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.

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.

One Complainant, two similar domain names, two different outcomes

Success in UDRP actions largely depends on when trademark rights arise. A pair of recent UDRP decisions underscores the critical importance of a Complainant establishing that its trademark rights arose prior to the time the Respondent registered the disputed domain name. Two different Panels came to two different decisions concerning two very similar domain names (<rocketpay.com> and <rocketpays.com>). The key difference between the two cases is when the disputed domain name was registered relative to the first use of the Complainant’s trademark in commerce.

RocketPay.com

In the case of Rocketgate PR LLC v. Mack Sullivan, an NAF Panel denied the Complainant’s efforts to have the domain name <rocketpay.com> transferred because the Complainant failed to demonstrate the Respondent lacked rights or legitimate interests in the disputed domain name.

The Complainant is in the business of providing online payment services, and claimed trademark rights in its registered mark ROCKETPAY, which it first used in commerce in January 2014. The Respondent registered the disputed domain name nearly 12 years earlier, in November 2002, but as of the time of the filing of the complaint, did not use the disputed domain name in connection with an active website.

The Panel found that the Complainant failed to establish the Respondent lacked rights or legitimate interests. The Panel observed that Complainant only argued that the Respondent was “apparently making no business or other use of the registered domain” and that “there is no active web-page at the address.” Absent any “pre-existing rights which may be implacable to impugn a registration,” the Respondent in this case — who registered the disputed domain name first, prior to the existence of any trademark rights on the part of the Complainant — was entitled to use it for any legitimate purpose.

RocketPays.com

The same Complainant brought an action against a different Respondent over the domain name <rocketpays.com> (Rocketgate PR LLC v. DANIEL CHAVES / ROCKET PAYS INTERNATIONAL). NAF assigned the case to a different Panel. In this case, the Respondent likewise did not use the disputed domain name to establish a website. But the key difference was that the Respondent did not register the disputed domain name until October 2014 — after the Complainant first used the ROCKETPAY mark in commerce, and likewise after it had filed its application to register that mark with the United States Patent and Trademark Office.

Takeaway

While at first glance the two decisions appear inconsistent, after some reflection, and application of the principles underlying the UDRP as an anti-cybersquatting mechanism, one can reconcile the two cases. One must remember that an action for cybersquatting under the UDRP is not the same as an action for trademark infringement. The UDRP seeks to curb abusive registration. In the case where the Respondent acquired the domain name prior to the time the Complainant’s trademarks arose, it is impossible to conclude the registration could be abusive. But in the second case, where the Respondent registered the domain name after the trademark rights arose, one may more reasonably make the inference of abusive registration.

RocketPay.com decision: Rocketgate PR LLC v. Mack Sullivan, NAF No. FA1602001662354 (April 5, 2016)

RocketPays.com decision: Rocketgate PR LLC v. DANIEL CHAVES / ROCKET PAYS INTERNATIONAL, NAF No. FA1602001662361 (April 6, 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.

Demonstrable preparations to use domain name gave Respondent rights or legitimate interests

In the case of Kevin Michael Gray d/b/a Approve Me v. Progressive Finance LLC / Hostmaster Hostmaster, Prog Finance, LLC, a WIPO Panel denied the Complainant’s efforts to have the disputed domain name <approve.me> transferred.  The Panel held that the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name.

The case provides an example where the Respondent may indeed be infringing the Complainant’s trademark,  but the circumstances do not give rise to cybersquatting as prohibited under the UDRP.

Timeline:

  • January 14, 2014 – The Complainant obtained a U.S. trademark registration for APPROVE ME in connection with “computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information”.
  • April or June 2014 – the Respondent acquired the disputed domain name.
  • May 7, 2014 – the Respondent incorporated a company in Utah under the name “Approve.me LLC”.
  • September 2014 – the Complainant learned of the Respondent’s acquisition of the disputed domain name.
  • October 3, 2014 – the Complainant sent a demand letter to the Respondent.
  • September 22, 2015 – the Respondent announces the launch of Approve.Me, a solution for retailers to offer a single application across the full spectrum of finance and lease products.

Rights or Legitimate Interests

The Panel observed that under paragraph 4(c)(i) of the UDRP, a Panel shall find that a Respondent has demonstrated rights or legitimate interests where the Panel finds that, based on an evaluation of all the evidence presented, before any notice to the Respondent of the dispute, the Respondent was using, or making demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

In this case,  the Panel found that the Respondent had been making demonstrable preparations to launch a business under a name corresponding to the disputed domain name prior to receiving the Complainant’s cease and desist letter. The Panel credited the Respondent’s assertion that it was not aware of the Complainant and its business at the time it acquired the disputed domain name. Despite the Complainant’s assertions, the Panel found no objective evidence that would allow it to infer that the APPROVE ME trademark was in fact well-known or had a substantial profile in the financial services industry, such that the Respondent could be reasonably presumed to have known about it. Without such evidence, and taking into account that APPROVE ME is capable of being used and understood in a descriptive manner in respect of financial services (e.g., in statements such as, “approve me for credit”), there was no basis on the record on which the Panel could find that there was knowledge on the part of the Respondent that would call into question the bona fides of its adoption of the disputed domain name.

Bad Faith

Though it had sufficient grounds to deny the Complaint on the second UDRP element,  the Panel nonetheless also found that the Complainant failed on the third element,  namely,  bad faith registration and use.

There was no evidence that would allow the Panel to infer that the Respondent was aware of the Complainant prior to acquisition of the disputed domain name, and that the Respondent intended to capitalize on the Complainant’s reputation and goodwill. The Panel noted that did not, of course, mean that the Respondent’s activities may not infringe the Complainant’s trademark rights. That was, however, an issue that the Complainant would need to pursue separately in a different forum.

Kevin Michael Gray d/b/a Approve Me v. Progressive Finance LLC / Hostmaster Hostmaster, Prog Finance, LLC, WIPO Case No. DME2015-0015 (March 18, 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 information about general internet law.

Panel slaps Complainant with reverse domain name hijacking even though Respondent did not ask for it

In the case of Rack’ n Stack Warehouse (Admin) Pty Ltd v. Chris Carrol, The Rack N’ Stack Warehouse SEQLD, a WIPO Panel denied the Complainant’s efforts to have the disputed domain name <racknstack.net> transferred because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name, and failed to show that the Respondent registered and used the disputed domain name in bad faith. And the most interesting part of the case came at the end — where the Panel sua sponte determined that the Complainant had engaged in reverse domain name hijacking.

The Complainant and the Respondent are in the same line of business — selling shelving and other storage solutions — but are in different parts of Australia. They both each legitimately purchased separate “branches” of the same business from the original owner of the business.

The Panel found that the Complainant failed to make out a prima facie case on the second UDRP element (rights or legitimate interests). That the Complainant was successful in a trade mark opposition proceeding concerning a mark that was different from the disputed domain name did not demonstrate that, for the purposes of the UDRP, the Respondent had no rights to or legitimate interests in respect of the disputed domain name.

Further, the Respondent demonstrated to the satisfaction of the Panel that the Respondent has been operating a genuine business under its company name (corresponding to the domain name) for nearly seven years, since when he purchased the original owner’s south-east Queensland business. Moreover, even before that time, the Respondent had been operating a business under a similar name (which incorporated the term “Rack’nStack”), with permission from the original owner, in northern New South Wales. Finally, the Panel found that the Respondent had been commonly known by the disputed domain name for purposes of the UDRP.

Though its determination on the second UDRP element was sufficient to deny the complaint, the Panel went on to consider the third UDRP element — bad faith registration and use. The Panel observed that the the Respondent registered the disputed domain name for the purpose of operating a legitimate business, which it legitimately purchased from the original owner. Accordingly, the Respondent did not register the disputed domain name for the purpose of attracting the Complainant’s customers, or to cause customer confusion, but to attract its own customers and to reflect its company name. Any evidence of actual customer confusion because the Complainant and the Respondent were trading under similar names was not of itself determinative of bad faith registration or bad faith use of the disputed domain name.

Interestingly, even though the Complainant did not ask for such a finding, the Panel concluded that the Complainant had engaged in reverse domain name hijacking. It found that the Complainant had launched the proceedings primarily to harass the Respondent. The Panel did not take too kindly to the Complainant’s style — it particularly criticized the way that the Complainant had submitted a Complaint which was incomplete, that did not directly address the second element of the UDRP, and told a selective story in relation to the background to the dispute. In particular, the factual background and relationship between the parties was described only in an annex to the Complaint and was not otherwise referenced by the Complainant. These facts are of central relevance to the questions of whether the Respondent had rights or legitimate interests and whether the Respondent registered and used the disputed domain name in bad faith. The Panel expressed this dissatisfaction by its sua sponte finding of reverse domain name hijacking.

Rack’ n Stack Warehouse (Admin) Pty Ltd v. Chris Carrol, The Rack N’ Stack Warehouse SEQLD, WIPO Case No. D2016-0102 (March 16, 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.

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.

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.

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

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