Panel: “Textbook Example of When RDNH is Warranted”
If you were the Panelist and if this case had been undefended, would you have checked the USPTO database yourself to ensure the veracity of the Complainant’s certified claim of having a registered trademark? Would you have closely examined the Complainant’s trademark registration to ascertain if it was on the Principal or Supplemental Register? continue reading
We hope you will enjoy this edition of the Digest (vol. 4.19), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Panel: “Textbook Example of When RDNH is Warranted” (dailyworkouts .com *with commentary)
‣ Synonyms Not Confusingly Similar (1800truckaccident .com *with commentary)
‣ Can Targeting a Trademark “Without Malice” Still be Bad Faith? (journeythruthebible .com *with commentary)
‣ BforBank v BiorBank (biorbank .com)
‣ Prior Registered Domain Name Could Not Possibly Have Targeted Future Trademark (aromatech .com)
Panel: “Textbook Example of When RDNH is Warranted”
<dailyworkouts .com>
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant owns rights in the trademark ‘Daily Workouts’, which was registered with USPTO in November of 2012, with a first commerce use date of December of 2011. The Complainant claims that the trademark ‘Daily Workouts’ has been used in commerce since that time with millions of users and a well-established brand reputation. The Respondent contends that the Complainant does not have rights in the DAILY WORKOUTS mark, as USPTO refused registration in 2012 on the Principal Register, citing that the mark was merely descriptive. In 2020, the Complainant tried again to register its mark on the Principal Register, but the USPTO again refused, finding that the Complainant could not show acquired distinctiveness.
The Complainant alleges that the disputed Domain Name is identical to the product name and live trademark ‘Daily Workouts’ and that the Respondent has not used the Domain Name, is not commonly known by this domain, and is infringing on the rights protected by this issued trademark. The disputed Domain Name was registered knowing that it was a trademarked product name being used in commerce, owned by the Complainant. It is being used in bad faith with no content and only with false intention to prevent the Complainant from using their protected trademark.
The Respondent contends that he is a New Zealand corporation that develops websites and software for various purposes. As a website developer, the Respondent keeps an eye out for potentially valuable descriptive and generic domain names that may become available for purchase and development. As a result, the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the domain name. Although the Complainant has a registration on the Supplemental Register, that registration has no presumption of validity and does not give rise to any constructive notice of trademark rights. The Complainant has not alleged any facts that would show that the Respondent was likely aware of the Complainant and its trademark.
Held: The Complainant has not proven that it owns any trademark rights in the mark DAILY WORKOUTS. As Respondent notes, that mark corresponds to a commonly used term in relation to exercise, and is registered only on the USPTO Supplemental Register. Such a registration reflects a finding by the USPTO that, as of the time of the application (in this case, 2012), the mark was merely descriptive and lacked secondary meaning. That Complainant tried as recently as 2020 to register the mark on the Principal Register, and that the USPTO once again refused on the ground that the mark is merely descriptive, is significant. “Daily workouts” is a common term used in connection with exercise. The Respondent indicates that it registers common terms for investment or development purposes. See WIPO Overview, 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 the Respondent has not yet made any use of the domain name on a website that corresponds to the dictionary meaning of the disputed Domain Name, the Respondent has certified that it registered the Domain Name because of its value as a common phrase. That assertion is credible on this record. Accordingly, the Panel finds that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the Domain Name.
Further, the Complainant alleges that the domain name is “being used in bad faith with no content and only with false intention to prevent Daily Workout Apps, LLC from using their protected trademark.” The Complainant has not, however, come forward with any evidence to show that the Respondent was aware of the Complainant and its trademark when it registered the domain name, nor has it submitted any facts to establish that the Respondent registered and used the domain name to target the Complainant and its mark. To the contrary, the Respondent persuasively contends that it registered this Domain Name because of its value as a common phrase, not because of any trademark rights owned by the Complainant. Accordingly, the Panel finds that the Complainant has not established that the Respondent registered and used the Domain Name in bad faith.
RDNH: This case provides a textbook example of when a finding of RDNH is warranted. The Complainant knew that its mark was not registered on the USPTO Principal Register and, as such, the mark enjoyed no presumption of validity. The Complainant also knew that it tried, without success, to register its mark on the Principal Register in 2020, but the USPTO rejected that application and expressly found that the Complainant’s evidence failed to establish secondary meaning. These facts alone are sufficient to support a finding of RDNH. That the Complainant failed to disclose the 2020 USPTO rejection to the Panel further supports a finding of RDNH.
In addition, as shown above, the Complainant’s allegations as to elements two and three of the Policy were cursory and utterly without merit. They ignored the obvious, common meaning of the term “daily workout,” and failed to include any allegations of fact to support the argument that the Respondent lacked rights or legitimate interests in the disputed Domain Name or that the Respondent was aware of and targeted the Complainant with its registration of this Domain Name. Although, the Respondent did not specifically seek a finding of RDNH, “it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH”, see WIPO Overview 4.16. Rather, it is the Panel’s obligation to enter a finding of RDNH when the evidence supports such a finding. Such a finding is appropriate here.
Complaint Denied (RDNH)
Complainants’ Counsel: President Daniel Miller, Colorado, USA
Respondents’ Counsel: John Berryhill, Pennsylvania, USA
Case Comment by ICA General Counsel, Zak Muscovitch: If you were the Panelist and if this case had been undefended, would you have checked the USPTO database yourself to ensure the veracity of the Complainant’s certified claim of having a registered trademark? Would you have closely examined the Complainant’s trademark registration to ascertain if it was on the Principal or Supplemental Register? Clearly, one cannot always rely on certified Complaints which reference a trademark registration as this case demonstrates. The Complainant expressly claimed a USPTO trademark registration but as pointed out by the Respondent and has concluded by the Panelist, the Complainant has no trademark rights because its registration is on the US Supplemental Register.
If you were the Panelist, would you have accepted the Complainant’s claim that based upon ‘a 2011 date of first use, millions of users, and well-established brand reputation’ that the Complainant had nonetheless established common law trademark rights? Here, the Panelist took the appropriate critical view of the Complainant’s evidence and found it insufficient:
“Although Complainant claims to have used the mark in commerce for more than 12 years in connection with a mobile app for fitness instruction, the USPTO has recently determined that Complainant’s use was not sufficient to establish secondary meaning. The Google search results on which Complainant relies are not persuasive; although Complainant’s website is listed in the first two results when searching for “daily workouts,” there are more than one million other search results, which shows how common and ubiquitous this phrase is, and undermines any claim that the phrase has secondary meaning as referencing Complainant and its fitness app.”
As this case demonstrates, when it comes to proving common law trademark rights, one cannot just accept longstanding use as evidence. Care must be taken to ascertain whether such claims recently failed before the USPTO and determine whether the term genuinely refers to the Complainant as a result of secondary meaning or whether as here, it comprises a ubiquitous term.
Synonyms Not Confusingly Similar
<1800truckaccident .com>
Panelist: Mr. Eugene I. Low
Brief Facts: The Complainant is based primarily in Texas offering legal services, especially in connection with truck related accidents. The Complainant is the owner of the 1-800-TRUCKWRECK trademark which is registered with the USPTO covering “Legal Services” (registered on May 24, 2022, with a date of first use of August 7, 2014). The Complainant claims that since 2014, it has expended more than $30 million promoting its services under the mark and due to extensive use, promotion, and commercial success, the 1-800-TRUCKWRECK mark is well-known to countless consumers.
The Complainant alleges that the Respondent registered the disputed Domain Name in bad faith. It is clear from the domain name as well as the use of similar colors and logos, along with the fact that 1800TruckWreck has an office in Atlanta where the Respondent is located, that the Respondent was not only familiar with the 1-800-TRUCKWRECK mark at the time of registration of the disputed Domain Name, but intentionally adopted a domain name incorporating the 1-800-TRUCKWRECK mark (replacing “wreck” with the synonym “accident”) in order to create an association with the Complainant and its services.
The Respondent contends that he is legitimately using the domain name <1800truckaccident .com>, not to label goods and services, but as victims services. The Respondent’s website is in the construction phase and upon completion will be a victims service organization website used to assist truck accident victims with records and information. The Respondent has ownership rights to 1 800 Truck Accident LLC. The disputed domain name, 1 800 truck accident phone number and victims service concept is of value to 1 800 Truck Accident LLC.
Held: The Panel considers that “TRUCKACCIDENT” and “TRUCKWRECK” look and sound quite differently, so what remains is whether the two are, conceptually, sufficiently confusingly similar. The Panel accepts that “accident” and “wreck” can be synonyms in certain circumstances, for example in the context of incidents involving vehicles. However, when making the assessment under this element, the Panel notes that the Complainant’s registered trademark is a relatively descriptive mark, comprising the toll-free number “1-800” followed by the descriptive terms “truck” and “wreck”. For the Complainant to be able to establish its case under this element, the Panel would require seeing more evidence showing that its mark has acquired distinctiveness or secondary meaning to such an extent that there is a likelihood of confusion covering even synonymatic descriptive terms which are not visually or phonetically similar. The Panel considers that the Complainant’s evidence falls short of this threshold.
Further, there are some factual disputes as to the current state of use of the disputed Domain Name. However, the Panel is not in a position to resolve such factual disputes, though the Panel was able to access the website and see the contents referred to in Complainant’s evidence. Be that as it may, however, based on the current materials, the Panel is not able to deny the possibility that the Respondent uses or intends to use this fairly descriptive domain name for its bona fide offering of goods or services, even though such goods or services may be in competition with the Complainant’s goods or services. The Complainant refers to some similarities between the contents of the parties’ respective websites (e.g. the colors in the logos), but in the Panel’s opinion, such similarities are not sufficient to establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed Domain Name under the second element.
Complaint Denied
Complainants’ Counsel: Molly Buck Richard of Richard Law Group, Inc., Texas, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: As the Panelist noted, “the key question for the Panel to decide is whether “TRUCKACCIDENT” and “TRUCKWRECK” are confusingly similar for the purpose of the Policy”.
The Panelist quite rightly rejected the contention that these two terms are confusingly similar. A side-by-side comparison clearly shows that they are not. It would have been an unwarranted expansion of the UDRP to purport to apply the Policy to the Domain Name on the basis that the two terms are synonyms. Such arguments are left to courts who handle trademark infringement claims.
Can Targeting a Trademark “Without Malice” Still be Bad Faith ?
Thru the Bible, Inc. v. Danny Edwards, NAF Claim Number: FA2404002093399
<journeythruthebible .com>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The Complainant, a California nonprofit, has used the THRU THE BIBLE trademark throughout the U.S. since its founding in 1967. The Complainant owns a trademark registration at the USPTO for THRU THE BIBLE (registered on January 3, 2023) and it promotes its programs, goods and services from its official website at <ttb .org>. The disputed Domain Name was registered on March 19, 2024, and resolves a pay-per-click page.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed Domain Name since the Respondent is not commonly known by the disputed Domain Name and the Complainant has not authorized or licensed to the Respondent any rights in the THRU THE BIBLE mark. The Complainant further alleges that the disputed Domain Name was registered and used in bad faith where the Respondent had prior knowledge of the Complainant’s mark and it hosts the pay-per-click site, with links to other websites offering services that compete with the Complainant’s line of business.
The Respondent contends that he purchased the disputed Domain Name a few months ago as part of a portfolio and being a church deacon intended to use it for a future bible study. After some research, he decided to use the site, it would just have links back to <ttb .org> for their brand, or more than likely just offer to trade or sell it back to the company. All the Respondent would have asked is the registration fee of $10.99 and no intentions to ever copy or make money off someone’s brand were made. Finally, the Respondent contends “I’ve listened to Dr. McGees messages for many years and am a big fan of his ministry”.
Held: The Complainant provides screenshots of the website to which the disputed Domain Name resolves, and these display pay-per-click links titled “Journey Church”, “Church”, and “Bible Study”. Although the nature of these links may be due, in part, to the appearance of the word “bible” in the disputed Domain Name, the Panel finds that the Complainant’s mark is sufficiently distinctive such that the resulting links for religious services cannot be discounted as only being spawned based on a single word. For its part, the Respondent claims a bona fide, legitimate, or fair use based on a possible future plan for a disputed Domain Name, some measure of detail or supporting evidence is typically required by Panels and bare assertions are, alone, insufficient. Here, the Respondent makes a rather open-ended assertion regarding a possible future bible study endeavor but provides no further detail or evidence to allow this Panel to conclude that he has made demonstrable preparations for using the disputed Domain Name under Policy ¶ 4(c)(i).
Further, the Respondent does not contest Complainant’s trademark rights in the phrase THRU THE BIBLE nor does he assert that the phrase is a descriptive term. In contrast, he states that he has “listened to Dr. McGees messages for many years and am a big fan of his ministry” indicating that he is likely familiar with and acknowledges the Complainant’s trademark. Finally, the Panel notes that the Complainant’s trademark registration subsists on the Principal Register, contains no disclaimer of terms, and was not filed under Section 2(d) of the US Trademark Act claiming acquired distinctiveness. As the Complainant has set out a prima facie claim which has not been adequately rebutted by the Respondent, the Panel finds, by a preponderance of the evidence, that the Respondent does not use the disputed Domain Name for any bona fide offering of goods or services, nor does he make a legitimate non-commercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii).
Although constructive knowledge is generally disfavored under the Policy, a respondent’s actual knowledge of a complainant’s rights in an asserted mark before registering a disputed Domain Name can form a foundation upon which to base an argument for bad faith. The Respondent has noted his longstanding familiarity with the Complainant and its services and this demonstrates his actual knowledge of the THRU THE BIBLE mark at the time that he registered the disputed Domain Name. This, combined with the fact that the disputed Domain Name uses the term “thru”, as used in the Complainant’s mark, rather than the proper spelling “through”, leads the Panel to find it more likely than not that the Respondent did have actual knowledge of the Complainant’s rights in its mark at the time that he registered the disputed Domain Name.
Further, the Respondent states that he is a “Sunday school teacher and church deacon” and that he has followed Complainant’s work for many years. Although this claimed position is not supported by any submitted evidence, if the Panel accepts the Respondent at his word this leads to the conclusion that he should have known that any planned religious services would run afoul of Complainant’s trademark rights. This is not to imply that the Respondent acted to target the Complainant’s mark with malice, but that he targeted the mark in bad faith nevertheless. While there may be some room for debate and further development of the facts, based on a preponderance of the presented evidence and legal arguments, the Panel finds it more likely than not that the Respondent registered and used the disputed Domain Name in bad faith per Policy ¶ 4(b)(iv).
Transfer
Complainants’ Counsel: Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Complainant claimed that “it’s bible study programs offered under the THRU THE BIBLE mark have been aired on radio stations in the U.S. since its founding and are now produced in over 130 languages and dialects around the world”. As noted by the Panelist however, the Complainant failed to provide evidence of its claimed substantial and widespread reputation.
The Panelist made an interesting and salient observation; “A distinction must be made between proving trademark rights (e.g., by a registration certificate) and proving trademark reputation. Evidence of reputation such as news articles, social media interactions, customer statements, awards and recognition, event sponsorships, etc. are far more effective in showing that a trademark is well known than merely submitting a screenshot of a brand owner’s website.”
Although the Complainant’s claimed reputation is likely accurate and true, it nevertheless remained unproven in the record. This is an important reminder for Complainant’s that like in a summary judgment motion, they must put their best foot forward and submit evidence backing up their claims.
BforBank v BiorBank
BFORBANK v. Hassen Kadhim, CAC Case No. CAC-UDRP-106448
<biorbank .com>
Panelist: Mr. Alfred Meijboom
Brief Facts: The Complainant is a French online bank which was launched in October 2009 by the Crédit Agricole Regional Banks, and it offers daily banking, savings, investment, and credit services to currently over 230,000 customers. The Respondent registered the disputed Domain Name on February 12, 2024, and it resolves to a website in English which display the services of “BiorBank” under the header “Be Your Bank, BiorBank is the first ever Web3 banking app, for everyone”. According to the website “BiorBank’s functions” offer, inter alia, “interaction with Web2 banks”, transfer of cryptocurrency, payment of bills, taking out loans, and tracking of NFTs. The Panel observed, when it visited the Respondent’s website, that the download link for the “Web3 banking app” does not work, but rather states “coming soon”.
The Complainant alleges that the disputed Domain Name would be an obvious misspelling of the Complainant’s BFORBANK trademark as the letter “f” is substituted by the letter “i”, which the Complainant alleges to be characteristic of a typo squatting practice intended to create confusing similarity between the Complainant’s trademark and the disputed Domain Name. The Complainant further alleges that the disputed Domain Name is being used in bad faith by diverting Internet users searching for the Complainant’s website to the Respondent’s competing website, and thereby creating a likelihood of confusion with the Complainant’s BFORBANK trademark for the Respondent’s commercial gain by offering competing services.
The Respondent contends that the Complainant’s market and operation activity is limited to France, or to the EU at its best, and for (traditional) banking products, while the Respondent alleges that it does not operate in the banking sector but in the international crypto assets economic sector. The Respondent further contends that it plans to create a startup company together with other partners and has spent a considerable amount of time and already invested over US $12,000 for the designing and creation of software and an app, and the first marketing material of the business. According to the Respondent this is a case of reverse domain hijacking where the Complainant is intimidating a start up without any sense or real legal ground or merit.
Held: The fact that the disputed Domain Name is confusingly similar to the Complainant’s BFORBANK trademark as meant in paragraph 4(a)(i) of the Policy does not per se result in finding the registration of the disputed Domain Name in bad faith. The disputed Domain Name resolves to a website containing the Respondent’s intended activities under the name “BiorBank” which would represent “Be Your Bank”. As the Complainant submitted a copy of the Respondent’s website with the Complaint, the Panel infers that the Respondent made demonstrable preparations to use the disputed Domain Name in connection with an offering of goods or services. According to the Complainant the Respondent’s offering of services competes with those of the Complainant, and is therefore not bona fide, while the Respondent asserts that the crypto related services it offers (or at least intends to offer) in English are not similar to the traditional banking services which the Complainant offers in French.
The Policy is not designed to solve such disputes and the Panel will therefore confine itself to finding that both parties provide certain financial services. However, the Complainant has failed to show that it is plausible that the Respondent, which has after all demonstrated that it has made preparations to offer its own services using the disputed Domain Name, was aware of the Complainant’s BFORBANK trademark at the time of the registration of the disputed Domain Name, and that the intended use of the disputed Domain Name would be (wholly or partly) intended to divert the Complainant’s customers to the Respondent’s website for commercial gain. To the extent that the dispute between the Complainant and the Respondent revolves around whether the disputed Domain Name and the name of the Respondent’s proposed services and business, “BIORBANK,” infringe the Complainant’s BFORBANK trademark, and whether the Complainant could persuade another tribunal applying standards broader than those set forth in the Policy to order the transfer of the disputed domain, are questions beyond the scope of this proceeding.
RDNH: In the present case, the Complainant must have been aware that it filed a copy of its website in English, while its actual website is only available in French, which is an indication of the Complainant not being entirely truthful as it did not mention this and offer an explanation. While the Panel does not give much weight to this, the Complainant’s arguments were further merely based on its allegation that the Respondent was a cyber squatter, without real evidence and ignoring facts which could point in a different direction, such as the contents of the website which was already available at the time of the Complaint, the parties’ possibly different markets, and without contacting the Respondent first to obtain a better understanding of the facts. Although the Panel considers it possible that another tribunal in a commercial or trademark dispute could reach a different conclusion, under the circumstances of this procedure the Panel makes a finding of reverse domain name hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: NAMESHIELD S.A.S.
Respondents’ Counsel: Studio Legale Gangi
Prior Registered Domain Name Could Not Possibly Have Targeted Future Trademark
Aromatech, Ltd. v. Carlos Paredes, WIPO Case No. D2024-0911
<aromatech .com>
Panelist: Mr. Sebastian M.W. Hughes
Brief Facts: The Complainant is a company incorporated in Canada in 2009 and claims to have been marketing and selling since 2009 a range of aromatic oils and related goods under the trademark AROMATECH. The Complainant owns numerous registrations for the trademark, including a Canadian trademark, registered on October 25, 2022. The disputed Domain Name was acquired by the Respondent in 2005 and currently does not resolve to any active website. The Complainant asserts that it has satisfied each of the elements required under the Policy for a transfer of the disputed Domain Name. The Respondent contends that he purchased the disputed Domain Name at auction on an unknown date in 2005. The Respondent relies on evidence of his domain name renewal in 2006, 2007, and 2009 and further contends that his control of the disputed Domain Name several years before the existence of the Complainant and its trademark voids any allegation of bad faith registration.
Held: The evidence in the case file does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark. The Panel notes that for the analysis of the registration of the disputed Domain Name, the date on which the current registrant acquired the domain name is the date a panel will consider in assessing the registration in bad faith. The Panel finds that the Respondent did not register the disputed Domain Name in bad faith targeting the Complainant or its trademark rights because the Complainant had no trademark rights at the time the Respondent registered the disputed Domain Name.
Furthermore, while the disputed Domain Name was created in 2004, the Respondent purchased it in 2005, and in any case, the Respondent relied on the evidence of his renewal of the registration on October 5, 2006. However, according to the Complaint, the Complainant is a company founded in Canada in 2009, so the Respondent could not have targeted the Complainant at the time of its acquisition of the disputed Domain Name.
RDNH: The Panel considers that, in all the circumstances, the Complainant, being legally represented, ought to be held to a higher standard. This is a proceeding in which, on the facts, the Complainant and its legal representatives ought to have recognised it would not be possible to establish bad faith registration, in light of the fact the Complainant did not come into existence and did not commence using its trademark, until 5 years after the date of first registration of the disputed Domain Name. Nor was there any evidence to suggest that the Respondent, as the current registrant of the disputed Domain Name, acquired the disputed Domain Name after the Complainant had been incorporated and commenced use of the trademark.
Complaint Denied (RDNH)
Complainants’ Counsel: K & G Law LLC, United States of America
Respondents’ Counsel: Self-represented