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Archive for December, 2008

American Automobile Association (AAA) Flexes its Horsepower: Concealing Domain Owner is Bad Faith

Tuesday, December 30th, 2008

In the recent decision of The American Automobile Association, Inc. v. Zag Media Corp. C/o Whois Privacy Services (Nat. Arb. Forum 1226952, November 13, 2008), a single member Panel was faced with a dispute over www.aaacars.com. Complainant is the owner of the trademark AAA with rights dating back to 1903 for automobile association services rendered to motor vehicles, motorists and travelers. Complainant owns and operates several domains including www.aaa.com, www.aaaautos.com, www.aaaautobuyer.com, www.aaaautosales.com, www.aaacarprices.com, and www.aaausedautos.com.

The identity of Respondent was not as clear. Zag Media Corp. is a “proxy service” whereby it registers domain names in its own name on behalf of its customers. Zag Media then used a privacy service to hide the publication of the Registrant data. Complainant contends that the disputed web site resolved to a parked page with sponsored links which generate click-through revenue for the domain owner. Respondent, Zag Media attempted to distinguish itself from the actual customer/domain owner, but refused to identify who that customer was. However, Respondent explains that the customer/domain owner had plans to develop the domain for high quality used car auctions.

In reviewing the procedural issue of who the proper Respondent was, the Panel found Zag Media was the proper party, since they were listed in the Whois registration information. The Panel then  reviewed the three prong test set up in accordance with ICANN/UDRP policies. The Panel found that the domain was confusingly similar to Complainant’s mark, noting that the additional word “cars” to the “aaa” evokes Complainant’s automobile and travel related services and products.

Moving onto the next prong, whether or not the Respondent had any rights or legitimate interests, the Panel made an interesting observation:

In seeking to demonstrate that it has rights or legitimate interests in the disputed domain name, Respondent, Zag Media Corp. c/o Whois Privacy Services, finds itself in a dilemma. On the one hand, it registered the domain name in its own name, acting as a privacy shield on behalf of the person or entity which it calls the “domain owner.” As agent, Respondent has neither rights nor legitimate interests in the domain name of the kind that are relevant in this proceeding. Any such rights or interests belong to the unidentified principal on whose behalf Respondent acted in registering the domain name. Respondent’s rights or interests as registrant consequent upon mere compliance with the requirements for registration are of no consequence in a proceeding under the Policy. On the other hand, Respondent seeks to argue that the “domain owner,” whose identity it has studiously failed to disclose, has rights or legitimate interests in the domain name by reason of its plans to use and its actual use of the domain name prior to notice of this dispute. However, the only rights and interests that are relevant in this proceeding are those of Respondent, being the registrant of the domain name at the time of the filing of the Complaint. For this reason alone, the Panel finds that Respondent has failed to discharge the shifted onus and that Complainant has established this element of its case.

The Panel then moved onto the last prong, whether or not the domain was registered and used in bad faith. The Panel explained that despite Respondent’s assertion that it was just an agent of the real domain owner, that an agent is still liable of an undisclosed principal. However, the Panel noted that Respondent’s customer/domain owner, was more likely than not to have had actual knowledge of Complainant’s AAA trademark, creating a finding of bad faith. The Panel went further explaining other reasons for a finding of bad faith:

Although proxy registration is not necessarily a sign of illegitimate purpose, the concealment provided by proxy registration can be indicative of bad faith registration and use and can be abused by cybersquatters. Whether the purpose of the customer in using a proxy service be innocent or guilty, for the actual registrant (the proxy service provider) to conceal the identity of its customer in the face of a UDRP complaint, as Respondent has done here, is to obstruct the UDRP system. In this Panel’s opinion, such concealment amounts to bad faith on the part of the proxy service provider.

Ultimately, the Panel granted the TRANSFER of the domain.

ZEMA wins based on parking and pay-per-click evidence

Tuesday, December 23rd, 2008

In the recent decision of Ricardo Zema Participacoes Ltda. v. John Laxton, WIPO Case No. D2008-1297, October 23, 2008, a single member Panel was faced with a dispute over the domain www.zema.com. Complainant is the holder of approximately seven (7) trademarks, all registered in Brazil, which encompass the word ZEMA, the earliest of which has a registration date of December 24, 1991. Complainant also owns several domains including www.grupozema.com.br, www.zemaciadepetroleo.com.br, www.consorciozema.com.br, www.autopecaszema.com.br, www.zmaissuper.com.br, www.eletrozema.com.br, www.zemafashion.com.br. Complainant contends that Respondent uses the web site for a parking service and also offers users an opportunity to place a bid for the domain based upon a link at the bottom of the website.

Respondent claims that in December 1998 it registered the disputed domains, along with www.zema.net and in February 2003 registered www.zemas.com and www.zemaz.com in anticipation of opening restaurants. Respondent further explains that it did not pursue that business plan after another similar sounding restaurant opened in Respondent’s immediate geographical area. Interestingly, the Respondent claims makes target arguments about the evidence presented by Complainant.

That Complainant has submitted no evidence whatsoever that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or that the disputed domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain, or that the disputed domain name was registered by Respondent primarily to disrupt Complainant’s business…. That there is no evidence that Respondent was somehow aware of Complainant’s alleged Brazilian trademark registrations at the time Respondent registered the disputed domain name (1998). That Respondent has never heard of Complainant or any of its purported trademarks and there is no evidence that the user’s of the parked domain have or were likely to have mistyped Complainant’s name. That there is no evidence that Respondent has attempted to sell the domain name. That by Complainant’s own admission, there has been no offer to sell the domain name to Complainant or any other party.

In reviewing the evidence and arguments presented, the Panel considered the three factors enunciated under the UDRP/ICANN policy paragraph 4(a). First, whether the disputed domain was identical or confusingly similar, the Panel explained:

Respondent argues that there are other ZEMA trademarks registered by third parties in the US, and alleges that based on this fact Complainant’s rights are not exclusive. The Policy does not require the non existence of other trademark registrations held by parties other than the Complainant in other jurisdictions. The Policy simply requires that Complainant has rights to a trademark, and that said trademark be identical or confusingly similar to the contested domain name.   

As a result, the Panel found in favor of Complainant on this factor. Moving onto the second factor, whether or not Respondent has any rights or legitimate interests in the domain, the Panel determined there was no evidence submitted by Respondent regarding preparations for a restaurant. Instead, the Panel relied upon evidence submitted by Complainant that the parked domain resulted in a diversion of traffic for Internet users for commercial gain. Therefore, the Panel found that Respondent did not have a bona fide offering of goods or services and the second prong was satisfied by Complainant.

When reviewing the last prong, whether or not the domain was registered in bad faith, the Panel made the following findings:

Complainant has argued that Respondent has parked the disputed domain name to divert traffic for commercial gain, by means of implementing pay-per-click advertisements in conjunction with Trafficz. Complainant’s allegations and evidence have not in this Panel’s view been persuasively rebutted by Respondent. In the circumstances, this type of domain name parking, together with pay-per-click constitute bad faith activities for the purposes of the Policy, because they imply an intentional attempt to attract, for commercial gain, users to a specific Website, by creating a likelihood of confusion with Complainant and Complainant’s trademarks as to the source, and/or possible sponsorship, affiliation or endorsement of Respondent’s site, or products or services associated to the pay-per-click practice. (Citations omitted)

As a result, the Panel found that Complainant satisfied the last prong, and ultimately ruled to TRANSFER the disputed domain.

What happens in Vegas…May not stay there!

Monday, December 22nd, 2008

In the recent decision of Norbert A. Aleman v. Crazygirls.com/Vertical Axis, Inc., WIPO Case No. D2008-1252, (October 29, 2008), a three member Panel was faced with a dipsute over the domain www.crazygirls.com. The Complainant claimed ownership of a registration for the mark CRAZY GIRLS, registered on November 20, 2001, for services of a live stage show, based on a first use date of August 1986. The Claimant maintains a domain at www.crazygirlslasvegas.com.  The disputed domain was first registered on August 8, 2001, and at the time of the dispute, was resolving to a generic landing page with automatically generated links.

The three member Panel found that the domain was identical or confusingly similar, regarding the first prong of the UDRP/ICANN policy. Regarding the second prong of the Policy, namely whether the Respondent has any rights or legitimate interests in the disputed domain, the Panel made the following observation:

[T]here is no evidence of any of the following circumstances: (i) that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding to the disputed domain name; (ii) that the Respondent is authorized or licensed by the Complainant to use the CRAZY GIRLS trademark or to register and use the disputed domain name; (iii) that the Respondent has been commonly known by the disputed domain name.

The Panel also analyzed Respondent’s arguments that the domain was made up of two generic words and Complainant’s complaints about the Respondent’s use of pay-per-click advertising links, but ultimately the Panel found the “legitimate rights” factor to be in favor of Complainant.

Moving on to the last prong of the Policy, whether or not the Respondent registered and used the domain in bad faith, the Panel noted that Respondent’s use of a privacy service for the registration data does not, by itself, establish bad faith. In fact, the Panel noted there are legitimate reasons for using such a service.

Addressing other aspects of bad faith, the Panel also explained about:

Further, the Complainant has not identified any source of actual confusion between the Respondent’s use of the disputed domain name and the Complainant’s trademark, such as links within the Respondent’s website to the Complainant’s show, or shows of its competitors. The Complainant states that it has continuously used the CRAZY GIRLS trademark since August 1986 to brand a stage show and review running in Las Vegas, and has owned the trademark registration since 2001. It has not provided any evidence of the extent of the goodwill or reputation of its trademark beyond Las Vegas, such as its own Internet use of its trademark, that might assist the Panel in inferring that the Respondent knew of or intended to profit from the CRAZY GIRLS trademark. The Complainant does not explain when it first learnt of the Respondent’s registration of the disputed domain name, or explain its inaction in defending its trademark during the period of nearly seven years since the Respondent’s registration.

Ultimately, the Panel DENIED Complainant’s request to Transfer.

You can bank on your trademark per Bank of America

Friday, December 12th, 2008

In the recent National Arbitration Forum case of Bank of America Corporation v. [Registrant] (Nat. Arb. Forum 1226147, November 7, 2008), the UDRP Panel was presented with a dispute over the domain www.uscapitaltrust.com. Bank of America is in the business of banking, fiduciary, and investment management services, and claims ownership to three separate trademarks related to the instant dispute which included UNITED STATES TRUST COMPANY with rights dating back to 1853, UNITED STATES TRUST with rights relating back to 1964 and U.S. TRUST with rights relating back to 1976. Bank of America also claims to maintain a domain at www.ustrust.com

The Respondent, who was never identified by name, was represented by counsel, and claims to be known as US Capital Trust. Some of the arguments presented by each side included a debate over whether or not line of business for each party was similar enough to create confusion. Respondent claimed that although both businesses were in the financial services industry, there was a distinction among the actual businesses. Specifically, Respondent alleges that it is in the business of providing financing for the purchase of buses. However, the Panel points out that Respondent’s answer quoted a citation from its own website from 2007 (the web site was supposedly changed upon notification of the dispute), which stated:

US Capital Trust is a leading private equity and venture capital firm committed to empowering entrepreneurs to build innovative and industry leading businesses.  US Capital Trust is a focused effort to develop world class business in a wide variety of fields.  US Capital Trust invests in companies independent of size or stage of growth.  We leverage our experiences, industry expertise and contracts to guide talented entrepreneurs to market success.

Bank of America claimed that the 2007 web site by Respondent offered private equity and venture capital services, which was in direct competition with Bank of America. The Respondent also attempted to claim that the addition of the word CAPITAL created a distinct domain which was not confusing.

The Panel in addressing the three factors in UDRP proceedings explained that the first prong, whether or not the domain was identical or confusingly similar to Complainant’s mark, was satisfied. The Panel explained:

But it cannot be denied that the word “capital” is closely related to “wealth” and “money”, and that, in turn, those words are closely related to the word “trust” as used in the Complainant’s mark (that is, a “trust fund”). Given the common use of the words, the term “capital”, in context, must be considered to be a generic term.  Its addition to the mark US TRUST does not create a domain name that is distinctive from the mark.

The Panel cited previous decisions for the proposition that the line of business of both parties is not relevant for this element of the policy, and applied that concept to the facts in this case.

Turning to the second prong of the policy, whether or not the respondent had any rights or legitimate interests in the domain, the Panel found that the Respondent did not create a bona fide offerings of goods or services based upon the 2007 description. As a result the Panel found this factor favored Complainant as well.

Lastly, the Panel reviewed the third prong, whether or not the domain was registered and used in bad faith. The Panel noted:

As the Complainant correctly points out, the description that the Respondent gives of its business on the 2007 version of its website does not correspond to the description given to the Panel.  On the 2007 version of the website, the Respondent claims to provide a broad range of financial services to entrepreneurs.  In its Response and in its Additional Submission to this Panel, the Respondent states that its main business is to provide financing for the purchase of buses (motor vehicles). On the basis of the evidence submitted by the Respondent, the Panel accepts that an accurate description of the Respondent’s business is that it provides financing for the purchase of buses.   As a consequence, the Panel finds that the description provided on the 2007 version of the web site is misleading.

The Panel went further and noted, “the Panel finds that the most likely explanation for the misleading description given in the 2007 version of the website was to attract users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark, in violation of 4(b)(iv) of the Policy.” Additionally, the Panel found that the anonymous registration information placed on the WHOIS data for the disputed domain was a element that reinforced the determination of bad faith.

Ultimately the Panel ruled that the domain be TRANSFERRED.
          
Defend My Domain Commentary: The Panel’s finding that the line of business is irrelevant, is contrary to basic trademark law principles. Typically, under trademark law, the test to determine confusing similarity includes an analysis of the line of business associated with each mark.

ALAMO doesn’t suck!

Tuesday, December 9th, 2008

In a recent domain dispute, Vanguard Trademark Holdings USA, LLC v. European Travel Network (WIPO D2008-1325, October 31, 2008), a Panel was faced with whether or not a “sucks” web site violated the ICANN policies. Critical commentary or “sucks” web sites are many times the subject of domain disputes. Complainant is the owner of the ALAMO and ALAMO RENT A CAR trademarks, which have been in use since at least 1973. Complainant maintains a web site at www.alamo.com. The disputed domain was www.alamo-sucks.com. The disputed domain was registered on April 29, 2008.  Complainant sent the Respondent a cease and desist letter regarding the use of the disputed domain, since it was being redirected to www.lowest-car-rental-price.com, which provided links to other providers of car rentals services.  Respondent’s web site apparently did not criticize Complainant ALAMO. After receiving the cease and desist letter, Complaint changed the domain to a landing site offering the domain for sale at a price of $7,500.00.  As a result the following domain dispute was instituted.

The Panel analyzed the three prong test in the ICANN policy and first addressed whether the disputed domain was identical or confusingly similar. The Panel found that the disputed domain incorporated all of Complainant’s trademark and that inclusion of the additional term “sucks” did not dispel such confusing similarity.

In addressing the second prong, whether or not Respondent had any rights or legitimate interests in the disputed domain, the Panel made some observations regarding the Respondent’s prior use.

The use of a domain name incorporating the Complainant’s well-known ALAMO mark to redirect Internet users to a pay-per-click website containing links to other providers of vehicle rental or leasing services does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor does the offering of the disputed domain name for sale, under the circumstances of this case, fall within this safe harbor provision. To the contrary, as discussed below, such opportunistic behavior is a strong indication of the Respondent’s bad faith intent to profit from and exploit the Complainant’s mark.

As a result the Panel found that Respondent did not have any rights or legitimate interests. The Panel then reviewed the last prong, whether or not the domain was registered and used in bad faith. The Panel explained:

It is an inescapable inference from the circumstances of this case that the Respondent knew of and had in mind the Complainant and the Complainant’s ALAMO Marks when registering the disputed domain name. The Respondent’s opportunistic use of the disputed domain name to redirect Internet visitors to its “www.lowest-car-rental-prices.com” website underscores this conclusion. Such opportunistic use by the Respondent prior to receiving notice of this dispute, followed by the Respondent’s attempt to sell the disputed domain name for an amount appearing to be in excess of the reasonable out-of-pocket expenses directly related to the domain name without any evidence to the contrary shown by the Respondent, manifests the Respondent’s bad faith intent to profit from and exploit the Complainant’s ALAMO Marks. The pattern of cybersquatting indicated by prior decisions under the Policy involving the Respondent provides an exclamation point to the Respondent’s bad faith in this case.

Ultimately the Panel found that all of the ICANN prongs had been met and agreed to TRANSFER the disputed domain to Complainant.

SKYY VODKA Loses Because of Lack of Evidence

Tuesday, December 2nd, 2008

In a recent National Arbitration Forum decision, Skyy Spirits, LLC v. Stanislaw Krenszczynski (Nat. Arb. Forum 1220829 November 26, 2008), the Panel was faced with a decision over the disputed domain www.skyyvodkas.com. The Complainant sells the well known SKYY VODKA and maintains a website at www.skyy.com. The Panel did not provide a summary of factual allegations, but a quick check of the disputed domain reveals that it resolves to a parked page with third party links (a parking service). The Respondent did not provide a response to the Complaint.

The Panel found that Complainant’s registration of the mark SKYY VODKA provided sufficient rights and that the disputed domain was identical or confusingly similar to that mark. The Panel next moved into an analysis regarding the Respondent’s rights or legitimate interests in the domain. The Panel explained:

In this case, Complainant has made an allegation 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 under Policy ¶ 4(c)(iii).  However, Complainant has failed to offer any evidence, such as an Internet screenshot indicating where the disputed domain name leads, that would corroborate a use or non-use.  Because it is Complainant’s burden to set forth its prima facie case in its submission, and because Complainant has not done do, the Panel has no choice but to find that Complainant has failed to make its prima facie case under Policy ¶ 4(a)(ii).

As a result, the Panel found that the Complainant failed to submit evidence as to how Respondent was using the domain, namely “no bona fide use.” Moving on to the last prong of the ICANN analysis, whether there was registration and use in bad faith, the Panel explained, “there is no allegation or supplied evidence demonstrating the use or non-use of the disputed domain name.  Thus, the Panel is unable to make a finding of bad faith on the merits of the case.  Due to this evidentiary deficiency, the Panel cannot make a finding regarding bad faith registration and use under Policy ¶ 4(a)(iii).”

Ultimately the Panel DENIED the Complainant’s request for transfer.

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