No Place for Constructive Notice in UDRP
Once again, a Complainant has erroneously relied on “constructive notice”. The Panel properly dismissed this allegation, in part relying upon Gerald Levine’s treatise (“Clash”). As noted in UDRP Perspectives at 3.4, there is no place for the concept of “constructive knowledge” of trademarks under the Policy. In The Way International Inc. v. Diamond Peters, WIPO D2003-0264, which Gerald Levine describes (at Page 575 of Clash) as what “has become the consensus view.” Continue reading the commentary…
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We hope you will enjoy this edition of the Digest (vol. 5.1) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ No Place for Constructive Notice in UDRP (victorycapital .com *with commentary)
‣ Restauranteur’s Dispute With Web Developer is Contractual, Not Cybersquatting (lovetillydevine .com, lovetillygroup .com and ragazziwineandpasta .com *with commentary)
‣ Is Spider Confusingly Similar to Sp5der? (spidershoodies .com *with commentary)
‣ Complaint Lacks Adequate Evidence (snet .one *with commentary)
‣ Respondent Registered Domain Name for “Future Collaboration” with IBM (ibmtechnology .ai)
No Place for Constructive Notice in UDRP
Victory Capital Management Inc. v. Erik Moresco, NAF Claim Number: FA2411002127058
<victorycapital .com>
Panelist: Mr. Steven M. Levy
Brief Facts: The Complainant is a diversified global investment management firm, that offers a wide array of investment products, including mutual funds, and ETFs. The Complainant is headquartered in San Antonio, Texas, U.S.A. and it has offices and investment professionals around the world, including in the United Kingdom. Since at least as early as 2001, the Complainant has provided its services under the trademarks VICTORY CAPITAL MANAGEMENT (March 11, 2003), VICTORY CAPITAL (August 16, 2016), and other registered marks incorporating these terms. Furthermore, the Complainant operates its website at the address <vcm .com>. The disputed Domain Name was registered on May 5, 1999, and currently resolves to a website displaying the message “Site Offline”.
The Complainant argues that “on information and belief, Respondent acquired the VictoryCapital .com domain name in or around May 2021 using a domain name broker”. The Complainant further alleges that the disputed Domain Name was registered in bad faith as the Respondent was on constructive notice of the Complainant’s rights in the VICTORY CAPITAL Marks. The Domain Name is also used in bad faith based on the Respondent’s offer to sell the Domain Name to the Complainant for an excessive price, the Respondent’s use of the domain name to disrupt the Complainant’s business, and the Respondent’s attempt to attract visitors to its website for commercial gain through confusion with the Complainant’s marks. The Respondent failed to submit a Response in this proceeding.
Held: It is now well accepted that UDRP Panels decline to find bad faith as a result of constructive knowledge except under very specific circumstances that do not exist in the present case. See Levine, Gerald M. The Clash of Trademarks and Domain Names on the Internet, Volume 1, 2024, pages 574 (“In the earliest decisions, panelists appeared willing to accept constructive notice if the parties were located in the same jurisdiction…”). However, over the 25-year existence of the UDRP, a consensus has emerged that constructive notice of trademark rights is typically not sufficient to demonstrate bad faith targeting of a complainant’s mark by a disputed Domain Name. Here, the Panel notes that the Respondent appears to be located in London, England and there is no evidence that its activities are specifically directed to commerce in the United States of America, so it may not be subject to the constructive notice provisions of United States law.
Moreover, the Panel notes that the original registration of the disputed Domain Name appears to predate the existence of the Complainant’s trademark rights and there is no evidence of the Respondent’s later acquisition of the domain name. Under such circumstances, a complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing that the disputed “domain name has been registered and is being used in bad faith” and it is usually not possible for a registrant to target a then non-existent trademark. Although not essential to the ultimate decision in this case, the Panel notes additional shortcomings in the Complainant’s pleadings such as its lack of evidence to support its claim that it services customers in the U.K. and the Respondent’s offer to transfer the domain name for more than documented costs. It appears that the Complainant was the one who started the purchase discussions via a broker, who conveyed a target price of USD $50,000.
Complaint Denied
Complainant’s Counsel: Carrie A. Shufflebarger of Thompson Hine, LLP, Ohio, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Once again, a Complainant has erroneously relied on “constructive notice”. The Panel properly dismissed this allegation, in part relying upon Gerald Levine’s treatise (“Clash”). As noted in UDRP Perspectives at 3.4, there is no place for the concept of “constructive knowledge” of trademarks under the Policy. In The Way International Inc. v. Diamond Peters, WIPO D2003-0264, which Gerald Levine describes (at Page 575 of Clash) as what “has become the consensus view”. The Panel (Tony Willoughby) stated:
“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.
The essence of the complaint is an allegation of bad faith, bad faith targeted at Complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of Complainant, the trade mark owner. If the registrant is unaware of the existence of the trade mark owner, how can he sensibly be regarded as having any bad faith intentions directed at Complainant?
If the existence of a trademark registration was sufficient to give Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly.”
In Advanced Drivers v. MDNH Inc., NAF Claim No. FA0509000567038, the Panel (David Bernstein, Paul DeCicco, Carolyn Marks Johnson) stated:
[I]f Complainant’s position were adopted, it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously-registered trademark, since constructive notice could be found in every such case. Such a result would be inconsistent with both the letter and the spirit of the policy, which requires actual bad faith. [emphasis added]
As noted in Gerald Levine’s Clash at page 573 (cited by the Panelist in the present case), “in the absence of evidence to the contrary, it cannot be presumed that because there is a correspondence between the mark and the domain name that respondent had the requisite knowledge for liability.” 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.
On a different note, Panelist Steve Levy does something in this case as he has in others which he has written, which is a great practice and which can be emulated by other Panelists. Where he sees a shortcoming in the evidence or argument, he will often point it out so that the decision serves as a learning exercise for the benefit of counsel. Here for example, he noted that:
Although not essential to the ultimate decision in this case, the Panel notes additional shortcomings in Complainant’s pleadings such as its lack of evidence to support its claim that it “service customers … around the world, including in the United Kingdom” and its assertion that “Respondent has registered the VictoryCapital.com domain name in bad faith for the purpose of disrupting the business of a competitor…” While passive holding of a domain name may indicate bad faith, the analysis is heavily dependent on the reputational scope of an asserted trademark as well as other factors. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The totality of Complainant’s evidence related to the reputation of its claimed marks is a single screenshot from its own <vcm .com> website which displays the mark VICTORY CAPITAL but makes no mention of any activities or customers outside of the United States of America. This does not adequately demonstrate the scope of the mark’s reputation with the public, either domestically or internationally.
Evidence of brand recognition and the scope of a trademark’s reputation is not supplied by trademark registrations which only speak to the existence of rights in a mark. Rather, it often consists of examples of such things as advertising, social media pages (including consumer comments), news articles, sponsorships, trade show participation, awards and recognition, consumer surveys, and the like.”
Restauranteur’s Dispute With Web Developer is Contractual, Not Cybersquatting
LTG Support Pty Ltd. v. Rob Allison, WIPO Case No. D2024-4520
<lovetillydevine .com>, <lovetillygroup .com> and, <ragazziwineandpasta .com>
Panelist: Mr. John Swinson
Brief Facts: The Complainant operates several restaurants in Australia and has used the disputed Domain Names for several years for these restaurants. On June 5, 2024, the Complainant filed two trademark applications including LOVE TILLY, and LOVE TILLY GROUP, which are pending registration. On June 5, 2024, a company called “Matestwo Pty Ltd” filed an Australian trademark application for LOVE TILLY DEVINE and another Company called “Ciao Ragazzi Pty Ltd” filed two Australian trademark applications for RAGAZZI WINE AND PASTA and RAGAZZI WINE PASTA in a fancy font. The Respondent is a director with a company called Calibre Creative and the website for Calibre Creative states “Bespoke Digital Development. New Site Coming Soon”. The disputed Domain Names were registered on November 29, 2009, July 7, 2019, and July 20, 2020 respectively.
The Complainant alleges that it engaged the Respondent of Calibre Creative to register domain names for Love Tilly Group entities. Since April 2024, the Complainant has been unable to access the disputed Domain Names. The Complainant has made multiple attempts to contact Calibre Creative via phone, email, and text message regarding this matter, all of which have been completely ignored. The Complainant further alleges that the conduct of the Respondent in deliberately refusing to communicate with the Complainant to transfer ownership of the disputed Domain Names to the Complainant indicates bad faith. The Respondent did not reply to the Complainant’s contentions. However, it appears that the Complainant is using one of the disputed Domain Names for its email address. The disputed Domain Names resolve to websites for restaurants. At least one of these websites may advertise a restaurant operated by the Complainant.
Held: An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Names was to specifically profit from or exploit the Complainant’s trademark. There is no evidence of any contract or arrangement between the Complainant and the Respondent, there is no evidence of who created the websites at the disputed Domain Names (or when they were created), there is no evidence of when it is alleged that the Respondent took control of the disputed Domain Names or how or when he accomplished this, there is no evidence of any communication by the Complainant with the Respondent prior to 2024, and there is no evidence of any communications from the Respondent at any time.
In short, there is no evidence that the Respondent registered the disputed Domain Name with the intention of infringing any rights of the Complainant or any other party, and on the contrary, the Panel finds that most likely, on the Complainant’s case, the Respondent registered the disputed Domain Names with the legitimate intention of using the disputed Domain Names in connection with the operation of the Complainant’s websites for the Complainant. Moreover, the Complaint did not rely upon any of the past 25 years of jurisprudence under the Policy or make arguments that are consistent with the Policy. Asserting that the Respondent refuses to communicate with the Complainant is not, of itself, evidence of bad faith use or registration of the disputed Domain Names under the Policy.
This does not appear to be a case of cybersquatting, but a contractual dispute. The Policy is not designed for such disputes.
Complaint Denied
Complainant’s Counsel: Mitry Lawyers, Australia
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel in this case notably stated that “an asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence”. As noted in UDRP Perspectives at 0.2, in assessing whether a party’s allegations have met the balance of probabilities standard, the Panel must rely on evidence. It must disregard conclusory allegations unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants and respondents could simply claim anything without any proof. For this reason, Panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence, as the Panel to its credit, did in this case.
Is Spider Confusingly Similar to Sp5der?
King Spider LLC v. Zahid KW, CAC Case No. CAC-UDRP-106996
<spidershoodies .com>
Panelist: Ms. Victoria McEvedy
Brief Facts: The Complainant, King Spider LLC., was founded in 2019 and its official website is at <kingspider .co.>. Its website says “SP5DER is a lifestyle brand based out of Los Angeles by way of Atlanta. The brand is a visual commentary on the pulse of the south… KingSpider .co is the only official website of the Sp5der brand. Beware of the many websites selling inauthentic Sp5der products.” The Complainant has a US-registered figurative mark, “SP5DER”, registered in int. class 25, granted on 22 March 2022. The Registrar has confirmed that the disputed Domain Name was registered on 29 June 2024 and that the Respondent is Zahid KW of Tennessee, USA.
The Panel visited the disputed Domain Name on 31 December 2024 and it resolved to <sp5dershoodies .us> with an address in Barcelona Spain. The Complainant contends that the requirements of the Policy have been met and that the disputed Domain Name should be transferred to it. The Respondent did not file a Response.
Held: As the WIPO overview 3.0 explains, the test at this first limb of the Policy is “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…” Here for the similarity analysis, we are comparing SP5DER and spidershoodies. However, the term “hoodies” is generic or descriptive and not strictly relevant to the analysis so the focus is on SP5DER and spider. They are visually similar, the only difference being the character 5 instead of i. One can distinguish between them. Both use the common word. They are conceptually similar. They are phonetically similar. The Panel finds the Complainant has rights in a name or mark that is confusingly similar to the disputed Domain Name.
On the face of it, as Spider is a common term, others will have a legitimate interest in using it for its informational value. While trade marks are badges of origin that enable the public to identify the goods and services of a trader so they can make a repeat purchase safe in the knowledge that the quality should be the same the second time around, an ordinary word or number cannot function in that way for obvious reasons. That is, unless they have what we call “acquired distinctiveness” or secondary meaning so that it is the brand that the relevant public bring to mind and not the common word or dictionary term. In their original meaning, they remain the property of and available to, all. This forms the basis of the prohibition on descriptive and generic marks which recognises that many traders want to use descriptive terms for their informational values and that no one trader should be able to monopolise them.
So here the issue is whether the Respondent is fairly using the word in and for its original meaning, or whether he is unfairly free-riding on and leveraging the secondary meaning – and so the goodwill and reputation of the Complainant. The evidence suggests that in this case, it is very much the latter. The evidence of the site to which the disputed Domain Name was resolved, showed that the stylised version with the “5” instead of the “I” was used on the website itself and it stated that it was the Official Site. The goods are the same. The Panel visited the disputed Domain Name on 31 December 2024 and it resolved to <sp5dershoodies .us>. Therefore the “5” shows in the domain and it was also used on the page in curved form – exactly as registered by the Complainant and also in a heading on the top of the page. This is not a fair and legitimate use. Nor has the Respondent come forward to claim that it is. The Panel finds the Complainant has made out this limb of the Policy. For the same reasons, the Panel finds that the disputed Domain Name was registered and is used in Bad Faith.
Transfer
Complainant’s Counsel: Jonathan Walker (IP Law and Justice)
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel’s detailed analysis of the ‘confusingly similar’ test is a good reminder of how to approach this issue. The Panel didn’t necessarily need to go to this length to reach its conclusion, however the diligence in which the Panel nevertheless did so demonstrates the seriousness in which the Panel approaches its work. Moreover, it is important to remember that decisions are chiefly written for the losing party and therefore a good explanation of why the Panel reaches its conclusion serves justice by equipping the losing party with an understanding of why it lost the case, not just that it did lose the case.
Complaint Lacks Adequate Evidence
<snet .one>
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Complainant is a state-owned Luxembourgish company incorporated in 1989, although related companies were established in 1856. The Complainant uses the trademark SPUERKEESS for banking, insurance, and financial services. It has physical branches in Luxembourg but alleges that it also offers banking services internationally, although it provides no allegations or evidence detailing these international offerings. The Complainant uses the trademark S-NET to brand its online access services, including its mobile application. These services are offered on the Complainant’s website and via the domain name <bcee .snet .lu>. The Complainant owns the following trademark registrations for the S-NET Mark: Benelux Trademark Registration (August 1, 1999); European Union Trademark (July 1, 2012); and United Kingdom Trademark (July 1, 2012). The Complainant argues that its S-NET Mark “is generally known by the public in Luxembourg and refers to the banking app of” Complainant. In support of this contention, the Complainant refers the Panel to a Wikipedia about the bank and to the online sign-in page for the “S-Net and S-Net Mobile.”
The disputed Domain Name was registered on October 11, 2024, and currently resolves to a webpage stating that the domain is parked free by the Registrar. Although the Respondent did not submit a formal response, the Respondent submitted two emails that generally deny the allegations of likely confusion and bad faith. The Respondent mainly contends that “Souzanet Sistemas Ltda has been operating in the educational sector for nearly 30 years, offering technological solutions to schools and educational institutions in Brazil.” Although the website is not yet operational, the Respondent intended to use the disputed Domain Name “exclusively as a technical resource to generate shortened redirect URLs.” The disputed Domain Name “will not host its own website nor be associated with email addresses or any other means of contact. […] The domain will be used solely for technical purposes, eliminating any possibility of confusion with the registered trademark S-NET.” “[W]e have decided not to use the domain ‘snet .one’.” The disputed Domain Name is available for purchase via GoDaddy.
Held: No evidence in this record would have alerted the Respondent that it should conduct a further investigation to determine whether the Complainant had relevant rights. There is no evidence that the mark was so well known that the Respondent was wilfully blind to the Complainant’s rights. Further, the Complainant’s proffered search evidence an excerpt from the result of an online search is not persuasive. It was the Complainant’s burden to offer evidence to support its contention that an online search would have informed of the Complainant’s rights, but there are several flaws in the evidence that the Complainant submitted. The Complainant does not include the entire search result, or even several pages from the result, but instead offers an excerpt isolating the single result that mentions the mark. As a consequence, the evidence does not support the Complainant’s claim that its mark would be ranked highly in a “simple Google search.”
The evidence also fails to show whether the search identifies third parties who also use S-NET as a trademark or otherwise dilute the Complainant’s rights. In addition, the Complainant does not tell the Panel what search terms it used. The disputed Domain Name is based on “snet,” not “s-net”. Even if the Panel assumes that the Respondent should have conducted an online search, he would probably have searched for “snet” without a hyphen. The Complainant has also failed to prove that the Respondent has used the disputed Domain Name in bad faith. The Complainant speculates that there is a risk that the Respondent will use the disputed Domain Name as part of a phishing scheme, but offers no evidence in support of the allegation. The Respondent denies any such intent, stating that “the domain ‘snet .one’ will not host its own website nor be associated with email addresses or any other means of contact.” Given the absence of any evidence undermining this denial, the Panel finds that the balance of probabilities favors the Respondent.
Complaint Denied
Complainant’s Counsel: Office Freylinger S.A., Luxembourg
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This decision offers an excellent analysis of the facts and law and would be of benefit to all counsel and Panelists to review.
Beyond the Panel’s excellent and detailed analysis of the evidence or lack thereof, supplied by the Complainant in this case, I particularly appreciate how the Panel approached the issue of reputation. The key to demonstrating bad faith registration is targeting. A Complainant however, will generally be unable to prove targeting without demonstrating its reputation, as it is a trademark’s reputation that allows it to be sufficiently known for a Respondent to have targeted it. The degree of reputation required to be demonstrated will vary from case to case but in each case it is a requirement in order to prove targeting.
The mere existence of a trademark alone is insufficient for a Panel to conclude that a Complainant’s trademark has any particular reputation. Constructive notice of a trademark generally has no place in the UDRP and therefore a Complainant must prove not only that it has a trademark, but that its trademark had a reputation such that the Respondent was likely aware of it and targeted it.
Respondent Registered Domain Name for “Future Collaboration” with IBM
<ibmtechnology .ai>
Panelist: Mr. Wilson Pinheiro Jabur
Brief Facts: The Complainant was incorporated on June 16, 1911, as the amalgamation of three previously existing companies, having officially become International Business Machines on February 14, 1924, and offering products under the trademark IBM ever since, initially office and research equipment such as punch machines, calculating machines, clocks, and scales, and presently information technology related goods and services. The Complainant is the owner of trademark registrations for IBM in 131 countries around the world. Previous UDRP Panels recognized that “the Complainant’s trademark has a strong reputation and is widely known throughout the world.” The disputed Domain Name was registered on January 21, 2024, and presently it resolves to a registrar-parked webpage.
The Complainant alleges that its IBM trademark is well-known internationally, being the Complainant a company that offers technological products and services, including artificial intelligence solutions, and consumers are likely to believe that the disputed Domain Name is associated with the Complainant; an association that could be extremely harmful should the email server configured on the disputed Domain Name be used in connection with fraudulent purposes. Furthermore, bad faith also arises in view of the passive holding of the disputed Domain Name and in the fact that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding.
The Respondent did not formally reply to the Complainant’s contentions but sent email communications to the Center initially asking for clarifications and requesting a call to discuss the situation, and later stated that they had reserved the disputed domain with a genuine desire to study the opportunity for a collaborative relationship with the Complainant to develop innovative solutions in the field of artificial intelligence and concluding that they were agreeable to the transfer the disputed Domain Name to the Complainant. The Respondent sent a further email communication to the Center on December 18, 2024, indicating their willingness to transfer the disputed Domain Name, proposing the sum of USD $500 in order to cover the registration costs.
Held: The absence of any trademarks or trade names registered by the Respondent corresponding to the disputed Domain Name, or any possible link between the Respondent and the disputed Domain Name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed Domain Name, corroborate the absence of a right or legitimate interest. As seen above, the Respondent has indeed stated that they had reserved the disputed domain in anticipation of a future collaboration, and being agreeable to the transfer of the disputed Domain Name to the Complainant. Moreover, the Panel finds that the nature of the disputed Domain Name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed Domain Name.
The Panel notes that for paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The registration and use of the disputed Domain Name in bad faith can be found in the present case given the following circumstances: (i) the well-known status of the Complainant’s distinctive trademark; (ii) the present inactive use of the disputed Domain Name; (iii) the lack of reply to the cease-and-desist letter sent before this procedure; and (iv) the offer of the disputed Domain Name for sale for USD $4500, an amount likely in excess of out-of-pocket costs incurred in the registration of the disputed Domain Name. The Panel finds that the Complainant has established the third element of the Policy.
Transfer
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.