ON THIS DAY IN UDRP HISTORY – JULY 11, 2000
On July 11, 2000, Dr. Andrew F. Christie was appointed by WIPO to be the sole panelist in Gordon Sumner, p/k/a Sting v Michael Urvan, namely the Sting.com UDRP dispute. According to Wikipedia; “The case drew international attention for being the first major defeat of a celebrity in a domain name dispute”. Panelist Christie stated in part:
“In the Telstra case, the trademark in question was an invented word. In this case the mark in question is a common word in the English language, with a number of meanings. Unlike the situation in the Telstra case, therefore, it is far from inconceivable that there is a plausible legitimate use to which the Respondent could put the domain name. The Respondent has asserted a legitimate use to which he has put, and intends to put, the domain name. Whilst the evidence provided in support of this assertion is not particularly strong, it is at least consistent with that assertion, and with his overall contention that he did not register and has not been using the domain name in bad faith. The Complainant has thus failed to satisfy the burden of proof on this point.”
We hope you will enjoy this edition of the Digest (Vol. 3.28), as we review these noteworthy recent decisions, with commentary from Special Guest Igor Motsnyi and our General Counsel, Zak Muscovitch. We invite guest commenters to contact us.
‣ “Free Speech” Under the UDRP (lumsa .university*with commentary)
‣ No Constructive Notice. Must Have Had Complainant’s Trademark in Mind (dentless .com*with commentary)
‣ Complainant’s ‘Crafty’ Service Provider Diverted Domain Name “Without Authorization”(e-craft .com*with commentary)
‣ Respondent Attempts to Create Confusion for Commercial Gain (lovers-friends .com*with commentary)
‣ “Confusingly Similar” Domains Are Not OK (4x4ome .com and 4x4ok .com)
“Free Speech” Under the UDRP
<lumsa .university>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant, a private university founded in 1939, registered the Domain Name <lumsa .it> on August 6, 1997, which it uses in connection with its official website in Italian and English titled “LUMSA Università”. The Complainant holds Italian trademark LUMSA, registered on December 29, 2022, (application filed on May 30, 2022). The Respondent is a domain hosting company with a postal address in Charlestown, Saint Kitts and Nevis. The identity of the registrant of the disputed Domain Name (i.e., the Respondent’s client) was not disclosed by the Registrar. The disputed Domain Name was created on September 6, 2022. It resolves to a website in Italian titled “Università LUMSA” with a subheading and sidebar indicating that it publishes opinions and reviews of that university. Another subheading on the homepage presents the site as an official forum for free discussion between students and alumni of LUMSA, although elsewhere the forum is described as independent. The site invites Internet users to contribute comments about LUMSA and it publishes questions and answers on topics such as LUMSA’s syllabus, examinations, scholarships, advertising, and alumni.
The Complainant alleges that the disputed Domain Name is solely used by the Respondent to spread false and biased information that damages the good name and reputation of the Complainant and its major administrative personnel… the Respondent reports unsubstantiated and defamatory accusations towards the Complainant to damage its integrity as an institution, its method of teaching, and more generally its upstanding reputation. The Complainant further alleges that the Respondent is using the disputed Domain Name with a website to negatively influence and raise a deprecating feeling among current students regarding the Complainant as well as to discourage and mislead prospective students from enrolling. The Respondent did not file a response.
Held: The disputed Domain Name is used in connection with a criticism website, covering various aspects of the Complainant’s university and the Panel observes that the website is non-commercial. Although the Complainant submits that the criticism published on the website is false, biased, unsubstantiated and defamatory, the Panel is in no position to determine that it is not genuine criticism based on the limited record of this proceeding. The Complainant does not allege tarnishment of its mark in the specific sense in which that term is used in the Policy, and the Panel sees none. Nevertheless, the Panel does not consider that the safe harbor for legitimate non-commercial or fair use in paragraph 4(c)(iii) of the Policy necessarily protects the use of a domain name to impersonate a trademark owner, as this creates an impermissible risk of user confusion. In the present case, the disputed Domain Name is identical to the Complainant’s LUMSA mark, which gives the false impression that the disputed Domain Name will resolve to a website operated by the Complainant, and it is further compounded by the gTLD extension (“.university”) in the disputed Domain Name, which describes the nature of the Complainant’s institution. In the Panel’s view, this deception is not a fair use and does not support a legitimate interest for the purpose of the Policy.
The disputed Domain Name was registered while the Complainant’s trademark application was pending, years after the Complainant began using the acronym LUMSA to identify its university and its services, including on its website. The disputed Domain Name is identical to the LUMSA trademark, which is an acronym, not a dictionary word, and the associated website is dedicated to content regarding the Complainant. Accordingly, the Panel finds that the disputed Domain Name was registered in anticipation of the Complainant’s trademark rights and that its aim was to take unfair advantage of the reputation that would attach to that trademark as the Complainant continued to use it. Moreover, the Panel finds that the disputed Domain Name is used in a deliberate attempt to give the appearance of an official domain name of the Complainant for the purpose of deceiving Internet users into viewing material critical of the Complainant. The disputed Domain Name and associated website are evidently intended to secure maximum dissemination of the criticism by creating confusion. In view of these circumstances, the Panel considers that the Complainant has discharged its burden of showing that the registration and use of the disputed Domain Name is in bad faith. The fact that the Respondent uses its website to exercise its freedom of expression does not cure the inherent deception of the situation that it has brought about.
Transfer
Complainants’ Counsel: Francesca Gambardella and Barbara Antonaroli, Italy
Respondents’ Counsel: No ResponseSpecial Guest Case Comment by UDRP Expert, Igor Motsnyi:
Igor is an IP consultant and partner at Motsnyi Legal, www.motsnyi.com . His practice is focused on international trademark matters and domain names, including ccTLDs disputes and UDRP. Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy.
The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
Free speech and impersonation in <lumsa. university>
I will focus on the following two aspects of the <lumsa> decision:
- The application of the impersonation test to free speech UDRP cases and
- Establishing of bad faith in free speech cases when a domain name is <trademark.tld>
1. The application of the impersonation test to free speech UDRP cases
The Panel in <lumsa> acknowledged both critical and non-commercial nature of the website: “The disputed domain name is used in connection with a criticism website. The criticism covers various aspects of the Complainant’s university…The Panel observes that the website is noncommercial…Although the Complainant submits that the criticism published on the website is false, biased, unsubstantiated and defamatory, the Panel is in no position to determine that it is not genuine criticism based on the limited record of this proceeding. The Complainant does not allege tarnishment of its mark in the specific sense in which that term is used in the Policy, and the Panel sees none”.
The Panel did not find 4(c)(iii) of the Policy (“legitimate non-commercial use”) because the disputed domain name was identical to Complainant’s mark and created “an impermissible risk of user confusion” through impersonation. This is in line with the WIPO Overview 3.0, section 2.6.2 and some earlier UDRP decisions. This conclusion is understandable and the “impersonation” view appears to be prevailing, in particular in cases of non-US parties.
The original declared purpose of the UDRP was to fight cybersquatting or “abusive registration of domain names” and “domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations” were not considered to be abusive (see par. 172 of the “Final Report of the WIPO Internet Domain Name Process”, April 30, 1999, see here ).
The WIPO Final Report also made it clear that “since the procedure would apply only to egregious examples of deliberate violation of well-established rights, the danger of innocent domain name applicants acting in good faith being exposed to the expenditure of human and financial resources through being required to participate in the procedure is removed” (par. 160).
In par. 35 the WIPO Final Report referred to the Universal Declaration of Human Rights that once again can be interpreted as a certain safeguard that domain names can be used for free speech purposes (see article 19, here ).
In the <lumsa> case the disputed domain name was used for criticizing the Complainant – a private university in Italy with close ties to the Vatican. When I visited the website myself, even with my very limited knowledge of Italian, a critical nature of the website was obvious despite the fact that the domain name is identical and the TLD is <.university>. The first two sentences on the home page were (if translated into English): “This forum collects reports of fraud and false ideological crimes against various characters of the LUMSA university… Attention, we are talking about crimes committed by the public administration, not against the public administration, which immediately gives an idea of the type of environment we were dealing with.”
One of the subjects of the website was “a missing girl case” and the Vatican connection to the case. This case recently received a global attention because of a “Netflix” documentary “Vatican Girl”.
Yet, this is another decision transferring the domain name that seems to have been used for pure criticism and free speech purposes. While this is in line with the current trends in UDRP jurisprudence, one can question whether this was envisaged back in 1999?
Finding in Complainants’ favor in “trademark .tld” cases has its own obvious advantages, and they, in my view, are:
- this approach provides certainty and predictability; and
- it has its logic: if you want to communicate a critical message, you do not have to choose an identical domain name.
Nevertheless, one can still wonder whether strict “impersonation” approach should always be the right way of dealing with respondent’s rights and LI in all UDRP disputes irrespective of the actual use of the disputed domain name.
2. Establishing of bad faith in free speech cases when a domain name is <trademark.tld>
The Panel in <lumsa> relied on the “Dover Downs” decision in the second element analysis (Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633).
One of the interesting and, in my view, somewhat overlooked aspects of the Dover Downs decision, is that it also states: “The Panel’s finding under the impersonation test does not itself prove bad faith;
“all that the impersonation test shows is that Respondent had no rights or legitimate interests in the Disputed Domain Name. Complainant must still come forward with evidence to show that Respondent registered and used the Disputed Domain Name in bad faith.”
In other words, the respondent may fail the impersonation test, yet she/he may still prevail on the bad faith element. When a domain name is used for criticism purpose only and absent of any commercial activity, is it bad faith under the UDRP, taking into account a narrow scope of the Policy and its declared purpose to deal only with egregious cases of cybersquatting?
In “Dover Downs” the Panel found most of Complainant’s bad faith arguments “without merits”, however established Respondent’s bad faith “because Respondent offered the Disputed Domain Name for sale and specifically stated his hope that Complainant would “take over” the site”. This was not the case in <lumsa> where criticism appeared to be genuine and there were no other apparent hidden reasons behind the registration and use of the disputed domain name (e.g. to sell it to Complainant).
What is also interesting is that, at least based on the “Parties’ Contentions” section in the decision, Complainant’s arguments in <lumsa> seem to have been focused exclusively on defamation and spreading the “biased information”.
As a Panelist myself I fully appreciate how hard it can be to deal with certain cases, e.g. cases involving criticism and free speech. The Panelist in <lumsa> deserves credits for making his “FINAL REMARK” in the very end of the decision accepting the complicated nature of this dispute and Respondent’s right to criticism and free speech. I would be interested in hearing from practitioners and others in the industry what they think about current trends in UDRP “free speech and criticism” disputes and whether this issue needs a more careful consideration.
No Constructive Notice. Must Have Had Complainant’s Trademark in Mind
<dentless .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant, founded in 2011, provides repair methods for door dings and minor body damage and also carries out Paintless Dent Removal for automobiles. The Complainant holds a registered trademark for DENTLESS with the USPTO (registered on October 23, 2012). The Complainant operates a commercial website at the domain name <dentless .net>, which provides limited information but contains no evidence about the scope of the Complainant’s operations, or about the extent of the DENTLESS trademark’s renown. The Domain Name resolves to <dentguys .com>, a commercial website where Respondent promotes its automobile dent repair services. The website does not use the term “dentless,” either as a purported trademark or in a descriptive sense. The Respondent contends that it has been an active player in the paintless dent removal industry since 1999 repairing over 5000 vehicles annually. The Respondent claims that the Domain Name was originally created in 2003 (9 years before the trademark).
The Panel issued a Procedural Order which iner alia requested:
a) evidence to suggest that its DENTLESS trademark was sufficiently well known by November 2013 that Respondent would have been aware of the mark;
b) an explanation why Complainant chose to register the domain name <dentless .net> instead of (or in addition to) the Domain Name (<dentless .com>) when it began using DENTLESS as a trademark.
In response to the Panel’s Procedural Order No. 1, the Complainant provided no evidence that Complainant’s registered DENTLESS trademark is so well known that Respondent more likely than not was aware of it and sought to unfairly trade off of it and instead invoked the “constructive notice” doctrine.
In response to Procedural Order No. 1, Respondent stated that it conducted no trademark search at the time he acquired the Domain Name, “due to such widely used industry terminology and the domain had existed for 14 years prior leading to believe there would be no dispute” and provided a screenshot from a search conducted at “www.opencorporates .com” for the term “dentless, LLC.” That search yielded 18 companies (two inactive) scattered about the United States, including Complainant, that have “Dentless” and “LLC” in their company name. Aside from Complainant, there are two firms also known as “Dentless LLC” – Complainant’s exact name.
Held: The Panel concludes, on this record, that the Complainant has failed to carry its burden of proving that the Respondent registered the disputed Domain Name in bad faith under the Policy. Although the Complainant holds a trademark registration for DENTLESS, that does not automatically resolve the question of bad faith registration of the Domain Name. It is axiomatic that, under the UDRP, a complainant must show that the respondent more likely than not had the complainant’s mark in mind when registering the disputed Domain Name. The Complainant cites a single UDRP case from 2000 (Alloy Rods Global, Inc. v. Nancy Williams, WIPO Case No. D2000-1392) for the proposition that the doctrine of constructive notice is enough to satisfy the “bad faith registration” requirement of a UDRP case. Notwithstanding that decision, innumerable UDRP decisions since 2000 have rejected the notion that the doctrine of constructive notice supplants the requirement of actual notice in UDRP cases.
Given the apparently widespread use of the term “dentless” in the auto repair business, it would have behoved the Complainant to provide some evidence of the trademark’s actual renown. The Complainant chose not to do so – even despite the Panel issuing a Procedural Order, and hence the Panel is left with some evidence that “dentless” is a common term in the auto repair industry and no evidence that the Complainant’s registered DENTLESS trademark is so well known that the Respondent more likely than not was aware of it and sought to unfairly trade off of it. In sum, the Panel cannot conclude, on the record provided (even as supplemented) and on a balance of probabilities, that the Respondent more likely than not was aware of and sought to unfairly target the Complainant’s mark when acquiring the disputed Domain Name. For this reason, the Complaint must fail.
Complaint Denied
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Internally RepresentedCase Comment by ICA General Counsel, Zak Muscovitch:
There are several notable aspects to this case.
The first, is how this case demonstrates how important it is for parties and Panelists to be up-to-date on the case law. Here, the Complainant (which was internally represented), wrongfully invoked the doctrine of “constructive notice” based upon a 2000 decision. Panelist Badgley to his credit, of course correctly noted that “innumerable decisions since 2000 have rejected the notion that the doctrine of constructive notice supplants the requirement of actual notice in UDRP cases”. Although there is no binding precedent to UDRP decisions particular approaches to the UDRP have gradually crystallized and been widely adopted. The rejection of “constructive notice” is one of these organic crystallizations and in my view was correctly rejected as it would otherwise negate the key element of the UDRP, which is intentionality.
The second notable aspect is the Panelist’s use of a fairly substantial Procedural Order. As I wrote in Digest Volume 3.13, circumstances will of course dictate where Procedural Orders are appropriate in a Panel’s discretion, but they ought to be used sparingly. When a party is unrepresented and may have inadvertently not provided the requisite evidence, it is often tempting to issue a Procedural Order as the Panelist apparently did in this case, as otherwise the outcome would likely involve a refiled case after dismissal without prejudice. But one must also of course be cognisant to not use Procedural Orders to rectify a party’s case for them. Here, the Panelist could have appropriately dismissed for want of evidence while providing the Complainant an opportunity to refile. Nevertheless, in the circumstances the Panelist’s generosity with the Complainant may have been an appropriate use of discretion in the circumstances, particularly with regard to the Complainant being self-represented. On the other hand of course, one should not be too lenient either with unrepresented parties as they must take responsibility for not having the care or concern to have hired a lawyer and paid for professional representation.
The third notable aspect is one of the particular questions asked by the Panel in his Procedural Order:
- Complainant shall explain why it chose to register the domain name <dentless.net> instead of (or in addition to) the Domain Name (<dentless.com>) when it began using DENTLESS as a trademark.
This question may require a moment of contemplation to consider its implications. Why is this question relevant? The reason is that if the Complainant’s domain name is anything other than a .com and it is going after a .com via the UDRP, it means either they wanted their domain name instead of the .com for some unusual reason, or more likely that the .com was already taken by someone. If the .com was already taken by someone, that will usually mean that the corresponding term isn’t all that unique to the Complainant. After all, how likely is it that a Complainant claim to a unique and exclusive coined term was already registered when it adopted its brand? Not very likely. As such, the pre-existence of the corresponding domain name – even by a third party – can suggest that a Complainant’s claim of exclusivity and having coined a term should be taken with a grain of salt.
Finally, the fourth notable aspect here is that the Panelist held the Complainant to the appropriate onus. It is for the Complainant to prove its case and its case relied upon the notion that the Respondent “must have” specifically targeted the Complainant’s trademark despite the fact that there were examples of third party usage of the term. Without evidence of renown that the Panelist required, there could be no such finding in the circumstances of this case and as such Panelist Badgley provided a well-considered decision in which his appreciation for the nuances of the case and of the law, are on clear display.
Complainant’s ‘Crafty’ Service Provider Diverted Domain Name “Without Authorization”
Craft Multimodal LTDA. v. Alexandre Guandalini, ALGX CORP, WIPO Case No. D2023-1691
<e-craft .com>
Panelist: Mr. Wilson Pinheiro Jabur
Brief Facts: The Complainant is a Brazilian company that was established in 1997 exploiting freight and related services. It owns Brazilian trademark registrations for the word and device mark CRAFT MULTIMODAL (registered first on February 9, 2010), and also for the word and device mark CRAFT (registered on December 11, 2018). The disputed Domain Name was acquired by the Complainant for USD $5,187.50 on October 20, 2020, in the name of the parent company of the Complainant and it engaged the Respondent as a service provider in August 2021. After the termination of the service agreement with the Respondent on June 23, 2022, while the disputed Domain Name was announced for auction, the Complainant learned that the Respondent had already transferred the disputed Domain Name to his name. As of date, the disputed Domain Name resolves to an active webpage that is the official website for the Complainant.
The Complainant alleges that the Respondent was the only person with full access to the keys to the disputed Domain Name configurations, and secretly proceeded with the registration of the disputed Domain Name under its name completely unauthorized… the Respondent has attempted to profit from the sale of the disputed Domain Name offering it at auction, which does not characterize a bona fide offer of goods or services under the Policy. The Complainant further alleges that the Respondent further sought to unduly profit from the Complainant’s goodwill and trademark with the attempted auction of the disputed Domain Name, which characterizes bad faith use of the disputed Domain Name as per past UDRP decisions. The Respondent did not reply to the Complainant’s contentions.
Held: Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed Domain Name. The Respondent serviced the Complainant having taken advantage of its position to transfer the disputed Domain Name from the Complainant to its own name; therefore, being undoubtedly aware of the Complainant and its trademark at the time it acquired the disputed Domain Name. Further, upon the termination of the service relationship between the Parties, the Respondent placed the disputed Domain Name for auction seeking to unduly profit from the Complainant’s trademark and goodwill expressed in the disputed Domain Name. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed Domain Name. Additionally, the Respondent’s choice to retain a privacy protection service (to protect false contact details) and redirection to the Complainant’s official website without any authorization from the Complainant. The Respondents’ overall conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed Domain Name.
Transfer
Complainants’ Counsel: Opice Blum, Brazil
Respondents’ Counsel: No ResponseCase Comment by ICA General Counsel, Zak Muscovitch: One’s attention is naturally drawn to cases involving domain names that appear to be generic or descriptive. Such is the case with e-craft .com. One could easily imagine it being lawfully registered and used due to its attraction as a descriptive term referring to for example, a website dealing with online craft services. But that was not the case here. Rather, in this case the Complainant lost control of its domain name as a result of a service provider’s unauthorized transfer of the Domain Name. In the particular circumstances given the identity of the Respondent, it was found to have been registered and used in bad faith, despite the fact that had it been someone else who registered it, it could have been registered in good faith.
Respondent Attempts to Create Confusion for Commercial Gain
Alliance Apparel Group, Inc. v. Shuzhen Chen, NAF Claim Number: FA2306002047285
<lovers-friends .com>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant, an apparel and related goods and services company, owns rights in the LOVERS AND FRIENDS mark through registration with the USPTO (registered on December 2, 2014). The disputed Domain Name was registered on May 10, 2022 and resolves to a website impersonating the Complainant. The Complainant alleges that the Respondent has not used the disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, the Respondent is attempting to profit from confusing users into believing that the resolving site belongs to the Complainant by reproducing Complainant’s name, logo mark and copyrighted material from its official website. The Respondent also had actual knowledge of the Complainant’s rights in the LOVERS AND FRIENDS mark at the time of registration evidenced by the similarities between the Respondent’s Website and the Complainant’s official website. The Respondent failed to submit a Response in this proceeding.
Held: The Domain Name resolves to the Respondent’s Website which, through the reproduction of the LOVERS AND FRIENDS mark, Complainant’s LF logo and copyrighted material from the Complainant’s official website, passes itself off as an official website of the Complainant for the purpose of offering for sale unauthorized versions of the Complainant’s goods, in direct competition with the Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s goods does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by the Complainant.
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name (May 10, 2022), the Respondent had actual knowledge of the Complainant’s LOVERS AND FRIENDS mark. The Respondent registered and uses the Domain Name in bad faith to create confusion with the Complainant’s LOVERS AND FRIENDS mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that copies copyrighted material from the Complainant’s website and purports to offer unauthorized versions of the Complainant’s products in direct competition with the Complainant’s products.
Transfer
Complainants’ Counsel: Jessica Sganga of Knobbe, Martens, Olson, & Bear, LLP, California, USA
Respondents’ Counsel: No ResponseCase Comment by ICA General Counsel, Zak Muscovitch: Like with e-craft, above, this is another example of a case where the domain name could have been registered and used in good faith by someone else, but wasn’t – and as such was properly transferred by the Panelist. “Lovers and Friends” would certainly make a catchy domain name for someone but here, it was obviously registered and used in bad faith given the content on the associated website contained the Complainant’s content and logo.
“Confusingly Similar” Domains Are Not OK
OK Auto, 4WD & Tire, Inc. d/b/a OK4WD v. Клочко Дмитрий, NAF Claim Number: FA2305002044375
<4x4ome .com> and <4x4ok .com>
Panelist: Mr. Darryl C. Wilson
Brief Facts: The Complainant is the owner of the mark OK4WD based upon registration with the USPTO (registered on September 5, 2017), and claims exclusive rights to it. The Complainant has used its mark continuously since at least as early as 1987 in relation to customized trucks and off-road vehicles, overland and off-road and camping products for vehicles, and associated outfitting for cars and trucks, both offline and online through <ok4wd .com> website. The Complainant served the Respondent with a cease and desist notice but did not get a response.
The Respondent registered the <4x4ome .com> and <4x4ok .com> domain names on September 6, 2017, and May 4, 2019, respectively and is likewise engaged in providing goods and services related to the custom outfitting of cars and trucks. The Respondent contends it has a legitimate business that sells a different brand than the Complainant and uses the disputed Domain Names in countries outside the USA, through drop shipping. Hence, the Respondent is neither competing with the Complainant nor practising typo squatting. The Respondent further contends many other marks and domains incorporate part of the Complainant’s mark.
The Complainant under Additional Submission contends that the Respondent’s websites are in English language, have prices in US Dollars along with commonly used payment methods and also provide options for shipping throughout the United States, permitting US residents to purchase the products from the Respondent’s websites. Moreover, the color schemes, fonts and logo designs used in Respondent’s websites are strikingly similar to those of Complainant’s website and both sell products of the exact same brands.
Held: The Respondent argues that its disputed Domain Names are not identical or confusingly similar to the Complainant’s mark because there are many domains with 4wd and 4×4 characters. A commonly used term may not be identical or confusingly similar under the Policy. The Panel finds Respondent’s argument unpersuasive. The Respondent offers no further proof supporting its general statement. The Respondent does not identify the “many domains” using similar characters, and the fact that there are others does not mean the Respondent’s usage is proper since those many others may also be in violation of this element. The Panel here finds that the disputed Domain Names are confusingly similar to the Complainant’s mark under the Policy.
The Respondent contends that it has a legitimate business, however, as the Complainant indicates in its additional submission, the Respondent’s claims are not true. While the Respondent may sell goods in completely different areas, the Respondent also sells goods in the USA in direct competition with the Complainant. The Panel here finds the Respondent lacks rights or legitimate interests in the disputed Domain Names. The Complainant additionally provides screenshots of the websites reachable through the disputed Domain Names that indicate the Respondent’s sale of goods identical or similar to those sold by the Complainant. Moreover, the Respondent’s website(s) have a similar colour scheme and format as Complainant’s, particularly as related to the domain names and marks heading each page. The Panel here finds that the Respondent registered and uses the disputed Domain Names in bad faith as well.
Transfer
Complainants’ Counsel: Lisa Lori of Klehr Harrison Harvey Branzburg LLP, Pennsylvania, USA
Respondents’ Counsel: No Response