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Archive for May, 2010

JAGER BOMBS Are Fun And Are Protected Trademarks

Wednesday, May 19th, 2010

jager

Walk over to any college campus bar and just say the words JAGER BOMB and you will likely get mixed reactions of joy and pain from the students. For years the JAGER BOMB has been a popular drink at bars across the country, and around the world. The people at Mast-Jaegermeister AG know this and made sure to get protection for this famous mixed drink. They have a registration for the JAGER BOMB mark and filed a UDRP domain dispute for the domain www.jager-bomb.com. In Mast-Jaegermeister AG v. John Marzlak FA1317337 (Nat. Arb. Forum, May 18, 2010) a single member Panel agreed with the liquor manufacturer and agreed to transfer the domain. Complainant maintains a website at www.jager.com.

The decision did highlight one relevant fact, which had respondent provided a response may have been fleshed out in more detail. The disputed domain was being used to promote the sale of Jager Bomb Shot Cups. Complainant made note of this and the Panel explained:

Respondent capitalizes on the confusingly similar domain name to attract Internet users seeking Complainant’s website to a website offering plastic cups for consumers to use with Complainant’s product.  Therefore, the Panel finds that such diversionary use of the disputed domain name for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). 

          jager-2

There wasn’t anything too exciting or different about this decision. One side note, the domain www.jagebomb.com is parked with “coming soon” text and an info@jagerbomb.com email address. The domain has a privacy service so it is unclear whether Complainant owns it or whether it will be developed. Complainant appears to operate or at least authorize a website devoted to cups just for Jager bombs, namely www.jagerbombcups.com.

HOT RUSSIAN BRIDES Fail To Find Their Match For Second Time

Tuesday, May 18th, 2010

   hotrussianbrides

For those of you who don’t know, a company has a Federal Registration for the mark HOT RUSSIAN BRIDES. Complainant maintains a website at www.hotrussianbrides.com and they have previously been successful in using the UDRP to get some domains, such as www.hotrussianbrides.org, www.hotrussionbrides.com and www.hotrusianbride.com. However, they have also now lost two consecutive domain disputes when trying to get domains when their mark was incorporated into a  “post-domain.”

In the most recent case of Romantic Tours, Inc. v. LiquidNet US LLC (Whois Protection Dept.)  c/o Whois Agent FA1316585 (Nat. Arb. Forum, May 17, 2010) a single member panel was faced with a dispute over the domain www.agencyscams.com. Complainant alleged that the disputed domain contained information about Complainant and services which Complainant offered. What was interesting about this case though was Complainant’s allegations are based, not on the TLD (top level domain), but instead on the following post-domain: www.agencyscams.com/why/hotrussianbrides.

The Panel recognized that Complainant had a trademark registration for the mark HOT RUSSIAN BRIDES, but did not find the disputed domain to be confusingly similar to the mark. The Panel cited to Complainant’s previous earlier UDRP loss Romantic Tours, Inc. v. Whois Privacy Prot. Serv., Inc., FA 1316557 (Nat. Arb. Forum Apr. 28, 2010) (“The Panelist notes that the UDRP does not offer relief for infringements via use of registered trademarks in post-domains and that the proceedings under the UDRP may be applied only to domain names.”). For this reason the Panel found that the identical or confusingly similar prong was not met and therefore there was no need to review the remaining elements.  The Panel DENIED the request for transfer.

MAGIC BRA Can’t Find Support With UDRP Panel

Monday, May 17th, 2010

Let this be another lesson to domain dispute attorneys, simply having a U.S. trademark registration is not always enough. In the recent domain name dispute of A & H Sportswear Co., Inc. v. Hu Yanlin (WIPO D2010-0476, May 12, 2010) a single member Panel was faced with an interesting international dispute over the domain www.magicbra.com. Complainant is the manufacturer and designer of women’s apparel. Complainant is the owner of two trademark registrations for MAGIC BRA, 2756417 and 3335611 dating from as early as 1994. The Respondent filed a response and raised numerous objections. Some of Respondent noteworthy arguments include the following:

[T]he term “magic bra” is a descriptive term which not only refers to a brassiere which will make breasts look bigger but also refers to different methods of breast enlargement such as by nutritional, sports or medial operative means and the Complainant cannot claim exclusive rights over general and descriptive words which are used in accordance with their natural meaning….Complainant has no registered trade mark rights in China and to his knowledge does not sell its MAGIC BRA products in that country….[E]ven in the United States there appears to be several trade marks which incorporate the words “magic bra” and therefore even in the United States the term is common or descriptive…..

Interestingly when on looks at the USPTO database, there is another company who has two other trademark registrations, MAGIC BRA COLLECTION SWIM (Reg. No. 3552163) and MAGIC BRA COLLECTION (Reg. No. 3593248). The owner of those marks appears to maintain a website at www.magicbraswim.com. As Respondent noted, it does not appear as though Complainant is operating a website of their own.  The Panel agreed with the Respondent noting as follows:

The Complainant asserts that its MAGIC BRA mark is well-known and that it owns exclusive rights in relation to the mark and that people would associate the mark with products produced by the Complainant and that it has not authorised the Respondent to use its mark and essentially that the Respondent is using its mark to attract traffic to its website. However, none of these bald assertions are supported by any evidence or even by circumstantial evidence which would allow the Panel to draw appropriate inferences.

The Panel accepted Respondent’s assertions that it did not know about Complainant before registering the domain. Additionally, the Panel noted that since the disputed domain was written entirely in Chinese, and Complainant had failed to provide any evidence of registration or use in China, it would be unlikely to compete with Complainant. The Panel recognized that it was being used for a prking site, it was unclear to the Panel if that domain had been parked since its registration and if so, why Complainant waited seven years to complain. The Panel found that the two operated in separate geographical markets and found Complainant failed to submit evidence of bad faith. For all these reasons, the Panel DENIED the request for transfer.

ASHLEY MADISON Gives Cheaters 101 More Domains

Monday, May 17th, 2010

ashleymadison

If you haven’t heard about Ashley Madison, then you are likely in a committed relationship and would never even consider cheating or you don’t pay much attention to commercials. In the recent cybersquatting case of Avid Dating Life, Inc. v. Private Whois Service FA1318204 (Nat. Arb. Forum May 13, 2010) a single member Panel was faced with a dispute over 101 domains. A full list of the domains is provided in the decision. Complainant is the owner of the well known website www.AshleyMadison.com where people can seek out others who are in committed relationships seeking to have an affair. As their own tag line states “Life is Short. Have an Affair.” No matter what you may think about such a service, it has become wildly popular and boasts nearly 6 million anonymous members. One of the disputed domains was registered in 2005, while all the others were registered in 2008 and 2009. Complainant has federal trademark rights dating back to at least 2004.

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 Complainant established rights in its ASHLEY MADISON mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. All of the disputed domain names contained some typographical modification to the registered mark. The Panel found these domains were confusingly similar to the registered mark since they were common misspellings. For this reason, the Panel found that Policy ¶ 4(a)(i) had been satisfied.

The second part of the analysis the Panel noted that Complainant presented a prima facie case, and although Respondent failed to respond, it still chose to review the facts. The Panel found that Respondent was not commonly known by the disputed domains. Evidence presented to the Panel included proof that two of the disputed domains contained links to competing adult dating websites.

The Panel finds that Respondent’s use of the <ashleymadis0on.com> and <ashleymadision.com> domain names to display third-party links to competitors of Complainant is not a use in connection with 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 Complainant noted that the other 99 domains did not resolve to active websites. The Panl found that failure to make active use of the domains meant they were “not connected with a bona fide offering or goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” And lastly under this section, the Panel found “registration of the disputed domain names containing misspelled versions of Complainant’s mark is further evidence of Respondent’s lack of rights and legitimate interests in the names under Policy ¶ 4(a)(ii).” For all these reasons, Policy ¶ 4(a)(ii) had been satisfied.

Moving to the final element, bad faith, the Panel repeated many of the same facts and applied them in this section as stated earlier. This includes, the third party links, the inactive websites, the typographical variations on the domain names. The Panel also found that “Respondent’s registration of many trademark infringing domain names within a short period of time is evidence of bad faith registration and use under Policy ¶ 4(b)(ii).” For all these reasons, Policy ¶ 4(a)(iii) had been satisfied.

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

CHECKJET Domain Barely Clears the Runway??

Thursday, May 13th, 2010

           checkjet

In an odd, yet interesting recent domain name dispute, a single member Panel essentially punted on making a ruling, since the Respondent consented to the transfer. In Bond Fletcher, Chief Executive Officer c/o Typehaus, Inc. v. Brian Kemmenoe FA1316357 (Nat. Arb. Forum May 12, 2010) the dispute over the domain name www.checkjet.com barely cleared the runway before coming to a short end. Complainant has a federal registration over the mark CHECKJET for “Computer hardware and software for creating, generating and printing checks.” The disputed domain was registered in March 2007, whereas the CHECKJET trademark rights did not accrue until April 2007.
 
The domain was renewed in March 2010, shortly after Complainant put Respondent on notice of possible trademark infringement.  The Respondent replied to the dispute, noting that the domain was registered prior to the creation of any trademark rights. However, the Respondent consented to the transfer and essentially forced the hand of the Panelist. What is odd about this case is the Panelist clearly wanted to explore the facts of the case and render a full ruling.

The Panel notes that the domain name was registered before Complainant acquired any trademark rights and finds that there are no circumstances to indicate that Respondent could have had Complainant or its mark in mind when he registered the domain name in March, 2007. But for Respondent’s consent to the transfer of the domain name to Complainant, this case would have presented an opportunity to consider the careful reasoning in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688, which questions whether it is appropriate to continue to follow early Panel decisions that do not accept renewal as registration for the purposes of the Policy.

One can only wonder what the outcome would have been. It is unclear why this Panelist chose not to go through the factors, as other Panels had done, despite the Respondent’s consent for transfer. Infamous Cybersquatter Texas Property Associates often consents to the transfer, however many Panels choose to go through the full analysis anyway. Regardless, the Panel granted the TRANSFER, but made it clear there were no adverse findings to Respondent.

24 Hour Fitness Doesn’t Close and Doesn’t Like Typosquatters

Friday, May 7th, 2010

24hrfitness

In the recent domain name dispute decision of 24 Hour Fitness USA, Inc. v. Privacy Locked c/o Privacy Locked LLC FA1315677 (Nat. Arb. Forum, May 6, 2010) a single member Panel was faced with a dispute over the domain www.24horfitness.com. Complainant is the well known national chain of fitness centers and maintains a website at www.24hourfitness.com. Complainant has a trademark registration for 24HOURFITNESS.COM since October 2000. 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.

The Panel began with a discussion of finding that the Complaint’s rights in the mark 24HOURFITNESS.COM were sufficient to establish trademark rights for the purposes of this dispute. “The Panel finds the misspelling of the mark in the disputed domain name does not differentiate the disputed domain name from Complainant’s mark and that the disputed domain name is confusingly similar to Complainant’s mark, pursuant to Policy ¶ 4(a)(i).” 

For the second element, whether or not respondent had any rights or legitimate interests in the domain, the Panel explained that 24 Hour Fitness had presented a prima facie case, and that although the Respondent did not respond, the Panel still reviewed the facts and evidence presented. First the Panel found that Respondent’s WHOIS information showed it was not commonly known by the disputed domain name. Second the domain name resolved to a web directory with third party competitor links. For this reason, Respondent had failed to use the domain for a bona fide offering of goods ro services. Lastly since this domain was an intentional misspelling of the mark, it was considered typosquatting and thus violated the Policy.

Moving to the final element, bad faith, the Panel explained that the third party competitor links were evidence of bad faith since it would disrupt Complainant’s business. Additionally, the practice of typosquatting was found to be bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 

For all these reasons, the Panel found that Complainant met the requirements and ruled that the domain be TRANSFERRED.

REDTUBE Porn Site Enforcing Its Intellectual Property Rights

Wednesday, May 5th, 2010

redtube

In an interesting twist, famed porn “tube” site REDTUBE, has decided to enforce some of its own intellectual property, despite the significant amount of copyright violations in the content it reproduces on its website.  In the recent cybersquatting case of Bright Imperial Ltd. v. Ho Nim WIPO Case No. D2010-0321, April 28, 2010, a single member Panel was face with a dispute over the domain, www.redtubehentai.com. REDTUBE is the well known website providing adult videos clips through its website www.redtube.com. REDTUBE boasts that it was the 63rd most trafficked website in the world and is the third most popular adult website. Complainant is the owner of multiple international trademark registrations for the REDTUBE mark.

Paragraph 4(a) of the ICANN UDRP Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings: (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 has been registered and is being used in bad faith.

In addressing the first element the Panel explained that Complainant’s mark was registered in various jurisdictions and that the disputed domain merely added the generic word “hentai” after the mark. The Panel found this to be confusingly similar to the REDTUBE mark.

Moving onto the second element, the Panel explained that REDTUBE presented a prima facie case and found that Respondent had not made a bona fide offering of goods or services. For these reasons, the Complainant had satisfied this element.

Lastly, regarding bad faith, the Panel found that Respondent had registered many other domains which were confusingly similar to third party trademarks, showing a pattern of such bad faith behavior. Additionally, since the domain contained third party links in direct competition to Complainant, such actions were proof of bad faith.

For all these reasons, the Panel found that Complainant had met its burden and ruled that the domain be TRANSFERRED.

VRSIM Tries Second UDRP On Same Domain, But Remains In Its Own Virtual Reality World

Monday, May 3rd, 2010

        vrsim

In the recent domain name dispute decision of VRSim, Inc. v. John Makara FA1314947 (Nat Arb. Forum April 30, 2010) a single member Panel was faced with a dispute over the domain www.vrsim.com. Complainant is a Connecticut based company who creates “innovative visual environments and displays for interactive simulations.” The maintain a website at www.vrsim.net. Respondent attempted to respond to the Complaint but was late in submitting the Response in the appropriate electronic format. The Panel rejected any consideration of the Response.

Despite not reviewing the information contained in the Response, the Panel did not seem to worry too much about the factual arguments, since there was a major procedural hurdle facing Complainant, namely Res Judicata. This domain and this Respondent have been decided already under a previous decision, VRSim, Inc. v. Makara, FA 1233521 (Nat. Arb. Forum Jan. 2, 2009). Interestingly, that prior decision was based on Complainant’s failure to establish it had protectable trademark rights, since the mark was registered on the Supplemental Register. Additionally, Complainant never produce evidence showing secondary meaning.

The Panel explained that in very limited circumstances a case can be re-filed and reviewed again.

Several criteria have been set forth for determining whether a complaint may be refilled. See Grove Broad Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) (noting, and subsequently applying to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision as (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice).

The Panel found that Complainant failed to present anything to support the new case and barred it under the findings from the earlier case. For these reasons alone, the Panel DENIED the Complainant.

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