Complaint failed on bad faith element where there was no evidence Respondent knew of Complainant’s mark

The Complainant’s use of its trademark before the Respondent registered the disputed domain name was not enough in and of itself to show bad faith at time of registration.

In the case of Uline, Inc. v. Hulmiho, a WIPO Panel denied the Complaint seeking transfer of the domain name <uline.com>. It held that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.

Unlike many UDRP cases which fail on the bad faith element, the Complainant in this case introduced evidence that it began using using its mark prior to the time when the Respondent registered the domain name. But that in and of itself was not enough in the Panel’s mind to demonstrate bad faith use and registration.

The Panel found no evidence that the Respondent had the Complainant in mind when  it registered the disputed domain name. Further, that fact that the disputed domain name appeared to be up for sale at a price likely exceeding the Respondent’s out-of-pocket costs in registering it was of no consequence if the Respondent did not have the Complainant in mind at the time.

And the Panel rejected the Complainant’s argument under Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 that non-use of the domain name showed registration in bad faith. The panel in Telstra concluded that no lawful use could have been made of the domain name. But in this case, the Panel had insufficient information to come to that conclusion. The Panel had no information upon which to conclude that back in 1998 (when the disputed domain name was registered) the Complainant’s trade mark was sufficiently well-known to merit the inference that the Respondent was targeting the Complainant when it registered the disputed domain name.

Uline, Inc. v. Hulmiho Ukolen, WIPO Case No. D2016-0065 (March 13, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago 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.

Reverse domain name hijacking found where Respondent’s registration of domain name preceded Complainant’s trademark rights by 14 years

In the case of Dreamlines GmbH v. Darshinee Naidu / World News Inc, a WIPO Panel denied the Complainant’s efforts to have the domain name <dreamlines.com> transferred because the Respondent did not register the disputed domain name in bad faith. Moreover, the Panel found that the Complainant engaged in reverse domain name hijacking by bringing the complaint.

The Complainant began providing international travel agency services in 2011, and claimed trademark rights in its registered mark DREAMLINES. The disputed domain name was registered in 1997, and the Respondent presented evidence that the domain name was reconfigured in 2014 to resolve to a page that features a wingsuit video.

The Panel found that the Complainant failed to satisfy the third UDRP element (bad faith registration and use) because its earliest registered trademark post-dated the creation date of the disputed domain name by some fourteen years. And the Complainant itself was not incorporated until more than a decade following registration of the disputed domain name. The disputed domain name in this case could not have been registered in bad faith in 1997 even if a recent change in use had given rise to use in bad faith so long as there was an unbroken chain of registration (and the Panel found that there was an unbroken chain).

On the issue of reverse domain name hijacking, The Panel was satisfied that the Complainant must or at least ought to have appreciated at the outset that its complaint could not likely succeed. It entered a finding of reverse domain name hijacking in addition to finding against the Respondent.

Dreamlines GmbH v. Darshinee Naidu / World News Inc, WIPO Case No. D2016-0111 (March 8, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago 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 first word in domain name signaled Respondent’s intention to target parties other than Complainant

In the case of AXA SA v. Discover Domains, a WIPO Panel denied the Complainant’s efforts to have the domain name transferred because the Complainant failed to demonstrate the disputed domain name was used and registered in bad faith.

The Complainant provides business, insurance, financial and communications services, and first used its registered mark AXA in 1985. The Respondent used the disputed domain name to establish a website which, according to the Complainant’s evidence, featured pay-per-click links to offers of financial services, including the Complainant’s services.

The Panel found that the Complainant’s evidence of bad faith registration and use of the disputed domain name was simply too “slender”.

Prompted by what the Panel believed to be the “inherent improbability* of any Internet user starting with the word ‘dating’ in a search for the Complainant as a provider of insurance financial services only,” the Panel conducted its own search of the disputed domain name and observed something different than the evidence the Complainant submitted, namely, the Panel observed that all the PPC links on the Respondent’s website referred to dating services.

The Panel went on to conclude that use of the word “dating” as the first word in the disputed domain name showed a clear intention of the Respondent to target some activity entirely different than the Complainant’s provision of goods and servies. The Panel was also mindful of dating sites and which, in the Panel’s view, were more likely to have been the Respondent’s intended targets.

* The Panel’s decision used the word “probability” here, but one can only conclude that to be a typo, as the only sensible reading of the sentence requires the sentence to be “improbability”.

AXA SA v. Discover Domains, WIPO Case No. D2016-0033 (March 7, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago 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.

Unauthorized reseller of possible gray market goods had rights or legitimate interests in disputed domain name

The Panel denied the Complainant’s efforts to have the disputed domain name <plastidipsingapore.com> transferred, holding that under the analysis found in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903, the Respondent had rights or legitimate interests in the disputed domain name.

The WIPO Overview 2.0 distills the Oki Data test and instructs that:

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include [1] the actual offering of goods and services at issue, [2] the use of the site to sell only the trademarked goods, and [3] the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must [4] also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.

The web site at the disputed domain name in this case did not disclose the Respondent’s relation with the Complainant. That notwithstanding, the Panel was of the view that the dispositive element here was “that not only authorized but also unauthorized resellers may fall within [the] Oki Data principles.” As the Complainant stated, the Respondent did not have a direct relation with it. Therefore there was no relation between the Complainant and the Respondent that the Respondent should have disclosed on its web site.

The Complainant initially alleged that the Respondent was selling counterfeit goods, but retracted that allegation in an additional submission. What appeared to be the case, according to the Panel, was that the Respondent was selling genuine products that may or may not have been gray market goods. To the extent that this activity was legal, it was legitimate and could not be considered to be the sort of cybersquatting that the Policy was created to prevent.

Plasti Dip International, Inc. v. Yong Quek Peow, Case No. FA1601001658830 (Nat. Arb. Forum, Feb. 24, 2016)

Evan_BrownAbout the Author: Evan Brown is a Chicago 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 registration of domain name predated Complainant’s trademark rights

The Panel denied the Complainant’s efforts to have the domain name <dafea.com> transferred, finding no evidence that the Respondent registered or used the disputed domain name in bad faith.

The Complainant began providing services in the oil and gas industry in 2014. The Respondent registered the disputed domain name in 2011. The web page associated with the disputed domain name contained many sponsored links, but none of them referred to the Complainant or its business. The parties’ were not successful in negotiating a purchase and transfer of the disputed domain.

The Panel found in the Respondent’s favor, finding there was no evidence that the Complainant used its mark as a source identifier for goods or services – i.e., as a trademark – any time before the Respondent registered the disputed domain name. The Complainant admitted that it did not form its business until after the Respondent registered the disputed domain name. There was evidence that the Complainant’s managing director (Mr. Dafea) had given some speeches in 2012 or later, but that likewise was after the Respondent had registered the disputed domain name. Moreover, those presentations identified Mr. Dafea as a representative of some other company, not of the Complainant.

Dafea Limited v. Owner/Operator of Dafea.com / Ali Alsayyar, WIPO Case No. D2016-0158

Evan_BrownAbout the Author: Chicago technology and intellectual property attorney Evan Brown helps 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.

Pay-per-click links were enough to establish rights or legitimate interests in domain name

In the case of China Ready and Accredited Pty Ltd v. Warren Weitzman, Caramba LLC, the Complainant came up short in its quest to have the Panel transfer the disputed domain name <chinaready.com>. On the second UDRP element, the Panel found that the Complainant made a prima facie showing that the Respondent lacked rights or legitimate interests in the domain name. But the Respondent successfully met and overcame that prima facie case with evidence of its rights and legitimate interests.

Setting up pay-per-click links at a disputed domain name generally does not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. But this case fit into a relatively narrow set of circumstances where pay-per-click links at the disputed domain name do establish those rights and interests.

The 3-member Panel considered that the disputed domain name consisted of the common phrase “China Ready” and the pay-per-click links came within at least a generally understood meaning of the phrase, i.e. “ready for China”. Considering this against the background of the Respondent’s apparent business in advertising and domain monetizing services for others using numerous domain names over the years, and that there was no evidence of the Respondent intentionally targeting the Complainant or its business in using the disputed domain name, the Panel concluded that the Respondent had rights or legitimate interests in the disputed domain name.

The Panel went on to find that the Respondent engaged in reverse domain name hijacking. Because the Respondent registered the domain name before the Complainant established its trademark rights, in this case the Complainant “could never have prevailed.” The Panel found the complaint was brought in bad faith and was an abuse of the proceeding.

China Ready and Accredited Pty Ltd v. Warren Weitzman, Caramba LLC, WIPO Case No. D2015-2164

Complaint site operator had rights and legitimate interests in disputed domain name

The Panel in Titan Enterprises (Qid) Ply Ltd v. Dale Cross / Contact Privacy Inc decided in favor of the Respondent, finding that the Respondent’s registration and use of <bewareoftitangarages.com> for a site critical of the Complainant’s business did not run afoul of the second UDRP element. Specifically, the Panel found that the Respondent was making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the Complainant’s trade mark or service mark.

The Panel rejected the Complainant’s argument that although the disputed domain name was being used for a free speech purpose it was primarily a pretext for commercial advantage. There were no advertisements on the Respondent’s website, there was no evidence that the Respondent was a competitor of the Complainant, nor was there any evidence that the Respondent had operated this website for any commercial purpose. While the Respondent did solicit members of the public to provide information to participate in a legal action against the Complainant, there was no evidence that the Respondent was doing so for a commercial purpose. The fact that the Respondent may have advertised its site was not conclusive of a commercial intention, especially in the face of the operation of the site itself. The Panel rejected the Complainant’s submission, unsupported by evidence, that the Respondent’s conduct was likely to have been undertaken by a commercial competitor as speculative.

The Panel went on to find that the Respondent, in registering the disputed domain name using an appendage that indicated that it was critical of the Complainant, was not attempting to impersonate the Complainant or misleadingly divert Internet users. Rather, the Respondent was using the TITAN mark in the disputed domain name to identify the Complainant for the purpose of operating a website that criticized the Complainant. Such use is generally described as “fair use” of a trade mark.

Additionally, the Panel found unpersuasive the argument that the Respondent was tarnishing the TITAN mark. The mere fact that the Respondent’s website criticized the Complainant and used material that the Complainant considered to be misstatements or misrepresentations did not prove that tarnishment had occurred.

Titan Enterprises (Qid) Ply Ltd v. Dale Cross / Contact Privacy Inc, WIPO Case No. D2015-2062

No bad faith registration where the Respondent registered domain name for its descriptive qualities

The Panel denied the complaint seeking transfer of the domain name <pdfiller.com>, finding that the Complainant failed to establish that the Respondent registered the domain name in bad faith.

The Respondent registered the domain name on April 22, 2007, less than four months after the Complainant alleges that it began to use its PDFFILLER mark in commerce (January 1, 2007). This mark was not actually registered until October 2014, and hence until that date, the Complainant was relying entirely on common law rights.

Despite the fact that the Complainant asserted a U.S. trademark registration for its mark that included the January 1, 2007 date of first use, the Panel found that there was “absolutely nothing” in the record to prove that the Complainant made any actual use of the mark prior to April 22, 2007, much less such substantial use that one would lead one to conclude that the Respondent more likely than not had the Complainant’s (then) common law mark in mind when registering the domain name.

On the other hand, the Panel noted, there was a fair amount of evidence put forth in the response to suggest that the Respondent’s motives here, at least in terms of registering the domain name, were innocent. It appeared clear that, for several years prior to the Complainant’s alleged first use of the PDFFILLER mark as a source identifier for its PDF-related offerings, the Respondent was operating his own business, in a similar field of activity (essentially, ways to create, alter, and manipulate PDF documents). The record shows that some of the Respondent’s offerings included software allowing the user to add content to (i.e., fill in) PDF documents, including adding data to forms that were in PDF format.

The Panel found that to register a few domain names with “pdf” in them and redirect them to a main website where the Respondent features its PDF-manipulation offerings “hardly seem[ed] remarkable or untoward.” As the Respondent claimed, he registered the domain name for its descriptive, not distinctive, qualities. On the same day (April 22, 2007) as Respondent registered the domain name, he also registered a few other domain names containing “pdf” and a descriptive word. This fact, in the Panel’s mind, tended to corroborate the Respondent’s account of his motives here.

Without evidence that the  Respondent was aware of the Complainant’s mark on April 22, 2007, the Panel concluded there was no evidence of bad faith registration by Respondent.

PDFFiller, Inc. v. Chris Truxaw, d/b/a Red Software, WIPO Case No. D2015-2200

Respondent had rights or legitimate interests in domain name where it established site critical of Complainant

Respondent acquired the domain names <newmandenneypc.com> and <louisnewmanesq.com> to establish criticism websites. The Panel denied the Complaint, finding that the Complainant failed to establish the first and second elements under the UDRP.

As for the first element, the Panel found that the Complainant failed to establish secondary meaning of the marks comprising the disputed domain names. A screenshot of the Complainant’s website from 2010 showing the Complainant’s establishment, and a media article mentioning Complainant were not enough to demonstrate the marks had acquired distinctiveness.

The Panel further determined that the Complainant failed to make a prima facie showing that the Respondent lacked rights or legitimate interests in the disputed domain names. It found that the Respondent’s establishment of websites to criticize the Complainant was consistent with a noncommercial or fair use, and thus Respondent had rights or legitimate interests in the domain names.

 

Newman and Denney P.C. v. David Schorr, (NAF) Claim Number: FA1510001643577

 

Complainant failed to demonstrate unregistered trademark rights in UDRP action brought over blog name

In the case of VibrAlign, Inc. v. Armando Martinez / Ludeca, a 3-member Panel denied the complaint where Complainant failed to demonstrate any trademark rights in the expression “thealignmentblog.com”. Because the Complainant failed on this first element of the UDRP, the Panel did not consider the remaining two elements, i.e. rights/legitimate interests or bad faith use and registration.

The Panel found that the two words “alignment” and “blog” together make a description of a service. The only evidence Complainant submitted was a screenshot of a page showing first use of the expression back in 2009. The Panel found the evidence insufficient to show any secondary meaning or trademark rights in the expression owned by Complainant.

VibrAlign, Inc. v. Armando Martinez / Ludeca, FA1510001640543 (Nat’l Arb. Forum November 13, 2015).

About the Author: Chicago technology and intellectual property attorney Evan Brown helps 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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