Nominative Fair Use – Favoring a Holistic Approach to the OKI Data Test
This decision is one of a number of recent cases that have looked beyond the binary questions of items two and three of the venerable Oki Data test, i.e., whether a respondent’s website sells only the trademarked goods or services and not those of a complainant’s competitors or other third-parties, and whether it accurately discloses the registrant’s relationship (or lack thereof) with the trademark owner. With reference to the second prong of the test, the Panel noted that “on balance, the Respondent’s references to providing support for other non-Complainant engines do not constitute bait-and-switch selling or an attempt to divert Internet users in a manner contrary to the Complainant’s interests.” And, with regard to the third prong, it held that “[t]he absence of a disclaimer on the Respondent’s website does not automatically result in a failure to meet the Oki Data test. The overall presentation of the website, including the clear identification of the service provider and the credentials displayed, can still be considered in determining whether the Respondent’s use is fair and non-confusing under the Oki Dataframework.” Continue reading commentary.
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We hope you will enjoy this edition of the Digest (vol. 4.34), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Nominative Fair Use – Favoring a Holistic Approach to the OKI Data Test (lycomingoverhaul .com *with commentary)
‣ Did the Puerto Rican Respondent Register ‘Otoki’ 25 Years Ago to Target South Korean OTTOGI? (otoki .com *with commentary)
‣ The Proper Application of the Telstra Test (quizzlindt .com *with commentary)
‣ Camping World v. WildCampersWorld .com (wildcampersworld .com *with commentary)
‣ Did the Respondent Acquire the Domain Name in Anticipation of Trademark Rights? (gigapay .com *with commentary)
Nominative Fair Use – Favoring a Holistic Approach to the OKI Data Test
Textron Innovations Inc. v. Robert Vondersaar, NAF Claim Number: FA2407002106243
<lycomingoverhaul .com>
Panelist: Mr. Jeffrey J. Neuman
Brief Facts: The Complainant, founded in 1923, has grown into a network of businesses with total revenues of $12.4 billion, with approximately 34,000 employees and a presence in 25 countries. It is the owner of the US trademark registrations for LYCOMING (August 29, 1967) and LYCOMING AUTHORIZED SERVICE CENTER (January 19, 2016). Since building its first aircraft engine in 1929, Lycoming Engines, which was acquired by Complaint in 1985, has specialized in making piston aircraft engines for both fixed-wing and rotary aircraft. Lycoming Engines power over 200,000 aircraft – or half the world’s general aviation fleet. Lycoming Engines operates a website at <lycoming .com> that features information regarding the company, its history, its products and related information.
The Complainant alleges that the Respondent operates a business that provides “overhauls” of Lycoming engines. In offering these services, the Respondent directly competes with the Complainant and the Complainant’s authorized Lycoming engine service providers. In the Dallas, TX area alone, where the Respondent appears to be located, there are three authorized Lycoming service providers. The Respondent is not one of those authorized service providers. Not only does the Respondent compete directly with the Complainant but the Respondent also competes directly with these authorized Lycoming service providers – none of whom utilize the Lycoming mark in their domain.
The Respondent did not file a formal response but did submit an e-mail response to Forum stating simply “I Overhaul Lycoming engines, I do not have any association with Textron Innovations. I have had that website for 13 years, Overhaul of Lycoming is a service I provide, It is not in any way associated with Textron Innovations. Lycoming is the type of engine I service same as Ford or Chevrolet.”
Held: Under the UDRP, service providers who use a domain name containing the Complainant’s trademark to offer services or repairs related to the Complainant’s goods or services may nonetheless be engaged in a bona fide offering of goods or services, which could establish a legitimate interest in the domain name under the Policy. This principle is supported by Section 2.8.1 of the WIPO Overview 3.0 based on one of the most cited UDRP decisions, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). The Panel reviewed the application of the Oki Data test regarding trademark use. The first element of the Oki Data test applies equally to authorized and unauthorized users, focusing instead on whether the use is fair and non-confusing.
The second element requires that the respondent’s services be exclusively related to trademarked goods. The Respondent offers services for both the Complainant’s engines and those of others, prima-facie the Respondent’s use of the disputed Domain Name appears to violate the second element of the Oki Data test. However, if this service provision does not lead to bait-and-switch practices, it may still comply with the Oki Data standard. There is no evidence suggesting that users would be misled or diverted from seeking services for the Complainant’s products. The third element requires the website to clearly disclose its relationship (or lack thereof) with the trademark owner. The respondent’s website does not have a disclaimer about its non-affiliation with the Complainant, but it does prominently display its identity and credentials.
The overall presentation may still meet the fairness requirement in terms of Section 2.5.2 of the WIPO Overview 3.0. In conclusion, while there are challenges under Oki Data Element 2 due to the inclusion of third-party services, the overall usage appears to align with fair use principles as long as it does not mislead consumers. Furthermore, the Panel believes it would be inappropriate to use the UDRP to shut down a successful business that the Respondent has operated for over 13 years, in terms of Paragraph 4.1(c) of the ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy. The Panel, aligning with the view expressed in Walbro Engine Management, believes that the present case represents such a dispute and is more appropriately resolved through the courts.
Complaint Denied
Complainants’ Counsel: Jeremiah A. Pastrick, Indiana, USA
Respondents’ Counsel: Self-represented
Case Comment by Panelist, Mr. Steve M. Levy:
In his over 35 years of practice, Mr. Levy’s experience in the field of intellectual property has been quite broad, but he has a particular focus on disputes between trademarks and domain names. Over the last 16 years, Mr. Levy has filed over 630 complaints under the Uniform Dispute Resolution Policy (UDRP) and similar domain name dispute arbitration policies. He is also a UDRP panelist (arbitrator) for three of the global dispute providers and has authored decisions in over 430 cases. Prior to creating the Accent Law Group, Mr. Levy led the global intellectual property practice team at the Home Depot and was an associate at the law firm Proskauer Rose LLP. He received his J.D. degree in 1989 from Brooklyn Law School in New York City. Mr. Levy is a member of the bar in Pennsylvania and New York. He has served on the Internet Committee of the International Trademark Association (INTA) as well as on the Rights Protection Mechanisms Review Working Group at the Internet Corporation for Assigned Names and Numbers (ICANN) and is also a founding member of the UDRP Exploratory Group (udrp.group).
This decision is one of a number of recent cases that have looked beyond the binary questions of items two and three of the venerable Oki Data test, i.e., whether a respondent’s website sells only the trademarked goods or services and not those of a complainant’s competitors or other third-parties, and whether it accurately discloses the registrant’s relationship (or lack thereof) with the trademark owner. With reference to the second prong of the test, the Panel noted that “on balance, the Respondent’s references to providing support for other non-Complainant engines do not constitute bait-and-switch selling or an attempt to divert Internet users in a manner contrary to the Complainant’s interests.” And, with regard to the third prong, it held that “[t]he absence of a disclaimer on the Respondent’s website does not automatically result in a failure to meet the Oki Data test. The overall presentation of the website, including the clear identification of the service provider and the credentials displayed, can still be considered in determining whether the Respondent’s use is fair and non-confusing under the Oki Dataframework.”
The decision cites two earlier denied cases which involved Respondents who performed repair work on the Complainants’ products and used their marks in the disputed domain names. Fluke Corporation v. Erwin Bryson / fixmyfluke / Nelson Bryson, FA 1988399 (Forum July 6, 2022) (flukerepair.com and fixmyfluke.com). (Disclosure: the author of this commentary was the Panel Chair in this decision.), and Sub-Zero, Inc. v. Adrian Loughlin / Factor Appliance, FA 1927129 (Forum Feb. 23, 2021) (centricsubzerorepair.com). Both of these decisions, like Textron, list the six factors mentioned in Section 2.5.2 of the WIPO Overview 3.0 with the Textron Panel explaining that, “in the absence of an effective disclaimer, it is necessary to consider the broader facts and circumstances, including the content of the associated website.”
Similarly, in Law School Admission Council, Inc. v. Fischel Bensinger, FA 2054973 (Forum Aug. 31, 2023) a claim was denied against the domain name lsatbyfisch.com. The Panel noted that, “[w]hile the Respondent’s Website does not contain an express disclaimer that Respondent is not the Complainant, there is nothing in the Respondent’s Website that would imply to a visitor that Respondent is anything other than what he is, namely an individual offering a LSAT preparation service independent of Complainant.” Further, “Respondent is offering LSAT test preparation services under his own nickname. The Respondent is not seeking to pass off as the Complainant or as associated with the Complainant as there is nothing on the Respondent’s Website that suggests an affiliation with the Complainant beyond the fact that Respondent offers services connected with Complainant’s LSAT; indeed it would be difficult to identify how Respondent could describe or advertise his LSAT test preparation services absent any use of the term ‘LSAT’. The Respondent is not trying to corner the market in domain names to deprive Complainant of the opportunity to reflect its mark in a domain name.”
Finally, returning to the subject of third-party links, in Thor Tech Inc. v. Eric Kline, D2023-4275(WIPO Feb. 5, 2024), a majority of the Panel found that this is a “close call” but that Respondent’s use of the domain name airstreammarketplace.com did not meet the third part of the Oki Data test. Yet, with respect to the second part, it “rejects Complainant’s contention that Respondent’s links to third party websites bars reliance on Oki Data. None of the challenged links lead to Complainant’s competitors. Some of the links lead to vendors offering accessories (or art) relating to AIRSTREAM trailers and others lead to general services useful to all RV travelers. Incidental links to third parties like these who do not compete with Complainant do not violate the [second] Oki Data requirement…” The claim was ultimately denied based on finding no bad faith under the totality of the circumstances.
All of this counsels towards a holistic and nuanced approach to nominative fair use situations in which Panels are wise to view the entirety of the circumstances and determine whether a respondent is operating within the bounds of routine and accepted commerce or if it is seeking to game the system and profit from an association with the complainant’s mark in such a way that exceeds the scope of the defense or is somehow corrosive to the brand’s reputation. This approach has been adopted in Section 2.3of the UDRP Perspectives on Recent Jurisprudence. Where the intent is a bait-and-switch or to mislead website visitors by leveraging the value of a complainant’s mark, the nominative use is likely not fair and Panels should sanction such respondents accordingly. However, where situations like those presented above arise, care must be taken to avoid doing an injustice to a legitimate business operator who may be within their rights to use a mark as a fair vehicle for informing potential customers of their offerings.
Did the Puerto Rican Respondent Register ‘Otoki’ 25 Years Ago to Target South Korean OTTOGI?
Ottogi Corporation v. Elvis Ortiz, ADNDRC (Seoul) Case No.: KR-2400261
<otoki .com>
Panelist: Mr. Doug Jay LEE
Brief Facts: The Complainant is a food company in the Republic of Korea that was established in May 1969. The Complainant was initially founded as Punglim Sangsa, changed its name to Ottogi Food Industries in 1973, then to Ottogi Foods Co., Ltd., in 1980, and finally to its current name, Ottogi Co., Ltd., in 1996. The Complainant holds numerous trademark rights that include “Ottogi” (lowercase) or “OTTOGI” (uppercase) in Korea and has also secured multiple trademark rights for “OTTOGI” in approximately 60 other countries, including the United States, Denmark, Brazil, Mexico, Japan, Vietnam, and the Philippines. The Complainant asserts that the “OTTOGI” mark has become prominently well-known and is associated exclusively with the Complainant and no one else. The Respondent registered the disputed Domain Name on March 24, 1999, and does not resolve to an active website.
The Complainant alleges that the disputed Domain Name currently leads to an inactive site, which constitutes bad faith use and is not a bona fide offering of goods or services. Furthermore, the website associated with the disputed Domain Name displays a message offering it for sale at the excessive price of US$5,000, which is far above the registration fee. This is clearly a typosquatted domain name, the use of which inherently indicates a bad-faith registration. The Respondent contends that the disputed Domain Name differs significantly from the Complainant’s mark “Ottogi.” and his intent in registering the disputed Domain Name was to create a unique web presence (unrelated to the Complainant) primarily for use in Puerto Rico, where the main language is Spanish. There is no evidence that the Respondent was aware of the Complainant’s trademarks when he registered the disputed Domain Name.
Held: The Panel finds that the disputed Domain Name was not registered for legitimate purposes, such as providing goods or services or for non-commercial use. This is evident from the fact that the Respondent has not used the disputed Domain Name for over 25 years since its registration and is only displaying a message offering it for sale. Thus, the Panel finds that the Respondent is not making bona fide or non-commercial fair use of the disputed Domain Name. The Respondent argues that he has maintained a legitimate interest in the disputed Domain Name since its registration, however, the Respondent has not provided any evidence to support his arguments. The Panel further finds that the Respondent’s general offer to sell the disputed Domain Name, which is confusingly similar to the Complainant’s well-known mark “OTTOGI,” at the excessive price of US $5,000 – far exceeding the out-of-pocket registration fee – constitutes bad faith registration and use.
The Panel agrees that the passive holding of a domain name does not necessarily prevent a finding that the domain name is being used in bad faith under Paragraph 4(a)(iii) of the Policy, given that the Complainant’s “OTTOGI” marks and its Korean phonetic equivalent are prominently well-known and famous. Moreover, the Respondent claims the disputed Domain Name was registered in good faith for a legitimate website and constitutes fair use, but offers to sell the disputed Domain Name at a price far exceeding the out-of-pocket registration costs. Finally, the Panel infers that due to the prominent fame of the Complainant’s marks, the Respondent had knowledge of the Complainant’s rights in the “OTTOGI” mark when registering the disputed Domain Name, thereby supporting a finding of bad faith registration under Paragraph 4(a)(iii) of the Policy.
Transfer
Complainants’ Counsel: Ho-Hyun Nahm, Mi-Jeong LEE (BARUN IP&LAW)
Respondents’ Counsel: No Response
Comment by ICA General Counsel, Zak Muscovitch: I checked DomainTools and the Disputed Domain Name was in fact registered by the Respondent at least as early as 2001 (1999 as stated in the decision), with an address in Puerto Rico, United States. “Otoki” appears to be a fairly common first name and surname, particularly in Japan and in Nigeria, as appears in a search of people with that name on Facebook as well as from a Google search. The Complainant’s trademark is OTTOGI, but notably just days ago, there was an announcement that the South Korean food company “is set to change its English name from OTTOG to OTOKI as part of a comprehensive rebranding effort aimed at modernizing its brand and enhancing its global market presence. The company has already begun the process of applying for a trademark for the new name, which is expected to resolve pronunciation issues and make the brand more recognizable and approachable for international consumer.”
It is in general, essential to a finding of bad faith registration and use under the Policy, that a Respondent must have targeted Complainant or its trademark, or at least had Complainant in mind, when it registered the disputed domain name (See for example, Ancien Restaurant Chartier v. Tucows.com Co, D2008-0272). So what evidence was there that the Puerto Rican individual registered Otoki.com 25 years ago to take advantage of the South Korean trademark for OTTOGI? From the decision, it appears that “the Respondent’s general offer to sell the Disputed Domain Name, which is confusingly similar to the Complainant’s well-known mark “OTTOGI”, at the excessive price of US $5,000 – far exceeding the out-of-pocket registration fee – constitutes bad faith registration and use”. In other words, the Panelist implicitly found that the general offer at $5,000 on the associated website, meant that the Respondent registered the Domain Name with awareness of the Complainant and with the intent to target the Complainant? It seems to me, respectfully, to be a rather farfetched conclusion in the absence of any evidence (at least as referenced in the decision) of why the Puerto Rican Respondent would have registered Otoki in order to take advantage of a South Korean company going by OTTOGI, without having once used the Domain Name in any infringing manner nor even once solicited the Complainant trademark owner.
This decision in my view highlights the importance of a Respondent retaining qualified counsel, particularly where as here, the Complainant’s counsel is an experienced UDRP Panelist, as this appears to have been a very defensible case.
The Proper Application of the Telstra Test
Chocoladefabriken Lindt & Sprüngli AG v. gabriel Araujo, CAC-UDRP-106723
<quizzlindt .com>
Panelist: Ms. Ivett Paulovics
Brief Facts: The Complainant, founded in 1845, is a well-known chocolate maker based in Switzerland. As a leader in the market of premium quality chocolate, the Complainant has 11 production sites in Europe and the United States, and its more than 2,500 products are distributed via distributors in over 120 countries. The Complainant has over 14 thousand employees and made a revenue of CHF 5.2 billion in 2023. It owns several trademarks registered worldwide, consisting of the distinctive term “LINDT”, including a German trademark (27/09/1906), a United States trademark (09/07/1912); and an international trademark (02/03/1959). The disputed Domain Name was registered on 17 March 2024 by an individual residing in Brazil and resolves to a parking page. The Complainant contends that the requirements of the Policy have been met and that the disputed Domain Name should be transferred to it. No administratively compliant Response has been filed.
Held: The disputed Domain Name incorporates the Complainant’s well-known trademark, plus the typo-squatted version of the generic and descriptive term “QUIZ” (“QUIZZ”), and, thus is confusingly similar to the LINDT Trademark. UDRP panels have found that domain names identical or confusingly similar to a complainant’s trademark carry a high risk of implied affiliation. Thus, UDRP panels have largely held that such composition cannot constitute fair use. Moreover, since the disputed Domain Name is inactive, there is no evidence that, before any notice to the Respondent of the dispute, the Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Further given the distinctiveness and reputation of the Complainant’s prior mark, acquired during its nearly 180-year history and confirmed also by several UDRP decisions, it is inconceivable that the Respondent could have registered the disputed Domain Name for a mere chance without actual knowledge of the Complainant’s rights in such mark and the intention to exploit such reputation by diverting traffic away from the Complainant’s website.
Furthermore, the disputed Domain Name does not resolve to any active website. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see in particular Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003). The following factors were considered by the Panel when applying the passive holding doctrine in the present case: (i) the degree of distinctiveness and/or reputation of the Complainant’s LINDT Trademark; (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use; (iii) the Respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the disputed Domain Name may be put. Taking into account all circumstances of this case, the Panel finds that it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate. The Complainant has, therefore, discharged the burden of proof to show that the disputed Domain Name has been registered and is being used in bad faith.
Transfer
Complainants’ Counsel: SILKA AB
Respondents’ Counsel: No Response
Comment by ICA General Counsel, Zak Muscovitch: The Telstra test may be misapplied more often than it is correctly applied, but this is an excellent example of correct application. As you can see, the Panel didn’t just mistakenly equate Telstra with simple passive holding or non-use, but rather identified and applied the specific, required elements of the Telstra test, and in particular, the big ones, namely, the fame of the Complainant’s mark and the implausibility of any good faith use to which the disputed Domain Name may be put.
As discussed in UDRP Perspectives at Section 3.7:
“Passive holding is a concept is a product of the Telstra case and for it to apply, the Telstra test must be met. Crucially, the Telstra test requires a strong reputation of the mark and the impossibility of conceiving any plausible or actual good faith use of the particular domain name. Such a determination would generally arise only where the disputed domain name corresponds to a particularly distinctive and famous mark. Where a domain name is unused, it may be considered to be “passively held” but that alone does not amount to bad faith use absent meeting the narrow requirements of the Telstra test.”
Panels when considering passive holding, must contemplate whether there is any plausible good faith use for the disputed domain name. Where there is, the Telstra test will not have been met and passive holding will not amount to bad faith use.
See also, “The Clash of Trademarks and Domain Names on the Internet” by Gerald M. Levine, 2024, at Page 459:
“The Panel in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) held that “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is, to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” The Panel construed the term “use” to include passive holding when it is “not possible to conceive of any plausible actual or contemplated active use of the domain name by respondent that would not be illegitimate.” The “not possible to conceive” test presupposes the mark is famous or well-known, for if not either and the domain name is constructed from the common lexicon, it is certainly possible to conceive of other uses.” [emphasis added]
Camping World v. WildCampersWorld .com
CWI, LLC v. Josue ALBERTO ESTEBAN, Truewilds LLC, WIPO Case No. D2024-2435
<wildcampersworld .com>
Panelist: Mr. Flip Jan Claude Petillion
Brief Facts: The Complainant is an American company operating in the recreational vehicle business. It owns several trademarks for CAMPING WORLD including US word mark (May 27, 2014); US figurative marks (May 27, 2014, and May 20, 2014). The disputed Domain Name was registered on January 6, 2024. It previously resolved to an automatically generated template website but currently resolves to an inaccessible website.
The Complainant alleges that the disputed Domain Name suggests a false affiliation with the Complainant and cannot be considered fair use of the disputed Domain Name and that the Respondent registered and is using the disputed Domain Name to generate traffic to its website and receive commercial gain for its business.
The Respondent contends that there are no similarities between the disputed Domain Name and the Respondent’s marks. The mere presence of a common word, such as “world” in this case, is not enough to establish a likelihood of confusion. The Respondent further contends that there are no similarities between the website linked to the disputed Domain Name and the Complainant’s website. The content of the website linked to the disputed Domain Name is generated automatically by the web hosting engine.
Held: The Panel does not find that the evidence demonstrates that the Respondent registered the Domain Name to target and exploit the Complainant’s CAMPING WORLD mark. While the Complainant has established its rights in the CAMPING WORLD marks, the (textual components of) CAMPING WORLD marks solely comprises dictionary words. Additionally, the CAMPING WORLD trademark registration mentions that “no claim is made to the exclusive right to use “camping” apart from the mark as shown.” The disputed Domain Name strictly speaking has only one word in common with the Complainant’s mark, as it consists of the combined dictionary words “wild”, “campers” (which the Panel notes is different than “camping”), and “world”. The Panel notes that the disputed Domain Name was used to resolve an automatically generated template website displaying images of recreational vehicles (campers).
In the Panel’s view, the above circumstances do not by themselves prove that the Respondent targeted the Complainant and its CAMPING WORLD trademark. The disputed Domain Name solely consists of a series of terms which bear some level of similarity to but do not sufficiently correspond to the Complainant’s mark to conclude targeting the said mark is the only obvious one, and the images displayed on the linked website relate to the aggregate dictionary meaning of these terms. Furthermore, the circumstances of the record do not indicate that the Respondent knew or should be deemed to have had notice of the Complainant’s rights in the CAMPING WORLD trademark when it registered the disputed Domain Name. The Complainant’s CAMPING WORLD trademarks may benefit from a certain notoriety in the US; however, according to the Registrar’s Verification, the Respondent is located in Spain. Finally, the mere fact that the disputed Domain Name is not currently associated with an active website is not in itself evidence of bad faith.
Complaint Denied
Complainants’ Counsel: Neal & McDevitt, US
Respondents’ Counsel: Truewilds LLC, Spain
Case Comment by ICA General Counsel, Zak Muscovitch: This decision strikes me as a common-sense approach to the factual circumstances. Can it be said given the limited evidence and the factual circumstances, that the Respondent likely targeted the Complainant? As the Panelist pointed out, “the disputed Domain Name solely consists of a series of terms which bear some level of similarity to but do not sufficiently correspond to the Complainant’s mark to conclude targeting the said mark is the only obvious one”. I agree. In the absence of some compelling evidence that the Respondent certainly targeted the Complainant, particularly given the Complainant’s geographically limited notoriety, it seems a bit farfetched to assume that the Respondent would have added on WILD at the beginning of the Domain Name to target the Complainant.
Did the Respondent Acquire the Domain Name in Anticipation of Trademark Rights?
Gigapay Sweden AB, reg. no. 559070-3616 v. gigapay, WIPO Case No. D2024-2028
<gigapay .com>
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainant, incorporated on December 3, 2018, is a provider of payment services available in over 80 countries. The parent company of the Complainant owns trademark registrations to GIGAPAY in the European Union (November 19, 2019), and in the United Kingdom (November 19, 2019). The Complainant also owns the domain names <gigapay .se> (November 5, 2018), and <gigapay .co> (August 12, 2019). The disputed Domain Name was registered on January 16, 2019, by the Korean Respondent and currently does not lead to a website with content. The Complainant asserts that the Respondent is not making any use of the disputed Domain Name, nor are there any demonstrable plans to use the disputed Domain Name and that there have been at least seven UDRP decisions made against the Respondent, indicating a pattern of bad faith conduct.
The Complainant further contends that the Respondent acquired the disputed Domain Name primarily to sell, rent, or otherwise transfer it to the Complainant or a competitor for valuable consideration in excess of documented out-of-pocket costs. The Complainant had discussions with the previous owner about purchasing the Domain Name for under $10,000 before learning that it was sold to the Respondent. When the Complainant attempted to buy the Domain Name in 2023 and 2024, the Respondent countered with a price of $180,000. The Complainant contends that the large discrepancy in the asking price shows that the payment that the Respondent request exceeds any possible out-of-pocket costs for acquiring and maintaining the disputed Domain Name and that it is evidence of bad faith.
The Respondent contends that it is in the business of buying and selling domain names and that there are companies in Korea using “Gigapay” name which is a combination of the terms “giga” meaning 1 billion and “pay” meaning payment. The Respondent further contends that it registered the disputed Domain Name even before the Complainant registered its trademarks and that registering a domain name for resale is not necessarily registration in bad faith. Finally, the Respondent points out that it registered the disputed Domain Name and other domain names such as <soutpay .com>, <expopay .com> and <snspay .com>, anticipating the growth in the payment service industry.
Held: Normally, panels will not find bad faith on the part of the respondent where the registration of the domain name took place before the complainant acquired its trademark rights, but they have in certain limited circumstances where the facts establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights, see WIPO Overview 3.0, section 3.8.2. Herein, the disputed Domain Name was registered on January 6, 2019, and the Complainant’s trademark applications were filed only on August 5, 2019. But according to the evidence before the Panel, the Complainant registered and started using social media accounts under the name “Gigapay”, in November 2018, and the same month launched a marketing campaign on Instagram. Further, the Complainant registered the domain name <gigapay .se> on November 5, 2018, and launched its website at the disputed Domain Name around December 17, 2018. (Although the Respondent argues that the disputed Domain Name was not used until 2021, pointing to archived pages on the Wayback Machine, the Wayback Machine does not conclusively contain all webpages for all domain names).
The panel finds, that given such announcement and marketing activities, it is likely that the Respondent, who trades in domain names as a business, discovered this newly formed business and registered the disputed Domain Name to benefit from the association with the Complainant or more likely by hoping to sell it to the Complainant. In addition, the Respondent apparently purchased the disputed Domain Name from the previous owner directly, knowing the existence of, and targeting, the Complainant. Further, Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the failure of the Respondent to provide any evidence of actual or contemplated good faith use and the implausibility of any good faith use to which the disputed Domain Name may be put and finds that in the circumstances of this case, the passive holding of the disputed Domain Name does not prevent a finding of bad faith under the Policy.
Transfer
Complainants’ Counsel: Advokatbyrån Gulliksson AB, Sweden.
Respondents’ Counsel: No Response
Comment by ICA General Counsel, Zak Muscovitch: For an interesting take on the decision, see the blog post about this case written by Sten Lilliestrom of NextVenture.