Anchovy News, October 2020

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This is the October 2020 edition of Anchovy News. Here you will find articles concerning ICANN, the domain name industry and the recuperation of domain names across the globe. In this issue we cover:

DOMAIN NAME INDUSTRY NEWS

  • Launch of .CONTACT
  • .COM still competitive
  • COVID boost for .NO

DOMAIN NAME RECUPERATION NEWS

  • .IO Policy no Betr for complainant
  • Jello there legitimate rights and interests
  • Different panelists, different views
  • The wish is father to the thought

Newsletter sections:

  • Domain name industry news
  • Domain name recuperation news

Domain name industry news

Launch of .CONTACT

The Registry Donuts Inc., which has the largest portfolio of new generic Top Level Domains (gTLDs), with some 246 gTLDs, has recently launched its latest acquisition, .CONTACT.

In an announcement, Donuts explained that the .CONTACT gTLD is relevant to all and is "ideal for freelancers and consultants who want to attract more leads and give clients an easy way to contact them. Plus, businesses of all sizes can benefit from a designated contact page and URL to help customers know their trustworthy channels for communication."

.CONTACT domain names are open to everybody and there are no restrictions to register them. The launch is taking place in three stages:

  • Sunrise Period – 29 September to 28 November 2020
    Trademark holders who have registered their trademark(s) at the Trade Mark ClearingHouse (TMCH) can apply for the corresponding .CONTACT domain name(s). Domain names will be allocated at the end of the Sunrise period. If there are several applications for the same domain name, an auction will take place.
  • Early Access Program (EAP) – 2 to 9 December 2020
    EAP is open to everybody on a first come, first basis, but during this phase domain names are available at higher prices than normal. Prices decrease day by day, thus a domain name will be much cheaper on the seventh day of the EAP than on the first day – but it may be registered by another party before the seventh day if they are willing to pay more for it. The EAP phase is broken down as follows:
  • EAP day 1 : 2 to 3 December 2020
  • EAP day 2 : 3 to 4 December 2020
  • EAP day 3 : 4 to 5 December 2020
  • EAP day 4 : 5 to 6 December 2020
  • EAP day 5 to 7 : 6 to 9 December 2020
  • General availability – 9 December 2020
    Domain names will be available for everybody on a first come, first basis at the standard price from 9 December 2020 onwards.

For more information on the registration of .CONTACT domain names, please contact David Taylor or Jane Seager.

.COM still competitive

Verisign, the Registry responsible for the management of the generic Top Level Domain (gTLD) .COM, recently announced that the number of registered .COM domain names had surpassed the 150 million mark.

The .COM extension is one of the pioneers of the domain name space - the first .COM domain name was symbolics.com, registered on 15 March 1985 to Symbolics Inc., a computer systems company in Cambridge, Massachusetts. In 1997 .COM passed the one million registrations mark, and as the internet kept developing the number of registrations increased substantially.

In 2000 the number of registered domain names across .COM, .NET and .ORG was in the region of 10 million combined. At the time, the general consensus was that all the “good” domain names had already been taken and additional gTLDs, including .BIZ and .INFO, were thus launched. In view of this, and also taking into account the introduction of hundreds of new gTLDs, which massively increased the choice of alternative domain names in the domain name space, the continued success of .COM is even more remarkable.

It will be interesting to see whether .COM’s reign continues to survive even the next round of new gTLDs, currently predicted to launch in 2023 or 2024.

COVID boost for .NO

Norid AS, the Registry responsible for running .NO, the country code Top Level Domain (ccTLD) for Norway, has recently published statistics that demonstrate that there has been a significant increase in .NO domain name registrations between March and August 2020.

Anchovy News readers may know that registration of .NO domain names is restricted to Norwegian entities. Norid has attributed much of this growth to the COVID-19 situation, a view shared by some of its partners. According to Norid, 63,000 new domain names were registered between March and August 2020. This is the largest number of domain names registered during the same period since 2012. By the end of August 2020 there were 795,000 domain names registered under .NO, while at the same time in 2019 the total was 774,000. This is an increase of 21,000 domain names, while Norid recorded an annual increase of 17,000 domain names in 2018 and 2019. Interestingly, Norid also recorded a “significant” number of .NO domain names being discontinued during this same period.

A quarter of these new .NO domain name registrations came from private individuals, while other new registrations came from companies and other organisations. According to Norid, one of its providers, Domeneshop AS, noted that a large number of private individuals have registered domain names with the intention of transferring them to a new company, once they have obtained the new company number from Brønnøysund Register Centre (the Norwegian government body responsible for, amongst other things, the Register of Business Enterprises). So, whilst many new (Norwegian) business ideas may be in the initial stages of development, one of the things a new business will of course need is a domain name, an email address and potentially a website.

It should also be noted that the Norwegian government has put in place a “crisis package” for Norwegian businesses, which allowed businesses adversely affected by COVID-19, to apply, from mid-April 2020, for support and assistance from Innovation Norway’s additional budget of around NOK 5 billion. According to NRK.NO (the Norwegian government-owned radio and television public broadcasting company), the limit for loans and grants from Innovation Norway has been increased to 14 billion this year, with 2.17 billion having already been granted. The Brønnøysund Register Centre also noted an increase in demand for guidance being requested from new businesses and start-ups. Even though they have not seen any marked changes with regard to the number of newly registered companies in comparison with 2018 and 2019, the implication is that this support has also affected the increased growth in .NO, possibly due to the fact that much of the business of these new companies will be conducted online rather than by way of bricks and mortar.

To visit Norid AS please click here.

Domain name recuperation news

.IO Policy no Betr for complainant

In a recent decision under the .IO Domain Name Dispute Resolution Policy (.IO Policy) before the World Intellectual Property Organization (WIPO), a three-member Panel refused to transfer the disputed domain name bettertherapeutics.io, finding that the Complainant had failed to prove that the Domain Name had been registered or used in bad faith.

The Complainant was Pure Proactive Health, Inc., doing business as Betr Health, a United States company founded in 2015 and providing digital therapeutics by means of technology-based treatment programmes addressing obesity, chronic and metabolic diseases and wellness. These programmes included digital coaching, nutrition and meal planning, and lifestyle and behaviour modification programmes. In 2016, the Complainant registered the trademark BETR for “medical and wellness services, namely for providing weight loss program services”. In 2017, the Complainant registered the trademark BETR a second time for “computer software for providing health and wellness coaching”. The claimed date of first use in commerce of both trademarks was 5 February 2016.

The Complainant operated its online business by means of a website using the domain name betrhealth.com. The Complainant’s website presented the Complainant as a Centre for Disease Control “fully recognized diabetes prevention program” which featured the use of a “dedicated personal coach” for its clients. The Complainant also offered a mobile software application available to the general public under the BETR trademark and presented as helping users with their weekly grocery list.

The Respondent was Better Therapeutics, LLC a United States company founded in 2015 which had changed its name from Farewell, LLC in early 2018. The Respondent offered a mobile application to deliver “digital behavioral therapy” for its clients, including those with “serious chronic diseases such as Type 2 diabetes”. The application was accessible via a passcode, obtained only by a doctor’s prescription or by authorisation of a health insurer that had partnered with the Respondent. The Domain Name, which was first registered in 2017 then acquired by the Respondent in 2018, resolved to a fully developed website on which the Respondent offered its “Better Therapeutics” services. According to the website “Better treats serious cardiometabolic diseases to transform lives and reduce healthcare utilization through the use of digital therapeutics” including “diabetes, hypertension, cardiovascular disease and obesity”. The Respondent’s website further stated “by combining a non-prescription version of our software with expert health coaches and nurses, we deliver a cost-effective solution to innovative health plans seeking to reduce healthcare utilization among their members with cardiometabolic diseases.”

It emerged that the services of both the Complainant and the Respondent were offered to clients through the same large health insurer.

The Complainant initiated proceedings under the .IO Policy for a transfer of ownership of the Domain Name.

To be successful under the .IO Policy, a Complainant must satisfy the requirements of paragraph 4(a) of the .IO Policy, namely that:

(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 the disputed domain name; and

(iii) the disputed domain name was registered or is being used in bad faith.

Under the first element of paragraph 4(a) of the .IO Policy, the Complainant considered that confusion was demonstrated by the fact that the Complainant’s and the Respondent’s common insurance partner had mistakenly posted on its website an image of the Respondent’s mobile application, while trying to feature the Complainant’s services. The Panel declined to consider the first element given its decision on the issue of bad faith registration or use. However one Panel member noted that in his opinion the Domain Name was clearly generic and, in contrast, the internet user would see the trademark as a unique stand-out, separate and distinct from the wider concept embraced by the Domain Name. He agreed with the Respondent that the trademark had likely been coined to create this very uniqueness.

With regard to the second element of paragraph 4(a) of the .IO Policy, the Panel declined to consider it given its decision on the issue of bad faith registration or use. However, once again one Panel member noted that in his opinion the Respondent had shown that it had both a right and a legitimate interest in the Domain Name. The Domain Name had clearly been chosen to reflect the name of the Respondent’s company and its application, and consisted of two generic words. In his view there had been no targeting or other untoward conduct by the Respondent that might negate its right or legitimate interest.

Under the third element of paragraph 4(a) of the .IO Policy, the Panel unanimously held that the Complainant had failed to prove that the Respondent had registered or used the Domain Name in bad faith.

With regard to bad faith registration, the Respondent’s CEO indicated by affidavit that he had registered the Domain Name as part of a rebranding operation from “Farewell” to “Better Therapeutics” and that he had never heard of the Complainant’s mark BETR at the time the Domain Name was registered. The Panel pointed out that (i) the trademark BETR was not the same as “Better” and that the latter was widely used in marketing and advertising brands throughout the English-speaking world and was even included within many brand names, (ii) the Complainant had provided insufficient evidence that its trademark was well known. The Complainant had referred to 20,000 clients, but such a number was insufficient to establish, on a balance of probabilities, that some other firm, even one operating in the general healthcare field, would more likely than not be aware of the BETR mark. The Panel also considered that given the commonness of the word “Better”, there was little reason to doubt the CEO’s statement and concluded by stating that the Complainant had failed to carry its burden of proving bad faith registration.

With regard to bad faith use, the Complainant argued that the Respondent had continued using the Domain Name to operate a website in direct competition with the Complainant, with full awareness of the BETR mark. The Panel first underlined that neither party had discussed their seven-month litigation in their submissions to WIPO. The Panel then dismissed this argument by noting that (i) the Respondent had not necessarily committed bad faith use of the Domain Name by continuing its website activity in the same manner as it had done for nearly a year and a half (ii) if the Respondent had ceased to use the Domain Name after the lawsuit began, it might have suffered a disruption in its business, and (iii) given the clear difference between the trademark BETR and the word “Better”, the Respondent could have very well persisted in a good faith belief that the Domain Name was not infringing the Complainant’s trademark.

As a result, the Panel dismissed the claim for failure to meet the requirements of the third element of paragraph 4(a) of the .IO Policy.

This case shows that, despite the fact that the bad faith requirements of the .IO Policy are more relaxed than the requirements of the Uniform Domain Name Dispute Resolution Policy (bad faith registration or bad faith use, as opposed to both bad faith registration and use), the standard of proof of each alleged bad faith argument under the .IO Policy is no lower, and one or the other must still be proved on the balance of probabilities.

The decision is available here

Jello there legitimate rights and interests

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member Panel refused to transfer the disputed Domain Name spase.com, finding that the Complainant had failed to prove that the Respondent had no rights or legitimate interests and had registered and used the Domain Name in bad faith, and entering a finding of Reverse Domain Name Hijacking (RDNH).

The Complainant was Sahil Gupta, an individual operating Spase, Inc. a company incorporated in 2019 and specialised in converting photographs into 3D models. The Complainant had not registered any trademarks but submitted that he had established common law trademark rights in SPASE through media and Internet presence. Prior to filing the Complaint, the Complainant had unsuccessfully tried to acquire the Domain Name from the Respondent.

The Respondent was Mrs Jello, LLC, a company dealing in selling or leasing descriptive or generic domain names. The Respondent registered the Domain Name in February 2005. The Domain Name had been used ever since to point to parking pages with pay-per-click links.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent submitted a Response requesting a three-member panel and requested the Panel to enter a finding of RDNH.

To be successful under the UDRP, a complainant must satisfy the requirements of paragraph 4(a) of the UDRP:

(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 the disputed domain name; and

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

Under the first element of paragraph 4(a) of the UDRP, the Complainant claimed that the Domain Name was confusingly similar to its common law trademark. The Complainant argued that he had acquired common law trademark rights because customers associated SPASE with his services. The Respondent argued that the Complainant could not have any common law trademark rights in SPASE as it was a generic term and the Complainant had made no effort to register it as a trademark.

The majority of the Panel held that the Complainant had established unregistered or common law trademark rights in SPASE because a relevant segment of the public recognised it as a distinctive identifier of the Complainant’s 3D modelling services. The majority of the Panel rejected the Respondent's argument according to which the term "spase" was generic on the basis that it found no generic use of it. The Panel further underlined that in order to have standing in a UDRP case, a complainant must only prove the existence of trademark rights at the time of filing, regardless of whether such rights existed at the time of the domain name registration.

It should be noted that one Panel member disagreed with the majority on the first element and found that the Complainant had likely failed to prove that consumers perceived the term "spase" as an identifier of the Complainant's services. The dissenting Panel member noted that the Respondent may well be right in submitting that it was questionable that the Complainant would be able to obtain a registered mark for its goods and services, and therefore found that it was doubtful that the Complainant had established a common law trademark in SPASE.

With regard to the second element of paragraph 4(a) of the UDRP, the Complainant contended that the Respondent had no rights or legitimate interests in the Domain Name because the Respondent had made no active use of the Domain Name for several years. The Respondent countered that it had never heard of the Complainant prior to receiving an email from him inquiring about purchasing the Domain Name. The Respondent further stressed that its activity consisted of selling or leasing generic or descriptive domain names and that the term "spase" was generic. Finally, the Respondent underlined that the Complainant himself recognized that he had just begun to use SPASE as a trademark.

The Panel found that it was not necessary to make a finding on the Respondent’s rights and legitimate interests in view of its findings on bad faith. The Panel noted that the Respondent had registered the Domain Name fourteen years prior to the Complainant's launch of its business and first use of SPASE in commerce and that the Complainant had failed to establish that he had any rights at the time that the Domain Name was registered in 2005. The Panel further found that the Complainant had failed to prove that the Respondent had changed its website following the Complainant's launch of his business to try and target or trade off the Complainant or the Complainant's rights. Finally, the fact that the website to which the Domain Name resolved was used to generate pay-per-click revenue was insufficient to find that the Respondent had no legitimate rights or interests.

With regard to the third element, the Complainant mainly asserted that the Respondent had a longstanding reputation as a domain squatter. The Respondent again countered that (i) "spase" was a generic term and as such was more likely to generate advertising revenue, (ii) its use of the Domain Name was unrelated to the Complainant's business and (iii) it did not register the Domain Name with the intention of preventing the Complainant from exercising its trademark rights. Finally, the Respondent argued that the Complainant had engaged in RDNH.

The Panel held that the fact that the Domain Name had been registered fourteen years prior to the launch of the Complainant's business prevented a finding of bad faith registration and use. A finding of bad faith was further prevented by the fact that the Respondent had not changed the content of its website after the Complainant's launch of his business nor had it tried to target or trade off the Complainant or the Complainant's rights. Finally, the fact that the website to which the Domain Name resolved was used to generate pay-per-click revenue was insufficient to prove bad faith.

The Panel concluded by entering a finding of RDNH considering the substantial amount of time between the Domain Name registration and the launch of the Complainant's business, added to the fact that the Complainant had unsuccessfully attempted to purchase the Domain Name before filing a Complaint. In the Panel’s opinion this indicated that the Complainant had filed a groundless Complaint, brought in bad faith in an attempt to deprive a registered domain name holder of a domain name (as per the definition of RDNH in the UDRP Rules).

This decision illustrates the importance for complainants to convincingly establish a respondent's lack of legitimate rights or interests and bad faith, especially when a domain name registration substantially pre-dates a complainant’s supposed trademark rights. In this particular case the mere fact that the Domain Name had only ever resolved to pay-per-click links was insufficient, as were assertions about the Respondent’s past history. Trademark owners should therefore tread carefully and gather reliable and convincing evidence of bad faith, otherwise their complaint will almost certainly be denied.

The decision is available here.

Different panelists, different views

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), the majority of a three member Panel ordered transfer of a domain name, although one member dissented entirely, both on the issue of rights and legitimate interests and on bad faith registration and use.

The Complainant was Aveve N.V., of Belgium, a company established more than a hundred years ago. Having previously operated under the names “Aveve” and “Cobelal”, the Complainant adopted the name “Arvesta” in 2017 for some of the group’s activities including the provision of cattle fodder and the largest chain of garden centres in Belgium. It was the owner of several trademarks including a Belgian and a European Union trademark incorporating the term ARVESTA, registered in 2017 and 2018 respectively.

The Respondent was Privacy Administrator, Anonymize, Inc., United States of America / Dennis Koorn. The registrar identified the privacy service Anonymize, Inc. as being the Respondent. However, the Center received email communications from a Ray R / Bahram Shadabi, first referring to the Domain Name as “my domain name” and subsequently indicating that his company owned the Domain Name. However, in his Response, the Respondent stated that he was Dennis Koorn without providing further information about his identity, nor his potential connection with Ray R / Bahram Shadabi.

In light of this, as a preliminary issue the panel noted that it had to determine the Respondent’s identity. As stated in section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.”

In the case at hand, the Panel found it appropriate to record in this decision both the name of the privacy or proxy registration service identified as the Respondent by the registrar and the Center, and of the person identified as the Respondent in the Response.

The disputed Domain Name was arvesta.com. It was resolving to a website offering it for sale and displaying a contact form. Shortly after he purchased the Domain name at auction, the Respondent received an offer to buy the Domain Name. In reply, the Respondent stated that he would consider an offer of USD 42,000.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):

(i) the domain name registered by the respondent 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 domain name; and

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

As far as the first limb was concerned, the Panel was satisfied that the Complainant had rights in the trademark ARVESTA and that the Domain Name incorporated the Complainant’s trademark in its entirety without any adornment. It found that the Domain Name was identical to the Complainant's trademark. Thus the Complainant satisfied the first element set out in paragraph 4(a) of the UDRP.

Turning to the second limb and a respondent's rights or legitimate interests (or lack of them), according to section 2.1 of the WIPO Overview 3.0, a complainant must prove that the respondent had no rights or legitimate interests in respect of the domain name in question. A complainant is normally required to make out a prima facie case and it is for the respondent to demonstrate otherwise. If the respondent fails to do so, then the complainant is deemed to satisfy paragraph 4(a)(ii) of the UDRP.

The Complainant claimed that (i) it had not authorised the Respondent to use the Domain Name and that the Respondent was not affiliated with it; (ii) the Domain Name was not derived from the Respondent’s name; (iii) the Respondent did not appear to hold any trademarks in the term ARVESTA; (iv) in response to the offer to purchase, the Respondent indicated an amount in excess of his documented out-of-pocket costs directly related to the Domain Name.

The Respondent argued that he was not aware of the Complainant when he registered the Domain Name and therefore did not target the Complainant. The Respondent further claimed to have registered several domain names consisting of descriptive words, including the Domain Name, for his business operations as part of his domain name portfolio and parked them in order to generate revenue. As the Domain Name was expiring, the Respondent considered that it had potential for “brandability” as it had been held for a number of years by the previous owner. In this regard, the Respondent pointed out that the Domain Name was previously held by Arvesta Corporation, so that the name was not exclusively associated with the Complainant. The Respondent also listed a number of other third parties using the term “arvesta” including Arvesta Consulting, Lake Arvesta Farms LLC, Lake Arvesta, Arvesta Creek Alaska and Arvesta Kelly – a former professional basketball player. In support of his claim, the Respondent submitted evidence that the word “arvesta” also meant “consider” in Estonian and “scar” in Finnish.

Although the Panel accepted that the registration of domain names consisting of acronyms, dictionary words or common phrases could be a legitimate practice under the UDRP, the majority did not consider that the term “arvesta” could be considered as a dictionary word or common phrase of the kind falling within, for example, the cases discussed in WIPO Overview 3.0, section 2.10.

In support of its claim, the Complainant submitted a press release in 2018 announcing the adoption of its new name stating:

Arvesta is a name that combines three concepts: ‘Arvus’, the Latin word for plough, ‘harvest’ because we continually reap the benefits of what we’ve sown, and ‘invest’ because we focus on investing in people, brands, and innovation. The new Arvesta umbrella name will be the quality label for over 40 brands and a strong employer with 1,900 experts.”

The majority of the Panel was of the view that there was very limited third party use, considering that one of the uses relied on by the Respondent was not use of “arvesta”, but “arvest” by Arvest Bank. The bank did appear to have registered the domain name arvesta.net (which, at the time the Panel rendered its decision, resolved to a pay-per-click parking page), but it was using the domain name arvest.com.

Having reviewed the Respondent’s material, the majority of the Panel considered that it did not support a finding that “arvesta” was a common dictionary or descriptive term. On the contrary, in the setting and context of use by the Complainant, it was clearly a coined and distinctive term. Although the term “arvesta” may have a dictionary or common meaning in Estonia and Finland, albeit different meanings, the majority of the Panel was of the view that the Respondent was not using, and had not submitted evidence of demonstrable preparations to use, the Domain Name in connection with either.

With regard to the Respondent’s indication that he was willing to consider selling the Domain Name for USD 42,000 shortly after winning the auction, the majority of the Panel considered that the Respondent fully appreciated the Domain Name’s significance and value. The Respondent’s suggestion that he was not planning to sell the Domain Name, but instead wanted to develop the Domain Name for possible future sale was contradicted by the nature of the Respondent’s business and the fact that the Domain Name resolved to a website offering it for sale.

In the majority of the Panel’s view, merely offering a (non-descriptive) Domain Name for sale, identical to the Complainant’s trademark, in circumstances where the Respondent appeared highly likely to have been aware of the Complainant’s rights or, at the least, put on inquiry about those, did not give rise to rights or legitimate interests. In short, the majority of the Panel found that the Respondent’s behaviour “smacks of the same opportunistic behaviour which the Policy was adopted to prevent”.

In light of this, the Panel considered that the Respondent had not rebutted the prima facie case established by the Complainant and so the Complainant had succeeded in establishing that the Respondent had no rights and legitimate interests in the Domain Name.

In relation to the third requirement, a complainant is required to demonstrate that the domain name in question was both registered and used in bad faith.

The Respondent contended that the offer to consider selling the Domain Name for the sum of USD 42,000 did not constitute bad faith as it was made in response to an unsolicited offer to buy the Domain Name. However, the majority of the Panel noted that the Domain Name resolved to a website stating that it was available for sale and inviting users to contact the Respondent, and in any case the Respondent admitted that his purpose in acquiring the Domain Name was to invest in and develop it for resale.

In light of this, the majority of the Panel considered that the Complainant had succeeded in establishing bad faith in the Respondent’s registration and use of the Domain Name for the same reasons leading to its conclusions that the Respondent did not have rights or legitimate interests in the Domain Name. The Complainant had therefore established all three requirements under the Policy and the Domain Name was therefore transferred to the Complainant.

However one Panel member strongly disagreed with the above reasoning. As far as rights and legitimate interests were concerned, the dissenting Panel member was of the opinion that the Domain Name was a generic or descriptive word. In addition, there was no evidence to suggest that the Respondent should or could have known of the Respondent or its trademark, considering that the Complainant had not registered or apparently applied for a trademark in the United States where the Respondent appeared to be based. In the dissenting Panel’s opinion, there was simply no evidence of any conduct by the Respondent that could fairly be described as targeting. For similar reasons the dissenting Panel found no bad faith registration or use. The dissenting Panel member concluded by stating that the Respondent had simply bought a domain name on the open market and there was no evidence whatsoever to deprive him of it.

This decision is an important reminder of how panels can have radically different approaches to the same facts in complex cases and that the selection of a three-member panel may be preferable in borderline cases. The advantage of the UDRP is that it is quick and relatively cheap, but one disadvantage is that the outcome may be more uncertain in cases such as this where different panels may hold different views as to the interpretation of the facts and evidence presented, and therefore a one member Panel decision may be more unpredictable.

The decision is available here

The wish is father to the thought

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of four Domain Name because it found that the Complainant had failed to prove that the Respondent had acted in bad faith.

The Complainant was Agfa-Gevaert N.V., a Belgian multinational corporation that develops, manufactures and distributes analogue and digital imaging products, software, and systems.

The Respondent was Fabrice Akakpo, an individual based in the United Kingdom.

The disputed Domain Names, agfachelseapartners.com , agfachelseapartners.store, agfachelseapartners.tech, and agfachelseapartners.world were registered by the Respondent on April 16, 2020. Three Domain Names resolved to error pages and the fourth, agfachelseapartners.tech, resolved to a website with limited content.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a):

(i) the domain name registered by the respondent 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 domain name; and

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

When it came to the first limb of the UDRP, the Complainant contended that it owned many trademarks in AGFA registered between 2005 and 2013. The Complainant argued that the disputed Domain Names contained the trademark AGFA in its entirety and therefore they were highly similar to such trademark. The Respondent did not dispute that fact. The Panel stated that the Domain Names indeed incorporated the Complainant’s trademark with the addition of “chelseapartners”, but given its findings under the third limb of the Policy, the Panel did not decide under the first element.

As far as the second requirement under the UDRP was concerned regarding the Respondent's rights or legitimate interests, the Complainant asserted that the disputed Domain Names had always been inactive or presented very little content and there was no evidence that the Respondent had been preparing to use them to offer goods or services. The Complainant added that the Respondent was not commonly known by the Domain Names. The Respondent refuted these arguments by stating that the Domain Names corresponded to the name of the company that he registered on the very same day that he acquired the Domain Names. Moreover, the Respondent underlined that the first four letters of his company name represented his and his son’s initials.

Again, in light of its findings under the third limb of the Policy, the Panel did not make a definite statement on the eventual existence of the Respondent's rights or legitimate interests. The Panel noted, however, that the Respondent’s evidence of pre-complaint preparations seemed to be restricted to registration of the company name and the Domain Names, and the content of the active web page was limited. Even if the Panel observed a slight inconsistency in the Respondent’s explanation behind the choice of his company name, the Panel decided that it was not possible to ascertain if such explanation was false. Therefore Panel expressed some hesitation with regard to whether the Respondent was making a legitimate non-commercial or fair use of the Domain Name.

Turning to the third limb of the Policy, the most significant in this case, the Complainant asserted that the Respondent had intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Respondent rebutted such allegation by stating that he was not trying to target the Complainant’s trademark.

The Panel first noted that it was not convinced that the Respondent was targeting the Complainant given that the Respondent had offered a seemingly plausible explanation as to why he registered the Domain Names and his company name, which was supported by passport copies showing his and his son’s name and a copy of his company registration Agfachelseapartners Limited. Furthermore, the Panel stated that the Complainant had offered no arguments or documentation as to the Respondent’s explanation despite having been given the opportunity to do so by way of a Panel Order. The Panel also stated that the UDRP was designed to address specific issues related to cybersquatting and therefore more complex disputes requiring eventual discovery and examination of the parties generally fell outside of its scope.

In light of the above, the Panel made a finding that the Complainant had failed to demonstrate the requirements prescribed by the third limb of the Policy and so the Panel refused the transfer of the Domain Names.

Conclusion

Although UDRP proceedings differ from conventional national courts offering discovery and examination of the parties, complainants should not refrain from conducting basic due diligence on the registrant’s details before filing a complaint. If the underlying registrant details are publicly available, it is useful to consult companies’ registries, check whether the registrant has participated in previous proceedings or verify the results associated with the registrant in commonly-known internet search engines. Such actions can help to assess the chances of success in UDRP proceedings and, if they are good, to prepare for an eventual response from the registrant. Moreover, it should be underlined that if a complainant finds any information on the registrant which could be potentially harmful to the chances of success of the complaint, it is not advisable to ignore it.

However, such research may prove difficult for trademark holders if the registrant’s details in the WHOIS are hidden or masked, either because the registrant has subscribed to a privacy protection service or because of the data protection regulations adopted by many countries worldwide. In such cases, it may be helpful to use specialised research services, allowing for the examination of the historical WHOIS records of the domain name, for example.

The decision is available at the following here.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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