The Importance of Trademark Chronology
WEX Inc. v. Tom Soulanille, NAF Claim Number: FA2204001991413
Panelists: The Honorable Neil Anthony Brown QC, (Chair), Mr. Gerald M. Levine and Professor David E. Sorkin
Brief Facts: The US Complainant provides financial technology services across various industry sectors and claims use of the WEX trademark since at least as early as 1989. It owns several registered trademarks for WEX with USPTO, the first of which was registered on January 19, 1999. The Respondent registered the disputed Domain Name on June 25, 1994 in his capacity as registered agent of a company that developed software known as “WEX Net”. The said other Company acquired the common law rights to WEX from Dmitri Kondratiev of Russia on June 26, 1997 and applied to the USPTO on July 15, 1997 for a trademark for WEX although it was subsequently abandoned.
The Complainant alleges that the Respondent’s registration and use of the disputed Domain Name are in bad faith because the Respondent registered the Domain Name five years after the Complainant commenced use of the WEX mark and passively held the Domain Name for 28 years. The Respondent argues that the Complainant cannot rely on the registered trademark as it did not apply for its registered trademark until November 12, 1997, and it must show that it had common law trademark rights to WEX by the time the Respondent registered the disputed Domain Name in 1994. On March 26, 2018, the Complainant offered to buy the Domain Name from the Respondent.
Held: The Complainant’s case fails for lack of evidence as it did not show that it had any trademark rights at the time the Respondent registered the disputed Domain Name. In fact, the evidence is that until 2012 – 18 years after the Domain Name was registered – the name of the Complainant was not WEX, but “Wright Express” and that it changed its name to WEX only in 2012. The Complainant is still driven to argue that the Respondent registered the disputed Domain Name in 1994 because of the Complainant’s trademark registered in 1999. The Respondent could hardly have been influenced in registering a domain name by a trademark that was not itself registered until many years after the Domain Name was registered. It was of course always open to the Complainant to show that it had common law or unregistered trademark rights in 1994 but failed to do so.
The Company of which the Respondent was a registered agent had a right to register and use the Domain Name as a legitimate commercial means of furthering its objective and it had taken concrete steps with authorities such as the USPTO to establish a legal foundation for its actions. Therefore, the Respondent by virtue of its being the agent of the other Company for this project, had and has a right to register and retain the disputed Domain Name and a legitimate interest in it.
RDNH: The Complainant not only failed to prove its case but omitted substantial matters of evidence of which it should have been aware and also appreciated that it had an obligation to address. Some of its evidence was misleading as well. Any proper assessment of the case should have resulted in cogent evidence being assembled to establish basic issues but that was clearly not done. Instead, the Respondent was put to the time and cost of defending a case that had little, if any merit. Moreover, the case is a classic Plan B case, where an overoptimistic Complainant tries to buy a domain name, is rebuffed and then decides to harass the Domain Name holder by making unmeritorious allegations against him.
Complaint Denied (RDNH)
Complainants’ Counsel: Matthew D. Stein of Pierce Atwood LLP, Maine, USA
Respondents’ Counsel: Benjamin S. White of IPLA, LLP, California, USA
Case Comment by ICA General Counsel, Zak Muscovitch:
When assessing the first part of the three-part UDRP test, most Panels will not inquire into whether the Complainant had trademark rights at the time that the disputed domain name was registered. Rather, they will generally find that the first test has been met by merely having any trademark rights at any time prior to the proceeding and will consider this sufficient “standing” under the UDRP. If those trademark rights turn out to have been acquired subsequent to the domain name’s registration date, then a Panel will generally find that bad faith registration was chronologically impossible and dismiss the claim under the third part of the three-part UDRP test.
Notably in this case however, the majority of the Panel did not take the usual approach. The Panel noted that the Complainant could have simply argued that it ‘has rights in a trademark and that the Domain Name is confusingly similar to that trademark’, but also noted that such an argument would not have “achieved anything” since the Complainant would not be able to show that the Domain Name had been registered in bad faith because the Domain Name was registered prior to the Complainant’s trademark rights. Accordingly, rather than wait to determine this issue under the third part of the test, the majority of the Panel made a finding of that the Domain Name was not identical or confusingly similar to a trademark in which the Complainant had rights, based upon the Complainant not having those rights at the material time, i.e. the date of the Domain Name registration.
Since the earliest days of the UDRP, most Panels treat the first part of the three-part UDRP test as a mere “entry” and choose to make the material determinations under the third or sometimes the second part of the test (see for example, Grow.net, Inc. v. Walter Long d/b/a Domains.Com d/b/a smile.com, WIPO Case No. D2001-0902; “The Policy under Paragraph 4(a)(i) does not require that the trademark be registered prior to the domain name. This may be relevant to the assessment of bad faith, but the issue under this element is whether the Complainant has rights as of the time of the Complaint”). On one hand, a literal interpretation of Paragraph 4(a)(i) of the Policy appears to require that a Complainant only have current trademark rights at the time that the Complaint is filed. On the other hand, where a Complainant’s trademark rights clearly arose subsequent to the Domain Name, it achieves little to relegate the evaluation of those rights vis à vis the domain name registration date, to the third part of the three-part test when it can be dealt with immediately under the first part. After all, ‘so what’ if the Complainant has rights when it filed the Complaint when the Complaint is based upon the allegation that a respondent targeted trademark rights which did not even exist at the time of domain name registration?
Nevertheless, a consistent approach to the application of the UDRP is generally desirable and accordingly there is something to be said for adopting the generally accepted consensus view amongst panelists, namely that this issue should be determined under the third part of the test rather than the first. On the other hand, there is also something to be said for reconsidering whether the current consensus approach unnecessarily relegates the crucial question to the third part of the test when it could be immediately addressed under the first.
The entire Panel (without dissent on this issue) takes another unusual, though arguably meritorious approach to the second part of the three-part test. Noting that as of the date of Domain Name registration, the Complainant had no trademark rights, the Panel stated that it is an “impossible task” for the Complainant to prove that prima facie, the Respondent lacked any right or legitimate interest in the Domain Name, because the Respondent “had every right to register the domain name as it was the first in time to come to the table and was clearly not copying another party, as no other party had registered a similar domain name”. This approach is consistent with the approach previously taken in Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No: FA1002001309793, where the Panel stated that without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is simply no foundation to conclude that a respondent has no rights in the domain name. Logically, a complainant cannot meet this initial threshold of showing that a respondent has no rights, if the Complainant itself had no demonstrable rights at the time of registration. Indeed, upon registration of the Domain Name, the only person who had any rights or legitimate interest in the Domain Name was the Respondent since Complainant had no trademark rights at that time.
The English Language is Shared by all Man-kind
Man Marken GmbH v. Gavinji, WIPO Case No. D2022-0973
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant manufactures and distributes a wide range of commercial vehicles and engineering goods. It owns a number of registered trademarks including a German registered trademark, registered since 1989. A 2019 decision of the EUIPO brought by the Complainant group acknowledged evidence indicating the Complainant group had been using the MAN mark for more than 100 years and is very well-known. The disputed Domain Name was registered on September 14, 2016 and resolves to a website promoting a company “Man Energy” based in the UAE providing services related to chemicals, green energy design, engineering and project consultancy. The Respondent argues that the Complainant was known as “MAN Diesel & Turbo” until 2018 and adopted its current name “Man Energy Solutions” around June 2018.
The Respondent further provides evidence that it owned a UAE company under the name Malik Al Nejoum General Trading LLC, which was granted a Trading Licence on October 19, 2011. The company registered the domain name <manchemical .com> in September 2011 and renamed another 2004 company, as Man Chemical LLC. The Respondent also registered a third company in the UAE, Man Energy LLC, in 2016 to expand operations from the petrochemical sector in which Man Chemical LLC was operating into the energy sector more generally including in particular solar power projects and water treatment projects.
Held: The Complainant and its corporate group have been using the MAN trademark for many years prior to any of the Respondent’s companies. Nonetheless, “man” is a dictionary term and, as the Respondent’s first company illustrates, can be an acronym for many different things. The registration of the domain names (including the disputed Domain Name) and the registration or licensing of the Respondent companies under their respective names and the use of the MAN logo all occurred before the Complainant adopted the name MAN Energy. The Respondent’s companies appear to be using their domain names, including the disputed Domain Name, in different sectors of trade to the Complainant. Moreover, as the Complainant adopted its current name in June 2018, therefore, it cannot be accepted that the Respondent registered the disputed Domain Name to take advantage of the Complainant’s current name. Bearing in mind that the proceedings under the Policy are conducted on the papers, these materials provided in the Response are sufficient to establish the legitimate interests on the part of the Respondent. Therefore, the Complaint must fail.
Complainants’ Counsel: RDP Roehl Dehm & Partner Rechtsanwaelte mbB, Germany
Respondents’ Counsel: Internally Represented
The Vocabulary of the English Language is Common Property
Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, NAF Claim Number: FA2204001991732
Panelist: Mr. Bruce E. Meyerson
Brief Facts: The Complainant operates a full-service financial company providing insurance, investment, and retirement products. The Complainant asserts common law rights in the LIFEBENEFITS mark through long-term continuous use and ownership of an identical domain name. The disputed Domain Name, registered on 19 November 2021, is parked to host monetized hyperlinks to various third-party websites and offered for sale as well. The Complainant contends that the Respondent is a serial cyber squatter and engaged in typo-squatting to increase traffic to the domain and distribute malware to unsuspecting Internet users. The Respondent did not file a response.
Held: The Complainant provides evidence of its longstanding use of the LIFEBENEFITS mark, along with ownership of an identical domain name, and media recognition. As the undisputed record supports Complainant’s assertion of secondary meaning for the LIFEBENEFITS mark, the Panel holds that the Complainant owns common law rights in the LIFEBENEFITS mark within the meaning of Policy. Using a domain name incorporating the mark of another for this purpose does not qualify as either a bona fide offer or a legitimate non-commercial or fair use under Policy. The registration of an infringing domain name with actual knowledge of another’s rights in a mark is sufficient to demonstrate bad faith and can be shown by the notoriety of a complainant’s mark and a respondent’s use of the Domain Name. The Complainant provides evidence of the secondary nature of the LIFEBENEFITS mark and the Respondent’s use of the disputed Domain Name to collect click-through revenue from hyperlinks to unrelated third-parties. Thus, the Panel finds bad faith under the Policy.
Complainants’ Counsel: William Schultz of Merchant & Gould, P.C., Minnesota, USA
Respondents’ Counsel: No Response
Comments by ICA General Counsel Mr Zak Muscovitch:
In this case, the Panel accepted the Complainant’s contention that the Complainant enjoyed common law trademark rights in the term, LIFEBENEFITS. Interestingly, from the decision is it not apparent whether the Complainant disclosed to the Panel that its application for trademark registration with the USPTO was the subject of a refusal on the basis that LIFEBENEFITS was “merely descriptive”. The USPTO stated in making a final refusal and subsequently maintaining that refusal, that the application was “refused because the applied-for mark merely describes an ingredient, characteristic, function, purpose or use of the specified services”. The specified services were “Providing an internet website portal offering information in the field of financial services”. The USPTO noted in particular, that “life benefits” is a “commonly used to describe employee benefits often related to life, medical, and disability”, and cited several examples of its common descriptive use.
In this case, the Panel correctly noted that common law trademark rights are permitted under the Policy and even correctly noted that “secondary meaning” is required to be demonstrated. Nevertheless, the Panel based its finding of common law trademark rights in this case on mere “longstanding use of the LIFEBENEFITS mark, along with ownership of an identical domain name, and media recognition”. Ordinarily however, such evidence would likely be insufficient when it comes to a descriptive term such as “life benefits”, in contrast to the case cited by the Panel in support of its finding and which involved a particularly distinctive term, MARQUETTE GOLF CLUB, and which was the subject of “intense efforts to advertise and promote the golf club” (see Marquette Golf Club v. Al Perkins, Forum Number: FA1706001738263, July 27, 2017<marquettegolfclub.com>).
When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue. Panels should be wary of easily conferring common law rights upon complainants where the claimed trademark comprises what appears to be a mere common descriptive term. In such cases, the conferral of common law rights upon a merely descriptive term may serve to unjustifiably provide standing to a complainant under the Policy, when in reality the complainant is just one of many users of a common descriptive term in the marketplace. As Lord Herschell in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks,  AA.C. 571 at p. 580:
“The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using it for purposes of description, a word which has reference to the character of quality of the goods.”
This case also raises the issue of to what extent a Complainant is required to disclose such unhelpful facts as a USPTO refusal for the very mark which it alleges is the subject of trademark rights. The UDRP Rules require a Complainant to certify that “the information contained in [the] Complaint is to the best of Complainant’s knowledge complete and accurate”. If the Complainant in this case did not disclose to the Panel that its claimed trademark had been refused by the USPTO, the Complainant may have breached its certification of a “complete and accurate” Complaint and thereby deprived the Panel of crucial facts which could have altered the outcome of this case.
see more @ https://www.internetcommerce.org/ud...ry-is-shared-by-all-ica-udrp-update-vol-2-21/