First Domain Registered Before Complainant Rights, Second One After
The Panel correctly determined that a domain name simply cannot have been registered in bad faith when the registration predates a trademark right, as noted in UDRP Perspectives at 3.2. It is axiomatic that a Respondent could not have registered a domain name in bad faith before a Complainant acquired rights in the corresponding trademark. For bad faith registration to have occurred, the trademark must predate the Respondent’s domain name registration. There is one limited exception to the general rule, namely where the domain name was registered because of “nascent” trademark rights, such as where the Respondent registered the domain name as a result of the Complainant’s announcement of a new corporate name or where the Respondent registered the domain name because of the Complainant’s trademark application. Continue reading the commentary here…
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We hope you will enjoy this edition of the Digest (vol. 4.52) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ First Domain Registered Before Complainant Rights, Second One After (armorbank .com and armorbank .org *with commentary)
‣ What Happens if the Respondent Claims it is Owed Money? (ocasia .org *with commentary)
‣ Respondent Used the Domain Name to ‘Offer Hacking Tools’ (redhatworld .com *with commentary)
‣ Not for the Panel to Engage in Detailed Assessment of Licensing Agreement (multiwing .com *with commentary)
‣ Complainant Fails to Establish Trademark Rights (lianogk .com *with commentary)
First Domain Registered Before Complainant Rights, Second One After
Armor Bank v. Christopher Cashak, NAF Claim Number: FA2411002123653
<armorbank .com> and <armorbank .org>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant, Armor Bank, is wholly owned by Big Creek Bancshares, Inc. (“Big Creek”). The Complainant is solely owned by and is the exclusive licensee for Big Creek and holds the right to use the ARMOR BANK trademark under a trademark license agreement. The Complainant alleges that the Respondent does not use and has not made preparations to use the disputed Domain Names in connection with a bona fide offering of goods or services. Rather, they present misleading affiliations with the Complainant, such as “sponsored listings” of bank locations in Arkansas that aim to cleverly mislead, attract, and divert customers and potential customers of the Complainant. In addition, they appear also to be engaging in “cash management” phishing schemes designed to improperly solicit the sensitive personal banking information of the Complainant’s customers and that they sent harassing emails to shareholders of Big Creek, which licenses the ARMOR BANK trademark to the Complainant.
The Respondent contends that the disputed Domain Names are used by World Domination Holdings LLC, which has common law rights to the ARMOR BANK trade and/or service mark. JumpBlast LLC is an affiliate and licensee of World Domination Holdings LLC, authorized to use the ARMOR BANK mark. The Respondent is the statutory agent for both companies. The <armorbank .com> domain name was registered by the Respondent on November 19, 2013, and the Respondent claims that it links to a website using the ARMOR BANK mark in a bona fide offering of goods or services with an express statement of the Respondent’s rights to the ARMOR BANK mark. As to bad faith, the <armorbank .com> domain name was registered by the Respondent more than 2 years, 10 months before Big Creek’s Federal trademark application, and more than 3 years, 4 months before the listed first use date. The Complainant did not submit evidence proving this to be an “exceptional case” and did not submit evidence proving the “limited circumstances” listed in section 3.8.2 of the WIPO Overview 3.0.
Held: The <armorbank .com> and <armorbank .org> domain names were registered by the Respondent as agents for World Domination Holdings LLC., respectively, on November 19, 2013, and December 26, 2022. Both domain names are resolved to the website at <armorbank .com>. This website content, several years prior to the first use of the Complainant’s mark, satisfies the Panel that, before any notice to the Respondent of the dispute, the Respondent used the <armorbank .com> domain name in connection with a bona fide offering of services pursuant to Paragraph 4(c)(i) of the Policy. The Panel accepts that, despite being registered after Big Creek acquired rights in its ARMOR BANK trademark, the registered the <armorbank .org> domain name as a defensive measure to protect its claimed common law ARMOR BANK mark. Accordingly, the Panel finds that the Respondent has rights and legitimate interests in respect of both of the Domain Names.
In terms of “UDRP Perspectives on recent jurisprudence, vol.4.30” in paragraph 3.2, there is no evidence before the Panel that the Respondent could have known of any nascent rights in Big Creek’s ARMOR BANK mark when the Respondent registered the <armorbank .com> domain name. Accordingly, the Panel finds that the <armorbank .com> domain name could not have been registered in bad faith. By the time the <armorbank .org> domain name was registered on December 26, 2022, Big Creek had registered its ARMOR BANK mark. As noted above in relation to the second element, the Panel accepts that the <armorbank .org> domain name was registered to protect World Domination Holdings LLC’s claimed common law rights in the mark, not in bad faith, even though it was after Big Creek’s registration. Finally, even assuming that the disputed Domain Names are currently being used in bad faith, the Panel is not persuaded that either of them was registered in bad faith.
RDNH: Big Creek had no established reputation in its then non-existent mark when the Respondent registered the <armorbank .com> domain name. In each of the cases cited by the Complainant in support of its contention that using a disputed domain to misrepresent an affiliation with the Complainant to attract and confuse the Complainant’s customers is “indicative of bad faith registration and use” under Policy ¶ 4(b)(iv), the trademark rights of the complainants arose prior to the registration of the disputed Domain Names. The Panel considers that the Complainant, represented by Counsel, must have known that its Complaint should fail to establish bad faith registration of the <armorbank .com> domain name.
The <armorbank .org> domain name was registered after Big Creek registered its mark. It resolves to the Respondent’s website at <armorbank .com>, which the Complainant contends to be used in bad faith. Under these circumstances, the Panel is not satisfied that the Complainant should have known that its Complaint would fail to establish bad faith registration of the <armorbank .org> domain name. The Panel therefore finds that, in relation to the <armorbank .com> domain name, the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (Part RDNH)
Complainant’s Counsel: Mark R. Holland of Mitchell Williams Selig Gates & Woodyard, PLLC, Arkansas, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel correctly determined that a domain name simply cannot have been registered in bad faith when the registration predates a trademark right, as noted in UDRP Perspectives at 3.2. It is axiomatic that a Respondent could not have registered a domain name in bad faith before a Complainant acquired rights in the corresponding trademark. For bad faith registration to have occurred, the trademark must predate the Respondent’s domain name registration. There is one limited exception to the general rule, namely where the domain name was registered because of “nascent” trademark rights, such as where the Respondent registered the domain name as a result of the Complainant’s announcement of a new corporate name or where the Respondent registered the domain name because of the Complainant’s trademark application.
Sometimes a registrant will register a second domain name to bolster, protect, or enhance its original domain name registration. In this particular case, the Respondent’s first registration was clearly prior to any evidence of adoption of the corresponding mark by the Complainant, but the Respondent’s second domain name was registered subsequent to the Complainant’s trademark rights. In such a situation, the first domain name registration is clearly in good faith since it predates any rights held by the Complainant. When it comes to the second domain name however, a Panel must determine whether the justification for registering the second domain name is genuine, e.g. to bolster or protect the first domain name registration, or to target the Complainant’s rights. In such cases it will generally be very difficult for a Complainant to prove that the Respondent’s second domain name registration was to target the Complainant rather than to bolster the Respondent’s original registration and to protect its common law rights related to the first domain name, as was the case here.
What Happens if the Respondent Claims it is Owed Money?
Olympic Council of Asia v. DEMCO, DEMCO, WIPO Case No. D2024-4233
<ocasia .org>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant is an organization, headquartered in Kuwait, engaged in developing sport, culture, and education of Asian youth. In 2001, the Complainant engaged the Respondent to register and maintain a website at the disputed Domain Name, which was registered on April 28, 2001. This Domain Name has since been used for a website operated by or on behalf of the Complainant. The Complainant is the owner of Kuwait trademark registration for the word mark OLYMPIC COUNCIL OF ASIA, registered on May 13, 2008.
The Complainant alleges that while “Respondent may have had a legitimate right to maintain and/or control the content at the domain name,” that right terminated upon the parties’ commercial relationship coming to an end in 2019. Since that date, the Complainant has repeatedly asked for the transfer of the disputed Domain Name, but the Respondent has allegedly refused without additional consideration being paid. Further, the Respondent has used the disputed Domain Name in bad faith by recently taking down the Complainant’s website. The Respondent did not file a Response.
Held: In cases where a respondent, acting on behalf of a complaint, wrongfully registers a domain in its name rather than the complainant’s, then a finding of registration in bad faith may follow. In this case, however, there is no evidence – or indeed submission on the part of the Complainant – that the Respondent was instructed, or otherwise obliged, to register the disputed Domain Name in the Complainant’s name rather than its own. In this case, similar to WIPO Case No. D2019-2753, there is no evidence that the Respondent was required to register the disputed Domain Name in the Complainant’s name, and the inference to be drawn from the Complainant’s submissions and surrounding circumstances is, in fact, to the contrary.
Further, regarding the Complainant’s assertion in terms of “retroactive bad faith”, the Panel notes that, while the Complainant claimed to have emails confirming the Parties’ understanding concerning ownership of the disputed Domain Name, it has been unable to produce any such evidence despite having several opportunities to do so. Moreover, the sworn statement of the Complainant’s Chief Financial Officer indicates that the Respondent was engaged to register the disputed Domain Name, including for at least some time in the Respondent’s name, and create a website for the Complainant. In the circumstances, the Panel is unable to conclude that the disputed Domain Name was registered in bad faith for the purposes of the Policy, and the Complaint must necessarily fail.
The Panel makes the observation, however, that such finding should not be taken as an endorsement of the Respondent’s actions and does not prejudice the Complainant’s ability, if so advised, to pursue an appropriate case before a court of competent jurisdiction, which may provide a more appropriate forum for a detailed investigation of the facts and legal implications than is possible in proceedings under the UDRP.
Complaint Denied
Complainant’s Counsel: Bailey Duquette P.C., United States of America
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel correctly dismissed the Complaint on the basis that the Domain Name had been registered on the Complainant’s behalf in good faith to begin with. Notably, the Panel stated however, that such cases can de distinguished from cases where a respondent, acting on behalf of a complaint, wrongfully registers a domain in its own name rather than in the complainant’s, i.e. contrary to the instructions and authorization of the Complainant, and in such cases a finding of registration in bad faith may follow.
What is the justification for dismissing a case where the Domain Name was registered with authorization in good faith but then subsequently withheld by a Respondent once the relationship terminated? Primarily it is because the Policy specifically required both bad faith registration and bad faith use, but there are reasons beyond this technical requirement. Cybersquatting is generally typified by registrations effected by strangers, not by parties in a relationship. Where parties are in a business relationship issues of contractual interpretation and enforcement often arise, bringing the dispute outside of the limited scope of the UDRP. Additionally, parties to such a dispute are not without recourse. Rather they can avail themselves of the courts that they would have contemplated for resolution of any business dispute when they entered into contractual relations to begin with. Lastly, where the Respondent claims that it is owed compensation in consideration for releasing the Domain Name, as here, a UDRP Panel is only empowered to resolve part of the dispute, i.e. the transfer itself, without addressing or resolving the issue of money potentially owed. For example, a Respondent web designer may have a valid contractual claim for thousands of dollars in unpaid remuneration, or even be able to rely upon a contractual provision requiring compensation for release of the Domain Name. In such cases, the UDRP is unsuited to resolve the dispute because the dispute necessarily involves wider issues than the UDRP is able to resolve and it would be unjust to just transfer a Domain Name and leave the counterclaiming party high and dry, having lost all of its leverage as a result of a domain name transfer that didn’t deal with the counterclaim.
Respondent Used the Domain Name to ‘Offer Hacking Tools’
Red Hat, Inc. v. Qasim Ali, NAF Claim Number: FA2411002126913
<redhatworld .com>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant, since 1993, has provided a variety of enterprise open-source and related software solutions under the REDHAT mark and a logo mark consisting of a gentleman wearing a red hat at a distinctive angle. The Complainant has rights in the REDHAT mark through its registration with the USPTO (registered on March 10, 1998). The Complainant alleges that the Respondent uses the Domain Name for a website that operates as a forum to promote illegal hacking and on that forum reproduces both the Complainant’s REDHAT mark and associated logo and that the Respondent registered and used the Domain Name in bad faith by attempting to attract Internet users to the Domain Name to promote its hacking forum.
The Complainant further alleges that the Respondent uses the Domain Name to promote illegal hacking practices and that the Respondent had actual or constructive knowledge of the Complainant’s rights in the REDHAT mark as the Respondent’s Website reproduces both the REDHAT mark and Complainant’s logo. The Respondent failed to submit a formal Response in this proceeding but, in an email to Forum, stated that the Domain Name is not confusingly similar to the Complainant’s Website, and the Respondent has registered a company in Dubai with the name “Red Hat World LLC.”
Held: The Respondent’s email does not otherwise respond to the Complaint, contains no documentary material verifying the Respondent’s claim, and in the absence of documentary support, the Panel does not accept the Respondent’s ambit claim as to registration of a company known as “Red Hat World LLC.” The Domain Name is presently inactive but, prior to the commencement of the proceeding resolved to the Respondent’s Website, which reproduces Complainant’s REDHAT mark and associated logo and advertises and promotes illegal hacking tools. Use of a domain name that offers and promotes a service that offers a hacking tool or otherwise illegal software is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
It is unclear when the Domain Name was first registered, but it is apparent from the Whois history provided in the Complaint that the Respondent acquired the Domain Name after May 21, 2020. The Panel finds on the balance of probabilities that, at the date, the Respondent acquired the Domain Name, the Respondent had actual knowledge of the Complainant’s REDHAT mark as the Respondent’s Website reproduces the Complainant’s mark and related logo. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii). Further, the Respondent registered and used the Domain Name in bad faith to create confusion with the Complainant’s REDHAT Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that advertises and promotes hacking services. Use of a disputed Domain Name in this manner is bad faith use under Policy ¶ 4(a)(iii).
Transfer
Complainant’s Counsel: Crystal Genteman of KILPATRICK TOWNSEND & STOCKTON LLP, Georgia, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Although the Respondent may have had an arguable defense that it was using the Domain Name fairly as a “RED HAT community” forum or was non-commercial, for example, it was incumbent upon the Respondent to make out such a case. Here, in the absence of any defense the Panel apparently correctly ordered the transfer having found bad faith and no rights or legitimate interest. Although the Respondent sent in an email – which can and was taken into account – it was apparently not sufficiently responsive to the allegations and evidence submitted by the Complainant. That being said, if the Panel had reviewed the evidence and found that the Complainant had not made out its case, then the Panel would have been well within its rights to dismiss the case – even in the absence of a Response.
Not for the Panel to Engage in Detailed Assessment of Licensing Agreement
Multi-Wing Group A/S v. Patrick Hogrefe, WingFan Ltd. & Co. KG, WIPO Case No. D2024-4423
<multiwing .com>
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant’s group has supplied custom axial fans and impellers for use in industrial applications under the mark MULTI-WING for some 65 years. The Complainant owns an EU trademark for MULTI-WING, registered on June 15, 1998, and operates a website at <multi-wing .com>. The Complainant and the Respondent (through their predecessors) entered into a “Know-How and License Agreement” dated February 4, 1999, under which the Complainant granted the Respondent the exclusive right to manufacture and sell certain impeller models in Germany and seven other European countries from January 1, 1999, to December 31, 2008, replacing a 1995 contract between the parties. Clause 2.1 provided that the products had to be sold under the MULTIWING trademark and that “[a]fter any potential separation”, both parties may continue to use the trademark. The Licence Agreement was terminated in 2001.
The Respondent registered the disputed Domain Name on April 6, 2000, and currently resolves to a website offering cooling and fan systems under the mark WINGFAN GROUP. The Complainant alleges that the disputed Domain Name has been used and is presumed intended for continued use, in violation of the Complainant’s trademark rights, including the Respondent’s marketing and sale of similar goods and services. The Respondent contends that the parties have cooperated closely for some 40 years based on the Licence Agreement, which was “unilaterally and prematurely” terminated by the Complainant in 2001, and that the Respondent has continuing legitimate interests in the disputed Domain Name arising from clause 1.2 of the Licence Agreement, and has built up long-term goodwill arising from ownership of the disputed Domain Name for over 20 years.
Held: Neither the Complaint nor the Complainant’s legal letter of September 18, 2024, annexed to the Complaint, made any mention of the Licence Agreement. Both documents proceeded as if there had been no prior business relationship between the parties. Having been given an opportunity to comment on the Licence Agreement in PO1, the Complainant disputes that this entitles the Respondent to use the disputed Domain Name, including on the grounds that the Licence Agreement only permitted the marketing of specific products under the MULTI-WING mark and that the Licence Agreement was limited to specific countries. In contrast, the disputed Domain Name is “an international .com domain”.
However, it is neither within the role nor the competence of the Panel to engage in a detailed assessment of the ambit of the Licence Agreement. Rather, the issue for the Panel is whether or not the Complainant has established that, on the balance of probabilities, the Respondent both registered and used the disputed Domain Name in bad faith. Here, the Complainant has not provided any evidence to the Panel that the Respondent registered the disputed Domain Name in 2000 in bad faith. The Complainant relies on the Respondent’s use of the disputed Domain Name on September 18, 2024, to resolve a website selling competing products under the Respondent’s WINGFAN GROUP brand.
Whether or not this activity breached the Licence Agreement or infringed the Complainant’s trademark rights, which are both matters outside the scope of this proceeding, the Panel does not consider that such use of the disputed Domain Name is of any relevance to the Respondent’s state of mind when registering the disputed Domain Name some 24 years earlier in the course of the now-terminated Licence Agreement. Even if the Respondent’s actions in September 2024 did amount to the use of the disputed Domain Name in bad faith, the Complainant has still failed to prove the other essential limb of the third element, namely that the Respondent registered the disputed Domain Name in bad faith in 2000.
Complaint Denied
Complainant’s Counsel: DLA Piper Denmark Law Firm P/S, Denmark
Respondent’s Counsel: Internally Represented
Case Comment by ICA General Counsel, Zak Muscovitch: Here the Panelist deftly handled what could have been a complex contractual dispute well outside of the scope of the UDRP. The Panelist correctly stated that “it is neither within the role nor the competence of the Panel to engage in a detailed assessment of the ambit of the Licence Agreement”. As noted by UDRP Perspectives at 0.1, the UDRP is not intended to resolve all kinds of disputes. Rather, it is only designed and intended for clear cut cases of cybersquatting. Other disputes are not intended to be resolved by the expedited and administrative nature of the UDRP procedure. The Policy requires Panels to discern those cases appropriate for resolution and to dismiss those that are not. Courts, which are equipped with robust discovery and cross-examination, should be deferred to where a case involves material unreconcilable facts and versions of events or where credibility is a key issue and is unable to be determined.
Complainant Fails to Establish Trademark Rights
<lianogk .com>
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant, based in the Russian Federation, operates a hotel and office facilities in Moscow, where it provides hotel accommodation and office space rental services. The Complainant maintains that its hotel and office services have a strong reputation among consumers and business partners in the Russian Federation and that, by reason of its adoption and long-term use of the brand Lianozovskiy OGK, the Complainant has unregistered trademark rights in this brand. The disputed Domain Name was registered on January 25, 2021, and resolves to a Russian-language website that contains articles discussing the activities of the Complainant’s management. The Complainant notes that some websites list its business as “Lianozovskiy Hotel and Office Complex,” which is a formal version of “Lianozovskiy OGK.” According to it, “OGK” is a recognized abbreviation for “ofisno-gostinichnyy kompleks” (“office and hotel complex”). It is commonly used interchangeably with the full name in both business and consumer contexts, so the public, industry partners, and consumers would easily associate the disputed Domain Name with the Complainant’s Lianozovskiy OGK business, despite the abbreviation, as both names are synonymous.
The Complainant alleges that the disputed Domain Name is confusingly similar to its unregistered trademark Lianozovskiy OGK, because it includes the terms “Liano” and “ogk” and is likely to cause confusion with the trademark, leading consumers to believe that the disputed Domain Name is associated with the Complainant’s services. The Respondent contends that the Respondent submits that it has no intention to imitate, mislead, or confuse Internet users regarding any association with the Complainant and adds that “Lianozovsky” refers to a well-known district in Moscow and that “OGK” is an abbreviation commonly used in Russian business contexts, which in this case stands for “Объединённая Гостиничная Компания” (in English – “United Hotel Company”). The Respondent submits that the terms “lianogk” and “Lianozovskiy OGK” are not registered as trademarks anywhere in the world. Moreover, the term “lianogk” is not inherently distinctive or exclusively tied to the Complainant’s brand, as it does not appear in the Complainant’s business profile or on the Complainant’s invoices and business card and is not being used as an abbreviation or as a recognized identifier of the Complainant’s business.
Held: The Complainant does not have a registered trademark and claims to have unregistered trademark rights in its abbreviated name, “Lianozovskiy OGK.” The evidence shows that since 2016, Complainant’s hotel has been listed on various third-party reservation platforms under several variants of its full name, achieving modest rankings from a small number of reviews. The abbreviation “ОГК” (“OGK”) appears only in invoices or certificates from third parties. There is no evidence that “ОГК” (“OGK”) is widely used as an abbreviation for “hotel and office complex (in Russian).” Rather, a simple Internet search shows it’s used for various unrelated purposes. The hotel listings submitted by the Complainant include a photo of the hotel façade with only the sign “Гостиница” (meaning “Hotel”) visible on the roof, without the name “Lianozovskaya.” Apart from the above, the Complainant has not provided evidence of advertising for the unregistered trademark Lianozovskiy OGK or any consumer, industry, or media recognition, nor consumer surveys.
The Complainant appears to be conducting its business only through third-party reservation platforms and states that it does not have its own domain name and official website. This is confirmed by the fact that it uses in its business Mail.ru email addresses rather than email addresses set up at a domain name reflecting its claimed unregistered trademark or any other variation of its corporate name. Taking all this together, the Panel finds that although the evidence submitted by the Complainant shows that it has used different variations of its corporate name in its business since 2012, this evidence is far from sufficient to support a finding that its claimed unregistered trademark Lianozovskiy OGK (or any other variation of its corporate name) has become a distinctive identifier that consumers associate with the Complainant’s services. On this basis, the Panel concludes that the Complainant has failed to establish trademark or service mark rights for the purposes of the Policy and that it does not have standing in the present proceeding.
Complaint Denied
Complainant’s Counsel: Soundmark Law, Canada.
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel correctly determined that although the Complainant claimed common law trademark rights, it failed to satisfactorily prove them. As noted in UDRP Perspectives at 1.1, for a Panel to award common law rights to any expression, thereby granting it the same status as a registered trademark, without proper evidence would be improper and unjust. To support a claim of common law trademark rights, a Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services. Proof of common law trademark rights cannot be based on conclusory allegations. A Complainant will have failed to establish common law rights in its mark where it makes mere assertions of such rights, which are insufficient without accompanying evidence to demonstrate that the public identifies a Complainant’s mark exclusively or primarily with a Complainant’s products.
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.