No Love for 3-Paragraph Complaint Over Descriptive Domain, Despite Trademark
It is noteworthy and gratifying that the Panel in this matter saw fit to declare Reverse Domain Name Hijacking. This does not appear to have been a cybersquatting case, but rather an instance of a Complainant coveting a similar domain name that had been lawfully used for over ten years. (Read commentary)
We hope you will enjoy this edition of the Digest (vol. 4.4), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ No Love for 3-Paragraph Complaint Over Descriptive Domain, Despite Trademark (lovecam .com *with commentary)
‣ Policy Does Not Allow the Panel to Look Beyond Cybersquatting (savefromweb .com *with commentary)
‣ Eco Domain Name Saved Because of Widespread Third Party Use, Despite TM (ecosavers .com *with commentary)
‣ Respondent Loses $300 k Domain Matching Invented, Renown and TM’D Crypto Firm (binance .ae *with commentary)
‣ US Federal Statutory Entity Abused UDRP (ucrregistration .com *with commentary)
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
No Love for 3-Paragraph Complaint Over Descriptive Domain, Despite Trademark
TMD Swiss AG v. Cambuilder Manager, ICF Technology Inc., WIPO Case No. D2023-4677
<lovecam .com>
Panelists: Mr. Warwick A. Rothnie (Presiding), Mr. Petter Rindforth and Mr. Gerald M. Levine
Brief Facts: The Complainant is the owner of EU Trademark XLOVECAM (registered on October 17, 2007), for broadcasting, dissemination and transmission of visual images, audio information, graphics, data and other information, using radio, telecommunications apparatus, electronic media or the Internet services (Class 38). There is a live adult web cam streaming site at <xlovecam .com>, indicating XLOVECAM as a registered trademark. The disputed Domain Name was acquired by the Respondent on November 23, 2013, and also resolves to a website providing live video feeds of “adult content”.
On September 14, 2023, the Complainant’s legal representative sent an email to the Respondent informing it of the Complainant’s registered trademark and demanding transfer of the disputed Domain Name. On October 26, 2023, the Respondent’s legal representative replied with a detailed rebuttal of the Complainant’s demands. On December 21, 2023 (after the filing of the Response), the Complainant filed European Union Trademark Application No 018966982, LOVECAM, in International Class 38. That application is still pending.
The Respondent states that it was unaware of the Complainant’s trademark and business when it became the registrant of the disputed Domain Name and continues to use the disputed Domain Name under its descriptive meaning, in the way it had been used for many years beforehand. The Respondent also provides evidence that it has registered numerous other domain names of similar character including, for example, these include <sexcam .com>, <findmelovecams .com>, <lovefreecams .co>, and many others.
Held: The Complainant has proven ownership of the registered EUTM for XLOVECAM. The pending application, EUTM No 018966982 for LOVECAM, does not qualify as trademark rights under the Policy. The first clause further involves a visual and aural comparison of the disputed Domain Name to the proven trademarks. In one view, this could still qualify as confusingly similar. In the present case, that analysis is complicated by the fact that the expression “love cam” or “lovecam” is a commonly used expression to describe the particular forms of activity of the kind being streamed from the websites referred to above. The omission from the disputed Domain Name of a key component which contributes to the overall distinctiveness of the Complainant’s trademark, therefore, complicates the analysis.
It is clear, however, that the Complainant does have a registered trademark which is entitled to protection. It is also clear that the Respondent is providing a service using a closely similar sign of the kind falling within the scope of the Complainant’s rights and in competition with the service using the Complainant’s trademark. In these circumstances, the Panel finds that while the assessment here is not straightforward the Complainant has satisfied the standing requirement under the Policy and the Complainant has established the first requirement under the Policy. In either event, given the findings below, it is not strictly necessary to come to a determination on this matter, nor does a finding in the Complainant’s favour under the first element result in an overall finding in its favour in the case.
The Complainant has not provided evidence that the use and promotion of its service or trademark was so extensive or exclusive that the Respondent’s denial of knowledge can be disregarded especially having regard to the descriptive nature of the term “love cam”. The Respondent claims to have been continuing the descriptive use of the disputed Domain Name for a number of years before it became the registrant. Under the Policy, use by a prior registrant has not been automatically imputed to a later registrant. If and to the extent the Respondent was merely continuing a prior existing use, however, could be supportive of the Respondent’s claim. In the circumstances outlined above, therefore, the Panel finds that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed Domain Name.
RDNH: As the Respondent points out, the Complaint consists of the barest of allegations consisting essentially of three substantive paragraphs, the WhoIs record of the disputed Domain Name, evidence of the Complainant’s EUTM, the Policy, and a print-out of Fabulous .com’s terms of service. Further, the Complaint makes no attempt to address the descriptive nature of the term “love cam” and the use of that expression by the Respondent in connection with the subject matter it describes. These are matters which have been clearly established under the Policy as needing to be addressed. See WIPO Overview 3.0, section 2.10.1.
Further still, the Complainant was also put on clear notice of these issues before the Complaint was filed through the Respondent’s legal representative’s letter in October 2023. In the present case, the Respondent’s longstanding registration has been put at risk and the Respondent has been put to considerable trouble and, presumably, expense to defend that registration by the filing of a most basic Complaint. Taking that into account and having regard to the salient issues addressed in the preceding paragraph and the extremely perfunctory nature of the Complaint notwithstanding notice of these issues, the Panel considers it appropriate to make a finding of reverse domain name hijacking against the Complainant in this proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Merk-Echt B.V., Netherlands
Respondents’ Counsel: Paul Raynor Keating, Esq., Spain
Case Comment by ICA General Counsel, Zak Muscovitch:
It is noteworthy and gratifying that the Panel in this matter saw fit to declare Reverse Domain Name Hijacking. This does not appear to have been a cybersquatting case, but rather an instance of a Complainant coveting a similar domain name that had been lawfully used for over ten years. With no evidentiary basis for a finding of targeting, the Complaint was properly dismissed. If the Complainant had a legitimate complaint, it would be for trademark infringement rather than cybersquatting. This case demonstrates the difference between clear cases of cybersquatting that are appropriate for resolution under the UDRP, and others which are not because they involve competing businesses and trademark issues.
Policy Does Not Allow the Panel to Look Beyond Cybersquatting
ULIONA LIMITED v. Joseph Gardner / Green Geeks LLC, NAF Claim Number: FA2312002076426
<savefromweb .com>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant, a software company, from its website at <savefrom .net> offers an online downloader tool that allows users to download videos and other media from YouTube and other Internet sites. The Complainant has rights in the SAVEFROM mark based upon the registration with the USPTO (registered on April 5, 2016). The disputed Domain Name was registered on February 21, 2018, and resolves to a website that like the Complainant offers an online video download service. The Complainant alleges that the Respondent does not use the disputed Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use. Instead, the Respondent uses the Domain Name to pass off as the Complainant to offer competing services.
The Response does not address the substantive contentions made in the Complaint. Rather it argues that the Domain Name is not owned by the Respondent, rather it is owned by a former customer of the Respondent, who has since terminated their hosting account and somehow, as a result of a bug, the Respondent’s details have replaced the customer’s details. The Response seeks that the details of the Respondent be removed from the proceedings.
Redaction of Respondent’s details: The Response provides no documentary evidence in support of any of the contentions that the Respondent entered into arrangements with third parties in respect of the Domain Name, which have been terminated and that there was a bug that has since been resolved that caused the Respondent to be improperly listed as the owner of the Domain Name. In the absence of any evidence showing otherwise, and given the confirmation provided by the Registrar that the disputed Domain Name is registered with eNom, LLC and that the Respondent is the current registrant of the Domain Name, the Panel declines to redact any details of the Respondent from this decision.
Held: The disputed Domain Name consists of three generic words being “save”, “from” and “web” with an entirely descriptive meaning (referring to saving something from the World Wide Web (or Internet)). The Complainant asserts reputation in the SAVEFROM mark but provides no evidence of any reputation in the SAVEFROM mark or any use beyond its use on the Complainant’s website. The disputed Domain Name has been registered since 2018 and resolves to a website that like Complainant offers an online video download service. Given the lack of evidence provided about the reputation of the SAVEFROM mark in the field, the Complainant and Respondent trade-in, the Panel is not prepared to conclude that the Respondent’s registration of a domain name containing the words save”, “from” and “web” was motivated by an awareness of the Complainant (which would generally amount to bad faith registration), as opposed to the registration of the disputed Domain Name for its inherent meaning.
The Panel acknowledges that the Respondent’s conduct may infringe Complainant’s registered SAVEFROM trademark or amount to passing off and the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding. The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting. The question of trademark infringement is beyond the scope of the present proceeding, which is summary in nature and hence the evidence that the Respondent offers a service allowing users to save material from the web from the domain name <savefromweb .com> is sufficient basis to find that the Complainant has failed to demonstrate that the Respondent lacks rights or legitimate interests in the Domain Name.
Complaint Denied
Complainants’ Counsel: Nadezhda Minakova, USA
Respondents’ Counsel: Cameron Halling of Halling Meza LLP, USA
Case Comment by Newsletter Editor, Ankur Raheja: In one of the previous issues of ICA Digest (volume 3.25), we discussed the decision regarding the case of <savefromus .com> (see decision here). The Respondent attempted to argue that the domain name was used descriptively. However, the Panel did not agree with this argument, stating: “Respondent uses the disputed domain name to identify a website that allows users to download and stream images and videos from the internet or convert multimedia in various formats, which happen to be the same services provided by the Complainant through its website <savefrom .net> does indicate that Respondent registered the disputed domain <savefromus .com> attempting to attract internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s trademark SAVEFROM. Thus, the bad faith in this behavior is undeniable.”
In the current case, the Panel took an appropriate but contrasting view and acknowledged that the keywords “save”, “from”, and “web” have an inherent meaning and were being used descriptively: “The Domain Name has been registered since 2018 and resolves to a website (“Respondent’s Website”) that like Complainant offers an online video download service. It does so under the name ‘Save from web’ which appears to be descriptive of the services offered by the Respondent, namely a service that enables users of the Respondent’s Website to save material from the web.”
Indeed, when it comes to trademarks composed of dictionary words, being used in the descriptive sense. The narrow scope of the Policy does now allow the Panel to look beyond the Policy clauses, even when it may infringe on the Complainant’s trademark rights. Accordingly, the Panel while rejecting the Complainant’s claim, held: “The Panel acknowledges that the Respondent’s conduct may infringe Complainant’s registered SAVEFROM trademark or amount to passing off and the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding.”
Eco Domain Name Saved Because of Widespread Third Party Use, Despite TM
E Group BV v. Justian de Frias, WIPO Case No. D2023-5032
<ecosavers .com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Dutch Complainant provides no information concerning the nature of its business in the Complaint and, regarding the extent of its business, the Complainant simply states: “Complainant is a worldwide operating company with a turnover of EUR 3.8 million (USD 4.1 million) in 2022.” Nevertheless, the Panel viewed the Complainant’s website at <ecosavers .nl>, which indicates that the Complainant trades in “energy-saving consumer products”. The Complainant owns European Union trademark Registration for ECOSAVERS (December 10, 2008). The disputed Domain Name was acquired by the Respondent at an auction in April 2019 and presently resolves to a parking page displaying pay-per-click (“PPC”) advertisements.
The Complainant alleges that the Respondent’s primary intention for the disputed Domain Name was to sell it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed Domain Name. The Respondent contends that many third parties unrelated to the Complainant use the terms “ecosaver” or “ecosavers”, and the Complainant has no monopoly over these terms. The Respondent further contends that it purchased the disputed Domain Name for use in the Cayman Islands, where the Respondent is resident and where the Complainant has no trade mark rights, in order to offer an initiative for schools and companies to “go green, stop using single-use plastics and care more for the environment”.
Held: The evidence in the case file as presented does not indicate that the Respondent’s aim in acquiring the disputed Domain Name was to profit from or exploit the Complainant’s trade mark, for the following reasons. The verbal component of the Complainant’s ECOSAVERS mark is comprised of two dictionary words that appear to be largely descriptive of the Complainant’s business, and the Complainant has presented no evidence showing that its mark has acquired distinctiveness or a reputation through use. In cases involving marks that are comprised of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning (WIPO Overview 3.0, section 3.2.2). The Response, as well as the Panel’s own limited, independent Internet searches, reveal that there are many third parties unrelated to the Complainant who make use of the terms “ecosaver” or “ecosavers”. The Complainant has not provided evidence showing its reputation and the extent of its business.
Furthermore, there is no evidence that the Complainant’s mark has been used or is known at all in the Respondent’s jurisdiction of the Cayman Islands, and there is nothing in the case file directly indicating that the Respondent was aware or should have been aware of, or targeted the Complainant. Yes, the Respondent offered the disputed Domain Name to the Complainant for sale after the Complainant lodged the Complaint. However, based on the evidence, the Respondent had not done anything up until that point to offer it to the Complainant, or to target the Complainant, in the intervening four years since the Respondent acquired the disputed Domain Name. In light of the absence of any even circumstantial evidence of targeting, the descriptive nature of the disputed Domain Name, and the widespread use by third parties of corresponding terms, the Respondent’s version that he intended to use the disputed Domain Name for a bona fide environmentally friendly business offering, consistent with the descriptive meaning of the disputed Domain Name, is at least as plausible as the Complainant’s version that the Respondent acted in bad faith to target the Complainant.
Complaint Denied
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Here, the Panelist zeroed in on what is the essence of the UDRP, which is “the aim of the Respondent in acquiring the disputed domain name. In other words, targeting: “The evidence in the case file as presented does not indicate that the Respondent’s aim in acquiring the disputed domain name was to profit from or exploit the Complainant’s trade mark, for the following reasons.” That is fundamentally, the yard stick by which a Panel must judge the Respondent in the UDRP. Where the evidence shows that the Complainant was targeted, bad faith registration and use may be found. But where there is no evidence of targeting, no bad faith is likely to exist.
When it comes to terms which are not particularly distinctive or unique, such as “ecosavers”, a Panelist must naturally wonder whether the Complainant was indeed the target or the corresponding domain name was selected by the Respondent merely because it is an attractive term likely used or usable by many people worldwide. The Respondent indeed made this argument and the Panelist verified that this was indeed the case through limited independent research. As the Panelist rightly pointed out, in such circumstances the Complainant is obliged to demonstrate that it is well-known such that it was the likely target, rather than any number of other users of the term worldwide. Otherwise, the Complainant would pick up for free, a domain name that it has as much – or as little – right to as any of the other users of this term worldwide.
Respondent Loses $300 k Domain Matching Invented, Renown and TM’D Crypto Firm
Binance Holdings Limited v. Kirill Zalipaev, WIPO Case No. DAE2023-0008
<binance .ae>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant is a limited company established under English law in the Cayman Islands in September 2017. The Complainant claims both registered and common law rights in the invented mark BINANCE (combination of “binary” and “finance”). The Complainant has over 600 trademark registrations or applications worldwide for BINANCE, BINANCE CHAIN, and BINANCE DEX as word marks or stylized marks in various classes, including UK Trademark (June 8, 2018), and UAE Trademark (April 22, 2021). The Complaint includes evidence that BINANCE achieved recognition as an unregistered mark before the first trademark registration in 2018. Media and financial reports attached to the Complaint indicate that within 180 days of its launch, the BINANCE Exchange had become the largest cryptocurrency exchange in the world by trading volume and users. The disputed Domain Name was acquired by the Respondent on November 13, 2021, in an auction and it appears that it has never been used for an active website.
The Respondent had approached the Complainant on July 12, 2022, and again a year later on June 23, 2023, offering to sell the disputed Domain Name to the Complainant for USD 1,447,000 and USD 1,466,677 respectively. The Complainant alleges that with the knowledge of the Complainant’s reputation and rapid growth trajectory, the Respondent acquired the disputed Domain Name in bad faith and purely for the purpose of squatting on the disputed Domain Name for financial gain. In addition, the Complainant points to the “passive holding” doctrine first articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (Telstra). The Respondent furnishes a copy of an invoice or payment request showing that he purchased the disputed Domain Name through an online auction on November 13, 2021, for USD 300,000.
Held: Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. Trying (twice) to sell the disputed Domain Name to the Complainant cannot be considered a legitimate commercial use or non-commercial fair use, as contemplated by Paragraph 6(c) of the Policy. Further, the Complainant has demonstrated that its BINANCE mark, an invented term, is well-established online and internationally, and one that achieved renown very quickly. The Respondent does not deny that he was aware of this mark in 2021 when he registered the identical domain name. He says only that he did not know the trademark was registered in the UAE, which is not essential to establish the likelihood that he meant to target the Complainant’s well-known, distinctive, and highly successful brand. This probability is reinforced by the fact that the Respondent seems to have paid a large sum for the disputed Domain Name and then proceeded to try to sell it to the Complainant for more than USD 1 million, an amount that exceeds the Respondent’s costs for the acquisition of the disputed Domain Name.
The Policy, paragraph 6(a)(iii) is applicable to the facts and circumstances of this case. The Respondent approached the Complainant about selling the disputed Domain Name for more than USD 1 million, obviously far more than registration costs and several times more even than the large auction price the Respondent paid for it. The Respondent’s emails show that he recognized the value of the disputed Domain Name to the Complainant. From his response, it seems that the Respondent was under the mistaken impression that he was operating in a trademark-free zone, but he was not. Moreover, this is a case that also accords with the rationale of the passive holding decisions, as in Telstra. See WIPO Overview, section 3.3. The Respondent has not used the disputed Domain Name for a website, but given the distinctiveness and renown of the Complainant’s mark, it is hard to imagine a plausible legitimate use for the disputed Domain Name, and the Respondent has not offered one. The Panel finds that the Respondent both registered and used the disputed Domain Name in bad faith, and either for the Complainant to prevail under the third element of the .ae Policy.
Transfer
Complainants’ Counsel: Bird & Bird ATMD LLP, Singapore
Respondents’ Counsel: Self-represented
Case Comment by Newsletter Editor, Ankur Raheja: We reviewed the matter of <tractus .com> in Digest Vol 4.2 in the context of the ‘Telstra .com’ decision and pointed out that the ‘Telstra Doctrine is narrow in scope’.
In contrast, this matter of <binance .ae> is a good example of circumstances where the ‘Telstra Doctrine’ can be properly applied. Herein, the Panel points out “Given the distinctiveness and renown of the Complainant’s mark, it is hard to imagine a plausible legitimate use for the disputed Domain Name”. The registrant has no intention to put the Domain Name to any use but was holding the Domain Name passively for the purpose of selling it to the Complainant, i.e. the trademark owner – who was the only conceivable lawful user of the Domain Name.
US Federal Statutory Entity Abused UDRP
<ucrregistration .com>
Panelists: Mr. Alan L. Limbury (Chair), Ms. Kateryna Oliinyk and Mr. Charles Kuechenmeister
Brief Facts: The Complainant owns the US trademark for UCR UNIFIED CARRIER REGISTRATION PLAN and Design (registered on February 6, 2018). The Complainant also claims earlier common law trademark rights in the marks UCR and UNIFIED CARRIER REGISTRATION PLAN based upon extensive and long-standing use, recognition, and promotional advertising since the UCR Act was enacted in 2005. The Complainant advertises the UCR registration services on its website <plan .ucr .gov>. The disputed Domain Name was registered by the Respondent on November 16, 2010, and is used in connection with the Respondent’s motor carrier permitting services. The Complainant alleges that the Respondent registered and is using the disputed Domain Name to suggest an affiliation with the Complainant and to divert internet users searching for the Complainant’s website.
The Respondent contends that this proceeding was filed in a malicious and bad faith attempt to deprive Respondent of her domain name that she has used in connection with her motor carrier permitting services for more than thirteen (13) years. In the transport context, “UCR” is ubiquitous shorthand for “Unified Carrier Registration,” a clear and universally understood reference to the federally created motor carrier registration system. The Complainant fraudulently suggests that the Respondent is a competitor infringing on its alleged trademark rights when it is simply impossible for a for-profit business to compete with an interstate compact of state governments. In addition, the state of New Jersey granted Respondent the right to use the doing business as (dba) name of “UCR Registration,” which directly corresponds to the disputed Domain Name and reflects and affirms Respondent’s trademark rights therein.
The Respondent further contends that “UCR” clearly and unequivocally does not and cannot itself carry any source-identifying significance and that the Complainant simply cannot claim exclusive trademark rights in “UCR”, which is in wide third-party use. The Respondent annexes correspondence showing that the Complainant was aware in 2011 of the Respondent’s business as a truck permit company, offering UCR filing services for motor carriers and further provides evidence as to cancellation proceedings initiated against the Complainant’s trademark after it filed an amended Complaint. In its Reply to the Response, the Complainant states that it is improper for the Respondent to rely on a cancellation proceeding filed 13 days after the Complainant filed its Amended Complaint. The Complainant’s mark has not been cancelled and it holds a valid federal trademark registration.
Respondent’s representative sought a stay of this proceeding pending the disposition of a pending cancellation action in relation to Complainant’s trademark registration. Complainant does not consent to a stay.
Held: The Complainant, Unified Carrier Registration Plan, is the organization of State, Federal and industry representatives in the United States responsible for developing, implementing and administering the “UCR Agreement”, under which motor carriers involved in interstate commerce are required to register and pay annual fees based on fleet size to supplement funding for state highway motor carrier registration and safety programs. The Panel notes that “UCR” is used as an abbreviation for “Unified Carrier Registration” in the statutory definitions of “Unified Carrier Registration Agreement” and “Unified Carrier Registration Plan”. “UCR” is regarded in the industry as an abbreviation and does not have source identification significance. Further, in its application to register its stylized design mark, Complainant disclaimed the words UNIFIED CARRIER REGISTRATION PLAN apart from the mark as shown. The Panel is not satisfied that the Complainant has common law trademark rights in either “UCR” or “UNIFIED CARRIER REGISTRATION PLAN”.
The Panel accepts that, through registration with the USPTO, the Complainant acquired rights in the stylized design mark. It would undermine the object and effect of the Policy if a Respondent could avoid a decision against it, merely by initiating invalidity proceedings. Ownership of a nationally or regionally registered trademark serves as prima facie evidence that the Complainant has trademark rights for the purposes of standing to file this Complaint. In the circumstances, the Panel does not consider it necessary to suspend or terminate the present UDRP proceeding and finds it appropriate to proceed to issue a decision on the merits on the assumption that the Registered Mark is currently valid and based on the assessment of confusing similarity between the disputed domain name and the Registered Mark, the Panel is prepared to proceed on the basis that the Respondent’s <ucrregistration.com> domain name is confusingly similar to the undisclaimed “UCR” element of Complainant’s Registered Mark, only differing by the addition of the word “registration”, which is insufficient to distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
According to the Panel’s review of Complainant’s published Handbook which provides information about its program, it has been established that an entity subject to UCR may engage a third party to perform UCR registration and pay UCR fees. Such arrangements may be subject to the rules of individual participating states. The UCR program does not regulate the fees a private party may charge a registrant for such a service. Thus, it is inevitable that such service providers would refer to the UCR name as the respective services are not readily identifiable without the use of the UCR name. The Panel finds these circumstances to be insufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent.
The Panel also finds that before any notice to the Respondent of the dispute, the Respondent has used the domain name in connection with a bona fide offering of services and that the Respondent’s business has been commonly known by the <ucrregistration .com> domain name. Because the domain name was registered several years before Complainant’s claimed first use of its registered stylized design mark and because, as the Panel has found, the Complainant has not shown that it has common law rights in either “UCR” or “UNIFIED CARRIER REGISTRATION PLAN”, the Panel finds that the Respondent could not have been aware of the Complainant’s Registered Mark when she registered the disputed Domain Name and did not do so in bad faith. Further, the Respondent’s use of the domain name has been for a legitimate purpose and has remained unchanged since the registration of the Complainant’s stylized design mark. The Panel finds that such use is not in bad faith.
RDNH: As to Complainant’s asserted common law trademark rights, the evidence before the Panel clearly shows that, prior to the filing of its initial Complaint in this proceeding, Complainant, Unified Carrier Registration Plan, established under a statute which uses “UCR” as an abbreviation for Unified Carrier Registration in the definition of the Complainant, was well aware that it has no common law trademark rights in that abbreviation, nor in its combination with the descriptive word “registration”, as its outside Counsel so advised the Complainant in 2022. The Panel notes that the Complainant’s website at <plan .ucr .gov/about-ucr> uses “UCR” as an abbreviation.
Although the identity of the Respondent was not disclosed by the Registrar until after the filing of the Complaint, it is clear that the Complainant had long been aware of the legitimate services provided by the Respondent and others in the industry, since those services involve payments to the Complainant on behalf of their customers, a service expressly recognized by the Complainant as permissible in the UCR HANDBOOK, approved by the Board of Directors of Complainant, effective August 11, 2022, available on the Complainant’s website.
Nevertheless, the Complainant proceeded to file its Amended Complaint with full knowledge of the Respondent’s rights and legitimate interests in the domain name. Having regard to all the circumstances of this case, the Panel finds that both the Complaint and the Amended Complaint were brought in bad faith and that each constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Ashley M. Robinson of Bradley Arant Boult Cummings LLP, USA
Respondents’ Counsel: Bradford C. Craig of Blank Rome LLP, USA
Case Comment by ICA General Counsel, Zak Muscovitch:
If you want to see a Panel really earn its fees, read this entire case. Here, the three-person Panel had to deal with numerous issues and navigate a complex set of procedural steps, facts and legal issues. Ultimately, the Panel came to the right and only conclusion in this case. Surprisingly, a US Federal governmental entity created by statute, abused the UDRP by bringing this case in bad faith. Moreover, the Complainant’s own actions prompted a cancellation proceeding to be brought by a trade association which filed an affidavit in the UDRP proceeding. We will keep an eye out for the outcome of that.
