logo

Archive for July, 2010

An F-Bomb Is Not For Everyone- Jumping On Lapsed Domain Causes Injury

Friday, July 23rd, 2010

In the recent decision of FBomb Clothing c/o Joel Jordan v. Domainly.com (Nat. Arb. Forum 1245522, March 16, 2009), a single member Panel was faced with a dispute over www.fbomb.com. Complainant has operated a sportswear clothing company for extreme outdoor sports since late 2002. Complainant claimed to mistakenly let the domain registration lapse after forgetting to pay the renewal fees. Complainant contends that Respondent immediately registered the disputed domain upon its lapse and parked the page with an offer for sale. Complainant and Respondent then entered into some negotiations to purchase the domain back. Those negotiations fell apart after Respondent demanded additional funds.

UDRP Panels are required to analyze each case by reviewing a three prong element test which includes proving that (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 first made some initial findings, which included the following:

Complainant has submitted as evidence of its use of the FBOMB mark the following: its registration of its fictitious business name with the San Diego County Recorder; its California State Seller’s Permit; a sample manufacturer’s invoice; and screenshots of its website resolving from the <fbomb.com> domain name as they appeared in 2002 and 2008.  (These screenshots were provided by using the Way Back Maching from InternetArchive.org.)  Based upon this evidence of Complainant’s Internet-based business, the Panel concludes that Complainant has established sufficient secondary meaning the FBOMB mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i).

Based upon an establishment of trademark rights, the Panel reviewed the first prong and made a quick finding that Complainant had satisfied this element. The Panel Next addressed the second prong, whether the Respondent had any rights or legitimate interests in the domain and made the following observations:

Though Complainant does not argue such, the Panel finds that Respondent is not commonly known by the <fbomb.com> domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information identifies Respondent as “Domainly.com,” and Respondent has not asserted otherwise…. According to Complainant, Respondent has used the <fbomb.com> domain name solely to offer it for sale, first generally and later through an auction.  The Panel finds that Respondent has not used the <fbomb.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)….Respondent allegedly registered the <fbomb.com> domain name on that same day, and immediately began offering it for sale.  The Panel finds that this further evidences Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).

Determining that Respondent did not have any rights or legitimate interests in the domain, the Panel moved onto the last prong, whether Respondent registered the domain in bad faith. The Panel found that “Since Respondent has allegedly not used the <fbomb.com> domain name for any reason other than to offer it for sale, the Panel concludes that Respondent registered the <fbomb.com> domain name primarily for the purpose of selling it.” The Panel also noted that since the domain was immediately registered after it lapsed, this was further evidence that Respondent’s registration was in bad faith.

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

RAPIDSHARE Doesn’t Own the Rights to RAPID

Tuesday, July 13th, 2010

         rapidhsare

In the recent domain name dispute decision of RapidShare AG , Christian Schmid v. N/A Maxim Tvortsov WIPO Case No. D2010-0696 (June 22, 2010) a single member Panel was faced with a dispute over the domain www.rapidbay.net. Complaint, Rapid Share is the well known file-hosting website which maintains a website at www.rapidshare.com. The respondent did not reply to the Complaint, but the domain was registered on September 22, 2009. Complainant owns a Community Trademark for RAPIDSHARE with a priority date of 2005.

Under Paragraph 4(a) of the ICANN UDRP 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 addressed the first prong of the test, and noted that Complainant was unable to establish ownership rights to RAPIDBAY or to the word RAPID. The Panel compare the mark RAPIDSHARE with the disputed domain and could not find enough of a similarity. The Panel explained that there was no evidence presented by Complainant to show how the two names were confusingly similar. Interestingly, the Panel noted there was a disclaimer present on the website, based on a review of a cached page of the disputed domain, which noted they were not affiliated with RAPIDSHARE. Hoever, this was not addressed in the substantive portions of the decision. The Panel found that this prong was not met and declined to review the remainder of the prongs. The Panel ended its decision with this statement.

Where a complainant’s mark consists of a combination of two common descriptive or generic words, and only one of those words has been used in the disputed domain name, satisfying the requirements of Paragraph 4(a)(i) can be a formidable task. So it has proved in this case.

Ultimately, the Panel DENIED the request for transfer.

WRESTLEMANIA Domain Fight Not Worthy Of Pay-Per-View

Friday, July 9th, 2010

wrestlemania

In the recent domain name dispute decision of World Wrestling Entertainment Inc. v. Israel Joffe WIPO D2010-0860 (July 1, 2010) a single member Panel was faced with a decision over the domains www.wrestlemania26.com, www.wrestlemania27.com and  www.wrestlemania28.com. Complaint is the well known media and sports entertainment company responsible for much of the past few decades worth of wrestling entertainment. They maintain a website at www.wwe.com. WWE claims rights to the WRESTLEMANIA mark dating back to 1985.

Respondent provided a short response to the Complaint which states in full as follows:

Cybersquatting (also known as domain squatting), according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. However if the person does not attempt to sell the name to the company, then no laws have been violated since intent to sell in bad faith has not been proven. In Virtual Works, Inc. v. Volkswagen of America, Inc. (a dispute over the domain vw.net), the [United States] Fourth Circuit Court of Appeals created a common law requirement that the cybersquatter exhibit a bad faith intent in order to confer liability. This means that domain names bearing close resemblance to trademarked names are not per se impermissible. Rather, the domain name must have been registered with the bad faith intent to later sell it to the trademark holder. This “bad faith” concept is reiterated in 15 U.S.C. § 1125 and U.S.C. § 1129. I never had any intention of selling the names to WWE and made no attempts to sell it to them. They have not proven that I tried to sell them the name, therefore no laws have been violated and I should be allowed to keep the domain names.

The Panel did not buy these arguments and explained that paragraph 4(a) provides a non-exhaustive list of examples to prove bad faith. The Panel noted that the websites were not active and through its own research appeared to never have been active. Regardless, the Panel still explored the Respondent sole reason for proving lack of bad faith and stated:

The panel in Telstra, supra, and scores of panels subsequently, have found that “warehousing” or simply registering and holding a domain name whose dominant feature is a famous mark, is use in bad faith. This is now a well-settled rule of decision in UDRP proceedings. See WIPO Overview, paragraph 3.2, Consensus View: “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name.”

Ultimately, the Panel found that Complaint satisfied all three elements and ordered the domains be TRANSFERRED.

Rachael Ray Cooks Up A Win

Thursday, July 8th, 2010

rachaelray

In a very interesting decision, a three member Panel appears to stretch the limits of what is acceptable evidence and methodology for UDRP cases. In the case of Ray Marks Co. LLC v. Rachel Ray Techniques Pvt. Ltd. FA1319966 (Nat. Arb. Forum, July 7, 2010) the Panel was faced with a dispute over the domain www.rachelray.com. Living in the U.S. most of us have all seen on t.v. or heard about Rachael Ray. She maintains a website at www.rachaelray.com  Many would even think this was a slam dunk case for her, since the disputed domain was merely missing a letter. However, Respondent put up a fight and both parties provided additional submissions. As a result the Panel was faced with making some interesting findings.

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.

Some of the relevant arguments presented by Respondent are as follows:

Respondent, Rachel Ray Techniques Private Limited, is a company incorporated in India on July 23, 2009.  Respondent offers products that involve laser ray technology.  Prior to incorporation, Respondent was operated as a partnership that began April 10, 2007….The Complaint misstates the date of the cease and desist letter.  It was sent on February 24, 2010, not February 24, 2009.  This is an attempt by Complainant to mislead the Panel by creating the impression that the letter was sent prior to Respondent’s incorporation on July 23, 2009….Respondent selected the name “Rachel Ray” for its business because the daughter of the technical partner of the original firm was named “Rachel”.  The initial name for the company was going to be “Rachel Lazer Techniques”, but, for reasons related to the practice of numerology, there was a decision to switch to “Rachel Ray Techniques”.

In the decision, the Panel presented the following findings:

Respondent is the owner of the disputed domain name, <rachelray.com>, and the date of creation is September 20, 2001.  The Respondent acquired the name some time later. Respondent is a corporation organized under the laws of India on July 23, 2009, after having been formed as a partnership on April 10, 2007.

With that in mind the Panel reviewed the elements and quickly found that the domain was identical or confusingly similar. The fascinating parts of the decision came during the examination of the second element. The Panel found that the burden was shifted to Respondent to prove it had rights or legitimate interests in the domain. It stated as follows:

Respondent claims to have formed a company in April 2007, which was incorporated in 2009, to market laser-based equipment and other items.  Respondent has supplied the Panel with scads of evidence (Annexes A through W), citing its business name on advertisements, telephone listings, invoices and Indian governmental documents, to support its contention.

However, the Complaint provided evidence that the disputed domain hosted websites that offered Complainants own trademark. Respondent chalked this up to error and lack of control over third party hosting, exclaiming that they are not technical people. Armed with that argument, the Panel made the following statement.

The Panel is presented therefore with competing claims on this issue.  UDRP proceedings provide for only limited evidentiary presentations, and it is difficult for the Panel to make fine assessments as to veracity.  One tool it can employ in this regard is to examine each party’s contentions for consistency.  On this issue, the Panel finds no inconsistency in Complainant’s assertions, whereas there is marked inconsistency with respect to those made by Respondent.  Respondent’s declaration about “not being technical people” is contradicted by Respondent earlier Additional Submission reference to its “technical partner”.  Moreover, that contradiction is heightened by Respondent’s claim to run a business that offers products “using the Technology involving Laser Rays”, which suggests that Respondent’s people must possess fairly sophisticated technical expertise.

Additionally, the Panel found that the lack of proof of sales volume or revenue in connection with products was fatal. Then the Panel turned its attention to the issue of whether Respondent was commonly known by the domain. AS stated earlier Respondents company name specifically includes the domain, but the Panel did not care.

However, it has not escaped the Panel’s notice that the date of Respondent’s origination, April 10, 2007, followed hard upon the date, March 27, 2007, of the USPTO registration of Complainant’s most basic trademark, RACHAEL RAY.  Is this coincidence or design?  Though Respondent is an Indian entity, the miracle of the Internet makes knowledge of such information as USPTO registrations almost instantaneous around the globe, and the Panel must keep in mind that the initiation of the Policy is predicated on the cunning and sophistication of global cyber-squatters. As discussed above, Respondent has provided the Panel with scant evidence of actually conducting business.  Consequently, the Panel cannot conclude that Respondent is  commonly known by that name, as is necessary for application of subparagraph 4(c)(ii).  The Panel believes that that subparagraph requires more than evidence suggesting a hastily formed “paper” company which adopts a name that is nearly indistinguishable from an established trademark and, soon after formation, acquires a corresponding domain name.

The Panel quickly resolved the bad faith element of the case. Ultimately, the Panel ruled that domain be TRANSFERRED.

Someone Is Getting a Raw Deal With TEXTRAW

Friday, July 2nd, 2010

There have been two interesting domain name disputes in two days, dealing with the same mark, resulting in the same manner, but for different reasons. IN the wacky world of domain name and trademark ownership, one can never really guess as to the facts and arguments presented by parties involved in disputes. In the first case, Mt. Vernon Mills, Inc. v. River City Holdings, LLC FA1325209 (Nat. Arb. Forum June 30, 2010) a single member Panel was faced with a dispute over the domain www.textraw.com. The Panel made the following relevant factual findings.

On September 8, 2006 Complainant purchased assets from the Georgia, USA corporation Textraw, Inc. which included the trademark registration for a trademark TEXTRAW which had been registered with the USPTO under number 2,710,148 on April 22, 2003. On November 28, 2009 the TEXTRAW trademark was cancelled. Complainant had no registered TEXTRAW trademark at the date of filing its complaint. In March 2009 Respondent obtained the domain name <textraw.com> through Complainant. Respondent makes no active use of the domain name.

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.

In light of the findings the Panel reviewed the first element and found that Complainant did not have adequate common law rights, since they failed to present evidence of adequate sales, advertising etc. or show that the mark has secondary meaning. By failing to satisfy the first element, the decision was essentially done, but the Panel chose to review the remainder of the elements. Ultimately the Panel DENIED the request for transfer.

In the second domain name dispute, Mt. Vernon Mills, Inc. v. River City Holdings FA1325214 (Nat. Arb. Forum, July 1, 2010) a single member Panel also DENIED a request for transfer regarding two domains, www.textraw.net  and www.textraw.org. The Panel noted that the parties entered into an agreement on March 16, 2009 which expired on March 15, 2010. The Domain Names were registered by Respondent during the course of that agreement. Complaint had filed a Notice of Opposition to Respondent’s application for federal trademark rights in TEXTRAW. A search of the USPTO records shows that on December 3, 2009 two applications were filed for TEXTRAW (Ser. No. 77885495 and 77885343) by a company named Synco Turf, LLC. The Panel also noted that Complaint has filed other court proceedings related to the ownership and the trademark in Court of Common Pleas, Greenville County, South Carolina, C.A. No. 2010-CP-23-4101.

In light of the court case and the TTAB case, the Panel explained that those proceedings will be critical to the outcome of this UDRP decision. As a result the Panel DENIED the relief requested by Complainant, without prejudice and may seek to refile a Complaint after the other proceedings are finished.

Switch to our mobile site