The UDRP is not a forum for trademark infringement

Background

The Complainant was Reshape Wealth, LLC, a financial management, advisory and investment company.  The Complainant was the owner of a United States trade mark in RESHAPE registered on 22 May 2018 for financial planning and wealth management services.

The Respondent was Vinay Menda, the managing partner of a venture capital firm by the name of Reshape Holdings LLC.  The company was created in November 2018 under a different name and this was changed to Reshape Holdings LLC in March 2019.

The Disputed Domain Name, <reshape.co>, was acquired by the Respondent in April 2019.  It resolved to a website promoting the services of Reshape Holdings LLC.

On 2 December 2019, the Complainant's attorney sent a cease and desist letter to various individuals at Reshape Holdings LLC regarding the use of the name and mark RESHAPE in connection with the financial services offered by the Respondent.  The Respondent's attorneys responded to the letter on 23 December 2019 rejecting the Complainant's contentions and demands.  

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under 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 limb, the Complainant alleged that it owned a trade mark for RESHAPE, in connection with financial services, which was well-known in the financial sector.  In reply, the Respondent argued that the RESHAPE mark was a weak descriptive mark as the word "reshape" was commonly used by many parties in the context of financial and investment services. 

The Panel underlined that the Respondent's argument about confusion in the trademark sense was misplaced in the context of the first element, which looked only at similarity under the Policy.  The Panel added that ownership of a trademark registration was generally sufficient evidence for the purpose of paragraph 4(a)(i) of the Policy.  In the present case, the Complainant had provided evidence of its trademark registration for RESHAPE; so the remaining question was whether the Disputed Domain Name was identical or confusingly similar to the Complainant's mark.  The Panel noted that the Disputed Domain Name was identical to the Complainant's RESHAPE mark as it fully and solely consisted of the RESHAPE mark in its entirety.  Therefore, the Panel found that the Complainant had satisfied the requirements of paragraph 4(a)(i).

Rights / legitimate interests

As far as the second requirement under the UDRP was concerned regarding the Respondent's rights or legitimate interests, the Complainant asserted that the Respondent had used the Disputed Domain Name to deceptively route Internet users to the Respondent's click through website, and to suggest sponsorship or approval by the Complainant.  The Respondent rebutted these arguments by stating that the Disputed Domain Name was used in connection with a bona fide offering of goods and services.  However, in light of its finding under the third limb of the Policy, the Panel did not find it necessary to make a finding.

Bad faith

Turning to the third limb of the Policy, the Complainant asserted that its RESHAPE mark was well-known and that it had developed strong prior rights.  The Complainant argued that the website associated with the Disputed Domain Name copied the look and feel of the Complainant's website and included the RESHAPE mark with a similar logo.  The Complainant concluded that the Respondent had undertaken these actions in bad faith and for the purpose of trading on the goodwill of the Complainant.  The Respondent disagreed strongly by asserting that the Complainant's mark was weak as it was a descriptive term used by many parties in connection with wealth or financial services.  Moreover, the Respondent underlined that its activities did not compete with the Complainant's as the parties offered distinct services.  The Respondent added that its website was distinct from the Complainant's website with unique wording, colours, photographs, placement of images and layout.  Finally, the Respondent concluded that there was no evidence that it had registered and used the Disputed Domain Name to attract consumers and to take advantage of the Complainant's trademark.

Panel comments

First, the Panel pointed out that this case was difficult because a large portion of the Respondent's arguments concerned a likelihood of confusion analysis under trade mark law in the United States.  The aforementioned evidence provided by the Respondent was applicable for trademark infringement or unfair competition, but not for a case of cybersquatting in bad faith.

Secondly, the Panel highlighted that the Complainant had not provided any evidence of how well known its RESHAPE trademark was in the financial services industry.  Moreover, the Panel noted that the Complainant had provided no evidence suggesting that the Respondent adopted the name Reshape Holdings LLC or the RESHAPE mark for its financial services for the express purpose of exploiting the Complainant's rights or to associate itself with the Complainant.  Furthermore, the Panel considered that the evidence given by the Complainant regarding the similarities in the look and feel of the parties' respective websites was not sufficient. 

In the light of the above, the Panel considered that the case was essentially a trademark dispute between two entities which each claimed to own rights in the RESHAPE mark for their respective services.  There was no evidence to demonstrate bad faith registration and cybersquatting.  This was reinforced by the arguments in the cease and desist letter sent by the Complainant to the Respondent.  The thrust of the claims was essentially for trademark infringement and unfair competition based on the adoption and use of RESHAPE by the Respondent for its financial services.  There was no assertion of cybersquatting.  If the Complainant did have a claim against the Respondent for trademark infringement or unfair competition, the Panel stated that this claim was beyond the scope of a UDRP proceeding.

To conclude, the Panel made a finding that the Complainant had failed to demonstrate the requirements prescribed by the third limb of the Policy and so the Panel refused the transfer of the Disputed Domain Name. 

The Panel denied the Respondent's request for a finding of reverse domain name hijacking, considering that it was not unreasonable for the Complainant to assert a claim against the Respondent regarding the Disputed Domain Name based on its rights in the RESHAPE mark. 

This decision reaffirms the scope of UDRP proceedings which limit the Panel to consideration of whether the three limbs of the Policy are made out.

Authored by Anchovy News Team