We hope you will enjoy this edition of the Digest, as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch:
‣ Panel: “Not Surprising” that Respondent Declined Complainant’s $24,000 Offer for Three-letter .com Domain Name (tox .com *plus comment)
‣ Respondent has “No Rights or Legitimate Interest”, but Complainant Found to have Engaged in RDNH (mindgym .com *plus comment)
‣ Panel: “Not Unnatural for a Domain Name Not to Resolve, 9 Days Post-registration” (altarae .shop *plus comment)
‣ Panelist Redacts “Respondent’s Name”, Transfers Domain Name to Complainant (tevapharmamumbai .com *plus comment)
‣ Panel: The Complainant Should Seek Remedy in a Court of Law (xtralife .com *plus comment)
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
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Panel: “Not Surprising” that Respondent Declined Complainant’s $24,000 Offer for Three-letter .com Domain Name
Tox Pressotechnik GmbH & Co. KG v. TFourth LLC, WIPO Case No. D2022-3270
<tox .com>
Panelists: Mr. W. Scott Blackmer (Presiding), Mr. Stefan Abel and Mr. Gerald M. Levine
Brief Facts: The German Complainant, established in 1978, produces press drive systems and other industrial tools for sheet metal joining. The Complainant currently has 1400 employees worldwide, with production facilities in the US, Germany, China, India, Brazil, and the Czech Republic. The Complainant holds numerous TOX and TOX-formative trademark registrations, including the United States mark (registered on August 30, 1988), the Canadian mark (registered on March 8, 1991), and the European Union mark (registered on October 7, 1998). The disputed Domain Name was registered on February 14, 2001. At the time of this Decision, the disputed Domain Name does not resolve to an active website, and it appears to have been used sporadically in the past only for pay-per-click (“PPC”) advertising links hosted by third parties.
In May 2021, the Complainant contacted the Respondent to inquire about purchasing the Domain Name. In Response, the Respondent’s representative expressed that its expectations are in the six digit range USD, consistent with current valuations for three letter “.com” domain names. The Complainant’s representative responded that the Complainant would not be willing to pay more than USD $24,000 for the Domain Name. The Complainant alleges that the Respondent had “actual knowledge” of its trademark, which is registered “all over the world” and “clearly” registered the disputed Domain Name to obtain “an unacceptable high amount of money” from the Complainant”, pointing to the Complainant’s unsuccessful efforts in 2021 and 2022 to purchase the Domain Name for USD $24,000.
The Respondent denies prior actual knowledge of the Complainant and emphasizes that “tox” is a dictionary prefix and suffix used as an abbreviation or acronym for medical studies, tests, specialties, and procedures relating to poisons. The Response attaches examples of the PPC advertising associated with the Domain Name, with links to third parties relating to “tox screens”, “drug tests”, “toxicology jobs”, and toxicology training and education programs. The Respondent also contends that there is an inherent value in three-character domain names for their potential use as acronyms and simply as memorable short domain names.
Held: The Panel finds the of Respondents’ representative declaration plausible concerning the Respondent’s business model and its practice of registering short domain names in 2001 based on dictionary terms or acronyms, including the Domain Name, for investment and potential website development. The Complainant did not offer evidence indicating the likelihood that the Respondent nevertheless would be aware of the Complainant or its mark for industrial machinery until the Complainant offered to purchase the Domain Name 20 years later. Thus, on balance, the Panel finds that the Respondent has established a legitimate interest in investing in a short domain name, one that also corresponds to a common prefix and suffix and abbreviation found in English dictionaries and used in the medical field.
There is no evidence of “actual knowledge” as argued by the Complainant in this instance, which the Respondent denies. Moreover, panels typically have not inferred bad faith on the basis of constructive notice of trademark registrations without relying on supporting evidence of the strength and distinctiveness of the mark and/or some indication of the respondent’s awareness of the mark. Further, the record does not suggest that the Respondent was aware of the Complainant’s mark either and sought to exploit it, and the PPC links themselves are in this case relevant to the dictionary sense of the Domain Name not the Complainant’s trademark. The fact that the Respondent rejected a purchase offer from the Complainant – an offer initiated by the Complainant – is insufficient to establish bad faith.
The record further does not indicate that the Respondent likely targeted the Complainant’s mark in 2001, and the amount of the Respondent’s demand in 2021 does not prove otherwise. The record amply demonstrates the inherent value of three-letter “.com” domain names, particularly those, such as the Domain Name, based on dictionary terms. Given that the Respondent did not develop a website associated with the disputed Domain Name, the Complainant also briefly mentions the “passive holding” doctrine of Nuclear Marshmallows. However, the Complainant fails to demonstrate the relevance of this doctrine in the present circumstances. In the “totality of the circumstances”, this is not a good record for applying the passive holding doctrine of Nuclear Marshmallows and its progeny. The Panel concludes, therefore, that the Complainant has failed to establish the bad faith element as well.
RDNH: The three-letter Domain Name corresponds to a dictionary term and was registered more than 21 years ago. The bare-bones Complaint does not establish that the Complainant’s mark had achieved widespread recognition by that time and was uniquely associated with the Complainant. It does not come close to establishing the probability that the Respondent “must have been” aware that the mark was associated with a manufacturer of sheet-metal joining tools and chose to invest in the three-letter Domain Name – and hold onto it for more than two decades – in the hope that the manufacturer would pay a large sum for the Domain Name.
The Complaint makes no serious effort to confront these obvious issues, and it throws in a reference to the passive holding doctrine without addressing the conditions laid down in Nuclear Marshmallows and following decisions for finding bad faith under that doctrine, such as establishing the fame of the mark, the lack of a Response, or the absence of plausible, legitimate reasons for selecting the disputed Domain Name.
The Complainant rather focuses on the fact that the Respondent declined an offer for the Domain Name for USD $24,000, but this is unsurprising for a three-letter “.com” domain name. The Complainant can rightly be faulted for subjecting the Respondent to the expense and burden of a UDRP proceeding on such thin premises. The Panel finds that the Complainant brought the Complaint in bad faith, in an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Otten, Roth, Dobler & Partner GmbH, Germany
Respondents’ Counsel: Cylaw Solutions, India
Case Comment by ICA General Counsel, Zak Muscovitch: First of all, congratulations are in order for Ankur Raheja, the Respondent’s counsel who is also our Editor-in-Chief. Ankur has amply demonstrated that when it comes to UDRPs, not only is he able to expertly identify and summarize the most noteworthy cases, but he can also expertly handle one himself.
What can be said about this case that the Panel has not already clearly stated? Panelists, Stefan Abel, Gerald Levine, and Scott Blackmer (Chair), handily applied the well-established law to the Complaint and found the Complaint severely wanting, resulting in dismissal and an RDNH finding to boot.
Nevertheless, this outcome is hardly surprising when it comes to three-letter .com domain names. Transfers of three-letter .coms, such as the recent (and undefended) case regarding TRX[.]com (which we covered in Volume 2.46 and which is now the subject of a US federal lawsuit), are exceptional. As ICA Director Nat Cohen noted in his CircleID article (October 26, 2022), of the 80 disputes on three-letter .com domain names since January 1, 2012 where cybersquatting was alleged, 77 were denied and RDNH was found 20 times. Nat Cohen also notes that of the three transfer decisions, two (namely, ado[.]com and imi[.]com) were challenged in court and overturned at the cost of hundreds of thousands of dollars, and one (ehf[.]com) is still pending in court.
With these kinds of oppressive odds, why do hapless Complainants keep taking a shot? One likely reason is that the UDRP’s low-cost and efficient procedure is just too attractive for Complainants to ignore when faced with the alternative of having to pony up market value for a rare and sought after three-letter .com. For a few thousand bucks in filing costs and legal fees, a Complainant can take the chance that the Respondent (at least initially) will not respond to the Complaint (as in TRX[.]com) or will be the recipient of (at least initially) a windfall as in ado[.]com and imi[.]com. But such luck and windfalls have proven fleeting as the immense value of three-letter .coms are going to be vigorously defended by their respective registrants, if not during the UDRP itself, nearly certainly thereafter in court.
So, my advice for Complainants when it comes to three-letter .com domain names is, unless you are BMW, IBM, KFC, or the like, or can prove that out of all the other potential and actual users of the acronym across the world, your sheet metal jointing or whatever company was the clear target of the registration, do yourself a favour and negotiate the purchase in good faith instead of attempting a Reverse Hijack. And make sure your client knows that even if you get “lucky” in the UDRP and the Respondent doesn’t defend and the panel awards your client the domain name, your client may nevertheless become embroiled in a self-inflicted and expensive court battle.
To read more about the consequences of RDNH, see The Hidden Perils of Filing a Baseless UDRP Complaint (CircleID, December 13, 2018).
Respondent has “No Rights or Legitimate Interest”, but Complainant Found to have Engaged in RDNH
Mind Gym plc v. Intuition Publishing Limited, WIPO Case No. D2022-3598
<mindgym .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: Complainant’s website at <themindgym .com> describes the Complainant as a consultancy that applies principles of behavioural science to create “behaviour change programmes” for leadership and staff in business and other organizations. It reported revenues in excess of GBP 49 million in the fiscal year 2022. The Complainant provides historical screenshots from the website as early as December 2000, as well as media articles about the Complainant dated from 2015 to 2022. The Complainant was initially incorporated as a limited company under another name in 1999 and the name was changed over the years to its current name, “Mind Gym plc”, on June 22, 2018. The Complainant holds several relevant trademark registrations for THE MIND GYM in various jurisdictions, the earliest U.K. and European marks were registered on February 7, 2002. The disputed Domain Name was registered on September 26, 1996 and redirects to the Respondent’s website at <intuition .com>, which advertises the Respondent’s e-learning education and training services for organizations worldwide.
The Respondent contends that, “in 1996, the Respondent was developing a number of educational software products in partnership with publisher, Simon & Schuster and that ‘MindGym’ was one of a number of names that the Respondent was going to use and in accordance with its standard practice, proceeded to secure the domain. Ultimately the Respondent’s ‘MindGym’ educational software was not published but the Respondent states that it continues to keep its domain alive (as it is entitled to do) on the basis it may commercialise ‘MindGym’.” The Respondent’s representatives replied to a demand letter on October 5, 2022, shortly after the Complaint was filed in this proceeding, requesting that the Complaint be withdrawn because “our client’s rights predate your client’s rights”.
Held: The Respondent claims that it is the initial registrant of the Domain Name and has “used” it since first registering the Domain Name on September 26, 1996. However, the Respondent is not able to produce proper evidence in this regard. There are understandable difficulties in retrieving records from 26 years ago, as the Respondent points out. In addition, the Respondent acknowledges that it has not taken steps to develop a website or otherwise commercialize the Domain Name. The only use to date is the redirection to the Respondent’s website at <intuition .com>, and the Panel finds no mention on that website of “mindgym”. Thus, the redirection of the Domain Name to the Respondent’s website cannot be considered a “use” in connection with a bona fide offering of goods and services. Further, merely maintaining the registration of the Domain Name over the years with the thought of possibly developing a relevant website in the future does not rise to the level of “demonstrable preparations to use” the Domain Name “in connection with a bona fide offering of goods or services”.
Although the Respondent does not demonstrate rights or legitimate interests in the Domain Name, the Complainant cannot establish bad faith in the registration of the Domain Name based on dictionary terms in 1996 when the Complainant by its own account did not start using a relevant mark until 2000. Absent evidence to the contrary, the Panel accepts the statements in the Respondent’s certified Response to the effect that the Respondent “registered its domain in 1996” and maintained the registration since then. Further, there is no evidence on this record that the Respondent registered the Domain Name four years earlier in anticipation of the trademark. The Panel finds that the Respondent had a plausible interest in the Domain Name for its dictionary sense rather than as a pretext for attacking a trademark that was not yet in contemplation.
RDNH: In a proceeding under the Policy, it is elementary that the complainant must demonstrate bad faith both in the registration and use of the disputed Domain Name. In this case, the Domain Name was registered 26 years ago, a long delay for bringing a proceeding where the Complainant bears the ultimate burden of proof and must find persuasive evidence. Critically, the Domain Name was registered long before the Complainant acquired any trademark registrations and four years before the Complainant began doing business under the relevant name and claimed mark. The Complaint does not even address this glaring obstacle to relief under the Policy, which is amply discussed in the WIPO Overview 3.0, section 3.8.
The Overview clearly alerts complainants to this issue: “Subject to scenarios described in 3.8.2 below [anticipatory domain name registrations], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” The Complaint does not offer evidence or argument to indicate why bad faith should nevertheless be inferred in this instance. The Panel finds that the Complainant brought the Complaint in bad faith, within the meaning of the Policy, in an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Lewis Silkin LLP, United Kingdom
Respondents’ Counsel: FRKelly, Ireland
Case Comment by ICA General Counsel, Zak Muscovitch:
This is truly an unusual situation. How can a Respondent have “no right or legitimate interest” in the disputed Domain Name, yet the Complainant is found to have engaged in RDNH?
The Panelist concluded that the Respondent had not demonstrated any “bona fide preparations to use” the Domain Name beyond using it for a redirect. That is understandable. The Panelist also found that merely maintaining the registration did not amount to “demonstrable preparations to use” the Domain Name, which is also understandable. But what about the Respondent’s right to register a Domain Name prospectively for a potential business simply because it is a catchy or unique term, particularly at a time prior to even the Complainant’s adoption of the corresponding mark?
The Panel in Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No: FA1002001309793, properly observed that without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is simply no foundation to conclude that a respondent has no rights in the domain name. That is precisely the case here. The Respondent apparently registered the Domain Name prior to the Complainant’s trademark rights and as such, how could the Respondent’s registration be anything other than legitimate? And how could a Respondent engaged in conceiving of a new potential brand – in the absence of any pre-existing brand held by the Complainant – not have a right to the Domain Name?
As the Panel noted, “mindgym” is an “apparent amalgamation of the dictionary words “mind” and “gym” [and] this could be considered an appropriate term to apply to learning products such as those offered by the Respondent”, and “the Respondent could not have had the intent of diverting Internet users from the Complainant, which did not exist at that time”. As such, it seems inescapable that the Respondent did indeed have rights and a legitimate interest in the Domain Name. Such a finding would have been completely consistent with the Panelist’s finding on RDNH; “Critically, the Domain Name was registered long before the Complainant acquired any trademark registrations and four years before the Complainant began doing business under the relevant name and claimed mark”.
But as things stand, there is a strange dichotomy between the Panelist’s findings on bad faith and RDNH when compared to the Panelists findings on rights and legitimate interest. I believe that this is the indirect result of two unfortunate situations.
First, as noted previously in Volume 2.37 when commenting on the redgrass[.]com case, we often see Panels skipping over a Respondent’s legitimate interest but nonetheless finding no bad faith registration and use. This is often done for reasons of judicial economy, as strictly speaking a case can be dismissed on one prong of the three-part test and therefore the decision need not address any additional, extraneous grounds. Nevertheless, as noted in my aforesaid comment in Volume 2.37, this practice can have a deleterious effect on the case law by not permitting it to develop as much as it otherwise could have in connection with the second prong of the test. Moreover, by avoiding affirmative findings on rights and legitimate interest, Panelists have often inappropriately avoided acknowledging the legitimacy of registering domain names for investment or for no reason other than they are attractive, particularly in the absence of complainant rights existing at the time.
Second, some of the confusion regarding what can constitute a right or legitimate interest in a domain name may be the result of a particular provision in the WIPO Overview, which the Panel references in this case. The Panel specifically references Section 2.10.1 of the Overview which states as follows:
“2.10.1 Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.” [emphasis added]
This appears to be misleading, as when we look at the established case law and the consensus that has developed around this issue. It has been long-held that where a domain name is a dictionary word, the first person to register it in good faith is entitled to the domain name and this is considered a “legitimate interest” (See for example: CRS Technology Corporation v. CondeNet (Concierge.com) NAF FA0002000093547) and Target Brands, Inc. v. Eastwind Group (FA0405000267475) (Target.com). Furthermore, it has long been held that speculating in and trading in domain names can in and of itself, constitute a “legitimate interest” under the Policy – even without actually using the domain name in connection with its dictionary meaning (See for example; Audiopoint, Inc. v. eCorp, D2001-0509, and also see for example, 360training.com v. DNS ADMIN / BEST WEB LIMITED, Forum Claim Number: FA2110001968877 (November 24, 2021)
Accordingly, in contrast to the Overview’s aforesaid provisions under Section 2.10.1, there is in fact no requirement that a Respondent’ actually use or demonstrably prepare to use, a domain name corresponding to a dictionary word, beyond merely registering it for resale for a Respondent to have a right or legitimate interest in it. Of course, if a domain name corresponding to a dictionary word was registered and used in bad faith, that will likely also mean that the Respondent has no rights or legitimate interest in it. Moreover, like in the case at hand, if a company credibly explains why it registered the domain name, i.e. as an option for a potential future product in the absence of any Complainant trademark rights, that would also qualify as a right or legitimate interest under the Policy. Of course, Paragraph 4(c) of the Policy is “without limitation”, i.e. the circumstances enumerated are mere examples and not exhaustive of how a Respondent can have a right or legitimate interest.
The WIPO Overview’s included example, is unfortunately misleading:
“For example, a hypothetical respondent may well have a legitimate interest in the domain name <orange.com> if it uses the domain name for a website providing information about the fruit or the color orange. The same respondent would not however have a legitimate interest in the domain name if the corresponding website is aimed at goods or services that target a third-party trademark (in this example: Orange, well-known inter alia for telecommunications and Internet services) which uses the same term as a trademark in a non-dictionary sense.”
It is true as I point out above, that if a Respondent registered and used a domain name in bad faith that this will likely mean that the Respondent has no rights or legitimate interest in it, and the Overview’s example of a misuse of Orange.com is an example of that. However, in the absence of such bad faith registration and use, there is as aforesaid – and despite the Overview’s suggestion to the contrary – no requirement that the Respondent have used or plan to use a dictionary word domain name, period. Accordingly, by conflating an example of bad faith registration and use with a case where no such indicia are present, the Overview is not conveying the actual consensus around this issue and is unfortunately causing confusion. Such was the case with the decision here. The Panelist correctly concluded that no bad faith registration or use existed, but still fell prey to the Overview’s misleading purported requirements for rights and legitimate interest.
I do want to point out, however, that accurately distilling consensus views from the wide body of UDRP case law over 23 years as WIPO has done with its Overview, is a monumental task and WIPO has risen to the occasion is most aspects of its Overview. This example is not reflective of the overall quality of the Overview, but is nevertheless pointed out because it demonstrates the importance of accuracy and identifying actual consensus, particularly if it is to be used by some Panelists as a definitive guide, or even substitute for the case law itself.
Panel: “Not Unnatural for a Domain Name Not to Resolve, 9 Days Post-registration”
Altarea v. alta rae, alta rae, WIPO Case No. D2022-3706
<altarae .shop>
Panelist: Mr. Yuji Yamaguchi
Brief Facts: The Complainant, founded in 1994, is the leading property developer covering all classes of real estate assets in France. The Complainant is the owner of several ALTAREA trademarks including the EU Trademark (registered on November 8, 2000) and International Trademark (registered on July 12, 2006). The Complainant also owns several domain names including the ALTAREA Trademarks, such as the Domain Name <altarea .com> registered and used for its official website since March 31, 1999.
The disputed Domain Name was registered on September 26, 2022 and redirects to an inactive page. The Complainant alleges that this is a clear case of “typosquatting”, as the disputed Domain Name contains an obvious misspelling of the Complainant’s ALTAREA Trademarks. The Complainant further alleges that the Respondent is not known by the Domain Name and that the configuration of mail exchange (MX) servers suggests that the disputed Domain Name may be actively used for email purposes in the background.
The Respondent did not file a response but uses the privacy registration service, hence the Respondent’s name and organization have not been disclosed on the WhoIs database. However, according to the Registrar, both the Respondent’s name and organization are “alta rae” and the Respondent’s email address includes the letters “altarae” (without space). It would appear that “Alta Rae” is a name (perhaps rare, but) sometimes used as a given name.
Held: The Complainant asserts, the Respondent seems to not be known by the Complainant’ name “Altarea”, however, it did not argue specifically why the Respondent has no rights or legitimate interests in respect of the disputed Domain Name which consist of letters “altarae” (without space) in the amended Complaint based on the information including the Respondent’s name and organization disclosed by the Registrar to the Center and which was in turn provided to the Complainant. While the amended Complaint lists “alta rae” as the Respondent’s name and organization (including a corresponding Gmail address), no arguments are made as to the Respondent’s name and organization (e.g., whether these could be pretextual or false) under the second requirement. Although the Respondent did not submit any Response, the Panel cannot conclude that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name which consist of letters “altarae”.
The Complaint was filed just nine days after the registration of the disputed Domain Name, and thus it is not unnatural that the disputed Domain Name still resolved to an inactive page at the filing of the Complaint. The Respondent’s bad faith registration and use of the disputed Domain Name is not established in this case by the fact that the webpage of the disputed Domain Name is inactive, and the disputed Domain Name seems to be used for email forwarding purposes. If, however, the Complainant learns of infringing content that makes clear that its rights were being targeted by the Respondent that may support grounds for a refiling.
Complaint Denied
Complainants’ Counsel: Nameshield, France
Respondents’ Counsel: No Response
Case Comment by Zak Muscovitch: Kudos to Panelist Yuji Yamaguchi for not blindly accepting a Complaint despite concerns that the Complainant did not meet its burden of proving its case. I also note with interest, the approach that Panelist Yamaguchi took in this case, namely that despite the Complainant failing because of the absence of evidence of targeting, that the Complainant could refile if new evidence arose. This is an approach that deserves some consideration and thought, and we should keep it in mind as a possibly appropriate resolution for certain kinds of cases.
Panelist Redacts “Respondent’s Name”, Transfers Domain Name to Complainant
TEVA Pharmaceutical Industries Limited v. Name Redacted, WIPO Case No. D2022-3791
<tevapharmamumbai .com>
Panelist: Ms. Ingrīda Kariņa-Bērziņa
Brief Facts: The Complainant is one of the world’s largest producers of generic medicines. It is the proprietor of numerous registrations for its TEVA trademark under class 5, including the Israeli Trademark (registered on July 5, 1977) and Indian Trademark (registered on May 11, 1992). The Complainant operates its primary business website at the domain name <tevapharm .com> and also registered a significant number of domain names including <tevapharma .in> for the Indian region. The disputed Domain Name was registered on September 4, 2022 and does not resolve to an active website.
The Complainant alleges that there is evidence that MX records are active for the disputed Domain Name, which is being or intended to be used for phishing or other fraudulent purposes through the use of email addresses ending with “@tevapharmamumbai .com”. The Complainant further alleges that the registration of the disputed Domain Name under these circumstances represents opportunistic bad faith and that the Respondent impersonated the Complainant by falsely providing Complainant’s name in the registration details. The Complainant also points out that the disputed Domain Name comprises Complainant’s TEVA mark together with Mumbai, the name of a city where the Complainant is active, alleges Respondent’s actual knowledge of the Complainant and its mark.
The Respondent appears to have used the name of Complainant when registering the disputed domain name. In light of the apparent identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes the name of Respondent.
Held: Complainant’s rights in its TEVA mark predate the registration of the disputed Domain Name by more than 40 years; its rights in TEVA PHARMA predate the disputed Domain Name by more than 15 years. The disputed Domain Name reflects Complainant’s TEVA and TEVA PHARMA marks together with the word “mumbai.” The disputed Domain Name is, therefore, nearly identical to Complainant’s TEVA PHARMA mark. The Panel finds that, by registering such a domain name, the Respondent attempted to create an association with Complainant’s distinctive and well-established marks. The Panel further finds that the Complainant has, on balance, demonstrated Respondent’s bad faith by passive holding of the disputed Domain Name.
Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and also WIPO Overview 3.0, section 3.3. In particular, the disputed Domain Name reflects Complainant’s registered TEVA and TEVA PHARMA marks. The Respondent failed to provide any evidence of a connection to a legitimate business related to Complainant’s marks, and, in using Complainant’s name when registering the disputed Domain Name, has engaged in identity theft. The Respondent has failed to provide any evidence of actual or contemplated good-faith use of the disputed Domain Name. Under the circumstances, the Panel does not find any such use plausible. The Panel finds that Respondent’s registration of MX records in respect of the disputed Domain Name are further circumstances demonstrating bad faith registration and use of the disputed Domain Name.
Transfer
Complainants’ Counsel: SILKA AB, Sweden
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case caught my attention as a result of the “Respondent’s” name being redacted. The Panelist noted that the Respondent used the name of the Complainant, i.e. TEVA Pharmaceutical Industries Limited, and as a result redacted it. Ostensibly this was because it would be confusing and misleading for a case to be against oneself, particularly when it’s a ruse. We see this on occasion and it appears to be a reasonable measure to take in such circumstances.
Panel: The Complainant Should Seek Remedy in a Court of Law
<xtralife .com>
Panelist: Mr. Edoardo Fano
Brief Facts: The US Complainant is operating in the field of nutritional supplements and is online at <xtralifemiami .com>. It owns United States trademark registrations for XTRALIFE NATURAL PRODUCTS, registered on December 24, 2002 and February 5, 2019 respectively. The Respondents own the Colombian trademark registered in the name of one of the owners for XTRALIFE, registered (on February 20, 2008) about ten years before the Respondent Company Xtralife Colombia S.A.S. was incorporated. The disputed Domain Name was registered on December 25, 2015 and currently redirects to a parking page. The Complainant provides evidence that prior to the Complaint the website at the disputed Domain Name was referring to the Complainant by reproducing the Complainant’s trademark and logo and offering for sale the same products as the Complainant, supposedly counterfeited.
The Complainant alleges that the Respondent was formerly a distributor and licensee of the Complainant from 2004 to 2020 and at no point, neither during the license nor after its termination, did the Complainant authorize the Respondent to use, register, or operate the disputed Domain Name. In 2020, following the termination of the license, the Respondent began using the website at the disputed Domain Name intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and products.
The Respondent contends that the products in respect of which it registered its trademark XTRALIFE are not the same as the Complainant, as they are pharmaceutical products instead of antiaging compositions, and that the trademark XTRALIFE is weak because it is descriptive of the goods covered, therefore coexisting with several other identical trademarks XTRALIFE belonging to different companies in different fields. The Respondent finally submits that there is no bad faith in registering and using the disputed Domain Name, since the latter was registered in 2015 and not in 2020, and because the disputed Domain Name is used based on the Respondent’s acquisition of trademark rights in XTRALIFE in 2008.
Held: The Panel finds that the Respondent knew of the Complainant and deliberately registered the disputed Domain Name, given that the parties collaborated from 2004 to 2020. However, it is not clear in this case whether the Respondent registered the disputed Domain Name in bad faith when by all appearances the parties were still collaborating. As regards to the use of the disputed Domain Name, when it pointed to a website in which the same products as the Complainant (or counterfeit versions, as alleged) were offered for sale, to the extent the Parties were no longer collaborating, this would seem to raise a question as to the Respondent’s motivations at that time which are better suited to discovery and cross-examination. Similarly, while the registration by the Respondent of its trademark in 2008 when the Parties seemed to be still operating on a cooperative basis raises a question, this is a matter that would fall to a court where greater discovery and examination are possible.
Indeed, the Policy does not apply to all types of trademark infringement per se, it applies to the bad faith registration and use of a domain name which is confusingly similar to a party’s trademark and in which the domain name registrant has no rights or legitimate interests. The fact that the Respondent here may currently be infringing on the Complainant’s trademark does not by itself result in a determination of the disputed Domain Name being registered in bad faith, since for a considerable period the Parties seemed to be on cooperative working terms. The proceeding under the Policy does not prevent the Complainant from submitting the dispute to a court of competent jurisdiction for independent resolution after this proceeding is concluded, and the Complainant is free to seek other more suitable remedies which may be available in the competent jurisdiction.
Complainant Denied
Complainants’ Counsel: Sanchelima & Associates, P.A., United States
Respondents’ Counsel: Triana, Uribe & Michelsen, Colombia
Case Comment by ICA General Counsel, Zak Muscovitch: There is perhaps no greater example of sound discretion than an expert Panelist who is personally well-equipped to find justice, nevertheless restraining himself from wading into a complex dispute that the UDRP is not suited for. Kudos to Panelist Edoardo Fano who to his credit, appropriately recognized the limits of the UDRP procedure and dismissed the Complaint in favour of the parties seeking resolution in court.