Food for Thought: 26-Year-Old Domain Name Transferred

Food for Thought: 26-Year-Old Domain Name Transferred

Mere Possibility of Infringement Is Not Bad Faith… with the caveat that we are not privy to all of the information contained within the complaint, the FoodClub.com UDRP decision raises some important issues which in my opinion, should have led to a different decision… continue reading.

We hope you will enjoy this edition of the Digest (vol. 4.18), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):

‣ Food for Thought: 26-Year-Old Domain Name Transferred (foodclub .com *with commentary)

‣ Motherhood: No Evidence Registration of Common Dictionary Term Targeted Complainant (motherhood .ai *with commentary)

‣ Another Mother, This Time Transferred (mutti .com *with commentary)

‣ Trademark Principles and Court Better Suited Than UDRP to Resolve This Porn Dispute (thecamdude .com)

‣ Pending Trademark Application Does Not Confer Rights Under the Policy (polybet .app)

Topco Holdings, Inc. (Cooperative) v. Patricia Doolittle / Diversified Exchange LLC, NAF Claim Number: FA2404002091468

<foodclub .com>

Panelist: Mr. Neil Anthony Brown KC

Brief Facts: The Complainant asserts that it is a prominent United States company that since 1945 has been engaged in providing knowledge management solutions for companies in the food industry. The Complainant has acquired registered trademark rights in the FOOD CLUB trademark by virtue of its registration with the USPTO (August 20, 1957) and other word, design and common law trademarks for FOOD CLUB and derivatives. The Complainant has registered the domain names <topco .com> and <foodclubbrand .com>. It markets a broad range of food and related goods and services under the brand “Food Club Since 1945”.

The Respondent registered the disputed Domain Name on March 13, 1998. The Complainant alleges that the internet users would likely assume, due to the mere presence of the domain name, that the Complainant did not have an active URL related to its extensively promoted FOOD CLUB branded products, inevitably giving rise to harm to the Complainant’s reputation and disruption to its business, as it did have such a URL and the evidence shows that the entirety of the Respondent’s conduct amounts to bad faith registration and use of the Domain Name. The Respondent failed to submit a Response in this proceeding.

Held: The Panel finds on the evidence that the Complainant has made out a prima facie case. The evidence shows that the Respondent has not made a bona fide use of the domain name within the meaning of Policy as it has been used to impersonate the Complainant by using its trademark and has not used it for any active purpose or any other purpose that can remotely be described as bona fide. It cannot be bona fide for the Respondent to permit its registrar to purport to offer the domain name for sale by using the words “Get This Domain” on the inactive website to which the domain name now resolves. Moreover, the Wayback Machine to which panelists have recourse when it shows supportive evidence, demonstrates that the Respondent has long had knowledge of the significance of the FOOD CLUB trademark and either used it or allowed it to be used in many branches of the food and related industries genre. Thus, it cannot be said that the Respondent has made a bona fide use of the Domain Name when the Respondent has used it for decidedly non-bona fide purposes and that it has been for sale on numerous occasions.

The Complainant has further submitted that the Respondent has registered and used the disputed Domain Name in bad faith on several grounds. It is clear from the evidence that the Respondent has intentionally attempted to attract internet users by creating confusion as to its relationship to the Complainant and for commercial gain by one means or another within the meaning of Policy ¶ 4(b)(iv); in particular, the Respondent has registered and retained the domain name since 1998 and has allowed or caused its Registrar to offer it for sale by the use of the words “Get This Domain”. The inference must be drawn from the evidence that the Respondent registered and used the domain name, by retaining it since 1998 and allowing or causing it to be offered for sale, used it frequently in the manner shown from the Wayback Machine as aforesaid and primarily to disrupt the Complainant’s business within the meaning of Policy ¶ 4(b)(iii).

In addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent’s registration of the disputed Domain Name using the FOOD CLUB trademark and in view of the conduct that the Respondent has engaged in as shown by all of the available evidence, the Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.

Transfer

Complainants’ Counsel: Sean J. Quinn of Gozdecki, Del Giudice, Americus & Brocato LLP, Illinois, USA
Respondents’ Counsel: No Response

Case Comment by Panelist, Mr. Jeff Neuman:

The views expressed herein are Jeff’s and do not necessarily reflect those of the ICA or its Editors.

Jeff Neuman has been instrumental in providing policy and implementation assistance and advice in the fields of internet governance, intellectual property protection and domain name policy since the mid-1990s. Currently, Mr. Neuman is the COO/Chief Legal Officer of Dot Hip Hop, LLC, the registry operator of the .hiphop gTLD. He is also the Founder and CEO of JJN Solutions, LLC., a consultancy focusing on legal and policy services related to online brand protection, domain name management, intellectual property licensing and enforcement. In 2020, he was accredited as a Panelist for The FORUM and has decided more than 50 UDRP decisions.

Prior to JJN Solutions, Mr. Neuman served as Senior Vice President of Com Laude USA / Valideus USA, where he served as the lead executive responsible for the registry management and domain name portfolio business and operations in North America. Before Com Laude, Mr. Neuman led Neustar’s domain name registry business responsible for nearly $100M of business.

Mere Possibility of Infringement Is Not Bad Faith

With the caveat that we are not privy to all of the information contained within the complaint, the FoodClub.com UDRP decision raises some important issues which in my opinion, should have led to a different decision.

1. Lengthy Delay of 26 Years

The ultimate decision ordered the transfer of a domain name that was registered approximately 26 years ago. This fact alone ought to give Panelists pause especially if it is considering transferring a domain name away from the original registrant. Under the UDRP, there is no statute of limitations as to when a UDRP case can be brought, nor does the UDRP adopt the doctrine of laches (which would allow panelists to deny a claim on the basis that the Complainant unreasonably delayed filing a complaint to the detriment of the Respondent). That said, Panelists have taken the position that lengthy delays in seeking administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in a disputed domain name, or the respondent’s alleges bad faith in registering and using the domain name.” See Uline, inc. v. Bhavna Barbaria, D2015-0462 (WIPO May 15, 2015).

In this decision, however, it seems that the 26-year delay in bringing this action was not fully considered in the analysis. Despite the two and a half decades since the registration of the domain name, the Panelist concluded based on circumstantial evidence at best that the registrant must have not only had actual knowledge of the Complainant’s pre-existing trademark, but that it registered the domain name “primarily to disrupt the Complainant’s business.”

2. Panelist Research

UDRP Panelists differ on whether outside research (meaning looking beyond the words in a Complaint or Response) can be conducted, and if so, what the extent of that research should be. Under the UDRP, conducting research is allowed, and it is generally accepted that looking at the activity on the website itself and using the Internet Archive are generally acceptable research tools. However, the debate is whether those tools should be used merely to confirm what is in the Complaint and/or the Response and balancing that with the temptation to use those tools to make the case for one side or the other. Doing the latter is considered by most panelists as crossing the line. Because the general public is not provided with access to the pleadings, we cannot assess in this case whether the research was merely to confirm what was in the Complaint or whether it was used to enhance the Complainant’s arguments.

3. Does the Possibility of Infringement give rise to Use in bad faith?

While conducting his own research using the “Way Back Machine”, the Panelist discovered that the Respondent had used the <foodclub.com> domain name to point for a variety of purposes over those 26 years. At times the domain name pointed to directories for the “Most popular sites for food and recipes”. At other times, the domain name pointed to numerous food and related websites under the headings “Food and Recipes” and/or links to websites about diet and nutrition. Finally, in June 2022, the Panelist concluded that the domain name was listed for sale. Based on this research, it was concluded that the domain name was being used in bad faith. The decision states: “It is clear from the evidence that the Respondent wanted internet users to think that it was the Complainant or was authorized by it and that it set about confusing them by using the FOOD CLUB trademark in the domain name as described above; that conduct must have engendered in the minds of internet users confusion whether the purported connection with the trademark and its owner were genuine or not.”

If the trademark in the dispute were a famous trademark, a coined term, or one that was incredibly strong and distinctive (e.g., Pepsi, Kodak, Disney, Gucci, Exxon), perhaps the conclusion would have made more sense. However, we are not dealing with such a mark. Here the mark is incredibly weak and composed of two generic/descriptive words. In addition, the trademark registration with the US Patent and Trademark Office not only requires the trademark owner to disclaim any rights in the word “food”, but also limits the goods to only sale of specific products (food items including meats, juices, pastas, etc.). The trademark is not registered in connection with the provision of any services such as recipes or providing diet and nutrition information. This makes sense because it is unlikely that the USPTO would approve those uses for the “FOOD CLUB” mark because the mark itself would be considered descriptive if used in connection with those services. And, when a mark is considered “descriptive”, it is not eligible to be protected through a trademark registration.

Yet, the evidence pointed to of the Respondent’s bad faith use of the Complainant’s mark was actually for the descriptive services for which Complainant was not entitled to protection. The Respondent was using the <foodclub.com> domain for 24 of the 26 years in its descriptive sense, namely, a place to go dedicated to a particular interest, namely, food (aka a “Food Club”).

Despite the actual use of the domain name throughout the 26 years, the Panelist found that Respondent’s use essentially was infringing on the Complainant’s trademark rights. Even assuming that the mark was not necessarily descriptive. Is it possible that over the years the domain was used in an infringing manner? Perhaps. But it is equally plausible that the use made of the domain name over the years did not infringe the trademark rights of the Complainant. In either case, the determination of whether or not there was trademark infringement is not a simple matter. In fact, it requires that the trademark owner prove that the use of the mark by a third party is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the third party’s marks. This type of conclusion can only be made by a court with competent jurisdiction, and only after collection of evidence, surveys, depositions, testimony, cross examination, etc. This is not a determination that can or should be made by a UDRP Panelist. The Panelist here made that determination without the benefit of any of that evidence.

4. Even if there is “use in bad faith”, does that mean that there was registration in bad faith?

Even assuming that at certain times during the 26 years the domain name was used in bad faith, a Complainant must also establish that the domain name was registered in bad faith when the Respondent initially registered the domain name in 1998. The Panelist found that there was registration in bad faith here by assuming that the Respondent must have had actual knowledge of the Complainant. In other words, it concludes that because the Respondent used the domain name in connection with food related services, the very nature of the descriptive term “food club”, and the fact that it offered the domain name for sale, it must have had actual knowledge of the Complainant. And by inferring both infringement and actual knowledge of the Complainant, the Panelist found that the domain name was both registered and used in bad faith.

But what was the basis for that assumption? Sure, if this were a famous or well-known mark like Google, Amazon, YouTube, McDonalds, Disney etc., one could be reasonably safe assuming that everyone knows about those brands. But “Food Club”? Is that a mark that is so famous that every potential registrant in 1998 must have known of the company and its branded meatballs, pastas, juices, etc. Can we really assume that the Respondent registered the descriptive foodclub.com domain name with the Complainant in mind. Yes. the Complainant had been around for many decades, but to assume (without evidence) that this Respondent must have known about this Complainant, and that it registered the domain name with the Complainant in mind seems to be a stretch at best.

Conclusion: As Panelists, we never know why a Respondent has not provided a response. Was it because they never actually received the Complaint or was it that they did receive the Complaint and didn’t actually care about the name. Or was it that they didn’t actually understand what they received, or they knew what it was but knew they were engaging in abusive domain name practices. Regardless of why a response was not filed, we have a duty to conduct our own independent analysis of the facts presented by the Complainant. We may, in the case of a default, assume all the facts alleged by the Complainant are correct, but we cannot just accept the legal conclusions presented by the Complainant. In other words, the key question we must ask ourselves is: “Even if all the facts presented by the Complainant are true, does that amount to the registration and use in bad faith.” In this case, with the facts presented, I could see a number of panelists deciding this in favor of the Respondent.

Motherhood: No Evidence Registration of Common Dictionary Term Targeted Complainant

MATERNITY IP HOLDINGS LP v. Michael Fournier, WIPO Case No. DAI2024-0021

<motherhood .ai>

Panelists: Mr. Adam Taylor

Brief Facts: The Complainant and its predecessors have supplied maternity apparel under the trademarks MOTHERHOOD and MOTHERHOOD MATERNITY since around 1952. The Complainant claims it is the largest global maternity company with a “consumer base” of over 20 million. The Complainant relies on several registered trademarks for MOTHERHOOD including the US trademark (registered on January 4, 1977); the UK trademark (March 31, 2023); and the international trademark for MOTHERHOOD MATERNITY (January 24, 2013). The Complainant operates a website at <motherhood .com>. The disputed Domain Name was registered in 2021 and resolves to a website offering the disputed Domain Name for sale including a statement that the seller would only consider offers of US $30,000 or over.

The Complainant alleges that the Respondent is not making a bona fide of goods or services because the Respondent is diverting the Complainant’s customers and offering for sale a domain name and that the disputed Domain Name is not being used or demonstrably intended to be used in connection with any dictionary meaning rather than to trade off third-party rights. The Complainant further alleges that the Respondent acquired the disputed Domain Name for resale to the Complainant or a competitor because the disputed Domain Name merely resolves to a webpage offering the disputed Domain Name for sale and also links to a domain trading website, further evidencing cybersquatting use of the disputed Domain Name. Complainant alleges that it is more likely than not, that the Respondent had the Complainant’s globally recognised mark in mind when registering the disputed Domain Name, which exactly reproduces the Complainant’s mark. The Respondent did not reply to the Complainant’s contentions.

Held: Notwithstanding the Respondent’s default, the Panel here considers that the Complainant has failed to establish the third element on the balance of probabilities as the disputed Domain Name comprises the common dictionary term “motherhood” and the Complainant has produced minimal evidence in support of its alleged substantial reputation in the United States, simply some screenshots relating to various awards since 2021, which in any case are related to the brand MOTHERHOOD MATERNITY and not specifically to MOTHERHOOD. The Complainant has provided no evidence supporting its alleged global reputation including in France, where the Respondent is located and that the Respondent has ever used the disputed Domain Name in connection with the Complainant’s industry or otherwise to target the Complainant in some way. Accordingly, the evidence in the case file does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trade mark.

The fact that the disputed Domain Name resolves to a webpage offering the disputed Domain Name for sale. Generally, panels have found that the practice of registering a domain name for resale would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor), see WIPO Overview 3.0, section 3.1.1. As indicated above, the Complainant has not provided evidence indicating that, on balance, the Respondent likely acquired the disputed Domain Name for sale to the Complainant based on the Complainant’s trademark rather than for sale to the world at large as a dictionary-word domain name. In those circumstances, the mere fact that the disputed Domain Name happens to correspond to the Complainant’s mark does not assist the Complainant. All that the Respondent has done here is offer for sale a domain name that constitutes a common dictionary term. The Panel does not see how such a step can be equated to an attempt to confuse the customers of an entity that happens to own a corresponding trademark.

Complaint Denied

Complainants’ Counsel: ESCA Legal, United States.
Respondents’ Counsel: No Response

Case Comment by ICA General Counsel, Zak Muscovitch:

There are no default judgments in the UDRP. As shown in this case, even where a Respondent defaults, a Panelist is obliged to consider the merits of the case. As the Panelist noted; “while a panel may draw appropriate inferences from a respondent’s default, a respondent default is not necessarily an admission that the complainant’s claims are true”.

One of the first things that a Panelist must do when reviewing a Complaint is draw an informed preliminary judgment on the nature of the Domain Name. Does it correspond to an obviously famous brand? Is it a generic or descriptive term? Is it a surname? Does the Domain Name necessarily and exclusively relate to the Complainant? Are there potential good faith uses for the Domain Name? There is a spectrum of analysis here. On the one extreme is a Domain Name that corresponds to a famous and unique brand like PEPSI. On the other extreme is a Domain Name that corresponds to a common dictionary term, like “motherhood”. Here, the Panelist properly observed at the outset that the Domain Name corresponded to a common dictionary term but the analysis doesn’t end there. Rather, the Panelist’s inquiry next focuses on whether despite being a common dictionary term, there is evidence of substantial reputation in the mark, such that it is likely that the Respondent was aware of the Complainant’s mark at the time of registration. Here, the evidence of Complainant’s reputation was insufficient to draw the inference that the Respondent was aware of the Complainant at the time of registration of the disputed Domain Name.

But even if the Complainant’s reputation had extended from the U.S. to France where the Respondent resides, that is not the end of the inquiry because mere awareness of a mark at the time of registration is insufficient to prove targeting, particularly where a mark corresponds to a common term. As noted in Dialoga Servicios Interactivos, S.A. v. Finlead AG, WIPO Case No. D2018-2768 in connection with the common Spanish word, “Dialoga”:

“Even had the Complainant been in a position to demonstrate that the Respondent had been aware of the Complainant or its trademarks prior to registering the disputed domain name, which it is not, this fact on its own would not necessarily have led to a finding of registration in bad faith. Something more would have been needed to demonstrate on the balance of probabilities that the Respondent also had an intent to target trademark rights as opposed to merely benefitting from the presence and attractiveness of the dictionary word in the disputed domain name leading to a variety of possible uses which would not necessarily conflict with the Complainant’s rights.”

Absent direct proof that a generic or descriptive domain name was registered solely for the purpose of profiting from a complainant’s trademark rights, there can be no finding of bad faith registration and use; Ultrafem, Inc. v. Warren Royal (NAF FA0106000097682).

After all, one could be aware of a mark but have a wholly unrelated reason for having registered it, such as its value as a common dictionary term. As stated in Uovo Art LLC v. Mira Hold, Mira Holdings, Inc., WIPO Case No. 2016-0214; “The Policy was never intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. As the panelists in Ancien Restaurant Chartier v. Tucows.com Co, D2008-0272, (WIPO 2008) put it:

“It is in general essential to a finding of bad faith registration and use under the Policy, that a Respondent must have targeted Complainant or its trade mark, or at least had Complainant in mind, when it registered the disputed domain name.” [emphasis added]

Another Mother, This Time Transferred

Mutti s.p.a. v. Web Media Group LLC, CAC Case No. CAC-UDRP-106380

<mutti .com>

Panelist: Mr. Guido Maffei

Brief Facts: The Complainant is an Italian company specialising in preserved food and, particularly, in the tomato field. The Complainant was founded in 1899 in the province of Parma by Callisto and Marcellino Mutti. The Complainant informs that the “two lions” trademark (MUTTI PARMA device) was registered in 1911. The Complainant is the owner of several trademarks consisting of or including MUTTI and it is also the owner of the domain name <mutti-parma .com> registered since January 27, 1999, and used in connection with the official website of the Complainant. The disputed Domain Name was registered on December 13, 2003. The Complainant provided a historic Whois search on <mutti .com>, based on this information the Complainant assumes that the Respondent acquired the disputed Domain Name for sure after February 28, 2008.

The Complainant alleges that given the distinctiveness and reputation of Complainant’s business and trademarks worldwide, it is inconceivable that the Respondent could have acquired the disputed Domain Name without actual knowledge of MUTTI and its rights in such marks. The Complainant also notes that the disputed Domain Name was never used but in 2014 and 2016 it contained links related to the Complainant’s trademark and business. The Complainant further alleges that the Respondent acquired the disputed Domain Name to sell it to the trademark owner. This is confirmed by the fact that currently the disputed Domain Name is offered for sale for a very high amount of money. The Respondent did not file a Response.

Held: The Complainant demonstrated that the disputed Domain Name is offered for sale for a very high amount of money. The Panel finds that said activity, per se, does not provide a legitimate interest in the disputed Domain Name under the Policy. Furthermore, the Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed Domain Name as it is not commonly known under the disputed Domain Name and was never authorized to use the MUTTI trademark by the Complainant. The Respondent, in the absence of any response, has not shown any facts or element to justify prior rights or legitimate interests in the disputed Domain Name.

The Panel has duly considered that according to the current Whois records and to the report made available by the Complainant, the disputed Domain Name was registered in 2003, but the ownership of the disputed Domain Name has changed in favour of the current owner only after February 28, 2008. According to the above, it is clear to the Panel that the Respondent has acquired the disputed Domain Name years after the registration of the MUTTI mark. In any case, given the use of the mark MUTTI since the beginning of the 90s, it is highly possible that even the original registrant of the disputed Domain Name was aware of the MUTTI trademark when it registered <mutti .com> on December 13, 2003. Accordingly, the Panel finds that it was more likely than not that the current Respondent was well aware of the Complainant, its business and the MUTTI mark when it registered the disputed Domain Name and that he did so opportunistically.

The Respondent has not used the disputed Domain Name but rather resolves to a parking page on which it is advertised as being for sale for US $250,000. The advertised price is exorbitant, especially, if compared with the administrative costs involved in applying for and maintaining the disputed Domain Name. Therefore, it is apparent that the Respondent acquired the disputed Domain Name to make a profit from its resale. These facts, including the well-reputed nature of the MUTTI mark, the parking of the disputed Domain Name on a parking page with an advertisement for the sale of the same disputed Domain Name <mutti .com> at an exorbitant price and the fact that the disputed Domain Name has been used in the past in connection with a webpage including links related to the Complainant’s trademark and business, are circumstances together highly supportive of inference of the Respondent’s use of disputed Domain Name in bad faith.

Transfer

Complainants’ Counsel: Andrea Mascetti (Barzanò & Zanardo Milano S.p.A.)
Respondents’ Counsel: No Response

Comment by ICA General Counsel, Zak Muscovitch:

Let’s go through the same analytical steps as we did with the Motherhood .ai case, above.

1. Default Still Requires Consideration of Merits

Both respective Panelists considered each case on their merits despite no Response having been filed.

2. Preliminary Consideration of the Nature of the Domain Name

In the Motherhood .ai case, you will recall that the Panelist considered the nature of the Domain Name and identified it as a dictionary term. You will also recall that I suggested several questions for a Panel to ask itself when considering the nature of the Domain Name; Does it correspond to an obviously famous brand? Is it a generic or descriptive term? Does it correspond to a surname? Does the Domain Name necessarily and exclusively relate to the Complainant? Are there potential good faith uses for the Domain Name?

The Panelist in the present case, appears to not have expressly considered these questions in the decision. In fairness, “Mutti” is not a common dictionary term in Italian where the Panelist and the Complainant both reside, so it is not precisely comparable to the Motherhood .ai situation. Nevertheless, a Panelist might have taken note of the nature of the Domain Name as a result of the Complainant’s own admission; it is a surname corresponding to the surname of the Complainant’s founders. As such, it is conceivable that the Domain Name was registered because it corresponds to a surname rather than a highly distinctive term necessarily and exclusively associated with the Complainant’s brand. Even beyond that obvious fact however, a short and pronounceable term like this should generally cue Panelists to the possibility that it could also possibly have a meaning in another language. A Panelist, particularly in an undefended case, could in such circumstances use Google translate to automatically detect if such a meaning exists in any language. When I did so, it was instantly apparent that “mutti” means mother in German. Alternatively, a Panel may issue a procedural order inquiring of the Complainant if the trademark has any meaning in a foreign language.

But this of course, is not the end of the inquiry. Once a possible reason for registering a Domain Name exists apart from corresponding to a Complainant’s mark, a Panel must move on to consider the other preliminary question that I raised, namely whether despite being an Italian surname and a German dictionary word, there is evidence of substantial reputation in the mark such that it is likely that the Respondent was aware of the Complainant’s mark at the time of registration.

3. Is there Substantial Reputation in the Mark?

The Complainant alleged that “given the distinctiveness and reputation of MUTTI’s business and trademarks worldwide, it is inconceivable that the Respondent could have acquired the disputed domain name without actual knowledge of MUTTI and its rights in such marks”. The Panelist himself noted “the well-reputed nature of the MUTTI mark” but the decision itself does not reference much in the way of evidence of reputation, let alone in China where the Respondent resides. The extent of the evidence contained in the decision itself at least, is a reference to the fact that the Complainant was established in 1899 and received a “First-Class Gold Medal certificate at the International Industry and Agriculture Exhibition in Rome” in 1911 and “obtained the Grand Cross certificate and was enrolled in the Gran Libro d’Oro dei Benemeriti del lavoro” in 1914. There are no refences in the decision to sales volumes, advertising revenues, media reports, etc. which could have established the Complainant’s international reputation in its MUTTI brand at the time of Domain Name registration in 2008. As such, at least from the decision itself, there is no evidence of a reputational basis for finding that the Respondent was aware of the Complainant’s MUTTI brand.

4. Even if the Respondent was aware of the Complainant’s mark, is there evidence of targeting?

The Panel appears to have inferred that “it was more likely than not that the current Respondent was well aware of the Complainant, its business and of the MUTTI mark when it registered the disputed domain name and that he did so opportunistically”. This inference appears to be based upon the Complainant’s “use of the mark MUTTI since the beginnings of the 90’s”, though as aforesaid there is no specific reference in the decision to evidence of substantial reputation particularly where the Respondent resides.

Awareness however as aforesaid, is not necessarily evidence of targeting. So even assuming that the Respondent was aware of the Complainant at the time of registration, the question is whether the Complainant’s mark was the reason for the registration in 2008 – 16 years ago. This is what the Panelist set out as the basis for its finding of bad faith registration and use:

The disputed domain name has not been used by the Respondent but rather resolves to a parking page on which it is simply advertised as being for sale for USD 250.000. The advertised price is exorbitant especially if compared with the administrative costs involved in applying for and maintaining the disputed domain name. Therefore, it is apparent that the Respondent acquired the disputed domain name in order to make a profit from its re-sale. These facts, including the well-reputed nature of the MUTTI mark, the parking of the disputed domain name on a parking page with an advertisement for sale of the same disputed domain name <mutti.com> at an exorbitant price and the fact that the disputed domain name has been used in the past in connection with a webpage including links related to the Complainant’s trademark and business, are circumstances together highly supportive of an inference of the Respondent’s use of disputed domain name in bad faith.

It is unclear how the Panel determined that the advertising of the Domain Name for sale for USD $250,000 was “exorbitant” or targets the Complainant, particularly once we acknowledge that the Domain Name corresponds to a common German word and an Italian surname. Dealing with domain names in the secondary market is a legitimate trading activity, absent bad faith registration and use. As stated in Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO Case No. DAI2023-0010: “Dealing with domain names in the secondary market is a legitimate trading activity. By its very nature, it is speculative. A domain investor usually has the intention of reselling domain names at a price in excess of the purchase price. Some domain names sell, and some sit on the shelf unsold. Being a domain name investor is a risky business and is not always profitable, but trying to make a profit by reselling domain names is not bad faith per se”. Moreover, Panels are generally ill-equipped to judge market prices (See Travellers Exchange Corporation Limited v. Erol Basar, WIPO Case No. D2023-4023). Accordingly, it seems that there is little legal basis for finding that the Respondent’s offering for sale of the Domain Name and its asking price was evidence of bad faith registration and use.

But what about the fact that the Respondent allegedly used the Domain Name in 2014 and 2016 for ads that contained PPC links related to the Complainant’s trademark and business? This would be potential evidence of bad faith registration and use, however given that such ads did not appear until at least 6 years after the Respondent registered the Domain Name, it seems somewhat unlikely that it was the reason for registration in the first place. Moreover, the apparently short-lived instances of such bad PPC followed by no such use for an extended period of time, also raises questions about the probity of such evidence.

What is perhaps most troublesome with the Complainant’s argument for bad faith registration and use, is its allegation that the Domain Name “was acquired for the purpose of selling it to the trademark owner [which] is confirmed by the fact that currently the disputed domain name is offered for sale for a very high amount of money”. In 16 years, there was apparently not a single instance of soliciting the Complainant. Rather, there is a general offer to sell the Domain Name – which corresponds to a word in German and an Italian surname – to the public. This seems like a rather weak and self-serving allegation unsupported, indeed controverted, by the evidence. Surely, if the Complainant was the target for selling the Domain Name, the Respondent would likely have contacted it at some point in the last 16 years.

Ultimately, it is undefended cases which disproportionately result in troubling decisions and this is not a coincidence. The UDRP is based upon an adversarial system to bring out the relevant facts and arguments. Where there is no Response, a Panel loses its greatest tool for determining the right outcome. In default cases Panelists must be ever vigilant and give a critical eye to a Complaint. This begins with crucially considering the nature of the Domain Name at the outset. Where a Domain Name can conceivably be used for a legitimate purpose other than interfering with a Complainant, care must be taken to ensure that the Complainant has adequately proven targeting.

Trademark Principles and Court Better Suited Than UDRP to Resolve This Porn Dispute

Mav Media, LLC v. F. A., WIPO Case No. D2024-0742

<thecamdude .com>

Panelists: Mr. Robert A. Badgley, Mr. Philippe Gilliéron, and Mr. Warwick A. Rothnie

Brief Facts: The Complainant operates a pornography website at <camdudes .com>. that focuses on males. The Complainant holds a registered trademark for CAMDUDES with the USPTO, (registered: April 18, 2017; first use: October 1, 2015). Other than the “first use” date indicated on the USPTO registration, there is no evidence in the record to reflect when the Complainant or its predecessor first began using the CAMDUDES mark in commerce. This mark was originally registered by the Complainant’s predecessor but was conveyed to the Complainant by assignment effective December 10, 2020. According to the Respondent, however, the Domain Name was registered on May 26, 2016, and later acquired by the Respondent. The Domain Name resolves to a website that aggregates numerous porn websites and provides reviews of them. Some of the porn sites aggregated and reviewed at the Respondent’s website feature male porn, but most of the sites aggregated at the Respondent’s site feature many other categories of porn. The Complainant alleges that the Respondent’s Domain Name “resolves to a website that lists and reviews adult websites, including adult cam sites that directly compete with the Complainant, thus diverting internet traffic to Complainant’s direct competitors.”

The Respondent contends that “The Cam Dude” made its first appearance on YouTube back in 2008, evidencing that someone called “@thecamdude” joined YouTube on October 6, 2008. The Respondent provides no other evidence of its purported presence or activities on YouTube, or any other activities in 2008 or the immediately following years. The Respondent applied with the USPTO to register the mark CAMDUDE, but on March 9, 2021, the USPTO issued a Nonfinal Office Action which rejected the trademark application. The Respondent claims that he did not know the Complainant’s CAMDUDES mark until he received the USPTO’s March 9, 2021, rejection letter. On November 3, 2023, the Complainant’s counsel sent the Respondent a cease-and-desist letter, to which the Respondent’s counsel responded, denying that the Respondent knew the Complainant’s mark or website when registering the Domain Name, asserting the Respondent’s legitimate business, and expressing a willingness to sell the disputed Domain Name to the Complainant. On November 29, 2023, the Complainant’s counsel conveyed an offer to purchase the Domain Name for US $3,000.

Held: The Panel concludes, on the somewhat spotty record provided by the Parties, that the Complainant has failed to carry its burden of proving that the Respondent registered and used the Domain Name in bad faith within the meaning of the Policy. Most simply put, the Complainant has not provided sufficient evidence for the Panel to disbelieve the Respondent’s denial of knowledge of the Complainant’s mark at the time the Domain Name was registered. Notwithstanding its registration status, in the Panel’s view, the mark CAMDUDES is not an inherently strong trademark. It is suggestive (in the trademark sense), as it alludes to men on camera, which is essentially what the Complainant offers via that mark. The Complainant has provided no evidence of the mark’s renown at the time the Domain Name was registered. Further, while the Parties both provide services to the porn-consuming public, their services are not identical. The Complainant provides a website featuring male porn, and the Respondent aggregates porn sites of myriad types and provides reviews of such sites.

In these circumstances, the Panel cannot conclude that the Complainant has proven, on a balance of probabilities, that the Respondent more likely than not targeted the Complainant’s CAMDUDES mark. The Panel also notes that there are holes in both Parties’ respective stories. For instance, as noted, the renown of the Complainant’s mark at the crucial moment in time is not apparent from the record. Likewise, the Respondent’s alleged 2008 YouTube presence is not given much weight by the Panel here because the Respondent has not provided evidence that connects the dots between the Respondent and the purported YouTube member going by the name “@thecamdude”. These gaps in the record reinforce the Panel’s disinclination to address the “Rights or Legitimate Interests” element, and the Panel’s conclusion that this dispute is better suited for resolution in a court of law, where discovery may help to develop the factual picture and support or refute the Parties’ allegations, and the examination and cross-examination of witnesses may do the same. Also, traditional trademark principles, as opposed to the principles underlying the UDRP, may be better suited to resolve the dispute between these Parties. In sum, on this record, the Panel does not find this to be a clear case of cybersquatting.

Complaint Denied

Complainants’ Counsel: Silverstein Legal, United States
Respondents’ Counsel: Self-represented

Pending Trademark Application Does Not Confer Rights Under the Policy

Forecast Group, Inc. v. Gregori Martens / BetHub, NAF Claim Number: FA2403002091062

<polybet .app>

Panelist: Mr. Adam Taylor

Brief Facts: The Complainant claims common law trademark rights to POLYBET by virtue of the fame of the Complainant’s <polybet .com> website and the Complainant’s advertising and marketing efforts therefor. On March 23, 2024, the Complainant applied for a United States trademark for POLYBET, which is pending registration. The disputed Domain Name was registered on October 21, 2023, and it resolves to a website branded “Polybet”, and headed: “TAKE A BOLD STEP INTO THE FUTURE OF BETTING”[.] Discover a world where you can set your own rules… Create betting events, create your own rule[s.] Earn on bet outcomes, get rewards for joining Polybet.” The Complainant alleges that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services… the Respondent has designed Respondent’s website to maximize confusion with the Respondent “by using PolyBet token and DAO terminology”.

The Respondent contends that the Complainant’s claims of common law trademark rights are unfounded as <polybet .com> shows no actual activity and market presence. The Complainant’s website experiences zero to almost no internet traffic, contradicting the Complainant’s statements regarding fame and marketing. The pending trademark application does not constitute trademark rights under the Policy. The Respondent further contends that his use of the disputed Domain Name for gambling and cryptocurrency services is a bona fide offering, which establishes legitimate interests in the disputed Domain Name… the Respondent fairly uses the disputed Domain Name with no intention to mislead or divert consumers. The Panel notes that the structures of the parties’ respective websites are distinct as are their business operations.

Held: The Complainant asserts rights in the POLYBET mark based on a pending United States trademark application that was filed on March 23, 2024, seven days before the Complainant submitted its Complaint. However, a pending trademark application does not constitute trademark rights under the Policy. The Complainant also asserts common law rights in the POLYBET mark. The Respondent disputes that Complainant has established such rights. To establish common law rights in a name, a complainant generally must show extensive and continuous use in commerce such that consumers have come to associate the mark with the Complainant as the source of the goods, see WIPO Overview 3.0, section 1.3.

Here, the Complaint includes virtually no information about the nature, history or extent of the Complainant’s trading activities. Furthermore, the Complainant’s case under the first element is based almost entirely on conclusory allegations. The Complainant annexes no evidence in support of its assertions apart from a single document evidencing its above-mentioned pending trademark application. Accordingly, the Panel finds that the Complainant has failed to establish the first element of the Policy.

Complaint Denied

Complainants’ Counsel: Sam Pierce of Pierce Patent Law, California, USA
Respondents’ Counsel: Self-represented

Food for Thought: 26-Year-Old Domain Name Transferred – vol. 4.18