Supplemental Registration Fails
This case demonstrates how the particular facts matter, especially when scrutinized by a Panel. If the Complainant had a registered trademark for LEGALNOW in connection with legal services, had prominently used the mark on its website, and had provided evidence that it was very well known, the outcome would have been different. (continue reading commentary).
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We hope you will enjoy this edition of the Digest (vol. 4.22), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Supplemental Registration Fails (legalnowai .com *with commentary)
‣ Inherent Distinctiveness is Not in Itself Evidence of Renown (inera .cloud *with commentary)
‣ Does Complainant Have Common Law Rights in NOW? (pittsburghbaseballnow .com *with commentary)
‣ Domain Rental Dispute Exceeds Limited ‘Cybersquatting’ Scope of the UDRP (statenislandoralsurgery .com *with commentary)
Supplemental Registration Fails
National Hockey Now LLC v. Tim Williams, NAF Claim Number: FA2404002093304
<legalnowai .com>
Panelist: Mr. Lars Karnøe
Brief Facts: The Complainant is a company that provides legal services for individuals, companies, and employers, including legal insurance. The Complainant was founded more than 85 years ago and currently operates in 19 countries with a nearly $2 billion worldwide base. The Complainant is the proprietor of LEGAL NOW, a U.S. trademark, registered for “Legal services” on the US Supplemental Register. The Complainant has used the “LEGAL NOW” trademark in commerce for legal services since April 2015. The disputed Domain Name was registered on November 22, 2023. The Complainant alleges that the Respondent is using the disputed Domain Name to entice people to its website to confuse people into believing the Respondent is sponsored by, affiliated with, or otherwise associated with the Complainant, and/or to entice people into purchasing its legal product instead of Complainant’s similar “LEGAL NOW” trademarked product. Additionally, the WHOIS information for the disputed Domain Name indicates that the Respondent is purposefully trying to hide its identity as the owner of this domain name.
The Respondent contends that the Complainant’s use of the term “LegalNow” is not prominent on their website and in fact the Complainant operates under the service name “araglegal”, with its website logo and nearly all descriptive text centered around “ARAG”. “LegalNOW” is not a primary name used in the Complainant’s business operations and may even have been added temporarily just for this proceeding. In contrast, the product operation under the disputed Domain Name’s use of “LegalNow” is prominent and distinct in its branding and product description. The website at the disputed Domain Name explicitly uses “LegalNow” as the Product name, featuring prominently in the product logo and in multiple descriptions. The Respondent further contends that his services involve the use of artificial intelligence software to assist users in self-help drafting or reviewing legal agreements. In contrast, the Complainant’s trademark offers legal services. These offerings are not of the same category and do not conflict.
Held: The Complainant has not filed evidence that the trademark LEGAL NOW is well-known or famous. Based on the evidence provided by the Complainant this Panel finds that the mark LEGAL NOW holds very little if any, distinctive character. This Panel therefore finds that the disputed Domain Name <LegalNowAI .com> is not confusingly similar to a service mark in which the Complainant holds rights in the meaning of the Policy Paragraph 4(a)(i). Further, this Panel does not find that the Complainant has evidenced in any way that the disputed Domain Name has been registered in bad faith of the Complainant’s mark LEGAL NOW. The terms LEGAL and NOW seem merely descriptive in relation to legal services.
Given the presented evidence this Panel finds that the use of the disputed Domain Name does not qualify as an attempt to attract, for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of web locations to which the disputed name resolves, and that the use of the disputed Domain Name, therefore, does not constitute use of the disputed Domain Name in bad faith.
Complaint Denied
Complainants’ Counsel: Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA
Respondents’ Counsel: NA
Case Comment by ICA Legal Counsel, Zak Muscovitch: This case demonstrates how the particular facts matter, especially when scrutinized by a Panel. If the Complainant had a registered trademark for LEGALNOW in connection with legal services, had prominently used the mark on its website, and had provided evidence that it was very well-known, the outcome would have been different. However, as it turned out, the Complainant only had a Supplemental Registration, did not prove it was well known, didn’t even use LegalNow .com, and used ARAG as its primary brand. As such, the Panel appropriately concluded that the case should be dismissed.
Inherent Distinctiveness is Not in Itself Evidence of Renown
Inera AB v. Oskar Zajączkowski, WIPO Case No. D2024-0773
<inera .cloud>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant describes itself as “a digitization company that contributes to developing welfare.” The Complainant provides no evidence about when it was formed, or how long it has been in the “digitization” business, or how extensive its activities are. The Complainant holds trademark registrations for Inera in the EU and Sweden. A summary of the trademark registrations is annexed to the Complaint, but the actual trademark registration certificates are not in the record. Also, the date on which the Complainant first used the mark INERA (either as a word mark or as a stylized mark) is not apparent from the record. Beyond the asserted trademark registrations, the record is devoid of any evidence about the extent to which Complainant’s INERA mark is recognized or used as a source identifier for the Complainant’s “digitization” products or services.
The disputed Domain Name, registered on December 8, 2023, does not resolve to an active website. There is nothing in the record to indicate that the disputed Domain Name has been put to any use since it was registered. On February 8, 2024, the Complainant’s counsel sent a cease-and-desist letter to the Registrar, which stated that the Complainant has held its INERA trademark registrations “since 2010” and that the Respondent’s registration of the Domain Name “constitutes trademark infringement.” The Respondent did not formally reply to the Complainant’s contentions.
Held: The Panel concludes, on this record, that the Complainant has fallen short of carrying its burden to prove that the Respondent has registered and used the Domain Name in bad faith. Above all, the Panel cannot conclude, on this record and a balance of probabilities, that Respondent more likely than not had Complainant’s INERA trademark in mind when registering the Domain Name. The Complainant has provided no evidence that its Swedish trademark INERA is so well known that Respondent, located in Poland, was likely to have known the mark when he registered the Domain Name. The record is devoid of evidence concerning the Complainant’s actual products or services, the extent to which they are advertised and marketed, the extent of the Complainant’s sales, the extent to which the consuming public recognizes the INERA mark, and other indicia relevant to an allegation that a respondent has targeted a complainant’s trademark for purposes of a UDRP claim.
Although INERA appears to be a coined term and hence an inherently distinctive trademark, inherent distinctiveness is not in itself evidence of renown. The Panel also notes that INERA is a relatively short word (five letters), is used as a trademark by third parties, and domain names consisting of few letters (especially three or four) are often viewed as desirable regardless of their possible association with an existing trademark. The fact that the Complainant’s cease-and-desist letter asserts that the Respondent’s mere registration of the Domain Name, which did not even resolve to an active website, constituted “trademark infringement” underscores for the Panel that the Complainant does not seem to appreciate that actual targeting of the Complainant’s trademark is required under the UDRP (as opposed to trademark law in various jurisdictions). Given the paucity of evidence of trademark targeting and the fact that the burden of proof rests with the Complainant, this Complaint must fail.
Complaint Denied
Complainants’ Counsel: Abion AB, Sweden
Respondents’ Counsel: Self-represented
Case Comment by ICA Legal Counsel, Zak Muscovitch: This case is particularly noteworthy for the Panel’s appreciation for the nuanced difference between an inherently distinctive mark, i.e. a coined word, and being evidence itself of renown. Just because a mark may be a coined word does not mean that it is well known, that the Complainant is the exclusive user of it, or that the Respondent necessarily had the Complainant in mind. As the Panel astutely noted “INERA is a relatively short word (five letters), is used as a trademark by third parties, and domain names consisting of few letters (especially three or four) are often viewed as desirable regardless of their possible association with an existing trademark”.
This case is also noteworthy in the Respondent apparently just wanted to give the domain name away. Though not captured in the Brief Facts above, the decision itself extensively addresses correspondence from the Respondent and contains a section on “Consent to Remedy”. In one of the Respondent’s emails to the Centre he wrote that he “doesn’t have time for any arguing” and “has a job”. He also indicated a willingness to sign the Settlement Form and transfer the Domain Name. He also stated, “I still don’t understand what the complaint is about, could it be explained?” and “I really want to suspend the dispute, I’m not yet 18 and I don’t have that kind of money, I’m very sorry for the problem, I promise it won’t happen again.” These sort of facts may be somewhat common, in that I suspect in some cases it is simply not worth the Respondent’s time and the hassle of responding as opposed to just letting the Domain Name dispute go ahead with a likely transfer. After all, the $10 registration fee may be easily given up if somebody has something better to do than defend a case over it, especially if the Domain Name wasn’t really that important to him or her.
But in this particular case, the Panel noted that despite the suspension of the proceeding for purposes of settlement negotiations, it appears that the Complainant ultimately requested reinstitution. The Panel also noted that the Respondent’s communications reflected remaining questions as to the settlement agreement between the Parties and its implications for the Respondent. As such, the Panel decided to proceed to the substantive questions on the merits.
Does Complainant Have Common Law Rights in NOW?
ARAG North America Incorporated v. Huanzhi Li, NAF Claim Number: FA2404002093082
<pittsburghbaseballnow .com>
Panelist: Ms. Nathalie Dreyfus
Brief Facts: The Complainant claims common law rights in the NOW Brand since 2015, used primarily for Pittsburgh sports trademarks and domain names comprising the wording “Pittsburgh [sport] NOW .com”, and that their continuous and exclusive use has established the NOW Brand’s distinctiveness. The Complainant alleges that the Respondent used the disputed Domain Name to create a false appearance of affiliation and to direct traffic to a competing website and that the Respondent acknowledged the Complainant’s superior trademark rights and registered the Domain Name to help the Complainant expand into baseball. The Complainant further alleges that the disputed Domain Name was registered to target the Complainant’s NOW Brand and divert traffic to the Respondent’s site, <PiratesProspects .com>. This registration and usage do not constitute a bona fide offering of goods or services. The Respondent’s actions misuse the Complainant’s trademark to redirect traffic to a competing website. Complainant insists that this misleading use, intended to profit from the Complainant’s established goodwill, demonstrates bad faith.
The Respondent contends that he owns HIMYNAMEISTIM, LLC, which operates the disputed Domain Name. He coordinated its launch with Alan Saunders and Joe Steigerwald in 2021, providing resources and support from his site, <PiratesProspects .com>. The Respondent denies attempting to control the baseball media market and asserts that any links to <PiratesProspects .com> were offered by Saunders or Steigerwald. The Respondent points out that Mr. Kingerski misrepresented their agreements and repeatedly demanded the domain for free or at a low cost, which the Respondent rejected without an audit of the NOW network’s success. The Respondent argues that he aimed to help independent writers and did not view Kingerski as a competitor. He demanded the removal of Pirates Prospects branding from the website at <PittsburghBaseballNow .com>, which was refused. The Respondent further contends that <PittsburghBaseballNow .com> misused his photo library without payment and that its traffic is lower than <PiratesProspects .com>, contradicting claims of mutual benefit. He accuses Kingerski of attempting to rewrite his contributions and falsely portray him as an enemy. The Respondent plans legal action if his demands, including compensation and branding removal, are not met before transferring the domain.
Held: The Complainant claims common law rights in and to the NOW Brand, launched in 2015. However, the question that arises in claims of common law rights is whether the name qualifies as a trademark or service mark. Qualification for common law rights must take into account the distinctiveness of the terms claimed to be recognized by the general public indicators of source or simply a general category of merchandise. To this effect, the Panel majority in Shoe Mart Factory Outlet, Inc. v. DomainHouse .com, Inc. c/o Domain Administrator, FA 462916 (Forum June 10, 2005) (<shoemart .com>): “a mark which is either generic or descriptive cannot be registered and cannot become a protected common law trademark unless it is conclusively shown to have become distinctive in the sense that it has achieved a secondary meaning such that consumers identify those common terms exclusively with the goods or services of the owner of the mark.”
Panels have generally required that a complainant make a strong showing with relevant evidence demonstrating such acquired distinctiveness, see section 1.3 of WIPO Overview 3.0. Proof of such rights cannot be based on conclusory allegations. The Panel finds that the evidence submitted by the Complainant in annexes is not sufficient to prove or disprove the common law right claim. Moreover, the dispute as to the agreements between the parties, the benefits of the disputed Domain Name and associate website and the misuse of the Respondent’s photo library does not fall within the jurisdiction of this forum. This decision does not mean that the Complainant has no means for redressing his grievance against Respondent, as to the merits of which the Panel offers no opinion. The Panel decides only that the Complainant must, if he so chooses, seek relief for his claim in a court of competent jurisdiction because the facts supplied to us do not allow him to pursue it here.
In light of the Panel’s preliminary findings, the Panel cannot consider whether or not the disputed Domain Name is Identical or confusingly similar to the Complainant’s common law rights. Further, in light of the Panel’s finding under the first limb, the Panel need not consider whether or not the Respondent has rights or legitimate interests in the disputed Domain Name and also the Panel need not consider whether or not the disputed Domain Name was registered and used in bad faith.
Complaint Denied
Complainants’ Counsel: Roberto Ledesma of Lewis & Lin, LLC, New York, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The facts of this case are confusing, but bookmark this case for the Panelist’s excellent recital of the applicable law on proving common law trademarks. I will excerpt it here for your ease of reference:
“The question that arises in claims of common law rights is whether the name qualifies as a trademark or service mark.
Qualification for common law rights must take into account the distinctiveness of the terms claimed to be recognized by the general public indicators of source or simply a general category of merchandise.
To this effect, the Panel majority in Shoe Mart Factory Outlet, Inc. v. DomainHouse.com, Inc. c/o Domain Administrator, FA 462916 (Forum June 10, 2005) (<shoemart.com>) explains that : “[T]he sine qua non of a complainant prevailing in a UDRP case is that the complainant establish conclusively that the complaint is based upon ownership of either a registered trademark or a mark which would be recognized by a court as a common law trademark”. However, “a mark which is either generic or descriptive cannot be registered and cannot become a protected common law trademark unless it is conclusively shown to have become distinctive in the sense that it has achieved a secondary meaning such that consumers identify those common terms exclusively with the goods or services of the owner of the mark.”
Panels have generally required that a complainant make a strong showing with relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) through a range of factors, such as (i) the duration, extent and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Thus, in Timec Oil and Gas, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Guy Ngassa, The Solution Engineering Group, D2022-0064 (WIPO Feb. 23, 2022):
“Proving the existence of such common law or unregistered rights requires a complainant to show with actual evidence when its claimed mark became a distinctive identifier which consumers associate with the complainant’s goods or services.”
The Panel finds that the evidence submitted by the Complainant in annexes A (Declaration of Daniel Kingerski) and B (screenshots of the Complainant’s website and of its social medias) is not sufficient to prove or disprove the common law right claim.”
I also particularly appreciate the Panelist’s appreciation for the limited scope of the UDRP and for reminding the parties that the decision to dismiss the UDRP proceeding “does not mean that the Complainant has no means for redressing his grievance against the Respondent as to the merits of which the Panel offers no opinion”.
Domain Rental Dispute Exceeds Limited ‘Cybersquatting’ Scope of the UDRP
Staten Island Oral and Maxillofacial Surgery, PC v. Jamie Licznerski, WIPO Case No. D2024-0961
<statenislandoralsurgery .com>
Panelists: Mr. Lawrence K. Nodine (Presiding), Mr. Lorelei Ritchie and Mr. Evan D. Brown
Preliminary Question – Regarding Arbitration Clause in the Parties’ Contract. The Respondent states in its response that the 2014 contract between the Parties, which governed their relationship until it was terminated in June 2023, includes a provision requiring that “[a]ny controversy or claim arising out of, or relating to this Agreement, or breach thereof, shall be settled by common law arbitration, which shall be conducted exclusively in Stroudsburg, Monroe County, Pennsylvania.”
Neither Party here has commenced an arbitration proceeding pursuant to this clause and the Respondent has not asked the Panel to stay these UDRP proceedings pursuant to this clause. The Respondent expressly elected to have the dispute decided by a three-member panel and paid the extra fee required to do so. The Respondent has not requested a stay of these proceedings or commenced an arbitration proceeding. The Panel finds that it has authority to decide this case under the Policy without regard to the arbitration clause.
Brief Facts: The Complainant provides oral and maxillofacial services to clients in the New York region under the trademarks STATEN ISLAND ORAL & MAXILLOFACIAL SURGERY and STATEN ISLAND ORAL SURGERY. The record does not reflect the date the Complainant began using the STATEN ISLAND ORAL SURGERY mark, but the Complainant alleges with supporting evidence that it registered the disputed Domain Name on August 21, 2003, and launched an associated website in 2004. In August 2012, the Complainant engaged the Respondent to manage its website, taking over responsibility from a prior website management company — PBHS, Inc. During the transition, the Respondent’s representatives asked the Complainant for “GoDaddy login credentials.” The record is unclear, but it appears that the Complainant had previously transferred ownership of the disputed Domain Name to PBHS. PBHS asked Complainant to confirm its instructions “to transfer the domain out of your account” and advised that “we will send the transfer authorization (EPP) code to” Respondent.
The record also reflects an email from GoDaddy to Respondent advising that “[t]he registrant of the [disputed Domain Name] has initiated a process by which you [Respondent] will become the registrant.” Although the disputed Domain Name was transferred to Respondent in 2012 pursuant to the apparent instructions, one of Complainant’s former employee doctors who was mentioned in the 2012 communications regarding the transfer of the disputed Domain Name submitted a declaration attesting that he did not authorize Respondent to transfer the disputed Domain Name to the Respondent and that he did not receive an email from PBHS or Respondent requesting permission to transfer disputed Domain Name. The Respondent managed Complainant’s website from 2012 until June 2023. The Respondent sent the Complainant invoices for its services. The Complainant paid these invoices without objection.
In June 2023, the Complainant terminated its website maintenance agreement with the Respondent and then learned that it did not own the disputed Domain Name. When the Complainant requested a transfer of the disputed Domain Name, The Respondent requested a payment of USD $100,000 as consideration for the transfer. The Parties thereafter engaged in negotiations, and the Respondent alleges that a compromise price of USD $35,000 was reached. The Complainant did not pay the compromise price, however, but instead commenced these proceedings. The Respondent denies the allegation that it fraudulently induced the Complainant to transfer the disputed Domain Name and further contends that this is a contractual dispute that is outside the scope of the Policy.
Held: Since the Respondent acquired ownership of the disputed Domain Name by transfer from the Complainant 13 years ago, the Respondent has permitted the Complainant to use the disputed Domain Name in exchange for an annual lease payment. There is nothing inherently illegitimate about owning a domain name that corresponds to the trademark of another and then leasing the domain name to the trademark owner, provided the trademark owner agrees to the arrangement. Here, the Parties dispute whether there was any such agreement. Did the Complainant agree that Respondent would own the disputed Domain Name? The Complainant alleges that it did not knowingly consent to transfer the disputed Domain Name to the Respondent and, further, that it did not understand that for 13 years thereafter it did not own the disputed Domain Name but was instead only renting it. The Complainant states that only the domain name owner can transfer a domain name to a third-party as it requires the password and login information. On August 3, 2012, Respondent requested Complainant’s GoDaddy password and web-host login information to allegedly perform authorized services including making edits to Complainant’s website – at no point did Respondent inform the Complainant that it would be transferring the domain name out of Complainant’s account.
The Respondent contests these allegations, asserting instead that “Complainant consented to the transfer of the Disputed Domain to Respondent.” The Complainant’s Annex includes a 2012 email from GoDaddy to Respondent requesting consent to receive the disputed Domain Name. The Respondent also notes that for 13 years, the Complainant paid invoices reciting an annual charge for a “lease” to the disputed Domain Name. Boiled down, the Complainant alleges that Respondent fraudulently induced Complainant to consent to and facilitate the transfer of the disputed Domain Name to the Respondent. The Respondent denies any such fraudulent conduct and emphasizes that Complainant paid invoices for the “lease” of the disputed Domain Name. The evidence is insufficient for the Panel to find by a preponderance of the evidence that the Respondent fraudulently induced the transfer of the disputed Domain Name. For this reason, the Panel finds that Complainant has not established the second and third element of the Policy.
Moreover, WIPO Overview 3.0, section 4.14.6, provides that “in some instances (e.g., complex business or contractual disputes) 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.” The Panel finds this case fits in that category and provides an additional basis for the denial of the Complaint.
Complaint Denied
Complainants’ Counsel: Sisun Law, United States
Respondents’ Counsel: Brian J. Cali & Associates, United States
Case Comment by ICA General Counsel, Zak Muscovitch: Complexity alone per se is not necessarily a reason to dismiss a domain name dispute. Some cases may have complicated facts or complex legal arguments and still be appropriate for resolution under the UDRP. Nevertheless, where the complexity of facts or law cannot be satisfactorily resolved under the limited procedural framework of the UDRP, such as where cross-examination and discovery would be appropriate, or where the legal issues at play call into question whether it is a clear case of cybersquatting, dismissal remains appropriate. The Panel in this case prudently determined that this case was inappropriate for resolution under the UDRP inter alia, because “the evidence was insufficient for the Panel to find by a preponderance of the evidence that Respondent fraudulently induced the transfer of the Disputed Domain Name”. Moreover, the Panel also found that the dispute exceeded the “”the relatively limited ‘cybersquatting’ scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction”.
I do however want to make a remark about the Panel’s determination on the first prong. The Panel properly noted that the “Complainant has applied for a federal trademark registration, but the application has not been allowed and, therefore, has no legal significance at this time has no legal significance”. Nonetheless, the Panel went on to find that the “Complainant has established unregistered trademark or service mark rights for the purposes of the Policy”, noting that the “Respondent does not contest Complainant’s rights in the Mark” and that “the Panel in particular finds that Complainant has used the Mark since at least 2003 and offers evidence that between January 2017 and August 2023, there were approximately 146,000 visitors to Complainant’s website”. The Panel further noted that “the entirety of the mark is reproduced within the Disputed Domain Name and “accordingly, the Disputed Domain Name is identical or confusingly similar to the mark for the purposes of the Policy”.
Let’s not forget however, that the Domain Name is <statenislandoralsurgery.com>, comprising the quintessentially descriptive term, “Staten Island Oral Surgery”. With such a descriptive alleged mark, it would take far more than 146,000 visitors to the website to established common law trademark rights. Even with a million visitors, that alone would not necessarily establish a secondary meaning in the mind of the public.
Descriptive terms are capable of acquiring distinctiveness but the more descriptive the term, the more evidence will be required to establish a secondary meaning. When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue. Panels should be wary of easily conferring common law rights upon complainants where the claimed trademark comprises what appears to be a mere common descriptive term. In such cases, the conferral of common law rights upon a merely descriptive term may serve to unjustifiably provide standing to a Complainant under the Policy when in reality the Complainant is just one of many users of a common descriptive term in the marketplace. As Lord Herschell in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks, [1898] AA.C. 571 at p. 580: “The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using it for purposes of description, a word which has reference to the character of quality of the goods.”
The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.