Save-From.net: UDRP won by a business no longer active in the US market

The UDRP filed against the domain Save-From.net claims rights to the SAVEFROM mark, which was registered with the USPTO on April 5, 2016. The mark’s owner, Uliona Limited, is a Seychelles company. They operate from the domain name SaveFrom.net.

It makes sense to file a UDRP to protect such a trademark and at first things look obvious: Same keywords, same TLD, even the same-looking green arrow to “download.”

But there’s something interesting to note: The Complainant has terminated its services in the US in 2020, citing “strenuous attacks by certain copyright holders.

Section 45 of the Lanham Act states a trademark is considered abandoned when “its use has been discontinued with intent not to resume such use.” Source: The National Law Review.

In that sense, there’s a possibility that the Complainant has abandoned rights to their mark in the US by not continuing to provide these services.

The Respondent in this UDRP wasn’t happy with the filing and mentioned that the Complainant’s product is banned by YouTube:

Complainant can have no exclusive right to the SAVEFROM mark because both of those words are words of the English language.  It is purely a coincidence that the Complainant’s <savefrom.net> domain name and Respondent’s Domain Name look alike.  Respondent paid with its own money for the Domain Name when it purchased it from NameCheap, and the content on its website was obtained from and licensed by a third party.  Respondent’s web site is clearly different as it runs on a licensed code and offers more downloading options than Complainant.  The domain name ”savefrom.net” is banned worldwide for copyright infringement on the YouTube platform.  The only solution Complainant has left is to take Respondent’s Domain Name and do a 301 redirect to save its business.  Complainant made Respondent suffer ddos attacks to destroy Respondent’s website. 

Charles A. Kuechenmeister, sole panelist at the Forum (NAF,) did not seem to be moved by the Respondent’s statements and ordered the domain Save-From.net to be transferred to the Complainant.

ULIONA LIMITED v. Ettouil Oualid / Apk4play

Claim Number: FA2202001983297

PARTIES

Complainant is ULIONA LIMITED (“Complainant”), represented by Nadezhda Minakova, Virginia, USA. Respondent is Ettouil Oualid / Apk4play (“Respondent”), Morocco.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with NameCheap, Inc..

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Charles A. Kuechenmeister, Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 4, 2022; the Forum received payment on February 4, 2022.

On February 7, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the domain name (the Domain Name) is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 1, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@save-from.net. Also on February 9, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on February 28, 2022.

On or about March 1, 2022 the Forum received a number of communications from Respondent which collectively are treated as an Additional Submission and considered by the Panel.

On March 4, 2022 the Forum received an email from Complainant reiterating and restating the arguments made in its Complaint.

On March 8, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant provides services which allow users of its webpage to download media files. It has rights in the SAVEFROM mark based upon its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s Domain Name is confusingly similar to Complainant’s mark because Respondent uses it to impersonate Complainant and offer the same types of products and services as Complainant.

Respondent has no rights or legitimate interests in the Domain Name. Complainant has not authorized Respondent to use its SAVEFROM mark, Respondent has not been commonly known by the Domain Name, and it is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but is instead using the Domain Name to impersonate and compete with Complainant.

Respondent registered and uses the Domain Name in bad faith. It is attempting for commercial gain to attract Internet users to its web site by causing confusion as to the source, sponsorship, affiliation or endorsement of its web site, it is attempting to disrupt Complainant’s business, and it registered the Domain Name with actual or constructive knowledge of Complainant and its rights in the SAVEFROM mark.

B. Respondent

Complainant can have no exclusive right to the SAVEFROM mark because both of those words are words of the English language. It is purely a coincidence that the Complainant’s domain name and Respondent’s Domain Name look alike. Respondent paid with its own money for the Domain Name when it purchased it from NameCheap, and the content on its website was obtained from and licensed by a third party. Respondent’s web site is clearly different as it runs on a licensed code and offers more downloading options than Complainant. The domain name ”savefrom.net” is banned worldwide for copyright infringement on the YouTube platform. The only solution Complainant has left is to take Respondent’s Domain Name and do a 301 redirect to save its business. Complainant made Respondent suffer ddos attacks to destroy Respondent’s website.

FINDINGS

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) the respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The Panel finds as follows with respect to the matters at issue in this proceeding:

Identical and/or Confusingly Similar
The SAVEFROM mark was registered with the USPTO (Reg. No. 4,931,103) on April 5, 2016 (TESS report submitted as Complaint Exhibit A). Complainant’s registration of its SAVEFROM mark with the USPTO establishes it rights in that mark for the purposes of Policy ¶ 4(a)(i). Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Respondent argues that since Complainant’s mark is composed of common generic words of the English language Complainant cannot claim the exclusive right to those words, but the great weight of UDRP decisions confirms that registration of a mark on a national register such as the USPTO prima facie satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 1.2. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, Case No. D2014-0657 (WIPO July 90, 2014) (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark VOGUE around the world. For example: U.S. trademark registration No. 69530, registered on June 16, 1908.”).

Respondent’s domain name is confusingly similar to Complainant’s SAVEFROM mark. It incorporates the entire mark, merely inserting a hyphen between the words “save” and “from,” and adding the “.net” gTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis), Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the change described above, Complainant’s mark is clearly recognizable within the Domain Name. Respondent even admits that the names do “look alike.”

For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the SAVEFROM mark, in which Complainant has substantial and demonstrated rights.

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not authorized Respondent to use its SAVEFROM mark, (ii) Respondent has not been commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but is instead using the Domain Name to impersonate and compete with Complainant. These allegations are addressed as follows:

Complainant states that it has not authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).

The WHOIS information furnished to the Forum by the registrar lists “Ettouil Oualid / Apk4play” as the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no Response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).

Complaint Exhibit C is a screenshot of the web site resolving from the Domain Name. The site does not attempt to mimic or copy the content or general appearance of Complainant’s web site as shown in Complaint Exhibit B, but it does clearly purport to offer the same services as Complainant and is thus competing with Complainant. Moreover, Respondent admits that it is competing with Complainant, claiming that its web site is superior to that of Complainant in that it offers downloading content from some 43 sources where Complainant offers downloading from only 16. Using a confusingly similar domain name to offer services which compete with those of a complainant is neither a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(iii). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

Respondent submitted a written receipt from NameCheap verifying his purchase of the Domain Name in July 2021, and a notice from Complainant that it would no longer provide its services in the United States, but neither of the facts demonstrated by these documents serves to confer any right or legitimate interest in the Domain Name on behalf of Respondent for the purposes of the Policy. His acquisition of the Domain Name from NameCheap demonstrates only that he registered it. The mere fact of a respondent’s registering a domain name does not confer upon that person any right or legitimate interest in it for the purposes of Policy ¶¶ 4(a)(ii) or 4(c). It is well established that a respondent may not acquire rights or legitimate interests in a domain name if the domain name incorporates the protected trademark of another. Karsten Manufacturing Corp. v. New Ventures Services, FA 1705001729687 (Forum June 5, 2017) (“The Panel finds that when the disputed domain name is confusingly similar to a famous mark, Respondent cannot claim rights or legitimate interests in the disputed domain name.”), Caterpillar Inc. v. Stephen R. Vine, FA 0097097 (Forum June 22, 2001) (“Because the marks CAT and CATERPILLAR are fully incorporated into the domain names, it would be reasonable for Internet users to assume that the usedcatauction.com, usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com domain names are operated or sponsored by Complainant or an authorized CATERPILLAR dealer, when in fact they are not.”).

The evidence before the Panel demonstrates that Respondent has no rights or legitimate interests in the Domain Name.

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

(i) circumstances indicating that the respondent has 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.

The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by administrative panels over the years. First, Respondent is using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. This fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the

and domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)), Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).

Second, Complainant asserts that Respondent had constructive and actual knowledge of Complainant and its SAVEFROM mark when it registered the Domain Name. Arguments of bad faith based on constructive notice are generally rejected, as UDRP panels have most frequently declined to find bad faith based upon constructive knowledge. The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in July 2021. Complainant’s SAVEFROM mark was registered in 2016 and had been used in commerce at least as early as 2015 (TESS report submitted as Complaint Exhibit A shows filing date that year). Complainant’s mark is somewhat unique and whimsical in nature, yet Respondent copied it nearly verbatim into the Domain Name and uses it to offer the same services as those offered by Complainant. Respondent alleges that it selected the Domain Name because the words “save from internet” were the most requested keywords on search engines like Google, but it obviously searched Google for the “save from” combination because it found that that string with the “.com” gTLD was already taken. Further, for some reason Respondent did not include the word “internet” in the Domain Name even though it was included in the Google search results of most requested keywords. Respondent’s statement that the similarity between its Domain Name and Complainant’s mark is purely a coincidence is not consistent with the other relevant facts and is taken as not true. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin – This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).

For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the Domain Name be TRANSFERRED from Respondent to Complainant.

Charles A. Kuechenmeister, Panelist

March 15, 2022

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