Welcome to this week’s UDRP Digest (vol. 1.13), summarizing the most intriguing cases of the past week. Read about:
‣ “Unauthorized” Reseller is not a Cyber-squatter (walbrofuelpumps .com)
‣ Claims of Trademark Infringement Not Within Scope of the Policy (businessdoctornj .com)
‣ Domain Name Used to Impersonate a Law Firm (kpppb .com)
‣ Professor’s UDRP Gamble Doesn’t Pay Off (legalgamblingandthelaw .com)
‣ ParisTech vs. ParisTech (paristech .org)
Enjoy!
“Unauthorized” Reseller is not a Cyber-squatter
<walbrofuelpumps.com>
Complaint Denied
Panelist: Mr. Evan D. Brown (Presiding), Mr. John C McElwaine, Mr. Gerald M. Levine
Brief Facts: The Complainant provides engine management systems and fuel systems for the outdoor power equipment, recreational, marine, and personal transportation markets. It used the mark WALBRO since at least as early as September 22, 1955, and has a USPTO trademark registration since July 25, 1972. The Respondent registered the disputed Domain Name on June 14, 2003 and uses it for a website offering for sale various products of the Complainant. The Respondent argues that it is not a cyber-squatter but rather is running a respectable and successful business for the past 18 years, reselling the Complainant’s products and that it would be inappropriate to use the UDRP to shut down the Respondent’s business particularly because the Complainant acquiesced to the Respondent’s activities by taking no action for 18 years.
Held: The incorporation of a complainant’s trademark in a domain name can be legitimate – even if unauthorized – if used fairly and nominatively. Here, the disputed Domain Name describes one specific product manufactured by the Complainant and above all, the Respondent demonstrates compliance with three of the Oki Data factors. Where a complainant with open knowledge does not act for a lengthy period, it may not be unreasonable for a Respondent to believe that the complainant acquiesced in its use of the disputed Domain Name for the purpose of reselling. The Respondent’s argument as to the purpose of UDRP Policy is upheld, as held on numerous occasions that the UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts.
Complainants’ Counsel: Reising Ethington P.C., United States
Respondents’ Counsel: ESQwire.com PC, United States
Claims of Trademark Infringement Not Within Scope of the Policy
<businessdoctornj.com>
Complaint Denied
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant provides accounting and advisory services to business clients. It operates a website at the domain name
and holds a USPTO-registered trademark for THE BUSINESS DOCTOR since 2010, with a claimed date of first use of November 1, 1999. The registration disclaims the word “business” apart from the trademark. The Respondent is a business consulting company incorporated in the State of New Jersey on May 20, 2012, under the name ‘The Business Doctor of New Jersey’. The Respondent registered the disputed Domain Name on June 3, 2012 and it resolves to a website offering business consulting services under the name “The Business Doctor of North Jersey”.
Held: The Respondent submitted a sworn affidavit in these proceedings denying any knowledge of the Complainant or its THE BUSINESS DOCTOR trademark at the time of Domain Name registration in June 2012. There is no evidence in the record to suggest that Complainant’s trademark is well known, that a denial of knowledge by the Respondent would strain credulity. Besides, the Respondent’s evidence of significant third-party use of the terms “business” and “doctor” in connection with the offering of business consultancy services is upheld. The possible claim of a trademark infringement is not a factor to be evaluated under the UDRP proceedings. Therefore, absent a finding that the Respondent more likely than not had Complainant’s THE BUSINESS DOCTOR trademark in mind when registering the Domain Name, the Complaint must fail.
Complainants’ Counsel: Remenick PLLC, United States
Respondents’ Counsel: Budzyn IP Law LLC, United States
Domain Name Used to Impersonate a Law Firm
KPPB LLP v. David Czinczenheim, WIPO Case No. D2021-2947
<kpppb.com>
Transfer
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant is an intellectual property law firm, trading under the name “KPPB” since 2007 including prominent use of the mark on stationery and on its website at “kppb .com”. The registration date of disputed Domain Name is July 23, 2021 and resolves to a “for sale” page. The Complainant alleges that the disputed Domain Name is used to send phishing emails to the Complainant’s clients, impersonating the Complainant’s staff, trying to convince recipients to send money to fraudulent accounts.
Held: The Complainant establishes unregistered rights in the mark KPPB by virtue of use of that term as a trading name for some 14 years, including substantial press coverage. The disputed Domain Name consists of the Complainant’s mark, except that it adds an extra “p”, converting “pp” into “ppp”. The Respondent is using the disputed Domain Name to impersonate the Complainant and steal money from its clients. Such use of the disputed Domain Name is clearly not bona fide, rather the registration and use is in bad faith by the Respondent.
Complainants’ Counsel: Self-represented
Respondents’ Counsel: No response
Professor’s UDRP Gamble Doesn’t Pay Off
Professor Nelson Rose v. Domain Manager, Star Enterprises LTD S.A, WIPO Case No. D2021-2918
<legalgamblingandthelaw.com>
Complaint Denied
Panelist: Mr. John Swinson
Brief Facts: The Complainant is an internationally known legal scholar and a Professor Emeritus specializing in gambling law. He is the author of the 1986 book, “Gambling and the Law”, and other books. The Complainant operates a website at , which includes information about the Complainant, information about his publications, and a blog on gambling and legal topics. He also holds the Trademark rights for GAMBLING AND THE LAW before USPTO since 2004 under class 16 and 41. The Respondent registered the disputed Domain Name in October 2014 for use and has a developed website since 2014. The website at the disputed Domain Name contains information about various gambling providers, such as online casinos, online poker websites, betting exchanges, and corporate bookmakers. The website also includes gambling news, for example news about new casinos or mergers between companies involved in the gambling industry.
Held: The Complainant’s mark is not arbitrary, fanciful, or unique. Obviously, in the case of descriptive trademarks, small differences between the trademark and a disputed Domain Name can make it more difficult for a Complainant to demonstrate that a Respondent registered the disputed Domain Name with the Complainant in mind. Besides, the Respondent’s website looks different to the Complainant’s website, and otherwise as well there is no evidence before the Panel of actual consumer confusion over the past six years during which time both Parties seem to have been running active websites. That is, there is no actual confusion, and the Complainant did not write to the Respondent prior to bringing these proceedings. Of course, this case presents a close question and that while the Complainant failed to meet its burden here (the pleadings being fairly conclusory), this would not prevent the Complainant from taking his case up in a court of law, should it wish.
Complainants’ Counsel: The Myers Law Group, United States
Respondents’ Counsel: Kilburn & Strode, United Kingdom
ParisTech vs. ParisTech
Fondation Paristech v. Domain Administrator d/b/a privacy.cloudns.net, WIPO Case No. D2021-2417
<paristech.org>
Complaint Denied
Panelist: Mr. Luca Barbero
Brief Facts: The Complainant is a French consortium of higher education institutions, which collaborate on joint training, research and innovation projects in the fields of Science, Technology, and Management. The Complainant is the owner of several trademark registrations consisting of, or comprising PARISTECH, since 1999 and promotes its services under the trademark through the domain name . The registration date of the disputed Domain Name is February 14, 2017 and points to a website in French language providing articles about different subjects, mainly related to the field of technology and innovation.
Held: The Respondent’s website is operated by two entrepreneurs based in Paris, where the Complainant is based. It is a non-commercial website displaying news about technology and innovation, without making reference to the Complainant’s area of services (education) and using a different layout and logo from those of the Complainant. The wording “Paris Tech” could readily stand for the “Paris Technology”, in terms of the content of the Respondent’s website. The Respondent could be assumed to be aware of the Complainant’s prior trademark PARISTECH at the time of registration of the disputed Domain Name, given the facts of the case. But there is no evidence from which it can be inferred that the Respondent intended to misleadingly divert the Complainant’s customers for commercial gain or to tarnish the Complainant’s trademark.
Complainants’ Counsel: Cabinet Boettcher, France
Respondents’ Counsel: Self-represented