Welcome to this week’s UDRP Digest (vol. 1.6), summarizing the most intriguing cases of the past week. Read about:
‣ Attempt to swap website redirection foiled (uniswap .com)
‣ Domaining overpowers Canadian Healthcare Company (nuro .com)
‣ Too much of a hype by ‘The Hype Company’ (thehypecompany .com)
‣ Quixotic idea leads to shattered dreams (vandorp .com)
‣ The Vietnamese Company failed to demonstrate the Zing Thing (zing .me)
‣ Complainant’s arm twisted over generic domain name (chinaarm .com)
Enjoy!
Attempt to swap website redirection foiled
<uniswap .com>
Transfer
Panelist: Mr. Edoardo Fano (Presiding), Mr. Lawrence K. Nodine, Mr. William A. Van Caenegem
Brief Facts: The US Complainant is operating in the financial field of blockchain, cryptocurrency and trading protocol software for digital currency, operating at <uniswap .org>. It owns several trademark registrations and applications for UNISWAP, among which, earliest registration is October 2020 before USPTO and also has an International Trademark registration. The disputed Domain Name was acquired by the Respondent on April 7, 2021 and currently resolves to a website promoting the trade of sea urchin, a sushi ingredient known by its Japanese “uni”. At the time of filing of the Complaint, it was being redirected to a subpage of the website belonging to SushiSwap, a Complainant’s direct competitor.
Held: The reputation of the Complainant’s trademark UNISWAP in the financial field of blockchain, cryptocurrency and trading protocol software for digital currency is clearly established. The composition of the disputed Domain Name carries a high risk of implied affiliation and does not represent a bona fide offering of goods or services giving rise to rights or legitimate interests in the Disputed Domain Name. The Respondent likely knew of the Complainant and deliberately acquired the disputed Domain Name, as operating in the same field as the Complainant. The said acquisition of the disputed Domain Name after the trademark rights had been registered by the Complainant is in Bad Faith. Moreover, the disputed Domain Name is also being used in bad faith since it was redirecting to a website belonging to a Complainant’s direct competitor, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed Domain Name’s source, sponsorship, affiliation or endorsement.
Complainants’ counsel: O’Melveny & Myers, LLP, United States
Respondents’ counsel: Cornwalls, Australia
Domaining overpowers Canadian Healthcare Company
NURO Corp. v. Domain admin, Cybertonic, WIPO Case No. D2021-2166
<nuro .com>
Complaint Denied (with RDNH)
Panelist: Andrew F. Christie (Presiding), Daniel R. Bereskin QC, Martin Schwimmer
Brief Facts: The Canadian Complainant operates in the healthcare sector providing several products, including hardware and software. It registered Trademarks in Canada in 2018, claiming use since 2016. The Respondent is a French corporation whose principal Mr. Francois Carillo is the proprietor of Domaining .com and Catchy .com. Particularly at Catchy .com the Respondent advertises its interest in buying pronounceable four-letter domain names. The Respondent registered the disputed Domain Name on February 19, 2015 and was offered for lease in 2019. Currently the disputed Domain Name resolves to a webpage containing the text: “The problem with not having the .com of your name is that it signals weakness. Fix it now”, with a link to the LinkedIn profile of Mr. Carillo.
Held: The Respondent registered the disputed Domain Name nearly four years before the Complainant’s first registration of its trademark, and over one and one-half years before the Complainant’s asserted first use of its trademark. In these circumstances, it is clear that the Respondent did not register the disputed Domain Name for the purpose of selling or renting the disputed Domain Name to the Complainant, preventing the Complainant from reflecting its trademark in the disputed Domain Name, or disrupting the business of the Complainant. The Respondent’s use of the disputed Domain Name since registration of it has been consistent to offer it for lease or sale. Accordingly, the Respondent did not register and has not used the disputed Domain Name in bad faith.
RDNH: The Complainant identified a particular partner of a major Canadian law firm as the Complainant’s authorized representative in the proceeding but later designated him “as an observer and side counsel” to the matter. These facts do establish that legal advice was available to the Complainant, whether or not it was taken. This exacerbates the Complainant’s culpability for bringing the Complaint in the circumstances identified above. Accordingly, the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and therefore constituted an abuse of the administrative proceeding.
Complainants’ counsel: Internally represented
Respondents’ counsel: John Berryhill, Ph.d., Esq., United States of America
Too much of a hype by ‘The Hype Company’
The Hype Company, S.L. v. Ehren Schaiberger, WIPO Case No. D2021-1850
<thehypecompany .com>
Complaint Denied
Panelists: Ms. Jane Seager (Presiding), Ms. María Baylos Morales, The Hon Neil Brown Q.C.
Brief Facts: Spanish Complainant, incorporated on April 16, 2018, is engaged in the production and sale of products for plant growth and care. The Complainant owns various trademarks for “The Hype Company” applied in December 2017 or early 2018 and operating at <thehypecompany .es>, in connection with its agricultural products. The disputed Domain Name was registered on April 13, 2018 and has been parked for sale at DAN. The Respondent claims to have had no knowledge of the Complainant when he registered the disputed Domain Name, and has produced evidence indicating that he has registered a number of other similar Domain Names following the naming pattern “the [term] company”.
Held: The disputed Domain Name was registered by the Respondent three days prior to the incorporation of the Complainant company, while the Complainant’s founder had already registered a number of semi-figurative trademarks for its mark. The Complainant has failed to produce any relevant evidence to demonstrate that the Respondent has sought to target the Complainant through the registration or use of the disputed Domain Name. Besides, the Complainant’s trademark is composed of dictionary terms, and that the distinctiveness of the Complainant’s trademark results, in part, from the semi-figurative nature of the mark. There is no evidence of the Respondent having engaged in a pattern of abusive Domain Name registration targeting the Complainant or the Respondent has at any time sought to sell the disputed Domain Name to the Complainant. Therefore, the Complainant has failed to demonstrate that the disputed Domain Name was registered in bad faith pursuant to the Policy.
Complainants’ counsel: Herrero & Asociados, Spain
Respondents’ counsel: Self-represented
Quixotic idea leads to shattered dreams
Adrianus Theodorus van Dorp v. MailPlanet .com, Inc, CIIDRC 15988-UDRP
<vandorp .com>
Complaint Denied
Panelist: Mr. Gerald M. Levine
Brief Facts: The Complainant, a software developer, having intentions to use his last name ‘Van Dorp’ in his family business takes the UDRP route. There is no supporting evidence, if the said business has already been established and he has rights, either registered or unregistered in his last name. The Complainant just expresses his strong desire to use the disputed Domain Name for his family business and alleges the same is owned by the Respondent, who is demanding a “non-reasonable price” price for it. The disputed Domain Name was registered in 2003 and the webpage displays the email services being offered under it.
Held: A precondition for invoking the UDRP is that the complainant has a trademark. This could be either registered or unregistered, but if an unregistered mark, the Complainant must offer evidence of secondary meaning, which is lacking in this case. The Complainant may be using “Van Dorp” as a trade name that alone would not help the Complainant. Previous panels have held that usage as a trade name does not serve to establish common law rights in a mark. In any event, the Complainant offers no evidence of any unregistered mark or that he is even currently operating an IT business, rather than it seems to be a wishful future enterprise. For these reasons, the Complainant does not satisfy his burden under the first element of the Policy, that is, fails on the basic standing requirement under the Policy. Obviously, this complaint should never have been brought. Had the Complainant taken advice from counsel, he should have been sanctioned for reverse domain name hijacking, but the same is not applicable here.
Complainants’ counsel: Internally represented
Respondents’ counsel: Self-represented
The Vietnamese Company failed to demonstrate the Zing Thing
VNG Corporation v. Teri Plummer, WIPO Case No. DME2021-0010
<zing .me>
Complaint Denied
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant, established in 2004, is a leading Internet and technology company in Vietnam and Southeast Asia. It operates the ZING ME social network, film and music streaming services, an electronic magazine, and a gaming platform. The Complainant is the owner of the International trademark ZING with registration since 2012 and operating through ccTLD .vn including <zing .vn>. The disputed Domain Name was registered on October 23, 2013. It resolves to a website that offers the disputed Domain Name for sale.
Held: “Zing” is an English dictionary that is being used online by different entities for different purposes. The Complainant has not presented any evidence that its ZING trademark is well-known or recognized exclusively with the Complainant. Further, the Complainant has provided no evidence to create an inference that when registering the disputed Domain Name, the Respondent had knowledge of the Complainant or that it has targeted it with its offer for sale of the disputed Domain Name or otherwise. It is well accepted that acquisition of domain names by domain name investors would normally be legitimate as long as no third-party trademarks are targeted. However, the request for RDNH is declined, as disputed Domain Name does not resolve to an active website.
Complainants’ counsel: Internally Represented
Respondents’ counsel: Self-represented
Complainant’s arm twisted over generic domain name
Arm Limited v. Conggang Cao, WIPO Case No. D2021-0997
<chinaarm .com>
Complaint Denied
Panelist: Ms. Sok Ling MOI
Brief Facts: The U.K. based Complainant renders technology related goods and services since 1990. It has sold over 180 billion products under its ARM brand, which includes processors used by famous mobile brands. The Complainant owns numerous trade mark registrations for ARM since 1999 for ‘ARM’ mark in USA, U.K., EU and Singapore and claims the ARM mark as a “well-known mark”. Disputed Domain name was registered in January 2021 by a Chinese Respondent. No response has been filed.
Held: The Respondent is merely passively using the disputed Domain Name to redirect to a landing page and soliciting offers for the purchase of the same, the Panel notes that the disputed Domain Name is composed of the geographical term “china” and a dictionary term “arm”, which is quite different from the classic case where a well-known distinctive third party mark has been incorporated in the disputed Domain Name. Notwithstanding the Complainant’s claims regarding its reputation it is noteworthy that the Complaint does not list trademarks registered in or designating China; moreover, given that the disputed Domain Name is comprised of two dictionary words and is not in the Panel’s view a highly distinctive mark, the Panel ultimately is not prepared to draw an inference regarding the Respondent’s potential targeting of the Complainant.
Complainants’ counsel: Quinn IP Law, United States of America
Respondents’ counsel: No response