We hope you will enjoy this edition of the Digest, as we review these noteworthy recent decisions:
‣ Panel: ‘Registrant cannot be expected to have paid USD $45k for Cybersquatting’ (Emprendedores.com)
‣ Policy Contemplates Bad Faith at the time of Registration and Not Renewal (SambaTV.com)
‣ Does SpaceX have Exclusive Rights to use the StarLink Mark? (StarLinkMX.com)
‣ Panel Rejects Complainant’s Conclusory Allegations, Unsupported by Evidence (HummingBird.com *with commentary)
‣ Domain Name Use in Relation to its Dictionary Meaning (PlanPay.com)
‣ Panel’s Duty to Recognize Common Request (YSenses.com)
Our Editor Ankur Raheja has added commentary as well. Enjoy!
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Panel: ‘Registrant cannot be expected to have paid USD $45k for Cybersquatting’
<Emprendedores .com>
Panelist: Mr. Luca Barbero, Mr. Enrique Ochoa and Mr. Georges Nahitchevansky
Brief Facts: The Complainant, Spanish magazine and newspaper publisher, specializes in training in the entrepreneurship start-up and business sectors. The magazine “Emprendedores” was initially launched in October 1997 by the multinational group Hachette Filipacchi, led by its director Alejandro Vesga. In 2020, the magazine was acquired by the Complainant, wherein 95 per cent of the stake is owned by Alejandro Vesga. The Complainant is the owner of several trademark registrations in Europe for EMPRENDEDORES, including the EU trademark dated July 20, 2007. The Complainant is also the owner of the 2002 registered domain name <emprendedores .es>, used by the Complainant to promote its products and services under its trademark.
The disputed Domain Name was purchased by the Respondent in 2019 for USD $45,000 and put to use for its online course website soon thereafter. The Respondent is the owner of the EU trademark EMPRENDEDORES.COM, registered on December 2, 2020. However, its USPTO application was rejected but later registered on the supplemental register. The Respondent contends that the word “emprendedores” is not unique to the Complainant, being in wide third party use. The Respondent also informs that he sent a cease-and-desist letter to the Complainant, when the Complainant first sold online courses in February 2022, demanding that the Complainant cease its infringing activities but no response was received.
Held: There is nothing on record indicating that the trademark might have been well-known or unique to the Complainant for Spanish-speaking users in Spain or countries outside of Spain at the time the Respondent acquired the disputed Domain Name and started using it for the promotion of its online course website. In fact, the term encompassed in the disputed Domain Name “emprendedores” is a common dictionary term in Spanish for “entrepreneurs”, in use by many third parties as a title, name, and trademark. Further, there is no evidence that the disputed Domain Name might have been used by the Respondent with the intention of trading-off the Complainant’s trademark rights.
The Respondent owns rights in a trademark corresponding to the disputed Domain Name before EUIPO since December 2020, covering online courses in class 41. Notably, the Complainant, or its predecessor, which owned Spanish trademark registrations for EMPRENDEDORES in classes 16 and 38, also in the European Union, did not oppose the Respondent’s trademark applications. Indeed, it is a basic principle in trademark law that, while a Complainant owns rights for a given product or services, those rights do not necessarily extend to other classes of interest unless some reputation in the trademark is shown. Moreover, the amount claimed to have been paid by the Respondent for the acquisition is not insignificant and if true would tend to demonstrate a lack of bad faith since the amount of USD $45,000 would be a very high price to pay to engage in cybersquatting, and arguably indeed seems to be more or less in line with the likely or potential market value of common word domain names.
RDNH: The Panel also bears in mind that the Complainant in this case is represented by counsel and, therefore, should be held to a higher standard. The Panel concludes that the Complainant’s actions constitute Reverse Domain Name Hijacking as the Complainant, which is represented by counsel, should have appreciated the weakness of its case. The fact that the term “emprendedores” encompassed in the disputed Domain Name cannot be exclusively referable to the Complainant, however, the Complainant attempted to claim some notoriety of its trademark EMPRENDEDORES by simply providing some 1997 circulation numbers and mostly it’s 2020 and 2021 circulation numbers, whilst it did not even attempt to prove any kind of notoriety as of 2019, when the disputed Domain Name was acquired by the Respondent.
The Complainant also failed to mention that its online courses only began recently in 2022, thereby attempting to suggest to the Panel that such courses have been around for a while and before the Respondent started its use of the disputed Domain Name for its online courses. In view of the circumstances of the case and considering the Respondent’s existing trademark registrations for EMPRENDEDORES, the Complainant’s attorneys should have appreciated that the present matter is a trademark dispute which cannot be decided under the Policy, since the annulment of trademark registrations is a competence of National and Regional Administrative and / or Judiciary bodies.
Complaint Denied (RDNH)
Complainants’ Counsel: ECIJA, Spain
Respondents’ Counsel: Law.es, Spain
Policy Contemplates Bad Faith at the time of Registration and Not Renewal
SAMBA TV, INC. v. osamu kobayashi, NAF Claim Number: FA2208002010470
<SambaTV .com>
Panelist: Mr. Debrett G. Lyons
Brief Facts: The Complainant is a US-based television technology company, principally doing business under the trademark, SAMBA TV, to which it obtained rights by way of assignment. However, the trademark was registered on March 31, 2015, claiming first use in commerce as August 1, 2011. The Complainant’s online business is at <samba .tv>, which was created on March 23, 2010 and claims that it “has advertised and offered its goods and services online at that website continuously ever since.”
The disputed Domain Name was created on January 10, 2000 and used since February 2004, in terms of the Complainant’s evidence. The use is sporadic but nevertheless linked to the descriptive nature of the Domain Name – ie – “samba” (the dance of Brazilian origin) and “tv” (the ubiquitous abbreviation of “television”). The Complainant alleges that the Respondent’s intention at the time of registration was to sell the Domain Name for a price in excess of its out-of-pocket expenses.
Held: The Complainant’s earliest trademark was filed in September 2012, more than 12 years after the disputed Domain Name was created and 8 years after it was first used. Any suggestion that the Domain Name was registered to take advantage of the Complainant business or reputation is fantasy. There are circumstances which clearly point towards the Respondent having a legitimate interest in the Domain Name in terms of the Policy. In particular, the Complainant’s own evidence shows use of the Domain Name from February 2004 onwards in relation to its descriptive meaning in terms of the Policy.
Importantly, there is no evidence of bad faith. There is neither any evidence that the Respondent approached the Complainant to sell the Domain Name nor the Respondent at any time after the commencement of the Complainant’s business under the Trademark, adapted the resolving page to offer or promote goods or services of the kind of interest to the Complainant. The assertion that the Respondent maintained and renewed the registration with that intention is a separate matter, but not one related to the Policy which only contemplates Respondent’s state of mind at the time of registration, not renewal.
RDNH: The Complainant is professionally represented and certifies the Complaint to the best of Complainant’s knowledge complete and accurate and that this Complaint is not being presented for any improper purpose, such as to harass the Respondent. However, by Complainant’s own evidence, the Respondent adopted the disputed Domain Name before it could have known of the Complainant’s business. Moreover, the limited use of the Domain Name by the Respondent, many years before the Complainant asserted first use in commerce of the Trademark, is use related to the ordinary dictionary meaning of the terms comprising the Trademark.
On one reading of the evidence, the Domain Name is one coveted by the Complainant as an obvious choice for its later established business and, unwilling to negotiate a commercial agreement for its acquisition, the Complainant brought these proceedings based on what the Panel finds to be unsustainable assertions. Bearing in mind the plain words of the Policy, the Panel finds it unlikely that the Complaint is to the best of Complainant’s knowledge complete and finds it incomprehensible that it could certify in good faith that the assertions in the Complaint are warranted. The Panel finds reverse domain name hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Neil A. Salyards of Procopio, Cory, Hargreaves and Savitch LLP, California, USA
Respondents’ Counsel: No Response
Does SpaceX have Exclusive Rights to use the StarLink Mark?
<StarLinkMX .com>
Panelist: Mr. Antony Gold, Mr. Mauricio Jalife Daher and Mr. Richard W. Page
Brief Facts: The Complainant, established in 2002, provides services in many countries in connection with aerospace manufacture, transportation and communications under the brand SPACEX. The Complainant started using the trademark STARLINK in early 2020 in connection with its international communication services, particularly satellite Internet broadband services. The Complainant owns the registered trademark for STARLINK before EUIPO, registered on May 15, 2018. The Complainant additionally owns and operates the domain name <starlink .com>, which resolves to a website providing information about its satellite Internet services.
The Respondent is the chairperson of the board of StarGroup, a group of companies based in Mexico, established 60 years ago, which provides telecommunication and entertainment services. Star Group owns a family of STAR-related trademarks including STAR TV, STAR GO, STAR LINE and STAR GROUP, which are used for the provision of the Respondent’s various services. The Respondent also owns a registered mark for STARLINK in Mexico under class 41 registered in January, 2016. However, an earlier application under class 38 was revoked on being challenged by the Complainant. In November 2017, legal representatives of the Complainant contacted the Respondent’s advisors, initially not naming their client, to enquire whether the Respondent would be willing to sell its STAR LINE mark. After various exchanges of emails, which included disclosure of Complainant’s identity in May 2018, the Respondent notified the Complainant’s advisors, on June 20, 2018, that it did not wish to sell its marks as it intended to continue using them. The disputed Domain Name was registered by the Respondent on June 8, 2018.
Held: The Complainant did not submit any evidence that, as at the date of registration of the disputed Domain Name in June 2018, the Respondent either knew or had reason to believe that the Complainant had any intentions to register or use STARLINK, whether in Mexico or anywhere else. The Complainant itself acknowledged that it only began widespread use of STARLINK in 2020. The Panel notes from the cached copies of the Respondent’s website at the Internet archive that the Respondent’s website was promoting the sale of packages of satellite data in early 2019 that is at least a year before the Complainant’s public launch of its proposed STARLINK services. Moreover, the use made of the disputed Domain Name is consistent with the class of services (telecommunications) for which the first STARLINK mark was registered. The record does not therefore suggest that the Respondent tailored its use of STARLINK in order to provide a service competing with that of the Complainant.
Having regard to the above considerations, there is no evidence before the Panel to impugn the Respondent’s contention that it has been using the disputed Domain Name in conjunction with a bona fide offering of goods and services and without any intention to target the Complainant’s services and STARLINK brand. Whilst, as at the date of registration of the disputed Domain Name the Respondent was aware of the Complainant’s interest in using STARLINK as a brand (albeit not the use to which it intended to put it), the record does not indicate that the Respondent’s motive was to undermine or take advantage of the Complainant’s plans. Moreover, the disputed Domain Name consists of the dictionary terms “star” and “link” and domain names with these characteristics, in the absence of any intent to target by the registrant, would generally be considered available to register.
Complaint Denied
Complainants’ Counsel: Polsinelli PC Law firm, United States
Respondents’ Counsel: De la Torre Abogados, S.C., Mexico
Panel Rejects Complainant’s Conclusory Allegations, Unsupported by Evidence
Hummingbird RegTech, Inc. v. Open Text Corporation, NAF Claim Number: FA2209002011918
<HummingBird .com>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant offers software and related services. It asserts rights in the HUMMINGBIRD mark based upon registration with the USPTO dated March 22, 2022. The disputed Domain Name was registered on December 1, 1994. The Complainant alleges that the Respondent registered and uses the disputed Domain Name in bad faith, with the knowledge of Complainant’s rights in the HUMMINGBIRD mark as the Complainant regularly sought to contact the Respondent to obtain transfer of the disputed Domain Name. The Respondent failed to file a Response. The Complainant also pointed out in reference to statements on the Respondent’s website suggesting that the Respondent acquired an entity known as Hummingbird in 2006.
Held: The Respondent registered the disputed Domain Name, which consists of a descriptive word, on December 1, 1994. The Complainant does not provide any statements about when it was established or commenced use of the HUMMINGBIRD mark however its trade mark registration for the HUMMINGBIRD mark states that it was first used in commerce on January 15, 2017, more than 20 years after the Domain Name was registered. Although, the Complainant insists that the Respondent may have acquired the Domain Name in 2006. This is irrelevant to the outcome, as even if the Complainant acquired the Domain Name in 2006, this still predates Respondent’s first use of the HUMMINGBIRD mark.
The Respondent could not have entertained bad faith intentions respecting the HUMMINGBIRD mark because it could not have contemplated Complainant’s then non-existent rights in HUMMINGBIRD mark at the moment the disputed Domain Name was registered. The Complainant makes conclusory allegations of bad faith but adduced no specific evidence that warrants a holding that the Respondent proceeded in bad faith at the time it registered the disputed Domain Name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith. The Panel finds that the Complainant has failed to meet its burden of proof of bad faith registration and use under Policy.
Complaint Denied
Complainants’ Counsel: Rimon PC, Idaho, USA
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja:
This is a typical case of what is aptly quoted in Mountain Top (Denmark) ApS v. Contact Privacy Inc. Customer 0133416460 / Name Redacted, Mountaintop Idea Studio, WIPO Case No. D2020-1577: “This Complaint was dead on arrival and likely would have been denied had there been no Response”.
Similarly, this Complaint was dead on Arrival and denied even in the absence of any Response. The Complainant relied on a trademark that has a registration of March 22, 2022, whereas the disputed Domain Name was registered in 1994. The Panelist rightly denied the Complaint as the Complainant could not have proved bad faith registration against the Respondent in any case. Although, there was no request for Reverse Domain Name Hijacking (RDNH) but it was a typical case where RDNH should have been ruled. See: Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555:
This Panel firmly believes a UDRP panel may make this inquiry in an appropriate case even if not so requested by the respondent, and indeed should do so fully to discharge its obligations under the Rules, see Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (citation omitted) (“The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use ‘the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.’“), and to preserve the integrity of the UDRP process, see Credit Europe Bank N. V. v. Peter Yu, WIPO Case No. D2010-0737 (concurring opinion); Bittorrent Marketing GmbH v. Adlntensity Ltd, Adam Smith, WIPO Case No. D2007-1033 (opinion dissenting from denial of RDNH)… The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable.
The same applies to other decision reported herein-below, <PlanPay.com>
Domain Name Use in Relation to its Dictionary Meaning
Layaway Travel Australia Pty Ltd v. Cho Yoon-Goo, WIPO Case No. D2022-2632
<PlanPay .com>
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainant is a travel payment plan provider located in Australia. The Complainant uses the PLANPAY trademark as part of its advertising and branding and owns registration to various PLANPAY marks. The earliest word mark was registered in Australia on September 24, 2020, which was followed by International registration on August 13, 2021 and few other registrations. The disputed Domain Name was registered on January 22, 2010 by a Korean Individual, and resolves to a website displaying pay-per-click links.
The Complainant alleges that the Respondent advertises the disputed Domain Name for sale for USD $34,500 that is an exorbitant price well in excess of valuable consideration of the Respondent’s out of pocket costs directly related to the disputed Domain Name. The Complainant further alleges that the Respondent’s use of the disputed Domain Name misleads consumers to believe that the Respondent is offering services of the Complainant or that the website is otherwise affiliated or sponsored by the Complainant. The Respondent did not file a response.
Held: There is no evidence before the Panel that the Respondent either registered or obtained the disputed Domain Name with the knowledge of the Complainant or its PLANPAY trademark. Further, the offer to sell the disputed Domain Name or the Respondent’s use of the disputed Domain Name to display pay-per-click links is not per se illegitimate under the UDRP, without additional supporting factors. Specifically, the pay-per-click links on the website are related to the dictionary meaning of the terms “plan” and “pay” comprising the disputed Domain Name. Hence, this case does not support a finding of bad faith, given that the Complainant’s trademarks were registered more than ten years after the registration of the disputed Domain Name. Moreover, there is no evidence that the Respondent used the disputed Domain Name in bad faith.
Complaint Denied
Complainants’ Counsel: Tiger & Bear Partners, Australia
Respondents’ Counsel: No Response
Panel’s Duty to Recognize Common Request
Prodege, LLC v. Beucheh Maxime, NAF Claim Number: FA2209002012036
<YSenses .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant, founded in 2005, is an American online marketing, consumer polling, and market research company that develops consumer rewards and polling programs under various brands, including YSENSE. By 2020, Complainant’s products, including its YSENSE offering, had over 120 million users. The Complainant asserts common law rights in the YSENSE mark, as a result of its extensive advertising and promotion of the services offered under the mark. The Complainant contends that the Respondent does not use the disputed Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the Respondent passes off as the Complainant to offer services that compete with those of the Complainant: the resolving website a direct copy of the Complainant’s legitimate website and it displays Complainant’s company name.
The Respondent failed to submit a Response in this proceeding. In its email to the Forum, the Respondent states, in pertinent part: “… without knowledge of conflicting domains we registered a website which went against ICANN policies we will wish to terminate the case and the domain and will beg that charges be waived and we promise never to register such domain again.”
Held: The Panel interprets Respondent’s email to the Forum as consent to transfer the disputed Domain Name; this is supported by Respondent’s emails to the Complainant, in which it agrees to transfer the disputed Domain Name. Thus, in the present case, the parties have both asked for the Domain Name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties.
Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy. See Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Transfer
Complainants’ Counsel: Brian J. Focarino of Cooley LLP, Massachusetts, USA
Respondents’ Counsel: Self-represented