Welcome to this week’s UDRP Digest (vol. 1.5), summarizing the most intriguing cases of the past week. Read about:
‣ Red Bull in a China Shop (redbullbeijing .com and others)
‣ Buttkicker Gets Butt Kicked (buttkicker .com)
‣ Turkish Car Company’s Complaint Not Up to Speed (togg .com)
‣ Don’t Confuse Your B&B with Your BNB, or AirBNB (hotelbnb .com)
‣ UDRP Lights On, But Nobody Home (wisconsinpowerandlightco .com)
Enjoy!
Red Bull in a China Shop
<redbullbeijing .com> and others
Transfer (with dissenting opinion)
Panelist: Mr. Matthew Kennedy (Presiding), Mr. Joseph Simone and Dr. Hong Xue (Dissenting)
Brief Facts: The Thai Complainant sells energy drinks including RED BULL. The Complainant entered into joint venture and trademark licensing agreements with Red Bull Vitamin Drink Co. Ltd, the purpose of which was the introduction of the Red Bull vitamin drink to China. A trademark ownership dispute arose between Red Bull Vitamin Drink Co., Ltd and the Complainant, in which the former claimed ownership of the RED BULL trademarks in China. The trademark ownership claim was dismissed by a Beijing court. The Respondent claims to have registered the domain names in the course of employment with the Respondent Company and that the beneficial owner, Red Bull Vitamin Drink Co., Ltd, uses the domain names in connection with its valid and subsisting licensing agreement.
Held (majority view): The Respondent failed to prove that she was and continues to be an employee of Red Bull Vitamin Drink Co. Ltd. The Respondent failed to substantiate her claim that Red Bull Vitamin Drink Co., Ltd has the exclusive right to use the RED BULL trademarks in mainland China. The Supreme People’s Court of China previously declined to accept the authenticity of the purported 50-year license agreement for the RED BULL. The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names. The Respondent targeted the Complainant’s trademarks when she acquired the disputed Domain Names and registered them in bad faith.
Dissenting opinion: There is insufficient evidence to conclude that the Respondent had not been the employee of Red Bull Vitamin Drink Co. Ltd since acquiring the disputed Domain Names or that the purported license agreement was inauthentic. The court decision referenced by the majority decided the ownership of the RED BULL trademarks in China but the authenticity of the purported licensing agreement was not conclusively determined. The Parties’ complicated dispute regarding the 50-year licensing agreement (especially the new evidence) is more appropriately resolved through a full trial in other legal proceeding than in an expedited administrative case.
Complainant’s Counsel: Internally represented
Respondent’s Counsel: Han Kun Law Offices, China
Buttkicker Gets Butt Kicked
The Guitammer Company v. Herschel Thompson, NAF Claim Number: FA2108001958918
<buttkicker .com>
Complaint Denied (RDNH)
Panelist: Mr. Michael A. Albert
Brief Facts: Complainant is in the business of consumer electronics and apparel. Complainant has rights in the BUTTKICKER mark through its registration with the USPTO since 2003. Respondent registered the disputed Domain Name on Sept. 30, 1996 and planned to use the domain name in connection with a smoking cessation program developed by Respondent’s father, wherein word “butt” can refer to a cigarette butt, while “kicker” refers to the common phrase of quitting smoking by “kicking” the habit. Currently, the disputed Domain Name has been passively held.
Held: Respondent provided multiple documents as evidence in support of the smoking cessation program, including an expired USPTO application and online description of the program/device. Therefore, the Respondent has rights and legitimate interests in the disputed Domain Name under Policy. Also the Respondent’s registration of the disputed Domain Name predates Complainant’s first claimed rights in the BUTTKICKER mark. In such circumstances, the Complainant cannot prove registration in bad faith in terms of the Policy.
RDNH: The Complainant knew or should have known that it was unable to prove either that Respondent lacks rights or legitimate interests in the <buttkicker .com> Domain Name or that Respondent registered and is using the disputed Domain Name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered a decade before Complainant’s trademark rights came into existence. It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred.
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Roberto Ledesma of Lewis & Lin, LLC, New York, USA
Turkish Car Company’s Complaint Not Up to Speed
<togg .com>
Complaint Denied (RDNH)
Panelist: Mr. Matthew Kennedy
Brief facts: The Complainant is a Turkish company founded on June 28, 2018 for the purpose of producing automobiles. The Complainant holds multiple trademark registrations in Turkey and the European Union containing the element TOGG. “TOGG” is an acronym formed by the initials of the first four words in the Complainant’s company name – TÜRKIYE’NIN OTOMOBILI GIRIŞIM GRUBU. The Complainant currently uses <togg .com.tr>, where it provides information about itself and its planned automobiles. The disputed Domain Name has a registration date of January 2003. The Complainant purported to withdraw the Complaint after the commencement of the proceeding but the Respondent objected to the withdrawal.
Held: The Panel declined to terminate the proceeding. Termination would leave the Complainant free to refile a complaint, whereas continuing will give the Respondent an opportunity to obtain findings on the merits of the Complaint. The disputed Domain Name was acquired by the Respondent in 2014, five years before Complainant obtained its earliest trademark registrations. Obviously, the Respondent could not possibly have had the Complainant or its marks in mind in 2014 when it acquired the disputed Domain Name.
RDNH: The Complainant was represented by legal counsel. The Complaint specified the creation date of the disputed Domain Name, which was 16 years before the earliest registrations of the Complainant’s trademarks in March 2019. The Complainant at best launched this proceeding without addressing the critical issue in the case and knowing that it could not succeed in its Complaint under any reasonable interpretation of the Policy. Therefore, the Panel declared that the Complaint was brought in bad faith and constituted an abuse of the administrative proceeding.
Complainant’s Counsel: Gün + Partners, Turkey
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Don’t Confuse Your B&B with Your BNB, or AirBNB
B&B Hotels v. Lesley Coombs, WIPO Case No. D2021-2174
<hotelbnb .com>
Complainant Denied
Panelist: Mr. Blackmer, W. Scott
Brief Facts: The French Complainant operates hotels & restaurants, has a portfolio of more than 500 hotels in France, Germany, Italy, Spain, Portugal, Belgium, Switzerland, Poland, Austria, Slovenia, the Czech Republic, and Brazil. The Complainant holds multiple trademark registrations for B&B Hotels and similar marks since 1990 and operates online through multiple domain names, including <hotel-bb .com> (1998), <hotel-bb .tm.fr> (1998), and <hotel-bb .fr> (2000). The disputed Domain Name was created on July 26, 2001 by a U.K. resident, who has parked the domain name at DAN .com for sale, with a minimum offer of GBP 4,997.
Held: The disputed Domain Name is composed of the English dictionary word “hotel” and the string “bnb”, a variation of the common acronym “b&b”, which stands for “bed and breakfast”. Those words are very common on Internet travel websites. The less distinctive the mark, the harder it is to establish the likelihood that a similar, descriptive domain name was chosen for its trademark rather than dictionary value. The problem is that the textual elements of those marks are dictionary words or acronyms that are very commonly used, and the Complainant is neither globally known nor uniquely associated in the travel industry with hotels and bed and breakfasts. The Respondent’s intention of selling the Domain Name is not in itself proof of bad faith and no indication that the Respondent is a competitor or serial cybersquatter. Therefore, no Bad Faith is proved against the Respondent.
Complainant’s Counsel: Fiducial Legal By Lamy, France
Respondent’s Counsel: Self-Represented
UDRP Lights On, But Nobody Home
Alliant Energy Corporation v. Billy wood, NAF Claim Number: FA2108001959495
<wisconsinpowerandlightco .com>
Complaint Denied
Panelist: Mr. David E. Sorkin
Brief Facts: Complainant was founded in 1917 as Wisconsin Power and Light Company, but later the name changed to Alliant Energy Corp. The Complainant claimed as having expended significant sums of money and substantial effort promoting and advertising its goods and services under the WISCONSIN POWER AND LIGHT COMPANY mark. The members of the public throughout Wisconsin and Iowa “continue to associate” the mark with the Complainant and its goods and services. Complainant alleges the Respondent has used the disputed Domain Name, without any authorisation or licence for a website in Complainant’s name, presumably in support of Respondent’s fraudulent scheme.
Held: Complainant does not own any Trademark rights in the name, therefore, relying on unregistered or common law rights in the mark. Based on the manner in which Complainant has used and claimed public recognition of its mark, it appears that Complainant no longer uses that mark in a trademark or even a trade name sense, having shifted to ALLIANT ENERGY, more than twenty years ago. Therefore, the Complainant has not proved that it has the rights in a relevant mark in terms of the first clause of the Policy. The Panel reaches this conclusion reluctantly, as it appears fairly clear that Respondent lacks rights or legitimate interests in the disputed Domain Name and that Respondent registered and is using the domain name in bad faith.
Complainant’s Counsel: Thomas L. Holt of Perkins Coie LLP, Illinois, USA
Respondent’s Counsel: No Response