Welcome to this week’s UDRP Digest (vol. 2.2), summarizing the most intriguing cases of the past week. Read about:
‣ A Simple UDRP Plan Results in RDNH (simpleplan .com)
‣ In Absence of Response, “Ordinary Expression” Baby Shark Domain Goes to “Well-Known” Korean Entertainment Company (babyshark .com)
‣ OLYMPIC STORE is Not Confusingly Similar to “SOCCER STORE”, Regardless of Selling Unauthorized Olympic Merchandise (soccerstore .cc)
‣ Respondent Investor to Have Undertaken Due Diligence to Identify that there was Only a Single User of the Mark – the Complainant (ActionShip .com)
‣ Panelist’s Factual Research into Matters of Public Record Corroborates Respondent’s Earlier Registration (nlix .net)
Enjoy !
A Simple UDRP Plan Results in RDNH
Simple Plan Inc. v. Michel Rog, NAF Claim Number: FA2111001973743
<simpleplan .com>
Complaint Denied (RDNH)
Panelists: Mr. Steven M. Levy, Mr. Terry F. Peppard and Mr. Alan L. Limbury,
Brief Facts: The Canadian Complainant originally formed as a pop/rock band in 1999, registered the disputed Domain Name on September 12, 1999. It has rights in the SIMPLE PLAN mark based on registrations of the mark with the USPTO and the CIPO. The Complainant used the disputed Domain Name to sell and promote its concerts, music, clothing and merchandise during the years 2001-2021. When the disputed Domain Name came up for renewal in 2021, the Domain Registrar could not be contacted and as a result, the Complainant could not renew the registration and Domain Name registration lapsed. The Respondent later acquired it at auction on October 21, 2021 and within a week received an anonymous offer for $5000. The Respondent rejected the offer stating that the disputed Domain Name is not available for sale but would consider offers in excess of $35,000.00. Several additional submissions were filed by each party.
Held: The words “simple” and “plan” are generic, both separately and together. The Complainant’s trademark registrations do not confer a monopoly on the use of those words in fields other than what the particular registration covers. The Respondent’s use in relation to a travel-related website operating in the way described is entirely legitimate. It is evident that the Respondent never “offered” the Domain Name for sale but considered a possible sale on being approached by the Complainant through an agent. Moreover, receiving an offer to purchase a domain name that does not correspond to a globally famous trademark does not amount to an extortionate bad faith attempt to sell the domain name to the relevant brand owner. The Complainant failed to show a lack of legitimate interests or that there were any other circumstances which would justify a finding of either bad faith registration or bad faith use.
RDNH: The Panel finds that the Complainant and its counsel have repeatedly misrepresented the facts, and without supporting evidence alleged that the Respondent was somehow responsible for Complainant’s inability to renew the disputed Domain Name and that he subsequently initiated an offer to sell the domain name back to the Complainant. Further, despite these numerous, knowingly false statements, the Complainant certified: “that the information contained in this Submission is to the best of Complainant’s knowledge complete and accurate.” Taking all the circumstances into account, despite the most unfortunate difficulties that prevented the Complainant from renewing its registration of the Domain Name that it had possessed for 20 years. This Complaint is in bad faith in an attempt at Reverse Domain Name Hijacking!
Complainants’ Counsel: Ronald S. Bienstock of Scarinci Hollenbeck, New Jersey, USA
Respondents’ Counsel: Howard Neu of Law Office of Howard Neu, P.A., Florida, USA
In Absence of Response, “Ordinary Expression” Baby Shark Domain Goes to “Well-Known” Korean Entertainment Company
Smart Study Co., Ltd. v. Domains By Proxy, LLC / norain momin, WIPO Case No. D2021-2663
<babyshark .com>
Transfer
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant is an educational entertainment company based in Korea. One of its animated characters is Baby Shark, whose song recording has received billions of views on YouTube and has an animated television series seen globally. The Complainant owns a number of registered trademarks in the United States, Korea, the United Kingdom and other countries. The Respondent became the registrant of the disputed Domain Name on June 2, 2020 having paid USD $5,999 on the secondary market via the registrar. The disputed Domain Name resolves to a pay-per-click parking page which, in addition to the PPC links, advertises the disputed Domain Name for sale. On being approached by the Complainant, the Respondent initially sought a price for its transfer of USD 100,000. The Respondent did not submit any formal response.
Held: In some contexts, the expression “baby shark” could be descriptive. A Respondent does not necessarily have rights or legitimate interests in a disputed Domain Name, however, just because it consists of or includes an ordinary English expression. Herein, the Respondent has not made any use of the disputed Domain Name other than to park with PPC links and offer it for sale at an excessive amount. The said use by the Respondent does not constitute legitimate non-commercial or fair use under the Policy. Besides, the amount for which the Respondent offered to transfer the disputed Domain Name, that is, USD $100,000 following the Complainant’s rise to global fame indicates a very high likelihood that the Respondent was well aware of the Complainant’s trademark and registered the disputed Domain Name to take advantage of its resemblance to the Complainant’s trademark.
Complainants’ Counsel: Fross Zelnick Lehrman & Zissu, P.C., USA
Respondents’ Counsel: No Response
OLYMPIC STORE is Not Confusingly Similar to “SOCCER STORE”, Regardless of Selling Unauthorized Olympic Merchandise
<soccerstore .cc>
Complaint Denied
Panelist: Mr. John Swinson
Brief Facts: The Complainant, The International Olympic Committee (IOC), is a non-profit organization organized under the laws of Switzerland. The Complainant is the owner of several THE OLYMPIC STORE trademarks including Swiss figurative trademark (December 21, 2000) and Australian word trademark (March 21, 1996). The disputed Domain Name <soccerstore .cc>was registered on March 25, 2021, and at one time resolved to an active website that sells unauthorized “replica” Olympic medals. At the time of the decision, the disputed Domain Name redirected to a website at <kilibuy .com> that sells trophies and medals. No formal response was filed by the Respondent.
Held: The disputed Domain Name does not include the Complainant’s THE OLYMPIC STORE trademark or even the dominant feature of the Complainant’s trademark, OLYMPIC. The term that is common between the disputed Domain Name and the Complainant’s trademark is the word “store”. The Complainant has no trademark rights in the word “store” alone. In the circumstances of this case, while the content of the Respondent’s website does “target” the Complainant, that is not sufficient in itself to affirm let alone make a finding of confusing similarity under the UDRP, as the dominant elements of the Complainant’s trademarks are not recognizable within the disputed Domain Name. The Complainant remains free to pursue an action in another forum against the Respondent in connection with it’s offering of unauthorized products.
Complainants’ Counsel: Bird & Bird LLP, Belgium
Respondents’ Counsel: No Response
Respondent Investor to Have Undertaken Due Diligence to Identify that there was Only a Single User of the Mark – the Complainant
Teapplix, Inc. v. Johnny Gray / ArtWired, Inc., NAF Claim Number: FA2111001974009
<ActionShip .com>
Transfer
Panelists: Mr. Gerald M. Levine, Mr. Dennis A. Foster and Mr. Alan L. Limbury
Brief Facts: The Complainant uses the ACTIONSHIP mark in commerce for a suite of on-line non-downloadable computer ecommerce software to allow users to perform electronic business transactions via a global computer network. The Complainant says it acquired the disputed Domain Name in August 2017, redirected it to its corporate website <teapplix .com> and thereafter applied for the ACTIONSHIP trademark with the USPTO (registered on 25th December, 2018). The Respondent registered the disputed Domain Name in July 2020, shortly after the Complainant’s registration lapsed. The Respondent argues he is in the business of acquiring and selling generic domain names and the disputed Domain Name fits into the pattern of domain names in which Respondent’s company invests. He has put the disputed Domain Name up for sale.
Held: The Respondent contends that the phrase “action ship” is generic and as such has a right or legitimate interest in it. The response to Respondent’s “generic” argument is that a professional domain name reseller has a duty, greater or lesser depending on the distinctiveness of the mark, to assure itself that it is not infringing the rights of others. A search at the USPTO, where both parties are located, reveals the Complainant as the sole user of the term. Thus the Respondent is to be taken to have registered and used the disputed Domain Name in bad faith without exercising reasonable diligence before registering it to ascertain whether the Domain Name conflicted with prior rights.
Complainants’ Counsel: Xudong Yan, Nevada, USA
Respondents’ Counsel: Howard Neu of Law Office of Howard Neu, P.A., Florida, USA
Panelist’s Factual Research into Matters of Public Record Corroborates Respondent’s Earlier Registration
Broadband Hosting B.V. v. Peter van Rotterdam, WIPO Case No. D2021-3374
<nlix .net>
Complaint Denied
Panelist: Mr. Alfred Meijboom
Brief Facts: The Complainant, established in 2001, interconnects networks, data centers and applications. The Complainant is owner of European Union and United Kingdom stylized figurative marks registered since January 25, 2018, for goods and service in classes 9 and 38. It is unclear when the Respondent registered the disputed Domain Name as it seemed to be re-registered in 2003 and currently does not resolve to an active website. The Respondent submits that, while living in New Zealand, he registered the disputed domain name in 1996, with “nlix” being an acronym for “Next Level Information eXchange” and used “NLIX” as trade name in 2000.
Held: In order to assess and verify the parties’ allegations and to assess the evidence attached to the Response with respect to the registration date or period of the disputed domain name the Panel checked the various online records as to WHOIS including historical records. These facts support the Respondent’s submissions that he originally registered the disputed Domain Name in New Zealand and then possibly allowed to lapse. In view of the Panel’s findings that it is more likely than not that the Respondent has registered the disputed Domain Name before 2001 – long prior to the Complainant’s establishment and it’s trademark. Hence, it can be concluded that the Respondent, when registering the disputed Domain Name, could not have known of the trademark or the Complainant and has therefore not registered the disputed Domain Name in bad faith.
Complainants’ Counsel: Koninklijke KPN N.V.
Respondents’ Counsel: Self-represented