In a recent case under the Uniform Dispute Resolution Policy (UDRP), the administrative panel determined that a party who had owned the disputed domain name for more than 20 years was not entitled to recover it from another party who bought the domain name at auction. The complainant alleged that it let the domain name registration lapse because it could not communicate with the domain name registrar, which apparently recently had been acquired by another registrar. After purchasing the domain name at auction, the respondent redirected it to his travel-related website. (The parties disputed whether that redirection continued – in a supplemental filing, the complainant characterized the respondent’s redirecting of the disputed domain name to pay-per-click ads as “thumbing his nose” at the tribunal and the complainant.
The panel found the use of the generic words “simple” and “plan” in the domain name, in relation to a travel-related website operating in the way described by the respondent, was legitimate. The panel therefore found that, before any notice to the respondent of the dispute, the respondent had used the domain name in connection with a bona fide offering of travel-related services.
As for the question of the respondent’s registration and use of the domain name in bad faith, the panel found there was insufficient evidence to demonstrate that the respondent had any hand in preventing the complainant’s renewal of the domain name or that he should have known of the complainant’s mark at the time when he purchased the domain name at auction. Further, the complainant did not submit any evidence of its reputation in the countries where the respondent lives or conducts business. Thus, the panel concluded that the complainant had not shown, by a preponderance of the evidence, that the was targeting the complainant’s mark.
A recent case from a federal court in Kentucky shows why the Anticybersquatting Consumer Protection Act (15 U.S.C. 1125(d) – the “ACPA”) can be – compared to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) – a relatively inefficient way of resolving domain name disputes under federal law.
Defendant was an infringer
Here is a quick rundown of the facts. Defendant owned a business directly competitive to plaintiff ServPro. Plaintiff had used its mark and trade dress since the 1960’s. Defendant set up a website using plaintiff’s color scheme, bought Google AdWords triggering ads showing plaintiff’s mark, and registered a domain name identical to plaintiff’s mark – servpro.click. These facts supported the court’s entry of summary judgment in plaintiff’s favor on the question of trademark infringement. But the ACPA claim got the court got hung up because of some hard-to-believe facts the defendant put forward.
What the ACPA requires
The ACPA requires a plaintiff to prove bad faith intent to profit from the disputed domain name. And it gives courts a list of nine things that a court can consider in determining this bad faith. In other words, this list is not the be-all and end-all guide for determining ACPA bad faith. Here are the nine things a court should consider in resolving domain name disputes under federal law:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of [the Lanham Act].
The court’s decision on cybersquatting
The court found that factors I through IV and IX weighed in plaintiff’s favor. But the court found there to be a genuine issue as to factor V and denied summary judgment. It found that defendant had an intent to divert plaintiff’s customers.
Defendant asserted he did not purchase the servpro.click domain name intending to divert customers from plaintiff for defendant’s gain. Instead, he alleged that he registered the domain name to collect information and perform analytical research for running Google AdWords. He also alleged that the website the domain name pointed to did not advertise that it was ServPro. And the contact information on the website pointed to his personal cellphone. He alleged that when answering calls made to that number, he identified himself as affiliated with his company and never identified himself as affiliated with plaintiff.
The court probably had difficulty denying summary judgment in a situation where the facts alleged are so hard to believe. A court’s role at the summary judgment stage, however, is not to weigh the evidence, but merely to determine whether there is a factual issue for trial. The time for really ascertaining the truth of defendant’s assertions will come later.
Was the ACPA too cumbersome for this case?
In any event, these flimsy arguments remaining alive far into expensive litigation underscores how domain disputes under federal law are more cumbersome . The marshaling of evidence, briefing and argument in federal court can easily rack up six-figures in attorney’s fees and costs. Even after that effort, the summary judgment standard provides little assurance a party arguing against thin facts will get relief. Had the parties resolved this dispute under the UDRP and not the ACPA, plaintiff’s arguments would have had more success.
ServPro Intellectual Property, Inc. v. Blanton, 2020 WL 1666121 (W.D. Ky. April 3, 2020)
Straightforward out-of-court domain name proceeding can provide efficient relief against fraudulent websites and email.
Google has seen a steep rise amid the Coronavirus pandemic in new websites set up to engage in phishing (i.e. fraudulent attempts to obtain sensitive information such as usernames, passwords and financial details). Companies in all industries – not just the financial sector – are at risk from this nefarious practice. But one relatively simple out-of-court proceeding may provide relief.
Varieties of Phish Species
Phishing schemes can take a variety of forms. A fraudster may register a domain name similar to the company’s legitimate domain name and use it to send email messages to the company’s customers, requesting payment and providing wire instructions. Distracted or untrained customers who receive the email may unwittingly wire funds as instructed in the fraudulent email to an account owned by the criminal. Or the phishing party may set up a legitimate looking but fake website at a domain name similar to the company’s legitimate domain name, and direct users there to purportedly log in, thereby disclosing their usernames, passwords, and perhaps additional sensitive information.
Taking Sites Down with the UDRP
Everyone who registers a domain has to agree, by contract, to have disputes over the domain name’s ownership resolved through an administrative proceeding (similar to arbitration). The Uniform Domain Name Dispute Resolution Policy (UDRP) governs disputes over .com, .net, .org and many other domain name registrations. The World Intellectual Property Organization (WIPO) provides administrative panels who decide disputes under the UDRP. These are decided “on the papers” with each party having the opportunity to submit arguments and supporting documentation. The time and expense of a UDRP proceeding is a small fraction of what one sees in typical litigation – UDRP cases usually conclude within weeks, and generally cost a few thousand dollars.
The UDRP Frowns Upon Phishing
To be successful in bringing a UDRP proceeding, a party has to prove (1) that it owns a trademark that is identical or confusingly similar to the disputed domain name, (2) that the party that registered the disputed domain name has no rights or legitimate interests in the disputed domain name, and (3) that the disputed domain name was registered and has been used in bad faith.
UDRP panels typically show little tolerance for blatant phishing efforts. Companies bringing UDRP actions against registrants of domain names registered for phishing purposes enjoy a high rate of success. A good phishing effort (that is, “good” in the sense that the fake domain name succeeds in deceiving) will require using words similar to the company’s mark. So the first element is usually a low hurdle. On the second and third elements, UDRP panels are readily persuaded that a party using a disputed domain name for phishing gains no rights or legitimate interests, and demonstrates clear bad faith. “Using the disputed domain name to send fraudulent email is a strong example of bad faith under the [UDRP].” Samaritan’s Purse v. Domains By Proxy, LLC / Christopher Orientale NA, WIPO Case No. D2019-2403
Plaintiff, the owner of a college student housing facility, filed suit for unfair competition under Section 43(a) of the Lanham Act against a number of entities and individuals that operated a competing student housing facility. Defendants registered eight domain names that incorporated plaintiff’s trademarks. At first defendants used some of the domain names to redirect traffic to the website for defendants’ competing student housing facility. But after plaintiff demanded defendants cease and desist, defendants simply parked the domain names with GoDaddy and permitted pay-per-click ads to appear on the pages.
The case went to trial and the court found in plaintiff’s favor on the unfair competition claim. The court determined that the domain names were confusingly similar to plaintiff’s marks that had acquired secondary meaning. And the use of the domain names in the manner defendants had set them up constituted use in commerce. Each of the web pages displayed the domain name associated with it – and each such domain contained plaintiff’s mark. And each of the pages showed pay-per-click ads comprised of links to various vendors’ goods and services. This use met the Lanham Act’s definition of “use in commerce”.
ZP No. 314, LLC v. ILM Capital, LLC, No. 16-521, 2019 WL 4924029 (S.D. Alabama, September 30, 2019)
About the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.
Oath, Inc., the successor to Yahoo! Inc., filed an action under the Uniform Domain Name Dispute Resolution Policy (UDRP) against a domainer that acquired ymobile.com earlier in 2019. The split 3-member FORUM panel denied the complaint, finding that Oath failed to demonstrate that the respondent lacked rights or legitimate interests in the disputed domain name, and failed to show it registered and used the disputed domain name in bad faith.
On the question of rights or legitimate interests, the panel found that the respondent’s purchase and sale of the domain name comprised of the generic term “mobile” prefixed by “y” was legitimate, so long as the respondent did not intend to capitalize on Oath’s YMOBILE mark, which is registered in Japan. The panel accepted the respondent’s assertion that it had no notice of the YMOBILE mark prior to acquiring the disputed domain name.
Regarding bad faith registration and use, the panel similarly found that the respondent was not targeting the Y! or YMOBILE mark, and that it had no knowledge of the YMOBILE mark’s existence prior to acquiring the disputed domain name.
One of the panelists dissented, arguing that the disputed domain name should have been transferred. He emphasized how the respondent was using the disputed domain name – which the panel found was identical to a mark the complainant owns – to display pay-per-click ads for goods and services competitive with the complainant’s. Some of the ads, for example, were for online games and downloadable software. And on the issue of bad faith, this panel member observed that although the respondent claimed to not know of the complainant’s YMOBILE mark, a simple web search would have revealed it.
The Complainant is the owner of the well-known Coachella festival. It owns a trademark registration, issued in 2016, for the mark CHELLA.
The Respondent asserted that he intended to use the disputed domain name to set up an online women’s clothing store but never did so. He claimed that growing up, his nickname was “Chelle” and that he modified that name to make it sound more feminine for use in connection with the store.
Coachella challenged the domain name registration. A single-member NAF panel denied the complaint. It found in favor of the Complainant on the first two UDRP elements, but did not find that the Respondent registered and used the disputed domain name in bad faith.
In the present case, the Panel found that, in contrast to the COACHELLA mark, the Complainant failed to show that its CHELLA mark was sufficiently well-known. All of the Complainant’s exhibits substantiating the well-known character of its mark related to its COACHELLA mark. Since the disputed domain name was considered to only be confusingly similar to Complainant’s CHELLA mark, the Panel found that future active use of the disputed domain name could thus be legitimate without interfering with the Complainant’s marks.
The Panel was also of the opinion that the Complainant did not sufficiently show the Respondent’s constructive knowledge of the COACHELLA or CHELLA marks to evidence bad faith registration of the disputed domain name. Considering that the term “Chella” is used as a personal name or to denote a town in Spain, the Panel found that it was plausible that the disputed domain name was registered in good faith by the Respondent, without any knowledge of or intention to target the Complainant’s marks. Finally, the Panel found that the Respondent had not violated any of the factors listed in Paragraph 4(b) of the UDRP or engaged in any other conduct that would constitute bad faith registration and use under the UDRP.
The Complainant established its business beginning in March 2018 and sought to acquire the disputed domain name <zoyo.com> through communications with the Respondent facilitated by the registrar. After the Respondent demanded $10,000 for the disputed domain name – which was the same amount the Respondent claimed to have paid for the disputed domain name “a few years ago” – the Complainant sought relief from a single-member WIPO Panel under the UDRP.
The Panel denied the Complaint, finding that the Complainant failed to show bad faith use and registration under the UDRP.
The evidence on this point was controverted. The Respondent claimed (not in a formal response but through the above-noted negotiations) that he acquired the disputed domain name years ago, and the WhoIs data showed it was first registered in 2002. But the Complainant – looking to the “last updated” field in the WhoIs data, claimed that the Respondent acquired it in April 2018.
The Panel found that “failed to establish that the Respondent’s statement in response to the Complainant’s enquiry that it acquired the disputed domain name ‘some years ago’ [was] false.”
It further noted that the Complainant stated that it required the disputed domain name for use as part of the expansion and development of its business. The Panel surmised that this could indicate that the Complaint was filed as a part of the Complainant’s business expansion plan and perhaps indicated that the Complainant did not fully understand the nature and purpose of the UDRP.
So the Panel’s decision left open the possibility of further action if the facts would support them. The Panel determined that if the Complainant could prove that the Respondent did not acquire the disputed domain name until April 2018, at a time when there was considerable activity and perhaps publicity in relation to the establishment of the Complainant’s group, that might paint a different picture. Accordingly, on the basis of the evidence before the Panel on the present record, the Panel denied the Complaint but without prejudice to the filing of a new Complaint should evidence become available to support the Complainant’s contentions concerning the Respondent’s identity and acquisition of the disputed domain name.
UDRP complainant manufactures cameras used in science and industry, and claimed to be the sole user of the letters “PCO” in commerce. The respondent acquired the disputed domain name in 2008 and never established an active website there. The UDRP Panel refused to transfer the disputed domain name to the complainant, finding that the respondent did not regsiter and use the disputed domain name in bad faith.
In making this finding, the Panel observed:
Contrary to the complainant’s assertions that it was the exclusive user of the letters PCO, it is in fact common three-letter combination.
A number of UDRP cases about three-letter domain names show that such terms are generally in widespread use as acronyms and it is conceivable that they are registered for bona fide purposes.
The complainant claimed to have a stong worldwide reputation but actually operated only in a niche, so there was nothing to support the complainant’s claim that the respondent was “obviously” aware of the complainant when it acquired the disputed domain name.
The complainant overstated its case when it claimed that there was no conceivable good faith use to which the disputed domain name could be put.
For these reasons, despite the fact that the respondent did not reply in the action, the Panel denied the complaint.
About the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.
In the case of BroadPath Healthcare Solutions / Jerry Robertson v. Maria Piro / Nova Nordisk, a one-member NAF Panel held that the Complainant failed to meet the second UDRP element, namely, it failed to establish that the Respondent lacked rights or legitimate interests in the disputed domain name <broad-path.org>.
The decision is confusing because the opinion appears to be self-contradictory. The Panel noted that the Complainant alleged (1) the Respondent is not commonly known by the disputed domain name, (2) that the Complainant had not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s mark, and (3) that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the Complainant argued, the Respondent was attempting to pass off as the Complainant to facilitate fraud on Internet users.
Ordinarily, in an uncontested UDRP matter (such as this one, where the Respondent did not file a response), such allegations would be enough to establish a prima facie showing on the second UDRP element. It is unclear what more the Panel expected to see in terms of proof of lack of rights or legitimate interests. The prima facie showing requirement is used in light of the difficulty of proving a negative, which is what the second UDRP element calls for.
In any event, despite the Complainant’s allegations listed in the decision, the Panel concluded, in summary fashion without explanation, that the Complainant failed to make a legally cognizable argument under this second UDRP element. For this reason, the Panel did not go on to analyze the bad faith element, but instead denied the Complaint.
Plaintiff sued a competitor under the Anticybersquatting Consumer Protection Act (15 U.S.C. 1125(d) (“ACPA”)) and brought other trademark-related claims concerning the competitor’s alleged online scam of selling infringing nutritional supplement products. Plaintiff also sued the domain name privacy protection service Namecheap, which the competitor had used to register the domain name. As part of the order granting plaintiff’s motion for preliminary injunction, the court ordered Namecheap to transfer the domain name to plaintiff.
The court noted that a preliminary injunction “is an extraordinary remedy never awarded as of right,” and that the “traditional purpose of a preliminary injunction is to protect the status quo and to prevent irreparable harm during the pendency of the lawsuit.” Given these parameters, one may be reasonably surprised that the court went so far as to transfer the domain name before the case could be taken all the way through trial. Usually the transfer of the domain name is part of the final remedy awarded in a cybersquatting case, whether under the ACPA or the Uniform Domain Name Dispute Resolution Policy.
The opinion did not address the issue of whether the domain name transfer prior to trial might go further than to “protect the status quo”. It would seem the court could have just as easily protected the status quo by ordering the domain name not be used. The court apparently found the evidence to be drastically in favor of plaintiff. And since the defendant-competitor did not show up for the hearing, plaintiff’s evidence went unrebutted.
Nutramax Laboratories, Inc. v. Nutra Max Labs, Inc., 2017 WL 4707447 (D.S.C. October 20, 2017)
About the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.
About the Author: