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Archive for October, 2009

Ashley Judd Gets Her Name and Domain… Thirteen Years Later.

Thursday, October 8th, 2009

      ashley_judd

In the recent domain name dispute decision of Ashley Judd v. Alberta Hot Rods, Jeff Burgar (WIPO D2009-1099, September 25, 2009), a single member Panel was faced with a dispute over the domain www.ashleyjudd.com. Judd is the well known actress who has appeared in countless film and television roles throughout the 1990’s and 2000’s. Respondent registered the disputed domain in 1996 and failed to reply to the Complaint.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which she has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that Judd had common law rights in her name.

It is well-established that where an actor has a sufficient reputation for her professional work under her name or stage name, that name is a marke in which she has rights for the purpose of the UDRP: see, for example, Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210. The Panel finds on the evidence that the Complainant has amply sufficient reputation to satisfy this requirement. As a result, the Panel found the Judd satisfied the first element.

Moving to the second element, the Panel found that Respondent had failed to use the domain in connection with a bona fide offering of goods or services. Instead the panel found that the disputed domain was used to drive traffic to another web site with the intention of obtaining revenue from sponsored links. The Panel also found that Respondent was not commonly known by the disputed domain.

Moving to the final element, bad faith, the Panel noted that Judd’s reputation as an actress had been well established by 1996. Additionally, the Panel found that Respondent engaged in a pattern of registering domain containing names of famous actors and celebrities. The Panel declined to apply any possible defense of laches. Ultimately, the Panel found that there was no contrary evidence and concluded that Judd satisfied all the elements. The Panel ordered the domain be TRANSFERRED.

RADIO SHACK Doesn’t Suck?

Tuesday, October 6th, 2009

        radio-shack

In the recent domain name dispute decision of TRS Quality, Inc. v. Gu Bei (WIPO D2009-1077, September 25, 2009) a single member Panel was faced with a dispute over the domain www.radioshacksucks.com. Complainant is the parent company of the Radio Shack Corporation (now known as “the Shack” if you have seen the new ads). They maintain a web site at www.radioshack.com and own numerous U.S. trademark registrations for the RADIO SHACK mark. The disputed domain was registered on April 27, 2007 and Respondent failed to respond to the Complaint.

Paragraph 4(a) of the UDRP Policy directs that the Complainant must prove each of the following: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

In addressing the first element, the Panel found that the domain contained all of Complainant’s mark with the addition of the generic word sucks. The Panel explained:

Indeed, considering the vulgar and offensive meaning of the term, it is unlikely to believe that companies would publish a website with such a self-denigrating domain name. On these grounds are based some panel decisions which concluded that a domain name containing a well-known trademark and the term “sucks” is not “confusingly similar” to the mark included in the domain name.

But the Panel also noted:

However, as held i.a. in La Quinta Worldwide L.L.C. v. Heartland Times LLC, MD Sullivan, WIPO Case No. D2007-1660, “it is not self-evident that Internet users would always take notice of the slang word following the trademark in the Domain Name and recognize its negative import”, also in light of the fact that many Internet users potentially interested in the Complainant’s services accessing to the web site “www.radioshacksucks.com” may be not fluent English-speakers.

The Panel found that Radio Shack met its first element burden and moved to the second element. The Panel noted that Complainant showed a prima facie case and explained the necessity to review the contents of the disputed domain. The Panel relied on a previous decision for the standard to apply in such a case:

Simply having a domain name with “-sucks” in the name cannot, by itself, establish fair use; one must look to the content of the website to determine if there is an exercise of free speech which allows the Respondent to rely on the fair use exception. To do otherwise would legitimize cybersquatters, who intentionally redirect traffic from a famous mark, simply through the use of a derogatory term.

In light of this the Panel found that Respondent’s domain did not point toward a legitimate gripe web site, and instead contained pay-per-click links at third party commercial web sites. The Panel also found that there is no relationship between the Complainant and Respondent and that no licence or authorization was present.

The Panel found the second element was satisfied and moved onto the last element of bad faith.  The Panel found that Respondent must have known about Complainant due to its 85 year existence prior to registration of the domain. The panel further explained that the third party pay per click links on the pages resulted in an attempt to attract users to the web site for commercial gain. Lastly the Panel found that Respondent’s failure to respond was bad faith.

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

ROCKSTAR ENERGY DRINK Silences Critics

Thursday, October 1st, 2009

          rockstar

In the recent domain name dispute decision of Rockstar, Inc. v. RSRESELLER LTD c/o Andrey Litovchenko (Nat. Arb. Forum FA1279865, September 29, 2009), a single member Panel was faced with a dispute over the domain www.thetruthaboutrockstarenergydrink.com. Complainant is the exclusive licensee of the ROCKSTAR and ROCKSTAR ENERGY DRINK marks in connection with its very popular energy drinks. Complainant has been using the marks since 1999 and has a registered trademark and maintains a web site at www.rockstar69.com. Respondent registered the domain in June 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.

In addressing the first element, the Panel noted that Complainant had sufficient rights to the mark under the Policy  ¶ 4(a)(i). The Panel next compared the disputed domain to Complainant’s mark and found that the disputed domain merely added the generic phrase “the truth about” at the front of the domain. The Panel found that this difference was not significant and found the domain to be confusingly similar.

Moving to the second element, the Panel found that Complainant presented a prima facie case, shifting the burden of proof to Respondent. The Panel found that Respondent was not commonly known by the disputed domain and had no license or permission to use the mark. The most significant findings from this section though were as follows:

Respondent’s disputed domain name redirects Internet users to a website that displays critical and disparaging information about Complainant.  Previous UDRP precedent has held that a respondent does not have the right appropriate Complainant’s mark in a disputed domain name in order to exercise free speech rights on a resolving website.  Therefore, the Panel finds that Respondent has not created a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

The Panel’s support for this finding was based on one citation from a June 2000 WIPO decision and a Second Circuit decision from 2000 as well. As a result the Panel found Complainant satisfied this element as well.

In addressing the final element, the Panel explained that it was within its power to consider additional factors beyond those listed in Policy ¶4(b). The Panel acknowledged that the disputed domain resolved to a web site that criticized Complainant but quoted another decision in support of its finding:

In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel stated that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith.

As a result, the Panel found that “Respondent’s criticism of Complainant’s business through the disputed domain name was achieved only through bad faith registration and use, as Respondent misappropriated Complainant’s trademark through the confusingly similar disputed domain name.” Ultimately, the Panel found that Complainant satisfied all elements of the Policy and ordered the domain be TRANSFERRED.

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