logo

Archive for July, 2009

ABC Liquors Also Wins Against Texas International Property Associates

Friday, July 31st, 2009

In the recent domain name dispute decision of ABC Liquors, Inc. v. Texas International Property Associates – NA NA FA1266499 (Nat. Arb. Forum, July 28, 2009) a single member Panel was faced with a dispute over the domain www.abcfinewinesandspirits.com. Complainant is the well known retail store for all things alcohol, including beer, wine and liquor. ABC Liquors maintains a web site at www.abcfws.com. Respondent is the infamous domainer who has over 100 adverse decisions through the UDRP process. Anyone who has tried to find the Whois information using simple Whois search tools for domains owned by Respondent has likely hit the dead end known as Compana LLC. We have previously blogged about this Respondent, but it has been a while, so we figured this would be a good time to revisit a case with this Respondent.

On a procedural level, Respondent argued that it agreed to the transfer of the domain and provided three possible ways which a Panel could proceed which include:

(i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claims (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis or (iii)  to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right, or because there is some reason to doubt the genuineness of the Respondent’s consent.

The Panel pointed out that Respondent requested the Panel should follow choice number (1) for the following reasons:

The Respondent further states that the Panel should opt for the first alternative and grant the Complainant an immediate transfer without discussing the merits. The Respondent finds an expeditious decision to be more suited to the facts of the case, as both parties agree upon a transfer. Furthermore, the Respondent evokes arguments of judicial economy as well as Section 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), both of which, according to the Respondent, support an immediate transfer.

Interestingly Respondent requested that “it should be given the opportunity to prepare a more formal response if the Panel decides that further analysis is required.” The Panel rejected this request noting “the Respondent was already given twenty (20) days from the date of the commencement of the proceedings to submit such a response.  Had the Respondent wanted to appropriately and fully reply to the Complaint, it would have had more than enough time to do so.”

So the Panel reviewed the arguments presented and decided that it would go through the full analysis of the three elements.

However, alternatively, it may be decided that this expeditious approach would be a way for cybersquatters to avoid adverse findings against them. This is the reason why the Panel, in Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), stated that “the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.”

The decision by the Panel was fairly consistent with other Panels. The Panel found that the domain was confusingly similar and nearly identical to Complainant’s mark ABC FINE WINE & SPIRITS with the exception of the additional “s” on the end of the word wine. The Panel found that Respondent was not commonly known by the domain name and based on the typosquatting it inferred no rights or legitimate interests. Lastly, the Panel found that Respondent engaged in a pattern of bad faith registration and attempted to create a likelihood of confusion for commercial gain by using the domain.

Ultimately, the Panel ordered the domain be TRANSFERRED.

GUINNESS Drinks A Beer After Winning A Domain

Thursday, July 30th, 2009

In the recent domain name dispute decision of Diageo Ireland v. Guinnessclaim (WIPO D2009-0679, July 26, 2009), a single member Panel was faced with a dispute over the domain www.guinnessclaim.com. Complainant is the well dark beer GUINNESS. It owns multiple trademark registrations across the globe and maintains a web site at www.guinness.com. The disputed domain was registered in September 2008. Complainant contended it was used for scam email messages, which included telling recipients they had won a prize. Respondent failed to respond to the Complaint.

                      guinness

Paragraph 4(a) of the Policy requires that Complainant must prove all of the following: (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 provided a very short decision. First the Panel found that Complainant satisfied the first element, noting the disputed domain contained all of Complainant’s mark with the addition of the non-distinctive term “claim” at the end.

The Panel next addressed the second element, of rights or legitimate interests. The Panel found that Complainant met its prima fcie burden by alleging the following:

Respondent owns no trademark or trade name registrations for the disputed domain name; is not commonly known by the name; has not used the domain name in a manner that would provide Respondent with rights to the domain name; and is not licensed or authorized by Complainant to use Complainant’s GUINNESS marks. Complainant further alleges that Respondent’s use of the disputed domain name in association with a scam e-mail scheme is intended “to make the receivers think that the email comes from the Complainant or at least someone related to the Complainant” and that Respondent profits from this illegitimate confusion.

The Panel found that since the domain was held passively and used for an email scam all inferences were drawn in favor of Complainant. Since Respondent failed to respond, the Panel found the Complainant proved up the second element.

Moving to the final element, bad faith, the Panel noted that the registration of the domain was long after Complainant established its rights in the mark GUINNESS. The Panel found that the use of the domain for an email scam was bad faith and was done with actual knowledge of the mark in an effort to profit from confusion.

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

Yale Professor Joseph Schlessinger Stops The Criticism

Wednesday, July 29th, 2009

In the recent domain name dispute decision of Joseph Schlessinger, Ph.D. v. PrivacyProtect.org / Harold O Connor, JS Players Association (WIPO D2009-0695, July 21, 2009), a single member Panel was faced with a dispute over the domain www.josephschlessinger.com. The Respondent failed to provide a response. Complainant is Dr. Joseph Schlessinger is the Chairman of the Department of Pharmacology, at Yale University School of Medicine. He has hundreds of academic publications and often serves as a lecturer, consultant, book author, and has served on the editorial boards of a number of scientific journals. His biography can be viewed here.

Paragraph 4(a) of the ICANN UDRP Policy states that 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) 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.

The Panel addressed the first element, noting that Complainant does not have any registered trademark in his name, but that he makes claim for common law rights based upon being famous in the scientific community. The Panel found he established common law rights noting, “Complainant is a person of considerable academic stature who has acquired ample secondary rights in his personal name, particularly in the fields of scientific discovery, development and authorship.” The Panel found the domain was identical to Complainant’s mark.

Moving to the second element, the Panel notes that Respondent is not commonly known by the domain. Interestingly though, the Panel explains as follows:

In the terms of paragraph 4(c)(i) of the Policy the Complainant says that the corresponding website conducts no bona fide business but is in fact a criticism site with defamatory content. In the terms of paragraph 4(c)(iii) of the Policy the Complainant says that the use of the website is not fair, as would be required under the Policy, because again, it is a criticism site that in the Complainant’s view exploits the Complainant’s name and is dressed up to appear initially legitimate.

Despite noting that Complainant acknowledges the use of the domain was criticism, the Panel still made the following finding:

The Respondent could perhaps be said to offer a service, whereby he tables his comments about the Complainant. But by the Respondent’s use of the Complainant’s mark in full and in isolation in the domain name without authority, such use is neither bona fide nor fair in the view of the Panel…. In the present case, the Respondent may well be entitled to express its opinion about the Complainant on a website, but in the Panel’s view such entitlement does not extend here to a right or legitimate interest under the Policy in doing so through a domain name that is identical and clearly confusingly similar to the Complainant’s trademark.

The Panel found Respondent lacked any rights or legitimate interest. Moving to the last element, bad faith, the Panel takes us through an interesting factual analysis of the content on Respondent’s site.

[T]he Respondent’s website in the space of only three pages ignores most of the positive dimensions of the Complainant’s stature and concentrates almost exclusively on two uncomplimentary (and contested) allegations distilled out of the Complainant’s life. Likewise these negative aspects predominate in the keywords supplied for the attraction of search engine hits. The Panel recognises the principles of freedom of speech and is not in a position here to assess the veracity or otherwise of the Respondent’s allegations or, on the other hand, whether the purported facts may otherwise be legitimately in the public domain. The key point is that the Respondent’s website posted at a domain name identical to the Complainant’s mark is targeted specifically at the Complainant’s name and mark and uses the domain name to focus on the denigration of the Complainant.

The Panel disclaims any view as to the validity of the content posted on the disputed domain and concludes with the following statement:

Regardless of how benign or otherwise the material, the over-riding consideration in this Panel’s view is that the Respondent’s undoubted freedom of speech within the law, unfettered as it is except by his ability to pay for any possible consequences, does not grant him authority to register a domain name identical and clearly confusingly similar to the Complainant’s mark and use it to point to a website clearly derogatory of the Complainant’s mark.

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

DefendMyDomain Commentary: We normally do not provide our opinion about whether a domain decision was right or wrong, but this one appears to be wrong. It is clear the web site was used for commentary and criticism without commercial gain. Maybe the only criticism against the web site is that it did not contain a disclaimer on the page (which some panels have previously found helpful in finding for Respondents). This appears to be a classic “sucks” case. However, when the Complainant admits it is a criticism site and when a Panel talks about First Amendment rights, yet still decides to transfer the domain, we begin to question the whole UDRP process.

AAA Auto Club Can’t Get AAA.net

Monday, July 27th, 2009

In the recent domain dispute decision of The American Automobile Association, Inc. v. QTK Internet c/o James M. van Johns FA1261364 (Nat. Arb. Forum, July 25, 2009) a three member Panel provided an interesting decision regarding www.aaa.net. Our friends over at Domain Name Wire provided an excellent review of the decision, so we suggest you read their version. (available here). We can already forsee that there will be many future disputes which cite to this decision.

11th Circuit Rules 3M Keeps DiamondBrite.com and Finds No ACPA Bad Faith

Friday, July 24th, 2009

Any time the 11th Circuit makes a ruling regarding the ACPA, we tend to listen. In the case of Southern Grouts & Mortars, Inc. V. 3M Company, No 08-15850 (11th Cir. July 23, 2009) (available here) the Court reviewed the ACPA and the extremities for which it may be applied. A short summary of the facts are as follows. Southern sells swimming pools finishes under the mark DIAMOND BRITE and maintains web sites which include www.sgm.cc and www.diamondbrite.cc. 3M owns the domain www.diamonbrite.com since at least 2000 and owned (now cancelled or expired) several federal trademark registrations for the mark DIAMOND BRITE related to “electronically controlled display panels and signs. 3M also maintains a web site at www.3m.com. One of 3M’s many products happens to include those for the swimming pool finishing industry. Southern sued 3M for violations of the ACPA 15 U.S.C. 1125(d) and for unfair competition under 15 U.S.C. 1125(a). The district court in the Southern District of Florida ruled in favor of 3M on a motion for summary judgment dismissing the case.  Southern appealed the district court decision stating that its request to amend the complaint should not have been denied and that unfair competition and cybersquatting claims were improperly dismissed under summary judgment.

The 11th Circuit first dealt with the decision to deny Southern’s motion for leave to amend its second amended complaint. The Court found that Southern simply lacked the proper diligence in pursuing its claim and failed to present a good cause to allow the amendment. Basically, Southern tried to seek leave to amend with nearly six months passing from the deadline time to amend and after more then a month had passed since the parties both filed separate motions for summary judgment. The Court upheld the district courts ruling on this matter.

The Court next addressed the ACPA dismissal, which is where their discussion will be the source of much future debate among attorneys in the 11th Circuit. The Court noted that the ACPA provides a cause of action for a trademark owner against a person who “‘has a bad faith intent to profit from [the owner’s] mark’ and who ‘registers, traffics in, or uses a domain name’ that is identical or confusingly similar to the owner’s distinctive mark or that is identical, confusingly similar to or dilutive of the owner’s famous mark.”15 U.S.C. § 1125(d)(1)(A)(i)–(ii). The Court identified the list of nine non-exclusive factors to consider when determining whether a defendant had bad faith intent to profit. 15 U.S.C. § 1125(d)(1)(B)(i).  The 11th Circuit Court however noted that Southern sought review of the bad faith intent to profit issue based primarily on two additional “unique circumstances” that were outside of the nine factors. This is where the case gets interesting.

First Southern argued that 3M’s registration of the domain gave them a special and unique ability to monitor the viability and value of internet traffic on the disputed domain, which in turn provided 3M with strategic commercial information (collecting traffic data). Southern provided an expert report from Robert Moody to support this concept, but the district court determined it was “so pervaded by conclusory statements as to be almost with value.” The 11th Circuit agreed with the district court’s assessment of the expert witness report, finding that Southern failed to show 3M had a bad faith intent to profit from the domain based upon data collection.

The second “unique circumstance” presented by Southern was that 3M kept control of the domain to prevent others from registering it. Southern argued that 3M continually re-registered the domain despite not making active use of it for a bona fide purpose and despite multiple cease and desist letters from Southern to 3M. Some attorneys would characterize 3M’s business plans of retaining domains as being similar to warehousing domains. The Court however, did not agree with Southern’s argument and explained:

Proving “bad faith” is not enough. A defendant is liable only where a plaintiff can establish that the defendant had a “bad faith intent to profit.” 15 U.S.C. § 1125(d) We cannot read the words “intent to profit” out of the statute….The Senate Report accompanying the Anticybersquatting Consumer Protection Act bolsters our understanding that a “bad faith intent to profit” is the essence of the wrong that the Act seeks to combat….The report says nothing about those who hold onto a domain name to prevent a competitor from using it.

The Court approved the District Court’s ruling on Summary Judgment that Southern failed to establish 3M had “bad faith intent to profit” under this unique circumstance as well. The Court proceeded to review the nine statutory factors which the district court considered. The district court found that five favored 3M, two favored Southern and two were inapplicable. The 11th Circuit agreed with the assessment of the factors and found that they should not be disturbed and would not change the outcome of the 11th Circuit opinion.

The last concept reviewed the the 11th Circuit Court involved  “use in commerce” and whether the district court erred in granting summary judgment on the unfair competition claim. The Court noted the under the statute Southern needed to show that 3M used the term “diamond brite” in connection with goods and services “in commerce.” Southern argued three points in support of reversal: (1) 3M used the mark in commerce by using the domain to redirect traffic to its own web site; (2) 3M could have used the domain to obtain strategic commercial information (traffic data) which constitutes “use”; and (3) 3M bought Google AdWords (keyword advertising) for “diamond brite” which was use in commerce. The Court rejected all three arguments stating (1) the district court found that the only evidence supporting this argument was deposition testimony which the district court refused to consider and which the 11th Circuit found was not an abuse of discretion; (2) the Court already found that there was no abuse of discretion in excluding the expert report regarding this issue; and (3) this issue was not properly pleaded in the second amended complaint, despite Southern’s motion to amend, and the Court would not consider it. Ultimately, the Court found that Southern failed to establish the requisite “use in commerce” and affirmed the district court decision.

DefendMyDomain Commentary: Interestingly, regarding the third argument about keyword advertising with Google AdWords, the Court noted “This Court has not yet determined whether the purchase of Google AdWords can be considered a use in commerce for purposes of 15 U.S.C. § 1125(a).” Therefore, for those who practice in the 11th Circuit (Florida, Alabama and Georgia), the opinions from other Circuits are helpful. Despite some dicta in other cases, it appears as though the 11th Circuit is still not ready to rule on that issue.

Also, it is important to think about the Court’s statement on warehousing domains that “The [ACPA Senate] report says nothing about those who hold onto a domain name to prevent a competitor from using it.” One might ask whether or not this will have some effect on future domain registrations. Does this mean that a company who owns a domain, prior to any trademark use by any other third party, would be able to hold and not “use” that domain forever, despite no actual trademark use on its own?

SCOPE Mouthwash Rinses Out A Domain

Thursday, July 23rd, 2009

In the recent domain name dispute decision of The Procter & Gamble Company v. Richard Jones FA 1266787 (Nat. Arb. Forum July 22, 2009) a single member Panel was faced with a dispute over the domain www.scopemouthwash.com. Complainant is the well known global products company with such famous brands as TIDE, PAMPERS, and CREST. They maintain a web site at www.pg.com and also have a web site for SCOPE at www.getclose.com. Respondent failed to respond to this Complaint.

scope

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 the first element, the Panel noted P&G has a trademark registration for the mark SCOPE in the U.S. and in other countries around the world. The Panel found that the term mouthwash was descriptive of P&G’s business. As a result the Panel found that the domain was confusingly similar to P&G’s mark.

Moving to the second element the Panel noted that P&G presented a prima facie case, and since Respondent failed to submit a response the Panel could assume there were no rights or legitimate interests. Regardless, the Panel still chose to review the evidence presented by P&G. Respondent’s web site resolved to a parked page with click-through links, for which the Panel presumed Respondent was gaining revenue. The Panel also found that the Whois information provided showed that Respondent was not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii). For these reasons the Panel found P&G satisfied the second element.

Moving to the final element, bad faith, the Panel explained:

Complainant alleges that Respondent is using a domain name, which is confusingly similar to Complainant’s SCOPE mark, to attract Internet users to a website containing links, some of which resolve to websites of Complainant’s competitors.  The Panel concludes that appropriating Complainant’s SCOPE mark to divert Internet users is likely disrupting Complainant’s business and that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iii). 

The Panel also found the bad faith under Policy ¶ 4(b)(iv) since Respondent intentionally attracted Internet users for financial gain. Ultimately, the Panel found that P&G satisfied all elements and ordered the TRANSFER of the domain.

Lorillard Smokes Out Typosquatter

Wednesday, July 22nd, 2009

In the recent domain name dispute decision of Lorillard Tobacco Company, Lorillard Licensing Company LLC v. Bao Shui Chen (WIPO D2009-0743, July 16, 2009), a single member Panel was faced with a dispute over the domain www.lorilard.com. Complainants manufacture and sell cigarettes in the U.S and in other countries throughout the world. They own trademarks registrations for LORILLARD and maintain a web site at www.lorillard.com. Respondent failed to respond to this dispute.

Under the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted the disputed domain is identical to Complainants’ marks except for the omission of one of the L’s from the word. The Panel found the disputed domain was at least confusingly similar to the marks.

Moving to the second element, the Panel noted that (i) Respondent was not commonly known by the disputed domain, (ii) there was no evidence of authorization to use it, and (iii) has never asserted any rights or legitimate interests in the domain. Therefore, the Panel found the Complainants satisfied this element as well.

Moving to the final element, bad faith, the Panel explained that the disputed domain spelling of “lorilard” had no independent existence or meaning besides a misspelling of Complainants’ marks. The Panel quoted another decision dealing with typosqautting which stated as follows:

“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source” of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services.” (See Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568)

The Panel also found that the Respondent had a history of being found in bad faith with regards to registrations. For these reasons, the Panel found that Complainants satisfied all three elements and ordered the disputed domain be TRANSFERRED.

Brady Quinn Can’t Score His Own Name: Insufficient Common Law Trademark Rights

Tuesday, July 21st, 2009

In the recent domain name dispute decision of Brayden T. Quinn a/k/a Brady Quinn v. Randy Darr FA1267051 (Nat. Arb. Forum July 20, 2009) a single member panel was faced with a dispute over the domain www.bradyquinn.com. Many of you may know the Complainant as the famous Notre Dame quarterback (now playing for the Cleveland Browns).

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 addressing the first element, the Panel noted that Complainant has filed for a service mark in April 2009, with rights dating back to December 2007. The Panel noted that since the the mark was only still subject to an application, a review of the common law rights standards would apply. The Panel found that “it is not inconceivable that the service mark already had acquired secondary meaning shortly after the first use of the service mark, as a result of the media attention and fame of Complainant.” The Panel found that Complainant established sufficient common law rights and that the domain was identical to Complainant’s mark.

In addressing the second element the Panel found that Respondent is not commonly known by the disputed domain as shown in the Whois records. Additionally, the Panel noted:

Respondent is using the <bradyquinn.com> domain name to redirect Internet visitors to a parking site with links advertising products related to Complainant.  The Panel finds that Respondent’s use of the <bradyquinn.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

The Panel also included discussion of an offer to sell the domain for $2,000.00. The Panel explained, “The Panel is of the opinion that this is evidence that Respondent has foregone any claim to rights or legitimate interests in the <bradyquinn.com> domain name pursuant to Policy ¶ 4(a)(ii).”

The Panel found Complainant satisfied this element as well, and moved to the final element, bad faith. The Panel explained:

As Respondent’s registration of the disputed domain name predates Complainant’s common law rights, the Panel finds that there is no possibility that Respondent could have registered, the <bradyquinn.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii)….The fact that Complainant’s accomplishments as a sportsman have been featured in national media before the registration of the disputed domain name does not evidence bad faith registration, since Complainant does not adduce conclusive evidence that its unregistered personal name was being used for trade or commerce at the date of the registration of the disputed domain name, let aside that the Complainant established common law trademark rights in the name predating the registration of the disputed domain name.

As a result, the Panel found that Complainant failed to establish the final element, and DENIED an order to transfer the domain.

DefendMyDomain Commentary: It is unclear why the Panel did not address the offer to sell factor in the bad faith section. This is another example of the unsecure world of famous persons names and domain disputes. We question again, knowing the facts of the case, why Complainant didn’t choose three Panelists.

AMWAY Is Not Buying What This Cybersquatter Is Selling

Monday, July 20th, 2009

In the recent domain name dispute decision of Alticor Inc. v. Konstantin Becker a/k/a Sei-Sexy FA 1265965, (Nat. Arb. Forum July 15, 2009), a single member Panel was faced with a dispute over the domain www.amway-products.com. Complainant markets and sells over 450 products under the AMWAY mark, and has a trademark registration fro AMWAY dating back to the 1960s. Complainant maintains a web site at www.amway.com. Respondent did not provide a response 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.

In addressing the first element, the Panel noted that Complainant does have federal trademark rights but also explained “The Policy does not require that the mark be registered in the country in which Respondent resides.”  The Panel also found that the addition of the generic term “products” and the top-level domain “.com” was insufficient to distinguish the domain from the AMWAY mark. Thus, the Panel found Complainant satisfied the first element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel observed that Respondent’s failure to respond to the Complaint allows for the Panel to infer a lack of rights. The Panel went further and found as follows:

Respondent is using the <amway-products.com> domain name to sell Complainant’s products.  Complainant alleges that Respondent is attempting to pass itself off as an authorized distributor of Complainant’s products, undoubtedly for financial gain.  The Panel therefore concludes that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the subject domain name pursuant to Policy ¶ 4(c)(i) or (iii). 

The Panel also reviewed the Whois information provided by Respondent was not commonly known by the domain. The Panel found Complainant satisfied this element as well. Moving to the final element, bad faith, the Panel reviewed the use of the web site and explained:

The Panel agrees because Respondent’s use of a domain name confusingly similar to Complainant’s mark, which resolves to a commercial website offering Complainant’s products for sale, likely disrupts Complainant’s business.  Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the contested domain pursuant to Policy ¶ 4(b)(iii)….Bad faith registration and use of the <amway-products.com> domain name under Policy ¶ 4(b)(iv) can also be inferred based on Respondent’s use of a confusingly similar domain name to attract Internet users to a website that offers Complainant’s products for sale.  The Panel may presume that Respondent profits from such use.

Ultimately the Panel found that Complainant satisfied all three element s and ordered the domain be TRANSFERRED.

VIAGRA Takes A Hard Stance On Domains

Friday, July 17th, 2009

In the recent domain name dispute decision of Pfizer Inc. v. Igor Shorop FA1266024 (Nat. Arb. Forum July 15, 2009) a single member Panel was faced with a dispute over the domain www.viagra.us. Phizer is the famous pharmaceutical company who markets and sells well-known erection pill VIAGRA. Complainant maintains web sites at www.pfizer.com and www.viagra.com. Respondent failed to respond to the dispute.

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; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered or is being used in bad faith

In addressing the first element the Panel explained “The disputed domain name contains Complainant’s VIAGRA mark in its entirety with the addition of the country-code top-level domain (“ccTLD”) “.us.”  The Panel concludes that the addition of the ccTLD is insignificant, rendering Respondent’s <viagra.us> domain name identical to Complainant’s VIAGRA mark under Policy ¶ 4(a)(I).” The Panel found that Pfizer satisfied the first element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel noted that Respondent’s failure to respond raises a presumption of lacking such rights. There was no evidence that Respondent owned any trademark rights or was commonly known by the disputed domain. Additionally the Panel found:

The disputed domain name resolves to a website featuring click-through links and advertisements, which divert Internet users to the websites of Complainant’s competitors.  The Panel presumes that Respondent is generating revenue from such use and therefore finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv), respectively.

 Moving to the final element, the Panel found that Respondent’s use of click-through fee links was evidence of bad faith. Additionally the Panel found that since the domain name was identical this was also evidence of bad faith.  

 Ultimately, the Panel found Phizer satisfied all three elements and ordered the TRANSFER of the disputed domain.

Switch to our mobile site