Illustrating the dangers of filing a UDRP complaint where the domain registrant’s name and the asserted trademark are identical, a recent Uniform Dispute Resolution Policy (“UDRP”) decision denied the complaint, with a two-panelist majority finding the complaint failed to establish two of the three UDRP elements.
Complainant Charles Schwab has offered financial services under its SCHWAB and SCHWAB-formative marks for almost four decades. Respondent Simon Schwab, claiming to be an entrepreneur who began providing loans to customers during the pandemic, registered the < schwabfinancialcare.com > domain in February 2021. Using the “Schwab Financial Care” name, he used his website to allow his customers to apply online. Charles Schwab disputed that the domain had ever been used to provide any services, but asserted that “even if Respondent actually provides financial services, such services would be closely related to those offered by Complainant and therefore competitive and infringing.”
To establish a UDRP claim, a complainant must establish that:
- the domain is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
- the domain registrant has no rights or legitimate interests in the domain; and
- the domain has been registered and is being used in bad faith.
If a respondent can prove that it has been commonly known by the domain name or used it in connection with a bona fide offering of goods or services, rights or legitimate interests may be established.
The three-person panel did not opine as to whether Simon Schwab’s use of the domain infringed Charles Schwab’s trademarks, finding the question beyond the scope of the proceeding. The majority acknowledged that the use of “financial” in the domain might suggest some sort of connection to Charles Schwab, but found that Simon Schwab had not actively contributed to any confusion, and that it was “far from clear” that the services offered competed directly with Charles Schwab’s. The majority similarly credited Simon Schwab’s denial that he registered or used the domain with any intent to target Charles Schwab or its marks. Accordingly, the panelists denied the complaint.
Moreover, the majority found that Charles Schwab had committed reverse domain name hijacking (“RDNH”). Because Charles Schwab initiated the complaint knowing that the domain registrant’s last name was “Schwab,” it should have known it could not prove all UDRP elements. The majority was also concerned with what it called a “lack of candor” in the complaint. Specifically, the complaint included no screenshots of the infringing website, though Charles Schwab had accessed it, and further claimed it was inactive based solely on having received a delivery failure notification after attempting to send a message to the website email address.
The dissenting panelist, on the other hand, found Simon Schwab had failed to produce evidence of any legal entity operating as “Schwab Financial Care,” or that he had ever engaged in any bona fide use of the domain since registering it. The panelist noted: “Where information is likely to be within the exclusive knowledge and control of one party, it is appropriate for the Panel to draw an adverse inference from its absence.” This panelist further argued that Simon Schwab knew of Charles Schwab’s famous mark, registered a domain name combining the mark with a generic term for Charles Schwab’s industry, and used it for a website purporting to offer services related to that industry. Believing Simon Schwab registered the domain with the intent to target and exploit confusion with Charles Schwab, this panelist, unsurprisingly, also dissented from the finding of RDNH.
Key Takeaways:
- Where the legitimacy of a respondent’s business is in question, UDRP panelists may differ on how to weigh the evidence, making the second UDRP element the hardest to predict.
- If a domain name appears to contain the name of the registrant or its business, a prospective UDRP complainant should carefully evaluate what evidence, if any, might credibly prove it false or untrustworthy, and include it as evidence.
The case is Charles Schwab & Co., Inc. v. Simon Schwab, Case No. FA2210002017845