We hope you will enjoy this edition of the Digest (Vol. 3.13), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch.
‣ Short, Brandable, Memorable Terms Permitted for Resale Even Where Corresponding Trademark Exists (Limble .com *with commentary)
‣ Panel: Complaints must be ‘Tailored’ – Not ‘Constructed’ based Upon ‘Ritualistic Recitation’ of UDRP Grounds (PortStephensAccommodation .com .au)
‣ Respondent Likely Registered Trademark and Copyright to Provide Defense against Enforcement of Complainant’s Rights (Paper .io *with commentary)
‣ Cannot Presume Targeting From Mere Similarity to Distinctive Mark Used For Different Goods (ModereCo .com *with commentary)
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
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Short, Brandable, Memorable Terms Permitted for Resale Even Where Corresponding Trademark Exists
Limble Solutions, Inc. v. Domain Admin, Alter .com, Inc, WIPO Case No. D2022-4900
<Limble .com>
Panelist: Mr. Scott R. Austin (Presiding), Mr. Douglas M. Isenberg and The Hon Neil Brown KC
Brief Facts: The Complainant owns a trademark LIMBLE (registered on February 12, 2019 with USPTO). The Complainant’s official website is at <limiblecmms .com> (registered on December 3, 2015), whereby it promotes its services using the unregistered mark LIMBLECMMS as well as the LIMBLE Mark alone, but with no trademark symbol applied that would provide notice that it treats the use of these terms as its trademarks. The Respondent acquired the disputed Domain Name for investment purposes in a public domain name auction on July 16, 2021 and it currently resolves to marketplace Squadhelp.
The Respondent contends that it has rights or legitimate interests in the disputed Domain Name because it operated a brandable domain name marketplace, called “Alter”, where the disputed Domain Name previously resolved. The Respondent further contends that the “Complainant is relatively unknown” and provides sworn evidence that it had never heard of the Complainant or its marks at any time prior to the registration of the disputed Domain Name and did not targeted the Complainant. In November, 2022, the Complainant made an anonymous offer of USD $11,599 to purchase the disputed Domain Name, which was declined, later the Complainant countered at a reduced amount of USD $3,000, based on the Respondent’s USD $1,711 auction purchase price and included a threat to file an UDRP action against the Respondent.
Held: The Complainant here has given the Panel assertions and speculation but without sufficient evidence to balance. Asserting without evidence that the Respondent has no legitimate interests because the Complainant has a trademark and Respondent’s portfolio contains a domain name that is the same is not enough for this Panel to find Respondent had actual knowledge of Complainant’s LIMBLE Mark and targeted the Complainant when it purchased the disputed Domain Name. Although targeting is possible based on these facts, it is not probable or even more likely than not, and in reality it is sheer speculation until and unless supported by sufficient evidence to show it is probable that the Respondent had Complainant’s LIMBLE Mark in mind when it purchased the disputed Domain Name. That level of evidence has not been shown by the Complainant here.
In contrast, Respondent’s evidence, including a declaration by its owner signed under oath, shows that it is running a business offering brandable domain names and development services which business model has been recognized by prior UDRP panels as capable of establishing rights or legitimate interests under the Policy, provided the domain name was not registered to profit from and exploit a complainant’s trademark. Respondent’s evidence also shows that its “brandable domain marketplace” business, described by the Respondent as the sort of domain name business where it had to be on the lookout for memorable domain names to buy, develop, and resell at high prices because startup businesses are in the market for memorable domain names and would be legitimately attracted to a name like the disputed Domain Name for its intrinsic value as short and memorable for businesses, which memorable terms may be very limited in availability in today’s market.
The Complainant here appears to be a small, relatively little known business with 31 employees and a single recently registered mark, and the Complainant provides no evidence to support the status of its mark as “well-known” or widely recognized by media or consumers such that the Panel could reasonably conclude the Respondent had actual knowledge or even reasonably should have known of the Complainant.
The Panel also considers that the Respondent was at liberty to register the disputed Domain Name as a short, brandable, memorable term made up from a combination of common words. Given the decisions of prior UDRP panels upholding business models for domain name aggregation and resale similar to Respondent’s as legitimate under the Policy, the Panel finds that the Respondent did not use the disputed Domain Name in bad faith in acquiring the disputed Domain Name and offering it for resale as part of Respondent’s brandable domain names marketplace business, especially considering that, there is no evidence here of the Respondent using PPC links to the Complainant or its competitors or any other means to profit from the Complainant’s trademark rights.
RDNH: The Respondent argues that the Complainant brought this case in bad faith, as “Plan B” solely to obtain the disputed Domain Name without buying it, after its attempts at purchase failed because the purchase price was too high. Although the Complainant may have been optimistic in bringing its case without further evidence in support of its claims, the Panel finds no RDNH given the disputed Domain Name and Complainant’s registered mark are identical. The Complainant was justified in bringing this Complaint based on a reasonable belief that it had a plausible legal basis and for the reasons set out above does not amount to a filing merely for the purpose of harassing the Complainant.
Complainant Denied
Complainants’ Counsel: TechLaw Ventures, PLLC, United States
Respondents’ Counsel: ESQwire .com, P.C., United States
Case Comment by ICA General Counsel, Zak Muscovitch:
This decision reflects an important evolution in the application of the UDRP by three experienced Panelists. Many decisions over the years have upheld rights and legitimate interests by domain name investors when it comes to domain names based on dictionary words or acronyms where in the absence of a famous mark it is clear that the Complainant can claim no exclusive rights to the term, however when it comes to “brandable” domain names, Panels have often failed to find that an investor has a legitimate interest in investing in such a made-up term if it matches a prior trademark registration. While a compelling basis exists for having the inherent right to speculate in dictionary word or acronym domain names because they are capable of having widespread appeal, Panels have been less certain about “brandable” domain names because it is assumed that the universe of parties interested in such domain names is far more limited, and the more fanciful the term and the fewer users of it, the more likely that it is that it was registered because of the trademark owner complainant. Nevertheless, this case demonstrates that the same qualities appurtenant to dictionary word and acronym domain names – namely inherent appeal – can also exist when it comes to distinctive, made-up terms which are capable of adoption by third parties.
The fact that a single party may have a trademark is not determinative, since a trademark by itself – absent fame – does not bestow a monopoly upon the trademark holder and indeed, trademark law itself is premised on the potential coexistence of similar or even identical brands by multiple unrelated parties, where the goods or services are in different fields. As such, fidelity to first principles of trademark law as applied to the domain name context, would suggest that we should likewise not bestow an effective monopoly upon a trademark holder when a third party may very well find a similar domain name attractive for the same reason that the original trademark owner did, and can potentially register it in good faith for a different purpose.
The universe of fanciful terms held for investment is potentially far greater than the number of dictionary and acronym domain names held for investment, in part because many fanciful terms have widespread appeal as potential online identities, and in part because the supply of dictionary and acronym terms is insufficient to meet the global demand from businesses for attractive domain names. As recognized by this panel, in the absence of evidence of targeting, it cannot be inferred that an investor who registers a fanciful domain name matching a prior trademark has registered the domain name in bad faith. That may especially be the case when, as in this instance, the fanciful domain name was first registered by a third-party prior to the Complainant’s adopting a similar brand, thereby indicating that the Complainant adopted its brand knowing that the dot-com domain name was already registered to a third-party yet proceeded to adopt its brand anyhow.
Moreover, a speculator in such domain names can legitimately serve as a middleman by aggregating such attractive domain names for resale – even whereas here, a trademark registration exists. As the Panel noted, absent any significant reputation, there is no factual basis for inferring targeting in such a case. Moreover, the application of the doctrine of “willful blindness” or requiring a Respondent to have conducted a trademark search before registration, would in effect and unfairly, create a monopoly for the trademark owner despite such notions being unsupported by trademark law and presuming targeting even when there was none.
This is a fascinating topic and is fast becoming a crucial area for better understanding by UDRP Panelists particularly since domain names corresponding to dictionary words and acronyms are usually already taken, whereas ‘brandable’ domain names are far more obtainable. If we were to confer monopolies on such terms, we would run out of potential domain names and trademarks even faster. For example, see this article, “Are We Running out of Trademarks? An Empirical Study of Trademark Depletion and Congestion” (February 9, 2018, Barton Beebe & Jeanne C. Fromer, Harvard Law Review).
I also invite you to read a thought provoking article by one of the leading “brandable” domain name experts, Sten Lilleström, who is also an ICA Member: “UDRP Panels and the ‘Non-dictionary’ Argument” (February 28, 2023, NextVenture.com).
Sten discusses that there may be what amounts to a “dictionary word test” hidden in UDRP jurisprudence, and that it may be wrong to think in those terms. According to Sten, there is a “complete fixation” with “dictionary words” and that they supposedly have the power to corroborate bad faith as if domain name registrations can either consist of “dictionary terms” and thus be allowed, or not consist of dictionary terms and therefore be of a dubious nature. Sten argues that “UDRP panels may need to revise their understanding of the market for domain names, and recognize that names can have appeal because they are names and not literal descriptions limited in use to the literal sense”. He points out that certain features of names make some names more appealing than others, irrespective of whether they can be found in a dictionary. Sten also discusses the SOLVERDE case from 2021, which also involves a “non-dictionary” word domain name and prefers the approach taken in the LIMBLE case. Please continue reading his important article on NextVenture.com.
Panel: Complaints must be ‘Tailored’ – Not ‘Constructed’ based Upon ‘Ritualistic Recitation’ of UDRP Grounds
Trova Pty Ltd v David Andrew Priest, Resolution Institute Case No. auDRP_23_1
<PortStephensAccommodation .com .au>
Panelist: Mr. Philip N Argy
Brief Facts: The Complainant as a trustee, became the registered proprietor of the business name, “Port Stephens Accommodation” on November 10, 2017, however, its trademark application for PORT STEPHENS ACCOMMODATION (filed on 23 November 2022), remains pending registration. The Complainant also registered the business names, “Find Port Stephens Accommodation” (October 27, 2022) and “Accommodation” (October 28, 2022). The disputed Domain Name was registered on December 4, 2011. The Complainant alleges that the Respondent’s use of the disputed Domain Name does not represent a bona fide offering, given that it diverts Internet users to a webpage associated with HotelsCombined and thus capitalises on the reputation and goodwill of the corresponding business name built over a period exceeding 25 years.
The Respondent submits that the Complainant, through its CEO, purchased the domain names including <portstephensaccommodation .com> and business from Accom Nelson Bay Pty Ltd in 2017. The predecessor, Accom Nelson Bay Pty Ltd made an offer to purchase the disputed Domain Name in 2014 – which the Respondent rejected. The Respondent further contends that it uses a widget provided by HotelsCombined that provides a service for visitors to find accommodation in Port Stephens, being a service that exactly matches the disputed Domain Name and is absolutely a bona fide use thereof. The Respondent goes on to assert that he received “harassing and intimidating letters via email from the Complainant’s lawyers”.
Held: The disputed Domain Name comprises the geographic name ‘Port Stephens’ together with the ordinary English word accommodation and resolves to a website which enables Internet visitors to find and book accommodation in Port Stephens. Besides, the disputed Domain Name was registered in 2011 – some six years before the Complainant registered the Business Name and 11 years before it applied for the Trademark. Not only that, the Respondent is in fact using the disputed Domain Name for a website which enables Internet visitors to find and book accommodation in Port Stephens. That seems to the Panel to be a perfectly legitimate use of the disputed Domain Name and one which gives the Respondent a legitimate interest in respect of the disputed Domain Name.
Given the above conclusions, it is impossible for the Panel to find that the disputed Domain Name was registered and is being used in bad faith. In relation to the Complainant’s allegation that the disputed Domain Name was registered for the purpose of selling it at an inflated price rather than using it in connection with a bona fide offering of goods or services, the Panel accepts the Respondent’s explanation for his rejection of the 2014 offer from the Complainant’s predecessor in business to purchase the disputed Domain Name, namely, that he intended to use it in the manner in which it is now being used. The Panel finds that there is no evidence to support any finding of bad faith registration or subsequent use of the disputed Domain Name on the part of the Respondent and declines to do so.
RDNH: Given the above findings and order, the Panel is of the view that the Complaint was without merit and should never have been lodged. It is obvious from the language used in the Complaint that the Policy and its associated jurisprudence is well known to the Complainant’s lawyers. It should have been abundantly clear to them that the background facts and the evidence they filed was hopelessly incapable of supporting the Complaint.
In particular, the evidence did not even come close to supporting many of the submissions made. The Complainants and their legal representatives must take care not to construct complaints by a ritualistic recitation of matters which have historically been found to make good the three grounds of the Policy. Submissions must be tailored to the facts of each case and, in particular, supported by the evidence filed. The Panel forms the view that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and primarily to harass the Respondent.
Complaint Denied (RDNH)
Complainants’ Counsel: Ms Aimee Travis of Travis Partners, a law firm in Newcastle, NSW
Respondents’ Counsel: Self-represented
Respondent Likely Registered Trademark and Copyright to Provide Defense against Enforcement of Complainant’s Rights
VOODOO v. Anup Surendran, ContractBrains Consulting Solutions, WIPO Case No. DIO2023-0002
<Paper .io>
Panelists: Mr. Jeremy Speres (Presiding), Mr. Assen Alexiev and Mr. William Lobelson
Brief Facts: The French Complainant, incorporated in 2013, is an interactive game publisher specialising in hyper-casual games for smartphones, including its most successful game, “Paper .io” (launched on November 25, 2016). The Complainant owns trade mark registrations for PAPER .IO, that includes a French trade mark registered on January 5, 2018. The underlying beneficial owner of the disputed Domain Name is a Russian company CreoBits LLC that develops web browser games. The Respondent owns a Russian trade mark registration for PAPER-IO (stylised), registered on October 25, 2018, in class 9. The Respondent also owns a software copyright registration in the Russian Federation for a software program entitled “PAPER-IO” dated April 6, 2018. The disputed Domain Name was originally registered on October 4, 2009 (acquired by the Respondent later), and presently redirects to <paper-io .com>, offering a browser game entitled “Paper .io 2” and also features commercial advertising through an affiliate network.
The Complainant alleges that the Respondent registered and used the disputed Domain Name in bad faith for a game that imitates the Complainant’s game using the same name, and the Respondent adopted the same modus operandi in respect of two of the Complainant’s other games, and it is unlikely that the Respondent could have independently and in good faith developed three different games that imitate the gameplay and graphics of the Complainant’s games using identical names to those used by the Complainant. The Respondent claims rights and legitimate interests based on its own trade mark and software registrations, and the use of the Domain Name for its own game. The Respondent further denies bad faith for the reasons that the Complainant has not proven unregistered rights predating registration of the disputed Domain Name and that the Respondent’s game was developed independently, exhibits numerous material differences to the Complainant’s game, and to the extent that there are similarities, these derive from common features in the genre.
Preliminary Issues: The Respondent objects that this dispute is beyond the competence of the Panel given that it concerns software copyright and factual and legal questions that the Panel is not authorised to resolve. The Respondent further requests that the Panel suspend these proceedings in light of the Respondent instituting court proceedings in Russia concerning the Domain Name after the Complaint and Response were filed.
The Panel rejects the Respondent’s objection to its competence. The Panel does not need to make any findings concerning software copyright in order to decide the issues raised in the Complaint concerning, primarily, bad faith targeting under the Policy. This is particularly so given that the issues concerning software copyright were introduced by the Respondent. Regarding any factual differences between the Parties, the Panel considers that the evidence before it is sufficient to determine those on the applicable standard of balance of probabilities.
The Panel has the discretion to decide whether to suspend, terminate or proceed to a decision where court proceedings are instituted during administrative proceedings under the Policy. The Panel considers that the issues and evidence before it fall squarely within the Policy and are readily capable of resolution under the Policy. Noting the rationale for the Policy to be an expeditious and relatively inexpensive procedure for resolving domain name disputes, and noting that the Respondent could have instituted court proceedings prior to the Complaint being filed upon receipt of the Complainant’s cease and desist correspondence, the Panel declines the Respondent’s request to suspend these proceedings.
Held: The Panel’s view is that the Respondent’s registered trade mark and software rights were likely acquired to provide the Respondent with an apparent defence against Complainant’s enforcement of its rights, in full knowledge of the Complainant’s game, in order to circumvent the Policy or to frustrate the Complainant’s use or registration of its trade mark in the Russian Federation. The Respondent’s usage of the Domain Name to take advantage of the Complainant’s trademark plainly neither represents a bona fide offering of goods or services nor can confer rights or legitimate interests under the Policy. Importantly, the Panel is, simultaneously with this case, also adjudicating VOODOO v. CreoBits LLC, WIPO Case No. D2023-0071, involving the Complainant and the Respondent, concerning <paper-io .com> and <hole-io .com>. The Respondent in this case chose to redirect the Domain Name to the same website, and its intentions for the disputed Domain Name were, therefore, clearly the same.
This is further supported by the fact that the Complainant’s evidence establishes that, in addition to these Domain Names, the Respondent also registered a fourth domain name <aquapark .io> which follows a similar pattern. It is highly improbable that the Respondent independently developed three different games, in good faith without intending to target the Complainant, in circumstances where all three games exhibit strong gameplay and graphical similarities with the Complainant’s corresponding games and use nearly identical or identical names. Finally, the fact that the disputed Domain Name may have been registered prior to the Complainant obtaining trademark rights and launching its own corresponding game is, therefore, no bar to finding in favour of the Complainant on the third element. It is abundantly clear that the Respondent uses the Domain Name with a view to deceiving users into believing that the game offered via the disputed Domain Name is that of the Complainant, for the purpose of generating revenue through the commercial advertisements displayed on the website concerned. This falls squarely within paragraph 4(b)(iv) of the Policy.
Transfer
Complainants’ Counsel: Jones Day, France
Respondents’ Counsel: Internet & Law, Russian Federation.
Case Comment by ICA General Counsel, Zak Muscovitch: The UDRP was not intended to resolve disputed between competing trademark owners, yet perhaps this case is an exception to this rule. Here, it was readily apparent to the Panel that it was not a coincidence that the Respondent mimicked the Complainant’s games and brands, thereby demonstrating bad faith registration and use. The Respondent did however have a registered trademark, but that did not dissuade the Panel in the specific circumstances of this case, since the Respondent’s trademark registration itself was evidence of bad faith registration and use. Although Panels should generally be loathe to intervene in trademark disputes between competing mark holders, there is perhaps room for legitimate intervention in a case such as this, where the facts appear to clearly support a finding under the UDRP in favour of the Complainant. Nevertheless, this case may be headed to court in any event.
Cannot Presume Targeting From Mere Similarity to Distinctive Mark Used For Different Goods
Maple Mountain Group, Inc. v. Kendra Roman, Roman Creative, WIPO Case No. D2022-4112
<ModereCo .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The US Complainant established in August 1992, produces and sells a range of “lifestyle products, including personal care products, health and wellness products and household products” and sells online at <modere .com>. It appears that the Complainant acquired the business of a predecessor and rebranded its products as MODERE in 2013, and registered trade name “Modere Inc.” The Complainant holds trademark registrations with USPTO comprising or including MODERE, that was first registered on September 23, 2014. The disputed Domain Name was registered on March 19, 2021, listing the Respondent as Kendra Roman and the organization as Roman Creative, USA. The Domain Name is being used for the website of the digital marketing agency “Roman Creative”.
The Complainant infers that the Respondent “knew or should have known” of the existence of the Complainant’s MODERE mark because the mark is “highly distinctive”, heavily advertised and in use for some eight years before the Respondent registered the disputed Domain Name, duly registered as a trademark on a publicly accessible trademark database, and used for health and wellness products, “closely related” to the Respondent’s air purifier product. Besides, the Complainant points to the Respondent’s circle “m” logo as a deliberate effort at impersonation of the Complainant’s registered circle “M” mark. The Respondent did not reply to the Complainant’s contentions but sent an informal communication to the Center, stating “I am confused by this email. What is being asked for?”
Held: The Complainant’s mark is not a dictionary term. However, a company with turnover of USD $73 million is not necessarily a household name and the Parties’ products do not appear to compete. The Respondent uses the disputed Domain Name to advertise a single product, a bladeless electric fan with air purification features, whereas the Complainant sells a range of cosmetics, vitamin supplements and health foods, and household cleaning products. There is some similarity between the logos in use by the parties, but it is not surprising that both companies would highlight the first letter of the company name in a logo. Importantly, the Respondent incorporated a company with a name corresponding to the disputed Domain Name and operated under that name while offering the electric fan online.
It appears that the Respondent established a Modere LLC company and even applied for a MODERE trademark in 2021, launched a website and social media sites advertising an electric fan and air purifier in 2022, but ultimately abandoned the business and the trademark application in 2023. These facts do not resemble classic cybersquatting or an attempt to “hijack” the reputation of a company selling very different health and wellness products, as the Complainant infers. The Complainant bears the burden of persuasion to establish bad faith, and the Panel is simply not persuaded on this record that the Respondent was more likely than not targeting the Complainant’s mark, both in registering the disputed Domain Name and in establishing the similarly named company and applying for a similar trademark of its own.
Complaint Denied
Complainants’ Counsel: Barker Brettell Services Limited, United Kingdom
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This case very much relates to the discussion above (regarding LIMBLE). Here, the Panel in a similar fashion to the Panel in Limble, did not presume targeting merely on the basis of similarity to a pre-existing a distinctive trademark. The Panel here noted the dissimilarity with the parties’ respective goods and found that despite considerable sales, the Complainant’s brand was not a household name. The Panel also rejected the Complainant’s claim that the Respondent “should have known” of the Complainant’s similar brand, and therefore ostensibly should have stayed away from it despite that difference in goods sold under the respective brands.
Ultimately, if domain name law is to be faithful to trademark law and not purport to create new rights beyond what exists in trademark law, Panels should not effectively confer a monopoly on a pre-existing trademark holder on the basis of presumed targeting or ‘constructive notice’ which has no place in the UDRP.