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Archive for March, 2009

An F-Bomb Is Not For Everyone- Jumping On Lapsed Domain Causes Injury

Tuesday, March 24th, 2009

In the recent decision of FBomb Clothing c/o Joel Jordan v. Domainly.com (Nat. Arb. Forum 1245522, March 16, 2009), a single member Panel was faced with a dispute over www.fbomb.com. Complainant has operated a sportswear clothing company for extreme outdoor sports since late 2002. Complainant claimed to mistakenly let the domain registration lapse after forgetting to pay the renewal fees. Complainant contends that Respondent immediately registered the disputed domain upon its lapse and parked the page with an offer for sale. Complainant and Respondent then entered into some negotiations to purchase the domain back. Those negotiations fell apart after Respondent demanded additional funds.

UDRP Panels are required to analyze each case by reviewing a three prong element test which includes proving that (1)  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3)  the domain name has been registered and is being used in bad faith. The Panel first made some initial findings, which included the following:

Complainant has submitted as evidence of its use of the FBOMB mark the following: its registration of its fictitious business name with the San Diego County Recorder; its California State Seller’s Permit; a sample manufacturer’s invoice; and screenshots of its website resolving from the <fbomb.com> domain name as they appeared in 2002 and 2008.  (These screenshots were provided by using the Way Back Maching from InternetArchive.org.)  Based upon this evidence of Complainant’s Internet-based business, the Panel concludes that Complainant has established sufficient secondary meaning the FBOMB mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i).

Based upon an establishment of trademark rights, the Panel reviewed the first prong and made a quick finding that Complainant had satisfied this element. The Panel Next addressed the second prong, whether the Respondent had any rights or legitimate interests in the domain and made the following observations:

Though Complainant does not argue such, the Panel finds that Respondent is not commonly known by the <fbomb.com> domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information identifies Respondent as “Domainly.com,” and Respondent has not asserted otherwise…. According to Complainant, Respondent has used the <fbomb.com> domain name solely to offer it for sale, first generally and later through an auction.  The Panel finds that Respondent has not used the <fbomb.com> 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)….Respondent allegedly registered the <fbomb.com> domain name on that same day, and immediately began offering it for sale.  The Panel finds that this further evidences Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).

Determining that Respondent did not have any rights or legitimate interests in the domain, the Panel moved onto the last prong, whether Respondent registered the domain in bad faith. The Panel found that “Since Respondent has allegedly not used the <fbomb.com> domain name for any reason other than to offer it for sale, the Panel concludes that Respondent registered the <fbomb.com> domain name primarily for the purpose of selling it.” The Panel also noted that since the domain was immediately registered after it lapsed, this was further evidence that Respondent’s registration was in bad faith.

Ultimately, the Panel found that Complainant satisfied all three elements, and ordered the domain to be TRANSFERRED.

Kohler May Still “Suck”

Thursday, March 19th, 2009

In the recent decision of Kohler Co. v. Thomas Mcivor (Nat. Arb. Forum 1245293, March16, 2009), a single member Panel was faced with a dispute over the domain www.kohlersucks.com. Complainant, Kohler, is the well known kitchen and bath supplies company. Kohler maintains a website at www.kohler.com. Kohler also sells other various services and products including furniture, engines, generators, and golf resorts. Respondent appeared to be operating a criticism web site related to Kohler. Respondent claimed to never have used the disputed domain for commercial gain and sought protection of his free speech rights.

Generally panels are tasked with the UDRP policy developed by ICANN: Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2)   the Respondent has no rights or legitimate interests in respect of the domain name; and (3)   the domain name has been registered and is being used in bad faith.

In the instant case, the Panel declined to address both the first and second prong of this test and focused its efforts on the third prong. “The Panel finds that Respondent has not registered or used the disputed domain name in bad faith since Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” The Panel went further to explain:

The Panel finds that the “sucks” suffix would create an initial impression of a complaint website that is unaffiliated with Complainant, and when coupled with a link to a better business bureau website, would reinforce this fact and be viewed as a vehicle for enabling visitors to voice complaints.

Based upon the Panel’s findings, it determined that Respondent’s use of a commentary or criticism web site demonstrated a right or legitimate interest and that it fell within the fair use exception stated in Policy ¶4(c)(iii).

Ultimately, the Panel DENIED Complaint’s request for transfer.

DefendMyDomain Commentary: As of the date of this posting, it appears that the disputed domain no longer resolves to an active website. It remains unclear if there was a post-decision settlement agreement between the parties.

John Berryhill Wins Another Based on Complainant’s Failure to Establish Trademark Rights

Tuesday, March 17th, 2009

In the recent decision of Oystar USA, Inc. v. Domain Administrator info@heavylifting.com HeavyLifting, LLC (WIPO D2009-0025, March 6, 2009)(available here), a single member Panel was faced with a dispute over www.oystar.com. Complainant, Oystar USA is the subsidiary of Oystar Holding GmbH, based in Germany. Oystar operates a website at www.oystar.de. Oystar USA is involved in the packaging and processing industry and operates a website at www.oystarusa.com. Oystar claims to be the owner of the mark OYSTAR used in commerce in the U.S. since June 2007. Respondent, Heavy Lifting LLC, claims that it was not the original registrant of the domain, which was first registered in 2000. Respondent acquired the domain on April 19, 2006.

Respondent’s attorney, John Berryhill, provided some important arguments in favor of a denial. The Panel summarized the arguments as follows:

The Respondent contends that the Complainant has not demonstrated that it has rights in the OYSTAR marks. According to the Respondent, the Complainant is not the owner of the German national registrations for the OYSTAR marks, which the Respondent argues in any event, are of no legal effect in the United States. Even assuming that the Complainant’s German parent has granted its subsidiary the right to use the OYSTAR marks in the United States, the Respondent points out that there are no United States registrations for the marks, and that the USPTO has provisionally refused to extend protection to the OYSTAR marks. Nor, according to the Respondent, has the Complainant demonstrated enforceable rights based on use of the OYSTAR marks in the United States.

The Respondent’s arguments went further to explain:

According to the Respondent, the earliest date of any registration for the OYSTAR marks is a German registration in June 2008 obtained by the Complainant’s German parent, based on an application not filed until late 2007. The Respondent maintains that it acquired the disputed domain name in the spring of 2006. Even assuming arguendo that the Complainant had used the OYSTAR marks in commerce in the United States since June 2007, the Respondent asserts there is no conceivable basis to conclude that the Respondent registered the disputed domain name with the aim of exploiting the Complainant’s then non-existent rights in the marks.

The Panel then addressed the elements of paragraph 4(a)of the Policy which require a finding that (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith.

The Panel began to address the first prong, where Respondent’s assertions regarding ownership of the mark proved to be fatal to Complainant. The Panel explained:

There is no dispositive basis in the provided record, however, upon which the Panel can conclude that the Complainant is the owner or exclusive licensee of the German registrations, and the United States applications for the OYSTAR marks (also held by the German parent company) are still in examination, and have not achieved the status of registered marks. Hence, the Complainant’s assertion of rights in the OYSTAR marks cannot on the present record be based on registration rights….While the Complainant asserts that is has continuously used the OYSTAR marks in the United States since June 2007, the Complainant has not submitted any evidence to substantiate this claim. The marketing brochures submitted by the Complainant upon examination appear to have been prepared by the German parent for general use by its various subsidiaries. Portions of the materials reflect a creation date of February 2008.

In addressing the nature and amount of evidence presented by Oystar, the Panel stated: “The Complainant has offered no evidence of the length and amount of sales under the marks, the nature and extent of advertising, or other relevant information such as consumer surveys or media recognition.”

Based upon the above stated reasons the Panel found that Oystar USA failed to establish it had any rights to the OYSTAR marks. The Panel elected to skip the remaining UDRP 4(a) prongs in light that finding. The Panel was also tasked with a determination of possible reverse domain hijacking. Based upon other presented evidence of Respondent’s use of the domain, the Panel found that a reverse domain hijacking claim was not merited. Ultimately the Panel DENIED Complainant’s request for transfer.

DefendMyDomain Commentary: We tip our hat to Mr. Berryhill for his insightful arguments in this dispute. The lesson to be learned herein is to make sure the proper Complainant brings the case, or at least to provide sufficient evidence of ownership of the trademark(s).

WIPO and National Arbitration Forum See Increase in Cybersquatting and Domain Name Disputes

Monday, March 16th, 2009

The World Intellectual Property Organization (WIPO) and the National Arbitration Forum (NAF) have released their 2008 statistics for domain disputes. The NAF put out a press release (available here) and provided the following details:

1)     In total, there were 1,770 cases filed, with NAF.
2)     Nearly all cases filed (98%) involved UDRP domain names, like .com and .org; the rest involved “usDRP” domain names with the .us extension.
4)     Panelists heard and decided 1,477 cases; parties worked together to settle many of the rest, (17% settlement rate).
5)     By the end of 2008, approximately 10,600 disputes were filed with the National Arbitration Forum.
6)     To date Panelists resolved 9,470 of those cases, while the parties settled many of the rest.

WIPO also put out a press release (available here) but provided much more in depth statistics and information. WIPO noted that in 2008 they recieved a total of 2,329 domain dispute complaints, representing an 8% increase from 2007. In total, WIPO has handled 14,663 domain disputes, covering 26,262 separate domains, up through December 2008. Some interesting facts include that English remains the most common language for the proceedings, representing 86% in 2008. Additionally, in 2008, 30% of the disputes were resolved without a panel decision. Of the remaining ones where a panel decision was rendered, 85% of those were in favor of the complainant. The top five sectors for complainant’s business activities were as follows:

1)    Biotechnology and Pharmaceuticals
2)    Banking and Finance
3)    Internet and IT
4)    Retail
5)    Food, Beverages and Restaurants

Lastly, it is clear that “.com” still is the reigning champion, because 80% of the domain disputes in 2008 were for “.com” related domains.

DefendMyDomain Commentary: It is clear by these numbers that domain disputes will continue to increase each year. WIPO press release talks about their concern for the introduction of the new gTLD’s and how it will affect the domain dispute process. While time will only tell the true effect the new gTLDs will have on this process, WIPO is making some proactive decisions, which include their proposal to ICANN to make the whole process electronic. See here for a discussion about their eUDRP Initiative.

Occidental Hotel Domains Were Not Accidental

Wednesday, March 11th, 2009

In the recent decision of Occidental Hoteles Management, S.L. v. Media Insights a/k/a Media Insight (Nat. Arb. Forum, 1239395, March 2, 2009), a single member panel was faced with a dispute over 20 different domains. The domains in dispute are listed below:

www.occidentalallegro.com
www.occidentalallegrocozumel.com
www.occidentalallegroplayacar.com
www.occidentalallegropuertoplata.com
www.occidentalgrandcozumel.com
www.occidentalgrandflamenco.com
www.occidentalgrandpuntacana.com
www.occidentalgrandxcaret.com
www.occidentalroyalhideaway.com
www.occidentalgrandcancunresort.com
www.occidentalgrandpapagayo.com  
www.occidentalgrandpuertoplata.com
www.occidentalgrandarubaresort.com
www.allegrojacktarpuertoplata.com
www.allegroplayacar.com
www.allegropapagayoresorts.com
www.grandcozumelresort.com
www.grandarubaresort.com 
www.grandxcaretresorts.com
www.royalhideawayrivieramaya.com

As the Panel explained the facts the following appears to be clear: (1) Occidental Hotels and Resorts is associated with at least 46 hotels in Europe, Africa, the Caribbean and the Americas, using the mark OCCIDENTAL since at least 1985. Complainant operates a web site locate at www.occidentalhotels.com. The disputed domains were registered by Respondent between November 2001 and April 2008. Respondent claimed to be a wholesale tour operator which provided travel packages, including hotel accommodations. Respondent claims that Complainant not only knew about the web sites for a long period of time, but also encouraged their operation by providing materials to be included on them.

The Panel reviewed the three elements of the Policy under paragraph 4(a), namely:(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate  interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

 In addressing the first element, whether the domain names are identical or confusingly similar to Complainant’s mark, the Panel noted that seven (7) of the domains were similar in any manner to the mark. They included www.allegrojacktarpuertoplata.com, www.allegroplayacar.com, www.allegropapagayoresorts.com, www.grandcozumelresort.com, www.grandarubaresort.com,
www.grandxcaretresorts.com, and  www.royalhideawayrivieramaya.com. The Panel found Complainant failed to prove those domains were identical or confusingly similar. The Panel then  oddly made the following statement: “With regard to the remaining domain names, the Panel declines to enter a finding as to identicality or confusing similarity.” Based upon the other factors it appears to have not mattered, but this was an odd lack of review on the part of a Panel.

The Panel then addressed the second prong, whether Respondent had any rights or legitimate interests in the domain. The Panel explains that Complainant had a contractual relationship with Respondent’s “Parent Company” (which the Panel explains as a related entity). The Panel found that the web sites were promoting Complainant, with commissions or other payments being made to Complainant. Although Complainant may not have authorized Respondent directly, the Panel found that Complainant was long aware of these domains. 

The Panel declined to address the bad faith prong based upon its findings in the first two elements, and ruled that Complainant’s request be DENIED. 

DefendMyDomain Commentary: This is another example of why a reseller of goods or services can use a similar domain provided that the reseller adequately discloses the nature of his or her goods or services on the subject website.

VOLVO: Not Safe When it Comes to Domain Names- – Reseller of Parts OK!

Friday, March 6th, 2009

In the recent decision of Volvo Trademark Holding AB v. Volvospares / Keith White (WIPO Case No. D2008-1860, February 10, 2009) a single member Panel was faced with a dispute regarding www.volvospares.com. Since everyone knows who Volvo is, we will skip over the background info about Complainant. If you want to know more about them, go to www.volvo.com. The disputed domain was registered on January 13, 1997. The domain supposedly resolved to a web site where reconditioned, used or new replacement parts for VOLVO vehicles were offered for sale.

                 volvo-2006-logo

The Panel addressed the three elements which Complainant must prove: (i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the domain name; and (iii) The domain name has been registered and is being used in bad faith.

First the Panel reviewed whether the domain was identical or confusingly similar to the VOLVO mark. The Panel explained:

The Panel has no hesitation in finding that the disputed domain name is confusingly similar to those trademark rights. The Respondent appears to dispute this, contending that the disputed domain name is totally representative of what is to be found at the website. This mistakes the nature of the inquiry at this stage. What is required at this stage is a comparison of the disputed domain name itself to the proved trademark rights. The point made by the Respondent, however, may be relevant at the stages of considering rights or legitimate interests and registration and use in bad faith.

The Panel then moved to the second prong, namely, whether or not Respondent had any rights or legitimate interests in the domain. The Panel spent much of its opinion on this factor. The Panel explained that WIPO provides an overview of principles which address some of the specific concerns in this dispute. The question presented was whether or not a reseller can have a legitimate interest in the disputed domain. WIPO Overview paragraph 2.3 states:

A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.

The Panel reviewed the facts and evidence presented and concluded that Respondent was offering Complainant’s goods for sale in good faith. The Panel also found that Respondent is not disentitled to sell the products, because although not all products were actually branded as VOLVO, it is understood that even VOLVO has parts in their vehicles which do not have the VOLVO mark on them. Instead as Respondent points out, many parts bear a third party mark, such as BOSCH spark plugs.  

The parties also argued about the presence and the timing of a disclaimer on the disputed domain, which stated “Volvospares.com has no affiliation with Volvo Group and makes no claim to or implication of being associated in any official business capacity in conjunction with or for such companies.” Complainant contended that the disclaimer was not put on the site until after the commencement of the dispute. The Panel found that the presence or absence of a disclaimer was not conclusive or fatal.

The Panel made the additional following observations and findings:

Considering the Respondent’s website as a whole and each specific page, the Panel finds it does not misrepresent any association with the Complainant (or the VOLVO group). It represents nothing other than what appears to be true – that the Respondent offers for sale from the website parts for VOLVO vehicles. On balance, the website does not have an appearance which suggests it is likely to be mistaken for an official or authorized site of the Complainant or the Volvo group. In the circumstances, the Panel finds that it is most unlikely that anyone would have been misled by the website even before the disclaimer was added.

Ultimately the Panel found that Respondent had rights or legitimate interests in the domain. The Panel quickly made finding regarding the bad faith prong, noting that the domain was not registered or used in bad faith. As a result, the Panel DENIED the request for transfer.

Defend My Domain Commentary: The U.S. Supreme Court, in the 1947 ruling in Champion Spark Plug Co. v. Sander, 331 U.S. 125 (1947), found that a second-hand dealer may use the trademark of the manufacturer so long as the manufacturer is not identified with inferior qualities of reconditioned parts. A full and clear disclosure by the reseller that it sells reconditioned parts is necessary.

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