Panel: Four-letter .COMS May Be Inherently Valuable
It is notable that the Panelist rightly recognized the inherent value of four-letter .com domain names. Time and time again, UDRP Panels have ruled in favor of respondents when it comes to domain names corresponding to three-letter domain names, including by domain name investors. As explained in SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566), as early as the year 2000, it was decided in Philippe Tenenhaus v. Telepathy, Inc., NAF Claim No. 94355, that Complainant trademark owner did not have exclusive rights to the acronym DAF, as many other parties also used it. Read commentary.
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We hope you will enjoy this edition of the Digest (vol. 4.26), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Four-letter .COMS May Be Inherently Valuable (ahnu .com *with commentary)
‣ Impersonation and Bad Faith in Free Speech and Criticism Cases (drmarkfuller .com *with commentary)
‣ Panel: Case Best Characterized as a Trademark Dispute, Not Cybersquatting (datamotion .ai *with commentary)
‣ Hotel Adopts Geographic Descriptive Term as Brand, Loses UDRP (romazzino .com *with commentary)
‣ Complainant Seeks to “Extend its Business Operations Into Americas”, Tried Buying Domain Name 11 Times (liquidline .com *with commentary)
‣ Respondent Uses Complainant’s Name “Without Permission” (hedaryslasvegas .com *with commentary)
Panel: Four-letter .COMS May Be Inherently Valuable
Deckers Outdoor Corporation v. Doman Manager (Domain Manager), WIPO Case No. D2024-1282
<ahnu .com>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Complainant, founded in 1973, is a footwear designer and distributor and has a large portfolio of footwear brands that include UGG, Teva, Sanuk, Hoka, Koolaburra and Anhu. The Complainant purchased the AHNU brand in 2009; discontinued production in 2018; and relaunched in 2024 as a “super sneaker brand that transcends functionality”. The Complainant owns several trademarks for AHNU including US registration, dated February 26, 2008. The disputed Domain Name was owned by the Complainant, but it allowed it to lapse in 2021. The Respondent registered it on June 8, 2021, and it redirects to a website which indicates it is for sale for USD $10,000. The Complainant has pursuant to the Procedural Order provided evidence as to the value of sales but says the figures concerned are confidential. Sales in 2015 were very substantial and commensurate with a major international business. Sales in subsequent years declined to near zero from 2019 to 2021.
The Complainant asserts that in view of its sales and the continuous goodwill associated with the popularity of the Complainant’s AHNU brand among consumers, it is clear that the Respondent registered the disputed Domain Name with the Complainant in mind. The Complainant further asserts that after the Complainant raised a serial cybersquatting argument in the Complaint, the Respondent deleted the domain name <paylesshoestore .com> (which the Complainant says is targeting another trademark owner from the footwear industry – the owner of the PAYLESS SHOES trademark). The Complainant further adds this fact also reinforces that the Respondent knew about the Complaint and chose not to respond.
Held: It is generally known that four-letter domain names in the “.com” gTLD are inherently valuable and that all such names (there are 456,976 variations) are registered. It follows that when this type of domain name lapses and becomes available it may well be inherently valuable irrespective of what its previous usage may have been. “Ahnu” is simply four letters of the alphabet. Those letters when conjoined in this way do not form an immediately recognizable word – but they can be an acronym. The Panel would not be surprised by a lapsed four-letter domain name being acquired immediately when it became available almost irrespective of whatever its previous usage may have been.
The present case is not as straightforward because the disputed Domain Name is likely to have inherent value. Further, even if the Respondent had taken steps at the time he registered the disputed Domain Name to enquire as to the previous registrant’s position the result may or may not have led him to the conclusion that the Complainant had an ongoing interest in the term “ahnu”. The Complainant produces as an exhibit the Google search in question. However, this search appears to have been carried out on March 16, 2024 (i.e., after the Complainant had relaunched its AHNU brand) and the Panel infers was likely carried out in the United States. It does not assist in determining what results the Respondent would have obtained had he carried out such a search in 2021 in Brazil.
The Complainant also relies on what it says is the Respondent’s conduct in relation to another domain name <paylesshoestore .com>. The Panel does not think this evidence is sufficiently clear to allow a conclusion adverse to the Respondent to be drawn. The Complainant further states the disputed Domain Name has been offered for sale. That is correct. It also says the disputed Domain Name has at one point redirected to a parking page with sponsored links. The evidence on this is not clear – the relevant material shows the outline of a parking page but it displays no links. Taking all of the above into account, the Panel is not satisfied that the Complainant has established that the disputed Domain Name was registered and used in bad faith.
Complaint Denied
Complainants’ Counsel: Markmonitor, United States
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
It is notable that the Panelist rightly recognized the inherent value of four-letter .com domain names. Time and time again, UDRP Panels have ruled in favor of respondents when it comes to domain names corresponding to three-letter domain names, including by domain name investors. As explained in SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566), as early as the year 2000, it was decided in Philippe Tenenhaus v. Telepathy, Inc., NAF Claim No. 94355, that Complainant trademark owner did not have exclusive rights to the acronym DAF, as many other parties also used it. Likewise, in 2000 in Kis v. Anything.com Ltd., WIPO Case No. D2000-0770, the legitimate interest in short letter domain names was confirmed by that panel’s statement that:
“All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names …Respondent appears to have selected the Domain Name ‘kis.com’ because of its length …rather than because it corresponds to Complainant’s trademark – indeed, it seems unlikely that Respondent was even aware of Complainant’s trademark when it selected the domain name.”
In Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Mar. 9, 2007), the Panel concluded that Respondent had rights or legitimate interests in the <fmcu.com> domain name because it was a ‘generic’ domain name reseller who owned numerous four-letter domain names registered at the same time.
Like three-letter .com domain names, four-letter .com domain names often have an inherent value, though generally less so as the supply is far greater and they are often considered to be less desirable. Short, four-letter .com domain name are regularly bought and sold on the open market and fetch relatively high sale prices due to their attractiveness to a very wide range of prospective purchasers. For example, NameBio tracks public sales of inter alia, four-letter .com domain names and the report shows that<sati .com> sold for USD $100k in 2017, <deso .com> for USD $220k in 2022, and <betu .com> for USD $180 in 2021, amongst many others. On the other hand, combinations with lower perceived appeal such as <xviq .com> sold for $258 and <vlcb .com> sold for $119.
As noted by domain name investor, Nat Cohen:
Not all LLLL.com are alike. Their different characteristics greatly affect the likelihood of a high-dollar resale and therefore how they are valued by domain name investors.
A pronounceable LLLL.com, particularly one with a Consonant-Vowel-Consonant-Vowel pattern, referred to as CVCV, will fetch a premium.
CVCV domain names are short, pronounceable, distinctive and have demonstrable appeal, with Roku and Hulu examples of non-word CVCV terms that have been adopted as major brands. This is reflected in sales prices for CVCV domain names. Vivo.com was reportedly sold for $2.1 million many years ago. More recently bodo.com sold for $200,000, deso.com for $220,000, and bico.com for $350,000 (https://namebio.com/?s==YTN3gDM4QDN). The potential for achieving similar end-user sales is what drives investor interest in CVCV domain names.
Since LLLL.com domain names frequently serve as acronyms for business names, whether the letters in the LLLL are common or uncommon has a big impact on how the domain name is valued by domain name investors. The more common the letters in the combination, the more likely they will appear in an acronym and therefore the greater the number of companies that can be expected to have an interest in the domain name. LinkedIn shows 982 companies for a search on “RTS” (https://www.linkedin.com/search/results/companies/?keywords=rts), yet only one result for a search on “QXU” (https://www.linkedin.com/search/results/companies/?keywords=qxu). The hypothetical buyer of RTS(.com) – assuming it were an unused domain name available for purchase – therefore starts off with potential interest from hundreds of existing companies not counting any future demand due to start-ups or company rebranding, mergers, etc., while the owner of QXU(.com) should not expect to receive many purchase inquiries.
Although the most frequently appearing letter in English words is “E”, the most common FIRST letter in a word is “S” (https://www3.nd.edu/~busiforc/handouts/cryptography/letterfrequencies.html).
This means that all else being equal, a LLL.com or a LLLL.com with an “S” will be valued far higher than one with a “Q” in the same spot. A very approximate indicator of the relative values of various LLLL.com domain names is that there will be an inverse relationship to the Scrabble point values of the composite letters (https://domainnamewire.com/2023/02/07/using-scrabble-scores-for-domain-name-values/).”
Nevertheless, as the Panelist notes, registering such domain names on a “dropcatch” of expired domain names is not always without some risk. As per the Panelist’s reference to Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540, “where the value of the domain name derives primarily from [the previous registrant’s trademark] 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.” The Panelist correctly concludes that “where a lapsed domain name is registered by a third party the analysis is straightforward if the domain name can only sensibly relate to the previous registrant” [emphasis added]. The Panelist notes that there may be some four-letter domain names where the corresponding brand is so well known such as DIOR or LEGO for example, that there is no conclusion other than the only reasonably conceivable use is in relation to the Complainant, but the Panel was not persuaded that the same principle applies to four letter acronyms generally, and does not consider it applies to “anhu”.
I also appreciate how the Panelist made a very nuanced finding in relation to inquiries or the lack thereof by a Respondent at the time of registration: Even if the Respondent had taken steps at the time he registered the Domain Name to enquire as to the previous registrant’s trademark rights, the result may or may not have led to the conclusion that the Complainant had an ongoing interest in the term “anhu”. This is a very realistic observation since it matters not if a Respondent failed to make inquiries at the time of registration per se. Rather it is only relevant if those inquiries would have resulted in a material realization, i.e. that the Complainant is the only reasonably conceivable user of the domain name. In other words, if a Respondent failed to make such inquiries at the time of registration but subsequent inquiries even as part of responding to a Complaint, e.g. demonstrate that there are multiple users of the term or that the Complainant has weak or non-existent rights, then a Respondent’s failure to make those inquiries prior to the registration isn’t really material.
Impersonation and Bad Faith in Free Speech and Criticism Cases
Dr Mark Fuller v. Host Master, 1337 Services LLC, WIPO Case No. D2024-1114
<drmarkfuller .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant has been registered as a medical practitioner in Australia, since 1982. In May 2023, the Complainant was re-appointed for a further two-year term to the Child Death and Serious Injury Review Committee of the South Australian government. In March 2024, the Complainant was also re-appointed by the Attorney-General of South Australia as a sessional ordinary member of the South Australia Civil and Administrative Tribunal. The Complainant provides evidence that the Complainant practised in private medical practice from the O’Brien Street Practice (Adelaide, South Australia) from February 2011 to March 2024. The disputed Domain Name was created on May 10, 2022, and at the time of the Complaint, it resolved to a website headed “Dr Mark Fuller” and which contained allegations that the Complainant was involved in covering up allegations of child abuse by a senior political adviser to the South Australian government. The Complainant denies the allegations strenuously.
Held: The Complainant does not hold any registered trademarks but, instead, relies on his professional reputation in his own name as an unregistered trademark. In the present case, in addition to his roles on important Government committees and agencies, the Complainant advances evidence that he has practised as a private medical practitioner from 2011 to March this year. The Complainant’s filing also includes testimonials from senior persons, stating their awareness of the Complainant’s practice and confirming his recognized name and reputation among both his peers and the public. In these circumstances, the Panel is prepared to find that the Complainant has sufficient reputation in his name as an identifier of source to qualify as an unregistered trademark for the purposes of the Policy.
The Panel is not in a position to determine the truth or otherwise of the allegations and it is not part of the Panel’s role to make such a determination. So far as can be assessed from the content of the website, the allegations appear to be genuinely held and there is no apparent commercial motive. Even in the case of a genuine and noncommercial criticism site, panels have largely arrived at a consensus around the view that a claim to rights and legitimate interests cannot be sustained where the disputed Domain Name is identical to the relevant source identifier and thus carries too high a risk of user confusion through impersonation. See e.g., Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633.
Accepting that someone who arrived at the website to which the disputed Domain Name resolved would not be likely to consider it was the website of, or authorised by, the Complainant, the Panel nonetheless finds that, as the disputed Domain Name is identical to the Complainant’s unregistered mark, the risk of confusion from the disputed Domain Name itself is sufficient to establish that the Complainant has established the second requirement under the Policy also. Furthermore, the Respondent registered the disputed Domain Name well after the Complainant began using his trademark and, given the content of the website to which the disputed Domain Name resolved, plainly did so with knowledge of the Complainant and his name. Despite sympathy for the position in Dover Downs, supra, the Panel considers it is appropriate to find that the disputed Domain Name has been registered and used in bad faith under the Policy given the high risk that consumers or Internet users will be misled.
Transfer
Complainants’ Counsel: Tasman Wylie, Australia
Respondents’ Counsel: No Response
Case Comment by Panelist, Igor Motsnyi:
Igor is an IP consultant and partner at Motsnyi Legal, <motsnyi .com>, “Linkedin”.
His practice is focused on international trademark matters and domain names, including ccTLDs disputes and the UDRP. Igor has over 22 years of experience in international TM and IP matters.
Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy.
The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.I would highlight the following two aspects of this decision:
- The doctrine of impersonation; and
- Bad faith in free speech/criticism cases
1. UDRP panels often have different views whether use of a domain name for genuine criticism constitutes “a legitimate noncommercial use…”. The Panelist in the <drmarkfuller.com> case found that since the domain name was identical to Complainant’s common law trademark it carried too high a risk of user confusion through impersonation citing as a rationale “Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC”, WIPO Case No. D2019-0633 (“Dover Downs”), thus rejecting Respondent’s legitimate interest.
However, when assessing impersonation UDRP panels may take into account not only the domain name composition but also other factors. This was confirmed by the same panelist who decided “Dover Downs” in a later decision where he noted that “a more nuanced assessment of all the factors is required”, see “Scrum Alliance, LLC v. Contact Privacy Inc. Customer 1247644697 / Matthew Barcomb”, WIPO Case No. D2021-2932. Therefore, the impersonation doctrine in free speech and criticism cases can be a strict one (look at the domain name composition only) or a more nuanced one (consider the domain name composition, website content including any disclaimers/statements on the website, any other measures employed by a domain registrant to avoid confusion, etc.). Besides, a more holistic approach can also be taken in such cases, see e.g. “Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman”, WIPO Case No. D2022-0473 .
It is also worth noting that the Panelist in <drmarkfuller.com> admitted that “someone who arrived at the website to which the disputed domain name resolved would not be likely to consider it was the website of, or authorised by, the Complainant…”.
UDRP legislative history confirms that the Policy was not intended to restrict legitimate free speech use of domain names, see par. 172 of “Final Report of the WIPO Internet Domain Name Process” (WIPO Final Report).
However, is the application of a legitimate non-commercial use defense limited to cases where domain names include “sucks” or any other derogatory/critical terms and are exact match domain names excluded from the defense? The UDRP itself contains no such limitation in 4(c)(iii).
As was pointed out by Zak Muscovitch in one of the previous ICA case comments: “If one is to differentiate exact match domain name used for legitimate noncommercial use, namely criticism, on the basis that they inherently “impersonate” a trademark, then that effectively means the UDRP is being re-written to exclude exact match domain names from the safe harbor provisions of Paragraph 4(c)(iii). And if that had been the intention of the Policy, then wouldn’t the Policy have said so?”
2. Another interesting aspect of this decision is bad faith in cases of criticism and free speech. To the Panelist credit he underlined another aspect of “Dover Downs” that is often overlooked, namely “finding impersonation under the second element does not automatically mean Respondent’s bad faith”.
Yet, the Panelist found Respondent’s bad faith while expressing “considerable sympathy for the view expressed in Dover Downs”. This finding is not surprising given that some previous UDRP panels took the same view and found bad faith in similar circumstances by applying the strict impersonation approach.
Yet, this leaves us to wonder whether the notion of “cybersquatting” or “abusive registrations” (see par. 160 and 161 of WIPO Final Report) includes cases of non-pretextual free speech and criticism or such cases are more suitable for other forums?
This also leads us to another issue: the relationship between the second and the third UDRP elements. Does failure to comply with some test under the second element necessarily result in respondent’s bad faith?
Some panels found in favor of respondents under the third element even when respondents failed under the second element, see e.g. a three-member Panel decision in “Thor Tech Inc. v. Eric Kline”, WIPO Case No. D2023-4275.
“Dover Downs” offers a similar rationale (“impersonation does not always mean bad faith”) and it is worth remembering why “Dover Downs” was a transfer decision: Respondent in “Dover Downs” “offered the Disputed Domain Name for sale and specifically stated his hope that Complainant would “take over” the site”. So, any free speech/criticism arguments in “Dover Downs” were pretextual.
It appears that these issues will continue to arise in future UDRP disputes, and I would be interested to know our readers’ views.
Panel: Case Best Characterized as a Trademark Dispute, Not Cybersquatting
DataMotion, Inc. v. Emi Roberti, Data Motion, WIPO Case No. DAI2024-0035
<datamotion .ai>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant is an American company which provides a platform providing “secure, intelligent data exchange solutions” and has its official website at <datamotion .com> (operating for the last two decades). In addition to its operations in the United States, the Complaint also states that the Complainant has operations in Canada, the United Kingdom, and “Europe” through business relationships with major industry players in these countries. The Complainant owns the United States trademark for DATAMOTION, (registered: July 12, 2011; first use: October 2008).
The disputed Domain Name was registered on October 14, 2023, and resolves to a website offering software development services related to security video cameras and management services. The website also offers, or appears to offer, “customized SaaS solutions”. The Respondent is the sole officer of a company incorporated in the United Kingdom, Data Motion Ltd, which was incorporated and operated under the name EQB Group Limited from March 24, 2020, to October 20, 2023, when its name was changed to its current name. The Companies House details also record the Respondent’s occupation as a “professional coach”.
Before filing the Complaint, the Complainant had made a number of complaints about trademark infringement by the Respondent’s website to various service providers used by the Respondent including the Registrar and the web hosting service. At least one of these complaints led to the (as it turned out) temporary suspension of the Respondent’s website. When it was subsequently reinstated, the website had been modified to include a “support” email address and a LinkedIn account. The Complainant’s attempts to press its allegations through communications to the contacts provided by the Respondent on the modified website have not elicited any response.
Held: While the disputed Domain Name is not derived from the Respondent’s name, it is the same as the name of the company which the Respondent adopted in October 2023 around the same time as the Respondent registered the disputed Domain Name. That, however, does not automatically confer rights or legitimate interests in the disputed Domain Name as the company’s name was adopted after the Complainant began using its trademark and so could potentially have been adopted with knowledge of the Complainant’s trademark. It must be acknowledged that the Respondent’s website is comparatively rudimentary compared to the detailed and sophisticated information made available on the Complainant’s website. However, it does not necessarily follow from this that the Respondent is not making a good-faith offering of goods or services. On the contrary, the Respondent has provided some evidence of some business associations with third parties.
The Complainant relies on a trademark registered in the United States only but does refer to providing services through business relationships with major industry players in the United Kingdom and Europe. It is possible that those activities have given rise to the Complainant having rights in DATAMOTION as an unregistered trademark in the United Kingdom, however, it is not possible to assess the extent to which that is the case on the evidence in this proceeding. To an extent, it is arguable that the words “data” and “motion” in combination may have descriptive connotations in some contexts. Moreover, the existing registered trademark held by a third-party Resonance Group Limited in the United Kingdom shows that the Complainant does not hold exclusive rights in “Data Motion” in the United Kingdom for all purposes.
While there is arguably an overlap, or potential overlap, between the services of the respective parties, it is not apparent that is necessarily the case. All of these factors lead the Panel to conclude that the Complainant has not established that the Respondent has no rights or legitimate interests in the disputed Domain Name. The dispute between the parties, at least on the record presented in this case, appears to be more properly characterised as a trademark dispute, or a trademark priorities dispute, rather than the kind of cybersquatting conduct the Policy is directed against. Accordingly, the Panel finds the second element of the Policy has not been established.
Complaint Denied
Complainants’ Counsel: Represented Internally
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This is an excellent example of a trademark dispute as distinguished from a genuine case of cybersquatting, at least as the Panelist noted, on the record of evidence. Panels may sometimes be tempted to solve a trademark dispute where they believe that the Respondent ought not to have registered and used a domain name identical or similar to the Complainant’s well-established mark. But that is not the Panelist’s mandate absent actual cybersquatting. Where a case smacks of a trademark dispute rather than classic cybersquatting, a Panelist serves the UDRP well by deferring to the courts, as the Panelist did here.
Hotel Adopts Geographic Descriptive Term as Brand, Loses UDRP
Sardegna resorts S.r.l. – società unipersonale v. Kim Hyeonsuk, WIPO Case No. D2024-1317
<romazzino .com>
Panelist: Mr. Ian Lowe
Brief Facts: The Complainant’s core business is the management of hotels, restaurants and bars, as well as commercial establishments such as golf clubs. The Complainant is the owner of a number of luxury hotels, including Hotel Romazzino, one of the most exclusive hotels in Sardinia. This is set along Romazzino Beach in the Romazzino region of the Province of Sassari, Sardinia. The hotel was designed in 1965 and further expanded between 2011 and 2013. The Complainant owns several domain names including <romazzinohotel .com> (created on May 28, 2004). The Complainant is the owner of a number of registered trademarks comprising ROMAZZINO including the Italian trademark (March 15, 2010), the European Union trademark (June 25, 2015), and the comparable United Kingdom trademark, created following the United Kingdom’s exit from the European Union. The Complainant also claims to be the owner of Italy trademark for HOTELS ROMAZZINO registered on November 17, 1992, in the name of Costa Smeralda Hotels.
The disputed Domain Name was registered on March 16, 2005. It currently resolves to a blank web page, but at the time of preparation of the Complaint, it resolved to a Sedo parking page comprising links to web pages of pay-per-click links to the websites of third parties including competitors of the Complainant. The Complainant alleges HOTEL ROMAZZINO is such a famous trademark that it would be disingenuous for the Complainant to claim that it was unaware that the registration of the Domain Name would violate the Complainant’s rights. The Respondent has been the unsuccessful respondent in two previous UDRP complaints involving well-known trademarks The Complainant further points out that shortly after the Domain Name was registered the Domain Name resolved to a web page indicating that the Domain Name was for sale and the Domain Name has more recently been used for pay-per-click links. The Respondent did not reply formally to the Complainant’s contentions.
Held: The disputed Domain Name was first registered on March 16, 2005, some 19 years ago and shortly after registration the Domain Name was offered for sale without a price being mentioned. More recently, perhaps from around 2021, the Domain Name has led to pay-per-click links generated by the association of the term “Romazzino” with the Complainant’s very well-known hotel in Sardinia. In this case, the Complainant’s case would have benefitted from further evidence as to the notoriety of its HOTEL ROMAZZINO mark at the time of registration of the disputed Domain Name. The Complainant’s evidence is that the selection of “Romazzino” as a Domain Name is most likely to be taken to be a reference to the hotel. However, the Domain Name is not only the name of a well-established hotel, but is also the name of a small region in Sardinia and its largest bay and beach.
The Panel does take into account the Respondent’s albeit limited history of registering domain names comprising well-known marks. However, finely balanced as matters are, the Panel is not satisfied that the Complainant has proven that the Respondent is more likely than not to have had in mind the Complainant and its rights in the HOTEL ROMAZZINO mark when it registered the disputed Domain Name. The Panel recognizes that even though the pay-per-click links to third-party websites produced by the disputed Domain Name were likely to have been generated automatically, panels have found that a respondent cannot disclaim responsibility for the content appearing on the website associated with its domain name, see WIPO Overview 3.0, section 3.5. However, even if such activity were to be taken to amount to use in bad faith, that is not in itself enough to satisfy the Complainant’s overall burden in this proceeding.
Complaint Denied
Complainants’ Counsel: GriffeShield S.r.l., Italy
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Crucially, the Panel noted that “the Complainant’s evidence is that the selection of “Romazzino” as a Domain Name is most likely to be taken to be a reference to the hotel… however, the Domain Name is not only the name of a well-established hotel, but is also the name of a small region in Sardinia and its largest bay and beach” [emphasis added]. When a business assumes a descriptive term as its brand, it also must accept the fact that it doesn’t have exclusive rights to the term, as the Panelist found in this case.
I must also give the Panel credit for not giving too much weight to the evidence of PPC use. As the Panel noted, even if these automatically generated PPC links were to be taken into account that would not alone be evidence sufficient to prove that the Respondent’s motivation in registering the Domain Name was to take advantage of the Complainant since the Domain Name also corresponds to a geographic descriptive term.
Complainant Seeks to “Extend its Business Operations Into Americas”, Tried Buying Domain Name 11 Times
Rikki Auluk (Liquidline Ltd) v. Mr Justin James, CAC Case No. CAC-UDRP-106494
<liquidline .com>
Panelist: Ms. Jane Seager
Brief Facts: The Complainant was incorporated on 14 June 2010, and claims to have been in business since 2003. The Complainant is engaged in the provision of coffee, water and juice vending machines, with operations in Ireland, Italy, and the United Kingdom. The Complainant’s holding company, Holywells Holdings Limited, is the owner of the UK trademark LIQUIDLINE registered on 18 April 2008. The disputed Domain Name was created on 7 February 2002 and a review of Archive .org shows that from as early as July 2006, the disputed Domain Name resolved to a website that appeared to be that of a graphic design agency. The disputed Domain Name appears to have continued to point to a website displaying information about the Respondent’s design business until approximately February 2020. It appears that from approximately February 2021, the disputed Domain Name began resolving to a parking page. At the time of this decision, the disputed Domain Name resolves to a parking page provided by the Registrar.
Between January 2021 and February 2024, the Complainant made 11 attempts to contact the Respondent to purchase the disputed Domain Name. The Respondent did not reply to the Complainant’s communications, either to the Complainant directly or to those sent via domain agents. The Complainant explains that it is seeking to extend its business presence into the Americas and that it wishes to use the disputed Domain Name to facilitate its international expansion efforts. The Complainant submits that customers attempting to place orders with the Complainant have mistakenly accessed the disputed Domain Name, causing confusion regarding the Complainant’s operational status and resulting in loss of business. The Complainant notes that it has made many efforts to contact the Respondent, who has not replied to the Complainant’s communications. The Respondent did not file a Response to the Complaint.
Held: The disputed Domain Name was registered on 7 February 2002. The Complainant claims to have been in business since 2003. From at least 2006, the disputed Domain Name resolved to a website displaying content related to a United States-based graphic design agency. The LIQUIDLINE trademark was filed on 15 November 2007 and was registered on 18 April 2008. The Complainant company was incorporated on 13 June 2010. In light of the timing of the events as set out above, the Panel is of the view that the Respondent could not have been aware of the Complainant when registering the disputed Domain Name. Critically, the disputed Domain Name was registered approximately prior to the date at which the Complainant claims to have commenced its business operations. There is no evidence to suggest that the Respondent has sought to target the Complainant in any way through its registration or subsequent use of the disputed Domain Name. None of the scenarios contemplated by WIPO Overview 3.0, section 3.8.2 appears to apply.
Complaint Denied
Complainants’ Counsel: Self-represented
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja:The Panel rightly takes into account that the domain name pre-existed the Complainant’s trademark rights, however, the decision does not examine whether the Complaint itself was in bad faith by reverse domain name hijacking the Domain Name, considering that the disputed Domain Name was created on February 7, 2002, whereas the Complainant’s business commenced in 2003.
Basically, the Complainant arguments are:“… the Complainant made 11 attempts to contact the Respondent to purchase the disputed Domain Name. The Respondent did not reply to the Complainant’s communications, either to the Complainant directly or to those sent via domain agents. The Complainant explains that it is seeking to extend its business presence into the Americas and that it wishes to use the disputed Domain Name to facilitate its international expansion efforts…”
Are these arguments sufficient to initiate proceedings when the Domain Name came before the Complainant’s trademark rights or does this amount to an abusive proceeding? The recent ruling in <DailyWorkouts .com> (“Textbook Example of When RDNH is Warranted”) shows how similar factors led to RDNH.
Respondent Uses Complainant’s Name “Without Permission”
<hedaryslasvegas .com>
Panelist: Mr. Steven M. Levy
Brief Facts: The Hedary family has been operating as a restaurant in the state of Texas since September 1, 1976. The restaurant eventually expanded into Las Vegas, Nevada. As the Hedary name has been in continuous use for restaurant services for many years, it has gained common law trademark rights. In 2013, the Complainants successfully applied to the USPTO to register the term HEDARY’S. As part of the expansion into Las Vegas, the Complainants allowed their brother to utilize the Hedary name for his own restaurant. Unfortunately, the brother ran into some hard times and had to sell his restaurant on September 4, 2013. The Sales Agreement used by the brother contained certain restrictions to the effect that use of the Hedary name will be limited to one location and, in the event that the Purchaser sells the restaurant to a third party, the Hedary name cannot be used by such a new owner.
The Complainants allege that unknown to them, the Purchaser eventually sold the restaurant to the Respondent who obtained a business license under the name S.Y.R. Transportation Inc. on September 19, 2022. The Respondent has continued to use the Hedary’s name without permission and in violation of the above-mentioned restriction in the 2013 Sales Agreement. The <hedaryslasvegas .com> domain name resolves to a website promoting the Respondent’s restaurant, displaying photos of various dishes, and mentioning awards and recognition that the restaurant has received since 2004. There have been instances of actual confusion occurring with customers and the Respondent ignored a cease-and-desist letter sent on behalf of the Complainants. The Respondent failed to submit a Response in this proceeding.
Held: The centerpiece of the Complainant’s argument is that the Respondent’s use of the Hedary’s name is without its permission and in violation of its common law and registered trademark rights. It also points to the Sales Agreement entered into between the Complainant’s brother and the Purchaser who eventually sold the restaurant to the Respondent. This raises a number of issues that directly impact the present dispute and there is also much critical evidence that is not presented here. 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 is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute resolution procedure.
The Complainant does not question that Respondent is, in fact, operating a restaurant and so a prominent issue is whether the Respondent is infringing on the Complainant’s trademark. Closely related to this is the question of what is the scope of the Complainant’s claimed common law rights? Finally, were the terms of the Sales Agreement communicated between the Purchaser and the Respondent and, although it is not a party to such agreement, is the Respondent’s use of the mark in some way restrained by those terms, perhaps as a condition of transference that runs with the restaurant sold to it by the Purchaser from Complainant’s brother? Or could the Respondent be said to have actually acquired some rights to use the Hedary name by its purchase of the restaurant from the Purchaser who, itself, had such rights?
A court of competent jurisdiction, with its broad range of evidentiary tools (e.g., discovery, witness cross-examination, etc.) is the proper venue to explore these legal and factual issues. For the reasons stated above, the Panel declines to entertain this dispute as being beyond the scope of the Policy and better suited to a court setting.
Complaint Denied
Complainants’ Counsel: Kimberly P. Stein of Flangas Law Group, Nevada, USA
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja: The crux of the matter hinges on whether the Respondent’s use of the Hedary’s name constitutes trademark infringement. The Panel’s decision to defer to a court underscores the policy’s limitations in addressing civil disputes. Courts are better equipped to handle such cases, utilizing comprehensive legal tools to ensure a fair resolution.