Genuine Criticism Websites Enjoy Safe Harbor Under UDRP
The Panel correctly dismissed the Complaint. Whether one has sympathy or not for the target of a critical website, and whether or not one believes that the UDRP can be adapted to address cases of unfair or defamatory websites, the fact is that the UDRP was not intended to be and must not be used as, a substitute for regular courts and national laws when it comes to genuine freedom of expression. Continue reading the commentary here.
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We hope you will enjoy this edition of the Digest (vol. 4.48), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Genuine Criticism Websites Enjoy Safe Harbor Under UDRP (davidlawverscammer .com *with commentary)
‣ Panel: Domain Name Resale Accepted and Recognized Within Domain Industry (3clicks .net *with commentary)
‣ Complainant’s Fame Outweighs Respondent’s Unsupported AI Intentions (citi .ai)
‣ Mere Trademark Doesn’t Cut it; Targeting Required (multident .net *with commentary)
‣ Respondent Used Domain Name Prior to the Trademark Rights (kaizenwealthgroup .com and kaizenwg .com)
Genuine Criticism Websites Enjoy Safe Harbor Under UDRP
DAVID LAWVER v. Abdul Rehman Asad, NAF Claim Number: FA2410002122602
<davidlawverscammer .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant states that he is the Founder and Principal of Palladium Development and Turnkey Ventures, based in Austin, Texas. The Complainant has an extensive background in real estate development and has been the lead developer on over US $100M of commercial and residential projects since 2014. Turnkey Ventures is a real estate company specializing in acquisitions, development, and private equity. The company has successfully completed projects totalling over US $100 million. Prior to Turnkey, the Complainant founded and led Palladium Development where he oversaw US $75M in commercial real estate projects, ranging from large retail to industrial value-add investments.
The Complainant claims common law rights in the DAVID LAWVER mark which has been used continuously in commerce, as shown by the Complainant’s profiles and articles from 2019 to 2024. The Complainant alleges that the Respondent is using the disputed Domain Name to discredit the Complainant’s business with defamatory content and also a copyrighted image from the Complainant’s Instagram account is used on the resolving website without authorization. The Complainant further alleges that the resolving website displays defamatory and fraudulent content, critical of the Complainant and that the Respondent had actual and/or constructive knowledge of the Complainant’s rights in the DAVID LAWVER mark. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant provides evidence showing that the Respondent uses the website at the disputed Domain Name as a criticism site, but cites UDRP precedents that have held that, although a respondent has a free speech right to publicize its views on the Internet, this does not mean that a respondent has rights or legitimate interests in a domain name that is identical to a complainant’s mark. However, in the instant case, the disputed Domain Name is analogous to the form “[mark]SUCKS”), see Para 2.6 of the WIPO Overview 3.0. The question of whether or not criticism sites violate the Policy is a controversial issue, with Panels taking opposite views on the matter, see National Alliance for the Mentally Ill Contra Costa v. Mary Rae Fouts, FA 204074. However, the instant Panel reaffirms that it agrees with the case law cited by the panel in Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (emphases added): “The Panel is aware of the line of trademark infringement cases holding that <trademarksucks .com> domain names may be protected as free speech because of their “communicative content” while <trademark .com> domain names serve merely as ‘source identifiers’ and are thus unprotected.”
The instant Panel reaffirms its agreement with Britannia Building Society v. Britannia Fraud Prevention, <britanniabuildingsociety .org> D2001-0504: The Panel concludes that Respondent is making a legitimate noncommercial use of the domain name because Respondent maintains its website as a site critical of the policies of the management of Britannia Building Society. The Respondent’s actions cannot be characterized as consistent with an “intent for commercial gain to misleadingly divert consumers.” That phrase refers to the kind of confusion that arises in a trademark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales. See Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000); Houghton Mifflin Company v. The Weathermen, Inc., Case No. D2001-0211 (WIPO Apr. 17, 2001). Here, there is no diversion “for commercial gain” and thus no loss of legitimacy.
In the instant case, the resolving website displays criticism of the Complainant. While the disputed Domain Name incorporates what the Complainant alleges is a common law trademark, the Complainant has not presented any evidence to show that users were misled or confused. Indeed, there is no risk of actual confusion, because the content of the resolving website unmistakably consists of criticism of the Complainant. No user would be confused into thinking that the resolving website is affiliated with the Complainant. Nor has the Complainant presented convincing evidence that the Respondent acted with an intent to mislead or to confuse. On the basis of the evidence before it, the Panel finds that the Respondent is using the disputed Domain Name for criticism, and thus for all the above reasons and in line with previous UDRP decisions – the Panel finds that the Respondent has rights and legitimate interests in the disputed Domain Name under the Policy.
Complaint Denied
Complainant’s Counsel: Internally represented
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel correctly dismissed the Complaint. Whether one has sympathy or not for the target of a critical website, and whether or not one believes that the UDRP can be adapted to address cases of unfair or defamatory websites, the fact is that the UDRP was not intended to be and must not be used as, a substitute for regular courts and national laws when it comes to genuine freedom of expression.
As noted at 2.10 of UDRP Perspectives, Paragraph 4(c) (iii) of the UDRP expressly provides an absolute defense if a Respondent can prove that it is making a legitimate noncommercial or fair use of a domain name. Such legitimate noncommercial or fair use can take the form of using a domain name for criticism, as it did in this case. As the Panel did here, UDRP Panels should not evaluate the nature of criticism, whether it is correct or incorrect, whether it is defamatory, or whether it is reasonable or outrageous. Rather, Panels should determine if the domain name was registered and used as a mere sham or “pretextual” rather than being a legitimate exercise of freedom of expression.
As noted by the Panel, UDRP legislative history confirms that the Policy was never intended to restrict legitimate free speech use of domain names: “Domain name registrations that are justified by legitimate free speech rights would likewise not be considered to be abusive”, see par. 172 of “Final Report of the WIPO Internet Domain Name Process”.
As noted by the Panel, some panelists have taken the position that a domain name cannot rely upon the safe harbor provisions where the domain name itself does not signal criticism or otherwise sufficiently differentiate itself from the trademark such as – <mark .tld> vs <mark + sucks or another qualifier>. Other panelists however, support free speech as a legitimate interest of UDRP respondents whenever the use is genuine, non-commercial and non-pretextual irrespective of domain name composition, while taking all of the circumstances into account. The “holistic” approach that recently gained support among some panelists.
Under the holistic approach, panels need to consider take a more nuanced approach, taking into a variety of factors into account such as the domain name composition and the website content, as articulated in <scrumsalliance .org> and in <momsdemand .org> that takes into account not only the domain name composition but also other factors, including actual use of a domain name and the website content. Taking into account the totality of factors is appropriate when evaluating whether a Respondent has a right or legitimate interest based upon free speech. The key is whether the use is a ruse rather than a legitimate exercise of free speech. It is immaterial what the Panelist may think of the quality, utility or lawfulness of the exercise, e.g. whether it may be scandalous, not worth protecting, or defamatory.
For further reading please see the case comment on the MomsDemand case from Digest Vol. 2.15.
Panel: Domain Name Resale Accepted and Recognized Within Domain Industry
3Clics SPA v. Erol Basar, CAC Case No. CAC-UDRP-106334
<3clicks .net>
Panelist: Ms. Yana Zhou
Brief Facts: The Complainant was incorporated in 2020 under the laws of the Republic of Chile. The Complainant’s purpose is “to market all kinds of products and services related to various software programmes and products”. For that purpose, the Complainant registered the domain name <3clics .cl> in 2020. Owing to commercial expansions into Latin American countries, the Complainant has also registered numerous domain names bearing the sign ‘3clics’, most notably: 1) <3clics .mx>, registered in 2020; and 2) <3clics .lat>, registered in 2021. The Complainant relies upon a number of pending and registered trademarks in Chile, Mexico and Peru, including Chilean trade mark registration no. 1344335, filed on 22 December 2020, for the word mark 3CLICS. The disputed Domain Name <3clicks.net> was registered on 6 September 2021 and resolves to a parking page with the headed message ‘this domain is available for sale’.
The Complainant alleges that the Respondent has not used the Domain Name in connection with any bona fide offering of goods or services and that the Respondent is a domain name spectator who has registered a large number of domain names that are similar to well-known trademarks and that it is “obvious” that the Respondent runs a business based on extorting high fees from trademark owners. The Respondent contends that he registered the disputed Domain Name because it comprised a highly common combination “3clicks” based on the “3 click rule” and that the business of “domain name investment” gives rise to rights or legitimate interests in the disputed Domain Name. The Respondent further contends that the Complainant has provided evidence of its trademark rights in a language that is not the language of this UDRP administrative proceeding. Hence the Respondent requests that the Panel should “disregard” the documents presented.
Preliminary Matter: Language for the Proceedings: According to the registrar’s verification response the language of the registration agreement for the disputed Domain Name <3clicks .net> is English. The Respondent has requested that the Panel disregard the Complainant’s majority of annexes to the Complaint as they were provided in Spanish language only.
The Panel sympathises with the Respondent’s request but finds that (in line with the Writera test developed in CAC Case no. 104144, Writera Limited v. alexander ershov) the Panel has a duty to consider who would suffer the greatest inconvenience as a result of such a request. The balance of convenience, in this case, would unfavour the Complainant unduly, not least given that the Panel has performed a trademark search in the relevant databases to ascertain the Complainant’s trade mark rights, and was able to understand the nature of the relevant annexes. In view of the above, the Panel has decided to accept the Complainant’s annexes as filed, such that the Respondent’s request is denied.
Held: The evidence presented confirms that the Respondent actively engages in the registration and resale of domain names composed of generic terms – a practice that is recognised and can be accepted within the domain industry, see WIPO Case No. D2017-1961, Virgin Enterprises Limited v. Domain Admin/This Domain is for Sale, Hugedomains .com. The Respondent has showcased a business model that appears to adhere to established industry practices, and there is no indication that its actions encroach upon the Complainant’s trade marks or rights, from what the Panel can discern in the case record. In particular, the Panel notes from the case record that the Complainant does not appear to have any operations or is in any way known in the Respondent’s territory. The Complainant’s trademark registrations are of limited geographical scope and the Complainant provides no evidence of the reputation and public profile of that trade mark, nor any grounds on which to conclude that the Respondent was, or ought to have been, aware of the Complainant’s trademark when it registered the disputed Domain Name.
In addition, the case record does not appear to show that the Respondent was aware of the Complainant’s trademark when it registered the disputed Domain Name, and did so in order to take unfair advantage of the commercial goodwill attaching to that trademark, in other words, “targeting” the Complainant’s trade mark rights. The ‘3 clicks’ element of the disputed Domain Name string, from what can be discerned in the case record, is not unique to the Complainant, and that name is in legitimate use by other parties both in the course of trade – though this would not necessarily assist the Respondent if it were targeting any of those brand owners. The Respondent, for its part, explains its rationale for its purchase and its offer to sell the domain name, comprising matters unrelated to the Complainant’s trade mark. The Panel therefore finds that the Complainant has failed to make a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed Domain Name.
RDNH: The Complainant has articulated concerns that reflect a legitimate basis; yet, it is clear that there has been a failure to fully consider the nature of the Respondent’s business as a bona fide trader of generic domains. While the Panel finds no evidence of abuse of the process in the filing of the Complaint, it emphasises the importance of recognising the Respondent’s legitimate activities within the domain space. Even though the Panel finds no evidence of abuse of the UDRP administrative proceeding in this instance, the Complainant needs to exercise due diligence in any future complaints. Careful consideration of the Respondent’s legitimate business activities and strict adherence to the applicable UDRP framework will contribute to a better understanding of the rules and remedies available in the domain space for all parties involved. The Panel therefore denies the RDNH counterclaim.
Complaint Denied
Complainant’s Counsel: NA
Respondent’s Counsel: Archer Softech
Case Comment by ICA General Counsel, Zak Muscovitch: To the credit of the Panelist, the Panelist acknowledged what by now is accepted by the jurisprudence; that the registration and resale of domain names composed of generic terms – a practice that is recognised and can be accepted within the domain industry. But of greater interest is how the Panel characterized the Respondent’s business: “The Respondent has showcased a business model that appears to adhere to established industry practices, and there is no indication that its actions encroach upon the Complainant’s trade marks or rights… the Panel notes from the case record that the Complainant does not appear to have any operations or is in any way known in the Respondent’s territory. The Complainant’s trade mark registrations are of limited geographical scope and the Complainant provides no evidence of the reputation and public profile of that trade mark, nor any grounds on which to conclude that the Respondent was, or ought to have been, aware of the Complainant’s trade mark when it registered the disputed domain name.” In other words, the Panelist correctly discerned that the key component of cybersquatting was absent, namely targeting.
As noted in UDRP Perspectives at 3.3, the onus is on the Complainant to prove its case and this includes providing evidence of the Respondent’s intention to target a specific Complainant. As the Respondent did here, a Respondent can show that it registered the domain name in good faith, for example, by showing how the Complainant wasn’t well known and is therefore an unlikely target, or how the value of the domain name is derived from the nature of the term rather than the Complainant, or that the Respondent’s registration fits a pattern of registering comparable domain names for investment purposes. In the absence of evidence that Respondent registered a Domain Name specifically because of the Complainant or that its value was derived exclusively from Complainant’s mark, a Complaint must fail. 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.
The key to demonstrating bad faith registration is “targeting”. Targeting is where the Respondent registered the domain name specifically because of a Complainant’s trademark to interfere with the Complainant. Such interference can be for example, to harness misdirected traffic, prevent the Complainant from reflecting its trademark in a corresponding domain name, to sell to the Complainant or a competitor of the Complainant, for fraudulent sales, or phishing.
Targeting can be established by either direct evidence (e.g. content of the website) or circumstantial evidence such as strength of the mark and nature of a disputed domain name (e.g. mark plus a term describing Complainant’s business), timing of registration of a domain name and timing of trademark registration, geographic proximity of the parties. Targeting is easier to prove where the domain name corresponds to a highly distinctive mark primarily associated with one single holder or a well-known mark and less easy to prove where it corresponds to a common term. For example, CITIBANKLOGIN .COM would clearly show targeting of Citi Bank whereas MAHOGANY .COM, or in this case, 3Clicks.net, would likely have been registered for their generic or descriptive meaning absent clear evidence otherwise. Absent direct proof that a domain name which has a multitude of meanings and uses was registered primarily for the purpose of profiting from a specific complainant’s trademark rights, there can be no finding of bad faith.
Complainant’s Fame Outweighs Respondent’s Unsupported AI Intentions
Citigroup Inc. v. Quoc Bui, NAF Claim Number: FA2411002124740
<citi .ai>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant, founded as City Bank of New York in 1812, operates an American multinational bank and financial services corporation. The Complainant has rights in the CITI mark through registrations with the USPTO. The Complainant alleges that the Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The CITI mark has enjoyed international fame and notoriety due to the Complainant’s exclusive, worldwide use and promotion of its services under the CITI mark for decades. As a result, it is inconceivable that Respondent had no knowledge of the Complainant’s rights in the CITI mark prior to registering the domain name, and its registration is clearly in bad faith. The Complainant further alleges that the Respondent is using the Domain Name in connection with a pay-per-click commercial website to generate revenue for the Respondent, and the Respondent is offering to sell the domain name.
The Respondent submits an informal response: “I registered citi .ai with the intention of developing an artificial intelligence platform, exploring opportunities in AI research and technological advancements. The term “CITI” was chosen as a potential acronym for “Carbon Innovations and Trading Initiative (CITI)”, emphasizing the collaborative nature of AI development and its application in environmental sustainability.” The Respondent further contends that the domain has never been used to mislead, confuse, or infringe upon Citibank’s trademark. It has remained inactive, and I have ensured that it does not create any association with Citibank or its services. I have not sought to sell the domain to Citibank or any competitor. However, I did receive an unsolicited inquiry from CSC Global, which I believe may be linked to Citibank. In response to this inquiry, I offered a sale price of US $1,00,000.
Held: The Panel notes that the registration date of the domain name is presently unavailable but that there have been numerous records archived since March 22, 2017, by which time Complainant’s CITI mark had been recognized as famous. The circumstances, coupled with the Complainant’s assertions, are sufficient to constitute a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name, shifting the burden to the Respondent to prove otherwise. The Respondent’s informal Response does not deny the awareness of the Complainant’s CITI mark, however, claims “CITI” was chosen as an acronym for “Carbon Innovations and Trading Initiative (CITI)” and is willing to provide evidence in support. The Panel notes that Paragraph 5(c) of the Rules provides the response, including any annexes, shall be submitted in electronic form and shall conclude with a certification. No such certification or any evidence has been provided. The Panel does not consider the circumstances of this case to be exceptional and, given the fame of Complainant’s CITI mark and the absence of any evidence to support Respondent’s assertions, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Further, despite the high price sought by the Respondent when approached by CSC Global, the Panel is not persuaded that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor of the Complainant, nor that the circumstances set out in paragraphs 4(b)(ii) or (iii) apply. However, given the fame and distinctive character of Complainant’s CITI mark, the Panel finds that the Respondent was well aware of Complainant and its mark when registering the <citi .ai> domain name and did so in bad faith to take advantage of and intentionally trade on the goodwill associated with the Complainant’s mark. Further, the Respondent is using the Domain Name in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Accordingly, the Panel finds the Respondent registered and is using the Domain Name in bad faith.
Transfer
Complainant’s Counsel: James R. Davis, II of Perkins Coie LLP, USA
Respondent’s Counsel: Self-represented
See DNW Article: Citi .ai registrant had a creative response to cybersquatting claim
Mere Trademark Doesn’t Cut it; Targeting Required
Multident Dental GmbH v. Park Hyung Jin, WIPO Case No. D2024-4008
<multident .net>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant is a limited liability Company, based in Germany and appears to operate online at <multident .de>. However, no further information has been made available as to how long the Complainant has held this Domain Name, and/or whether it has operated a website using such domain name for any particular length of time. The Complainant claims but does not provide evidence of the fact that it is the owner of German registration for the mark MULTIDENT. The Panel determined that it was appropriate for it to carry out limited research to the extent of looking up said mark on the appropriate register, from which it notes the Complainant’s ownership, the fact that the mark is a word mark and that it was registered on January 9, 2009, relating to dental technology and services.
The disputed Domain Name was registered on January 8, 2010, and the Complainant claims it has been parked or offered for sale on the “Sedo” platform but does not provide evidence in support. No information is available regarding the Respondent, which appears to be a private individual with an address in the Republic of Korea. On August 23, 2024, the Complainant’s representatives emailed the Respondent, asserting ownership of the MULTIDENT trademark and claiming that the disputed Domain Name infringed their rights by being blocked and offered for sale to third parties, requesting a free transfer of the domain name. The Complainant indicates that it complained to Sedo regarding the disputed Domain Name, after which the disputed Domain Name was blocked from sale and the account holder informed.
Held: The Panel assumes in the absence of evidence to the contrary that the Respondent is the original registrant of the disputed Domain Name. Further, the Complainant, on whom the burden of proof lies, must show on the balance of probabilities that when the Respondent registered the disputed Domain Name on January 8, 2010, it did so in the knowledge of and with intent to target the Complainant and/or its rights in the trademark concerned. In that regard, all that the Panel knows from the present record is that, by that date, the Complainant had held its registered trademark in Germany for one year. There is no evidence before the Panel as to the extent or reach of that mark, notably whether there was an internationally available website and, if so, the prominence of such a website that might suggest it would have come to the Respondent’s attention.
In short, there is no evidence from which the Panel may reasonably infer that when the Korean Respondent registered the disputed Domain Name, it did so in the knowledge of the Complainant’s mark and with intent to target the same unfairly. The principal evidence of any possible targeting in the present case is the fact that the disputed Domain Name is identical to the Complainant’s mark. However, the disputed Domain Name consists of an English portmanteau word combining the prefix “multi” with the word “dent”. It remains possible on the basis of the present limited record that the Respondent may have registered the disputed Domain Name independently of the Complainant and its rights. It is also possible that there was no targeting of the Complainant inherent in the placing of the disputed Domain Name on the Sedo platform, whenever that might have occurred in the timeline.
Complaint Denied
Complainant’s Counsel: Brinkmann.Weinkauf Rechtsanwälte Partnerschaft mbB, Germany
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case is well worth reading and indeed bookmarking for the elegant and clear-eyed analysis deployed in a no-response cases that may have otherwise only received a cursory examination by a less inclined Panelist.
The decision itself ably points out the noteworthy aspects of the facts which caught the Panelist’s attention, but I will point some out that I particularly appreciated.
The independent Panelist research conducted strikes me as appropriate in the particular circumstances. As noted in UDRP Perspectives at 0.2, Panelists are not charged with investigating allegations. Rather, a Panelist has a much more modest duty; to decide a case based upon the evidence presented by the parties themselves. Where that evidence is found wanting, that is not the Panelist’s problem to solve, nor should they attempt to. Nevertheless, it is sometimes a Panelist’s duty and well within a Panelist’s ambit, to verify some basic factual allegations, such as the existence and content of a relied upon trademark registration and the existence and content of a website associated with the disputed domain name. Beyond that, a Panelist should be wary of wading into an inquisitorial approach to cases rather than relying upon the adversarial process.
In the particular facts of this case, the Panelist noted that “the Complainant claims, but does not provide evidence of the fact that, it is the owner of German Registered Trademark Number 302008062081 for the mark MULTIDENT”. A Panelist is not required to search out and verify an unproven claim of trademark registration, but where as here, the Complainant provided sufficient particulars to verify the trademark but failed to actually provide a copy of it, it is as the Panelist stated, “appropriate” for it to carry out limited research to the extent of looking up said mark on the appropriate register. Otherwise, a Panel might have to just dismiss the Complaint without prejudice, only for it to come back with the attached exhibit, and thereby cause additional expense and trouble for what in this case, would ultimately result in the same disposition.
The extent of the Complainant’s inadvertence in preparing its Complaint was also well noted by the Panelist. We see this all too often and after 25 years of the UDRP, there is really no excuse. The Panel in particular noted that the Complainant provided “little” information about itself beyond that it was a German registered Company. A Complainant should provide much more information, such as a description of its business, evidence of the scope of its undertaking, and particularly third-party sources to help a Panel understand who the Complainant is. Furthermore, the Complainant didn’t even provide a screenshot of the website associated with the Domain Name, nor provide any details about the asking price or this history of the domain name, as the Panel pointed out. Lastly, the Panel noted that critically, “there is no evidence before the Panel as to the extent or reach of that mark, notably whether there was an internationally available website and, if so, the prominence of such website that might suggest it would have come to the Respondent’s attention”.
Once again and as it should be, this case ultimately came down to targeting. The Panel stated that “the principal evidence of any possible targeting in the present case is the fact that the disputed domain name is identical to the Complainant’s mark… However, the disputed domain name consists of an English portmanteau word combining the prefix “multi” with the word “dent”. As the Panel noted, there was “no evidence…that such term is exclusively or even predominantly associated with the Complainant, and most importantly, that this was so at the point when the disputed domain name was registered, nearly 15 years ago”. Without evidence to demonstrate targeting, it was as the Panel concluded, “possible” that the Domain Name was registered without any targeting of the Complainant, even when the Domain Name was offered for sale on Sedo.
The Panel’s eloquent conclusion was that “the evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed domain name was to profit from or exploit the Complainant’s trademark” – which nicely sums it up. Without this element, there can be no cybersquatting.
What was nice in particular to see, is that merely having a registered trademark alone, counts for very little in the UDRP. The key is for a Complainant to move beyond its trademark and show its reputation, as it is its reputation which makes it a target for a cybersquatter. Without a demonstrated reputation, absent the most unique of brands which would defy any reasonably possibility of coincidental duplication, there is just no basis to determine that targeting occurred.
Respondent Used Domain Name Prior to the Trademark Rights
Ryan Tetsuo Onishi v. todd elliott, Elliott Financial Group, WIPO Case No. D2024-4132
<kaizenwealthgroup .com> and <kaizenwg .com>
Panelist: Mr. William F. Hamilton
Brief Facts: The Complainant provides financial planning services and owns rights in US trademark Kaizen Wealth Management Group, (registered on April 2, 2024; first use: June 26, 2023). The Complainant claims to use the mark in various promotional activities, but the mark is not used in any domain name owned by the Complainant. The Respondent also provides financial planning services. On March 29, 2022, the Respondent registered the disputed Domain Name <kaizenwealthgroup.com> and formed Kaizen Wealth Management LLC. On May 13, 2022, the Respondent registered the disputed Domain Name <kaizenwg.com>. Both disputed Domain Names resolve to the same website which was launched on October 5, 2022.
The Complainant alleges that the Respondent has no legitimate rights or interests in the disputed Domain Name and that the Respondent’s bad faith is illustrated by the Respondent’s past securities violations and timing of the registration of the disputed Domain Names. The Respondent contends legitimate use of the disputed Domain Names to conduct its active business website since October 2022. The Respondent further contends that the disputed Domain Names were registered before the Complainant obtained any trademark rights in the mark and that the Respondent selected the term “kaizen” to be included in the disputed Domain Names because of the dictionary meaning of “continuous improvement” and its common use in the financial industry.
Held: The Panel finds that the Respondent has met its burden and adequately, on the evidence presented, responded to the claims that it has no legitimate interests in the disputed Domain Names. Before notice to the Respondent of the dispute, the Respondent used the disputed Domain Names in connection with its financial services company. The disputed Domain Names have resolved to the Respondent’s business website since 2022, prior to the application and registration of the trademark. WIPO Overview 3.0, section 2.2.
The Panel is unable to find that the Respondent registered the disputed Domain Names in bad faith to target the Complainant or its trademark rights because the Complainant had no trademark rights when the Respondent registered the disputed Domain Names. WIPO Overview 3.0, section 3.8.1 (which the Panel notes the Complainant invokes). There is no evidence that the Respondent knew of the Complainant when registering the disputed Domain Names. Moreover, the Respondent has provided evidence of its business use of the disputed Domain Names.
While the Panel notes the Complainant’s assertions and evidence concerning the Respondent’s securities violations (and an apparent desire not to be associated with the Respondent), the evidence submitted does not support a claim under the Policy and to the extent the Complainant has an issue with the Respondent’s activities and/or business name, it would be necessary to seek relief in another forum.
Complaint Denied
Complainant’s Counsel: Coates IP, United States
Respondent’s Counsel: Dickinson Wright, PLLC, United States
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 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.