Welcome to this week’s UDRP Digest (2.7), summarizing the most intriguing cases of the past week. Read about:
‣ Surname is Fair Game for Investment. A Few Bad PPC Links Does Not Sufficiently Prove Bad Faith (Mikels .com)
‣ Online Pharmacy Doesn’t Pass OKI Data Test (ProAirInhalerr .com)
‣ Secondary Market Seller Prevails When Complainant Fails to Prove Unregistered Rights at the Time of Domain Registration (Harima .com)
‣ MS is Confusingly Similar to Morgan Stanley in Fraudulent Scheme (MS-Management .com)
‣ Legal and Equitable Issues Arising from Business Arrangement Best Dealt With in Court (OxoKorea .com)
Enjoy !
Surname is Fair Game for Investment. A Few Bad PPC Links Does Not Sufficiently Prove Bad Faith
Industrias Tamer S.A. DE C.V. aka MIKELS v. Anonymize, Inc., WIPO Case No. D2021-4017
<Mikels .com>
Complaint Denied
Panelist: Dr. Kaya Köklü
Brief Facts: The Mexican Complainant founded in the 1960s, is mainly active in the development and sales of tools and equipment in Mexico and Guatemala. The Complainant operates its main website at <mikels .com.mx> and is the owner of the MIKEL’S trademark, which is registered in Mexico (since 1996), Colombia, China and Panama. The US Respondent is a domain name investor, using domain names for investment, selling or leasing purposes. He claims to have accumulated over 60,000 domain name registrations that include around 10,000 family names. He acquired the disputed Domain Name in June 2009 and ever since, it resolves to a parking page and displays pay-per-click (“PPC”) links. The commercial director at the Complainant contacted the Respondent on August 13, 2019 for purchase and in return received an offer for USD $9,000. On December 29, 2021, the Director asked for another “best price” for the disputed Domain Name.
Held: The Panel notes that a Google search for “Mikels” reveals over 46 million results which do not show the complainant until page 3. There are various unrelated trademark registrations in the US for MIKELS or MIKEL. Registering domain names comprising common family names for business purposes is not per se illegitimate. Even the use of PPC links may be acceptable, depending on the circumstances the links are created and used. The PPC links predominantly do not target the Complainant. In light of the fact that the term “Mikels” may also be used without necessarily targeting the Complainant’s trademark, e.g., as a family name, it is in view of the Panel questionable whether these identified PPC links to the Complainant and its competitors are as such sufficient to accept a lack of rights or legitimate interests of the Respondent in the disputed Domain Name.
The Panel is of the opinion that the long period of inaction by the Complainant cannot remain unconsidered, particularly as the acquisition of the disputed Domain Name to the Respondent occurred in the year 2009. The Complainant was not able to provide convincing explanation of the 24 years of inaction, 13 of which are since the Respondent registered the Domain Name.
The business of monetizing domain names consisting of generic terms or common family names can be legitimate and is not by itself per se a convincing indication of serial cybersquatting and bad faith. Even if the Respondent was involved in previous UDRP cases, the present case needs to be assessed individually. Bearing in mind that the Respondent denies any knowledge of the Complainant and its mark at the time of registration and the provided indications of the Complainant are not sufficient to convince the Panel that the Respondent registered the disputed Domain Name in bad faith. The Panel hesitates to accept bad faith use merely on the basis of a few infringing PPC links. The case record lacks sufficiently strong indications of malicious intent to trade off the Complainant’s trademark rights, particularly as there are conceivable other uses of the disputed Domain Name which do not target and relate to the Complainant’s trademark and business.
Complainants’ Counsel: Salvador Camacho Hernández, Mexico
Respondents’ Counsel: Howard M. Neu Law Offices, United States
Online Pharmacy Doesn’t Pass OKI Data Test
TEVA Respiratory, LLC v. Whois Privacy Protection Foundation / June Oneal, WIPO Case No. D2021-3984
<ProAirInhalerr .com>
Transfer
Panelist: Mr. Georges Nahitchevansky
Brief Facts: The US Complainant, division of TEVA Pharmaceuticals Ltd, develops, produces and markets respiratory products such as inhalers. The Complainant uses the domain name <proair .com> and owns trademark registrations for its PROAIR mark in connection with its inhaler products in the United States, earliest registration dated October 31, 2006. The disputed Domain Name was registered on October 20, 2020 by a US resident, who uses it in connection with a website offering and continues to offer, for sale, a variety of pharmaceutical products and medicines, including a “Generic ProAir Inhaler”.
Held: The page that the disputed Domain Name resolves to offers for sale a “Generic Proair Inhaler (Salbutamol)” and includes a product description that repeatedly uses the PROAIR mark. Whether the Respondent is actually selling a genuine PROAIR inhaler product or a generic version of such is not altogether clear, but such actions by the Respondent are the antithesis of what could conceivably be legitimate under the “Oki Data Test”. Simply put, the Respondent’s actions make it more likely than not that the Respondent opportunistically registered and used the disputed Domain Name, which is based on the Complainant’s PROAIR mark with a typo version of the word “inhaler”, to intentionally and misleadingly attract Internet users to the Respondent’s website for Respondent’s own profit.
Complainants’ Counsel: SILKA AB, Sweden
Respondents’ Counsel: No Response
Secondary Market Seller Prevails When Complainant Fails to Prove Unregistered Rights at the Time of Domain Registration
Harima Chemicals Group, Inc. v. Domain Administrator, DomainMarket.com, WIPO Case No. D2021-3512
<Harima .com>
Complaint Denied
Panelist: Mr. Assen Alexiev
Brief Facts: The Japanese Complainant, established in 1947, is a manufacturer of products based on chemical substances obtained from pine trees, having branches in Brazil, the United States, and 11 other countries. The Complainant is the owner of HARIMA trademark registrations under various classes in China since 2015. The Respondent acquired the disputed Domain Name in 2008 and it currently resolves to a web page containing an offer for sale at a price of USD $29,888. The Complainant claims having common law trademark rights in the United States in the HARIMA trademark. It points out in this regard that it established its base in the United States in 1980 and that the domain name <harima.co.jp> was used for its global corporate website since 1996. The Respondent argues “Harima” is a short single word domain name comprised solely of a geographic location, which gives it significant potential resale value. The Respondent maintains that he has a legitimate interest in the disputed Domain Name, because it is in the business of buying and selling domain names comprised of descriptive, geographic, and generic terms, common phrases, and combinations thereof. The Respondent offers its domain names for sale through a secondary marketplace website located at “www.domainmarket.com”, and sells over 1,000 domain names per year.
Held: The disputed Domain Name was acquired by the Respondent prior to the registration of the HARIMA trademark, and the Complainant failed to establish that it had unregistered trademark rights in the HARIMA at the time when the Respondent acquired the disputed Domain Name. Apart from the printout of the Complainant’s website, there is no evidence about the nature and extent of advertising using the HARIMA trademark and the Complainant has not submitted any evidence from independent sources about the degree of actual public recognition of the designation HARIMA or consumer surveys that would establish that the public in the United States recognizes it as a symbol that distinguishes the Complainant’s goods and services from those of others and that it has acquired a secondary meaning exclusively referring to the Complainant. There is no evidence that the webpage associated with the disputed Domain Name refers to the Complainant or is used to generate profit using the Complainant’s goodwill. The Respondent provides a plausible explanation for the registration of the disputed Domain Name and there is no evidence that the Respondent was aware of the Complainant when acquiring it. In view of this, the Panel sees no reason to disapprove of the Respondent’s conduct and no reason to accept that the Respondent somehow targeted the Complainant with the registration and use of the disputed Domain Name. Therefore, the Panel finds that the Complainant fails to establish that the Respondent registered and uses the disputed Domain Name in bad faith.
Complainants’ Counsel: Represented Internally
Respondents’ Counsel: Brian H. Leventhal, Attorney at Law, P.C., United States
MS is Confusingly Similar to Morgan Stanley in Fraudulent Scheme
Morgan Stanley v. robert, NAF Claim Number: FA2201001980641
<MS-Management .com>
Transfer
Panelist: Mr. Richard Hill
Brief Facts: The Complainant offers a full range of financial, investment, and wealth management services to a broad spectrum of clients with over 1,000 offices in over 40 countries and over 55,000 employees worldwide. The Complainant owns rights in the well-known MORGAN STANLEY mark through its registration worldwide including in the United States starting 1992. The Complainant argues the Respondent uses the disputed Domain Name in emails in furtherance of a fraudulent phishing scheme; the signature block of the fraudulent emails displays Complainant’s mark and the actual physical address of one of Complainant’s offices; a form attached to the fraudulent emails displays Complainant’s mark and logo.
Held: Previous panels have concluded that MS is a common abbreviation for MORGAN STANLEY and therefore confusing similarity exists. The Respondent uses the disputed Domain Name and other references to the Complainant in emails in furtherance of a fraudulent phishing scheme; such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. The said use evidences the actual knowledge on behalf of the Respondent of the Complainant’s rights in a mark prior to registration, hence, is evidence of bad faith registration and use under Policy.
Complainants’ Counsel: Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA
Respondents’ Counsel: No Response
Legal and Equitable Issues Arising from Business Arrangement Best Dealt With in Court
Helen of Troy Limited v. Kim Ju Man, NAF Claim Number: FA2112001977582
<OxoKorea .com>
Complaint Denied
Panelist: Mr. Kendall C. Reed
Brief Facts: The Complainant is a manufacturer and seller of handheld kitchen devices and appliances marketed on a worldwide basis under the OXO trademark. The Complainant is the owner of US and Korean trademark registrations since 1995 and 2010 respectively. Respondent registered the disputed Domain Name in furtherance of a business arrangement between and among Complainant, Cosmo Corporation Co., and Respondent whereby Respondent was to act as the on-line retailer of Complainant’s products in Korea. The Complainant claims the Respondent demanded an amount in excess of his out-of-pocket costs for the sale of the disputed Domain Name, equivalent to $18,000, when the Complainant contacted the Respondent through Cosmo.
Held: Respondent’s best argument is, perhaps, that he has nominal fair use rights as a seller of Complainant’s goods. However, this argument would not be successful because the disputed Domain Name itself and the content of Respondent’s website create the strong impression that they belong to Complainant or, at the least that Respondent is acting in an authorized capacity. Moreover, Complainant has demonstrated that Respondent is using the disputed Domain Name, which is confusingly similar to Complainant’s Mark, without Complainant’s permission for the purpose of intentionally creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of his website.
However, Respondent’s registration of the disputed Domain Name on or about May 16, 2016, was not in bad faith. The record herein is thin with respect to the nature of the agreements, expectations, and understandings between and/or among Complainant, Cosmo, and Respondent at the time their business arrangement was being formed, and as such the Panel cannot determine whether Respondent had the express authority or tacit approval to register the disputed Domain Name from either Complainant or Cosmo. However, it is nevertheless clear that some business arrangement was being undertaken that contemplated Respondent playing an integral role. Complainant even stated that Respondent had permission to use the disputed Domain Name during the term of the Cosmo Agreement. The record in this case appears to present a number of legal and equitable issues that are outside the scope of the Policy and would require the processes available in a court action to resolve these issues.
Complainants’ Counsel: Christina Loza of Loza & Loza, LLP, California, USA
Respondents’ Counsel: Self-represented