Background
The Complainant was Structure Cellars, LLC, a company established in 2011 operating a wine club and tasting room in Seattle. It had two trade mark applications pending in the United States for HOUSE OF PAGNE and THE HOUSE OF PAGNE – HIP HOP BUBBLE BAR and claimed first use in commerce in 2019 for the first one and an intent to use the second one.
The Respondent was Carolyn Holt, an individual who claimed to have worked with the Complainant in 2019 in developing a business idea for a hip-hop themed Champagne bar. The Complainant referred to the Respondent only as a “former work for hire.” No further information regarding any prior relationship between the parties was disclosed.
The disputed domain name was <houseofpagne.com> (the "Domain Name"), registered on 25 May 2019. At the time of filing, the Domain Name was resolving to a website advertising the Respondent’s Champagne tasting events and purchasing promotions. The Complainant was operating a website available at www.structurewines.com, without any reference to the House of Pagne Champagne bar or any related mark.
The parties were not represented by legal counsel, and neither of them submitted any supporting documentation defining their business relationship or the arrangements for obtaining and using the Domain Name.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):
(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identity / similarity
With regard to the first requirement, the question was whether the complainant had any trademark rights in the term "House of Pagne", as it had only pending applications in the United States.
As stated in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
"It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name."
In the present case, the Complainant claimed that it had "legal trademarks". The Respondent argued that she registered the Domain Name before the Complainant acquired any trade mark rights and in anticipation of a business arrangement with the Complainant, from which the Complainant then withdrew.
The Panel noted that one of the applications was filed on the basis of an intent to use the mark in the future, with no declaration of use yet filed with the United States Patent and Trademark Office (USPTO). The other application was published for opposition a few weeks ago after preliminary examination, and the USPTO database showed that the deadline for filing opposition had been extended at the request of a third party opponent. The Panel underlined that, in the absence of registered trade mark rights, a UDRP may be grounded on an unregistered, common law trade mark with sufficient evidence that the mark had acquired distinctiveness in accordance with section 1.3 of the WIPO Overview 3.0.
In the case at hand, it appeared that the Complainant’s Champagne bar opened in September 2019 (one of the trademark applications claimed first use of the mark in commerce in August 2019), and a corresponding trade name was registered in October 2019. Considering that (i) such facts were quite recent, (ii) the Complainant had not filed any evidence of advertising, sales, publicity, or media recognition since then and (iii) there was no evidence that the “House of Pagne” was currently advertised online or mentioned on the Complainant’s website, the Panel found that there was no sufficient basis for finding common law protection for the asserted marks.
The Panel thus found that the Complainant had failed to establish that the Domain Name was identical or confusingly similar to a trademark or service mark in which the Complainant had rights and the complaint failed on the first requirement.
Given this, the Panel did not need to address the other two requirements. However, it deemed appropriate to note that the Complainant did not launch a business until at least four months after the Respondent registered the Domain Name, so it would have required evidence supporting an inference of premeditated targeting of an anticipated trade mark. However in the Panel's view, the Complainant had failed to provide adequate evidence of the relationship between the parties and the evolution of the Complainant’s business plans.
"Reverse Domain Name Hijacking" (RDNH)
Finally, the Panel also considered whether a finding of "Reverse Domain Name Hijacking" (RDNH), defined in paragraph 1 of the UDRP Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name", was appropriate.
As stated in section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
"[…] Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence."
In the present case, the Panel noted that the Complainant had trademark applications, not registrations, and it would need proof to establish common law rights. In addition, the Complainant had not submitted any claims or documents establishing its relationship with the Respondent nor did it address the issue that its business was launched months after the Respondent registered the Domain Name. In the Panel's opinion, the Complainant should not have pursued a remedy designed only to protect trade mark rights when it was not prepared to prove that it had such rights. The Panel therefore made a finding of RDNH.
Comment
This decision is a reminder that it is crucial for complainants to prove that they have trademark rights and that applications for trademarks are insufficient to satisfy the first element of the test. In order to satisfy the first requirement, complainants without registered trade mark rights need to demonstrate that they have acquired unregistered or common law rights.
Authored by Anchovy News Team
