British company Take Note was acquired by Verbit in 2022, thus going international. The company provides high-quality transcription and captioning.
Through its acquisition of Take Note, Verbit owns the mark TAKE NOTE for “transcription services;” the mark was registered August 15, 2008.
Meanwhile, a small team of AI tech developers in the UK formed a company a mere two weeks after the acquisition of Take Note by Verbit, rolling out from the domain TakeNote.ai.
Verbit filed a UDRP to get that domain, after they reached out to the Respondent to acquire it. Having gawked at the asking price of $50,000 dollars, the company took the UDRP route, apparently.
In their Response, the Respondent claimed that he had never heard of Take Note before.
The sole panelist at the Forum (NAF) took note of all this:
While it may be unclear whether the disputed domain name was registered in bad faith, based on the discussion above on the issue of rights or legitimate interests, the Panel concludes that the disputed domain name is not being used in bad faith. In reaching this decision, the Panel finds significant the fact that Complainant has rebranded the takenote.co website as Verbit and that the term “take note” has at least some suggestive flavor vis-à-vis the services to be offered by Respondent.
Final decision: Deny transfer of the domain TakeNote.ai to the Complainant.
The domain transfer was denied.
Verbit, Inc. v. Registration Private / Domains By Proxy, LLC
Claim Number: FA2307002053081
PARTIESComplainant is Verbit, Inc. (“Complainant”), represented by Charles P. Guarino of Moser Taboada, New Jersey, USA. Respondent is Robin Paine, (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is takenote.ai, registered with 1API GmbH.
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.
Jeffrey M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 13, 2023; Forum received payment on July 13, 2023.
On July 17, 2023, 1API GmbH confirmed by e-mail to Forum that the takenote.ai domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 July 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2023, 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@takenote.ai. Also on July 17, 2023, 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 August 7, 2023.
On August 8, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey M. Samuels as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Verbit, Inc. is a technology company focused on AI-based transcription, speech recognition, and speech processing services to major companies, educational institutions, government agencies, and other organizations.
Complainant acquired Take Note Ltd, a company based in the United Kingdom, in March 2022. Take Note is a provider of transcription, captioning, and live note taking services catering to the market research, human resources, and corporate sectors. Take Note is the owner of United Kingdom Trademark Registration UK 00002469480 for the mark TAKE NOTE for “transcription services.” The mark was registered August 15, 2008.
The TAKE NOTE mark has been extensively promoted by Take Note, as well as by Verbit, to its target consumers through various forms of online media, including the Take Note website located at www.takenote.co.
Complainant submits that the disputed domain name, takenote.ai, is identical to the TAKE NOTE trademark. It notes that adding a ccTLD to a protected mark is generally insufficient to differentiate a disputed domain name from the mark.
Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name. It contends that, at the time of filing of the Complaint, Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant notes that the disputed domain name currently resolves to a single-page webpage purporting to offer “speech-to-text AI” transcription services. The site’s contact information consists of a web form and a general email box and a London street address. “Given the above, it appears likely that Respondent’s single-page website was quickly drawn together and posted to a near-identical domain (the Subject Domain takenote.ai versus the authentic Take Note’s takenote.co domain) in an attempt to fraudulently capitalize on Take Note’s fame and to create confusion in the wake of the Take Note acquisition, with the aim of inducing potential consumers to mistakenly assume that the site represented the authentic Take Note company. Such passing off is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of Respondent with Take Note (and by extension, Verbit as its successor-in-interest). Such misrepresentation and passing off cannot be considered use in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Polich ¶ 4 (c)(iii).” Further, Complainant adds, there is no evidence that Respondent has been commonly known by the disputed domain name.
With respect to the issue of “bad faith” registration and use, Complainant indicates that Respondent’s use and registration of the disputed domain name as a means of diverting prospective customers demonstrates Respondent’s bad faith activities. “Simply stated, users seeking services from Take Note (and/or Verbit) under the TAKE NOTE mark may become confused as to whether Take Note and/or Verbit is affiliated with the Subject Domain.” Complainant points out that Respondent registered the disputed domain name on March 19, 2023, shortly after the acquisition of Take Note by Complainant Verbit. Inasmuch as Respondent is located within the UK, which is also the headquarters of Take Note and the epicenter of its operations, Complainant alleges that it may be inferred, based on the notoriety of the TAKE NOTE mark and Respondent’s use of the disputed domain name, that Respondent had knowledge of Take Note’s and, by extension, Complainant’s rights in the TAKE NOTE mark at the time the disputed domain name was registered, and find bad faith under Policy ¶ 4(a)(iii).
B. Respondent
A timely Response was submitted by Robin Paine, who the Panel considers the real party in interest. The Response indicates that “I am a private individual, based in the UK, who is currently building an AI voice transcription engine and plan to use the takenote.ai domain name for the same.
According to the Response, there is a team of three people working on the project, the core AI transcription engine has been built and tested by two large companies (Sky TV and Equiniti), the main website has been built and a new beta website is in development with very high quality graphics and animation, and the project has been running for around a year and is scheduled to launch in the third quarter of 2023.
The Response notes that the takenote.co website redirects to Verbit, where it clearly states that it has been “rebranded.” The Response also indicates that Complainant submitted no evidence that it owns the TAKE NOTE trademark, that Take Note has abandoned the mark, that Take Note was not an AI company – they only do people-based manual translation – and that if the takenote.ai domain name was so important to Complainant, it should have registered it at the time it acquired Take Note. The Response further indicates that there are many other companies that use the Take Note name and that “take note” is an entry in the Oxford English Dictionary.
Mr. Paine points out that he was invited by Complainant to make an offer to sell the disputed domain name, that he was willing to accept $50,000 to sell the disputed domain name, and that he has not received a reply from Complainant.
Finally, Mr. Paine asserts that “I didn’t even know about Verbit buying a company called TakeNote in the UK.”
FINDINGS
The Panel finds that: (1) the disputed domain name is identical or confusingly similar to the TAKE NOTE mark; (2) Complainant has rights in the TAKE NOTE mark; (3) Complainant failed to sustain its burden of proof on the issue of rights or legitimate interests; and (4) the disputed domain name is not being used in bad faith.
DISCUSSION
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Identical and/or Confusingly Similar
The Panel finds that the disputed domain name, for all intents and purposes, is identical to the TAKE NOTE trademark. As Complainant points out, adding a top-level domain to a domain name that is otherwise identical to the mark in issue does not avoid a finding that the disputed domain name is identical or confusingly similar to the asserted mark.
The more difficult question under this element of the Policy is whether Complainant Verbit, Inc. has rights in the TAKE NOTE trademark. As alleged in the Complaint and as established by the evidence, the TAKE NOTE trademark is registered in the UK in the name of Take Note Ltd. Respondent notes that no evidence has been presented that the mark and registration have been assigned to Complainant, Verbit, Inc., which, as set forth in the caption of the Complaint, is the successor-in-interest to Take Note Ltd. However, Exhibit A to the Complaint indicates that Take Note Ltd. is a subsidiary of Complainant. Under such circumstances, the Panel concludes that Complainant has rights in the TAKE NOTE mark.
As stated in Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796, “It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark. See for example Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 where Complainant’s grand-parent corporation had a long established U.S. trademark registration for the mark for vacuum cleaners.” See BSH Home Appliances Corp. v. Michael Stanley/Michael Sipo, WIPO Case No. D2014-1433. See, also, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796 (“The Panel concludes that Grupo Televisa, S.A. has rights in the service marks in question which are registered by its wholly owned subsidiaries.”)
Respondent contends that the TAKE NOTE mark has been abandoned and points in support to the statement on the takenote.co website that “Take Note website is now rebranded as Verbit.” The Panel notes, however, that such statement does not indicate that all use of the TAKE NOTE mark is to be discontinued, merely that the website has been rebranded. Noting that the issue of abandonment results in a forfeiture of rights, the Panel determines that such issue is not appropriate for resolution under the expedited procedures of the UDRP and thus, declines to find that the TAKE NOTE mark has been abandoned.
Rights or Legitimate Interests
The Panel finds that, prior to commencement of the instant dispute, Respondent has made demonstrable preparations to use the disputed domain name. Respondent has presented evidence of efforts to launch a website to be used in connection with an AI transcription product and apparently possesses the skills and talents necessary to succeed.
Whether such “use” may be considered use of the disputed domain name in connection with a bona fide offering of goods or services is a more difficult issue. On the one hand, Complainant asserts that the TAKE NOTE mark has been extensively promoted by Take Note and that Respondent is located within the UK, which is also the longstanding headquarters of Take Note. Thus, it is reasonable to assume that Respondent was aware of Take Note and of the TAKE NOTE mark prior to the time he registered the disputed domain name, which occurred shortly after the acquisition of Take Note by Verbit. This assumption is bolstered by the fact that Respondent and Take Note are involved in providing, or seeking to provide, similar services.
On the other hand, Respondent points to the fact that the takenote.co website redirects to Verbit, and clearly states that it has been rebranded as Verbit, that many other companies use the “Take Note” name, and that “take note” has a dictionary definition.
It is unclear whether Respondent was aware of the rebranding of the Take Note website at the time of registration of the disputed domain name. Respondent indicates that he did not know of Verbit’s acquisition of Take Note but he obviously became of aware of such fact at some point in time. And, while the Panel declines to find that the TAKE NOTE mark has been abandoned, Respondent’s not unreasonable belief that the mark was abandoned may be taken into consideration, as may be the fact that “take note” has a dictionary definition that relates, to some extent, to the products in issue. (As set forth in the Complaint, Take Note is engaged, in part, in live “note taking” services.)
In view of the foregoing, the Panel is unable to conclude that the preponderance of evidence supports a finding that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
While it may be unclear whether the disputed domain name was registered in bad faith, based on the discussion above on the issue of rights or legitimate interests, the Panel concludes that the disputed domain name is not being used in bad faith. In reaching this decision, the Panel finds significant the fact that Complainant has rebranded the takenote.co website as Verbit and that the term “take note” has at least some suggestive flavor vis-à-vis the services to be offered by Respondent.
In reaching its decision in this matter, the Panel is mindful of the fact that the UDRP is designed for only a “small, special class of disputes. Except in cases of `abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks…, the adopted policy leaves the resolution of disputes to the courts….” See Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, Oct. 25, 1999, ¶4.1c. Based upon its review of the case file, the Panel is not convinced that the instant dispute warrants transfer of the disputed domain name to Complainant under the UDRP.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the takenote.ai domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: August 21, 2023
