in the oil and gas industry. The Respondent’s actions here do create some questions, particularly in light of the Complainant’s alleged investigation and the Respondent’s failure to provide evidence that it is in fact providing actual services under the TIMEC mark. The Respondent’s monetary demand of USD 100,000, could further add to the potent evidence of bad faith if in fact the use of the TIMEC mark in the same industry dates back to 1971. But the filing of an intent-to-use application in December 2017 by the Complainant’s predecessor raises questions given the Complainant’s claimed use of TIMEC mark since 1971, was it inadvertent or otherwise. These questions are all well beyond the scope of the UDRP. In sum, what the Complainant presented is lacking information and leaves several open questions. Such issues are better left to a court of competent jurisdiction where discovery and cross-examination of witnesses is possible.
Complaint Denied
Complainants’ Counsel: Vorys, Sater, Seymour and Pease, LLP, United States
Respondents’ Counsel: Self-represented
Are Rudy, Rita, Rose, and Alice, All the Same Person?
<thursdayboots-australia.com> and 60 more Domain Names
Panelist: Mr. Nick J. Gardner
Brief Facts: The US Complainant, founded in 2014, is an apparel company that designs and manufactures, among other goods, footwear products. The Complainant sells its footwear exclusively through its website linked to the <thursdayboots.com> domain name, registered on June 9, 2014. The Complainant owns a range of registered trademarks which include trademarks for THURSDAY BOOT CO. including EU trademark registered on December 1, 2020. The disputed Domain Names were registered in three groups on September 3, 2021 (14 domains), October 3, 2021 (15 domains) and October 11, 2021 (32 domains). The majority of the disputed Domain Names are linked to websites which purport to offer for sale, products made by the Complainant, while others resolve to parking pages containing pay-per-click (“PPC”) links. The Complainant provided extensive evidence including a technical expert report examining possible connections between each of the disputed Domain Names’ registrant. The names and addresses of all individual Respondents (i.e. all Respondents other than Domain Admin, WHOISprotection.cc, and Web Commerce Communications Limited) are false.
Consolidation of Respondents: It is quite clear from the expert report that all of the disputed Domain Names have been registered as part of a large sale and sophisticated attempt to establish a large number of websites which target the Complainant and its products. Accordingly, the Panel agrees with the Complainant that the disputed Domain Names are under common control. Consolidation would be fair and equitable to all parties as it will result in considerable savings in cost and is clearly convenient.
Held: In the present circumstances, the Respondents are seeking to attract customers by creating a likelihood of confusion with the Complainant’s trademark. The Complainant’s evidence shows that customers have been deceived. It is more likely than not, that those of the disputed Domain Names linked to PPC web pages have simply not yet been used in the Respondents’ fraudulent scheme. In any event it is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of an association with the Complainant or its trademarks, such use amounts to use in bad faith. Further the fact that the individual Respondents appear to have provided false WHOIS details and have not filed a Response and hence have not availed themselves of the opportunity to present any case of good faith that they might have. Accordingly, the Panel finds that each of the disputed Domain Names has been registered and is being used in bad faith.
Transfer
Complainants’ Counsel: Beard & Barks PLLC, United States
Respondents’ Counsel: No Response
Should UDRP be Dismissed due to Concurrent Legal Proceedings and Complex Issues?
MYKA DESIGNS INC. v. Ran Erez, CAC Case No. 104245
<myka.com>
Panelists: Avv. Ivett Paulovics (Presiding), Mr. Douglas M. Isenberg and Dr. Vít Horáček
Brief Facts: The Complainant is a Canadian jewelry company that manufactures and retails under the brands “Myka” and “Myka Designs” since 1987. It sells jewellery worldwide through its website <mykadesigns.com> (registered on October 7, 1999). The Complainant and its affiliates are owners of the registered trademarks in Canada and Germany. The Complainant’s trademark application is pending before the USPTO and claims unregistered (common law) trademarks in the US since 1987. The US Respondent is co-founder of Tenengroup, an e-commerce company with markets in various countries, specializing in the development, marketing, manufacturing and sale of customized goods, including but not limited to jewellery for over 15 years. The Respondent asserts that one of its brands is “Myka”, a rebranding of the “My Name Necklace” brand established in 2006. Starting March 2021, the Respondent rebranded its social media accounts and engaged a domain name broker to purchase the disputed Domain Name which was registered by a third party. Thereafter, the Respondent filed applications for trademark registration in the US, EU, Australia, Israel, and on July 11, 2021 the Respondent launched its website associated with the disputed Domain Name. In July 2021, the Complainant started pursuing the Respondent to change the mark “MYKA”, which included service of a Cease and Desist notice, to which the Respondent replied. Afterwards, the parties have engaged in several legal proceedings.
Held: The UDRP is intended to address cases of cybersquatting where a complainant’s rights in a particular term are clear and proof of bad faith registration and use can be easily demonstrated. Complex disputes, such as who has superior rights to the mark contained in a domain name, or where there are complicated evidentiary issues, are beyond the scope of the UDRP. The dispute at hand contains certain factual issues and legal claims which impact the rights or defenses of the parties. The Panel finds that those issues are beyond the Policy’s limited cybersquatting scope and would be better addressed by the competent courts and bodies (national and regional trademark offices). The Panel also notes that the parties have provided evidence of ongoing legal proceedings between the Complainant and the Respondent involving the “Myka” trademark in different jurisdictions and the disputed Domain Name. The UDRP Rules state that when legal proceedings are concurrently pending, the Panel has discretion whether to suspend, terminate, or continue with the administrative proceedings. In the light of the above and having found the present dispute not to be appropriately resolved under the Policy, the Panel concludes that relief shall be denied and the Complaint dismissed, without prejudice.
Complaint Denied
Complainants’ Counsel: Sparring s.r.o., advokátní kancelář
Respondents’ Counsel: Mr. Jonathan Agmon
Did the Respondent have a Legitimate Business?
Latitude Funding LLC v. Anthony k / Lands Central, NAF Claim Number: FA2202001983304
<landscentral.com>
Panelist: Mr. David E. Sorkin
Brief Facts: The US Complainant uses the LANDCENTRAL mark in connection with online real estate services and its website is <landcentral.com>. The Complainant owns a US trademark registration for LANDCENTRAL and for a design mark with LANDCENTRAL as the textual component, both issued in 2017 with the first use since 2000 and 2008 respectively. The Respondent registered the disputed Domain Name via a privacy registration service in July 2020. The Respondent uses the disputed Domain Name for a website that offers land in California for sale. The Complainant asserts that the Respondent’s website is purposely designed to attract and generate revenue from Internet users seeking the Complainant. The Respondent claims to be using the disputed Domain Name for a registered business called Lands Central LLC.
Held: The evidence of bona fide use in this case is fairly thin, consisting primarily of the screenshot of the Respondent’s website submitted by the Complainant and the state certifications of an entity, apparently the Respondent, registered to do business under a name corresponding to the disputed Domain Name. The Complainant assertion that the purpose of the Respondent’s website is to confuse consumers and benefit from the Complainant’s goodwill, in the Panel’s view, the available evidence does not dictate such a conclusion. It seems entirely plausible that the Respondent may have been unaware of the Complainant’s mark and that it selected and is using the disputed Domain Name and corresponding business name for reasons entirely unrelated to the Complainant. The Iowa LLC registration was filed in late July 2020, a few weeks after the registration of the disputed Domain Name, and long prior to any notice of this dispute. For essentially the same reasons, the Complainant fails to prove that the disputed Domain Name was registered and is being used in bad faith.
Complaint Denied
Complainants’ Counsel: Eric Perrott of Gerben Perrott, PLLC, District of Columbia, USA
Respondents’ Counsel: Self-represented
UDRP Used to Try to Recover Stolen Dictionary Word Domain Name
Cosmic Patterns Software, Inc. v. tian qin lei, NAF Claim Number: FA2201001981716
<patterns.com>
Panelist: Mr. Dawn Osborne
Brief Facts: The Complainant provides astrological software services and claims common law rights in the PATTERNS mark based upon use of the mark in commerce for over twenty years. The Complainant asserts that the disputed Domain Name was fraudulently transferred by the Respondent in November 2020 through a fraud perpetuated on the Complainant’s registrar. Currently, the disputed Domain Name is being offered for sale generally and the Respondent uses the resolving webpage to host pay per click links offering services not connected with the Complainant. The Respondent did not respond.
Held: The disputed Domain Name was acquired fraudulently, which is indicative of a lack of both rights and legitimate interest. The use for pay per click links upon the disputed Domain Name indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain. As such, the disputed Domain Name was registered and used in bad faith primarily for the purposes of profit.
Transfer
Complainants’ Counsel: Daniel R. Prince of Epik Holdings, Inc., Washington, USA
Respondents’ Counsel: No Response
Complainant Claims Common Law Rights in Dispute with Former Partner
Xiaoqiang Li v. Linfang Dou, NAF Claim Number: FA2201001982516
<0456.com> and <9527.com>
Panelist: Mr. Dennis A. Foster
Brief Facts: The Complainant and the Respondent had a previous business partnership during which the Complainant registered and administered services under the disputed Domain Names. The said partnership terminated and the Respondent obtained registration of the disputed Domain Names without the consent of the Complainant. The Complainant’s trademark registration applications for the marks 0456.COM and 9527.COM are pending. The disputed Domain Name <0456.com>, was created on February 10, 2000; and the disputed Domain Name <9527.com>, was created on June 25, 2003. The Complainant used the disputed Domain Names <0456.com> and <9527.com>, in commerce since December 2018 and October 2018, respectively. Moreover, within its period of operation, the Complainant’s use of <0456.com> generated revenue of $3,000 with an estimated $1,500 spent on advertising; <9527.com> generated $2,000 with about $1,000 in advertising. Internet users visiting the websites are asserted to be approximately 300 per month for <0456.com> and 200 per month for <9527.com>.
Held: The Panel notes that the consensus among prior Policy panels is that mere pending trademark filings fail to constitute ownership of a mark for the purposes of Policy. No explicit contention of common law trademark rights is stated within the Complaint, but the Panel, in examining the evidence, considered whether the Complainant can possibly sustain a claim in this context. In evaluating this sparse data, the Panel concludes that the relatively meager revenues and advertising expenditures, together with the about 10 website visits or less per day within the relatively short (approximately four years each) periods of operation, do not come close to constituting the substantial body of evidence necessary to sustain a finding that Complainant possesses common law trademark rights in either of the claimed marks. In reaching this conclusion, the Panel is also mindful that the Complainant bears the burden of proof with respect to this element required under the Policy. Accordingly, the Complainant has failed to demonstrate that the disputed Domain names are identical or confusing to a trademark or service mark in which the Complainant has rights.
Complaint Denied
Complainants’ Counsel: Self-represented
Respondents’ Counsel: Self-represented