September 20, 2021

Volume XI, Number 263

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September 17, 2021

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E-Cigarette Respondent’s Reverse Domain Name Hijacking Argument Goes Up In Smoke

Reverse domain name hijacking (“RDNH”) in domain name dispute cases is a finding that the complainant has abused the UDRP process by bringing its complaint in bad faith.  A common reason panels make such a finding is that the complainant should have known its complaint was fatally weak.  But recently, a UDRP panel denied a request for reverse domain name hijacking, even though the complainant failed to establish two of the required three elements needed to prove its case.  

Breazy, Inc. sells electronic cigarette products, and claims federally registered trademark rights to the JUICEDB mark dating back to May 14, 2019, and common-law rights dating back to 2013.  VR PRODUCTS I LLC registered the <ejuicedb.com> domain on May 19, 2016 and used it for an e-commerce electronic cigarette business.  Believing that VR’s domain and website infringed its trademark rights, Breazy filed a UDRP complaint.

To win a UDRP proceeding, a complainant must show:

  1. the domain name is confusingly similar to a mark in which the complainant has rights; 

  2. the respondent has no rights or legitimate interests in the domain name; and

  3. the domain was registered and is being used in bad faith.

Despite the evidence of Breazy’s registered rights for JUICEDB and the fact that the domain name added only the letter “e” to it, VR argued Breazy failed the first element.  According to VR, Breazy could have no rights in the JUICEDB mark because it was “nothing more than a combination of common terms [“juice” and “db” for “database”] that merely describe the activities conducted at the domain.”  Further, the domain was not confusingly similar to JUICEDB, VR argued, because even though it differed by only one letter, “that letter makes all the difference.” 

The Panel found both arguments “frivolous.”  Citing the Supreme Court’s recent Booking.com case, the Panel noted that marks “comprised of common, descriptive terms may become registered trademarks if the mark as a whole is perceived by consumers as indicating source.”  Similarly, Respondent’s argument regarding confusingly similarity was “inconsistent with two decades of decisions under the Policy.”

Even so, the Panel held that VR had established both a legitimate interest in the domain name and that it had not registered it in bad faith.  VR argued that “ejuice” was a term of art in the electronic cigarette industry and that “db” was a common abbreviation for “database.”  The Panel agreed.  Breazy’s own website referenced e-cigarette brands such as “Paper Street eJuice,” “Island Paradise eJuice,” and “White Rabbit eJuice,” and VR submitted evidence of other domain names using “db” to stand for “database.”  Also, before Breazy filed its complaint, VR’s website contained the phrase “e-liquid ‘database,’” which offered some credence to its argument that it chose the domain to describe its online business.

The Panel further credited VR’s argument that it had not known of Breazy’s trademark rights before acquiring the domain name.  According to the Panel, Breazy had not “adduced sufficient evidence of the renown of its mark [in 2016 when VR acquired the domain] to support such an inference.”  Especially compelling to the Panel was the fact that Complainant’s predecessor had not even applied to register the JUICEDB mark by that time. 

Because VR had not registered the domain in bad faith, the Panel did not address whether VR had used it in bad faith.  Though Breazy forcefully argued that VR’s website infringed Breazy’s trademarks, because VR had not registered the domain in bad faith, that question was “one for the courts, not this Panel.”

Finally, the Panel rejected VR’s request for reverse domain name hijacking (RDNH).  Breazy’s case was not so weak, the Panel held, that filing its complaint was an act of bad faith.  Further, according to the Panel, RDNH is an equitable remedy that “should only be available to a party that comes before a panel with clean hands.”  The Panel stated:

Given the Respondent’s frivolous arguments with respect to the Complainant’s trademark rights and with respect to the confusing similarity of the disputed domain name and the Complainant’s federally registered trademark, the Panel would not in any event consider it appropriate to enter a finding of Reverse Domain Name Hijacking in favor of the Respondent.

This case illustrates several points parties to a UDRP should remember:

  1. If a domain name consists of generic or potentially descriptive terms, some UDRP panelists want to see evidence that the domain registrant targeted the complainant’s brand specifically when registering it.

  2. Complainants must establish both bad faith registration and use of a domain name.  One without the other will not suffice.

  3. Frivolous arguments carry consequences for respondents, as well as complainants.

Given the finding on RDNH, UDRP complainants may find this case useful when dealing with respondents who seek RDNH, but make frivolous or unsubstantiated claims.

The case is Breazy Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / VR PRODUCTS I LLC, Case No. D2021-1486 (WIPO July 6, 2021).

 

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 217
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About this Author

Jonathan Uffelman Trademark, Domain Name, Internet Intellectual Property Attorney Finnegan, Henderson, Farabow, Garrett & Dunner, Law Firm
Domain Name Specialist

Jonathan Uffelman practices trademark, domain name, and Internet law. In particular, he works on a broad range of Internet and cyber law issues, including on-line brand enforcement and the Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings. Jonathan was the 2015 Burton Award Winner for Distinguished Legal Writing.

Jonathan handles a variety of on-line brand enforcement issues including gray-market goods, trademark and copyright infringement, and cybersquatting. He has successfully handled numerous UDRP cases on both the complainant...

202 408 4328
Margaret A. Esquenet Copyright & Trademark Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Washington, DC
Partner

Focusing on U.S. and global copyright, advertising, and trademark law, Margaret Esquenet brings a holistic, business-first approach to legal issues. Advising clients across industries—from consumer goods and media companies to tech firms and pharmaceutical manufacturers—she provides legal counsel across all media, in all facets of branding, advertising, and marketing. 

In addition to an active licensing and counseling practice, Margaret serves as first chair in federal, state, and administrative TTAB litigations, both advocating for clients’ creative efforts and defending them...

202-408-4007
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