In the recent cybersquatting case of Omega SA v. Domain Admin1302921 (Nat Arb. Forum, February 24, 2010) a single member Panel was faced with a dispute over the domain www.omegawatchstore.com. Omega is the well known watch maker with rights to the mark OMEGA. They maintain a web site at www.omegawatches.com. Respondent registered the disputed domain on March 6, 2009 and 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.

In addressing the first element, the Panel noted that Complainant established rights to the OMEGA mark pursuant to Policy ¶4(a)(i). The Panel found that the disputed domain merely added the descriptive phrase watch store, creating a confusingly similar domain to that of Complainant’s mark. The Panel found Complainant satisfied this element.

Moving to the second element, the Panel found that OMEGA set forth a prima facie case, but decided to review the evidence anyway. The Panel found that the Whois information for Respondent did not show that it was commonly known by the domain. Additionally, it was determined that the disputed domain sold counterfeit watches, which was not a bona fide offering of goods. The Panel found this element was satisfied by OMEGA as well.

For the last element, bad faith, the Panel explained that the selling of counterfeit goods constituted a disruption of OMEGA’s business. This attempt to redirect consumers for profit was evidence of bad faith.

The Panel found that OMEGA proved all three elements, and ordered the domain be TRANSFERRED.

In the recent cybersquatting decision of Hasbro, Inc. v. City of Media FA1302591 (Nat. Arb. Forum, February 25, 2010) a single member Panel was faced with a dispute over the domain www.monopolybingo.com. Hasbro is the famous game producer of the Monopoly board game, which has been played by approximately 750 million people worldwide. Habsro maintains to relevant web site, namely www.monopoly.com and www.hasbro.com. The MONOPOLY mark has been used in the U.S. since 1935 and Hasbro has been promoting its online version of the game for a few years. Respondent registered the disputed domain on November 10, 2008.

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 addressing the first element, the Panel noted Hasbro established rights to the mark MONOPOLY and that the disputed domain merely added the generic word bingo. The Panel found that the domain was confusingly similar to Complainant’s mark.

Moving to the second element, the Panel explained that Respondent is not commonly known by the disputed domain. Additionally, the disputed domain resolved to a wbe site which had third party links and advertisements. The Panel determined that Respondent profited from click through fees generated from these links. Therefore, the use of the site was not a bona fide offering of goods or services and the Panel found Complainant satisfied this element as well.

Finally, the last element, bad faith, the Panel found that some of the third party links displayed the MONOPOLY trademark and some of the links directly competed with the gaming services provided by Hasbro. The Panel believed this domain sought to disrupt Hasbro’s business by redirecting consumers to competitors.
        
For these reasons, the Panel found that Complainant satisfied all the elements and ordered the domain be TRANSFERRED.

In the recent cybersquatting decision of CruiseShipCenters International Inc. v. Leonard Brody FA1297509 (Nat. Arb. Forum February 10, 2010) a single member Panel was faced with a dispute over the domain www.cruiseshipcenters.mobi. Complainant maintains a web site at www.cruiseshipcenters.com, which appears to be run in connection with Expedia. Respondent registered the disputed domain name on November 9, 2006.  The disputed domain name does not resolve to an active website. 

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 noted that Complainant had registered marks for CRUISESHIPCENTERS with Canada, the European Union and the U.S., which all were registered in early 2008. In addressing the first element, the Panel found that the registrations were enough to prove complainant’s rights in the mark. As a result the Panel found that the disputed domain was identical to Complainant’s mark. The Panel declined to review the second element in light of its findings from the third element.

The Panel explained that although Complainant proved its rights in the mark, none of the registrations predated the November 2006 registration date of the disputed domain. The Complainant failed to provide any evidence showing common law rights which may have predated the domain registration. For these reasons, the Panel found Respondent did not register the disputed domain in bad faith. Ultimately, the Panel ruled that the request for transfer be DENIED.

In the recent cybersquatting case of Juicy Couture, Inc. v. Francisco Gibbs FA1296086 (Nat. Arb. Forum, January 13, 2009) a single member Panel was faced with a dispute over the domain www.JuicyCoutureWholesale.com. Complainant is the well known retailer of men’s, women’s, and children’s apparel, toiletries, paper products, and accessories.  Complainant purchased the JUICY COUTURE mark in 2003 and has continued use of the mark. Complainant maintains a web site at www.juicycouture.com. Respondent registered the disputed domain on November 6, 2009 and 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.

In addressing the first element, the Panel noted that Complainant’s multiple JUICY COUTURE trademark registrations sufficiently established their rights to the mark. The Panel found that the domain incorporated all of the JUICY COUTURE mark and merely added the generic word wholesale. For this reason the Complainant was able to prove the first element.

The Panel moved to the second element, noting that Complainant presented a prima facie case, shifting the burden to Respondent. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, Respondent was found to not have authorization to use the mark. The Panel further explained:

According to Complainant, the <juicycouturewholesale.com> domain name is being used in association with a website that offers counterfeits of Complainant’s products for sale without authorization.  Such use for the purpose of benefiting from the goodwill associated with Complainant’s JUICY COUTURE mark does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i).  Furthermore, Respondent’s use of the JUICY COUTURE mark in the domain name to operate a competing website for profit is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

For these reasons, Complainant proved the second element. Moving to the final element, the Panel again discussed the presence of the domain offering counterfeit goods. The Panel found this counterfeit use suggests the domain was registered for the purpose of disrupting Complainant’s business and thus was bad faith. Additionally, the offering of counterfeit goods was an attempt to profit by creating a likelihood of confusion. For these reasons, the Panel found this element was proven by Complainant.

Ultimately, the Panel found the Juicy Couture proved all three elements and ordered the domain be TRANSFERRED.

In the recent cybersquatting case of Digital Alchemy, LLC v. Digital Alchemy c/o Ramon Felciano FA1295928 (Nat. Arb. Forum, January 12, 2010) a single member Panel was faced with a dispute over the domain www.DigitalAlchemy.com. Complainant operates in the field of electronic CRM for the Hospitality Industry and maintains a web site at www.data2gold.com. Complainant claims no registered trademark but states it has common law rights dating back to 1996.  Respondent is a consulting firm based in San Francisco, California, specializing in business, product, and technology strategy for life sciences, healthcare and technology markets. Respondent claims to have been offering its consulting services since 1993.

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 addressing the first element, the Panel noted that the disputed domain is identical to the DIGITAL ALCHEMY mark. But the Panel found that Complainant failed to demonstrate it has rights to the mark. The Panel criticized the Complainant’s contention that it had used the mark in connection with its services since 1996, noting that it was a conclusory statement lacking sufficient evidence. The Panel further finds that Complainant failed to present evidence of secondary meaning. The Panel cited to another prior decision and explained.

 In declining to recognize the complainant’s common law mark in Kip Cashmore the panel stated:  “Here, Complainant has not presented any credible evidence establishing acquired distinctiveness [for the complainant’s goods and services]. The record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin or services. Complainant’s record consists of merely a declaration of Complainant with unsupported facts…” Here the record is even more paltry than in Kip Cashmore, as there isn’t even a self-serving declaration by Complainant that its mark serves as an identifier of its goods and services in the public’s mind.

Moving to the second element, the Panel continued its analysis. The Panel found Complainant failed to present a prima facie case. Respondent presented evidence of doing business since 1993 under the Digital Alchemy name, which was prior to Complainant’s use. The Panel dismissed Complainant’s Additional Submission argument that there was no proof of continuos use by Respondent, noting the UDRP had no such requirement. The Panel also dismissed Complainant’s contention that the offer to sell the domain, after being solicited by Complainant did not satisfy this element.

In addressing the final element, bad faith, the Panel explained:

Given Respondent’s use of the Digital Alchemy name in its business since 1993, and the Panel’s finding that Respondent has rights and legitimate interests in the domain name, the Panel concludes that Respondent did not register and is not using the domain in bad faith. Indeed, as prior panels have held, once a panel has determined that a respondent has rights and legitimate interests in a domain name, the question of bad faith is moot.

Ultimately, the Panel found that Complainant failed to prove any of the three elements, and DENIED the request for transfer.

In the recent cybersquatting action JetPay, LLC v. JetyPayments FA1294887 (Nat. Arb. Forum, January 6, 2010) a single member Panel was faced with a dispute over the domain www.jetypay.com. Complainant offers credit card and check authorization processing services since 2000 and maintains a web site a www.jetpay.com. Complainant holds a trademark registration for the JETPAY mark. Respondent registered the disputed domain in December 2007 and 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.

In addressing the first element, the Panel noted that Complainant established its rights in the JETPAY mark pursuant to the Policy. Additionally, the Panel found that Complainant provided sufficient evidence of common law rights and secondary meaning for the mark dating back to 2000. A comparison of the mark with the disputed domain showed that Respondent merely added the letter “y” in the middle. As a result, the Panel found this to be confusingly similar.

Moving to the second element, the Panel explained that Complainant set forth a prima facie case, shifting the burden to Respondent. Interstingly the Panel found that although Respondent appeared to be commonly known by the disputed domain, it still lacked rights and legitimate interests in the domain. The Panel explained that Respondnet’s use of the domain, namely selling goods or services similar to Complainant’s was not a bona fide offering nor a legitimate noncommerical use. As a result, the Panel noted Complainant satisfied this element.

The last element, bad faith, was also favorable to Complainant. The Panel explained the disputed domain linked internet users to a website offering similar products and services as those of Complainant. This was found to be bad faith under the Policy. Additionally, the use of a confusingly similar domain name to attract users for profit, creates a strong likelihood of confusion, thus also being bad faith.

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

In the recent domain name dispute decision of Hargrave Arts LLC c/o Carter Hargrave v. Chiefasian LLC c/o Martin Eng FA1294273 (Nat. Arb. Forum, December 31, 2009), a single member Panel was faced with a dispute over the domain www.jeetkunedo.com. Complainant is the owner of multiple Jeet Kune Do related domains, including www.jeetkunedo.net and www.jeetkunedo.org. Mr. Hargrave is the president of the World Jeet Kune Do Federation. He claims common law trademark rights to the mark JEET KUNE DO. A little background is necessary, for an understanding of the origins of JEET KUNE DO. This form of martial arts was founded by Bruce Lee in the late 1960’s. According to the decision, Complainant is one of about 50 certified instructors. The disputed domain was registered on March 6, 2000 and Respondent provided a response to the complaint.  Although the Response was not provided the Panel noted that Respondent claims Hargrave does not have rights to the JEET KUNE DO mark.

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 explaining that Complainaint contends he acquired rights to the JEET KUNE DO mark from Bruce Lee and the Bruce Lee Jeet Kune DO School. However, the Panel notes that Hargrave fails to provide any evidence that it represents Bruce Lee or the Bruce Lee School. Additionally, Hargrave fails to provide any evidence that any of the rights to the JEET KUNE DO mark were assigned or licensed to him. For these reasons, the Panel found that Hargrave did not satisfy the first element.

The Panel did not review the remaining elements and DENIED the request for transfer.

In the recent domain name dispute decision of Microsoft Corporation v. Doug Goodman FA1294422 (Nat. Arb. Forum, December 31, 2009) a single member Panel was faced with a dispute over 21 separate domains containing the mark BING. Microsoft needs no introduction and maintains many web sites for its business, the most relevant in this case being, www.bing.com. The disputed domains were registered during a three day period of June 24, 2009 through June 26, 2009. Respondent provided a response to the dispute, and gave some colorful defenses, which included:

1.    Respondent “created of formulated” the disputed domain names that had been missed by “Microsoft webmasters” until Respondent offered them to Complainant.
2.      The disputed domain names would bring value to the Complainant and the Complainant should pay for them.
3.      Respondent concedes that each of the names has BING in them and that BING is a pending mark
4.      The domain names were not registered in bad faith because Respondent had no intent to harm BING, Inc.
5.      Respondent does not use the disputed domain names to divert users from BING, Inc.
6.      Because of the value the disputed names will bring to Complainant, the case should be viewed as a case of reverse name highjacking

Paragraph 4(a) of the ICANN UDRP Policy requires Complainant to 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) 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, Microsoft noted that it does not have any registered BING marks yet, but did file for multiple BING related trademarks in March 2009. The Panel noted that Microsoft need not have a trademark registration and can show that it has common law rights to the mark. Microsoft presented evidence that it has continuously used the BING mark since May 28, 2008 and that a previous UDRP Panel found that it had established its rights to the mark. As a result, the Panel reviewed the disputed domains and found that they were confusingly similar to the BING mark. Interestingly, as the Panel explained, Respondent concedes that he intentionally put the BING mark in the domains and was fully aware of Microsoft’s interest in the mark. The Panel found Microsoft satisfied this element.

Moving to the second element, the Panel noted that Microsoft put forth a prima facie case, shifting the burden of argument to Respondent. The Panel noted that Respondent was not commonly known by the disputed domain. Additionally, the Panel found that four (4) of the domains led users to a web site with third party hyperlinks, some of which compete with Microsoft. The Panel found that this was not a bona fide offering of services. Regarding the remaining 17 domains, the Panel noted that they redirected the user to Microsoft’s BING.com web site. The Panel explained that Respondent admitted his primary intention in registering these domains was to sell them to Microsoft. Offering to sell the domains is also not considered a bona fide use. The Panel found that Microsoft satisfied this element.

Moving to the final element, bad faith, the Panel noted that the Respondent attempted to sell the domains for more then his out-of-pocket expenses. This factor is considered bad faith. Additionally, the four domains which landed on parked pages, also were a showing of bad faith, since they likely resulted in click-through fees for Respondent. The Panel found Microsoft satisfied this element as well.

The Panel quickly dispensed with Respondent’s reverse domain name hijacking argument and found that since Microsoft had proved all three elements, it ordered all 21 domains be TRANSFERRED.

In the recent domain name dispute decision of Kim Laube & Company Inc. v. RareNames, WebReg FA1291282 (Nat. Arb. Forum December 22, 2009) a three member Panel was faced with a dispute over the domains www.natureschoice.com and www.natures-choice.com. Complainant sells pet grooming products and has a a trademark registration for the mark NATURE’S CHOICE. Respondent provided a response to the complaint and registered the disputed domains in 2002 and 2003.

Policy ¶ 4(a) of the ICANN UDRP rules requires that Complainant must prove each of the following three elements to obtain an order that the domain names should be cancelled or transferred: 1. the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; 2. Respondent has no rights or legitimate interests in respect of the domain names; and 3. the domain names have been registered and is being used in bad faith.

The Panel addressed the first element of the analysis and explained that the domains were identical or confusingly similar to Complainant’s mark. Although Respondent argued that Complainant could not hold exclusive rights on the common words, the Panel dismissed this argument under this prong of analysis.

The Panel declined to address the second prong, directing its attention to the third prong. First the Panel noted that there was no evidence presented that Respondent’s registered the domains primarily for the purpose of disrupting Complainant’s business.  The Panel only paid serious attention to Policy ¶4(b)(i) and (iv). Those sections state:

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel explained as follows:

Turning first to Policy ¶ 4(b)(i), Respondent states that its business is the acquisition then sale of domain names for profit.  The only important issue is whether Complainant can point to circumstances indicating that Respondent registered the names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.

Likewise, Policy ¶ 4(b)(iv) requires proof that Respondent for commercial gain; intentionally used the disputed domain name to attract web users; to an on-line location; by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that on-line location, or of a product or service at that location.

Once more, the key issue is whether Respondent can be said to have used the domain names in a way which intentionally created a likelihood of confusion with Complainant’s trademark.

The Panel recognized that there are other contrary decisions on this topic but noted that their view was that “proof of actual knowledge of a Complianant’s trademark rights is necessary.” The Panel explained that in the situations where there is a trademark with descriptive elements, then the onus rises on proof of knowledge. The Panel discounts the arguments put forth by Complainant of its common law rights, based on a lack of evidentiary support. The Panel concluded by noting:

Taking account of the inherently descriptive character of both the trademark and the disputed domain name, the degree to which either very similar domain names or identical domain names with different extensions have been registered/used by others, the lack of evidence that Respondent has habitually abused third party trademark rights, and all of the circumstances, the Panel finds that neither Policy ¶ 4(b) (i) or (iv) is made out.

Ultimately, the Panel found that Complainant had failed to prove up all three elements, and DENIED the request for transfer.

In two recent domain name dispute decisions, Mattel, Inc. v. Bladimir Boyiko (Nat. Arb. Forum, FA1290718, Dec. 16, 2009) and Mattel, Inc. v. Domain c/o VO (Nat. Arb. Forum, FA1289791 Dec. 15, 2009) two separate three member Panels were faced with disputes over www.wwwhotwheels.com and www.hotwheels.org. Mattel is the well known toy company responsible for the HOT WHEELS die cast cars. HOT WHEELS were first sold in the U.S. in 1968. Complainant operates web sites at www.hotwheels.com and www.mattel.com. Both Respondents failed to provide a response to the complaints.

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 the first case referenced above, the Panel recognized Mattel’s HOT WHEELS mark and had  “no difficulty in finding that the Domain Name is confusingly similar” to the mark. Mattel presented a prima facie case, which included an argument that Respondent was not commonly known by the disputed domain. Additionally, as the Panel found, Respondent was using the domain for third party link click through fee generation.  Lastly the Panel noted that the domain was an example of typosquatting. The Panel found that Respondent was involved in other UDRP proceedings and therefore was engaged in a pattern of bad faith.

In the second mentioned case, the Panel also noted that the HOT WHEELS mark was well known throughout the world and that the domain was identical to the disputed domain. The Panel found that Respondent was not commonly known by the disputed domain and that Mattel had presented a prima facie case. Lastly the Panel found that Respondent’s inaccurate or incomplete contact information was evidence of bad faith. Additionally, Respondent’s failure to respond was evidence against.

Ultimately, the Panels found in favor of Mattel and ordered the domains be TRANSFERRED.