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Archive for the ‘National Arbitration Forum’ Category

Panel tells Alcohol Monitoring Systems to SCRAM

Thursday, April 18th, 2013

In a recent domain name dispute over the domain www.SCRAM.com a single member panel denied a request to transfer. See Alcohol Monitoring Systems, Inc.v. Peter Stranney (Nat. Arb. Forum FA 1488482, April 11, 2013). Complainant, offering continuous alcohol monitoring systems and operates a domain located at www.alcoholmonitoring.com. Complainant is the owner of the trademark SCRAM with rights dating back to at least 2003. Complainant alleges that the disputed domain is not functioning site is a sample word press site which is not active and is not used as a commercial website only as a placeholder. Complainant also noted that the respondent offered to sell the domain for approximately $40,000 pursuant to an invitation to sell the domain name. The Respondent provided a defense and response to the allegations noting that the disputed domain name incorporates a generic term and therefore is not exclusive to the trademark holder. The Panel found that the respondent is the sole owner of a business located in the UK. The Respondent also has experience in web development and online marketing and acquired the domain in January 2007 for approximately $6000. The Panel found that Respondent indicated an intention to focus the disputed domain on development for a traveling business to be launched in approximately August or September 2013

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 the respondent did not oppose complainants claim to its trademark rights. The panel explained that complainant only valid registered trademark and that it was identical or confusingly similar to the demeaning. Therefore the panel found that this factor have been met by complainant.

Regarding the second element rights or legitimate interests, the panel found the complainant made a prima facie case the respondent lack rights religion interest in the domain name. If you’ve the evidence however the Panel found that respondent met the shifted burden and demonstrated that he did have rights or legitimate interests in the domain name under the policy section 4(a)(ii) and 4(c). The Panel noted that prior to any notification of the dispute that the Respondent made preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent’s materials revealed that he developed a business plan for the opportunity to advertise goods and services for people wishing to travel to particular destinations within the UK. The business plan provided details regarding Respondent’s preparation of the domain with that purpose. For those reasons the Panel found the Complainants second prong allegations failed.

Despite the fact that Complainant failed to meet the second prong the Panel still chose to review the third prong of elements regarding registration in use in bad faith. The Panel noted that “scram” is a generic term and that transferring such a generic term for value is not bad faith unless the registration was undertaken with the intent of selling it to a Complainant or its competitor. The Panel noted that generic domain names possess intrinsic value that for all intents and purposes exceed the cost of registration. For those reasons the Panel noted that scram as a generic term has intrinsic value that can go beyond on the cost of registration. Accordingly the Panel found the Complainant failed to satisfy the sprung as well.

The Panel also reviewed an allegation of the first domain name hijacking but found that there was no evidence of reversed meaning hijacking in this instant case. The Panel noted there was no evidence of harassment or similar conduct by Complainant in lieu of knowledge of Respondents rights or legitimate interests.

As a result, the Panel denied Complainant’s request to transfer the disputed domain.

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.

AirFX, LLC is Free-Falling Without a Parachute

Monday, September 19th, 2011

Although we at DefendMyDomain often blog about UDRP domain name decisions. Sometimes, those decisions go another level higher, into the U.S. federal courts. Under action 15 U.S.C. § 1114(D)(v) a domain name registrant can file a civil action asking the Federal Courts to resolve the dispute. This is sometimes referred to as a reverse domain name hijacking case, depending on the specifics of the case. The prior domain name dispute decision AirFX, LLC v. ATTN AIRFX.COM ( Nat. Arb. Forum FA1384655, May 16, 2011)(available here), was decided by a single member Panel. The Complainant convinced the single member Panel that the elements of the UDRP policy had been met. We are not going to spend time rehashing the elements of that decision, because once the dispute is brought in Federal Court, the UDRP decision is essentially irrelevant. This is an important lesson for those who seek to use the UDRP system. 15 U.S.C. § 1114(D)(v) allows an aggrieved party to seek binding federal court intervention.

Marc J. Randazza, of The Randazza Legal Group, filed the complaint on behalf of the Respondent, which follows well established pleading standards and requirements for these types of actions. (available here) However, the Complainant/Defendant AirFX, LLC, has filed a motion to dismiss, alleging among other things a 12(b)(6) allegation, and other unbelievable theories and accusations. (available here). Among the odd and interesting accusations by AirFX, LLC, they complain that the respondent/plaintiff for the first time is alleging reverse domain name hijacking. This is a misunderstanding of cause of action permitted under 15 U.S.C. § 1114(D)(v). Additionally since the decision at the UDRP level has absolutely no precedential or binding effect, this concept is misplaced. A reverse domain name highjacking claim is one which is permissible in order to prove that the domain name registrants registration was not unlawful.

AirFXS also complains about the location, namely Arizona District Court, in which the case was filed. One of the things that is clear, is when you file a UDRP, you affirmatively select and agree to one of two jurisdictions for a Federal Court challenge. (1) the location of the principal office of the concerned registrar or or (2) where the Respondent is located, as shown by the address(es) given for the domain name holder in the Whois Database at the time of the submission of the Complaint. See UDRP Rule 3(b)(xiii). AirFX asks the Court to transfer the case to another district, namely the Southern District of Indiana. This concept is dead on arrival though, since AirFX was the one demanded the jurisdiction for the resolution of all disputes thus waived any challenge to the jurisdiction.

Essentially, the Motion to Dismiss provides no controlling authority of any kind in the dismissal section. When parties seek to take domains to which they are not entitled, the arguments are often weak. We have seen the Randazza Legal Group in action before and know that AirFX will have their work cut out for them.

We will continue to monitor this case and provide updates. We thought it was an important lesson to provide our readers with an understanding of which arguments should not be raised when defending a reverse domain name highjacking case under 15 U.S.C. § 1114(D)(v).

No Party for PARTY BOOTHS!

Friday, August 12th, 2011

In a recent domain name dispute decision, Party Booths, LLC v. Cornelius Angsuco (Nat. Arb. Forum, FA1398420 August 10, 2011) a single member panel was faced with a dispute over the domain www.envypartybooths.com.  Complainant, Party Booths, LLC, owns the PARTYBOOTHS mark which it uses in connection with its photo booth rental services. Complainant also maintains a website at www.partybooths.com. The disputed domain was registered on September 9, 2009, prior to the January 13, 2010 filing date of Complainant’s trademark application.  Respondent failed to respond to the Complaint.

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 found that Complainant established rights  in the PARTYBOOTHS mark and that the domain name was confusingly similar. Moving to the second element, the Panel found that respondent was not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii). Regarding the offering of bona fide goods or services, the Panel explained:

The <envypartybooths.com> domain name resolves to a website whichsolicits photo booth rentals. This is precisely the same service which Complainant offers through its own website. The Panel therefore finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

For these reasons, the Panel found that the Respondent did not have a legitimate interest in the domain. Moving to the final element, bad faith registration and use, the Panel recognized that the disputed domain was registered prior to the filing date and registration of the trademark. The Panel went further to explain:

Although Complainant claims that the mark had been used prior to the registration of the <envypartybooths.com> domain name, Complainant provides no evidence of such use and fails to state in what way it was used prior to its filing with the USPTO. Therefore, the Panel finds that Respondent could not have registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because its registration of the disputed domain name predated the registration of Complainant’s mark.

Ultimately, the Panel found that Complainant did not satisfy all three elements and DENIED the request to transfer the domain.

American Express Loses UDRP Based on Inadequate “Bad Faith” Arguments

Wednesday, July 20th, 2011

In a recent domain name dispute over the domain, www.syncard.com, a single member Panel let American Express “Leave Home Without It” and denied a request to transfer a purported cybersquatters domain. See American Express Marketing & Development Corp. v. Admin Support / SEOMarketing.org (Nat. Arb. Forum FA1392387, July 14, 2011). American Express needs no introduction, so let’s skip ahead to the important stuff. ( If you want to know more about AMEX, here is a link to their website www.americanexpress.com). American Express owns the mark ZYNC CARD (Reg. No. 3,848,858, issued on September 14, 2010). The disputed domain was registered on February 26, 2011. Respondent failed to submit a Response.

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 found that the disputed domain simply differed from the mark by deleting the letter “c” from the domain. For this reason, the Panel found that the domain was confusingly similar to American Express’ mark.

Moving onto the second prong, rights or legitimate interests, the Panel declined to review this element, citing to a case which essentially held that a failure to prove any one element was fatal. Therefore, the remainder of the analysis focused on the third prong, registration and use in bad faith. The Panel states its position best:

The Panel finds that Complainant has failed to sufficiently allege a use consonant with a finding of bad faith registration and use under Policy ¶ 4(a)(iii). Complainant has not only failed to allege a use that would constitute bad faith but has failed to allege any use whatsoever. Thus, the Panel finds that Complainant has failed to prove bad faith registration and use under Policy ¶ 4(a)(iii).

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

123INKJETS Didn’t Get the Printout on Evidence

Monday, January 10th, 2011

In the recent domain name dispute of LD Products, Inc. v. Webatopia Marketing Limited (Nat. Arb. Forum FA1360908 Jan, 7, 2011) a single member Panel was faced with a dispute over the domain www.123inkjetx.com. Complainant owns rights to the 123INKJETS mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,212,566 issued February 27, 2007), in connection with online retail store services featuring inkjet printer cartridges, inkjet printer ink, filled inkjet printer ink cartridges, toner, toner cartridges and related accessories. Complainant also asserted common law rights in the 123INKJETS mark dating back to 1999. Complainant maintains a website at www.123inkjets.com. Respondent, registered the disputed domain name on October 19, 2004, which resolves to a click-through website featuring links to Complainant’s competitors.

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.

The Panel only made it through the first element in this case. Since the registration date of the domain predated the registration date for the trademark, Complainant was under an obligation to provide evidence of common law rights to the mark. The Panel explained that Complainant failed to “set forth sufficient evidence supporting” common law rights. It is unclear what evidence, if any was presented by Complainant since the Panel did not elaborate.

In light of the following findings, the Panel explained that Complainant failed to establish the first element. As a result the Panel declined to review the remaining elements. Ultimately, the Panel DENIED the request for transfer.

RUMBERA Loses Based on Domain Registration Six Years Prior to Use

Thursday, January 6th, 2011

In the recent domain name dispute of Pidela Holdings Inc. v. Purple Bucquet / Purple (Nat. Arb. Forum FA1356856, December 31, 2010) a single member panel was faced with a dispute over the domain www.rumberanetwork.com. Complainant is a radio and web broadcasting company using the mark RUMBERA NETWORK. Complainant obtained a registered mark in Panama in May 2010. The disputed domain was registered in August 2004. The Respondent did not file a response.

Paragraph 4(a) of the ICANN 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 quickly addressed the first element, noting that the registration was sufficient to establish its rights in the mark. The Panel found that the domain was essentially identical to the mark. Moving onto the second element, the Panel noted that Complainant presented a prima facie case that Respondent lacked any rights or legitimate interests in the domain. Included in the analysis was a review that Respondent was not commonly known by the disputed domain. Additionally, Complainant submitted evidence of screenshots showing the disputed domain containing links to competing products/services. For those reasons, the Panel found that Complainant satisfied the second prong.

The case turned though on the last element. The Panel noted that Complainant provided evidence only of its trademark registration dating back to May 2010. This was a problem for the Panel since the registration of the domain was six years earlier in 2004. For that reason the Panel concluded that the domain could not have been registered in bad faith.

Ultimately the Panel DENIED the request for transfer.

ENERGYFIX Needs A Fix After Ruling of Reverse Domain Name Hijacking

Monday, October 25th, 2010

In the recent domain name dispute of Suzannah R. Noonan v. Kevin Sneed FA1343308 (Nat. Arb. Forum October 22, 2010) a single member panel was faced with a domain name dispute over the domain www.energyfix.com. Complainant claims ownership to the mark ENEGRYFIX, which was registered on July 24, 2001, filed on April 27, 2000 and bears an alleged first use date of April 1, 2000. The disputed domain was registered by Respondent on August 24, 1999, approximately seven month prior to Complainant’s first use of the mark. Respondent contended and provided supporting evidence that he began selling “superfood” products via the disputed domain name on November 28, 1999.

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 reviewed the elements and found that the domain was confusingly similar to Complainant’s mark. In addressing the second element the Panel made the following observations:

Under Policy ¶ 4(c)(i), use of a domain name in connection with a bona fide offering of goods is sufficient to establish rights or legitimate interests in the domain name for purposes of ¶ 4(a)(ii).  Respondent operated an online store using the disputed domain name for at least eight and a half years, beginning four months prior to Complainant’s first use of the ENERGYFIX mark and twenty-one months prior to the registration of that mark.  By doing so, Respondent established his rights and legitimate interest in the disputed domain name.

In addressing the third element, bad faith, the Panel continued its observations that no bad faith could have existed in light of the earlier registration of the domain compared with the first use of the mark.

The case became interesting with the Panel’s discussion regarding Reverse Domain Name Hijacking. The Panel noted:

The Panel is troubled by Complainant’s attempt to secure <energyfix.com>, a domain name that was registered and used to sell goods for months before Complainant’s first use of the ENERGYFIX mark.  A simple WHOIS search would have informed Complainant that the disputed domain name had been registered seven months before her first use of the ENERGYFIX mark and therefore could not have been registered in bad faith.  It is also evident from the Complaint that Complainant was aware that Respondent was selling goods using the disputed domain name, one of the activities that gives rise to rights and legitimate interests in a domain name….A long delay in filing a complaint can also give rise to an inference that a complainant with a flawed claim knew that it had a flawed claim, providing further support for a finding of bad faith.

Ultimately, the Panel found that Complainant failed to prove the elements and made a finding that Complainant engaged in Reverse Domain Name Hijacking.

FORD Has A FIESTA With Domain Names

Thursday, October 21st, 2010

  

In the recent cybersquatting case of Ford Motor Company v. Boomerang Enterprises Inc., FA1344311 (Nat. Arb. Forum October 20, 2010) a single member Panel was faced with a dispute over the domains www.fiesta-armrest.com, www.fiesta-armrest.net, www.fiestaarmrest.com, www.fiestaarmrest.net, and www.fordfiestaarmrest.com. Ford is the well known longstanding car company which needs no introduction. Ford maintains a website at www.ford.com. Ford owns numerous trademark registrations for its FIESTA vehicle. Respondent is an official Ford approved vendor. Respondent claims that it registered and developed the domain names with Ford’s approval and encouragement. As a result Respondent sought to have this dispute not handled under the UDRP, noting that it was contractual and fell outside the purview of the UDRP. The Panel reviewed the information and disagreed with Respondent position regarding the coverage of the UDRP on the facts at issue.

Complainant claims that it has established the elements outlined by the UDRP, and that Respondent’s arguments about Complainant and Respondent’s relationship do not provide sufficient reason for the Panel not to decide the case. Complainant and Respondent have provided sufficient evidence for the Panel to properly decide the dispute under the UDRP, the Panel may thus proceed with the case and consider the contentions of Complainant and Respondent.

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 reviewed and applied the elements finding that Complaint satisfied all three. Of interesting note, the Panel reviews the concept of disclaimers in avoiding bad faith.

Complainant argues that a disclaimer posted on a website is too late to avoid confusion among Internet users. Complainant claims that Internet users are misdirected to Respondent’s website before seeing the disclaimer.  Therefore, Complainant contends that Respondent’s disclaimer does not mitigate Respondent’s bad faith registration and use of the disputed domain names. In view of the circumstances of the present case, the Panel finds accordingly that the disclaimer posted on Respondent’s website by Respondent is insufficient to prevent a finding of bad faith under Policy ¶ 4(a)(iii) since it does not prevent initial confusion and may be disregarded by Internet users. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”).

Ultimately, the Panel was not swayed by arguments presented by Respondent. Respondent did seek a finding of Reverse Domain Name Hijacking, which the Panel also rejected. The domains were ordered to be TRANSFERRED.

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