In the recent domain name dispute decision of Diageo Ireland v. Guinnessclaim (WIPO D2009-0679, July 26, 2009), a single member Panel was faced with a dispute over the domain www.guinnessclaim.com. Complainant is the well dark beer GUINNESS. It owns multiple trademark registrations across the globe and maintains a web site at www.guinness.com. The disputed domain was registered in September 2008. Complainant contended it was used for scam email messages, which included telling recipients they had won a prize. Respondent failed to respond to the Complaint.

Paragraph 4(a) of the Policy requires that Complainant must prove all of the following: (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 provided a very short decision. First the Panel found that Complainant satisfied the first element, noting the disputed domain contained all of Complainant’s mark with the addition of the non-distinctive term “claim” at the end.

The Panel next addressed the second element, of rights or legitimate interests. The Panel found that Complainant met its prima fcie burden by alleging the following:

Respondent owns no trademark or trade name registrations for the disputed domain name; is not commonly known by the name; has not used the domain name in a manner that would provide Respondent with rights to the domain name; and is not licensed or authorized by Complainant to use Complainant’s GUINNESS marks. Complainant further alleges that Respondent’s use of the disputed domain name in association with a scam e-mail scheme is intended “to make the receivers think that the email comes from the Complainant or at least someone related to the Complainant” and that Respondent profits from this illegitimate confusion.

The Panel found that since the domain was held passively and used for an email scam all inferences were drawn in favor of Complainant. Since Respondent failed to respond, the Panel found the Complainant proved up the second element.

Moving to the final element, bad faith, the Panel noted that the registration of the domain was long after Complainant established its rights in the mark GUINNESS. The Panel found that the use of the domain for an email scam was bad faith and was done with actual knowledge of the mark in an effort to profit from confusion.

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

In the recent domain name dispute decision of Pfizer Inc. v. Igor Shorop FA1266024 (Nat. Arb. Forum July 15, 2009) a single member Panel was faced with a dispute over the domain www.viagra.us. Phizer is the famous pharmaceutical company who markets and sells well-known erection pill VIAGRA. Complainant maintains web sites at www.pfizer.com and www.viagra.com. Respondent failed to respond to the dispute.

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; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered or is being used in bad faith

In addressing the first element the Panel explained “The disputed domain name contains Complainant’s VIAGRA mark in its entirety with the addition of the country-code top-level domain (“ccTLD”) “.us.”  The Panel concludes that the addition of the ccTLD is insignificant, rendering Respondent’s <viagra.us> domain name identical to Complainant’s VIAGRA mark under Policy ¶ 4(a)(I).” The Panel found that Pfizer satisfied the first element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel noted that Respondent’s failure to respond raises a presumption of lacking such rights. There was no evidence that Respondent owned any trademark rights or was commonly known by the disputed domain. Additionally the Panel found:

The disputed domain name resolves to a website featuring click-through links and advertisements, which divert Internet users to the websites of Complainant’s competitors.  The Panel presumes that Respondent is generating revenue from such use and therefore finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv), respectively.

 Moving to the final element, the Panel found that Respondent’s use of click-through fee links was evidence of bad faith. Additionally the Panel found that since the domain name was identical this was also evidence of bad faith.  

 Ultimately, the Panel found Phizer satisfied all three elements and ordered the TRANSFER of the disputed domain.

In the recent domain name dispute of F. Hoffmann-La Roche AG v. Protected Domain Services/MediaTec Co.Ltd., Sandro Zeller (WIPO D2009-0635, July 1, 2009) a single member Panel was faced with a dispute over the domain www.tamiflu75.com. Respondent is the well known manufacturer of the medical treatment TAMIFLU. Considering the onset of swine flu, it is only appropriate that this case was recently decided. Respondent maintains a web site promoting the product at www.tamiflu.com.

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

In addressing the elements the Panel provided a quick and short review. The Panel found that the domain included all of Respondent’s mark TAMIFLU with the additional number “75″ added at the end of the top level domain. The Panel explained that 75 is the common dosage amount of the medicine. The Panel found that Complainant satisfied this prong.

Moving to the second element, the Panel explained:

The Complainant has demonstrated that the website located at the Disputed Domain Name used to display information and links to services competing with those of the Complainant. The Panel does not find such use of the Disputed Domain Name to be bona fide in the context of paragraph 4(a)(i) of the Policy in this case.

The Panel found that Complainant satisfied this element as well. Moving to the final element, bad faith the Panel found that Respondent was using the domain to mislead and confuse Internet users to competing Internet site links, which included the use of the packaging of Complainant’s TAMIFLU product.

Ultimately, the Panel found that Complainant satisfied all three elements and ordered to TRANSFER the domain.

In the recent domain dispute decision of Sigourney Weaver v. Stephen Gregory a/k/a ‘THIS DOMAIN NAME IS FOR SALE’ (Nat. Arb. Forum 1256394, May 22, 2009) a three member Panel was faced with a dispute over www.sigourneyweaver.com. We all know who Sigourney Weaver is, so we won’t waste time with her list of credits. (Although she deserves an extra nod of appreciation for the Alien movies) Respondent, purportedly located in the Philippines, registered the disputed domain in 1999, nearly 20 years after her emergence in the entertainment world. Weaver argued that the disputed domain was being used to automatically forward to a pornographic web site located at www.clubpink.com which then takes the user to www.nymphogirls.com. Weaver also argued that Respondent was using the domain to sell it for profit, based upon the Whois information which stated “Stephen Gregory ‘THIS DOMAIN NAME IS FOR SALE.’”

Under the ICANN UDRP policy Complainant must prove (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 Weaver did not have a federal registration for her name and thus reviewed the evidence to determine if she possessed common law rights. The Panel found that her career has made her sufficiently famous and that she demonstrated secondary meaning to establish common law rights. Thus the Panel found that the domain was identical to Weaver’s rights in the mark.

Moving to the second element, the Panel noted that Weaver made a prima facie case that Respondent lack any rights or legitimate interests. This was based on the fact that Respondent was not commonly known by the disputed domain name, as stated earlier regarding the Whois information. Additionally, since the domain was being linked to pornographic material, this use was not in connection with a bona fide offering of goods and services. The Panel noted that Respondent stopped the forwarding to the pron web sites after receiving a cease and desist from Complainant. Lastly, the Panel found that since Respondent was offering to sell the domain this showed a lack of legitimate rights or interests in the domain.

Moving to the final element, bad faith, the Panel noted that Respondent had been involved in numerous prior analogous UDRP proceedings and that he engaged in a pattern of bad faith registration and use. Additionally, the Panel noted that the pornographic nature of the redirected web site also satisfied the bad faith element.

Ultimately, the Panel ruled to TRANSFER the disputed domain.

In a recent domain dispute decision of MagicJack LP v. Neil Adams 1258600 (Nat. Arb. Forum June 11, 2009), a single member Panel was faced with a dispute over the domain www.canadianmagicjack.com. Complainant sells the popular MAGICJACK voice over Internet protocol (VOIP) device which permits customers to make and receive calls through an Internet connection. The MAGICJACK product has been marketed and sold since at least March 2008 and they maintain a web site at www.magicjack.com. Complainant has a federally registered trademark for MAGICJACK. Respondent registered the disputed domain on August 1, 2008. Complainant contends that Respondent’s domain offers telephone service identical to its own service, including International local phone numbers that can be forwarded to existing U.S. Magic Jack numbers. Complainant also argues that Respondent sent MagicJack’s CEO an email taunting them and admitting that Respondent crossed into the U.S. border to purchase and resell Complainant’s device in Canada. Respondent claimed that since Complainant had only applied for a trademark application as of May 13, 2008, that Respondent had prior Canadian rights since it was in business as of April 30, 2008.

A review of the three ICANN UDRP policies requires a Complainant to prove (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 explained that merely adding the geographic term “Canadian” was not a significant alteration to result in a distinguishable domain. The Panel found that the domain contained all of Complainant’s mark and determined that Complainant therefore satisfied this element.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel found that Complainant made a prima facie case and thus shifted the burden of proof to the Respondent. The Panel explained that Respondent failed to show it had any rights or legitimate interests and used the domain knowing of Complainant’s rights. The Panel further found Respondent used the domain to draw Internet traffic to advertise competing goods and services. Additionally Respondent was not commonly known by the disputed domain according to the WHOIS records. Lastly, the Panel addressed Respondent’s Canadian trademark application priority theory and explained:

Respondent asserts its registration of the disputed domain name predates Complainant’s rights in the mark because Complainant’s application with the Canadian Intellectual Property Office (“CIPO”) for its MAGICJACK mark has yet to be granted registration.  The Panel notes, however, that Complainant has provided evidence of the June 10, 2008 USPTO registration of its MAGICJACK mark, prior to Respondent’s registration of the disputed domain name.  The Panel chooses to dismiss Respondent’s argument here. 

Moving to the final element, the Panel found that using the domain to compete with Complainant’s business was evidence of bad faith. Additionally, the use of the domain would create a likelihood of confusion pursuant to ¶4(b)(iv) of the Policy. Ultimately, the Panel found that Complainant satisfied all of the elements, and agreed to TRANSFER the disputed domain.

(UPDATE 7/20/09): Subsequent to the UDRP decision reported above, we were informed by Respondent that it filed a Canadian law suit to block the Panel’s order transferring the domain. The outcome of this dispute remains uncertain, but as of this posting Respondent continues to control the domain.

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.

In the recent decision of Futuredontics Inc. v. 1-800 Domain Names, LLC (WIPO D2009-0296, May 31, 2009) a single member Panel was faced with a dispute over the domain www.1-800-dentist.com. Complainant operates a dentist referral and information business since 1985, and maintains a web site at www.1800dentist.com. Complainant has trademark registrations for “1-800-DENTIST” and “1800DENTIST” in connection with those services. Respondent did not answer the Complaint.

The Panel noted that paragraph 4(a) of the Policy directs that Complainant must prove each of the following: 1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and 2) that Respondent has no rights or legitimate interests in respect of the domain name; and 3) that the domain name has been registered and used in bad faith.

In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel simply found the domain to be identical or confusingly similar without any additional factual support or explanation. Instead the Panel just cited numerous prior domain dispute decisions as support.

Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Respondent failed to challenge or argue for his rights, was not commonly known by the disputed domain, and had not acquired any trademark rights. As a result, the Panel found Complainant satisfied this element.

The Panel spent most of the decision discussing the final element, whether the disputed domain was registered and used in bad faith. The Panel explained:

There is also proof in the record that Respondent may have provided false or misleading information in connection with the registration of the domain name <1-800-dentist.com>, which is a further indicia of bad faith. There is also proof in the record that Respondent has falsely linked the website to which the domain name <1-800-dentist.com> resolves to alternating websites, both of which falsely imply some connection between that website and the services of Complainant. This is bad faith. The record suggests that on certain days Respondent causes the website to direct consumers to Complainant’s website, while on other days Respondent will divert consumers to different websites not related to Complainant. It appears that even when Respondent directs consumers to Complainant’s website, Respondent provides advertising for businesses not associated with Complainant. Respondent’s registration of the domain name, and the use of that domain name in this fashion, prevents Complainant from fully controlling the commercial use of its trademarks and more particularly the domain name which is identical or substantially similar to Complainant’s registered trademarks. This is bad faith.

Ultimately, the Panel found that Complainant proved all three ICANN UDRP elements and agreed to TRANSFER the disputed domain.

In the recent decision of William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception (Nat. Arb Forum 1256123, June 1, 2009), a single member panel was faced with a dispute over three domains: www.williamclinton.com, www.williamjclinton.com and www.presidentbillclinton.com. This very interesting case provides an insight into the potentially arbitrary nature of the non-binding UDRP arbitration system and the application of the three element ICANN UDRP test for domain disputes. Complainant needs no introduction, so some background on Respondent is helpful. The Panel summarized Respondent’s Additional Submission arguments, as follows:

Respondents timely Additional Submission first focuses on the issue of common law marks, arguing that most of the famous person common law mark opinions are defaults.  As to bad faith, Respondent notes that he has never acted in bad faith.  When requested, for example, [Respondent] surrendered domain names to the United States Government.  Respondent also states that he registered domain names of famous persons in part to make a point concerning the ease of registration of such domain names.  He further notes that he has never sold a politician’s domain name.  He also states that he has worked with Senator Hatch and others to promote the idea that some domain names deserve protection under the federal statutes, including the names of famous places and politicians.

The Panel began its analysis of the case by “reluctantly” [actual words used by Panel] finding that Clinton had established a common law mark in his name. Interestingly, the Panel felt obliged to also note that he is “partially responsible for the problems created by allowing common law marks in personal names, having been the Panelist that wrote Mick Jagger v. Denny Hammerton, FA7000095261 (Nat. Arb. Forum Sept. 11, 2000).”

In addressing the first prong, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel went through a more detailed analysis of applying the common law mark theory. Regarding one of the disputed domains, the Panel noted, “The addition of the term “president,” or the use of an abbreviated version of Complainant’s mark in a disputed domain name creates a confusing similarity between the disputed domain name and Complainant’s mark.” Ultimately, the Panel found Complainant President Clinton had satisfied this element.

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

Complainant has shown that Respondent is not commonly known by the disputed domain names.  Complainant states that Respondent is known as “web of deception,” which is also how Respondent is identified in the WHOIS information.  Complainant also claims that Respondent is not affiliated in any way with Complainant.  Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 

The Panel went further to make the following findings:

Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Respondent’s rebuttal fails.  Respondent’s disputed domain names resolve to an official website related to the Republican Party, which is the party in direct opposition to the political party Complainant endorses.  Such use of the disputed domain names does not equate to a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 

The Panel found that Clinton had satisfied the second prong and moved to the third prong, whether Respondent registered and used the domain in bad faith. This is where the Panel took some serious liberties in applying the UDRP policy.

However, the Panelist cannot find that Respondent’s registration and subsequent use of the disputed domain names to resolve to a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent is allegedly using the disputed domain names in order to intentionally attract Internet users to an opposing website by creating confusion among Internet users who are seeking Complainant’s WILLIAM CLINTON mark.  Allegedly, the disputed domain names resolve to the official Republican party website in direct competition with Complainant, giving the impression Complainant is affiliated with its political competitor.  The Panelist declines to find that this is a violation of Policy ¶ 4(b)(iv) and is not bad faith registration and use….Links to the Republican National Committee website are simply not within the scope of this Policy.

As a result the Panel found that Clinton had not established bad faith and therefore DENIED the request for transfer.

DefendMyDomain Commentary: We are unsure how the Panel can square the second and third prong in light of the evidence and the finding that Respondent “use[s] the disputed domain names in order to intentionally attract Internet users to an opposing web site by creating confusion.” Since the domain was owned by “Web of Deception” and was being redirected to a Republican National Committee website, it seems clear that bad faith existed. Additionally, Respondent’s own arguments were that his reason for ownership was to show the ease of registration of such famous person domain names and was trying to promote the idea of protection under the federal statutes. One should ask whether Respondent’s use of the domain falls squarely within section 4(b)(iv) of the UDRP policy which discusses instances of evidence of bad faith and states “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” One should also ask whether Respondent’s admissions fit into section 4(b)(ii), which states “(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.” This single Panelist decision teaches us that for important domains, three member Panels may provide different results.

In the recent decision of Schur International A/S v. Jorge Massa (WIPO D2009-0450, May 25, 2009), a single member Panel was faced with a dispute over www.drop-stop.com. Complainant, is a Danish company which markets a wine pouring device to prevent spilling. Complainant has trademark protection for the DROPSTOP mark in Australia, Canada, and also has a Community Trademark. Complainant maintains web sites for the product which include www.dropstop.com and www.dropstop.dk.

The Panel noted that although the domain was registered on March 14, 2005, users were redirected to another web site which “offered wine pourers similar to the ones offered on the Complainant’s websites.”

The Panel first began with the “identical or confusingly similar” prong of the ICANN UDRP three element test for domain disputes. The Panel noted that Complainant owned numerous trademarks and that the only difference between the domain and the mark was the addition of the hyphen. This insignificant change was not enough and the Panel found Complainant satisfied this prong.

The next element, whether Respondent had any rights or legitimate interests in the domains, was also quickly dealt with by the Panel. The Panel found that Complainant put forth a prima facie case in regards to this prong. Since Respondent did not reply to the dispute the analysis appears to end there, and the Panel found Complainant satisfied this element as well.

The last element, whether the domain was registered and used in bad faith, provided the most amount of analysis by the Panel. The Panel noted:

It is suggestive of the Respondent’s bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain name. The Complainant submitted evidence, which shows that the Complainant’s trademark – DROPSTOP is registered in different territories around the world and is known in the wine business and that its trademark would be recognized publicly. The Complainant’s DROPSTOP trademark was registered as early as 1992 in Australia (see Australian trademark registration No. B584204 – DROPSTOP (stylized) with the registration date of August 12, 1992). The Respondent registered the disputed domain name long after the Complainant registered its DROPSTOP trademarks….A review of the web site operating under the disputed domain name reveals it automatically leads consumers to another website – “http://tds.com.ar/drop-stop” – on which the consumers are offered wine pourers that are similar to the ones offered by the Complainant in the Complainant’s website under the name “Dropstop”. The Respondent’s use of the name “dropstop” to promote such similar wine pourers clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and the DROPSTOP trademark and product. Respondent’s actions constitute bad faith.

The Panel went further and explained:

In light of the Complainant’s distinctive registered trademark, the Panel finds that the registration of the disputed domain name in the name of the Respondent shows the Respondent intent to operate a web site offering similar goods and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either the source of the Complainant goods or associate the Respondent with the Complainant. The use of the Complainants distinctive trademark for quasi identical goods constitute bad faith on behalf of the Respondent.

Ultimately, the Panel found Complainant satisfied all three elements and agreed to TRANSFER the domain.

In the recent decision of Research in Motion Limited v. Georges Elias (WIPO D2009-0218, April 27, 2009), a single member panel was faced with a dispute over 111 (that’s not a typo) domains. Research in Motion (herein “RIM”) is the company most famously known for bringing us the BLACKBERRY cell phones and personal communication devices. RIM maintains two web sites at www.blackberry.com and www.shopblackberry.com. RIM claimed rights to the term BLACKBERRY and to the term BERRY.

Essentially, the Panel found that 101 of the domains met the three elements for ICANN UDRP domain disputes. Under paragraph 4(a) of the Policy, to succeed the Complainant must prove all of the following: (i) the disputed domain names are 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 names; and (iii) the disputed domain names were registered and are being used in bad faith.

In this case, the Panel determined that 10 of the domains did not satisfy the elements and made the following observations:

 For a minority of the disputed domain names (e.g. <copberry.com>), there is a more difficult issue of confusing similarity with the Complainant’s weaker BERRY mark. In these cases, the Panel considers that it would only be possible to find confusing similarity if the Respondent’s intent was determinative. For the reasons discussed further below, the Panel considers that the Complainant’s BERRY mark is insufficiently distinctive in the context of the domain names, and the disputed domain names therefore insufficiently similar on an objective comparison, for the Respondent’s intention to tip the balance.

Essentially, a close look at the domains which were not transferred show that they contained just the word “berry” with some other word, but lacked the prefix “black.” For a full listing of the domains transferred, please see a copy of the decision here.