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ICA UDRP DIGEST – VOL 2.19

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Canon City Property Management, LLC v. David Borden, NAF Claim Number: FA2203001987569

<canoncitypropertymanagement .com>

Panelist: Ms. Nathalie Dreyfus

Brief Facts:
The Complainant, a real estate management company in Canon City, Colorado has a website at <canoncitypropertymgmt .com>. The Complainant filed for incorporation in Colorado on August 4, 2017 and began doing business no later than January 1st, 2018. The Complainant claimed to have filed a US trademark application for “Canon City Property Management” matching the company name on July 7, 2021. The Respondent‘s company, under the name Property Management Websites (“PMW”), is involved in the creation and design of websites for property management businesses throughout the United States. In this regard, in 2016, the company Proficient Property Management Services, Inc. (“PPMS”) located in Canon city, Colorado requested web creation services from the Respondent. The Respondent registered the disputed Domain Name on October 28, 2016 with GoDaddy, on behalf of its Client (“PPMS”). The Complainant asserts that it does not matter if the Respondent registered the disputed Domain Name before the Complainant‘s first claim of rights in the CANON CITY PROPERTY MANAGEMENT trademark when there is a transfer of control of a Domain Name.

The Complainant further asserts that the disputed Domain Name was mostly parked; the Respondent began to use the disputed Domain Name in 2021 by hosting a website offering services that are identical to Complainant’s and exercise in the same city. The Respondent argues that the website was completed and went live in 2021, due to the creation of a complex client portal and it makes use of the generic words to describe his products, services and business without taking advantage of the Complainant’s rights in that word. The Respondent further points out that the Complainant’s trademark application has been refused by the USPTO; hence it cannot evidence rights in the CANON CITY PROPERTY MANAGEMENT mark. In August 2021, the Complainant attempted to purchase the disputed Domain Name from the Respondent for USD $5000, but the Respondent refused. The Respondent contends that the Complainant acted in bad faith in an attempt to reverse hijack the Domain Name.

Held: The Complainant used its mark since January, 2018 and argues that the provisional refusal issued by the USPTO can be overcome. The Complainant provides evidence of investing in advertising, as well as results for Google and Bing searches of the trademark, hence claims Common Law rights for the purpose of the Policy. The Respondent uses the disputed Domain Name to resolve to the website of its client PPMS, which specializes in property management in Canon City, Colorado. The Respondent even provides evidence that Complainant’s trademark application with the USPTO was denied on the grounds that the terms are descriptive. It can, therefore, be concluded that the Respondent has rights or legitimate interest in the disputed Domain Name.

It must be noted that the Respondent, David Borden, registered the domain name in 2016 and when the Complaint was filed, the verification done with the registrar of the disputed Domain Name showed that David Borden was still the registrant of said Domain Name. Consequently, the Complainant did not demonstrate that a change of ownership occurred for the disputed Domain Name. Thus, the date that the Panel should take into consideration when examining bad faith registration is the date of the registration of the Domain Name: October 28, 2016. The Panel finds that the Respondent’s registration of the disputed Domain Name predates Complainant’s first claimed rights in the CANON CITY PROPERTY MANAGEMENT mark, and that the Complainant did not prove registration in bad faith per Policy.

RDNH: In the present case, the Panel finds multiple independent grounds which are individually capable of leading to a finding of RDNH. First, the fact that a complainant must or at least ought to have appreciated at the outset that its complaint could not likely succeed, given the fact that the disputed Domain Name had been registered almost a year before the Complainant began its business activities. Secondly, the Complainant initially failed to prove that the Respondent registered the Domain Name in bad faith. It is only in its Additional Submission that the Complainant tried to demonstrate said bad faith registration by arguing as to change in control but without providing the Panel with any evidence in support. Thirdly, the present case is a “Plan B”, as the Complainant offered to purchase the Domain Name to the Respondent before filing the present dispute.

Moreover, previous UDRP Panels have held that UDRP proceedings should not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that pre-dates any trademark rights held by the Complainants. Consequently, the filing of the present dispute by the Complainant has been done with the sole purpose of trying to obtain the transfer of the disputed Domain Name that the Respondent refused to sell. In all of these circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt at RDNH and constitutes an abuse of the administrative proceeding.

Complaint Denied (RDNH)

Complainants’ Counsel: Chad G. Clark, Colorado, USA

Respondents’ Counsel: Jyoti Pandya of Pandya Law, LLC, Colorado, USA




Panelist Unhappy with Epik, Requests WIPO Report to ICANN

Sütaş Süt Ürünleri Anonim Sirketi v. Privacy Administrator, Anonymize, Inc. / Independent Digital Artists, WIPO Case No. D2022-0615

<yovita .com>

Panelist: Mr. Andrew D. S. Lothian

Brief Facts:
The Complainant, since 1975, is a provider of milk and dairy products, processed in four production facilities located in Turkey, North Macedonia and Romania. In 2019, it exported goods to the value of USD $16.5 million to 29 countries, including the United States of America. According to the Complainant, “Yovita” is the name of one of its most prominent products, which is a natural yogurt containing probiotic bacteria and traditional yogurt yeast. The Complainant is the owner of several registered trademarks for the mark YOVITA covering a wide variety of jurisdictions but does not include the USA. The earliest of its Turkish trademark registration is dated October 18, 2005. The disputed Domain Name was registered on January 27, 2005 and recently it was under private proxy, which was disclosed at a later stage by the Registrar. The disputed Domain Name is parked and offered for sale or lease and “reasonable offers” are solicited for consideration. The Panel assumes that the Complainant seems, was the original registrant of the disputed Domain Name until January 27, 2011, when it was allowed to lapse. Although, the Panel cannot tell for certain, the disputed Domain Name was most probably auctioned by its then registrar upon expiry and the Respondent acquired the disputed Domain Name.

According to the website associated with the Domain Name which is used for the contact email address named in the Response, the Respondent’s organization is “a collaborative digital media environment where commercial and creative projects are developed”. The Respondent credibly asserted, with evidence, that it acquired the disputed Domain Name because it corresponds to a first or given name and could have a variety of possible applications unrelated to the Complainant’s trademark. With regard to trademark usage of the term, the Respondent submits, with evidence, that the mark YOVITA is by no means exclusively or particularly referable to the Complainant, such that it would not be reasonable for the Panel to infer that the Respondent had the Complainant in mind (or had any intent to target the Complainant) when it acquired the disputed Domain Name.

Preliminary Matter:

The holder of the disputed Domain Name was originally verified by the Registrar as Anonymize, Inc., a privacy service. Nevertheless, the Registrar indicated in its verification that there was an underlying registrant of which it was aware. The Center proceeded to inform the Complainant that the registrant was Anonymize, Inc. in accordance with the Registrar’s verification, to which the Complainant duly filed an amendment to the Complaint and the notification procedure commenced. One week later, the Registrar contacted the Center stating that “the Registrant would like to unmask their information” and disclosing details of the underlying holder of the disputed Domain Name. The Rules state that within two business days of receiving the UDRP provider’s verification request, the registrar shall provide the information requested in the verification request including the underlying details. There is no discretion with the Registrar in terms of the Rules or the Temporary Specification to withhold this information from the UDRP provider.

Difficulties are likely to ensue, if registrars wilfully disclose the holder of a domain name as a privacy service in circumstances where they are aware of the existence and identity of an underlying holder. The Panel notes that this is not the first time that there have been concerns arising from the actions of the Registrar in recent years (see, for example, WIPO Case No. DCO2019-0033; WIPO Case No. D2019-1816; WIPO Case No. D2021-1050). In these circumstances, the Panel requests that the Center share this decision with ICANN so that ICANN may consider what actions it may wish to take, in the context of the Registrar’s contractual compliance or otherwise. The Panel issued Procedural Order No. 1, in order to put the Parties back into the position that they would have been in (in procedural terms) had the identity of the underlying registrant been disclosed by the Registrar at the time of verification.

Held: There is no evidence before the Panel as to the prominence of the Complainant’s YOVITA brand and trademark on or after the date it was acquired by the Respondent, which could suggest on the balance of probabilities that the Respondent was targeting it or its rights when the disputed Domain Name was registered. The Respondent proceeded to offer the disputed Domain Name for general sale, although it also says that it may deploy the Domain Name as a new brand in an area of business unrelated to that of the Complainant. In the circumstances of the present case, where there is no evidence (as opposed to assertion) that the Complainant’s mark is well-known other than potentially in its main markets in Turkey and south east Europe, and no evidence in particular of any online prominence of such mark which would more probable than not have come to the Respondent’s attention, the fact that the disputed Domain Name was registered for subsequent resale does not by itself support a claim that the Respondent probably registered the disputed Domain Name in bad faith with the primary purpose of selling it to the Complainant. In all of these circumstances, the Panel finds that the disputed Domain Name was not registered or is being used in Bad Faith.

Complaint Denied

Complainants’ Counsel: Turkticaret.net Yazilim Hizmetleri Sanayi ve Ticaret A.S., Turkey

Respondents’ Counsel: Self-represented




UDRP Dispute Goes Back to the Future

DeLorean Motor Company v. Netcom, NAF Claim Number: FA2203001989283

<deloreanparts .com>

Panelist: Mr. Jeffrey J. Neuman

Brief Facts:
The Complainant is the owner of the DeLorean automobile brand which gained popularity in the 1980s for its renowned use as a time machine in the Back to the Future movies. Here, the Complainant alleges that it has been using its DELOREAN marks since at least as early as 1995, and is the assignee and successor in interest to the original Company that was founded in 1975. The Complainant asserts rights in the DELOREAN mark through its registration of the mark with the USPTO dated Nov. 24, 2009. The disputed Domain Name was registered on December 08, 1999 and currently resolves to a website, presenting users with hyperlinks related and unrelated to Complainant’s business and is offered for sale. The Respondent admits that the disputed Domain Name’s website is currently parked and will be until “the current phase of design and manufacturing of new products is completed.” On February 28, 2022, the Respondent received an email from a Godaddy broker, enquiring about the disputed Domain Name. The Respondent states that it did not know who the client were that wanted to purchase the Domain Name but told the domain broker that it would sell the domain name for USD $31,000.

The Respondent contends it entered into a partnership in 1989 with PJ Grady, America’s first DeLorean car dealership, to design and manufacture electronic control systems for the DeLorean car and accordingly the Respondent argues that it is having the right to use the mark since the date of its first sale in 1992. In 1999, the Respondent began fundraising for Michael J. Fox’s Parkinson’s charitable organization through DeLorean “owner donations”. The Respondent provides evidence that it displayed the disputed Domain Name at various trade shows between 2000 and 2006 and that the Complainant knew about the Respondent’s use of the disputed Domain Name since at least as early as 2004 when the Complainant’s CEO won a Zilla branded toolkit during the “trade show” in Dallas.

Held: Although the Respondent provides evidence that it was at one time authorized to use the Complainant’s mark (directly or indirectly) in connection with the sale of parts for the Complainant’s vehicles, which was more than 15 years prior to the filing of this complaint. There is no evidence in the record that the Respondent was authorized to use the Complainant’s mark at the time of the filing of the complaint. Hence, the Respondent does not currently have any rights or legitimate interests in the disputed Domain Name. According to the evidence submitted by the Respondent, the Respondent believed that it was authorized to register the disputed Domain Name, having entered into a partnership in 1989 to design and manufacture electronic control systems for the DeLorean car. In furtherance of its business selling DeLorean parts, the Respondent registered the disputed Domain Name on December 8, 1999, more than 22 years prior to this proceeding. Moreover, it is clear that the Complainant knew that the Respondent was selling products and services related to the Complainant’s DeLorean vehicles as evidenced by the fact that the Complainant sold Respondent’s products on its own <delorean .com> website.

Panels have long recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and therefore using it in good faith. Outlined in the “Oki Data test”, specific factors have been used by Panels to find that a Respondent has not registered nor is it using a disputed Domain Name in bad faith. In weighing the Oki Data factors taken as a whole, the Panel believes the Complainant has not demonstrated that the disputed Domain Name was registered in bad faith back in 1999 nor was the Domain Name initially being used in bad faith. Further, the fact that recently the Respondent offered to sell the domain name for USD $31,000 to the Complainant does not change the fact that the disputed Domain Name was not registered in bad faith. Therefore, under the Policy as applied in this case, there is no need to assess whether the asking price was indicia of bad faith.

Complainant Denied

Complainants’ Counsel: Yuo-Fong C. Amato of Gordon & Rees, LLP, California, USA

Respondents’ Counsel: Self-represented




Factual Claims without Supporting Evidence Eviscerates the Requirements of the Policy

Kelin S.r.l. v. Privacy Service provided by Withheld for Privacy ehf / Vincent Cammarata, WIPO Case No. D2022-0746

<givi .space>

Panelist: Mr. John Swinson

Brief Facts:
The Italian Complainant designs and sells motorcycle helmets and other motorcycle equipment such as bags. The Complainant owns registered trademarks for GIVI, including International Registration dated June 3, 2004, that covers the United States and is having online presence at <giviusa .com> catering to the United States. The disputed Domain Name was registered on January 22, 2022 and does not resolve to an active website. The Complainant asserts that it owns a prior trademark and GIVI is a fanciful word, therefore, it is inconceivable that the Respondent was not aware of the Complainant’s GIVI trademark when he registered the disputed Domain Name. The Complainant also states: “GIVI is a trademark registered to the Trademark Clearing House, therefore – considering that .space is a new generic Top Level Domain – respondent has been notified of the existence of the trademark GIVI at the moment of the registration.” The Respondent did not submit a formal reply to the Complainant’s contentions but in an email, inter alia, stated: “I can delete it if you need me to. I haven’t done anything with the domain, it is just sitting. Best, Vincent”. To the Panel, the Respondent appears to be a computer programmer and artist from Missouri, United States, who operates websites at <vinrata .com> and <viniverse .io>. The latter website is about an ancient alien species from outer space called “Vinnies” that appear to be represented as NFTs.

Held: The Complainant provided little detail or evidence to support its claim that the Complainant and the GIVI trademark are well known, especially in the United States. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both the Complainants or the Respondents could simply claim anything without any proof. Based on the evidence, the Panel cannot conclude that it is more probable than not that the Respondent was aware of the Complainant when selecting the disputed Domain Name. The Complainant appears to have a reputation in relation to motorcycle accessories, but there is no evidence as to Respondent’s interest in or knowledge about motorcycles. The Respondent is a young artist, who goes by the name Vinny, and draws space aliens from the “Vini” race. Maybe the Respondent registered the disputed Domain Name for his Vini space alien’s project?

Even if the Respondent had been made aware of the Complainant’s trademark at the moment of registration as argued by the Complainant, this is insufficient to demonstrate that the Respondent registered the disputed Domain Name in bad faith or to trade off the reputation of the Complainant. The Respondent could use GIVI in respect of other goods and services, or use GIVI not as a trademark (e.g., in relation to one of the Respondent’s alien characters or planets). As an aside, there are other businesses that use GIVI as a trademark, such Standard & Poors who own a trademark registration for GIVI in some countries and operate the GIVI (Global Intrinsic Value Index) and more. These examples show that GIVI is not unique to the Complainant and that others can legitimately use GIVI in good faith. On balance, there is insufficient evidence before the Panel to demonstrate that the Complainant registered the disputed Domain Name in bad faith.

Complaint Denied

Complainants’ Counsel: Barzanò & Zanardo Milano SpA, Italy

Respondents’ Counsel: Self-represented




Domain Name Lifted for Phishing Scheme

Air Lift Company v. hermanrademan / Paul Russo / Encompass Corporation, NAF Claim Number: FA2203001989867

<airsliftcompany .com>, <airliftscompany .com> and <airlifcompany .com>

Panelist: Mr. Debrett G. Lyons

Preliminary Issue (Multiple Respondents):
The Rules provide that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”, which is not a case here. Although, the Complainant contends that the Domain Names were all registered by the same person or entity, because all are unused, typo-squatted and were registered within a year of each other. That said, the submissions are not particularly compelling, and the Panel is in doubt that all three domain names are commonly held. The Forum’s Supplemental Rule states that if the Panel determines that insufficient evidence is presented to link the alleged aliases, the domain names held by the unrelated registrants will not be subject to further consideration by the Panel. Therefore, the Panel finds that the Complainant only succeeds against the <airsliftcompany .com> name and so a final determination on the question of common control is not required.

Brief Facts: The Complainant manufactures and sells air-spring suspension and load support products for vehicles. It owns rights and operates under the trademark AIR LIFT which is registered with the USPTO dated August 5, 1958. The disputed Domain Name <airsliftcompany .com> was registered on July 16, 2021 and is passively held, while an email address is in use. The Complainant alleges that the Respondent’s email is posing as emanating from Complainant’s business, engaged in phishing attempts.

Held: The disputed Domain Name is inaccessible and the only evidence of use is that of an email address using the Domain Name. The said email has been used to send a message posturing as originating from the Complainant with the nefarious intention of diverting monies away from the Complainant. The Complainant made a prima-facie case that the Respondent lacks a right or interest in the Domain Name, as the Respondent targeted the Complainant’s trademark and business for commercial gain. The use of the disputed Domain Name in an email address to pass itself off as the Complainant in a phishing scheme is evidence of bad faith registration and use. Accordingly, it is ORDERED that <airsliftcompany .com> be TRANSFERRED from the Respondent to the Complainant. The relief shall be denied in respect of <airlifcompany .com> and <airliftscompany .com>.

Transfer (Denied in Part)

Complainants’ Counsel: Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA

Respondents’ Counsel: No Response




Defamation Claims Best Left to Courts

Ryan Kavanaugh v. Proxy Protection LLC, Proxy Protection LLC / Love, Ostlund cunow, web10media AB, WIPO Case No. D2022-0056

<doesryankavanaughlooklikeharveyweinstein .com>

Panelist: Mr. Brian J. Winterfeldt (Presiding), Ms. Debra J. Stanek and Mr. Andrew Bridges

Brief Facts:
The US Complainant is a film financier and a producer whose name appears in the Internet Movie Database in connection with a number of films and TV series. The Complainant registered the domain name <rkavanaugh .com> on February 19, 2020 and details Complainant’s involvement in film and TV production and other pursuits. On November 15, 2021, the Complainant filed a use-based trademark application with the USPTO for the Complainant’s mark RYAN KAVANAUGH, in connection with entertainment services, claiming first use in commerce date of May 18, 2004. The Complainant argues that the Respondent registered and uses the disputed Domain Name in bad faith to disrupt the Complainant’s entertainment services business and the Respondent is one of several “competitor websites for describing the Complainant’s services”. The Complainant further asserts that the Respondent is defaming the Complainant and tarnished its mark via “lies” on the Respondent’s Website.

The Respondent is a Swedish entity and agent for US based Ted Entertainment Inc., which produces the H3 Podcast, having criticized the Complainant. The disputed Domain Name was registered on October 16, 2021 and resolves to a website that features pejorative, critical statements about the Complainant and compares the Complainant to Harvey Weinstein, an American film producer convicted for sex crimes. In this regard, it displays wide information including banner, statement, articles, poll, news, video, game and more links. The Respondent contends the disputed Domain Name poses a question for discussion and commentary, and the words added in the disputed Domain Name are not clearly negative language, unlike the word “sucks” in cases cited by the Complainant. The Respondent also argues its use of the disputed Domain Name is for legitimate non-commercial or fair use without intent for commercial gain, namely, for a website containing protectable free speech and expression in the form of commentary about the Complainant.

Held: The Panel did not find any convincing evidence in the record that the Respondent’s Website is used for commercial gain or to mislead Internet users as to source or sponsorship. The Respondent’s Website is by all appearances a genuine “gripe site” rife with non-commercial criticism of the Complainant in various forms, including statements alleging the Complainant was involved in a drunk driving incident and a Ponzi scheme, pejorative statements criticizing the Complainant for supposedly stifling free speech rights exercised by his critics, and photographic composites of the Complainant and Harvey Weinstein, accompanied by statements that they are visually similar individuals (implying that in Respondent’s view, the Complainant is as objectionable as Harvey Weinstein). While the Panel takes no position on whether the Respondent’s disparagement of Complainant is warranted, the Respondent’s use of the disputed Domain Name for non-commercial criticism of the Complainant confers rights and legitimate interests in the disputed domain name under the Policy.

The Panel does not agree with Complainant’s expansive definition of “competitor”. A “competitor” is a commercial or business competitor or “a person who acts in opposition to another” for commercial gain, rather than legitimate noncommercial criticism. The Complainant complains that the Respondent’s Website receives twice as many viewers as the Complainant’s Website, but the Complainant is unable to show that such popularity resulted from the Respondent’s deceptive attempt to confuse users into believing the disputed Domain Name or Respondent’s Website are owned, sponsored, or endorsed by the Complainant. The Panel is unconvinced by the Complainant’s argument that users reaching the Respondent’s Website are necessarily those that would otherwise have visited the Complainant’s website. The Complainant has further not identified which statements made by the Respondent on the website are “lies” or evidenced that any content at the Respondent’s website is defamatory. However, it is beyond the Panel’s ability and the scope of the Policy to evaluate whether any content on the Respondent’s Website is defamatory, and such an evaluation is best left to a court of competent jurisdiction. Accordingly, the Complainant fails to meet his burden of demonstrating that the disputed domain name was registered and is being used in bad faith.

Complaint Denied

Complainants’ Counsel: Novian & Novian LLP, United States

Respondents’ Counsel: Fox Rothschild LLP, United States

source: https://www.internetcommerce.org/ud...an-swinson-and-more-ica-udrp-digest-vol-2-19/
 
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