In a very recent case before the ADR Center of the Czech Arbitration Court (CAC), a 3 member Panel denied the Complaint in a claim for ICRM.COM. In the case of iEnterprises, Holdings, LLC v. Private Domain (Mira Holdings, Inc.), Case No. 103374, the Panel found that although the Complainant held a pre-existing trademark for ICRM, it was not exclusive nor famous enough to find bad faith registration or use and that the Respondent, a legitimate domain investor had the right to use it as it sees fit so long as it did not infringe upon the trademark.
As I represented the Respondent, here is the Decision of the Panel:
|Principal Reasons for the Decision|
|1. Identity or confusing similarity of the disputed domain name to the Complainant’s trademark (paragraph 4(a)(i) of the Policy)
The Panel finds that the disputed domain name is identical to the Complainant’s trademark. As a matter of fact, the disputed domain name reproduces the Complainant’s trademark entirely, without further elements.
Therefore, the Panel is satisfied that the first condition under the Policy is met.
2. Respondent’s lack of rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy).
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name because it is identical to the Complainant’s well-known trademark and the Respondent is using the disputed domain name to gain some economic advantage through pay-per-click links and through its possible sale for a valuable consideration.
The Panel does not share the Complainant’s view.
The Respondent has been successful in demonstrating that the 4-letter combination ICRM is not uniquely associated with the Complainant. ICRM can be the acronym of various wordings, and various ICRM trademarks and domain names peacefully coexist in the name of different owners. The Complainant itself implies that its trademark ICRM is the acronym of a generic wording, when it describes itself as a leading provider of “intelligent CRM solutions”.
Therefore, the ICRM acronym can reflect a wide range of uses and not only that of the Complainant’s trademark. The Complainant did not provide evidence of the fact that the Respondent is targeting the Complainant and/or its trademark through the registration and use of the disputed domain name.
Previous panels have recognized that the use of a domain name to host a page comprising pay-per-click links would be permissible where the domain name consists of an actual dictionary word or phrase and is used to host pay-per-click links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark. The same obviously applies to domain names consisting of acronyms, like in the subject matter. In the instant case, the links associated with the disputed domain names mostly refer to the principal meaning of the acronym CRM, which usually stands for “Customer Relationship Management” (and related words such as “software”, “salesforce”, etc.). None of the pay-per-click links appearing on the parking page of the disputed domain name refer to the Complainant or to its competitors.
The Respondent is a domain name investor, and it is a known fact that dictionary words and acronyms are generally considered valuable assets. Previous panels have also recognized this high inherent value (see, by way of example, WIPO Case No. D2018-0738, Dynamic Visual Technologies (Pty) Ltd. vs. Direct Privacy, Savvy Investments, LLC).
The Respondent bought the disputed domain name at an auction and did not approach the Complainant to speculate on the resale of the domain name. Rather, the Complainant tried to purchase the disputed domain name from the Respondent twice, but the Respondent considered its offer too low. Given the nature of the disputed domain name, and the fact that the Respondent does not appear to be trading off the Complainant or its trademark, the Panel considers that Respondent’s request for the sale of the disputed domain name amounts to a bona fide offering of goods and services.
In light of the foregoing, the Panel concludes that the Complainant has failed to demonstrate the Respondent’s lack of rights or legitimate interests in the disputed domain name.
3. Registration and use in bad faith (paragraph 4(a)(iii) of the Policy)
In view of the fact that the Complainant failed to prove that the Respondent lacks rights or legitimate interests in the disputed domain name, it would not be necessary to evaluate whether the Respondent acted in bad faith. Notwithstanding, for the sake of completeness, the Panel will also examine the third and last requirement under the Policy.
The Panel notes that there is no evidence in the file that could lead to conclude that the Respondent was aware of the Complainant’s trademark at the time of the registration of the disputed domain name. As also explained in paragraph 3.1.1. of the WIPO Overview on Selected UDRP Questions 3.0, the practice of registering domain names for subsequent resale (including for a profit), does not in itself support a claim of bad faith registration. Account should be taken of other circumstances of the case, such as the reputation of the Respondent’s trademark, the distinctive character of the disputed domain name, the use to which the domain name is put, and in general, any other circumstance that the Respondent’s intention was to profit or in any case draw an unfair advantage from the Complainant’s trademark.
In this matter, the Complainant asserts that its trademark is well-known. However, according to the Panel, the Complainant did not provide sufficient evidence of the reputation of its trademark. Furthermore, the disputed domain name consists of an acronym that is deprived of distinctive character: the ICRM acronym is not unequivocally associated with the Complainant and is subject to a wide range of interpretations and uses. Even the use that the Respondent has made of the disputed domain name does not support a finding of bad faith. As indicated above, the Respondent is not targeting the Complainant or its trademark, the pay-per-click links appearing on the relevant website do not refer to the Complainant or to any of its competitors, the Respondent never approached the Complainant to sell the disputed domain name and when the Complainant tried to purchase it, the Respondent made the counter-offer that it deemed appropriate for the type of domain name the Complaint was trying to acquire.
Consequently, the Panel believes that the Complainant has failed to prove that the disputed domain name had been registered and is being used in bad faith.
|For all the reasons stated above, the Complaint is||Rejected|
|and the disputed domain name(s) is (are) to be|
|Name||Angelica Lodigiani , Mgr. Barbora Donathová, LL.M. , The Hon. Neil Brown, QC|
|Date of Panel Decision||2021-01-15|