“System Critical Updates Available” by Mr. Sten Lillieström
It is not uncommon to believe that language is merely a set of arbitrary units that we learn by rote. That is perhaps the legacy view and the common idea. But at the heart of modern Linguistics are hard, unresolved questions about what is actually going on under the hood. And the efforts to answer them are not without results… Continue reading here.
Register today for the CIIDRC’s Domain Disputes 2024: Conference & Panelist Workshop! In-Person in Vancouver, Canada, and Via Zoom. 
A series of thought-provoking discussions on hot topics and best practices. The morning will feature sessions that are open to all. They will delve into UDRP statistics with Doug Isenberg, explore the current domain name market with Zak Muscovitch, and gain insights on how to avoid pitfalls in UDRP cases from Steve Levy. Then, Richard Levy and Michael Erdle will discuss refiled complaints, offering valuable perspectives and strategies. The morning will wrap up with Gerald Levine’s presentation, ensuring a rich and informative conclusion to our morning session. We are looking forward to seeing you there! Register here: https://arbitration.vaniac.org/ciidrc-2024-udrp-panelist-training-and-workshop-event-registration/. The afternoon sessions will be open to Panelists only with workshops to be led by Steve Levy, Zak Muscovitch, and Doug Isenberg.
SIGN UP FOR THE CONFERENCE & PANELIST WORKSHOP HERE
We hope you will enjoy this edition of the Digest (vol. 4.36), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Respondent’s Counsel “Wasted Everyone’s Time by Defending the Indefensible” (repairsubzeronyc .com *with commentary)
‣ RDNH Found in Light of Insufficient Evidence and a Higher Standard Expected of Represented Complainants (alimonti .com *with commentary)
‣ Complainant Attempts to Hijack a Domain Name Through an “Empty” Complaint (gonso .com *with commentary)
‣ Leading Turkish Soccer Team Fails to Secure a Confusingly Similar Domain Name (kartalyuvasi .com *with commentary)
Panel: Respondent’s Counsel “Wasted Everyone’s Time by Defending the Indefensible”
Sub-Zero, Inc. v. Alina Kartunova / ThisIsRich .com, NAF Claim Number: FA2407002106542
<repairsubzeronyc .com>
Panelist: Mr. Gerald M. Levine
Brief Facts: The Complainant claims itself to be an industry leader in the sale of high-end residential kitchen appliances, including refrigerators, freezers, wine storage systems, etc., that are marketed and sold throughout the United States and the world under the SUB-ZERO mark and logo. The disputed Domain Name was created on February 17, 2024. The Complainant alleges that the Respondent’s use of <repairsubzeronyc .com> to ostensibly offer repair services of the Complainant’s high-end products is likely to mislead Internet visitors into believing, erroneously, that the Respondent and the disputed Domain Name are Complainant, or are affiliated with, sponsored, approved, authorized, or certified by, or otherwise officially connected with the Complainant and the SUB-ZERO Marks. The Respondent contends that its domain name, <repairsubzeronyc .com>, would be understood by relevant consumers to refer to the Respondent’s lawful activities, protected under the nominative fair use doctrine, namely, repairing Complainant’s SUB-ZERO branded appliances in New York City. Such consumers would already have likely obtained the Complainant’s high-end SUB-ZERO branded appliances, and thus would already be familiar with the Complainant’s website at <subzero-wolf .com>.
Under additional submissions, the Complainant asserts that it previously entered into a settlement agreement with the principal of Repair SubZero NYC (Mr. Vaynberg) in connection with <subzerorepairnewyork .com> on June 16, 2021 (UDRP commenced and withdrawn). Section 1.2 of the Settlement Agreement prohibits Mr. Vaynberg from using any marks incorporating SUB ZERO, SUB-ZERO, OR SUBZERO or similar variants, in connection with the sale, rendering, promotion, advertising and/or offering of any kitchen or cooking appliance-related products or services in connection with any business names, trade names, trademarks, service marks, domain names, or websites relating to kitchen or cooking appliances.
Held: The Respondent’s arguments raise the question as to whether the Respondent qualifies for the defense of nominative fair use, and what evidence must be offered to rebut Complainant’s presumptive evidence that it lacks rights or legitimate interests in <repairsubzeronyc .com>. In this case, the Complainant argues that the Respondent is not an authorized servicer of its refrigeration or other products to which the Respondent counters that neither does it have to be to prevail on the theory of nominative fair use. Indeed, the Complainant has suffered dismissals based on the same faulty assertion. See FA 2014882 (Forum Nov. 15, 2022) and FA 1927129 (Forum Feb. 23, 2021). However, while the Panel can agree with the Respondent in principle, and there are many UDRP cases attesting to the lawful use of incorporating a mark in a domain name over a wide range of use, the defense only applies if the evidence supports the defense. See Textron Innovations Inc. v. Robert Vondersaar, FA 2106243 (Forum Aug. 20, 2024).
In this case, though, there is an additional impediment to rights or legitimate interests. The Respondent’s rebuttal is undercut by the undisputed evidence that its principal entered into a Settlement Agreement in 2021 in connection with <subzerorepairnewyorkcity .com> that prohibited it from acquiring any domain names or advertising itself with any variant of the Complainant’s mark. Thus, its acquisition of an almost identical domain name, <repairsubzeronyc .com> on February 17, 2024, undermined its right to hold it. If it had no right, it had no legitimate interest in the Domain Name. Further, if a respondent is contractually prohibited from acquiring domain names or advertising itself with any variant of a complainant’s mark, it follows that its registration and purported use to offer repair services incorporating the Complainant’s mark is itself in bad faith both as to registration and use.
Transfer
Complainants’ Counsel: Bianca L. Ascolese of Foley & Lardner LLP, Wisconsin, USA
Respondents’ Counsel: Eric Eisenberg of Law Office of Eric Eisenberg, New York, USA
Case Comment by ICA General Counsel, Zak Muscovitch:
This is a rather unusual and remarkable case. The Complainant argued that the Respondent is not an authorized servicer of its refrigeration or other products, to which the Respondent countered that it doesn’t have to be an authorized retailer to prevail on the theory of nominative fair use. As the Panel pointed out, “indeed, the Complainant has suffered dismissals based on the same faulty assertion”, referencing two respective three-person Panel dismissals, namely; the SubzeroRepairSanAntonio case (“Respondent operates a legitimate business repairing Complainant’s appliances and there is no evidence that that Respondent is seeking to take advantage of any similarity between the Domain Name and SUB-ZERO Mark beyond that which arises from a truthful use of the SUB-ZERO Mark to describe the services that Respondent’s business provides…Such proceedings are better resolved in a national court of law which has the benefit of a full range of evidentiary tools such as discovery, witness testimony and cross-examination. The Policy is designed to deal with clear cases of cybersquatting”); and the CentricSubzeroRepair case (“Respondent uses the Domain Name for its business of repair of SUB-ZERO appliances, which is consistent with what is reflected in the Domain Name”).
So, it initially looked like this was a nominative fair use case that could lead to dismissal of the Complaint. But then the case took an unexpected turn. It was remarkably revealed in the Respondent’s second response to a Procedural Order, that the principal of the Respondent was the very same person that had entered into the prior UDRP settlement agreement which prohibited subsequent similar registrations. The Respondent didn’t even respond to a third Procedural Order that invited any challenge to the Complainant’s allegation of a settlement agreement.
The Panel stated that the Respondent’s nominative fair use defense was “undercut by the undisputed evidence that its principal entered into a Settlement Agreement in 2021 in connection with <subzerorepairnewyorkcity .com> that prohibited it from acquiring any domain names or advertising itself with any variant of the Complainant’s mark. Thus, its acquisition of an almost identical domain name, <repairsubzeronyc .com> on February 17, 2024 undermined its right to hold it. If it had no right it had no legitimate interest in the domain name”, and further noting that, “If a respondent is contractually prohibited from acquiring domain names or advertising itself with any variant of a complainant’s mark, it follows that its registration and purported use to offer repair services incorporating Complainant’s mark is itself in bad faith both as to registration and use.”
Also remarkably, the Respondent’s counsel in this proceeding was the same as who negotiated the settlement agreement of the prior proceeding, and the Panel stated that “the Respondent’s representative in this proceeding, falsely certified that “the information contained in this Response is to the best of Respondent’s knowledge complete and accurate” Rule 5(viii). He has wasted everyone’s time by defending the indefensible registration of a domain name that in a settlement agreement that he negotiated was prohibited.”
Compounding this revelation, was the fact that this was only disclosed as a result of a Procedural Order and that the Complainant alleged that the Respondent had post-proceeding added a disclaimer “falsely claiming that the website… adequately disclosed the lack of relationship between the parties, in an attempt to mislead the Panel”.
I agree with the Panel’s approach to this case. First, I agree that in the unique circumstances of this case, it was bad faith registration and use for the Respondent to register and use the Domain Name after having agreed not to in settlement of a prior UDRP. The fact that the Respondent failed to address this issue when given an opportunity through a third Procedural Order, suggests that there was really nothing that could have been said to rebut this fact. Settlement agreements, particularly UDRP settlement agreements must be given effect in subsequent UDRP proceedings for them to have any efficacy and encourage settlement. I also agree that had such unique circumstances not occurred, that this could have been a genuine nominative fair use case. Lastly, I am troubled by what appears to have been a failure to disclose the most material of facts by the Respondent. The diligent Complainant’s counsel did a good job in bringing this through wholly appropriate use of additional submissions in the circumstances, which led in turn, to equally wholly appropriate use of Procedural Orders by the Panel.
RDNH Found in Light of Insufficient Evidence and a Higher Standard Expected of Represented Complainants
Alimonti S.r.l. v. eWeb Development Inc., CAC Case No. CAC-UDRP-106684
<alimonti .com>
Panelist: Mr. Alan Limbury, Mr. Gregor Kleinknecht and Mr. Douglas Isenberg
Brief Facts: The Italian Complainant claims that the Alimonti family has been active in the marble and natural stone business since 1903. The Complainant states that it owns two figurative trademark registrations in Italy for ALIMONTI MILANO (June 20, 2017) and ALIMONTI ADVANCE (February 23, 2024). The Complainant also claims unregistered trademark rights to the Alimonti sign, through more than 100 years or extensive and continuous use by the Complainant and its family. The disputed Domain Name was created on March 19, 2009, although the Complainant states that the disputed Domain Name was previously owned by a company belonging to the Alimonti family. The Complainant further adds that the disputed Domain Name “does not resolve to any website,” although a corresponding annex provided by the Complainant shows a web page stating that the disputed Domain Name is “REGISTERED FOR DEVELOPMENT”. The Complainant further alleges that the disputed Domain Name was registered primarily to transfer the domain name registration to the owner of the trademark for valuable consideration in excess of the Respondent’s out-of-pocket cost.
The Respondent contends that it “registers domain names that are surnames, descriptive, unique and brand-able, acronyms, or are otherwise non- infringing”; that it “offers a service wherein a customer can either purchase a domain name by itself from Respondent, or the customer can alternatively purchase a website development package along with a domain name.” and that “[a]t no time had Respondent been aware of the Complainant or its business. The Respondent adds that “at the time of the [Disputed] Domain Name registration in 2010, Complainant didn’t have any registered trademarks, let alone in Canada where the Respondent is located[,] [n]or did Complainant have any significant reputation in Canada such that Respondent would have heard of it.” The Respondent further contends that “many people and businesses all over the world… share” the Alimonti name as a surname or as a business name and that it never “solicit[ed] Complainant” and instead “merely responded to Complainant’s request for a quote based upon false pretenses” in which the Complainant agreed to the Respondent’s terms.
Held: The Complainant has not specifically addressed whether the Respondent’s use of the disputed Domain Name is bona fide, as the Complainant has stated that the disputed Domain Name “does not resolve to any website.” The Respondent contends that this active web page demonstrates a bona fide use of the disputed Domain Name – especially because the name ALIMONTI is widely used by many others worldwide; the Respondent’s website does not target the Complainant; and the Complainant has not established that the ALIMONTI Trademark is strong or widely known. See also WIPO Overview 3.0, section 2.1: “generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.” Although “Alimonti” is not necessarily an acronym, dictionary word or common phrase, its status as a not uncommon surname fits within the same criteria. Accordingly, the Panel finds that the Respondent has established rights or legitimate interests in the disputed Domain Name.
The Complainant further relies upon the Respondent’s offer to sell the disputed Domain Name for US $39,500. However, the Respondent claims the sale discussion was initiated by the Complainant and denies registering the Domain Name to sell it specifically to the Complainant. The Complainant further appears to rely on the passive holding doctrine from the Telstra decision (WIPO D2000-0003), but it does not appear to be applicable here, given the active web page advertising the Respondent’s services. Therefore, the question is whether registration of a domain name containing what even the Complainant has called “a family name,” in connection with services unassociated with and otherwise failing to target the Complainant and its trademark, by a respondent that engages in the practice of registering family names (including other Italian family names) for its domain name and website development business – a practice that has been upheld by multiple previous panels – constitutes bad faith. The Panel answers that question in the negative.
RDNH: The Complainant admits the Alimonti name is “a family name”; a cursory web and/or trademark search would have identified numerous uses of the Alimonti name by those unassociated with the Complainant; the Complainant’s Annex contradicts Complainant’s argument that the disputed Domain Name “does not resolve to any web site”; the Complainant has provided no evidence that the Respondent has targeted the Complainant; the Complainant provided incomplete details about the Respondent’s offer to sell the disputed Domain Name; and a number of previous decisions under the Policy have denied transfers under similar circumstances.
Furthermore, the Complainant was represented by counsel, and section 4.16 of WIPO Overview 3.0 states: “Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.” In light of all of these factors, the Panel finds that the Complainant has attempted to engage in RDNH.
Complaint Denied (RDNH)
Complainants’ Counsel: Danilo Martucci (Tonucci & Partners)
Respondents’ Counsel: Zak Muscovitch (Muscocvitch Law Professional Corporation)
Case Comment by Newsletter Editor, Ankur Raheja:
Congratulations to Zak Muscovitch (ICA’s General Counsel) for successfully representing his client in this matter.
This case highlights that there are really “two UDRPs”. The “first UDRP” is used by trademark owners to address clear cases of cybersquatting and represents the vast majority of Complaints filed. The “second UDRP” is used by trademark owners who covet a domain name but have no legal entitlement to it and results in dismissal or even RDNH. Although this second type of UDRP represents only a small fraction of the overall volume of UDRP cases, domain name owners who are on the receiving end of one of these meritless or abusive cases cannot help but be frustrated. The Respondent in this particular case was the unfortunate recipient of six (6) cases over the course of ten (10) years, as shown in UDRP.tools. It won all six (6) cases and four (4) of them resulted in a finding of RDNH against the Complainant, including this most recent one. A brand-side attorney or trademark manager who is very experienced with the UDRP may never even come across or be aware of such cases, as the cases that they tend to bring are “slam-dunk” cybersquats. On the other hand, attorneys who regularly represent domain name owners and their domain name investor clients will be acutely aware of such cases as it is this type of case that they deal with almost exclusively. Accordingly, one might say that there are “two solitudes” in the UDRP, or as one attorney put it to me recently, “two ships passing in the night”.
Turning to this particular case, the Panel found that the Respondent had rights and a legitimate interest in the Domain Name. This is to the credit of the Panel as too often, Panelists will avoid making such an affirmative finding and skip to bad faith registration and use. As has been written about previously, for example in Digest Volume 2.37
“We see Panels skipping a Respondent’s legitimate interest in many cases. 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, there is a compelling argument to be made that Panelists owe it to Respondents in some cases, to make affirmative findings of their rights and legitimate interests.
This is so for a couple of reasons. First, a Respondent who has had its bona fides challenged and been falsely accused of what essentially amounts to a type of fraud, will often want some vindication and confirmation that indeed the disputed property belongs to them. Though strictly speaking a Panel need not make such a finding and may simply dismiss a Complaint, justice may dictate at least in some cases, that a Panel provide some satisfaction to the Respondent. Second, if Panels were to consistently skip over affirmative findings of legitimate interest in favour of respondents, it has a deleterious effect on bona fide registrants, particularly investors. Their business of lawfully investing in domain names is given short shrift, but more importantly, the case law is thereby not permitted to as fully embrace their bona fide business as it might otherwise be if panelists acknowledged a Respondent’s rights and legitimate interests more often and where appropriate.
Lastly and of perhaps the greatest significance, is that the Policy itself pursuant to Paragraph 15(c), expressly enables a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):…” [emphasis added]
It is therefore gratifying to see the Panel not skirt the issue of a Respondent’s legitimate interest where the facts support such a finding.
The Panel also found that the Complainant failed to meet the third element. It is particularly gratifying to see the Panel take note of the limited applicability of the Telstra test, when it said:
“Complainant further appears to rely on the passive holding doctrine, articulated in one of the earliest decisions under the Policy, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. That policy applies in cases of “non-use of a domain name (including a blank or ‘coming soon’ page),” WIPO Overview 3.0, section 3.3, which does not appear to be applicable here, given the active web page associated with the disputed Domain Name advertising Respondent’s services.”
Lastly, the Complainant found RDNH for several reasons, including; a) the Complainant “admit[ted] that the Alimonti name is a family name”; (b) a cursory web and/or trademark search would have identified numerous uses of the Alimonti name by those unassociated with Complainant; c) Complainant’s own annex contradicts Complainant’s argument that the disputed Domain Name “does not resolve to any web site”; d) Complainant has provided no evidence that Respondent has targeted Complainant; e) Complainant provided incomplete details about Respondent’s offer to sell the disputed Domain Name; f) a number of previous decisions under the Policy have denied transfers under similar circumstances; and g) Complainant was represented by counsel, and section 4.16 of WIPO Overview 3.0 states: “Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.“
It is crucial that Panels find RDNH when warranted as not only does it provide some modicum of justice to the Respondent who has been falsely accused of conduct akin to fraud or theft, but it also plays in integral deterring role in the UDRP system. Although Complainants and counsel who engage in RDNH pay only a small price in terms or reputation and embarrassment, it is nevertheless a price that must be exacted for the UDRP to remain a credible and serious alternative dispute resolution system.
Complainant Attempts to Hijack a Domain Name Through an “Empty” Complaint
Schwanhäußer Industrie Holding GmbH & Co. KG v. Germanium World LLC, CAC Case No. CAC-UDRP-106685
<gonso .com>
Panelist: Ms. María Alejandra López García
Brief Facts: The Complainant, founded in 1926, is a German functional bikewear supplier company. It owns the domain name <gonso .de>, at operates its official website to promote its products. The Complainant owns the EUIPO wordmark for GONSO, registered on August 21, 1998. The disputed Domain Name <gonso .com> was registered on October 23, 2011, and resolves to an active website, where the disputed Domain Name is offered for sale. The Respondent is an experienced Domain Name Investor, who holds a portfolio of approx. 5000 common words, inherently valuable “.COM” domain names. The Complainant alleges that the disputed Domain Name is offered for sale for the amount of US $24,500 and is in Bad Faith. The Respondent requests that the evidence submitted by the Complainant in German language be disregarded in accordance with paragraph 11(a) of the Rules and Article 11 of the CAC’s UDRP Supplemental Rules.
The Respondent contends that the Complaint is brief, an attempt to hijack the 2011 registered domain name and mislead the proceedings, by suppression of relevant information. Rather, the disputed Domain Name was acquired in 2011 as part of its investment strategy of acquiring meaningful and short dot-com domains as part of its portfolio of domain names at <domainshop .com>. The Respondent further contends that the Complainant’s allegation that the Respondent’s offer to sell the disputed Domain Name for $24,500 is evidence of bad faith, is false and self-serving, that at no time did the Respondent solicit the sale from the Complainant; it was the other way around. The Respondent also points out that in a UDRP proceeding, higher standards are expected from a complainant, given that as in this case, the Complainant is represented by counsel, who ought to know better and who is under an obligation imposed by paragraph 3(b)(xiii) of the Rules to undertake at least minimal due diligence before filing a complaint.
Held: The total absence of the Complainant’s contentions linked to specific evidence, the Panel finds that the Complainant has not established a prima facie case that the Respondent lacks rights and legitimate interests under the Policy. Despite such absence, the Respondent assumed the burden of proof, strongly argued and provided the corresponding evidence before the Panel, essentially that the Respondent’s use of the disputed Domain Name is in connection with a bona fide offering of goods and services. Based on the provided evidence and the circumstances of this case, where the Respondent acting as a Domain Name Investor, selected and registered the term GONSO, for its potential value as a personal name, without intent to target or take advantage of the Complainant’s trademark GONSO, the Panel is ready to accept that the Respondent offered for sale, in this case, constitutes a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy, therefore, the Respondent owns rights and legitimate interests in the disputed Domain Name.
Further, the trademark GONSO was registered in 1998, while the Respondent acquired and registered the disputed Domain Name in 2011, meaning 13 years after such trademark. However, the Panel can find no evidence upon which to conclude that by the time of the registration of the disputed domain by the Respondent, located in the United States, was aware of the Complainant’s business and/or trademark. The Complaint has provided less than the minimum evidence and almost no arguments to support this case, despite being legally represented. In relation to the use in bad faith, and of course, based on the parties’ submissions, the Panel finds that the term GONSO is not exclusively associated with the Complainant’s trademark. Additionally, the Respondent’s offer for sale of the disputed Domain Name, in this case, doesn’t constitute bad faith under the Policy. The Complainant has failed to prove that the disputed Domain Name has been registered and is being used in bad faith.
RDNH: In addition to the facts and circumstances of this case, in July 2020 the Complainant contacted the Respondent indirectly, to potentially explore the acquisition of the disputed Domain Name. However, given the price of the disputed Domain Name, estimated at $24,500, the negotiation did not advance. Instead, the Panel notes that, almost 4 years later, the Complainant decides to submit a sort of “empty” Complaint, with mere supporting evidence, avoiding the resources available on the CAC’s website, performing intentional substantial omissions, “presumably to acquire the disputed Domain Name with minimal cost”. Motive that “belies the Complainant’s undertaking, required by paragraph 3(b)(xiii) of the Rules, “that this Complaint is not being presented for any improper purpose”. (see e.g. Mangels Industrial S.A. v. Mira Holdings, Inc., WIPO Case No. D2024-2275; WIPO Overview 3.0, section 4.16).
Complaint Denied (RDNH)
Complainants’ Counsel: NA
Respondents’ Counsel: Ankur Raheja (Cylaw Solutions)
Case Comment by ICA General Counsel, Zak Muscovitch:
Congratulations to our Editor-in-Chief, Ankur Raheja of Cylaw Solutions, for successfully representing his client in this matter.
Like we saw with the Alimonti case, above, the Complainant had a trademark which pre-existed the Domain Name registration, but having a trademark was not enough. As pointed out by the Respondent in its Response, “the section [of the Complaint] containing “Factual and Legal Grounds” comprise[d] only a handful of short paragraphs in less than one page, just making use of approx. 200 words”, leading the Panelist to note that four years after trying to purchase the Domain Name, the Complainant decided to “submit a sort of “empty” Complaint, with mere supporting evidence, avoiding the resources available on the CAC’s website, performing intentional substantial omissions, presumably in an effort to acquire the disputed domain name with minimal cost”, leading to a finding of RDNH.
This is an important lesson not just for this Complainant but for every Complainant. Having a trademark is not enough. A Complaint must provide evidence of targeting. And where a Complainant cannot demonstrate its entitlement to the Domain Name under a UDRP, a Complainant should not use the UDRP as an alternate means of acquisition after failing in the marketplace. This will result in RDNH as the Panelist found in this case.
Here, the Complainant based its argument solely on the offering of sale of the disputed Domain Name for US $24,500, which was communicated in 2020 correspondence and also based on the fact that the Domain Name is currently directed to a parking page. However, much like in the Alimonti case, the panel found that the Respondent’s acquisition of the Domain Name was part of a broader strategy to invest in common and valuable domain names, with no intent to exploit the Complainant’s trademark. It is once again gratifying to see a Panelist not sidestep or overlook a Respondent’s legitimate interest, by making an affirmative finding where the facts so warrant. Indeed, the Panelist noted that the “Respondent assumed the burden of proof, [and] strongly argued and provided the corresponding evidence before the Panel, essentially that Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods and services, based on the potential value of the word “GONSO” as a personal name, and not around the Complainant’s trademark GONSO.”
The Panelist also to her credit, further pointed out that merely offering a Domain Name for sale does not inherently indicate bad faith, and in this case corresponded to a term which is not exclusively associated with the Complainant, which is consistent with the previous rulings under the UDRP, such as Havanna S.A. v. Brendhan Hight WIPO-D2010-1652: “Selling domain names with commercial value can itself be a bona fide offering of goods or services, and a ‘general offer’ to sell a generic domain name is not evidence of bad faith, ‘absent any specific intent derived from exploitation of the goodwill associated with an incidental trademark’”. For further reading on this topic, see Section 3.5 of UDRP Perspectives.
Leading Turkish Soccer Team Fails to Secure a Confusingly Similar Domain Name
Besiktas Jimnastik Kulübü Derneği v. Altan Tanriverdi, DevKit Srl., WIPO Case No. D2024-2179
<kartalyuvasi .com>
Panelist: Mr Robert A. Badgley (Presiding), Mr. Ahmet Akgüloğlu and Ms. Diane Cabell
Brief Facts: The Complainant, founded in 1903, is a professional Turkish sports club which competes in basketball, volleyball, boxing, wrestling, and soccer. According to Complainant, its soccer team is one of the leading soccer teams in Türkiye. The Complainant holds various trademark registrations for the mark KARTAL YUVASI, including Turkish trademark registrations dated January 23, 2009, and November 11, 2013. Since April 16, 2008, the Complainant has used the domain name <kartalyuvasi .com .tr> to host its commercial website offering for sale various gear and merchandise for supporters of the Complainant’s sports club. The term “kartal yuvasi” also means “eagle’s nest” in Turkish. The Domain Name was registered by the Respondent on September 15, 2013. As of May 24, 2024, the Domain Name resolved to a parking page which included hyperlinks related to soccer.
The Respondent contends that in 2013, the Respondent founded Senkroni Turizm ve Internet Teknolojileri San. Tic., where he could carry out business within the scope of Tourism and Internet activities and around the same time, he registered high-level and high-priced projectable domain names related to tourism and the Internet. The Respondent regularly followed the domain auction sites and bid on domain names related to his projects or tried to develop projects for domain names he found to be of high quality. The Respondent further contends that between 2012 and 2018, he conducted research for various initiatives within the company’s fields of activity, such as boutique coffee roasting, wooden toy production or dropshipping, decorative product manufacturing, and so on. According to the Respondent, one of his ideas was to sell eagle’s nests as decorations and provide supporting evidence.
Held: The Panel concludes that the Respondent has a legitimate interest in respect of the Domain Name. As noted above, the Domain Name translates as “eagle’s nest” in Turkish. On the record presented, it appears undisputed (especially as the Complainant did not file a reply to the Respondent’s response to Procedural Order No. 1) that the Respondent was, for a time, actually using the Domain Name to market the eagle’s nest decorations that he was selling around that time. This finding of legitimacy is buttressed by the fact that Respondent had registered other domain names around that time which correspond to dictionary words in the Turkish language.
On this record, the Panel sees no basis to conclude that the Respondent registered the Domain Name to target Complainant’s trademark or free ride on that mark’s renown. In sum, Respondent’s conduct vis-à-vis the Domain Name falls within the meaning of the above-quoted Policy paragraph 4(c)(i). Given the Panel’s conclusion above in the “Rights or Legitimate Interests” section, the Panel need not address the “bad faith” element of the Policy.
Complaint Denied
Complainants’ Counsel: YILDIRIM LAW FIRM, Türkiye.
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
It may have appeared a bit suspicious to the Panel that the Respondent just happened to have registered the Turkish words for “eagle’s nest” to sell eagle nests in 2013 as a domain name considering that there was a well-established and apparently well-known soccer club in Turkey associated with that phrase that had been using the .tr version since 2008. It may also have appeared a bit suspicious to the Panel that the Complainant failed to mention that it had previously brought a UDRP against the same name and won, only to have subsequently let the domain name expire.
But all this was apparently cleared up as a result of the Panel’s Procedural Order. The Complainant explained that management and ownership had changed since the 2012 previous UDRP case and was therefore unaware of it. The Respondent provided evidence of “actually using the Domain Name to market eagle’s nests decorations”, including a sales receipt from 2017 and a website offering eagle nest decorations. As also noted by the Panel, the fact that the Respondent had registered other domain names around that time which correspond to dictionary words in Turkish buttressed the Respondent’s legitimate interest.
Aside from the rather unusual subject matter of this dispute and the undisclosed previous Complaint, this case is noteworthy for the Panel’s identification of the Respondent’s legitimate interest. The Panel found that “Respondent was, for a time, actually using the Domain Name to market the eagle’s nests decorations that he was selling around that time.” Note the phrase, “for a time”; i.e. previously, not at the time that the Complaint was filed. This is the correct approach in assessing the timing of legitimate interest. As noted by the Panel in quoting the Policy itself, the relevant time period is “before notice to you of the dispute”:
“before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services;”
It matters not that the Respondent wasn’t still using the Domain Name to sell eagles nests at the time of filing the Complaint. Rather, the Respondent discharged its onus under Paragraph 4(c)(i) of the Policy by demonstrating that the Domain Name corresponded to a common term and that prior to notice of the dispute, the Respondent had used the Domain Name for a bona fide offering of goods or services. This makes perfect sense since not only is it the plain language of the Policy, but also because there was no intervening event which would serve to extinguish the right and legitimate interest that the Respondent had. For related commentary, see ICA UDRP Digest Vol. 4.35 in connection with the Minutemen.com dispute.
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.