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Posts Tagged ‘Addtional Submissions’

Rachael Ray Cooks Up A Win

Thursday, July 8th, 2010

rachaelray

In a very interesting decision, a three member Panel appears to stretch the limits of what is acceptable evidence and methodology for UDRP cases. In the case of Ray Marks Co. LLC v. Rachel Ray Techniques Pvt. Ltd. FA1319966 (Nat. Arb. Forum, July 7, 2010) the Panel was faced with a dispute over the domain www.rachelray.com. Living in the U.S. most of us have all seen on t.v. or heard about Rachael Ray. She maintains a website at www.rachaelray.com  Many would even think this was a slam dunk case for her, since the disputed domain was merely missing a letter. However, Respondent put up a fight and both parties provided additional submissions. As a result the Panel was faced with making some interesting findings.

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.

Some of the relevant arguments presented by Respondent are as follows:

Respondent, Rachel Ray Techniques Private Limited, is a company incorporated in India on July 23, 2009.  Respondent offers products that involve laser ray technology.  Prior to incorporation, Respondent was operated as a partnership that began April 10, 2007….The Complaint misstates the date of the cease and desist letter.  It was sent on February 24, 2010, not February 24, 2009.  This is an attempt by Complainant to mislead the Panel by creating the impression that the letter was sent prior to Respondent’s incorporation on July 23, 2009….Respondent selected the name “Rachel Ray” for its business because the daughter of the technical partner of the original firm was named “Rachel”.  The initial name for the company was going to be “Rachel Lazer Techniques”, but, for reasons related to the practice of numerology, there was a decision to switch to “Rachel Ray Techniques”.

In the decision, the Panel presented the following findings:

Respondent is the owner of the disputed domain name, <rachelray.com>, and the date of creation is September 20, 2001.  The Respondent acquired the name some time later. Respondent is a corporation organized under the laws of India on July 23, 2009, after having been formed as a partnership on April 10, 2007.

With that in mind the Panel reviewed the elements and quickly found that the domain was identical or confusingly similar. The fascinating parts of the decision came during the examination of the second element. The Panel found that the burden was shifted to Respondent to prove it had rights or legitimate interests in the domain. It stated as follows:

Respondent claims to have formed a company in April 2007, which was incorporated in 2009, to market laser-based equipment and other items.  Respondent has supplied the Panel with scads of evidence (Annexes A through W), citing its business name on advertisements, telephone listings, invoices and Indian governmental documents, to support its contention.

However, the Complaint provided evidence that the disputed domain hosted websites that offered Complainants own trademark. Respondent chalked this up to error and lack of control over third party hosting, exclaiming that they are not technical people. Armed with that argument, the Panel made the following statement.

The Panel is presented therefore with competing claims on this issue.  UDRP proceedings provide for only limited evidentiary presentations, and it is difficult for the Panel to make fine assessments as to veracity.  One tool it can employ in this regard is to examine each party’s contentions for consistency.  On this issue, the Panel finds no inconsistency in Complainant’s assertions, whereas there is marked inconsistency with respect to those made by Respondent.  Respondent’s declaration about “not being technical people” is contradicted by Respondent earlier Additional Submission reference to its “technical partner”.  Moreover, that contradiction is heightened by Respondent’s claim to run a business that offers products “using the Technology involving Laser Rays”, which suggests that Respondent’s people must possess fairly sophisticated technical expertise.

Additionally, the Panel found that the lack of proof of sales volume or revenue in connection with products was fatal. Then the Panel turned its attention to the issue of whether Respondent was commonly known by the domain. AS stated earlier Respondents company name specifically includes the domain, but the Panel did not care.

However, it has not escaped the Panel’s notice that the date of Respondent’s origination, April 10, 2007, followed hard upon the date, March 27, 2007, of the USPTO registration of Complainant’s most basic trademark, RACHAEL RAY.  Is this coincidence or design?  Though Respondent is an Indian entity, the miracle of the Internet makes knowledge of such information as USPTO registrations almost instantaneous around the globe, and the Panel must keep in mind that the initiation of the Policy is predicated on the cunning and sophistication of global cyber-squatters. As discussed above, Respondent has provided the Panel with scant evidence of actually conducting business.  Consequently, the Panel cannot conclude that Respondent is  commonly known by that name, as is necessary for application of subparagraph 4(c)(ii).  The Panel believes that that subparagraph requires more than evidence suggesting a hastily formed “paper” company which adopts a name that is nearly indistinguishable from an established trademark and, soon after formation, acquires a corresponding domain name.

The Panel quickly resolved the bad faith element of the case. Ultimately, the Panel ruled that domain be TRANSFERRED.

Arbitrator Slams Complainant For “Paltry” Record Evidence

Wednesday, January 13th, 2010

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.

ALIENWARE Teaches Computer Programmer Lesson About Domains

Wednesday, January 6th, 2010

Alienware-logoalienware-laptop

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

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

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

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

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

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

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

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

Competitors Fight Over Bottled Water

Monday, November 30th, 2009

greatwater_logo

In the recent domain name dispute decision of Greatwater, Inc. v. Greatwater Custom Label (2004) Inc FA1287920 (Nat. Arb. Forum November 25, 2009) a single member Panel was faced with a dispute over the domains www.greatwater.com and www.nationwidesprings.com. Complainant is the supplier of private label bottled water. Complainant originally registered the greatwater.com domain and its parent company purchased the nationwidesprings.com domain. Complainant’s company was sold to a third party company, who in turn sold it to a fourth company. That fourth company supposed then sold it to a fifth company, but started their own new bottled water business (Respondent) in competition with Complainant. That competition included Respondent maintaining control of and using the two disputed domains. Respondent argues that Complainant has failed to show it has any trademark rights, and challenges that Complainant has not established secondary meaning.

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 found that Complainant failed to establish common law rights through secondary meaning of either domain name. Although the Complainant failed to prove the first element the Panel chose to review all of the elements.

Moving to the second element, the Panel found that Complainant failed to present a prima facie case in support of its arguments.

Respondent presents evidence and argues that it has used the disputed domain names in connection with its business selling bottled water since its incorporation in 2004. The Panel finds that Respondent has made demonstrable use the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)….Respondent argues that Respondent has been commonly known by the disputed domain names since its incorporation in 2004 for the business of selling bottled water. The Panel finds that Respondent has rights and legitimate interests in the disputed domain names due to it being commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).

The Panel moved to the final element, bad faith, noting that Complainant did not present sufficient evidence. The Panel concluded that since Respondent had rights or legitimate interests in the domains, they had also not registered the domains in bad faith.

Ultimately, the Panel DENIED Complainant’s request to transfer the domains.

Life Extension Foundation Wins Its Domain

Wednesday, November 25th, 2009

In the recent domain name dispute decision of Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited (FA1289603, Nat. Arb. Forum, November 25, 2009) a three member Panel agreed to transfer the domain www.lifeextensionfoundation.com to Complainant. Life Extension Foundation maintains web sites at www.lef.org and www.lifeextension.com. As their web site states:

The Life Extension Foundation is the world’s largest organization dedicated to finding scientific methods for addressing disease, aging, and death. The Life Extension Foundation is a non-profit group that funds pioneering scientific research aimed at achieving an indefinitely extended healthy human lifespan. The fruits of this research are used to develop novel disease prevention and treatment protocols.

 Our law firm represented Life Extension Foundation in this dispute, so we will refrain from providing our normal commentary. If you would like to know more details please read the decision (here).

AAA Auto Club Can’t Get AAA.net

Monday, July 27th, 2009

In the recent domain dispute decision of The American Automobile Association, Inc. v. QTK Internet c/o James M. van Johns FA1261364 (Nat. Arb. Forum, July 25, 2009) a three member Panel provided an interesting decision regarding www.aaa.net. Our friends over at Domain Name Wire provided an excellent review of the decision, so we suggest you read their version. (available here). We can already forsee that there will be many future disputes which cite to this decision.

NuvaRing Can Prevent Pregnancy, But Not Criticism

Friday, June 19th, 2009

In a recent domain dispute decision of N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields (Nat. Arb. Forum 1259266, June 16, 2009) a single member panel was faced with a dispute over www.nuvaringsideeffects.com. Complainant is the owner of the popular contraceptive device and NUVARING and owns federal trademark registrations for same. Complainant maintains a web site at www.nuvaring.com. Respondent is a personal injury law firm and maintains a web site at www.injurygroup.com. Complainant contends that the disputed domain is being used by Respondent to confuse the public and tarnish the goodwill and reputation of Complainant. The Complaint explains that when a user goes to the disputed domain it seeks to solicit customers to file lawsuits against Complainant resulting from use of the NUVARING. Specifically, Complainant contends the disputed domain includes headings such as “NuvaRing Class Action Information,” “NuvaRing Side Effects – NuvaRing Law Suit,” “NuvaRing Warnings,” “NuvaRing Blood Clot,” NuvaRing pulmonary Embolism,” and “NuvaRing Lawsuit.” Respondent contends that it is using the domain in connection with a bona fide offering of goods and services, prior to notification of any dispute. Further, Respondent claims it is using the domain in a nominative fair use manner for referring to Complainant’s and their NuvaRing product. Both parties provided additional submissions which expounded on their original arguments.

Under the ICANN UDRP Policy paragraph 4(a) 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 interest 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, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found the domain contained Complainant’s entire mark and merely added generic words such as “side” and “effects.” This element favored transfer of the domain to Complainant.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant must first establish a prima facie case. The Panel explained:

Complainants’ evidence establishes that (i) Respondents are not licensees of Complainants, nor have they received permission or consent to use Complainants’ trademark; (ii) Complainants have prior rights in that trademark which precede Respondents’ registration of the Domain Name; and (iii) Respondents are not commonly known by the trademark.  Complainants have thus made a prima facie showing that the Respondents have no legitimate rights or interest in the domain name.

The burden then shifted to Respondent and the Panel made a finding that “Respondents prove[d] that they are using it to offer legal services in connection with consumers who may have been harmed by Complainant’s product and to provide[d] information to the public about Complainant’s product.” The Panel also reviewed and applied the standard for nominative fair use argued by Respondent, and as established by the 9th Circuit Court of Appeals case of  New Kids on the Block v. News Am Publ’g. Inc., 971 F.2d 302, 308 (9th Cir. 1991).  The New Kids case standard is as follows:

(1) The product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark may be used as is reasonably necessary to identify the product or service; and (3) the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

The Panel found that Respondent did establish its nominative fair use of the mark per appellate court precedent. The Panel also addressed Complainant’s assertion of initial interest confusion, noting as follows:

This Domain Name contains nothing to suggest that the related website would be sponsored or endorsed by Complainants or anyone else seeking to promote the NuvaRing product.  The message in the Domain Name tends in the opposite direction.  The plain meaning of the words “NuvaRing side effects” is much closer to “the NuvaRing may be dangerous or have risks associated with it” than to the kind of message that would be offered by its manufacturer.  A reasonable consumer would not assume that a website by this name would be sponsored by the manufacturer of the named product.  A description of “side effects” might be included in a website sponsored by the manufacturer, but “side effects” would not likely be in the name of the website itself.

The Panel also found that Respondent’s use of a disclaimer on the web site was further evidence of their legitimate rights and interests since it immediately and sufficiently informs users of the non-affiliation. Lastly, Complainant cites to three prior domain decisions where an attorney was using domains to promote lawsuits against AIG. (See American International Group, Inc. v. Debra Speyer, FA 422815 (Nat. Arb. Forum Apr. 7, 2005), American International Group, Inc. v. Debra Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005), and American International Group, Inc. v. Bruce Levin, FA 591254 (Nat. Arb. Forum Dec. 21, 2005)). The Panel distinguished all these cases since nominative fair use was not asserted by respondent in any of the cited cases and because “the fact that the Respondents’ use of the Domain Name here may not fit within the provisions of Policy ¶ 4(c)(iii) does not preclude them from establishing their rights or legitimate interest in some other fashion, which they have.”

Ultimately, the Panel found that Claimant did not satisfy the second element and DENIED the request for transfer. The Panel did not address the bad faith element in light of the failure to prove the second element.

No More Travel Deals For STR- Notorious Three Letter Trademark Triggers Transfer

Wednesday, June 17th, 2009

In the recent domain dispute decision Smith Travel Research, Inc. v. Victor An (Nat. Arb. Forum 1259999, June 15, 2009), a single member Panel was faced with a dispute over the domain www.str.com. Complainant, Smith Travel Research, Inc., claims to be “the world’s foremost sources of hotel performance trends and will offer the definitive global hotel database and development pipeline.” Complianant maintains a web site at www.strglobal.com. Complainant owns multiple STR related three-letter trademarks based on providing lodging industry information since 1986. Respondent offers the disputed domain with a heading that states “Search for Travels and Reservations.” Complainant contends that Respondent is merely offering a linking page with click through referral fees and that it is not a bona fide offering of services.  Respondent contends that STR is a very popular abbreviation and that there are over 90 co-existing trademarks using the three letters. Respondent explains that its travel and hotel booking services are different then Complainant’s informational services provided to industry insiders.

The Panel reviewed this information and applied the three element test described in the ICANN UDRP Policy paragraph 4(a). (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 although the domain is comprised of a common three letter combination, this does not deprive a Complainant of protection under section 4(a)(i) of the policy. In light of the identical nature of the domain to Complainant’s mark, the Panel found this element was satisfied.

Moving to the second element, whether the Respondent had any rights or legitimate interests, the Panel explained:

Respondent’s website resolves to a website offering internet-based travel services such as links to hotel reservation sites. Respondent itself does not provide the service, and receives referral or click-through fees from website owners. When this fact is coupled with the fact that Respondent is using the mark of a well-known travel industry company to attract users to its site, the Panel concludes that the Respondent is not using the name for a bona fide offering of goods or services, and therefore concludes that Respondent has no rights or legitimate interest in the name.

The Panel appears to have relied on prior cases which found that pay-per-click web sites were not bone fide offerings of goods. The panel found Complainant satisfied this element.

Moving to the last element, whether the disputed domain was registered and use in bad faith, the Panel found that Respondent was clearly trying to associate itself with the goodwill of Complainant and was seeking to profit from click-through fees. The Panel went further and explained:

The Panel recognizes that the three-letter combination in Complainant’s mark is used in other contexts and by other businesses. Nevertheless the Panel concludes that given Complainant’s notoriety in the travel business, it seems clear that it was no accident that Respondent chose the same three letters for its domain name in an attempt to attract users familiar with Complainant’s travel industry expertise.

Ultimately, the Panel found that Complainant had satisfied all three elements of the Policy and agreed to TRANSFER the disputed domain.

DefendMyDomain Commentary: This is another example of cases where Panels have differing views on pay-per-click pages. For example see See EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the respondent’s website usage of pay-per-click links was a bona fide offering of goods and services); see also Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products).

Is SHOE LAND Generic?

Friday, June 12th, 2009

In the recent decision of Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009) a three member Panel was faced with a dispute over the domain www.shoeland.com. Complainant, is a footwear retail store and maintains a web site at www.shoeland.net. Complainant claimed use of the mark SHOE LAND since March 1, 1997 and has a Federal registration for the mark since April4, 2006. Respondent replied to the ICANN UDRP complaint noting that they are a business who regularly registers domains with intrinsic value and generates revenue from pay-per-click advertising links. The disputed domain was registered in 1998.

As the Panel noted, 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 began with the first prong, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found that complainant had sufficient rights under the Policy ¶4(a)(i), but noted as follows:

In its Complaint and Additional Submission, Complainant also asserts and provides evidence of its rights in the SHOE LAND mark through its continuous use of the mark in commerce since at least as early as March 1997. Nevertheless this use of the mark remained local, and does not provide the mark with secondary meaning. As a result, the Panel finds that Complainant does not have sufficient common law rights in the SHOE LAND mark under Policy ¶ 4(a)(i), dating back to March 1997. 

Regardless the Panel found Complainant had satisfied the first prong. Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant failed to establish a prima facie case. Respondent argued, and the Panel agreed as follows:

Complainant does not have common law rights dating back as far as September 1998, when Respondent registered the disputed domain name, because Complainant’s SHOE LAND mark had not acquired secondary meaning by that time.  Respondent contends that the evidence put forth by Complainant fails to demonstrate that Complainant was well-known yet outside of the Orlando, Florida area, or that Complainant had spent much money promoting the SHOE LAND mark.    

Respondent also argued that it registered generic domain names as a business practice, which would satisfy the rights or legitimate interests section of the policy. The Panel agreed with this concept as well finding that “registering such a generic domain name is a business practice that confers upon the practitioner rights or legitimate interests in that domain name. As a result, the Panel finds that Respondent established rights in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”

Moving to the last prong, whether the domain was registered and used in bad faith, the Panel explained that since Respondent had proved it had rights or legitimate interests in the domain at the time of registration, then the registration could not have been in bad faith. The Panel explained:

The Panel finds that a respondent is free to register a domain name consisting of common terms, unless he is aware or should have been aware of the secondary meaning those common terms had at the time of the registration. Since the disputed domain name contains such common terms and as there was no secondary meaning at the time of the registration, the Panel is of the opinion that Respondent did not register  the <shoeland.com> domain name in bad faith under Policy ¶ 4(a)(iii).

The Panel also addressed a request by Respondent to find Reverse Domain Name Hijacking. The Panel explained that since Complainant provided evidenced of active promotion of the SHOE LAND mark since 1997 there could not be reverse domain name hijacking. The Panel further explained that reverse domain name hijacking requires bad faith on the part of Complainant and that none was present.

For an interesting counter perspective on the issue of reverse domain name hijacking, read the dissenting opinion by one of the Panelists, who believes this was a clear case of reverse domain name hijacking. He argues that the Complainant had no reasonable basis for arguing bad faith The single dissenting Panelist also chastises the Complainant for revealing emails and facts that the parties engaged in settlement discussions and sale of the domain negotiations prior to the dispute, despite the fact that those communications were labeled “Confidential-For Settlement Purposes Only.”

Ultimately, the Panel DENIED Complainant’s request for transfer and DENIED Respondents request for reverse domain name hijacking.

Christian Dior Fails Against Pornstar Kianna Dior

Tuesday, June 9th, 2009

In the recent decision of CHRISTIAN DIOR COUTURE v. Kianna Dior Productions (WIPO D2009-0353, May 24, 2009),  a single member Panel was faced with a dispute over the domain www.kianndior.com. Complainant, famous French fashion house known for fragrances, clothing and other fashion accessories and maintains a web site at www.dior.com. Respondent, is a well known pornstar working in the adult entertainment industry for more then a decade and also maintains an additonal web site at www.kiannaxxx.com. The Panel noted that Christian Dior must prove three elements under the ICANN UDRP policy section 4(a) which include: “(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.”

In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark(s), the Panel first noted there was no doubt that Complainant had trademark rights in DIOR, CHRISTIAN DIOR and MISS DIOR. Complainant argued that since the domain wholly incorporates the DIOR mark, that it would be sufficient to establish confusing similarity. Interestingly, the Panel stated:

This Panel is of the opinion that the unqualified statement that confusing similarity exists if a disputed domain name completely incorporates the relevant trademark does not, without more, prove dispositive in the present case. For example, the Complainant’s trademark DIOR could be wholly incorporated in the hypothetical domain name <diorama.com>, however the word “diorama” has, in English at least, an independent dictionary meaning which dispels any confusion with DIOR. The trademark NIKE is incorporated within, for example, the domain name <nikethamide.com>, a drug used as a respiratory stimulant. In such cases, there may very well be no confusing similarity. Added matter invites a contextual comparison on a case by case basis. Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity.

Ultimately though, the Panel concluded that Complainant had established this element and that the domain was confusingly similar to the Complainant’s DIOR mark.

Moving to the second element, whether Kianna Dior had any rights or legitimate interests in the domain, the Panel noted that Complainant established a prima facie case. Once a Panel makes that determination, the burden of proof switches to Respondent. The Panel relied on evidence and arguments presented by Respondent that Respondent’s company, Kianna Dior Productions was an active corporation which registered the domain. The Panel in analyzing the facts made the following finding:

Paragraph 4(c)(ii) of the Policy requires only that the Respondent has been commonly known by the domain name. The Panel finds that by virtue of use since 2001, the Respondent (to use the words of paragraph 4(c)(ii), “as an individual, business, or other organization”) has provided evidence of being commonly known in her industry and by her audience by the domain name. If the Respondent is infringing the Complainant’s trademark rights, the Complainant may initiate infringement proceedings in an appropriate court. But in this case, the Panel has applied the Policy to the facts, and that includes paragraph 4(c)(ii). The Panel finds that the Respondent has on balance discharged the onus which fell to it under paragraph 4(a)(ii) of the Policy and accordingly finds that the Complainant has in the present administrative proceedings failed to establish the second limb of its case.

As a result, the Panel declined to review the final bad faith element, since Complainant failed to establish the second element. The Panel DENIED Complainant’s request for transfer.

DefendMyDomain Commentary: But See our previous posting on June 8, 2009, “Jim’s Dead, But His Music and Persona Only Live On In One Jim Morrison Domain” wherein the JimMorrison domain was Transferred.

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