Panel: Respondent’s Prerogative to Seek Any Price it Wishes for a Generic-Word Domain Name
Although the Panel ultimately rejected the claim for RDNH, the Panel did consider it – as is its duty to under the Rules where the facts so warrant, as was the case here. RDNH is a discretionary remedy and Panels have significant latitude in accepting or rejecting an RDNH claim, provided that they duly take into consideration the circumstances and the equities of a particular case. Panels will often get a “flavour” of a case with the benefit of the full record and their decision respecting RDNH often reflects that and is not always fully brought out in the decision… continue reading commentary 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. 4.38), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Respondent’s Prerogative to Seek Any Price it Wishes for a Generic-Word Domain Name (hairdo .com *with commentary)
‣ Panel: “Complainant Overreaching” Results in RDNH Against a Preschool (seedsoflifechildcare .com *with commentary)
‣ A Clear Case of Cybersquatting (tencentdocs .com *with commentary)
‣ Panel: “Rabbit” and “Video” in Disputed Domain Unlikely to Invoke Complainant’s Trademark (rabbitvideochat .com *with commentary)
‣ Does a Trademark Application Provide Constructive Notice Under the Policy? (asweev .com *with commentary)
Panel: Respondent’s Prerogative to Seek Any Price it Wishes for a Generic-Word Domain Name
HairUWear Inc. v. Vince Harasymiak / Domain Capital, NAF Claim Number: FA2407002108846
<hairdo .com>
Panelist: Mr. Charles A. Kuechenmeister (Chair), Mr. Steven M. Levy, and Mr. David P. Miranda
Brief Facts: The Complainant provides alternative hair products and services, including wigs, hair pieces, and hair extensions, under the HAIRDO. mark. It has rights in the mark based upon its registration with the USPTO. The Complainant alleges that the Respondent acquired the domain name with constructive or actual knowledge of the Complainant and its mark, the domain name is currently inactive, and the Respondent offers it for sale at a price which exceeds the direct costs associated with it in a manner which causes a likelihood of confusion with the Complainant’s mark. The disputed Domain Name was acquired on July 12, 2023 by the Respondent who is in the business of buying and selling common word domain names. The Respondent contends that buying and selling commercially valuable domain names without targeting a mark holder is a legitimate interest and there is no evidence that it targeted the Complainant. The Complainant’s mark is a common word and the public does not associate it with the Complainant exclusively.
Under additional submissions, the Complainant further alleges that the Respondent was attracted to the domain name because of its value as it relates to the Complainant. The manner in which the Respondent markets the domain name is distinct from that in which it markets its other domain names. The web page advertising the domain name lists its price as US $125,000, which is far in excess of the prices, ranging from US $10,000 to US $25,000, listed for its other domain names. Further, while the other domain names are listed on generic parking pages giving only basic information about them, the domain name is given special treatment, affirmatively promoting it for use in connection with hair services, specifically including hair extensions, which is a specialty of the Complainant. The Respondent in response contends that the fact that the landing page advertising the domain name for sale shows that the domain name could be used in connection with the obvious generic meaning of the term does not demonstrate targeting. The Respondent is entitled to a finding of reverse domain name hijacking.
Held: The Complainant’s primary argument in support of its claim of targeting is that the Respondent has treated the domain name much differently than any of the other domains it offers for sale. The Exhibit with the additional submissions included a screenshot of the brandbucket website dated September 4, 2024, advertising the Domain Name for sale, for US $125,000, but it is somewhat more involved than the earlier webpage in that it lists a number of keywords associated with hairstyles, including hair extensions, which is one of the Complainant’s speciality products. The Complainant also submits screenshots of other domain sale platforms advertising the other domain names listed by the Respondent and points out that these webpages are of a generic nature, without promotional material with prices ranging upto US $25,000.
The Complainant argues that the difference in treatment demonstrates that the Respondent registered and is using the disputed Domain Name in a manner that targets the Complainant and its mark. The Complainant also argues that the Respondent mischaracterized the extent to which its mark is a common dictionary word. The Complainant submits screenshots of a Google search for its mark, “Hairdo.,”, wherein two entries on these pages do in fact refer to the Complainant by its corporate name and by its HAIRDO. mark, but the other entries relate to wigs and hair extensions and hairpieces and the like, generically. The fact remains that the Complainant’s mark is weak, and the evidence of its being well-known as a source indicator for the Complainant is very thin at best.
The Panel acknowledges the difference in Respondent’s treatment of the domain name as demonstrated by the exhibits but the body of evidence, taken as a whole, falls short of demonstrating that the Respondent was aware of the Complainant and its mark when it acquired the Domain Name or that it acquired the domain name to target this Complainant. The mark is essentially a common word, the period notwithstanding, and even if the Respondent is currently marketing the domain name in such a way as to target the Complainant, giving the Complainant’s argument the full benefit of any doubt, there is absolutely no evidence that the Respondent acquired the domain name with the Complainant and its rights in mind. As such, the Panel finds that the Respondent is engaged in the bona fide service of investing in and offering for sale a domain name which consists of a generic word that does not target the Complainant’s trademark.
RDNH: The Respondent argues that the Complainant should have known that its filing of the Complaint was an abuse of the Policy and that it should be found to have engaged in reverse domain name hijacking. The Panel is not persuaded. The Complainant has managed to record incontrovertible rights in its HAIRDO. mark with the USPTO, and its claim of no rights or legitimate interests based upon the difference in the Respondent’s treatment of the domain name, though flawed due to the Respondent’s prerogative to seek any price it wishes for a generic-word domain name, has at least a minimal color of validity and was supported by evidence. The Respondent’s claim of reverse domain name hijacking is rejected.
Complaint Denied
Complainant’s Counsel: Amy Brozenic of Lathrop GPM LLP, USA
Respondent’s Counsel: Jason Schaeffer of ESQwire.com, P.C., USA
Case Comment by ICA General Counsel, Zak Muscovitch: Although the Panel ultimately rejected the claim for RDNH, the Panel did consider it – as is its duty to under the Rules where the facts so warrant, as was the case here. RDNH is a discretionary remedy and Panels have significant latitude in accepting or rejecting an RDNH claim, provided that they duly take into consideration the circumstances and the equities of a particular case. Panels will often get a “flavour” of a case with the benefit of the full record and their decision respecting RDNH often reflects that and is not always fully brought out in the decision.
Another Panel however, could have possibly come to a different conclusion on the same facts, and found RDNH. In particular, the obvious weakness in the Complainant’s arguments about pricing in connection with a clearly generic term and no evidence of targeting, could have resulted in the Panel finding that the represented Complainant ought to have never brought the case as it was doomed to fail, as argued by the Respondent. The arguable “colour of right” referenced by the Panel seems solely based upon the Complainant owning a trademark corresponding to a clearly generic term – which alone, doesn’t really give rise to an entitlement to the Domain Name under the UDRP. If having a registered trademark were enough, then a Complainant could avoid RDNH in many cases, just by having a “colour of right” based upon merely having a trademark. Moreover, the Complainant’s argument about differential pricing seems to fall flat based upon the evidence referenced in the decision.
I want to commend the Panel however, for making an affirmative finding of legitimate interest in this case. The Panel could have just routed around this issue by stating that the Complainant failed to prove that the Respondent had no rights or legitimate interest, as some Panels erroneously tend to do in some cases. But instead, the Panel fulfilled its obligations under Paragraph 15(c). As stated in UDRP Perspectives at 2.1:
“Panels may be tempted to skip over determining whether a Respondent has rights and a legitimate interest. 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, Panelists should generally make an affirmative finding of rights and legitimate interest if the facts so warrant, due to the implicit obligations of Rule 15(c).
Paragraph 15(c) of the Policy expressly entitles 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):…
A Respondent who has had its bona fides challenged and been falsely accused of what essentially amounts to a type of fraud, may deserve some vindication and confirmation of their rights and interests as the Policy provides for, and as was appropriate in this case.
Ultimately, this was a case of a covetous complainant, rather than a genuine cybersquatting case, despite the Complainant attempting to match the facts to the established indicia under the Policy. That’s the difference between a righteous case and an abusive one; Was the Complaint brought to get a domain name that the Complainant merely covets on the basis of pretextual or contrived arguments? Or was the Complaint brought to obtain a domain name which was registered only to take unfair advantage of a Complainant’s trademark?
Panel: “Complainant Overreaching” Results in RDNH Against a Preschool
Seed of Life Center for Early Learning and Preschool, Inc. v. Ama Thomas, WIPO Case No. D2024-2936
<seedsoflifechildcare .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The US Complainant has operated childcare centers “in multiple locations since 1997” and operates a <seedoflifellc .com> website. The Complainant holds US trademark registration dated April 23, 2019, for a composite mark comprised of a drawing above the words “Seed of Life Center for Early Learning and Preschool Inc.” and also claims common law rights in the mark since October 2017. However, the Panel notes that the Complainant does not attach historical evidence of sales, advertising, or public recognition to support a claim for a common law mark from that time. The disputed Domain Name was created on October 15, 2021, and resolves to the Respondent’s website headed “Seeds of Life Child Care”, advertising the licensed childcare services of the Respondent at a single location in Brooklyn, New York.
The Complainant’s counsel sent the Respondent a cease-and-desist letter dated March 11, 2024, stating that the Respondent’s use of a similar name for childcare services in Brooklyn, New York was “directly overlapping” and “in direct competition” with the Complainant’s trademarked childcare services “in the Seattle area”. The Complainant alleges bad faith based on the Respondent’s “constructive notice” of the Complainant’s United States trademark registration, which was published two and a half years before the Respondent registered the disputed Domain Name.
The Respondent did not file a formal Response, and the Respondent’s website does not provide information about the history of the Respondent’s operations. However, the Panel notes that the Respondent’s social media accounts on Facebook and Instagram include posts and photos of the Respondent’s childcare business under the name “Seeds of Life Child Care” dating back to January 2021, with earlier posts showing what is the same childcare facility operating under a name abbreviated as “cqacc”.
Held: The Panel observes that, before notice to the Respondent of the dispute, the Respondent appears to have used the disputed Domain Name in connection with a bona fide offering of goods or services and that the Respondent has been commonly known by the disputed Domain Name or a name correspondent to the disputed Domain Name, see WIPO Overview 3.0, section 2.2 and section 2.3. They are evident from a perusal of the Respondent’s website, social media pages, and the online database of the New York Division of Corporations. It appears that the Respondent has been doing business under the name Seeds of Life Child Care LLC since early 2021, and the Respondent’s company filed an amendment to its charter to formally change its name to that form in April 2022.
The Complainant further relies entirely on the notion of constructive notice under the bad faith clause. The Panel does not find UDRP precedents that rely wholly on constructive notice of a registered mark, and that is unsurprising since the Policy requires a showing of bad faith in the registration and use of a disputed Domain Name. This Panel is unwilling to impose a sweeping duty on individual domain name registrants such as the Respondent to conduct a comprehensive trademark search before registering a domain name corresponding to a name under which they are doing business. In this case, there is no evidence that the Complainant’s mark was a well-known mark, and the Complainant has not presented additional reasons to assume that the Respondent would likely be aware of the mark.
The Respondent chose not to reply to the Cease-and-Desist letter. Many others would similarly choose not to reply to a letter that claimed that a childcare facility in Brooklyn, New York offered “overlapping” services in “direct competition” with childcare services in Seattle, Washington, 2851 miles (4588 kms) distant. That would be rather a long drive for a parent to drop off a child every morning. So, the Panel also does not find the Complainant’s arguments persuasive under the Policy, paragraph 4(b)(iv). It simply is not plausible that the Respondent, running a two- or three-person childcare facility in Brooklyn that was already doing business under the name “Seeds of Life Child Care”, (a) was likely aware of the Complainant’s trademark and (b) decided to register the disputed Domain Name to lure childcare customers across the country.
RDNH: In this case, the Complainant is represented by counsel and yet failed adequately to address the obvious issues under the second and third elements. The disputed Domain Name was already in use for an established business under a corresponding name. Moreover, the nature of these small service businesses is highly localized, and the Complainant was clearly overreaching in claiming that the Respondent in Brooklyn, New York is a “direct competitor” of the Complainant in Seattle, Washington and must have been targeting the Complainant’s mark.
The Complainant retained a third-party service to investigate whether the Respondent had trademark rights or a company with a corresponding name but apparently failed to take the simple step of looking at the company registrations database in New York State, where the Respondent’s business is located, as is evident on the Respondent’s website. On these facts, even in the absence of a Response, the Panel finds it appropriate to make a finding of attempted Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: K&L Gates, LLP, United States
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This is a remarkable decision, well worth reading, and indeed enjoying. The Panel hit all the right notes and provided a thorough and compelling analysis. It is gratifying to see a Panel protect even a defaulting Respondent, when the facts and circumstances so warrant.
For further reading about this case, please see DNW.com’s “Seattle Childcare Company Tries to Hijack a Domain Name”.
A Clear Case of Cybersquatting
Tencent Holdings Limited, 腾讯科技（深圳）有限公司 v. rongji zeng, HKIAC Case No. HK-2401904
<tencentdocs .com>
Panelist: Mr. Ankur Raheja
Brief Facts: The Complainant No. 1, Tencent Holdings Limited was founded in November 1998, and is a leading provider of Internet value-added services in China. On June 16, 2004, Tencent Holdings Limited (SEHK 700) went public on the main board of the Hong Kong Stock Exchange. The Complainant provides social platforms and digital content services, that include leading Internet platforms in China – QQ (QQ Instant Messenger), Weixin/WeChat, QQ.com, QQ Games, Qzone, and Tenpay. Tencent Holdings Limited and 腾讯科技（深圳）有限公司 (collectively “Complainant”), own various trademark registrations for the mark TENCENT, including the CNIPA (China) trademark, registered on April 21, 2002. The disputed Domain Name was registered on 18 April 2018 by a Respondent located in China. The Complainant alleges that the Respondent’s registration of the disputed Domain Name shortly after the Complainant announced the launch of ‘Tencent Docs’ on April 18, 2018, strongly suggests that the Respondent knew of the Complainant and only registered the disputed Domain Name in response to the publicity generated and received by the Complainant.
The Complainant alleges further that the Respondent has combined the generic, descriptive term “docs” with the Complainant’s TENCENT trademark, referring to the Complainant’s cloud-based document tool and that it is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the Domain Name. In addition to the disputed Domain Name, the Respondent’s email address currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses, such as Disney, Huawei, Hyundai, Microsoft and Volkswagen. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typo-squatting, which is evidence of bad faith registration and use of the disputed Domain Name. The Respondent did not file a Response to the Complaint.
Held: The disputed Domain Name has a registration as of April 18, 2018, whereas the Complainant has been using the TENCENT mark in China for more than twenty years. Specifically, the Complainant released a cloud-based document service ‘Tencent Docs’ to the public on April 18, 2018, which is exclusively associated with the Complainant. The disputed Domain Name, also registered on April 18, 2018, resolves to a website whereby the disputed Domain Name is offered for sale at US $5000. This is a clear case of cybersquatting, as the disputed Domain Name is composed of the Complainant’s well-known trademark and solely refers to its product ‘Tencent Docs’. It is evident that the Respondent registered the disputed Domain Name intending to target and exploit the Complainant’s trademark and its public announcement regarding ‘Tencent Docs.’ These factors, along with the Complainant’s assertions, are sufficient to constitute a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
The facts and circumstances of the case further satisfy the Panel that the Respondent had actual knowledge of the Complainant’s trademark at the time of Domain Name registration of <tencentdocs .com>, indicating opportunistic bad faith. In addition, the Respondent’s ownership of other infringing domain names incorporating well-known trademarks like ‘Disney’, ‘Microsoft’, ‘Hyundai’, and so on establishes a pattern of bad faith conduct as outlined in clause 4(b)(ii) of the Policy. Moreover, the disputed Domain Name resolves to a webpage, indicating it is available for purchase at US $5000, which the Complainant alleges exceeds the documented out-of-pocket expenses directly associated with the domain name. Given the facts and circumstances of this case, the Panel finds that the Respondent registered the disputed Domain Name for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, in violation of clause 4(b)(i) of the Policy.
Transfer
Complainant’s Counsel: Mr. Paddy Tam of CSC Digital Brand Services Group AB, Sweden
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: First of all, congratulations to our Editor-in-Chief, Ankur Raheja, for hearing this case and writing a particularly thorough and well-reasoned decision. I further note that the Complainant’s counsel appears to have done a good job in researching the Respondent and providing substantial facts and arguments to the Panel. Good counsel makes a Panelist’s job easier, and Panelists appreciate good pleadings.
This is precisely the kind of case that the UDRP is suited for; a clear case of cybersquatting. As noted in UDRP Perspectives at 0.1, “the UDRP is not intended to resolve all kinds of disputes. Rather, it is only designed and intended for clear cut cases of cybersquatting. Other disputes are not intended to be resolved by the expedited and administrative nature of the UDRP procedure”.
It is also worth noting the Panelist’s remarks under Legitimate Interest. The Panelist noted that “in specific circumstances, a domain name for sale could be considered in connection with a bona fide offer for sale, under paragraph 4(c)(i) of the Policy”, for example “where the Respondent acting as a Domain Name Investor, selected and registered [the term], for its potential value as a personal name, without intent to target or taking advantage of the Complainant’s trademark”. However the Panelist also noted that “in contrast, this is a clear case of cybersquatting, as the disputed Domain Name is composed of the Complainant’s well-known trademark and solely refers to its product ‘Tencent Docs’”.
Panel: “Rabbit” and “Video” in Disputed Domain Unlikely to Invoke Complainant’s Trademark
<rabbitvideochat .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant operates a website at <rabbitscams .com>, with the Complainant’s homepage headed “All Girl Cams”, features webcam images of women, some of which are sexually suggestive, and offers page categorization. The Complainant is the owner of US trademark registration for the word mark RABBITS CAMS (registered on January 27, 2015). The disputed Domain Name was registered on December 15, 2023, and resolves to a website headed with a stylized rabbit logo and the name “rabbit” and states “Welcome! Random chat with people. NO SIGN UP NEEDED”. It features images of men and women (with no overtly sexually suggestive content) and states: “Rabbit is a random video chat application designed for engaging with girls, utilizing the Chatroulette technology.”
The Complainant alleges that the Respondent is not making any bona fide commercial use of the disputed Domain Name, instead, the Respondent is impersonating, or suggesting sponsorship or endorsement by the Complainant, by using the confusingly similar disputed Domain Name to provide video chat services, which the Complainant submits are in direct competition with its services. The Complainant further alleges that the disputed Domain Name was registered long after the Complainant started using its RABBITS CAMS trademark, and “typosquats” upon that trademark by dropping the letter “s” in RABBITS.
The Respondent contends that its platform does not compete with the Complainant’s camera-based adult chat service. While both include the term “rabbit,” the Respondent believes this term is common in the industry, citing various trademarks that also use “rabbit”. The Respondent further contends that its platform focuses on casual chatting rather than adult content, denying any bad faith registration or use of the domain name and stating there is no evidence of user confusion and that it launched before receiving a cease-and-desist letter from the Complainant (which it claims it never received).
Held: The Respondent uses the disputed Domain Name for what appears to be a website offering video chat services, and there is no evidence or circumstances upon the basis of which to infer, that the Respondent’s website was created, or has been used, as a pretext for targeting the Complainant’s trademark. While the Complainant has a registered trademark RABBITS CAMS, the Panel does not find the RABBIT element of that mark to be inherently distinctive, and there is no evidence to suggest that it is regarded by the public as being exclusively referable to the Complainant and its services. The Complainant has furnished no evidence of its commercial profile or trading history, nor any evidence of public recognition. In the circumstances, the Panel does not find that Internet users are likely to assume that any website linked to the disputed Domain Name must be operated by, or otherwise commercially affiliated with, the Complainant. Nor does the Panel accept that the disputed Domain Name “typosquats” upon the Complainant’s trademark.
While the Complainant submits that the Respondent’s website competes with its own, that matter would not of itself be sufficient to avail the Complainant under the Policy, without also demonstrating targeting of the Complainant’s trademark. Therefore, while the two websites have a video chat element in common, the Panel finds that they are significantly different in nature. While the Panel notes that the term “video” in the disputed Domain Name may be associated by the public with the term CAMS in the Complainant’s trademark, this matter is insufficient to persuade the Panel that the Respondent is likely to have had the Complainant’s trademark in mind when it registered the disputed Domain Name, or that the Respondent has used the it with the intention of confusing Internet users. Should the Complainant believe that the Respondent’s website infringes its trademark rights, then that is a matter for the Complainant to pursue in another forum if so advised. The decision in this proceeding must be based solely upon the terms of the Policy, and upon those criteria, the Complaint must fail.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Complainant, who was internally represented, might have had a better chance of succeeding in this case, had it provided a better pleading. The Panel noted that the Complainant “furnished no evidence of its commercial profile or trading history, nor any evidence of public recognition” and “in the circumstances, the Panel does not find that Internet users are likely to assume that any website linked to the disputed Domain Name must be operated by, or otherwise commercially affiliated with, the Complainant”. Had the Complainant provided evidence of its reputation and scope of business, it may have been in position to better persuade the Panel that the selection of a “rabbit” formative domain name for a somewhat related type of website, was not coincidental, but rather was the result of targeting. But in the absence of any such evidence, there was no basis for the Panel to find that the Complainant’s trademark was the target of the registration.
Does a Trademark Application Provide Constructive Notice Under the Policy?
<asweev .com>
Panelist: Ms. Sandra J. Franklin
Brief Facts: The Complainant is in the electric vehicle industry. The Complainant filed an Intent-to-Use Trademark application for the ASWEEV mark with the United States Patent and Trademark Office on May 30, 2024, and argues that it established rights in the ASWEEV mark prior to its Intent-to-Use Trademark application with the USPTO on May 30, 2024. The Respondent registered the disputed Domain Name on May 30, 2024, and offered it for sale. The Respondent did not file a Response in these proceedings.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name and that the Respondent registered and used the disputed Domain Name in bad faith. The Complainant provides evidence of its corporate filing with the State of Washington on May 29, 2024. The Complainant provides screenshots of webpages at <asweev .co> but does not provide any information about when the website was established or about traffic to the website. The Complainant further does not provide any evidence about advertising expenditures or media attention to demonstrate recognition of the mark in the public.
Held: The Complainant argues that it established rights in the ASWEEV mark prior to its Intent-to-Use Trademark application with the USPTO on May 30, 2024. The Complainant relies on prior UDRP cases where the complainant was able to establish consumer recognition with evidence. Here, the Complainant has provided no such evidence. The Complainant states: “Although aSWEEV originally filed on an intent-to-use basis, it is already using its ASWEEV mark in commerce and promoting its offerings under this mark to investors and the general public via the above-referenced website and other marketing efforts.” The Complainant gives no evidence to demonstrate its marketing efforts or otherwise back up this statement. It remains to be seen whether or not the Complainant will be able to secure federal Trademark rights based on commercial use.
An Intent-to-Use Trademark application can serve as constructive notice. The Panel notes, however, that the possible “constructive use” date in this case is the very same date on which the disputed Domain Name was registered. That fact, along with the lack of corroborating evidence, leads this Panel to find that there was no constructive notice based on the Trademark application in this case. While the Panel may see the opportunistic nature of Respondent’s registration of the disputed Domain Name, it is nonetheless incumbent upon the Complainant to make its case and prove rights in the ASWEEV mark. The Panel notes that the Complainant did not even specifically allege common law rights, let alone demonstrate them. The Panel finds that the Complainant has not met its burden of proof.
Complaint Denied
Complainant’s Counsel: Griffin Barnett of Perkins Coie LLP, District of Columbia, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel came to the right decision here, but the Panel’s invocation of the doctrine of constructive notice doesn’t sit right. The Panel stated that an “Intent-to-Use Trademark application can serve as constructive notice”, however it is well-established that not only does the existence of a mere trademark application afford no trademark rights as the Panel noted (“It remains to be seen whether or not Complainant will be able to secure federal Trademark rights based on commercial use”), (also see; CyberTrader v. Gregory Bushell, WIPO D2001-1019; “Mere applications for registration do not prove any protectable right”), but also, under the Policy there is no place for constructive notice in the UDRP. As noted in UDRP Perspectives at 3.4:
“There is no place for the concept of “constructive notice” of trademarks under the Policy. The essence of a Complaint is an allegation of bad faith targeting of the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, it cannot sensibly be regarded as having any bad faith intentions directed at the Complainant.”
See also, The Way International v. Diamond Peters (WIPO-D2003-0264):
“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant? If the existence of a trademark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly”. [emphasis added]
Nevertheless, the Panel was right when it said that “it is nonetheless incumbent upon Complainant to make its case and prove rights in the ASWEEV mark”. This of course is more difficult with unregistered trademarks, however there is a body of case law showing how a Complainant can prove that that it has unregistered and even nascent, trademarks that were likely targeted. Here, the Panel noted that the “Complainant provides evidence of its corporate filing with the State of Washington on May 29, 2024 [and the] Complainant provides screenshots of webpages at <asweev.co>, but does not provide any information about when the website was established or about traffic to the website…Complainant does not provide any evidence about advertising expenditures or media attention to demonstrate recognition of the mark in the public.”
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.