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Archive for August, 2009

KILLER BROWNIE Delivers A Death Blow

Wednesday, August 19th, 2009

         killerbrownie

In the recent domain name dispute of Dorothy Lane Market v. Tony Chang FA1271237 (Nat. Arb. Forum August 18, 2009) a single member Panel was faced with a dispute over the domain www.killerbrownie.com. Complainant markets and sells a multilayed brownie called the KILLER BROWNIE. The maintain a web site at www.dorothylane.com and have a federal trademark registration for KILLER BROWNIE with rights dating back to at least 1988. Respondent registered the disputed domain in September 2006 and failed to respond to the 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 element, the Panel noted that the disputed domain contained all of complainant’s mark, with the omission of the space between the words and the addition of the generic top level domain “.com” The Panel found the domain was identical to Complainant’s mark.

Moving onto the second element, the Panel explained that although Complainant had shown a prima facie case, it would still review the record. The disputed domain resolved to a web site containing Respondent’s personal biography and resume. The Panel found “that Respondent’s use of the identical <killerbrownie.com> domain name, to divert Internet users to a website that is unrelated to Complainant’s KILLER BROWNIE mark, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii), respectively.” The Panel also noted that Respondent was not commonly know by the disputed domain.

Moving to the final element, bad faith, the Panel explained that under the Policy, “that it may look beyond the Policy ¶ 4(b) elements while considering a Policy ¶ 4(a)(iii) analysis, and may find bad faith registration and use from the totality of the circumstances under Policy ¶ 4(a)(iii).” The Panel found that there appeared to be no commercial use of the site, but that the disputed domain lends itself to the impression that there was a goal of confusion.

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

DefendMyDomain Commentary: At first blush, it is unclear why the Panel did not view Respondent’s use of a personal web site as fair use. Actual review of the disputed site may better answer that question. For instance, the site was purportedly registered by Respondent in 2006 yet it has a “2000-2008″ copyright notification on the site. Also it lists a different domain at the bottom, www.eliminated.org, which has the identical information. Therefore one can only assume there was never an intention to actually use the site as a blog, despite wording on the site to the contrary. Since the Panel decision did not mention any of these facts we cannot assume they were actually considered. If they weren’t considered, then we have concerns about the potential implications of this decision. As usual the world of domain disputes remains uncertain.

IBOSS Shows Who Is In Charge

Wednesday, August 19th, 2009

In the recent domain name dispute decision of Phantom Technologies LLC v. Seo Jae Woo FA1272159 (August 18, 2009), a single member Panel was faced with a dispute over the domain www.iboss.com. Complainant develops and markets Internet web filtering technologies and equipment. Complainant began using its mark IBOSS in early 2002, but does not have a federal trademark registration. Complainant maintains relevant web sites at www.iphantom.com and www.myiboss.com. Respondent failed to respond to the complaint. The disputed domain was registered in December 2002.

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 although Complainant did not have a federal registration, the IBOSS mark was nonetheless used on over one hundred additional domain names and web sites. This coupled with Complainant’s long seven year history of use of the IBOSS mark was sufficient to establish common law rights. The Panel found that the disputed domain was identical to Complainant’s mark.

Moving to the second element, the Panel noted that it would review the evidence presented despite Complainant’s showing of a prima facie case. The Panel found:

Respondent’s <iboss.com> domain name resolves to a website featuring third party links unrelated to Complainant.  The Panel infers Respondent profits through click-through fees from the links to the third parties.  The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).

The Panel also found that Respondent was not commonly known by the disputed domain as shown through the Whois information.

Moving to the last element, bad faith, the Panel explained that the disputed domain resolved to a web with unrelated third party links. These links were presumed to result in profits from click through fees. The Panel found this use to be bad faith.

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

Roberto Cavalli Designs A Winning Arbitration

Monday, August 17th, 2009

In the recent domain name dispute decision of Roberto Cavalli S.p.A., IGA Finance B.V. v. Jekaterina Kaidanovits-Rogers (WIPO D2009-0740, August 5, 2009), a single member Panel was faced with a dispute over the domain www.robertocavalliusa.com. Complainant is the famous Italian designer and has trademark rights in the name ROBERTO CAVALLI. Cavalli maintains a web site at www.robertocavalli.com. Respondent failed to respond to the complaint.

             robertocavalli1

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.

In addressing the first element, the Panel found that the disputed domain contained all of Complainant’s mark and merely added “usa” at the end. This was enough for the Panel to determine the domain was confusingly similar.

Moving to the second element, the Panel agreed with Complainant’s arguments which included:

(i) The Respondent has not been authorised by the Complainant to register nor to use the Complainant’s marks. (ii) The Respondent is not associated in any way with the Complainant or its distribution network. (iii) The Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ROBERTO CAVALLI. (iv) There is no evidence of a bona fide noncommercial or other legitimate fair use by the Respondent.

The Panel found that Complainant provided sufficient unrebutted evidence and noted that the second element was satisfied.

Moving to the final element, bad faith, the Panel explained that Complainant’s evidence of the disputed domain showed it was being used for “promoting sales of Complainant’s products which appear to be paralell imported and may even be counterfeited.” In light of these findings the Panel found that Complainant satisfied this element as well.

Ultimately, the Panel agreed with Complainant and ordered the disputed domain be TRANSFERRED.

Big Law Firm Greenberg Traurig…Big Win…Did You Expect Anything Less?

Friday, August 14th, 2009

In the recent domain name dispute decision of Greenberg Traurig, LLP and Greenberg Traurig of New York, P.C. and Greenberg Traurig, P.A. v. Louis Zweifach FA1271922 (Nat. Arb. Forum, August 13, 2009), a single member Panel was faced with a dispute over the domain www.greenbergtraurigharassment.com. We all know who the law firm Greenberg Traurig, LLP is, so I won’t go into much detail about them. Complainant has a registered mark for GREENBERG TRAURIG and the decision notes that with over 1,800 attorneys worldwide, the law firm specializes in harassment, intellectual property and business law. If you want more information go to their web site at www.gtlaw.com. The respondent failed to respond 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 the domain name incorporated all of Complainant’s mark, and merely added the term harassment.

The term “harassment” refers to employment law and harassment lawsuits and thus, is descriptive of Complainant’s business.  The Panel concludes that these alterations are insufficient to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). 

The Panel found Complainant satisfied the first element.

Moving to the second element, whether Respondent had any right or legitimate interest in the domain, the Panel found that Complainant set out a prima facie case in accordance with Policy ¶ 4(a)(ii).  Since Respondent failed to reply this Panel noted that they may infer a lack of rights or legitimate interests. However, as most Panels often do, they still reviewed the evidence. The Panel explained:

The disputed domain name resolves to a website displaying click-through links that further resolve to the websites of Complainant’s competitors in the legal services industry.  Complainant contends , and the Panel agrees, that Respondent’s use of a confusingly similar domain name to redirect Internet users to a website displaying links to competing law firms is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.

The Panel also found that Respondent was not commonly known by the disputed domain after reviewing the Whois records. As a result, the Panel found Complainant satisfied the second element as well.

Moving to the last element, the Panel noted that using the disputed domain to resolve to a web site which had click-through links was bad faith since they were in direct competition with Complainant. The use of the domain diverted consumers and disrupted Complainant’s business. The Panel found that Respondent was presumably collecting fees from the click-through links and such profit was also considered bad faith.
       
Ultimately, the Panel ordered the domain to be TRANSFERRED.

XBOX Says Game Over

Thursday, August 13th, 2009

            xbox

In the recent domain name dispute decision of Microsoft Corporation v. MeiXun Technology Ltd. GuangZhou FA1271176 (Nat. Arb. Forum August 12, 2009), a single member Panel was faced with a dispute over the domain www.psxbox.net. Complainant needs no introduction, but if you really need more info you can go to www.mircosoft.com and www.xbox.com. Respondent failed to reply to the Complaint.

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

The Panel addressed the first element noting that Microsoft has trademark registrations for XBOX in the U.S. and in China. The Panel found that the disputed domain incorporated all of the mark and merely added the letters “ps” at the front. The Panel explained that the terms “ps” and XBOX are both readily associated with gaming consoles, the merging of the two exacerbated the confusion. The Panel found that Microsoft satisfied this element.

Moving to the second element, the Panel noted Complainant presented a prima facie case and although Respondent failed to provide a response, a review of the record would still be completed. The disputed web site resolved to a commercial site selling third-party modification chips for gaming consoles, including the XBOX. The Panel found this use was not a bona fide offering of goods or services nor a legitimate non-commercial or fair use manner pursuant to the Policy. Additionally, the Panel found that the Whois information showed Respondent was not commonly known by the disputed domain. Therefore, the Panel found Microsoft satisfied this element as well.

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

The Panel finds that Respondent’s use of a domain name confusingly similar to Complainant’s mark, which resolves to a commercial website offering game console accessories for Complainant’s products and those of Complainant’s competitors, likely disrupts Complainant’s business.  Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii)….Bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv) can also be inferred because Respondent is intentionally attempting to attract Internet users, for financial gain, to its domain name by creating a likelihood of confusion with Complainant and its XBOX mark.  Respondent profits from this confusion by selling game console parts that compete with Complainant.  The Panel concludes that Respondent has engaged in bad faith registration and use of the <psxbox.net> domain name under Policy ¶ 4(b)(iv).

Ultimately, the Panel found Microsoft proved all three elements and ordered the domain be TRANSFERRED.

CONTENDER Boats Needs To Fish Somewhere Else

Wednesday, August 12th, 2009

contender

In the recent domain name dispute decision of Contender Boats, Inc. v. The Schmidt Group FA1271168 (Nat. Arb. Forum , August 11, 2009), a single member Panel was faced with a dispute over the domain www.contender.com. Complainant is the well known manufacturer of boats and maintains a web site at www.contenderfishingboats.com. Complainant has a federal trademark registration for the mark CONTENDER. The allegations presented by Complainant are relevant to the ultimate outcome of the case. Respondent failed to provide a response to this dispute.

On November 13, 2006, Complainant entered into a contract with Respondent for advertising services and website development.  Respondent registered the <contender.com> domain name under the name “The Schmidt Group,” and listed the Administrative Contact as “Ronald Schmidt” instead of its principal, Complainant, without the knowledge or authority of Complainant.  Respondent has ceased business in the website development industry, and Respondent is no longer employed as an independent contractor for Complainant.

In light of the arguments presented by Complainant, the Panel found this dispute was beyond the scope of the Policy and was instead a dispute over the terms and conduct of a business arrangement. The Panel cited to other prior decisions which made the same ruling. Summit Industries, Inc. v. Jardine Performance Exhaust Inc., D2001-1001 (WIPO Oct. 15, 2001), Nintendo of America Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000), Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007). For this reason the Panel DISMISSED the claim.

Comparison Site Considered Commercial-Transfer Ordered

Tuesday, August 11th, 2009

In the recent domain name dispute decision of C. Crane Company Inc. v. Robbie Crossley (WIPO D2009-0815, August 10, 2009), a single member Panel was faced with a dispute over the domain www.geobulbs.com. Complainant sells radios and LED lighting products branded as GEOBULB and maintains web sites at www.geobulb.com and www.ccrane.com. Respondent had some prior relationship with Complainant, which the Panel was unable to surmise, but which became relevant later in determining the knowledge of Respondent at the time of registration. Complainant has a federal trademark registration and the disputed domain was registered before Complainant’s federal trademark application.

geobulb

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 quickly found that the disputed domain was confusingly similar to Complainant’s mark, in that it merely was a plural form of the mark. Moving to the second prong, the Panel spent more time reviewing the facts presented by each side. The Panel found Complainant presented a prima facie case and shifted the burden of proof to Respondent. The Panel explained that Respondent’s use of the domain was done in two ways. First the domain was redirected to Complainant’s web site. The Panel found Respondent intended this use to be temporary and thus not legitimate.

Respondent’s second use of the domain was that of a comparison site. Respondent argued the site was entirely non commercial with no products being offered for sale. However, in emails exchanged between the parties, Respondent offered to sell the domain to Complainant and noted that the decrease in recent sales by Complainant should help Complainant to determine how much the domain is worth. The Panel used this information and found as follows:

In this context, even if no products were actually sold through the disputed domain name, the “comparison site” was commercial – a means to get a higher price from sale of the disputed domain name or otherwise acquire (to use Respondent’s phrase) “something beneficial for . . . myself” – and not legitimate for purposes of paragraph 4(a)(ii) of the Policy.

Ultimately, the Panel found that Respondent lacked any rights or legitimate interests. Moving to the last element, bad faith, the Panel addressed Respondent’s argument that a domain registered prior to acquisition of trademark rights could not be in bad faith. The Panel explained however, the WIPO consensus view on an exception to that general concept.

“However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.” (WIPO Overview Paragraph 3.1)

The Panel found that since Respondent knew about Complainant’s mark prior to registration, this was sufficient to find bad faith. Ultimately, the Panel found that Complainant satisfied all three elements and ordered the domain be TRANSFERRED.

Local Nissan Dealership Finds No Buyer For Domain Dispute

Monday, August 10th, 2009

In the recent domain name dispute decision of Nissan of Fort Worth c/o Frank Figueredo, Jr. v. Thornhill Auto Group FA1270184 (Nat. Arb Forum, August 6, 2009), a single member Panel was faced with a dispute over the domain www.nissanoffortworth.com. Respondent did not respond to the Complaint.

Normally, under most domain disputes, a Panel reviews the three elements required under the Policy 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 opinion was short and did not address the merits of the dispute. Instead the dispute was DENIED and dismissed as being outside the scope of the UDRP Policy. The Facts of the case according to Complainant included (1) Complainant purchased the Nissan Dealership in Forth Worth, Texas from Respondent on October 1, 2008; (2) In the purchase agreement Respondent agreed to transfer all intellectual property and contract rights associated with the dealership to Complainant; and (3) Respondent had not turned over the domain.

“The Panel finds that this is a contractual issue that falls outside the scope of review under the UDRP and that such an issue must be resolved in a Court of competent jurisdiction.” The Panel cited several prior cases which held the same proposition. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005); Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007); Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006).

First Ever Criminal Arrest For Domain Theft

Tuesday, August 4th, 2009

Anyone who follows the domain dispute world long enough knows that the UDRP process can be a quick and inexpensive route to resolving the dispute. Of course there are many civil cases filed throughout the U.S. under the ACPA, but never before has a domain dispute resulted in criminal prosecution, until now. State prosecutors in New Jersey have now arrested a domain name owner for doamin theft.  Domain Name News has a great article which provides all the details. (see here)

The domain at issue was www.P2P.com. It was co-owned Marc Ostrofsky (a well known domain owner), Albert Angel (well known attorney and former Justice Department prosecutor) and his wife Lesli Angel. The domain was stolen in 2006 and sold it on Ebay four months later for $111,000, even though it was purchased by the Ostofsky and the Angels for $160,000 in 2005. The alleged thief ultimately sold the domain to NBA basketball player Mark Madsen, who has acquired his own large domain portfolio, but who appears to be a good faith purchaser of the domain.

The interesting thing about this case, is that the registrar GoDaddy was also sued by Ostofsky and the Angels for negligence and contributory trademark infringement under Anti-Cyber Piracy statute. Although many assume that registrars have immunty and believe that GoDaddy is off the hook, our readers should be aware of recent developments in ACPA case law. In another civil domain theft case, a Court recently ruled against regsitrar NameCheap in denying its motion to dismiss from the case of Solid Host NL, v. NameCheap, Inc., CV085414-C.D.Cal 2009. The Court found that NameCheap was acting as a privacy service and not as a resgistrar and thus the immunity that most registrars are afforded did not apply. Our good friend Marco Randazza, from The Legal Satyricon, was heavily involved in that and a full copy of that opinion is available here.

So, the ever changing world of domain disputes took a few positive steps forward in the fight against domain theft and criminal prosecution. We will keep you posted on the developments of these two cases as we learn more.

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