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Archive for March, 2010

Gay Porn Site Target of Typosquatting

Wednesday, March 31st, 2010

It should come as no surprise that adult web sites are targeted for cybersquatting. In the recent domain name dispute of Blu Media Inc. v. Transure Enterprise Ltd c/o Host Master FA1307892 (Nat. Arb. Forum, March 30, 2010) a single member panel was faced with a dispute over the domain www.justsuboys.com. Complainant uses its domain www.justusboys.com as a for profit adult website. The domain was originally launched in 2002, although complainant did not purchase it until January 2010. Respondent registered the disputed domain in October 2009.  Respondent 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 Complainant does not have a registration for the mark JUSTUSBOYS.COM.  Thus the Panel was forced to determine if the Complainant’s mark had established secondary meaning.

In support of its contention Complainant has submitted evidence of awards received for its e-magazine as well as critic reviews of its website and magazine.  Complainant further provides evidence of high “Alexa” rankings for the number of visitors to its website.  The Panel finds that Complainant has produced sufficient evidence to show it has common law rights in the JUSTUSBOYS.COM mark for purposes of Policy ¶ 4(a)(i) through continuous and extensive commercial use before Respondent registered the disputed domain name.

The Panel found that the disputed domain was confusingly similar to Complainant’s mark and that Policy ¶ 4(a)(i) had been satisfied

Moving to the second element, the Panel noted that Complainant submitted evidence sufficient for a showing and establishment of a prima facie case. Regardless the Panel chose to review the evidence presented. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the disputed domain was offering third party links to competing adult oriented web sites. “The Panel finds that Respondent’s reliance on typosquatting to create a confusingly similar disputed domain name, where it receives referral fees to websites in competition with Complainant is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Also, Complainant put forth evidence that Respondent was seeking to sell the disputed domain publicly and to Complainant. Lastly, the Panel remarked that the domain was a typosquatted version of the mark. For all these reasons, the Panel found that Respondent lacked any rights or legitimate interests in the domain, and that Policy ¶ 4(a)(ii) had been satisfied

In addressing the final element, the Panel began by examining Respondent offer to sell the domain for $5,000.00 to Complainant. “The Panel finds that Respondent’s general listing of the disputed domain name for sale, as well as its attempts to sell the disputed domain name to Complainant for amounts in excess of its initial costs are evidence of bad faith registration and use under Policy ¶ 4(b)(i).” The Panel also found that Respondent intentionally disrupted Complainant’s business. Additionally, the Panel found that the use of competitive third party links for financial gain was evidence of bad faith registration and use. Ultimately, the Panel ruled  that Policy ¶ 4(a)(iii) had been satisfied            

After review of all the elements the Panel ruled that Complainant met all three and ordered the domain be TRANSFERRED.

Theft of “RECENT” “THEY” and “THAN” Not Enough Without Trademark Proof

Monday, March 29th, 2010

In the recent cybersquatting dispute of Taeho Kim v. Skelton Logic FA1305934 (Nat. Arb. Forum March 22, 2010) a single member panel was faced with a dispute over the domains www.recent.net, www.they.net, and www.than.net. Complainaint claimed to have purchased the domains on June 30, 2009 and that they were stolen in December 2009. Complainant contends the domains were ultimately resold to Respondent. As the Panel noted “The Complaint is based on Complainant’s ownership of the domain names and his stated intention to use the marks RECENT.NET, THEY.NET and THAN.NET in the future, even though he does not have a trademark or service mark corresponding to any of the domain names.”

Respondent contends to be a bona fide purchaser of the domain, which were purchased from a common domain marketplace reseller. Paragraph 4(a) of the ICANN UDRP 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 explained that “The Policy is not designed to address cases of theft of domain names, whether brought against the alleged thief or against a subsequent purchaser.” In spite of that statement the Panel chose to review the facts under the policy and stated:

Complainant concedes that he has no trademark or service mark rights and relies solely on his prior registration of the domain names and his stated intent to use marks corresponding to the domain names in the future. Given the generic nature of the second level domains, “recent,” “they” and “that,” the mere acquisition by Complainant of the disputed domain names cannot possibly give rise to trademark rights in RECENT.NET, THEY.NET or THAT.NET. Nor can intent to use give rise to trademark rights.

For this reason the Panel DENIED Complainant’s request for transfer.

Time Has Run Out for OMEGA Cybersquatter

Monday, March 1st, 2010

          omega

In the recent cybersquatting case of Omega SA v. Domain Admin1302921 (Nat Arb. Forum, February 24, 2010) a single member Panel was faced with a dispute over the domain www.omegawatchstore.com. Omega is the well known watch maker with rights to the mark OMEGA. They maintain a web site at www.omegawatches.com. Respondent registered the disputed domain on March 6, 2009 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 Complainant established rights to the OMEGA mark pursuant to Policy ¶4(a)(i). The Panel found that the disputed domain merely added the descriptive phrase watch store, creating a confusingly similar domain to that of Complainant’s mark. The Panel found Complainant satisfied this element.

Moving to the second element, the Panel found that OMEGA set forth a prima facie case, but decided to review the evidence anyway. The Panel found that the Whois information for Respondent did not show that it was commonly known by the domain. Additionally, it was determined that the disputed domain sold counterfeit watches, which was not a bona fide offering of goods. The Panel found this element was satisfied by OMEGA as well.

For the last element, bad faith, the Panel explained that the selling of counterfeit goods constituted a disruption of OMEGA’s business. This attempt to redirect consumers for profit was evidence of bad faith.

The Panel found that OMEGA proved all three elements, and ordered the domain be TRANSFERRED.

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