In the recent domain name dispute decision of U.S. Smokeless Tobacco Manufacturing Company LLC v. Four Feathers LLC, FA1266017 (Nat. Arb Forum July 14, 2009), a single member panel was faced with a dispute over the domain www.skoal.com. As explained in the brief factual background, “Complainant, U.S. Smokeless Tobacco Manufacturing Company LLC, sells smokeless tobacco products and has been in business since the 1800s.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SKOAL mark (i.e., Reg. No. 504,609 issued December 7, 1948).” Complainant appears to maintain a web site at www.skoalbrotherhood.com. The disputed domain was registered in 1997. (There is no discussion throughout the opinion about the delay in bringing this dispute.)

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 prong the Panel found the domain was identical except for the additional of the generic top-level domain “.com.” As many Panels in the past have explained this is insignificant and this Panel quickly moved to the second element.

In discussing the second element, the Panel explained:

 The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 

The Panel found that respondent’s web site contained links to competing products and that this was not a bona fide offering of goods and services. The Panel also determined that there was no evidence presented to show that Respondent was commonly known by the domain.

Moving to the last element, bad faith, the Panel found as follows:

Respondent is using the <skoal.com> domain name to resolve to a website featuring links to competing products presumably for the profit of Respondent.  The Panel finds Respondent’s use of the disputed domain identical to Complainant’s SKOAL mark to redirect Internet users interested in Complainant’s products to competing website links constitutes disruption and bad faith registration and use under Policy ¶ 4(b)(iii)….In addition, the Panel finds Respondent presumably receives click-through fees from links on the disputed domain name sponsored by Complainant’s competitors.  Respondent likely profits from Internet users’ likelihood of confusion with Complainant’s affiliation with the disputed domain name.  The Panel finds that this use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).

Ultimately, the Panel finds that Complainant proved all three elements and agreed to order the TRANSFER of the domain.

In the recent domain name dispute decision of inXile Entertainment, Inc. v. Telecom Tech Corp (WIPO D2009-0655, July 3, 2009) a single member panel was faced with a dispute over the domain www.superstacker2.com. Complainant appears to be a video game producer which maintains web sites at www.inxile-entertainment.com and www.super-stacker.com. The disputed domain was registered on February 15, 2009.

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith.

The Panel addressed the first element noting that Complainant does not have a registered mark for SUPER STACKER but did have a pending trademark application, which hadn’t proceeded beyond the initial filing of the mark. Since Complainant did not have registered trademark rights, the Panel explained common law rights to the mark. The Panel noted that others use the word “stack” in similar gaming product titles. Complainant provided no evidence of advertising dollars relative the mark, nor a complete description of the product, or a copy of the web site at www.super-stacker.com. The Panel notes the only possible evidence of first use of the mark by Complainant was on a third party web site from November 2008. It appears as though the Panel reviewed the trademark application from Complainant and made some findings relative to Complainant’s date of first use:

The Complainant produced with its Complaint a printout from the USPTO database dated April 27, 2009, and although in its Complaint the Complainant asserts a first use of the claimed mark in commerce (through a predecessor in interest) dating back to November 12, 2008, the USPTO database extract produced by the Complainant states “date not available” for both the “first use” and “first use in commerce” dates. A document produced by the Complainant, downloaded from the Internet on April 29, 2009 (an extract from the website at “www.newgrounds.com”), appears to show that the date the Complainant’s game was “first submitted” was November 12, 2008. The Complainant asserts that that was the date on which the “Complainant’s game was first posted to the Internet”, but it is not clear who effected the “posting”, or how long the Complainant’s game was referenced on the “www.newgrounds.com” website.

In light of Complainant’s lack of evidence, the Panel found Complainant failed to satisfy the first element. The Panel noted it was not necessary to review the other two elements, but did provide some observations regarding the bad faith element. The Panel’s observations showed that there were significant evidentiary obstacles in finding bad faith, which included:

1. At the date on which the Domain Name was registered, the Complainant had not applied for a trademark registration anywhere in the world. 2. There is no provided evidence of when the Complainant registered its own domain name, <super-stacker.com>, and in particular whether that domain name was registered before or after the Respondent registered the Domain Name. 3. Particularly having regard to the apparent existence in the market of other “stack” or “stacker” games, the situation called for substantial evidence that the Respondent, apparently based in Panama, knew or should have known of the Complainant and or/ its claimed SUPER STACKER mark when the Domain Name was registered. There was little or no evidence on that topic.

Ultimately, the Panel found Complainant failed to prove all three elements and DENIED the request for transfer.

DefendMyDomain Commentary: When you do not have a registered trademark, Complainant’s need to show (a) first use of the mark; (b) explain the type of goods or services used with the trademark; (c) the marketing channels; (d) advertising or marketing efforts to show exposure to and/or recognition of the trademark to end-user consumers and (e) sometimes show sales of branded goods or services. This evidence proves up common law trademark rights. Although many view UDRP actions as “litigation lite” there are still minimum evidentiary requirements for a Complainant to win.

In the recent domain name dispute of F. Hoffmann-La Roche AG v. Protected Domain Services/MediaTec Co.Ltd., Sandro Zeller (WIPO D2009-0635, July 1, 2009) a single member Panel was faced with a dispute over the domain www.tamiflu75.com. Respondent is the well known manufacturer of the medical treatment TAMIFLU. Considering the onset of swine flu, it is only appropriate that this case was recently decided. Respondent maintains a web site promoting the product at www.tamiflu.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 the elements the Panel provided a quick and short review. The Panel found that the domain included all of Respondent’s mark TAMIFLU with the additional number “75″ added at the end of the top level domain. The Panel explained that 75 is the common dosage amount of the medicine. The Panel found that Complainant satisfied this prong.

Moving to the second element, the Panel explained:

The Complainant has demonstrated that the website located at the Disputed Domain Name used to display information and links to services competing with those of the Complainant. The Panel does not find such use of the Disputed Domain Name to be bona fide in the context of paragraph 4(a)(i) of the Policy in this case.

The Panel found that Complainant satisfied this element as well. Moving to the final element, bad faith the Panel found that Respondent was using the domain to mislead and confuse Internet users to competing Internet site links, which included the use of the packaging of Complainant’s TAMIFLU product.

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

In the recent domain dispute decision of LD Products, Inc. v. Gary Lam c/o XC2 (Nat. Arb. Forum FA 1265729, July 2, 2009) a single member Panel was faced with a dispute over the domain www.4inkjetss.com. As explained in the decision, “Complainant is an Internet retailer for printer supplies and accessories, which markets its products under the 4INKJETS mark.  Complainant registered the 4INKJETS mark with the United States Patent and Trademark Office (“USPTO”) on September 20, 2005 (Reg. No. 2,998,115, filed August 3, 2004).  Complainant has operated its printer supplies business, and advertised its products under the 4INKJETS mark, since at least as early as 1999, and since that time Complainant has grown its business to US $27 million in sales in 2007 and US $34 million in 2008.” Complainant maintains a web site at www.4inkjets.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.

The Panel addressed the first element, noting Complainant’s trademark registration and significant common law rights in the mark dating back to 1999. The Panel found that the disputed domain was typosquatting, in that it merely added an additional letter s to the end of the top level domain.

The Panel then moved to the second element, wherein it acknowledged that Complainant made its prima facie case, shifting the burden to Respondent. Since Respondent did not reply to the complaint, the Panel accepts all reasonable allegations from Complainant as true. Therefore the Panel made the following observations and findings:

Complainant contends that Respondent is neither commonly known by, nor licensed to register, the disputed domain name.  Respondent’s WHOIS information identifies Respondent as “Gary Lam c/o XC2.”  Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name….Respondent is using the <4inkjetss.com> domain name to display links to third-party websites that are in competition with Complainant.  Complainant contends, and the Panel agrees, that Respondent is using the disputed domain name to collect click-through fees from those third parties, and thus the Panel finds that Respondent has not made 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). 

The Panel then moved to the third element, bad faith, and the Panel made the following findings:

The Panel finds that Respondent is using the <4inkjetss.com> domain name to disrupt the business of Complainant by offering links to competitors, and that this use is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii)….The Panel agrees that Respondent is collecting click-through fees as a result of its use of the disputed domain name, and therefore finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 

Ultimately, the Panel found that Complainant proved all the elements and agreed to order the TRANSFER of the domain.

In a recent domain dispute decision of Pearl Jam, LLC. f/k/a Pearl Jam, A General Partnership v. J.S.E. Janssen a/k/a Stijn Enzo Holding BV (Nat. Arb. Forum 1262659, July 1, 2009) a single member Panel was faced with a dispute over the domain www.tenclub.org. Pearl Jam is the popular and well known rock band who has been cranking out hits since the early 90′s. Pearl Jam established an authorized fan club known by the mark TEN CLUB. The band maintains a web site at www.pearljam.com and www.tenclub.net. Pearl Jam’s debut album was entitled TEN and had amazing success. Respondent replied to the Complaint stating that the domain was going to be used as follows:

Tenclub is a specific project. Respondent is in the process of setting up a church/club in which all sorts of activities will take place. The essence of the project is that its members will dedicate ten per cent of their time and money to each other.  Thus, learning that sharing will bring a better human society. That is where the name Ten club comes from. There is absolutely no financial perspective, except being able to pay for the costs of the project. Currently, Respondent is looking at buildings, the structure and the communication, hence the website.

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 addressed some procedural issues first, noting that requests were made to Respondent to provide certain documents and translations of certain documents, which the Respondent did not provide. Additionally, Complainant points out, although the Panel does not address, the fact that this domain was once the subject of a prior domain dispute. Specifically, Pearl Jam had already won a dispute over this domain in the decision of Pearl Jam, A General Partnership v. Jongcheol Lee (Nat. Arb. Forum 406483, March 17, 2005). Pearl Jam explained that the registrar did not cooperate or agree to transfer the domain. It is unclear why the transfer was not enforced.

In addressing the first element, the Panel quickly found the domain was identical or confusingly similar to Pearl Jam’s multiple U.S. and foreign trademark registrations for TEN CLUB. Most of the Panel’s decision centered around the second element. The Panel found Pearl Jam established a prima facie case, shifting the burden to Respondent. In response to Respondent’s assertions about the proposed use of the domain the Panel explained:

The Panel believes that none of these unsupported contentions of Respondent is evidence that before any notice to Respondent of the dispute, he used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services according to Policy ¶ 4(c)(i). For instance, Respondent fails to show that he has posted any contents related to the purported uses of the domain name (“church/club”) on the website at the disputed domain name. Nor does he submit any affidavit or documents evidencing any preparations to use the domain name.

The Panel went further to break down Respondent’s evidence by stating:

The Panel cannot overlook the fact that in Respondent’s attachment to the email with the Response, he added the “®” symbol to the TenClub term, thus attempting to create the false impression that he owned a registered trademark. Only after this Panel requested Respondent to submit a full translation of the attachment in Dutch, it appeared that no such trademark registration had ever been granted. As a result from Respondent’s failure to comply with the request from the Panel, there is no evidence that Respondent has even applied for a trademark registration before the Benelux trademark office. Respondent’s failure to comply with the Panel’s requests of full translations of the attachments in Dutch allows the Panel to infer that such translations would not have been favorable to Respondent, pursuant to Rules ¶ 14(b).

As a result, the Panel found that Respondent failed to establish any rights or legitimate interests. The Panel also discussed the third element, bad faith. The Panel found that Respondent was extracting a financial benefit from click-through fees generated as a result of the parked web site. Additionally, the Panel noted that although Respondent claimed to never have heard about the TEN CLUB associated with Pearl Jam, the postings on the disputed domain led the Panel to infer otherwise.

Ultimately, the Panel found Pearl Jam had established all three elements and ordered to TRANSFER the domain.

DefendMyDomain Commentary:
It is unclear why or how Pearl Jam was unable to get a successful transfer after the 2005 domain decision. Regardless, it is more puzzling that the Panel made no affirmative discussion about the prior decision and the effect it may have had on the current decision.

In the recent domain dispute decision of Victoria’s Secret Stores Brand Management, Inc. v. Open Water Enterprises Limited c/o Louis S (Nat. Arb. Forum 1264419, June 29, 2009) a single member Panel was faced with a dispute over the domain www.victoriasecretangelcard.com. We know that you do not live under a rock so we will avoid discussing the fame of Victoria’s Secret. Victoria’s Secret maintains a web site at www.victoriassecret.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 the first element, the Panel noted that the domain contained all of Complainant’s mark VICTORIA’S SECRET with the addition of the descriptive phrase “angel card” on the end. There was no mention in the decision though that the disputed domain dropped an “s” from the domain name, although it generally has no significance in the domain dispute world. These descriptive words were not sufficient enough for Respondent’s use and thus Complainant satisfied the first element.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel explained that Complainant set forth a prima facie case, shifting the burden to Respondent. The Panel found that Respondent was using the domain to divert viewers to competitors of Victoria’s Secret for commercial gain. Further, the Panel found that the Whois information associated with Respondent showed Respondent was not commonly known by the domain name.

Moving to the last element, bad faith, the Panel stated as follows:

Respondent’s disputed domain name resolves to a website that displays links to third-party websites, some of which directly compete with Complainant’s business.  The Panel finds Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent presumably received payment for displaying links to Complainant’s competitors on the website which resolved from the confusingly similar <victoriasecretangelcard.com> domain name.  Thus, the Panel finds Respondent is attempting to profit from the goodwill associated with Complainant’s mark, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

As a result, the Panel found that Victoria’s Secret proved all three elements and agreed to TRANSFER the domain.