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Archive for September, 2008

Don’t Forget to Renew Your Trademark-Otherwise Domain is Lost

Monday, September 29th, 2008

A company found out the hard way, that not only must you remember not to let your trademark registrations lapse, but you must remember to renew your domain registrations. In O’Reilly Automotive, Inc. v. Bjarne Lorenzen FA 1220459 (Nat. Arb. Forum Sept. 24, 2008), the domain transfer was DENIED and Mr. Lorenzen of Denmark was able to keep the registration of www.partscity.com. Complainant is an automotive parts retailer who was the owner of federal registrations (Reg. Nos. 2,312,510 and 2,233,940) for the mark PARTS CITY. Unfortunately, those registrations were cancelled on December 31, 2005 and October 28, 2006. Complainant did get a new registration for PARTS CITY on July 15, 2008 (Reg No. 3,465,437). Complainant operated the disputed website until it inadvertently lapsed on June 10, 2003. The Respondent registered the domain on August 23, 2003. The decision does  not indicate how Complainant was using the domain prior to its lapse, nor why it did not notice the loss of the domain for the two months prior to its acquisition by Respondent.

The Panel reviewed each of the three (3) elements of the UDRP policy. First, the Panel noted  that Complainant had not established the identical and/or confusingly similar element. Although this element seems to not require a timeline of trademark ownership, the Panel relied upon other decisions which established that Policy ¶4(a)(i) assumes the Complainant’s rights must predate Respondent’s domain name registration. The Panel noted, “the UDRP was not established to assist current business owners in correcting poor business decisions of the past.”

The Panel also found that the Complainant had not established the second requirement of Rights or Legitimate Interests. In an effort to prove bad faith, Complainant’s own allegations that Respondent is a competitor selling automotive parts, helped to support the finding that Complainant’s rights are therefore junior to Respondent’s registration of the domain. The panel further noted:

Complainant would have the Panel find that it has protectable rights in the domain name despite letting it lapse and languish for months while Respondent has no such rights despite validly registering the unclaimed name and holding it in an undeveloped state for years. Holders of valid domain names are not required to develop them in any particular way within a fixed time or risk losing them, especially when they are not using the domains in a manner that is offensive to the rights of another.

Third, the Panel reviewed the Bad Faith element. The Panel noted that “Complainant’s assertion that merely holding a parked domain disrupts its business because it can not use that domain name for its own benefit does not satisfy this element. Fair competition should not be confused with bad faith use or registration.”

Ultimately, the Panel DENIED the Request for Transfer.

What’s in a Name? Law Firm Falls Short in UDRP

Friday, September 26th, 2008

In a recent decision by a National Arbitration Forum (NAF) Panel, Complainant, the law firm of Gable & Gotwals, Inc., found out the hard way that trademark rights in their own name is not as easy as simply saying that you have those rights. In the case of Gable & Gotwals, Inc. d/b/a GableGotwals v. Dave Jackson, FA 1212305 (Nat. Arb. Forum, Sept. 18, 2008) the Panel heard a dispute over gablegotwals.com. Respondent did not provide file any response, which generally favors a finding for the Complainant an an order transferring the accused domain. However, in this case, the Panel was not so easily convinced by the Complainant’s evidence.

The Panel only focused on the first element, namely whether the Complainant has established rights to a mark and, if so, whether the accused domain is identical or confusingly similar to the mark. The Complainant did not have a trademark registration for GABLEGOTWALS, but alleged common law rights based on continuous use in commerce since January 1, 2006. Despite the assertions that the mark was used in the law firm name on letterhead and marketing materials, the Panel found that no evidence was submitted to support those statements. The panel noted:

Other than Complainant’s assertions, there is no other evidence indicating that the GABLEGOTWALS mark has acquired secondary meaning or source identity in commerce, and use alone is not sufficient to prove this assertion.  On this basis, the Panel concludes that Complainant has failed to establish any trademark or common law rights in the GABLEGOTWALS mark, and has therefore failed to satisfy this element of the Policy.

Finding that the Complainant did not satisfy the requirements of Policy ¶ 4(a)(i), the Panel did not analyze the other factors and DENIED Complainant’s request for transfer.

Respondent’s Cannot Just Agree to Transfer

Monday, September 15th, 2008

In an interesting move by a panel, a Respondent’s attempt at agreeing to the transfer was not sufficient. In the case of ANOVO v. Moniker Privacy Services / Alexander Lerman (WIPO  D2008-1049, September 8, 2008), despite the Respondent’s assertion that it had no objection to the transfer of the domain, the panel decided to still go through the full three prong analysis in accordance with paragraph 4(a) of the UDRP Policy.

The Complainant is a French company incorporated since 1992 and is the owner of various trademark registrations, including a Community Trademark registration for ANOVO. Respondent registered the disputed domain, anovo.com, on May 7 2007. Respondent used Moniker Privacy Services who identified Alexander Lerman as the owner.

The Respondent’s representative proposed a suspension of the proceedings to enable the transfer to take place, by Complainant’s representative declined. Respondent noted that many prior panels had explored this similar situation, where there was a unilateral consent to transfer. See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, and Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336.

Wihtout regard to the Respondent’s consent to trasnfer, the Panel found that Paragraph 10 of the UDRP Policy did not grant broad powers to disregard the substantive requirement of paragraph 4(a) of the UDRP Policy and further found as follows:

In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” It is this Panel’s opinion that this does not mean a default decision is automatically to be issued in favour of the Complainant. Consequently, the Panel must proceed with at least a basic assessment of the Complaint on its merits.

Additionally, the Panel observed:

Nor is it necessarily true that a complainant will only cause further delay by having a case taken to a decision rather than having the proceedings suspended in reply to a respondent’s reported intention to facilitate a transfer of the domain name at issue. Past experience suggests that such expressed intentions may also be employed as a delaying tactic by a Respondent. Furthermore, in cases where a respondent believes that it is likely to lose, it may also prefer to propose a transfer simply to avoid having itself identified on the list of UDRP respondents. The Panel considers it quite understandable that a complainant, having gone to the trouble and expense of preparing and filing a Complaint, might not wish to allow the respondent to avoid a formal decision at such a late stage.

As a result, the Panel embarked through the full analysis of the three prong policy test and ultimately ordered transfer of the domain.

Nationally Recognized Personality Awarded Right to Her Own Name

Thursday, September 11th, 2008

In a scathing opinion, another panel has required the transfer of a domain from Texas International Property Associates. In Dr. Pamela Peeke v. Texas International Property Associates-NA NA, FA1216216 (Nat. Arb. Forum September 8, 2008), the panel found that Respondent’s use of PamelaPeeke.com violated the UDRP policy. Peeke is a purportedly “well-known physician, author, speaker and media personality.” While the Complainant did not have a registered trademark, the panel still found that Complainant established secondary meaning as a source identifier and had “developed its reputation on a national level in the United States since the early 1990’s.” In the first of many scathing comments, the panel observed, “We find Complainant’s assertions persuasive and Respondent’s assertion of ignorance of Complainant, particularly in light of those undenied assertions, patently incredible.”

Regarding the Rights or Legitimate Interests factor, The Respondent did not deny allegations that disputed domain name displayed “hyperlinks to advertising of health-related products and services that may be of interest to Complainant’s customers” and received “click-through fees from these links.” Ultimately the panel found that there was “neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”

Interestingly the following statement by the panel served as the second scathing commentary/finding.

In its defense, Respondent alleges that the hyperlinks posted to its website resolving from the <pamelapeeke.com> domain name are the responsibility of a contract site manager, and that Respondent has no control over the posted hyperlinks. We find this position-taking disturbingly disingenuous.

For the bad faith prong of the analysis, the panel found the Respondent’s assertion regarding it lack of knowledge of the Complainant to be “incredible in light of the distinctive character of Complainant’s name and the undenied lengths to which Complainant has gone over a long period of years in promoting its profession and business under this mark.”

Since the panel found all three elements proven, the domain transfer request was granted.

Porta-John vs. Porta-Jon: They care where you go!

Thursday, September 4th, 2008

In the case of Toilets.com, Inc. v. Porta-Jon of the Piedmont (WIPO D2008-1043, August 22, 2008), the Panel was faced with two long standing companies using nearly identical marks and web sites. Complainant first used the phrase “porta-john” for rented portable toilets in 1962. And owns registered mark for PORTA-JOHN since 1972. Complainant’s principal website is “www.porta-john.com”, which it has used continuously since 1997. Respondent conducted a similar business in the state of North Carolina since May 1969, and incorporated its business under the name Porta-Jon of the Piedmont, Inc. in North Carolina in 1973. Respondent holds state trademark registrations for PORTA-JON in North Carolina and South Carolina. Respondent registered the disputed domain name “porta-jon.com” in 1998 and used it to promote its business.

                 

The Complainant sent many cease and desist letters to Respondent over the years. The panel acknowledged, that the only fathomable argument in favor of finding a lack of legitimate purpose was that the cease and desist letters may have served as notice of the dispute. However, the panel quickly dismissed any validity or support thereto.

Instead the panel focused on the evidence presented in favor of legitimate use by the Respondent, noting:

This Panel cannot conceive circumstances in which decades of use of a business name, without interruption, can fail to give a registrant a right or legitimate interest under the Policy to incorporate the principal word in that name into a domain name used for purposes of that business. Such circumstances are exactly the reason for the safe harbor in paragraph 4(c)(ii) of the Policy.

The Panel observed further that:

To the extent Complainant believes its business has been adversely affected by Respondent’s long-time conduct, an action in court for trademark infringement or unfair competition is the appropriate means for seeking redress. A court action, not a Policy proceeding, similarly is the place to determine “priority” and other rights under national trademark laws. With its abbreviated proceedings and considerably lower costs, the Policy may appear to be a quick-and-dirty alternative to an infringement action or, as appears to be true in this case, to a further cease-and-desist letter.

Ulitimately, the Panel denied the transfer of the domain and found that the complaint was “nothing more than harassment” and was Reverse Domain Name Hijacking.

Withering Heights: Parody, Criticism and Free Speech in the UDRP

Wednesday, September 3rd, 2008

In a recent WIPO decision, the worlds of trademark, domain disputes, initial interest confusion, parody, criticism and first amendment all collided. In the case of Aspis Liv Försäkrings AB v. Neon Network, LLC (WIPO D2008-0387, June 2, 2008), a three member UDRP panel ruled FOR THE TRANSFER of the disputed domain. The Complainant, Aspis Pronia, was incorporated in 2004 and is successor in interest to Aspis Pronia General Insurance Company S.A (“Aspis Pronia”), a company registered in Greece. The Complainant Aspis Pronia is the owner of a Swedish trademark for ASPIS and a European Community trademark for the same mark. The disputed domain was registered in 1998, prior to the creation of the of the Complainant’s company. The Respondent’s web site was a criticism and gripe forum which was directed to Complainant Aspis Pronia, and was used for more than ten (10) years to communicate the perspective of one unhappy investor.

The panel’s decision was split 2-1 with a long, dissenting opinion. Regarding the rights or legitimate interests prong of the UDRP test, the Panel explained:

The majority of the Panel in this case are of the view that the cases cited in paragraph 2.4 of the WIPO Overview as being authority for the proposition that the use of a domain name which essentially comprised a trade mark without any additional “modifier” for a criticism site will not provide “rights” or “legitimate interests”, are to be preferred.

The majority of the Panel held that the critical commentary site at aspis.com should be transferred since the domain was Complainant’s trademark “without any additional modifier.”

One of the more interesting findings by the Panel, one which many U.S. trademark and domain owners should pay close attention to, relates to the First Amendment implications.

This conclusion involves no real curtailment of the principles of free speech. What is being curtailed is not free speech, but impersonation. A respondent can always choose a domain name that does not carry with it the perception of being authorised by the trademark owner. It is also an approach that involves no judgement being made on the content of the criticism site. Of course, it may be that as a consequence of using a different domain name less people will see the criticisms that the registrant wants to make public. However, if this is true, this of itself is evidence of the fact that the misrepresentation inherent in the domain name is the thing that draws people to the site.

The Panel’s discussion regarding bad faith also highlighted the continued split of authority regarding the use of criticism web sites.

It is not the Panel’s role to pass comment on the content of a genuine criticism website. No matter how robust that content may be, that content is incidental to the consideration of the issue of bad faith. The bad faith that exists in this and similar cases arises not from any critical statement or alleged “smear” but from the fact that the Respondent has chosen a domain name that comprises without modification a mark used by the Aspis group and the misrepresentation and impersonation that this involves.

The dissenting Panelist in this decision provided a very long opinion, which covered topics from parody, criticism, commercial use, initial interest confusion, parked pages, and generic words. This dissenting opinion was a strong, scathing indictment of the majority’s decision and discusses issues important to trademark owners, domain owners and UDRP practitioners highlighting divergent UDRP opinions.  Most likely, this case will be cited by many trademark owners fighting against criticism web sites. The larger question still remains though, namely, “What is the extent to which the UDRP process can reach into other areas of the law?”

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