This is the April 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
DOMAIN NAME RECUPERATION NEWS
For earlier Anchovy News publications, please visit our Domain Names practice page. Learn more about Anchovy® - Global Domain Name and Internet Governance here.
LBDR LLC, the Registry running the .LB country code Top Level Domain (ccTLD) for Lebanon, recently made a number of changes to its policies and procedures, which took effect on 1 February 2021.
As Anchovy News readers may know, it has always been rather difficult to register Lebanese domain names due to the strict rules. However these have now been relaxed, making domain name registrations easier – although not completely unrestricted.
The major change in the policies concerns the eligibility requirements, which used to be quite strict. Since 1 February, domain name applicants are no longer required to hold a Lebanese trademark under class 35 that matches the domain name they wish to register. The provision of a local address is, however, still required.
In addition, the LBDR dropped what it calls the “SLD uniqueness restriction” (“SLD” standing for “Second Level Domain”). Previously, it was not possible to register the same term under various extensions (for example, anchovynews.com.lb and anchovynews.net.lb), even if it was by the same entity. This is no longer the case and therefore gives more possibilities to future applicants.
Finally, there were changes in the procedures too as the LBDR changed its operation mode and switched to a Registry/registrar model, meaning that holders of .LB domain names now need to register and manage their domain names via an accredited registrar, and can no longer do so directly via the Registry.
Domain name registrations under the Lebanese ccTLD are only open to companies and at the second level under the following extensions: .COM.LB, .NET.LB, .ORG.LB, .EDU.LB and .GOV.LB. The Registry may consider creating an extension for private individuals at a later stage.
To visit the Registry’s website, please click here.
For further information on the registration or recuperation of .LB domain names, please contact David Taylor or Jane Seager
The Saudi Network Information Center (NIC.SA), the Registry responsible for the management of the country code Top Level Domain (ccTLD) .SA (Saudi Arabia), is to use WIPO (the World Intellectual Property Organization) Domain Name Dispute Resolution Services for .SA and السعودية. domain names.
The WIPO Arbitration and Mediation Center will provide domain name dispute resolution services for .SA and السعودية. pursuant to the Saudi Domain Name Dispute Resolution Rules (.SA Rules), the Saudi Domain Name Dispute Resolution Procedure (.SA Procedure), and the WIPO Supplemental Procedures for the Saudi Domain Name Dispute Resolution Procedure (the Supplemental Procedures).
The .SA Policy applies to domain names that are identical or confusingly similar, not only to trademarks or service marks, but also to trade names. However, it does not apply to domain names registered by government entities and any other entities associated with them. Under the .SA dispute policy, a dispute shall not be successful unless the complaint meets all the following criteria;
1. The Registrant’s domain name is identical or confusingly similar to a trademark, trade name or service mark in which the Complainant has rights.
2. The Registrant has no rights or legitimate interests in respect of the domain name.
3. The Registrant’s domain name has been registered or is being used in bad faith.
The main difference between the new .SA procedure and the UDRP (Uniform Domain Name Dispute Resolution Policy) is that under the new policy it will be sufficient to prove that either registration or use of the domain name by the registrant is in bad faith, whereas the UDRP requires the complainant to prove both (see points (ii) and (iii) below). Under the UDRP, a dispute shall not be successful unless the complaint meets all the following criteria:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
It will be interesting to see whether there is any change in the level of complaints and disputes in the .SA domain name space, particularly taking into consideration that currently .SA domain names are only open to commercial entities that are either registered in Saudi Arabia (and whose company name matches the domain name) or that hold a registered trademark in Saudi Arabia (matching the domain name). This means that any complainant would need to meet these requirements in order to take ownership of a disputed domain name
Should you require any assistance with .SA domain names, please do not hesitate to contact David Taylor or Jane Seager.
To visit The Saudi Network Information Center, please click here.
To visit WIPO, please click here.
The introduction of new domain name licensing rules that came into effect on 12 April 2021 by .au Domain Administration (auDA), the Registry that oversees the .AU domain space, has led to the implementation of a new complaints procedure for .AU domains. This new four-tiered procedure, which covers registrant eligibility, should help to reassure brand owners who find themselves no longer able to secure their brands in the .AU name space as a result of the new licensing rules that they have a ready recourse against ineligible third parties who infringe their rights.
As covered in the September 2020 issue of Anchovy News, the eligibility rules for .AU have been tightened up considerably by auDA’s new licensing rules, effectively barring foreign registrants that do not have an Australian presence or hold an Australian trademark registration or application exactly matching the domain name from holding .COM.AU and .NET.AU domain names. As a result, many brand owners that have, up to now, held .COM.AU and .NET.AU domain names on the basis of the previous, less rigid, local presence rules have suddenly found that their domain name registrations no longer meet the registration requirements and thus cannot be renewed. This leaves them with a limited number of options if they wish to retain their domain name(s), including applying for an exact match Australian trademark, transferring the domain name to an Australian subsidiary (where this possibility exists), or simply allowing the domain name to lapse.
Allowing a domain name to lapse is always risky prospect in view of the multitude of companies offering backorder (dropcatch) services. These companies publish lists of dropping domain names and thus any domain names allowed to lapse by their registrants are vulnerable to being picked up by third parties and possibly subsequently used for malicious purposes.
However, registrants who choose to relinquish their .AU domain names that no longer meet the licensing rules should be able to take some comfort in the knowledge that, under the new complaints procedure, they will relatively easily be able to file a complaint against any party that picks up these domain names once they have been released and who is not eligible to hold them.
According to auDA, the new complaints procedure is designed to deal with complaints that relate to “the responsibilities or obligations of a Registrant or Registrar under the auDA Rules” and include issues such as “whether a person is eligible to hold a domain name, or the actions of a registrar regarding a domain name.”
There are four tiers to the new complaints process, namely:
1. Initial complaint
Whereas under the previous rules complaints could be submitted directly to auDA, they must now first be lodged with the registrar of record. According to auDA, the new licensing rules “recognise that in the first instance, registrars are best placed to deal with complaints about domain name licences for which they are the registrar.”
The registrar has 30 calendar days to resolve the issue in question, or must advise of the resolution date if it will take longer. When the registrar has made a decision, they must inform the parties of the decision and of the reasons for the decision, as well as of the right to a review of the decision.
2. Review of a registrar decision
If a party is unhappy with a registrar's decision on a complaint, and has exhausted all avenues of redress/escalation with them, it can then request that auDA carries out a review of the decision.
If a registrar’s decision was to cancel the domain licence in question, the registrant has five calendar days to request a review of the decision.
For other outcomes (the complaint being denied, for example) parties will have 28 days from the date of the registrar decision to request a review. Provided all the necessary information has been submitted, auDA then has 28 days to conduct a review and may revoke, affirm or vary the decision or hand it back to the registrar for reconsideration.
Once auDA has made a decision, the parties concerned are informed of it and the reasons for it and are informed of the right to request an internal review of auDA's decision.
3. Internal review of auDA's decision
Any party affected by a decision made by auDA can apply for an internal review of the decision.
Where auDA has decided to cancel a licence, a request for an internal review of the decision must be lodged within 48 hours of receiving auDA’s notification of the decision. For all other outcomes the application must be lodged within 28 calendar days of the date of the decision.
The internal review is conducted by a person not involved in the original decision and more senior to the person who made the original decision. If the application is valid, auDA will put on hold any decision made earlier until it has completed its review and provides a timeline for its decision. The reviewer may affirm, vary or revoke the decision made in auDA’s review of the registrar decision.
An applicant will be notified of the outcome of the review and the reasoning, as well as their right to lodge a request for an external review.
4. External Review
External Reviews are conducted by the Licence Review Panel, which consists of people who cannot be employees, directors or consultants to auDA or a registrar. Applications for an external review must be lodged within 10 days of receiving the decision of an internal review of auDA's decision. The external review is subject to the payment of a fee.
auDA has stated that:
“the role of the Licence Review panel is to assess whether auDA has applied the rules correctly based on the information that was provided. It's important to note that the Licence Review Panel can only review the case based on the material provided, and cannot take into consideration any material not previously provided to auDA as part of the complaints process.”
This is in contrast to the previous system, under which the review panel could request further information.
The panel has 10 days to reach and advise applicants of the outcome. The panel may affirm auDA's decision, set it aside and make its own decision, or refer it back to auDA for reconsideration.
These new rules apply only to domain names registered, renewed or transferred on or after 12 April 2021.
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to transfer the disputed domain name cro-mags.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 Savoia NYC Incorporated, a company offering and selling goods in relation to a hardcore punk music group called Cro-Mags from New York City. The group was formed in the early 1980s and released a number of albums, including their now legendary debut, “Age of Quarrel”, in 1986, and “Revenge” in 2000. Harley Flanagan, an individual associated with the Complainant, was a founding member (vocals and bass), as was the Respondent, Parris Mayhew (guitar). However, the band had a rather tumultuous history, undergoing various line-ups over the years, and the Respondent eventually left to pursue other interests.
The Complainant owned several trademarks for CRO-MAGS, including one which was registered in 2010 and subsequently assigned to the Complainant by Harley Flanagan. Another CRO-MAGS trademark was also registered in 1993 by Harley Flanagan and was later assigned to a corporate entity jointly owned by Harley Flanagan and the Respondent. This trademark registration, which lapsed due to lack of renewal, was not referenced by the Complainant but was brought forward by the Respondent in his Response.
The Respondent registered the Domain Name in February 1999. At the time of the proceedings, the Domain Name resolved to a website posting photographs of the Cro-Mags band, both before and after their falling out, with a description of their history, arguably not portraying Harley Flanagan in a favourable light.
The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent submitted a Response requesting 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, 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 and is being used in bad faith.
Under the first element of paragraph 4(a) of the UDRP, the Panel found that the Complainant had established rights in the CRO-MAGS trademark, and that the Domain Name incorporated the Complainant’s registered mark in its entirety.
With regard to the second element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had no rights or legitimate interests in the Domain Name because (i) he had never been known by the Domain Name, and (ii) the Domain Name was identical to the Complainant’s trademark. The Panel held that the Complainant had established a prima facie case against the Respondent, however it found the evidence brought forward by the Respondent compelling enough to rebut this case.
The Panel found that the Respondent was an active member of Cro-Mags at the time of the Domain Name registration and that he had registered the Domain Name with the knowledge and consent of Harley Flanagan. Harley Flanagan’s actual knowledge was demonstrated by his assignment of a CRO-MAGS trademark to a corporate entity partly-owned by the Respondent approximately one year after the Domain Name registration and by the fact that the Domain Name prominently appeared on the cover of “Revenge” identifying it as their official website. As such, the Complainant had not satisfied the second element of paragraph 4(a) of the UDRP.
With regard to the third element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had registered and used the Domain Name in bad faith because, amongst other things, (i) he sought to profit from and exploit the Complainant’s CRO-MAGS trademark by misdirecting users to his website, and (ii) although the Respondent might have had no bad faith intention when registering the Domain Name, “bad faith adoption” could be applied retroactively, especially where the Respondent sought to trade on the goodwill of the Complainant’s trademark.
The Panel rejected these arguments, finding there was no evidence showing the Respondent acted intentionally to create a likelihood of confusion as to the source or sponsorship of the Domain Name. The Panel emphasised once again that the Domain Name appeared on the cover of one of the band’s albums and that Harley Flanagan ratified this course of conduct by transferring a CRO-MAGS trademark to a corporate entity jointly-owned by the Respondent a year after the Domain Name registration. Regarding this trademark registration, the Panel further underlined that the Complainant’s failure to make any reference to it was perplexing at best. Finally, the Panel ruled that the Complainant’s theory according to which bad faith intent could be imputed retroactively was far-fetched, unsubstantiated and unsuitable in these circumstances. As such the Complainant had not satisfied the third element of paragraph 4(a) of the UDRP and the Complaint was denied.
The Panel concluded by entering a finding of RDNH, citing both the Complainant’s failure to provide material evidence relevant to the Complaint, as well as the fact that the Complainant relied on a legal theory unsupported by UDRP precedent. According to the Panel, the Complainant and its counsel knew or ought to have known that the Complaint could not have succeeded if the Respondent filed a Response.
This decision shows that complainants must disclose all known information about their trademark rights to the panel and conduct a thorough investigation in relation to prior dealings with a respondent. In this case, the Panel seemed to interpret the failure of the Complainant to make reference to a trademark identical to the Domain Name and once held by an entity linked to the Respondent as a deliberate omission. This omission was instrumental in the Panel entering a finding of RDNH. Moreover, this decision serves as a useful reminder that prior UDRP decisions cited in complaints must be relevant to the case at hand and that jurisprudentially far-fetched legal theories are best avoided.
The decision is available here.
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 a Domain Name: it found that the Complainants had failed to show any evidence of bad faith and had therefore engaged in Reverse Domain Name Hijacking (RDNH).
The Complainants were JHO Intellectual Property Holdings, LLC and Elite IP Holdings, LLC, companies affiliated with one of the largest producers of energy drinks in the world, Vital Pharmaceuticals, Inc. which recorded sales of more than USD 1 billion in 2019. It held more than 1,200 registered and pending trademarks throughout the world, including registered trademarks for NOO FUZION and NOO-FUSION for use with energy drinks products and clothing.
The Respondent was Mahad Taheri, an individual based in the United States of America. No further information was provided.
The disputed Domain Name, noo.com, was created on 10 September 1998 and purchased by the Respondent in 2005. It resolved to a website with the phrase, “What’s NOO?”, as well as webpages linked to noo.com subdomains.
The Complainants initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.
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
Under the first requirement, the Panel recognized that the Complainants had trademark rights in “NOO” at the date that the Complaint was filed. Since the disputed Domain Name incorporated the term “noo” in its entirety, the Panel considered that it was identical or confusingly similar to the Complainants’ trademarks. The Complainants therefore satisfied paragraph 4(a)(i) of the UDRP.
The Panel held that the second requirement of the Policy did not need to be addressed in light of the third requirement. Under the third requirement, the Panel found that the Respondent had not registered and used the disputed Domain Name in bad faith.
The Complainants stated that the Respondent was selling the Domain Name for twice its value and argued that asking for an excessive price for a domain name was considered evidence of bad faith under the Policy. However, the Panel noted that the practice of registering a domain name for subsequent resale could not be considered as bad faith per se, as indicated by the WIPO Overview 3.0, section 3.1.1. The Overview underlines that circumstances indicating that a domain name was registered for the bad faith purpose of selling it to a trademark owner can be highly fact-specific.
In this case, the facts were quite straightforward and the Panel accepted the Respondent’s defence: the disputed Domain Name was acquired by the Respondent in 2005, but the Complainants’ trademarks dated from 2020, nearly fifteen years later. In such circumstances, the Domain Name could not have been registered primarily for the purpose of selling it to the Complainants or their competitors. Moreover, the Respondent had been using the Domain Name for fifteen years without displaying any content related to the Complainants’ activity. There was no evidence that the Respondent was targeting the Complainant. The mere fact that the Respondent had considered selling the Domain Name for an amount of money that the Complainants found excessive was not sufficient to prove bad faith. The Complaint was therefore denied.
Given the above, the Panel also made a finding of Reverse Domain Name Hijacking (RDNH), which is defined in the UDRP Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. First, the Panel reiterated the fact that the registration of the disputed Domain Name predated the Complainants’ trademark rights by nearly fifteen years and there was no evidence of any targeting by the Respondent, which clearly precluded a finding of bad faith registration under any reasonable interpretation of the UDRP. In addition, the Panel noted that the Complainants’ only evidence put forward in support of the Respondent’s bad faith was the fact that the Respondent was unwilling to sell the Domain Name at the Complainants’ desired price. Hence, the Panel concluded that the Complaint should never have been brought and constituted an abuse of UDRP proceedings.
This decision underlines the fact that complainants should think seriously about filing a complaint under the UDRP when their trademark rights post-date the registration of the disputed domain name. The UDRP was intended to deal with clear cut cases of cybersquatting, in other words domain name registrations made in bad faith with the intention of profiting from the goodwill and reputation of a brand owner. Panels will occasionally make transfer orders when a complainant’s trademarks were registered after the domain name registration, as set out in the WIPO Overview, section 3.8.2. However, such circumstances are clearly defined and quite rare.
With regard to domain names legitimately being offered for sale, it is also worth noting that, whilst it may be possible to assess “market value” based on previous similar sales, any price quoted that is significantly in excess of that is no indication of bad faith. Actual sale prices may depend on many other factors, not least the financial position of both buyer and seller.
The full decision is available here.
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 itdc.com and found that the Complainant’s claim constituted an abuse of the UDRP proceedings and that the Complainant had engaged in Reverse Domain Name Hijacking (RDNH).
The Complainant was HBA Holdings LLC, an Arizona company formed in July 2020. The Complainant was the owner, by assignment, of a trademark registration for the mark ITDC for “information technology consulting services” in the United States in International Class 42, which was filed in July 2018 and issued to registration in March 2019. The Complainant obtained the assignment of the ITDC registration and trademark in July 2020, from IT Data Consulting, LLC, which was a Virginia-based company that presented its services using a website it owned and operated at the domain it-dc.com. The website referred to IT Data Consulting, LLC as ITDC.
The Respondent was Internet Tool & Die Company and its employee William Sylvester. Internet Tool & Die Company was incorporated in Delaware in September 2018. Its parent company, Denuo Inc., also owned other businesses that brokered private-party and governmental-party IPv4 number block sales. The Internet Tool & Die Company was apparently in the process of developing an internet protocol number management software aiming to facilitate and assist in developing the transactions brokered by Denuo’s other businesses.
The Respondent purchased the Domain Name in November 2018, through William Sylvester, for USD 14,987.98. The Respondent was using the Domain Name in connection with a website providing information about the Respondent.
In March 2019, IT Data Consulting, LLC, via its counsel, sent a demand letter to the Respondent concerning the Respondent’s use of the mark and name ITDC and the Respondent’s registration of the Domain Name, demanding that the Respondent transfer the Domain Name and threatening to commence UDRP proceedings. Four days later, the Respondent replied via its counsel rejecting the Complainant’s contentions and setting forth detailed reasons why it was not infringing any alleged rights in the name and mark ITDC.
No further communications occurred between the parties and, on 5 January 2021, the Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent requested that the Panel make a finding that the Complainant had engaged in RDNH.
To be successful under the UDRP, a complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:
Before presenting its arguments on the Complainant’s contentions on each of the three elements of paragraph 4(a) of the UDRP, the Respondent provided preliminary views and background information.
The Respondent noted that, whilst the Complainant was an Arizona corporation formed in July 2020, the Respondent was incorporated in September 2018 and was a wholly-owned subsidiary of Denuo, Inc. and had been listed as such on Denuo’s website at denuo.com since January 2020. The Respondent maintained that its business was to develop internet protocol number management software for commercial use and it indicated that it had offices in Herndon, Virginia that it shared with the other Denuo affiliated companies.
The Respondent asserted that it had purchased the Domain Name in November 2018 for USD 14,987.98 and had done so as an acronym for its company name Internet Tool & Die Company. It also declared that it had filed a trademark application in the United States for INTERNET TOOL & DIE COMPANY in December 2018 for its software product in International Class 9, and that it owned a corresponding International Registration based on its United States application issued to registration in June 2019. In addition, William Sylvester indicated that he had no awareness of the
Complainant when he acquired the Domain Name in November 2018. The Respondent confirmed that it had received the demand letter in March 2019, to which it had responded four days later via its counsel, rejecting the claims. Lastly, the Respondent pointed out that the Complainant was an entity named HBA Holding LLC and that it was not clear what the actual existing relationship between HBA Holding and IT Data Consulting LLC was.
Under the first element of paragraph 4(a) of the UDRP, the Complainant argued that the Domain Name was identical to its trademark ITDC as it consisted of the exact ITDC trademark. The Complainant also indicated that (i) it was the owner of rights in the ITDC trademark in connection with information technology consulting services on account of its United States trademark registration and (ii) it owned common law rights in ITDC that dated back to 2010. The Respondent did not dispute that the Domain Name was identical to the ITDC trademark. The Panel considered that, due to the fact that (i) the Complainant had established it was the owner of the ITDC trademark in the United States and (ii) the Domain Name fully and solely incorporated the trademark, the Domain Name was identical to the trademark and the Complainant had consequently satisfied the requirements of the first element of paragraph 4(a) of the UDRP.
With regard to the second element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had no rights in the Domain Name because the Complainant had common law rights in the ITDC mark which existed before the Respondent’s registration of the Domain Name.
The Respondent answered that it had rights and legitimate interests in the Domain Name because it (i) had a bona fide business that commenced operations in September 2018, (ii) had registered the Domain Name as an acronym for its corporate name, (iii) had filed trademark applications for its Internet Tool & Die Company name and mark, (iv) had used the Domain Name for a website advertising the software that the Respondent had been developing since January 2019, and (v) had used ITDC as part of its corporate identity and in its branding.
The Panel did not judge it necessary to address the question of the Respondent’s rights and legitimate interests because it concluded that the Complaint had failed on the third element.
With regard to the third element, the Complainant contended that the Respondent had registered and used the Domain Name in bad faith in order to attract internet users to the Respondent’s website. The Complainant explained that the bad faith registration and use was characterised by the fact that (i) the Respondent was not commonly known by the ITDC name and mark, (ii) it owned no trademark registrations for ITDC, it only used ITDC as an acronym for the Internet Tool & Die Company, and (iii) it registered the Domain Name after the Complainant had secured rights for ITDC for the same services. Further, the Complainant argued that the Respondent had acted in bad faith by (i) refusing to transfer the Domain Name after receiving the demand letter, (ii) using a privacy service for the domain name registration, (iii) acquiring the Domain Name to simply redirect internet traffic to the Respondent’s website or to those of businesses connected to the Respondent, and (iv) not operating a bona fide business since using the Domain Name as the web address for Internet Tool & Die Company was not legitimate.
The Respondent denied the allegation of bad faith registration and explained that (i) the Complainant’s ITDC trademark was not famous or well-known at the time the Respondent registered the Domain Name, (ii) the Respondent was not aware of the Complainant at the time it purchased the Domain Name, and (iii) the four-letter combination “itdc” stood for many different things and was not uniquely associated with the Complainant.
The Respondent also argued that there was no evidence that it had acted in bad faith as (i) the Respondent had registered the Domain Name as an acronym for its legitimate business name and purpose, (ii) the Respondent and the Complainant were not competitors, they provided unrelated goods and services, and they did not conduct business in the same industries, and (iii) there was no evidence of any attempt by the Respondent to disrupt the Complainant’s business, create consumer confusion, misdirect consumers to the Complainant’s website or to benefit in any way from any goodwill associated with the Complainant’s claimed ITDC mark.
The Panel held that the Complainant had failed to prove that the Respondent had registered or used the Domain Name in bad faith.
The Panel considered that although the Complainant owned a United States trademark registration for ITDC in Class 42 for information technology consulting services, which claimed a first use date of 30 March 2010, the Complainant had provided no evidence establishing that the ITDC mark was in fact in use, or had ever been used, by the Complainant; whilst the Complainant made a passing reference to a website at it-dc.com, that website made no mention of the Complainant: it was for the company IT Data Consulting LLC and included a copyright notice for this company. Therefore, it was not clear whether the Complainant was actually using the ITDC mark in commerce. The Panel also noted that the it-dc.com domain name was registered using a privacy service and that the Complainant had provided no evidence or explanation of the nature of the relationship between the Complainant and IT Data Consulting LLC. The Complainant only provided in a conclusory manner that “HBC Holdings LLC through its predecessor owns the ITDC United States federally protected trademark.”
On the Complainant’s assertion that it had owned common law rights in ITDC prior to the trademark registration and the Domain Name acquisition by the Respondent, the Panel held that there was no evidence of such ownership and that the Complainant had simply made unsubstantiated and conclusory allegations without providing the evidence that would be expected under Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
With respect to bad faith use and registration, the Panel considered that the Complainant had failed to establish that it had broad rights in ITDC or that ITDC was even a known or established mark in November 2018 when the Respondent acquired the Domain Name. The Panel added that the Respondent had established that it had owned a legitimate business known as Internet Tool & Die Company since September 2018 and that the parties were not competitors or in the same business since the Respondent developed specific software for internet protocol number management, whereas the Complainant or IT Data Consulting LLC appeared to provide various information technology services unrelated to internet protocol numbers. The Panel additionally found there was evidence from the Respondent that the four letter combination “itdc” was used by a number of other parties, thereby suggesting the Complainant did not enjoy broad rights in ITDC. With regard to the Complainant’s other assertions, the Panel considered that the Respondent had rebutted them with documentary evidence.
For instance, the Complainant had not included its demand letter in its submissions and it had omitted to mention that the Respondent had provided a detailed answer only a few days after receiving the letter. However, the Respondent had provided the relevant evidence. With regard to the use of a privacy service, the Panel pointed out that the Complainant’s claimed it-dc.com domain name was likewise shielded by a privacy service and that, in any event, the use of a privacy service did not in and of itself establish that the Respondent was acting in bad faith.
The Panel continued its reasoning by pointing out that, whilst the Complainant could not find a listing for the Respondent on an office door in the building given as the Respondent’s physical address, the door of the alleged office showed the name of the Respondent’s parent company Denuo, Inc. and, in its response to the demand letter, the Respondent specifically advised that it was “a wholly-owned subsidiary of Denuo, Inc.” The Panel thus found it surprising that the Complainant would claim with certainty that the Respondent did not exist and that its sole reason for existence was to draw web traffic from the Complainant, even though it found a listing for the Respondent in the building directory and a sign on the door of the Respondent’s alleged office for the Respondent’s parent company Denuo, Inc., a company that was readily found in an internet search. The Panel found no evidence that the Domain Name was used specifically to redirect web traffic to the Respondent’s website or to other businesses affiliated with the Respondent. It was satisfied that the Respondent in fact had a legitimate business and was merely using the Domain Name, which was an acronym for its company, for a website connected to that business. The Panel concluded that, although a trademark infringement or unfair competition case could be a possibility, there was no evidence of cybersquatting.
With regard to the Respondent’s RDNH claim, the Panel assessed whether the complaint constituted an abuse of the administrative proceeding under paragraph 15(e) of the UDRP Rules. The Panel found that the Complainant had indeed engaged in RDNH in that, after over 20 years of UDRP jurisprudence, the Complainant clearly ought to have known that it could not have succeeded under any fair interpretation of the facts reasonably available to it prior to the filing of the complaint, and that basing its complaint on the barest of allegations without any supporting evidence on what was essentially a trademark infringement dispute was doomed to fail and an abuse of the UDRP process.
The Panel pointed out that the Complainant had made numerous unsubstantiated allegations concerning its broad rights in ITDC with no evidence of a connection between the Complainant and IT Data Consulting LLC, the previous owner of the ITDC trademark, but claimed common law rights going back to 2010 that were unsupported by any evidence,
In addition, the Panel found that the Complainant had withheld material facts from the Panel, particularly the correspondence between the parties in 2019 which included the Respondent’s rejection of the Complainant’s claims. IT Data Consulting LLC claimed common law rights in the ITDC mark in March 2019, given that its trademark registration for ITDC had not issued, and the Complainant had asserted that the Respondent, by registering the Domain Name in November 2018, had violated the common law rights of IT Data Consulting LLC. Those claims were rejected by the Respondent, but almost two years later the Complainant initiated UDRP proceedings asserting common law rights in ITDC without any proof that such rights existed or were known to consumers or the relevant trade in November 2018 when the Domain Name was acquired by the Respondent.
Finally, the Panel noted that the Complainant’s allegation that the Respondent was not a bona fide business and was simply “an Internet company whose sole reason for existence is to draw web traffic from Complainant” misleadingly failed to indicate that the response to the demand letter specifically advised that the Respondent was a wholly-owned subsidiary of Denuo, Inc. and that the Respondent was “engaged in the business of selling internet protocol number management software and services”. The Complainant had made no mention of this fact and simply claimed that the Respondent offered “the exact or similar class of services” as the Complainant, but did not actually provide any evidence that, in 2018, the Complainant was offering or developing any software under the name and mark ITDC.
This decision shows the importance of disclosing all the evidence available to support a complaint. It also illustrates risks resulting from the withholding of information that is also held and likely to be used by the Respondent, especially where both parties are represented by counsel.