Neither Party Knew Who it Was Negotiating With
In this thoroughly reasoned decision of <realsense .com>, the Panel made several important observations;
1) The parties did not negotiate directly. Rather, “the parties negotiated through an intermediary service so that neither the Respondents nor the Complainant seemingly knew with whom they were negotiating”…
2) Asking prices are just that – asking prices. It is common in negotiations to begin with a higher asking price than the seller would eventually be prepared to accept…
3) Interestingly, the Panel noted that the Registrar Verification that followed the filing of the UDRP revealed an apparent privacy provider as the underlying registrant by the Registrar, rather than the actual owner of the Domain Name… continue reading commentary here.
Please join the CIIDRC for an informative and free session, open to all via Zoom on February 26, 2025. Sign up here!
Complimentary Webinar Register Here!
We hope you will enjoy this edition of the Digest (vol. 5.8) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Neither Party Knew Who it Was Negotiating With (realsense .com *with commentary)
‣ Complaint Dismissed Under First Element (lawnracing .com *with commentary)
‣ Mere Awareness Does Not Necessarily Result in Bad Faith (themidwasteland .com *with commentary)
‣ Trademark Registration Disclaimed Words (insurancesfornonprofits .org *with commentary)
‣ ElasticSearch v. ElasticJobs .com (elasticjobs .com)
Neither Party Knew Who it Was Negotiating With
Intel Corporation v. Mira Holdings, Inc. and Domain Admin, WIPO Case No. D2024-4776
<realsense .com>
Panelist: Mr. Tobias Malte Müller (Presiding), Mr. Christopher S. Gibson, Mr. Andrew D. S. Lothian
Brief Facts: The well-known Complainant, founded in 1968, develops, manufactures, and sells in particular computer hardware and computer software. It is the registered owner of several trademarks for “INTEL REALSENSE”, including the US trademark (claimed first use: November 30, 2014, registered: November 29, 2016). In addition, the Complaint relies on a Chinese Trademark registration, which was registered on February 28, 2016. The disputed Domain Name was created on August 18, 2024, and resolves to a GoDaddy page offering the Domain Name for sale. Upon the Complainant’s inquiry, the GoDaddy domain name broker informed the Respondent’s asking price of US $48,500. The Complainant made a counter-offer of US $30,000, but the negotiations were halted and the present UDRP complaint was filed. The Complainant alleges that the Respondent registered the disputed Domain Name nearly a decade after the Complainant’s INTEL REALSENSE mark usage and eight years after its registration in China. This timing suggests an intent to exploit the Complainant’s trademark rights, as the domain is held passively without active use.
The Complainant further alleges that the Respondents have offered to sell the disputed Domain Name to the Complainant for a grossly excessive amount of US $48,500, which far exceeds the intrinsic value of the disputed Domain Name to the Respondents. The Respondent contends that the disputed Domain Name is comprised of descriptive terms which, together, form a common phrase, and is by no means limited to the Complainant. The Respondent further contends that the disputed Domain Name was acquired at a public auction for US $3,600 in September 2024. It results from the evidence filed by the Respondents that other domain names, composed of two dictionary word terms, have been sold for important sums, e.g., agentforce(.com) at US $220,000 and alphainfinity(.com) at US $200,000. The Respondents requested the Panel to find the Complainant guilty of RDNH because rather than continuing to negotiate in good faith, the Complainant filed this UDRP complaint.
Held: In the present case, the Respondent did not negotiate directly with the Complainant but merely advertised the disputed Domain Name for sale on a third-party platform to the public at large. Subsequently, the parties negotiated through an intermediary service so that neither the Respondents nor the Complainant seemingly knew with whom they were negotiating. Therefore, the Complainant has not presented adequate evidence permitting an inference that the Respondents have registered or acquired the disputed Domain Name primarily to transfer it specifically to the Complainant or one of its competitors pursuant to UDRP paragraph 4(b)(i). Furthermore, the Panel does not take the initial asking price of US $48,500 as an indication that the Respondents are knowingly targeting the Complainant and its marks in bad faith. It rather results from the evidence filed by the Respondents that other domain names, composed of two dictionary terms, have been sold in 2023 and 2024 for substantial sums.
In the case at hand, the Complainant stresses that both parties are located in the United States so the Respondent could have been aware of the Complainant’s marks and business. However, the Panel notes that the “RealSense” trademark (without the element “INTEL”) is registered in China, not in the USA. Further, the Complainant failed to provide adequate evidence that corroborates an awareness of its mark “RealSense”, such as strong reputation or distinctiveness of the mark. Therefore, in the circumstances of this case, the Panel determines that the concept of constructive notice does not apply (WIPO Overview 3.0, section 3.2.2.). Accordingly, and without any further evidence, the Panel cannot assume that the Respondents knew or should have known of the Complainant’s United States “Intel RealSense” trademark or its Chinese “RealSense” mark. Additionally, it is undisputed that the disputed Domain Name consists of two dictionary terms of the English language.
In the Panel’s view, the Complainant has therefore failed to demonstrate that the Respondents knew or should have known that the registration was targeting or referencing these marks in its acquisition and subsequent offer for sale of the disputed Domain Name.
RDNH: The Panel is of the opinion that none of the RDNH circumstances apply in the case at hand. In particular, the Complainant did not file the Complaint after an unsuccessful attempt to acquire the disputed Domain Name from the Respondents without a plausible legal basis. It decided to interrupt the ongoing negotiations that it was obliged to conduct with an anonymous domain name holder after it had submitted a proposal of US $30,000, which the Panel considers to be covered by its pre-contractual autonomy.
Finally, the Panel observes that during negotiations, and, crucially following Registrar verification of the holder of the disputed Domain Name, the Complainant did not know who the underlying domain name holder was, since the Respondent was concealing its true identity behind a privacy provider that itself was disclosed as the underlying registrant by the Registrar. Therefore, the Complainant could not know if the Respondents were not targeting the Complainant and its mark “RealSense” and was entitled to put the Respondents to the proof on this issue.
Complaint Denied
Complainant’s Counsel: Sideman & Bancroft LLP, United States
Respondent’s Counsel: Internally Represented
Case Comment by ICA General Counsel, Zak Muscovitch: In this thoroughly reasoned decision, the Panel made several important observations;
- The parties did not negotiate directly. Rather, “the parties negotiated through an intermediary service so that neither the Respondents nor the Complainant seemingly knew with whom they were negotiating”. This is an important distinction, as Paragraph 4(b)(i) of the Policy requires, as the Panel noted, that “the domain name [was registered] primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant [emphasis added]. Where the Respondent is unaware of the identity of the Complainant, it cannot be inferred that the Complainant was the target of the registration.
- Asking prices are just that – asking It is common in negotiations to begin with a higher asking price than the seller would eventually be prepared to accept. Moreover, inferring bad faith from an asking price alone, is a fraught exercise that Panels should generally avoid (See for example, Nat Cohen’s “When a UDRP Panel Infers Bad Faith from an Asking Price”, (CircleID, June 14, 2024). As the evidence showed in this case, there was a plausible basis for determining that the asking price was due to the inherent attractiveness of common two-word phrase domain name, as shown by the “comparable” sales reports for two-word combination domain names referenced by the Panel.
- Interestingly, the Panel noted that the Registrar Verification that followed the filing of the UDRP revealed an apparent privacy provider as the underlying registrant by the Registrar, rather than the actual owner of the Domain Name. The actual owner of the Domain Name came forward to defend against the Complaint and identified itself. This points to an interesting distinction between types of privacy protection services. Typically, registrars will offer (often automatically) “privacy protection” services for registrants. These privacy services are often associated with the registrar itself. Upon Registrar Verification, the registrar will lift the privacy veil and show the actual underlying registrant. At other times however, the privacy service will actually be best characterized as a “proxy” service, i.e. the privacy protection service steps into the shoes of the registrant and a usual registrar-provided privacy service will be layered onto that.
ICANN defines “Privacy Services” as “allow[ing] a domain name holder (registrant) to be listed as the registrant of record but with alternate, valid contact information (such as a mail-forwarding service address) published in place of the registrant’s home address”. In contrast, ICANN defines “Proxy Services” as “allow[ing] a domain name to keep certain identity and contact details from appearing in public Whois information…[and] the proxy service becomes the registered name holder of record, and its identity and contact information is displayed in Whois data”. Note of course, that “Whois” is no more, with “RDRS” being the current protocol and term used. The ICANN privacy/proxy regime is currently being reviewed as part of an “Implementation Review Team”.
Complaint Dismissed Under First Element
<lawnracing .com>
Panelist: Ms. Karen J. Bernstein
Brief Facts: The Complainant claims that since at least as early as 2005, it has used the LUND and LUND RACING trademarks and its website located at <lundracing .com> (registered in 2006) in connection with selling goods and services in the field of aftermarket tuning of automobiles. As a result, the Complainant’s unregistered LUND RACING mark has developed secondary meaning in the minds of the public as the sole source identifier for the sale of car tuning and car performance parts. The Complainant states that in the last six years alone, it has earned more than $20 million selling goods and services in connection with the LUND RACING Mark and it has garnered substantial earned media discussing LUND RACING branded products and services.
The Complainant alleges that the disputed Domain Name is confusingly similar to the Complainant’s LUND RACING mark because it wholly incorporates a close phonetic equivalent of the Complainant’s LUND RACING Mark. Specifically, LUND and LAWN vary only by two letters and sound highly similar. Moreover, the addition of the word, Racing,” brings the disputed Domain Name closer to the Complainant’s LUND RACING mark. The Respondent contends the use of the disputed Domain Name is a fair use because it does not specifically target only the Complainant for purposes of parody, but also various other businesses and figures across the automotive tuning industry.
The Respondent further contends he is a competitor of the Complainant and that the disputed Domain Name is not confusingly similar because the words are not phonetically similar, and the Complainant cannot claim exclusive rights to the word, “Racing,” because the word, “Racing” is a generic term widely used in the automotive industry. The Respondent also distinguishes his business from the Complainant’s by arguing that his business caters to tuning services for Ford vehicles from 1996 to the present; whereas, the Complainant’s business focuses on 2011 and newer Ford models.
Held: Does Complainant Have Standing in this Proceeding? Paragraph 4(a)(i) of the Policy functions primarily as a standing requirement. The threshold challenge for the Complainant is that it lacks a registered trademark and does not offer persuasive evidence that its claimed unregistered LUND RACING mark has “become a distinctive identifier which consumers associate with the complainant’s goods and/or services.” The onus is on the Complainant to adduce evidence of unregistered rights in a mark and is more substantial than a complainant that owns federal trademark registration rights. Preliminarily, the Panel conducted independent research, pursuant to the Rules, and performed a Google search for “Lund,” which found that “Lund” is a family name or surname. As such, “Lund” standing alone is not inherently distinctive as identifying the Complainant’s business.
In reviewing the Complainant’s evidence, it offers little supporting documentation for its conclusory claims of secondary meaning. The Complainant has failed to prove that the unregistered mark, LUND RACING, is a distinctive mark. Further, the family name, “Lund” is also not the sole source identified for performance automobile accessories. Finally, for completeness, even if the Complainant were to have been found to have proven that its LUND RACING mark is distinctive, which it has not, the disputed Domain Name is not confusingly similar to the LUND RACING mark. The test for confusing similarity involves a side-by-side comparison of the letters, words, sounds, and other aspects of the disputed Domain Name to the corresponding aspects of the relevant trademark. The Complainant does not argue that the disputed Domain Name and the LUND RACING mark look alike. Instead, it argues that LAWN RACING and LUND RACING are phonetically similar.
This is not the case. But for the descriptive term, “Racing,” the names are neither visually nor phonetically similar. Although the disputed Domain Name begins with the letter “L”, that is where the similarities end. The disputed Domain Name does not look like LUND or even mean the same thing as LUND (“Lawn” versus “Lund”). Further, contrary to the Complainant’s allegations, there are not two but actually three letters that differentiate the disputed Domain Name and the LUND RACING mark (“awn” versus “und”), and the chances are extremely low that someone would accidentally type in all three letters, “awn” versus the three letters “und” on a keyboard. In light of the above analysis, the Panel finds that the Complainant has not demonstrated that the claimed mark LUND RACING has acquired distinctiveness in identifying goods or services associated with the Complainant and that the disputed Domain Name is confusingly similar to LUND RACING.
Complaint Denied
Complainant’s Counsel: Tyler R. Marandola of Duane Morris, LLP, Pennsylvania, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Sometimes different routes are available to the same result, as was the case here. In the present case, the Panel decided the case on the first prong of the three-part test, finding that the Complainant failed to provide sufficient evidence of secondary meaning, but even if it had provided sufficient evidence, that its trademark and the Domain Name were not confusingly similar. On the latter point, the Complainant had argued “phonetic similarity” between “Lund Racing” and “Lawn Racing”, however the Panel found that the respective terms were neither visually nor phonetically similar.
That being said, perhaps it was at least arguable that within the context of the dispute, the two terms were similar enough, as the Complainant contended, though such a comparison would surely be pressing hard against the boundaries of “confusing similarity” as understood by the Policy. It is important to remember that as noted in UDRP Perspectives at 1.8, mere “similarity” is insufficient under the Policy, it must be “confusing similarity”. Confusing similarity does not depend on evidence of actual confusion by the public. Rather, the question is whether the appearance of the domain name itself causes confusion with the trademark. Confusing similarity is a higher threshold than mere similarity but in most cases it is not a difficult test to meet. Where a domain name merely adds on a descriptive term such as “shop” or “store” to a distinctive trademark or where the domain name is a typo of a distinctive mark, Panels will generally find that a domain name is confusingly similar. Where however, as in this case, the inclusion of additional characters or words results in a new term, a sufficiently different term, conveys a different meaning, or otherwise sufficiently differentiates or distances itself from the trademark, the domain name may not be confusingly similar.
Nevertheless, as I mentioned above, there is often more than one way to reach the same result in a UDRP. Here, rather than determine the case under the first element, a Panel could have instead punted the case altogether as being “outside the scope” of the Policy. As noted in UDRP Perspectives at 0.1, the UDRP is not intended to resolve all kinds of disputes. Rather, it is only designed and intended for clear cut cases of cybersquatting. The Policy requires Panels to discern those cases appropriate for resolution and to dismiss those that are not. Here, regardless of the parties’ respective arguments regarding confusing similarity, the nature of the dispute went beyond simple cybersquatting and into the realm of competition, passing off, fair use, and trademark infringement. As such, a Panel could have dismissed the case on the basis of the scope of the Policy rather than on the first element.
Mere Awareness Does Not Necessarily Result in Bad Faith
Wasteland Inc. v. Monica Dimperio / The MidWasteland, NAF Claim Number: FA2501002134687
<themidwasteland .com>
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant owns and operates five physical retail stores that sell vintage clothing. The Complainant registered the <shopwasteland .com> domain name on March 22, 2011, and has used that domain name since then in connection with its clothing retail business. The Complainant owns a trademark registration with the USPTO for WASTELAND, registered on August 31, 1993. The Complainant is based in California, and the Respondent is based in Illinois. The Respondent registered the domain name <themidwasteland .com> on November 16, 2007. The Respondent’s domain name leads to a website showcasing articles on fashion and culture. The “Shop” section displays three pages of products with prices, yet there is no “Cart” or other way to buy products on the site.
The Complainant contends that the Respondent is not utilizing the mark to make a bona fide offering of services because the Respondent uses the disputed Domain Name to sell clothing and clothing retail services that compete directly with the Complainant’s business. The Complainant asserts that the Respondent had constructive notice of the Complainant’s mark at the time it registered the disputed Domain Name, and likely had actual knowledge as well because the Respondent “was a competitor” of the Complainant, and because the Complainant had achieved notoriety in the media after famous actress Angelina Jolie wore a dress from the Complainant’s store at a Hollywood premiere.
The Respondent contends that any confusion between the Complainant’s mark and the disputed Domain Name is diminished because the Complainant and the Respondent have distinct business models and offer different types of products and services: Respondent’s website is a “media-driven” cultural blog that does not sell products, whereas the Complainant’s website is an e-commerce site for the Complainant’s physical retail stores. The Respondent also contends that confusion is unlikely because the Respondent consistently uses the “TheMidWasteland” as a single, invented term in a pink cursive script, whereas the Complainant uses the term “Wasteland” as a generic term and with a red-and-black, graffiti-style script. Finally, the Respondent argues that the Complainant should be barred from bringing this case based on the doctrine of laches.
Preliminary Issue: Doctrine of Laches: As a preliminary matter, the Respondent contends that the Complainant’s case should be dismissed under the doctrine of laches because the Complainant has delayed beyond the statutory period for trademark actions in bringing a complaint against the Respondent. But, because the UDRP’s principal aim is to provide prospective injunctive relief, and not to provide retroactive compensatory relief, the consensus view is that Panels should not recognize laches as a bar to UDRP cases. See WIPO Overview 3.0, section 4.17.
Held: The Respondent has come forward with evidence to rebut Complainant’s prima facie showing namely, that the Respondent has used the term “TheMidWasteland” in connection with its lifestyle media platform since 2007 and that the Respondent’s services provided through the website to which the disputed Domain Name resolves are primarily editorial in nature. Indeed, the Respondent submits evidence of the media coverage, which demonstrates that the Respondent is commonly known by a name corresponding to the disputed Domain Name. Further, this media coverage sometimes includes the disputed Domain Name itself as well. This evidence establishes that the Respondent launched and operated a business offering fashion commentary under a name corresponding to the disputed Domain Name long before notice of this dispute and that the Respondent is using the disputed Domain Name in connection with a bona fide offering of services. Shockingly, and despite having corresponded with the Respondent back in 2012, the Complainant does not address this long history of the Respondent’s website and blog.
Even though a registered trademark constitutes constructive notice under U.S. trademark law, that concept has generally not been incorporated into the UDRP as a basis to find bad faith registration. That is because a finding of bad faith under the Policy requires some element of knowledge, even if knowledge is inferred by the facts or established through willful blindness. The refusal to treat constructive notice as actual knowledge is especially appropriate here, where even actual knowledge would not necessarily have established bad faith. That is because the Respondent, which is located in Chicago, explained that it coined the phrase “TheMidWasteland” nearly 20 years ago to combine the geographic focus of the Respondent’s cultural commentary—the Midwest—with the term “wasteland,” to reflect the idea that the “Midwest’s position in the center of the U.S. [is] often overlooked in discussions about fashion.” For these reasons, the Respondent explained, its mark was not infringing but rather was an appropriate name for it to adopt for its blog.
Furthermore, the Complainant has not challenged the Respondent’s use of “TheMidWasteland” name in the last 18 years as trademark infringement or under the Anticybersquatting Consumer Protection Act, even after having corresponded with the Respondent about the name in 2012, further undermines the Complainant’s assertions in this proceeding that the Respondent registered the disputed Domain Name in bad faith.
Complaint Denied
Complainant’s Counsel: Mark A. Steiner, California, USA
Respondent’s Counsel: Fuad Sulayman, Illinois, USA
Case Comment by ICA General Counsel, Zak Muscovitch: I appreciate the Panel’s treatment of “constructive notice” in this case. As the Panel succinctly notes, “even though a registered trademark constitutes constructive notice under U.S. trademark law, that concept has generally not been incorporated into the UDRP as a basis to find bad faith registration”. The Panel’s explanation of ‘why this is the case’, is particularly helpful: “because a finding of bad faith under the Policy requires some element of knowledge, even if knowledge is inferred by the facts or established through willful blindness”. Exactly. Panels would do well to consistently bear this in mind when evaluating bad faith under the Policy.
Additionally, the Panel’s treatment of the relevance of “actual knowledge” is also worthy of mention. The Panel stated that, “even actual knowledge would not necessarily have established bad faith” in the circumstances of this case, since the Respondent provided a plausible good faith explanation for its selection of the Domain Name. As noted in UDRP Perspectives at 3.10, satisfactorily proving that a Respondent was likely aware of a Complainant’s trademark is not the end of the inquiry – as mere awareness of a Complainant’s trademark is not necessarily determinative of bad faith registration. Rather, something more would generally be required in order to demonstrate that not only was the Respondent aware of the Complainant’s trademark, but that the Complainant’s trademark and its associated goodwill were the primary reasons for the Respondent’s registration as opposed to, for example, merely benefitting from the bona fide attractiveness of the term for a variety of possible non-conflicting uses.
A final word about the doctrine of laches referenced in the decision. The Respondent contended that “Complainant’s case should be dismissed under the doctrine of laches because Complainant has delayed beyond the statutory period for trademark actions in bringing a complaint against Respondent”. This seems to me to possibly be conflating the doctrine of laches with limitation periods. There is no limitation period in the UDRP but the defense of laches is neither expressly permitted nor excluded in the Policy either. The number of cases that could properly invoke the doctrine of laches is extremely minimal. It would have to involve a very particular set of facts involving a Respondent’s detrimental reliance on the delay, which is very rare in UDRP cases. Nevertheless, it can happen. Amongst the cases looked at in a comprehensive reexamination of the defense of laches (Cohen and Muscovitch, CircleID, January 15, 2018), was The New York Times Company v. Name Administration Inc. (BVI), NAF Claim Number: FA1009001349045, where the Panel expressly stated that;
“the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant. Prior decisions rejecting the applicability of the doctrine due to the failure of its express recognition in the UDRP Policies appear to be an unsound basis for ignoring the potential defense”.
“While the Panel recognizes that the UDRP is administrative in nature, the practical effect of the proceeding is to provide equitable relief to the successful party. Thus, if equitable relief is the outer extent of the remedy available equitable defenses should also be considered in evaluating the whether any relief should be forthcoming.
In the instant proceeding the Respondent emphasizes on numerous occasions that it has held the domain name and used it in connection with its website offerings for in excess of six years and rightfully posits the question of what should be made of the fact that the Complainant has done nothing during that time despite claiming that its development of the identical trademark and subsequent use predates that of the Respondent.
Where such a Complainant fails to police its claimed mark and does nothing for a substantial time while a Respondent develops an identical domain name for its own legitimate purposes, laches should bar that Complainant from turning a Respondent’s detrimental reliance to its own unjust benefit.”
What is the case against considering laches? Here, the Panel explained that “because the UDRP’s principal aim is to provide prospective injunctive relief, and not to provide retroactive compensatory relief, the consensus view is that Panels should not recognize laches as a bar to UDRP cases”. I am not sure that I follow this explanation. The fact that the UDRP provides injunctive relief rather than compensatory relief, does not mean that the defense of laches should not be considered. As noted in the above-referenced CircleID article, the fact that the UDRP offers no compensation is wholly irrelevant to the analysis, as even within the context of injunctive relief, equity still maintains a role, as shown in Abraham v. Alpha Chi Omega, 708 F.3d 614, 627 (5th Cir.), cert. denied, 134 S. Ct. 88 (2013), for example. Second, the entire notion of equitable relief generally is premised on the existence of a legal regime which does not specifically provide for relief based upon inexcusable delay and prejudice. Accordingly, equity figures in the ‘complete code’ of the UDRP, just like any statutory regime. There is therefore simply no principled basis for excluding the doctrine of laches from the UDRP.
In the present case, the Respondent pointed out that the Complainant had known about and had acquiesced in the Respondent’s use of “themidwasteland” while the Respondent continued to use the Domain Name for its business – for over a decade – thereby suggesting facts which could properly invoke the doctrine of laches. As noted in the aforementioned CircleID article,
If laches squarely fits the facts, then there is no reason that it should not be applied. Surely if there is good evidence that a complainant actually acquiesced to a respondent’s use over a long period of time, and the respondent was prejudiced by such delay, a UDRP panel should not only find that a legitimate interest exists, but also find that there was an unreasonable delay and a detrimental reliance, i.e., laches, just as in Abraham and in Craigslist, supra. Fair-minded panelists know very well that an unexplained and unreasonable delay that prejudiced the respondent is, and must be, a valid defense.
Nevertheless, the number of instances where laches could even conceivably be a valid defense in a UDRP appears minimal. That could be taken two ways. First, that it is not worth expressly included the defense of laches in the UDRP since genuine laches is so rare. Second, that it is worth including because it would rarely affect the outcome of any cases.
Trademark Registration Disclaimed Words
Alliance Member Services, Inc. v. Na Nam, NAF Claim Number: FA2412002132469
<insurancesfornonprofits .org>
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant is the owner of the trade mark INSURANCEFORNONPROFITS .ORG (device mark) registered in the USA for insurance services since 2023 with the first use recorded as 2022. The Domain Name was registered in 2024 and does not currently point to an active site having been deactivated for phishing. The Complaint alleges that the disputed Domain Name has been used for a fraudulent email scheme impersonating the Complainant mimicking the format of the Complainant’s emails including its logo, phone numbers related to the Complainant or associated organisations of the Complainant, the name of one of its employees and multiple other email sign off details. The Complainant further argues that this is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. It is registration and use in deceptive bad faith disrupting the Complainant’s business. The Respondent failed to submit a Response in this proceeding.
Held: The disputed Domain Name has been used in a fraudulent email scheme. This is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate non-commercial or fair use, (see DaVita Inc. v Cynthia Rochelo, FA 1738034). The Domain Name also appears to be intended to be a typosquatting registration merely adding ‘s’ to the Complainant’s mark and domain name. Typosquatting is also an indication of a lack of rights or legitimate interests, (see Chegg Inc. v. yang qijin, FA 1610050). The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant herein. As such the Panelist finds that the Respondent does not have rights or legitimate interests in the disputed Domain Name.
Impersonating a complainant by use of a complainant’s mark in a fraudulent phishing attempt is disruptive and evinces bad faith registration and use and actual knowledge of the Complainant, (see Microsoft Corporation v Terrence Green, FA 1661030). The mimicking of the format of the Complainant’s emails including its logo, phone numbers related to the Complainant or associated organisations of the Complainant, the name of one of its employees and email sign-off details shows the Respondent has actual knowledge of the Complainant and its rights and business. Typosquatting itself is evidence of relevant bad faith registration and use and shows actual knowledge of the Complainant, see Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036. As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith.
Transfer
Complainant’s Counsel: Fred Harrington of Alliance Member Services, Inc., California, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Nobody likes fraud and phishing except criminals. Here, the Domain Name was apparently “used for a fraudulent email scheme impersonating the Complainant, mimicking the format of the Complainant’s emails including its logo, [used in connection with] phone numbers related to the Complainant or associated organisations of the Complainant, [as well as] the name of one of its employees and multiple other email sign off details”. As such, it is understandable that a Panel would naturally want to do justice by putting an end to this travesty by transferring the Domain Name pursuant to the Policy.
Nevertheless, one cannot overlook one particular aspect of this case, namely the Complainant’s trademark registration. As an experienced trademark practitioner or Panelist would be aware, a US registration “INSURANCEFORNONPROFITS.ORG (device mark)” raises a red flag since the words are clearly descriptive. The question then turns to what rights the Complainant actually has in the mark, and attention is therefore due to the registration itself. The registration in this case, disclaims the words:
What does the WIPO Overview say about disclaimed words? At 1.10 the Overview explains that:
“where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP.”
In UDRP Perspectives at 1.5, it states that:
“The USPTO has indicated that “[t]he purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone and therefore do not function as a trademark.”
Where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the Complainant to provide additional evidence that the words have acquired a secondary meaning and, thus, status as a trademark as required by policy.
A disclaimer disclaims any right in the disclaimed term apart from the mark as shown in its entirety.”
In the present case, this issue does not appear to have been addressed. Rather, the Panel appears to have accepted the trademark registration without considering what effect the disclaimed words have on the Complainant’s rights. Given the egregious circumstances of the Respondent apparently impersonating the Complainant, it was likely open to the Panel on the evidence, to conclude that notwithstanding the disclaimed descriptive words, the Complainant had sufficiently demonstrated a secondary meaning at least for the purposes of standing under the UDRP. This is an important reminder that even when faced with an egregious example of abuse, a Panel must take care to consider the material legal issues presented.
ElasticSearch v. ElasticJobs .com
elasticsearch B.V. v. Bernard Kycler, WIPO Case No. D2024-5340
<elasticjobs .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant is the owner of various trademark registrations including an international trademark for the word mark ELASTICSEARCH, registered on January 30, 2012; a United States trademark for the word mark ELASTIC, registered on February 9, 2021; and a International trademark registration for the word mark ELASTIC, registered on July 21, 2016. The Complainant also submits that its ELASTIC and ELASTICSEARCH trademarks have been recognized by previous panels under the UDRP to have attained the status of famous or well-known trademarks. The disputed Domain Name was registered on March 28, 2023, and resolves to a webpage offering it for sale, with a “buy now” price of US $2,538 and the webpage states: “ElasticJobs .com is a short and catchy domain name that evokes a sense of adaptability and flexibility in the job market…”
The Complainant alleges that the Respondent has made no legitimate use of the disputed Domain Name for any bona fide purpose and registered it only to take unfair advantage of the Complainant’s goodwill in its trademarks, and/or selling it to the Complainant for a sum in excess of its out-of-pocket costs connected with the registration. The Respondent contends that, as evidenced by the Complainant’s exhibit, the Respondent has offered the disputed Domain Name for sale expressly in connection with job-related markets. The Respondent further contends that the disputed Domain Name is unrelated to the Complainant or its activities, which relate primarily to technology and data management, and was intended to leverage the descriptive nature of the disputed Domain Name for resale.
Held: In the view of the Panel, a speculator in domain names is entitled to register and to offer to sell a domain name comprised of dictionary terms, provided that the disputed Domain Name was not in fact registered to target a trademark owner’s rights. In this case, the Respondent has made out a credible case that the combination of the dictionary words “elastic” and “jobs” could form a domain name suggestive of flexibility in the jobs and recruitment market. As to the countervailing submission of targeting, the Panel notes that the Complainant’s relevant trademark is ELASTIC, and finds that its other trademark ELASTICSEARCH is of limited value to the Complainant’s case.
While the Complainant places considerable reliance on the success of its prior proceedings under the UDRP, the Panel notes that, in all but one of the relevant cases, the disputed Domain Name included the term “elasticsearch”, and not merely “elastic”. In the circumstances, albeit mindful that the Respondent may be taking cover under the non-trademark meaning of the term elastic – but bearing in mind that the burden of showing that it is being targeted is on the Complainant, the Panel finds that the second element under the Policy has not been established on the available evidence.
For the same reasons as set out above, it does not consider that the Complainant has established on the evidence presented by it, that the Respondent either registered or has used, the disputed Domain Name in bad faith. The Panel finds there to be no basis for the Complainant’s “information and belief” that the disputed Domain Name was registered for the purpose of “phishing” or “pharming” (and notes that the UDRP is based on the evidence submitted and is not (as in US litigation) based on notice pleading followed by discovery). Nor is the price sought by the Respondent for the disputed Domain Name indicative of bad faith in the circumstances.
RDNH: In this case, while the Complainant has failed to meet the burden under the Policy of demonstrating that the Respondent targeted the Complainant’s trademark, the Panel does not find that this was a belief which the Complainant could not reasonably have held, or that the Complainant knew or ought to have known that its claim would inevitably fail: the Panel does not find this to be the case of acting in bad faith.
Complaint Denied
Complainant’s Counsel: Quinn IP Law, United States of America
Respondent’s Counsel: Self-represented