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Archive for December, 2009

NATURE’S CHOICE Bark Smaller Then It’s Bite

Wednesday, December 23rd, 2009

       natures-choice

In the recent domain name dispute decision of Kim Laube & Company Inc. v. RareNames, WebReg FA1291282 (Nat. Arb. Forum December 22, 2009) a three member Panel was faced with a dispute over the domains www.natureschoice.com and www.natures-choice.com. Complainant sells pet grooming products and has a a trademark registration for the mark NATURE’S CHOICE. Respondent provided a response to the complaint and registered the disputed domains in 2002 and 2003.

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

The Panel addressed the first element of the analysis and explained that the domains were identical or confusingly similar to Complainant’s mark. Although Respondent argued that Complainant could not hold exclusive rights on the common words, the Panel dismissed this argument under this prong of analysis.

The Panel declined to address the second prong, directing its attention to the third prong. First the Panel noted that there was no evidence presented that Respondent’s registered the domains primarily for the purpose of disrupting Complainant’s business.  The Panel only paid serious attention to Policy ¶4(b)(i) and (iv). Those sections state:

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel explained as follows:

Turning first to Policy ¶ 4(b)(i), Respondent states that its business is the acquisition then sale of domain names for profit.  The only important issue is whether Complainant can point to circumstances indicating that Respondent registered the names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.

Likewise, Policy ¶ 4(b)(iv) requires proof that Respondent for commercial gain; intentionally used the disputed domain name to attract web users; to an on-line location; by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that on-line location, or of a product or service at that location.

Once more, the key issue is whether Respondent can be said to have used the domain names in a way which intentionally created a likelihood of confusion with Complainant’s trademark.

The Panel recognized that there are other contrary decisions on this topic but noted that their view was that “proof of actual knowledge of a Complianant’s trademark rights is necessary.” The Panel explained that in the situations where there is a trademark with descriptive elements, then the onus rises on proof of knowledge. The Panel discounts the arguments put forth by Complainant of its common law rights, based on a lack of evidentiary support. The Panel concluded by noting:

Taking account of the inherently descriptive character of both the trademark and the disputed domain name, the degree to which either very similar domain names or identical domain names with different extensions have been registered/used by others, the lack of evidence that Respondent has habitually abused third party trademark rights, and all of the circumstances, the Panel finds that neither Policy ¶ 4(b) (i) or (iv) is made out.

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

MATTEL Races To Victory With HOT WHEELS Domains

Monday, December 21st, 2009

           hot-wheels-logo

In two recent domain name dispute decisions, Mattel, Inc. v. Bladimir Boyiko (Nat. Arb. Forum, FA1290718, Dec. 16, 2009) and Mattel, Inc. v. Domain c/o VO (Nat. Arb. Forum, FA1289791 Dec. 15, 2009) two separate three member Panels were faced with disputes over www.wwwhotwheels.com and www.hotwheels.org. Mattel is the well known toy company responsible for the HOT WHEELS die cast cars. HOT WHEELS were first sold in the U.S. in 1968. Complainant operates web sites at www.hotwheels.com and www.mattel.com. Both Respondents failed to provide a response to the complaints.

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 the first case referenced above, the Panel recognized Mattel’s HOT WHEELS mark and had  “no difficulty in finding that the Domain Name is confusingly similar” to the mark. Mattel presented a prima facie case, which included an argument that Respondent was not commonly known by the disputed domain. Additionally, as the Panel found, Respondent was using the domain for third party link click through fee generation.  Lastly the Panel noted that the domain was an example of typosquatting. The Panel found that Respondent was involved in other UDRP proceedings and therefore was engaged in a pattern of bad faith.

In the second mentioned case, the Panel also noted that the HOT WHEELS mark was well known throughout the world and that the domain was identical to the disputed domain. The Panel found that Respondent was not commonly known by the disputed domain and that Mattel had presented a prima facie case. Lastly the Panel found that Respondent’s inaccurate or incomplete contact information was evidence of bad faith. Additionally, Respondent’s failure to respond was evidence against.

Ultimately, the Panels found in favor of Mattel and ordered the domains be TRANSFERRED.

Kate Hudson Joins The List Of Celebs Getting Their Name Back

Wednesday, December 9th, 2009

      kate_hudson  kate_hudson-2

In the recent domain name dispute decision of Kate Hudson v. Fei Zhu FA1290319 (Nat. Arb. Forum, December 8, 2009) a three member Panel was faced with a dispute over the domain www.katehudson.com. Kate Hudson is the famous actress who has been in countless movies, and according to the decision has used her name commercially since 1999.  Respondent registered the domain in 2006 and  failed to respond to the Complaint.

Paragraph 4(a) of the ICANN 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 Kate Hudson did not have a federal trademark registration for her name, but reviewed the information provided to determine if she could establish secondary meaning in her common law rights. The Panel found that she had established those rights through continuos and extensive commercial use that predated the registration of the domain.  The Panel determined that the disputed domain was identical to the KATE HUDSON mark.

Moving to the second element, rights or legitimate interests, the Panel explained that Kate Hudson made out a prima facie case under this section of the Policy. As a result the Panel concluded that since the burden shifts to Respondent and Respondent failed to provide a response, then there was no evidence suggesting any rights or legitimate interests.

In addrrssing the final element, bad faith, the Panel noted that the disputed domain resolved to a parked web site with unrelated third-party links and adult oriented links. This was found to be bad faith, in and of itself. For these reasons, the Panel’s analysis stopped there.

Ultimately, the Panel found that all three elements were shown and ordered the domain be TRANSFERRED.

Split Panel Beats Up Domainer Over “Vagalume”

Tuesday, December 8th, 2009

            vagalume

In the recent domain name dispute decision of Vaga-lume Midia Ltda v. Kevo Ouz d/b/a Online Marketing Realty FA1287151 (Nat. Arb. Forum, December 7, 2009) a three member Panel was faced with a dispute over the domain www.vagalume.com. Complainant runs a Brazilian based web site about music, since 2002, located at www.vagalume.com.br and www.vaga-lume.com.br. Respondent is a domain name entrepreneur who admits to registering domains of common or descriptive words. The disputed domain was purchased by Respondent in December 2007.

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 provided a split decision, with only two of the Panelists providing the majority opinion. In addressing the first prong the Panel explained that Complainant provided a Brazil  trademark registration certificate for VAGALUME and design. The Panel concluded that the there was letter-by-letter coincidence of the disputed domain and the mark.

The Panel next addressed the second element, whether the Respondent has any rights or legitimate interests in the domain. The Respondent argued that the term vagalume means firefly in Portugese. The Panel however noted that Complainant’s use of the mark is not descriptive and instead was arbitrary. Respondent claimed he registered the domain due to its high traffic, but the Panel noted he failed to provide any evidence of this traffic being a result of common nature use of the term. Instead the Panel noted that results of an Alexa.com search showed that over 91% of the visitors to the disputed domain originated from Brazil. Next the Panel addressed the actual control and use of the domain, and this is where the Panel began to chastize Respondent:

As also shown by Complainant, after having received service of the present complaint, Respondent manually modified the parameters governing the generation of ads appearing on the website at the disputed domain name, from ads almost related to music to generic ads. This shows that Respondent always could and did control the contents of his website (“pay-per-click” links), which deprives of any credibility Respondent’s contention that he did not did not select the links, and that they were auto-generated by Yahoo and Parked.com. Respondent’s manual change of the ads parameters, following his having received service of the complaint, was hidden until Complainant revealed it in its additional submission. This shows that when Respondent registered the disputed domain name he was targeting Complainant’s mark to extract income from pay-per-click links precisely aimed at Complainant’s audience and traffic. Only after having been served with the complaint, did Respondent use his ability to manually control the contents of his website at the disputed domain name, and posted texts explaining that VAGALUME means “firefly”, in an obvious attempt to justify – ex post facto – his having chosen the disputed domain name. All this does not reveal a use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, pursuant to Policy ¶ 4.c.i., or a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers, pursuant to Policy ¶ 4.c.iii.

The Panel then moved to the final element, bad faith. The Panel explained that bad faith requires knowledge or awareness of the mark. This knowledge or awareness is a responsibility for those who own large portfolios of domains. This willful blindness concern was addressed by Respondent who claimed that he conducted a search for the trademark on the USPTO site prior to purchase. Additionally, the Respondent claimed that a U.S. resident should not be obliged to search the records of all foreign trademark offices. The Panel disagreed with this view, noting that since the domain was a Portugese word, a search in Brazil would have been necessary. The Panel went on to explain:

Additionally, the Panel notes that Respondent’s remarks that he had no knowledge of the Complainant or its trademark prior to the instant dispute are contradicted by the uncontroverted circumstantial evidence discussed above.  Respondent’s prevarication regarding his prior knowledge of the Complainant and its common law trademark, as well other apparently disingenuous statements made in his pleadings, is additional independent and sufficient grounds for finding bad faith registration and use.

The Panel does not stop the bleeding there, as they then discuss the three prior UDRP cases which Respondent lost on default. As a result the Panel stated:

While Respondent observes that in all such cases he was in default, the Panel cannot but speculate that an experienced domainer like Respondent may have considered that its case was indefensible. In any event, there is no evidence that Respondent has challenged any of these decisions before a court, as it was his right under the UDRP. Respondent cavalierly considers such cases to be a “few UDRP losses”. The Panel believes that those cases demonstrate that Respondent had engaged “in a pattern of such conduct” when he registered the disputed domain name in order to prevent Complainant from reflecting the VAGALUME mark in a “.com” domain name, which is a circumstance of bad faith registration pursuant to Policy § 4.b.ii.

The reasons for ruling against Respondent did not stop there, though. The Panel criticized Respondent for changing the parameters of the pay per click links on his web site after receiving notice of the dispute. The Panel found that this showed Respondent had control of the web site all along and that since this is an experienced domainer “it is unlikely if not absurd to find that he was unaware of exactly how the parking page worked and that he could manipulate it.”

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

DefendMyDomain Commentary: There is a very long and well thought Dissent opinion. The Panelist takes a careful approach at noting that there are issues on both sides, but that the Complainant just did not provide evidence sufficient for a finding that satisfied all the elements. The dissenting Panelist instead challenged that the decision should not be based on supposition and conjecture. Take the time to read this dissent to get an understanding of just how different Panelists can view a specific case.  We believe the Domainers are going to have a real problem with this decision, but the current UDRP system remains.

Frederick’s of Hollywood Wins Ten Typosqautted Domains

Friday, December 4th, 2009

         Frederickslogo_FREDERICKS

In the recent cybersquatting domain dispute of Frederick’s of Hollywood Group Inc. v. Blue Water LLC FA1290927 (Nat. Arb. Forum, December 3, 2009) a single member Panel was faced with a dispute over ten domains. Complainant, uses the marks FREDERICK’S OF HOLLYWOOD and FREDERICK’S related to its women’s clothing and lingerie business since 1946. Complainant maintains a web site at www.fredericks.com. Complainant has a specific third party affiliate program, allowing fees to be paid to authorized third parties for directing traffic to Complainant’s official site. The affiliate policy specifically restricts the use of misspelled domains. Respondent registered one of the domain in 2003 and the other nine in 2006. According to the decision, all of the disputed domain names resolved to Complainant’s web site.        

Paragraph 4(a) of the ICANN 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 began its analysis, noting that Frederick’s of Hollywood has sufficiently shown its rights to the marks. The Panel found that the domains contained minor changes which were not sufficient to distinguish them from Complainant’s mark.

Additionally, one or more of the following changes were made in each disputed domain name to the mark (1) the addition of one extra letter; (2) the transposition of two letters in the mark; or (3) the replacement of one letter in the mark with another.  The Panel finds that these changes are insufficient to overcome the confusing similarity that arises from using Complainant’s mark in the disputed domain name. 

The Panel found the domain were confusingly similar to Frederick’s marks.  

Moving to the second element, the Panel noted that Frederick’s presented a prima facie case, and despite the lack of response from Respondent, it would still review the record. Complainant contended that Respondent was not licensed to use the marks. Additionally, the Panel found that Respondent was not commonly known by the disputed domains. The Panel found that Respondent’s attempt at profiting from Complainant’s affiliate program using these typosquatted domains was not a bona fide use. Additionally, the act of typosquatting was found to be evidence of lacking rights or legitimate interests. The Panel found that this second element was satisfied by Complainant.

Moving to the final element, bad faith, the Panel noted that the disputed domains began to be registered nearly forty-five years after Frederick’s established trademark rights. The Panel explained that since the disputed domains resolved to Complainant’s own web site, that consumers would be confused as to affiliation or control. Additionally, since the domains contained typographical errors, this was evidence of bad faith. Lastly, by violating Complainant’s affiliate program, this was also evidence of bad faith.

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

Hard Rock Café Wins An Easy Hand In “Poker” Dispute

Wednesday, December 2nd, 2009

       hard_rock_casino_logo

In the recent domain name dispute decision of Hard Rock Cafe International (USA), Inc. v. Ronald Robinson FA1290206 (Nat. Arb. Forum, November 25, 2009), a single member Panel was faced with a dispute over the domain www.hardrockpoker.net. Hard Rock is the well known chain of Hotels, Casinos and Restaurants that are all over the world. They have been in business since 1978 and have trademark rights to the HARD ROCK mark. Hard Rock maintains several website located at www.hardrock.com, www.hardrockhotels.com, and www.hardrockpoker.com. Respondent registered the disputed domain in May 2009 and failed to respond to the disputed domain.

Paragraph 4(a) of the ICANN 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 element, noting that Complainant established rights in the HARD ROCK mark through multiple registrations of the mark. The Panel found that the disputed domain merely added the descriptive word poker, which was not different enough from the mark.

Moving to the second element, the Panel found that Hard Rock presented a prima facie case, shifting the burden to Respondent. Although the Respondent failed to respond to the complaint, the Panel chose to review the record anyway. The Panel found that Respondent was not commonly known by the disputed domain under Policy paragraph 4(c)(ii). Additionally, the Panel noted that the disputed domain resolved top show banner advertisements and links to gaming web sites. For this reasons, the Panel determined this was not a bona fide offering of goods and services under Policy paragraph 4(c)(i).

When discussing the last element, bad faith, the Panel noted that the domain was hosting links to advertisements for gambling web sites. The Panel inferred that Respondent was attempting to disrupt Hard Rock’s business by competing directly. Additionally, it was determined that Respondent was receiving click through fees from the links and profiting from the confusion.

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

Bad Faith Use, Despite Good Faith Registration, Causes Transfer

Tuesday, December 1st, 2009

                parvi

In the recent domain name dispute decision of Ville de Paris v. Jeff Walter WIPO D2009-1278, November 19, 2009, a single member Panel was faced with a dispute over the domain www.parvi.org. Complainant is the City of Paris, France, who claims ownership of two French trademark registrations from 2002 for PARVI (for communications by computer terminals) and PARVI PARIS VILLE NUMERIQUE (for computerized file management and communications by computer terminals). Respondent registered the disputed domain in June 2006. The background story of this case involves a series of communications between the parties regarding Respondent’s use and continued ownership of the domain. Essentially, the Respondent contended he registered the domain with no knowledge of Paris’ PARVI marks and instead picked the word because it meant “small” in Latin and was to be used for a social networking site. Paris even acknowledged that he lacked the intention of causing confusion when he registered the domain. Apparently, sometime later Respondent then changed his mind and was going to run a web site dedicated to open source software projects. The resulting domain dispute occurred.

Generally, paragraph 4(a) of the ICANN 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 the instant case however, the Panel took some liberties and has made some interesting interpretations of the Policy and prior case decisions.

First, the Panel quickly dispelled with the first element, noting that it was identical to Paris’ PARVI trademark. The Panel also quickly rolled through the second element, noting that the word parvi is not Latin for small, but instead the correct word is parvus. The Panel found that Respondent failed to show demonstrable preparations for the domain and thus lacked any rights or legitimate interests.

The Panel spent most of the decision discussing the third element, registration and use in bad faith. Paragraph 4(a)(iii) states that Complainant must prove that Respondent’s “domain name has been registered and is being used in bad faith.” The Panel explained that recently many decisions have reviewed the interpretation of this policy paragraph to mean something slightly different then it has been applied. The Panel explained:

The Policy expressly states that the Paragraph 4(b) scenarios are “without limitation” – that is, the Policy makes clear that there can be other scenarios that are also evidence of registration and use in bad faith. It follows, therefore, that the Policy expressly recognizes that the Paragraph 4(a)(iii) requirement of bad faith can, in certain circumstances, be satisfied where the respondent has used the domain name in bad faith, even though the respondent may not have been acting in bad faith at the time of acquisition of the domain name.

The Panel attempted to justify its findings, based upon a hypotheical:

There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name. To limit the trademark owner’s redress in this way would result in outcomes that make no sense. In particular, it would mean that even the most damaging abuse of a trademark right through the most egregious bad faith use of a domain name would be immune from remedy under the Policy so long as the registrant was not acting in bad faith when the domain name was acquired. It would, in short, give a “green light” to good faith domain name registrants to later abusively use their domain names, safe in the knowledge that any such bad faith use could not provide the basis for a successful action under the Policy.

The Panel found that Respodent probably did not register the disputed domain with the intention of benefitting from Pari’s PARVI mark, but this did not end the decision.

The Respondent’s decision to change the intended use of the disputed domain name to a use that could cause confusion with, and disruption to, the Complainant’s activities, and the Respondent’s demand that the Complainant provide it with an option to acquire the Complainant’s domain names, were actions by which the Respondent sought to use its registration of the disputed domain name to derive a benefit from the Complainant’s trademark.

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

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