We hope you will enjoy this edition of the Digest (Vol. 3.23), as we review these noteworthy recent decisions, with commentary from our Director, Nat Cohen; General Counsel, Zak Muscovitch; and Editor, Ankur Raheja.
‣ A Search for You But Not for Me (siteanalytics .com *with commentary)
‣ Does a Bank Executive Have Common Law Rights in his Personal Name? (danielimhof .com *with commentary)
‣ VIOOH v. VOIOH – No Evidence of Targeting (voioh .com)
‣ Fraudulent Scheme Operated by the Respondent leads to the Bad Faith Conclusion (hubbbell .com *with commentary)
‣ Power to Search available to the Panelist (floatpods .com *with commentary)
‣ Proceedings are conducted in accordance with the Policy, Local Laws do not apply (ggdrop .shop)
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This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
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A Search for You But Not for Me
<siteanalytics .com>
Panelist: Mrs. Nathalie Dreyfus
Brief Facts: The Complainant provides analytics services and claims common law rights to the SITE ANALYTICS trademark and argues that the trademark has acquired a secondary meaning. The Respondent, a domain name investor, acquired the disputed Domain Name through an expired domain name auction at SnapNames on November 19, 2022, for USD $2,499, after the Complainant failed to renew the Domain Name. The Respondent contends that the Complainants haven’t demonstrated their rights in the SITE ANALYTICS trademark. The Respondent further contends that the Complainant deliberately let the domain expire, possibly due to a lack of success and that after seeing the listed price of USD $38,395, the Complainant has decided to file this recovery attempt. The Complainant rebuts Respondent’s allegations, stating that their business still exists despite their website being taken down due to registration issues and it contacted the registrar concerning the issue before the Respondent listed the domain for resale and that their efforts to resolve the situation were ignored.
The Complainant acknowledges that the Respondent may have conducted legitimate business with other companies, but insists that their actions in this particular case violate the Complainant’s trademarks and lack legitimate interest. The Complainant argues that during the 20 years, his domain name was registered with Network Solutions and periodically auto-renewed without issues. In October 2022, the Complainant received an email informing them that his products would auto-renew soon. For the Complainant, Network Solutions failed to auto-renew the domain, leading to the current situation, and did not inform the Complainant about the domain being auctioned or transferred. The Complainant even sought assistance from the Domain Registrar, who agreed to contact the buyer on the Complainant’s behalf to cancel the auction or explore other ways to return the domain, however, did not receive a response from the Respondent.
Held: The Complainant has established common law rights in the SITE ANALYTICS trademark through its continuous and extensive use in offering analytics services. The Complainant’s evidence demonstrates that the trademark has gained secondary meaning. The disputed Domain Name duplicates Complainant’s trademarks in their entirety and is therefore likely to cause confusion with the SITE ANALYTICS trademark. The Respondent’s argument that the Complainants haven’t demonstrated their rights in the SITE ANALYTICS trademark is irrelevant. The Respondent further claims that it is in the business of buying and selling domain names and that it purchased the disputed Domain Name through the marketplace after the Complainant failed to renew its registration. While this may provide a legitimate interest in some cases, the Panel finds that the Respondent has not provided sufficient evidence to establish a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed Domain Name.
The Complainant is not well-known, so it’s entirely possible that the Respondent doesn’t know the SITE ANALYTICS trademark. However, the Respondent might have discovered said trademark if it had conducted a trademark or other search before registering the disputed Domain Name. The Panel is of the opinion that it was the Respondent’s duty to search proactively in order to avoid infringing third-party rights. The Respondent did not respond positively to the Complainant’s attempts to resolve the issue or to Domain Registrar’s efforts to explore a resolution.
Additionally, the Respondent registered the disputed Domain Name and offered to sell it at a significantly higher price than the auction purchase price through the disputed Domain Name’s webpage, which actually displayed an offer to sell the domain for USD $38.395. This may indicate an intention to profit from the Complainant’s trademark. The Panel notes that the specific offer for the sale of the domain name and the lack of response constitutes evidence of bad faith registration and use under Policy. Moreover, the Panel finds that the Respondent’s registration of the disputed Domain Name, which is confusingly similar to the Complainant’s trademark, is likely to create confusion amongst Internet users as to the source, sponsorship, affiliation, or endorsement of the disputed Domain Name or of a product or service on the Respondent’s website. In light of these factors, the Panel finds that the disputed Domain Name has been registered and is being used in bad faith under the Policy.
Transfer
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panelist stated that “Complainant has established common law rights in the SITE ANALYTICS trademark through its continuous and extensive use in offering analytics services [and] Complainant’s evidence demonstrates that the trademark has gained secondary meaning”.
The Panelist did indeed reference two important concepts related to common law trademark rights, namely extensive use and secondary meaning. Yet it is unclear from the decision whether the Complainant genuinely provided sufficient evidence to prove acquired distinctiveness in what is clearly a descriptive term in relation to its business. As I wrote about in Volume 2.21
When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue. Panels should be wary of easily conferring common law rights upon complainants where the claimed trademark comprises what appears to be a mere common descriptive term. In such cases, the conferral of common law rights upon a merely descriptive term may serve to unjustifiably provide standing to a complainant under the Policy, when in reality the complainant is just one of many users of a common descriptive term in the marketplace. As Lord Herschell in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks, [1898] AA.C. 571 at p. 580:
“The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using it for purposes of description, a word which has reference to the character of quality of the goods.”
That appears to precisely be the case here. Continuous and extensive use alone does not necessarily transform a descriptive term into a trademark. The evidence required is substantially more onerous than with non-descriptive terms and it seems unlikely that the Complainant met that threshold in this case for such a clearly descriptive term.
Remarkably, the Panelist conceded that the “Complainant is not well-know[n], so it’s entirely possible that the Respondent doesn’t know the SITE ANALYTICS trademark”. Not being well known is not generally a factor that contributes to a party acquiring a secondary meaning in a clearly descriptive term.
Moreover, despite the Panelist conceding that the Respondent may not have heard of the Complainant, the Panelist nonetheless stated that the Respondent “might have discovered said trademark if it had conducted a trademark or other search before registering the Disputed Domain Name… [and therefore] the Panel is of the opinion that it was Respondent duty to search proactively in order to avoid infringing third party rights.” The fact is however, that had the Respondent conducted a US trademark search it would have found that SITE ANALYTICS was refused registration when it was applied for by a third party due to being considered merely descriptive in relation to the applicant’s services. Though that applicant and the Complainant have different services, the term would nearly certainly be considered merely descriptive for the Complainant’s as well. Accordingly, the Respondent would have been even more certain of his right to register the domain name because it corresponded to a merely descriptive term.
Additionally, if the Respondent had undertaken a Google search as well, as the Panelist suggested, he would undoubtedly have found boundless evidence of the common usage of this descriptive term and nary a mention of the Complainant. Try it yourself and see. So, it seems that it was the Panelist that should have undertaken a search rather than requiring one of the Respondent.
Lastly, the UDRP does not alleviate its requirements in cases of inadvertent non-renewal of domain names. The test remains the same and Panelists must remain vigilant even if they have sympathies for an unfortunate complainant. Here, the Panel failed to recognize that investing in descriptive terms is in and of itself a legitimate business as found in numerous cases.
Does a Bank Executive Have Common Law Rights in his Personal Name?
Mr. Daniel Imhof, v. Name Redacted, WIPO Case No. D2023-1209
<danielimhof .com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant, an individual resident in Switzerland, has over 30 years of global experience in wealth and asset management as well as investment banking, including in senior, public-facing leadership roles. Presently he is employed by the once well-known Swiss bank, Credit Suisse as Global Head of Investment Management and is a voting member of the bank’s Global Investment Committee. He is also an experienced speaker for events, education, and investment conferences globally. The Complainant does not have any registered trademarks for his DANIEL IMHOF name but claims a reputation and common law rights in the mark since at least 1992.
The disputed Domain Name was registered on March 8, 2023, and currently resolves to the Registrar’s parking page. The Complainant’s evidence establishes that the disputed Domain Name was previously resolved to a website composed of photographs of the Complainant alongside text claiming that the Complainant is involved in various scandals. These claims are according to the Complainant unsubstantiated, no sources were provided, and the Complainant denies them. The Complainant alleges that the Respondent has no rights or legitimate interests in, and registered and has used in bad faith, the Domain Name given the Domain Name’s usage for blatantly defamatory content without substantiation. The Respondent did not file a Response.
Held: The Complainant’s evidence establishes that the Complainant’s name enjoys strong recognition in his industry and that it has become a distinctive identifier of the Complainant’s services conferring common law rights (WIPO Overview 3.0 at section 1.5). As discussed below, the Respondent has clearly targeted the Complainant’s mark, which supports the Complainant’s contention that his mark has achieved significance as a source identifier (WIPO Overview 3.0 at section 1.3). As the Domain Name is plainly identical to that mark, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant’s evidence establishes that the Domain Name has been used to display content that is claimed to harm the Complainant’s reputation. In the absence of a response from the Respondent justifying its claims made on its website, and in the face of the Complainant’s denials, the Panel is of the view that it is more likely than not that such claims were made without specific justification. To support fair use under UDRP paragraph 4(c)(iii), a respondent’s criticism must be genuine, legitimate criticism and the Respondent has not come forward to advance such a claim (WIPO Overview 3.0 at section 2.6.1). Additionally, the Domain Name is identical to the Complainant’s mark, and any right to legitimate criticism typically does not extend to registering or using a domain name identical to a trade mark given the risk of impersonation (WIPO Overview 3.0 at section 2.6.2).
Given the prior usage of the Domain Name and its identity with the Complainant’s mark, the Respondent clearly intended to target the Complainant through its registration and prior use of the Domain Name. Using a domain name to post false or defamatory content (as is claimed by the Complainant) is an indicator of bad faith (WIPO Overview 3.0 at section 3.12). The fact that the Respondent registered a domain name identical to the Complainant’s mark, rather than one clearly indicating that the Domain Name was intended for criticism, is a further indicator of bad faith. The identity of the Domain Name to the Complainant’s mark means that the Domain Name is particularly suited to the Respondent’s apparent goal of attracting traffic intended for the Complainant; an inherent risk of impersonation. Moreover, the Respondent supplied false WHOIS details suggesting an attempt by the Respondent to evade pursuit. The Panel also takes note of the fact that the Domain Name now points to a Registrar holding page indicative of an attempt to evade a decision.
Transfer
Complainants’ Counsel: BrandIT GmbH, Switzerland
Respondents’ Counsel: No Response
Case Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
The reasoning employed by the Panelist in the <DanielImhof .com> dispute appears to be ill-supported by the consensus approach usually adopted on the issues addressed.
The <DanielImhof .com> domain name was used to host a web page critical of a Credit Suisse executive named Daniel Imhof.
“The Complainant’s evidence establishes that the Domain Name previously resolved to a website composed of photographs of the Complainant alongside text claiming that the Complainant is involved in various scandals. These claims are according to the Complainant unsubstantiated, no sources were provided, and the Complainant denies them.”
Question 1: Is “Daniel Imhof” a “distinctive identifier of the Complainant’s services conferring common law rights”, as the Panelist found?
The Complainant, Daniel Imhof, “claims a reputation and common law rights in the mark since at least 1992”. For nearly the entirety of that time, Imhof was employed by one of two Swiss banks, UBS and Credit Suisse (https://www.linkedin.com/in/daniel-imhof-msc-cfa-7194854/). While he was on the payroll for these institutions was he establishing a separate reputation for himself as a distinctive identifier of goods and services in the banking industry, or were his public appearances on behalf of the banks as their representative? The 1992 date claimed as the commencement of his common law rights appears to be when he was fresh out of college. This overly broad assertion of common law rights is not well supported by the evidence mentioned in the decision.
The Panelist cites WIPO Overview 3.0 section 1.5 as support for making a finding that Imhof has common law rights in his name. Yet, the discussion of this issue at Section 1.5 suggests the opposite- that Imhof does not have enforceable rights to his personal name under the UDRP:
“1.5.2 The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.”
“Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.”
That Imhof may be well-known in the banking industry, according to Section 1.5, does not in itself demonstrate that his personal name is being used in a “trademark/source-identifying sense”.
As Panelist Alan Linbury found in similar circumstances in the <JayBloomBuffoon .com> decision,
“In this proceeding the Complainant has failed to show that the personal name Jay Bloom has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services. The Complaint makes broad unsupported assertions regarding the use of the name in trade or commerce. No specific evidence supporting assertions of acquired distinctiveness is included in the Complaint. Instead, there are merely conclusory allegations of unregistered or common law rights.
https://ciidrc.org/wp-content/uploads/2021/01/2021-01-18-Decision-jaybloombuffoon.com_.pdf”
In the <Max-Polyakov .xyz> dispute, the Complainant, who founded several companies and shortly after the Disputed Domain name was registered obtained registered trademarks on his personal name, nevertheless failed to establish common law rights in his personal name to the satisfaction of Panelist Andrew Lothian, who found-
“The evidence before the Panel in the Complainant’s Annex 4, restricted as it is to a series of personal profiles, is insufficient in the Panel’s view to establish common law rights in the Complainant’s personal name. For example, it does not show on a preponderance of the evidence that the Complainant uses his personal name for the purpose of merchandising or other commercial promotion of goods or services, or that he intended to do so (see Israel Harold Asper v. Communication X Inc., WIPO CaseNo. D2001-0540). Nor does it show, for example the extent to which the commercial community identifies the Complainant with his companies, the extent to which the Complainant is seen by relevant media and sections of the public as the alter ego and driving force behind his companies, the extent of the personal ownership of the companies by the Complainant, the degree of personal control that the Complainant exercises over the enterprises, the extent to which the Complainant is identified with any major achievements of the enterprises nor whether it can be said that the Complainant has a demonstrable interest in protecting his name for commercial use (see Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068).
If Max Polyakov, as a well-known company founder, was unable to provide sufficient evidence of common law rights in his personal name, it would seem an even greater challenge for Daniel Imhof, as a company executive. While we are not privy to the evidence submitted by Daniel Imhof, the Panel does not describe any evidence in support of a finding that Daniel Imhof has become known as a source identifier with consumers. Instead, the Panel appears merely to give its approval to the Complainant’s broad, and apparently unsupported, assertions of common law rights.
The <TadashiYanai .com> dispute involves the exact-match, “impersonation” domain name matching the personal name of Tadashi Yanai, the prominent founder and CEO of one of the largest retailers in the world –
“The Complainant is the founder, chief executive officer, and chairman of a fashion retailer, Uniqlo Co, Ltd. He is also the chief executive officer, chairman and largest single shareholder of Uniqlo’s parent company, publicly traded Fast Retailing Co., Ltd.”
Yet the three-person panel found:
“The Complainant has the burden of proof on this point, and the Panel does not find sufficient evidence on the available record to conclude that the personal name “Tadashi Yanai” has acquired a secondary meaning in the US as a distinguisher of retail services. Accordingly, the Panel concludes that the first element of the Complaint has not been established.”
Given that Daniel Imhof claimed that he was offering services under his personal name, presumably banking related, from the moment he was hired out of college by UBS, and that the Panel agreed, suggests a confusion on the part of both the Complainant and the Panel as to the differences between a personal reputation, which is not enforceable under the UDRP, and common law rights as a distinctive identifier of a provider of goods and services in the minds of the consuming public, which are.
Question 2: Is the criticism found at <DanielImhof .com> legitimate?
The Panel finds-
“In the absence of a response from the Respondent justifying its claims made on its website, and in the face of the Complainant’s denials, the Panel is of the view that it is more likely than not that such claims were made without specific justification. To support fair use under UDRP paragraph 4(c)(iii), a respondent’s criticism must be genuine, legitimate criticism and the Respondent has not come forward to advance such a claim (WIPO Overview 3.0 at section 2.6.1).”
In these two short sentences, the Panel makes several ill-supported claims.
While citing WIPO Overview 3.0, at section 2.6.1, the Panel appears to disregard what is stated there, much as the Panel disregarded the cite above to Section 1.5. Section 2.6.1 states-
“2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.”
Section 2.6.1 distinguishes genuine non-commercial criticism from criticism that is used as a pretext for “cybersquatting, commercial activity, or tarnishment”. The Panel does not find that the criticism is a pretext for cybersquatting, commercial activity or tarnishment, merely that the “claims were made without specific justification”. Unjustified criticism is not the same as pretextual criticism. The Panel has not explained how Section 2.6.1 supports a finding that the criticism is not genuine or noncommercial.
Question 3: If a Respondent does not appear to advance a claim that its criticism is genuine and legitimate, does that mean the Panel should accept the Complainant’s denials that they are so?
One would not expect a Complainant to accept a Respondent’s criticism. Is the Panel suggesting that the standard under the UDRP is that if the Complainant does not accept the criticisms and that if the Respondent does not appear, that the criticisms “more likely than not” are not genuine or legitimate?
Zak Muscovitch and I wrote a CircleID article, at Circle ID read here, on the unfortunate tendency of some panels, when respondents do not appear to defend, to accept as true unsupported allegations by complainants. As noted in the article, an allegation is not evidence. Because a complainant does not like the criticism does not make it unjustified. The Panel overreached here in finding the criticism illegitimate because the Complainant denied it and the Respondent did not appear to defend it.
Question 4: Why is a UDRP Panelist making findings as to the accuracy of noncommercial criticism?
Some UDRP panelists misapprehend the limitations of their role. Their role is to apply the UDRP. The UDRP is a policy created for the purpose of addressing the problem of clear-cut cybersquatting. Criticism may be illegitimate if it is pretextual. But if it is genuine criticism, it is not for a UDRP Panelist to determine whether it is legitimate. Nor is it appropriate for a UDRP Panelist to censor genuine criticism. Misuse of the UDRP to suppress noncommercial criticism is discussed in depth in my article on CircleID – https://circleid.com/posts/20221219-does-the-udrp-interfere-with-free-speech-rights-the-stopspectrum.com-decision.
The Panel in DanielImhof appears to have:
- Unjustifiably granted common law rights in the personal name Daniel Imhof;
- Unjustifiably cited to Section 2.6.1 for a finding that the criticism was not fair, despite not offering any explanation for how the criticism was primarily a pretext for a bad faith use;
- Unjustifiably found the criticism illegitimate due to the Complainant saying so and the Respondent’s failure to appear, by relying on Complainant’s allegations in the absence of supporting evidence;
- Unjustifiably suppressed noncommercial criticism
VIOOH v. VOIOH – No Evidence of Targeting
VIOOH Limited v. Adel Samir, VOIOH, WIPO Case No. D2023-1190
<voioh .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant, launched in 2018, claims to be a leading premium global digital out of home marketplace, combining data and technology, connecting buyers and sellers. The Complainant’s official website is at <viooh .com> (registered on February 27, 2017). The Complainant owns several registered trademarks for VIOOH, including French registration dated November 15, 2017; and International registration dated May 14, 2018. The disputed Domain Name, registered on March 10, 2023, resolves to an error page. However, the Complainant points out mail exchanger records (MX records) have been configured for this Domain Name, thus enabling the use of the Domain Name for email purposes.
The Respondent contends that he is a voice-over artist, and is intended to use this Domain Name for his voice-over business and for the purpose he legitimately combined the first three letters of ‘voice’ and the pronunciation of the letter ‘O’ as ‘Oh’, descriptive of the service planned to be offered. The Respondent further argues that he searched for the ‘exact match’ of the term ‘voioh’ in a simple Google search, and draft ‘coming soon’ landing page was published on March 15, 2023 (a week before the first communication in relation to case filing). The Respondent further attaches evidence of a preparation to use the disputed Domain Name, which includes a test email campaign with the Voioh brand dated September 2, 2021. The Respondent also engaged in negotiations with the Complainant and also contends under the Response that he is still open to negotiate the transfer of this domain “if this is still on table”.
Held: The Panel concludes, on a balance of probabilities and based on the record presented, that the Complainant has failed to prove that the Respondent registered the Domain Name in bad faith. A finding of bad faith registration of the Domain Name requires a finding that the Respondent more likely than not had Complainant’s trademark in mind when registering the Domain Name. The Panel cannot make such a finding here. Instead, the Panel finds the Respondent’s denial of knowledge of the Complainant and its VIOOH mark plausible as neither the disputed Domain Name is identical to the mark (particularly in terms of their sound) nor the Respondent is engaged in the same area of commerce as the Complainant. Also, the Complainant’s area of commerce, which is a service for businesses, is not one that an ordinary individual would necessarily be expected to know. The record does not indicate the extent to which the VIOOH mark is known in Egypt, the Respondent’s country.
Further, the Respondent’s explanation of why he chose the Domain Name (as a sort of shorthand for “voice-over”) strikes the Panel as plausible. The Respondent states that he did a search for an exact match of “voioh” and that search did not yield Complainant’s VIOOH mark. In this regard, the Respondent provided one document showing that, on September 4, 2021, he had set up the beginning of an advertising page reflecting his work in the voice-over business; he also provided a test email for his proposed service. The Panel also notes the expression by the Respondent of an offer to negotiate a settlement, which the Panel takes here to be different than a typical offer to sell to a trademark owner who has been targeted. Moreover, the UDRP is designed to address clear cases of cybersquatting. The record here does not indicate that this is such a case.
Complaint Denied
Complainants’ Counsel: Nameshield, France
Respondents’ Counsel: Self-represented
Fraudulent Scheme Operated by the Respondent leads to the Bad Faith Conclusion
Hubbell Incorporated v. Mojid Aliyamin, NAF Claim Number: FA2304002041716
<hubbbell .com>
Panelist: Hon. Karl v. Fink (Ret.)
Brief Facts: The Complainant and its related companies manufacture and offer a wide range of residential and commercial electrical and electronic products including for the construction, industrial, commercial, communications, and utility industries. The Complainant asserts rights in the HUBBELL Marks based upon registration with the USPTO, dated August 26, 1975. The disputed Domain Name, registered on March 29, 2023, does not resolve to an active website. The Complainant alleges that the Respondent does not use the disputed Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use. Rather, the Respondent falsely impersonated the Complainant to further a fraudulent scheme to benefit the Respondent.
Held: The fraudulent scheme involved phony financial payment offers being sent to a Hubbell vendor in the Philippines. Such use is neither a bona fide offering of goods or services under Policy nor a legitimate noncommercial or fair use under Policy. The Complainant provides screenshot evidence of the Declaration of Jeffrey G. Truedson regarding the fraudulent scheme. Further, the failure to make active use of a disputed Domain Name is neither a bona fide offering of goods or services under the Policy nor a legitimate non-commercial or fair use under the Policy. The Complainant provides screenshot evidence of the Respondent’s resolving inactive website. The Panel finds that the Respondent does not use the disputed Domain Names for any bona fide offering of goods or services nor a legitimate non-commercial or fair use under Policy. Hence, the Respondent has no rights or legitimate interests in respect of the domain name.
It is evidence of bad faith under the Policy that the Respondent uses the disputed Domain Name to falsely impersonate the Complainant to further a fraudulent scheme to benefit the Respondent. Further failure to resolve to an active website is evidence of bad faith per Policy. The Complainant provides screenshot evidence of the Respondent’s resolving inactive website. Hence, the Panel finds that the Respondent registered and uses the disputed Domain Name in bad faith under the Policy.
Transfer
Complainants’ Counsel: Rebeccah Gan of Muncy, Geissler, Olds & Lowe, P.C., Virginia, USA
Respondents’ Counsel: No Response
Case Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
The <Hubbbell .com> decision is noteworthy, in part, as an example of various interrelated problems with how some UDRP decisions are written.
In the <Hubbbell .com> decision the Panel finds, in part, –
“Failure to resolve to an active website is evidence of bad faith per Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018)”
Under well-established UDRP jurisprudence, under certain circumstances, first enumerated in the seminal Telstra decision (https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0003.html), an inactive website is not necessarily a bar to a finding of bad faith use. “Failure to resolve to an active website” is the obvious, but not sufficient, condition for a finding that a passively held website is being “used” in bad faith. More than being an inactive website is necessary to demonstrate that the inactive website is being registered and used in bad faith.
The most significant of the Telstra criteria is-
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate,
As Hubbell is a last name and a name used in several companies, the misspelling “Hubbbell” with three “B”s, could potentially refer to any number of different entities. The Telstra criteria are not met in the <Hubbbell .com> dispute.
The Panel in <Hubbbell .com> cites the CommScope decision, as noted above. In reviewing the chain of citations starting with CommScope, eventually one reaches Telstra. But like the children’s game of “telephone” or “Chinese whispers” (https://en.wikipedia.org/wiki/Chinese_whispers), the content of the citation is degraded after several iterations such that little of the original message remains.
“Although the objective is to pass around the message without it becoming garbled along the way, part of the enjoyment is that, regardless, this usually ends up happening. Errors typically accumulate in the retellings, so the statement announced by the last player differs significantly from that of the first player, usually with amusing or humorous effect.”
All that remains of the five Telstra criteria as cited by the Panel in <Hubbbell .com> is that Telstra relates to an inactive domain name. All the other relevant substance, including the critical criterion that “it is not possible to conceive of any plausible actual or contemplated use of the domain name by the Respondent that would not be illegitimate” has been lost.
While, in some sense, it is accurate to say that “failure to resolve to an active website is evidence [under Telstra] of bad faith”, it is also a meaningless statement in the context of the missing criteria that are required under Telstra to support a finding of bad faith.
Why then did the Panel include this statement?
There is apparently already sufficient evidence of bad faith use as the Panel found –
“Respondent is using the <Hubbbell .com> domain name to falsely impersonate Complainant to further a fraudulent scheme to benefit Respondent.”
Apparently, the Panel wished to make the point that simply because the domain name was not used for an active website did not preclude a finding of bad faith.
Yet, the most straightforward way to interpret the statement is that the Panel meant that an inactive website is on its own sufficient evidence of bad faith.
One could easily imagine another Panel citing <Hubbbell .com> to justify the transfer of any inactive domain name on the basis that-
“Failure to resolve to an active website is evidence of bad faith.”
The <Hubbbell .com> is an example of –
- The degradation of citations, where essential context is lost along the way;
- Offering unclear reasoning that is susceptible to misinterpretation;
- A failure to adequately explain the reasoning and thought process behind a decision, so as to provide helpful context and to avoid misunderstandings;
- By failing to provide accurate citations and thorough reasoning, producing a decision that could lead to further degradation of the UDRP jurisprudence and that could encourage further sloppily reasoned decisions.
Power to Search available to the Panelist
Float Pod LLC dba floatpod .com v. Derek Cleveland, NAF Claim Number: FA2304002042283
<floatpods .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant has rights to the trademarks FLOAT POD (86123660) and FLOATPOD .COM (97908128) registered before USPTO. The Complainant alleges that the Respondent is misrepresenting ownership, engaging in unauthorized use of the Complainant’s trademark, and potentially committing fraudulent activities, which indicates that they have no rights or legitimate interests in the disputed Domain Name.
The Respondent failed to submit a formal Response in this proceeding. However, later Respondent’s attorney provided an informal response and sought a 30-day extension of time within which to supplement it. In light of the Panel’s findings below, it is unnecessary to consider Respondent’s informal response and an extension of time is unnecessary.
Held: The Complainant asserts that it has rights in the United States registered trademarks only and makes no claim to have acquired common law rights in either of those marks. A search by the Panel of the USPTO website reveals that the FLOAT POD mark, Serial No. 86123660, was registered on August 5, 2014, in the name Nick Janicki and remains live. Accordingly, the Panel is not satisfied that the Complainant has established that it has rights in the FLOAT POD mark. As to the other claimed mark FLOATPOD .COM (97908128), the Complainant provides evidence that an application to register the mark FLOATPOD.COM, was filed with the USPTO by the Complainant on April 26, 2023, and the application remains pending.
As noted by the learned Panelist in Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349 (August 29, 2016): “it is the preponderant view of panels under the Policy that unless such applications have proceeded to grant they do not constitute trademarks in which a complainant has UDRP-relevant rights.” Accordingly, the Panel is not satisfied that the Complainant has established that it has rights in the FLOATPOD .COM mark.
Complaint Denied
Complainants’ Counsel: Cawthon Brown, Indiana, USA
Respondents’ Counsel: NA
Comment by Newsletter Editor, Ankur Raheja: The Complainant by making available limited Trademark registration details seems to have misled the proceedings. It is appreciable of the proactive Panelist to have made a search in the USPTO Trademark in terms of the general powers available to the Panelist under the Policy rule 10.
As a result of the USPTO search, the Panelist found that one of the earliest Trademarks was not even registered in the Complainant’s name, while the other Trademark Application is pending registration before USPTO. These can never confer rights under Para 4(a)(i) of the Policy, that is, the standing requirement of the Policy. Also see WIPO Overview 3.0, section 1.1.4: “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”.
Proceedings are conducted in accordance with the Policy, Local Laws do not apply
ITSFAIL LTD v. Walter Pittman, NAF Claim Number: FA2305002042635
<ggdrop .shop>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant claims rights in the GGDROP mark through company registration in the United Kingdom and trademark registration with the EUIPO. The Complainant alleges that the Respondent registered and uses the disputed Domain Name in bad faith pursuant to Russian law: “After receiving repeated appeals from our clients and through our own monitoring, we have detected a case of illegal use of our trademark GGDROP in the content of the website <ggdrop .shop>”. The disputed Domain Name was registered on January 4, 2023.
The Complainant further alleges that by engaging in these actions and taking into account its audience distribution, the content owners of the <ggdrop .shop> website grossly violate the provisions of Article 14 of the Federal Law of the Russian Federation, No. 135-FZ, sections 2 and 5, which prohibit unfair competition by misleading and unfair competition associated with the use of the results of intellectual activity; and Article 10 of the Civil Code of the Russian Federation: “It is not allowed to exercise civil rights solely with the intent to harm another person, to circumvent the law with an unlawful purpose, as well as another obviously unfair exercise of civil rights (abuse of right).” The Respondent did not submit a Response in this proceeding.
Held: The disputed Domain Name was registered on January 4, 2023, three and a half months after the Complainant’s EUIPO registration of its GGDROP mark. This timing and the fact of the Complainant’s trademark registration do not alone prove a lack of rights or legitimate interests in the disputed Domain Name on the part of the Respondent. The Complainant provided no evidence of its business or of the existence and content of Respondent’s website in support of its assertions. These circumstances, together with the Complainant’s assertions, are insufficient to constitute a prima facie showing of the absence of rights or legitimate interests in respect of the domain name on the part of the Respondent. The mere identity of the domain name to the Complainant’s mark is likewise insufficient. The Complainant has failed to establish the second element of the Policy.
The UDRP Policy governs the instant dispute. Whatever may be the position under Russian law which, under Paragraph 4(k) of the Policy, the parties are free to litigate, for this Complaint to succeed, it is necessary for the Complainant to prove the elements set out in Paragraph 4(a) of the UDRP Policy. See Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else). As noted above, the Complainant has provided no evidence of its business, or of the existence and content of the Respondent’s website to support its assertions. The Complainant has failed to establish the third element as well.
Complaint Denied
Complainants’ Counsel: Yevhenii Yakymchuk, United Kingdom
Respondents’ Counsel: No Response