logo

Archive for May, 2009

Air France Jets “Suck” Up Critic’s Domain!

Friday, May 29th, 2009

In a recent WIPO decision Societe Air France v. Mark Allaye-Chan (WIPO D2009-0327, May 14, 2009) a single member panel was faced with a dispute over www.airfrance-suck.com. A brief history of the airline includes the following. Air France began operations in 1933 and operates an air transport business (involving passenger transport, cargo transport and maintenance services). Air France is a national airline, with flights to over 180 destinations and 98 countries. Air France maintains a website at www.airfrance.us.  Respondent, claimed to be Edmond Chow, and not the listed Respondent. Mr. Chow claimed that he used Mr. Allaye-Chan, his friend, to register the domain using Allaye-Chan’s already established domain name account. Air France complained that the disputed domain was not being used a gripe or “sucks” site but instead redirected visitors to a Google search engine.

The Panel reviewed the ICANN UDRP policy elements, section 4(a), wherein the Complainant must prove (i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in the disputed domain names; and (iii) the disputed domain names have been registered and used by the Respondent in bad faith.

In addressing the first element, whether the domain is identical or confusingly similar to Complainant’s mark, the Panel noted that the domain contained the entire mark of Complainant. The Panel noted that prior panels had found this element could be satisfied because the domain name incorporated Complainant’s entire mark. Interestingly, the Panel explained that there was a significant number of non-English speaking customers who will not automatically recognize “suck” as a pejorative term, since Complainant originates in France. As a result, the Panel found Complainant satisfied this “confusingly similar” element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel quoted a prior decision as follows:

Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, sets out four elements which should be met to succeed under this limb: 1. The Respondent’s use must be legitimate noncommercial or fair use; 2. The use must be without intent for comment gain; 3. The use must be without intent to misleadingly divert consumers; and 4. The use must be without intent to tarnish the trade mark of the complainant. While the Response states that the disputed domain name was registered for the purpose of a legitimate protest site, there is no evidence to support this proposition. The Respondent has not provided evidence before the Panel of any demonstrable steps it has taken to launch a website at the disputed domain name, related to his grievance with the Complainant. At the time of writing this decision, the website was not operational.

Following Mission KwaSizabantu the Panel then noted:

Admittedly the disputed domain name has only been registered for a short time (since January 5, 2009) and it may be that the Respondent has not had sufficient time to launch his protest site. However, the website has previously resolved to a Google search engine (which allows for the possibility of commercial gain), and therefore the Panel cannot see how the Respondent satisfies the four requirements set out in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279.

As a result, the Panel found that Complainant satisfied the second prong as well. Moving onto the last element, whether the Respondent registered and used the domain in bad faith, the Panel  found that “while the website may not currently be active, it previously resolved to a Google search engine, which indicates that at some stage, the disputed domain name was used for commercial gain. While there may be some other intended purpose for the disputed domain name, no clear evidence was put forward by the Respondent of such use.”

Ultimately, the Panel agreed with Complainant and ruled to TRANSFER the disputed domain.

DefendMyDomain Commentary: As noted above, the Panel found that the disputed domain had only been registered for a short time. Since the Complaint was filed in March 2009 and the domain was registered in 2009, we can only assume/recommend that domainers start “using” the domain within three months of ownership. It will be interesting to see if other Panels make similar findings.

Blackberry Sends 101 “TRANSFER GRANTED” Messages To Cybersquatters

Thursday, May 28th, 2009

In the recent decision of Research in Motion Limited v. Georges Elias (WIPO D2009-0218, April 27, 2009), a single member panel was faced with a dispute over 111 (that’s not a typo) domains. Research in Motion (herein “RIM”) is the company most famously known for bringing us the BLACKBERRY cell phones and personal communication devices. RIM maintains two web sites at www.blackberry.com and www.shopblackberry.com. RIM claimed rights to the term BLACKBERRY and to the term BERRY.

Essentially, the Panel found that 101 of the domains met the three elements for ICANN UDRP domain disputes. Under paragraph 4(a) of the Policy, to succeed the Complainant must prove all of the following: (i) the disputed domain names are 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 disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith.

In this case, the Panel determined that 10 of the domains did not satisfy the elements and made the following observations:

 For a minority of the disputed domain names (e.g. <copberry.com>), there is a more difficult issue of confusing similarity with the Complainant’s weaker BERRY mark. In these cases, the Panel considers that it would only be possible to find confusing similarity if the Respondent’s intent was determinative. For the reasons discussed further below, the Panel considers that the Complainant’s BERRY mark is insufficiently distinctive in the context of the domain names, and the disputed domain names therefore insufficiently similar on an objective comparison, for the Respondent’s intention to tip the balance.

Essentially, a close look at the domains which were not transferred show that they contained just the word “berry” with some other word, but lacked the prefix “black.” For a full listing of the domains transferred, please see a copy of the decision here.

Rotobrush Fails To Clean Up Its Internet Domains

Thursday, May 28th, 2009

In the recent decision of Rotobrush International LLC v. Vacbrush a/k/a Ming Liu (FA 1253370, Nat. Arb. Forum May 8, 2009) through the National Arbitration Forum, a single member panel was faced with a dispute over four domains which included www.real-rotobrush.com, www.used-rotobrush.com, www.rotobrush-online.com, and www.rotobrush.org. Complainant, Rotobrush is in the business of manufacturing and distribution of air duct cleaning systems. They maintain a website at www.rotobrush.com. Rotobrush has a trademark for ROTOBRUSH, (Reg. No. 2,021,581) in connection with those goods since at least 1996.  Respondent registered the disputed domains in July and August of 2008. The Respondent did not mount a defense or respond in any manner to the complaint.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2)   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 began its analysis with the first prong, namely, whether the domain is identical or confusingly similar to the Complainant’s mark. The Panel found that all of the disputed domains contained Complainant’s entire ROTOBRUSH mark, even though some of them included generic terms such as real, used, or online in addition to the full domain name. Regardless, the Panel found that Complainant satisfied this element.

The second element, whether the Respondent had any rights or legitimate interest in the domains, was not such a clear path for Complainant. The Panel noted that Complainant must initially make a prima facie case, and if established the burden of proof shifts to the Respondent. The Panel stated:

Complainant has failed to allege any facts whatever in support of its bald assertion that Respondent lacks rights to or legitimate interests in the disputed domain names, including as to the specifics of Respondent’s use or nonuse of the domain names.  Thus we are forced to conclude that Complainant has failed to make out a prima facie showing under Policy ¶ (a)(ii). 

As a result, the Panel found that Complainant failed to prove up its second element. Although a Complainant must prove up all three elements, the Panel still decided to analyze the final prong, whether or not the domains were registered and used in bad faith. The Panel made the additional observations and findings:

Complainant has failed to allege any facts to establish that Respondent’s registration and use of any of the domain names here in issue was or is in bad faith.  The mere assertion of bad faith without any supporting evidence is insufficient to justify a finding of bad faith registration and use of contested domain names under Policy ¶ 4(a)(iii).

Ultimately, the Complainant failed to satisfy the three elements of proof necessary for a UDRP case and the Panel DENIED the request for transfer.

DefendMyDomain Commentary:
This case illustrates that the Complainant must establish facts to support Respondent’s lack of legitimate interests and facts to support Respondent’s bad faith. Raw, unsupported legal conclusions, which mimic the UDRP elements are insufficient to meet a Complainant’s burden of proof.

Domain Privacy Service May Be Liable Under the ACPA

Thursday, May 21st, 2009

A fellow blogger and friend of ours is involved in a case dealing with a Registrar/Privacy Service where they are playing the “it’s not our problem” game in a dispute involving stolen domains. Marc Randazza’s Legal Satyricon Blog  provides an interesting and important insight for any attorney dealing with cybersquatting actions or any unfortunate domain owners who have suffered the loss of a stolen domain. Essentially the Court has made an early ruling sustaining the viability of a claim that a privacy service may be contributorily liable under the  ACPA for its customer’s actions.  See his full post here. We will continue to monitor this case for you and provide relevant updates as they come.

Switch to our mobile site