Skip to content
March 18, 2017 / Robert Lichter

The Candy Man Can’t

Summary of Clasen Quality Chocolate, Inc. v. Earthlink, Inc.
(WIPO Case No. D2017-0129)
Filed: January 23, 2017; Decided: March 1, 2017 (Panelist: Robert A. Badgley)
Disputed domain name: <cqc.com>

Summary

A network service provider became the owner of the domain <cqc.com> through a business acquisition.  After a confectionery product and chocolate manufacturer, which uses the mark CQC, unsuccessfully attempted to negotiate for the purchase of the domain from the network service provider, the manufacturer filed an unsuccessful complaint to transfer the domain.

The Parties

The Complainant is Clasen Quality Chocolate, Inc. of Madison, Wisconsin, USA.  The Complainant manufactures and sells confectionery coating products and chocolate products under the trademark CQC (registered in the U.S. on December 27, 2016) on its domain <clasen.us>.  (From http://www.clasen.us: “In 1959, recent German immigrants the Clasen brothers opened a European bakery in Madison, Wisconsin and marketed on a small scale to friends and local neighbors.  The business expanded and became the Clasen Candy Company in 1966.  Four years later, the brothers began to produce and market their own confectioner’s coating and changed the name to Clasen Quality Coatings, Inc. to reflect the company’s new focus.  In 1998, Ralph Clasen sold the company to a private entrepreneur and current owner with the intent of maintaining the philosophy and tradition that made Clasen successful. Since this transfer of ownership, CQC has transitioned from a small, regional compound coating manufacturer to a major supplier of both standard and customized formulations and value-added, confectionery ingredients across North America.”)

The Respondent is Earthlink, Inc. of Atlanta, Georgia, USA, a network services provider that acquired the domain <cqc.com> through an asset purchase.  The domain name <cqc.com> was first registered in 1997 by ComQuest, whose operations were taken over in 2003 by LINC Internet holdings, Inc., which then sold part of its internet service provider business to the Respondent in 2008.  According to the Respondent, none of the Respondent’s customers used <cqc.com> in 2016 when the Complainant approached the Respondent in 2016 to purchase the domain.

Negotiations between the Complainant and Respondent did not materialize into a sale of the domain.  Although the Respondent told the Complainant that the Respondent had never sold a domain for less than $100,000, the Respondent stated that it was “willing to consider any reasonable offer.”  In response, the Complainant appears to have suggested it would offer around $10,000.  A few months later, the Complainant emailed the Respondent, alleging that the Respondent “indicated that it would not sell the domain name for less than $100,000,” and threatening to file a complaint with the WIPO Arbitration and Mediation Center unless the Respondent sold the domain for $1,500.  (What happened to an offer around $10,000?)  A few weeks later, the Respondent emailed the Complainant that the Respondent’s use of the domain does not amount to trademark infringement, and that the domain was not acquired in bad faith by the Respondent.  The Respondent reiterated, “we are willing to consider a reasonable offer for the domain name.”

The Complainant requests transfer of the domain; the Respondent asks the Panel to find reverse domain name hijacking.  The Respondent states that it has not used the domain in a way that would infringe Complainant’s trademark rights for chocolates and confectionery products.  Noting that Complainant had no registered trademark until 2016, and that the Complainant is not one of the top internet search results of the many companies that market goods or services under a CQC mark, the Respondent denies that it was aware of the Complainant when the Respondent acquired the domain.

Identical or Confusingly Similar

The domain name is identical to the Complainant’s registered trademark.

Rights or Legitimate Interests

Citing the analysis under the bad faith prong (below), the Panelist declined to address the rights or legitimate interests.

Registered and Used in Bad Faith

The Panelist finds no evidence that the Respondent “was aware of and targeted Complainant’s CQC mark when it acquired the Domain Name in 2008.”  The Panelist continues, “As Respondent notes, numerous entities use the CQC mark to identify and distinguish their goods and services, and Complainant has done nothing to demonstrate that Respondent could have been aware of, let alone targeting the then unregistered CQC mark when acquiring the Domain Name – along with a number of other domain names – as part of a business acquisition in 2008.”

There is no finding of registration or use in bad faith.

Reverse Domain Name Hijacking

The Panelist believes “this Complaint should not have been brought, at least not without evidence to suggest even the inference that Complainant had any reason to know about the common law trademark rights of a chocolate maker halfway across the United States when it acquired the Domain Name.”  According to the Panelist, the Complainant “mischaracterized” the correspondence from the Respondent by “wrongly assert[ing] that Respondent refused to accept an offer less than USD 100,000.  That assertion is at odds with Respondent’s actual statements, as well as the repeated comment that Respondent was willing to entertain a reasonable offer.”

Nevertheless, the Panelist declined to find reverse domain name hijacking “because this Complaint appears, on balance, to be more misconceived than malicious in nature.”

Decision

The Panelist denies the complaint, and declines to find reverse domain name hijacking.

Commentary

If the evidence regarding the Respondent’s willingness to consider reasonable offers is accurate, this complaint seems to have been filed prematurely.  The Respondent presented evidence of other entities that use the CQC mark, asserting “that a Google search of ‘CQC’ does not yield a single reference to Complainant for the first ten pages of results.” Presumably, at least one other CQC entity may now or at some point in time be interested in using the domain <cqc.com>.  Why should this CQC mark owner get to name the price for this domain rather than negotiate with the current Registrant?

Under the UDRP Rules, reverse domain name hijacking is “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”  Generally, an unsuccessful complaint alone is insufficient to amount to reverse domain name hijacking.  This Panelist “refrain[s] from finding Reverse Domain Name Hijacking in this instance because this Complaint appears, on balance, to be more misconceived than malicious in nature.”  While the Panelist does not do a clear balancing, factors on the “misconceived” side could be the Complainant’s overestimation of its fame and the Complainant’s misunderstanding of the $100,000 sales figure — it appears that the Respondent was merely posturing when citing a $100,000 minimum price for other domains it sold.  On the “malicious” side might be the Complainant’s negotiation tactics.  While the Respondent may have been open to drawn out negotiations, the Complainant appeared to be proceeding with more urgency, making a take-it-or-leave-it offer of: transfer your domain name for $1,500 or we’ll file a UDRP complaint.

Side note from Nathan Harris: This is another instance in which Panelist Badgely relies on a “more misconceived than malicious” standard.  (Reread “Band derailed in bid to recover domains from its former manager,” by Nathan Harris.)

 

 

Advertisements
March 13, 2017 / Robert Lichter

“Suspended” Printing Business Not Pressed to Fork Over Domain to Forklift Manufacturer

Summary of KION Material Handling GmbH v. Kion Printing Inc.

(WIPO Case No. D2017-0025)

Filed: January 9, 2017; Decided: February 24, 2017 (Panelist: Nick J. Gardner)

Disputed domain name: <kion.com>

Summary

A printing business registered the domain name kion.com, and used the domain for ten years. A manufacturer of forklifts and other products registered U.S. trademarks for KION and registered domain names including <kiongroup.com>, <kion.industries>, <kion.group>, <kion.us>, and <kionnorthamerica.us>. After California suspended the printing business’ corporate status, the printing business renewed the domain. The Panel finds that the renewal of the domain name was not done in bad faith. The Panel finds that this is not a case of reverse domain name hijacking.

The Parties

The Respondent is Kion Printing Inc. of City of Industry, California, USA. The Respondent registered the domain <kion.com> on August 5, 1996. The Respondent used the domain between 2000 through part of 2010 to promote its own business. The Panel had no evidence of any use of the domain by the Respondent since 2010. The Respondent’s current legal status under California law is listed as suspended (likely due to failure to comply with state requirements).

The Complainant is KION Material Handling GmbH of Wiesbaden, Germany. The Complainant manufactures machinery and other products related to storage and warehouses. In 2006, the Complainant began using the mark KION as part of its name, the “KION Group” being an umbrella company for three brands of forklifts. The Complainant owns trademarks including the word “kion.” The Complainant owns domain names that include the word “kion,” including <kiongroup.com>, <kion.industries>, <kion.group>, <kion.us>, and <kionnorthamerica.us>.

The Complainant argues that the Respondent has no legitimate interest in the term “kion.” The Complainant also argues that the Respondent registered the domain in bad faith — not at the time of first registration, but at the time of renewal.

The Respondent failed to respond to the complaint. Thus, the Panel “may draw appropriate inferences from the Respondent’s default.”

Identical or Confusingly Similar

The Panelist concludes that the domain is identical to the KION marks.

Rights or Legitimate Interests

The Respondent registered the domain over a decade before the Complainant began using the mark KION, and the Respondent used the mark for a bona fide printing business. The Panelist notes that this is dispositive with respect to rights or legitimate interests.

Nevertheless, the Panelist considers the Complainant’s allegation that the Respondent’s business has terminated. The Panelist notes that, under California law, it may be possible for the Respondent to satisfy corporate filing requirements and to regain its corporate status. The Panelist states that the Complainant has not proven that the Respondent’s printing business has ceased to exist.

Registered and Used in Bad Faith

The Panelist adheres to the general rule that when a domain is registered prior to establishment of trademark rights, the registration is not in bad faith. The Panelist also agrees with the general view that “a mere renewal” of a domain is not a new registration for the purposes of bad faith. The Panelist notes that the change in legal status of the Respondent company under California law does not change the identity of the Respondent as registrant. Thus, there is no evidence of a broken chain of ownership of the domain, nor is the identity of the registrant concealed.

Reverse Domain Name Hijacking

Because of the unusual circumstances, and because the Complainant anticipated its uphill battle, the Panelist does not find reverse domain name hijacking.

Decision

The Panelist denies the complaint, and declines to find reverse domain name hijacking.

Commentary

When selecting a new mark or a new domain, it is best to choose one that is unencumbered by prior uses of identical or similar marks by a third party. The Complainant began using the mark KION in 2006, ten years after the Respondent’s registration of the domain <kion.com>, and four years before the last use of the domain for the Respondent’s printing business. The Complainant uses the mark as an umbrella term for various products. Under such circumstances, the Complainant likely searched for third party uses of the mark prior to adopting the mark. Indeed, given that the Complainant registered <kion.us>, the Complainant probably would have pursued <kion.com> if it had been available. (The Complainant owns <kiongroup.com>.) Here, the Complainant likely assumed the risk that it might never be able to register the <kion.com> domain.

There seems to be a fine line here between a complaint that the Panelist characterizes as relying on a “carefully reasoned” argument and a complaint that would prompt a finding of reverse domain name hijacking. The Complainant relies in part on a prior panel decision that the Panelist characterizes as “distinguishable in several important aspects.” The Panelist concludes, “The Complainant may have known (had it inquired at the time) when it decided to adopt KION as its name in 2006 that a bona fide third party owned and was using the Disputed Domain Name. In those circumstances the Policy is not the appropriate mechanism to use to attempt to obtain the Disputed Domain Name from that third party.” One wonders whether another panelist might have made a finding of reverse domain name hijacking in this case.

March 7, 2017 / Nate Harris

Band derailed in bid to recover domains from its former manager

Summary of Railroad Earth, LLC v. Brian Ross and Ross Artist Management, Inc.

(WIPO Case No. D2017-0039)

Filed: January 10, 2017; Decided: February 20, 2017 (Panelist: Robert A. Badgley)

Disputed domain names: <railroadearth.com> and <railroadearth.net>

screen-shot-2017-03-05-at-8-20-10-pm

railroadearth.com

Summary

A band’s then-manager registered domain names that incorporate the band’s name; the parties dispute whether the manager or the band owned or used the name first. The Panel finds the complainant band’s version of events unbelievable, noting that the band has offered different first use dates at different times, and declines to find bad faith registration or use of the domain names.

The Parties

Complainant Railroad Earth is a jam band from New Jersey. The band released its first album in 2001. The Panel notes that “[a]ccording to the Complaint, the band Railroad Earth is ‘famous.'” (Ed: I was in a “famous” band once, too.)

The Respondent Brian Ross is the band’s former manager. After a dispute arose between Mr. Ross and the band, a settlement agreement in 2014 called for the band to pay Mr. Ross as compensation for, among other things, “any of [the band’s] rights and title and interests in and to its intellectual property, copyrights, trademarks, or otherwise[.]” The band claims that this 2014 agreement covers the disputed domain names, which were registered in 2001 (railroadearth.com) and 2004 (railroadearth.net).

The band claims that its members began working together as early as 1999, and began playing publicly in 2001. Its federal trademark registrations for the mark RAILROAD EARTH recite a first use date of June 2001. According to the band, they instructed Mr. Ross to register the disputed domain names.

According to Mr. Ross, however, he registered the <railroadearth.com> domain in January 2001, before the band’s existence, then invited the band members to form a band called Railroad Earth. He claims to have used the “Railroad Earth” name with another musical project whose song is credited in a 2000 film titled Big Eden.

The band in 2015 asked Mr. Ross to transfer to it the domain names; they claim he requested another $15,000 to do so. Mr. Ross claims that a band member recently edited the group’s Wikipedia entry to remove all references to Mr. Ross.

Identical or Confusingly Similar

The Panel finds that the band’s use and registration of the RAILROAD EARTH mark gives it rights in the mark, which is identical to the domains in dispute.

Rights or Legitimate Interests

The Panel declines to address this prong in view of its “bad faith” findings discussed below.

Registered and Used in Bad Faith

The Panel is “dubious” about the band’s version of events. It notes that the band claims, in its complaint, to have formed in 1999, and that it acquired its common law trademark rights as early as 1999. According to the Panel, this claim “does not square” with the band’s trademark registrations, which claim a first use in commerce of June 2001. The Panel concludes that the band “is taking some liberty with the facts,” a conclusion it believes is supported by the recent edits to the band’s Wikipedia page. By contrast, Mr. Ross produced evidence that he used the RAILROAD EARTH mark and registered the <railroadearth.net> domain name before the band even formed.

The Panel also notes that the 2014 agreement references “intellectual property,” but not the domain names specifically; it observes that “a domain name is not in itself an intellectual property right, as it can be used for many purposes unrelated to intellectual property.”

For these reasons, the Panel finds that the band has failed to establish that the domain was registered and used in bad faith.

Reverse Domain Name Hijacking

Mr. Ross argued for a finding of reverse domain name hijacking, asserting that a UDRP action should never have been brought for what is essentially a contract dispute. He also argued, as discussed above, that the band’s timeline is incorrect, and points out the changes to the band’s Wikipedia page.

Nonetheless, the Panel finds that the complaint was “misconceived rather than brought in bad faith, ” and declines to make a finding of reverse domain name hijacking.

Decision

Both the Complaint, and the request for a finding of reverse domain name hijacking, are denied.

Commentary

Let’s look at the two factors that led the Panel to conclude that the band was “taking some liberty with the facts.”

First, there is the supposed contradiction between the complaint, which alleges a first use date of the RAILROAD EARTH mark “as early as 1999,” and the date of first use cited in the band’s trademark registrations. There actually is no contradiction. Like every other trademark applicant, when the band filed its trademark applications in 2014, it alleged a date of first use in commerce “at least as early as 2001″–meaning it could have been earlier:

screen-shot-2017-03-05-at-9-37-47-pm

Excerpt of U.S. Appl. No. 86/412,395 (RAILROAD EARTH)

Trademark attorneys are often conservative about listing a first use date. In a case like this, where the applications were filed after the band had been around for roughly 15 years, there may not have been a reason to think that there was a huge difference between listing 2001 or 1999. Once the band was involved in the dispute with its manager, it may have investigated further and felt comfortable asserting the earlier date. It’s a leap to say from these different dates that the band was “taking some liberty with the facts.”

Second, putting a lot of weight on the edits to the Wikipedia page overlook the fact that, well, it’s Wikipedia. For one thing, the Panel doesn’t identify the evidence showing that it was a band member who made the edits. For another, the November 2016 iteration of the page admittedly says that Mr. Ross “brought together” the group, and suggests that he steered the band through many major career moves. But from July 2010 through February 2014–i.e., before the band’s dispute with Mr. Ross–the Wikipedia page mentioned Mr. Ross only to indicate that the band “brought [him] on board” after recording a demo under the band name. Before July 2010, he doesn’t appear to be mentioned at all on the Wikipedia page.

While the most recent edit could be seen as the band attempting to rewrite history to cut out Mr. Ross, it’s equally plausible that Mr. Ross (or his surrogates) edited the Wikipedia page in 2014 to inflate his role during the dispute with the band, and that the band recently corrected the inaccuracies. Whatever actually happened, there’s not enough evidence cited in the decision to conclude that the band is “taking some liberty with the facts.”

On the other hand, current and earlier versions of the Wikipedia page mention that the band members “came together in 2001.” But the Panel doesn’t rely on that (somewhat vague) statement to counter the band’s 1999 first use date.

October 18, 2016 / Nate Harris

Criticism site owner’s failure to respond leads to inference of bad faith

Summary of San Lorenzo S.p.A. v. Domains by Proxy, LLC / Lenka Jirsova

(WIPO Case No. D2016-1555)

Filed: July 29, 2016; Decided: October 7, 2016 (Panelist: Wolter Wefers Bettink)

Disputed domain name: <mynewsanlorenzoyacht.com>

screen-shot-2016-10-16-at-8-17-59-pm

Screenshot of <mynewsanlorenzoyacht.com> captured October 16, 2016

Summary

A respondent posts a criticism site extensively documenting his friend’s allegedly bad experience with a yacht maker. The panel questions the respondent’s motives when he fails to respond to the complaint filed by the yacht maker.

The Parties

Complainant Sanlorenzo S.p.A. of Ameglia, Italy (“Sanlorenzo”) is a builder of yachts, founded in 1958, with shipyards in various locations in Italy. It is the exclusive licensee of the registered mark SANLORENZO in a number of countries, including Czechia (the country formerly known as the Czech Republic) and Slovakia.

The Respondent, Lenka Jirsova of Prague, Czechia, registered the domain name on July 8, 2015. He hosts a website in connection with the domain name showing a pleasure yacht with the caption “My new San Lorenzo Yacht,” and the words “Building a new boat: Trouble? Or pleasure?”

The site also contains the following text about the founder of Sanlorenzo:

“We are pretty sure that when Mr. Giovanni Janetti was establishing foundations of the Sanlorenzo brand in 1958, he never imagined that one day his brand will become related to ‘mediocre-quality’ instead of ‘elegance’!”

“My name is Vojtech. I am a 47-year-old IT specialist. I own and manage a communications company which maintains and services GSM operators’ base stations in Slovakia.”

“I have decided to put up this website in order to share our experiences and raise boating enthusiasts’ awareness.”

The site also contains pages complaining about the supposed ordeal a friend of his underwent while waiting for his Sanlorenzo yacht to be built.

Jirsova did not respond to the complaint.

Identical or Confusingly Similar

The Panel finds that Sanlorenzo, as the exclusive licensee of the SANLORENZO mark, has rights in the mark.  It further finds that the disputed domain is confusingly similar to the SANLORENZO mark, since “mynew” and “yacht” do not avoid confusion.

Rights or Legitimate Interests

The Panel recognizes that using a disputed domain for a genuine noncommercial free speech website criticizing the mark owner’s goods/services may constitute a legitimate interest.  The Panel further notes that it need not judge the accuracy of the claims made on the website; such questions are better suited for court proceedings.  “That said, the Panel is troubled by the absence of a response, which is in marked contrast to the extent and specificity of the claims the Respondent makes on the website.”

In the Panel’s view, Sanlorenzo’s denial of the various accusations on the website would “have warranted a certain reaction” from Jirsova; his failure to react accordingly “makes it difficult for the Panel to find that the present circumstances fall within the scope” of free-speech protections afforded by the Policy.

The Panel is therefore “left to infer” that Jirsova may be using the disputed domain “in an unfair effort to exert pressure on the commercial dispute apparently ongoing between the parties.”

Registered and Used in Bad Faith

According to Sanlorenzo, the pictures on the website are accompanied by misleading or false comments, which indicates Jirsova’s intent to tarnish the SANLORENZO mark by presenting an “incomplete picture” of the dealings between the parties. The Panel notes again that Jirsova would have been expected to rebut Sanlorenzo’s assertions of bad faith. In the absence of such a rebuttal, the Panel accepts Sanlorenzo’s allegation of bad faith.

Decision
The Panel orders that the disputed domain name be transferred to Sanlorenzo, as requested in the Complaint.

Commentary

The Panel here appears to draw a distinction between pure “free speech” criticism webpages–for which no further explanation may be required from the respondent beyond the speech itself– and those created as part of a larger “commercial dispute.” When the case is the latter, as it is here, the Panel seems to expect that a respondent will renew its grievances in the face of the complainant’s denial.

I don’t know that it’s fair of the Panel to infer, in the absence of a response, that the site is intended to “exert pressure” on the commercial dispute (i.e., to obtain a better settlement or other outcome), and then rely on that inference to find bad faith and a lack of a legitimate interest in the domain.  For one thing, it’s not even clear that the dispute is ongoing, or susceptible to pressure– the supposedly-faulty-yacht-owning  friend may be done dealing with Sanlorenzo, and he and the respondent may simply want to warn others, as the website indicates.

Is there often an element of payback in a negative public review?  Of course.  But if Jirsova’s account is accurate, then the free speech is not exerting unfair commercial pressure. Almost any criticism of commercial entities is going to involve some attempt at pressuring the entity to change its practices– that’s one of the goals of free speech.

Here, it seems as though the Panel is really inferring that the respondent’s failure to respond suggests that the claims on his website are inaccurate.  Of course the Panel has explicitly indicated it will not weigh the credibility of those claims. So what is it inferring, exactly?

 

October 5, 2016 / Nate Harris

FNAC-DARTY.COM owner speaks in tongues, loses domain

Summary of FNAC and Etablissements Darty et Fils v. James

(WIPO Case No. D2016-1518)

Filed: July 26, 2016; Decided: September 19, 2016 (Panelist: Ilhyung Lee)

Disputed domain name: <fnac-darty.com>

screen-shot-2016-10-04-at-9-32-17-pm

Screenshot of <fnac-darty.com> captured Oct. 4, 2016

Summary

A respondent’s protests in English that he does not understand the Complaint in English fall on deaf ears; the respondent’s registration of a domain name combining two company names on the same day those companies announced their merger is evidence of bad faith.

The Parties

Complainant FNAC is a French retailer of books, videos, computers, and the like.  It has used the FNAC trademark since at least 1977, owning registrations in various jurisdictions, including France and South Korea.  Complainant Darty is also a French company, selling household equipment, audio and video equipment, televisions, and computers. Darty owns a number of trademark registrations for the DARTY mark in France dating back to 1980.  On November 6, 2015, the parties announced that they were merging.

That same day, Respondent James Park registered the disputed domain.  The domain name directs visitors to a site with Korean text that translates to, among other things, “the homepage is in the middle of preparations.”

According to the Complaint, Park is “not a novice to UDRP proceedings,” including a number in which he had similarly registered domain names combining the marks of companies that had recently announced a merger.

The Language of the Proceedings

Under Paragraph 11(a) of the Rules, UDRP proceedings are usually conducted in the language of the Registration Agreement governing the domain, unless the parties or the Registration Agreement specify otherwise.  But the Rules also give the Panel discretion to determine the language with regard to the circumstances of the case.

In this case, the Registration Agreement is in Korean. The Complainants, however, requested that the proceeding be in English.  Park objected, requesting (in Korean) that the proceeding be in Korean.  WIPO then notified the parties that the Complaint would be accepted as filed in English, but that the response and the decision could be filed in either language.

Park did not file a formal response to the Complaint, but reiterated his objection to proceeding in English.  His message includes several lines of Korean text in which he states that he cannot understand the Complaint as filed in English, and will ignore the decision and/or challenge it in the Korean courts.  The last line of the communication, however, contains the following text (red in original):

We will appeal to to Korean District Court against WIPO Decision!! We will ignore it!

On the basis of this outburst, the Panel concludes that Park has “familiarity with the intricacies of the UDRP proceeding in English, but chose not to submit a Response in either language.”  Thus, “[t]his Decision will be in English.”

Trademark Rights

The Panel finds that the parties have rights in their respective FNAC and DARTY marks.

Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical or confusingly similar to the combination of the two Complainants’ marks–namely, because it is the combination of those two marks, separated by a hyphen.  As the Panel notes, prior decisions have found identity or confusing similarity in the case of domains incorporating separately-owned marks of companies that have or will merge.

Rights or Legitimate Interests

The Complainants allege that Park has no right or legitimate interest in their respective marks; they have not authorized him to use the marks, and they have no relationship with him.  The Panel finds the Complainants have therefore made a prima facie showing.

Because Park did not substantively respond to the Complaint, he fails to overcome that showing.  The Panel therefore concludes that Park lacks rights or legitimate interests in the mark.

Registered and Used in Bad Faith

The Panel finds that the timing of Park’s registration of the disputed domain–on the very same day the merger between the Complainants was announced–indicates that Park must have been aware of them, and registered the domain in bad faith to “take advantage of the confusion between the domain name and any potential complainant rights.”

The Panel also concludes that Park used the domain in bad faith by attracting visitors by creating a likelihood of confusion with the Complainant’s marks.

Decision
The Panel orders that the disputed domain name be transferred to FNAC, as requested in the Complaint.

Commentary

One of the cases cited by the Panel as evidence of Park’s “familiarity with the intricacies of the UDRP proceeding in English” is interesting. opra Group and Steria v. JSP, (WIPO Case No. D2014-0673) involved a very similar scenario to the one here. Though the Registration Agreement was in Korean, the complainant requested the proceeding be conducted in English.  Park objected, arguing in Korean for Korean (as he did here).  In that case, however, the Panel ordered the complainant to provide a copy of the complaint in Korean, which it did.  Park, however, never responded.

When the Panel here indicates that “there is little purpose in ordering translation of the Complainants’ submissions into Korean,” it is probably referencing the opra Group case.  Park seemingly forced the complainant in that case to waste money on translating a complaint he didn’t intend to respond to.  This Panel probably wanted to avoid repeating that.

Is the decision here regarding the Language of the Proceeding fair as applied to Park?  Certainly.  But it would be concerning if this case were cited for the general proposition that a respondent who uses a few scraps of a language is foreclosed from arguing against that language’s use in the proceeding. Yet other than the last sentence of his email, there is no indication here that Park speaks English.

Using this case as an example, it’s not hard to imagine a non-English-speaking respondent receiving a complaint in English, and getting an English-speaking friend–or using an online translator–to reiterate, in English, that the respondent doesn’t speak English.  Even if the respondent can cobble together a sentence in English without help, that’s a far cry from understanding the factual allegations and points of law in a legal complaint.

That twist ending though!  The conclusion of Park’s letter to WIPO reminded me of the last scene in No Way Out, when Kevin Costner suddenly starts speaking in Russian.  (Spoiler alert.)

September 28, 2016 / Nate Harris

Dollar Bank recovers BITDOLLARBANK.COM

Summary of Dollar Bank, Federal Savings Bank v. Thomas Pillsworth, BTCNYEX

(WIPO Case No. D2016-1403)

Filed: July 8, 2016; Decided: September 7, 2016 (Panelist: Richard W. Page)

Disputed domain name: <bitdollarbank.com>

screen-shot-2016-09-25-at-8-28-54-pm

Screentshot of <bitdollarbank.com> as of Sept. 25, 2016

The Parties

Complainant Dollar Bank, Federal Savings Bank (“Dollar Bank”) is a U.S.-based bank that owns federal trademark registrations for DOLLAR BANK and DOLLARBANK.COM, registered in in 2008 and 2009, respectively. [The DOLLAR BANK registration disclaims the exclusive use of the word “BANK” apart from the mark as shown.]

Respondent Thomas Pillsworth, BTCNYEX (“Pillsworth”) registered the disputed domain on March 13, 2015.  According to Dollar Bank, the disputed domain did not point to an operative website.

Pillsworth’s response to the Complaint was an email to WIPO–sent after WIPO notified the parties of Pillsworth’s default–contesting whether the “generic” terms “bit” or “dollar” could afford trademark protection.  [He didn’t question the distinctiveness of “bank.”]  The Panel considered this informal (and late) response.

Trademark Rights

The Panel finds that Dollar Bank’s trademark registrations are prima facie evidence of their validity of the marks, creating a rebuttable presumption that the marks are inherently distinctive. Pillsworth’s contentions regarding “bit” and “dollar” are found insufficient to overcome the presumption.  The Panel therefore finds that Dollar Bank has trademark rights for purposes of the proceeding.

Identical or Confusingly Similar

Citing the decision in Rapidshare AG v. Randi (WIPO Case No. D2010-1089), the Panel observes that “[n]umerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the Disputed Domain Name is confusingly similar to the DOLLAR BANK Mark.”  Thus, the Panel finds the disputed domain to be confusingly similar to Dollar Bank’s marks.

Rights or Legitimate Interests

Dollar Bank alleged that the disputed domain is not pointed at an active webpage, and so is not part of a bona fide offering of goods or services; Dollar Bank also asserted that Pillsworth is not “commonly known by” the disputed domain, nor is he making a legitimate noncommercial or fair use of the domain.

Because Pillsworth did not respond to rebut this showing, the Panel finds that Dollar Bank has demonstrated Pillsworth’s lack of rights or legitimate interest in the domain.

Registered and Used in Bad Faith

The Panel finds bad faith by Pillsworth based on three factors.

First, it cites Telstra Corp. v. Nuclear Marshmallows (WIPO Case No. 2000-0003) for the proposition that “registration together with ‘inaction’ or ‘passive use’ and other facts can constitute bad faith use.”

Second, the Panel finds that Pillsworth had constructive knowledge of Dollar Bank’s trademark registrations and/or common law rights when registering his domain name.  According to the Panel, “[c]onstructive knowledge of Complainant’s rights in the DOLLAR BANK Mark is a factor supporting bad faith.”

Third, the Panel notes “the use of Complainant’s entire mark in the Disputed Domain Name, thus making it difficult to infer a legitimate use of the Disputed Domain Name by Respondent.”  The Panel cites Cellular One Group v. Paul Brien ( WIPO Case No. D2000-0028) for the proposition that wholly incorporating a mark in this manner is evidence of bad faith.

Thus, bad faith is found based on (i) Pillsworth’s “passive holding” of the domain by “failing to post any content on the Internet”; (ii) Pillsworth’s constructive knowledge of Dollar Bank’s trademark registrations; and (iii) the domain name’s incorporation of the entire DOLLAR BANK mark.

Decision
The Panel orders that the disputed domain name be transferred to Dollar Bank.

Commentary

The bad-faith analysis in this decision warrants a closer look.

First, while the Panel notes that passive holding “and other facts” can constitute bad faith use under Telstra and other decisions, it doesn’t say what those other facts are here.  In Telstra, the other facts included that the Complainant’s trademark had a “strong reputation” and was “widely known” as evidenced by “substantial use” in multiple countries, and that the Respondent (“Nuclear Marshmallows”) took active steps to conceal its true identity and provided false contact detail for the registration. Since Telstra, those factors have coalesced into the “consensus view” of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).  In short, passive holding can be evidence of bad faith where the complainant’s mark is well known and the respondent has concealed its identity.

Here, by contrast, the only evidence of Complainant’s trademark rights is its two registrations– there is no evidence regarding the reputation of the DOLLAR BANK mark or the extent to which it is used.  Respondent Thomas Pillsworth also apparently used his true identity to register the domain.

Second, the Panel finds bad faith in Pillsworth’s constructive knowledge of the DOLLAR BANK mark.  Yet as the WIPO Overview 2.0 summarizes, “[p]anels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP,” except where there are indicia of cybersquatting–again, not in evidence here.  The consensus by these panels makes sense, because constructive notice simply avoids the defense of lack of knowledge of trademark rights; it does nothing to show bad faith intent, which needs to be affirmatively shown by a UDRP complainant.

Third, the fact that the domain incorporates the complainant’s entire mark may be relevant or even noteworthy, but it’s certainly not dispositive in all cases– for example, BUDWEISER.COM incorporates the entire “W” mark of W Hotels, but that’s hardly evidence of bad faith by the beer company.  In the Cellular One Group decision cited by the Panel, bad faith registration of <cellularonechina.com> was found where the trademark was “a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well known mark” (emphasis added).  There is no evidence here that the mark is well-known, so one can’t assume that Pillsworth must have known about Dollar Bank’s mark.

The circumstances evidencing bad faith registration and/or use in Paragraph 4(b) of the Policy are just examples.  But a common theme emerges; bad faith is shown where the respondent has registered/acquired the domain name in order to (i) to sell it to the complainant or a competitor of the complainant for a profit; (ii) prevent the complainant from registering a domain incorporating the mark, as part of a pattern of conduct; (iii) to disrupt the business of a competitor; or (iv) attract visitors to a website associated with the domain name by creating a likelihood of confusion with the complainant’s mark.  Each of the four examples requires that the complainant demonstrate evidence of the respondent’s awareness of –and intent to profit from–the complainant’s mark.

There doesn’t seem to be any such awareness here.  The decision does not mention that “bit” in the context of currency most likely refers to bitcoins, but the respondent here is “Thomas Pillsworth, BTCNYEX”; the Twitter feed for user @btcnyex tweets about bitcoin-related news, and lists an associated website (bankblockchain.io) that is also registered to Mr. Pillsworth.  If I were to speculate, I would guess that Mr. Pillsworth registered <bitdollarbank.com> to evoke bitcoin banking, and had no awareness of the DOLLAR BANK marks–or at least was not trying to exploit their goodwill.  Though the Panel’s decision cites only decisions from 2000, more recent cases would suggest that this is not a situation the UDRP is intended to remedy.

 

 

September 20, 2016 / Nate Harris

KGP Telecom can’t prove bad faith with KGP.COM

Summary of  KGP Telecommunications, Inc. v. KGP International Ltd.

(NAF Case No. FA1607001685573)

Filed: July 27, 2016; Decided: September 7, 2016 (Panelists: Douglas M. Isenberg; Reinhard Schanda; Hon. Karl V. Fink (Ret.))

Disputed domain name: <kgp.com>

screen-shot-2016-09-17-at-8-44-42-pm
kgp.com

The Parties

According to Complainant KPG Telecommunications, Inc., it was founded in 1973 and has become a “leading provider” of supply chain solutions and other services for the communications industry.  It has over 2,000 employees in 15 locations in the United States.  It owns a U.S. trademark registration for the mark KGP for distributorship-related services; the registration claims a first use date going back to 1985, and was registered on January 19, 2010.

Respondent registered the disputed domain the following day, January 20, 2010.  The “registrant name” identified Michael Gleissner, the well-known owner of many three-letter domain names. Since at least September 2013, the domain has resolved to a landing page [Screenshot above] promising a “new project is coming to you.” Complainant asserts that several hundred of Mr. Gleissner’s domains resolve to the same landing page.

In June 2016, Complainant contacted Respondent to inquire about purchasing the domain.  The Respondent indicated that it would not engage without a “serious offer in the 6 figures.”

On July 15, 2016, the WHOIS record for the domain was changed to list “KGP International Ltd.” as the registrant name; other details were unchanged.   The present Complaint was filed on July 27, 2016, and on August 8, 2016, before filing its response, Respondent filed a trademark application for the mark KGP.COM in connection with various entertainment-related services.  [Some extra-decision research: the same day, companies called KGM International Ltd. and KGN International Ltd., both having the same address as the Respondent, also applied to register the marks KGM.COM and KGN.COM, respectively, all for identical services.]

Complainant filed a reply to the Response that reiterated the points made in the Complaint.  It also pointed out that Respondent’s post-Complaint trademark filing was made for the purposes of the proceeding, and cited media reports that Mr. Gleissner has sold over 14,500 domain names.

The Respondent then filed a surreply taking issue with the “14,500” domains” story, noting the “dubious nature of the allegation,” and pointing out that it made no effort to sell the domain for almost 6 years before being approached by the Complainant.  The Respondent also argued that the Complaint is barred by laches.

Laches

The Panel declines to invoke laches, quoting WIPO Overview 2.0 for the observation that “[P]anels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP.”  [Note: The Panel doesn’t quote the Overview’s observation that  “a small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”]

Supplemental Filings

The Panel notes the parties’ right to make their additional filings, but also notes that the Panel may disregard them.  It finds the additional submissions here to be “largely repetitive of their previous arguments”; accordingly, it “does not find them helpful, and . . . gives them little attention.”

Identical or Confusingly Similar – Yes

The Panel finds that Complainant’s trademark registration establish rights in and to its KGP trademark.  The second-level portion of the disputed domain <kgp.com> is therefore identical to Complainant’s mark.

Rights or Legitimate Interests – N/A

“[F]or the reasons set forth above and below” with respect to bad faith, the Panel finds it unnecessary to make a finding regarding Respondent’s rights or legitimate interests in the disputed domain.

Registered and Used in Bad Faith – No

The Respondent claimed to be unaware of Complainant or its trademark when registering the domain name, and Complainant adduced no direct evidence to the contrary.  The Panel notes that “panels in similar situations also involving three character domain names have found that a respondent did not register or use the domain name in bad faith.”

The Panel quotes the decision in General Nutrition Investment Company v. John Gates / The Web Group, WIPO Case. No. D2014-0982, in which a Panel declined to transfer another three-letter domain:

Complainant is of course not the only entity in the world entitled to use those three letters in connection with an offering of goods or services, on the contrary, it is more than likely that many entities around the world could be entitled to use a three-letter abbreviation such as TMG. It is entirely feasible for the Respondent to make a bona fide offering under the disputed domain name <tmg.com>. The Complainant has not given any evidence of to what extent the TMG mark is known, and has not presented any evidence to support his assertion that the Respondent knew of the mark when registering the Domain Name.

Noting that it, too, is not in a position to “second guess” the Respondent’s assertions,  the Panel find that the Respondent has shown “contemplated good faith use” of the domain name, and has not taken active steps to conceal its true identity nor provided false contact details.

Furthermore, because the Respondent is “passively holding” the domain, the Panel concludes that confusion is unlikely, particularly where it is unclear whether Complainant’s mark is well-known outside the United States.

Finally, while the Respondent may have indicated a willingness to sell the domain for a high price, “the purchase and sale of domain names for six or even seven figures is often a legitimate practice that does not in and of itself violate the UDRP.”

Decision
The complaint is denied.

Commentary

As the Panel in the General Nutrition Investment Company decision points out, there are probably a lot of companies out there using every possible three letter combination.  So the takeaway here is that, as the disputed domain name gets shorter, a Complainant may have a harder time showing that the Respondent knew of Complainant’s mark when registering and using the domain.

I agree it would be hard to show specific bad faith registration here, and maybe the decision should have been limited to that ground.  The Panel here suggests that there is no evidence of bad faith use of the domain, which I think is arguable.  First, the fact that the Respondent apparently owns several hundred domain names that all lead to the same landing page seems like an obvious attempt to defend a lot of domain names against UDRP complaints; it’s certainly hard to believe that this is evidence of “contemplated good faith use,” as the Panel finds.  Check out kgn.com and kgm.com— look familiar?

The idea that something fishy is going on here is supported by the recent “registrant name” change and the post-complaint trademark filing, particularly in the context of the same things happening in parallel for the <kgn.com> and <kgp.com> domains (and there may be others).  Those seem like classic examples of a respondent having “taken active steps to conceal its true identity,” though the Panel concludes the opposite. I’d be curious to know if there are actually registered entities in the U.K. called KGP International Ltd., KGM International Ltd., and KGN International Ltd., all having the same address.  Call me skeptical.

It’s also interesting that Panel considers the domain to be a “passive holding,” which the WIPO Overview 2.0 defines as, among other things, a domain not associated with an actively-used website.  What about the landing page?  Whether it is legitimately associated with a nascent business or is a smokescreen for UDRP purposes, it’s still an active website.

As I said, I think this complaint fails on bad faith registration alone, so I’m not sure why the Panel suggests, in the face of such funny business, that the Respondent appears to be using the domain in good faith.

Gerald Levine has written about why he thinks the Panel in this case declined to decide the “rights or legitimate interests” prong; definitely a great read.