Was the domain name registered in bad faith?
Targeting vs. Constructive notice in the UDRP
The Complainant relied on the two “App Science” US trademarks where the “app” element is disclaimed.
The Respondent argued among other things that:
- He registered the disputed Domain Name on November 15, 2018, for the purpose of starting a software consulting company in Texas;
- He filed a TM application for “appscience” in 2019 and abandoned it in 2020 but retained the domain name;
- The term “app science” is generic and descriptive in the tech industry;
- He was not aware of the Complainant’s “APP SCIENCE” trademark at the time the disputed Domain Name was registered.
We are not privy to the parties’ submissions and do not know how persuasive their arguments were…. read the commentary here.
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We hope you will enjoy this edition of the Digest (vol. 4.33), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Targeting v. Constructive Notice in the UDRP (appscience .ai *with commentary)
‣ Panel Unable to Determine Outcome Due to Insufficient Evidence (onetab .com *with commentary)
‣ Respondent’s Prior Use of SHIRVAN HOTEL Precludes Infringement Claim (shirvanhotels .com *with commentary)
‣ Respondent Selling Counterfeit Products, Obvious Case for Cybersquatting (medusefrance .com *with commentary)
‣ Complainant Must Demonstrate Common Law Rights if No Registered Trademark Exists (vikimgcloud .com *with commentary)
Targeting v. Constructive Notice in the UDRP
Sabio Inc. v. Bhuvan Pasham, NAF Claim Number: FA2406002104028
<appscience .ai>
Panelist: Ms. Francine Siew Ling Tan
Brief Facts: The Complainant is in the business of designing and providing software applications and offers its services online through <appscience .inc>. The Complainant is the registered owner of U.S. trademark registrations for APP SCIENCE, registered on November 7, 2017, and on July 10, 2021. The Complainant alleges that the Respondent first began using the “appScience” mark in connection with competing services in or about November 2018 and attempted to register the “appScience” trademark in 2019 under Class 42, but the application was rejected by the USPTO. The Complainant further alleges that the Respondent has been aware of the Complainant’s APP SCIENCE mark and has attempted to sell the disputed Domain Name to the Complainant several times, with the latest offer at US $30,000. Despite having received refusals from the USPTO in relation to his “appScience” trademark application and the Complainant’s cease-and-desist letter in 2020, the Respondent has continued to use the Complainant’s APP SCIENCE trademark and has recently redirected the disputed Domain Name to what appears to be his personal software-related website, <execoder .com>.
The Respondent contends that he registered the disputed Domain Name on November 15, 2018, to start a software consulting company in Texas. The Respondent’s business involves technology consulting and application development for the private equity industry. The Respondent’s business merged with another business, and it abandoned its trademark application for “appScience”. The Respondent retained the Domain Name for future use to provide educational services in the field of artificial intelligence since he works with several non-profit organizations in education. The Respondent further contends that the disputed Domain Name does not infringe on the Complainant’s trademark rights as the site to which it resolves does not offer any similar products to that covered by the APP SCIENCE trademark registration. The Respondent was not aware of the Complainant’s APP SCIENCE trademark rights at the time the disputed Domain Name was registered and there is no intention to capitalize on the goodwill associated with Complainant’s trademark, or to mislead consumers.
Held: The Respondent’s field of ‘software consulting’ overlaps with and is similar to the kind of services specified in Complainant’s U.S. federally registered trademarks. While the Respondent claims that he is retaining the disputed Domain Name as he intends to use it for his business/projects in relation to education, he has failed to furnish any evidence to support these claims. The Respondent brought no evidence of his “work with several nonprofit organizations in the [sic.] education” or any other evidence showing validity in his statement that he has an “intention of providing educational services in the field of artificial intelligence”. These assertions are in fact contradicted by evidence provided by the Complainant of Respondent’s repeated attempts to sell the disputed Domain Name to the Complainant, the highest price tag being US $30,000, which is significantly higher than any out-of-pocket registration costs which would have been incurred by the Respondent. There is no evidence of a legitimate non-commercial or fair use of the domain name, without intent for commercial gain. The Respondent has, therefore, failed to establish he has rights or legitimate interests in the disputed Domain Name.
The Panel is persuaded that the circumstances of this case fall squarely within Policy ¶ 4(b)(i) which states that evidence of a respondent’s registration and use of a domain name in bad faith can be found by a panel to be present where circumstances indicate that the respondent registered the domain name primarily for the purpose of selling the domain name to the complainant who is the owner of the relevant trademark for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name. The Panel also finds bad faith registration and use on the evidence, per Policy ¶ 4(b)(iv). Considering the circumstances in totality, including Respondent’s likely knowledge of Complainant’s rights, the distinctiveness of Complainant’s registered trademark, Respondent’s threats to sell the disputed Domain Name to another third party who has made another offer, and failure of the Respondent to present a credible evidence-backed rationale for registering the domain name (see WIPO Overview 3.0, section 3.1.1), the Panel concludes that the Respondent has registered and used the disputed Domain Name in bad faith.
Transfer
Complainants’ Counsel: Thomas Dietrich of The McArthur Law Firm, PC, California, USA
Respondents’ Counsel: Self-represented
Case Comment by Panelist, Igor Motsnyi:
Igor is an IP consultant and partner at Motsnyi Legal, www.motsnyi.com, “Linkedin”.His practice is focused on international trademark matters and domain names, including ccTLDs disputes and the UDRP. Igor has over 22 years of experience in international TM and IP matters. Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy. The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
Was the domain name registered in bad faith?
Targeting vs. Constructive notice in the UDRP
The Complainant relied on the two “App Science” US trademarks where the “app” element is disclaimed.
The Respondent argued among other things that:
- He registered the disputed Domain Name on November 15, 2018, for the purpose of starting a software consulting company in Texas;
- He filed a TM application for “appscience” in 2019 and abandoned it in 2020 but retained the domain name;
- The term “app science” is generic and descriptive in the tech industry;
- He was not aware of the Complainant’s “APP SCIENCE” trademark at the time the disputed Domain Name was registered.
We are not privy to the parties’ submissions and do not know how persuasive their arguments were.
With the caveat above, I would like to highlight the following, in my opinion, interesting points about this case:
i) The Respondent’s trademark application was filed by “appScience Technologies Inc.”. Therefore, it appears that for some time the Respondent had been doing business under the “appScience” company name.
This is also confirmed by a historic screenshot of the website at the disputed Domain Name in 2019
ii) The Respondent’s trademark application was filed in December 2018 and the domain name was registered on November 15, 2018.
iii) The Complainant registered its own domain name <appscience. inc> only in 2022, whereas the Respondent registered his domain name in 2018 and started using it in 2019.
See screenshots below for comparison:
Appscience.ai – Respondent
Appscience.inc – Complainant
iv) The Complainant’s US trademarks were filed on March 28, 2017 (claimed first use date is March 23, 2017) and registered on November 07, 2017 and on April 02, 2020 (claimed first use date is March 23, 2017), registered in 2021 respectively. Only one TM was effective prior to the registration date of the disputed Domain Name. The question is how strong was the mark’s reputation in November 2018 and was the Respondent aware of that mark?
v) “App science” terms indeed seem pretty descriptive as the Respondent argued and this confirmed by a disclaimer of “app”;
vi) Could this be a case when the Respondent honestly tried to start a business under the “AppScience” name and mark, this did not work out, he stopped using the domain name for its business and later tried to sell it to the Complainant?
However, does this mean that he acted in bad faith back in 2018 when he registered the domain name?
vii) Did the Respondent target the Complainant back in 2018 when he registered the domain name?
As we know, the key to demonstrating bad faith is targeting. As noted in UDRP Perspectives targeting happens where the Respondent registered the domain name specifically because of a Complainant’s trademark to interfere with the Complainant and targeting is easier to prove where the domain name corresponds to a highly distinctive term/well-known mark and less easy to prove where it corresponds to a common term (see sec. 3.3).
It appears that the Panel in <appscience. ai> found in favor of the Complainant based on its prior trademark rights, the fact that both parties are US based, the Respondent’s attempts to sell the disputed Domain Name to the Complainant at some point, the fact that both parties operated in a similar business area as well credibility of the Respondent’s arguments (“While Respondent claims that he is retaining the disputed Domain Name as he intends to use it for his business/projects in relation to education, he has failed to furnish any evidence to support these claims. Respondent brought no evidence of his “work with several nonprofits organizations in the [sic.] education“).
On the bad faith element, the Panel considered totality of circumstances “including Respondent’s likely knowledge of Complainant’s rights, the distinctiveness of Complainant’s registered trademark, Respondent’s threats to sell the disputed Domain Name to another third party who has made another offer, and failure of Respondent to present a credible evidence-backed rationale for registering the domain name”.
This may be a case of application of the doctrine of “constructive notice” to a dispute between US parties.
However, the essence of a UDRP complaint is an allegation of bad faith targeting of the Complainant. To establish bad faith, the Respondent must have actual knowledge of the existence of the Complainant (see sec. 3.4 of the “UDRP Perspectives”). Constructive notice may not be enough and whether constructive notice has a place in the UDRP is debatable. As noted in 3.4 of the UDRP Perspectives: “There is no place for the concept of “constructive notice” of trademarks under the Policy”.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) however states that “In limited circumstances – notably where the parties are both located in the United States and the complainant has obtained a federal trademark registration pre-dating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice. Application of this concept may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark” (see 3.2.2 of WIPO Overview 3.0).
This dispute was probably not a straightforward cybersquatting case.
The Respondent was self-represented and had some potentially strong arguments.
Had the Respondent been represented by an experienced counsel, the outcome of this case could have been different.
Panel Unable to Determine Outcome Due to Insufficient Evidence
OneTab Ltd v. Ankit Oberoi, WIPO Case No. D2024-2412
<onetab .com>
Panelist: Mr. Jeremy Speres (Presiding), Ms. Reyes Campello Estebaranz and Mr. Gerald M. Levine
Brief Facts: The Complainant has, since approximately 2013, offered a web browser extension under the mark ONETAB that functions as a productivity tool designed to reduce web browser tab clutter. The Complainant has operated its main website at <one-tab .com> since approximately 2013. The Complainant owns trademark registrations for ONETAB (word) in the UK since May 10, 2024; and in the EU since June 20, 2024. The Respondent is a technology investor and entrepreneur, having co-founded a digital advertising business, Zelto/AdPushup, in 2013, which was acquired by Japanese marketing technology firm Geniee for US $70 million in 2023. Part of the Respondent’s trade has involved buying and selling domain names consisting of common or descriptive words, a number of which he has listed for sale. The Respondent acquired the disputed Domain Name on March 4, 2023, for US $4,300 through an auction and offered it for sale via a Registrar parking page. The Respondent initially listed the disputed Domain Name for sale at a “buy now” price of US $25,000, which he increased to US $50,000 once the Complainant expressed an interest in acquiring the disputed Domain Name via a broker.
The Complainant alleges that considering the immense repute of the Complainant’s mark, the Respondent’s involvement in the online technology sector, the fact that the Respondent’s co-founder used the Complainant’s app in 2014, and the fact that the Complainant’s extension is predominantly showed in any search conducted over the Internet for the terms “onetab” or “one tab”, the Respondent must have been aware of it, when he acquired the disputed Domain Name. The Respondent contends that he registered the disputed Domain Name in good faith, without knowledge or targeting of the Complainant, with its meaning in the pharmaceutical industry as a contraction of “one tablet” in mind, either for the development of a pharmaceutical business or for resale. The Respondent further contends that the term “onetab” comprises two commonplace words and is not exclusively used by the Complainant, pointing to competing browser extensions using the term, its use in the medical industry as a contraction of “one tablet”, its use by guitar tablature websites, and various third-party trademark registrations consisting of “onetab” in the United States and the United Kingdom.
Held: The Complainant enjoys unregistered rights in its mark that long predate the Respondent’s acquisition. The primary evidence in favor of the Complainant indicating targeting is that the Respondent’s co-founder used the Complainant’s extension in 2014, and that the Respondent doubled his listed asking price for the disputed Domain Name when he was informed by the broker about an enquiry from a potential buyer. The primary evidence in favor of the Respondent indicating good faith is that there is no direct evidence of targeting and all the evidence indicating targeting is circumstantial. The term “one tab” is potentially descriptive of a variety of things, and this is borne out by the fact that it is not exclusively associated with the Complainant in use. The Respondent has a certain history of registering inherently descriptive medical domain names that includes <medagent .com>, which was acquired by the Respondent three days before he acquired the disputed Domain Name. It is similarly composed to the disputed Domain Name, consisting of a contraction of a medical term plus the uncontracted form of another descriptive word.
On the record before it, the cumulative weightings of the factors for either Party are so close that the Panel cannot say with confidence that either outweighs the other. The Panel’s view is that it would require the evidentiary tools available to a court having greater probative capacity such as discovery, cross-examination, subpoenas, criminal sanctions for perjury etc., to decide which of the Parties’ positions is the more likely. Given that the burden of proof is on the Complainant, the Panel finds the third element of the Policy has not been sufficiently established. However, this should not be understood as an approval of the Respondent’s actions, but rather a consequence of the Panel’s view, on the record before it, that this case is better suited to court adjudication. The Panel further considers that should new material evidence come to light in future that is reasonably unavailable to the Complainant at the time of the present proceeding clearly demonstrating that the disputed Domain Name is targeting or has targeted the Complainant, it may be possible for the Complainant to refile the Complaint, subject to the usual considerations on refiling. WIPO Overview 3.0, section 4.18.
Complaint Denied
Complainants’ Counsel: Adlex Solicitors, UK
Respondents’ Counsel: Cylaw Solutions, India
Case Comment by ICA general Counsel, Zak Muscovitch:
The Panel noted that “on the record before it, the cumulative weightings of the factors for either Party are so close that the Panel cannot say with confidence that either outweighs the other…The Panel’s view is that it would require the evidentiary tools available to a court having greater probative capacity such as discovery, cross examination, subpoenas, criminal sanctions for perjury etc., to decide which of the Parties’ positions is the more likely.” The Panel further noted that “this case is better suited to court adjudication”.
Had this case not been so vigorously defended (by the Digest’s Editor through his firm Cylaw Solutions), the Complaint may have very well succeeded as the Complainant was able to marshal significant circumstantial evidence upon which to base its claims of bad faith registration. In particular, I found it noteworthy that the Complainant was able to comb through its registered user database and determine that the Respondent’s colleague had used the Complainant’s web browser and was thus aware of the Complainant’s product. But then again, as the Panel pointed out, there was just too much uncertainty of the third element, and the case was therefore best left to the courts, with the Panel even noting that “should new material evidence come to light in future that is reasonably unavailable to the Complainant at the time of the present proceeding clearly demonstrating that the disputed Domain Name is targeting or has targeted the Complainant, it may be possible for the Complainant to refile the Complaint, subject to the usual considerations on refiling”. This case appears to have been well-argued by both Complainant’s counsel and by Respondent’s counsel and they both deserve credit for their advocacy. The Panel too deserves credit for its thoughtful and nuanced analysis of a close case.
For further discussion of the scope of the Policy and the standard of proof, see Sections 0.1 and 0.2 of UDRPPerspectives.org.
Respondent’s Prior Use of SHIRVAN HOTEL Precludes Infringement Claim
Csi Danışmanlık Ve Destek Hizmetleri Anonim Şirketi v. Ghadah M, WIPO Case No. D2024-2062
<shirvanhotels .com>
Panelist: Mr. Warwick A. Rothnie (Presiding), Mr. David H. Bernstein and Mr. Michael D. Cover
Brief Facts: The Complainant is engaged in launching hotel projects in Türkiye, Saudi Arabia, and Africa. The Complainant is the owner of the registered trademarks for SHIRVAN HOTELS in Guinea (filed on November 7, 2022, and registered on October 18, 2023); UK (filed on December 20, 2022, and registered on May 19, 2023); and Saudi Arabia (filed on February 28, 2023). The United Kingdom marks claim priority from the Guinea registration. The Complainant registered the domain name, <shirvanhotel .com>, on April 5, 2024. The disputed Domain Name was registered on December 12, 2022, and resolves to a website promoting and offering bookings for the “Shirvan Hotel, City Yard” in Jeddah, Saudi Arabia. The Respondent has been involved with hotel operating services since 2021. The Respondent terminated the services of the previous operator, and the hotel was re-branded and launched as the “Shirvan Hotel, City Yard” on December 17, 2022. Before the Complainant filed its trademark application in Saudi Arabia, United Marks Trading Co. had applied to register the trademark SHIRVAN LUXURY BOUTIQUE HOTEL. On January 31, 2024, the Complainant successfully opposed this registration in Saudi Arabia.
The Complainant alleges that the Respondent registered the disputed Domain Name in bad faith to benefit from the Complainant’s good reputation. In support, the Complainant highlights that its trademark registrations predate the Respondent’s registration of the disputed Domain Name. The Respondent contends that the Complainant’s application for trademark registration in Saudi Arabia was made in bad faith and intends to challenge it. Specifically, according to the Respondent, the Complainant appears to have applied for trademark registration in Saudi Arabia to harm the Respondent’s business once becoming aware of the Respondent’s plan to rebrand their hotel to “Shirvan Hotel”. In addition, the Respondent argues that it has legitimate interests in the disputed Domain Name because it has been operating the hotel under this name since December 2022 and uses the disputed Domain Name to host its business operations.
Held: It is not in dispute between the Parties that the Respondent registered the disputed Domain Name after the Complainant filed for registration of the trademark in Guinea and that the Respondent is using the disputed Domain Name in connection with services competing with those protected by the Complainant’s trademark. Neither Party has explained how it came to settle on “Shirvan” as its trademark. The Respondent contends the Complainant, or an entity associated with the Complainant, got wind of the Respondent’s plans to rebrand its hotel in Jeddah to its current name and, in effect, sought to anticipate the Respondent’s plans. The Complainant denies this allegation. The materials before the Panel do not provide a basis on which the Panel can go behind the Complainant’s denial and accept the Respondent’s allegation.
However, the Annex to the Response does include evidence that the Respondent was corresponding as SHIRVAN HOTEL, City Yard, Jeddah with Booking .com as early as September 30, 2022, to modify its listing. From this correspondence, therefore, it appears that the Respondent had adopted SHIRVAN for its hotel more than one month before the Complainant filed its application to register the trademark in Guinea. The Complainant has not provided any evidence, either in the Complaint or its supplemental filing, which would provide a basis for the Panel to conclude the Respondent had somehow got wind of the Complainant’s plans before deciding to rebrand its Jeddah hotel. In these circumstances, there is no basis for the Panel to conclude that the Respondent adopted the name SHIRVAN HOTEL to usurp the Complainant’s rights.
The Complainant suggests that the Respondent’s adoption of the SHIRVAN HOTEL name and trademark was infringing, and therefore cannot give rise to rights or legitimate interests under the Policy. Here, however, the Respondent’s adoption and use appears to have commenced before the Complainant’s rights. Considering the Respondent’s prior use, the Complainant has not, at least on the record before the Panel, sustained its burden of showing that the Respondent’s use was infringing and therefore not legitimate. In these circumstances, therefore, the Respondent has demonstrated it is using the disputed Domain Name in connection with a bona fide offering of hotel services as described in paragraph 4(c)(i) of the Policy since at least December 17, 2022, and that it had demonstratable preparations to use the SHIRVAN HOTELS name since at least September 30, 2022.
Complaint Denied
Complainants’ Counsel: Abion AB, Sweden
Respondents’ Counsel: McCarthy Denning, United Kingdom
Case Comment by ICA general Counsel, Zak Muscovitch:
Curiously, the Turkish Complainant obtained a trademark in Guinea, as in Guinea off the coast of West Africa, in connection with hotel and restaurant services for hotels that it plans in Turkey, Saudi Arabia, and Africa. The Turkish Complainant subsequently obtained a UK trademark, which as the Panel notes, claims a priority from the Guinea registration. Although immaterial to the UDRP dispute, I wonder whether the Complainant had genuinely intended to get protection for a possible hotel in Guinea or whether the Guinea registration was part of a trademark strategy. Perhaps one of our trademark expert readers would like to share their knowledge of trademark strategies involving quietly obtaining registration in a one jurisdiction in order to subsequently harness it for obtaining a priority claim in another jurisdiction.
In terms of the case itself, although the Panel was able to determine the Complaint on the basis of the Respondent’s use of the Domain Name for hotel services prior to any trademark rights held by the Complainant – including in Guinea – the Panel also noted that “the Parties seem to have a broader dispute between them”. If the facts in this particular case did not lend themselves to so clearly identifying the Respondent’s legitimate interest in the Domain Name, the Panel may also have been able to decide this case on the basis of the scope of the Policy. As explained in UDRP Perspectives, the Policy should not be applied to “good faith disputes between competing right holders or other competing legitimate interests…” (see pars. 153 and 172 of the WIPO Final Report 1999). As also noted in UDRP Perspectives, “the Policy requires Panels to discern those cases appropriate for resolution and to dismiss those that are not. Courts, which are equipped with robust discovery and cross-examination, should be deferred to where a case involves material unreconcilable facts and versions of events or where credibility is a key issue and is unable to be determined.”
Respondent Selling Counterfeit Products, Obvious Case for Cybersquatting
HUMEAU BEAUPREAU v. Client Care, Web Commerce Communications Limited, WIPO Case No. D2024-2567
<medusefrance .com>
Panelist: Mr. Nicolas Ulmer
Brief Facts: The Complainant was founded in 1905 in France and its primary business is the manufacture and marketing of footwear, notably of plastic (PVC) sandals (espadrilles) and the like. A well-known model of injected plastic sandals manufactured by the Complainant is sold under the brand name Méduse; some 700,000 Méduse sandals were sold in 2023. The Complainant has registered numerous trade and service marks for its MEDUSE brand; these include a French trademark, few EU trademarks and an international trademark designating Algeria, China, Switzerland, European Union, Japan, Morocco, and Norway.
The Complainant further documents that it promotes its MEDUSE brand extensively, including through a significant presence on the Internet and in social media; as part of this promotion the Complainant registered the Domain Name <meduse .com> on March 27, 1996, of which the website is active in promoting the Complainant’s business. The disputed Domain Name was registered on April 26, 2024; it does not currently resolve to an active site. However, as evidenced by the Complainant, it used to resolve to a website seemingly imitating the Complainant’s website.
The Complainant alleges that the disputed Domain Name can only have been registered in bad faith with knowledge of the Complainant’s rights and was subsequently used in bad faith to direct Internet users to a website selling counterfeit MEDUSE shoes in wrongful imitation of the Complainant’s legitimate online site. The Complainant has sent notifications via the Registrar demanding the removal of all material or content that reproduces its trademark or infringes on its intellectual property rights but received no reply. The Respondent did not file a response.
Held: Nothing in the file of this matter gives any indication that the Respondent has used the disputed Domain Name in connection with a bona fide offering of goods and services or that there is any legitimate non-commercial or fair use of the Complainant’s trademark, and the Complainant; to the contrary there is evidence of illegitimate and wrongful use. In addition, panels have categorically held that the use of a domain name for illegal activity (e.g. impersonation/passing off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13. Here, the Panel finds that the disputed Domain Name resolved to a website impersonating the Complainant’s own website.
The Complainant has established that its MEDUSE brand and trademark is well known and has been extensively marketed by the Complainant. The addition of the word “France” to the disputed Domain Name, while not diminishing confusing similarity, as found above, but rather suggests an association with the Complainant, which is a French company whose largest sales are in France. While the word “méduse” does have an ordinary meaning in French (“jelly fish”) there is no suggestion in this case that the Respondent was registering the disputed Domain Name based on that French-language meaning or for any good faith purpose.
In sum, it appears that the choice of the disputed Domain Name was not serendipitous; it was registered with a bad faith intent to cause confusion with the Complainant’s trademarks and business. This finding is confirmed by the evidence of the actual use that the Respondent made of the disputed Domain Name. The Complainant further submits evidence that suggests that the Respondent has previously and repeatedly engaged in a pattern of appropriating well-known trademarks for the purpose of illegitimately redirecting traffic of Internet users for the Respondent’s interest or profit. The Respondent’s failure to answer the Complainant’s demand letters or the Complaint in this matter are here further indicia of bad faith on its part.
Transfer
Complainants’ Counsel: Casalonga Avocats, France
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja:
It’s worth noting that the Panelist in this case acknowledged the importance of the keywords in the disputed Domain Name, despite it being registered with the intent to cause confusion: “While the word ‘méduse’ does have an ordinary meaning in French (‘jellyfish’), there is no indication here that the Respondent registered the disputed Domain Name with that French-language meaning in mind or for any legitimate purpose.”
Panels sometimes overlook the fact that a Domain Name might consist of a common word or a combination of common words and could have been selected for that reason rather than to take advantage of a trademark, but on this occasion, as the Panel notes, the Respondent’s use of the Domain Name precluded the possibility of such a “serendipitous” registration.
Complainant Must Demonstrate Common Law Rights if No Registered Trademark Exists
Sysnet North America, Inc. v. Jesus Jesus, NAF Claim Number: FA2407002107324
<vikimgcloud .com>
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant states that it uses the VIKINGCLOUD mark in connection with cybersecurity and compliance products and services. The Complainant has pending applications to register VIKINGCLOUD with the USPTO, filed in January 2022, and asserts common law rights arising from extensive and public use since at least as early as 2022. The Complainant owns the Domain Name <vikingcloud .com>, which it uses for its official website. The disputed Domain Name was registered in July 2024 and currently does not resolve to a website. The name is registered in the name of a privacy registration service on behalf of the Respondent. The Complainant alleges that it is being used to impersonate the Complainant in phishing emails sent to the Complainant’s customers and vendors seeking to divert payments and provides heavily redacted evidence of one such attempt. The Respondent did not file a Response.
Held: The Complainant does not own a trademark registration, while its applications for registration of mark VIKINGCLOUD are pending before the USPTO. A trademark registration is not necessary to establish rights under Paragraph 4(a)(i), provided the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. A complainant relying on rights arising solely at common law has a fairly steep evidentiary burden under the Policy. To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the UDRP case, would not normally suffice to show secondary meaning. See WIPO Overview, section 1.3.
Use merely as a trade name is insufficient, absent evidence that the name also functions as a trademark. The Complainant has failed to support its claim of common law trademark rights with evidence that its putative mark has become a distinctive identifier that consumers associate with the Complainant’s goods or services. The Complainant has provided the Panel with a printout of its website and an unsubstantiated claim that the Complainant and its subsidiaries are “trusted by 4 million customers.” However, the Complainant has provided little, or no evidence related to the mark itself, including the nature of its use, sales volumes, advertising expenditures, or public recognition. The fact that the Respondent appears to be targeting and attempting to create confusion with the Complainant is relevant but not sufficient to demonstrate the trademark rights required by Paragraph 4(a)(i) of the Policy. The Panel, therefore, finds that the Complainant has not proved that it has the requisite rights in a relevant mark for purposes of Paragraph 4(a)(i) of the Policy.
Complaint Denied
Complainants’ Counsel: Jessica S. Sachs of Harness, Dickey & Pierce, PLC, United States
Respondents’ Counsel: No Response
Case Comment by ICA general Counsel, Zak Muscovitch:
As noted in UDRP Perspectives, “for a Panel to award common law rights to any expression, thereby granting it the same status as a registered trademark, without proper evidence would be improper and unjust”. Moreover, as noted by the Panelist in this case, “a complainant relying on rights arising solely at common law has a fairly steep evidentiary burden under the Policy”. As further noted in UDRP Perspectives, “to support a claim of common law trademark rights, a Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services.”
Here, the Panel determined that the “Complainant has failed to support its claim of common law trademark rights with evidence that its putative mark has become a distinctive identifier that consumers associate with Complainant’s goods or services”.
As the Panel noted, all that the “Complainant has provided the Panel with [was a] a printout of its own website and an unsubstantiated claim that Complainant and its subsidiaries are ‘trusted by 4 million customers’ However, Complainant has provided little or no evidence related to the mark itself, including the nature of its use, sales volumes, advertising expenditures, or public recognition.”
This is usually insufficient under the Policy for the reasons mentioned. Notably however, the Complainant did provide evidence that it was targeted by a phishing email attempt. Nevertheless, even in such situations, a Complainant must still prove common law trademark rights. As discussed in Digest Vol. 4.15, “targeting is no substitute for lack of sufficient evidence of common law trademark rights” as noted in CEMEX UK Operations Ltd. v. Privacy Service Provided by Withheld for Privacy ehf / Cargo Logistics Transportation Services, et al, WIPO Case No. D2022-1445: “If that was not the case, then the test would be entirely circular and any term used in a domain name could be said to support a finding of unregistered trademark rights – which is clearly not the intention of the Policy”.