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.

UDRP complaint failed under second element where there was no evidence Respondent intended to profit from and exploit Complainant’s trademark

In the case of Mark Overbye v. Maurice Blank, Gekko.com B.V., a WIPO Panel denied the Complainant’s efforts to have the domain name <gekko.com> transferred because the Complainant failed to sustain its burden of establishing that the Respondent had no rights or legitimate interests in the disputed domain name.

The Complainant was in the business of manufacturing boats used for water sports such as waterskiing, wake boarding and wake surfing. It owned the registered U.S. trademark (issued in 1996) for an image of a type of lizard and the word “gekko”. The Respondent registered the disputed domain name in 2001, and at some point in the past used the disputed domain name to establish a site about European travel. The Complainant alleged that the Respondent was not using the disputed domain name for a valid ongoing business, but was “sitting on the [disputed domain name] since 2001 without any connection to any business or product”.

The Panel found that the Complainant failed on the second UDRP element — no rights or legitimate interests — because there was no evidence of circumstances indicating that the Respondent’s aim in registering the disputed domain name was to profit from and exploit the Complainant’s trademark. The Panel observed that the word element of the Complainant’s mark had a broader meaning than the use the Complainant was making of it, as it referred to a type of reptile. The Panel considered that normally a respondent has a right to register and use a domain name to attract internet traffic based on the appeal of commonly used descriptive or dictionary terms, unless there is some aim to wrongfully target the complainant’s mark. In this case, the Complainant did not provide any proof indicating that Respondent’s aim in registering the disputed domain name was to profit from and exploit Complainant’s trademark.

Mark Overbye v. Maurice Blank, Gekko.com B.V., WIPO Case No. D2016-0362 (April 15, 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.

Panel denies complaint where dispute between parties was outside scope of UDRP

In the case of BubbleMania and Company LA, LLC ® v. Caroline Dues / BubbleMania and Company Inc, an NAF Panel denied the Complainant’s efforts to have the domain name <bubblemaniaandcompany.com> transferred because the dispute between the parties involved contractual issues outside the scope of the UDRP.

The Complainant is in the business of providing entertainment services, including soap bubble, science themed performances for children. It bought the company from a previous owner, who had apparently hired the Respondent to register what became the disputed domain name. After the transaction, the Respondent refused to turn the disputed domain name over. This UDRP action followed.

The Panel made no findings under any of the three UDRP elements, instead dismissing the complaint on the preliminary issue of whether the dispute was within the scope of the UDRP. The Panel compared this case to an earlier case of Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), in which that panel stated:

A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.

In this case, that Panel found that the dispute contained questions of contractual interpretation, and thus fell outside the scope of the UDRP. Because the Panel found this matter fell outside the scope of the UDRP, it dismissed the complaint.

BubbleMania and Company LA, LLC ® v. Caroline Dues / BubbleMania and Company Inc, NAF Claim Number: FA1603001663923 (April 11, 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.

Questionable decision in UDRP case — Panel finds no bad faith even where Complainant’s trademark registration showed use in commerce prior to registration of domain name

In the case of Fiberstar, Inc. v. Merlin Kauffman, a three-member NAF Panel denied the Complainant’s efforts to have the domain name <fiberstar.com> transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith. The Panel’s decision is questionable, in that it apparently ignored evidence of the Complainant’s use of its mark prior to the date the Respondent registered the disputed domain name.

The Complainant is in the business of marketing citrus-based food ingredients, and claimed trademark rights in its mark FIBERSTAR, which it registered in the U.S. in 2006. The registration listed a date of first use in 2001. The Respondent registered the disputed domain name in 2002, and is in the Panel’s view, “a legitimate reseller of generic-word domain names.”

The panel found that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith. Apparently ignoring the alleged 2001 date of first use set forth in the Complainant’s registration certificate, the Panel found that the Complainant “provided little evidence that it possessed trademark rights in its FIBERSTAR mark when the disputed domain name was registered on March 27, 2002.” The Panel continues its analysis:

Complainant did not obtain a recognized trademark registration for its trademark until 2006, well after registration of the disputed domain name. Complainant could have possibly gained enforceable common law rights in its mark prior to the trademark registration, and Complainant does allude to its founding in 1997. However, Complainant has provided no evidence, in terms of notoriety, revenues, promotion, etc., to the Panel which might sustain a finding that Complainant had obtained common law rights in the FIBERSTAR mark prior to trademark registration in 2006, let alone prior to the disputed domain name registration in 2002. See Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS, D2008-1036 (WIPO Sept. 30, 2008) (“Relevant evidence of [common law rights] includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Mary’s Futons, Inc. v. Texas Intern’l Prop., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, numbers of customers. “).

Based on these considerations, the Panel found “no basis upon which to decide that the disputed domain name was registered with knowledge of Complainant’s rights in the mark and thus possibly in bad faith.” One is left to wonder why the alleged date of first use in the trademark registration — a fact which the Complainant would have asserted under penalty of perjury to the United States Patent Trademark Office and would have been subject to the scrutiny of a government examiner — did not establish a means by which the Respondent would have known of the Complainant’s rights.


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.

Gripe site owner prevails in UDRP action brought by company that allegedly rescinded offer to hire him

In the case of Capgemini North America, Inc. v. Randel Tomina, an NAF Panel denied the Complainant’s efforts to have the domain name <capgeminirecruiting.com> transferred because the Complainant failed to sustain its burden of establishing that the Respondent had no rights or legitimate interests in the disputed domain name, and because the disputed domain name was not registered and was not being used in bad faith.

The Complainant is an international provider of consulting, technology and outsourcing services and local professional services. The Respondent claims the Complainant rescinded an offer to hire him, and in September 2015 registered the disputed domain name for purposes of (according to the Respondent) warning others about the Complainant’s employment practices.

The Panel found that the Complainant failed on the second UDRP element — rights or legitimate interests — because the Respondent’s website qualified as a bona fide criticism site. There was no evidence, and the Complainant did not assert, that the Respondent’s site was a pretext for cybersquatting. For example, there was no evidence of an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. And the site indicated that it was “created to expose [the Complainant], a company that caused [the Respondent] over $100,000 in loses [sic].” Other language that had appeared on the site in the past included “Obviously, [the Respondent is] not affiliated with [the Complainant]. This is just an exposé site regarding [the Respondent’s] experience with [the Complainant] rescinding a job offer, effectively terminating [the Respondent’s] employment, without cause. If you’re looking for [the Complainant] you are in the wrong spot!”

Further the panel found that the Respondent did not register and use the disputed domain name in bad faith. The Panel found that the disputed domain name resolved to a legitimate gripe site. The Panel declined to hold that the Respondent registered the disputed domain name “primarily” for the purpose of disrupting the business of a “competitor,” under paragraph 4(b)(iii) of the UDRP. The facts did not support a determination that the Respondent competed with the Complainant in the business of providing consulting services and the evidence indicated that Respondent’s primary purpose in registering the disputed domain name was to inform third parties of his experience with the Complainant in connection with seeking employment. While Complainant contended that the Respondent registered and was using the domain name for leverage in obtaining a favorable settlement in his employment dispute with the Complainant, the site itself did not contain any mention that the Respondent was seeking compensation for his alleged losses and, as noted by the Complainant, Respondent, to date, had not filed a lawsuit in court.

Capgemini North America, Inc. v. Randel Tomina, NAF Claim Number FA1601001658191 (April 11, 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.

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