In the recent domain name dispute decision of RapidShare AG , Christian Schmid v. N/A Maxim Tvortsov WIPO Case No. D2010-0696 (June 22, 2010) a single member Panel was faced with a dispute over the domain www.rapidbay.net. Complaint, Rapid Share is the well known file-hosting website which maintains a website at www.rapidshare.com. The respondent did not reply to the Complaint, but the domain was registered on September 22, 2009. Complainant owns a Community Trademark for RAPIDSHARE with a priority date of 2005.

Under Paragraph 4(a) of the ICANN UDRP Policy, a complainant has the burden of proving the following: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith.

The Panel addressed the first prong of the test, and noted that Complainant was unable to establish ownership rights to RAPIDBAY or to the word RAPID. The Panel compare the mark RAPIDSHARE with the disputed domain and could not find enough of a similarity. The Panel explained that there was no evidence presented by Complainant to show how the two names were confusingly similar. Interestingly, the Panel noted there was a disclaimer present on the website, based on a review of a cached page of the disputed domain, which noted they were not affiliated with RAPIDSHARE. Hoever, this was not addressed in the substantive portions of the decision. The Panel found that this prong was not met and declined to review the remainder of the prongs. The Panel ended its decision with this statement.

Where a complainant’s mark consists of a combination of two common descriptive or generic words, and only one of those words has been used in the disputed domain name, satisfying the requirements of Paragraph 4(a)(i) can be a formidable task. So it has proved in this case.

Ultimately, the Panel DENIED the request for transfer.

In the recent domain name dispute decision of World Wrestling Entertainment Inc. v. Israel Joffe WIPO D2010-0860 (July 1, 2010) a single member Panel was faced with a decision over the domains www.wrestlemania26.com, www.wrestlemania27.com and  www.wrestlemania28.com. Complaint is the well known media and sports entertainment company responsible for much of the past few decades worth of wrestling entertainment. They maintain a website at www.wwe.com. WWE claims rights to the WRESTLEMANIA mark dating back to 1985.

Respondent provided a short response to the Complaint which states in full as follows:

Cybersquatting (also known as domain squatting), according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. However if the person does not attempt to sell the name to the company, then no laws have been violated since intent to sell in bad faith has not been proven. In Virtual Works, Inc. v. Volkswagen of America, Inc. (a dispute over the domain vw.net), the [United States] Fourth Circuit Court of Appeals created a common law requirement that the cybersquatter exhibit a bad faith intent in order to confer liability. This means that domain names bearing close resemblance to trademarked names are not per se impermissible. Rather, the domain name must have been registered with the bad faith intent to later sell it to the trademark holder. This “bad faith” concept is reiterated in 15 U.S.C. § 1125 and U.S.C. § 1129. I never had any intention of selling the names to WWE and made no attempts to sell it to them. They have not proven that I tried to sell them the name, therefore no laws have been violated and I should be allowed to keep the domain names.

The Panel did not buy these arguments and explained that paragraph 4(a) provides a non-exhaustive list of examples to prove bad faith. The Panel noted that the websites were not active and through its own research appeared to never have been active. Regardless, the Panel still explored the Respondent sole reason for proving lack of bad faith and stated:

The panel in Telstra, supra, and scores of panels subsequently, have found that “warehousing” or simply registering and holding a domain name whose dominant feature is a famous mark, is use in bad faith. This is now a well-settled rule of decision in UDRP proceedings. See WIPO Overview, paragraph 3.2, Consensus View: “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name.”

Ultimately, the Panel found that Complaint satisfied all three elements and ordered the domains be TRANSFERRED.

Let this be another lesson to domain dispute attorneys, simply having a U.S. trademark registration is not always enough. In the recent domain name dispute of A & H Sportswear Co., Inc. v. Hu Yanlin (WIPO D2010-0476, May 12, 2010) a single member Panel was faced with an interesting international dispute over the domain www.magicbra.com. Complainant is the manufacturer and designer of women’s apparel. Complainant is the owner of two trademark registrations for MAGIC BRA, 2756417 and 3335611 dating from as early as 1994. The Respondent filed a response and raised numerous objections. Some of Respondent noteworthy arguments include the following:

[T]he term “magic bra” is a descriptive term which not only refers to a brassiere which will make breasts look bigger but also refers to different methods of breast enlargement such as by nutritional, sports or medial operative means and the Complainant cannot claim exclusive rights over general and descriptive words which are used in accordance with their natural meaning….Complainant has no registered trade mark rights in China and to his knowledge does not sell its MAGIC BRA products in that country….[E]ven in the United States there appears to be several trade marks which incorporate the words “magic bra” and therefore even in the United States the term is common or descriptive…..

Interestingly when on looks at the USPTO database, there is another company who has two other trademark registrations, MAGIC BRA COLLECTION SWIM (Reg. No. 3552163) and MAGIC BRA COLLECTION (Reg. No. 3593248). The owner of those marks appears to maintain a website at www.magicbraswim.com. As Respondent noted, it does not appear as though Complainant is operating a website of their own.  The Panel agreed with the Respondent noting as follows:

The Complainant asserts that its MAGIC BRA mark is well-known and that it owns exclusive rights in relation to the mark and that people would associate the mark with products produced by the Complainant and that it has not authorised the Respondent to use its mark and essentially that the Respondent is using its mark to attract traffic to its website. However, none of these bald assertions are supported by any evidence or even by circumstantial evidence which would allow the Panel to draw appropriate inferences.

The Panel accepted Respondent’s assertions that it did not know about Complainant before registering the domain. Additionally, the Panel noted that since the disputed domain was written entirely in Chinese, and Complainant had failed to provide any evidence of registration or use in China, it would be unlikely to compete with Complainant. The Panel recognized that it was being used for a prking site, it was unclear to the Panel if that domain had been parked since its registration and if so, why Complainant waited seven years to complain. The Panel found that the two operated in separate geographical markets and found Complainant failed to submit evidence of bad faith. For all these reasons, the Panel DENIED the request for transfer.

In an interesting twist, famed porn “tube” site REDTUBE, has decided to enforce some of its own intellectual property, despite the significant amount of copyright violations in the content it reproduces on its website.  In the recent cybersquatting case of Bright Imperial Ltd. v. Ho Nim WIPO Case No. D2010-0321, April 28, 2010, a single member Panel was face with a dispute over the domain, www.redtubehentai.com. REDTUBE is the well known website providing adult videos clips through its website www.redtube.com. REDTUBE boasts that it was the 63rd most trafficked website in the world and is the third most popular adult website. Complainant is the owner of multiple international trademark registrations for the REDTUBE mark.

Paragraph 4(a) of the ICANN UDRP Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In addressing the first element the Panel explained that Complainant’s mark was registered in various jurisdictions and that the disputed domain merely added the generic word “hentai” after the mark. The Panel found this to be confusingly similar to the REDTUBE mark.

Moving onto the second element, the Panel explained that REDTUBE presented a prima facie case and found that Respondent had not made a bona fide offering of goods or services. For these reasons, the Complainant had satisfied this element.

Lastly, regarding bad faith, the Panel found that Respondent had registered many other domains which were confusingly similar to third party trademarks, showing a pattern of such bad faith behavior. Additionally, since the domain contained third party links in direct competition to Complainant, such actions were proof of bad faith.

For all these reasons, the Panel found that Complainant had met its burden and ruled that the domain be TRANSFERRED.

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.

Normally we would spend some time reviewing the facts and findings of the case, however Domain Name Wire did a great job, so we suggest you read thier post available HERE. We were preparing to provide a full write up on this case, but they did a perfect job summarizing and highlighting what every practioner should know about domain disputes.  The case  Doctor’s Associates Inc. v. Atomix (WIPO D2010-0060, April 6, 2010) is a lesson learned for other attorneys and trademark owners. Looks like Subway needs to sell a few more $5 Footlongs.

In the recent cybersquatting case of National Bedding Company L.L.C. v. Back To Bed, Inc. (WIPO D2010-0106, March 24, 2010), a single member Panel was faced with a dispute over the domain www.americasmatresses.com. Complainant sells mattresses using the service mark AMERICA’S MATTRESS. It maintains a web site at www.americasmattress.com. Complainant has two registered marks relating to mattresses. The Respondent operates a number of mattress stores, also in the state of Illinois. Respondent failed to respond to the dispute. Respondent maintains a web site at www.backtobed.com. The disputed domain name was first registered in 2004.

Paragraph 4(a) of the ICANN UDRP Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) The respondent has no rights or legitimate interests with respect to the domain name; and (iii) 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 name, which is merely the plural form of the Complainant’s mark, unquestionably is confusingly similar to the mark.”

The Panel next addressed whether Respondent had any rights or legitimate interests in the domain, and recognized that although there was no response by the Respondent, the Panel chose to review the facts.

The Panel is not persuaded from the record of this case that the Respondent registered and has used the disputed domain name based on a good faith belief that the disputed domain name’s value was attributable to its generic or descriptive characteristics. It can scarcely be gainsaid from the record that the Respondent was unaware of the Complainant’s prior use of the AMERICA’S MATTRESS mark, given that the Complainant and the Respondent compete directly with each other in the Chicago, Illinois area and over the Internet. To the contrary, the Panel concludes that the Respondent most likely registered the disputed domain name in order to trade on the initial interest confusion between the domain name and the Complainant’s mark, intending to attract Internet users to the Respondent’s website. This does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

Regarding the final element, the Panel relied on its prior conclusions regarding that Respondent must have known of Complainant due to the geographic proximity. The Panel found that Respondent “intentionally attract[ed] Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation.”

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

Inter-Continental Hotels Corporation and Six Continents Hotels, Inc. decided that one man’s ownership of 1,542 domains was just too much to bear. In the recent cybersquatting decision of Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof (WIPO Case No. D2009-1661, January 19, 2010) a single member panel had the long task of sorting through these domains. For a full listing of all the domains in dispute please see the decision.

Paragraph 4(a) of the ICANN UDRP Policy provides that a complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.

Complainants are the well known corporate owners of multiple hotel chains which include, Holiday Inn, Holiday Inn Express, Intercontinental, Crowne Plaza, Staybridge Suites, Staybridge, Hotel Indigo, Candlewood, and Candlewood Suites. For more info about Complainants go to www.ichotelsgroup.com or www.ihg.com .

The Panel, in addressing the first element noted that most of the domain names included Complainants’ trademarks with the addition of some geographic indicator. Thus the domains were found to be identical or confusingly similar. The Panel also found that many of the domains contained Complainants’ trademarks and a descriptive term. These were also determined to be confusingly similar. The Panel further found that many of the disputed domain names started with part of the Complainant’s trademark in combination with a geographic location or generic term. These were also found to be confusingly similar. However, a total of ten (10) of the disputed domain names were found to not be confusingly similar to any of Complainant’s trademarks.

The Panel quickly dealt with the second element noting:

The websites resolving from the disputed domain names create the impression that they are official websites for the relevant hotel, or potentially, that the Respondent manages the hotel. By using the Complainant’s trade marks, the Respondent is falsely suggesting he is the trade mark owner or the website is the official site for the accommodation of the Complainant’s related entities when it is not…. Accordingly, the Panel concludes that the Respondent intentionally selected domain names which contained the Complainant’s trade marks, and added a word or words which do not serve to distinguish them, but which strengthens the association with the Complainant or its goods and services, for the purpose of redirecting Internet users to his own websites. Such use cannot constitute a bona fide offering of goods of services.

Although previous domain dispute decisions have an effect on a finding of bad faith, Respondent’s lack of previous decisions didn’t sway the Panel.

The Respondent has not been named as a respondent in previous UDRP decisions. However the fact that this proceeding has been brought in relation to over 1,500 domain names which contain the Complainant’s trade marks, makes it clear that the Respondent has engaged in a pattern of registering domain names in order to prevent a trade mark owner from reflecting their mark in a corresponding domain name. The Panel’s view is further supported by the fact that the Respondent owns a vast array of other domain names. This is clear evidence of bad faith.

Ultimately, the Panel agreed that 1,519 of the domains should be TRANSFERRED. There was a remaining 23 domains, of which 13 with withdrawn and 10 were DENIED.

In the recent cybersquatting action, Asahi Breweries Ltd. v. Whois Privacy Protection Service, Inc., Demand Domains, Inc. WIPO D2009-1481 (December 25, 2009), a single member Panel was faced with a dispute over the domain www.asahibeer.com. Complainant has used the mark ASAHI for beer since 1892 and maintains a domain at www.asahibeerusa.com. The disputed domain was registered in 1998 and Respondent provided a Response to the Complaint.

Under paragraph 4(a) of the ICANN UDRP Policy, in order to obtain the remedy of transfer of the disputed domain name, Complainant must prove (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith by the Respondent.

Respondent requested that the decision be dismissed and agreed to transfer the domain to Complainant. Respondent sought the Panel to not render a decision in light of its agreement to transfer, but the Panel explained that Complainant’s failure to accept the offer of settlement under paragraph 17 of the Rules, it would proceed with the decision.

In addressing the first element, the Panel explained that the long standing rights to the ASAHI mark were established and that the domain was identical and confusingly similar to the domain. As a result the Panel found Complainant proved this element.

Moving to the second element, the Panel explained that Complainant made a prima facie case. The Panel found that Respondent did not use the web site for any legitimate, bona fide or non-commercial purpose. The Panel found that Complainant satisfied this element as well.

The final element, bad faith, provided more review by the Panel. The Panel found that the sponsored links to third party web sites was evidence of bad faith registration and use. Respondent argued that its offer to transfer was evidence to demonstrate its good faith. The Panel dismissed this argument noting recent cases and explained:

In some recent cases respondents have taken advantage of complainants, who in good faith had accepted their offers of transfer to settle disputes. The respondents in such cases typically put forward a proposal to transfer the domain name, with a specific request that there should be no finding of bad faith. It appears, in some of those cases, the requests for settlement were only a ploy to gain additional time in order to continue deriving the revenue generated from the disputed domain names and were apparently not genuine offers of settlement. The cases then had to be reinstituted by the complainant, while the respondent had managed to gain further time generating pay-per-click revenue in the guise of making an offer of settlement.

The Panel went further to note that bad faith had been found in cases where inadvertent registration through semi-automated processes occurred. The Panel also found that the number of cases Respondent had been involved in showed a consistent pattern and was additional proof of bad faith.

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

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.