NEW: Introducing UDRP Perspectives! A new resource for panelists and practitioners prepared by UDRP Panelists and Practitioners, Igor Motsnyi and Zak Muscovitch who also serves as General Counsel to the ICA.
From the Introduction to UDRP Perspectives (located at www.UDRPPerspectives.org):
“UDRP Perspectives.org is where you can come to find a curated collection of up-to-date case law and commentaries on the UDRP. We hope that you will find these resources useful, whether you are a UDRP Panelist looking for inspiration and guidance, counsel looking for helpful case citations and insight, or a party looking to better understand the nature and scope of UDRP.
We called this resource “UDRP Perspectives” because it offers views on a selection of important UDRP topics. Our perspectives were developed after many years of careful study of the UDRP, and practical application of the UDRP as both party representatives and as accredited UDRP Panelists. We do not pretend to know all the answers and do not claim that the views expressed here are necessarily the only correct ones, yet we hope that you find them helpful in deepening your own understanding of the UDRP.
UDRP Perspectives also offers a curated collection of up-to-date case law and case commentaries on the UDRP for each topic. Notable decisions are included from five (5) out of the six (6) UDRP Providers, namely, WIPO, the Forum, the Czech Arbitration Court (CAC), the Asian Domain Name Dispute Resolution Centre (ADNDRC) and the Canadian International Internet Dispute Resolution Centre (CIIDRC).
UDRP Perspectives mainly focuses on more recent decisions although we have also included a small number of pre-2018 decisions where we believe such decisions are important to illustrate a particular topic. The decisions which we include contain more denials than transfers and the reason for this is that denials tend to illustrate certain principles better than transfers, particularly since the majority of transfers are in undefended cases. For the same reason, where possible we have included defended three-member Panel cases.”
We hope you will enjoy this edition of the Digest (vol. 4.30), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ How Do We Approach Expired Domain Name Cases? (bowtex .com *with commentary)
‣ Could Franna .com have been saved? (franna .com *with commentary)
‣ Panel: One Should Not Lightly Conclude That a Respondent Registered or Used a Domain Name in Bad Faith (eisco .com *with commentary)
‣ Three-Letter Domain Names are Rare and Such Acronyms Have Various Meanings (ypf .co *with commentary)
‣ Understanding Passive Holding in the Context of Telstra (qwikqlik .com *with commentary)
‣ The Policy’s Limited Scope Can’t Address Hacking Incidents (crooker .com *with commentary)
How Do We Approach Expired Domain Name Cases?
SRL BOWTEX v. Mira Holdings, WIPO Case No. D2024-1632
<bowtex .com>
Panelist: Mr. Andrew D. S. Lothian (Presiding), Ms. Alissia Shchichka and Mr. John Swinson
Brief Facts: The Belgian Complainant specializes in protective products for motorcyclists. The Complainant or its director, Mr. Robert Souery, are the owners of a variety of registered trademarks in respect of the mark BOWTEX, namely two figurative marks (2015 and 2020) and a word mark (2019). The Complainant also owns a variety of “bowtex” domain names, including <bowtex .be>, <bowtex .eu>, <bowtex .co .uk>, <bowtex .fr>, <bowtex .de>, and <bowtex .store> (hosts Bowtex e-commerce website). The disputed Domain Name was acquired in an expiring domain auction on December 11, 2021, for US $2,056 and the resolving website offers it for sale or lease. On January 26, 2024, following an earlier attempt to make contact, the Complainant sent an email to the Respondent in which the Complainant offered to purchase the disputed Domain Name for US $150. On February 4, 2024, the Respondent replied with a counteroffer of US $25,000.
The Complainant alleges that the Respondent’s counteroffer for the sale of the disputed Domain Name was so unreasonable that it demonstrates the Respondent’s bad faith, and that the Respondent acquired the disputed Domain Name with a view to reselling it for a price exceeding the amount of the costs incurred in its acquisition. The Respondent contends that the disputed Domain Name is a short, memorable, six-letter domain name made up of the words “bow” (a weapon for shooting arrows, or a bow as in “bow-tie”) and “tex” (short form of “Texan” or “Texas”, shortened form of “text” or “textile”, or homophone of “tech”) with an estimated value of US $2,500 according to a “GoDaddy” appraisal tool. The Respondent submits that the disputed Domain Name has many possible meanings and potential to be used in a variety of business fields, adding that the Respondent has sold comparable domain names such as <netint .com> for US $23,899 and <textit .com> for US $35,000, while others have sold <vertex .net> for US $25,000 and <bowmar .com> for US $9,999.
Held: Given that the term in the disputed Domain Name has the appearance of a trademark rather than that of a dictionary word or phrase, the Respondent, as a domain name investor, should have conducted a quick trademark search, checked the archives, or performed a Google search. Any of these actions would likely have disclosed the Complainant’s interest. The Respondent’s willful blindness to the Complainant’s rights does not absolve it from the consequences of the Policy. The Respondent further lists several possibilities as to what the disputed Domain Name might mean and seeks to rely upon the fact that certain other companies use the term. This does not demonstrate that the term is descriptive, generic, or a dictionary term or well-known phrase, and the Panel does not consider it useful to examine each of the Respondent’s various examples in any detail, given that they have the flavor of being reverse engineered after the Respondent was required to justify its purchase.
On the subject of the disputed Domain Name being acquired in an expiring domain name auction, the Panel considers the observations of the panel in Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket .com, WIPO Case No. D2018-0540 are apposite: “Where registration occurs through drop-catching, the registrant is objectively aware that another person held the registration immediately prior and may have rights to the trademark… Where such rights do exist, where the value of the domain name derives primarily from those rights, and where the registrant’s only meaningful use of the domain name is to offer it for sale, then the registrant is liable to be considered as having registered the domain name primarily for the purpose of selling it to the person who has those rights.”
Given this fact, and the requirement of the Respondent to carry out at least modest due diligence into the prior registrant of the disputed Domain Name, the Respondent was or should have been on notice of the Complainant’s interests therein. That is not to say that the Respondent would have been barred from registering the disputed Domain Name (and using it for purposes unrelated to the Complainant) but the Respondent’s acquisition of the disputed Domain Name and immediate offering for sale supports the Panel’s conclusion that the Respondent’s conduct in this case constitutes registration and use in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
Transfer
Complainants’ Counsel: Sybarius, Belgium
Respondents’ Counsel: Self-represented
Case Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
The Panel in Bowtex invents a duty on domain name investors who acquire domain names at dropped domain name auctions to research the prior owner of the dropped domain name to determine whether the previous owner has continuing trademark rights in a mark that is similar to the dropped domain name. If such a trademark right is found, the domain investor must avoid bidding on the domain name at auction, otherwise a UDRP Panel can find that a domain name investor who wins the dropped domain name auction and then offers the domain name for sale is guilty of registering and using the domain name in bad faith.
Yet no such mandate exists. To draw such an inference of bad faith is not supported by the circumstances of the dispute. It is now well-established that investing in domain names is supported by the Policy. This includes not just dictionary words, common phrases, and acronyms, but also so-called “brandable” domain names. As stated in Nobli Ltd. v. Cykon Technology Limited, WIPO D2022-2970 <nobli .com>, Denied, RDNH:
“The disputed domain name consists of a term, “nobli”, that has no meaning in English. The Panel accepts the Respondent’s claim that it registered the disputed domain name because it “may in future be of interest to someone who wanted to adopt a new unique brand”. As explained in section 2.1 of WIPO Overview 3.0, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy. In the Panel’s view, depending on the circumstances, this practice may also extend to made-up phrases.”
<Bowtex .com> fits squarely into the category of brandable domain names that have inherent appeal outside of any trademark use. Indeed, as the Respondent suggested, there are numerous third-party companies that all use the term, “bowtex” which are totally unrelated to the Complainant and engaged in totally unrelated fields.
Accordingly, on what evidentiary basis can we say on a balance of probabilities that the Respondent registered the domain name to target the Complainant rather than registered a generally attractive phrase that was evidently attractive to a variety of third parties as well?
In the present case, a Google search conducted today will likely show that the Complainant (or its director) trademark owner is clearly the predominant user of the term. A WIPO Global Brand Database search will similarly reveal only the Complainant (or its director) having registered trademarks. The domain name investor could be presumed to have conducted basic research and to be aware of the Complainant’s use of the “Bowtex” mark.
The Respondent likely hurt its credibility by asserting that “it had no knowledge of the Complainant or its products when it purchased the disputed domain name, adding that the Respondent is in the United States, while the Complainant is in Europe, and that the Complainant is not a household name.” Perhaps this assertion is true, perhaps it is not. Yet the Panel cannot be faulted for being dubious about its validity. Unfortunately, that assertion by the apparently self-represented Respondent may have tainted all the evidence presented by the Respondent.
While I am in no way condoning misrepresentations, I also recognize that the expansive view of trademark rights adopted by many Panels can put the Respondent in a situation that feels like a Catch-22, where there is no way out. The Respondent may reasonably believe that if it acknowledges prior awareness of the Complainant, that the Panel will treat that as a “Gotcha!” admission and it would be fatal to its defense.
I have long found it to be a misapplication of the Policy that Panels often weigh prior awareness of the Complainant so heavily. Of course, there can be no bad faith if the Respondent is genuinely not aware of the Complainant. But awareness of the Complainant does not equate to bad faith. For a domain name investor, it makes little difference whether or not the Respondent is aware of the Complainant prior to the registration. The motivating factor for a domain name investor is that the chosen domain name has inherent attractiveness and would appeal to numerous third parties. That the Complainant also recognizes the appeal serves to validate the inherent attractiveness of the domain name – so long as the Complainant’s mark is not so distinctive or so famous that the domain name would be uniquely associated with the Complainant.
Complainants frequently make unsupported assertions and are not penalized for it, such as the Complainant’s contention here that “the Respondent’s counteroffer for the sale of the disputed domain name was so unreasonable that it demonstrates the Respondent’s bad faith”. Yet when a Panel disbelieves a Respondent, that can cast the Respondent in the role of a bad faith actor, which is a losing role.
Panels are expected to be mind readers, reading the tea leaves to determine the Respondent’s intent. While the Panel may not have believed the Respondent’s assertion of lack of awareness of the Complainant, what would have happened if the Respondent had instead boldly stated that it was aware of the Complainant prior to its registration of <bowtex .com>? Would this have meant that the bowtex. com domain name would be off-limits for registration and could not be offered for public sale to any one of a number of third-parties who can, and have, adopted the same term for non-infringing uses? Would the Panel have used that admission to justify a transfer?
The Panel relies on Haringey London Borough Council v. Host Master, 1337 Services LLC, WIPO Case No. D2023-1321, <haringeylscb .org>, to support its finding. As is apparent merely from looking at the domain names, unlike <bowtex .com>, the domain name <haringeylscb .org> is arguably so distinctive that it could not conceivably be used for anything other than something related to the Complainant’s “Haringey Local Safeguarding Children Board” and then, further, the Respondent egregiously used it for pornographic content.
Why then did the Panel in BOWTEX attempt to justify its findings by relying on the dissimilar circumstances of <haringeylscb .org>, when more relevant decisions were available to it? For instance, the recently issued WIPO decision on <ahnu .com>, which was discussed in UDRP Digest 4.26 earlier this month (view here), also involved a domain name susceptible to third-party use that was acquired through a dropped domain name auction after the Complainant had owned the domain name for many years yet “due to inadvertent renewal failure”, allowed its registration lapsed. As in BOWTEX, the Complainant in AHNU claimed that the Respondent registered the domain name to target its trademark rights.
Yet the panelist in AHNU found that the Respondent had not violated the UDRP in registering <ahnu .com> and registering it for sale. Despite the absence of a response, the panelist recognized that the evidence for the inherent value of a short four-letter dot-com domain name was so strong, that the inference could not be drawn that the domain name was registered to target the Complainant. The panelist in AHNU referred to one of his prior decisions, in FoodandWineTravel.com, in which he stated:
The result of the Panel’s finding is that the Complainant is unable to recover the Disputed Domain Name, despite having owned it for many years. That will no doubt disappoint the Complainant but is a consequence of its failure (for whatever reason) to renew the Disputed Domain Name. The Policy is not intended to provide a remedy for that sort of mistake, save in the narrow circumstances where it can be shown that such a mistake has been capitalized on by a respondent who has acted in bad faith. This is not such a case.
Similarly, the Panel in the three-member decision in Titoni AG v. Synergy Technologies, LLC, WIPO D2019-0395, <titoni .com>, cited a prior decision and commented upon it as follows:
“The Panel wishes to emphasize that it does not assume that all erroneously lapsed domain name renewals are evidence of the bad faith registration of the domain name by a new holder. Nor does the Panel believe that the Policy is designed primarily to make up for the mistakes or negligence of Registrars or Complainants in ensuring that domain names get renewed, however unfortunate that may be.
That having been said, the Panel may look to the circumstances of the case as a whole in order to determine whether the third element of the test under the Policy is met, even where the lapse of the Domain Name was done in error …”
The Panel respectfully concurs.
As set out above, the Panel has carefully looked at the circumstances of the case and concluded that it is finely balanced. The Panel has given examples of the kinds of targeting evidence that would most likely have tipped the balance in favour of the Complainant under the third element. But no such evidence has been provided.
As in TITONI, in BOWTEX evidence of targeting is missing. Consistent with the above decisions, in the absence of such evidence the Complainant did not meet its evidentiary burden and merited dismissal.
The Panel’s reasoning demonstrates a misunderstanding of the reality that tens of thousands of domain names drop every day after the previous registrant permits its registration to expire. An understanding of the life cycle of a domain name is helpful here. GoDaddy offers a page that answers the question “What happens when my domain expires?” with a chart showing that the registrant has numerous opportunities to renew the domain name even after the expiration expires, and even after the domain name is inactivated. The registrant has up to 70 days to recover its domain name after expiration. The vast majority of dropped domain names are intentionally allowed to lapse. A domain investor would reasonably expect that any dropped domain name was intentionally dropped by the prior registrant. Domain investors consider dropped domain name auctions to be a good source for investment grade domain names both because a dropping domain name has demonstrated appeal as the prior registrant found it appealing enough to register it and yet the prior registrant no longer wishes to maintain the registration and has no continuing interest in the dropped domain name so that the domain name can be “recycled” and put to use by a different company who may also find it appealing for its particular product or service.
The notion that a previous registrant retains a “first dibs” on a dropped domain name even after permitting its registration to lapse is foreign to the experience of domain name investors. A domain name registrant should be more confident, not less so, that there is no competing trademark claim relating to the domain name that has expired and is listed for sale at public auction. A seminal decision addressing this issue is the three-member decision in Corbis Corporation v. Zest, NAF Case No. 98441, in which the Panel found:
The Panel, as a whole, however, holds that prior registration does not help the Complainant, although it may be able to otherwise show that Respondent has no rights in the name and bad faith. We do reject the reasoning of cases holding that we may find “bad faith” simply because Respondent took advantage of the lapse in registration. See In Test Corp. v. Service point, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA PLC v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name).
We also strongly disagree that prior registration should ordinarily be considered as a factor favorable to the Complainant. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name). There may be some cases, for example, where the registrant was aware of the prior use by the holder of a mark and was aware of the mark and might be found to be attempting to disrupt or compete; in the alternative, there may be cases where the registrant was somehow involved in the failure to renew.
In ordinary cases, the existence of a prior registration that has lapsed is entirely irrelevant to the questions of legitimate interests and bad faith. This is so even if the subsequent registrant was aware that the domain name had previously been registered to another party, and even if the subsequent registration occurred very soon after the domain name was returned to the pool of available names.
In lapsed registration cases, the “bad faith” issue should be dispositive. It will usually not be necessary to address the other issues.
The Panel in BOWTEX is attempting to create bad faith even in the absence of evidence of bad faith. In doing so, the Panel is mimicking previously discredited dead ends in UDRP jurisprudence, in which various panels attempted to manufacture bad faith in the absence of evidence of bad faith intent by inventing duties to impose on registrants. The discredited concept of constructive notice invented a duty for registrants to research and avoid domain names similar to any pre-existing trademarks, even if the registrant was not aware of the trademark and had a reasonable expectation that the disputed domain name could be put to a good faith use. The theory of Retroactive Bad Faith invented a registration in bad faith due to later use of the domain name. Here the Panel is taking evidence that supports the Respondent’s good faith registration and use and is recharacterizing it as evidence of bad faith registration and use by inventing a duty which it imposes on Respondents to research the usage of prior registrants of dropped domain names and to avoid registering such domains, even if the research, which the Respondent presented to the Panel, reveals numerous third-party non-infringing uses for the dropped domain name.
The Panel here has overstepped by imposing on Respondents the burden of maintaining the Complainant’s intellectual property assets. The Panel has effectively shifted the burden of domain name portfolio maintenance from the Complainant to the Respondent. It was the Complainant who failed to renew an inherently appealing domain name. Yet the Panel has forcibly deputized the Respondent to act as an unpaid Lost and Found service for the Complainant, locating, securing and then returning to the Complainant an asset that the Complainant had lost its rights to. The Panel has also shifted the financial consequences to the Respondent of the Complainant’s failure to adequately monitor its domain name registrations. The Respondent committed its capital according to its standard business practice of registering domain names that had linguistic characteristics similar to the <bowtex .com> domain name, yet it is the Respondent who suffers the financial loss due to the Complainant’s carelessness.
Additional case comment by Zak Muscovitch:
The Panel referred to “Paragraph 2 of the Policy” and stated that “it should be borne in mind that the Respondent warranted to its Registrar in terms of paragraph 2 of the Policy that to its knowledge the registration of the disputed domain name would not infringe upon or otherwise violate the rights of any third party”. This representation is not included in the parameters of “Applicable Disputes” under Paragraph 4 (Mandatory Administrative Proceedings) and as such although arguably “part of the Policy” per se, it does not form the part of the policy that is actionable by complainants as an “applicable dispute” as it is merely a representation made by the registrant to its own registrar. In any event however, there does not appear to be any basis for finding that the Respondent in any way breached its representations to its registrar in this case since the Domain Name was not used for any infringement nor did the registration alone necessarily violate the rights of any third parties.
Could Franna .com have been saved?
Terex Corporation v. Reserved for Customers / MustNeed .com, NAF Claim Number: FA2406002103360
<franna .com>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The Complainant is a global manufacturer of lifting and materials handling equipment. For over 40 years, Franna Products, a subsidiary of the Complainant, has been the market leader in the design and manufacture of quality pick and carry cranes under the well-known and highly distinctive trademark “FRANNA”. “FRANNA” is the subject of numerous trademark registrations in Australia (October 28, 1981), Malaysia (September 2, 1997), The United Kingdom (August 15, 1997), and other jurisdictions. Under additional submissions, the Complainant submitted copies of various trademark registration certificates for its claimed rights. The disputed Domain Name was created on September 23, 2002 and resolves to a pay-per-click website.
The Complainant alleges that it has not authorized or licensed to the Respondent any rights in the FRANNA mark and that the Respondent fails to use the disputed Domain Name in connection with a bona fide offering of goods or services or in a manner that is legitimate non-commercial or fair as it has resolved to a landing page with monetized links. The Complainant further alleges that the Respondent had actual and constructive knowledge of the Complainant’s rights in the FRANNA mark at the time of registering the disputed Domain Name and that the Respondent attempted to sell the disputed Domain Name to the Complainant at the “drastic and unreasonable price” of US $30,000. The Respondent failed to submit a Response in this proceeding.
Held: Given the available WHOIS information for the disputed Domain Name, and given that the Respondent has not participated in these proceedings to claim otherwise, the Panel finds no ground upon which to conclude that the Respondent is commonly known by the disputed Domain Name per Policy ¶ 4(c)(ii). The Complainant further provides a screenshot of the website to which the disputed Domain Name resolves and these display pay-per-click links titled “Apply Now Jobs”, “Explore Careers”, and “Remote Work Jobs Hiring”. Using a domain name that is confusingly similar to a distinctive mark in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i). This is also not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) as there is no evidence before the Panel that the word “franna” has any generic or descriptive meaning or that it is used as anything other than a trademark for the Complainant’s products.
Further, the concept of constructive knowledge has been largely rejected by UDRP Panels except under very specific circumstances. However, a respondent’s actual knowledge of a complainant’s rights in an asserted mark before registering a disputed Domain Name can form a foundation upon which to base an argument for bad faith. The Complainant’s mark is distinctive and there is no evidence to suggest that it has any generic or descriptive meaning, this leads the Panel to find it more likely than not that the Respondent did have actual knowledge of and targeted Complainant’s rights in its mark at the time that it registered the disputed Domain Name. The Panel further notes that the screenshot of the Respondent’s website, provided by the Complainant, shows the pay-per-click links to third-party websites under the topics “Apply Now Jobs”, “Explore Careers”, and “Remote Work Jobs Hiring”. Upon the evidence presented, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Transfer
Complainants’ Counsel: Robyn S. Lederman of Brooks Kushman P.C., USA
Respondents’ Counsel: No Response
Case Comment by ICA Director, Nat Cohen:
There are times when a response is required. My view, in general, is that when a Disputed Domain Name is based on a fanciful term that is the exact match of a trademark held by the dominant commercial user of the term, and the Complainant has presented adequate evidence in that respect, that, in the absence of a response, it is reasonable for a Panel to consider that on the balance of probabilities the evidence favors the Complainant. The burden shifts to the Respondent under these circumstances to appear and to make a case for why the registration and use was in good faith.
Both FRANNA and BOWTEX are both “brandable”, non-dictionary terms where there is one dominant commercial user that also holds the only active registered trademark on the term in the USPTO database. The burden is therefore on the Respondent to appear.
In BOWTEX, the Respondent did appear and provided what I considered to be a reasonable explanation for how it selected, registered, and offered bowtex .com for general sale. To reach a transfer decision in BOWTEX, the Panel had to invent a justification for discrediting the evidence of good faith registration and use that the Respondent presented, as discussed above.
In FRANNA, the Respondent did not appear. The Panel in FRANNA, in the absence of a counterargument, and given the strong association of “FRANNA” with the Complainant, was justified in making a finding for the Complainant on the balance of probabilities in reliance on the evidence before it.
I did some research on the history of the franna .com domain name, which led me to wonder whether the FRANNA dispute was a guaranteed loser for the Respondent, or whether the Respondent, if he had chosen to appear, could have offered a sufficiently robust defense that would have tilted the balance of probabilities in his favor such that the Panel would have denied the Complaint?
The Respondent, MustNeed .com, is a long-time domain name investor based in Taiwan. I corresponded with him at one point back in 2007 about a couple of domain names he owned at the time.
It seems that MustNeed.com has been involved in 36 prior UDRP disputes, losing 29 of them and winning 7 (see here). But in spot checking the disputes, it seems that he never or almost never files a response. Most of his wins have come recently, as he has prevailed in four out of his last seven disputes. One of these recent disputes, ElMostrador .com, decided by Matthew Kennedy, is the subject of a UDRP Digest comment by Zak (read here)
In his ElMostrador .com comment, Zak said in part:
- The Panelist noted that despite recentevidence of potential bad faith use such as PPC links related to the country of origin of the Complainant’s newspaper and given the Chilean-themed imagery on the associated website, this evidence “does not shed light on the Respondent’s aim when it registered the disputed domain name” apparently back in 2002. This too is an important and nuanced distinction embraced by the Panelist, because once again, ‘the question is what was in the mind of the Respondent at the timeof registration’, not now.
Franna.com was also registered in 2002. Archive.org shows that there was a website in 2001, but did not capture a screenshot. This suggests that Franna.com was owned by a third-party prior to the Respondent’s registration of the disputed domain name in 2002.
IF the respondent had filed a response, and IF the respondent in his response was able to demonstrate:
- that the registration of <franna .com> was part of a pattern of registering similar, short, fanciful domain names;
- that he had sold several of these domain names to 3rd parties who had no legal claim to the matching domain names;
- that the Complainant was not well known in Taiwan in 2002 and that the Respondent was not aware of the Complainant at the time;
- that it had previously been registered to a third-party and the Respondent acquired it on a drop, such that he understood that to mean that this was an attractive domain name that already had demonstrated third-party appeal;
- that the use to which the domain name had been put in 2002 of a landing page filled with generic links did not target the Complainant (see archive here);
- that the Complainant delayed over 20 years before asserting a claim and, in effect, consented to the Respondent’s ownership of the domain name for that extensive length of time;
- that it was the Complainant who reached out to initiate purchase negotiations;
- that the asking price of $30,000 reflected a standard market valuation for similar domain names rather than demonstrating a mark-up intended to profit from the Complainant’s use, (and indeed the Panel rejected the Complainant’s allegations on this point);
- that only when the Complainant objected to the asking price did the Complainant initiate a UDRP Complaint;
would that have shifted the balance of probabilities such that the Complaint would have been denied?
If so, the Respondent’s failure to respond is causing it to lose domain names that it would otherwise be able to protect.
Panel: One Should Not Lightly Conclude That a Respondent Registered or Used a Domain Name In Bad Faith
Eisco Scientific LLC v. Hexuan Cai, NAF Claim Number: FA2405002100421
<EISCO .com>
Panelist: Mr. Bart Van Besien
Brief Facts: The Complainant claims to be the owner of three US trademarks including a wordmark for EISCO, registered on May 10, 2016; (claimed first use: December 31, 2002). The Complaint does not contain any further information about the Complainant, its activities, or its history. The Respondent emphasizes that he acquired the disputed Domain Name on November 26, 2012, via Network Solution’s backorder service, whereas the first trademark of the Complainant was filed only on August 18, 2015. The Complainant alleges that the disputed Domain Name resolves to a parked page and is used to misleadingly divert consumers looking for goods of the type sold by the Complainant. The Complainant submitted a screenshot of the website available via the disputed Domain Name, showing links to “Science Classroom Supplies”, “Equipment Supplies”, and “Laboratory Equipment”. The Complainant claims that such goods are competitive with the goods sold by the Complainant under the Trademarks. However, the Respondent submitted another screenshot of the same website showing links to “Online Education”, “Tutor Online”, and “Online Class”.
The Respondent contends that the Complainant does not provide any information about the Complainant’s business, reputation, sales volumes, advertising, marketing, revenue, or any other facts which could establish that the Complainant and its Trademarks were particularly well known when the disputed Domain Name was registered. The Respondent further contends that the term “EISCO” is a 5-letter short and brandable word, that was registered as a domain name investment in 2012 together with many other generic and abbreviated domain names. The disputed Domain Name forms part of the Respondent’s stock in the trade of generic, brandable and acronym domain names for development and sale. The Respondent also underlines that the Complainant is represented by a counsel, who ought to know better and who is under an obligation to undertake at least minimal due diligence before filing a complaint.
Held: The Respondent acquired the disputed Domain Name on November 26, 2012, i.e. 4 years before the first registration of a trademark by the Complainant. The Panel emphasizes that the Complainant did not submit convincing evidence regarding its alleged prior “first use” or “use in commerce” of the Trademarks or any explanation, argumentation, or evidence about why the use of the disputed Domain Name by the Respondent would be illegitimate, commercial, or unfair. The Panel emphasizes that the selling of a domain name is not per se an unfair use, nor is the hosting of a parking page per se an unfair use. The disputed Domain Name consists of the letters “EIS” and “CO”. The Respondent has shown that the letters “EIS” might refer to many different abbreviations and that the letters “CO” commonly refer to the word “company”. The Panel concludes that the Complainant did not show that the Respondent lacks rights or legitimate interests in respect of the disputed Domain Name.
As a general remark, the Panel finds that one should not lightly conclude that a respondent registered and/or used a domain name in bad faith. The Complainant states that the disputed Domain Name is being used to misleadingly divert its customers. However, the Complainant does not show that the Respondent causes actual confusion or is trying to seek confusion among the relevant public. As concerns the chronology of the case, the Panel notes that the Respondent’s acquisition of the disputed Domain Name predates the Complainant’s registration of the Trademarks by at least 4 years. The finding that the Respondent acquired the disputed Domain Name before the Complainant registered its Trademarks, precludes bad faith registration by the Respondent in this case. Further, acquiring and selling domain names does not in itself constitute bad faith registration or bad faith use of the domain names. The Complainant failed to provide convincing argumentation and documentation that this would constitute bad faith.
RDNH: The Panel finds that the Complaint was not brought in bad faith and does not constitute an abuse of the administrative procedure. Lack of success of a complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. The Panel refers in particular to the fact that the Complainant prevailed on the first element of Paragraph 4(a) of the Policy and to the fact that the Complainant did probably not know all relevant elements of fact because of the Respondent’s initial use of a privacy service for the WhoIs registration of the domain name.
Complaint Denied
Complainants’ Counsel: George R. McGuire of Bond, Schoeneck & King, PLLC, New York, USA
Respondents’ Counsel: Ankur Raheja of CyLaw Solutions, India
Case Comment by ICA General Counsel, Zak Muscovitch: Congratulations to our Editor-in-Chief, Ankur Raheja for successfully representing the Respondent in this case. I would also like to acknowledge the particularly helpful language provided by the Panel in this case, who noted that “acquiring and selling domain names does not in itself constitute bad faith registration or bad faith use of the domain names. The Complainant failed to provide convincing argumentation and documentation that this would constitute bad faith.”
Three-Letter Domain Names are Rare and Such Acronyms Have Various Meanings
YPF S.A. v. Internet Portfolio SA, WIPO Case No. DCO2024-0038
<ypf .co>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant, founded in 1922, is the leading oil company in Argentina, and ranks as the fifth largest in the Latin American region. The Complainant holds numerous Argentine trademark registrations for marks that comprise or contain the letters “YPF”, all registered on April 9, 2010, and all of which remain current. The Complainant also holds trademark registrations in Panama, that is, the Respondent’s jurisdiction. The disputed Domain Name was registered on July 20, 2010, by the Respondent based in Panama. At the time of filing the Complaint, it resolved to a Pay-Per-Click (“PPC”) links landing page, At the bottom, the following notice appeared: “The owner of <ypf. co> is offering it for sale for an asking price of 10000 EUR!”. At the time of this decision, the disputed Domain Name no longer resolves to any active webpage.
The Complainant alleges that given the content of the website associated with the disputed Domain Name, there are no doubts that the Respondent knew that the registration of the disputed Domain Name was identical to the Complainant’s marks and that the Respondent does not have a real interest in the disputed Domain Name, which was registered to be re-sold. The Respondent contends that the disputed Domain Name was a three-letter domain name that was available, and the Respondent registered it without any bad faith. The Complainant may have a genuine claim on the YPF brand in some markets but that does not imply that no one else could have a legitimate interest in a Domain Name that matches its trademark. Although the Complainant claims to have a large presence in Argentina, the Respondent has no connection or ties to Argentina and has never been aware of any of the activities that the Complainant alleges it is undertaking for its brand.
Held: In the present case, the disputed Domain Name was registered in 2010, after the Complainant had registered its YPF trademarks, however, the Respondent submits it was unaware of the Complainant’s trademarks in 2010. The Complainant has a significant reputation in Argentina, but the Respondent is based in Panama and has no apparent connection to Argentina or the Complainant’s industry. There is no evidence that the Complainant has used its mark outside Argentina. While the Complainant submits evidence of its trademark registrations in Panama, one has expired, the other two did not exist in 2010, and the Panel does not consider that the Respondent should be deemed to have constructive knowledge of the contents of the Panamanian trademark register. Further, there is no record showing PPC links during the first 12 years after the Domain Name’s registration. Given the time elapsed, this evidence also does not shed any light on the Respondent’s intentions when registering the Domain Name in 2010.
The Respondent submits that the disputed Domain Name was registered due to its interest and appeal as a three-letter domain name. Based on the record of this proceeding, the Panel finds this explanation plausible. The Panel notes that YPF is a three-letter acronym that can have various meanings. Although it comprises the initials of the Complainant’s former name, “YPF” can also serve as the initials of other word combinations unrelated to the Complainant. Furthermore, three-letter domain names are relatively rare, which leaves the Panel ill-equipped to judge whether the Respondent’s asking price of EUR 10,000 for the disputed Domain Name better reflects its value to the Complainant or a competitor of the Complainant as a domain name identical to the YPF mark, rather than its potential value to a wider group of third parties as a three-letter acronym. For the above reasons, the presented evidence in the case file 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
Complainants’ Counsel: Berken IP, Argentina
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: A sound decision by the Panel. A Complainant must prove its reputation if it wants to successfully claim that it was the target of a registration, as the Panel pointed out. Moreover, when it comes to three-letter acronym domain names, there is indeed a heavy burden on a Complainant to prove that it was the target of a registration rather than the domain name having been registered due to its natural attractiveness as a common acronym.
Understanding Passive Holding in the Context of Telstra
QlikTech International AB v. Jonathan Liani, WIPO Case No. D2024-2173
<qwikqlik .com>
Panelist: Mr. Manuel Moreno-Torres
Brief Facts: The Complainant is a leading technology company specializing in data analytics and business intelligence solutions working worldwide. The Complainant owns trademark rights for QLIK in different jurisdictions, including the EU (May 16, 2000), Sweden (April 1, 2005) and US (December 10, 2002). The disputed Domain Name was registered on May 13, 2024, and resolves to a free parking page provided by the registrar. The Complainant asserts that at the time of filing of this complaint, the disputed Domain Name resolved to a page featuring PPC links and also alleges the application of the doctrine of passive holding. Besides, the Complainant support a finding of bad faith registration and use based on the Respondent´s attempt to take advantage of its QLIK trademark reputation. The Respondent did not file a Response in these proceedings.
Held: It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed Domain Name. The Panel finds the mark is recognizable within the disputed Domain Name. Accordingly, the disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. Although the addition of other terms here, “qwik” may bear on the assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity under the first clause. Further, 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. The Panel finds the second element of the Policy has been established.
In the present case, the Panel notes that the Respondent knew or should have known QLIK trademark at the moment of the registration of the disputed Domain Name. The Panel has checked the Complainant’s allegation in reference to the results of a Google search which mostly refers to the Complainant. Indeed, such results inevitably lead to the recognition of its distinctive character and alleged knowledge by the Respondent. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding, see WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed Domain Name, and finds that in the circumstances of this case, the passive holding of the disputed Domain Name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
Transfer
Complainants’ Counsel: Abion AB, Sweden
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
As the Panelist pointed out, “the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding”, but then again, mere non-use alone doesn’t necessarily prove bad faith. As explained in UDRPPerspectives.org:
“The concept of “passive holding” refers to the “non-use” of a disputed domain name. It originates with the Telstra case in 2000. In this early UDRP case, the Panel attempted to find a basis in the Policy for “bad faith use” when the disputed domain name remained unused and determined “in the circumstances of this particular Complaint, the passive holding by the Respondent amounts to the Respondent acting in bad faith”. The particular facts of the Telstra case have since been construed as the Telstra test and involve five criteria:
(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Accordingly, “passive holding” is a concept is a product of the Telstra case and for it to apply, the Telstra test must be met. Crucially, the Telstra test requires a strong reputation of the mark and the impossibility of conceiving any plausible or actual good faith use of the particular domain name. Such a determination would generally arise only where the disputed domain name corresponds to a particularly distinctive and famous mark. Where a domain name is unused, it may be considered to be “passively held” but that alone does not amount to bad faith use absent meeting the narrow requirements of the Telstra test.”
Panels when considering passive holding, must contemplate whether there is any plausible good faith use for the disputed domain name. Where there is, the Telstra test will not have been met and passive holding will not amount to bad faith use.” [emphasis added]
In the present case, the Panelist stated:
“Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.”
It is unclear from the decision what evidentiary basis the Panel had in the Complaint to find the necessary “strong reputation” of the Complainant other than via the Panel’s Google search, but in any event, the Panel would still need to address whether there was any conceivable possibility of good faith use for the domain name. This was not expressly addressed though it is a crucial part of the applicable Telstra test. It is implied unsatisfactory to fashion a “passive holding” test that does not expressly consider the crucial elements of Telstra as otherwise, any non-use without anything else would be considered bad faith, which it is not.
The Panel also stated that:
“In the present case, the Panel notes that the Respondent knew or should have known QLIK trademark at the moment of the registration of the disputed Domain Name.”
Again, it is unclear from the decision on what basis the Panel reached this conclusion. What was the evidence that the Respondent knew or should have known of the QLIK trademark?
As noted in UDRPPerspectives.org at Section 3.4:
There is no place for the concept of “constructive notice” of trademarks under the Policy. The essence of a Complaint is an allegation of bad faith targeting of the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, it cannot sensibly be regarded as having any bad faith intentions directed at the Complainant. If the existence of a trademark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would be unjustifiably subject to UDRP proceedings.
(See Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan, NAF FA2110001970005 <lumos .com>, 3-member, Denied, RDNH “Complainant contends that Respondent should be deemed to have had constructive knowledge of Complainant’s Mark because it is federally registered…However, most panels take the opposite view. The limited circumstances under which it may be applied are not present in this case…This Panel believes that the correct approach does not impute to Respondent constructive knowledge of Complainant and Complainant’s Mark.”)
The Policy’s Limited Scope Can’t Address Hacking Incidents
Crooker Construction v. Harry Crooker & Sons, NAF Claim Number: FA2406002103218
<crooker .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant asserts that the Respondent is a cyber hacker and as the result of an unauthorized access event, the Respondent fraudulently redirected Internet traffic including incoming email communications to the domain @crooker .com to a fraudulently created host, <mx1 .privateemail .com> at the IP address of 209.17.116.160, by way of changing the public DNS records. The fraudulent host is registered with NameCheap, who has been alerted to this activity. There is no trademark or service mark dispute as to this issue. The Complainant requests that access be restored to the proper Network Solutions, LLC host at IP Address 206.188.193, as the Complainant has properly maintained this domain name since June 5, 2006. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant states that “There is no trademark or service mark dispute as to this issue” and has provided no evidence that it has rights in a trademark or service mark. Hence, the Complainant has failed to establish this element. Further, the Panel finds that this dispute is outside the scope of the Policy. See The Thread .com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470 (January 5, 2001): “This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. To invoke the Policy, a Complainant must show that the domain name at issue is identical or confusingly similar to a mark in which the Complainant has rights, that the Respondent lacks rights or a legitimate interest in the domain name, and that the Respondent registered and used the name in bad faith. Policy ¶ 4(a).”
Complaint Denied
Complainants’ Counsel: Matthew V. Toldero of Constangy, Brooks, Smith & Prophete LLP, North Carolina, USA
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja: The Complainant admits that “There is no trademark or service mark dispute as to this issue.” Hence, firstly the Complainant has no standing in these proceedings since it is not an “applicable dispute” pursuant to Paragraph 4(a) of the Policy. Secondly, the Complainant labels the Respondent a ‘cyber hacker’ (not cybersquatter) and alleges that the Respondent fraudulently redirected Internet traffic including incoming email communications to the domain @crooker .com to a fraudulently created host by way of changing the public DNS records and so on. Accordingly, the Panel properly found that this dispute is outside the scope of the Policy. This is in line with the Second Staff Report on UDRP (dated 24 October 1999), which at Para 4.1 (c) reads:
“The Recommended Policy Is Minimalist in its Resort to Mandatory Resolution. In contrast to the policy currently followed by NSI, the policy adopted by the Board in Santiago, as set forth in the final WIPO report and recommended by the DNSO and registrar group, calls for administrative resolution for only a small, special class of disputes. Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the policy, not a flaw. The policy relegates all “legitimate” disputes–such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name–to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.”