Intentionality and Trademark Infringement
Can a Respondent’s belief that a Complainant abandoned its trademark, combined with due diligence, vitiate a claim of bad faith registration? Yes, as the Panel found in this case. Here, the Respondent provided an apparently credible explanation of the reasons that it believed that it had the right to register and use the Domain Name. The Panel found that the Respondent’s efforts at investigating whether the Complainant had abandoned its trademark, “supports the Respondent’s claim that it registered the Disputed Domain Names only after determining that the Complainant had abandoned its trademark rights” – even if ultimately incorrect – thereby effectively rebutting the claim of bad faith registration. Continue reading the commentary here.
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We hope you will enjoy this edition of the Digest (vol. 4.43), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Intentionality and Trademark Infringement (praythevote2024 .com and praythevote2024 .org *with commentary)
‣ WIPO Model Complaint Warns Complainant of Policy’s Bad Faith Requirement (eagledata .com *with commentary)
‣ Previous Actions of the Respondent, along with the Parking Page, Lead to a Determination of Bad Faith (popflex .com)
‣ Brunet Has Less Fun and Gets UDRP’d (brunet .com *with commentary)
‣ Did the Respondent Have a Legitimate Interest in the Domain Name? (jswone .com *with commentary)
Intentionality and Trademark Infringement
The Presidential Prayer Team v. Intercessors for America, WIPO Case No. D2024-3465
<praythevote2024 .com> and <praythevote2024 .org>
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant is a charitable organization dedicated to providing election information to voters and prayer for U.S. officials. The Complainant previously owned a U.S. trademark for PRAY THE VOTE, which was applied for on June 15, 2004 and cancelled on September 28, 2012. The Complainant filed a new application to register PRAY THE VOTE as a trademark on July 31, 2024, which is currently pending. Despite the lapsed registration, the Complainant claims to have offered election-related information and prayer services under the PRAY THE VOTE mark since its registration was cancelled. The Complainant has used the mark on its websites <praythevote .com> and <praythevote .org>, on its social media accounts, in radio spots, and on informational pamphlets. The Respondent registered the disputed Domain Names on February 27, 2024, which provides information about the upcoming election, voter registration, election integrity, election-day volunteer opportunities, and prayer.
The Complainant alleges that the Respondent is creating a false association with the Complainant by using the disputed Domain Names and “praying hands” logo to solicit personally identifying information and donations from visitors to the Respondent’s websites. The Complainant further alleges that the Respondent only appended the present year to the Complainant’s trademark to trade on the Complainant’s goodwill during an election year, further evidencing its bad faith. The Respondent contends it has rights or legitimate interests in the disputed Domain Names because, as another 501(c)(3) organization, the Respondent provides informational and prayer services in connection with American elections. The Respondent further contends that it conducted due diligence prior to registering the disputed Domain Names and determined that the Complainant was no longer using its trademark. Additionally, the Respondent denies ever having authorized a former or current employee to contact the Complainant regarding its “praying hands” logo or other intellectual property prior to March 3, 2024.
Held: The Panel acknowledges that the Complainant’s lapsed registration and pending application are insufficient; however, the Complainant has presented adequate evidence to establish common law trademark rights in the mark for the purposes of the Policy. Further, a key question is whether the Respondent’s use is “bona fide.” To be bona fide, the offering of goods or services must not infringe upon the Complainant’s trademark in PRAY THE VOTE. Even if any such infringement is unintentional, a use is not “bona fide” if it is infringing. The Respondent claims that it is making fair use of the term “PRAY THE VOTE” under paragraph 4(c)(iii) of the Policy. Under this paragraph, intent is relevant. Ultimately, the questions of whether the Respondent’s use is infringing, and whether the Respondent had a reasonable belief that the Complainant had abandoned its trademark rights, raise difficult and close factual questions that could more accurately be assessed with the benefit of discovery and live testimony, at which credibility determinations could be made.
The Respondent has provided a detailed explanation of the due diligence it conducted, prior to the registration of the disputed Domain Names, which supports the Respondent’s claim that it did not register the disputed Domain Names with a bad faith intent. Although it is possible that this imperfect due diligence was designed to willfully turn a blind eye towards the Complainant’s trademark rights, there is nothing in the record as submitted to the Panel that would support such a finding by a preponderance of the evidence. As such, on the limited record before the Panel, the Complainant has not succeeded in proving, by a preponderance of the evidence, that the Respondent registered the disputed Domain Names in bad faith. The record is also insufficient to demonstrate that the Respondent’s use of the disputed Domain Names is in bad faith. The look and feel of the Respondent’s website is not so similar to that of the Complainant’s websites to suggest a bad faith attempt to confuse consumers or otherwise capitalize upon the Complainant’s goodwill.
Complaint Denied
Complainant’s Counsel: Bhandlaw, PLLC, United States
Respondent’s Counsel: Simms Showers, LLP, United States
Case Comment by ICA General Counsel, Zak Muscovitch: Can a Respondent’s belief that a Complainant abandoned its trademark, combined with due diligence, vitiate a claim of bad faith registration? Yes, as the Panel found in this case. Here, the Respondent provided an apparently credible explanation of the reasons that it believed that it had the right to register and use the Domain Name. The Panel found that the Respondent’s efforts at investigating whether the Complainant had abandoned its trademark, “supports the Respondent’s claim that it registered the Disputed Domain Names only after determining that the Complainant had abandoned its trademark rights” – even if ultimately incorrect – thereby effectively rebutting the claim of bad faith registration.
Note that the Respondent’s belief need only be subjective, provided that it is credible, as it was here. It matters not, generally speaking, whether the Complainant had in fact and in law, abandoned its trademark rights under that UDRP, provided that the Respondent is able to demonstrate its bona fides (i.e. “in or with good faith; honestly, openly, and sincerely”, as per The Law Dictionary), in registering the Domain Name, as it did here. In such circumstances, a Complainant will generally speaking, be unable to satisfactorily demonstrate a Respondent’s bad faith registration under the Policy, as the Panel duly found.
There was also a related question under the Policy concerning “rights or legitimate interest” under the Policy, which was also addressed by the Panel. The Panel examined whether the Respondent had a right or legitimate interest in the Domain Name under Paragrpah 4(c) of the Policy as a result of having, “before any notice of the dispute, used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. The Panel stated that to be “bona fide, the offering of goods and services must not infringe upon the complainant’s trademark” and relied upon an earlier decision of the same Panel for this proposition, noting that “even if any such infringement is unintentional, a use is not “bona fide” if it is infringing …though issues of intent and knowledge, with respect to paragraph 4(c)(i) of the Policy, may be highly relevant as part of the consideration of the third element of the UDRP”.
The Panel’s approach to the term “bona fide” under rights and legitimate interest contrasts with the Panel’s approach to “bona fide” under bad faith. As noted above, the Panel properly held that the Complainant had not made out its case for bad faith registration because the Respondent held a subjective, but honest and credible belief – i.e. a bona fide belief – even if ultimately incorrect – that the Complainant had abandoned its trademark. In contrast however, when it came to rights and legitimate interest, the Panel adopted an objective assessment rather than subjective, holding that even if any infringement was unintentional, a Respondent could not have a right or legitimate interest in a domain name that infringed a trademark right. The Panel explained its approach by noting that “issues of intent and knowledge…may be highly relevant as part of the consideration of the third element of the UDRP”, i.e. bad faith registration, but not for rights and legitimate interest.
So why is intention relevant under bad faith but not under rights/legitimate interest? The Policy does not state this to be the case. Paragraph 4(c)(i) of the Policy uses the term, “bona fide” without any qualification:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; [emphasis added]
Is it nevertheless imputable that ‘a use cannot be bona fide if it is infringing’, as the Panel contended? On one hand, the entire premise of bad faith, both generally and specifically under the Policy itself, is intention. For example, Paragraph 4(b)(i) speaks of “purpose”. Paragraph 4(b)(ii) references “in order to”. Paragraph 4(b)(iii) again speaks of the “purpose”. And Paragraph 4(b)(iv) references “intentionally”. On the other hand, Paragraph 4(c)(i) merely references “bona fide”, but as we noted above, the concept of something being bona fide generally still involves subjective criteria, i.e. honestly, openly, and sincerely, without deceit or fraud. Accordingly, there does not appear to be any basis in the Policy itself for invoking an objective standard for rights and legitimate interest, any more than with regard to bad faith.
Rather, it is clear that when it comes to a “bona fide offering” under the Policy, intention matters as it does with bad faith. For example, in Breazy Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / VR PRODUCTS I LLC, WIPO Case No. D2021-1486 (denied, July 6, 2021), the same Panel that decided the PrayTheVote2024 case, held as follows:
“If the Respondent adopted the disputed domain name with knowledge of the Complainant’s website and trademark rights, the Panel would agree that such conduct could undermine any claim of a bona fide use, since an infringing use cannot be bona fide. Sai Machine Tools Pvt. Ltd. v. Mr. Sudhir Jaiswal, Shree Sai Extrusion Technik Pvt. Ltd, WIPO Case No. D2018-2560 (finding offering of goods to be infringing rather than bona fide because “bona fide use is predicated on honest adoption of the name” and Respondent failed to show such honest adoption); and Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co. Ltd., Forum Claim Number: FA0303000149188 (where respondent adopted domain name with actual knowledge of complainant’s trademark and used the domain name in a way likely to cause confusion, the offering of services under such a mark is infringing, not bona fide).
In sum, although the Complainant may have had its suspicions about the Respondent’s claims as to bona fide use given the highly similar domain name that was used for a highly similar business, the Respondent has come forward with evidence sufficient to support its assertion that it registered the disputed domain name for a claimed descriptive meaning, without knowledge of the Complainant’s domain name or trademark rights, for the purposes of making a bona fide offering of vaping products. [emphasis added]
It is of course, well established that trademark infringement per se, is beyond the scope of the Policy. Where a disputed domain name is used in connection with a genuine offering of goods and services – even where the domain name may ultimately be determined to infringe upon a Complainant’s trademark, but without intention to do so, the use is deemed to be “bona fide”. For example, in Boyd Gaming Corporation v Moises Cohen, Forum FA2310002067853 <stardustmiami .com> (Denied, November 17, 2023), the Panel correctly stated as follows:
“The question of trademark infringement is beyond the scope of the present proceeding, which is summary in nature and hence the evidence that Respondent operates a hotel in Miami known as the Stardust Hotel is a sufficient basis to find that the Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name.
…
If the Complainant wishes to bring proceedings against the Respondent for trademark infringement or passing off, such a proceeding is more appropriately brought in a court of competent jurisdiction.
Fortunately, in the case at hand, the Panel ultimately reached the right outcome despite a troubling approach to “bona fides”, and held that “the questions of whether the Respondent’s use is infringing, and whether the Respondent had a reasonable belief that the Complainant had abandoned its trademark rights, raise difficult and close factual questions that could more accurately be assessed with the benefit of discovery and live testimony, at which credibility determinations could be made”. In other words, this dispute belongs in court, not in the UDRP.
A final word about deciding “a difficult question or a close case”. The Panel opined that although it was unnecessary to decide this case on the basis of rights/legitimate interest, the Panel would have done so if had been necessary, citing an earlier case decided by the same Panelist. I would caution Panelists to differentiate between a “difficult question” and a “close case”. Nothing under the Policy prevents Panelists from duly grappling with a difficult question, provided that the Panelist has sufficient facts and law to make a fair determination. But when it comes to a “close case”, Panels have a duty to rein themselves in because the Policy is not intended to address cases of competing rights nor is it adept at resolving anything but “clear cases” of cybersquatting. As stated in UDRP Perspectives at 0.2:
“In such disputes where the evidence for each side is closely balanced, the Panel’s main consideration may not be the standard of proof but instead the proper scope of the Policy, as discussed above in 0.1.
As an expedited administrative procedure without many of the safeguards provided in courts of law, the UDRP is only intended for and only equipped to resolve clear cut cases of cybersquatting where there is no reasonable counter-narrative to the Complainant’s allegations of cybersquatting. A Panel may determine that in disputes that do not clearly favor one party over the other, the overriding consideration is the appropriate scope of the Policy such that such cases are best left to the courts which are equipped and intended to resolve unclear cases.” [emphasis added]
WIPO Model Complaint Warns Complainant of Policy’s Bad Faith Requirement
Eagle Data, Inc. v. first last, eagle data inc., WIPO Case No. D2024-3666
<eagledata .com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant is a U.S. corporation. Though the Complaint does not specify its business nature, the Complainant’s website at <eagledata .biz> indicates it provides financial services by matching lenders with borrowers. The Complainant owns the US trademark EAGLE DATA, having a registration date of June 18, 2024, and a first use in commerce date of May 1, 2018. The disputed Domain Name was registered on August 20, 2002, and currently resolves to a website stating that the disputed Domain Name is “pending ICANN verification”. The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed Domain Name. Notably, the Complainant contends that “[t]he domain name is registered and used in bad faith since at least October 4, 2003, as the only purpose of it, is to be sold.” The Respondent did not file a Response.
Held: The Complaint provides no details concerning the Complainant’s usage of its mark. However, in accordance with its powers of independent research articulated inter alia in paragraphs 10 and 12 of the UDRP Rules (WIPO Overview 3.0, section 4.8), the Panel has established that the Complainant’s existence appears to date from 2017/2018. The Complainant’s trademark registration states that the mark was first used in 2017, and first used in commerce in 2018. The Complainant’s domain name <eagledata .biz> was registered in 2017. With the disputed Domain Name having been registered in 2002 and with there being no evidence in the record of any ownership changes since then, it appears likely that the disputed Domain Name was registered 15 years prior to the Complainant’s establishment and the first use of its mark. How the Respondent could possibly have registered the disputed Domain Name in bad faith with the Complainant in mind in these circumstances, is not explained by the Complainant, and is eminently implausible.
RDNH: The Panel notes that the Complaint was filed using the Center’s online complaint filing form. This tool specifically draws the Complainant’s attention to the WIPO Overview 3.0, which, if the Complainant had read it, would have made it clear to the Complainant that its Complaint could not succeed. The Complainant also used the Center’s UDRP Model Complaint, which expressly refers to section 3.8 of the WIPO Overview 3.0. The Complainant was therefore either made aware of the nature of the bad faith requirement and chose to file the Complaint anyway, knowing it could not succeed, or the Complainant recklessly filed the Complaint without properly considering the documents he relied upon for filing the Complaint. Both eventualities are reproachable.
In addition, the Complainant expressly acknowledged that the disputed Domain Name had been in the Respondent’s hands since at least 2003 in the Complaint, and thus knew that the disputed Domain Name was registered long before the Complainant acquired rights in its mark. In the circumstances, the Complainant either knew or at least should have known at the time that it filed the Complaint that it could not prove one of the essential elements required by the Policy, specifically, it is very clear that the Respondent registered the disputed Domain Name many years before the Complainant came into existence and filed and registered its trademark. Based on the available record, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Evolution Finance, Inc., United States
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Apparently, you can lead a horse to water but you can’t make it drink. As the Panel noted, the Complainant used WIPO’s Model Complaint Form which warns a Complainant that “registration in bad faith is generally considered to be possible only when the domain name registration occurs after your trademark rights accrue. Please refer to section 3.8 of the WIPO Overview 3.0”.
The Panel’s observation, that based upon the Complainant’s use of the Model Complaint Form, the Complainant was well-aware of the fact that generally, a trademark right must pre-exist a disputed domain name registration, may assist future Panels who wonder whether the Complainant was ill-motivated, negligent, or merely “innocently oblivious”. Where a Complainant uses the WIPO Model Complaint Form, a Complainant will generally be deemed to be aware of the Policy’s requirements when it comes to bad faith registration in relation to an earlier-registered domain name.
Previous Actions of the Respondent, along with the Parking Page, Lead to a Determination of Bad Faith
oGorgeous Inc. v. Jeongyong Cho, WIPO Case No. D2024-3462
<popflex .com>
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainant is a Texas corporation and the owner of the registered trademark POPFLEX, filed with USPTO on July 9, 2015, and registered on November 1, 2016, with claims of first use as January 14, 2016. The Complaint does not describe the Complainant’s business, but based on the Panel’s online searches, as part of a panel’s general powers articulated in paragraphs 10 and 12 of the Rules, the Complainant appears to be a company selling workout clothing for women at the domain name <popflexactive .com>. The Respondent appears to be an individual with an address in the Republic of Korea. The disputed Domain Name was registered on February 22, 2016, and resolves to a website with pay-perclick (“PPC”) links.
The Complainant alleges that the links “Womens Clothing Line”, “Fitness Pilates Workout” and “Clothing Line” all directly relate to the goods for which the Complainant’s POPFLEX mark is used, and therefore, the Respondent is seeking to capitalize on the reputation and goodwill of the Complainant’s mark. The Complainant also alleges that the Respondent registered the disputed Domain Name to unfairly capitalize on the Complainant’s nascent trademark rights and that the Respondent’s offer for sale of the disputed Domain Name and display of PPC links represent use in bad faith. The Respondent did not file a Response.
Held: Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed Domain Name such as those enumerated in the Policy or otherwise. Also, here, the Respondent used the disputed Domain Name to display PPC links to terms such as “Women’s Clothing Line”, “Fitness Pilates Workout”, and “Clothing Line” which are directly related to the goods of the Complainant and compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. The Panel finds the second element of the Policy has been established.
Further, the disputed Domain Name was registered on February 22, 2016, and the Complainant’s trademark application was filed on July 9, 2015. Further, though no evidence was submitted on the manner or extent of the Complainant’s use of the mark before its registration, the USPTO records display the date of first use in commerce of the POPFLEX mark as January 14, 2016. Therefore, there was an opportunity for the Respondent to learn of the Complainant and its mark before the registration of the disputed Domain Name. As the Respondent did not submit any response to provide any alternate explanation on why or how he came to register the disputed Domain Name, the Panel concludes that there was registration of the disputed Domain Name in bad faith. See WIPO Overview 3.0, section 3.8.2: “the facts establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights.”
As for the use of the disputed Domain Name, it is linked to a parking page displaying PPC links to fashion goods that are related to the goods of the Complainant, which means that the Respondent created a likelihood of confusion and likely benefited commercially from the confusion of Internet users that visited the site by mistake as per paragraph 4(b)(iv) of the Policy. Lastly, the Panel takes note of the various prior UDRP decisions rendered against the Respondent that indicate a pattern of bad faith conduct on the part of the Respondent as described under paragraph 4(b)(ii) of the Policy, e.g., Laboratoire Nutergia v. Jeongyong Cho, WIPO Case No. D2007-1582; CCA Industries, Inc. v. Jeongyong Cho, WIPO Case No. D2017-0769.
Transfer
Complainant’s Counsel: Studio Legal LLP, United States
Respondent’s Counsel: No Response
Brunet Has Less Fun and Gets UDRP’d
<brunet .com>
Panelists: Mr. Matthew Kennedy (Presiding), Ms. Reyes Campello Estebaranz and Mr. David H. Bernstein
Brief Facts: The Complainant operates or services a network of food stores and drugstores in Canada since the first pharmacy was founded in 1855. The Complainant owns multiple Canadian trademark registrations for BRUNET, first registered on May 13, 1988. The Complainant has also registered multiple domain names that incorporate “brunet”, the earliest of these being <brunet .ca>. The disputed Domain Name was created on April 17, 1998, and resolves to a website that features a photograph of a swimsuit model with a brown complexion and brown hair. The Respondent presents dictionary definitions indicating that “brunet” refers to a girl or woman with a dark complexion or brown hair. Further, the Respondent’s domain name portfolio has at different times included several domain names referencing a hair color (i.e. <blonde .org>, <blondepix .com>, <brunette .net>, <netblondes .com>, <redhead .com>, and <sexyblonde .com>), all of which were registered between March 1998 and May 1999.
On May 2, 2023, the Complainant, through an agent, anonymously offered USD 2,500 for the disputed Domain Name on a broker’s platform. The Respondent countered on May 7 with an offer of USD 115,000. In June 2023, the Complainant made a final anonymous offer of USD 5,000, possibly using a third-party email, which was rejected. The Complainant alleges that the Respondent earns revenue through the advertising of sponsored and/or affiliated links and the Respondent’s clear intent to profit from the domain name is evidence of bad faith. The Respondent contends that its principal is also the principal of another company operating a similar business that is a good faith monetizer of dictionary words or other common terms in seven prior cases under the UDRP. Within the span of a few months in 1998 and early 1999, the Respondent registered several hairstyle or hair color domain names and associated them with a portfolio of names subject to monetization with potential adult topics.
Held: The disputed Domain Name was registered in April 1998, ten years after the Complainant’s earliest trademark registration in Canada. The disputed Domain Name is identical to the sole textual element of that mark. However, the Panel does not infer from these facts that the Respondent knew or should have known of the Complainant’s trademark because “brunet” is also an English dictionary word as well as a surname. The Complainant fails to prove that the Respondent had actual knowledge of its mark or should have been aware of it in 1998, as most of the Complainant’s evidence pertains to its current reputation. Although the first Brunet pharmacy was founded in 1855, it operated only in Quebec and had no online presence until 1999. The Respondent argues that its registration of the domain name is based on the dictionary meaning of “brunet,” which aligns with several other domain names registered during 1998-1999 that can be monetized with adult topics.
The Panel takes note that, when the Complainant’s agent made an unsolicited offer to purchase the disputed Domain Name in 2023, the Respondent made a counter-offer of USD 115,000. However, the price negotiation was conducted anonymously, and no circumstances have been drawn to the Panel’s attention from which the inference could be drawn that the offer indicated any awareness and targeting of the Complainant, let alone at the time of registration of the disputed Domain Name 25 years prior. Moreover, generally speaking, prior UDRP panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling to a trademark owner (or its competitor), see WIPO Overview 3.0, section 3.1.1. Accordingly, the Panel is unable to conclude that the disputed Domain Name was registered in bad faith.
Complaint Denied
Complainant’s Counsel: Norton Rose Fulbright Canada LLP, Canada
Respondent’s Counsel: John Berryhill, United States
Case Comment by ICA General Counsel, Zak Muscovitch:
Let’s start with what I appreciated about the decision. I appreciated how the Panel clearly and unequivocally expressed the material considerations about offers to purchase:
“The Panel takes note that, when the Complainant’s agent made an unsolicited offer to purchase the disputed domain name in 2023, the Respondent made a counter-offer of USD 115,000. However, the price negotiation was conducted anonymously, and no circumstances have been drawn to the Panel’s attention from which the inference could be drawn that the offer indicated any awareness and targeting of the Complainant, let alone at the time of registration of the disputed domain name 25 years prior.”
The fact that a negotiation is initiated by a Complainant and that it is conducted anonymously such that the Respondent is not aware of who it is dealing with or whether the soliciting party has any trademark rights, makes it wholly immaterial to the question of bad faith. Kudos to the Panel for clearly and succinctly setting this out. This is worth bookmarking for future reference.
I also appreciate that the Panel clearly stated that there is nothing wrong with selling a domain name at a profit, per se:
“Generally speaking, prior UDRP panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling to a trademark owner (or its competitor). See WIPO Overview 3.0, section 3.1.1.”
I am however, a bit disappointed with how the Panel skipped over Rights or Legitimate Interest. While I can appreciate that for the purposes of a dismissal, this section can technically be skipped over in favor of dismissal under bad faith, some cases warrant a consideration of this part of the test. As noted in UDRP Perspectives at 2.1:
“Panels may be tempted to skip over determining whether a Respondent has rights and a legitimate interest. This is often done for reasons of judicial economy, as strictly speaking a case can be dismissed on one prong of the three-part test and therefore the decision need not address any additional, extraneous grounds. Nevertheless, Panelists should generally make an affirmative finding of rights and legitimate interest if the facts so warrant, due to the implicit obligations of Rule 15(c).
Paragraph 15(c) of the Policy expressly entitles a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):…”
A Respondent who has had its bona fides challenged and been falsely accused of what essentially amounts to a type of fraud, may deserve some vindication and confirmation of their rights and interests as the Policy provides for.”
In the instant case, the Panel noted that the Domain Name corresponds of course, to a common dictionary word – brunet – and was used for a website that depicted a brunet. Moreover, the Panel found that there was no basis “from which the inference could be drawn that the offer indicated any awareness and targeting of the Complainant, let alone at the time of registration of the disputed domain name 25 years prior”. The Panel also found that the Respondent had also registered blonde.org, redhead.com and other similar names. In the circumstances, if the Panel didn’t even consider RDNH, why could it not at least address the Respondent’s rights and legitimate interests under Rule 15(c)?
Did the Respondent Have a Legitimate Interest in the Domain Name?
JSW IP Holdings Private Limited v. Sonja Perkins, WIPO Case No. D2024-3633
<jswone .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant, part of the JSW Group, is among India’s largest conglomerates, with economic interests ranging from steel to energy and infrastructure. It has been incorporated under its present name since December 18, 2014. The Complainant’s corporate group has interests worldwide, including in the United States, where the Respondent is based. The Complainant holds a range of intellectual property on behalf of its corporate group, including numerous trademarks for the JSW mark, including an Indian trademark registered on July 26, 2005. The Complainant’s group company JSW Steel Limited is also the owner of a variety of registered trademarks for the mark JSW ONE, all of which appear to have been registered in 2020. The Complainant’s group also owns two domain names containing the term “jswone”, namely <jswonehomes .com> (May 26, 2021), and <jswonemsme .com> (July 10, 2021).
The disputed Domain Name was registered on April 17, 2015, and resolves to a parking page with a link button entitled “Get This Domain”. The Respondent, a U.S.-based venture capitalist and philanthropist, claims the disputed domain was registered for an initiative called “Just Start With One,” spun out of Project Glimmer, to inspire others to start with one idea. Project Glimmer is a nonprofit supporting underserved teenage girls. In late September 2023, the Complainant’s agents began a process to acquire a disputed domain, and by November 8, they agreed to purchase it for USD 5,000. However, on November 16, the agent reported that the owner had changed their mind and decided to keep the domain for their own use despite attempts to persuade them to sell.
Held: The evidence indicates that the earliest that the Complainant began to use the JSW ONE mark is 2020, whereas the disputed Domain Name was registered in April 2015, long predating the Complainant’s use of the word “one” in combination with its JSW mark. The Panel notes that the Complainant has a presence and substantial commercial activities in the United States, where the Respondent is based, but that there is no evidence that the Complainant is, for example, a household name there. In addition, the Respondent’s domain name <juststartwith1 .com> was registered minutes before the disputed Domain Name in 2015.
This provides very strong support for the notion that the phrase “Just Start With” was in the Respondent’s mind at the precise moment when it registered the disputed Domain Name, and thus affirms its position as to the contended acronym in the disputed Domain Name. Taking all of the facts and circumstances together, the Panel is inclined to the view that the reason why the Respondent arranged for the building of the website landing page in 2024 was more probably than not to avoid repeated approaches from the Complainant’s broker so long as the disputed Domain Name remained unused, rather than being indicative of any bad faith motivation in the registration of the disputed Domain Name in 2015.
Crucially, the Panel considers that the sale negotiations which took place in 2023 and 2024 respectively, and the web development instructions that followed the 2024 approach by the Complainant’s broker, cannot taint the original registration of the disputed Domain Name in 2015, in respect of which there are reasonably plausible contemporaneous indications of good faith. The Respondent’s use of “jsw” is only with the word “one,” which had no clear connection to the Complainant at that time. The Panel also notes that the Respondent has previously established legitimate foundations similar to what it claims for the “Just Start With One” name. 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.
Complaint Denied
Complainant’s Counsel: Worldwide Intellec, India
Respondent’s Counsel: Self-represented.
Case Comment by ICA General Counsel, Zak Muscovitch: The Panelist stated that:
“The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s findings in connection with the third element under the Policy, no good purpose would be served by addressing the issue of the Respondent’s rights or legitimate interests in the disputed domain name.” [emphasis added]
I have already explained above, how a very good reason sometimes exists for addressing the issue of the Respondent’s rights and legitimate interest. Apart from the particular facts of the present case which may or may not have warranted an examination under 15(c), I would not take the above statement as a general rule to skip over rights/legitimate interest wherever expedient, but rather at most, an explanation of the approach taken in this particular case in the given circumstances, only.
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.