On Passover, the religious holiday that celebrates the Israelites’ escape from 400 years of Egyptian slavery, Jews typically eat matzah, or unleavened bread, as a reminder of how quickly their ancestors hurriedly packed and left Egypt, without enough time for their bread to rise.
Among the foods made from matzah that Jews eat at the traditional Passover seder meal, which commences the week-long holiday, is matzah ball soup, described by The New York Times as “the most welcome Passover dish.”
And, at the Passover seder, the youngest person at the table sings, in Hebrew, the famous “Four Questions” that explore why the night is different from all other nights.
Now, thousands of years after the first Passover celebration, a domain name dispute over <matzoball.com> raises some interesting new questions. (The disputed domain name uses a popular alternative spelling of the word “matzah,” a transliteration of the Hebrew.)
Background of the Dispute
The dispute was filed by Mazel Events, LLC, of Boca Raton, Florida (the Complainant), under the Uniform Domain Name Dispute Resolution Policy (UDRP). The registrant of the domain name (the Respondent) was Jeff Strank and Net Party, LLC, of Chicago.
The UDRP panelist’s decision makes clear that “Complainant and Respondent have much past history with one another and have had prior battles concerning the name and mark MATZOBALL.”
The Complainant said that it conducted annual holiday parties — known as the “Matzo Ball” or “Matzoball” — around the United States for Jewish singles on Christmas Eve since 1987 (originally under a previous entity). And the Respondent said that it sponsors a competing event on the same date in New York City and Los Angeles, though apparently not known as the “Matzo Ball.”
While the Complainant’s only current trademark registration cited in the complaint, for MATZOBALL, was issued in 2018, the Complainant claimed a first use date of 1987, and the Complainant previously owned a trademark registration for THE MATZO BALL that was issued in 1990 and cancelled in 1997, followed by a registration for MATZO BALL that was issued in 2000 and cancelled in 2010. The Complainant also filed a trademark application for MATZOBALL in 2011 that was opposed by the Respondent and ultimately refused registration by the U.S. Patent and Trademark Office, followed by another application in 2014 for MATZOBALL that was protested by the Respondent and refused registration, and yet another application (for MATZOBALL THE NATION’S #1 HOLIDAY PARTY) that was filed in 2015 and abandoned in 2016.
The UDRP decision states that “it is not altogether clear when Respondent acquired the disputed domain name,” although “it appears that Respondent owned the disputed domain name as early as July 2008.”
The Complainant attempted to purchase <matzoball.com> from the Respondent in 2013 and 2015 and, in January 2016, “Respondent, through its attorney, indicated to Complainant that Respondent might be willing to sell the disputed domain name to Complainant if a satisfactory arrangement between the Parties could be achieved,” according to the UDRP decision. It’s unclear what this “arrangement” might have entailed, but in December 2016, Complainant sent a demand letter to Respondent about the domain name, which Respondent rejected.
At some point — the decision does not say when or for how long — the Respondent redirected the <matzoball.com> domain name to its own website (using the domain name <tribester.com>) “for a competing Christmas Eve event and to disparage Complainant,” according to the Complainant’s assertions as described in the UDRP decision. As this blog post is being written (shortly after publication of the UDRP decision — and shortly before Passover 2019), the domain name does not appear to be associated with an active website.
As in all UDRP cases, the panelist first addressed the question of whether the <matzoball.com> domain name was identical or confusingly similar to a trademark in which the Complainant had rights. That was perhaps the only simple question to answer, and the panel did so affirmatively, citing the Complainant’s 2018 trademark registration and the fact that the domain name “consists of the MATZOBALL mark in its entirety at the head of the disputed domain name.”
The panelist did not discuss the fact that the Complainant’s trademark was obtained after the domain name was registered — probably because that fact is irrelevant under the UDRP’s first element of identical or confusing similarity. As WIPO has said, when a respondent’s domain name is registered before a complainant’s trademark rights arose, a complainant may face challenges in establishing the third, or bad faith, element of the UDRP, but it “would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.”
On the issue of bad faith, the panelist said that “[t]his is an unusual case for a number of reasons,” including:
the parties’ “contentious and acrimonious past going back to at least 2005”;
“the failure of Complainant and its attorneys to mention many key facts in this matter[, which] suggests that they may understand that their case is tenuous”; and
“evidence [that] tends to support the notion that ‘matzo ball’ was not uniquely associated with [Complainant’s predecessor-in-interest] and was functioning as a descriptive or even generic term for events on Christmas Eve for Jewish singles.”
In conclusion, the panel wrote:
[I]t is questionable whether Complainant had strong common law rights in MATZOBALL throughout the relevant periods when Respondent registered the disputed domain name and then used the disputed domain name in 2016. While that arguably might be the case now in 2019, the evidence before the Panel does not show that to be the case in 2016, when Respondent made use of the disputed domain name for its competing event, or in 2007 when Respondent acquired the disputed domain name. Simply put, on the record before the Panel, Complainant has not proven by a preponderance of the evidence that Respondent acted in bad faith when Respondent registered or used the disputed domain name.
As a result, and because every complainant in a UDRP proceeding must prove all three of the dispute policy’s elements to prevail, the panelist issued a decision in favor of the Respondent, allowing it to keep the domain name even without addressing the UDRP’s second element regarding rights or legitimate interests.
The <matzoball.com> domain name dispute raises a number of intriguing questions. But, unlike the questions recited at the Passover seder, the answers are unknown.
When (and how) did the Respondent acquire the <matzoball.com> domain name? The UDRP decision only states that “it is not altogether clear when Respondent acquired the disputed domain name” and then goes on to note that Respondent owned it “as early as July 2008” and elsewhere says that Respondent acquired it in 2007. But the whois record for the domain name shows that it was created in 1999. While the date and details might not be essential to the outcome of the case, knowing a domain name’s history is always helpful in a dispute.
Why did the Complainant fail to maintain a number of its trademark registrations? The decision refers to two federal trademark registrations that were cancelled, as well as three other applications that never matured into registrations. Knowing why the trademark office took certain actions could help inform whether the relevant term might be generic — potentially giving any party the right to use it (although, importantly, as WIPO has said, “[i]n order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights”).
Why did the Complainant fail to disclose the full history of its dispute with the Respondent? By doing so, as the UDRP panelist wrote, the Complainant made misleading arguments that undermined its case. It’s always best to be transparent. Indeed, the UDRP Rules require it, as every complaint must include a statement that says, in part, “Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate…” Thus, failing to be complete and inaccurate is a violation of the UDRP process that will understandably draw the ire of a panelist.
Would this dispute turn out differently in a court of law? Although the UDRP is the most popular legal process for resolving domain name disputes, it is not the only option. As the panelist in the <matzoball.com> decision wrote, “to the extent that Complainant believes it may have a claim against Respondent for trademark infringement or unfair competition based on Respondent’s use of the disputed domain name, such a claim belongs in another forum and is beyond the scope of this UDRP proceeding.” The panelist noted that, in another forum, “a full record of the past dealings between the parties would be developed, that the strength of Complainant’s trademark rights in MATZOBALL would be assessed and that the parties would be cross examined as to their contentions.” While the UDRP may be the most efficient domain name dispute process, it is not appropriate for every type of controversy.
These specific questions may be unique to the <matzoball.com> case, but the issues they raise are applicable to many other domain name disputes and should be considered by any trademark owner before filing a UDRP complaint.