RDNH Finding in ‘No Response’ Case
I found this decision particularly satisfying. It is well known that people do things online that they otherwise wouldn’t do in person. The same holds true with the UDRP. As counsel, would you dare certify an obviously incomplete or inaccurate pleading if you had to face the judge in person in a court room? Yet the relative anonymity provided by the cocoon of online filings does on occasion seem to encourage conduct which counsel would otherwise not dream of engaging in, in-person. Read commentary
We hope you will enjoy this edition of the Digest (vol. 4.7), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ RDNH Finding in ‘No Response’ Case (innoviti .com .co *with commentary)
‣ Panelist: Is the Respondent’s Business “Real and not pre-textual?” (principalriskadvisors .com *with commentary)
‣ Circumstantial Evidence Leads Permits Complainant to Proceed Against “Multiple” Registrants as Single Domain Holder (proairdigihaler .us and sudocrem .us *with commentary)
‣ Is ‘BB Hotel’, a Strong or Exclusive Trademark? (bbhotel .com)
‣ Domain Name Registered Prior to Trademark, Could not be in Bad Faith (runsmart .com)
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
We are pleased to present this first part of a serialized article exploring the concepts involved in domain name investing by domain name guru and branding expert, Sten Lillenstron from Sweden.
The Legacy Idea
by Mr. Sten Lillieström (LinkedIn)
Domains are a truly remarkable commodity. They are all issued in the limited edition of 1:1 by design. So much for “stocking up on bestsellers”.
As a consequence, domain investors must rely on their ability to build theories about the nature of demand, and to uncover evidence that supports them.
How?
Even though no domains are identical, the unique “physical form” of one domain (a sequence of characters) can in turn be host to a plethora of traits based on aesthetics and meaning. These traits give rise to interpretations and use cases.
This means that some domains are inherently more versatile, evocative, descriptive, salient, beautiful, applicable, or useful than others. Something that enables the possibility of ranking one domain above another in terms of their likelihood to find demand.
Continue reading the Article here
RDNH Finding in ‘No Response’ Case
<innoviti .com .co>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Indian Complainant, incorporated in 2002, is a leading Indian finance technology company engaged in the design, development, manufacturing, marketing, distribution, and sale of payment technology products, solutions, and ancillary products in the financial services sector. Its technology powers around 76 per cent of India’s enterprise offline purchases paid digitally and provide services to over 25,000 stores across more than 2,000 cities. Based on the Complaint, there is no evidence that it has any business outside India. The Complainant’s business is promoted via its website which is linked to the domain name <innoviti .com> which it registered in 2002. The Complainant owns various registered trademarks in India for the term “Innoviti” – for example Indian trademark registration dated May 2, 2005.
The disputed Domain Name was registered on July 30, 2013, and resolves to the website of a Colombian technology company. The Complainant alleges that the Respondent cannot possibly have any justification whatsoever for the adoption and use of the Complainant’s well-known mark INNOVITI as part of the disputed Domain Name, which was created by the Respondent only in the year 2019. It is apparent that the Respondent has registered the disputed Domain Name with the intent to commercially gain and take undue advantage of the reputation and goodwill enjoyed by the Complainant in its world-famous and well-known mark INNOVITI. The Respondent did not file a Response.
Held: The difficulty the Complainant faces on this issue is that the disputed Domain Name resolves to, what is in the Panel’s opinion, clearly a bona fide website of an established Colombian technology company. The Panel has exercised its general powers to visit that website. The site is in Spanish but shows a company offering data center and cloud storage services. The website says that the Respondent has more than ten years of experience. In this regard, the Panel notes that the disputed Domain Name was registered in 2013 (not 2019 which appears to be the date the Complainant suggests). Accordingly, the Panel finds that, before notice to the Respondent of the dispute, the Respondent used the disputed Domain Name in connection with a bona fide offering of goods or services
The Panel declines to find that the disputed Domain Name was registered or used in bad faith. The Panel has no difficulty in accepting the Complainant’s evidence that it is a very large, successful and well-known business in India. There is nothing to suggest that the Respondent based in Colombia would have known of the Complainant. The one exception to this is that conceivably it may have found the <innoviti .com> domain name was already registered if it carried out searches prior to registering the disputed Domain Name. Even if it had done so, and investigated further, it would not have found anything to suggest the Complainant had any business, or any relevant rights, outside India. Nothing the Respondent is doing appears to be targeting the Complainant in any way. It appears to the Panel to simply be a coincidence that the Respondent has chosen the same name as the Complainant for its business.
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RDNH: The Rules, paragraph 15(e), call for the analysis even when the respondent has not expressly requested a finding of abuse.
The Complaint contains the certification, whereby “the Complainant certifies that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate…” The Panel does not see how that certification has been given properly. As indicated above the Complaint is absolutely silent about the Respondent’s Website. Instead, it says “The Respondent is not using the disputed Domain Name in connection with bona fide offering of goods or services”. The Complainant or its representatives presumably must have visited the Respondent’s Website. Overall, the Panel regards the Complaint as highly misleading given the Respondent’s Website clearly relates to a bona fide business.
The Panel is unfortunately left with the distinct impression that the Complainant and/or its representatives will have been well aware that the Respondent’s Website indicated the Respondent was carrying out a bona fide business and chose not to tell the Panel that was the case. The Panel should be able to rely upon the certification given in the Complaint and deplore what appears to be an attempt to mislead the Panel. The only sanction available to the Panel is to make a finding of Reverse Domain Name Hijacking and the Panel so finds.
Complaint Denied (RDNH)
Complainants’ Counsel: K&S Partners, India
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: I found this decision particularly satisfying. It is well known that people do things online that they otherwise wouldn’t do in person. The same holds true with the UDRP. As counsel, would you dare certify an obviously incomplete or inaccurate pleading if you had to face the judge in person in a court room? Yet the relative anonymity provided by the cocoon of online filings does on occasion seem to encourage conduct which counsel would otherwise not dream of engaging in, in-person.
There is however, perhaps sometimes a fine line between zealous advocacy which is to be expected of counsel and wilful deceit of the opposing counsel and Panel. Where a fact is so obvious and so material that it is not only likely to be discovered by opposing counsel or by the Panel, prudence would dictate that counsel should nonetheless include it even if it harms one’s case. Furthermore, counsel must then ask him or herself, now that it is being included, does it change the complexion of the case such that perhaps the case should not even be brought at all?
Here, the Panel quite rightly zeroed in on the fact that the Complainant would have been aware of the Respondent’s website and apparently chose not to disclose it. Such evidence is of such an obvious and material nature that the Complainant could only have remotely hoped that it would pass unnoticed by both the opposing party and the Panel itself. Well it apparently did get past the opposing party because it never responded, but the astute Panel visited the subject website (which mind you, is perhaps the quintessential best use of a Panel’s limited investigatory powers), and found that there was an apparently bona fide competing business, thereby taking this case out of the limited mandate of the UDRP. This is a trademark dispute rather than a cybersquatting dispute.
This case is also noteworthy because RDNH was found despite no Response. As written about previously, Panelists are obliged under the Rules to consider RDNH where the facts so warrant, regardless of whether RDNH is requested. Moreover, this case is a good reminder that if the UDRP were to have a ‘default’ procedure where the domain name was awarded to the Complainant if a Respondent simply did not respond, there would be instances of unjustified transfers that would call into question whether the UDRP is achieving its aim of affording justice.
Panelist: Is the Respondent’s Business “Real and not pre-textual?”
Principal Financial Services, Inc. v. Timothy DeRosier, WIPO Case No. D2023-4873
<principalriskadvisors .com>
Panelist: Mr. John C. McElwaine
Brief Facts: The US Complainant is a financial investment management and insurance services provider. The Complainant owns various trademark registrations in the United States, for example, PRINCIPAL, (registered on October 24, 1989, and on October 30, 2007), and also THE PRINCIPAL FINANCIAL GROUP, (registered on October 11, 1988). The Respondent is a principal of Principal Risk Advisors, LLC, which provides quantitative financial modeling and development services, and risk advisory services to the commercial banking industry. The Respondent states that his company was originally formed in 2018 under the name of CECL MRM LLC, and operated as such until the summer of 2023 when the name was officially changed to Principal Risk Advisors, LLC. The disputed Domain Name was registered on August 6, 2023, and resolves to an active website promoting Principal Risk Advisor’s services.
The Complainant alleges that the Respondent selected a domain name that fully incorporates the Complainant’s PRINCIPAL mark with the intention to confuse consumers and/or drive traffic to its website which purports to offer competing products and services. The Respondent contends that his company is not a competitor of the Complainant that the two businesses have fundamentally different business models and that the Complainant’s PRINCIPAL Marks are not famous and strong marks and that the PRINCIPAL marks have very weak industry name recognition. The Respondent further contends that the term “principal” is a common term in the financial services industry and that it permeates all legal documentation in the financial services marketplace, such as “principal amount”, “principal proceeds,” “principal and interest”, or “principal invested.”
Held: The evidence provided by the Complainant establishes that the Respondent was operating a business involved in risk analysis services rendered to banks and was doing so under the trademark, “Principal Risk Advisors”, prior to notice of this dispute. The Respondent’s business is real and not pre-textual. The Respondent alleges that in the summer of 2023, CECL MRM, LLC changed its name to Principal Risk Advisors, LLC and began using “Principal Risk Advisors” as a trademark and he registered the disputed Domain Name. The evidence indicates that the disputed Domain Name was used for a functioning website, it lacked detail or staff profiles. The Complainant puts forward arguments and evidence that this is a mirror page of the more fully developed CECL MRM page where the Respondent primarily does business.
Although the Complainant may argue that such use is inter alia trademark infringement, in the Panel’s view it is open to question whether the Respondent’s use of the Domain Name is the type of clear cybersquatting to be addressed by the Policy, and the former would be suited for hearing before a competent court. See e.g., Regency Furniture of Laurel, Inc. v. David Lively, WIPO Case No. D2018-0919, (“Where judicial court proceedings are necessary, or even preferred, to determine whether a Respondent’s real-world business infringes Complainant’s rights, it is not appropriate to resolve the dispute under the UDRP. And a good faith use of a mark in the physical world may be considered bona fide, even where the Complainant has a plausible infringement claim that has not been validated by a judicial ruling.”).
Complaint Denied
Complainants’ Counsel: Neal & McDevitt, United States
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This is another satisfying case. Here, the Panelist was well-versed in the natural and intended limitations of the UDRP which is reserved for clear cases of cybersquatting rather than resolution of infringement disputes between apparent rightsholders. I also think that the yard stick employed by the Panel for what constitutes “bona fide” use, namely whether the use is “real and not pre-textual” is sound and appropriate. Unless a respondent’s use is a pretext, a Panelist should leave it to courts to determine trademark infringement. Accordingly, if a Panelists asks him or herself whether the Respondent’s use is “real and not pretextual” and finds that the use could be infringing but the Respondent’s business is otherwise legitimate, the Panelist should wade out and defer to the courts as it is not a clear case of cybersquatting, but rather is shoehorning a trademark infringement case into an abbreviated online administrative procedure that is not suitable nor intended to resolve such disputes, notwithstanding that they involve a domain name on an ancillary basis.
Circumstantial Evidence Leads Permits Complainant to Proceed Against “Multiple” Registrants as Single Domain Holder
<proairdigihaler .us> and <sudocrem .us>
Panelist: Mr. Charles A. Kuechenmeister
Multiple Complainants: It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity. In this case, the Complaint states that both Complainants are affiliated companies within the same corporate group, and that is substantiated by the Declaration of the chief trademark counsel for the parent corporation, Teva Pharmaceutical Industries, Ltd. This corporate relationship demonstrates a sufficient nexus among the named Complainants to meet the requirements of Supplemental Rule 1(e). It is thus proper for both Complainants to file and prosecute a single Complaint. The Panel will treat them as a single entity for the purposes of this proceeding. All references to “Complainant” in this Decision, even though in the singular, are to both named Complainants.
Multiple Respondents and Domain Names: The Complaint names two persons as the Respondents and relates to two domain names. In accordance with Paragraph 3(c) of the Rules, the Complainant alleges that both Domain Names are operated by the same person or entity using different aliases. The information furnished to Forum by the registrar shows that the domain names are registered under different names at different addresses, but both of them redirect visitors to the <dan .com> domain reselling platform, where they are offered for sale at the same price. They were registered with the same registrar on the same day and shared the same IP address. They both target the same corporate group. On this evidence, the Panel finds that both domain names are registered to the same person or entity or are under common control and will proceed as to both of them.
Brief Facts: The first Complainant Teva Respiratory, LLC (Teva) is a well-known manufacturer of respiratory products such as inhalers. The second Complainant Norton (Waterford) Limited (Norton) distributes an over-the-counter medicated skin cream. Teva has rights in the PROAIR DIGIHALER mark through its registration of that mark with the USPTO. Norton has rights in the SUDOCREM mark through its registration of that mark with the EUIPO. The Complainant also conducted a search of the WIPO Global Brand Database for evidence of either domain name being associated with either named Respondent, with “no results shown,” and a Google search for both marks at issue in this proceeding that pointed only to the Complainant. The Complainant alleges that the Respondent has no legitimate interests in the domain names and that the Respondent registered or uses the domain names in bad faith. It registered the domain names with actual knowledge of the Complainant’s rights in its marks, primarily to sell them to the Complainant and to prevent the Complainant from reflecting its marks in corresponding domain names. The Respondent did not submit a Response in this proceeding.
Held: The Panel finds that the Respondent is not the owner or beneficiary of a valid trade or service mark identical to the domain names. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed Domain Name, the respondent may be presumed to lack rights or legitimate interests in the domain name.
The Respondent is affirmatively advertising and offering the domain names for sale to the general public at a price of USD 1,450 each, which is substantially in excess of normal out-of-pocket costs directly related to a domain name, as described in Policy ¶ 4(b)(i). Further, the Complainant’s principal websites are located at <digihaler .com> and <sudocrem .com> but the domain names, which merely add a ccTLD to the Complainant’s marks, could also be useful or valuable to the Complainant for attracting Internet users to its sites. Policy ¶ 4(b)(ii) contemplates that a respondent registered the domain name at issue in order to prevent the mark owner from reflecting its mark in a corresponding domain name. The evidence is not clear whether the Respondent here registered the domain names with that specific intent, but the fact that the Respondent offers the domain names, which are so closely and specifically associated with the Complainant, for sale strongly suggests that this was at least one of Respondent’s motives in registering the domain names. The Respondent’s registration of these domain names would give it substantial leverage in any negotiations with the Complainant for a transfer of them.
Transfer
Complainants’ Counsel: Cecilia Borgenstam of SILKA AB, Sweden
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja: The Panel examined multiple factors based on UDRP rules to first establish the nexus between the two Complainants and also that the Domain Names are under the control of a single entity. The Complainant provided evidence that they are affiliated companies within the same corporate group. Hence, the Panel found that they could satisfy the requirements of NAF Supplemental Rule 1(e). An interesting question remains however. Here, each of the two Complainants owned a trademark. They did not jointly own any trademarks. As such, normally each Complainant would therefore be required to bring their own separate proceeding. So could 20 affiliated companies bring a single case in respect of twenty different trademarks – each singularly and not jointly owned? The language of Paragraph 1(e) seems to suggest that while multiple affiliated Complainants are permitted, they must each have rights in >>all<< disputed domain names, but that was apparently not the case here where each Complainant each owned one mark and therefore only had a claim to one of the two domain names in dispute:
“The Party Initiating a Complaint Concerning a Domain Name Registration,” as used in The Rules (Rule 1), means the single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint
Perhaps rather than look at the Forum’s Supplemental Rules, we have to look to the UDRP Rules themselves. Rule 10e of the Rules enables a Panel to consolidate multiple domain name disputes. Rule 3c of the Rules states that a Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. So it is possible under the Rules, but in the present case the dispute concerns two distinct and separate grievances concerning two separate trademarks, albeit against a single domain name holder. As a policy matter, is it preferable for efficiency reasons to allow consolidate of distinct grievances because there is a single name holder? Or is it preferable to have each distinct grievance dealt with in a separate proceeding with two filing fees paid?
Regarding the finding that a single domain name holder was the Respondent, the Complainant relied upon circumstantial evidence. The Domain Names were registered on the same day at the same Domain Name Registrar and are being offered for sale at the same price at DAN(.com). The aforesaid factors are enough to conclude that the Domain Names are registered to the same person or under the same control in terms of Para 3(c) of the UDRP Rules. Providing this kind of circumstantial evidence is key for Complainants when trying to bring a single UDRP Complaint against multiple registrants who appear nominally different.
The Panel further concluded a lack of legitimate interests and bad faith on the part of the Respondent based upon advertising and offering the domain names for sale to the general public for USD 1450. Where a term is so distinctive as here and the corresponding domain name is offered for sale, it falls upon a Respondent to come forward with an explanation of why it was entitled to register the domain name.
Is ‘BB Hotel’, a Strong or Exclusive Trademark?
B&B Hotels v. BKN Dutt/ AJMAN BEACH HOTEL, WIPO Case No. D2023-4143
<bbhotel .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant, incorporated in France, operated under the name and trademark B&B HOTELS since 1990. The Complainant submits that it currently operates over 700 hotels worldwide (albeit primarily in France) with a turnover of over EUR 280 million in 2019. The Complainant owns various trademark registrations comprising or including the terms B&B HOTEL (earliest registered on June 7, 1991, in France) or BBHOTEL (registered on February 14, 2003). The disputed Domain Name was registered on February 22, 1998, and does not appear to have resolved to any active website. The Complainant alleges that the hotel which is operated by the Respondent is named “Ajman Beach Hotel”, located in Dubai, and that the Respondent does not use the mark BBHOTEL in any manner in connection with that hotel. Rather, the Respondent registered the disputed Domain Name fraudulently to target the Complainant’s BBHOTEL trademark, since it reproduces exactly the Complainant’s trademark and relates to the same activities as those for which the trademark is registered.
The Respondent did not file a formal Response in the proceeding. However, in an informal email, the Respondent states that its identity is “Bhatia Brothers Group”, having 100 years of business history in the Indian sub-continent and the Persian-Arabian Gulf countries. The Respondent states that the Ajman Beach Hotel has been part of the “Bhatia Brother [sic] Hotel Division” since 1979 and that it has used the disputed Domain Name since 1998. The Respondent contends that, since the Bhatia Brothers Group has a hotel division, the disputed Domain Name was an obvious choice. The Respondent provides certain information concerning “Bhatia Brothers”, which includes a list of its industry segments and divisions, including “Hospitality”. However, the Respondent exhibits no other evidence in support of its submissions. The Respondent submits that the Complaint is “invalid” in the circumstances.
Held: The Panel does not find Complainant’s trademarks, BBHOTEL and B&B HOTEL, to be particularly distinctive in nature, consisting of two initial letters and the dictionary term “hotel”. Indeed, the Panel notes in passing that the term “B&B” has its own generic meaning in the hospitality sector, referring to “bed and breakfast” accommodation. The Panel does not consider in the circumstances that any third-party domain name containing the terms “bb” and “hotel” should necessarily be assumed to be targeting the Complainant’s trademark, as opposed to being used for a bona fide purpose. The Panel is satisfied, on the evidence available to it, that the Respondent’s Ajman Beach Hotel has at all material times been connected with the business group known as Bhatia Brothers. The Panel finds Bhatia Brothers Group to be a legitimate and longstanding commercial organization with multiple interests in industrial and other sectors, including hospitality.
The Panel finds further that the group has used the term “BB” to signify the name Bhatia Brothers in this connection, and used that term on the Ajman Beach Hotel website at least from 2003. While the Complainant has repeatedly protested that the Respondent has made no use of the disputed Domain Name since registration, that is contradicted by the evidence of the use of the disputed Domain Name for email addresses “[…]@bbhotel .com”. The Panel notes that the relevant email addresses appear to have been used as contact addresses for the Ajman Beach Hotel, on the principal website of that hotel, since at least 2016. While the Panel accepts that the Complainant has traded under names including B&B HOTELS since at least 1991 (albeit primarily in France), the Panel is not persuaded, in the light of the matters referred to above, that the Respondent is likely to have registered the disputed Domain Name in 1998 for the purpose of dishonestly targeting the Complainant’s trademarks.
The Panel finds it more probable, on balance, that the Respondent registered the disputed Domain Name for legitimate purposes connected with the ownership of the Ajman Beach Hotel by Bhatia Brothers Group, and in particular, for email addresses reflecting that organization’s hospitality interests. The Complainant has not, therefore, met its burden of demonstrating, on the balance of probabilities, that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, and the Complainant must necessarily fail.
Complaint Denied
Complainants’ Counsel: Fiducial Legal By Lamy, France
Respondents’ Counsel: Self-represented
Domain Name Registered Prior to Trademark, Could not be in Bad Faith
RunSmart Online, LLC v. Domain Administrator / Intuit Inc, NAF Claim Number: FA2401002078063
<runsmart .com>
Panelist: Mr. David S. Safran
Brief Facts: The Complainant contends that since the domain and its mark are identical and that no use has been made of the domain, it follows that it was adopted and is used in bad faith. The Respondent contends that since the domain was registered 10 years prior to the first use by the Complainant of the RUNSMART mark, the domain could not have been adopted in bad faith since the Respondent could not have known of a then-nonexistent mark at the time of registration of its domain. Furthermore, the Respondent contends that the Complainant knew or should have known that it could not prevail when it filed its complaint and thus is guilty of reverse domain name hijacking.
Held: The Respondent registered the disputed Domain Name 12 years prior to any rights alleged by the Complainant, given the facts, it is impossible to conclude that the registration was done in bad faith. The Respondent could not have entertained bad faith intentions with respect to the Complainant’s mark because it could not have contemplated the Complainant’s then non-existent rights in the mark at the moment the Domain Name was registered. Thus, the Panel finds that the disputed Domain Name was not adopted in bad faith. See Watchdog USA, LLC v. Newfold Digital, Inc., FA2307002052775 (Forum Aug. 18, 2023) (“since the disputed Domain Name, <watchdog .com> was owned by an entity connected with then Respondent since at least 2001, and the Complainant did not come into existence until 2003, it is impossible to conclude that the registration was done in bad faith, as that could not have been the intention of the Respondent at the time of acquisition of the disputed Domain Name.”).
RDNH: The Panel finds that the disputed Domain Name was registered long before the Complainant claims rights in the trademark RUNSMART. In its complaint, the Complainant cites the 1998 registration of the disputed domain by the Respondent. Thus, the Complainant knew at the time that this dispute was instituted that it could not establish prior rights and that the Respondent could not have acted in bad faith when it registered its domain. In Watchdog USA, LLC v. Newfold Digital, Inc., the Panel observed that “such a finding is justified where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy.” Watchdog USA, LLC v. Newfold Digital, Inc., FA2307002052775 (Forum August 18, 2023).
Complaint Denied (RDNH)
Complainants’ Counsel: Self-represented
Respondents’ Counsel: Amanda Alameddine of Fenwick & West, USA