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Panel: Complainant’s Certification “Could Not Properly Have Been Given”
“First come, first served” is a particularly compelling and clear general principle that one learns in childhood, but it is equally applicable to UDRP disputes as the Panel found in this case. The Panel noted that the Respondent had registered the .com Domain Name back in 2009 – six years prior to the Complainant’s existence. The Panel also found that the Respondent subsequently registered the .fit version of the Domain Name in 2017, which was after the Complainant was established but that the Respondent had done nothing wrong in the circumstances. Continue reading the commentary here.
Join us in Vegas!
January 26-28, 2025
Resorts World
www.ICA.Vegas
We hope you will enjoy this edition of the Digest (vol. 4.49), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Complainant’s Certification “Could Not Properly Have Been Given” (wakefit .com and wake .fit *with commentary)
‣ Complainant’s Trademark Application Does Not Confer Standing (smcontact .com *with commentary)
‣ Splog or Noncommercial and Fair Use? (snapchatplanets .org and snapchatplanets .net *with commentary)
‣ Lack Of a Benign Conceivable Reasonable Explanation (guidehouse info)
‣ “Hey ISI GmbH… YOU LOSE… HIJACKER!” (sparklets .com *with commentary)
‣ Complainant’s Fame Outweighs Respondent’s Unsupported AI Intentions (citi .ai)
Join us in Vegas!
January 26-28, 2025
Resorts World
Panel: Complainant’s Certification “Could Not Properly Have Been Given”
Wakefit Innovations Private Limited v. madison gray, Mark Gilpin, WIPO Case No. D2024-4418
<wakefit .com> and <wake .fit>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Complainant was incorporated in India in 2016 and offers for sale via a variety of different outlets, what it describes as “mattresses of unparalleled quality”. It owns a number of figurative and word-registered trademarks in India for the term “wakefit”, e.g., the Indian trademark registration for WAKEFIT, filed on November 23, 2015. The Complainant’s principal website is linked to the domain name <wakefit .co>. The disputed Domain Name <wakefit .com> was registered on October 28, 2009. It is registered in the name of Madison Gray. It resolves to a website which promotes a device intended to assist in exercising described as the “Water Assisted Kore Exercise” device. The disputed Domain Name <wake .fit> was registered on October 10, 2017, in the name of Mark Gilpin. It resolves to a parking page with commercial links. The Complainant submits that the named Respondents are, in fact, the same entity and/or both disputed Domain Names are under common control.
The Complainant alleges that the Respondents are engaged in a “pattern of engaging in cybersquatting activities”, which is reflected in the correspondence that has passed between the parties. The Respondents contend that contrary to the timeline offered by the Complainant, the first contact was not instigated by the Respondent on June 11, 2018, but it was the Complainant who reached out first on August 30, 2017, through their Wakefit business Facebook page to request a video call about the disputed Domain Name, which they deemed “essential” for their business. The Respondents add that the Complainant’s correspondence timeline (above) is a list of dates in which the Complainant has excluded, without explanation or justification, documented instances of their unsolicited communications to the Respondent regarding attempts to acquire the disputed Domain Name.
Held: The Complainant clearly acknowledges that the disputed Domain Name <wakefit .com> was registered in 2009 and it resolves to a website which promotes a device intended to assist in exercising, described as a Water Assisted Kore Exercise device. There is nothing in the relevant material to suggest that this is not a bona fide website. The Respondent was first in time with its choice of name and the domain name was selected to combine the acronym for the Respondent’s exercise device with the word “fit”. Furthermore, the Respondent’s evidence shows quite clearly the Complainant knew this was the case. This is strikingly illustrated by the Complainant’s first approach to the Respondent by means of what appears to be a Facebook message on August 30, 2017, from the Complainant to the Respondent which reads as follows “Hi Wakefit team. High-five on the awesome name both of us chose for our businesses!…”. Accordingly, the Panel considers that the Complainant has failed to show the Respondent lacks any rights or legitimate interests.
The Panel finds on the evidence that the Respondent registered the disputed Domain Name <wakefit .com> in 2009, some six years before the Complainant came into existence and started its business using the Indian WAKEFIT trademark. In the circumstances, it is impossible to suggest the Respondent registered the disputed Domain Name <wakefit .com> with the knowledge and intention of taking unfair advantage of the Complainant’s trademark and cannot therefore have registered it in bad faith for the purposes of the Policy. The Panel further does not consider there is anything wrong with the Respondent registering <wake .fit> in October 2017. By that date, it was aware of the Complainant and it having also adopted the name “wakefit” but in circumstances where two different businesses in different parts of the world and different areas of business use the term “wakefit”, it seems to the Panel that the general principle of “first come first served” in relation to the registration of domain names is applicable.
RDNH: The Panel considers that the Complaint is entirely unsatisfactory for multiple reasons. At its heart is the fact that the disputed Domain Name was registered six years before the Complainant came into existence. Hence it was doomed to failure, and the Complainant or its representatives ought to have known that was the case. Further, the Complainant materially misrepresented the correspondence between the parties and also inaccurately presented the Respondent’s business and its website as being pretextual when that was clearly not the case. Additionally, there is no evidence at all to support the allegation that the Respondent was engaged in a “pattern of cybersquatting activities” and that allegation should not have been made.
The Panel considers it should be able to rely upon the certification that a Complainant gives that “the information presented in this Complaint is to the best of the Complainant’s knowledge complete and accurate”. The Panel considers this is a case where such certification could not properly have been given having regard to the matters set out above. Given the relevant facts, the nature of the Policy and the fact that the Complainant was legally represented, the Panel considers this was a case which should never have been brought and should certainly not have been presented in the manner it was. The Panel, therefore, finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Wadhwa Law Chambers, India
Respondent’s Counsel: Self-represented
Case Comment by General Counsel, Zak Muscovitch: “First come, first served” is a particularly compelling and clear general principle that one learns in childhood, but it is equally applicable to UDRP disputes as the Panel found in this case. The Panel noted that the Respondent had registered the .com Domain Name back in 2009 – six years prior to the Complainant’s existence. The Panel also found that the Respondent subsequently registered the .fit version of the Domain Name in 2017, which was after the Complainant was established but that the Respondent had done nothing wrong in the circumstances. The Panel reasoned that if the Respondent had a right to register the .com before the Complainant was even established, then surely the Respondent had every right to register a companion domain name in the new .fix TLD when it is “arguably better suited to the Respondent’s business (which involves a fitness related exercise device as opposed to the Complainant’s business (memory foam mattresses).” This of course is very sound reasoning and is a good reminder that Respondents may very well have a legitimate interest in registering “companion” domain names subsequent to their original registration to augment their business – provided of course they do so in good faith, as the Respondent did here.
I do wonder however, why the Panelist did not make an expressly affirmative finding of rights and legitimate interest by the Respondent. The Panel undertook an exemplary and detailed examination of Paragraph 4(c) of the Policy and made the important finding that, “even on its own case and evidence the Complainant” failed to establish a prima facie case. As discussed above: a) the Respondent registered the .com domain name prior to any trademark right of the Complainant; b) registered the second domain name to augment the first domain name; and c) legitimately used the Domain Names for a bona fide business in a different field from the Complainant. The Panel concluded that “the Complainant has failed to show the Respondent lacks any rights or legitimate interest”.
But what about the Respondent? Did not the Respondent meet the test for establishing its own rights and legitimate interest under Paragraph 4(c)? Paragraph 4(c) of the Policy expressly entitles a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):…”
As noted in UDRP Perspectives at 2.1, Panels may be tempted to skip over determining whether a Respondent has rights and a legitimate interest. This is often done for reasons of judicial economy, as strictly speaking a case can be dismissed on one prong of the three-part test and therefore the decision need not address any additional, extraneous grounds. Nevertheless, when the circumstances establish a clear right and legitimate interest of the Respondent, as was the case here, Panelists should generally make an affirmative finding of rights and legitimate interest, due to the implicit obligations of Rule 4(c).
Now, turning to the Panel’s finding of Reverse Domain Name Hijacking, readers should not be deceived by the particularly diplomatic way in which the Panelist set out the basis for its finding of RDNH. An accurate reading that appreciates the Panelist’s restrained manner, reveals that this was a indeed a very scathing finding. Amongst the numerous reasons why the Panel found RDNH in this case, was the Complainant “materially mispresented the correspondence between the parties – notably by omitting the highly material fact that the initial first contact between the parties was the Complainant approach the Respondent to seek to buy the Disputed Domain Name…which it regards as “essential” for its business and in effect acknowledging the Respondent had independently arrived at the “wakefit” name”. Where misrepresentations occur in UDRPs, they are more often than not, misrepresentation by omission, as was the case here. Counsel should take their certification seriously, as it requires, as the Panel noted, that “the information presented in this Complaint is to the best of the Complainant’s knowledge complete and accurate”. In my experience, this particularly sort of omission – a first contact by the Complainant towards a Respondent – is relatively frequent. Often a Complainant will present an offer to sell from a Respondent that turns out to be a counter offer that is misrepresented as a solicitation of the Complainant.
SM Contact v. Ehren Schaiberger, WIPO Case No. D2024-4075
<smcontact .com>
Panelists: Mr. Matthew Kennedy (Presiding), Mr. Michel Vivant and Mr. Gerald M. Levin
Brief Facts: The French Complainant, registered on May 21, 1986, specializes in designing and manufacturing machines for the assembly and connection of electronic and mechanical components. It holds the domain names <smcontact .fr> and <smcontact .eu>, registered on November 9, 2003, and April 7, 2006; respectively. On July 5, 2024, the Complainant filed a French trademark for a figurative SM CONTACT mark, which was registered on November 22, 2024. The Respondent is an individual residing in the United States who is in the business of buying, holding, and selling domain names, trading as MegaDomains. His portfolio includes several domain names consisting of the letters “SM” followed by a keyword, with at least three of the domain names registered before the disputed Domain Name registration on May 1, 2019. The disputed Domain Name resolves to the ‘Afternic’ landing page offering the Domain Name for sale.
The Complainant alleges that it completed the dedicated form associated with the disputed Domain Name to inquire about the sale price and has since received multiple unsolicited communications from a person brokering the disputed Domain Name for a private seller who has set the price at USD $15,000. The Complainant further alleges that these repeated solicitations to purchase the disputed Domain Name at such a high price further demonstrate the Respondent’s bad faith and confirm that he has no intention of using the disputed Domain Name for any legitimate purpose. The Respondent contends that the Respondent identified it as a good generic, descriptive keyword, and brandable domain name to add to his stock-in-trade to offer to a new entrant. In addition, neither the USPTO database nor the <tmdn .org> database shows any “sm contact”. In fact, the trademark application had not been granted as of the date of filing of the Response.
Held: The Panel takes note that the Complainant obtained a registration of the figurative SM CONTACT mark on November 22, 2024. As that date was after the commencement of this proceeding, this registration occurred too late to provide standing to bring the Complaint. Nevertheless, in view of the record regarding bad faith, the Panel will assume arguendo that the Complainant acquired its trademark rights in the figurative SM CONTACT mark. The Panel recalls that where a respondent registers a domain name before a complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent, see WIPO Overview 3.0, section 3.8.1, except when it falls under exceptional circumstances in terms of section 3.8.2. However, in the present case, the disputed Domain Name was registered in 2019, over five years before the Complainant acquired its trademark rights in the figurative SM CONTACT mark. There is no evidence of any use of the figurative SM CONTACT mark prior to that time (or since that time), nor of any prior plans to make use of that mark.
Although the operational element of the disputed Domain Name is identical to the textual element of the figurative SM CONTACT mark, this element comprises two letters followed by a common dictionary word. The Respondent declares that he was unaware of the Complainant when he registered the disputed Domain Name and that he considered it to be an attractive domain name based on several qualities, including its conformity to a naming pattern. Indeed, the evidence shows that the disputed Domain Name is one of several domain names in the Respondent’s portfolio that consist of the letters “SM” followed by a keyword, plus the gTLD extension “.com”. Further, the Respondent did not make an unsolicited offer to sell the disputed Domain Name to the Complainant; rather, through his broker he made an offer in response to a price request submitted by the Complainant in 2024, that the broker subsequently followed up. Based on the record, the Panel sees no exceptional circumstances indicating that the Respondent registered the disputed Domain Name in anticipation of the Complainant’s nascent trademark rights.
Complaint Denied
Complainant’s Counsel: Gevers & Ores, France
Respondent’s Counsel: Self-represented
Case Comment by General Counsel, Zak Muscovitch: The Panel found that the Complainant had recently filed a trademark application but it was still pending when the Complaint was filed. As correctly noted by the Panel, a pending trademark application does not by itself establish trademark rights within the meaning of the first element of paragraph 4(a) of the Policy.
Without registered trademark rights which predate the Domain Name registration, the Complainant would have had to have instead proven common law trademark rights which predate the Domain Name. The Panel noted however:
“The Complaint is devoid of evidence of reputation. The Complainant provides no evidence of use of its company name since its establishment in France, no information as to when it expanded its business internationally, no evidence of its advertising and promotional efforts, and no evidence of public recognition. Nor is there evidence on the record of use of the SM CONTACT sign in the Complainant’s domain names since their respective registrations in 2003 and 2006.
The Panel has no basis on which to find that SM CONTACT has been used in commerce by the Complainant as a designation of source.”
Indeed. As noted in UDRP Perspectives at 1.1, for a Panel to award common law rights to any expression, thereby granting it the same status as a registered trademark, without proper evidence would be improper and unjust. To support a claim of common law trademark rights, the Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services. Proof of common law trademark rights cannot be based on conclusory allegations. A Complainant will have failed to establish common law rights in its mark where it makes mere assertions of such rights, which are insufficient without accompanying evidence to demonstrate that the public identifies a Complainant’s mark exclusively or primarily with a Complainant’s products. Interestingly, as noted by the Panel, without any proven trademark rights a Complainant doesn’t even have standing to bring a UDRP, and it can be dismissed on that basis alone.
Notably, the Respondent was able to marshal compelling circumstantial evidence of his motivation and rationale for registering the Domain Name. This included evidence of comparable domain names and his past record of Panels having found him to have a legitimate interest in his domain name investment business. The Respondent also furnished a declaration that he was unaware of the Complainant when he registered the Domain Name, provided a plausible explanation or his choice of Domain Name, and also showed how it was the Complainant who solicited the Respondent and not the other way around. But without any evidence of any Complainant trademark rights at the material time, the Respondent need not even explain himself. Nevertheless, as the Panel noted, there could in theory be the targeting of a “nascent” trademark right, i.e. anticipating the Complainant’s nascent trademark rights, but even there the Panel found no exceptional circumstances indicating this.
Splog or Noncommercial and Fair Use?
Snap Inc. v. Anuj Anuj, NAF Claim Number: FA2411002125296
<snapchatplanets .org> and <snapchatplanets .net>
Panelist: The Honorable Neil Anthony Brown KC
Brief Facts: The Complainant is a United States company engaged in the provision of services through its popular and famous SNAPCHAT camera and messaging application and related goods and services and it has been so engaged since the year 2011. The Complainant has acquired registered trademark rights in the SNAPCHAT trademark by virtue of registration with the USPTO, registered on July 30, 2013. As well as its trademarks, the Complainant has registered the domain name <snapchat .com> which it uses in its business, where it markets its products under the SNAPCHAT trademark including its Snapchat Planets facility. The Respondent registered the <snapchatplanets .org> domain name on March 8, 2024 and the <snapchatplanets .net> domain name on March 9, 2024. The Complainant claims that they resolve to a website that displays “pay-per-click banner advertisements” and “commercial pay-per-click advertisements” used to drive traffic to the Respondent’s website.
The Complainant further alleges that the Respondent has registered and used the domain names to cause confusion with the Complainant, its trademark and brand and its genuine products offered under the SCAPCHAT trademark, on the one hand, and the content of the Respondent’s website, on the other. The Respondent contends that the domain <snapchatplanets .org> is used in good faith. The purpose of the website is to provide educational content to its users, which aligns with a legitimate interest under the UDRP framework. The Respondent further contends that any advertising present on the website is intended solely to cover operational expenses such as hosting, domain registration, and content creation and also clear disclaimers have been added, if necessary, to further prevent any potential misunderstanding. The other Domain Name <snapchatplanets .net> was transferred to another party on May 23, 2024, but he remains the domain name holder on the WHOIS record.
Held: It is, untrue to say, as the Complainant alleges, that on the evidence the Respondent uses either website to drive traffic to the Respondent’s websites for commercial gain by displaying “pay-per-click advertisements”, or that the Respondent is using either website for “diverting internet traffic to a commercial website”. The two illustrations on the <snapchatplanets .org> website occupy a minute portion of the voluminous websites and cannot possibly color the substantive nature of the sites. In any event, the substance of the matter and the weight of the evidence as determined by the Panel under Rule 10(d) is that the websites for both domain names are not in substance commercial in any sense and are not set up to divert internet traffic anywhere but are in substance educational and informative websites. That is borne out by a further examination of aspects of the content of the websites relating to the two domain names. The website in the case of each domain name states that its objective is to provide “information” about Snapchat’s Planets, and a perusal of the two websites makes it clear that this is exactly what they do.
The websites contain many pages of information, often going into quite technical issues, but some extracts from that content taken at random and which are only a small part of the extensive content on the websites, show the true nature of the information contained on the site and that the sites are in substance informational and educational. The Panel further finds that these disclaimers make it clear that the Respondent has not sought to impersonate or pass itself off as the Complainant, but it has done the opposite, namely to assert that it is a separate entity not affiliated with the Complainant and that its websites are designed to provide education and information. The Panel’s conclusion is that the Respondent has shown that it has a right or legitimate interest in the domain names. They in no sense mislead internet users and in no way compromise or tarnish the Complainant’s trademarks, but, if they must be categorized, they are more akin to tribute or fan sites, as they do nothing but make tribute to Snapchat Planets and cater for its fans.
RDNH: As with most issues, there are points on both sides. On the one hand, the Complainant is a trademark owner and it has the right to take proceedings to prevent its trademark from being tarnished or compromised in breach of the UDRP. On the other hand, the Complainant should have realized that its chances of succeeding on the evidence were slim. It must have and should have known that the Respondent’s websites, which it put in evidence itself, would reveal that the websites were substantially if not entirely made up of educational and informational material which, all other things being equal, would probably give the Respondent a right and legitimate interest in the domain names.
It also went out on a limb in asserting that the websites contained pay-per-click commercial advertisements and “banner advertisements” when, again, an examination of the websites would show that they did not contain any such advertisements and that the website for <snapchatplanets .net> domain name did not contain any advertisements or commercial material at all. Moreover, the allegations of bad faith registration and use should always have been seen as very dubious when the known facts were unlikely to justify a finding of bad faith. In the interest of maintaining the integrity of the UDRP, the panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking or primarily to harass the domain-name holder within the meaning of Rule 15 (e).
Complaint Denied (RDNH)
Complainant’s Counsel: Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: An interesting situation. On one hand, an observer could possibly see the Respondent’s website as a “splog”, or spam blog that uses nominally non-commercial and “educational” content as a pretext for advertisements. But on the other hand, according to the Panelist’s detailed examination of the evidence, this is a case that does not meet the limited jurisdiction of the UDRP since the content is primarily noncommercial in nature and doesn’t unfairly use the Complainant’s trademark. Is this a case where cybersquatting is in the eye of the beholder and different reasonable Panels could have come to different conclusions? Is this a case that was unclear, and therefore best left to the courts? Or was this a case where the Respondent cleverly but artificially fabricated a UDRP defense as part of a ruse? Or was this a case where the Complainant failed to present adequate evidence and misprepresented the nature of the website(s)?
Lack Of a Benign Conceivable Reasonable Explanation
Guidehouse LLP v. Darin Suresh, NAF Claim Number: FA2411002124427
<guidehouse .info>
Panelist: Mr. Paul M. DeCicco
Brief Facts: The Complainant is a leading global provider of consulting services to businesses and government entities, and the successor to PricewaterhouseCoopers LLP’s public sector business which was acquired in 2018 by Veritas. The Complainant’s rights in the GUIDEHOUSE mark are strong based on continuous, extensive, and exclusive use since 2018. The Complainant owns a family of federal service mark registrations covering the name GUIDEHOUSE and the domain name is materially identical to Complainant’s name and mark. The disputed Domain Name was registered on 10th September 2024 and there is currently no website at the disputed Domain Name. The Complainant attempted to acquire the <guidehouse .info> domain name from the Respondent and was quoted a substantial fee.
The Complainant alleges that the Respondent is effectively conducting business, namely the monetization of domain names that incorporate and imitate well-known names and trademarks from a concealed location. The Complainant further alleges that it has been contacted by consumers who were defrauded by fictitious entities and anonymous persons using email addresses incorporating and imitating the Complainant’s GUIDEHOUSE trademark, raising a reasonable inference that the disputed Domain Name was registered for this purpose. Finally, the Respondent is conducting business anonymously from a concealed location which violates the trade name registration statutes of every state in the U.S. The Respondent did not file a Response.
Held: The Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. The Respondent holds its disputed Domain Name passively notwithstanding that the domain name may in the future be used in various phishing schemes relying on confusing third parties concerning the domain name’s sponsorship or otherwise. Notably, the domain name’s failure to host content does not indicate that the Respondent’s used <guidehouse .info> in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or has made a non-commercial or fair use of the Domain Name under Policy ¶ 4(c)(iii).
As discussed below, there is evidence from which the Panel concludes that the Respondent acted in bad faith pursuant to the Policy. First, Respondent’s <guidehouse .info> domain name is inactive. The record fails to indicate a current use for the domain name and the Complainant asserts that it is not currently addressing a website. The Complainant speculates regarding the domain name’s future malevolent use by the Respondent. Nevertheless, Respondent’s passive holding of the confusingly similar/identical disputed Domain Name demonstrates Respondent’s bad faith registration and use of such domain name pursuant to Policy ¶ 4(a)(iii).
Moreover, the Respondent had actual knowledge of the Complainant’s rights in GUIDEHOUSE when it registered <guidehouse .info> as a domain name. The Respondent’s prior knowledge of the Complainant’s mark is evident from the notoriety of the Complainant’s GUIDEHOUSE trademark and the lack of a benign conceivable reasonable explanation justifying the Respondent’s registration of the disputed Domain Name. Respondent’s registration and passive holding of the confusingly similar/identical Domain Name with knowledge of Complainant’s trademark rights in GUIDEHOUSE further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
Transfer
Complainant’s Counsel: Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, USA
Respondent’s Counsel: No Response.
“Hey ISI GmbH… YOU LOSE… HIJACKER!”
ISI GmbH v. Tech Ops, SyncPoint, Inc., WIPO Case No. D2024-4055
<sparklets .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant, based in Austria, owns the US trademark for the word mark SPARKLETS, registered on November 28, 2000. One of the Complainant’s products is soda chargers. However, no further information is provided concerning the business history or profile, or otherwise as might be relevant to the public recognition and reputation of its trademark. The disputed Domain Name was registered on March 24, 2003. The Complainant provides evidence that, in May 2024, the disputed Domain Name was resolved to a website inviting contact with an individual connected with the Respondent. Later, it simply promoted “Ideas for the Future” (without further details). At the date of this Decision, the disputed Domain Name was resolved to a website headed: “Hey ISI GmbH… YOU LOSE… HIJACKER!” and summarizing elements of the Response.
The Complainant alleges that the Respondent should have offered to transfer the disputed Domain Name to the Complaint, or to have offered to sell the disputed Domain Name for a sum equivalent to its out-of-pocket costs “or any other amount,” however, the Respondent refused to consider a sale on the ground that it would only be interested in established business ventures or investor backing for a potential acquisition. The Respondent contends that the term “sparklets” is not exclusively associated with the Complainant or its business and that it never marketed the disputed Domain Name to the Complainant, but it was the Complainant who approached it, attempting to negotiate a purchase. The Respondent further contends that this approach acknowledged the Respondent’s de facto rights in the disputed Domain Name and that the Complainant has brought this proceeding after failing to acquire the disputed Domain Name amicably.
Held: The Complainant appears to rely exclusively on its registered trademark rights, and provides the Panel with no information about its trading profile or business reputation at the time the disputed Domain Name was registered. It is well-established in prior proceedings under the UDRP that the concept of “constructive notice” of a trademark is generally insufficient for the purposes of the Policy. Complainants are therefore typically expected to provide information concerning their commercial activities (e.g., sales revenue, geographical scope, numbers of employees, locations and customers, media and industry recognition and awards, social media profile, etc.) in order to demonstrate that the Respondent was more likely to than not to have been aware of (and targeted) their trademark, see section 3.2.2 of WIPO Overview. No such information is available to the Panel in this case.
The Panel accepts that the term “sparklets” has a dictionary meaning (albeit not one in particularly common usage) and that other commercial parties also make use of that term. To be clear: the mere fact of additional third-party users of a mark in a different location and for different goods or services does not necessarily assist the respondent in showing its own independent rights to or legitimate interests in a domain name; it may tend however to show that there are possible uses that do not rely on awareness (or targeting) of a particular complainant’s mark. Furthermore, while not necessary for (and not used in) the disposition of the present case, merely anecdotally and in line with the reasoning applied here generally, the Panel has independently conducted a Google search against the term “sparklets”, time-restricted to March 2003, being the date when the disputed Domain Name was registered, the results of which do not significantly refer to the Complainant.
The Panel is not, therefore, able to conclude that the Complainant was more likely than not to have been aware of the Complainant’s trademark rights at the time the disputed Domain Name was registered. Nor does the Panel consider that the Respondent’s reply to the Complainant’s enquiry about purchasing the disputed Domain Name is indicative of bad faith.
RDNH: In this case, the Respondent points to the Complainant’s delay of 20 years in bringing any Complaint in respect of the disputed Domain Name, the Complainant’s registration of the domain name in the intervening period, and the fact that the Complainant attempted to buy the disputed Domain Name from the Respondent (without asserting any wrongdoing on the Respondent’s part), bringing this proceeding only after that attempt had been rebuffed. However, considering all the circumstances of the case, the Panel declines to make a finding of Reverse Domain Name Hijacking. In particular, in view of the fact that the disputed Domain Name is identical to the Complainant’s SPARKLETS trademark, which had been registered over two years prior to the disputed Domain Name, the Panel does not consider this to be a case in which the Complainant knew or ought to have known that its Complaint could not succeed, or had a clear knowledge of an unequivocal lack of bad faith on the part of the Respondent
Complaint Denied
Complainant’s Counsel: Wuersch & Gering LLP, United States of America
Respondent’s Counsel: Self-represented
Case Comment by General Counsel, Zak Muscovitch:
Bookmark and use this case. It is an excellent application of the relevant principles and I can barely say it better than the Panelist said it himself.
The Panelist noted that the Complainant relied exclusively on its registered trademark rights, and provided the Panel with no information about its trading profile or business reputation at the time the disputed domain name was registered. In other words, no evidence of reputation was provided. The key to demonstrating bad faith registration however, is targeting and as seen in this case, a Complainant will generally be unable to prove targeting without demonstrating its reputation – as it is a trademark’s reputation that allows it to be sufficiently known for a Respondent to have targeted it.
As the Panel clearly appreciated, the mere existence of a trademark alone is insufficient for a Panel to conclude that a Complainant’s trademark has any particular reputation. As the Panel noted, constructive notice of a trademark generally has no place in the UDRP and therefore a a Complainant must prove not only that it has a trademark, but that its trademark had a reputation such that the Respondent was likely aware of it and targeted it at the time of Domain Name registration (see for example: The Way International, Inc. v. Diamond Peters, WIPO Case No D2003-0264]: “As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant? If the existence of a trademark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly.”
Nevertheless, satisfactorily proving that a Respondent was likely aware of a Complainant’s trademark is not necessarily the end of the inquiry, as mere awareness of a Complainant’s trademark is not necessarily determinative of bad faith registration. Rather, something more would generally be required in order to demonstrate that not only was the Respondent aware of the Complainant’s trademark, but that the Complainant’s trademark and its associated goodwill was the primary reason for the Respondent’s registration – as opposed to for example, merely benefitting from the bona fide attractiveness of the term for a variety of possible non-conflicting uses. Other factors beyond reputation must of course also be taken into consideration when determining bad faith, such as for example, the degree of distinctiveness of the trademark, third party usage, as well as the Respondent’s intent and usage of the domain name.
Indeed, there is no place for constructive knowledge under the UDRP but the Respondent must have actual knowledge of the existence of the Complainant.
Complainant’s Fame Outweighs Respondent’s Unsupported AI Intentions
Correction: Last week we included the below case and attributed it to an incorrect Panelist. We apologize for this error and are now including it with its correct Panelist identified.
Citigroup Inc. v. Quoc Bui, NAF Claim Number: FA2411002124740
<citi .ai>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant, founded as City Bank of New York in 1812, operates an American multinational bank and financial services corporation. The Complainant has rights in the CITI mark through registrations with the USPTO. The Complainant alleges that the Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The CITI mark has enjoyed international fame and notoriety due to the Complainant’s exclusive, worldwide use and promotion of its services under the CITI mark for decades. As a result, it is inconceivable that Respondent had no knowledge of the Complainant’s rights in the CITI mark prior to registering the domain name, and its registration is clearly in bad faith. The Complainant further alleges that the Respondent is using the Domain Name in connection with a pay-per-click commercial website to generate revenue for the Respondent, and the Respondent is offering to sell the domain name.
The Respondent submits an informal response: “I registered citi .ai with the intention of developing an artificial intelligence platform, exploring opportunities in AI research and technological advancements. The term “CITI” was chosen as a potential acronym for “Carbon Innovations and Trading Initiative (CITI)”, emphasizing the collaborative nature of AI development and its application in environmental sustainability.” The Respondent further contends that the domain has never been used to mislead, confuse, or infringe upon Citibank’s trademark. It has remained inactive, and I have ensured that it does not create any association with Citibank or its services. I have not sought to sell the domain to Citibank or any competitor. However, I did receive an unsolicited inquiry from CSC Global, which I believe may be linked to Citibank. In response to this inquiry, I offered a sale price of US $100,000.
Held: The Panel notes that the registration date of the domain name is presently unavailable but that there have been numerous records archived since March 22, 2017, by which time Complainant’s CITI mark had been recognized as famous. The circumstances, coupled with the Complainant’s assertions, are sufficient to constitute a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name, shifting the burden to the Respondent to prove otherwise. The Respondent’s informal Response does not deny the awareness of the Complainant’s CITI mark, however, claims “CITI” was chosen as an acronym for “Carbon Innovations and Trading Initiative (CITI)” and is willing to provide evidence in support. The Panel notes that Paragraph 5(c) of the Rules provides the response, including any annexes, shall be submitted in electronic form and shall conclude with a certification. No such certification or any evidence has been provided. The Panel does not consider the circumstances of this case to be exceptional and, given the fame of Complainant’s CITI mark and the absence of any evidence to support Respondent’s assertions, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Further, despite the high price sought by the Respondent when approached by CSC Global, the Panel is not persuaded that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor of the Complainant, nor that the circumstances set out in paragraphs 4(b)(ii) or (iii) apply. However, given the fame and distinctive character of Complainant’s CITI mark, the Panel finds that the Respondent was well aware of Complainant and its mark when registering the <citi .ai> domain name and did so in bad faith to take advantage of and intentionally trade on the goodwill associated with the Complainant’s mark. Further, the Respondent is using the Domain Name in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Accordingly, the Panel finds the Respondent registered and is using the Domain Name in bad faith.
Transfer
Complainant’s Counsel: James R. Davis, II of Perkins Coie LLP, USA
Respondent’s Counsel: Self-represented
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.
English (US) ·