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Archive for September, 2009

AMERICAN GIRL’s New Character …Domain Enforcer

Tuesday, September 29th, 2009

   americangirl

In the recent domain name dispute decision of American Girl, LLC and American Girl Brands, LLC v. Eileen Coleman (Nat. Arb. Forum FA1279516, September 28, 2009), a single member Panel was faced with a dispute over the domain www.americangirldollsclothing.com. Complainant is the widely popular creator and seller of dolls, dolls accessories, and books for young girls. They have many trademark registrations for the mark AMERICAN GIRL and maintain a web site at www.americangirl.com. Respondent registered the disputed domain on July 18, 2008 and failed to respond to the complaint.

Paragraph 4(a) of the UDRP 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’s multiple registrations were sufficient to establish rights for the AMERICAN GIRL mark under the UDRP Policy. The Panel found that the disputed domain contained all of Complainant’s mark with the addition of the words dolls and clothing. These additional words describe products sold by Complainant, thus there was no significant distinguishing nature of the disputed domain. The Panel found that Policy ¶4(a)(i) was satisfied.

Moving to the second element, the Panel noted that Complainant made a prima facie showing under the UDRP Policy. Additionally, the Panel found that the Whois information did not show that Respondent was commonly known by the domain. The disputed domain resolved to a web site with a similar color scheme as Complainant and also displayed Complainant’s mark. The Panel found this use to be a passing off of Complainant.  The disputed domain also contained links to competing third party web sites. For these reasons, the Panel found that Policy ¶4(a)(ii) was satisfied.

Moving to the final element, the Panel explained:

Respondent, upon registering the <americangirldollsclothing.com> domain name on July 18, 2008, uses the disputed domain and its similar resolving website to divert Internet users to competing third-party websites that sell Complainant’s products.  The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iii) because it disrupts Complainant’s business… The Panel further finds that Respondent’s conduct, presumably for commercial gain, constitutes bad faith registration and use under Policy ¶ 4(b)(iv).

For these reasons, the Panel found that Complainant satisfied the last element, thus meeting its overall burden. As a result, the Panel ordered the disputed domain be TRANSFERRED.

ACCION Takes Action Against Fraud

Thursday, September 24th, 2009

          accion

In the recent domain name dispute decision of ACCION USA Inc. and ACCION International v. Accion Now c/o Brian Accion (Nat Arb Forum FA 1278458, September 23, 2009), a single member Panel was faced with a dispute over the domain www.accionnow.com. ACCION USA is a nonprofit organization which helps small business get loans. ACCION USA has a trademark for ACCION in connection with its services dating back to 1983, with an issued registration in 2005. ACCION maintains a web site at www.accionusa.org. Respondent registered the domain on June 9, 2009 and failed to respond to the Complaint.

Paragraph 4(a) of the UDRP 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 prong and noted that the disputed domain contained all of ACCION’s mark. “Accordingly, the Panel finds that the <accionnow.com> domain name is confusingly similar to Complainant’s ACCION mark under Policy ¶ 4(a)(i) because none of these additions to Complainant’s mark sufficiently distinguish the disputed domain from Complainant’s mark.”

Moving to the second element, the Panel noted that ACCION made a prima facie showing, and that the burden shifted to Respondent. The Panel next reviewed the Whois information provided by Respondent and explained:

The WHOIS information for the <accionnow.com> domain name lists “Accion Now c/o Brian Accion.”  While this information suggests that Respondent may be commonly known by the disputed domain, no other information in the record corroborates this suggestion.  Therefore, the Panel finds that Respondent is not commonly known by the the <accionnow.com> domain name under Policy ¶ 4(c)(ii). 

ACCION’s business predominantly involves providing small businesses with loans. The Panel found that the disputed domain purported to allow individuals to apply for loans, which was a passing off of Complainant’s business. Additionally the Panel found that the disputed domain offered fraudulent loan opportunities as part of a phising scheme to obtain confidential information.  These phising attempts and the attempt to pass off as ACCION was not a bona fide offering of business services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

The Panel moved to the last element, bad faith, and found as follows:

The Panel finds that Respondent’s attempt to pass itself off as Complainant in order to financially gain by obtaining confidential information constitutes bad faith registration and use under Policy ¶ 4(b)(iv), as Respondent has created a likelihood of confusion as to Complainant’s affiliation with the disputed domain name…Moreover, the Panel finds that Respondent’s aforementioned phishing attempt to fraudulently acquire Internet users’ personal information represents further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 

Ultimately, the Panel found that ACCION met all of the elements and ordered the domain be TRANSFERRED.

U.S. CLUB SOCCER Fails to Score a Win

Wednesday, September 23rd, 2009

            us_club_soccer

In the recent domain name decision of National Association of Competitive Soccer Clubs v. Bruce Binler (WIPO, D2009-0957, September 7, 2009), a single member panel was faced with a dispute over the domain www.usclubsoccer.net. Complainant is a non-for profit organization responsible for putting together soccer clubs, leagues and tournaments across the U.S. Complainant maintains a web site at www.usclubsoccer.org and has a servicemark registration for US CLUB SOCCER. Respondent registered the domain in 2007 and failed to provide a response to the Complaint.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that: (i) respondent’s 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) respondent’s domain name has been registered and is being used in bad faith.

Some of the facts presented included that Respondent used the domain in connection with promoting soccer events sanctioned by Complainant in 2006 and 2007.These facts may have been relevant in the Panel’s findings, however, the Panel did not make it passed the first element.

The Panel found that Complainant did not establish sufficient rights in the mark US CLUB SOCCER. The Panel noted that Complainant’s citation to a federal registration failed to inform the Panel that it was actually on the Supplemental Register.

Complainant does not enjoy a presumption of service mark rights based on registration of US CLUB SOCCER on the Supplemental Register of the USPTO. Complainant does not enjoy any presumption of rights based on the submission of a recent application for registration of the same term on the Principal Register of the USPTO.

Although Complainant has recently applied again to the USPTO for the same mark seeking registration on the Principal Register. Therefore, the Panel noted that Complainant must show that it had sufficient common law rights. The Panel was concerned that the USPTO rejected the original application for being primarily geographically descriptive with terms that are generic or merely descriptive. The Panel took some liberties in doing some market reserach and made the following observations:

Critically however, Complainant did not address the question whether the terms are commonly descriptive or generic. In the interests of fairness, the Panel performed Google and Bing searches for CLUB SOCCER together. Those searches returned many millions of “hits”. While Complainant’s organization was listed first in non-advertising rank, there was a substantial number of references to organizations, news reports, domain names and other listings that include “club soccer” as a descriptive term. The Panel does not consider this search to be ultimately determinative on the question whether Complainant might establish rights in US CLUB SOCCER as a service mark, but it was sufficient to persuade the Panel that Complainant has not here carried its burden of demonstrating that the terms are more than commonly descriptive or generic, given that the USPTO previously decided to that effect.

In light of these findings the Panel found as follows:

The rejection by the USPTO of Complainant’s application for registration on the Principal Register and Complainant’s conversion of that application to the Supplemental Register implies that its alleged service mark is not distinctive. The grounds of rejection by the USPTO expressly related to characteristics that may be understood to preclude the establishment of secondary meaning (i.e., primarily geographically descriptive term, generic-ness or mere description).

The Panel found that Complainant failed to establish the first element and thus did not address the other two elements. The Panel ordered the request for transfer be DENIED.

HUSTLER and Lesbians… Adding Domains to the Empire

Tuesday, September 22nd, 2009

         hustler-2       hustler 

In the recent domain name dispute of L.F.P., Inc. and LFP IP, LLC v. Anthonny, Network Service (WIPO D2009-0984, September 13, 2009), a single member Panel was faced with a dispute over the domain www.hustlerlesbians.com. Complainant is the famous publisher of Hustler magazine and has many other ventures including videos and clothing under the HUSTLER mark. Complainant maintains a web site at www.hustler.com. The disputed domain was registered in September 2007 and the Respondent failed to respond to the complaint.

In accordance with Policy the Complainant must demonstrate that: (i) The disputed domain name 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 disputed domain name; and (iii) The disputed domain name was registered and is being used by the Respondent in bad faith.

In addressing the first element, the Panel noted that L.F.P. (“Larry Flynt Productions”) had valid and long term trademark registrations for the HUSTLER mark. The Panel found that the disputed domain incorporated all of complainant’s mark including the generic word lesbians. The Panel explained:

The Complainant contends persuasively, and without contradiction from the Respondent, that a significant portion of the Complainant’s exploitation of adult entertainment products involves lesbian sexual activity. Ergo, the Panel concludes that a reasonable Internet user would find the similarity between the disputed domain name and the trademark confusing as to the source of the material found at the web site corresponding to the disputed domain name.

As a result, the Panel found Hustler satisfied this element. Moving to the second element, rights or legitimate interests, the Panel found that the disputed domain redirected users to adult material which competed directly with Hustler. The respondent did not make a bona fide offering of goods or services pursuant to the Policy. Additionally the Panel noted that Respondent was not commonly known by the disputed domain. For these reasons, the Panel found Hustler satisfied the second element.

Moving to the final element, bad faith, the Panel explained that HUSTLER has been well known throughout the world and the U.S. for years. The Panel held:

Furthermore, the Complainant has provided the Panel with acceptable visual evidence that the Respondent uses the disputed domain name for its web site that prompts Internet users to acquire material depicting lesbian sexual liaisons. Such material is a mainstay of the Complainant’s business, and the use of the Complainant’s full trademark as the first and dominant part of the disputed domain name compels the Panel to believe that the Respondent deliberately registered the name to confuse the public as to the source of said material for the Respondent’s commercial gain.

As a result, the Panel found that Complainant met all three elements and ordered the domain be TRANSFERRED.

SHOE LAND Was Generic… But Not SHOE ZONE?

Tuesday, September 15th, 2009

              shoe-zone

In the recent domain name dispute decision of Shoe Zone Limited v. Moniker Privacy Services / DNS Admin (WIPO D2009-0946, September 2, 2009) a single member Panel was faced with a dispute over the domain www.shoezone.com. Complainant is a retailer and distributor of footwear throughout Ireland and the U.K. Complainant has multiple trademark registration, including one in the U.K. and a Community Trademark registration.  Complainant maintains a web site at www.shoezone.net. The disputed domain was registered in November 1998. According to the decision, the disputed domain has changed ownership at least three times since its original registration, with Respondent gaining ownership some time after June 2006. Complainant contends that sometime in May 2009 the disputed domain started to have advertising links to competitors of Complainant. Respondent failed to respond to the Complaint.

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 simply and quickly found that the disputed domain was identical to the mark and that Complainant has rights through its registrations to the mark. Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant made a sufficient prima facie case. The Panel found that there was no suggestion of authorization by Complainant, no evidence of “commonly known” by proof of Respondent, and that the use was clearly commercial through use of the sponsored links. The Panel thus found that Complainant satisfied the second element as well.

Moving to the final element, bad faith, the Panel noted that Respondent’s use of the domain as a landing page with sponsored links, without any explanation from Respondent, was sufficient proof of this element. The Panel also justified finding bad faith due to Respondent’s failure to respond and Respondent’s use of a privacy service.

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

DefendMyDomain Commentary: Compare this case to the SHOE LAND case we previously blogged on (available here), Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009). Of course the facts are different, but one has to wonder whether a response by Respondent would have created a different outcome.

TELUS CEO Darren Entwistle Gets His Name

Monday, September 14th, 2009

          telus

In the recent domain name dispute decision of Darren Entwistle, Telus Corporation v. Finian Commission (WIPO D2009-0961, September 1, 2009), a single member Panel was faced with a dispute over the domain www.darrenentwistle.com. Darren Entwistle is the President and CEO of TELUS, a leading national telecommunications company in Canada. TELUS provides a wide range of communications products and services including data, Internet protocol (IP), voice, entertainment and video and maintains a web site at www.telus.com. Respondent provided a response, but it is unclear from the decision how detailed it actually was.

Under 4(a) of the Policy, the Complainants must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights; (ii) The Respondent has no rights or legitimate interest 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 acknowledged that Mr. Entwistle does not have any federal trademark rights and instead needed to establish sufficient common law rights. The Panel  relied on the prior decision of Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, which sets out six factors needed to establish a nexus between an individual’s name and its use and association in trade and commerce. They include:

1) the extent to which the commercial community identifies the individual with the company;
2) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company;
3) the extent of the personal ownership of the company by the individual;
4) the degree of personal control that the individual exercises over the enterprise;
5) the extent to which the individual is identified with any major achievements of the enterprise; and
6) whether the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.

The Panel then reviewed the evidence and found that Complainant sufficiently proved all of those six factors to show a nexus between Complainant and his company. AS a result, the Panel found that Complainant had shown sufficient common law rights, and finding that the domain was identical to the mark.

Moving to the second element, the Panel found that respondent was not known by the disputed domain. The Panel then relies on prior domain decisions which stood for the proposition that “it is not appropriate to use the name of the entity whom one wishes to criticize on the basis of ‘fair use’ to divert Internet traffic to the site.” The Panel seems to acknowledge that the disputed domain was used to criticize, but in the same respect it finds that since “the website at the disputed domain name also provides links to goods and services of third party entities for the purpose of monetary gain, the Respondent cannot be said to be making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, paragraph 4(c)(iii) of the Policy.” Thus the Panel found that Complainant satisfied the second element as well.

Moving to the final element the Panel addresses Respondent contentions that this proceeding is an attempt at stifling free speech through censorship. The Panel, relying on three prior decisions, explains that the one may be entitled to criticism, but not when it is using a domain which is identical to someone’s trademark. Regardless, the Panel notes that use of the domain to denigrate Complainant, while having commercial links on the same web site cannot be found to be pure criticism.

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

“Rare Names” Sees Rare Event…Panel Finds Reverse Domain Name Hijacking

Friday, September 11th, 2009

                  lincs

In the recent domain name dispute, Spinsix Strategic Marketing Design, LLC v. RareNames, WebReg FA1273907 (Nat. Arb. Forum, September 3, 2009), a single member Panel was faced with a dispute over the domain www.lincs.com. Complainant appears to be an marketing firm, which sells computer related online marketing tools. Complainant maintains a web site at www.spinsix.com. Complainant owns a trademark registration for the mark LINCS. Respondent appears to be a domainer and registered the disputed domain in September 2003.

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 found that Complainant had established rights to the mark LINCS through its trademark registration. However, the Panel noted Complainant did not provide sufficient evidence of common law rights dating back to the first use date of January 2004. The Panel recognized that Respondent argued that the disputed domain registration date predated the first use allegations from Complainant, but declined to review the information for this element. The Panel found this element satisfied by Complainant.

Moving to the second element, the Panel found that Complainant failed to establish a prima facie case under the Policy. The Panel noted:

Respondent has offered convincing proof that it is in the business of registering generic domain names and displaying advertising that relates to the generic nature of the terms in the domain names. Respondent asserts that engaging in the sale of generic domain names is a legitimate business.  The Panel finds that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)….Respondent also argues that the term in the <lincs.com> domain name is generic and of common use and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent has offered convincing evidence that the contested domain name is comprised of a common term, such that the Panel finds that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

The Panel then simply stated that the disputed domain was registered before Complainant’s first use of the mark, and then concluded that section finding Respondent had rights or legitimate interests in the domain.

The Panel declined to review the bad faith element in light of this finding and instead moved to Respondent request for a finding of Reverse Domain Name Hijacking. The Panel repeated some of Respondent’s arguments, but did not provide much of its own analysis. Respondent argued:

Complainant has attempted to engage in reverse domain name hijacking by filing the instant UDRP case, with the knowledge both that Respondent had rights or legitimate interests in the disputed domain name, and that Respondent could not have registered  the disputed domain name in bad faith, because its registration of September 01, 2003, pre-dated Complainant’s asserted common law usage of the mark in January of 2004.

In light of these arguments, the Panel found that Complainant engaged in reverse domain name hijacking and DENIED Complainant’s request for transfer.

Davidoff Extinguishes Squatter

Wednesday, September 9th, 2009

                  davidoff

In the recent domain name dispute decision of Davidoff & Cie SA v. Nicaragua Tobacco Imports, Inc. / Jorge Salazar (WIPO D2009-0923 August 20, 2009), a single member Panel was faced with a dispute over the domains www.davidoffcigarcutter.com, www.davidoffhumidor.com and www.davidoffhumidors.com. Complainant is the well known tobacco products company with a presence for nearly 100 years. They maintain a web site at www.davidoff.com. Respondent failed to respond to the complaint. Complainant has numerous trademark registrations for the DAVIDOFF mark.

The Panel provided one of the shortest decisions yet.  First, the Panel found that the domain names all incorporated Complainant’s full mark with the addition of generic words related to Complainant’s business. Second, the Panel found that there was no evidence of any right or legitimate interest in the domain by Respondent. Lastly, the Panel addressed the issue of bad faith. The Panel found that due to the long existence of Complainant and its use of the marks, the disputed domains could only have been registered in bad faith. Many of the links on the pages of the domains led to links of direct competitors with Complainant.

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

Re-Filed Case…Different Result

Tuesday, September 8th, 2009

                 koc

In the recent domain name dispute Koç Holding A.S. v. KEEP B.T. (WIPO D2009-0938, August 31, 2009) a single member arbitrator was faced with a dispute over the domain www.koc.com. As the decision points out, this appears to be re-filed case, after the complainant lost a previous decision back in December 2000 and decided in March 2001. See Koç Holding A.S. v. MarketWeb A.S., WIPO Case No. D2000-1764. In that prior decision Complainant failed to establish trademark rights. This complaint was now re-filed based on new evidence, including a trademark registration and subsequent bad acts. Although the rules don’t specifically address a re-hearing, many Panels have permitted it. WIPO has provided a short summary consensus view of re-filed cases:

A refiled case involves the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct by the panel or the parties in the original case (such as perjured evidence). A refiled complaint will also be accepted if it includes newly presented evidence that was unavailable to the complainant during the original case.

This Panel found there was sufficient evidence and allegations to support a re-filed case. Complainant is one of Turkey’s top industrial conglomerates, and has been around since 1926. It is ranked among the largest 200 companies in the world, and maintains a web site at www.koc.com.tr. The disputed domain was registered on August 12, 1997. Complainant owns a trademark registration for the KOC mark, with registration date of 2002, but with rights relating back to 1926.

In addressing the elements, the Panel made the following observations. First, with respect to whether the domina is identical or confusingly similar, the Panel explained that since Complainant proved it registered KOC as a trademark, there was no need for the Panel to consider the common law rights. Next, the Panel addressed whether Respondent had any rights or legitimate interests in the domain. The Panel found that Respondent was unable to show any rights or legitimate interests and that Complainant sufficiently presented a prima facie case. Third the Panel reviewed whether the domain was registered in bad faith. Complaianint submitted new allegations of bad faith, which included:

The Respondent received news and documents that were intended for the Complainant. After the previous case between the parties the Respondent was supposed to return all that was received to the Complainant but never did. The Respondent sent an e-mail that blackmailed the Complainant. The Complainant initiated legal proceedings which concluded in the Complainant’s favour….

The Panel merely states this information is germane to the instant decision, but does not provide additional analysis. Instead, the Panel found that due to the size of Complainant at the time of the registration of the disputed domain, and since Respondent also resided in Turkey, then Respondent must have known about Complainant. The Respondent’s passive holding of an inactive web site was also troubling to the Panel.

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

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