Selling Tesla Accessories Bona Fide and Nominative Fair Use
As clearly stated by the Panel, “the Policy was created to address obvious cases of cybersquatting”. It was not intended to address all trademark disputes involving domain names”, referencing the WIPO Overview 3.0 at 4.14.6 which states in part, “panels have tended to deny the case not on the UDRP merits but on the narrow grounds that the dispute between the parties exceeds the relatively limited “cybersquatting” scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction”. Continue reading the Commentary here
From the Introduction to UDRP Perspectives (located at www.UDRPPerspectives.org):
“UDRP Perspectives.org is where you can come to find a curated collection of up-to-date case law and commentaries on the UDRP. We hope that you will find these resources useful, whether you are a UDRP Panelist looking for inspiration and guidance, counsel looking for helpful case citations and insight, or a party looking to better understand the nature and scope of UDRP.
We called this resource “UDRP Perspectives” because it offers views on a selection of important UDRP topics. Our perspectives were developed after many years of careful study of the UDRP, and practical application of the UDRP as both party representatives and as accredited UDRP Panelists. We do not pretend to know all the answers and do not claim that the views expressed here are necessarily the only correct ones, yet we hope that you find them helpful in deepening your own understanding of the UDRP.
UDRP Perspectives also offers a curated collection of up-to-date case law and case commentaries on the UDRP for each topic. Notable decisions are included from five (5) out of the six (6) UDRP Providers, namely, WIPO, the Forum, the Czech Arbitration Court (CAC), the Asian Domain Name Dispute Resolution Centre (ADNDRC) and the Canadian International Internet Dispute Resolution Centre (CIIDRC).
UDRP Perspectives mainly focuses on more recent decisions although we have also included a small number of pre-2018 decisions where we believe such decisions are important to illustrate a particular topic. The decisions which we include contain more denials than transfers and the reason for this is that denials tend to illustrate certain principles better than transfers, particularly since the majority of transfers are in undefended cases. For the same reason, where possible we have included defended three-member Panel cases.”
We hope you will enjoy this edition of the Digest (vol. 4.47), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Selling Tesla Accessories Bona Fide and Nominative Fair Use (teslaunch .net *with commentary)
‣ Respondent’s Prior Use Shows Rights and Legitimate Interest in Domain Name (yetisoftware .com *with commentary)
‣ Claimed First Use in Commerce Amounts to Mere Assertion to be Proven (ssstik .live *with commentary)
‣ Panel: Not Likely Respondent Conceived of Domain Name on its Own (groqy .com)
‣ Complainant Claims Change in Domain Name Ownership; Respondent Refutes (petvilla .com and petvillas .com)
Selling Tesla Accessories Bona Fide and Nominative Fair Use
Tesla Inc. v. hao zou / FEL – Friendly Elder Life Store, NAF Claim Number: FA2410002120768
<teslaunch .net>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The Complainant owns and uses TESLA in connection with vehicles, vehicle parts and accessories, battery and solar goods, toys, and lifestyle goods. The TESLA trademark is registered in the United States (dated December 3, 2013, and June 24, 2014) and other jurisdictions globally, with continuous use since as early as 2003. It also owns the Domain Name <tesla .com> which it uses for its website and email addresses. The disputed Domain Name was registered on April 19, 2022 and used to host a website that prominently displays the Complainant’s TESLA marks. The Complainant alleges that the disputed Domain Name was registered with actual knowledge of the TESLA mark and that it hosts a website that impersonates the Complainant.
The Complainant goes on to allege that the “website associated with the disputed Domain Name mirrors Complainant’s official website at <tesla .com>; Respondent prominently displays Complainant’s proprietary images and other trademarks on the website shown at the disputed Domain Name; Respondent purports to offer the sale of TESLA-branded products of Complainant; [and] Respondent holds itself out as Complainant…” The Complainant also alleges that “[t]o the extent Respondent could be considered a reseller, Respondent is not entitled to the Oki Data defense” and finally points out that the Respondent’s attempt to register TESLAUNCH before USPTO. The Respondent did not file a Response.
Held: The Complainant’s TESLA mark is immediately recognizable in the disputed Domain Name and the added letters “unch” create a portmanteau of the words “Tesla” and “launch”. Other portmanteau domain names have been found to be confusingly similar to their related trademarks. Further, applying the Oki Data test to the present case, the Panel finds that the Respondent does not claim to sell the Complainant’s products but actually sells them, along with products from other companies, specifically for use with the Complainant’s vehicles. Each page of Respondent’s website includes a footer stating that TESLAUNCH is not affiliated with Tesla, Inc., and any manufacturer names are for identification only. Finally, there is no evidence that the Respondent has registered multiple domain names using the Complainant’s mark or is attempting to dominate that market.
From the submitted screenshots of the Respondent’s site, the Panel does not conclude that the Respondent is a sales or service dealer or reseller of trademarked goods. Rather, it appears that the Respondent is a seller of accessories that do not bear the Complainant’s trademark but which may be used to enhance or repair the Complainant’s vehicles. This puts the case on a footing which is similar to that presented in the decision of YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, FA 1675141 (Forum July 11, 2016). The Panel finds that the submitted evidence does not support the Complainant’s contentions sufficiently to meet the preponderance of the evidence standard which is required in UDRP cases, see WIPO Overview 3.0 at Para 4.2. While there are some similarities between the sites, there are also many differences.
Further, the Respondent does not appear to be offering “TESLA-branded products of Complainant”, as asserted, but rather third-party products, with accompanying descriptions that mention the specific Tesla vehicle models for which they are suited. On balance, the Panel finds it more likely that Respondent is not a cybersquatter seeking to improperly target or capitalize on Complainant’s trademark but is, rather, a seller of accessories and parts which may be used with Tesla vehicles. When viewed against all of the circumstances of this case, Respondent’s activities here do not meet the requirements of bad faith registration and use, either under Policy ¶ 4(b)(iii). Should the Complainant feel that the Respondent is perpetrating an infringement of its rights in the TESLA trademark, a court of law would be the proper venue for addressing such dispute.
Complaint Denied
Complainant’s Counsel: Sarah Alberstein of ArentFox Schiff LLP, District of Columbia, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: As clearly stated by the Panel, “the Policy was created to address obvious cases of cybersquatting”. It was not intended to address all trademark disputes involving domain names”, referencing the WIPO Overview 3.0 at 4.14.6 which states in part, “panels have tended to deny the case not on the UDRP merits but on the narrow grounds that the dispute between the parties exceeds the relatively limited “cybersquatting” scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction”.
Here, there was a real business that was selling genuine third party accessories. Now TESLA could have a legitimate complaint about use of their mark within the Domain Name and otherwise, but it cannot be said that this is an “obvious case of cybersquatting”. Rather, there are issues of nominative fair use and infringement that arise which the UDRP is not intended for nor well-equipped to deal with. That is why the Panel correctly stated that “the current facts and evidence present a case that is beyond the scope of the Policy as it involves questions of whether the disputed domain name infringes Complainant’s trademark”, and ultimately held that “should Complainant feel that Respondent is perpetrating an infringement of its rights in the TESLA trademark, a court of law would be the proper venue for addressing such dispute”. This case is a good example of a Panel taking its duties and the limited scope of the UDRP seriously, particularly where no Response is filed. For more background reading on the Policy’s limited scope, see 0.1 of UDRP Perspectives.
Another critical aspect of this decision is found in the Panel’s reaction to the Complainant’s assertion that “Respondent has failed to discharge its contractual obligation to determine that this domain name does not infringe the rights of a third party” under Policy ¶ 2”. The Panel stated that it found:
“Complainant’s assertion quite surprising as Policy ¶ 2 is a contractual obligation between the registrant and its registrar to which a complainant does not have privity and thus lacks grounds to assert a cause of action based thereon. Any line of argument based on this section of the Policy has been rejected by UDRP Panels. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at 3.2.1.”
Well said. This is a very important observation by the Panel that should inform future Panels on how to treat so-called “Paragraph 2” arguments.
Respondent’s Prior Use Shows Rights and Legitimate Interest in Domain Name
Yeti Software Inc. v. Deepak Kumar, NAF Claim Number FA2410002120540
<yetisoftware .com>
Panelist: Mr. Michael A. Albert
Brief Facts: The Complainant claims that it has been the owner and operator of the website <yetisnow .com> since 2016. The Complainant has used the Yeti Software mark in connection with the software, as well as the advertising and sale of the same, and has built goodwill in the Yeti reputation. The disputed Domain Name was registered on July 18, 2008 and currently resolves to a generic landing page provided by the registrar. The Complainant alleges that the disputed Domain Name appears to advertise Yeti’s competitors in an attempt to confuse potential consumers. The Respondent contends that he registered <yetisoftware .com> and a corresponding LLC in the fall of 2008, which predates the Complainant’s use. The Respondent continued to use the LLC and the YetiSoftware name while he consulted and contracted with companies in the Seattle area to build custom software.
The Respondent contends that he has been using the domain name <yetisoftware .com> for longer than the Complainant has operated its own Yeti website, which dates back only to 2015. The Respondent further contends that he has not squatted on the disputed Domain Name with the hope of selling it and that he has made no attempts to monetize the site or otherwise drive traffic to it. The Respondent notes that he was contacted by a brokerage company regarding purchasing the domain on September 1, 2024, which the Respondent declined. The Respondent states that he does not intend to build software associated with snow removal or anything related to that line of business. The Respondent contends that the Complainant has no right to seize a domain name owned and maintained by the Respondent for the last 16 years, i.e., since long before the Complainant acquired any rights in the YETI mark.
Held: Herein, the Complainant only alleges in cursory fashion that the Respondent does not have any rights or legitimate interests, but does not provide any details, evidence, or arguments. The Respondent claims that he registered the disputed Domain Name, seven years prior to Complainant’s first use of its mark, and used it in connection with his custom software company. The Respondent provides written evidence supporting the accuracy of his claim – in particular, a copy of a confirmation of the registration of the disputed Domain Name dated July 18, 2008. The Complainant fails to address the Respondent’s evidence of prior use. Accordingly, on the sole evidence before this Panel, it appears that Respondent’s use predates Complainant’s. Accordingly, the Respondent has rights and legitimate interests in the disputed Domain Name.
For the reasons discussed above, the Complainant has failed to meet its burden to show that the Respondent lacks rights or legitimate interests in the disputed Domain Name under Policy ¶ 4(a)(ii) and so has likewise failed to establish bad faith registration. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed Domain Name). Even if bad faith was assessed as a separate factor, the Complainant has offered no evidence of such bad faith beyond the bare allegation that the disputed Domain Name is “infringing” and was registered for commercial purposes. Nothing in the Complaint shows why that constitutes bad faith, particularly in view of Respondent’s prior use of the mark.
Complaint Denied
Complainant’s Counsel: Sophie Edbrooke of Gerben Perrott, PLLC, District of Columbia, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel found that the Domain Name’s registration predated the Complainant’s use of its mark. The Panel noted that the Complainant “only alleges in a cursory fashion that Respondent does not have rights or legitimate interest, but does not provide any details, evidence or argument”. The Panel also noted that “Complainant fails to address Respondent’s evidence of prior use”. The Panel lastly noted that “Complainant has offered no evidence of such bad faith beyond the bare allegation that the disputed domain name is “infringing” and was registered for commercial purposes [and that] nothing in the Complaint shows why that constitutes bad faith”.
The Panel obviously came to the correct and unavoidable decision to deny transfer in this case but why was RDNH not expressly considered? In a previous recent case by the Panel, The Guitammer Company v. Herschel Thompson, Forum Claim Number: FA2108001958918 (September 13, 2021), the Panel not only considered but also found RDNH based upon comparable facts:
“The Panel finds that Complainant knew or should have known that it was unable to prove either that Respondent lacks rights or legitimate interests in the <buttkicker.com> domain name or that Respondent registered and is using the disputed domain name in bad faith.
The most glaring evidence for this conclusion is that the Domain Name was registered a decade before Complainant’s trademark rights came into existence.
It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred.”
As noted in UDRP Perspectives at 4.0, declarations of Reverse Domain Name Hijacking play a critical role in the UDRP by deterring abusive use of the Policy and preserving the integrity of the UDRP for legitimate claims. A Panel will not have satisfactorily discharged its duty under the UDRP without an express consideration of RDNH where the facts and circumstances warrant. Even when RDNH is not expressly requested by a Respondent – indeed even in ‘no response’ cases – a Panelist must still consider RDNH where appropriate.
That being said, the Panel in the present case may have had very sound reasons for not finding RDNH, such as perhaps that the Complainant was unaware of the Respondent’s prior registration. Nevertheless, it is precisely for such reasons that it is important for Panels to expressly consider RDNH in their decision, even if they ultimately find that RDNH should not be declared in the circumstances. Without inclusion of express considering of RDNH in cases where the circumstances demonstrate that it should at lease be considered, it can appear that RDNH was not considered at all, when it may very well have been by the Panel.
I would also like to make one final observation about what I consider to be a particularly interesting aspect of the decision. The Panel noted in part, that:
“It appears that Respondent’s use predates Complainant’s.
Accordingly, Respondent has rights and legitimate interests in the disputed domain name. Complainant has failed to meet its burden under Paragraph 4(a)(ii).”
As you can see, the Respondent had registered and used the Domain Name prior to Complainant’s first use of the corresponding mark. In other words, the Respondent registered and commenced use of the Domain Name at a time where the Complainant had no rights whatsoever. In such circumstances, how could it be anything other than rights or a legitimate interest? As held in Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No: FA1002001309793, without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is simply no foundation to conclude that a respondent has no rights in the domain name. Logically, a complainant cannot meet this initial threshold of showing that a respondent has no rights, if Complainant itself had no demonstrable rights at the time of registration.
Claimed First Use in Commerce Amounts to Mere Assertion to be Proven
Illia Pustovit v. Tatiana Borodina, WIPO Case No. D2024-3803
<ssstik .live>
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant operates the website at the domain name <ssstik .io>, registered on November 20, 2020, offering free TikTok video download services. The Complainant owns the figurative US trademark, registered on June 20, 2023, with the claimed date of first use in commerce on June 10, 2020. The disputed Domain Name was registered on September 8, 2022, and currently redirects to the website at the domain name <ttdown .app>, which displays the header “TikTok Downloader. Fast. Free. Unlimited. TikTok Download” and offers free TikTok video download services. At the time of filing of the Complaint, the disputed Domain Name was resolved to the website at <ssstik .live>, which displayed the header “SSSTIK TikTok Downloader” and similarly offered free TikTok video download services.
The Complainant alleges that the Respondent created the disputed Domain Name in an attempt to appear related to the Complainant, and the PPC links on the associated website show the Respondent’s intention to attract Internet users for commercial gain. The Respondent contends that the disputed Domain Name does not infringe upon the Complainant’s rights, but reflects the “descriptive nature” of the services offered by the Respondent. The Respondent further contends that it has been operating in this business over the past seven years, well before the Complainant’s alleged rights over the SSSTIK trademark and the continuous use of the disputed Domain Name to provide well-known video downloading services demonstrates the Respondent’s good faith in operating the disputed Domain Name.
Held: The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s SSSTIK trademark. 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 that the Respondent registered the disputed Domain Name see WIPO Overview 3.0, section 3.8.1. The disputed Domain Name was registered on September 8, 2022, while the Complainant’s SSSTIK trademark application was published on April 4, 2023, and the trademark was registered on June 20, 2023. Both of these dates are after the registration of the disputed Domain Name. The trademark has a claimed date of first use in commerce on June 10, 2020. However, as noted in Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033, the date of first use in commerce claimed on a trademark application is of limited evidentiary value in administrative proceedings brought under the Policy. For the purposes of the present proceeding, this date amounts to a mere assertion which would still require to be suitably evidenced.
In these circumstances, there is no support for a finding that the Complainant’s trademark had a reputation at the time when the disputed Domain Name was registered and that the Respondent knew of this trademark when he registered the disputed Domain Name. Further, as discussed in section 3.8.2 of the WIPO Overview 3.0, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the disputed Domain Name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. In the present case however, the Complainant does not claim the existence of any of the above circumstances, and there is no evidence in the case file that show that any of them was in place when the disputed Domain Name was registered. Considering all the above, the Panel concludes that it has not been established that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s SSSTIK trademark. The Panel therefore finds that the third element of the Policy has not been established.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This case is an important reminder in how Panels should approach “dates of first use” specified in US trademark applications. Here, the Panel correctly noted that:
“The date of first use in commerce claimed on a trademark application is of limited evidentiary value in administrative proceedings brought under the Policy. For the purposes of the present proceeding, this date amounts to a mere assertion which would still require to be suitably evidenced.”
As noted in UDRP Perspectives at 1.7, it is well established that the claimed date of first use in commerce on a US trademark registration certificate is, alone, not evidence of common law rights as of that date. Such assertions therefore need to be supported by the same kind and volume of evidence required to demonstrate common law trademark rights, but as of the date of claimed first use in commerce (see for example, Empower Media Partners, LLC v. M. Jarrar, Forum FA2301002030007 (2023), <EmpowerMedia.com>, 3-member, Denied, RDNH and; Handy Guy Inc. v. Merlin Kauffman, Forum FA2205001998214, <handyguy.com>, 3-member, Denied, RDNH); and Franki Global Inc. v. Privacy service provided by Withheld for Privacy ehf / Golden Dream, The Stay Gold Co / Samantha Jurashka, WIPO D2021-2901, <befranky.com>, Denied; and Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO D2009-1033,<marketwatch.net>, Denied).
Panel: Not Likely Respondent Conceived of Domain Name on its Own
Groq, Inc. v. K Malik / Blockchain Ltd, NAF Claim Number: FA2410002122098
<groqy .com>
Panelist: Mr. Charles A. Kuechenmeister
Brief Facts: The Complainant develops and markets hardware and software with a focus on artificial intelligence, natural language processing, and machine learning. It has rights in the GROQ mark based upon its registration of that mark with the USPTO. The disputed Domain Name was registered on July 31, 2024. The Complainant alleges that the Respondent registered the domain name with actual knowledge of the Complainant and its mark, it attempts for commercial gain to attract Internet users to its website by causing confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, and it registered the domain name using a privacy service.
The Respondent contends that the Domain Name is distinct from the Complainant’s mark… the simple addition of a single letter to the mark creates a wide gulf between the mark and the domain name. It does not use the Complainant’s trademarks or branding elements in any deceptive way and offers a clearly different service. The Respondent further contends that he is neither passing off as nor competing with the Complainant. The parties have two different consumer bases, and the Respondent’s website does not represent itself as that of the Complainant or an affiliate. There is no evidence of bad faith intent to mislead or leverage the Complainant’s reputation.
Held: The Respondent’s argument raises the question of how panels should interpret the “confusingly similar” language in Policy ¶ 4(a)(i).”). On the one hand, as at least one learned commentator* has correctly argued, “The plain meaning of the term ‘confusingly similar’ requires that an Internet user observing the domain name would be led to believe that by visiting the associated website they will find the owner of the mark, or some affiliated or owner-authorized person or entity.” (* Nat Cohen, owner of Telepathy, Inc., ICA Board member, @ICADomains) Notwithstanding the indisputable logic of this argument, most UDRP panelists have adopted the approach articulated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 1.7. That test is adopted in this case. It avoids a subjective inquiry around what a given internet user might or might not believe when he or she sees a domain name and substitutes a more objective test.
The site advertises the AI services of the site sponsor, named “Groqy.” There is no suggestion other than the similarity in names that it is associated or affiliated with the Complainant, but neither is there any statement that it is not. The Respondent is selling services very similar to those offered by the Complainant and in this sense is competing with the Complainant, and by using a domain name so closely similar to the Complainant’s mark is suggesting an affiliation that does not exist. Neither of these qualifies as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). To that end, the Respondent argues that its Domain Name is materially different from the Complainant’s mark because it connotes a much different market than the Complainant’s mark, being less formidable or intimidating and suggesting lightheartedness. That may be true, but the Complainant’s unique mark could lead users to believe the domain represents a less formal division of the Complainant, still suggesting an association with it.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. The Respondent is using a similar domain name to mislead users and gain commercially, creating confusion regarding the source or affiliation with the Complainant’s mark, as stated in Policy ¶ 4(b)(iv). Additionally, the Respondent is attempting to impersonate the Complainant or its affiliates. This does not fit precisely within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Moreover, the Respondent had actual knowledge of the Complainant and its unique GROQ mark when registering the domain in July 2024. It is not likely that the Respondent conceived of its domain name on its own, without awareness of it from the Complainant’s use of its mark, and the Respondent does not claim that it had no knowledge of the mark when it registered the domain name.
Transfer
Complainant’s Counsel: Matthew Passmore of Cobalt LLP, California, USA
Respondent’s Counsel: Self-represented
Complainant Claims Change in Domain Name Ownership; Respondent Refutes
<petvilla .com> and <petvillas .com>
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainants, operating in New Zealand, provide goods and services in pet boarding, dog daycare, pet retail, international pet transport, and transit boarding services. According to the Complaint, they began their business in 2016 under the name “CatVilla” and rebranded to “PetVilla” in 2017. The First Complainant holds a U.S. trademark for PETVILLA, registered on September 27, 2022, while the Second Complainant owns a New Zealand trademark for PETVILLA, registered on January 19, 2021. The Second Complainant also owns the domain <petvilla .co .nz>, registered on October 1, 2016, which features their official website for animal boarding services. The disputed Domain Names were registered on September 28, 2003. Historical WhoIs records indicate a different registrant until October 28, 2016, when the Respondent was listed. The Respondent has submitted invoices dated September 17, 2014, September 1, 2015, and October 28, 2016, issued to it by the Registrar for the payment of the renewal fees for the disputed Domain Names.
The Complainants alleges that for nearly all the time after their registration, the disputed Domain Names have been offered for sale or used to display pay-per-click (“PPC”) advertising and links to competitors. The Complainants point out that after their business and trademark became known to the Respondent, the same inflated the disputed Domain Names’ price from a “mid-four-figure” price in 2021 to USD 30,000 in 2023, and altered content to interfere with the Complainants’ business. The Respondent contends that it has legitimate interests in the disputed Domain Names because it registered and has continuously owned and operated them focusing on pet-related content since 2003, well before the First Complainant’s trademark application in 2020. According to the Respondent, “Pet Villa” is a common descriptive phrase that has been in use worldwide for as long as search trends have been tracked.
Held: The Panel finds that the Respondent did not register the disputed Domain Names in bad faith targeting the Complainants or their trademark rights because the Complainants had no trademark rights at the time that the Respondent registered the disputed Domain Names in 2003, see WIPO Overview 3.0, section 3.8.1. According to the Complainants, the Respondent acquired the disputed Domain Names only in October 2016, after the Complainants registered their domain name <petvilla .co .nz>. The Complainants support this allegation with printouts of historic WhoIs records for the disputed Domain Names, showing that the Respondent was listed for the first time as their registrant with the update of these records made on October 28, 2016 and that a different entity was listed as their registrant prior to that update. The Complainant submits that the prior registrant was unrelated to the Respondent, but does not dispute the renewal fee invoices submitted by the Respondent, which appear to support a conclusion that the Respondent was the beneficial owner of the disputed Domain Names from at least 2014 till 2016.
In any case, even if the Complainants’ allegation that the Respondent acquired the disputed Domain Names only in October 2016 is accepted, there is no evidence that the Complainants were carrying out any business at that time under the brand PetVilla. According to their statements, the Complainants started their business in 2016 under CatVilla and adopted PetVilla only in 2017. The Complainants’ domain name <petvilla .co .nz> was registered on October 1, 2016, but there is no evidence that it was active before 2018. Therefore, if it is accepted that the Respondent became the registrant of the disputed Domain Names in October 2016, and even if the geographic distance between the Parties is not taken into account, there is no basis for concluding that at this point, it could have somehow known of the Complainants and their future PetVilla business, and that it could have targeted their PETVILLA trademark with the acquisition of the disputed Domain Names. This precludes a finding of bad faith registration or acquisition of the disputed Domain Names by the Respondent.
RDNH: In the Panel’s view, the Respondent’s RDNH allegations have not been made out. Without wishing to suggest that it will always be necessary for a party to respond to letters sent by potential complainants, the Panel observes that in this case the Respondent did not answer the Complainants’ cease-and-desist letter, increased the sale price of the disputed Domain Names, and altered the content of the associated websites. Although the Complainant has not succeeded in its Complaint, this is insufficient to support a finding that its conduct amounted to RDNH.
Complaint Denied
Complainant’s Counsel: Frank Simon, New Zealand
Respondent’s Counsel: Glenn Gallagher, United States
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.