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Archive for February, 2009

Wells Fargo (est. 1852) or Wells Farfo (est. 2001)

Friday, February 27th, 2009

In the recent decision of Wells Fargo & Company v. JHN Inc. (Nat. Arb. Forum 1241102, Feb. 16, 2009), a single member Panel was faced with a dispute over the domain www.wellsfarfo.com. Complainant, Wells Fargo is the well known financial services company, which has been around since 1852, although it registered its WELLS FARGO mark (Reg. 779,187) on October 27, 1964. Wells Fargo maintains a web site at www.wellsfargo.com.
In the instant dispute the single member panel addressed (1) whether Respondent’s <wellsfarfo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark; (2) whether Respondent had any rights or legitimate interests in the <wellsfarfo.com> domain name; and (3) whether Respondent registered and used the <wellsfarfo.com> domain name in bad faith. Respondent registered the dispute domain back in 2001, and did not respond to the proceeding. 

                               wells-fargo

In addressing the first prong of the ICANN UDRP policy ¶4(a)(i) the Panel noted that Wells Fargo sufficiently established its rights to the mark. Additionally, the Panel found that the disputed domain merely substituted the letter “f” for the letter “g” and added the top level domain “.com.” This effect of typosquatting, by merely creating a slightly misspelled domain, still creates a confusingly similar domain.

The Panel next moved onto the second prong of the ICANN UDRP Policy ¶ 4(a)(ii), whether the Respondent had any rights or legitimate interests in the domain. The Panel noted that once the Complainant made a prima facie case, the burden shifts to Respondent. Since Respondent did not respond to the dispute, some Panels have found the inquiry can stop there and the factor should be ruled in favor of Complainant. In this case the Panel still chose to review the evidence presented by Wells Fargo. The Panel made the following observations and findings (1) Respondent was not commonly known by the wellsfarfo.com domain; (2) Respondent was not authorized by Wells Fargo to use its mark in any manner; (3) the disputed domain resolved to a commercial site displaying links to Wells Fargo competitors in the financial industry; and (4) Respondent’s typosquatting all were justifiable reasons to find that Respondent did not have any rights or legitimate interests in the domain.

Lastly the Panel reviewed ICANN UDRP policy ¶4(a)(iii) regarding whether Respondent registered the domain in bad faith. The Panel found that the third party links on the domain, where Respondent received click-through fees was evidence of bad faith. Additionally, the Panel again pointed toward the typosquatting issues as further evidence of bad faith.

Ultimately, the Panel found Complainant satisfied all three factors and ordered the domain be TRANSFERRED.

Fran Drescher Gets Her Name and Domain- – Ten Years Later!

Tuesday, February 17th, 2009

In the recent decision of Francine Drescher v. Stephen Gregory (WIPO D2008-1825, January19, 2009), a single member panel was faced with a dispute over the domain www.frandrescher.com. Complainant is the well known actress who starred the CBS series “The Nanny” from 1993 through 1999. She has appeared in other television shows and movies and has also written a memoir. Respondent is an individual based in the Philippines with a P.O. Box listed as the contact address. The domain information indicated that it was created on March 1, 1999.

The Panel reviewed the ICANN approved UDRP policy elements for domain disputes wherein the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

The Panel addressed the first prong of the test the Panel acknowledges that although Complainant claims only common law trademark rights, nonetheless previous cases have applied the policy to well-known actors and actresses. As a result the Panel found the domain was identical or confusingly similar to Complainant’s common-law trademark.

The Panel next addressed whether Respondent had any rights or legitimate interests in the domain. The Panel noted that respondent is not known by the name used within the domain, but further addresses the legitimate rights issue in connection with the third prong. The Panel then reviews the “registered and used in bad faith” third prong in more detail.

The Panel notes that the disputed domain redirects users to a different domain, namely, http://www.clubpink.com/. This web site displayed text warning no children allowed and indicating that one must be at least 18 to enter. Upon clicking a link, the user is then brought to another domain, namely, http://www.feeds.pornication.com/. Complainant claims this diversion is for commercial gain. The Panel explained:

Even if it is not the Respondent who personally gains from this diversion, but instead either the operators of the website operating from the domain name or the commercial entities to which that website directs Internet users, it does not matter. As this Panel stated in V&S Vin&Sprit AB v. Corinne, Ducos, WIPO Case No. D2003-0301 (another case in which there was diversion to pornographic content), provided that the respondent intends that someone shall gain from the diversion, then the case will fall within the example of circumstances indicating bad faith set out at paragraph 4(b)(iv) of the Policy.

The Panel goes further to note that showing bad faith use is not enough, and proof of bad faith registration is also required. The Panel made some interesting observations and conclusions. First the Panel questioned why the domain had been in use for nearly 10 years without complaint and quoted another case regarding delay which stated:

“…, if a complainant delays in bringing proceedings he will make matters more difficult for himself. First, there is the fact that a complainant must prove not only bad faith use but bad faith registration. Often it is possible to infer bad faith registration from bad faith use, but the longer the delay between registration and the commencement of proceedings, the less likely it is that a panel will be prepared to do so. A complainant may, therefore, need to bring forward direct evidence to address the issue of bad faith registration. Second, there is the possibility that the use that the registrant has made of the domain name since registration may in some cases result in him having developed a right and legitimate interest in the name. … There is also the more general point that extensive delay without explanation may in certain circumstances result in adverse inferences of fact against a complainant.” HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658

Regardless, the Panel moved forward with its analysis and made additional findings. One such finding included the fact that the WhoIs record registrant details included the words “This Domain is for Sale.” The Panel found that although there was no evidence submitted noting when that for sale information was added to the WhoIs record, or more specifically if it was there from the original registration date, that it would infer such bad purpose of registration.

Ultimately, the Panel found in favor of Complainant and ordered to TRANSFER the domain

C-SPAN wins 91 domains in a large UDRP filing!

Thursday, February 12th, 2009

In the recent decision of National Cable Satellite Corporation d/b/a C-SPAN v. New Media Nexus c/o Lyle, Rumble (Nat. Arb. Forum 1236010, January 26, 2009), a single member panel was faced with a dispute over 91 (that’s not a typo folks!) domains. (For a full listing of the disputed domains please click here).  National Cable Satellite Corporation (“NCSC”) is a nonprofit corporation which owns and operates C-SPAN, the well known producers of public affairs television. NCSC has used the C-SPAN mark since 1979 and maintains its main internet presence at www.c-span.org. NCSC also holds trademarks for other variations of C-SPAN including C-SPAN 2 and C-SPAN 3. NCSC contends that Respondent registered numerous domains which were identical to its marks, or which included the addition of words like book, video, TV and watch, to those marks contained in the domain address.

Respondent claims to be the Managing Editor and Publisher of Sky and Space Magazine, which maintains a domain at www.SkyandSpace.com.au. Respondent also claims to operate a domain business with about 4,000 domains. Respondent’s justification for the registration of the disputed domains was that he wanted to establish a new marketing and sales network names Cyber Space Astro Network (CSPAN). Respondent argued that his trademark search revealed that the CSPAN mark had been abandoned in 2002.

The Panel reviewed the arguments presented by each side and used the three part test to determine whether the domains should be transferred. First, the Panel discussed whether the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The panel explained that Complainant had rights to the marks C-SPAN, C-SPAN 2 and C-SPAN 3 and that Respondent’s addition of a letter, symbol or generic top-level domain such as “.com” was insufficient to distinguish the domains from the C-SPAN marks. The Panel found Complainant proved this element.

The Panel next reviewed whether the Respondent has any rights or legitimate interests in the domain names. The Panel found that Respondent was not commonly known by the disputed domains. Additionally the Panel noted that the domains redirected Internet users to web sites that offered unrelated services and that this redirection was not a bona fide offering of goods and services. The Panel determined that Complainant proved this element as well.

The Panel last reviewed whether the domain names have been registered and are being used in bad faith. First, the Panel noted that the bottom of the domains contained language asking a visitor to “make an offer” regarding the domain. Therefore, the Panel explained that the primary intent of the web site was to sell the domains. Further, the Panel found that since all 91 domains were registered on the same day, this established a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). The Panel explained that Respondent’s use of a privacy service and collection of money from click-through fees associated with the domains was further evidence of bad faith. Lastly the Panel noted that since Respondent admitted to completing a trademark and/or Internet search, Respondent could not have been unaware of Complainant, that is, Respondent must have discovered C-SPAN during his search.

Ultimately the Panel agreed to TRANSFER all 91 domains.

Publix Supermarket’s Trademark Covers “.Net” Domain

Tuesday, February 3rd, 2009

In the recent domain dispute Publix Asset Management Company v. (**Domain For Sale**) Momentum Technology Corp c/o Paul Barbell, (Nat. Arb. Forum 1238082 January 21, 2009), a single member panel was faced with a determination over www.publix.net. Publix offers grocery store services throughout the state of Florida. It owns a trademark registration for the mark PUBLIX, (Reg. No. 1,339,762 registered June 4, 1985). Publix also mainatins a website located at www.publix.com.

The panel reviewed the three elements of domain disputes, despite the lack of response by Respondent. First the panel reviewed whether the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The panel noted that the addition of “.net” failed to distinguish the domain from Complainant’s mark, therefore finding that this element was satisfied.

Next the panel addressed whether Respondent had any rights or legitimate interests in respect of the domain name. Since Respondent failed to respond, the panel could assume that there are no rights or legitimate interests, however, the panel opted instead to review the evidence submitted by Complainant. The Panel made the following observations:

Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names using the PUBLIX mark.  Respondent’s WHOIS information lists Respondent as “Paul Barbell (**Domain For Sale**) Momentum Technology Corp,” thus providing no affirmative evidence that Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii)….
 
Complainant provides evidence and argues that Respondent’s use of the disputed domain name is both commercial and competitive with Complainant.  Respondent’s <publix.net> domain name resolves to a website offering grocery store services in direct competition with Complainant.  The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)…. 
 
In addition, the Panel finds that Respondent lacks rights and legitimate interests in the <publix.net> domain name pursuant to Policy ¶ 4(a)(ii) due to Respondent’s WHOIS information explicitly showing that the disputed domain name is for sale….

As such, the panel found this “no legitimate interest” element was satisfied as well. The panel finally moved to the last element, whether the domain name has been registered and is being used in bad faith. Here again the panel noted that since the domain was being presented for sale is also evidence of bad faith. The panel further explained:

The Panel finds that Respondent’s registration and use of the disputed domain name to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent’s use of the disputed domain name in order to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s PUBLIX mark and offering products and services in direct competition with Complainant is further evidence of bad faith.  Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use.

Ultimately, the panel found that all three elements had been satisfied and ruled to TRANSFER the disputed domain.

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