We hope you will enjoy this edition of the Digest, as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and special guest Igor Motsnyi.
‣ Was this a Trademark and Copyright Case or Cybersquatting? (mashabearcafe .com *plus guest comment)
‣ Australian ESCUBA Trademark Owner Dives for SCUBA Domain (scuba .net .au *plus comment)
‣ Following Detailed OKI Data Analysis, Panelist Determines that This is Not a Run-of-the-Mill Cybersquatting Case, and Defers to Courts (subzerorefrigeratorservice .com *plus comment)
‣ Complainant Fails Because it Didn’t Prove Common Law Trademark Rights at the Time of Domain Name Registration (outskirtpress .com *plus comment)
‣ Respondent Should Have Chosen a Non-Impersonating Domain Name for His Free Speech (collegeofthedesert .com *plus comment)
Which Recent UDRP Decision Has Gone to COURT?
When we find out that a UDRP case that we have covered has gone to court, we will update you here.
- Remember the TampaWaterTaxi .com case from Volume 2.31? It went to court. You can read the US Federal Court Complaint, here.
- Remember the BaseballCoachTraining .com case from Volume 2.44? It went to court. You can read the US Federal Court Complaint, here.
- Remember the TRX .com case from Volume 2.46? It went to court. You can read the US Federal Court Complaint, here.
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Join The Hon. Neil Brown, K.C. on December 7, 2022 for his ‘Annual round-up on Domain Name Arbitration’, via Zoom. Details here.
Want a Firmer Grasp of Domain Name Investing? Read “Busting Domain Name Secondary Market Myths” (CircleID, February 18, 2021).
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
Was this a Trademark and Copyright Dispute or Cybersquatting?
ANIMACCORD LTD v. Halina Yatskevich, WIPO Case No. D2022-3254
<mashabearcafe .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant is an international licensing company and studio that owns the rights in a “hit” family animated television series, “Masha and the Bear”. The award-winning series has been broadcast and streamed throughout the world in over 100 countries and was included in the Guinness World Records in 2019 as ‘the most watched cartoon on YouTube’ with over 50 billion views. The Complainant is also the owner of the US Trademarks for “MASHA AND THE BEAR”, registered on August 15, 2015, in respect of various goods and services. However, the Complainant’s US trademark in respect of restaurant and café services was only registered on January 26, 2021. The Respondent registered the disputed Domain Name on October 1, 2021, and it resolves to a website promoting the Respondent’s restaurant in the US, which describes itself as ‘a family-owned restaurant offering Eastern European cuisine’. The Respondent states that she chose the name because of its Russian folklore heritage.
According to the Response, the restaurant was first established in 2016 and operated by some unrelated persons, Masha and the Bear LLC. At some point (the Respondent claims this was under the former owners), the restaurant featured a number of images, which reproduced or closely resembled the representations of the characters and lettering used in the Complainant’s television series. It is not clear when the Respondent became the owner of the restaurant. In the Response, the Respondent states that she started the business in 2021. On December 19, 2018, however, the Respondent filed with the Colorado Secretary of State, a “Statement of Trade Name” for “Masha and the Bear Russian Café”. In addition, the company, Masha and the Bear Russian Café LLC was licensed as a food service contractor on January 24, 2019.
On May 25, 2021, once the Complainant secured the registration of United States Registered Trademark in respect of restaurant services, etc., the Complainant’s lawyers sent the Respondent’s company, Masha and the Bear Russian Café LLC, and the former owner, a cease-and-desist letter. According to the Response, the Respondent removed the offending “cartoon” imagery soon after receipt and, over time, replaced it with the current get-up, which does not use any images resembling the Complainant’s cartoon characters or lettering. This process was completed in or about October 2021, when the Respondent registered the disputed Domain Name. In her supplemental filing, the Respondent also appears to state that she only adopted the name Masha and the Bear Russia Café after a trademark search confirmed that the Complainant’s then registered trademarks did not extend to restaurant and café services.
Held: The Respondent appears to have acquired the restaurant business in or about December 2018 or January 2019, under the name “Masha and the Bear Café” well before the Complainant’s trademark rights extending to restaurant and café services were registered. It appears the Respondent’s business from the outset, was using the cartoon representations and indicia to suggest some sort of association or connection with the Complainant’s trademark and video series, although no such connection or association existed. That is, the business was ‘targeting the Complainant’s cartoon characters and trademark’. While the Complainant’s registered trademarks did not at that time extend to restaurant services, it did have a very extensive licensing program and its trademark was very well and widely known.
The Respondent registered the disputed Domain Name in October 2021 after the Complainant began using its trademark and also after the Complainant had registered its trademark. In addition, the Respondent was aware of the Complainant’s trademark rights (having been notified in the cease-and-desist letter). The Panel could not characterise the Respondent’s use of the disputed Domain Name in those circumstances as a good faith offering of services under the Policy. The position under paragraph 4(c)(ii) of the Policy is the same. The Respondent adopted the name knowing that the restaurant business was, and would be, using them in the form of the cartoon characters and lettering used and widely promoted by the Complainant. The Respondent sought to take advantage of the misrepresentation that entailed to the advantage of her business. The heavy use of the Complainant’s indicia colours undermines the Respondent’s claim that she was just referencing the Russian folk tale. The Panel considers the Policy does not countenance such conduct as conferring rights or legitimate interests under the Policy.
The Respondent registered the disputed Domain Name to use it for the very services for which the Complainant’s trademark is (and was at the time) registered. It is well established that the registration of a domain name to use it without permission in direct conflict with another’s trademark constitutes registration in bad faith under the Policy. Finally, although the Respondent apparently ceased use of the Complainant’s cartoon indicia, however, it is still using the Complainant’s trademark in the Domain Name, the recent Mark MASHA AND THE BEAR, specifically for a website in connection with the services covered by that registration. The Respondent is doing so without permission from the Complainant. Such conduct very clearly constitutes use in bad faith under the Policy.
Transfer
Complainants’ Counsel: Inventa Capital PLC, United States of America
Respondents’ Counsel: Self-represented
Special Guest Case Comment by Igor Motsnyi:
Igor Motsnyi is an IP consultant and partner at Motsnyi Legal in Belgrade, Serbia.
Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy. Igor has been the Panelist in over 40 UDRP cases (See: https://udrp.tools/?s=fd6013f9). 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.
……..
I would like to thank the Internet Commerce Association for the opportunity to comment on this decision.
I do find the <Mashabearcafe.com> UDRP decision interesting as a UDRP panelist, as IP counsel advising clients on trademarks and domain names, and as a person who was born and grew up in the former Soviet Union who is familiar with the origin of the “Masha and the Bear” story.
<Mashabearcafe[.]com> is, in my opinion, a case which makes us think again about the UDRP’s original purpose and scope. It also brings up some interesting cultural issues.
There are some points relevant to this dispute that I would specifically highlight:
- The Respondent registered (acquired) the disputed domain name on October 1, 2021 and it resolves to a website promoting the Respondent’s restaurant in Colorado offering Eastern European cuisine. The Respondent registered “Masha and the Bear Russian Café” as a trade name on December 19, 2018;
- The restaurant has been in business since 2016 and was acquired by the Respondent in or about December 2018 or January 2019 and there are positive reviews about the restaurant;
- “Masha and the Bear” is a popular old Russian fairy tale and every kid who grew up either in Russia or somewhere close is very well familiar with this story;
- The Complainant admitted that its TV series is “loosely based on a Russian folk story” and the Respondent claimed she “chose the restaurant’s name because of its Russian folklore heritage”;
- Respondent’s explanations for her choice of the name seem plausible to me given the popularity of the story among the relevant public. Indeed, for a person from the former Soviet Union, “Masha and the Bear” is a perfectly normal name for a Russian/Eastern European restaurant;
- The Complainant has a number of “Masha and the Bear” trademarks, yet only one of them is registered for “restaurant and café” services and this mark was registered after Respondent’s “Masha and the Bear Russian Café” trade name registration and after the launch of the restaurant;
- There seems to be nothing on the record to indicate that any images or any signage related to “Masha and the Bear”, the TV series, were ever used by the Respondent on her website associated with the disputed domain name and it appears that the issues relating to unauthorized use of Complainant’s copyright/trademarks had been fixed prior to the registration of the domain name by the Respondent;
- The Panel noted that:
“the Respondent appears to have acquired the business under the name, “Masha and the Bear Café”, well before the Complainant’s trademark rights extending to restaurant and café services were registered. The Respondent also appears to state that she only adopted the name Masha and the Bear Russia Café after a trademark search confirmed that the Complainant’s then registered trademarks did not extend to restaurant and café services. As set out above, that was indeed the status of the Complainant’s registered trademarks”.
The Panel’s finding in favor of the Complainant is based on the past conduct in the restaurant somewhere before May 25, 2021 and instances of infringement of Complainant’s rights via unauthorized use of imagery and characters (as the Panel notes “in circumstances where the manner of use so directly misrepresented an association or connection with the Complainant”).
The allegedly infringing activity in the restaurant occurred before October 1st, 2021 (the Domain Name registration date) and does not seem to be related to the use of the domain name by the Respondent.
It is always hard to judge a UDRP decision without having access to the case record and without seeing both Parties full arguments.
Nevertheless, the Panel implicitly acknowledged that this was not a straightforward case by issuing a Procedural Order requesting further clarifications from the Respondent but ultimately the Respondent failed to persuade the Panel.
It is clear that the Respondent knew about the Complainant and its trademarks. She might have even been engaged in copyright and/or trademark infringement at one point.
However, does this past conduct (terminated prior to the domain name registration) indicate targeting for the purpose of the Policy in this particular case, where the name itself is a part of cultural heritage and is not associated only or primarily with the Complainant?
Did the Respondent target the Complainant when she registered the domain name on October 1st, 2021, or did she do it because of her otherwise legitimate “Masha and the Bear Russian Café” business for which she also registered a trade name?
When the restaurant was launched by the former owner back in 2016, what was the idea behind the name? Was it a fairy tale known in the respective cultural community for centuries, or was it the modern-day TV series? Was the intent of the owner to target the Complainant or to use a popular fairy tale name to attract customers and to indicate restaurant’s connection to Eastern Europe?
While it is easy to understand why the Complainant was unhappy about the restaurant using its copyrighted images/other IP in the past, is this sufficient for a UDRP action which should be about domain name registration and use? Was this dispute about abusive domain name registration by the Respondent or was it somewhat more complex? Copyright and trademark infringement disputes are supposed to be resolved in courts.
To me, there seems to be far too many questions in this case (I realize that this may be partially due to my background and upbringing).
If there are too many questions, then one can argue that the case does not fit into the “relatively narrow class of cases of “abusive registrations” / “cybersquatting” (as defined by both the Final Report of the WIPO Internet Domain Name Process (April 30, 1999) and the ICANN Second Staff Report on UDRP (October 25, 1999), to be “a feature of the Policy”).
Disputes with so many issues involved are not suitable for UDRP as the courts are better equipped to handle them.
In an ideal world, we as Panelists have to apply UDRP as uniformly as possible to keep it both efficient and predictable to the parties and the community.
One of the best ways to ensure uniform application of the Policy is to stick to its original purpose as was defined back in 1999 (e.g. “relatively narrow class of cases of “abusive registrations”) and leave all other disputes to courts.
Australian ESCUBA Trademark Owner Dives for SCUBA Domain
eScuba Pty Limited v. Underwater Australasia Pty Ltd, WIPO Case No. DAU2022-0023
<scuba .net .au>
Panelist: Mr. John Swinson
Brief Facts: Melinda Herndon is one of the founders and a current director of the Complainant Corporation. In 1996, Melinda Herndon launched an ecommerce platform aimed at the diving industry, located at <scuba .com>, which was sold in October 2019. The Complainant was incorporated in 2010 and created the ESCUBA business in April 2010 as an Australian web-based multichannel distributor platform. The Complainant operates a website at <escuba .com .au> providing information and advertising about diving in Australia, including a directory of Australian dive shops. In addition to <escuba .com .au> (registered on March 23, 2010), the Complainant also currently owns <scuba .com .au> (acquired on April 26, 2012) and <escuba .com> (registered on April 27, 2012), which at one point or other redirected to <escuba .com .au>. The Complainant owns Australian trademark registration for ESCUBA (filed on December 10, 2010) entered on the register on January 8, 2013.
The disputed Domain Name was registered on July 4, 2002. In 2002, the Respondent started a dive directory business called <underwater .com .au> and also owns other domain names, including <dive .net .au> (registered in July 2002) which currently redirects to <underwater .com .au> along with the disputed Domain Name. The Respondent was selling Sealife dive cameras prior to 2010. When the Complainant obtained the distribution rights for Sealife dive cameras in 2010, the Respondent signed up with the Complainant as a dealer for these cameras. The Complainant terminated the relationship with the Respondent on or about March 2, 2021. The Respondent provides evidence that the Complainant closed the Complainant’s dive gear distribution business in late 2021. The Respondent initiated discussions with the Complainant to buy the Complainant’s business, and after an exchange of messages, no agreement was reached.
Held: The disputed Domain Name currently redirects to the Respondent’s domain name <underwater .com .au> (redirected at least since 2011). The Respondent’s domain name <underwater .com .au> is a legitimate business, relating to products used for scuba diving. The Respondent’s <underwater .com .au> business has been operating continuously since 2002, well before the Complainant existed. The Panel notes that the Complainant itself has a history of redirecting domain names. Undertaking redirections of a group of domain names to a main website, as undertaken by both the Complainant and the Respondent in this case, is not necessarily evidence of bad faith. The Panel notes that the disputed Domain Name consists of the dictionary term “scuba”, and that the Respondent operates a scuba dive related business, and uses the disputed Domain Name to generate website traffic for that business. This is a bona-fide use of the disputed Domain Name.
Further, under the auDRP, it is sufficient for the Complainant to show either that the disputed Domain Name was registered in bad faith or has been used in bad faith. The Complainant did not argue that the Respondent registered the disputed Domain Name in bad faith. No doubt this is because the disputed Domain Name was registered by the Respondent over 8 years prior to the Complainant coming into existence. Importantly, the Complainant’s case in respect of use in bad faith fails as well. The disputed Domain Name is a dictionary term related to the Respondent’s business and there are many Australian dive businesses that use “scuba” as part of a domain name. The Respondent operates a scuba dive related business – it is not bad faith to use the disputed Domain Name to generate website traffic for that business. Moreover, the Respondent uses the dictionary term “scuba” in the disputed Domain Name, not the Complainant’s trademark ESCUBA.
RDNH: The Complainant knew that “scuba” was a dictionary term used by many dive businesses. The Complainant knew from the beginning that the disputed Domain Name was generic and that the disputed Domain Name described the activities for which the Respondent used it. The Complainant knew that the Respondent registered the disputed Domain Name many years ago and operated a legitimate scuba dive business, established before the Complainant existed. Moreover, the Complainant (who was advised by a specialist trademark firm) would know that its ESCUBA trademark was limited and was unlikely to cover use by others of the word SCUBA, and that the Respondent’s registration and use of the disputed Domain Name could not, under any fair interpretation of the facts, constitute bad faith.
The Respondent has used the disputed Domain Name for the whole period that the Complainant existed, being 12 years, and during that time, there is no evidence that the Complainant ever protested the Respondent’s ownership or use of the disputed Domain Name until the filing of the present Complaint. In recent times, the Complainant had other issues with the Respondent, and the Complaint appears to have been brought for collateral purposes. The Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied
Complainants’ Counsel: Gestalt Law Pty Ltd, Australia
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
Though decided under the .au Dispute Resolution Policy, we decided to include this case for a couple of reasons.
First, Panelist John Swinson (who is also a well-known UDRP Panelist), issued an appropriately strong rebuke to the Complainant in his finding that the Complaint was brought in bad faith and constituted an abusive proceeding. It never ceases to amaze me how some covetous trademark owners can be assisted by experienced IP counsel, in wrongly going after a term as generic as ‘scuba’. In my practice, I represent both trademark owners and domain name owners in UDRP proceedings. This involves turning down far more cases than I accept, inter alia because upon reviewing the facts and law, the prospective client has no reasonable grounds to invoke the UDRP or to defend against claims of cybersquatting. A case which is exceedingly difficult and stands a very low chance of success does not necessarily mean that it has no merit or that it is undeserving of carriage by a lawyer. Rather, such situations often involve explaining to the client that it is at a minimum an “uphill battle, but success may still be possible”. That is a different situation than where there is virtually no chance of success, save and except perhaps, if the courthouse burns down.
When it comes to prospective Complainants in particular, it is the duty of counsel to turn down cases which it knows or ought to know that the case is so bereft of merit and so opposite the established case law that it would constitute an abusive proceeding. Indeed, codes of professional legal ethics often mandate this. In my home jurisdiction of Ontario, Canada, each prospective barrister and solicitor is required to take a solemn oath, which includes in part; “I shall not refuse causes of complaint reasonably founded, nor shall I promote suits upon frivolous pretences”. Differentiating between reasonably founded and frivolous pretence can sometimes be easier said than done. Nevertheless, where (as here), the Domain Name “could not under any fair interpretation of the facts, constitute bad faith”, one cannot help but wonder how such cases manage to end up before a UDRP Panel.
The other notable aspect of this case that warranted its inclusion in this UDRP Digest despite it being a .au dispute, is how this case was decided under the .au Policy’s “or” provisions. As the Panelist noted: “Unlike the UDRP, the requirements that the disputed domain name be registered or used in bad faith are disjunctive in the auDRP. That is, it is sufficient for the Complainant to show either that the disputed domain name was registered in bad faith or has been used in bad faith.” [emphasis added]
Because the Complainant did not have to prove both bad faith registration and bad faith use, the “Complainant did not argue that the Respondent registered the disputed domain name in bad faith”. As Panelist Swinson points out, “no doubt this is because the disputed domain name was registered by the Respondent over 8 years prior to the Complainant coming into existence [and] the Respondent could not have registered the disputed domain name in bad faith in such circumstances”.
Accordingly, this case provided us with a glimpse of what life would be like under a disjunctive approach to bad faith. A Complainant could bring a proceeding even if the Domain Name was registered long before the Complainant even existed or its brand was a twinkle in its eye. This would be problematic for numerous reasons, a thorough discussion of which is beyond the scope of this particular Case Comment. At a glance, we can recognize a few issues. It would unjustifiably render millions of domain names ‘fair game’ for unscrupulous or misguided Complainants who would otherwise be wary of commencing a dispute against a domain name that pre-dated their own rights under the conjunctive provisions of the UDRP. The unfortunate willingness of some counsel to bring frivolous complaints would burden the UDRP system and harm innocent respondents with a surge of such baseless complaints. The subjectivity of bad faith use, when ungrounded from the requirement that registration also be in bad faith, would also destabilize the jurisprudence and undermine the UDRP’s credibility.
Following Detailed OKI Data Analysis, Panelist Determines that This is Not a Run-of-the-Mill Cybersquatting Case, and Defers to Courts
Sub-Zero, Inc. v. Bernell Burton / Refrigeration 365, LLC, NAF Claim Number: FA2210002014880
<subzerorefrigeratorservice .com>
Panelist: Mr. Jeffrey J. Neuman
Brief Facts: The Complainant provides high-end residential kitchen appliances, including refrigerators, freezers, and similar goods. It owns rights in the SUB-ZERO mark based upon its registration with the USPTO (registered on June 13, 1989). The Respondent registered the disputed Domain Name on February 18, 2022, for use in his two decades old business of repair services for refrigerators and similar appliances. Approximately two (2) weeks after the Domain Name registration, the contents of a website were placed online and included a disclaimer at the bottom stating; “This site is in no way associated with or endorsed by Sub Zero”. The Respondent contends that for the past three (3) years, the Respondent has been servicing and repairing almost exclusively Sub-Zero refrigerators. The Respondent emphasises that he is an expert and he does not buy, sell or install refrigerators but only services and repairs them.
The Complainant alleges that the Respondent’s use cannot be considered “nominative fair use” under the standard set forth in Oki Data test because the Respondent is not actually an authorized repair service provider for any SUB-ZERO brand appliances, but uses the disputed Domain Name to promote repair services for third-party appliance brands and not exclusively for SUB-ZERO brand appliances. The Complainant further argues that the Complainant’s SUB-ZERO Marks are distinctive and not being used by the Respondent in a purely descriptive sense and that the disclaimer used by the Respondent is insufficient to insulate it from wrongdoing.
Held: Under Oki Data test, the first element makes no distinction as to whether a Respondent is an authorized or unauthorized reseller, servicer or repairer of Complainant’s products nor whether its services compete with that of the Complainant. Neither party disputes the fact that the Respondent provides refrigerator repair services nor that it provides such services with respect to Complainant’s products. The Complainant, however, argues that the Respondent uses the domain name to provide repair services for other third-party brands and not exclusively in connection with Complainant’s products. The test is not whether the Respondent actually provides services with respect to other brands, but whether the website associated with the disputed Domain Name promotes the Respondent’s services with respect to products offered by competitors of the Complainant. The Complainant provides no evidence that the website associated with the disputed Domain Name does in fact promote Respondent’s services with respect to kitchen appliances offered by competing third parties. Further, the Complainant does not argue that the Respondent “cornered the market” in domain names that reflect Complainant’s mark.
As regards the remaining element three of the Oki Data factors, the website associated with the disputed Domain Name must accurately disclose the registrant’s relationship (or lack thereof) with the trademark owner. The Respondent argues that this factor is satisfied by the inclusion of a disclaimer at the bottom of the website where it promotes its services. The Complainant, however, argues that the disclaimer is insufficient to legitimize Respondent’s registration and use of the disputed Domain Name for several reasons including the placement, lack of disclosure of relationship between the parties, etc. Indeed, there appears to be an issue whether the disclaimer itself is sufficiently clear and prominent to distinguish its services from that of the Complainant and whether it is clear to Internet users visiting the Respondent’s website that it is not operated by the Complainant.
Although the Panel finds that the Respondent successfully establishes each of the other Oki Data factors (namely, 1, 2 and 4), because there are such complex issues of fact with respect to element 3, it cannot be said definitively that the Respondent has rights or legitimate interests in the disputed Domain Name. That said, it also cannot be said definitively that the Respondent does not have a right or legitimate interest to the disputed Domain Name. In such a case, the Panel is not satisfied that the Complainant met its burden of proof in establishing that the Respondent does not have a right or legitimate interests to the domain name.
As noted by the Panel in Oki Data and repeated in Fluke, “[i]t is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names.”
This is not a customary run-of-the-mill cybersquatting case, and based on the limited facts presented, is one that reasonable Panelists may come to different conclusions. The Panel believes that both the Complainant and Respondent have made arguments which necessitate the collection of evidence, fact-based and expert witness testimony, and cross-examination. Unfortunately, those tools are not available under the Policy and are only available in a court of competent jurisdiction.
Complaint Denied
Complainants’ Counsel: Matthew D. Witsman of Foley & Lardner LLP, US
Respondents’ Counsel: Aaron P. Peacock of PEACOCK LAW FIRM PLLC, US
Case Comment by ICA General Counsel, Zak Muscovitch:
Credit is due to Panelist Jeffrey Neumann for undertaking a detailed application of the Oki Data test replete with additional analysis derived from the helpful and recent Majority decision by Panelists Steve Levy and David Sorkin in the FixMyFluke case, but for also ultimately erring on the side of caution.
Panelist Neumann was clearly able to expertly apply the Oki Data test to this case, but notwithstanding that, did not feel compelled to decide it on the merits. Panelist Neumann stated that “both the Complainant and Respondent have made arguments which necessitate the collection of evidence, fact-based and expert witness testimony, and cross-examination” and as such, the matter is best left to the courts. He remarked that as noted in the Oki case and repeated in the FixMyFluke case, “[i]t is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names”.
Expert UDRP Panelists may feel themselves well-equipped to decide complex cases, and many indeed are. But that is not the point. It is the UDRP itself which is not well-equipped to decide complex cases. The UDRP was never intended to resolve more than clear, “run of the mill” cybersquatting cases, and intentionally left other kinds of disputes to the courts. That is why self-restraint is the preferable approach for Panelists. Panelists need not feel compelled to demonstrate the wisdom of Solomon without all the tools and the facts available. Moreover, when met with two legitimately competing narratives or a genuine dispute, particularly when it involves something more than garden-variety cybersquatting, Panelists are not required to necessarily prefer one narrative or party’s case over the other. Rather, they can prudently and responsibly conclude that the case is not suitable for adjudication on the merits via the UDRP and thereby defer to the courts where such disputes truly belong. After all, if the UDRP can efficiently and effectively sort out the majority of cases – which comprise the intended and clear ‘garden-variety’ cybersquats – then we should be very pleased as it will have meant that a large number of cases will have been successfully diverted from the courts to the satisfaction of the parties.
Complainant Fails Because it Didn’t Prove Common Law Trademark Rights at the Time of Domain Name Registration
Outskirts Press, Inc. v. Domain Admin / TotalDomain Privacy Ltd, NAF Claim Number: FA2210002017321
<outskirtpress .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant is an online self-publishing company with customers around the world whose website is located at <outskirtspress .com> (registered on September 8, 2002). The Complainant owns rights in the OUTSKIRTS PRESS mark through the registration with the USPTO. The disputed Domain Name was registered on October 12, 2005. The Complainant alleges it was registered ten months after it applied for its OUTSKIRTS PRESS trademark and corresponds to the approximate time when the Complainant began its growth and international success, including in Panama.
The Complainant further alleges that the Respondent registered the Domain Name with the clear purpose of causing confusion amongst the Complainant’s clients and potential clients with a confusingly similar domain name that is specifically meant to capitalize off of typographical errors when the end-user accidentally omits the “s” when attempting to go to the legitimate <outskirtspress .com> website. Further, the Domain Name will typically take the end-user to a “pay-per-click link farm” which rewards the Respondent in a monetary way for these typographical errors. The Respondent did not file a response.
Held: The timing of the disputed Domain Name registration raises the possibility that the Respondent was aware of the Complainant’s application to register its mark when the Respondent registered the Domain Name. However, the Complainant provided no evidence that, through use of its <outskirtspress .com> website or otherwise, the Complainant had established unregistered or common law trademark rights by showing that its OUTSKIRTS PRESS mark had become a distinctive identifier which consumers associated with Complainant’s goods and/or services prior to the registration of Respondent’s domain name. The Complainant also did not assert that the “pay-per-click link farm” to which the Domain Name resolves displayed any links related to any goods or services associated with the Complainant. Moreover, the words “outskirt” and “press” are dictionary words which, even in combination, are not necessarily one-of-a-kind.
Under all these circumstances, the Complainant has neither shown that the Respondent is likely to have been aware of Complainant’s mark when registering the Domain Name nor that the Respondent sought to trade off Complainant’s reputation. Hence, the Panel is not persuaded that the Respondent registered the Domain Name with the Complainant or its trademark in mind, or that the Respondent has used the Domain Name to target the Complainant or to take advantage of Complainant’s reputation. The Complainant fails to establish a prima facie case of lack of rights or legitimate interests on the part of the Respondent and that the disputed Domain Name was registered or is being used in bad faith.
Complaint Denied
Complainants’ Counsel: Brent Sampson, US
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
The ultimate goal of law is justice and justice-minded Panelists will naturally be inclined to find a way to arrive at the just decision for a sympathetic party by taking a broad view of the case and exercising their discretion accordingly. Nevertheless, law is created so that the parties and society can have certitude that disputes will be resolved in a predictable manner using the established criteria, and as such Panelists should follow the law where it leads, despite any misgivings that the law did not afford the outcome that they would have preferred.
In this case, experienced and expert Panelist, Alan Limbury (one of the original UDRP Panelists from 1999), followed the law. At the time that the Disputed Domain Name was registered, no trademark registration existed. Nevertheless, the Domain Name which comprises a rather distinctive term was registered 3 years after the Complainant’s similar domain name and 10 months after the Complainant applied for its trademark registration.
Clearly the Panelist was tuned in to the potential import of this chronology. He expressly acknowledged that the “timing raises the possibility that Respondent was aware of Complainant’s application to register its mark when Respondent registered the domain name”. But this possibility, indeed suspicion, was not enough under the UDRP, to order the transfer of the Domain Name. The reason was that in order to succeed in the absence of a trademark registration at the time that the Domain Name was registered, the Complainant had to demonstrate common law trademark rights. The Panelist noted that the “Complainant has provided no evidence that, through use of its <outskirtspress.com> website or otherwise, Complainant had established unregistered or common law trademark rights by showing that its OUTSKIRTS PRESS mark had become a distinctive identifier which consumers associated with Complainant’s goods and/or services prior to the registration of Respondent’s domain name”. Under the UDRP, without demonstrating trademark rights at the material time, the Complaint must fail, and that is what occurred in this case because the Panelist adhered to the requirements of the Policy.
Respondent Should Have Chosen a Non-Impersonating Domain Name for His Free Speech
<collegeofthedesert .com>
Panelist: Mr. Kendall C. Reed
Brief Facts: The Complainant is one of 115 community colleges in the State of California community college system, which was established in 1958 and opened its doors in 1962. The Complainant owns the domain name <collegeofthedesert .edu>, which was registered on January 16, 2002. The Complainant’s website has been operated continuously from the registration of this Domain Name to the present day. The Complainant claims that as a result of continuous use since 1962, it has established common law trademark rights in the mark COLLEGE OF THE DESERT.
The Respondent purchased the disputed Domain Name on June 22, 2022, and it redirects to a website that mirrors the ‘look and feel’ of Complainant’s Website. Therein the Respondent makes public accusations against members of the Complainant’s Board of Trustees. The Complainant alleges that the Respondent’s accusations are unsubstantiated, false, fraudulent, and likely to cause impermissible consumer confusion. On the other hand, the Respondent argues that he is using the disputed Domain Name for the purpose of ‘non-commercial’ or ‘fair use’, and more specifically that his actions constitute legitimate public criticism without a commercial intent, and that no reasonable person would confuse Respondent’s Website with Complaint’s Website.
The Respondent also argues that the similarities in the visual appearance of the two websites are intentional and are an integral part of Respondent’s message. His claimed political speech is expressed in the form of satire and parody of Complainant’s Website, for example with respect to a logo of a palm tree used by the Complainant. The Respondent copies this logo but changed it to a depiction of a dead palm tree. The Respondent further argues that his free speech rights are superior to Complainant’s trademark rights, and as such the Respondent should be able to use the disputed Domain Name for his political speech even though the disputed Domain Name is identical to Complainant’s mark.
Held: The UDRP jurisprudence recognizes that the use of a domain name for ‘fair use’ such as non-commercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy. This Panel is convinced that the Respondent is using his website, and therefore the disputed Domain Name, for the purpose of making public criticism and without intending to benefit financially. This homepage neither includes an offer for goods or services nor any click-through opportunities. In addition to the substantive content of Respondent’s Website, there is another consideration as to the look and feel of Respondent’s website, which is identical to the Complainant’s Website. This Panel finds nothing paradoxical or satirical about the visual content of Respondent’s Website, either generally or in specific reference to the noted palm tree logo.
The Respondent argues that his free speech rights are superior to Complainant’s trademark rights as detailed above, however, this Panel does not subscribe to this approach for the following two reasons. Firstly, this approach is not necessary to protect Respondent’s free speech rights on the Internet. The Respondent can use any available domain name that does not include Complainant’s mark or even that does include Complainant’s mark but in combination with an additional word or words creating a clear differentiation from the Complainant, such the <trademark+sucks> format. And secondly, this Panel believes that the creation of a strictly national approach to this issue is inconsistent with the borderless nature of the dispute resolution system embodied in the Policy.
In sum, this Panel is persuaded that the Respondent intentionally chose to use a domain name identical to Complainant’s mark in combination with a website that copies Complainant’s Website, all for the purpose of impersonating Complainant and confusing Internet users in furtherance of his efforts to publicly criticize the Complainant. Such conduct does not establish a legitimate interest. The essence of bad faith is an intentional abuse of Complainant’s mark by the Respondent. The Respondent targeted Complainant’s mark for Respondent’s own purposes even though he has options easily available that still allow him to further his goals but without causing confusion as to source, sponsorship, or endorsement.
Transfer
Complainants’ Counsel: Inventa Capital PLC, United States of America
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
This case is a good illustration of the Panel’s adoption of the “Impersonation Test” in a fair-use case. We have previously digested and commented upon the competing approaches to such cases, such as in Digest Volume 2.38 and the USAAinsuranceclaimsadjusting[.com] case and in Digest Volume 2.35 concerning the NeoMetal[s].com case, and in Vol. 2.15 concerning the MomsDemand[.org] case.
The appropriate test continues to be an ongoing issue in fair uses cases. Panelist Reed expressly notes this in his decision that “this issue, being whether the Policy allows the use of a domain name that is identical or confusingly similar to Complainant’s Mark as vehicle for publicly criticizing Complainant, has been the subject of considerable disagreement among panels since the inception of the Policy”. Indeed, Panelist Reed canvasses the “two approaches” to this issue, citing both the WIPO Overview and Gerald Levine’s treatise, Domain Name Arbitration.
But what drew my attention to this case in particular, was Panelist’s Kendall Reid’s interesting approach to the actual writing of his decision. Kendall Reed is an experienced Panelist having decided over 80 UDRP cases since 2016 and is well-versed in UDRP jurisprudence. He could have easily included numerous relevant case law citations to support his decision, but instead decided not to, in favour of referencing the WIPO Overview and Domain Name Arbitration exclusively.
The issue of citations and references is an interesting one. Some Panelists take the view that there are so many UDRP cases with various outcomes, that there is no sense in relying upon a particular case for a particular proposition because one could find another case standing for an opposite proposition. That kind of approach is, in part, what led to the WIPO Overview which is an attempt to encapsulate “consensus views” and distil them into a sort of “restatement” of the law that assists with achieving consistency of outcomes. But the latter approach has also garnered criticism from some Panelists who note that the WIPO Overview is not truly reflective of “consensus” amongst Panelists and importantly, cannot serve as a substitute for case law itself. Such critics will point out that the relying upon the WIPO Overview instead of the actual case law itself, inappropriately elevates the WIPO Overview to the level of case law and that the Overview should not substitute for the actual case law. This is an issue that deserves more attention and a more detailed examination than can occur here by way of this Case Comment, however I do believe that a UDRP Provider-wide “Companion” can serve a good purpose in achieving consistency in outcomes. If however, a Companion is to be relied upon by practitioners and Panelists across all providers, and thereby in effect ‘substitute’ for actual case law per se, then it is evermore crucial that it be truly reflective of actual consensus amongst stakeholders and that it not prefer the views of some over others where no consensus exists. Otherwise, whomever writes and edits such a document – which is elevated to the stature of case law – would hold an inappropriate level of control over the jurisprudence – and the outcome of cases.
In any event, the Panelist in this particular case obviously studied both the WIPO Overview and Gerald Levine’s treatise, as well as the case law, and his decision to omit express references was not out of neglect, but rather the product of effort to apply the appropriate principles garnered from the case law, though from indirect sources.