We hope you will enjoy this edition of the Digest (Vol. 3.19), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch.
‣ Kinky Respondent “Legitimately Selected the Domain Name for its Dictionary Sense” (kink .ai )
‣ Last Ditch Effort to Claim “Renewal in Bad Faith” Results in RDNH (presonate .com *with commentary)
‣ Complainant’s Prior Case Insufficient to Prove Common Law Rights (younginnovations .tech *with commentary)
‣ Complainant Must Prove Common Law Trademark Rights in Personal Name (harmoniarosales .com and harmonyrosales .com)
‣ Evidence Must Show Common Law Rights Prior to Registration of Domain Name (parentingwithgal .com and hearttsharing .com and *with commentary)
‣ Competing Narratives and Factual Disputes Cannot Be Resolved by UDRP (mriyaaid .com and mriyaaid .org *with commentary)
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
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Kinky Respondent “Legitimately Selected the Domain Name for its Dictionary Sense”
Cybernet Entertainment LLC v. Christopher Wake, WIPO Case No. DAI2023-0004
<kink .ai>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The US Complainant holds Trademark for KINK (registered on July 12, 2016), however, the Complaint does not further describe the Complainant’s business or the use of its KINK mark. The disputed Domain Name was created on December 16, 2017, and resolves to a landing page advertising the disputed Domain Name for sale through Grit Brokerage. The Complainant alleges that the Respondent registered the disputed Domain Name primarily for the purpose of selling the disputed Domain Name to the Complainant for an excessive price (offered for USD $19,000). The Respondent contends that the offer price was recommended by Grit Brokerage, while he retained the right to approve any sale and that the Complainant initiated the purchase proposal through the landing page.
The Respondent denies prior knowledge of the Complainant or its mark and contends that “kink” is a common four-letter dictionary word with “many uses and meanings” and that he registered it “with the intent to turn it into a startup venture, KINK AI”. The Respondent further contends that he “has a history of purchasing .ai domains as a means to seed company formation”, citing <mast .ai>, which the Respondent used for “a venture capital-backed company that leveraged artificial intelligence to secure and protect medical devices”. The Respondent requests a finding of Reverse Domain Name Hijacking.
Held: The Complainant furnished no evidence concerning the fame of the relevant mark. It also appears that the Respondent still needs to take concrete steps to realize his stated intention to create a business plan and attract venture capital for the contemplated enterprise. However, the Respondent does articulate concepts for the disputed Domain Name and has some relevant history, registering and similarly developing another “.ai” domain name. The Panel observes that the Complainant’s argument regarding the Respondent’s registration in bad faith is not compelling. The relevant facts are essentially those that also support the Respondent’s counter-argument that it legitimately selected the disputed Domain Name for its dictionary sense. The Complainant relies on the premise that the Respondent registered the disputed Domain Name in order to sell it to the Complainant for a price in excess of out-of-pocket costs. But the Complainant offers no convincing evidence to support the likelihood that the Respondent was aware of its mark.
The Complainant does not overcome the Respondent’s denial of prior awareness or intent to target its mark, which the Complainant should have addressed in its initial filing, especially considering that the Respondent held the disputed Domain Name for some six years without approaching the Complainant, and noting the disputed Domain Name corresponds also with a dictionary term. The Respondent plausibly denies prior awareness of the Complainant’s mark and points out that the dictionary word, and its combined sense in tandem with “ai” or “artificial intelligence”, is multifaceted and valuable. The Panel considers that the inquiry here is properly focused on whether the probability is that the Respondent selected the disputed Domain Name for its dictionary value as opposed to its trademark value. The Panel finds the former more likely and concludes, therefore, that the Complainant fails to establish the third element of the Complaint.
Complaint Denied
Complainants’ Counsel: Law Offices of Seth W. Wiener, United States
Respondents’ Counsel: Self-represented
Last Ditch Effort to Claim “Renewal in Bad Faith” Results in RDNH
Presonate Zrt. v. Abhijit Mhetre, WIPO Case No. D2023-1106
<presonate .com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Hungarian Complainant offers presentation development and consulting services. It owns trademark registrations for the mark PRESONATE in numerous jurisdictions, the earliest of which is Hungarian Trade Mark Registration dated May 28, 2020. The disputed Domain Name was registered on February 20, 2011, and currently resolves to a parked page featuring pay-per-click advertisements unrelated to the Complainant’s business. The Complainant alleges that the Domain Name was registered or used primarily to disrupt the Complainant’s business given that the Respondent allegedly expressed an intention to trade in the same industry, and the Domain Name resolved to pornographic content in the past.
The Respondent under an affidavit explains that he conceived the disputed Domain Name for use in relation to resonating presentations, with the Domain Name consisting of a portmanteau of “presentation” and “resonate” and further accepts that it did resolve to pornographic content for a period of four days in 2021 due to a technical glitch.
Held: The Respondent’s evidence conclusively establishes that the Respondent registered the disputed Domain Name in 2011 and that the Complainant was only formed as a business in 2019 (a fact which the Complainant neglected to include in the Complaint). Given that the registration of the Domain Name predates the formation of the Complainant’s business and all of the Complainant’s trade mark registrations, and in the absence of any other evidence suggesting any targeting of the Complainant, there is no basis for claiming that the Respondent registered the Domain Name in 2011 with the Complainant in mind (who did not exist at the time). The Complaint must therefore fail given the conjunctive nature of the bad faith element, requiring bad faith registration and bad faith use.
The Complainant’s contentions in its supplemental filing are that bad faith registration can be determined at the time of renewals of the Domain Name. Firstly, the consensus view amongst panelists is that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith (WIPO Overview 3.0 at section 3.9). Secondly, even if bad faith registration could be determined at the time of renewal, there is nothing in the Complaint to support the Complainant’s contention that the Respondent acted in bad faith at any stage. The only claim that the Complainant seems to provide to support that the Domain Name might have been used in bad faith is its proven use for pornographic content. However, the Respondent’s evidence, on the affidavit, convincingly indicates that the redirection to pornographic content was not intentional, with the Respondent immediately taking steps to have the redirect removed upon being informed of it by the Complainant.
RDNH: The Complainant is represented and represented complainants are held to a higher standard than unrepresented ones. The Complainant clearly ought to have known it could not succeed under any fair interpretation of the facts which were available to the Complainant prior to filing the Complaint; the conjunctive requirement is well-established, the disputed Domain Name was registered long before the Complainant adopted the mark and acquired any trademark rights in it, and it was accordingly impossible for the Respondent to have registered the Domain Name with the Complainant’s mark in mind. Lastly, the Complainant did not disclose that, prior to filing the Complaint that it had made unsolicited attempts to purchase the disputed Domain Name from the Respondent, and proceeded to file the Complaint after the Respondent declined them. It is clear that this is an improper purpose.
Complaint Denied (RDNH)
Complainants’ Counsel: Széles Law Office, Hungary
Respondents’ Counsel: Cylaw Solutions, India (Ankur Raheja, the Editor of this Digest, and author of this case summary, is the principal of Cylaw Solutions.)
Case Comment by ICA Counsel, Zak Muscovitch: This is the 15th RDNH case so far this year (the first 4 months of 2023). If this trend continues for the rest of the year, we can expect close to the record setting number of cases that we saw last year (2022) and the year before (2021), which was around 50 and 48, respectively. (See RDNH.com for a listing of RDNH cases). This case also marks our Editor-in-Chief, Ankur Raheja’s, fifth RDNH decision in favour of his client so far in 2023 (see https://udrp.tools/?s=14644988), which is probably a record for most RDNH decisions obtained by counsel in the shortest period of time. For some interesting reading about RDNH, see; “The UDRP “Celebrates” Its 500th Reverse Domain Name Hijacking Case” (CircleID, June 2, 2022, Cohen and Muscovitch).
Complainant’s Prior Case Insufficient to Prove Common Law Rights
Young Innovations, Inc. v. Anjesh Tuladhar / YoungInnovations, NAF Claim Number: FA2303002037871
<younginnovations .tech>
Panelist: Ms. Ivett Paulovics
Brief Facts: The US Complainant develops and manufactures dental and orthodontic equipment and owns a USPTO trademark registration for “YOUNG” dated, March 30, 2021. The Complainant also claims common law rights in YOUNG and YOUNG INNOVATIONS through continuous and widespread use in commerce since 1998 in the United States and around the world. The Complainant uses the domain names <ydnt .com> and <youngdental .com> to promote its products. The Respondent is a Nepal-based software and technology company and uses the domain name <younginnovations .com .np> to promote its business. The disputed Domain Name was registered with privacy and proxy service on October 13, 2022 and currently resolves to a page with third-party’s commercial links. The Registrar confirmed that the Respondent is Anjesh Tuladhar, YoungInnovations.
The Complainant alleges that the Respondent had constructive knowledge of the its trademark rights at the time of domain registration and uses the Domain Name in bad faith by featuring third-party pay-per-click (“PPC”) hyperlinks. The Complainant further alleges that there is no reason for the Respondent to have registered and used the domain name other than to trade off the reputation and goodwill of the Complainant’s marks, to cause confusion among Internet users and third parties, and to prevent the Complainant from owning the domain name.
The Respondent contends that it was unaware of Complainant’s marks as “young” is a commonly used word and since its incorporation in 2007, it continuously used its company name and domain name <younginnovations .com .np> in its area of business and, thus, is commonly known by the name “YoungInnovations”.
Held: Since the Complainant provides evidence of registration of the YOUNG mark with the USPTO, the Panel finds that the Complainant has sufficiently demonstrated its rights in the YOUNG mark for purposes of the Policy. On the other hand, the Panel finds that the Complainant has failed to prove that it has unregistered or common law rights in the YOUNG INNOVATIONS mark. Although, the Complainant asserts to have used its marks for “decades”, it has not submitted adequate evidence of such use and has not shown that through such “widespread, continuous, and prominent use”, the YOUNG INNOVATIONS mark acquired distinctiveness/secondary meaning; Not any figure on the amount of sales, any promotional material in specialized journals, any recognition by Complainant’s industry or by the consumers, any consumer survey or any other evidence has been provided to support Complainant’s conclusory allegations that it has rights in the YOUNG INNOVATIONS mark and such mark is widely known by consumers and associated primarily with Complainant.
Complainant refers to a previous UDRP case where the panel had found Complainant’s common law rights in the mark however that decision does not mention which evidence persuaded the panel in its finding. Noting that: i) each case is decided on its own merits; ii) the burden of proof on Complainant; and iii) this Panel shall decide the Complaint on the basis of the statements and documents submitted by Complainant, in absence of additional materials supporting Complainant’s allegations, the Panel can neither take the previous UDRP case cited by Complainant into consideration for purposes of the present dispute, nor accept Complainant’s unsupported conclusory statements.
The Respondent is a Nepalese company founded in 2007, carrying out its business activities in the information and communication technology sector under the company/trade name “Young Innovations”. The Respondent provides the necessary documents issued by the governmental authority evidencing that the company’s name is Young Innovations and provides a printout of the webpage associated with its <younginnovations .com .np> domain name which it uses to promote its business.
The disputed domain name was registered on October 13, 2022, 5 months before the Complaint was submitted to Forum, and does not resolve to any active website. Rather, it resolves to a parking page with third-party’s commercial links. Business plans and operations can take time to develop and the evidence of use or intended use of a domain name may not be available shortly after its registration. However, the Panel does have some concern that Respondent has not produced any evidence demonstrating its use of or preparations to use the disputed domain name in relation with its international activities to support its allegations made in the Response.
As for the PPC links, while Complainant has relied on a screenshot of a webpage associated with the disputed domain name, the Panel notes that such results are likely to be location-sensitive and dependent upon the IP address of the searching device. Some of those links are related to Complainant’s business, some are unrelated, and at least one is related to Respondent’s business.
The Panel does not find Complainant’s trademark to be unique or so distinctive as to be overwhelmingly associated with Complainant as opposed to any other party. The Complainant has neither established the distinctiveness and the reputation of its YOUNG trademark nor demonstrated that the Respondent was aware of the Complainant and its mark at the time of registration of the disputed Domain Name. Therefore, the Panel does not find Complainant’s use of its mark to be so notorious or so distinctive that the Respondent must be assumed to have registered the disputed Domain Name (or its business back in 2007) with Complainant’s trademark in mind.
The Panel is of the view that the Respondent has provided sufficient evidence to meet its burden and to demonstrate its right or legitimate interest on the “commonly known by” grounds.
Complaint Denied
Complainants’ Counsel: Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA
Respondents’ Counsel: Prashant Shrestha, Nepal
Case Comment by ICA General Counsel, Zak Muscovitch: This careful and well-reasoned decision by Panelist Ivett Paulovics is notable for how the Panelist appraised the Complainant’s claim of common law trademark rights. The Panelist not only correctly denied the claim of common law trademark rights due to the absence of the requisite supporting evidence (“Not any figure on the amount of sales, any promotional material in specialized journals, any recognition by Complainant’s industry or by the consumers, any consumer survey or any other evidence has been provided to support Complainant’s conclusory allegations that it has rights in the YOUNG INNOVATIONS mark and such mark is widely known by consumers and associated primarily with Complainant”), but also declined to accept the Complainant’s previous case as supporting common law trademark rights because the previous case didn’t indicate what evidence was relied upon to make the finding. This strikes me as the correct approach. Complainants can and should rely upon their previous cases which support their position but should not entirely rely upon such cases. Complainants should generally provide the actual evidence required to prove their case rather than merely a secondary source supporting their evidence. Previous cases can provide useful corroboration for their evidence but are not substitutes for it, where the previous case does not identify the evidence relied upon.
Practice Tip: Complainants should identify their previous decisions which corroborate their evidence, but such previous decisions are not substitutes for providing the actual supporting evidence in the present case. Another interesting aspect to this decision, is the Panelist’s approach to Legitimate Interest. The Panelist recognized that the Respondent was engaged in a bona fide business since 2007 as “Young Innovations”, as proven by its website and government registration. This alone could meet the exculpatory provision of Paragraph 4(c). The Panelist however, found that although the Respondent had “established a prima facie case” for its legitimate interest, she “approaches the Respondent’s claim with considerable caution”. She states that “this is because despite the Respondent having established a prima facie case as set out above, Complainant may still succeed if it can establish that the disputed domain name was selected not for the purpose of reflecting a legitimate company name, but instead for the purpose of targeting Complaint and the good will attached to Complainant’s YOUNG trademark”. What the Panelist appears to be saying here, is that although it initially appears that the Respondent had rights and legitimate interests, she would essentially ‘reserve judgment’ on that issue until she canvassed the bad faith issue. Having then found no basis to impugn the initial finding of legitimate interest, she circled back and affirmatively found that the “Respondent [had] made out its claim to a right or legitimate interest”.
I think that this approach outlines in writing, the approach implicitly adopted by many Panelists, and it is therefore helpful to see it expressed. But what made the Panelist’s approach particularly sound to me was her affirmative finding of rights and legitimate interest. As I have written previously, Panelists should make such affirmative findings where warranted. Here, the Panelist carefully considered whether rights and legitimate interest could be found based upon the evidence submitted by the Respondent, and then went ahead and made the appropriate finding.
Now, an argument could be validly made, that Paragraph 4(c) should be viewed independently of any consideration of bad faith registration and use. For example, having found that the Respondent had a real business for many years under a name similar to the Domain Name, that could very well have been enough to find rights and legitimate interest under 4(a)(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”). If the business is genuine, that in itself should mean that it is “bona fide” as understood by 4(a)(i). So why should bad faith registration and use even be considered? Can we not end the inquiry after 4(a)(i), or at least treat Legitimate Interest and Bad Faith separately as they are in the text of the Policy?
Let’s explore that a bit. For example, the Panelist could have made a discrete finding of Legitimate Interest and then went on to separately evaluate bad faith registration and use. Had there been evidence of bad faith registration and use (e.g. evidence of selection and use of the Domain Name to pass itself off as the Complainant), then the Complaint would have failed because the Respondent won on Legitimate Interest, and the Complainant must win on all three parts of the three-party Policy test. Some might say that this is perfectly fine as the Policy contemplates that in such cases a Complainant’s recourse is to court since it becomes a matter of trademark infringement or passing off, rather than cybersquatting per se. But others would say that a Respondent simply cannot have a right or legitimate interest in a Domain Name that is used for infringement or passing off, particularly where the selection of the Domain Name was purposefully registered for that illicit purpose to begin with.
I think that what it comes down to, is the degree of comfort that a Panelist has or ought to have, in a Respondent’s claim of rights or legitimate interest. If a Panelist is uncertain based upon the evidence, a Panelist may simply dismiss the Complaint because the Complainant has not proven the second element. But on the other hand, for a Panelist to be able to declare a Respondent’s rights or legitimate interest, the Panelist must canvass bad faith registration and use, as otherwise the Panelist would not be reasonably comfortable in making such a declaration since it would be inconsistent for rights and legitimate interest in a Domain Name to exist alongside registration and use in bad faith.
Complainant Must Prove Common Law Trademark Rights in Personal Name
Harmonia Rosales v. Giraldo Rosales / Nitrogen Labs, Inc., NAF Claim Number: FA2302002030851
<harmoniarosales .com> and <harmonyrosales .com>
Panelists: Mr. Paul M. DeCicco, Mr. Jeffrey J. Neuman and Mr. Alan L. Limbury
PRELIMINARY ISSUE: CONCURRENT COURT PROCEEDINGS: On March 22, 2023, the Respondent requested that this proceeding be terminated or suspended due to pre-existing, pending litigation in the Illinois Court, filed on May 24, 2022, by the Complainant against the Respondent and others. That litigation relates to the domain name <harmoniarosales .com> and, according to the Respondent, raises identical issues to those in this UDRP proceeding. Alternatively, the Respondent requests that any necessary implementation of a decision by the Panel be deferred until the resolution of the Illinois litigation. However, given the concurrent litigation does not involve the domain name <harmonyrosales .com> the Panel will proceed to make a decision in this proceeding, noting that, as in W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008), it is not binding on the court and does not preclude the prosecution of any claims, defenses, or counterclaims in the litigation.
Brief Facts: The Complainant is a well-known artist who has been marketing, selling and displaying her artwork under this name/mark since 2012. The Complainant claims common law trademark rights in her name HARMONIA ROSALES, which is associated in commerce with her image and artwork. The Complainant has used and/or intends to use the mark at issue and incorporated by the Respondent in the disputed domain(s) in numerous areas. The Complainant asserts that since 2017 she directed her online and social media followers to her website at one of the disputed Domain Names <harmoniarosales .com> and as a result, her online business was earning more than USD $600,000 in 2021 and had over 20,000 subscribers to her website. The disputed Domain Names were registered on July 8, 2014* (harmoniarosales .com) and July 12, 2022 (harmonyrosales .com). *Note: The said domain name was originally registered by the Complainant and could have been acquired by the Respondent on expiration.
The Respondent contends that the Complainant cannot establish any of the elements required to make out a claim under the Policy. In specific, as to the first element, under U.S. law, in order to obtain trademark rights to unregistered personal names, the party claiming such rights must establish that the name has acquired distinctiveness among consumers when used in connection with the subject goods or services. While the Complainant made a federal trademark application in the U.S. for HARMONIA ROSALES, that application remains pending. Here, the Complainant has yet to attempt to demonstrate acquired distinctiveness/secondary meaning of either HARMONIA ROSALES or HARMONY ROSALES.
Held: The <harmoniarosales .com> domain name is identical to Complainant’s personal name and the <harmonyrosales .com> domain name is identical to her nickname. However, the Panel is not satisfied that the Complainant has shown that she has common law trademark rights in her name or nickname. A pending trademark application does not establish rights in a trademark, see WIPO Overview 3.0, section 1.3 read with Section 1.5 (“… making broad unsupported assertions regarding the use of personal name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint”).
Here, the Complainant makes broad, unsupported assertions that she has common law trademark rights in her name HARMONIA ROSALES. The assertion that she “has used and/or intends to use the mark” in numerous areas does not demonstrate any such use. The Complainant provides no evidence in support of its assertions. The Complainant, however, exhibits a Wikipedia entry which describes her career and lists numerous art exhibits and collections. This does not establish that the Complainant has common law trademark rights in her personal name. Accordingly, in the absence of evidence to support her assertions, the Panel finds that the Complainant has not proved that her personal name is a trademark or service mark to which she has rights. Accordingly, it is ordered that the Domain Names remain with the Respondent, without prejudice to the Complainant filing a fresh Complaint with supporting evidence.
Complaint Denied
Complainants’ Counsel: Lisa D. Johnson of Sheppard, Mullin, Richter & Hampton, LLP, Illinois, USA
Respondents’ Counsel: Theodore J. Chiacchio of Chiacchio IP, LLC, Illinois, USA
Evidence Must Show Common Law Rights Prior to Registration of Domain Name
<parentingwithgal .com> and <hearttsharing .com>
Panelist: Ms. Sandra J. Franklin
Brief Facts: The Complainant offers psychotherapy and counselling products and services and claims common law rights in the PARENTING WITH GAL and HEARTTSHARING marks. The Complainant has pending trademark applications for the aforesaid marks, filed in February of 2023, with first use dates of February of 2023, and March of 2022. The Respondent registered the disputed Domain Names on February 25, 2023, and offered them for sale. The Complainant alleges that the Respondent does not have any rights or legitimate interests in the domain names and that the Respondent registered and uses the domain names in bad faith. The Respondent did not file a Response.
Held: The Complainant asserts common law rights in the PARENTING WITH GAL and HEARTTSHARING marks. The Policy Clause 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. A mark can generate secondary meaning sufficient to establish a complainant’s common law rights when consistent and continuous use of the mark has created distinctive and significant goodwill under Policy clause 4(a)(i).
The Complainant provides screenshots of the Complainant’s Instagram page and website, claiming the use of the marks since January and March 2021. However, the screenshots provided by the Complainant are dated April 4, 2023, and there is no evidence demonstrating prior use. There is also no evidence of advertising expenditures or recognition among consumers. The Complainant uses cfy@cfyservices .com and has a website at <positiveparentingandrelationships .com>, neither of which reflects the PARENTING WITH GAL or HEARTTSHARING marks.
The Panel also notes the Complainant’s pending trademark applications, filed in February of 2023, with first use dates of February of 2023, and March of 2022; these dates do not correspond with those alleged by the Complainant in its Complaint, namely use dating back to 2021. For all of the above reasons, the Panel finds that the Complainant has not satisfied the first prong of the Policy, as it has not conclusively demonstrated that the PARENTING WITH GAL and HEARTTSHARING marks have acquired a secondary meaning and has not demonstrated common law rights in the marks.
Complaint Denied
Complainants’ Counsel: Peter Nussbaum of Chiesa Shahinian Giantomasi PC, New Jersey, USA
Respondents’ Counsel: No ResponseCase Comment by ICA General Counsel, Zak Muscovitch: This case is a very good example of a Panelist requiring a Complainant to prove common law trademark rights. Panelist Sandra Franklin did not overlook the Complainant’s claimed date of first use, nor did she overlook the shortcomings of the evidence which failed to demonstrate common law trademark rights prior to the Domain Name registration. Rather, the Panelist quite properly held the Complainant to the proper standard and evidentiary requirements. It is for the Complainant to make its case and Complainants should not expect Panelists to award them a Domain Name in the absence of sufficient evidence.
Competing Narratives and Factual Disputes Cannot Be Resolved by UDRP
Mriya Aid Org Inc. v. Russell Wynings/ Dru Wyning, CIIDRC Case Number: 20450-UDRP
<mriyaaid .com> and <mriyaaid .org>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The Complainant was created as a not-for-profit corporation to undertake fund-raising, to ship humanitarian and medical equipment and supplies to Ukraine, in Canada on April 13, 2022. It is a collection of volunteers who are volunteering their personal time and efforts for various work of the organization. An application to register the term MRIYA AID as a trademark was filed on March 2, 2023, with the USPTO. The Respondent registered the disputed Domain Names on March 10, 2022, while he was a member of the Complainant’s board of directors until he resigned from that body in July of 2022.
The Complainant alleges that the Respondent joined the organization as a volunteer at the outset, and he took on certain tasks relating to the creation of a website for the organization… in that role, he registered the disputed Domain Names, exclusively on behalf of the Complainant organization. The Respondent contends that while he was a Co-Founder of Mriya Aid, he conceived and registered the Domain Names weeks, before the Complainant ever existed and that the Complainant “reimbursed me for out-of-pocket expenses I made to purchase merchandise. There was no other promise or legal obligation in relation to this.” The Respondent further contends: “Following my departure from the organization, I intend to use the domain names for a fair use purpose: documenting my experiences founding Mriya Aid, along with the fallout from the alleged fraud I witnessed the organization conduct” and “this complaint was filed to harass me due to the organization’s suspicion that I acted as a whistleblower…”.
Preliminary Issue – Issues of Fact Exist and the Case Is beyond the Scope of the Policy: As an initial matter, the pleadings raise a number of critical factual disputes between the parties which would more appropriately be decided by a court of law with its attendant evidentiary tools (discovery, witness testimony, cross-examination, etc.). These include, at a minimum, whether trademark rights exist in the phrase MRIYA AID, who owns any such trademark rights, and whether the Respondent has authorization to use this phrase and to what extent. Further, the Panel is of the opinion that the above-referenced factual disputes raise issues which exceed the very limited scope of the Policy. Panels have recognized that “[t]he Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”.
In addition to the trademark issues raised above, the present situation potentially involves questions of entity formation and governance, the terms of written or verbal agreements, fiduciary duty and tortious interference, and debtor obligations, all of which may impact the ownership of the disputed Domain Names and all of which exceed the scope of the Policy. These issues are uniquely suited to resolution through litigation in a court of competent jurisdiction.
Held: The parties have submitted differing narratives regarding the creation of this phrase, the Respondent’s status in Complainant’s organization, and who owns any trademark rights attendant to the phrase. This ownership dispute is beyond the scope of the Policy and so the Panel declines to decide these questions. In addition, the Complainant claims that the Respondent is withholding the domain name for improper purposes, however, the Respondent asserts that it “intend[s] to use the domain names for a fair use purpose. The domain name automatically redirects users to a website hosted at the domain name and this website solicits donations and describes the activities of an organization listed as Mriya Aid Org Inc. Presented with this limited evidence and given the conflicting trademark ownership and authorization claims made by the parties, the Panel is not in a position to make findings on whether the Respondent has rights or legitimate interests in the Domain Names.
Similar to the above two elements, the Panel finds a number of material fact issues as well as legal issues that exceed the scope of the Policy and so it will also not make a decision on Bad Faith as well. However, it should be noted that the Bad Faith requirement of the Policy is stated in the conjunctive and a successful complainant must prove “bad faith registration and use”. Where a respondent registers the disputed Domain Name (in its role as a member of the complainant’s board of directors) with the knowledge and consent of the complainant, there exists significant questions or whether the domain name was, in fact, registered in bad faith regardless of any subsequent bad faith use. As such, the UDRP does not appear to be the proper vehicle for the Complainant to assert its claims and it may be more appropriate to proceed via court-based litigation.
Complaint Denied
Complainants’ Counsel: NA
Respondents’ Counsel: NA
Case Comment by ICA General Counsel, Zak Muscovitch: As I have written previously, Panelists are not expected to be able to decide all cases even if they happen to possess the wisdom of Solomon. Indeed, Solomon would decline to decide a case in the absence of sufficient evidence or jurisdiction. Here, Panelist Steven Levy clearly shows why this case cannot be resolved by the UDRP. When conflicting narratives and facts exist, that is a very good indication that a Panelist may not be in a position to decide a case, nor should the Panelist. The UDRP is adept at resolving clear cut cases of classic cybersquatting. Where the matter before a Panelist is not clear cut and requires a judgment call without all the facts available, Panelists will have admirably discharged their duty by dismissing the case and directing the parties to resolve their dispute in the appropriate forum.