The majority of the panel applies an interesting interpretation to the UDRP.
The World Intellectual Property Organization (WIPO) has published (pdf) an interesting UDRP decision for victron.com.
The majority of the panel ruled in favor of plaintiff Victron Energy BV, which filed a complaint against domain investor Sarvix, Inc.
Sarvix undertook research before buying the domain for $7,000 in an expired domain auction in 2020. To summarize, Sarvix says it:
- Checked the Wayback machine and discovered that the domain had been used by Victron Electronics of California since 1993 when the company went out of business and then let the domain expire
- USPTO search and discovery of existing and expired trademarks for Victron
- I checked Google Translate and found that Victron in Latin translated into conqueror
Based on this, Sarvix says he registered the domain knowing that it is a dictionary word (in Latin) used by many companies.
The majority of the WIPO panel questioned the Latin meaning of victron, noting that other Latin dictionaries do not show this meaning. And even though it is Latin, the majority noted that it is not a common Latin word.
This therefore led the panel to consider that if the word is not a dictionary term but is used by many companies, does this give the investor of the domain the right to register the domain if he does not target only one of the companies? It said:
As discussed in detail in Section 6.C below, the majority of the Panel finds it more likely than not that Respondent registered and used the disputed domain name for the purpose of profiting from it on the based on the goodwill of the Complainant. and other entities that hold trademark registrations for VICTRON.
This leads to an interesting branch. If multiple companies have a registered trademark for a term, this creates a “first to file a UDRP” incentive in which the first of those trademark holders to file a UDRP could potentially win the domain at the expense of other trademark holders.
Panelist Jeffrey Neuman dissented. He noted that Section 4(b) of the policy states that for the purposes of satisfying that the domain name was registered and used in bad faith, the following must be proof of registration and use of a domain name in bad faith:
(i) circumstances indicating that you registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of such plaintiff, for valuable consideration in addition to your documented disbursements directly related to the domain name; (emphasis added)
Plaintiff’s bad faith targeting evidence consists only of (i) Respondent knew that Plaintiff had rights to the VICTRON trademark, (ii) immediately put the domain name up for sale, and (iii) when Plaintiff approached the Respondent, the Respondent asked for five numbers. No further communication took place between the Complainant and the Respondent. The plaintiff filed this action. These facts alone are not sufficient to establish the targeting required under paragraph 4(b)(i) of the Policy. Yet the majority concluded that there was such targeting, stating “it is more likely than not that the defendant registered and used the disputed domain name for the purpose of profiting from it on the basis of goodwill of the plaintiff or any of the other entities that hold trademark registrations for VICTRON. In other words, even though Respondent did not specifically have Plaintiff in mind but another rights holder when registering the abandoned domain name, nevertheless the registration must have been in bad faith. This is not consistent with the consensus view of the UDRP.
When domain investors buy domains, they often check trademark databases for instances of the term. If there are a lot of holders of different marks, they consider that as proof that the term is valuable. Of course, that’s assuming it’s generic in nature.
It seems that much of this matter hinges on whether victron is a Latin term or not. Neuman questions the panel’s independent research on this issue:
In evaluating Respondent’s intent in registering the disputed domain name, the Panel shall not substitute its own research for that which Respondent conducted prior to purchasing the domain and for which it provides as evidence attached to its Response. Even if Google Translate is wrong, that does not change the fact that the Respondent, when registering the disputed domain name, believed that Google Translate was correct. The respondent’s state of mind, when it can be shown, is essential evidence that cannot be ignored.
Neuman summarized why he thinks the majority got it wrong:
In summary, the majority found registration and use in bad faith based on a new generalized targeting standard to conclude that the defendant must have acquired the disputed domain name to “extract profits” from the plaintiff or of another entity that owns a trademark. But the standard is not a generalized standard, but a very specific standard where the Complainant must prove that the Respondent registered the disputed domain name specifically to sell this name to the Complainant. However, there is simply no evidence in the record establishing this.
One thing missing from the Respondent’s defense is whether he Googled the term. The Complainant attached a Google search showing that the Complainant dominates all results. I see the same thing when I search.
There is another problem in this UDRP. It appears that the Complainant attempted to mislead the panel into believing that the owner of the domain had contacted the Complainant, offering the domain for sale. But this was in response to the complainant’s request regarding the purchase of the domain.
The majority of the panel had this to say about it:
According to the majority of the Committee, hanging a “for sale” sign and then receiving a request can hardly be described as an unsolicited approach. In its own words in response to Complainant’s question on price, Respondent was “looking for offers in the 5-digit range for this domain name”. In these circumstances, the Respondent cannot present himself as innocently minding his own business until an unsolicited offer is made.
True, the domain owner had put the domain up for sale. But that’s very different from contacting a complainant about buying a domain, and it’s important that complainants don’t mislead the panels into thinking this happened.
So what does this mean for domain investors? Many words are registered trademarks for specific uses and may be used by many companies. These may be OK to register. But if the word isn’t in the dictionary, or if a company has seemingly “dominant” brand ownership, you need to be careful.
Assen Alexiev and Warick Rothnie made up the majority of the panel. Leopold Meijnen Oosterbaan represented the complainant. Howard M. Neu represented the Respondent.