Archive for October, 2008

“Hairy Winston”: Diamonds for Dogs?

Thursday, October 30th, 2008

In the recent case of Harry Winston, Inc. and Harry Winston S.A. v. Jennifer Katherman WIPO D2008-1267 (October 18, 2008), a Panel was presented with an interesting decision which covered numerous topics defenses not often raised by Respondents, which included fair use and parody. The Respondent registered the disputed domain, www.hairywinston.com on March 11, 2008, to purportedly run her business of retail sales of dog and cat supplies and accessories (for example: leashes, collars and toys). The Complainant is the well known Harry Winston, who owns the federally registered trademark HARRY WINSTON for jewelry, diamonds, and timepieces and operates a website at www.harrywinston.com.

Respondent acknowledges that the name was selected to make a playful use of the name of her dog, Winston, and that the name will bring to mind the Complainant. The Respondent contends that her use of the name is fair use by way of parody. The Respondent notes that “for the Panel to hold that she has no rights or legitimate interests in respect of the Domain Name, is tantamount to a finding of trade mark infringement, a finding that is outwith the scope of the Policy and the Panel’s competence.”

In addressing the three prong UDRP test, the Panel first addresses whether or not the domain name is identical or confusingly similar. The Respondent argues that anyone who simply views the site could not possibly believe that it is related in any way to the Complainant. However, as the Panel explained, “it is now well-established that the content of the Respondent’s website is an irrelevant factor when assessing confusing similarity under the first element of the Policy. The test is to be conducted by way of a side-by-side comparison of the Complainants’ trade mark and the Domain Name.” Therefore, the Panel found this factor in favor of the Complainant.

The Panel next briefly addressed the second prong, whether the Respondent had any rights or legitimate interests. The Respondent claims that she had a bonafide offering of goods and services prior to notification by the Complainant. However, the Panel explained that the potential for the dispute arose the moment she considered adopting the parody name, and thus she could not enjoy the benefit of the bona fide offering. Interestingly though, the Panel did not make a decision regarding the second prong, and instead explained that the third prong was determinative of the case.

The Panel appears to almost chastise the Complainant for their attempt to “adopt a scatter gun approach” regarding their contentions of bad faith. One of the Complainant s arguments is explained by the Panel as follows:

The Complainants then go on to contend that the commercial gain that the Respondent is hoping and expecting to derive from the Domain Name will be achieved by visitors visiting the Respondent’s website in the mistaken belief that, because of the confusing similarity of the Domain Name to the Complainants’ trade mark, the Respondent’s website is a site of or associated with the Complainants (paragraph 4(b)(iv) of the Policy). On arriving at the site, those visitors will appreciate their mistake, but insofar as any of those visitors may be interested in acquiring pet supplies and accessories, the Respondent will thereby have derived an unfair business opportunity, the unfairness lying in the deceit by which the Respondent has diverted the visitors to her site.

Interestingly though, the Panel explains that it is not their task to “attempt to assess whether the Respondent’s activities constitute infringement of the Complainant’s trade mark rights.”
The Respondent acknowledges that the Complainant’s name will come to mind among consumers, but believes it will not lead to confusion. The Panel agreed and explained:

In the view of the Panel, it is inconceivable that people of the sophistication of the Complainants’ clientele will believe that the Complainants could begin to countenance use of such a variant of their name for their business. Even if the Complainants were minded to consider brand extensions, it is most unlikely that Hairy Winston would feature as a candidate.

The Panel also examined the parody arguments, and apparently believed that in the domain context her usage was not bad faith in accordance with the UDRP. The Panel noted that it may constitute trademark infringement, but that is not within the Panel’s decision making powers. The Panel explained:

The Panel is satisfied that the Respondent’s intention in registering and using the Domain Name as she has was to parody the Complainants’ famous name and trade mark and that she was justified in believing that the parody would successfully differentiate the parody from the original such as to obviate any significant risk of confusion or deception. In such circumstances it would be perverse to categorise the Respondent’s intentions when she registered the Domain Name as bad faith intentions for the purposes of the Policy.

Ultimately, the Panel DENIED the request for transfer.

A Rorschach Type of Panel Decision?

Friday, October 24th, 2008

In the recent case of Hogrefe AG v. Ney Limonge D2008-1206, (WIPO October 3, 2008), a UDRP Panel had to provide a Rorschach review of whether www.RorschachOnline.com should be transferred. If you don’t already know who Hermann Rorschach is, the Panel provided a good summary as follows:

The Rorschach inkblot test … is a method of psychological evaluation. Psychologists use this test to try to examine the personality characteristics and emotional functioning of their patients. The Rorschach is currently the second most commonly used test in forensic assessment, after the MMPI, and is the second most widely used test by members of the Society for Personality Assessment. It has been employed in diagnosing underlying thought disorder and differentiating psychotic from nonpsychotic thinking in cases where the patient is reluctant to openly admit to psychotic thinking.

Complainant in the case, is the owner of numerous trademark registrations for RORSCHACH both in the U.S. (Reg. No. 2,276,256) and abroad. “Complainant is a publishing house specializing in books and magazines relating to medicine, including psychology. Complainant asserts that it is ‘owner of the copyright of the so called RORSCHACH Ink Blot Test, a psychological test with ink blots.’” Respondent is a clinical psychologist, who is using the disputed domain which “offers interactive online software designed to facilitate administration by professional psychologists of the Rorschach test.”

The crux of the decision centered around supposed numerous and unenforced trademark usage by many across the Internet and publishing world of the word “Rorschach.” As Respondent explained:

Respondent asserts that “Rorschach” is freely used by psychologists worldwide as a common term in the science of psychology and that a book search at “www.amazon.com” using the keyword “Rorschach” as part of the title yielded not less than 9,333 different books, the “vast majority related to Rorschach Test belonging publishers and authors that does not hold the alleged copyright .”

The Panel found that the use of the disputed domain was identical or confusingly similar to Complainant’s trademark. In determining the second aspect of UDRP decisions, rights or legitimate interests, the Panel took careful note of the use of the trademark on the Internet.

Although there are a few Internet references using “Rorschach” that include a notice of trademark registration (i.e., “®”), the vast majority do not. The Merriam-Webster Online Medical Dictionary definitions for “Rorschach test” (“a projective psychological test that uses a subject’s interpretation of 10 standard black or colored inkblot designs to assess personality traits and emotional tendencies – called also Rorschach, Rorschach inkblot test”) and “Rorschach” (“of, relating to, used in connection with, or resulting from the Rorschach test”),1 do not indicate that the terms are the subject of trademark rights or claims. The Panel considers it established that the term “Rorschach” is widely used in the field of psychology to refer to a test initially developed by Hermann Rorschach. The term is not predominately used as a trademark identifier associated with goods or services of Complainant.

As a result, the Panel found that the Respondent has a legitimate interest in the domain name, and explained there was no need to address the issue of bad faith. Ultimately, the Panel DENIED Complainant’s request for transfer.

Sex Product or Ice-Cream?

Monday, October 20th, 2008

In the case of Jelique Products Inc. v. Cybarcafe, D2008-1255 (WIPO October 13, 2008), the WIPO panel was faced with a comparison of sexual products or ice cream. The disputed domain was www.tastytwist.com.  The Complainant, which operates its business at www.jelique.com, has a trademark for TASTY TWIST, related to products designed to enhance sexual performance and pleasure, specifically in class 3 for body creams and lotions. The Respondent, on the other hand, contended that the domain name was registered for an ice-cream related invention, claiming that his family has been in the ice-cream business since 1953.

The Panel review the three prong test for UDRP decisions and found that the disputed domain was in fat identical or confusingly similar to Complainant’s mark. Despite producing an email showing an intent regarding the domain and ice-cream development, the Panel did not find sufficient evidence to support a claim of rights or legitimate interests.

In the last factor of analysis the Panel reviewed whether the domain was registered and used in bad faith. The Panel acknowledges, albeit very skeptically, the facts presented in Respondent’s story. However, as the Panel notes, the story would have more weight if the Respondent’s hadn’t registered the domain in June 2006, while only appearing to have come up with the invention in January 2008. The Panel also found concern that none of the materials presented by Respondent, which were designed to support his assertion that his family was in the ice-cream business for 40 years, actually identified any of his family members by name.

Regardless, the Panel explained:

However, the fact is that it is for the Complainant to prove that the Respondent was targeting the Complainant when he registered the Domain Name, not for the Respondent to prove his innocence and there is nothing of sufficient weight before the Panel to justify the Panel drawing inferences adverse to the Respondent.

Ultimately, the Panel found in favor of the Respondent and DENIED the transfer of the domain.

What if Your Name was a Company and a Country?

Thursday, October 16th, 2008

In the case of Sony Kabushiki Kaisha aka Sony Corporation v. Sony Holland, Case No. D2008-1025 (WIPO October 2, 2008) a three member panel was faced with an decision regarding the disputed domain www.sonyholland.com. In this case Sony, the well known manufacturer of audio video and technology products, which operates a website at www.sony.com, objected to the use of the disputed website contending that it violated its trademark rights and the policies set forth in the UDRP. The facts of this case are interesting though, as the Respondent claims to be known by the name “Sony Holland.”  The Respondent’s full legal name is “Sonia Holland”, although she claims to be known by “Sony”.  The decision noted that the disputed domain is “used for the promotion of the Respondent’s music career, and prominently features the Respondent’s image. The Respondent’s website also contains links to other web pages, including a contact information page, and a page dealing with the sale of CDs.”

The three member Panel immediately acknowledged that the first prong of UDRP decisions, namely whether the disputed domain is identical or confusingly similar to the Complainant’s mark.  The crux of the opinion centered on whether or not the Respondent had any rights or legitimate interests in the domain. The Panel observed:

The Panel must approach the claim to a right or legitimate interest on the “commonly known by” ground, with considerable caution. Such claims are very easily made, and of course if they are upheld, that is sufficient on its own to defeat a complaint under the Policy. The Panel agrees with, and respectfully adopts, the approach followed by the panel in Banco Espirito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890, where the panel said:

“Since a ‘legitimate interest’ is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has been “commonly known by” the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been “commonly known” by the domain name. See e.g., Red Bull GmbH v Harold Gutch, WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by the nickname “Red Bull” since childhood because Respondent did not provide any evidence to support the contention. See also, e.g., DIMC Inc., & The Sherwin-Williams Company v. Quang Phan, WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by the nickname “Krylon” due to absence of evidence when alleged nickname was adopted and how it was used.”

The Panel went further to explain:

In the end, the Panel is of the view that the Respondent has produced just sufficient evidence in support of her “commonly known by” claim, to meet the requirements of the Banco Espirito Santo S.A. test referred to above. Her claims are not implausible, and in an administrative proceeding such as this, where there is no discovery of documents and the Panel does not have the benefit of seeing the parties’ cross-examined, the Panel has little basis for rejecting them.

Ultimately the Panel found that the respondent did have rights or a legitimate interest in the domain. Regardless, the Panel still analyzed the third and final prong, bad faith. The Panel explained:

The Panel accepts the Respondent’s submission that an Internet browser arriving at the Respondent’s website, looking for a website of the Complainant, would immediately appreciate that he or she was in the wrong place. This is not a case where the disputed domain name resolves to a landing page, where the respondent derives “click-through” revenue from site visitors who arrive at the respondent’s website and then “click –through” to sponsored third party sites. In such cases, the respondent clearly benefits from the increased web traffic generated by what is commonly referred to as “initial interest confusion”, arising out of the identity or confusing similarity of the disputed domain name to the complainant’s trade mark – a proportion of browsers who mistakenly arrive at such a landing page site will click on the links to third party sites, and thus provide the respondent website operator with additional revenue.

As a result of these findings, this three member Panel DENIED the Complainant’s request for transfer.

The Importance of Getting a Trademark Registration or at Least Providing Evidence

Tuesday, October 14th, 2008

In the recent case of Mancini’s Sleepworld v Laksh Internet Solutions Private Limited, WIPO D2008-1036 September 30, 2008, the Complainant found out the importance of getting a trademark registration. The Complainant, Mancini’s Sleepworld, is a sleep products retailer based in California, who has been in business for approximately 36 years. They operate with approximately 30 locations across California and have an internet presence at www.sleepworld.com. The domain at issue was www.mancincinissleepworld.com.

The Panel in reviewing the facts of the case, did not address the second and third prongs of the Policy requirements and only focused on the first prong, namely whether the domain was identical or confusingly similar. The Panel acknowledged that the domain name was identical but questioned whether Complainant had demonstrated the existence of common law trademark rights. The Panel noted:

The amended Complaint contains nothing by way of text or exhibits to support the Complainant’s claim to common law rights in respect of the name “Mancini’s Sleepworld”. The Complainant has made no effort to support its claims with any evidence.

As a result the Panel DENIED the request for transfer.

Inferring Bad Faith From the Circumstances

Monday, October 13th, 2008

In a recent National Arbitration Forum decision, a three member Panel found that a domain registration, which predated the Complainant’s trademark application was not enough of a reason, among others, to deny the transfer of the domain. In Shahrad Yazdani v. Domain Deluxe FA1219173 (Nat. Arb. Forum October 2, 2008), the Panel reviewed a complaint involving the domain www.audiolearn.com.

The Complainant, Audio Learn, is a company which produces audio study guidebooks for tests such as the SAT, MCAT and PCAT. Complainant, which currently operates at www.audiolearn.net, claims to have been in business since 1997, based upon its allegations in the complaint and based upon its date of first use listed in its trademark application. Complainant has a trademark for the mark AUDIOLEARN (Reg. No. 2,740,489, issued July 22, 2003 and filed on August 7, 2002). The domain at issue was registered on May 20, 2002, predating the trademark application filing date.

The Panel noted that the UDRP Policy does not explicitly require that Complainant’s trademark rights predate the domain name registration for purposes of Policy ¶4(a)(i). As a result the Panel found that the domain name is identical or confusingly similar to Complainant’s mark. The Panel confirmed and agreed with Complainant that the Respondent was not commonly known by the domain name at issue. The Panel further noted:

The disputed domain name resolves to a website that appears only to be a search site on which companies in competition with Complainant purchase advertisements.  The Panel finds this directly competitive use of an allegedly identical domain name to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)….We find that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and Respondent has failed to meet its burden to come forward with concrete evidence that it does have rights or legitimate interests, as its site does not present a bona fide offering that would give rise to rights or legitimate interests. 

The Panel moved onto the last prong of the three part test, namely registration and use in bad faith. Although not explicitly making findings relative to this prong the Panel made some statements which seem to show their intent and ultimate ruling.

However, Complainant contends, and Respondent does not deny, that the <audiolearn.com> domain name resolves to a website displaying advertisements and “pay-per-click” links, many of which are for direct competitors of Complainant.  Accordingly, the Panel may find that the <audiolearn.com> domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iv)….Additionally, we could infer bad faith registration based upon Complainant’s prior use of the name and Respondent’s subsequent inactive use of the domain name….Complainant presents sparse evidence of use; however, Complainant was using the domain name <audiolearn.net>, and it seems more likely than not that Respondent would have noticed this when deciding whether to register <audiolearn.com>, either by searching for similar domain name registrations, or simply by searching the web for instances of “audiolearn.”

Ultimately, the Panel directed the Respondent to TRANSFER the domain. 

When Trademarks are Common Words

Wednesday, October 1st, 2008

Most parents have heard the word “onesies,” but it appears as though one Panel believes those people do not associate that term with a trademark. In the case of Kellwood Company v. Onesies Corporation D2008-1172, WIPO Septemeber 22, 2008, the Panel DENIED Complainant’s request for transfer of www.onesies.net. The Complainant owns many trademark registrations for ONESIES, with the first dating back to 1984. Respondent registered the disputed domain in April 2006, which purportedly listed many commercial links for clothing and other related children and infant products.

The Panel quickly dealt with the first two requirements of identical or confusingly similar mark versus domain name and whether Complainant has legitimate rights or interests. The Panel primarily focused on the element of bad faith. The Panel found that “the word onesie has become something of a descriptive term as well as a trademark in the United States.”  In fact, the Panel quoted Wikipedia for the proposition which stated “ Onesie or onesize is American English for bodysuit for infants designed to conceal a diaper when worn. It is also called a creeper, diaper shirt or snapsuit.” The Panel also noted many Google search results, “most of which do not refere to Complainant or Complainant’s products.”

Most of the cases in which a Panel has found bad faith registration without proof or a reasonable inference of actual knowledge of complainant’s mark involved either a distinctive mark, or some other indication of cybersquatting. When the mark is an everyday word or phrase panels more often decline to find registration in bad faith based solely upon a claim of constructive notice, even when the parties are both American.

The Panel went further to explain:

In some cases it may be permissible for a panel to infer actual knowledge from other evidence, most often a complainant’s showing that a substantial segment of the public or its target market associates the common word or phrase with complainant or its products. That is not possible in this case as Complainant has submitted no evidence at all of the word’s exclusive or prominent association with Complainant or its products. Such evidence, if it exists, is almost by definition within Complainant’s control and not dependent upon access to Respondent. For example, sales volumes, product literature, advertising expenditures, and sample advertisements could have demonstrated sufficient identification of this word with Complainant or its products to allow an inference of actual knowledge. Without such evidence, however, the Panel is left only with counsel’s unsupported and conclusionary statement. Complainant bears the burden of proof under each Policy element, and as to Respondent’s registration of the disputed domain name in bad faith has not carried that burden.

Ultimately the Panel DENIED the request for transfer.

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