Panel finds three letter domain name was not registered and used in bad faith

UDRP complainant manufactures cameras used in science and industry, and claimed to be the sole user of the letters “PCO” in commerce. The respondent acquired the disputed domain name in 2008 and never established an active website there. The UDRP Panel refused to transfer the disputed domain name to the complainant, finding that the respondent did not regsiter and use the disputed domain name in bad faith.

In making this finding, the Panel observed:

  • Contrary to the complainant’s assertions that it was the exclusive user of the letters PCO, it is in fact common three-letter combination.
  • A number of UDRP cases about three-letter domain names show that such terms are generally in widespread use as acronyms and it is conceivable that they are registered for bona fide purposes.
  • The complainant claimed to have a stong worldwide reputation but actually operated only in a niche, so there was nothing to support the complainant’s claim that the respondent was “obviously” aware of the complainant when it acquired the disputed domain name.
  • The complainant overstated its case when it claimed that there was no conceivable good faith use to which the disputed domain name could be put.

For these reasons, despite the fact that the respondent did not reply in the action, the Panel denied the complaint.

PCO AG v. Register4Less Privacy Advocate, 3501256 Canada, Inc., WIPO Case No. D2017-1778 (October 30, 2017)

About the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

UDRP claim failed on bad faith element where domain name registered six years prior to first trademark use

In the case of inMusic Brands, Inc. v. cypack.com / Choi Yun Gul, a single member WIPO panel denied the Complainant’s request to have the domain name <inmusic.com> transferred because the Complainant failed to establish the third UDRP element, namely, that the Respondent registered the disputed domain name in bad faith.

The Complainant is a music technology and consumer electronics brand based in the United States, and has used the trademark INMUSIC since 2007. It registered the mark with the USPTO in 2012. Respondent registered the disputed domain name in 2001. It uses the disputed domain name to publish meditation-themed imagery.

The Panel denied the Complaint because the Complainant failed to demonstrate the the Respondent registered and used the disputed domain name in bad faith. Since Complainant’s trademark rights did not exist at the time the disputed domain name was registered, it could not have been done in bad faith.

inMusic Brands, Inc. v. cypack.com / Choi Yun Gul, WIPO Case No. D2017-1376 (October 19, 2017)

 


About the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Confusing UDRP decision regarding proof required for showing of no rights or legitimate interests

In the case of BroadPath Healthcare Solutions / Jerry Robertson v. Maria Piro / Nova Nordisk, a one-member NAF Panel held that the Complainant failed to meet the second UDRP element, namely, it failed to establish that the Respondent lacked rights or legitimate interests in the disputed domain name <broad-path.org>.

The decision is confusing because the opinion appears to be self-contradictory. The Panel noted that the Complainant alleged (1) the Respondent is not commonly known by the disputed domain name, (2) that the Complainant had not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s mark, and (3) that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the Complainant argued, the Respondent was attempting to pass off as the Complainant to facilitate fraud on Internet users.

Ordinarily, in an uncontested UDRP matter (such as this one, where the Respondent did not file a response), such allegations would be enough to establish a prima facie showing on the second UDRP element. It is unclear what more the Panel expected to see in terms of proof of lack of rights or legitimate interests. The prima facie showing requirement is used in light of the difficulty of proving a negative, which is what the second UDRP element calls for.

In any event, despite the Complainant’s allegations listed in the decision, the Panel concluded, in summary fashion without explanation, that the Complainant failed to make a legally cognizable argument under this second UDRP element. For this reason, the Panel did not go on to analyze the bad faith element, but instead denied the Complaint.

BroadPath Healthcare Solutions / Jerry Robertson v. Maria Piro / Nova Nordisk, Claim Number: FA1709001748692 (NAF October 31, 2017)

Reverse domain name hijacking found where Complainant knew but did not disclose geographic significance of mark

In the case of Oy Vallila Interior Ab v. Linkz Internet Services, a 3-member WIPO Panel denied the Complainant’s efforts to have the disputed domain name <vallila.com> transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith.

The Complainant is in the business of providing fabrics and interior design services, and claimed trademark rights in its registered mark VALLILA in the European Union. The Respondent registered the disputed domain name in 2005 and used it to establish a website that contained sponsored links. In response to an anonymous inquiry made on behalf of the Complainant, the Respondent offered to sell the disputed domain name for USD $32,000.

The Panel found that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith. Vallila is the name of a geographic location, namely, an inner suburb of Helsinki, Finland. The Complainant did not disclose in its complaint that its mark was also a place name, though correspondence introduced by the Respondent showed the Complainant had that knowledge.

There was no evidence the disputed domain name was used to take advantage of the trademark significance of the Complainant’s disputed domain name. The web page at the disputed domain name contained sponsored links – but only about a third of them referred to Finland. The Panel observed that in an ordinary case, that amount of connection to the place name would not be enough to show geographic use of the domain name. But the Complainant did not advance anything sufficiently concrete to link the Respondent with specific knowledge of the Complainaint. Even if the Respondent did have such knowledge, it may well also have had knowledge of the geographic significance of the term Vallila and the many other businesses operating there which have Vallila in their name. The price sought for the disputed domain name, therefore, could not necessarily be attributed to the disputed domain name’s resemblance to the Complainant’s trademark.

The Panel went on to find that the Complainant brought the UDRP proceeding in bad faith. The Complainant had argued that the only possible reason for registering the disputed domain name was to take advantage of its significance as the Complainant’s trademark. Moreover, the Complainant relied on the communication from the Respondent’s broker offering the disputed domain name for sale for USD $32,000 as evidence of both registration and use in bad faith. But the Panel found that failure to disclose the geographic significance of the name had the potential to mislead the Panel in a way which could be, and in this case was, highly material to the Panel’s decision. The panel found there to be reverse domain name hijacking.

Oy Vallila Interior Ab v. Linkz Internet Services, WIPO Case No. D2017-1458


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

If you want to win a UDRP proceeding, it helps to actually argue UDRP elements

A NAF single member panel recently denied the UDRP complaint brought over the disputed domain names <insuladd.com> and <insuladdglobal.com>. The Panel noted that the Complainant did not make any legal arguments within the Complaint itself but instead asserted that the Respondent illegally hacked into the Complainant’s network and stole the disputed domain names from the Complainant. Complainant asserted that it was ready and willing to file a claim in federal court if unsuccessful in the UDRP proceeding.

Though the decision does not provide a lot of detail, it was clear there is a long history between the parties. The Complainant submitted as an attachment a draft federal complaint in which it argued various legal points including breach of contract and breach of promissory note.

The Panel simply had no basis on which to grant relief to the Complainant. Though it was able to sift through the filing to find the domain names confusingly similar to the Complainant’s trademark rights, on the rights or legitimate interests and bad faith prongs, the Panel wrote that the “Complainant does not make any legal contentions with respect to [this element of the UDRP].”

The takeaway from this case is for Complainants to not waste their resources filing UDRP cases that do not even make arguments under the UDRP. That will save all parties involved the time needed to toss out a non-case.

Tech Traders LLC / David Page v. Insuladd Environmental Products, NAF Claim Number: FA1707001738720 (August 3, 2017)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

No bad faith where respondent rejected complainant’s offer to purchase disputed domain names

In the case of Pro Natura Gesellschaft für Gesunde Emahrung mbH v. Mike Pollard , a WIPO 3-member Panel denied the Complainant’s efforts to have the domain names <fructaid.com>,  <fructaid.net>, and <fructaid.org> transferred because the Complainant did not prove that the Respondent registered and used the disputed domain names in bad faith.

The Complainant is in the business of marketing indigestion relief pills, and claimed trademark rights in its mark FRUCTAID, which it registered in Germany in 2006. The Respondent registered the disputed domain names in November 2012 and does not make use of them with active websites. Respondent claimed to be involved in product development, but that such development is many years from being complete.

The Panel found that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain names in bad faith because:

  • The Respondent never offered for sale the disputed domain names. The Complainant offered $1,500 to buy the three disputed domain names and the ondent rejected that offer. But that alone was not enough to consider that the disputed domain names were registered with the aim of selling them to the Complainant.
  • The disputed domain names were not in use. So there was no evidence of use of the disputed domain names to attempt to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion.
  • There did not appear to be any pattern or history indicating bad faith registration of domain names on behalf of the Respondent (or his company) nor was there any evidence that the disputed domain names were registered for the purpose of disrupting the business of a competitor.
  • The evidence did not show that the Respondent knew or should have known that the disputed domain names reflected the Complainant’s mark. The Panel found Respondent’s claim to not know the Complainant plausible.

Pro Natura Gesellschaft für Gesunde Emahrung mbH v. Mike Pollard, WIPO Case No. D2016-2531


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

UDRP complainant denied relief where disputed domain name also contained competitor’s trademark

An NAF panel denied relief to industrial manufacturer NSK (owner of the same mark) over the disputed domain name <skfnsk.com>. The panel found that the complainant did not meet the first UDRP element – the disputed domain name was not confusingly similar to the complainant’s NSK mark.

The case serves as an example of a panel departing from the ordinary determination that a disputed domain name incorporating the complainant’s mark as a whole will suffice to demonstrate confusing similarity.

The distinguishing fact in this case was that the other portion of the mark (SKF) is the trademark of one of the complainant’s competitors. The panel cited two other cases where complainants were denied relief in UDRP actions over disputed domain names containing both the complainant’s mark and that of another company. In NIKE, Inc. and Nike Innovate, C.V. v. Mattia Lumini and Yykk Snc, NAF Case No. FA1679233 (July 15, 2016) the panel denied relief to Nike over the disputed domain name <nikegoogle.com>. Similarly, in Dell Inc. v. Ionel Adrian Nicolae, NAF Case No. FA1683104 (August 22, 2016) the panel held that “Nvidia Corp. has not been joined as a Complainant in this matter and there is no nexus available through which Complainant can claim to have rights to the transfer of the <alienware-nvidia.xyz>”

NSK LTD. v. Li shuo, NAF Case No. 1683104 (February 16, 2017)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

No bad faith where there was no evidence Respondent targeted Complainant’s mark

In the case of Bagley Argentina S.A. v. Anything.com Ltd., a three-member WIPO Panel denied the Complainant’s efforts to have the domain name <bagley.com> transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith.

The Complainant is based in Argentina and has been in the business of selling biscuits and crackers since 1864. It claimed rights in its mark BAGLEY which it has registered in several countries, though most of those registrations were acquired after 2002.  The Respondent registered the disputed domain name on September 27, 1999, and used the disputed domain name to establish a website which pay-per-click links.

The Panel found that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith. The Respondent denied it knew anything about the Complainant’s mark when it registered the disputed domain name. The Panel, for a number of reasons, sided with the Respondent. Among the reasons for the Panel’s decision was the lack of any showing that the Respondent had attempted to target the Complainant or the Complainant’s trademark.


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

No bad faith where US-born Japanese entrepreneur plausibly denied knowing of Swiss Complainant’s mark

In the case of ETH Zürich (Eidgenössische Technische Hochschule Zürich v. Mitsuhiro Suwa, a three member WIPO Panel denied the Complainant’s efforts to have the domain name transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith.

The Complainant is one of the leading international universities for technology and the natural sciences. Located in Switzerland, the Complainant has been using the mark ETH for more than 100 years. The Respondent, an American born entrepreneur living in Japan, purchased the disputed domain name in 2014. He claimed that he acquired the disputed domain name for use by his company in potential design projects.

The Panel found that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.

While the Panel did not doubt that the Complainant is an elite university, its renown as ETH particularly in the United States of America and Japan (the two countries in which Respondent is known to have lived) had not been established in this record such that the Panel would find Respondent’s denial of any knowledge of the Complainant implausible. Respondent is not an engineer and does not speak German. These two facts, coupled with the lack of evidence put forth by Complainant about the fame of the ETH mark, supported Respondent’s denial of knowledge of the mark. Moreover, Respondent’s registration of several other domain names tended to corroborate the Respondent’s claim that he acquired the disputed domain name in part because it is short and therefore attractive to potential clients or business partners.

ETH Zürich (Eidgenössische Technische Hochschule Zürich v. Mitsuhiro Suwa, WIPO Case No. D2015-2354 (April 29, 2016)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Complainant failed to show trademark rights in mark comprising disputed domain name

In the case of Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd, a WIPO Panel denied the Complainant’s efforts to have the domain name <banskoexpresstransfer.com> transferred because the Complainant failed to prove that the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant had rights.

The Complainant runs an online business that allows passengers to book and pay for transfers from airports in Bulgaria and Greece to the Bulgarian ski resort of Bansko, and claimed common law trademark rights in the mark BANKSO EXPRESS. The Panel found that the Complainant failed on the first UDRP element — that the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant had rights — because the Complainant did not provide sufficient evidence that the mark BANKSO EXPRESS, a descriptive term, had acquired secondary meaning.

The Complainant did not provide information such as advertising figures to show the reach or extent of his business, the income derived from the trade that he conducted under the trademark BANSKO EXPRESS, or support from members of the public or persons involved in his trade to prove the existence of a secondary meaning associated with his trademark. Given the descriptive nature of the Complainant’s business name, the Panel found this to be a high hurdle to overcome.

In these circumstances, the Panel found that the Complainant failed to prove that the disputed domain name was identical or confusingly similar to a trademark or service mark in which the Complainant had rights, and for that reason the Complaint failed.

Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd. WIPO Case No. D2016-0306 (April 20, 2016)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Posts navigation

1 2 3 4