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Archive for November, 2008

Ashley Furniture Wins Nine Domain Disputes in November

Friday, November 21st, 2008

It looks like Ashley Furniture decided that too many third parties own domains that were confusingly similar to their trademarks. In eight (8) decisions, no response was filed by the Respondent. In each of those eight (8) decisions the Panel went through the three (3) step analysis required in the ICANN policies.  In the one decision where the Respondent provided a response, the Respondent consented to the transfer and the Panel decided to forgo the full analysis.
Ashley Furniture’s trademark portfolio includes, ASHLEY FURNITURE, ASHLEY HOMESTORES, ASHLEY FURNITURE HOMESTORES, A ASHLEY FURNITURE, DURAPELLA, and ASHLEY. These trademarks registrations serve as the driving force behind the domain disputes. In light of the number of disputes, it appears as though Ashley Furniture recognized the importance of enforcing trademark rights on the Internet.
 Below is a listing of all the decisions for Ashley Furniture in November, 2008:

www.ashleyhomestore.com
Ashley Furniture Industries, Inc. v Laksh Internet Solutions Pvt Ltd
Nat. Arb. Forum 1226035 (11/12/2008)

www.ashleyfurnitures.biz, www.ashleyfurnitures.net 
Ashley Furniture Industries, Inc. v Kegelmaster Intl. c/o David Wallick
Nat. Arb. Forum 1226148 (11/11/2008)

www.ashleyfurniturestore.com 
Ashley Furniture Industries, Inc. v Pluto Domain Services Private Limited
Nat. Arb. Forum 1226419 (11/14/2008)

www.ashleyfurniturecheap.com 
Ashley Furniture Industries, Inc. v Cripple Creek Roadhouse Grill c/o Michael Dills
Nat. Arb. Forum 1226654 (11/18/2008)

www.ashleyfurnitureoutlet.com 
Ashley Furniture Industries, Inc v Pluto Domain Services Private Limited
Nat. Arb. Forum 1227159 (11/18/2008)  

www.ashleyfurnituresale.com 
Ashley Furniture Industries, Inc. v Robert Cole
Nat. Arb. Forum 1227714 (11/13/2008)

www.durapella.com 
Ashley Furniture Industries, Inc. v Diamond Point Enterprises Limited
Nat. Arb. Forum 1227724 (11/12/2008)

www.ashleybeds.com  
Ashley Furniture Industries, Inc. v Transure Enterprise Ltd. c/o Host Master
Nat. Arb. Forum 1227729 (11/11/2008)

www.furnitureashley.com 
Ashley Furniture Industries, Inc. v Jack Brosseit
Nat. Arb. Forum 1228455 (11/07/2008)

Prior Domain Registration, Limited Use, Parking Service…Trumps Mark Registration

Thursday, November 20th, 2008

In the recent case of DRB Systems, Inc. v. Lycos, Inc., (Nat. Arb. Forum 1219769, Oct. 9, 2008) a Panel was faced with a determination regarding the domain of www.sitewatch.com. The Complainant owns a registered trademark for SITEWATCH, registered on August 31, 1999, with rights dating back to November 24, 1997. The Complainant appears to offer a computer management system for car washes and quick lubes. The Complainant maintains a website located here. However, the Respondent asserts that the domain was registered in April of 1996.

The Panel addressed the preliminary procedural issue of a deficient additional submission from the Complainant. As explained in Supplemental Rule 7 of from the National Arbitration Forum, parties have specific deadlines to submit an additional submission. The Panel explained that Complainant was deficient in this respect, and that Respondent did provide an additional submission timely. However, the Panel noted, that a preference of substance over procedure caused the Panel to review the materials anyway. Regardless, the Panel noted that the result of the decision would not have changed based upon these additional submissions.

Moving on to the substantive arguments, the Panel explained:

Respondent does not dispute that its <sitewatch.com> domain name is identical to Complainant’s mark.  However, Respondent does contend that Complainant’s trademark rights do not predate Respondent’s domain name registration.  Some Panels have held that Policy ¶ 4(a)(i) requires that Complainant’s trademark rights predate Respondent’s domain name registration in order to satisfy the Policy….However, this Panel disagrees with that line of reasoning.

As a result the Panel found that the domain was identical or confusingly similar. The Panel next addressed whether the Respondent had any rights or legitimate interests in the domain. The Panel made specific findings, which included that Respondent was not commonly known by the disputed domain and that the disputed domain was not comprised entirely of generic terms. The Panel went further and explained:

Complainant contends that Respondent is using the <sitewatch.com> domain name to operate a website that features sponsored links to advertisements for various commercial websites.  Moreover, Complainant contends that from 1996 until 2007, Respondent did not use the disputed domain name for any purpose.  However, the Panel finds that Complainant has not shown that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)….The Panel finds that Respondent made a showing of rights to or legitimate interests through registration that was prior to Complainant’s registration of the mark and through bona fide use that was not shown to compete with Complainant or limit Complainant’s ability to use its mark in a domain name….Further, coupled with Respondent’s registration [of the domain] prior to the date of Complainant’s registration of the [trade]mark, Complainant has not shown that Respondent’s use is directed at diverting those who would seek Complainant’s services to Respondent’s own services or toward preventing Complainant from using a domain name to promote its own business efforts.

The Panel found that Complainant failed to satisfy the second element of the ICANN policy. The Panel still chose to review the final element of the ICANN policy, namely whether the domain was registered and used in bad faith. One of the often cited reasons for proving bad faith is whether the domain owner offered to sell the domain. In this case, the Panel found that both parties made allegations regarding the offer of sale regarding the domain, and that there was not enough evidence present to make a finding of bad faith based on that fact alone. The Panel went further to explain:

Complainant did not show that Respondent’s manner of use competes with Complainant or that it will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website.  While, as Complainant contends, such use may support findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), Complainant did not establish this. 

Ultimately, the Panel DENIED the Complainant’s request for transfer or cancellation.

Texas International Property Associates Loses Another Domain as Typosquatter

Wednesday, November 19th, 2008

In the recent case of Alliance Bernstein LP v. Texas International Property Associates (WIPO D2008-1230, October 12, 2008), another Panel found that Texas International Property Associates (TIPA) had violated the UDRP. The Complainant, Alliance Bernstein, “is one of the largest publicly traded global asset management firms in the world, with offices in 47 cities in 25 different countries, providing diversified, global investment management services to institutional, high net worth and retail clients worldwide, and managing billions of dollars.” The Complainant maintains its web site at www.alliancebernstein.com. The disputed domain was slightly changed as www.allaincebernstein.com. The Complainant owns approximately eight (8) trademark registrations incorporating the ALLIANCE BERNSTEIN mark. The Complainant’s trademark rights dated back to as early as August 1, 2002. The disputed domain was registered after the Complainant’s rights had been established.

 The Panel noted that TIPA, like it had attempted in many previous disputes, responded to the Complaint by stating that it agrees to the requested relief requested by the Complainant and consented to the entry of an order transferring the domain name. TIPA further requested, based on judicial economy, that the domain should be transferred immediately without entry of findings.

 The Panel did not grant all of TIPA’s wishes, and instead completed the UDRP analysis. The Panel explained that the disputed domain was identical or confusingly similar to the Complaint’s mark since it merely transposed two letters, and was a classic case of typosquatting. The Panel also found that TIPA lacked any rights or legitimate interests in the disputed domain since it was using the domain for links to thrid party vendors, some of which were in competition with the Complainant, for commercial gain from click-through revenues.

 The Panel also explored the last portion of the UDRP test, whether TIPA acted in bad faith. The Panel noted that Complainant has shown that TIPA is a serial cybersquatter. The Panel explained that other previous Panels had rejected TIPA’s request to forgo the analysis and discussion of the merits of the case and instead made findings relative to the three prongs of the UDRP. The Panel quoted the ealrier decision of Usborne Publishing Limited v. Texas International Property Associates, WIPO Case No. D2007-1913, which stated “If panels simply comply with respondents’ surrender when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate ‘cybersquatting’ conduct might be perpetuated.”

The Panel also quoted the decision of Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, which stated “Respondent appears to be engaged in a pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits. The Panel believes that a discussion of this pattern of conduct may be helpful to other Complainants and WIPO Panels….If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent’s failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants.”

Ultimately, the Panel GRANTED the request for Transfer and ended the decision with some commentary of its own: “The Panel finds it regrettable that the Policy and Rules do not include a provision for an award of costs and attorneys’ fees in such cases.”

Merely Having A Trademark Registration May Not Be Enough

Thursday, November 13th, 2008

In the recent case of NAOP, LLC, v. Name Administration, Inc. (BVI) (Nat. Arb. Forum. 1220825, October 7, 2008), a three-member Panel was faced with the interesting task of determining when applicable trademark rights existed for the purposes of UDRP decisions. Respondent states to be in the business of acquiring domain names that use common terms, which in the instant case were “jump” and “pro.” The Complainant, North American Outdoor Products, LLC, claims ownership to a trademark for JUMPRO, for exercise and recreational trampolines and replacement parts therefor. The mark was registered on July 18, 2006, with the application first being filed on October 2, 2003. The decision noted that the registration claims a first use in commerce date of April 2003. The disputed domain, www.jumppro.com was registered on January 19, 2004.

The Panel, in reviewing the first prong of the UDRP test, whether the domain in dispute is identical or confusingly similar to the Complainant’s trademark, acknowledged that the domain and the mark were identical or confusingly similar. However, the Panel explained the “Complainant had not shown it had rights in the name at the time the domain name was registered.” (Compare domain registration in January 2004 and mark registration in July 2006).

The Panel reviewed the evidence and explained:

In the instant case Complainant has submitted no evidence whatsoever to demonstrate use of the mark in commerce prior to the time Respondent registered the domain name. All that Complainant has done is assert (without providing a copy to the Panel) that it provided a specimen to the USPTO and claimed use in commerce when it filed its application in 2003. This falls far short of the required evidence.

The Panel went further to rely on prior decisions and noted:

This Panel agrees with the recent decision of the panel in Xoft Inc. v. Name Administration Inc. (BVI) (Nat. Arb. Forum Apr. 25, 2008) which stated: “The relevant time for the determination of whether or not the complainant has rights in a mark is the time that respondent registered the disputed domain name. …The question for this panel is what rights had Complainant demonstrated in the mark XOFT on that date?” In the Xoft case, as here, the complainant had filed an intent-to-use trademark application prior to the time that the domain name was registered, but that panel held, as we do, that the date of registration does not relate back to the date that the application was filed unless there is clear evidence of use in commerce sufficient to create a secondary meaning in the mark.

As a result the three-member Panel found that the Complainant did not satisfy the first portion of the UDRP Policy. The Panel also declined to find that the Complainant engaged in reverse domain name hijacking. Ultimately, the Panel DENIED the request for transfer.

DefendMyDomain Commentary:
Although not discussed by the Panel, a more detailed investigation into the trademark registration records available at www.USPTO.gov reveal that the trademark specimen filed in the USPTO by Complainant shows the packaging of the goods to be labeled as JUMPPRO instead of JUMPRO (the registered mark). It is not clear if a mistake was made during the registration process. This point is of interest because when one visits www.jumpro.com, the link leads to a marketing company web site (vertically integrating merchandising, advertising and marketing). The Complainant and the marketing company appear to have nothing to do with each other.

Critical Commentary is Not Bad Faith Use of Troubled Teen Site

Monday, November 10th, 2008

In the recent decision of Susan Scheff v. Psyborgue (WIPO D2008-1177, September 22, 2008), a WIPO panel was faced with a question of a purported criticism web site. The Complainant, Susan Scheff, claims to be a “parent advocate who assists parents of troubled teens [to] research and identify programs and schools that can assist their troubled teens in getting back on track to a healthy, productive lifestyle.” She holds a registered service mark for SUE SCHEFF and another for SUESCHEFF.COM for information about parenting topics, namely drug and alcohol awareness. The Complainant operates two web sites, namely www.suescheff.com and www.helpyourteens.com.

The domain in dispute was www.sueschefftruth.com. The Respondent, who was identified as Michael Crawford, explained:

[T]hat he registered the Domain Name primarily to “provide information to the public regarding Sue Scheff, her company PURE, and the quality of services offered under that name free of charge to parents.” The website associated with the Domain Name posts Mr. Crawford’s blog comments, media articles, court documents, and postings by readers concerning the Complainant. Typical postings question the Complainant’s objectivity, assert that she or her daughter have financial ties to some of the institutions and programs that the Complainant recommends to parents, and allege that some of these programs have been implicated in charges of child abuse or neglect.

The Panel addressed the first prong of the three-part UDRP test and summarily determined that the accused domain was identical or confusingly similar to the Complainant’s marks. The Panel then focused on the second prong of the UDRP test, namely whether the Respondent had any rights or legitimate interests. The Panel noted, “On the face of it, this appears to be a legitimate noncommercial or fair use of the Domain Name. The Complainant characterizes the remarks on the Respondent’s website as ‘disparaging,’ but the Panel is not required (or equipped) in this UDRP proceeding to determine the truth or falsehood of the criticisms that appear on the website.”

Complainant argued that Respondent used the web site for commercial gain, and specifically linked to Amazon’s web site as well as a place where donations were requested. The Panel reviewed these allegations and explained:

In the Panel’s view, a link to a commercial Amazon website and a solicitation of donations, as formerly found on the Respondent’s website, are themselves insufficient in this instance to establish the Respondent’s intent to misleadingly divert consumers for commercial gain. The website is overwhelmingly devoted to criticism of the Complainant’s interests, methods, and advice, not to commercial offers or solicitations of funds.

Complainant also asserted tarnishment of her trademarks, to which the Panel quoted earlier WIPO decisions that generally rejected those assertions. “Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Claims sounding in commercial libel must be brought in other legal venues.”

The Panel then moved onto the last prong of the test, whether the Respondent registered and used the domain in bad faith. The Panel reviewed the Respondent’s web site and evidence from the internet Archive provided by Complainant.

An examination of the Respondent’s website reveals that it is decidedly polemical rather than commercial in nature. The earlier Amazon link and “shopping cart” for donations were both buried at the end of the series of blog posts. They were not prominent, and they were not even visible on the first screen. The Panel on balance finds the Respondent’s explanation credible, that these were weak attempts to help fund the website itself and not a significant purpose of the website.

Ultimately, the Panel found that the Respondent made nominative fair use of the Complainant’s name and the that modifier “truth” casts doubt as to affiliation. As a result, the Panel DENIED the request for transfer.

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