In the recent domain name dispute decision of VRSim, Inc. v. John Makara FA1314947 (Nat Arb. Forum April 30, 2010) a single member Panel was faced with a dispute over the domain www.vrsim.com. Complainant is a Connecticut based company who creates “innovative visual environments and displays for interactive simulations.” The maintain a website at www.vrsim.net. Respondent attempted to respond to the Complaint but was late in submitting the Response in the appropriate electronic format. The Panel rejected any consideration of the Response.

Despite not reviewing the information contained in the Response, the Panel did not seem to worry too much about the factual arguments, since there was a major procedural hurdle facing Complainant, namely Res Judicata. This domain and this Respondent have been decided already under a previous decision, VRSim, Inc. v. Makara, FA 1233521 (Nat. Arb. Forum Jan. 2, 2009). Interestingly, that prior decision was based on Complainant’s failure to establish it had protectable trademark rights, since the mark was registered on the Supplemental Register. Additionally, Complainant never produce evidence showing secondary meaning.

The Panel explained that in very limited circumstances a case can be re-filed and reviewed again.

Several criteria have been set forth for determining whether a complaint may be refilled. See Grove Broad Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) (noting, and subsequently applying to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision as (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice).

The Panel found that Complainant failed to present anything to support the new case and barred it under the findings from the earlier case. For these reasons alone, the Panel DENIED the Complainant.

This should be a lesson to UDRP practitioners and trademark owners, to pay attention to details when filing a Complaint and to realize that some of the Panelists actually read these Complaints. In the recent domain name dispute decision of Letstalk.com, Inc. v. Inofirma, Ltd c/o Domain Administrator FA1310279 (Nat. Arb. Forum, April 21, 2010), a single member Panel made some harsh statements about the shortcomings of a Complaint filed by Citizen Hawk.  Although we would normally go through the elements and facts in the case, the important lesson for this posting is how the Panel addressed some procedural and substantive issues. The Complainant filed an Additional Submission to which the Panel provided the following ruling:

Having carefully reviewed Complainant’s initial submission, the Panel believes that it was prepared by some sort of automatic process with little or no human review.  For example, the Complaint refers throughout to “Complainant’s Mark(s)” and “Disputed Domain Name(s),” even though there is only one relevant mark and one domain name in dispute.  The Complaint includes an obviously false contention regarding the timing of the registration of the disputed domain name, and includes other extraneous boilerplate material (for example, argument and authorities for the proposition that a top-level domain is irrelevant to the question of identicality or confusing similarity—clearly inapplicable in this case, where the trademark includes “.com”). Given the lack of care devoted to the preparation of the Complaint, the Panel is not inclined to exercise its discretion to consider an Additional Submission from Complainant.  The Panel has reviewed the parties’ initial and additional submissions, and finds no compelling reason to consider any additional material in this proceeding.

The scolding by the Panel did not end there. The Panel skipped right to the third element, bad faith and explained that the facts were not sufficient in showing the Respondent was directing any of its activity towards Complainant or, Complainant’s customers. In fact, as the Panel noted in the Respondent’s argument section, the disputed domain was registered in 2003, whereas Complainant’s mark had not been registered until 2010. In light of the delay for filing the UDRP action, Respondent sought a ruling of Reverse Domain Name Hijacking. The Panel made the following observations:

Mere lack of success of the Complaint is not itself sufficient to demonstrate that it was brought in bad faith. Such a finding may be appropriate where the disputed domain name predates the Complainant’s trademark, see id., but in this case Complainant had made active use of its later-registered mark for several years prior to Respondent’s registration of the similar domain name.  Nor does the passage of time between the domain name registration and the initiation of this proceeding lend substantial support to Respondent’s claim of bad faith.  As noted above (in the discussion of the parties’ Additional Submissions) the Panel is quite troubled by the apparent carelessness with which the Complaint in this proceeding was prepared.

Ultimately, the Panel DENIED the Complainant’s requested transfer and found that Complainant had engaged in Reverse Domain Name Hijacking.

Recently some important information about the UDRP process has come to light. First, domain attorney Zak Muscovitch put out a survey of National Arbitration Forum Panelists. (Available here) Then the good folks at Domain Name Wire did a similar study of WIPO. (Available here) The interesting information from NAF shows the great difference between the amount of cases some Panelists are “assigned” compared with others.

 What was most interesting was a simple finding, that out of a possible 141 Panelist, NAF had supplied one Panelist with approximately 966 cases, out of the nearly 10,000 handled by NAF. This equates to nearly 10% of the total case count. Since many in the industry would hope this selection process was random, the numbers tell a different story.

According to the survey done by Muscovitch the following results were supplied (As of March 2010)

The top 10 most active panelists are as follows:

1. Carolyn Marks Johnson with 966 cases  10% of total cases
2. James A. Carmody with 889 cases  9.4% of total cases
3. Charles K. McCotter Jr. with 818 cases  8.6% of total cases
4. Ralph Yachnin with 720 cases  7.6% of total cases
5. Tyrus R. Atkinson Jr. with 623 cases  6.5% of total cases
6. Karl V. Fink with 499 cases  5.2% of total cases
7. John J. Upchurch with 478 cases  5% of total cases
8. Harold Kalina with 460 cases  4.8 % of total cases
9. Paul Dorf with 440 cases  4.6 % of total cases
10. Louis E. Condon with 437 cases  4.6% of total cases
The top 10 most active panelists are all from the United States.

Who are the Top 5 Panelists who deny the most claims?

1. David Bernstein  73.7% claims denied
2. David A. Einhorn  70.5% claims denied
3. Gilbert Thornton Cave  66.6% of claims denied
4. G. Gervaise Davis  62.5% claims denied
5. Daniel B. Banks  46.3% claims denied

Who are the Top 5 Panelists who transfer the most claims?

1. Harold Kalina  97.1% claims transferred
2. Ralph Yachnin  95.7% claims transferred
3. Carolyn Marks Johnston  92.7% claims transferred
4. Tyrus R. Atkinson Jr.  92.1% claims transferred
5. Charles K. McCotter Jr.  91.6% claims transferred 

Domain Name Wire then came out with a review of WIPO, and even got a response from WIPO regarding their “process” involving the selection of Panelists. The results of this survey seem to show the opposite approach by WIPO, based on the statistics. The survery found as follows:

Top 10 Panelists by Number of Cases

Willoughby, Tony 293
Abbott, Frederick M. 238
Donahey, M. Scott 236
Foster, Dennis A. 204
Barker, Sir Ian 196
Page, Richard W. 196
Limbury, Alan L. 193
Bernstein, David H. 160
Partridge, Mark 158
Perkins, David 157

Domain Name Wire received a written statement from David Roache-Turner, Head of Domain Name Dispute Resolution Section at WIPO. The important take away from this letter follows:

As to WIPO’s own panel appointment considerations, these are informed by a range of highly conservative, legally and ethically responsible factors, including: panel language capability; party and panel nationality; geographic diversity; panel availability; panel experience; jurisdictionally relevant expertise; where possible, prior cases involving parties at issue, and citation in pleadings to previous decisions; and lack of panel conflict as confirmed by declarations of independence and impartiality.

These numbers are telling, and important for an Domain Name practitioner or domain owner, in showing the contrasting nature of NAF and WIPO.

In the recent domain name dispute decision of USADATA, Inc. v. K2, Incorporated and US Data Corporation FA1307329 (Nat. Arb. Forum, April 1, 2010) a single member panel was faced with a dispute over the domains www.usdatacorporation.com and www.usdatawest.com. Complainant claims rights to the mark USADATA, which was registered on the Supplemental Register in 2002. Complainant maintains a web site at www.usadata.com. Respondent provided a response and both parties provided additional submissions.

Paragraph 4(a) of the 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’s findings were as follows: (1) The disputed domain names were confusingly similar and Complainant had established it had sufficient common law rights to the mark USADATA.  (2) The Panel found that both parties established rights and legitimate interests in the disputed domain name, therefore noting that Complainant failed to prove up this element.

(3) The bad faith argument is what creates a particular interest in this decision. The Panel found that the evidence did not support Complainant’s assertion that the Respondent has registered the disputed domain names in bad faith nor used them in violation of Policy ¶ 4(a)(iii). Respondent made an argument that the doctrine of laches applied, since Respondent had used the domains for many years prior to this dispute. The Panel explained:

The Respondent asserts that the Complainant has waited five years before making any claim in respect to the disputed domain names, and although not a defense to a complaint brought under the policy, it should be considered by the Panel as evidence for Respondent in its considerations of the elements of the policy.  The Panel understands that the doctrine of laches is no defense but has chosen to consider Complainant’s long delay in asserting any rights to the disputed domain names as a factor against Complainant.  The Panel therefore finds that this evidence is relevant to a determination of whether or not Respondent has been able to build up legitimate rights in the domain name in the interim and whether or not Respondent was using the domain name in bad faith.

Ultimately, the Panel DENIED the request for transfer of the domains.

It should come as no surprise that adult web sites are targeted for cybersquatting. In the recent domain name dispute of Blu Media Inc. v. Transure Enterprise Ltd c/o Host Master FA1307892 (Nat. Arb. Forum, March 30, 2010) a single member panel was faced with a dispute over the domain www.justsuboys.com. Complainant uses its domain www.justusboys.com as a for profit adult website. The domain was originally launched in 2002, although complainant did not purchase it until January 2010. Respondent registered the disputed domain in October 2009.  Respondent 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 does not have a registration for the mark JUSTUSBOYS.COM.  Thus the Panel was forced to determine if the Complainant’s mark had established secondary meaning.

In support of its contention Complainant has submitted evidence of awards received for its e-magazine as well as critic reviews of its website and magazine.  Complainant further provides evidence of high “Alexa” rankings for the number of visitors to its website.  The Panel finds that Complainant has produced sufficient evidence to show it has common law rights in the JUSTUSBOYS.COM mark for purposes of Policy ¶ 4(a)(i) through continuous and extensive commercial use before Respondent registered the disputed domain name.

The Panel found that the disputed domain was confusingly similar to Complainant’s mark and that Policy ¶ 4(a)(i) had been satisfied

Moving to the second element, the Panel noted that Complainant submitted evidence sufficient for a showing and establishment of a prima facie case. Regardless the Panel chose to review the evidence presented. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the disputed domain was offering third party links to competing adult oriented web sites. “The Panel finds that Respondent’s reliance on typosquatting to create a confusingly similar disputed domain name, where it receives referral fees to websites in competition with Complainant is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Also, Complainant put forth evidence that Respondent was seeking to sell the disputed domain publicly and to Complainant. Lastly, the Panel remarked that the domain was a typosquatted version of the mark. For all these reasons, the Panel found that Respondent lacked any rights or legitimate interests in the domain, and that Policy ¶ 4(a)(ii) had been satisfied

In addressing the final element, the Panel began by examining Respondent offer to sell the domain for $5,000.00 to Complainant. “The Panel finds that Respondent’s general listing of the disputed domain name for sale, as well as its attempts to sell the disputed domain name to Complainant for amounts in excess of its initial costs are evidence of bad faith registration and use under Policy ¶ 4(b)(i).” The Panel also found that Respondent intentionally disrupted Complainant’s business. Additionally, the Panel found that the use of competitive third party links for financial gain was evidence of bad faith registration and use. Ultimately, the Panel ruled  that Policy ¶ 4(a)(iii) had been satisfied            

After review of all the elements the Panel ruled that Complainant met all three and ordered the domain be TRANSFERRED.

In the recent cybersquatting dispute of Taeho Kim v. Skelton Logic FA1305934 (Nat. Arb. Forum March 22, 2010) a single member panel was faced with a dispute over the domains www.recent.net, www.they.net, and www.than.net. Complainaint claimed to have purchased the domains on June 30, 2009 and that they were stolen in December 2009. Complainant contends the domains were ultimately resold to Respondent. As the Panel noted “The Complaint is based on Complainant’s ownership of the domain names and his stated intention to use the marks RECENT.NET, THEY.NET and THAN.NET in the future, even though he does not have a trademark or service mark corresponding to any of the domain names.”

Respondent contends to be a bona fide purchaser of the domain, which were purchased from a common domain marketplace reseller. 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 explained that “The Policy is not designed to address cases of theft of domain names, whether brought against the alleged thief or against a subsequent purchaser.” In spite of that statement the Panel chose to review the facts under the policy and stated:

Complainant concedes that he has no trademark or service mark rights and relies solely on his prior registration of the domain names and his stated intent to use marks corresponding to the domain names in the future. Given the generic nature of the second level domains, “recent,” “they” and “that,” the mere acquisition by Complainant of the disputed domain names cannot possibly give rise to trademark rights in RECENT.NET, THEY.NET or THAT.NET. Nor can intent to use give rise to trademark rights.

For this reason the Panel DENIED Complainant’s request for transfer.

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.