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.

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.

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.

Complainant did not assert rights during pre-action negotiations; Panel finds reverse domain name hijacking

In the case of Bryn Mawr Communications, LLC v. Linkz Internet Servicesa three-member WIPO Panel denied the Complainant’s efforts to have the domain name <eyetube.com> transferred because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests, and failed to show that the Respondent registered and used the domain name in bad faith. Moreover, the Panel found that the Complainant engaged in reverse domain name hijacking in pursuing the action.

The Complainant provides online educational resources related to ocular health and practice management for ophthalmologists, and claimed trademark rights in its registered EYETUBE mark, which if first used in commerce in February 2008. The Respondent registered the disputed domain name in December 2005, and used the disputed domain name to establish a parked page with sponsored advertising.

Rights or Legitimate Interests

The Panel found that the Complainant failed to show that the Respondent had no rights or legitimate interests in the disputed domain name. The Respondent established its ongoing “use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.”

The evidence indicated that the links on the disputed domain name were related to the domain’s generic meaning. The disputed domain name consisted of two generic words, “eye” and “tube,” that have meanings independent of any connection with the Complainant’s business, and that together form a generic phrase related to television programming. Respondent used the disputed domain name in association with these generic meanings. Although the disputed domain name consisted one link to an eyewear retailer, that link was only visible upon a user’s custom search. In any event, the Panel found that the Complainant failed to show how the eyewear retailer was related to Complainant’s provision of educational resources to ophthalmologists.

Bad Faith

The Panel found that the Registrant did not register the domain name in bad faith, because the Respondent registered the domain name prior to the time that the Complainant established any trademark rights in its mark comprising the disputed domain name. Moreover, in this case, the Registrant’s offer to sell the disputed domain name to the Complainant for more than $145,000 did not constitute bad faith.

Reverse Domain Name Hijacking

Under the circumstances of this case, the Panel found that Complainant engaged in reverse domain name hijacking. It found that the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the UDRP. The following circumstances supported a finding of reverse domain name hijacking:

  • The Complainant acknowledged in the Complaint that the Respondent had registered the disputed domain name several years prior to the Complainant’s registration or use of its marks.
  • The Complainant must have known at the time that it registered its <eyetube.net>, <eyetube.org>, and <eyetube.info> domain names that the <eyetube.com> domain name was being used by Respondent and might never be available to Complainant.
  • At least three individuals employed by the Complainant initiated communications with the Respondent’s broker regarding the purchase of the disputed domain name between May 2011 and July 2015, and at no time over the course of those four years did the Complainant make any claim of right, reference any trade or service mark, or suggest it was seeking to settle a legal claim of any kind.
  • The Complainant filed its Complaint only after it failed to negotiate a sale of the disputed domain name.
  • The Complaint failed to make any mention of its pre-suit communications
  • The Complainant misleadingly indicated to the Panel that the disputed domain name contained an advertisement related to the Complainant’s business, when the advertisement at issue was generated through the Complainant’s own use of the disputed domain name’s search function and had no relation to the educational services offered by the Complainant.

For these reasons, the Panel found that the Complainant engaged in reverse domain name hijacking.

Bryn Mawr Communications, LLC v. Linkz Internet Services, WIPO Case No. D2016-0286 (March 29, 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.

General allegations of bad faith not enough to prove third UDRP element

In the case of Webster Financial Corporation and Webster Bank, National Association v. Kendall Almerico / Kendall A Almerico PA, an NAF Panel denied the Complainant’s efforts to have several domain names, each comprised primarily of the term “bankroll” (e.g. <bankrollco.com>, <bankrollstartups.com>, and <bankroll.ventures>) transferred because the Complainant failed to meet its burden of proof of bad faith registration and use under UDRP paragraph 4(a)(iii).

The Complainant provides a blog about finance, economics, business, market analyses, investment opportunities and market outlooks, and claimed trademark rights in its registered mark THE BANK ROLL, which it began using in 2011. The Respondent provides a funding platform for equity crowdfunding and JOBS Act related securities transactions, primarily from a website at the <bankroll.ventures> domain name. It filed a U.S. trademark application to register the mark BANKROLL prior to being put on notice of the present domain name dispute, and the examiner at the USPTO did not find that the BANKROLL mark would likely cause confusion with THE BANK ROLL.

The Panel found that the Complainant offered no credible evidence to prove that the Respondent registered the disputed domain names in bad faith. It found that the Complainant’s general allegation of bad faith, namely, that the Respondent would have searched the USPTO records and thereby knew or should have known of the Complainant’s rights, was without merit.

Further, the Respondent failed to demonstrate bad faith through any of the factors found in paragraph 4(b) of the policy. There was no allegation that the Respondent had offered to sell the disputed domain names to the  Complainant or anyone else. The parties were not competitors. The fact that for a time the disputed domain names led to Godaddy-created parked pages, in light of the fact that the Respondent had since redirected the disputed domain names to its own pages, did not support an allegation that the Respondent had attempted to disrupt the Complainant’s business. Finally, the Complainant offered no credible evidence that the Respondent intentionally attempted to attract online users for commercial gain by creating a likelihood of confusion as to the Complainant’s mark.  Nor had Complainant offered any direct proof of actual confusion.

Webster Financial Corporation and Webster Bank, National Association v. Kendall Almerico / Kendall A Almerico PA Claim Number: FA1510001644257, (NAF, December 7, 2015)


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.

Respondent had rights or legitimate interests because of its status as bulk reseller of 4-letter domain names

In the case of Randall E. Kay v. Sebastian Kleveros, a three-member NAF Panel denied the Complainant’s efforts to have the domain name <nvrt.com>  transferred because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name, and failed to demonstrate the disputed domain name was registered and used in bad faith.

Concurrent Court Proceedings

As an initial matter, the Panel first considered whether it should forbear deciding the present domain name dispute pending federal litigation in the U.S. brought by the Complainant against a number of parties, including the disputed domain name (as an in rem case under 15 U.S.C. 1125(d)). The Panel decided to make a determination in this proceeding because the parties were not identical to the parties in the litigation. Neither party to this proceeding had asked the Panel to abstain from exercising its jurisdiction. It was not certain the Nevada federal court would be able to issue an order which bound the current registrar located in the Cayman Islands (something this Panel could do). Complainant had submitted to the jurisdiction of the courts at the principal office of the registrar in its Complaint. This Panel also had substantial expertise in the subject area, having issued a combined 2,261 decisions. A court could also review the Panel’s decision, so the Panel was not ousting a court of jurisdiction. These factors weighed in favor of the Panel deciding this case.

Rights or Legitimate Interests

By a majority vote (two of the three members), the Panel found that the Complainant had not established a prima facie case in support of its arguments the Respondent lacked rights and legitimate interests under the UDRP.  The Respondent did not know about any claims related to the disputed domain name because the Complainant never served or sent notice to the Respondent regarding the pending in rem action against the domain name. The Panel observed that a four-letter domain is a valuable property and can have many different purposes related to its letters which do not involve a complainant’s mark.  In this case, the Respondent purchased the domain in a batch of 41 four-letter domains.  The Panel further observed that a respondent may have rights or legitimate interests in a disputed domain name where the the Respondent is a generic domain name reseller, depending of course on the facts of the individual case. According to the Panel, the Respondent had rights or legitimate interests based on its status as a generic domain name reseller under the facts of this case.

No Bad Faith

Since the Respondent had rights or legitimate interests in the disputed domain name pursuant to the second element of the UDRP, the Panel found that the Respondent did not register or use the disputed domain name in bad faith under the third element. Specifically, the Panel found that the Respondent had not registered or used the disputed domain name in bad faith because the Respondent had not violated any of the factors listed in UDRP or engaged in any other conduct that would constitute bad faith registration and use.  Apart from those issues, the substance of this case in the opinion of the majority of the Panel was that a bad faith finding would be inappropriate because the Respondent bought the domain name as part of a commercial transaction involving 40 other four-letter domain names.  On the evidence, the Respondent had no intent or knowledge of any potential infringement of the Complainant’s rights.

Randall E. Kay v. Sebastian KleverosNAF Case No. FA1602001659119

 


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.

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.

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