Welcome to this week’s UDRP Digest (2.8), summarizing the most intriguing cases of the past week, with commentary from Zak Muscovitch, ICA General Counsel. Read about:
‣ Is Restoring a Registration During Grace Period a New Registration? (oovo .com *with commentary)
‣ Is Strong Suspicion Enough to Order Transfer? The Panel Can’t Agree. (maaden .com *with commentary)
‣ Did Respondent’s Registration Pre-date the Complainant’s Trademark Rights? (cannaways .com)
‣ Did Respondent’s Solicitation of Complainant Trademark Owner Constitute Bad Faith? (yb .nl)
Enjoy !
Is Restoring a Registration During Grace Period a New Registration?
Vacation Pig, LLC d.b.a OOVO v. elmer rubio, NAF Claim Number: FA2201001981434
<oovo .com>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The Complainant markets and sells devices that are used for occluded vocal tract and breathing exercises related to playing musical instruments and music instruction. The Complainant owns multiple registrations with the USPTO, the earliest of which issued on June, 23, 2020 and claiming use since 2017. The Respondent originally registered the disputed Domain Name in 2014 but it expired in August 2020 and was redeemed during the post-expiration grace period. The Complainant argues that as a result “a new registration occurring after expiration is distinct from an auto-renewal or renewal during registration” and claims that the disputed Domain Name was thus registered anew by the Respondent in 2020.
Held: The Complainant seeks to re-set the clock for purposes of determining bad faith registration. Although the Respondent may have been inattentive to its impending renewal deadline in 2020, it did, in fact, renew the disputed Domain Name during the permitted redemption grace period and thereby “restored” the original registration in accordance with ICANN policies. The Complainant’s trademark rights arose in 2017 at the earliest, however the Domain Name was registered in 2014. Accordingly, the Respondent could not have been aware of or targeted the Complainant’s mark at the time that it acquired the disputed Domain Name, thus negating the Complainant’s assertions of bad faith registration.
RDNH: The present case fits the “Plan B” mold as the Complainant pursued the present case after first unsuccessfully seeking to purchase the disputed Domain Name from the Respondent. It then asserts an incorrect technical point of the Domain Name renewal process in an attempt at justifying its claim. Finally, the Complainant specifically states that it never alleged bad faith registration on the Respondent’s part regarding his registration in 2014. Such admissions by the Complainant, combined with the fact that the Complainant’s entire case for bad faith is built upon a claim of passive holding and the Respondent’s past attempt to sell its Domain Name (though not to Complainant), leads to the conclusion that the Complainant did, indeed, bring this Complaint in bad faith in an attempt to harass or otherwise gain an advantage over a domain name owner who rebuffed its purchase attempt.
Complaint Denied (RDNH)
Complainants’ Counsel: Internally RepresentedRespondents’ Counsel: Dmitriy Chyrkin of Law Office of Dmitriy Chyrkin, Ukraine
Comment from ICA General Counsel, Zak Muscovitch: Revisiting the Registration Date.
The Panelist correctly determined that there was no “new registration” because the redemption of the expired domain name during the grace period “restored” the original registration under ICANN policy. Nevertheless, this case raises the question of ‘why is the registration date the relevant date for the purposes of determining bad faith registration?’. The registration date is the date when the registrant first acquired the domain name, whether it be from a prior registrant or as a newly created domain name. The acquisition date is the relevant date to assess bad faith registration because this is the date upon which the registrant’s motives can be assessed. In contrast, a “creation date” which long-predates the registrant’s acquisition is of no relevance in assessing the registrant’s motivations. Similarly, the date of a renewal in the ordinary course is also unhelpful as a date for assessing a registrant’s reasons for acquiring a domain name.
Panelists sometimes lose sight of the reason why a registration date is material. This issue recently arose in the Caribou.com decision where the Panel noted that the respondent transferred the Caribou.com domain name from one company to another with the very same ownership and considered whether this should be treated as a “new registration” – thereby missing the point that the date of transfer between the two companies is generally irrelevant in assessing a respondent’s motivations in registering the domain name – something that only occurs once, namely at the time that the respondent initially acquired the domain name. Generally, moving a domain name from one pocket to another pocket of the same person is not an event that would demonstrate a respondent’s motivation in registering the domain name. The relevant date therefore, is the date of the original registration rather than the date of a change which tells us nothing about the reason for registering the domain name in the first place. The inquiry into bad faith registration must involve assessing motivation rather than artificially relying upon a technical “transfer” date where there has been no change in the underlying beneficial ownership.
Is Strong Suspicion Enough to Order Transfer? The Panel Can’t Agree.
Saudi Arabian Mining Company (Ma’aden) v. Fundacion Privacy Services LTD, WIPO Case No. D2021-3590
<maaden .com>
Panelists: Mr. Andrew D. S. Lothian, Mr. Hoda T. Barakat and Mr. Jeffrey J. Neuman
Brief Facts: The Complainant is Saudi Arabian Mining Company (Ma’aden), established by a Royal Decree in 1997, with a mandate to develop Saudi Arabia’s minerals sector. The Complainant claims unregistered trademark rights in the MA’ADEN trademark since its inception in 1997, noting that its primary domain name <maaden .com.sa> was registered on August 30, 1999 and the website thereon is active since January 2001. The Complainant is also the owner of two figurative marks for the MA’ADEN logo, registered in Australia and Saudi Arabia since April 2014 and November 2020 respectively. The Complainant’s United States Registered Trademark acknowledges that the English translation of “ma’aden” in the mark is “lode, bonanza, minerals, essence, or intrinsic nature” and the Complainant acknowledges the generic nature of the Arabic word although claims it is a “technical” word. The Respondent by declaration states that he purchased the disputed Domain Name in about May 2011 (despite the Registrar’s verification that the Domain Name was registered by the Respondent on July 16, 2018) to expand his portfolio because it is a valuable, brandable, “.com” domain name that is a single Arabic dictionary word translating to “metals” or “minerals”. The Complainant anonymously solicited the sale of the domain name through an agent and its highest offer was USD $100,000. The Respondent’s lowest offer was USD $400,000 before negotiations broke off.
Majority Held: The Respondent claims May 2011 as the acquisition date and supports the same with a declaration but fails to provide any further evidence, which seems to be more than a little suspicious to the majority of the Panel. The majority also finds it suspicious that the Respondent registered an Arabic language domain name corresponding to a large Saudi Arabian company despite no apparent facility with the Arabic language. A question before the Panel is the Respondent’s true intent in acquiring the disputed Domain Name. The Respondent denies that it acquired the disputed Domain Name with knowledge of the Complainant. The majority finds that the Respondent’s failure to adequately explain how it selected this particular Arabic word to register suggests that the Respondent is hiding something, and has adopted the approach of “the less said, the better”. In a written submissions procedure that is an unwise position for a respondent to take as it suggests a lack of candor to the majority of the Panel which is capable of being regarded as an indicium of bad faith. Also, the Respondent’s registrar been found in a previous case to be a service catering to cybersquatters. In addition, Respondent’s asking price was suspiciously high. The Respondent’s use of PPC parking, at least in part, targeted the Complainant. In all of the above circumstances, the majority of the Panel finds on the balance of probabilities that the Respondent acquired and used the disputed Domain Name in bad faith.
Dissenting Opinion (Mr. Jeffrey J. Neuman): The Complainant did not meet its burden of proof in establishing that the Domain Name was registered and used in bad faith and should not have been transferred.
The majority is correct that the Panel cannot know or assess whether the Respondent truly saw the Domain Name as a “dictionary word” or something else in 2011 when it acquired the disputed Domain Name. The majority uses the lack of information provided by the Respondent in its response to infer based on the balance of probabilities that the Respondent did not acquire the domain name for its dictionary meaning, but rather for the meaning associated with the Complainant. That is not a conclusion that should be jumped to in the absence of actual evidence. There is absolutely no evidence of targeting presented by the Complainant. There is no evidence in the record that establishes that the Respondent has engaged in a pattern of conduct or any other activity in which the objective was to benefit from the Complainant’s trademark. The Respondent is in the business of acquiring and selling generic domain names and there is a long line of cases that have found that the purchase and sale of “generic” or descriptive domain names constitutes use of the domain name in connection with a bona fide offering of goods or services.
PPC link technology has evolved considerably since its early days where such links were either static, or if they were dynamic, they were based on the content of the site and the domain name itself. Today many PPC links display advertisements based on previous search results of the user and that is likely what occurred here.
More evidence of the registration date would have been helpful however, the Respondent’s declaration was drafted and submitted by an attorney, and we therefore must accept what is before us without suspicion.
This Panelist is troubled by the registrar’s failure to identify the Respondent, however the Respondent did file a timely response through his counsel and did ultimately reveal his name.
Neither party disputes that it was the Complainant, through an “independent” party, that reached out to the Respondent and made an initial unsolicited offer to purchase the domain name. Responding to unsolicited offers alone are not evidence of bad faith regardless of how outrageously high the Complainant believes the price to be. There is no evidence in the record that establishes that the Respondent ever knew the true identity of the intended beneficiary of the unsolicited offer until this present UDRP action was filed. The Complainant only filed this action after negotiations for the sale of the domain name proved to be unsuccessful. A decent case could be made that this was a “Plan B” RDNH case whereby the Complainant invokes the Policy only after failing to acquire the domain name through negotiation.
Transfer
Complainants’ Counsel: Clyde & Co., United Arab Emirates
Respondents’ Counsel: ESQwire.com PC, United States of America (“United States”)
Comment by ICA General Counsel, Zak Muscovitch: This case is well worth reading in its entirety, despite its length. Indeed, the length of the decision indicates the seriousness with which the Panelists undertook their deliberations. The Presiding Panelist, aware of Mr. Neuman’s dissent, went to exceptional lengths to set out the majority’s reasoning. And the dissenting Panelist, though outnumbered, courageously stuck to his conclusions about the evidence. Interestingly, both the majority and the minority carefully considered the facts, and yet reached different conclusions. The majority was suspicious of the Respondent as a result of his failure to provide sufficient evidence and explanations, compounded by evidence of alleged inappropriate PPC use and the Respondent’s choice of registrar. On the other hand, the dissenting Panelist convincingly refutes each of these conclusions and persuasively argues that the majority erred in inferring bad faith registration and use without sufficient evidence. Indeed, not only would the dissenting Panelist have denied the transfer based upon the very same record, but likely would have found Reverse Domain Name Hijacking. What does this say about the UDRP and its effectiveness? On one hand, it is a testament to the UDRP that expert Panelists would demonstrate such commitment and industriousness in so carefully weighing the facts and coming to their respective well-reasoned conclusions. On the other hand, that expert Panelists came to such opposite findings raises the question of whether some UDRP cases are just not sufficiently “clear cut”, or are too complex, or have insufficient factual records, to be suitable for resolution under a Policy which was intended to resolve only clear-cut instances of cybersquatting.
It is not always appropriate for a Complainant to expect that complex cases can be resolved through the UDRP, nor should Panelists always feel compelled to render a decision in such cases. Some cases are better suited for resolution in the courts which have far more robust procedures to investigate the evidentiary record, so that a decision can satisfactorily be reached without having to rely on speculation. There is no clear standard as to when a UDRP should be deferred to the courts. In this case, the majority was sufficiently suspicious and convinced of the Respondent’s mala fides on a balance of probabilities, that they determined that they could and should make a decision on the merits. Contrast this however, with the dissenting Panelist, who firmly believed and persuasively explained, that despite some misgivings, it was the Complainant’s case to make and lack of information is not sufficient to justify a transfer. One could argue that where three accredited UDRP Panelists cannot come to agreement on the outcome of a case, that it isn’t genuinely clear-cut and therefore unsuitable for adjudication under the UDRP.
Did Respondent’s Registration Pre-date the Complainant’s Trademark Rights?
Cannawayz Inc. v. Jonathan Marsh, Oregon Fair Trade Cannabis, WIPO Case No. D2021-3679
<cannaways .com>
Panelist: Mr. Georges Nahitchevansky
Brief Facts: The Complainant operates a medical and recreational cannabis directory for cannabis users and businesses, through a website at <cannawayz .com>. The Complainant owns two trademark registrations for the CANNAWAYZ mark in the United States; a word mark and a logo mark issued in 2020, claiming a date of first use of April 1, 2019 and June 1, 2019, respectively. The Respondent maintains that he registered disputed Domain Name November 10, 2014. The Complainant claims that the disputed Domain Name was registered in 2019 under the name of Oregon Fair Trade Cannabis. In or about 2020, and perhaps earlier, there appears to have been an attempt by the Complainant, or someone acting on behalf of the Complainant, to purchase the disputed Domain Name from the Respondent. No agreement was reached between the parties. The disputed Domain Name currently resolves to a GoDaddy PPC parked page.
Held: There is a dispute as to when the disputed Domain Name was registered; 2014 or 2019? However, given that the Complainant failed to establish the existence of common law rights in its CANNAWAYZ mark any time before its claimed date of first use in commerce of April 1, 2019, it appears that the Respondent registered the disputed Domain Name on a date before Complainant developed, at least according to the evidence of record in this matter, any rights in the CANNAWAYZ mark, and thus the Respondent could not have acted in bad faith at that time. Even if Oregon Fair Trade Cannabis had in fact acquired an interest in the disputed Domain Name in 2019, Complainant has failed to show with any discernible evidence that Oregon Fair Trade Cannabis would have acquired the disputed Domain Name with a view towards targeting Complainant in bad faith.
To the extent, the Complainant relies on reputation prior to 2019 and/or a subsequent change in ownership of the disputed Domain Name, it has not presented evidence to allow the Panel to support such conclusion; such evidence, if it exists, could conceivably be developed in a fuller record such as in a proceeding before a competent court.
Complaint Denied
Complainants’ Counsel: Lucien Levman, United States
Respondents’ Counsel: Self-represented
Did Respondent’s Solicitation of Complainant Trademark Owner Constitute Bad Faith?
Yoghurt Barn BV v. Quincy Beeker, WIPO Case no. DNL2021-0055
<yb .nl>
Panelist: Mr. Alfred Meijboom
Brief Facts: The Complainant deals in Yogurt products and non-alcoholic drinks through its own catering establishments and supermarkets since 2011. In the summer of 2021, the Complainant started using the trade name “YB”, as an abbreviation of its trade name “Yoghurt Barn” and filed the EU trade mark on July 5, 2021, which was registered on November 12, 2021. The disputed Domain Name was registered by the Respondent on June 10, 2021 and the webpage thereon states that the disputed Domain Name is for sale. The Complainant points out that the Respondent contacted it to offer the disputed Domain Name for sale for an amount of EUR 80,000, which substantially exceeds the Respondent’s out of pocket expenses. The Respondent argues that the disputed Domain Name was registered before the Complainant acquired the trademark rights on which it currently invokes, without being aware of the complainant’s intention to use “YB” as a trade name and/or trademark.
Held: The Complainant could not demonstrate that the Respondent when acquiring the disputed Domain Name was aware of the Complainant’s YB brand and trade name “YB”, which were subsequently registered or put into use. Therefore, there is no bad faith registration of the disputed Domain Name. Subsequently offering the present domain name for sale to a potentially interested party in the circumstances of this case is normal business activity and not per se in bad faith, the Complainant fails to demonstrate that the Respondent is not entitled to or has a legitimate interest in the disputed Domain Name. The Respondent’s use of the disputed Domain Name is not in bad faith either, because offering a domain name for sale for profit is permissible as such. The .NL Regulation is not identical to the UDRP and does not contain any regulation for reverse domain name hijacking, therefore the Respondent request for an RDNH ruling cannot be granted.
Complaint Denied
Complainants’ Counsel: DOEN Legal, Netherlands
Respondents’ Counsel: SOLV Advocaten, Netherlands