Uniform Dispute Resolution Procedure for domain names

Viking.com Domain Name Dispute – RDNH

The viking .com domain name dispute resulted in a finding of RDNH.

Office Depot, the Respondent won the domain name dispute.

Key points in the Viking .com Domain Name Dispute

  • The Complainant’s rights, however, are not global nor exclusive and do not blot out the Respondent’s current rights to certain VIKING trademarks, …
  • The Respondent refers to the Complainant’s letter of November 13, 2017, where the Complainant acknowledges that it has made several offers to the Respondent to purchase the disputed domain name prior to the filing of the Complaint and after the Respondent informed the Complainant that it intended to sell the disputed domain name. According to the Respondent, such offers are inconsistent with the Complainant’s claims that the Complainant already owns the disputed domain name and are an admission to the contrary.
  • The dispute was doomed to fail. It was impossible to show that Office Depot registered the domain in bad faith since it acquired it for its Viking office products business.
    • The three-person panel wrote:

      Perhaps the most striking deficiency, however, which is sufficient in this Panel’s mind to establish RDNH, is the lack of any allegations in the Complaint as to how the Respondent registered the disputed domain name in bad faith. But looking at the circumstances in their entirety, it is not difficult to understand why there are no such allegations – the facts at hand simply do not provide any basis for them. This disregard of such a striking deficiency in the Complainant’s case is enough to sustain a finding of RDNH, and accordingly, the Panel so finds.

  • UDRP decision: RDNH

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aurelius RHO GTM Development Limited v. Office Depot, Inc.

Viking.com WIPO Case No. D2017-2174

1. The Parties

The Complainant is Aurelius RHO GTM Development Limited of Dublin, Ireland, represented internally.

The Respondent is Office Depot, Inc. of Boca Raton, Florida, United States of America (“United States”), represented by Bird & Bird LLP, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <viking.com> is registered with CSC Corporate Domains, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2017. On November 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2017. The Response was filed with the Center on December 8, 2017, and an updated Annex D to the Response was filed on December 9, 2017.

The Center appointed Assen Alexiev, Alistair Payne, and Evan D. Brown as panelists in this matter on February 1, 2018. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is part of the Aurelius Group, which has 23 subsidiaries generating annualized consolidated revenues of about EUR 4.5 billion.

The Respondent was incorporated in 1986. In 1998, it merged with Viking Office Products, Inc., a leading direct mail marketer of office products. The Respondent is a leading provider of office supplies, business products and services in the United States and around the world. In 2016, the Respondent had annual sales of about USD 11 billion and employed approximately 38,000 associates.

On December 31, 2016, the Aurelius Group acquired the Respondent’s European business. The transaction separated the Respondent’s Viking business and the related intellectual property rights by territory, so that the Aurelius Group acquired certain intellectual property rights for “Viking” and certain domain names with regards to the European territory and the Respondent remained the owner of the intellectual property rights for “Viking” and certain domain names for the rest of the world.

As a result of this transaction, the Complainant became the owner of a number of trademark registrations of the sign VIKING, including the following registrations:

– The European Union (“EU”) trademark VIKING with registration No. 009672445, registered on July 21, 2011, for services in International Class 35;

– The trademark VIKING with registration No. UK00002025546, registered in the United Kingdom of Great Britain and Northern Ireland on June 1, 2001, for goods and services in International Classes 9, 16, 17, 20, 21, 35, and 42;

– The trademark VIKING with registration No. 2P-444137, registered in Switzerland on July 22, 1997, for goods and services in International Classes 1, 5, 9, 11, 16, 17, 18, 20, 21, 22, 25, 27, 28, 30, 35, and 42; and

– The trademark VIKING with registration No. 168503, registered in Austria on February 26, 1997, for goods and services in International Classes 1, 5, 9, 11, 16, 17, 18, 20, 21, 22, 25, 27, 28, 30, 35, and 42.

Following the same transaction, the company Viking Office Products, Inc. – a member of the Respondent’s group, remained the owner of the following trademark registrations of the sign VIKING:

– The trademark VIKING with registration No. 607482, registered in Australia on July 21, 1993, for goods in International Class 9;

– The trademark VIKING with registration No. 928680, registered in Chile on August 20, 2011, for services in International Classes 35 and 39;

– The trademark VIKING with registration No. 4644187, registered in Japan on February 14, 2003, for goods in International Class 16;

– The trademark VIKING with registration No. 491980, registered in the Republic of Korea on April 25, 2001, for goods in International Class 21;

– The trademark VIKING with registration No. 95/10908, registered in Malaysia on October 14, 1995, for goods in International Class 21;

– The trademark VIKING with registration No. 199157, registered in the Russian Federation on January 31, 2001, for services in International Class 42; and

– The trademark VIKING with registration No. 160929, registered in Turkey on October 16, 1995, for goods in International Class 16.

The disputed domain name was registered on March 24, 1994. It currently redirects visitors to an active webpage at the domain name <officedepot.com>.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant’s VIKING trademarks.

The Complainant states that as a result of the December 31, 2016 acquisition of the Respondent’s European business by the Aurelius Group, the disputed domain name was assigned to the Complainant, as the intention of the parties to the transaction was to transfer to the Aurelius Group all trademarks and corresponding domain names necessary for the continuation of the European business, and the disputed domain name was exclusively used for the European business. Even though the disputed domain name is not listed in the annexes to the intellectual property assignment agreements for the transaction, these assignment agreements include a “wrong pockets” clause that requires the intellectual property rights corresponding to the European territory that have not been transferred to the Complainant’s group to be transferred to it in a short period of time. When the Complainant noticed that the disputed domain name had not been transferred to it, it contacted the Respondent and asked for its transfer.

The Complainant further states that the Respondent is not interested in the use of the sign “VIKING” for goods and services, as it has ceased the use of this sign outside of Europe back in 2002 and has allowed its VIKING trademark registrations in the United States and Canada to expire. The Respondent does not use the disputed domain name by itself for commercial purposes, and does not promote, offer or sell any goods or services on the associated website. According to the Complainant, the only use of the disputed domain name is the redirection to the Complainant’s website at “www.viking-direct.co.uk”. (As noted above, however, it seems to redirect to an active webpage at the domain name <officedepot.com>.)

The Complainant contends that the disputed domain name has been registered and used in bad faith by the Respondent. The Complainant says that in spite of the assignment to it and fact that the disputed domain name is related to the European business, the Respondent is considering the sale of the disputed domain name to an unrelated third party. By doing so, the Respondent intends to misleadingly divert consumers and to tarnish the Complainant’s VIKING trademarks, as the disputed domain name is shown on the catalogues of the Complainant. Such sale would result in the discontinuance of the redirection of visitors accessing the disputed domain name to the Complainant’s website at “www.viking-direct.co.uk”.

According to the Complainant, this conduct of the Respondent shows that it has maintained and refuses to transfer the disputed domain name to the Complainant except for valuable consideration in excess of the Respondent’s out-of-pocket costs and that the Respondent has maintained the disputed domain name primarily for the purpose of selling or transferring it to a third party. According to the Complainant, it would thus be forced to buy the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, even though it was already the Complainant’s property and the Complainant possessed earlier rights in the Complainant’s VIKING trademarks. In the Complainant’s submission, the Respondent, by trying to sell the disputed domain name to a third unrelated party, which might be a competitor to the Complainant, has maintained its registration in order to prevent the Complainant from reflecting the Complainant’s VIKING trademarks in a corresponding domain name. The Complainant also notes that the sale of the disputed domain name to a third party would impede the redirection of visitors to the Complainant’s website and thus disrupt its business.

B. Respondent

The Respondent states that it has registered the disputed domain name in good faith and has used it in good faith in conjunction with its VIKING office products business for more than fifteen years. The Respondent says that it has rights and legitimate interests in the disputed domain name, and that the Complainant knew this when it filed this Complaint in a last-ditch effort to stop a sale of the disputed domain name, thus abusing the UDRP. The Complainant’s attempt to have its contractual dispute with the Respondent heard before a UDRP panel, instead of the competent courts, is misguided. The Respondent’s arguments in support of these statements are set out below.

The Respondent states that in light of its 1998 merger with Viking Office Products, Inc., and as a related company of the holder of certain VIKING trademarks, the Respondent had a good faith basis for the registration of the disputed domain name and for its use. The Respondent points out that its group has owned trademark registrations for VIKING in the United States, and continues to own VIKING trademarks registered in Australia, Chile, China, Japan, the Republic of Korea, Malaysia, New Zealand, the Russian Federation, South Africa, Taiwan Province of China, and Turkey. Even though the Respondent’s group’s United States trademarks have subsequently lapsed, the Respondent had rights and legitimate interests as of the date of the registration of the disputed domain name, which is the date on which the existence of such rights and legitimate interests is relevant, not some later date.

The Respondent contends that its rights and legitimate interests in the disputed domain name predate any rights that the Complainant asserts. The disputed domain name was registered to the Respondent many years before the Respondent entered into negotiations to sell its European business to the Complainant’s group, and the Complainant was incorporated on December 15, 2016. The Respondent has been the registrant of the disputed domain name since at least as early as October 20, 2004. Prior to that date, an affiliated entity, Office Club, Inc. was listed as the registrant of the disputed domain name at least as early as November 16, 2001. On April 5, 2010, the registration was transferred to another of the Respondent’s related companies, Officesupplies.com Inc., but was transferred back to the Respondent on June 6, 2011, and has been held by it continuously since then.

The Respondent acknowledges that, as a result of the sale of certain EU and European national trademarks, the Complainant has VIKING trademarks rights that are valid in Europe. The Complainant’s rights, however, are not global nor exclusive and do not blot out the Respondent’s current rights to certain VIKING trademarks, nor do they retroactively undo the Respondent’s historic rights to the VIKING trademarks as were in effect at the time of the registration of the disputed domain name.

According to the Respondent, the Complainant deceptively asserts prior rights to the disputed domain name to obtain its transfer despite the fact that the Complainant did not purchase the disputed domain name along with the other assets it purchased from the Respondent. The Respondent refers to the Complainant’s letter of November 13, 2017, where the Complainant acknowledges that it has made several offers to the Respondent to purchase the disputed domain name prior to the filing of the Complaint and after the Respondent informed the Complainant that it intended to sell the disputed domain name. According to the Respondent, such offers are inconsistent with the Complainant’s claims that the Complainant already owns the disputed domain name and are an admission to the contrary.

The Respondent denies that it has registered and used the disputed domain name in bad faith. The Respondent does not contest that it makes efforts to sell the disputed domain name, but points out that it is free to use or sell its lawful property as it sees fit. According to the Respondent, the real dispute between the Parties is not whether the Respondent is a cybersquatter; it is rather contractual in nature and is ill-suited for resolution under the UDRP.

The Respondent requests that the Panel state in its decision that the Complaint was brought in bad faith and constitutes reverse domain name hijacking under the Policy. In support of this request, the Respondent submits that the Complainant has filed this Complaint with brazen disregard for the Respondent’s rights to the disputed domain name which arise from group ownership of corresponding trademark rights for over fifteen years and from use of the disputed domain name in conjunction with its office supplies business. The Respondent says that the Complainant falsely paints it as a cybersquatter, fabricating its alleged bad faith registration and use of the disputed domain name. The Respondent says that this amounts to reverse domain name hijacking.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

As is apparent from the evidence submitted by the Complainant, it owns a number of registrations for VIKING trademarks in various European jurisdictions, including in particular, European Union trademark registration No. 009672445 for VIKING, registered on July 21, 2011. This satisfies the Panel that the Complainant has established that it owns registered trademark rights in the VIKING mark for the purposes of the Policy.

The Panel notes that a common practice has emerged among UDRP panels under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore “viking”, which is identical to the VIKING trademarks referred to by the Complainant. In view of this, the Panel finds that the disputed domain name is identical to the VIKING trademarks in which the Complainant has rights. As a result, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that as a result of the 2016 acquisition of the Respondent’s European business by the Aurelius Group, the disputed domain name was assigned to the Complainant, on the ground that it was exclusively used for the European business and was necessary for its continuation, although it was not listed in the annexes to the intellectual property assignment agreements for the transaction. The Complainant further states that the Respondent is not interested in the use of the sign “VIKING”, as it does not use the disputed domain name by itself and has allowed its VIKING trademark registrations in the United States and Canada to expire, while configuring the disputed domain name to redirect visitors to the Complainant’s website at “www.viking-direct.co.uk” and subsequently to an active webpage at the domain name <officedepot.com>.

The Respondent states that in light of its 1998 merger with Viking Office Products, Inc., and as a related company of the holder of certain VIKING trademarks, the Respondent has rights and legitimate interests in the disputed domain name which predate any rights of the Complainant. The Respondent points in this regard to its group company ownership of current trademark registrations for VIKING in the United States, Australia, Chile, China, Japan, the Repubic of Korea, Malaysia, the Russian Federation, and Turkey and notes that the disputed domain name was registered to the Respondent many years before it entered into negotiations to sell its European business to the Complainant’s group and that the Complainant was only incorporated on December 15, 2016. The Respondent acknowledges that the Complainant has rights in certain European Union and European national trademarks, but these rights are not global or exclusive and do not affect the Respondent’s current rights to certain VIKING trademarks or the Respondent’s historic rights to the VIKING trademarks at the time of the registration of the disputed domain name. According to the Respondent, the Complainant has admitted that it does not have rights to the disputed domain name, by acknowledging in its letter of November 13, 2017, that prior to the filing of the Complaint it made various offers to the Respondent to purchase the disputed domain name.

Having reviewed the case file and considered the submissions of the Parties, the Panel has reached the conclusions set out below.

The Respondent has provided evidence that its affiliate Viking Office Products, Inc. is currently the holder of valid registrations of the VIKING trademark in a number of jurisdictions outside Europe, including Australia, Chile, China, Japan, the Republic of Korea, Malaysia, the Russian Federation, and Turkey, the earliest of which registrations dates back to 1993. As is evident from the historic WhoIs records submitted by the Respondent, it or its related companies have been the registrant of the disputed domain name since March 29, 2001. As is also evident from the Wayback Machine records at “www.archive.org”, the Respondent has used the disputed domain name for a commercial website offering office supplies since at least January 1, 2011, and at some point in 2011, started using the disputed domain name to redirect visitors to the Respondent’s commercial website at the domain name <viking-direct.co.uk>, which also offered office supplies. The domain name <viking-direct.co.uk> was operated by the Respondent’s group until the 2016 transaction with the Complainant’s group for the Respondent’s European business. Subsequently the disputed domain name redirects to an active webpage at the domain name <officedepot.com>.

In view of the above, the Panel is satisfied that before any notice to it of the dispute, the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services, which supports a finding under paragraph 4(c)(i) of the Policy that the Respondent has rights and legitimate interests in the disputed domain name.

The domain name <viking-direct.co.uk>, to which the disputed domain name has redirected visitors since 2011, was transferred to the Complainant’s group with the 2016 transaction for the Respondent’s European business. However, the disputed domain name was not explicitly included in the list of domain names that were transferred to the Complainant’s group with the same transaction, and the Parties have not provided to the Panel any agreement specifically regulating the ownership and use of the disputed domain name (either directly or through redirection to other domain names) following the 2016 transaction. The Complainant states that the disputed domain name was necessary for the Respondent’s European business so it was transferred to it with the 2016 transaction and that if this has not happened, the Respondent should transfer it to the Complainant pursuant to the “wrong pockets” clause in their agreement, but the Respondent disputes this statement and maintains that the disputed domain name was not part of the 2016 transaction and should remain with it.

The Panel notes that the administrative proceeding under the Policy is limited in scope to cases of “cybersquatting” and is not intended to resolve complex commercial or contractual disputes. A dispute between the Parties on the issue of whether the disputed domain name was intended to be transferred or should be transferred to the Complainant pursuant to the 2016 transaction between the Parties is beyond the relatively limited scope of the UDRP and would be more appropriately addressed by a court of competent jurisdiction. It is outside the scope of the policy for the Panel to opine on this issue and the Panel declines to do so.

In any case, the Panel notes that at least as of the date of the 2016 transaction the Complainant must have been aware that the disputed domain name redirected visitors to the domain name <viking-direct.co.uk>, which is evident from the Complainant’s letter to the Respondent of November 13, 2017. In such situation, one would expect the Complainant to have raised with the Respondent during the negotiations for the 2016 transaction the issue of the use of the disputed domain name following the 2016 transaction. There is no evidence on the record that such a discussion took place or indeed to support the Complainant’s allegation that the common understanding of the Parties was that the disputed domain name was part of the Respondent’s European business and should thus be transferred to the Complainant. Further, the Panel notes that the Complainant’s offer to the Respondent to purchase the disputed domain name, made following the 2016 transaction for the Respondent’s European business and acknowledged in the Complainant’s letter of November 13, 2017, raises a question as to the Complainant’s position that the Complainant should have acquired the disputed domain name.

In view of all the above, and without prejudice to the right of the Parties to have their contractual dispute finally resolved by the courts of competent jurisdiction, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name and resultantly the Complaint fails under this element of the Policy.

C. Registered and Used in Bad Faith

The Complainant bases its allegations that the disputed domain name has been registered and used in bad faith by the Respondent on the intention of the Respondent to sell the disputed domain name because such sale to a third party would result in the discontinuance of the redirection of visitors to the Complainant’s website at “www.viking-direct.co.uk”. According to the Complainant, the Respondent’s attempt to sell the disputed domain name to a third party shows that:

– the Respondent intends to misleadingly divert consumers and to tarnish the Complainant’s VIKING trademarks;

– the Respondent has maintained the disputed domain name primarily for the purpose of selling or transferring it either to a third party or to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name; and

– the Respondent, trying to sell the disputed domain name to a third unrelated party, which might be a competitor to the Complainant, has maintained its registration in order to prevent the Complainant from reflecting the Complainant’s VIKING trademarks in a corresponding domain name.

The Respondent denies the Complainant’s allegations. It does not contest that it makes efforts to sell the disputed domain name, but points out that it is free to use or sell its lawful property as it sees fit. According to the Respondent, the real dispute between the Parties is contractual in nature and it is not a question as to whether the Respondent is a cybersquatter, or not.

As discussed under Part 6.B. above, the evidence on the record shows that before any notice to it of the dispute, the Respondent had for a number of years used the disputed domain name in connection with a bona fide offering of goods or services. However, the key determinant is that the Respondent, or its group companies, owned the disputed domain name for many years prior to the 2016 transaction and the Complainant’s acquisition of the European part of the business. In these circumstances the Complainant is unable to show that the disputed domain name was registered in bad faith as required under this limb of the Policy and the Complainant must have been aware of this difficulty before it filed the Complaint.

Since the requirements for registration and use are cumulative, the lack of bad faith registration is sufficient for the Complaint to fail, so it is unnecessary for the Panel to decide whether the Respondent’s conduct in redirecting the disputed domain name to an active webpage at the domain name <officedepot.com>, or otherwise, amounts to use in in bad faith, or not.

Based on the record, it appears that the Parties did not explicitly agree to transfer the disputed domain name to the Complainant as part of their 2016 transaction. The issue as to whether they had a common intention to do so and whether the disputed domain name should be regarded as being included in the scope of the Respondent’s European business are contractual issues that go beyond the scope of the Policy and are not appropriate for resolution under the Policy. The Panel notes again that this is not a case of cybersquatting suitable for resolution under the Policy, but rather a contractual dispute that should be addressed to the courts of competent jurisdiction.

On this basis, the Panel finds that the disputed domain name was not registered in bad faith and the Complaint also fails under this element of the Policy.

D. Reverse Domain Name Hijacking

The Respondent has requested that the Panel state in its decision that the Complainant brought this action in bad faith, constituting Reverse Domain Name Hijacking (“RDNH”) under the Policy. The Panel grants the request, and hereby finds that the Complainant engaged in RDNH.

UDRP panels have found RDNH in circumstances where the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required under the Policy. As noted above, the Complaint is deficient in a number of respects.

Perhaps the most striking deficiency, however, which is sufficient in this Panel’s mind to establish RDNH, is the lack of any allegations in the Complaint as to how the Respondent registered the disputed domain name in bad faith. But looking at the circumstances in their entirety, it is not difficult to understand why there are no such allegations – the facts at hand simply do not provide any basis for them. This disregard of such a striking deficiency in the Complainant’s case is enough to sustain a finding of RDNH, and accordingly, the Panel so finds.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Presiding Panelist

Alistair Payne
Panelist

Evan D. Brown
Panelist
Date: February 23, 2018

How to Avoid Domain Name Disputes

Most domain name disputes are avoidable. Statistically, just over half of the domain name disputes are justified, according to the transfer vs denied panelist decisions of fair minded panelists. Many domain name disputes are unavoidable because complainants are over reaching or just trying to hijack a domain name because they want it without paying for it.

Owners of valuable domain names should learn the ins-and-outs of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition

John Berryhill offers a summary of many of the common mistakes that domain name owners make in this audio podcast:

How to avoid UDRP:

Armani UDRP Decision and Analysis

Armani UDRP Decision and Analysis:

The failed Armani.com UDRP complaint is an example where legitimate interests exist in an otherwise famous brand name.

Armani UDRP Complaint Summary

The UDRP panel found that the then owner of armani.com, Mr. Anand Ramnath Mani, had a legitimate interest in the armani.com domain name because his initials were A.R. and his last name was Mani, adding up to, “ARmani.”

Mr. Mani showed that he registered the Armani.com domain name in 1995, that he used the domain name for email, and that he registered the armani.com domain name because it comprised his name.

Amount Demanded For Sale of armani.com Domain Name

Mr Mani also showed that it was Armani who contacted him first, and not the other way around. In fact, Armani, through its intellectual property attorney, offered Mr. Mani  $1,240 Canadian dollars to purchase the armani.com domain name. Mr. Mani refused, and demanded $1,935 US dollars, which worked out to about $2,437 Canadian dollars – in other words just over $500 more than what the Respondent had demanded, which was a very “modest” and “reasonable” sum as the Panelist, Nick Gardener, pointed out in the decision.

Armani Deception

The Armani Complainant failed to disclose to the Panel a lengthy history including the offers that resulted in a finding that the Complainant had abused the UDRP. The Panel eloquently pointed out as well, that it is “simply wrong” for the Complainant to think that just because it has a famous brand that it can use the ICANN UDRP procedure to “dis-posses summarily” the Respondent’s domain name which consists of his initials and surname.

Status of armani.com Domain Name

According to historical Whois data, it appears that Mr. Mani ultimately transferred the domain name to the Complainant in 2004.

Armani UDRP Decision

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G. A. Modefine S.A. v. A.R. Mani

Case No. D2001-0537

1. The Parties
The Complainant is G. A. Modefine S.A. of 90, Avenue de France � CH-1004 Lausanne, Switzerland. The Respondent is Mr A. R. Mani of 205-1139 Barclay Street, Vancouver, British Columbia V6E 1G8, Canada.

2. The Domain Name and Registrar
The domain name in issue is <armani.com> (“the domain name”). The Registrar is Network Solutions.

3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (“the Center”) by e-mail on April 12, 2001 and in hardcopy on April 19, 2001.
On April 20, 2001, Network Solutions transmitted via e-mail its verification response confirming that the Respondent is the registrant of the domain name.
On April 23, 2001, the Center notified the Respondent that a complaint had been filed against him.
On May 11, 2001, the Center received an e-mail from the Respondent seeking an extension to the deadline for the Response (which had been set at May 12, 2001) to May 18, 2001. On May 11, 2001, the Center granted that extension. The Response was received by the Center by e-mail on May 18, 2001, and in hard copy on May 22, 2001.
On May 22, 2001, the Center received an e-mail from the Complainant’s Attorneys requesting an opportunity to file a Response to the Respondent’s Reply. On May 23, 2001, the Center received by e-mail from the Respondent’s Attorneys a letter objecting to the Complainant filing further material and requesting an opportunity to reply to any material filed in the event that the appointed Panel acceded to the Complainant�s request.
On June 26, 2001, the Center notified the parties that this Panel had been appointed. The scheduled date for the Panel to render its decision was July 9, 2001.
On June 26, 2001, the Panel requested, pursuant to Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) that the Complainant file a further statement within seven days confirming whether or not it accepted that the Respondent�s full name is Anand Ramnath Mani and requesting that, if and insofar as the Complainant disputed this, that the Complainant set out all facts and matters relied upon. The Panel allowed the Respondent to file a statement in response to any further statement filed by the Complainant within a further seven days.
On June 29, 2001, the Center received by e-mail from the Complainant�s Attorneys a Brief of Reply to the Respondent�s Response.
On July 4, 2001, the Center received an e-mail from the Respondent�s Attorneys requesting a right of further reply, in particular, advising the Center that the Respondent had requested a copy of his baptismal certificate.
On July 5, 2001, the Panel responded to the Respondent�s Attorney�s e-mail dated July 4, 2001, allowing the Respondent a further seven days to file a reply to the Complainant�s Brief of Reply. The Panel informed the parties that it would be likely to consider further evidence as to the Respondent�s baptismal name relevant. The revised scheduled date for the Panel to render its decision is July 20, 2001.
On July 10, 2001, the Center received by e-mail from the Respondent�s Attorneys the Respondent�s Reply. The hard copy was received by the Center on July 12, 2001.
A statement of acceptance and declaration of impartiality and independence has been filed by the Panel.
The Complainant is represented by Avvocata Mariacristina Rapisardi of Studio Rapisardi S.A., Via Ariosto, 6-6901 Lugano-CH. The Respondent is represented by Robert J Lesperance of Lesperance Mendez Mancuzo, 419-900 Howe Street, Vancouver, British Columbia, Canada V6Z 2M4.

4. Factual Background
The Complainant is the registered proprietor of the trademarks “ARMANI” “GIORGIO ARMANI” “EMPORIO ARMANI” registered in a large number of countries including the United Kingdom, the United States of America and Canada.
The Respondent is a graphic artist and technical illustrator. His full name is Anand Ramnath Mani (see further below). According to the Respondent�s evidence he has been trading under the name “A.R.Mani” since 1981. The evidence filed in this respect includes a copy of the Respondent�s business card (stated first to have been used in 1982), an advertising flyer (stated first to have been published and used in 1990), evidence that the Respondent was using the e-mail address armani@breez.wimsey.com from August 1992 and various documents and correspondence addressed to the Respondent as “A.R.Mani” or “Anand R. Mani”.
The Respondent filed evidence to show that his full name is Anand Ramnath Mani. This consists of pages from the Vancouver Telephone directory indicating the Respondent as “Mani, Anand R” (1988) and “Mani, A R” (1993) and a certified copy of his Finnish Baptismal Certificate which states that Anand Ramnath Mani was born in Helsinki, Finland, on June 24, 1954. The Vancouver telephone directory pages show that the surname “Mani” is not that uncommon, with some 20 or so entries.
The Respondent registered the domain name on February 20, 1995 (although he has provided some evidence to show that he took steps to register the domain name in 1994).
Whilst the Respondent does not have a website at the domain name address, he uses the e-mail addresses info@armani.com, me@armani.com and arm@armani.com. The Respondent has provided copies of a number of e-mails sent to or by him at these addresses.
The Respondent has provided formal declarations from himself and from a third party attesting to the above matters.
The Respondent was first contacted by US lawyers representing the Complainant (or Mr. Giorgio Armani) in 1995, or thereabouts. By letter dated May 22, 1997, the Complainant’s US Attorneys offered the Respondent Canadian $1,250 for the domain name. On August 15, 1997 the Respondent made a counter-offer of $1,935 USD and also requested that the Complainant not oppose his registration of the domain name <amani.com>. By letter dated September 29, 1997, the Complainant�s US Attorneys rejected the Respondent’s counter-offer. This background has become apparent in the papers filed by the Respondent and to some extent in the Brief of Reply, but is not mentioned in the Complaint.
The Attorneys representing the Complainant in this Complaint sent a letter to the Respondent dated January 23, 2001, which states that the Complainant “has recently come to know that you registered the domain name ‘armani.com’ “ and invited the Respondent to “consider the possibility of settling the matter in a friendly way”. The Respondent sent an e-mail in response to this letter which amongst other matters, stated that the Respondent had spoken with employees of the Complainant over the years, that he had offered to share the domain, that he had been told that the Complainant would not object if he registered <armani.ca> but that this offer was later retracted and that he offered to give up the domain name and register <amani.com> but that this offer was also unacceptable to the Complainant.

5. Parties’ Contentions
A. Complainant
The Complainant’s contentions (which are lengthy) are summarized below.
The domain name is identical to the Complainant’s trademarks.
The Respondent does not have any legitimate interest in the domain name as the domain name “does not correspond neither to the name, nor to the surname of the respondent; nevertheless to its name or surname [sic]”. Nor is it an acronym of his initials.
It is not relevant that the Respondent’s complete name may be Anand Ramnath Mani.
The Respondent could have registered a domain name which would easily distinguish himself from the “ARMANI” mark, for example “anandrmani” or “a-r-mani”.
No evidence has been provided by the Respondent to show use of the domain name before notice of the dispute as no website has been constructed and no activities are being carried out under the domain name. The Respondent has not proved that he is using the domain name as an e-mail address nor that he uses the name “Armani” in connection with his activities.
No prohibitive value should be attached to the documents filed by the Respondent to show that he is commonly known by the domain name in the light of the strength of the reputation attaching to the ARMANI trade mark.
The confusion caused by the Respondent allows him to exploit the notoriety of the Complainant’s marks because “every day, all over the world, people which are looking for the site of the famous stylist, finds, with surprise, the site of Mr. Anand Mani in Vancouver”.
As far as bad faith is concerned, the Respondent refused the sum of Canadian $1,250 and asked for $1,935 USD and that the Complainant not oppose his registration of the domain name <amani.com>.
The Respondent is not using the domain name, has provided no evidence of an effective use of the domain name. Given that the ARMANI mark is famous world-wide, the Respondent must be taken to have known before formal notice of the Complaint that his registration of the domain name was infringing the Complainant’s rights.
Even if the domain name is used only as an e-mail address, it is being “intentionally used to exploit the notoriety and importance of the complaint and to take advantage from the unlawful use of the GA Modefine’s trademarks [sic]”. Moreover the fact that the domain name is not currently being used as a website “does not guarantee that in the future the respondent will not unlawfully use it worsening the situation on interference with Modefine’s trademarks already effected through registration of the domain name at stake [sic]”.
B. Respondent
The Respondent’s contentions are summarized below.
The Respondent’s full name is Anand Ramnath Mani. His Finnish birth certificate could not be located but this would likely have confirmed his parents names but not his own. Third party evidence was provided confirming that this was likely to be the case. The certified copy of the Respondent’s baptismal certificate and his Canadian Citizenship certificate show that his full name is as pleaded.
The domain name is not confusingly similar to the Complainant’s trademark. A detailed analysis of the Canadian case law on confusion in the trademark context is set out in the Response. In short, there is no risk of confusion because of the divergence between the goods sold by the Complainant and the services offered by the Respondent, and between their respective trade channels.
The Complainant has not filed any evidence to support its allegation of confusion.
The Respondent has a legitimate interest in respect of the domain name by virtue of the use of the name “A.R. Mani” in connection with his graphic design/illustrator business as early as 1981. Moreover the domain name was registered in February 1995, which predates the date the Complainant notified the Respondent that it disputed its ownership of the domain name.
Insofar as the Complainant suggests that the Respondent is required to show that he has used the domain name in order to establish a legitimate interest, the Complainant is incorrect. Rather, the Respondent has only to show that he used the domain name or a name corresponding to the domain name.
There is no evidence that the Respondent intended to use the domain name for commercial gain by diverting consumers or tarnishing the Complainant’s marks.
The Complainant’s assertion that the Respondent could have registered the domain name “anandrmani” or “a-r-mani” rather than <armani.com> is irrelevant.
There is no evidence to show that the Respondent registered his domain name with the intent to offer, sell, transfer or lease it to the Complainant. The Complainant approached the Respondent to purchase the domain name and not the other way around. It was only on the basis of the threat of legal action that the Respondent considered negotiating with the Complainant to assign the domain name.

6. Discussion and Findings
The Panel has reviewed the Complaint, the Response, the Complainant’s Brief of Reply and the Respondent’s Reply, together with documents exhibited and annexed thereto. In the light of this material, the Panel finds as set out below.
It is beyond dispute that the Complainant has trademark rights in the “ARMANI” name. The domain name is identical to the “ARMANI” trademark. The Complainant is therefore within paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”). The Panel accepts that the name ‘Armani’ is a very widely recognized name, registered worldwide in respect of various classes of luxury goods. Given the identical correspondence between the domain name and this trademark, the Respondent’s detailed analysis of the test for determining confusion between trademarks under Canadian law is not relevant to these proceedings.
This is, of course, not the only criterion that the Complainant has to satisfy. It also needs to show that the Respondent has no legitimate interest in the domain name and that the domain name has been registered by him in bad faith.
What has emerged in the evidence that has been filed is that the Complainant accepts that Anand Ramnath Mani is the Respondent’s real name. The original Complaint was unclear in this regard (the original Complaint is surprisingly brief and contains a number of inconsistencies, including as to whether or not a website and e-mail addresses were being used by the Respondent). Matters have been clarified following the various procedural steps described above. Detailed evidence has been filed by the Respondent (see above) and this matter is not in dispute. This is therefore not a case of the type sometimes encountered, where an opportunistic registrant adopts a name which is intended to give a spurious air of legitimacy to an otherwise questionable registration.
One only has to identify this as being the situation to expose the difficulty which the Complainant then faces. The Complainant’s case that the Respondent has no legitimate interest rests in essence on suggesting that the Respondent should not have registered a name which is a mixture of his own initials and surname but should instead have registered his own full name or some other variant of it. The Panel rejects that submission. It is very common practice for people and organizations to register domain names which are based upon initials and a name, acronyms or otherwise variants of their full names. So far as the Panel understands the Complainant’s submission at all, it seems to be predicated on the fact that by doing so the Respondent is likely to cause confusion with the Complainant’s mark that wrongly imports into the test for legitimate interest an element of confusion or bad faith.
So far as bad faith itself is concerned, the Complainant initially relied upon the Respondent’s registration itself as bad faith. Following the Respondent’s evidence, the Complainant has also sought to rely upon the Respondent’s offer to sell the name for $1,935 USD. This was made as long ago as 1997. The failure by the Complainant to refer to this initially is surprising. The statement made by the Complainant’s Attorneys in their Brief of Reply that they only traced the 1997 correspondence in June 2001, does not explain this omission (not least because the Respondent mentioned the history of the dispute in his e-mail to the Complainant’s Attorneys sent in response to their letter to him dated January 23, 2001). The sum is no doubt more than the registration costs of the name. The Panel does not, however, find that it constitutes bad faith. It is a relatively modest sum, far removed from the sort of amounts which were typically sought (especially in 1997) by “cybersquatters”. The evidence establishes that a legitimate business was in existence and presumably if the domain name were changed, costs such as changing stationery and the like would be involved. The figure suggested by the Respondent in his counter-offer seems entirely reasonable. It is a matter for the Complainant as to why it did not accept that offer. Its apparent belief that simply because it is the undisputed owner of a world-famous name it can use the ICANN procedure to dispossess summarily a third party of what is a combination of his initials and surname, which on the evidence he has used in a bona fide manner since the early 1990s, is simply wrong. The Panel also finds that the Respondent’s willingness as part of his 1997 counter-offer to register the domain name <amani.com> is further evidence of his lack of bad faith.
The Panel finds the failure of the Complainant in its Complaint to set out any of the clearly lengthy background to this dispute is surprising. The Complainant or entities associated with it have been pursuing the Respondent since 1995, through various representatives. The Panel is left with a strong sense that the reason these actions have led nowhere is because they come up against the same issue as has been identified in these proceedings, namely, the Respondent’s legitimate use of a variant of his own name. The Complaint states (at paragraph 20) in accordance with the Policy, that “the Complainant certifies that the information contained in the Complaint is to the best of the Complainant’s knowledge complete and accurate”. The Panel does not see how that could properly have been said. In the circumstances, the Panel concludes, pursuant of paragraph 15(e) of the Rules, that this Complaint has been brought in bad faith, and that it constitutes an abuse of the administrative proceeding.

7. Decision
In the light of the above findings, the Panel’s decision is as set out below.
So far as paragraph 4(a)(i) of the Policy is concerned, the Panel concludes that the domain name is identical to the Complainant’s “ARMANI” mark.
As far as paragraph 4(a)(ii) of the Policy is concerned, the Panel is satisfied that the Respondent has a right to and/or a legitimate interest in the domain name by virtue of the domain name corresponding to the Respondent’s first two initials and his surname.
So far as paragraph 4(a)(iii) of the Policy is concerned, the Complainant has failed to show that the domain name was registered in bad faith or that it was subsequently used in bad faith.
The Panel therefore declines to find that the domain name should be transferred or cancelled.
The Panel finds this Complaint to be an abuse of the administrative proceeding.
No further action is required to implement the Panel’s decision.

 

Nick Gardner
Sole Panelist

Dated: July 20, 2001

hakoba.com RDNH: Hakoba Lifestyle Limited v. Mukesh Shah, WIPO Case No. D2017-0675

The WIPO panel found that Hakoba Lifestyle Limited tried to hijack the domain hakoba.com from Mukesh Shah in a UDRP complaint, WIPO Case No. D2017-0675.
The respondent won even though it offered to license hakoba.com for USD 500,000 because:

  • The panel noted that although Mukesh Shah emailed the Complainant on June 26, 2013, offering a “counter-proposal” whereby, amongst other things, the Respondent would licence the HAKOBA mark and the disputed domain name <hakoba.com> to Pioneer on certain terms including assignment of the HAKOBA mark to Pioneer once Pioneer had paid in aggregate USD 500,000 in licensing fees, Hakoba Lifestyle Limited failed to prove its case.

The Panel’s Basis for a finding RDNH:

The panel wrote:

  • In particular, the Complainant has provided no evidence suggesting that the Respondent had the Complainant in mind when, in 1998, it registered the first of the disputed domain names and started using the name “hakoba sarees”. The Complainant’s United States trade mark was filed in 2004 and the Indian trade marks owned by the Complainant’s related company were filed in 2003.
  • The Complainant claims that it started using the name “Hakoba” in India as early as 1955 and the Complainant’s United States trade mark claims a “first use” date of 1961 but the Complainant has provided no evidence of any level of trading activity – either before or after registration of the disputed domain names.
  • … in the Panel’s opinion, the Complainant knew or at least should have known that it could not prove one or more of the essential UDRP elements. The Complainant’s representatives quoted extensively from UDRP case law and the Panel thinks it unlikely that they were unaware of the need to provide evidence to support their key assertions including as to the extent and history of the Complainant’s alleged use of its mark.

hakoba.com rdnh

The hakoba.com domain name is a going business worth $500,000


Here is the WIPO administrative panel decision in

Hakoba Lifestyle Limited v. Mukesh Shah

Case No. D2017-0675

1. The Parties

The Complainant is Hakoba Lifestyle Limited of Mumbai, India, represented by Vishal Rajkumar Sekhani, India.
The Respondent is Mukesh Shah of Floral Park, New York, United States of America (“United States”), represented by Steven Rinehart, United States.

2. The Domain Names and Registrar

The disputed domain names <hakoba.com>, <hakobasaree.com>, and <hakobasarees.com> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 5, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 9, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2017. The Response was filed with the Center on May 2, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on May 12, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, an Indian company, trades under the name “Hakoba”, specialising in “embroidery sarees”, fabrics, laces and dress materials, and other fashion products.
The Complainant operates websites at “www.hakoba.in” and “www.pelhakoba.com”.
The Complainant owns United States registered trade mark no. 4822272 for the stylised term HAKOBA (the “o” is heart-shaped), filed December 7, 2004, registered September 29, 2015, in international classes 24, 25 and 26. The “first use in commerce” date was given as February 3, 2009. The “first use” date was given as 1961.
Pioneer Embroideries Limited (“Pioneer”) (an Indian company and part of the Complainant’s group) owns three Indian registered trade marks nos. 423501, 631293 and 417365 for the same stylised term HAKOBA, all filed on June 19, 2003, and registered in classes 24, 25 and 26, respectively.
The disputed domain names were registered on the following dates:
<hakoba.com>: August 5, 1998
<hakobasarees.com>: October 11, 2002
<hakobasaree.com>: September 27, 2006
The Respondent conducts business through two United States corporations, “Fujiyama Fabrics, Inc” and “Hakoba Sarees, Inc.” and has used the disputed domain names for websites offering “Hakoba sarees” for sale.
On June 26, 2013, the Respondent emailed the Complainant offering a “counter-proposal” whereby, amongst other things, the Respondent would licence the HAKOBA mark and the disputed domain name <hakoba.com> to Pioneer on certain terms including assignment of the HAKOBA mark to Pioneer once Pioneer had paid in aggregate USD 500,000 in licensing fees.

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows:
The Complainant invented the name “Hakoba” and first started using it in India in 1955. The Complainant has consistently used this term to advertise its goods and services.
The Complainant has owned a registered trade mark in India since 1961.
The mark HAKOBA is well known and exclusively associated with the Complainant. The Complainant has invested significant resources in establishing its rights in the name “Hakoba” and possesses substantial and valuable goodwill therein.
The disputed domain name <hakoba.com> fully incorporates, and is identical to, the Complainant’s trade mark, thereby causing a likelihood of confusion and infringing the Complainant’s trade mark.
The similarity is enhanced because the Respondent operates in a similar industry to the Complainant, including an Internet service. Both the Complainant and the Respondent share a base of potentially Internet-savvy customers who are interested in fashion and traditional apparel, and embroidery.
A Google.com search for “Hakoba” brings up both the Complainant’s site and the Respondent’s website at the disputed domain name <hakoba.com> on the first page of search results.
Registration of a domain name before a complainant acquires trade mark rights does not prevent a finding of confusing similarity.
The Respondent’s company opposed the Complainant’s United States trade mark application but the opposition was rejected by the United States Trademark Trial and Appeal Board (“TTAB”) on the basis that the Complainant’s first use of the mark in connection with fabric and trimmings preceded the first use by the Respondent’s company in connection with sarees.
The Respondent lacks rights and legitimate interests in respect of the disputed domain name <hakoba.com>. Mere registration of a disputed domain name, even one incorporating “a well-known word that appears in a dictionary”, does not by itself confer rights and legitimate interests.
It is not immediately apparent to visitors to the Respondent’s website that it is not operated by the Complainant. There is no disclaimer. The Respondent’s email address “[username]@hakoba.com” creates the strong impression that the Respondent is the Complainant’s employee or agent. Moreover, email intended for the Complainant may be sent to the Respondent by mistake.
The disputed domain names were registered and are being used in bad faith.
The Respondent’s USD 500,000 offer in June 2013 was exorbitant and unreasonable and constitutes a bad faith offer for sale under paragraph 4(b)(i) of the Policy. This is a higher amount than that offered in other cases where UDRP panels have found offers for sale to have been made in bad faith. The Respondent’s offer of “terms” was effectively the same as an attempt to sell the disputed domain name <hakoba.com> at a substantial and unreasonable profit to himself.
Certain UDRP panels have interpreted paragraph 2 of the Policy as an ongoing warranty that a domain name will not be used in bad faith. Here the Respondent has breached the Policy’s requirement not to infringe third-party trade mark rights despite becoming aware of the TTAB’s opinion in August / September 2014 which found that the disputed domain name <hakoba.com> was infringing the Complainant’s rights and dismissing the opposition by the Respondent’s company.
The Respondent’s registration and use of the disputed domain names disrupts the Complainant’s business and e-commerce website by diverting traffic from the Complainant to the Respondent and also interferes with the Complainant’s ability to promote its products under the HAKOBA mark.
Although residing in the United States, the Respondent is of Indian origin and his merchandise is focused on the Indian community. The Respondent is well aware of the Complainant’s brand but is nonetheless misleading customers by referring to plans to expand franchise stores not just in cities in the United States with large Indian populations but also in major cities in India.
The Respondent registered and used the disputed domain names to create confusion and the Complainant has suffered loss of business and goodwill as a result.

B. Respondent

A summary of the Respondent’s contentions is as follows:
The Respondent registered the disputed domain names because of their descriptive meanings.
Dictionaries show that “hakoba saree” is a generic term. The word “saree”, also spelt “sari”, has been imported into English and means a cotton or silk garment worn by Hindu women. In India, the term denotes “embroidery”. The word “hakoba” means “good” in Gujarati. The combined term means “fine embroidery” or “good dress”.
There are many third-party websites which use the terms “hakoba” and “sarees” in such a generic / descriptive manner.
The disputed domain names have provided the Respondent’s primary source of income for 20 years.
The Respondent’s use of the expressions “hakoba” and “hakoba saree” pre-dates registration of the disputed domain names by several years. Newspaper cuttings and other documents dating back to 1998 demonstrate use of the terms by various companies of the Respondent as well as the generic nature of those terms.
The Complainant had no registered or common law trade marks when any of the disputed domain names were registered. The only registered trade mark asserted by the Complainant was issued in 2015, 17 years after registration of the disputed domain name <hakoba.com>.
The Complainant does not draw attention to the TTAB’s holdings. Amongst other things, the TTAB held that the Respondent had demonstrated its first sale of branded goods in the United States by February 3, 1999, predating the Complainant’s earliest use dates. The Respondent registered the disputed domain name <hakoba.com> a year before the first use date recognised by the court. (The Panel notes that this appears to be a misreading of the TTAB holding, confusing the identities of the “Opposer” and “Applicant”, and that the February 3, 1999 date in the holding refers to the Complainant’s first sale date in the United States and not that of the Respondent. However, the Panel does not address this issue further as it does not consider the TTAB holding to be relevant to this case, partly because it relates only to the United States.)
The Complainant sidesteps the issue of the registration date, falsely asserting that the Respondent registered the disputed domain names after the Complainant had acquired trade mark rights. Registration date of a disputed domain name before the Complainant accrued trade mark rights is a bar to recovery. (Again, this assertion appears to be based on a mistaken reading of the TTAB holding. See the Panel’s comment above.)
In any case, the Respondent registered the disputed domain names in good faith and none of the factors in paragraph 4(b) of the Policy apply.
The Complainant’s 19-year delay in asserting its rights in inexcusable and there is no reasonable explanation. The Complainant’s claims should therefore be barred on the grounds of laches.
The Complainant has ignored its three-pronged burden of proof and makes unsubstantiated allegations.
The Complainant is guilty of reverse domain name hijacking. It had no bona fide basis for commencing this proceeding. The Complainant knew that there was no plausible basis for a complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the mark HAKOBA by virtue of its United States registered trade mark for the stylised term “hakoba”.
Disregarding the suffix, the mark is identical to the disputed domain name <hakoba.com>.
The mark is confusingly similar to the other two disputed domain names <hakobasaree.com> and <hakobasarees.com>, as these simply consist of the term “hakoba” plus the descriptive terms “saree” and “sarees”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

It is unnecessary to consider this element in light of the Panel’s conclusion below under the third element.

C. Registered and Used in Bad Faith

The documents produced by the Respondent show that, through two United States corporations, Fujiyama Fabrics, Inc and Hakoba Sarees, Inc., (the latter incorporated in 1999), the Respondent has been engaged in the supply of what it describes as “hakoba sarees” since around the time that it acquired the disputed domain name <hakoba.com> in 1998. The Respondent has used websites at the disputed domain names for that purpose.
The Respondent says that “saree” is a generic term meaning either a dress worn by Hindu women or simply embroidery and that “hakoba” in Gujarati means “good” or “fine”. He maintains that the combination of the two, “hakoba saree”, is also a common generic term, meaning simply “fine embroidery” or “good dress” and that that was the reason that the Respondent originally selected the disputed domain names.
The Respondent has produced an article from the News India-Times dated September 11, 1998, which quotes the Respondent as stating that Fujiyama Fabrics, Inc, specialises in “manufacturing Hakoba sarees, a special knitted variety suitable for both summer and winter wear, making it the only firm manufacturing hakoba sarees in the United States on a large scale”. This supports the Respondent’s contention that “hakoba saree” is generic, although it does muddy the water somewhat because the meaning given here is not quite the same as the one proposed by the Respondent above.
In any case, the Respondent has also produced extensive Google search results which indicate widespread third party use of the term “hakoba” in connection with “saree” in a manner which appears to be generic or descriptive rather than denoting the Complainant’s brand in particular.
The Complainant does not say much on the subject. It does claim at one point that it invented the name “Hakoba” but it arguably contradicts this by asserting elsewhere in the Complaint that, even a domain name incorporating a “well-known word that appears in a dictionary”, does not by itself confer rights and legitimate interests.
Weighing up all the evidence, it appears to the Panel that the words “hakoba” and “saree” are commonly used together in a generic and/or descriptive sense. And there is nothing before the Panel to indicate that the Respondent adopted the terms other than in such a context.
In particular, the Complainant has provided no evidence suggesting that the Respondent had the Complainant in mind when, in 1998, it registered the first of the disputed domain names and started using the name “hakoba sarees”. The Complainant’s United States trade mark was filed in 2004 and the Indian trade marks owned by the Complainant’s related company were filed in 2003.
The Complainant claims that it started using the name “Hakoba” in India as early as 1955 and the Complainant’s United States trade mark claims a “first use” date of 1961 but the Complainant has provided no evidence of any level of trading activity – either before or after registration of the disputed domain names.
One submission of the Complainant casts some degree of doubt as to the extent to which the Complainant’s rights do indeed pre-date those of the Respondent; the Complainant asserts that registration of a domain name before a complainant acquires (presumably registered) trade mark rights does not prevent a finding of confusing similarity. But the Complainant does not squarely address the issue.
The Complainant relies on the Respondent’s USD 500,000 “offer” of June 2013. However, the Panel does not consider that this assists the Complainant. That communication is in the form of a “counter-proposal” made in the course of settlement negotiations (full details of which have not been provided to the Panel) some 15 years after the first disputed domain name was registered and seven years after registration of the last one. This “offer” therefore gives little indication of the Respondent’s state of mind at the time of registration of any of the disputed domain names and, in any case, the Panel considers that it falls well short of constituting an unsolicited offer, such as would satisfy paragraph 4(b)(i) of the Policy.
For the above reasons, the Panel finds that the Complainant has failed to establish registration of the disputed domain name in bad faith. The Complainant has therefore failed to establish the third element under the Policy, which requires the Complainant to prove both registration and use in bad faith.
In the circumstances, the Panel has not considered it necessary to address the Complainant’s assertions regarding the alleged likelihood of confusion arising from the Respondent’s websites. Nor is it the role of the Panel to assess whether or not the Respondent may have infringed the Complainant’s trade mark rights.
The Panel would add that the UDRP is a proceeding with a limited scope and is not intended to cover every situation where parties with similar names come into conflict. The outcome of this case does not of course prevent the Complainant from pursuing a court case for infringement of its intellectual property rights if it considers that it has grounds to do so. Indeed, the Panel is aware that there has already been some legal skirmishing between the parties although the full details have not been provided to the Panel.

D. Reverse Domain Name Hijacking (“RDNH”)

The Respondent argues that the Complainant has been guilty of RDNH.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
On balance, the Panel considers that a finding of RDNH is warranted in this case.
In particular, the Complaint has failed by a large and somewhat foreseeable margin; in the Panel’s opinion, the Complainant knew or at least should have known that it could not prove one or more of the essential UDRP elements. The Complainant’s representatives quoted extensively from UDRP case law and the Panel thinks it unlikely that they were unaware of the need to provide evidence to support their key assertions including as to the extent and history of the Complainant’s alleged use of its mark.

7. Decision

For the foregoing reasons, the Complaint is denied and the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Adam Taylor
Sole Panelist
Date: May 26, 2017

Domain hijacking and bias in UDRP panelists

Statistically, the UDRP panelists are predisposed to find for complainants. Some panelists find for the complainant in 87% of the cases. Many of these panelists have decided hundreds of cases. Trademark owners filed an all-time record 3,036 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO in 2016, an increase of 10% over the previous year, so the stats on panelist decisions have a high degree of confidence.
Even the two so-called “fair” panelists claim that their decisions fall 50-50 for and against Complainants, according to their statements at an INTA 17 panel discussion in Barcelona. These two facts put together are shocking to many domain name owners. How can most panelists usually find for complainants while the fair panelists do so only 50% of the time? There must be an unfair bias in the process.
The UDRP was developed to address the “deliberate, bad faith registration as domain names of well-known and other trademarks” (WIPO Final Report, Par. 23 (1999)).
However, there is a growing and unfortunate trend of companies seeking to acquire domain names wrongfully by asserting spurious cybersquatting claims as a “plan b” when their purchase negotiations do not lead to a price they are willing to accept. This behavior is called reverse domain name hijacking (“RDNH”) or just domain hijacking.
While an RDNH declaration by a WIPO panel has no monetary implications in of itself, it puts WIPO on notice that a Complainant filed an abusive complaint, and it is effective in deterring abusive complaints. US-based domain name owners may sue in a District Federal Court to collect on damages of up to $100,000 per domain name that was the subject of a complaint. This remedy is not limited to cases where WIPO panelists declared an RDNH.
UDRP watchers often note when they can’t believe that a decision wasn’t RDNH, when they believe it should have been.

Attempted Domain Hijacking

For example, in the recent WIPO decision over Soti.com, Andrew Alleman wrote a post titled I can’t believe it’s not RDNH (again), saying, “It looks like a clear case of reverse domain name hijacking to me. But panelist Nick J. Gardner bails out SOTI Inc. out.”
I believe that Andrew Alleman’s assessment is correct for the following reasons:
Firstly, the Complainant applied for their SOTI trademark in Canada on 2009-12-04 and claimed use in Canada since June 27, 1995, which is the day they incorporated. They claimed to have used their SOTI trademark on all of the following services since the day they incorporated:

(1) Computer software, namely for software for the synchronization, management, tracking and security of data transmitted over wireless data networks between a stationary unit and multiple mobile computers or electronic devices in the field of mobile device management.

It was rare for a 1995-era software business to hit the ground running with a fully functional website and complex computer software on day one. It should be noted that Canada does not require trademark applicants to make any verified statement of accuracy under penalty of perjury, so the 1995 date of first use should not be accepted at face value. And while wireless data networks existed in 1995, it was rare to find anyone using it in Canada.
Secondly, the Complainant’s trademark is registered only in Canada. SOTI Inc. is an Ontario, Canada, based corporation. Its rights should not have any impact on the Respondent’s USA-based usage of a .com domain name and in a UDRP. Canada has its own CDRP dispute system for .ca domain names. UDRP’s are not for arbitrating priority of global trademark rights.
Thirdly, the domain name owner (or Respondent) registered their soti .com domain name under its corporate name Strategic Outsource Technologies, Inc. on 1998-01-19; that is 11 years before the Complainant applied for its trademark. The Complainant failed to explain how the domain owner would have known about and targeted the Complainant in January 1998.
And fourthly, SOTI is an acronym for the domain name owner’s long corporate name, which is an obvious legitimate interest in a domain name.
Objectively, the Complaint failed to prove at least two of the three UDRP requirements.
While the panelist, Nick J. Gardner, denied the complaint, he failed to declare an RDNH. It may be that the panelist was biased in favor of the Complainant because its website makes it appear to have a successful business while the Respondent’s soti .com website appears to be less successful. This appears to be a trend among UDRP decisions. The Complainant’s soti .net website makes it appear that they have a successful business.
The Panelist Considered RDNH
Mr. Gardner wrote in his decision:

Several circumstances of this case have led the Panel to consider whether the filing of the Complaint constitutes “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” see the Rules, paragraph 1, definition of Reverse Domain Name Hijacking (“RDNH”). …

It must have been apparent to the Complainant that the Respondent would say he was operating a bona fide business called “Strategic Outsource Technologies Inc.”, and that he independently chose the Disputed Domain Name as corresponding to an acronym for that business. However, it seems to the Panel that the Complainant’s failure to address this issue may be as a result of a misapprehension on the Complainant’s part as to what it has to show. The Panel also has noted that the nature and content of Respondent’s website (as described above) does appear to be rather odd, and provides at least some support for the Complainant concluding there was a case to be answered. The Panel also notes the Respondent has not provided any further statement responding to the Complainant’s Supplemental Statement. Taking all of this together the Panel does not think it appropriate to conclude this case was brought in bad faith.

In all the circumstances the Panel, therefore, declines to find that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

However, the panelist took a limited view of the criteria for RDNH, when he wrote:

Paragraph 15(e) of the Policy provides that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Specifically, the panelist failed to consider other circumstances for finding RDNH. Reasons articulated by panels for finding RDNH include:

(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights,

(ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database,

(iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument,

(iv) the provision of false evidence, or otherwise attempting to mislead the panel,

(v) the provision of intentionally incomplete material evidence – often clarified by the respondent,

(vi) the complainant’s failure to disclose that a case is a UDRP refiling,

(vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis,

(viii) basing a complaint on only the barest of allegations without any supporting evidence.

http://www.wipo.int/amc/en/domains/search/overview3.0/#item416

Bias and Domain Hijacking

At another INTA 17 session in Barcelona, there was a really good interactive talk on bias. Bias is insidious. It operates in an inconspicuous or seemingly harmless way but bias actually has a grave effect. Most judges strive to be unbiased but often they are not.
My takeaway from the session was that bias is instinctual and more common amongst those with experience or an agenda and a checklist. If you see a grizzly bear, you don’t carefully evaluate the situation; you grab your companion and you run away immediately. However, the bear may have been busy eating fish and had no intention of harming you or your companion.
UDRP panelists often use a checklist when evaluating a complaint and response. Since panelists’ focus on their checklists, they usually miss facts that should cause complaints to be denied outright.
Complaints should be screened by an AI that looks for limitations in their allegations. If certain facts are not met, then the complaint should be denied outright and RDNH should automatically be declared.
An AI could think about a complaint in a scientific way. It could find holes in allegations and bounce complaints. For example, in chemistry, a limiting reagent (or limiting reactant) in a chemical reaction is the substance that is totally consumed when the chemical reaction is complete. The amount of product formed is limited by this reagent, since the reaction cannot continue without it.
The limiting reagents are the following three criteria for a successful complaint are enumerated in paragraph 4(a) of the Policy:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

To succeed, the Complainant must demonstrate that all of three elements in paragraph 4(a) of the Policy to be satisfied.
Panelists should never make judgment calls in evaluating complaints or overemphasize certain aspects of a Respondent’s use of a domain name or anything derogatory about a Respondent. Either a complaint objectively states a case or it doesn’t.
Now that WIPO has published its Jurisprudential Overview 3.0, an AI can be taught to check whether a complaint states sufficient objective facts to permit it to move on for evaluation by a panelist. It will be a challenge for the AI to not learn and hold the same biases that have plagued WIPO decisions to date, if it were to only review all of the decisions and establish decision trees based on what it has been previously written.
The Jurisprudential Overview 3.0 provides: where a domain name has been registered before a Complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith. Since trademarks are territorial and not global, I would add that the trademark rights have to match those of the TLD extension.
So only an EU trademark registration would have any bearing on a .eu domain name. And only a USPTO trademark registration would have any bearing on a .com, .net, or .org domain name. Since .ca domains are not part of the UDRP system, and since most Canadians expect Canadian websites to use .ca domain names, Canadian trademarks should have no bearing on any other TLD.
So if the USPTO has determined that a Complainant’s trademark application to register a word or phrase that comprises the domain name is generic, then the complaint should automatically be bounced as RDNH.
For example, the USPTO determined that the phrase “sesame snaps” is generic with respect to cookie snacks that a Complainant sells. Under no circumstances should a panelist entertain a complaint about sesamesnaps.com brought by that same person. A USPTO determination that a trademark application is not registrable because it is generic is prima facie evidence that the domain is generic. The Complaint should be automatically declared RDNH. But no, Tony Willoughby who claims to be one of the fair panelists, found in favor of the complainant instead. What does Tony do? Does he throw complaints down a set of stairs and make decisions based on whether a complaint falls on an even or an odd step? Or is something else going on? Maybe it is a bias based on his checklist. He missed the limiting reagent in the process.
If facts are in dispute, then panelists should deny the complaint. The UDRP is not a court that permits a person to a full right to be heard and confront his accuser when determining property rights. Some domain names are worth $1000. Others are worth $1,000,000.  It does not make financial sense to appeal every wrong-headed UDRP decision over most domain names. But a UDRP loss has a significant future impact on a domain name owner who also has other valuable domain names.
A UDRP loss is often cited in future UDRP complaints and even in court cases.  Not every domain name owner has an extra $50,000 to throw away at litigating based on the principle of the matter. Sometimes you have to sell other domain names at less than full value to make sure you clear your name and win.
Some wealthy domain owners, like Telepathy Inc., sue for damages under the ACPA whether they win or lose a UDRP, to collect on statutory damages for domain hijacking.

Common Examples of Bias

A bias is sometimes created by providing inadmissible evidence in a proceeding. Lawyers should be sanctioned for doing so and often are in the USA. But not in UDRPs, CDRPs, or in some foreign courts, for example, Canada.
The US Federal Rules of Evidence try to prevent a jury from hearing inadmissible evidence, under Rule 103:
(d) Preventing the Jury from Hearing Inadmissible Evidence. To the extent practicable, the court must conduct a jury trial so that inadmissible evidence is not suggested to the jury by any means.

The judge can foreclose a particular line of testimony and counsel can protect his record without a series of questions before the jury, designed at best to waste time and at worst “to waft into the jury box” the very matter sought to be excluded.

A bias can also be introduced as a single-minded focus. A single-minded focus is not good when you are trying to judge a situation.
When driving on highways, most drivers focus on keeping their distance from other cars or following other cars at a fixed distance. When the lead car hits something, sometimes there is a pileup of cars: a chain reaction happens.
How often have you heard about pedestrians and moped drivers being hit on the roadway? Drivers who stay at the scene usually tell police that they didn’t see the bike. Of course, they didn’t see the bike. They were too busy focused on looking out for other cars and keeping within the speed limit.
Domain hijacking often occurs because there is bias against domain owners who do not have a successful business and can’t afford to hire experienced counsel. It often takes years before entrepreneurs can grow their business to the point where they have significant excess cash flow. Some panelists are biased in favor of successful businesses.

Implicit Bias

Thoughts and feelings are “implicit” if we are unaware of them or mistaken about their nature. We have a bias when, rather than being neutral, we have a preference for (or aversion to) a person or group of people. Thus, we use the term “implicit bias” to describe when we have attitudes towards people or associate stereotypes with them without our conscious knowledge. A fairly commonplace example of this is seen in studies that show that white people will frequently associate criminality with black people without even realizing they’re doing it.
You might only be 1% less likely to find for a particular party due to some bias on a given motion. But that 1% difference over a course of motions and judgment calls may turn into a 40% difference.
Read more about implicit bias at the Perception Institute’s website.
Check back for more updates on how bias develops and may be reduced in UDRPs.
 

Holding a domain name without use is not udrp bad faith

In a 2015 case about nanosonics.com under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organisation (WIPO), a panel has denied a domain name transfer on the basis that there was no UDRP bad faith use, even though the respondent had held the domain name without using it for almost 13 years.
A WIPO panel concluded that passive holding of a domain name does not necessarily mean bad faith.

Factual Background for the UDRP

The Complainant supplies infection control and disinfectant products and services for medical apparatus, particularly ultrasound probes for medical use, under the trademark NANOSONICS. The Complainant is based in Sydney, Australia, and has affiliates in the USA and Europe. It also works with various other service providers around the world, including GE Healthcare in France and other countries, Miele Professional in a number of European countries, Ava Medica in the Russian Federation and Toshiba Medical Systems in the United Kingdom of Great Britain and Northern Ireland.
The Complainant registered NANOSONICS as a trademark in Australia by an application in May 2000 and in the European Union, Japan, New Zealand, the Russian Federation, Switzerland and the USA pursuant to applications in 2006. The Complainant has also registered a number of domain names with “nanosonics” as the second-level domain (“SLD”).
The Complainant has obtained patents relating to its products and methods in a large number of countries, including France and other European countries.
The Respondent manufactures and sells piezoelectric transducers, particularly for ultrasound diagnostics. It was founded in 1984 and is based in Tours, France. It focuses on designing and producing innovative ultrasound diagnostic products, involving research in the field of nanotechnology.
The Respondent registered the Domain Name in 2002 but has not so far used it or a corresponding name in relation to its products. Since at least 2008, the Domain Name has been directed to a parking page provided by an Internet Service Provider (“ISP”), neoDomaine, which describes itself by the caption “Le service integrale de noms de domaines internet”.
In deciding that there was no bad faith, the panelist wrote:

UDRP Bad Faith Requirement

It is clear from the wording of paragraph 4(a)(iii) of the UDRP and has been affirmed by many UDRP decisions that the two conditions of the third requirement, registration in bad faith and use in bad faith, are cumulative. Both must be satisfied, although use in bad faith can be evidence of registration in bad faith, and vice versa.

No Bad Faith

In this case, the Panel is not satisfied on the evidence that the Respondent knew of the rights now asserted by the Complainant when it registered the Domain Name in 2002. There is in fact, no evidence as to the existence, nature or extent of any use of the NANOSONICS trademark at this date. The most that can be said on the evidence provided as to the position at that date is that a predecessor of the Complainant, called Novapharm Research (Australia) Pty Ltd, had registered NANOSONICS as a trademark in Australia. In the Panel’s view, it cannot be inferred that the Respondent in France knew or should have known of this trademark registration at that date.
While the word “nanosonics” is made up, it does consist of descriptive elements, namely “nano” which is widely used in relation to nanotechnology, and “sonics” which is widely used to refer to equipment which emits or detects sounds. It is therefore not inherently improbable that two or more different companies might have independently had the same idea of combining these elements into a name.
Furthermore, even if the Respondent had known of the Australian trademark registration when it registered the Domain Name in 2002, it cannot be inferred based on the limited record before the Panel that it must have had a bad faith intention to use it to infringe the Complainant’s trademark or to trade off or appropriate goodwill associated with it. Without more evidence as to the use (if any) that had been made by the Complainant’s predecessor of the trademark NANOSONICS, it cannot be presumed that any use that might have been made by the Respondent of the Domain Name would have necessarily been objectionable.
The fact that the Respondent does not appear to have had any concrete plans to use the Domain Name and, indeed, has not used it in the 13 years since registering it does not mean that the Respondent necessarily registered it in bad faith. It is in principle legitimate for businesses to register domain names which they reckon they might want to use in good faith, even if this eventuality does not come to pass.
Nor can it be inferred from the evidence provided that the Respondent registered the Domain Name with a view to selling it at a profit to the Complainant’s predecessor or a competitor. In fact, somewhat unusually, the parking page to which the Domain Name has resolved for the last seven years has not presented any offer for sale of the Domain Name. Although the Response seems to accept the Complainant’s allegation to the contrary, the actual text on the page, set out above in the original French, contains no present indication that the Domain Name is for sale.
The website of the ISP, neoDomaine, is not in evidence, but on a limited viewing the Panel did not see any resale service being promoted alongside the services offered of registration, hosting, email redirection, and the like.
There is no evidence of the Respondent making any attempt to solicit a sale of the Domain Name. If its original registration was in good faith, the Respondent would have been entitled to respond to the Complainant’s entreaties years later to sell the domain name. However, the evidence shows that the Respondent ignored numerous invitations from the Complainant to sell the Domain Name and eventually sought a substantial payment before it would begin to discuss the matter. In the Panel’s view, it cannot be inferred from this that the Respondent registered the Domain Name with a view to selling it to the Complainant or the Complainant’s predecessor.
The Panel is also not satisfied that the Respondent is using the Domain Name in bad faith. It is true that passive holding of a domain name can be in bad faith, but it does not follow that all passive holding of a domain name is in bad faith. Merely retaining a domain name which could be used improperly, but without any attempt or intent actually to use it improperly, does not constitute use in bad faith.
In all the circumstances, the Panel concludes that the Complainant has not proved the third requirement of the UDRP. The Complaint must therefore be rejected.
7. Decision

For the foregoing reasons, the Complaint is denied.

Jonathan Turner
Sole Panelist
Date: May 23, 2015
WIPO Domain Name Dispute Case No. D2015-0681  re nanosonics.com
http://www.wipo.int/amc/en/domains/decisions/word/2015/d2015-0681.doc

UDRP Complaint

A UDRP complaint is a way to obtain a domain name that was registered in bad faith by someone else. A complainant should make sure that it is bringing its complaint in good faith, otherwise, a UDRP panel may label it as a reverse domain name hijacker. Moreover, a complainant could be hit with a $100,000 claim in a US District Court, for each domain name that it was trying to hijack, under the Lanham Act.

UDRP complaint

A UDRP complaint should fully state a complainant’s case.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en
Trademark lawyers file UDRP complaints with one of the following approved dispute resolution service providers:

The panelists with the ADR Forum are more likely to consistently apply US law when deciding a UDRP Complaint. The decisions of WIPO panelists are often inconsistent.

Evidence showing the extent to which a complainant’s trademark is well-known

Whether or not a complainant is a trademark holder, a complainant should present evidence showing the extent of the renown of the mark on the Internet. Bald assertions that the trademark is well known are not enough.

Pleading Bad Faith on the part of the Domain Name Registrant

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

Edge cases where a UDRP Panel found no bad faith use of domain name:

Develi.com WIPO UDRP Case No. D2014-1367

  • A website featuring pay-per-click advertising of a general nature.
  • Web pages concerned offered the disputed domain name for general sale.

The broad thrust of the Complainant’s case is that this demonstrates registration and use in bad faith. The Panel does not agree. There is no evidence before the Panel that the Respondent was intent on targeting the Complainant’s trademark by way of its registration of the disputed domain name. On the contrary, it seems plausible to the Panel that the Respondent selected the disputed domain name because it represented the name of a geographic location, the city named Develi.

Databases of UDRP Decisions

The following databases regularly catalog UDRP Decisions:

Core Principles of Domain Name Law Created in UDRP Proceedings | IP Legal Corner

 iplegalcorner.com 

When in the Fall of 1999 the Internet Corporation for Assigned Names and Numbers (ICANN) implemented the Uniform Domain Name Dispute Resolution Policy it did not come with a fully formed jurisprudence. Panelists were essentially on their own in creating it. They had some guidance from a lengthy and detailed report published by the World […] The post Core Principles of Domain Name Law Created in UDRP Proceedings appeared first on IP Legal Corner. Read Article >
selected tweets (1)@gmlevine
selected retweets (2)@Vision_Domains @davidmichaels

These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.

Domain Hijacking

Domain hijacking is also called RDNH or reverse domain name hijacking

Domain hijacking happens when someone files a UDRP complaint or a court action in bad faith to get a domain name from its registered owner. A domain hijacking complaint is often called a plan B complaint. A classic plan B complaint to secure a domain name happens after the complainant was unable or unwilling to negotiate the purchase of a domain name.

Plan B Domain Name Cases

Plan B (noun): a strategy or plan to be implemented if the original one proves impracticable or unsuccessful.
http://www.dictionary.com/browse/plan-b?s=t

 wrote, When a Domain Name Dispute is ‘Plan B’:

The label appears to have first been used in the context of domain name disputes in two decisions from 2007, one involving <michelman.com>, the other <giggles.com> and <giggles.org>.

In the <michelman.com> case, the panel described Plan B like this: “Complainant commenced this proceeding as an alternative (‘Plan B’) to acquire the disputed domain name after being rebuffed in the anonymous auction process.”

Through the years, the “Plan B” terminology has been invoked in about 50 cases, nearly all of which resulted in decisions allowing the current registrants to keep the disputed domain names.

The panel in the <queen.com> proceeding called it “a classic ‘Plan B’ case where a party, having been frustrated in its negotiations to buy a domain name, resorts to the ultimate option of a highly contrived and artificial claim not supported by any evidence or the plain wording of the UDRP.”

https://giga.law/blog/2017/8/2/domain-name-dispute-plan-b

Strategies for Avoiding or Dealing with a UDRP:

  1. Before you get hit with a UDRP, build out a website on your domain name and register a trademark that matches your domain name.
  2. Respond to a UDRP with affidavits and a copy of your trademark registration. A domain hijacking will usually happen if you don’t respond to a UDRP complaint.
  3. Hire a lawyer who is a domain name specialist right away, to help ensure that you file a winning response along with sworn evidence to support your assertions. Visit WIPO’s website for UDRP Model Response and Filing Guidelines.
  4. If you get served with a UDRP complaint via email, you have 20 days to respond. During those 20 days, you may email the dispute resolution provider handling your complaint to ask for an extra 5-day extension, or more if you have extra-ordinary circumstances. Sometimes a panelist will review and accept your response, even if it is a little late, but don’t bank on it.
  5. How a UDRP is decided:

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)      Respondent has no rights or legitimate interests in respect of the domain name; and

(3)      the domain name has been registered and is being used in bad faith.

In some clear cases of domain hijacking:

  • The registrant has a trademark or other intellectual property rights in the name;
  • The domain name was registered before the complainant had registered its trademark rights in words matching the domain name;
  • The domain name is the name of a geographic place that existed before the Complainant registered its trademark;
  • The domain name is a generic word or phrase used in good faith;
  • The domain name is legal or nickname of the registrant;
  • The domain name is being used in a lawful noncommercial or fair use of the mark in a website under the domain name;
  • The registrant’s prior use of the domain name in connection with the good faith offering of goods and services; or
  • The domain name owner has legitimate rights in the domain name.

Lack of Bad Faith in Domain Name Registration

Domain names matching trademarks that not distinctive at the time the domain name registration could not have been registered in bad faith, regardless how subsequently they may have been used: novelist.com RDNH and platterz.com RDNH requested and granted in both cases. If the Complainant can’t prove the element of Bad Faith in registering a domain name, the UDRP should be denied and and an RDNH should be granted under the WIPO UDRP Overview 3.0 standard.

novelist.com RDNH

  • Respondent in turn argues that the term “NOVELIST” in the Domain Name is common and generic, and therefore Complainant does not have an exclusive monopoly in the term on the Internet. The Panel accepts that Respondent can establish rights or legitimate interests in the Domain Name on the basis that a respondent may have a legitimate interest in a domain name.  That is, if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word. Respondent asserts that it uses the Domain Name with its online shopping by listing hyperlinks to constantly selected novel items, hence a play on the words “novel” and “list.” In the Panel’s view this argument is plausible and is sufficient to shift any burden of proof. Accordingly, the Panel concludes that Respondent has shown that, in the present circumstances, it has sufficient rights or legitimate interests in the Domain Name.
  • Respondent first argues that it could not have registered the Domain Name in bad faith because it registered the Domain Name ten years prior to the registration of Complainant’s Mark. It is well established that a domain name predating a complainant’s registration and first use of a trademark can be used to evince a good faith registration. See TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Forum Mar. 28, 2005) (concluding that because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
  • Respondent similarly contends that it could not have had any knowledge of Complainant’s Mark because it simply didn’t exist at the relevant time. In the Panel’s view the fact that the Domain Name is identical is irrelevant – the fact is that the Domain Name was registered 20 years ago and 10 years before Complainant’s Mark came into existence. That, in and of itself, is sufficient to deny any possible suggestion of bad faith on Respondent’s part.
  • Accordingly, the ground of bad faith is plainly not made out.
  • The Panel infers that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and is using the Domain Name in bad faith.  The Panel finds there is sufficient evidence to this effect, and therefore concludes that reverse domain name hijacking has occurred.  See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

platterz.com RDNH

  • Respondent registered the Domain Name in 2008, seven years before Complainant was organized as a business entity and seven years before it applied to register its alleged mark.
  • Respondent argues that there can be no bad faith on its part because he registered the domain name years before Complainant began its business.  As the Panel found inTelecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007), a respondent can not be found to have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark.  This is exactly the case here, as Complainant’s earliest use of the PLATTERZ mark is alleged to be in 2015, and Respondent has held the domain name since 2008.
    • The WIPO Decision Overview 3.0 states under 3.8.1:Subject to scenarios described in 3.8.2 [dealing with domain names registered in anticipation of trademark rights], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.
  • In that circumstance, “the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.” WIPO Decision Overview 2.0 at 3.1.
  • (“[O]nce a Panel finds that a domain name was originally registered in good faith, any subsequent renewal [that] could qualify as having been done in bad faith is irrelevant: the relevant point of inquiry occurs at registration, not renewal of that registration”). See also, Mile, Inc. v. Michael Berg, WIPO Case No. 2010-2011; WIPO Decision Overview 3.0 at ¶ 3.9.
  • Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D 2000-0003.

Reverse Domain Name Hijacking

  • Respondent requests a finding of reverse domain name hijacking.  This is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”  Rule 15(e) provides as follows:
    If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
  • Complainant and its counsel knew or should have known when they filed this case that Complainant could not possibly prove bad faith registration, since Respondent registered the Domain Name seven years before Complainant began using its PLATTERZ mark.  Complainant and its counsel knew or should have known that the renewal/re-registration argument was universally discredited and would not be accepted by any Panel.  WIPO Overview 2.0 at ¶  3.7; WIPO Decision Overview 3.0 at ¶¶  3.2.1, 3.8, 3.9.
  • Even worse, Complainant and its counsel attempt to deceive the Panel by citing TMP Int’l Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) for the proposition that bad faith can be found when a domain name is registered prior to the establishment of trademark rights.  That case, though, stands for no such proposition; rather, it stands for the noncontroversial proposition that registration can be in bad faith if the registration is after the establishment of common law trademark rights, even if the trademark is not registered until after the domain name registration.  In TMP, Complainant established common law trademark rights through its use in commerce since 1998, and subsequently registered its trademark with the United States Patent and Trademark Office in 2003.  The domain name, though, was registered in 1999, after the development of common law trademark rights.  Here, in contrast, the domain name was registered seven years before any trademark rights – common law or otherwise.
  • Given that there was no possibility of bad faith registration, this Complaint was doomed to failure from the start.  Complainant and its counsel knew or should have known that Complainant would have to prove both bad faith registration and bad faith use in order to prevail.  Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case NoD2000-0003.  It is undisputed that Complainant attempted unsuccessfully to buy the Domain Name from Respondent in February 2016 and again in February 2017, and this action followed.  For the foregoing reasons the Panel is convinced that Complainant filed this action in bad faith, perhaps as an alternative acquisition strategy, but in any event without any legal or factual basis for its claims.
  • The Panel therefore finds Reverse Domain Name Hijacking and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Use of a Domain Name in a UDRP

A UDRP filed by a Complainant whose trademark became distinctive after a domain name was registered should be denied.
Asserting marks not distinctive at the time of domain name registration is an attempt to hijack a domain name. How the domain name subsequently may have been used is irrelevant under the UDRP and the ACPA. By definition, domain names registered before marks became distinctive could not have been made in bad faith.
Note that while the UDRP provides a defense if the domain name registrant has made demonstrable preparations to use the domain name in a bona fide offering of goods or services, the legislation only provides a defense if there is prior use – not simply preparation to use.
If domain name owner asks a UDRP panel to rule that the Complaint represents an attempt at Reverse Domain Name Hijacking (“RDNH”) its domain name, they should do so. Domain Name Hijacking is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. In the WIPO Overview 3.0 released in 2017, the editors now acknowledge that “following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH” (Paragraph 4.16)
Paragraph 15(e) of the Rules provides as follows:

If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en

Other circumstances for finding RDNH articulated by panels for finding RDNH include:

(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights,

(ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database,

(iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument,

(iv) the provision of false evidence, or otherwise attempting to mislead the panel,

(v) the provision of intentionally incomplete material evidence – often clarified by the respondent,

(vi) the complainant’s failure to disclose that a case is a UDRP refiling,

(vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis,

(viii) basing a complaint on only the barest of allegations without any supporting evidence.

http://www.wipo.int/amc/en/domains/search/overview3.0/#item416

Does getting a trademark, that matches a domain name, increase my negotiation power when attempting to buy that domain?

Question: I’d like to buy a domain name from its current owner, but their asking price is somewhat high (low-mid 5 digits figure) and they don’t want to negotiate. I was wondering if getting a trademark in the domain name’s country (which I have to get anyway) would increase my price-negotiating power.

Answer: No, filing a UDRP based on a trademark obtained after a matching domain name was originally registered will cost you a lot of money.

A US judge may award $100,000+ for the reverse domain name hijacking claim in federal court under the Anti-Cybersquatting Piracy Act (ACPA) Lanham Act S. 43(d), 15 U.S.C. S.1125(d).

In the Walter v. Ville de Paris Memorandum in support of Default Judgment, filed in the TX SD US Court, the Plaintiff argued the following:

By way of reference, 15 U.S.C. § 1117(d) authorizes, in cases “involving a violation
of section 1125,” an election of damages in the courts discretion of “not less than $1,000 and not
more than $100,000 per domain name, as the court considers just.”  This is a case “involving” a
violation of 1125(d)(1) in that Mr. Walter is seeking a determination that it was not violated.

A CDRP panel may award $5000 as a reverse domain name hijacking penalty – RDNH, if the CDRP complaint is over a .ca domain.

Bad Faith Complaints

WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent. The mere lack of success of a complaint is not itself sufficient reason to make a finding of Reverse Domain Name Hijacking.

The ins and outs of Cybersquatting UDRP cases and reverse domain name hijacking

Learn about the ins and outs of Cybersquatting UDRP cases and reverse domain name hijacking in this DNW interview with Jason Schaeffer:

How can you defend yourself against claims of cybersquatting, and what’s Reverse Domain Name Hijacking? Jason Schaeffer and his firm ESQwire.com have won lots of reverse domain name hijacking cases on behalf of clients, and he gives the details on the DNW show.
Jason Schaeffer explains that a generic domain name such as tirestore.com and you are selling tires, then you have a
Legitimate interests under section 4(a)(2):
 

Establishing Reverse Domain Name Hijacking

To establish Reverse Domain Name Hijacking, a panelist would typically need to find that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Examples of indicia of a complainant’s bad faith:

  • The trademark became distinctive of the Complainant after the domain name was registered.
  • The Complainant’s knowledge of its lack of relevant trademark rights;
  • The Complainant’s knowledge of the domain name owner’s rights or legitimate interests in the domain name;
  • The Complainant fails to mention that it initiated inquiries about buying the domain name, instead implying that the offer for sale was unsolicited;
  • The Complainant brought the Complaint primarily to harass the domain-name holder;
  • The complainant filed a UDRP after failing to acquire the domain name through purchase negotiations “classic Plan B case;” or
  • The domain name owner’s lack of bad faith concerning the disputed domain name.

Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g., in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.

WIPO panels have found Reverse Domain Name Hijacking in circumstances including where:

  • the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP;
  • the complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint [see further discussion regarding refiled complaints in paragraph 4.4 above] or otherwise misled the panel;
  • a respondent’s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith;
  • the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [see further paragraph 3.1 above with respect to bad faith and complainant trademark rights which post-date domain name registration].

The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.

WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where:
  • the complainant has succeeded in establishing each of the three essential elements required under the UDRP;
  • the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint;
  • there is a question of clean hands or factual accuracy on the part of both parties;
  • the respondent’s website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or
  • there appears to be another relevant factual basis for filing the complaint.

Domain Hijacking Relevant decisions:

airzone.com: Corporacion Empresarial Altra S.L. v. Telepathy, Inc., WIPO Case No. D2017-0178, Denial (Domain hijacking: RDNH found)

  • Note: Telepathy, Inc. filed suit under the ACPA for damages

carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047, <carsales.com>, Denial (Domain hijacking: RDNH found)
hakoba.com RDNH:Hakoba Lifestyle Limited v. Mukesh Shah, WIPO Case No. D2017-0675 (Domain hijacking: RDNH found)
Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081, <nativestyles.net> inter alia, Denial (RDNH denied)
Goway Travel Limited v. Tourism Australia
, WIPO Case No. D2006-0344, <downunder.travel>, Denial (Domain hijacking: RDNH found)
Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM
, WIPO Case No. D2006-0905, <proto.com>, Denial (Domain hijacking: RDNH found)
Mondial Assistance S.A.S. v. Compana LLC
, WIPO Case No. D2007-0965, <mondial.com>, Denial (RDNH denied)
Grasso’s Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso Holding N.V. v. Tucows.com Co
, WIPO Case No. D2009-0115, <grasso.com>, Denial (RDNH denied)
Compart AG v. Compart.com / Vertical Axis, Inc
., WIPO Case No. D2009-0462, <compart.com>, Denial (RDNH denied)
Cheung Kong (Holdings) Limited and Chueng Kong Property Development Limited v. Netego DotCom
, WIPO Case No. D2009-0540, <長江.com>, Denial (Domain hijacking: RDNH found)
Ville de Paris v. Salient Properties LLC
, WIPO Case No. D2009-1279, <wifiparis.com>, Denial (RDNH denied)
M. Corentin Benoit Thiercelin v. CyberDeal, Inc.
, WIPO Case No. D2010-0941, <virtualexpo.com>, Denial (Domain hijacking: RDNH found)
X6D Limited v. Telepathy, Inc., WIPO Case No. D2010-1519 <xpand.com>, Denial (Domain hijacking: RDNH found)

  • Attempted reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.
  • It is the common view among UDRP panelists that when a domain name is registered before a trademark right is established, the registration of the disputed domain name was generally not in bad faith because the registrant could not have contemplated the complainant’s non-existent right (cf. Question 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions; John Ode d/b/a ODE and ODE – Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182).
  • There are certain exceptions to this rule, however, circumstances justifying an exception have not been brought to the Panel’s attention on the record of this case and are hardly conceivable given the fact that the registration of the disputed domain name precedes the Respondent’s use of its XpanD Mark by more than three years.

Futureworld Consultancy (Pty) Limited v. Online Advice, WIPO Case No. D2003-0297;
Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., WIPO Case No. D2004-0158).

Some notable UDRP decisions finding domain hijacking are:

Buying and selling domain names is not per se bad faith

alsa.com WIPO UDRP Case No. D2005-0282

  • Buying and selling domain names is not per se bad faith absent an intent to exploit the value of the complainant’s mark. Automóviles de Luarca, S.A. v. NUCOM, Domain Name BrokersWIPO Case No. D2005-0282.
  • The offer to sell a domain name that a party otherwise has rights to is not bad faith; rather, that is nothing more than a legitimate effort to sell property properly owned by the party. See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Feb. 5, 2001). Cited in:

Domain name is the Geographic place in the world:

Develi.com WIPO UDRP Case No. D2014-1367

  • More importantly, however, the Panel is concerned by the Complainant’s critical failure to address either in the Complaint or in its supplemental filing the fact that the name “Develi” holds a non-trademark meaning arising from the eponymous city. Instead, the Complainant attempts to rely upon bare averments that it is well-known, vague assertions as to the reach and extent of its restaurant chain with no supporting evidence and an unfounded submission that the Respondent is Turkish.
  • Domain hijacking:

In all of these circumstances, the Panel finds that on balance the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Domain name is a generic term:

dataminer.com WIPO UDRP Case No. D2016-1667

  • Respondent wouldn’t sell the disputed domain name to the Complainant at the Complainant’s preferred price. The latter basis is a matter for the marketplace, as even the Complainant acknowledges that it and not the Respondent initiated the inquiries to buy the disputed domain name. The former stands entirely on the Complainant’s characterization of the Respondent’s business as “cybersquatting” without pleading (much less proving) one instance in which a court or UDRP panel found that to be so. In fact the almost uniform view present in UDRP decisions is that buying and selling domain names is not per se bad faith4 absent an intent to exploit the value of the complainant’s mark.

Soda LLC v. SIMPLEDOLLAR.COM WIPO Case No. D2016-0038

  • Respondent further contends that the boilerplate allegations of Complainant are insufficient to meet its burden. Complainant’s own evidence demonstrates that the Domain Name was registered nearly 16 years before the Complaint was filed; the Domain Name consists of two generic terms (“simple” and “dollar”); and Respondent registered the Domain Name years before Complainant could possibly have acquired rights.
  • Respondent registered the Domain Name consisting of two descriptive words six years prior to Complainant’s earliest use of its unregistered THE SIMPLE DOLLAR mark”

Domain name is a given name and a surname

bernette.com WIPO UDRP Case No. D2016-1811
The Panel considers that the Complainant has been guilty of RDNH for the following reasons:

1. The Complainant has failed by a large margin. In the Panel’s opinion, the Complainant knew or at least should have known that it could not prove one of the essential UDRP elements. For example, it is a well-settled Policy precedent that some proof of targeting (i.e., using the disputed domain name to take advantage of the Complainant’s marks in whatever manner) is required to establish bad faith. As explained above, there was no such evidence in this case. Furthermore, the Complainant relied heavily on the mere fact that the Respondent trafficked in domain names, whereas it is again well-established under the Policy that such activity of itself may well be entirely legitimate, depending on the circumstances.

2. The Complaint lacks candour. In particular:

a. The Complainant relies on a “proposed sale price of US$ 29,000” and exhibits various broker communications in August 2016 putting forward this price. But its submissions are misleading because it nowhere provides details of the sales enquiries on behalf of (though not in the name of) the Complainant which prompted such offers or even mentions that the Respondent’s offers were solicited. Nor does the Complainant refer to its earlier offers in 2010 or 2015. The Panel would add that the Respondent’s account of the relevant purchase enquiry history is also somewhat incomplete.

b. The Complainant’s description of the Respondent’s business structure is highly inaccurate. The Complainant is represented by counsel, who ought to know better and who is under an obligation imposed by paragraph 3(b)(xiii) of the Rules to undertake at least minimal due diligence before filing a complaint. The Panel sees no excuse for not recognising Frank Schilling and his businesses, which have been involved in many previous UDRP cases or, if not familiar with them, doing a basic Internet search.

3. In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH. See, e.g., Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 (holding “Plan B” approach as a basis for a finding of RDNH) and Nova Holdings Limited, Nova International Limited, and G.R. Events Limited v. Manheim Equities, Inc. and Product Reports, Inc., WIPO Case No. D2015-0202 (use of UDRP proceeding to increase bargaining leverage in sale negotiations called “a highly improper purpose”).

4. Many of the above points were specifically drawn to the Complainant’s attention in the Respondent’s pre-action letter, mentioned in section 4 above. This should have given the Complainant serious pause for thought but it ploughed on regardless.

Domain name was registered before the Complainant had Trademark Rights

croma.com WIPO UDRP Case No. D2013-1360: Infiniti Retail Limited v. John Cromwell / Croma Web Services

  • the Panel finds as a fact that the Respondent registered the disputed domain name approximately ten years prior to the Complainant’s commencement of its business in India. Even had the Complainant’s submission been correct that the disputed domain name was registered in 2001, this would still have pre-dated the Complainant’s business start-up and the registration of its marks by many years. As a result the Panel finds it impossible that the Respondent, operating in the United States could have registered the disputed domain name in bad faith where the Complainant’s Indian business and marks did not even exist at the date of registration.

The UDRP Is Not a Platform For Failed Negotiations

sha.com WIPO UDRP Case No. D2012-0997: Albir Hills Resort, S.A. v. Telepathy, Inc

  •  “…the UDRP is aimed at providing trademark owners with a remedy for abusive domain name registrations and is not an alternative strategy to obtain the compulsory transfer of domain names legitimately registered by third parties after the failure of acquisition through negotiations.’ – 

tobam.com WIPO UDRP Case No. D2016-1990

  • The complainant did not dispute that the domain owner registered the domain name in 2004, one year before the Complainant was incorporated. The Complainant only started trading under the “Tobam” name in 2008. Citing the long-established consensus view under the UDRP, the single-member panel of the World Intellectual Property Organization wrote: “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established . . . the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
  • The panelist found that the Complainant engaged in reverse domain name hijacking. The domain name owner repeatedly asked Tobam for details on its trademark. During purchase negotiations on Sedo between 2011-2013, Tobam mentioned the trademarks to the domain owner. The domain owner said previous trademark searches did not reveal a trademark and asked for details on the trademark. He even offered to transfer the domain name for free if the trademarks predated his registration of the domain.
  • The panelist concluded that the complainant sought to mislead the panel by omitting key facts about its failed attempts to purchase the disputed domain name, which demonstrated the Complainant attempted to bully the domain owner  into selling the domain at less than its value. “This is a classic ‘Plan B’ case,” the panel concluded, “using the Policy after failing in the marketplace to acquire the disputed domain name” and thus “a highly improper purpose.” For these reasons, the panel denied the complaint and found Tobam guilty of Reverse Domain Name Hijacking.
  • Winning trademark lawyer’s blog post

December 2017 RDNH Cases

A National Arbitration Forum panelist has found Kittrich Corporation, owner of a line of pest control products called EcoSmart, to have engaged in reverse domain namehijacking over the domain name Get Rid of Bugs, Kill Bugs, Hawaii Pest Control with Natural Bug Treatment.

While the complainant has been using the term EcoSmart for its products for a long time, the respondent’s predecessor-in-interest has been using it for longer for its pest control business in Hawaii.

The panelist ruled that the Hawaiin business had rights or legitimate interests in the domain name based on its long-running use of the name for its own pest control services.

Panelist Dennis A. Foster also determined that Kittrich Corporation was guilty of reverse domain name hijacking for filing the case. As it turns out, the domain owner’s lawyer had previous correspondence with EcoSmart about trademarks and had offered to prove its rights in the mark pre-dating the complainant’s. It’s a bit more complicated than that, however. That correspondence occurred a month before Kittrich acquired EcoSmart, so it’s possible that it wasn’t aware of the communications.

Informa Business Information, a company that publishes information about the biopharma industry called The Pink Sheet, has been found to have engaged in reverse domain name hijacking for the domain name pinksheet .com.

Informa Business Information guilty of reverse domain name hijacking – Domain Name Wire | Domain Name News & Website Stuff

HugeDomains has successfully defended its domain name VirginLiving .com against an attack by Virgin Enterprises, and Virgin has been found guilty of reverse domain name hijacking in the case.

Stobbs IP represented Informa Business Information for pinksheet .com and Virgin Enterprises for VirginLiving .com.

Inspectorate America Corporation has been found to have engaged in reverse domain name hijacking over the domain name loams .com. The company has a software program called LOAMS, which stands for Lube Oil Analysis Management System.

The domain owner, Netcorp, said it registered the domain name because it’s a typo of “loans”. Netcorp owns several other typos of dictionary words.

Some older RDNH cases are:

<wallstreet.com WIPO UDRP>
 
Please return for more updates.
 
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.

WebMagic Ventures wins UDRP Dispute over dataminer.com

WebMagic Ventures won a UDRP Dispute over its dataminer.com domain name in a WIPO 3-member panel decision, on November 1, 2016. The WIPO UDRP panel also found that the complainant was guilty of reverse domain hijacking “RDNH.”
Skyline Communications filed a UDRP complaint regarding the dataminer.com domain name claiming that it has used the DataMiner brand since about 2001.
The Complainant obtained registration of the DATAMINER trademark in Benelux on July 12, 2016.
The Complainant is the owner of the domain names <dataminer.co>, registered on 2014-01-09, and <dataminer.tv>, registered on 2016-01-26.
The disputed domain name was registered on September 13, 1996.
 

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyline Communications NV v. WebMagic Staff, WebMagic Ventures LLC

Case No. D2016-1667

1. The Parties

The Complainant is Skyline Communications NV of Izegem, Belgium, represented internally.
The Respondent is WebMagic Staff, WebMagic Ventures LLC of Pasadena, California, United States of America (“United States”), represented by Oppedahl Patent Law Firm LLC, United States.

2. The Domain Name and Registrar

The disputed domain name, <dataminer.com>, is registered with TierraNet d/b/a DomainDiscover (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2016. On August 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 23, 2016, providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 24, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2016. At the Respondent’s request, the due date for Response was extended to September 17, 2016. The Response was filed with the Center September 17, 2016. The Center received an unsolicited Supplemental Filing from the Complainant on September 21, 2016.
The Center appointed Pablo A. Palazzi, Andrew F. Christie and Richard G. Lyon as panelists in this matter on October 11, 2016. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On October 14, 2016, at the Panel’s direction the Center advised the Parties: “The Panel disallows the Complainant’s Supplemental Filing in accordance with settled Policy precedent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.2, Consensus View. The Panel will include further explication in its Decision. The Panel requests that neither Party submit any further communication to the WIPO Center without the Panel’s express direction.”
The operative portion of paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides: “The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’ circumstances.” The cases that have led to this Consensus View make clear that “exceptional circumstances” ordinarily refers to matters that the party making the submission could not reasonably have anticipated when it submitted its original pleading – manufactured evidence1 , a post-pleading UDRP or court decision that bears on the proceeding2 , an event occurring subsequently to the original pleading3 , for example.
The Complainant’s filing was made under the heading “Reply to Respondent’s Response”. The filing addresses the following matters: (i) why the Complainant’s mark should not be considered descriptive, and (ii) a rebuttal that the Respondent’s business is a genuine business, including several mentions of the Respondent’s registration of its domain names as cybersquatting.
The Complainant here fails that test. The Complainant offers no reason why either matter could not have been anticipated and addressed in the Complaint, or anything else that makes its contents exceptional. A complainant who files a complaint based upon a mark registered well after the domain name may expect to be challenged for filing a baseless complaint.
Accordingly the Panel denies the Complainant’s Supplemental Filing, noting also that nothing in the Supplemental Filing would have altered this Decision.

4. Factual Background

The Complainant is a software company located in Belgium. The Complainant has more than 180 employees with offices also in Lisbon and Miami. The sole product of the Complainant is called “Dataminer” and it is a multi-vendor management software.
The Complainant obtained registration of the DATAMINER trademark in Benelux on July 12, 2016. The trademark registration covers goods and services in classes 9, 38 and 42. The Complainant has also applied for an international registration covering several countries which at the time of this decision is pending.
The Complainant is the owner of the domain names <dataminer.co> and <dataminer.tv>.
The disputed domain name was registered on September 13, 1996.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
With respect to the rights and legitimate interest of the Respondent, the Complainant states that:
– the Respondent does not use the disputed domain name in connection with a bona fide offer of goods or services.
– the disputed domain name redirects users to the website at “www.ace.com”.
– the Respondent has never been known under the disputed domain name as a legal entity.
– the Respondent has not acquired any trademark right in the disputed domain name.
– the Respondent does not have any relationship with the Complainant.
With respect to bad faith registration and use the Complainant states that:
– it is “indisputable” that the Respondent is a cybersquatter.
– the Respondent has registered a multitude of domain names with the sole purpose of preventing others from registering them and subsequently potentially reselling those domain names at a high profit.
– the Respondent and the Complainant have been in contact in the years 2005 and 2010 regarding the possibility of transfer of the disputed domain name.
– there is no history of the disputed domain name in the Internet archive because of the Respondent’s use of the “robots.txt” mechanism; this evidences that “Respondent blocked access for Complainant and other third parties to potential evidence for the non-existence of rights or legitimate interests in respect of the [disputed domain name]”.
– even if the bad faith mindset of the Respondent at the time of the registration would hypothetically be in doubt, it is clear that the disputed domain name has also been registered in bad faith. The Complainant cites part of the WIPO Overview 2.0 (paragraph 3.1) and Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455,.
– the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s business and activities. By blocking the disputed domain name the Respondent is interfering with the Complainant’s ability to fully promote its trademark and control the image and information associated with its trademark and logo.
– it is clear from the emails interchanged between the Respondent and the Complainant that it is the Respondent’s intention to capitalize on the disputed domain name: the Respondent is willing to transfer the disputed domain name, but will not transfer it for out-of-pockets costs.
The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent requests the Panel to reject the Complaint based in the following:
– the disputed domain name was registered nearly 20 years ago.
– the Complainant started use of the “Dataminer” name in Belgium no earlier than about 2001, 2002 or 2003.
– the Complainant contacted the Respondent in 2005 to purchase the disputed domain name and did not succeed. It then contacted again the Respondent in 2010, making an unsolicited offer acknowledging that the Respondent was the owner of the disputed domain name. In 2014, the Complainant made another unsolicited and unsuccessful offer.
– there is no registration in bad faith because the disputed domain name was registered in the year 1996.
– there is nothing in the Complaint explaining why the disputed domain name may have been registered in bad faith in the year 1996.
– The Complainant’s use of the DATAMINER trademark commenced years after the Respondent’s registration of the disputed domain name.
– The Respondent is entitled to legitimate use of a dictionary word.
– The Complainant’s delay of 20 years is unreasonable.
– The Complainant inaccurately represented the text and holding of one of the UDRP decisions that it cited.
– The Complainant’s reference to communications between the Parties is incomplete.
Finally the Respondent requests the Panel to find Reverse Domain Name Hijacking based on the following:
– the Complainant is represented by Counsel.
– The Complainant knew or should have known at the time of the filing of the Complaint that it could not prove one of the essential elements required by the Policy.
– The Respondent lists several additional grounds for a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the mark DATAMINER. The disputed domain name <dataminer.com> features the word “dataminer”. The generic Top-Level Domain (“gTLD”) designation “.com” may be disregarded. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is not required to address this element of the Policy in light of its findings on the third element.

C. Registered and Used in Bad Faith

The first part of paragraph 3.1 of the WIPO Overview 2.0 provides, “Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date . . . when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right”.
The Respondent registered the disputed domain name on September 13, 1996. The Complainant applied for the trademark DATAMINER in the Benelux registry on September 21, 2015. The trademark registration was granted on July 12, 2016.
Therefore, in this case, the disputed domain name was not registered in bad faith because at the time of registration of the domain name the Respondent could not have been aware of the Complainant’s trademark. It would be logically impossible for the Respondent to have acted in bad faith with respect to rights that did not exist at the time.
In addition, the Respondent has not used the disputed domain name to target the Complainant or the Complainant’s competitors. The Complainant does not even plead that the Respondent did so; its allegations are that the Respondent’s sole business is trafficking in domain names which “prevents others from registering [such domain names]”, for potential resale at a profit (Amended Complaint, p. 9); and that the Respondent wouldn’t sell the disputed domain name to the Complainant at the Complainant’s preferred price. The latter basis is a matter for the marketplace, as even the Complainant acknowledges that it and not the Respondent initiated the inquiries to buy the disputed domain name. The former stands entirely on the Complainant’s characterization of the Respondent’s business as “cybersquatting” without pleading (much less proving) one instance in which a court or UDRP panel found that to be so. In fact the almost uniform view present in UDRP decisions is that buying and selling domain names is not per se bad faith4 absent an intent to exploit the value of the complainant’s mark.
The Panel notes that paragraph 4(b)(i) of the Policy, upon which the Complainant’s charge is based, calls for registration of the “domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant”. That is not possible if the domain name – as in this case – was registered before the Complainant’s trademark existed.
The Complainant has failed to demonstrate that the Respondent registered and is using the disputed domain name in bad faith.

D. Reverse Domain Name Hijacking

Under paragraph 15(e) of the Rules, a panel is obliged to state in its decision any conclusion it might reach that a complainant has brought the complaint in bad faith (for example in an attempt at reverse domain name hijacking, or was brought primarily to harass the domain name holder). “Reverse domain name hijacking” is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. Mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking.
In the view of the Panel this is a complaint which should never have been launched. The Complainant and its lawyer should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered nearly two decades ago was likely to involve difficult considerations. The Complainant appears to have ignored any such considerations. The Complainant should have known that there was no case under the third requirement of the Policy, due to the lack of any use in bad faith of the disputed domain name. In the Complaint, no attempt was made to demonstrate the existence of bad faith registration or bad faith use. In addition, the Complainant contacted the Respondent several times in the years 2005, 2010 and 2014 to try to buy the disputed domain name with no success. After its trademark was registered, the Complainant decided to launch this complaint under the Policy. Finally there are several of the Complainant’s factual and legal contentions that border on the misleading. As an example the Panel mentions the incomplete quote of the holding in the Torus case, as pointed out by the Respondent; mischaracterizing the Respondent’s business (see Response, Annexes 5 and 6); referring to the Respondent’s activities as “cybersquatting” on no more authority than its own judgment (a search by the Panel found no case in which the Respondent was a respondent on the WIPO data base and only two cases on the National Arbitration Forum data base, in both of which the complaint was denied); and calling its mark “not descriptive”.
Therefore, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
Pablo A. Palazzi
Presiding Panelist
Andrew F. Christie
Panelist
Richard G. Lyon
Panelist
Date: October 25, 2016


1 E.g., Edward G. Linskey Jr. v. Brian Valentine, WIPO Case No. D2006-0706.
2 E.g., Twitter, Inc. v. Geigo, Inc., WIPO Case No. D2011-1210.
3 E.g., Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D2012-1193.
4 E.g,. Automóviles de Luarca, S.A. v. NUCOM, Domain Name Brokers, WIPO Case No. D2005-0282.