Thank you for tuning in to this week’s digest (Vol 2.40)! In this issue, we review these noteworthy decisions:
‣ Resale of Made-up Terms Permissible, Just Like Acronyms, Dictionary Words, and Common Phrases (nobli .com *with commentary)
‣ Gibson Guitars Should Have Done a Google Search before Commencing Complaint (tobias .com)
‣ Registrant Name Corresponding to Domain Name Does Not Alone, Constitute Legitimate Interest (nuramax .com *with commentary)
‣ When Did Melinda Gates Become a Common Law Trademark? (melindagates .com *with commentary)
‣ Registrar Brings Complaint on Behalf of Former Registrant (bonamanzi .com *with commentary)
Our General Counsel Zak Muscovitch has added commentary as well. Enjoy!
Resale of Made-up Terms Permissible, Just Like Acronyms, Dictionary Words, and Common Phrases
Nobli Ltd. v. Cykon Technology Limited, WIPO Case No. D2022-2970
<nobli .com>
Panelist: Mr. Andrew F. Christie
Brief Facts: The Cyprus based Complainant was incorporated on November 19, 2021 and provides no statement or evidence as to the nature of its business. The Complainant claims to have rights in a stylized trademark, NOBLI LIFE MEDIA, filed on December 28, 2021 in Cyprus, however, the trademark is still pending registration. The disputed Domain Name was registered on September 10, 2009 and resolves to a webpage stating, “NOBLI .COM is available for sale” and provides a form to be completed “to get a price quote” for it. The Complainant provides evidence that on March 8, 2022, it requested from the Respondent through the online form, the transfer of the disputed Domain Name to the Complainant “at a reasonable price”. The Complainant alleges that, “The current registrant appears to have registered the Domain Name under the practice of cybersquatting”.
The Respondent contends that the disputed Domain Name was independently invented and created by it, as the Respondent believed that the disputed Domain Name “may in future be of interest to someone who wanted to adopt a new unique brand”. The Respondent further contends that the business of creating and supplying names for new entities is a legitimate activity and the disputed Domain Name predates the Complainant’s company incorporation by over 12 years.
Held: The Complainant provided no evidence of any use of its stylized trademark. Thus, there is no evidence before the Panel on which it can conclude that the Complainant owns unregistered (or common law) trademark rights to its stylized trademark or any trademark incorporating the string “nobli”. The Respondent registered the disputed Domain Name more than 12 years before the Complainant even came into existence. There is no evidence to indicate that the Respondent was at any stage prior to the filing of the Complaint aware of the Complainant or its trademark.
The disputed Domain Name consists of a term, “nobli”, which does not have a meaning in English. The Panel accepts the Respondent’s claim that it registered the disputed Domain Name because it “may in future be of interest to someone who wanted to adopt a new unique brand”. As explained in section 2.1 of WIPO Overview 3.0, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy. In the Panel’s view, depending on the circumstances, this practice may also extend to made-up phrases.
RDNH: The facts demonstrate that the Complainant knew it could not succeed because of the Complainant’s lack of trademark rights, clear knowledge of the respondent’s right or legitimate interests, and/or clear knowledge of a lack of respondent bad faith such as due to registration of the Disputed Domain Name well before the Complainant acquired trademark rights. The Complaint is based on only the barest of allegations without any supporting evidence. Accordingly, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and therefore constituted an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Marios Kontemeniotis, Cyprus
Respondents’ Counsel: Self-represented
Comment by ICA General Counsel, Zak Muscovitch: Panelist Andrew Christie has made a helpful contribution to the jurisprudence by expressly recognizing that like acronyms, dictionary words, and common phrases, investment in made-up term domain names (sometimes referred to as “brandables”), can be bona fide and qualify as a legitimate interest under the Policy. As noted by Panelist Christie, the WIPO Overview 3.0 specifically recognizes acronyms, dictionary words, and common phrases as being potentially bona fide for investment:
“Over the course of many UDRP cases, panels have acknowledged further grounds which, while not codified in the UDRP as such, would establish respondent rights or legitimate interests in a domain name. For example, generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.”
In the case at hand, the Respondent conceived of and registered the Domain Name because it could “in [the] future be of interest to someone who wanted to adopt a new unique brand”. That is fundamentally the same reason that registrants will invest in acronym, dictionary, and common phrase domain names. Nevertheless, these days when virtually all domain names corresponding to acronyms, dictionary words, and common phrases are already taken and fetch high prices, companies will often look to adopt a made-up term, or “brandable” domain name at a lower price.
Indeed, the general appeal of a great name extends beyond dictionary words, acronyms, and common phrases. While unlike dictionary word domain names that can provide the owner with the valuable and immediate benefit of directly describing goods or services, such as Homes[.]com, brandable domain names can nonetheless be memorable and indirectly convey or suggest the nature of the associated business, such as with Zoocasa[.]com. Brandable domain names can also be completely fanciful without suggesting any particular concept at all – an empty vessel – and still be attractive. For example, Zillow[.com] is a made-up term that does not particularly suggest real estate, yet has become a prominent and memorable real estate brand. Of course, Google may be the ultimate example of this. Interestingly, the Google name was derived from an inadvertent misspelling of the originally planned name, Googol, which is a mathematical term for the number “1” followed by 100 zeroes.
There is an established market for such domain names and indeed there are numerous service providers worldwide, who conceive of and offer invented brands along with corresponding domain names such, as Catchword, who counts The Home Depot, Kellogs, and Corning, as amongst its clients. Catchword ensures that the corresponding domain name is available and often speculatively registers it for a client or potential client who may be be interested in it. Catchword describes and promotes its “Brandable Domain Names” on its website and offers for sale to the public, its curated collection of domain names via The Catchword Accelerator. This marketplace often contains domain names which were originally pitched to a client, but the client ultimately decided to go with a different brand.
The demand for brandable domain names has also seen innovation and disruption by Squadhelp (an ICA Member), which allows companies to host online naming competitions where a crowd of 300,000 “creatives” compete to come up with the best naming ideas for clients looking for a new brand. It also operates a “Brandable Domain Name Marketplace” with a curated collection of over 150,000 brandable domain names offered for adoption by companies and entrepreneurs who are looking to adopt a new brand.
Domain Name investors who conceive of or identify domain names corresponding to made-up words or phrases that are not found in the dictionary but which nevertheless convey an idea that is suitable and attractive for an unspecified suitor, are not unlike branding agencies. Moreover, investing in such domain names is not unlike speculatively investing in dictionary word or acronym domain names, which one day an entrepreneur or company may want to adopt for a new business. In either case, provided that there is no targeting of a trademark owner at the time of registration, the investment is bona fide and the registrant can accordingly, have a legitimate interest in the brandable domain name as part of its stock-in-trade, as we saw in this case.
Gibson Guitars Should Have Done a Google Search before Commencing Complaint
Gibson Brands, Inc. v. Domain Administrator, AssuredPartners Inc., WIPO Case No. D2022-2678
<tobias .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant is engaged in the business of developing, manufacturing, and selling musical instruments, including stringed instruments under the TOBIAS Trademark for over 40 years. The Complainant owns the registered trademark TOBIAS dated March 28, 1995 with the USPTO (claimed first use in commerce: December 31, 1984). The Respondent is an insurance brokerage firm founded in 2011. In 2012, the Respondent acquired Tobias Insurance Group (“Tobias IG”), an insurance agency founded in 1973. The disputed Domain Name was originally registered by Tobias IG on July 28, 1995.
Tobias IG transferred ownership of the disputed Domain Name to the Respondent on or about December 15, 2017, however, no website was established since the Respondent had ceased usage of the Tobias Insurance brand but had nevertheless continued to maintain the disputed Domain Name for email purposes. The Respondent provided evidence that when the word “tobias” is searched with the name of the Respondent, the first results are links to the news about the above mentioned acquisition. The Complainant in its unsolicited supplemental filing alleges that the Respondent’s ownership and use of the disputed Domain Name after Tobias IG transferred it, was somehow in bad faith.
Held: Tobias IG had been trading under the mark TOBIAS and the mark was continued to be used by the Respondent for several years until the Respondent decided to discontinue the TOBIAS brand. The Respondent continues to use the disputed Domain Name for that limited purpose to this day as the customers are accustomed to communicating with the Respondent via an email address using the Domain Name. Moreover, the Respondent, through its Tobias IG subsidiary, was commonly known by the disputed Domain Name for several years. The Panel, therefore, concludes that the Respondent clearly has rights or legitimate interests in the disputed Domain Name.
The disputed Domain Name obviously was not acquired by the Respondent in bad faith. By December 15, 2017, when Tobias IG transferred the disputed Domain Name to the Respondent, the latter firm had owned the former firm for several years, and the disputed Domain Name had operated as it had for years prior to the Respondent’s acquisition of Tobias IG, namely, as a legitimate commercial website offering insurance brokerage services. If Tobias IG’s ownership and use of the disputed Domain Name is legitimate, then it is difficult to understand how that ownership and use by the parent firm can somehow become illegitimate or bad faith, as the Complainant alleges.
RDNH: The Complainant asserted, with absolutely no proof, that its TOBIAS mark is “famous.” That sort of bald assertion is an overreach and it undermines the Complainant’s credibility. Further, the Panel agrees with the Respondent that it would have been very easy for the Complainant to acquire an understanding of why the Respondent registered the Domain Name by a Google search. Such knowledge presumably would have put the Complainant on ample notice that the Respondent may well have a legitimate claim to the disputed Domain Name. A panel may find RDNH where a complaint was doomed to failure and a modicum of due diligence by the Complainant would have made this clear before the complaint is filed.
This Complaint never should have been brought and once the Respondent’s position became clear from the Response, the Complainant should have sought to settle or withdraw the Complaint. Instead, the Complainant doubled down with irrelevant arguments. In that submission, the Complainant fails to address any of the critical points raised by the Respondent, and instead offers flimsy and inessential arguments, such as the argument that the Respondent somehow acted in bad faith. Taking Complainant’s conduct in its totality, the Panel does not hesitate to declare that the Complainant, represented by counsel with experience in UDRP cases, has committed Reverse Domain Name Hijacking (“RDNH”).
Complaint Denied (RDNH)
Complainants’ Counsel: Bates & Bates LLC, USA
Respondents’ Counsel: The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, USA
Registrant Name Corresponding to Domain Name Does Not Alone, Constitute Legitimate Interest
<nuramax .com>
Panelist: Mr. Richard Hill
Brief Facts: The US Complainant (via affiliates) develops, markets and distributes nutritional supplements for humans and animals. The Complainant’s affiliates have been using NUTRAMAX marks for over 30 years, including NUTRAMAX LABORATORIES, in connection with developing, marketing, and distributing branded supplements. The Complainant claims rights in the NUTRAMAX LABORATORIES mark through its registration in the United States in 1999. The disputed Domain Name was registered in 2022 and has WHOIS privacy enabled.
The Complainant alleges that the Respondent uses the disputed Domain Name to pass off as the Complainant and host third-party competing pay-per-click advertisements. The Panel issued an Order for Additional Submissions, requesting both parties to reply to certain questions by August 18, 2022, in particular requesting the Respondent provide evidence of demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent did not file a response either to the Complaint or the procedural order.
Held: The disputed Domain Name resolves to a parked page displaying pay-per-click hyperlinks to products and services some of which compete with those of the Complainant. This does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed Domain Name under Policy. The WHOIS information for the disputed Domain Name identifies the registrant as “Anuj Gupta / Nuramax wellness pvt. Ltd”, but the resolving website is a parked page that displays advertising links related to the Complainant’s business. This is not evidence that the Respondent is commonly known by the disputed Domain Name. For all the above reasons, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed Domain Name.
Panels have found a respondent to have acted in bad faith under Policy where a respondent used a domain confusingly similar to another’s mark to profit from commercial links. Bad faith has been found even where a respondent commercially benefited through links unrelated to a complainant’s mark. And the Domain Name owner is responsible for content on a resolving parked website, even if placed by a registrar. Thus, the Panel finds that the Respondent registered and is using the disputed Domain Name in bad faith per Policy. This conclusion is supported by the fact that the Respondent knows of the Complainant and its business, because it follows its LinkedIn account.
Transfer
Complainants’ Counsel: Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: There is a price to be paid by a Respondent for not responding to a Complaint. Here, not only did the Respondent not respond to the Complaint, but even given a second chance by the Panelist who issued a procedural order inviting the Respondent to come forward with evidence establishing a basis for its registration, the Respondent again failed to do so. Had the Respondent responded, the outcome may have been different. For example, the Respondent could have argued that this was a case of alleged trademark infringement at most, rather than a case of cybersquatting. The Respondent could have also for example, possibly shown that it was a bona fide corporate entity with an established history of selling nutritional supplements under what it reasonably considers a sufficiently different brand name.
Regarding the PPC links, the responsibility for PPC links is not always attributable to the Respondent despite the Panelist’s statement that, “the domain name owner is responsible for content on a resolving parked website, even if placed by a registrar”. There is a fundamental difference between PPC links intentionally placed on a website associated with a domain name by the registrant for which the registrant receives revenue, and PPC links placed by the domain name registrar without the knowledge of the registrant for which only the registrar receives revenue. In the latter scenario, there is generally no basis for imputing bad faith upon the Respondent beyond “deeming” it bad faith regardless of whether the Respondent had knowledge of the links or intended them to appear. It is standard practice amongst some registrars to populate an unused domain name with ads however, such practices by a registrar generally do not reflect a registrant’s bad faith at all. As noted by the Panelist in State Farm Mutual Automobile Insurance Company v. Robert Goldman / A4M, NAF Claim Number: FA2207002003300 and as commented upon in ICA UDRP Digest Volume 2.39, in some circumstances a Respondent should not be held responsible for a registrar’s default parking page. In some circumstances, fairness dictates that the degree of knowledge and intention of a Respondent must be gauged before concluding that PPC links are evidence of a Respondent’s bad faith. Otherwise, in some circumstances, an entirely innocent registrant could be found guilty as a result of the acts of a registrar, which the Respondent genuinely had no knowledge of and would not have even been reasonably aware of.
When Did Melinda Gates Become a Common Law Trademark?
Melinda French Gates v. John Clendenon, NAF Claim Number: FA2207002003541
<melindagates .com>
Panelists: Mr. Terry F. Peppard Esq. (Presiding), Ms. Sandra J. Franklin Esq. and Mr. Kendall C. Reed Esq.
Brief Facts: The Complainant is a well-known philanthropist and human rights advocate. Starting in 1997, and continuing without interruption through May 7, 1999, and beyond that date to the present, the Complainant featured in national and international news articles reporting on her philanthropic endeavors. The Complainant claims common law rights in the MELINDA GATES mark starting May 7, 1999. The Respondent registered the disputed Domain Name on May 21, 1999 and it resolves to the Respondent’s commercial website at <americanbusinesscenter .com>, which is used by the Respondent to offer “business spaces” for rent in Largo, Florida. The Complainant alleges that the Respondent registered the disputed Domain Name in order to divert Internet users for its commercial gain.
The Complainant further alleges that the Respondent has a history of cybersquatting, which includes registration of seven Domain Names specifically targeting the children of the Complainant, which were registered on various dates in May and June of 2017. The Respondent contends that the Complainant lacks common law rights in the MELINDA GATES mark because the Complainant failed to provide sufficient evidence of secondary meaning. The Respondent further contends that he had never heard of the Complainant until shortly before this dispute was filed, and he merely registered the Domain Name using common generic terms that the Respondent believed would have economic value.
Held: In terms of the Policy, the Complainant is obliged to prove in this proceeding both that the Respondent registered the Domain Name in bad faith and that the Respondent is now using it in bad faith. The facts before us leave a window of less than two-and-one-half years during which the Complainant must have developed the name MELINDA GATES into a distinctive mark under the common law because it cannot be said that the Respondent registered the Domain Name in bad faith before the Complainant’s personal name had ripened into a protectable mark. The exhibits accompanying the Complaint detail a handful of events in connection with which the Complainant was featured in published reports for her charitable giving in the less than three years running from 1997 through early May of 1999.
In one of those instances, Complainant’s name was reported in connection with creation of the Gates Library Foundation, her name not being mentioned in the title of the institution, while in the others, the Complainant was credited with philanthropic giving jointly with her spouse, rather than in her name alone. In more recent times, the Complainant appears to have become well known for charitable and public-spirited undertakings in her own right, but our analysis here must be confined to events and circumstances in the timeframe preceding registration of the contested Domain Name. On the record before us, therefore, we find that the Complainant has not proven that her personal name had ripened into a protectable common law mark by the time the Respondent registered the disputed Domain Name. The Complainant thus failed to show that the Respondent registered the Domain Name in bad faith when that occurred in May of 1999.
Complaint Denied
Complainants’ Counsel: David J. Byer of K&L Gates LLP, Massachusetts, USA
Respondents’ Counsel: Walter Sowa of The Law Office of Walter Sowa, III, Esq. PL, Florida, USA
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel in this case deserves recognition for following the law where it leads. Despite what appeared to be an incredible statement by the Respondent (that he had never heard of the Complainant before the Complaint was filed despite having registered domain names corresponding to several of the Complainant’s children), the Panel recognized that the Policy simply requires trademark rights at the time that the Domain Name was registered. As the Panel noted, the Complainant had not proven that her personal name had ripened into a protectable common law mark by the time Respondent registered the Domain Name. In such circumstances, the Panel made the only decision that it fairly could, despite what may have been the temptation to award the Domain Name to the Complainant given the circumstances of this case.
Registrar Brings Complaint on Behalf of Former Registrant
HOSTAFRICA v. Domain Support, NAF Claim Number: FA2208002010138
<bonamanzi .com>
Panelist: Mr. Paul M. DeCicco
Brief Facts: The Complainant is the registrar of the previous owner’s at-issue domain name and suggests that its reason for filing the Complaint is to correct an administrative error regarding renewal of the at-issue Domain Name. The Complainant claims rights in the disputed Domain Name, due to the previous owner’s twenty-year use of the Domain Name and such owners operation of a business with the same name as the Domain Name. The Respondent is in the business of buying and selling generic domains. The disputed Domain Name was initially registered on July 17, 2003 but acquired by the Respondent recently. The Complainant alleges that the Respondent registered the disputed Domain Name with the intent to offer it for sale and the disputed Domain Name does not resolve to an active webpage.
The Respondent contends that as the registrar of the Domain Name, the Complainant lacks standing to bring the Claim and otherwise the Complainant did not claim rights in a trademark or service mark. The Respondent also contends that the Respondent has rights and legitimate interests in the at-issue Domain Name because the Respondent acquired the Domain Name in conjunction with the Respondent’s legitimate business and the at-issue Domain Name is made up of generic terms. The Respondent requests a finding of reverse domain name hijacking against the Complainant.
Held: It is well-settled that trademark registration is not a requirement of Policy, so long as the Complainant can show clear secondary meaning in the mark. However, here the Complainant fails to even assert trademark rights in any mark. Although, the Complainant claims that the disputed Domain Name is or was associated with a business, however, trade names are not protected under the Policy. Notably, the business name that the Complainant connects with the disputed Domain Name was related to the previous domain name owner, not even the Complainant. Given the foregoing, the Panel finds that the Complainant lacks rights in a mark for the purposes of the Policy and for the same reason, declines to analyze the other two prongs of the Policy.
Even though the Panel holds that Complainant fails to satisfy its burden under the Policy, a finding of reverse domain name hijacking does not necessarily follow. While the Complainant, who is unrepresented by counsel, may not know that correcting administrative errors is not a function of the UDRP, Complainant’s misconception does not lead to a finding that the Complainant brought the Complaint in bad faith. Nor does Complainant’s amount of effort or degree of acumen brought to bear in drafting the Complainant, without more, convince the Panel that the Complainant acted in bad faith in its filing. Therefore, Respondent’s request for a finding of reverse domain name hijacking is denied.
Complaint Denied
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Grant Carpenter, California, USA
Case Comment by ICA General Counsel, Zak Muscovitch: Like the <melindagates .com> case, above, the Panelist here correctly enforced the requirements of the Policy despite any potential inclination to assist the Complainant, who in this case was a registrar who was apparently trying to use the UDRP to correct a possible inadvertent lapse in the former registrant’s registration.