In the recent decision of Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009) a three member Panel was faced with a dispute over the domain www.shoeland.com. Complainant, is a footwear retail store and maintains a web site at www.shoeland.net. Complainant claimed use of the mark SHOE LAND since March 1, 1997 and has a Federal registration for the mark since April4, 2006. Respondent replied to the ICANN UDRP complaint noting that they are a business who regularly registers domains with intrinsic value and generates revenue from pay-per-click advertising links. The disputed domain was registered in 1998.

As the Panel noted, 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.

The Panel began with the first prong, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found that complainant had sufficient rights under the Policy ¶4(a)(i), but noted as follows:

In its Complaint and Additional Submission, Complainant also asserts and provides evidence of its rights in the SHOE LAND mark through its continuous use of the mark in commerce since at least as early as March 1997. Nevertheless this use of the mark remained local, and does not provide the mark with secondary meaning. As a result, the Panel finds that Complainant does not have sufficient common law rights in the SHOE LAND mark under Policy ¶ 4(a)(i), dating back to March 1997. 

Regardless the Panel found Complainant had satisfied the first prong. Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant failed to establish a prima facie case. Respondent argued, and the Panel agreed as follows:

Complainant does not have common law rights dating back as far as September 1998, when Respondent registered the disputed domain name, because Complainant’s SHOE LAND mark had not acquired secondary meaning by that time.  Respondent contends that the evidence put forth by Complainant fails to demonstrate that Complainant was well-known yet outside of the Orlando, Florida area, or that Complainant had spent much money promoting the SHOE LAND mark.    

Respondent also argued that it registered generic domain names as a business practice, which would satisfy the rights or legitimate interests section of the policy. The Panel agreed with this concept as well finding that “registering such a generic domain name is a business practice that confers upon the practitioner rights or legitimate interests in that domain name. As a result, the Panel finds that Respondent established rights in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”

Moving to the last prong, whether the domain was registered and used in bad faith, the Panel explained that since Respondent had proved it had rights or legitimate interests in the domain at the time of registration, then the registration could not have been in bad faith. The Panel explained:

The Panel finds that a respondent is free to register a domain name consisting of common terms, unless he is aware or should have been aware of the secondary meaning those common terms had at the time of the registration. Since the disputed domain name contains such common terms and as there was no secondary meaning at the time of the registration, the Panel is of the opinion that Respondent did not register  the <shoeland.com> domain name in bad faith under Policy ¶ 4(a)(iii).

The Panel also addressed a request by Respondent to find Reverse Domain Name Hijacking. The Panel explained that since Complainant provided evidenced of active promotion of the SHOE LAND mark since 1997 there could not be reverse domain name hijacking. The Panel further explained that reverse domain name hijacking requires bad faith on the part of Complainant and that none was present.

For an interesting counter perspective on the issue of reverse domain name hijacking, read the dissenting opinion by one of the Panelists, who believes this was a clear case of reverse domain name hijacking. He argues that the Complainant had no reasonable basis for arguing bad faith The single dissenting Panelist also chastises the Complainant for revealing emails and facts that the parties engaged in settlement discussions and sale of the domain negotiations prior to the dispute, despite the fact that those communications were labeled “Confidential-For Settlement Purposes Only.”

Ultimately, the Panel DENIED Complainant’s request for transfer and DENIED Respondents request for reverse domain name hijacking.

As many of you know Facebook is the enormously popular social networking web site located at www.facebook.com. It has also become a common destination for businesses as well. Many businesses have flocked to the web site so that they can stay connected with a generation of Internet users who visit the Facebook web site, sometimes multiple times a day. There is a strong likelihood that many people and businesses that you know are already on Facebook.

On Tuesday, June 9, 2009, Facebook announced that they will be offering a dedicated personal URL for their users. This means that a company like Wal-Mart will be able to own www.facebook.com/walmart or Target can own www.facebook.com/target. Starting on Saturday June 13, 2009, anyone with an active Facebook account, that was established prior to June 9, can sign up for the dedicated URL. If you created a Facebook account after this cut-off period you can sign up for the dedicated URL on Sunday June 28, 2009. This cut-off period was created to prevent “squatters” from snatching up numerous dedicated URL’s.

For those of you who have established trademark rights, Facebook has trademark prevention registration form, available (here), so that you can provide them with validation of your preexisting rights and limit the ability of others to use your mark in a URL. We are sure that there will be some bumps along the way with some squatters, but we hope that Facebook works with rights holders and attorneys to resolve any disputes.

In the recent decision of Futuredontics Inc. v. 1-800 Domain Names, LLC (WIPO D2009-0296, May 31, 2009) a single member Panel was faced with a dispute over the domain www.1-800-dentist.com. Complainant operates a dentist referral and information business since 1985, and maintains a web site at www.1800dentist.com. Complainant has trademark registrations for “1-800-DENTIST” and “1800DENTIST” in connection with those services. Respondent did not answer the Complaint.

The Panel noted that paragraph 4(a) of the Policy directs that Complainant must prove each of the following: 1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and 2) that Respondent has no rights or legitimate interests in respect of the domain name; and 3) that the domain name has been registered and used in bad faith.

In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel simply found the domain to be identical or confusingly similar without any additional factual support or explanation. Instead the Panel just cited numerous prior domain dispute decisions as support.

Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Respondent failed to challenge or argue for his rights, was not commonly known by the disputed domain, and had not acquired any trademark rights. As a result, the Panel found Complainant satisfied this element.

The Panel spent most of the decision discussing the final element, whether the disputed domain was registered and used in bad faith. The Panel explained:

There is also proof in the record that Respondent may have provided false or misleading information in connection with the registration of the domain name <1-800-dentist.com>, which is a further indicia of bad faith. There is also proof in the record that Respondent has falsely linked the website to which the domain name <1-800-dentist.com> resolves to alternating websites, both of which falsely imply some connection between that website and the services of Complainant. This is bad faith. The record suggests that on certain days Respondent causes the website to direct consumers to Complainant’s website, while on other days Respondent will divert consumers to different websites not related to Complainant. It appears that even when Respondent directs consumers to Complainant’s website, Respondent provides advertising for businesses not associated with Complainant. Respondent’s registration of the domain name, and the use of that domain name in this fashion, prevents Complainant from fully controlling the commercial use of its trademarks and more particularly the domain name which is identical or substantially similar to Complainant’s registered trademarks. This is bad faith.

Ultimately, the Panel found that Complainant proved all three ICANN UDRP elements and agreed to TRANSFER the disputed domain.

In the recent decision of CHRISTIAN DIOR COUTURE v. Kianna Dior Productions (WIPO D2009-0353, May 24, 2009),  a single member Panel was faced with a dispute over the domain www.kianndior.com. Complainant, famous French fashion house known for fragrances, clothing and other fashion accessories and maintains a web site at www.dior.com. Respondent, is a well known pornstar working in the adult entertainment industry for more then a decade and also maintains an additonal web site at www.kiannaxxx.com. The Panel noted that Christian Dior must prove three elements under the ICANN UDRP policy section 4(a) which include: “(i) the domain name is 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 respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.”

In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark(s), the Panel first noted there was no doubt that Complainant had trademark rights in DIOR, CHRISTIAN DIOR and MISS DIOR. Complainant argued that since the domain wholly incorporates the DIOR mark, that it would be sufficient to establish confusing similarity. Interestingly, the Panel stated:

This Panel is of the opinion that the unqualified statement that confusing similarity exists if a disputed domain name completely incorporates the relevant trademark does not, without more, prove dispositive in the present case. For example, the Complainant’s trademark DIOR could be wholly incorporated in the hypothetical domain name <diorama.com>, however the word “diorama” has, in English at least, an independent dictionary meaning which dispels any confusion with DIOR. The trademark NIKE is incorporated within, for example, the domain name <nikethamide.com>, a drug used as a respiratory stimulant. In such cases, there may very well be no confusing similarity. Added matter invites a contextual comparison on a case by case basis. Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity.

Ultimately though, the Panel concluded that Complainant had established this element and that the domain was confusingly similar to the Complainant’s DIOR mark.

Moving to the second element, whether Kianna Dior had any rights or legitimate interests in the domain, the Panel noted that Complainant established a prima facie case. Once a Panel makes that determination, the burden of proof switches to Respondent. The Panel relied on evidence and arguments presented by Respondent that Respondent’s company, Kianna Dior Productions was an active corporation which registered the domain. The Panel in analyzing the facts made the following finding:

Paragraph 4(c)(ii) of the Policy requires only that the Respondent has been commonly known by the domain name. The Panel finds that by virtue of use since 2001, the Respondent (to use the words of paragraph 4(c)(ii), “as an individual, business, or other organization”) has provided evidence of being commonly known in her industry and by her audience by the domain name. If the Respondent is infringing the Complainant’s trademark rights, the Complainant may initiate infringement proceedings in an appropriate court. But in this case, the Panel has applied the Policy to the facts, and that includes paragraph 4(c)(ii). The Panel finds that the Respondent has on balance discharged the onus which fell to it under paragraph 4(a)(ii) of the Policy and accordingly finds that the Complainant has in the present administrative proceedings failed to establish the second limb of its case.

As a result, the Panel declined to review the final bad faith element, since Complainant failed to establish the second element. The Panel DENIED Complainant’s request for transfer.

DefendMyDomain Commentary: But See our previous posting on June 8, 2009, “Jim’s Dead, But His Music and Persona Only Live On In One Jim Morrison Domain” wherein the JimMorrison domain was Transferred.

In the recent decision of The Estate of Jim Morrison a/k/a Lou and Pearl Courson v. Rick Sentieri, Communication Services Group (WIPO D2009-0334, May 29, 2009), a single member Panel was faced with a dispute over the domain www.jimmorrison.com . Jim Morrison was the hard partying, sultry and sexy front man for the 1960s band The Doors. Information about Jim Morrison and The Doors can be found at www.thedoors.com. Complainant represents Morrison’s estate and provided additional information about his success and credits, which included being a playwright and poet.

The Panel reviewed the three element ICANN UDRP Policy where Complainant must prove (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 in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.

In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel first dealt with whether Complainant had a protectable mark. The Panel noted that Complainant did not have a federal trademark registration or application. However, after reviewing the evidence presented by Complaint initially and through an Additional Submission, the Panel found Complainant had established common law rights in the mark Jim Morrison. The Panel then quickly found that the domain was identical or confusingly similar to Complainant’s mark, since it wholly incorporated all portions of the mark.

Moving to the second prong, whether Respondent had any rights or legitimate interests in the disputed domain, the Panel noted that once Complainant makes a prima facie case, the burden shifts to Respondent. The Panel referenced Respondent’s reply as follows:

Respondent refers to himself as “Rick Sentieri aka Jim Morrison.” He registered the Domain Name on March 1, 1997, twelve years ago. Respondent uses the Domain Name to operate a web site which sells posters of entertainers (including Jim Morrison and The Doors), and it advertises and sells other merchandise and services for third parties through links. Respondent’s (sole) reply of April 6, 2009 was an email having as the Subject Line: “please leave me alone you are making me sick and very unhappy.” The e-mail included a poem Respondent allegedly wrote and the following message:

“I have received your letter that has print outs of my web site, <jimmorrison.com>. Your organization has violated my webpage disclaimer. You must have written permission to produce copies of my web page. Please read disclaimer on the bottom of the <jimmorrison.com> (JIMMORRISON.COM 1996-2009 trademark of Rick Sentieri aka JIM MORRISON) Rick Sentieri aka Jim Morrison is a published author and singer who LIVES in Kenosha Wisconsin. His Jim Morrison.com videos have been downloaded THIS YEAR, over two hundred thousands times. Rick Sentieri aka Jim Morrison’s poetry is the best ever written. Potentially a Nobel Peace Prize winner. His poetry can be downloaded (some with his OWN voce reading his poems) here: http://jimmorrison.com/love.htm.”

Based upon Respondent’s failure to address Complainant’s allegations and evidence, the Panel took Complainant’s facts as proven and found that the second prong was satisfied. The Panel moved to the last element, whether the disputed domain was registered and used in bad faith. The Panel noted that Respondent was using the domain name to sell products and service of third parties with products bearing the JIM MORRISON mark that compete with Complainant’s products.

Ultimately, the Panel found Complainant had satisfied all three elements and granted the TRANSFER.

In the recent decision of William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception (Nat. Arb Forum 1256123, June 1, 2009), a single member panel was faced with a dispute over three domains: www.williamclinton.com, www.williamjclinton.com and www.presidentbillclinton.com. This very interesting case provides an insight into the potentially arbitrary nature of the non-binding UDRP arbitration system and the application of the three element ICANN UDRP test for domain disputes. Complainant needs no introduction, so some background on Respondent is helpful. The Panel summarized Respondent’s Additional Submission arguments, as follows:

Respondents timely Additional Submission first focuses on the issue of common law marks, arguing that most of the famous person common law mark opinions are defaults.  As to bad faith, Respondent notes that he has never acted in bad faith.  When requested, for example, [Respondent] surrendered domain names to the United States Government.  Respondent also states that he registered domain names of famous persons in part to make a point concerning the ease of registration of such domain names.  He further notes that he has never sold a politician’s domain name.  He also states that he has worked with Senator Hatch and others to promote the idea that some domain names deserve protection under the federal statutes, including the names of famous places and politicians.

The Panel began its analysis of the case by “reluctantly” [actual words used by Panel] finding that Clinton had established a common law mark in his name. Interestingly, the Panel felt obliged to also note that he is “partially responsible for the problems created by allowing common law marks in personal names, having been the Panelist that wrote Mick Jagger v. Denny Hammerton, FA7000095261 (Nat. Arb. Forum Sept. 11, 2000).”

In addressing the first prong, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel went through a more detailed analysis of applying the common law mark theory. Regarding one of the disputed domains, the Panel noted, “The addition of the term “president,” or the use of an abbreviated version of Complainant’s mark in a disputed domain name creates a confusing similarity between the disputed domain name and Complainant’s mark.” Ultimately, the Panel found Complainant President Clinton had satisfied this element.

Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel explained:

Complainant has shown that Respondent is not commonly known by the disputed domain names.  Complainant states that Respondent is known as “web of deception,” which is also how Respondent is identified in the WHOIS information.  Complainant also claims that Respondent is not affiliated in any way with Complainant.  Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 

The Panel went further to make the following findings:

Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Respondent’s rebuttal fails.  Respondent’s disputed domain names resolve to an official website related to the Republican Party, which is the party in direct opposition to the political party Complainant endorses.  Such use of the disputed domain names does not equate to 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). 

The Panel found that Clinton had satisfied the second prong and moved to the third prong, whether Respondent registered and used the domain in bad faith. This is where the Panel took some serious liberties in applying the UDRP policy.

However, the Panelist cannot find that Respondent’s registration and subsequent use of the disputed domain names to resolve to 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 is allegedly using the disputed domain names in order to intentionally attract Internet users to an opposing website by creating confusion among Internet users who are seeking Complainant’s WILLIAM CLINTON mark.  Allegedly, the disputed domain names resolve to the official Republican party website in direct competition with Complainant, giving the impression Complainant is affiliated with its political competitor.  The Panelist declines to find that this is a violation of Policy ¶ 4(b)(iv) and is not bad faith registration and use….Links to the Republican National Committee website are simply not within the scope of this Policy.

As a result the Panel found that Clinton had not established bad faith and therefore DENIED the request for transfer.

DefendMyDomain Commentary: We are unsure how the Panel can square the second and third prong in light of the evidence and the finding that Respondent “use[s] the disputed domain names in order to intentionally attract Internet users to an opposing web site by creating confusion.” Since the domain was owned by “Web of Deception” and was being redirected to a Republican National Committee website, it seems clear that bad faith existed. Additionally, Respondent’s own arguments were that his reason for ownership was to show the ease of registration of such famous person domain names and was trying to promote the idea of protection under the federal statutes. One should ask whether Respondent’s use of the domain falls squarely within section 4(b)(iv) of the UDRP policy which discusses instances of evidence of bad faith and states “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” One should also ask whether Respondent’s admissions fit into section 4(b)(ii), which states “(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.” This single Panelist decision teaches us that for important domains, three member Panels may provide different results.

In the recent decision of Schur International A/S v. Jorge Massa (WIPO D2009-0450, May 25, 2009), a single member Panel was faced with a dispute over www.drop-stop.com. Complainant, is a Danish company which markets a wine pouring device to prevent spilling. Complainant has trademark protection for the DROPSTOP mark in Australia, Canada, and also has a Community Trademark. Complainant maintains web sites for the product which include www.dropstop.com and www.dropstop.dk.

The Panel noted that although the domain was registered on March 14, 2005, users were redirected to another web site which “offered wine pourers similar to the ones offered on the Complainant’s websites.”

The Panel first began with the “identical or confusingly similar” prong of the ICANN UDRP three element test for domain disputes. The Panel noted that Complainant owned numerous trademarks and that the only difference between the domain and the mark was the addition of the hyphen. This insignificant change was not enough and the Panel found Complainant satisfied this prong.

The next element, whether Respondent had any rights or legitimate interests in the domains, was also quickly dealt with by the Panel. The Panel found that Complainant put forth a prima facie case in regards to this prong. Since Respondent did not reply to the dispute the analysis appears to end there, and the Panel found Complainant satisfied this element as well.

The last element, whether the domain was registered and used in bad faith, provided the most amount of analysis by the Panel. The Panel noted:

It is suggestive of the Respondent’s bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain name. The Complainant submitted evidence, which shows that the Complainant’s trademark – DROPSTOP is registered in different territories around the world and is known in the wine business and that its trademark would be recognized publicly. The Complainant’s DROPSTOP trademark was registered as early as 1992 in Australia (see Australian trademark registration No. B584204 – DROPSTOP (stylized) with the registration date of August 12, 1992). The Respondent registered the disputed domain name long after the Complainant registered its DROPSTOP trademarks….A review of the web site operating under the disputed domain name reveals it automatically leads consumers to another website – “http://tds.com.ar/drop-stop” – on which the consumers are offered wine pourers that are similar to the ones offered by the Complainant in the Complainant’s website under the name “Dropstop”. The Respondent’s use of the name “dropstop” to promote such similar wine pourers clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and the DROPSTOP trademark and product. Respondent’s actions constitute bad faith.

The Panel went further and explained:

In light of the Complainant’s distinctive registered trademark, the Panel finds that the registration of the disputed domain name in the name of the Respondent shows the Respondent intent to operate a web site offering similar goods and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either the source of the Complainant goods or associate the Respondent with the Complainant. The use of the Complainants distinctive trademark for quasi identical goods constitute bad faith on behalf of the Respondent.

Ultimately, the Panel found Complainant satisfied all three elements and agreed to TRANSFER the domain.

In two different decisions from the National Arbitration Forum, Improv West Associates, d/b/a Improv Comedy Clubs, was not laughing its way to winning some domain names. Improv West Associates maintain web sites at www.improv2.com, www.improv.com and www.improvclubs.com.

The first dispute was Improv West Associates v. Acimasiz Cocuq (Nat. Arb. Forum 1257098, May 12, 2009) where a single member panel was faced with a dispute over the domain www.improvcomedyclubs.com. In the decision, Complainant claims to have used the IMPROV COMEDY CLUB mark since 1963 in connection with live entertainment by stand-up comedians. The Panel noted that 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. Respondent failed to respond to the Complaint. Normally, a Panel will review all three elements in the decision, but this Panel only discussed Complainant’s failure of the third element, bad faith. The Panel explained:

Complainant argues that Respondent has registered and used the disputed domain name in bad faith in that Respondent solely obtained the disputed domain name to sell it to Complainant for value or prevent Complainant from using the disputed domain name.  Noticeably missing from the Complaint, however, is any corroborating or supporting evidence to verify this claim.  The Complaint must provide more than legal assertions and conclusions of bad faith registration and use in order to qualify for its desired remedy under the Policy, and Complainant has failed in this task.  Thus, the Panel cannot, and will not, make a finding of bad faith registration and use on the merits of the case under Policy ¶ 4(a)(iii).

Therefore, the Panel DENIED Complainant’s request for transfer.

The second dispute was Improv West Associates v. Not Applicable a/k/a Kenneth Arnold (Nat. Arb. Forum 1256834, May 13, 2009) where a single member Panel was faced with a dispute over the domain www.improvcomedyclub.com. Unlike the first case above, this Respondent put up a fight and the Panel provided an in-depth analysis of the three UDRP ICANN elements of proof and the parties’ claims.

Although most Panels normally only address the three elements stated above, this Panel created a separate section addressing “rights in a mark” for Complainant.  The Panel noted that Complainant does not have any registered marks for IMPROV COMEDY CLUB, and only recently filed trademark applications for IMPROV. Those applications remain pending, and the Panel explained the under the Policy trademark applications do not give rise to trademark rights. Therefore, the Panel was faced with determining whether Complainant had acquired sufficient common law rights. Interestingly, Complainant’s counsel submitted his own affidavit attesting to 25 years of personal experiences attending the IMPROV COMEDY CLUB. Weighing that “evidence” the Panel explained:

Ignoring those parts of the affidavit [by counsel] expressing opinions about the very issue to be determined, the Panel is prepared to accept, for the purposes of this administrative proceeding and despite the slender evidence which that affidavit provides, that Complainant has, through use, acquired common law rights in the mark IMPROV COMEDY CLUB.  The Panel is not satisfied that the same can be said in relation to the word IMPROV.

The panel next moved into the full three element analysis, where it quickly agreed that the disputed domain was identical or confusingly similar to Complainant’s mark. Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel explained as follows:

Respondent has provided no evidence to support his contention that he intends to use the domain name for the improvised comedy club services it describes or at all. He does not even identify the other domain name under which he claims to have operated a business with which the present domain name is claimed to be associated….In the absence of any evidence of use or demonstrable preparations to use the domain name since it was registered in 1999, the Panel finds Respondent has no rights or legitimate interests in the domain name.

The Panel then moved to the last element, whether the Respondent registered and used the domain in bad faith. Complainant sought an inference from the Panel that bad faith occurred as a result of a finding of no rights or legitimate interests. The Panel rejected this proposition. The Complainant also alleged that Respondent’s lack of use of the domain for 10 years also inferred bad faith in line with the famous “passive holding” case of Telstra Corp. Limited v. Nuclear Marshmallows (D2000-00003 WIPO Feb. 18, 2000). The Panel disagreed with this proposition and stated as follows:

The present case, however, is on all fours with Alberto-Culver Co. v. Pritpal Singh Channa, D2002-0757 (WIPO Oct. 7, 2002), in which the domain names were <staticguard.com> and <staticguards.com>.  The learned panelist said:
 
…Complainant relies on the idea of “passive holding” as established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This case established the proposition that doing nothing with a domain name may amount to bad faith registration and use. However the Panelist in that case was extremely careful to note that this principle does not apply to every example of passive holding. The specific circumstances in that case included false name information in the WHOIS record, false address information, failing to respond to the Complaint, an extremely famous mark within the geographical region of both Complainant and Respondent, and a mark that was entirely invented. This case has none of those features: Respondent has provided his name, and his address, and has responded within time to the Complaint. Complainant has provided no evidence that its mark is so well known that any registration (without use) of a domain name cannot help but lead to the conclusion that Respondent registered with male fides. And, unlike the mark in Telstra, the mark and the domain names here are the concatenation of two generic English words. I conclude therefore that the Telstra passive holding principle does not apply to the facts in this case.

The same words apply here with equal force, the only exception being that the name under which the domain name was registered was “Not Applicable.” The name and address of Respondent, Kenneth Arnold, were disclosed as the Administrative Contact and Technical Contact. Accordingly, registration in the name “Not Applicable” is insufficient to distinguish this case from Alberto-Culver Co., supra and insufficient to attract the “passive use” doctrine of Telstra Corp. Ltd., supra.

Ultimately, the Panel found that Complainant failed to establish the third element and DENIED the request for transfer. The Respondent also made a request for a finding of reverse domain hijacking, which the Panel rejected.

In the recent decision of Lynda Carter v. Alberta Hot Rods (Nat. Arb. Forum 1253377, May 4, 2009) a single member panel was faced with a dispute over the domain www.lyndacarter.com  The disputed domain was registered in 1996 by Respondent, which at the time of the dispute was being redirected to www.celebrity1000.com . 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.                         

In addressing whether the disputed domain is identical or confusingly similar to Complainant’s mark, the Panel noted that Complaint does not have a registered mark for LYNDA CARTER. However, the Panel explained that under the ICANN UDRP Policy section 4(a)(i) Complainant can provide evidence of common law rights through a showing of sufficient secondary meaning. The Panel found that Complainant’s use of LYNDA CARTER in connection with her television, film and stage career performances, over 25 years, was sufficient to establish such secondary meaning. The Panel found that Complainant satisfied the first prong of the test.

Next the Panel addressed the second prong of the test, whether Respondent had any rights or legitimate interests in the domain. The Panel explained that once Complainant made a prima facie case, the burden shifted to Respondent. Since Respondent failed to respond to the dispute, an assumption is made that there are no rights or legitimate interests. However, the Panel still provided an analysis and noted:

Respondent is using its <lyndacarter.com> domain name to redirect Internet users to Respondent’s commercial <celebrity1000.com> domain name, which contains information about a variety of entertainers and advertisements in competition with Complainant’s business as a performer.  The Panel finds this use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)…. The WHOIS information and record do not indicate Respondent is commonly known by the <lyndacarter.com> domain name.  The WHOIS information lists Respondent as “Alberta Hot Rods.”  The record indicates Complainant has never authorized Respondent to use her LYNDA CARTER mark.  Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).

The Panel then moved to the final prong, whether the disputed domain was registered and used in bad faith. 

Complainant has asserted Respondent is a seasoned cybersquatter who has been a party to numerous UDRP decisions in which the domain names at issue were transferred to the respective complainants in those proceedings. The Panel finds Respondent’s actions constitute a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii)…. Respondent’s disputed domain name redirects Internet users to celebrity information and advertisements that compete with Complainant’s performance business.  The Panel finds Respondent’s use constitutes disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). … Respondent is using the website resolving from its confusingly similar disputed domain name to redirect Internet users to a website that contains information and advertisements that compete with Complainant.  Respondent presumably profits from this use of the confusingly similar disputed domain name in the form of click-through fees.  Additionally, Respondent’s use of Complainant’s LYNDA CARTER mark creates a likelihood of confusion regarding the source of the content resolving from the disputed domain name.  The Panel finds this is an attempt by Respondent to profit from the goodwill associated with Complainant’s mark.  Therefore, the Panel finds Respondent’s attempt to profit from its use of the confusingly similar disputed domain name constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).

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