[Editor’s note: Nat Cohen takes a look at recent UDRP decisions in this extensive report.]
Are you guilty of “cybersquatting” without knowing it? Take a look at these recent Uniform Domain Name Dispute Resolution Policy (“UDRP”, or the “Policy”) decisions and the reasons the panelists give for finding the domain owners guilty of cybersquatting and for ordering the transfer of their domains.
If you want to see how the UDRP is being misused to seize properly registered domain names, read on…
HDRamp.com, March 9, 2016
Complainant: Heavy Duty Ramps LLC, sellers of heavy duty ramps
Respondent: Landsport, sellers of heavy duty ramps
A business operating on the plural version of a descriptive product domain (hdramps.com) for “heavy duty ramps” can seize the singular version (hdramp.com) from a competitor despite having no registered trademark rights at the time the disputed domain was registered, and based on a design mark registered just a few months before the UDRP filing and including a disclaimer of the wording.
While Respondent contends that the domain is comprised of common and descriptive terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.
Thus, Respondent’s use of the domain disrupts and competes with Complainant’s business because Respondent uses the domain to sell products and services that compete with Complainant’s business.
Respondent has engaged in the tactic of typosquatting by simply removing the letter “s” from Complainant’s HD RAMPS mark, in order to register its domain name of hdramp.com.
Screenshot of Respondent’s hdramp.com, before the domain was transferred to Complainant.
Euroview.com, September 12, 2016
Complainant: Euroview Enterprises LLC, an Illinois fabricator and installer of shower doors and bath enclosures.
Respondent: Jinsu Kim, a Korean who appears to be a domain investor.
A domain that is a combination of two generic words may only be exclusively used by an obscure small business, making a non-intuitive use of the term, operating on a separate continent.
The Respondent contends that “euroview” is a combination of commonly used generic terms. But if “euro” and “view” are separately dictionary terms, it is not clear for what product or service “euroview” is the generic term. Moreover, even assuming arguendo that euroview.com contains a generic term, the “mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase … may not of itself confer rights or legitimate interests in the domain name.” WIPO Overview. 2.0,paragraph 2.2.
You wish to register a generic commercial domain, euroview.com. You are in Korea. If you check the USPTO records (though why should you need to?) you see that there is a design mark that was cancelled years ago for “Euroview Frameless Glass Enclosures”. You go ahead and register the euroview.com domain name. Years after your registration, the company with the cancelled trademark registers a new trademark for “Euroview”. Your registration is in bad faith, a violation of the UDRP, and you are publicly branded a cybersquatter.
Simply, “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.” [regardless if the trademark was registered after the domain was acquired]… The Panel agrees with the Complainant that whether the conclusive date is 2006 or 2007, by the time that the Respondent acquired the disputed domain name [in Korea], the Complainant’s [US] rights in the EUROVIEW mark were established. [despite the cancellation of the design mark]
Though not discussed in the UDRP decision, ironically another company obtained a US trademark for “EUROVIEW” as a brand for windows prior to the Complainant in this case, so the panel awarded euroview.com to the junior rights holder.
Panelists cannot tell the difference between a zero-click redirect to an advertiser offering virus removal software, and hosting a malware infection site
[Customer letter entered as evidence:] The second time visiting my computer ended up with a blue screen on it saying to call a number and download a specific program because my computer was now infected. I think I was able to get out of the site and have my computer unharmed”
[Panelist:] Evidence of malware infection is relevant in the Panel’s determination of bad faith under paragraph 4(a)(iii) of the Policy…a respondent’s spreading malware ‘implies abusive conduct of a particularly serious nature,’ conduct that ‘goes well beyond the activities of the typical cybersquatter’.
ChicagoSouthland.com, July 26, 2016
Complainant: The Chicago Southland Convention and Visitors Bureau.
Respondent: “purchases expired domains for their link authority. Its market is the adult (porn) industry”.
You can lose your geographic domain, in this case ChicagoSouthland.com (Wikipedia page), to a Conventions and Visitors Bureau (CVB), because a panel incorrectly grants the CVB exclusive trademark rights to that geographic name based on a state trademark registration, which is not entitled to deference under the UDRP.
Some background is helpful to understand this case. U.S. state registrations are not recognized as establishing trademark rights under UDRP Paragraph 4(a)(i), which requires that the Complainant demonstrate trademark rights. According to WIPO’s overview “panels have typically found trademark registrations that are automatic or unexamined (such as US state registrations as opposed to US federal registrations) are not owed the same deference under the UDRP as examined registrations.”
Also, geographical terms used in their geographic sense are ineligible for trademark registration. The U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedures states that a trademark application should be refused if “the primary significance of the mark is a generally known geographic location.”
This panel made two fundamental errors in trademark law and in implementing the Policy. It granted protection to a geographic term used in its geographic meaning, and it treated a US state registration as apparently establishing common law trademark protection for a geographic term that should not be eligible for protection under the UDRP.
The Respondent argues that the Complainant’s trademark is comprised of common, geographically descriptive words and, as such, cannot be an enforceable trademark. However, the Panel’s jurisdiction does not stretch so far as to comment on the strength of Complainant’s trademark. Complainant has adequately plead (sic) its rights in or to the trademark CHICAGO SOUTHLAND by showing the mark has secondary meaning. For purposes of the Policy, Complainant therefore has cognizable trademark rights.
Use for an adult site cannot be legitimate.
The Panel further finds that there has been no bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent uses the disputed domain to display adult-oriented material.
If a buyer offers $4,000 for your domain, it is bad faith to counteroffer $6,000.
Respondent has also demanded far more than “market price” for the disputed domain name.
Although Complainant offered to buy the disputed domain name for $4,000, given the totality of the circumstances, Respondent’s offer to sell the disputed domain for $6,000.00 constitutes bad faith.
Using a geographic domain for an adult site harms the reputation of that area’s CVB.
In addition, and more importantly, Respondent uses the disputed domain name to tarnish the reputation of Complainant… Registering and subsequently using the disputed domain in a manner that misleads Internet users into believing the Complainant is somehow related to a pornographic web site is what offends the Policy…Similar to the Harley-Davidson case, Respondent’s use of the disputed domain name tarnishes the reputation of the CHICAGO SOUTHLAND mark.
CafeDelMar.com, September 21, 2016
Complainants: are the founders of a bar in Spain, called “Café del Mar”, which then began publishing music albums under the title “Café del Mar”.
Respondent: Hubert Seiwert of Germany, who registered several generic word and phrase domains in the late 1990s.
Contrary to the UDRP requirement that a Complainant establish its right to relief, a panelist (who is a private practice attorney that specializes in filing UDRP cases for trademark owners) can independently undertake research, which he then misinterprets, and use that research to determine the outcome of the case without giving the domain owner a chance to review or respond to the supposed evidence.
Seventeen years ago you register “CafedelMar.com”, based on a generic commercial phrase used by over 100 businesses around the globe. One of those businesses, the Complainant, then registers a design mark. Eight your after your registration you briefly join an eBay affiliate program through which the Complainant’s products can be purchased. This is conclusive evidence that you initially registered cafedelmar.com in bad faith to target the Complainant, and you are a cybersquatter.
Cafedelmar.com was briefly used for an eBay affiliate program that returned the Complainant’s music albums in the results eight years after the domain was registered.
The Respondent contends that “Café Del Mar” is a generic name consisting of the three common Spanish dictionary words “café”, “del” and “mar”, which have a combined meaning of “Café By The Sea” or “Café Of The Sea”…
Respondent concludes that significantly more than 100 unaffiliated, separate businesses exist worldwide which have no relation to the Complainants and who chose the name “café del mar” independently, without seeking to copy or profit from the Complainants’ name or reputation…
The Respondent also indicates to have received many inquiries and unsolicited offers up to USD 8,000 from parties unrelated to the Complainants over the 17 years it has owned the domain, but chose not to accept these offers…
In the case at hand, the disputed domain name cafedelmar.com was registered on February 28, 1999 while the Complainants’ earliest European Union trademark registration for CAFÉ DEL MAR (figurative mark) was filed in January 21, 2000 and registered on April 21, 2004…
However, the Panel verified that historical screenshots for the disputed domain name are publicly available on “www.screenshots.com”. [footnote] 1 A review of these screenshots shows that the disputed domain name was pointed, on May 3, 2005, to a web page where the disputed domain name was offered for sale and, on June 20, 2007, to a web site promoting the sale of CAFÉ DEL MAR music compilations, including the first editions released on 1995 and 1996.
[footnote] 1 A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. WIPO Overview 2.0, paragraph 4.5.
The Panel infers from the Respondent’s previous use of the disputed domain name to promote the resale of the first CAFÉ DEL MAR music compilations released by the Complainants that the Respondent was therefore aware of the Complainants and very likely registered the disputed domain name with the intention to target the Complainants and their business.
Screenshot from June 20, 2007 viewed by the Panelist showing cafedelmar.com’s participation in an eBay affiliate program and the Complainant’s albums appearing in the results.
Sihi.com, July 12, 2016
Majority Decision with dissent
Complainant: Flowserve Corp, a $5 billion market cap maker of valves and pumps
Respondent: Ashantiplc Limited, a domain investment company
It is bad faith to win a four-letter dot-com domain at auction after the trademark holder let the domain expire.
Complainant owned sihi.com since 1995 and failed to renew it. Respondent acquired the Disputed Domain Name in an auction shortly after the expiration of the domain registration.
This Panel finds that the purchase shortly after the lapse of the domain rights in Complainant is evidence of bad faith.
The Panel will determine whether you paid over ‘reseller’ pricing for the domain, if so that means you registered it to target the trademark holder.
The Panel finds, therefore, that other than to identify Complainant’s goods and services, ‘sihi’ is not an acronym distinctive enough for a potential purchaser to be willing to pay a high amount of money, certainly not distinctive enough that such limited alternate uses would support Respondent’s decision to spend $5,000 for the Disputed Domain Name.
It is not convincing the prize (sic) paid by Respondent for the domain name with respect to the chances of selling it [to anyone other than the trademark owner].
In contrast to the majority finding, the dissenting panelist recognized that four-letter dot-com domains have inherent value and that the Complainant had not proven that the domain was registered to target its trademark.
based upon the present record I think it is at least as likely that Respondent chose to acquire the Disputed Domain Name because of its non-trademark value (most likely, as a pronounceable four-letter “.com” domain name containing four common letters) as that the decision was targeted at Complainant or its mark. I would therefore find that Complainant has not met its burden of proving bad faith.
NutrihealthSystems.com, August 23, 2016.
Complainant: Nutrisystem, an $800+ million dollar market cap US weight loss company
Respondent: Dr. Shikha’s Nutri Health Systems, a 12-year-old Indian company offering weight loss services.
A panel can yank a domain name that you have been using as your business web site for the past 12 years by finding such use is not sufficient to confer a legitimate interest in the domain name.
Respondent argues that on 14th October, 2003 it incorporated the company in the name of Dr. Shikha’s Nutri Health Systems Private Limited in India. Respondent states that it has been promoting the disputed domain name through various channels and that it has advertised extensively through print media publishing, various advertisements in leading newspapers and magazines of India.
the Panel notes that there is no evidence that … Respondent provides a bona fide offering of goods or services, nor that there is legitimate noncommercial or fair use of the disputed domain name.
Screenshot of NutriHealthSystems.com showing Dr. Shikha Sharma
You cannot adopt a business name, even if it based on common, descriptive commercial terms, and differs significantly from the name of a business on another continent that has no trademark rights in your country.
Respondent alleges that it was unaware of the Complainant’s marks or domain name at the time of registration of the disputed domain name… Moreover, Respondent argues that the Complainant’s trademark is not registered in India.
The disputed domain name [nutrihealthsystems.com] is confusingly similar to the Complainant’s NUTRISYSTEM registered trademark
In terms of the Policy, the Panel finds that Respondent has registered and is currently using the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s trademark.
If you operate a weight loss business, you are not allowed to use testimonials from your customers.
the Panel notes that Respondent uses the same marketing strategy used by Complainant, which is to show testimonials of persons who had lost weight.
Buttonmakers.com, March 10, 2016
Complainant: Rockstar Industries, operators of Buttonmakers.net, sellers of machines that make buttons
Respondent: Buttonmakers.com, operator of BuyButtonParts.com, sellers of machines that make buttons
A business operating on a generic product .net domain, (Buttonmakers.net), can seize the .com version from a competitor.
The panelist found that it is bad faith to use the .com domain in its generic meaning, despite Buttonmakers.net having no trademark until years after the .com domain was registered. Indeed, in its trademark application, it acknowledged that ‘buttonmakers’ is a generic term that was unprotectable at the time of the registration of the .com domain.
The Panel finds that the submitted evidence is sufficient to show Respondent is a competitor of Complainant, accordingly the Panel finds that Respondent uses the buttonmakers.com domain name in disruptive bad faith under Policy ¶ 4(b)(iii).
To fully appreciate how bad this decision is, it helps to understand the concept of ‘acquired distinctiveness’. This means that a descriptive term can in certain cases be eligible for trademark protection, usually after proving that the trademark applicant has made extensive and exclusive use of the term. In certain cases, a presumption of acquired distinctiveness can arise under U.S. law after five years of exclusive use of the term. Here, buttonmakers.com was registered three years after buttonmakers.net before the Complainant could claim acquired distinctiveness. Also, the Complainant was not making exclusive use of ‘buttonmakers” for the required five years, because Respondent started making use of Buttonmakers.com during that period in its descriptive meaning. That Buttonmakers.net was able in 2014 to finally acquire a trademark based on acquired distinctiveness does not change that ‘buttonmakers’ was a descriptive and unprotectable term when buttonmakers.com was registered in 2007.
From Buttonmakers.net’s Specimen of Use for its trademark application. Buttonmakers.net needs to show that its use isn’t descriptive. So what is the non-descriptive trademark use that Buttonmakers.net makes of ‘Buttonmakers’? The answer is apparently that “We make buttons”.
Decisions where the domain owner failed to respond
In these cases, the Panel only hears one side of the dispute, so it is understandable that their decisions are similarly one-sided. Even in these ‘no response’ decisions, some of the reasoning is troubling. You can decide for yourself.
EquipmentTrader.com, August 16, 2016
Running a business selling equipment on equipmenttrader.com violates the Policy if another business has a trademark on “Heavy Equipment Trader”.
Based on the evidence of record here, the Panel finds that no basis exists which would appear to legitimize a claim of rights or legitimate interests by the Respondent to the disputed domain name under paragraph 4(c) of the Policy.
Wonderforest.com, October 7, 2016
If a blogger registers a generic combo domain name, then you can’t register a domain similar to that blogger’s domain less than two years later, because the blogger has exclusive rights to that term, despite not having a registered trademark.
Blog domain ‘thewonderforest.com’ registered in 2011. Disputed domain ‘wonderforest.com’ registered in 2012. Trademark applied for in 2014 and registered in 2016.
Complainant has not provided direct evidence of the secondary meaning it has achieved in the WONDER FOREST mark, other than allegation of “continuous and extensive” use dating back to 2011…The Panel has examined the website to which that domain name resolves and finds that it shows Complainant established its business under the name “the Wonder Forest tm blog” in 2011…As such the Panel finds that Complainant has established common law rights in the WONDER FOREST mark dating back to 2011.
The standard for secondary meaning is that consumers will associate the term ‘WonderForest’, with ‘that blog about home decoration’. That’s a pretty hard standard to meet for a niche blog in business less than two years. Here the Panelist states that the complainant established secondary meaning from the instant she started her blog ‘…dating back to 2011’, which is nonsensical under trademark law and contrary to the properly high standards under the UDRP for establishing secondary meaning.
Attempting to sell a domain for a profit is evidence of bad faith.
Complainant also has provided evidence that Respondent is attempting to sell the domain name to the general public for an excessive cost. SeeCompl., at Attached Annex 3. Panels have also found this to violate Policy ¶ 4(b)(iv)
These cases are all, in my view, examples of misapplication of the Policy. The Policy was created to provide a remedy for clearcut cybersquatting cases where a domain owner registers and uses a domain to target a trademark owner. In many of the above cases, the Panel orders the disputed domain transferred to a Complainant who did not have enforceable trademark rights when the domain was registered. In none of these cases is there clear evidence that the domain owner was targeting a valid trademark of the Complainant when it registered and used these domain names.
I am not an attorney, so I asked two experienced IP attorneys to independently review the analyses above to confirm that I was not mistaken in the critiques. I am grateful for their corrections and improvements.
Prior to working on this article, the decisions in a couple of the above cases produced dismayed reactions from several experienced UDRP attorneys. This confirmed that I was not alone in thinking that certain of these decisions were wrongly decided, and helped encourage me that this article was worth writing.
The flawed decisions in these cases show that quality control at WIPO and the Forum is lacking. The implementation of the Policy is broken when attorneys who make fundamental mistakes in applying trademark law and who so greatly overreach are accredited as panelists and given the power to seize domains from their owners without compensation. As these cases demonstrate, some panelists have no qualms harming the livelihood of small business owners by deviating from the Policy and inventing high speculative rationale to justify seizing descriptive domains that are integral to these businesses’ operations.
These decisions also are damaging because they undermine the work of those panelists who conscientiously apply the Policy, and who require evidence of bad faith targeting of the Complainant as the Policy intended. A Policy that is interpreted by hundreds of panelists, spread globally over several UDRP providers, requires humility on the part of the panelists to adhere to the Policy so that the administration of the Policy can maintain some consistency. Panelists who shatter this uniformity by taking it upon themselves to change evidentiary standards or who adopt inconsistent interpretations of the Policy, do a disservice to all who rely on the UDRP for fairness and uniformity.
There appears to be no existing procedures among the UDRP providers for self-correction, and no oversight organization ensuring compliance with the Policy. WIPO and the Forum are the UDRP providers under whose authority these decisions were issued, although there are other UDRP service providers too. WIPO and the Forum are given free rein to implement the Policy as they see fit – neither is under contract with ICANN.
It is the Complainant who chooses which is the most favorable forum to hear its case, from among the various available forums. Except in the relatively rare case of a respondent opting for a three-member panel, all of the fees are paid by the Complainant. WIPO and the Forum have little incentive to stop using panelists who, through overreaching decisions based on rationale that conflicts with the Policy, successfully seize from prior owners and deliver to Complainants the domains these Complainants covet. On the contrary, bestowing such undeserved windfalls on the Complainants makes for happy customers.
WIPO has previously de-accredited a panelist, so they are willing to exercise that authority, although strangely the one panelist that WIPO chose to de-accredit is a recognized expert on IP law. All the panelists who issued these decisions are still accredited panelists.