In the recent domain name dispute decision of Alienware Corporation v. James Dann FA1290045 (Nat. Arb. Forum December 28, 2009) a single member Panel was faced with a dispute over the domain www.alienlaptop.com. Alienware, is the well known line of Desktops and Laptop computers, most often sold to gamers. Alienware is wholly owned by Dell, but operates a web site at www.alienware.com. Respondent registered the disputed domain on April 4, 2008 and provided a response to the dispute. Both parties provided Additional Submission arguments in the case.

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 addressed the first element, noting that Alienware established rights in the ALIENWARE mark through its trademark registrations. The Panel analyzed the disputed domain and noted that “alien” was the dominant part of Complainant’s mark. The Panel found that the addition of the word laptop was confusingly similar due to its obvious relationship to Alienware’s business.

In Alienware’s additional submission, it cited to another decision, Alienware Corporation v. Optimize My Site, FA0910001290038, (Nat. Arb. Forum December 2, 2009), which found that www.alienlaptops.com was confusingly similar. Respondent objected to this reference alleging that it amended the Complaint in violation of NAF Supp Rule 7(f). The Panel disagreed noting that it did not change the arguments of the case. For these reasons the Panel found that Alienware satisfied the first element.

Moving to the second element, the Panel explained that Alienware made a prima facie case, shifting the burden of proof to Respondent. The Panel found Respondent failed to make active use of the domain and therefore did not make a bona fide offering of goods or services. Respondent argued that he used an email address with the domain name, but the Panel was not convinced that this was sufficient. The Panel dismissed such argument, noting that if use of an email was sufficient, then the UDRP would become easily avoidable.  The Panel was also not convinced by Respondent’s arguments that he purchased several domains as part of an eventual plan to start a software consulting business. The Panel found this to lack proper demonstrable preparations of a bona fide offering. The Panel found Alienware satisfied this element as well.

Moving to the final element, the Panel appeared to hand Respondent it most direct findings.

The Panel agrees with the Complainant that the Respondent knew or ought to know the existence of the Complainant’s Marks. The leader status of the Complainant as a producer of computers designed for gaming and other graphically intense applications under ALIENWARE trademarks and the profession of the Respondent as Software Engineer and Computational Linguist are sufficient arguments to support a finding of the Respondent’s prior knowledge of the Complainant’s Marks.

Additionally, the Panel found that failure to use the site in an active manner was evidence of bad faith. Ultimately, the Panel found Alienware proved all three elements and ordered the domain be TRANSFERRED.

In the recent domain dispute decision of Victoria’s Secret Stores Brand Management, Inc. v. Open Water Enterprises Limited c/o Louis S (Nat. Arb. Forum 1264419, June 29, 2009) a single member Panel was faced with a dispute over the domain www.victoriasecretangelcard.com. We know that you do not live under a rock so we will avoid discussing the fame of Victoria’s Secret. Victoria’s Secret maintains a web site at www.victoriassecret.com.

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 addressing the first element, the Panel noted that the domain contained all of Complainant’s mark VICTORIA’S SECRET with the addition of the descriptive phrase “angel card” on the end. There was no mention in the decision though that the disputed domain dropped an “s” from the domain name, although it generally has no significance in the domain dispute world. These descriptive words were not sufficient enough for Respondent’s use and thus Complainant satisfied the first element.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel explained that Complainant set forth a prima facie case, shifting the burden to Respondent. The Panel found that Respondent was using the domain to divert viewers to competitors of Victoria’s Secret for commercial gain. Further, the Panel found that the Whois information associated with Respondent showed Respondent was not commonly known by the domain name.

Moving to the last element, bad faith, the Panel stated as follows:

Respondent’s disputed domain name resolves to a website that displays links to third-party websites, some of which directly compete with Complainant’s business.  The Panel finds Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent presumably received payment for displaying links to Complainant’s competitors on the website which resolved from the confusingly similar <victoriasecretangelcard.com> domain name.  Thus, the Panel finds Respondent is attempting to profit from the goodwill associated with Complainant’s mark, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

As a result, the Panel found that Victoria’s Secret proved all three elements and agreed to TRANSFER the domain.

As many of you know Facebook is the enormously popular social networking web site located at www.facebook.com. It has also become a common destination for businesses as well. Many businesses have flocked to the web site so that they can stay connected with a generation of Internet users who visit the Facebook web site, sometimes multiple times a day. There is a strong likelihood that many people and businesses that you know are already on Facebook.

On Tuesday, June 9, 2009, Facebook announced that they will be offering a dedicated personal URL for their users. This means that a company like Wal-Mart will be able to own www.facebook.com/walmart or Target can own www.facebook.com/target. Starting on Saturday June 13, 2009, anyone with an active Facebook account, that was established prior to June 9, can sign up for the dedicated URL. If you created a Facebook account after this cut-off period you can sign up for the dedicated URL on Sunday June 28, 2009. This cut-off period was created to prevent “squatters” from snatching up numerous dedicated URL’s.

For those of you who have established trademark rights, Facebook has trademark prevention registration form, available (here), so that you can provide them with validation of your preexisting rights and limit the ability of others to use your mark in a URL. We are sure that there will be some bumps along the way with some squatters, but we hope that Facebook works with rights holders and attorneys to resolve any disputes.

A fellow blogger and friend of ours is involved in a case dealing with a Registrar/Privacy Service where they are playing the “it’s not our problem” game in a dispute involving stolen domains. Marc Randazza’s Legal Satyricon Blog  provides an interesting and important insight for any attorney dealing with cybersquatting actions or any unfortunate domain owners who have suffered the loss of a stolen domain. Essentially the Court has made an early ruling sustaining the viability of a claim that a privacy service may be contributorily liable under the  ACPA for its customer’s actions.  See his full post here. We will continue to monitor this case for you and provide relevant updates as they come.

The World Intellectual Property Organization (WIPO) and the National Arbitration Forum (NAF) have released their 2008 statistics for domain disputes. The NAF put out a press release (available here) and provided the following details:

1)     In total, there were 1,770 cases filed, with NAF.
2)     Nearly all cases filed (98%) involved UDRP domain names, like .com and .org; the rest involved “usDRP” domain names with the .us extension.
4)     Panelists heard and decided 1,477 cases; parties worked together to settle many of the rest, (17% settlement rate).
5)     By the end of 2008, approximately 10,600 disputes were filed with the National Arbitration Forum.
6)     To date Panelists resolved 9,470 of those cases, while the parties settled many of the rest.

WIPO also put out a press release (available here) but provided much more in depth statistics and information. WIPO noted that in 2008 they recieved a total of 2,329 domain dispute complaints, representing an 8% increase from 2007. In total, WIPO has handled 14,663 domain disputes, covering 26,262 separate domains, up through December 2008. Some interesting facts include that English remains the most common language for the proceedings, representing 86% in 2008. Additionally, in 2008, 30% of the disputes were resolved without a panel decision. Of the remaining ones where a panel decision was rendered, 85% of those were in favor of the complainant. The top five sectors for complainant’s business activities were as follows:

1)    Biotechnology and Pharmaceuticals
2)    Banking and Finance
3)    Internet and IT
4)    Retail
5)    Food, Beverages and Restaurants

Lastly, it is clear that “.com” still is the reigning champion, because 80% of the domain disputes in 2008 were for “.com” related domains.

DefendMyDomain Commentary: It is clear by these numbers that domain disputes will continue to increase each year. WIPO press release talks about their concern for the introduction of the new gTLD’s and how it will affect the domain dispute process. While time will only tell the true effect the new gTLDs will have on this process, WIPO is making some proactive decisions, which include their proposal to ICANN to make the whole process electronic. See here for a discussion about their eUDRP Initiative.

It looks like Ashley Furniture decided that too many third parties own domains that were confusingly similar to their trademarks. In eight (8) decisions, no response was filed by the Respondent. In each of those eight (8) decisions the Panel went through the three (3) step analysis required in the ICANN policies.  In the one decision where the Respondent provided a response, the Respondent consented to the transfer and the Panel decided to forgo the full analysis.
Ashley Furniture’s trademark portfolio includes, ASHLEY FURNITURE, ASHLEY HOMESTORES, ASHLEY FURNITURE HOMESTORES, A ASHLEY FURNITURE, DURAPELLA, and ASHLEY. These trademarks registrations serve as the driving force behind the domain disputes. In light of the number of disputes, it appears as though Ashley Furniture recognized the importance of enforcing trademark rights on the Internet.
 Below is a listing of all the decisions for Ashley Furniture in November, 2008:

www.ashleyhomestore.com
Ashley Furniture Industries, Inc. v Laksh Internet Solutions Pvt Ltd
Nat. Arb. Forum 1226035 (11/12/2008)

www.ashleyfurnitures.biz, www.ashleyfurnitures.net 
Ashley Furniture Industries, Inc. v Kegelmaster Intl. c/o David Wallick
Nat. Arb. Forum 1226148 (11/11/2008)

www.ashleyfurniturestore.com 
Ashley Furniture Industries, Inc. v Pluto Domain Services Private Limited
Nat. Arb. Forum 1226419 (11/14/2008)

www.ashleyfurniturecheap.com 
Ashley Furniture Industries, Inc. v Cripple Creek Roadhouse Grill c/o Michael Dills
Nat. Arb. Forum 1226654 (11/18/2008)

www.ashleyfurnitureoutlet.com 
Ashley Furniture Industries, Inc v Pluto Domain Services Private Limited
Nat. Arb. Forum 1227159 (11/18/2008)  

www.ashleyfurnituresale.com 
Ashley Furniture Industries, Inc. v Robert Cole
Nat. Arb. Forum 1227714 (11/13/2008)

www.durapella.com 
Ashley Furniture Industries, Inc. v Diamond Point Enterprises Limited
Nat. Arb. Forum 1227724 (11/12/2008)

www.ashleybeds.com  
Ashley Furniture Industries, Inc. v Transure Enterprise Ltd. c/o Host Master
Nat. Arb. Forum 1227729 (11/11/2008)

www.furnitureashley.com 
Ashley Furniture Industries, Inc. v Jack Brosseit
Nat. Arb. Forum 1228455 (11/07/2008)

In a recent National Arbitration Forum decision, a three member Panel found that a domain registration, which predated the Complainant’s trademark application was not enough of a reason, among others, to deny the transfer of the domain. In Shahrad Yazdani v. Domain Deluxe FA1219173 (Nat. Arb. Forum October 2, 2008), the Panel reviewed a complaint involving the domain www.audiolearn.com.

The Complainant, Audio Learn, is a company which produces audio study guidebooks for tests such as the SAT, MCAT and PCAT. Complainant, which currently operates at www.audiolearn.net, claims to have been in business since 1997, based upon its allegations in the complaint and based upon its date of first use listed in its trademark application. Complainant has a trademark for the mark AUDIOLEARN (Reg. No. 2,740,489, issued July 22, 2003 and filed on August 7, 2002). The domain at issue was registered on May 20, 2002, predating the trademark application filing date.

The Panel noted that the UDRP Policy does not explicitly require that Complainant’s trademark rights predate the domain name registration for purposes of Policy ¶4(a)(i). As a result the Panel found that the domain name is identical or confusingly similar to Complainant’s mark. The Panel confirmed and agreed with Complainant that the Respondent was not commonly known by the domain name at issue. The Panel further noted:

The disputed domain name resolves to a website that appears only to be a search site on which companies in competition with Complainant purchase advertisements.  The Panel finds this directly competitive use of an allegedly identical domain name to be neither 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)….We find that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and Respondent has failed to meet its burden to come forward with concrete evidence that it does have rights or legitimate interests, as its site does not present a bona fide offering that would give rise to rights or legitimate interests. 

The Panel moved onto the last prong of the three part test, namely registration and use in bad faith. Although not explicitly making findings relative to this prong the Panel made some statements which seem to show their intent and ultimate ruling.

However, Complainant contends, and Respondent does not deny, that the <audiolearn.com> domain name resolves to a website displaying advertisements and “pay-per-click” links, many of which are for direct competitors of Complainant.  Accordingly, the Panel may find that the <audiolearn.com> domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iv)….Additionally, we could infer bad faith registration based upon Complainant’s prior use of the name and Respondent’s subsequent inactive use of the domain name….Complainant presents sparse evidence of use; however, Complainant was using the domain name <audiolearn.net>, and it seems more likely than not that Respondent would have noticed this when deciding whether to register <audiolearn.com>, either by searching for similar domain name registrations, or simply by searching the web for instances of “audiolearn.”

Ultimately, the Panel directed the Respondent to TRANSFER the domain.