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Archive for August, 2012

CAESARS Palace Las Vegas “Loses” to Thailand Massage Parlor

Wednesday, August 8th, 2012

In a recent domain name dispute over the domain, www.CaesarsEntertainment.com, a single member Panel denied a request to transfer, mainly on procedural grounds. Caesars World, Inc. v. P.T.Complex Co.,Ltd (Nat. Arb. Forum FA1446942, 7, 2012). Complainant Casears World, Inc.  is the owner of the well known Caesars Palace Casino in Las Vegas. Complainant operates a domain at  www.CaesarsPalace.com. Complainant also has long standing rights to a trademark CAESARS dating back to 1964 (Reg. 763,255) Complainant also claims rights to a Thailand Trademark Registration No. Kor84377 from 1988. Respondent operates a well-known massage parlor in Thailand and claims use of the name CAESARS ENTERTAINMENT since 1997. The disputed domain was registered on May 28, 2001.

The parties are not strangers to each other when it comes to legal battles. The parties engaged each other in disputes with The Central Intellectual Property and International Trade Court in Thailand (hereinafter the IP and IT Court). Complainant claims that the court cancelled Respondents registrations to two infringing design marks, including a finding of bad faith against Respondent. Respondent claims that Complainant’s attempt to challenge the CAESARS ENTERTAINMENT mark was denied by the IP and IT Court. Then in 2008 Complainant filed a trademark action in Thailand against respondent. An initial decision was rendered in January 2012. Both parties have appealed the decision and a stay was entered regarding the initial decision..

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Under that concept the Panel made the following observations and findings:

The UDRP Panels are dependant on the completeness and accuracy of the evidence and information supplied by the parties. A complainant must certify in its complaint inter alia that “[…] the information is to the best of the Complainant’s knowledge complete and accurate […]”, See the Rules 3 (b)(xiv). The Complainant of this case has made such a certification. The Panel finds that the Complainant, already having appealed the decision of the IP and IT Court, had knowledge of the indefinite status of the Court’s decision when filing the Complaint. See Respondent’s Annexes 3-4. The Panel also finds that the Complainant of this case, despite this knowledge, has omitted to inform the Panel that the IP and IT Court’s decision cited and adduced had not obtained final force and effect. If the judgment of the referred litigation in Thailand would have been final, it may have presented decisive reasons for the Panel. Therefore, and notwithstanding its certification, the Complainant has in its Complaint not presented complete and accurate information. The Panel finds this acting of the Complainant in itself a reason to deny the Complaint.

As a result, the Panel terminated the dispute without a decision on the merits of the case.

ASSURANT Unable to Explain Why “Med” is Descriptive

Monday, August 6th, 2012

In a recent domain name dispute over the domain, www.medasurant.com, a single member Panel  denied a request to transfer. See Assurant, Inc. v. ICS INC. (Nat. Arb. Forum FA1447017, July 30, 2012). Complainant Assurant is a well known insurance products provider who operates a domain at  www.assurant.com. Complainant also has long standing rights to a trademark ASSURANT (Reg. 2,543,367, registered on February 26, 2002.) Complainant’s registration claims right dating back to 1999. The disputed domain was registered on February 1, 2012. Respondent did not respond to the dispute.


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.

Regarding the first element, Complainant argued that the disputed domain features a misspelling of Complainant’s mark by dropping the second letter “s” and adding the generic word “med.” The Panel noted that Complainant failed to show or even allege why the term “med” was descriptive with respect to the insurance and financial services covered by the ASSURANT mark. In fact, the Panel gave Complainant an opportunity to provide supplement arguments and evidence. Regardless, the Panel found that Complainant still failed to provide any arguments or evidence regarding the connection of the term “med” and Complainant’s services. As a result, the Panel found that Complainant was unable to satisfy ¶4(a)(i) of the Policy.

As a result, the Panel DENIED Complaint’s request to get the disputed domain.

SHA Wellness Clinic Foolishly Attempts to use the UDRP

Friday, August 3rd, 2012

In a recent domain name dispute over the domain, www.sha.com, a three member Panel not only  denied a request to transfer but slammed the Complainant for improperly bringing the dispute in the first place. See Albir Hills Resort, S.A. v. Telepathy, Inc. WIPO Case No. D2012-0997, August 3, 2012). Complainant Albir Hills Resort, S.A. owns a few Community Trademarks and an International Trademark for the mark SHA relating to a host of different goods and services. Complainant owns the domains www.shawellnessclinic.es and www.shawellnessclinic.com.The disputed domain was registered on August 7, 1998. Respondent, Telepathy, Inc., owns over 3,000 three letter dot com domain names.

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 Complaint had a valid trademark for SHA and that the domain name was identical under Policy paragraph 4(a)(i). Trhe crux of the case was focused on the remainder of the elements.

The Panel’s discussion of the second element began with a review of some relevant UDRP precedent.

It is also well established that a respondent may well have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, provided that the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words and not because of its value as a trademark and further provided that the website to which the domain name resolves is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words.

The Panel noted that the disputed domain was registered in 1998, which was many years prior to the existence of Complainant’s company and trademark rights. Further it noted there was no evidence that Respondent had any intention to target Complainant or its Mark. As a result, the Panel found that Respondent in fact had a right or legitimate interest in the domain.

Moving to the final element, the Panel continued with the factual analysis, again noting the disparity between Respondent’s domain registration and Complainant’s rights. Specifically, the Panel noted that  Complainant’s mark SHA was filed for in 2006 and the Complainant has not submitted evidence of prior use of its trademark. The Panel took it a step further though, noting that since it was a three letter domain, the result of multiple acronym uses for SHA yielded possibilities such as “Secure Hash Algorithm”, the “Saskatchewan Hockey Association” and the “Society for Historical Archaeology”. Ultimately, the Panel settled on the fact that there was no evidence to establish that Respondent tried to generate confusion with Complainant’s mark and found this factor favored Respondent.

The Panel was not finished yet, since it then turned its attention to the Reverse Domain Name Hijacking claim.

In the case at hand, the registration date of the disputed domain name precedes the dates of the Complainants’ relevant trademark registrations and the evidence shows that the disputed domain name has been used as part of a bona fide business of the Respondent, which owns over 1000 three-letter-domains in its domain name portfolio. The Panel considers that the Complainant is represented by an attorney who should have appreciated that the Complaint could not succeed in the present proceeding since the disputed domain name was registered by the Respondent eight years prior to filing the trademark applications for SHA. Moreover, the Complainant’s representative has misconceived the nature and the purpose of the Policy according to which the Complaint was brought.

The Panel found Complainant’s assertion of 15 years of market presence to be misleading since the evidence instead pointed to the fact that Complainant opened in 2008 and the mark SHA was not even filed until 2006.

As a result, the Panel DENIED Complaint’s request to get the disputed domain. The Panel additionally found that Complainant engaged in reverse domain name hijacking.

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