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.

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.

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.

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

Change of registration information did not break chain of ownership by one person

Panel found that change in WhoIs details that occurred after Complainant’s trademark rights arose did not constitute a new registration. Accordingly, there was no bad faith registration, since the domain name was originally registered more than a decade before Complainant’s trademark rights arose.

Respondent first registered the domain name <bankwell.com> in 2003. Complainant, after a merger of three banks, acquired rights in the BANKWELL mark in 2013, as evidenced by a U.S. registration for that mark dated October 15, 2013. In April 2015, Respondent made changes to the WhoIs infromation to reflect a privacy protection service, and changed the information back in September 2015.

Complainant argued that this 2015 change to the WhoIs data constituted a new registration of the domain name, to which the Panel could look to find that the domain name was registered in bad faith. The Panel refused to make this finding. Accordingly, the domain name was treated as first registered in 2003. Since the first registration of the domain name preceded Complainant’s rights by a decade, it was impossible to find that the domain name could have been registered with a bad faith intent in relation to Complainant’s trademark rights.

Bankwell Financial Group, Inc. v. Whois Privacy Protection Service, Inc. / Domain Manager, Affordable Webhosting, Inc., Advertising, WIPO Case No. D2015-1664

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

No bad faith where Respondent registered domain name years before Complainant’s trademark rights began

Complainant began using its mark in 2008. Respondent registered the domain name in 2001, and the record showed that Respondent maintained a blank page at the domain name. The Panel denied the complaint, finding there to be no bad faith registration:

There is no evidence in this record that Complainant — or anyone else in the world for that matter — held the slightest trademark rights in the term “movius” at the time Respondent registered the Domain Name back in July 2001. The record suggests that Respondent had the good sense or good fortune to register a short, catchy domain name in the “.com” space well before anyone else thought to register it as a domain name, or to use it as a trademark. As such, even those ardent adherents to the principle that a domain name registrant is under some type of affirmative duty to ensure that a prospective domain name would not violate another’s trademark rights could not quarrel with Respondent’s conduct in this case.

The Panel also addressed the notion of whether a more “holistic” reading of the bad faith element would support divesting Respondent of the domain name. In this analysis, the Panel soundly rejected Complainaint’s suggestion that the case should be likened to Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case unlike this one, the mark was established before the domain name was registered. Moreover, the TELSTRA mark was undoubtedly famous, whereas in this case there was not even any attempt to show Complainant’s marks was famous.

Movius Interactive Corporation v. Dynamo.comWIPO Case No. D2015-1717

About the Author: Evan Brown is a technology and intellectual property attorney in Chicago 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

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