Welcome to this week’s UDRP Digest (vol. 2.1), summarizing the most intriguing cases of the past week. Read about:
‣ Complainant’s Serious and Material Misrepresentations Leads to RDNH (libertas .org)
‣ Generic Domain Names are Available on First-Come-First-Basis (luxuryauction .com and luxuryauctions .com)
‣ Complaint Doomed to Fail and Results in RDNH Despite No Response (securus .com)
‣ Use in Fraudulent Phishing Scheme Evinces Bad Faith (track-ups-online .com and more)
‣ Holding of Similar Domain Names Help the Respondent’s Case (cloudfm .com)
‣ Dismissal on Some Domains Due to Concurrent Court Proceedings, But Leads to RDNH on Remainder (shadebooks .com and more)
Enjoy !
Complainant’s Serious and Material Misrepresentations Leads to RDNH
<libertas .org>
Complaint Denied (RDNH)
Panelists: Mr. W. Scott Blackmer (Presiding), Dr. Torsten Bettinger and Mr. Brian J. Winterfeldt
Brief Facts: The US Complainant is an advocacy organization working to support “individual rights and other social causes” however it does not refer to a live website or describe any past or present activities of the Complainant. It has a pending US intent-to-use trademark application for LIBERTAS and obtained the European trademarks (registered in 2019-20) on the basis of a since abandoned prior US intent-to-use application. The Complainant originally registered the disputed Domain Name in June 2019 but the registration inadvertently lapsed. The disputed Domain Name was registered on April 6, 2021 and is owned by the Respondent, who is the principal of a U.S. non-profit corporation ‘Libertas Institute’, established in 2011. Previously, the Respondent deployed its website at the domain name <libertasutah .org>, which now redirects to the disputed Domain Name. The Respondent also holds United States trademark registration dated September 22, 2015 for LIBERTAS INSTITUTE.
Held: Since 2011, the Respondent operated under ‘Libertas Institute’ and holds a US trademark for LIBERTAS INSTITUTE, registered in 2015. In applying for trademark registration of LIBERTAS, the Complainant indisputably became aware of the Respondent’s senior registered trademark. The Response attaches the Respondent’s 2020 United States tax return showing revenues of over USD 9 million and program fund expenditures exceeding USD 7.7 million. The record shows that the Domain Name has been used since the Respondent acquired it in 2021 for the Respondent’s political and economic advocacy website headed “Libertas Institute”. Thus, it is evident that the Respondent uses both the disputed Domain Name and a corresponding name in connection with a bona fide offering of services, and that the is also commonly known by the Domain Name, well before the notice in these proceedings. Hence, the Respondent has legitimate rights and interests in the disputed Domain Name.
RDNH: The Complainant misstated or obscured relevant facts in its possession. The Complainant said that it owned the Domain Name from June 2019 until it “inadvertently lapsed when the registration expired” due to “technical issues” “coupled with staffing limitations stemming from the COVID-19 global pandemic.” The Complainant’s counsel, in demand correspondence prior to filing the Complaint in this proceeding, stretched the facts even further, claiming that the Complainant held the Domain Name for “over a year” and that the registration “lapsed in mid-late 2020”, partly because of the pandemic. In fact, the Complainant itself did not register the Domain Name and never used it. The Complainant’s law firm registered the Domain Name in June 2019, and the registration expired six months later in December 2019, before the COVID epidemic imposed “staffing limitations”. The Respondent did not acquire the Domain Name until more than a year later, after the Domain Name had been held by other parties. In filing the UDRP Complaint, the Complainant was well aware of these facts and that this was quite a different case from “opportunistic re-registration” of a lapsed domain name that had been used by a trademark holder for its website, as in the decisions cited in the Complaint. The Complainant was already well aware of the Respondent and its senior trademark rights in a corresponding name. It is remarkable that the Complainant would simply sidestep this obvious ground for the Respondent’s claim of rights or legitimate interests. The Complainant strained or misstated facts, cited inapposite decisions, and failed to confront the obvious claims of a senior trademark rights holder. Taken together, the Complainant’s factual inaccuracies and strained reading of the Policy and Policy decisions reflect the Complainant’s bad faith in resorting to the UDRP to recover a Domain Name lost through its own errors.
Complainants’ Counsel: The IP & Technology Legal Group, P.C., United States
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
Generic Domain Names are Available on First-Come-First-Basis
Platinum Luxury Auctions LLC v. Sherman L. Ragland, II, NAF Claim Number: FA2111001974395
<luxuryauction .com> and <luxuryauctions .com>
Complaint Denied
Panelist: Mr. Paul M. DeCicco
Brief Facts: The Complainant conducts real estate auctions and has rights in the LUXURY AUCTION mark through its registration before USPTO dated Oct. 11, 2016. The disputed Domain Names were registered as of August 21, 1998 and are passively held. The Respondent filed no response. The Complainant argues that the Respondent previously used the domain names to host parked, pay-per-click links.
Held: The two terms comprising LUXURY AUCTION are generic and taken together, descriptive. One may register domain names, such as the at-issue domain names, that contain common words on a first come, first served basis. Doing so establishes a respondent’s rights and/or legitimate interest in a domain name provided that the domain name(s) were not registered with a target trademark in mind. It is evident that at the time of the at-issue domain names’ original registration by the Respondent, the Complainant lacked rights in its LUXURY AUCTION trademark. Therefore, the Respondent could not have registered the at-issue domain name to take advantage of Complainants’ goodwill in LUXURY AUCTION because at such time, the Complainant had no trademark rights and thus no goodwill associated with LUXURY AUCTION.
Complainants’ Counsel: Mark C. Johnson, Florida, USA
Respondents’ Counsel: No Response
Complaint Doomed to Fail and Results in RDNH Despite No Response
Securus Technologies, LLC v. Domain Administrator, WIPO Case No. D2021-3383
<securus .com>
Complaint Denied (RDNH)
Panelist: Mr. Tony Willoughby
Brief Facts: The US Complainant provides technology solutions to customers in the corrections and government services sectors, and has a website at <securustechnologies .com>. The Complainant’s earliest trade mark registration with the USPTO is dated November 7, 2006, with a first use in commerce claim of August 6, 2004. The disputed Domain Name has a registration of September 28, 1995 and is connected to a parking page featuring “Related searches” labelled “Credit Card Payment Processing”, “Secure Online Video Conferencing with Inmates”, “Visitation Appointment Booking System”, and “Inmate Direct Mailing Services”.
Held: For a complaint to succeed (under the third element), the Complainant must prove that the Respondent both registered the Domain Name in bad faith and is using it in bad faith. There is no difficulty in accepting the Complainant’s unchallenged contention that the Respondent is using the disputed Domain Name in bad faith, but it is barely conceivable that the Respondent could have registered it in bad faith, considering that the registration occurred on September 28, 1995 – almost nine years prior to the Complainant’s claimed date of first use (August 6, 2004). There is nothing in the Complaint to suggest that back in 1995 when registering the disputed Domain Name, the Respondent could have been targeting the then non-existent trademark rights of the Complainant.
RDNH: Extraordinarily, the Complaint clearly sets out both the date of registration of the Domain Name in 1995 and the Complainant’s 2004 first use claim in respect of its SECURUS trade mark, but features no argument of any kind to overcome this obvious obstacle to success. It was doomed to failure from the outset. If the Complainant’s representative had researched the Policy and its jurisprudence properly, the Complaint would not likely have been filed and certainly not in its current form. Rather the Complainant would have been told that its complaint needed to be followed up in another forum (such as a court).
Complainants’ Counsel: Magee Legal, PLLC, United States
Respondents’ Counsel: No Responsed
Use in Fraudulent Phishing Scheme Evinces Bad Faith
United Parcel Service of America, Inc. v. Polyakov Andrey NAF Claim Number: FA2111001973589
<track-ups-online .com> and 8 others
Transfer
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant is the owner of the mark, UPS registered, inter alia, in the USA for transportation services with first use recorded as 1933. It operates at <ups .com>. The disputed Domain Names registered in 2021, add the related generic terms “track”, “online”, “ground”, “tracking”, “delivery”, “package”, “shipping”, and so on, to the UPS mark. The Complainant argues that the disputed Domain Names are being used for fraudulent purposes for sites purporting to be official sites of the Complainant using the Complainant’s trademark, logo and trade dress in a phishing scheme. The Respondent failed to file a Response.
Held: The disputed Domain Names are being used in a fraudulent phishing scheme using the Complainant’s logo and its trade dress, which is not legitimate non-commercial fair use. Rather this is deceptive and confusing and amounts to passing off. As such, it cannot amount to the bona fide offering of goods and services. Besides, diverting Internet users for commercial gain and impersonating a complainant by use of a complainant’s mark and logo in a fraudulent phishing scheme is confusing and disruptive and evinces bad faith registration and use.
Complainants’ Counsel: Sabina A. Vayner of Greenberg Traurig, LLP, Georgia, USA
Respondents’ Counsel: No Response
Holding of Similar Domain Names Help the Respondent’s Case
Cloudfm Group Limited v. Barry Garner, MyMailer Ltd, WIPO Case No. D2021-3251
<cloudfm .com>
Complaint Denied
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The UK Complainant provides facilities management services. The Complainant is the owner of three registered trademarks incorporating the term CLOUDFM in the UK, starting, September 19, 2014. The disputed Domain Name was first registered February 8, 2009. The Respondent provides evidence that it acquired the disputed Domain Name on March 14, 2020 from a registrar’s expired domain service. The Respondent also owns similar domain names <playfm .com> and <rockfm .com> and asserts that the disputed Domain Name is to be used in connection with those sites. The Respondent provides a transcript between the Complainant and Respondent covering the Parties’ negotiations for the purchase of the disputed Domain Name dating from between July 31, 2021 to September 21, 2021.
Held: The incomplete nature of the websites may suggest that the Respondent has not been entirely serious about developing the websites itself, or possibly that the right opportunity to do so did not come the Respondent’s way, but this would not on its own make the Respondent a cybersquatter in the circumstances of the present case. If the Respondent acquired the disputed Domain Name simply as an “fm” domain (in the radio sense) with the thought of value on the secondary market and which it reasonably believed was targeting no one in particular, this could not be considered to be a registration made in bad faith – whether or not the Respondent has or has not taken any steps to develop this or any other domain name. In any event, the record supports the notion that the Respondent invests in dictionary words plus “FM” domain names and has done so for at least a decade, though the Respondent is less than candid in its submissions.
Complainants’ Counsel: Sandersons, UK
Respondents’ Counsel: Self-represented
Dismissal on Some Domains Due to Concurrent Court Proceedings, But Leads to RDNH on Remainder
<shadebooks .com>, <harleymerlin .com>, <bellaforrest .com> and 4 more
Complaint Denied (Partly RDNH)
Panelists: Mr. Charles A. Kuechenmeister, Ms. Sandra J. Franklin, Mr. Aaron Newell
Brief Facts: The parties are involved in concurrent court proceedings in the Bahamas. The Complainant seeks relief therein, in the nature of a declaratory judgment that the Respondent is fraudulently holding herself out as the ultimate beneficial owner of the Complainant Corporation. While there is no express mention of the Domain Names in any of the court pleadings, the trademark BELLA FORREST is one of the assets of the Complainant and is thus subject to the parties’ competing claims before the court. The said litigation will determine which party has the right to control the Complainant Corporation and its assets, including the BELLA FORREST trademark. The Respondent asks to make a finding of bad faith in the filing of the Complaint in this proceeding.
Held: The commencement of UDRP proceedings at this time is at best premature. Therefore, a panel should not rule on a decision when there is a court proceeding pending because no purpose is served by rendering a decision on the merits of transferring or not transferring the domain name when a decision regarding the domain name will have no practical consequence. For the foregoing reasons, no UDRP analysis is being conducted with respect to the <bellaforrest .net>, <bellaforrest .org>, <bellaforrest .com>, <forrestbooks .com>, and <morebellaforrest .com> Domain Names and the Complaint should be dismissed as to them. This is not true, however, with respect to the <shadebooks .com> and <harleymerlin .com> – Domain Names, which do not bear any similarity at all to the BELLA FORREST mark.
RDNH as to <shadebooks .com>, <harleymerlin .com>: Without a final resolution of the competing claims for control of the Complainant Corporation, it is difficult to make a finding of bad faith with respect to the trademark-based Domain Names. But it is clear from a simple comparison of Complainant’s mark with the remaining two names that the Complainant could not possibly prevail on its claim for them. The Complainant either knew or should have known this when it filed the Complaint. Its filing as to these two Domain Names is in bad faith and an abuse of process, and the Complainant is guilty of reverse domain name hijacking with respect to these two domains.
Complainants’ Counsel: R. Omar Riojas of Goldfarb & Huck Roth Riojas, PLLC, Washington, USA
Respondents’ Counsel: Hozaifa Cassubhai of Bailey Duquette PC, New York, USA