In the recent decision of Rotobrush International LLC v. Vacbrush a/k/a Ming Liu (FA 1253370, Nat. Arb. Forum May 8, 2009) through the National Arbitration Forum, a single member panel was faced with a dispute over four domains which included www.real-rotobrush.com, www.used-rotobrush.com, www.rotobrush-online.com, and www.rotobrush.org. Complainant, Rotobrush is in the business of manufacturing and distribution of air duct cleaning systems. They maintain a website at www.rotobrush.com. Rotobrush has a trademark for ROTOBRUSH, (Reg. No. 2,021,581) in connection with those goods since at least 1996.  Respondent registered the disputed domains in July and August of 2008. The Respondent did not mount a defense or respond in any manner to the complaint.

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

The Panel began its analysis with the first prong, namely, whether the domain is identical or confusingly similar to the Complainant’s mark. The Panel found that all of the disputed domains contained Complainant’s entire ROTOBRUSH mark, even though some of them included generic terms such as real, used, or online in addition to the full domain name. Regardless, the Panel found that Complainant satisfied this element.

The second element, whether the Respondent had any rights or legitimate interest in the domains, was not such a clear path for Complainant. The Panel noted that Complainant must initially make a prima facie case, and if established the burden of proof shifts to the Respondent. The Panel stated:

Complainant has failed to allege any facts whatever in support of its bald assertion that Respondent lacks rights to or legitimate interests in the disputed domain names, including as to the specifics of Respondent’s use or nonuse of the domain names.  Thus we are forced to conclude that Complainant has failed to make out a prima facie showing under Policy ¶ (a)(ii). 

As a result, the Panel found that Complainant failed to prove up its second element. Although a Complainant must prove up all three elements, the Panel still decided to analyze the final prong, whether or not the domains were registered and used in bad faith. The Panel made the additional observations and findings:

Complainant has failed to allege any facts to establish that Respondent’s registration and use of any of the domain names here in issue was or is in bad faith.  The mere assertion of bad faith without any supporting evidence is insufficient to justify a finding of bad faith registration and use of contested domain names under Policy ¶ 4(a)(iii).

Ultimately, the Complainant failed to satisfy the three elements of proof necessary for a UDRP case and the Panel DENIED the request for transfer.

DefendMyDomain Commentary:
This case illustrates that the Complainant must establish facts to support Respondent’s lack of legitimate interests and facts to support Respondent’s bad faith. Raw, unsupported legal conclusions, which mimic the UDRP elements are insufficient to meet a Complainant’s burden of proof.

In the recent decision of FBomb Clothing c/o Joel Jordan v. Domainly.com (Nat. Arb. Forum 1245522, March 16, 2009), a single member Panel was faced with a dispute over www.fbomb.com. Complainant has operated a sportswear clothing company for extreme outdoor sports since late 2002. Complainant claimed to mistakenly let the domain registration lapse after forgetting to pay the renewal fees. Complainant contends that Respondent immediately registered the disputed domain upon its lapse and parked the page with an offer for sale. Complainant and Respondent then entered into some negotiations to purchase the domain back. Those negotiations fell apart after Respondent demanded additional funds.

UDRP Panels are required to analyze each case by reviewing a three prong element test which includes proving that (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 first made some initial findings, which included the following:

Complainant has submitted as evidence of its use of the FBOMB mark the following: its registration of its fictitious business name with the San Diego County Recorder; its California State Seller’s Permit; a sample manufacturer’s invoice; and screenshots of its website resolving from the <fbomb.com> domain name as they appeared in 2002 and 2008.  (These screenshots were provided by using the Way Back Maching from InternetArchive.org.)  Based upon this evidence of Complainant’s Internet-based business, the Panel concludes that Complainant has established sufficient secondary meaning the FBOMB mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i).

Based upon an establishment of trademark rights, the Panel reviewed the first prong and made a quick finding that Complainant had satisfied this element. The Panel Next addressed the second prong, whether the Respondent had any rights or legitimate interests in the domain and made the following observations:

Though Complainant does not argue such, the Panel finds that Respondent is not commonly known by the <fbomb.com> domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information identifies Respondent as “Domainly.com,” and Respondent has not asserted otherwise…. According to Complainant, Respondent has used the <fbomb.com> domain name solely to offer it for sale, first generally and later through an auction.  The Panel finds that Respondent has not used the <fbomb.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)….Respondent allegedly registered the <fbomb.com> domain name on that same day, and immediately began offering it for sale.  The Panel finds that this further evidences Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).

Determining that Respondent did not have any rights or legitimate interests in the domain, the Panel moved onto the last prong, whether Respondent registered the domain in bad faith. The Panel found that “Since Respondent has allegedly not used the <fbomb.com> domain name for any reason other than to offer it for sale, the Panel concludes that Respondent registered the <fbomb.com> domain name primarily for the purpose of selling it.” The Panel also noted that since the domain was immediately registered after it lapsed, this was further evidence that Respondent’s registration was in bad faith.

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

In the recent decision of National Cable Satellite Corporation d/b/a C-SPAN v. New Media Nexus c/o Lyle, Rumble (Nat. Arb. Forum 1236010, January 26, 2009), a single member panel was faced with a dispute over 91 (that’s not a typo folks!) domains. (For a full listing of the disputed domains please click here).  National Cable Satellite Corporation (“NCSC”) is a nonprofit corporation which owns and operates C-SPAN, the well known producers of public affairs television. NCSC has used the C-SPAN mark since 1979 and maintains its main internet presence at www.c-span.org. NCSC also holds trademarks for other variations of C-SPAN including C-SPAN 2 and C-SPAN 3. NCSC contends that Respondent registered numerous domains which were identical to its marks, or which included the addition of words like book, video, TV and watch, to those marks contained in the domain address.

Respondent claims to be the Managing Editor and Publisher of Sky and Space Magazine, which maintains a domain at www.SkyandSpace.com.au. Respondent also claims to operate a domain business with about 4,000 domains. Respondent’s justification for the registration of the disputed domains was that he wanted to establish a new marketing and sales network names Cyber Space Astro Network (CSPAN). Respondent argued that his trademark search revealed that the CSPAN mark had been abandoned in 2002.

The Panel reviewed the arguments presented by each side and used the three part test to determine whether the domains should be transferred. First, the Panel discussed whether the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The panel explained that Complainant had rights to the marks C-SPAN, C-SPAN 2 and C-SPAN 3 and that Respondent’s addition of a letter, symbol or generic top-level domain such as “.com” was insufficient to distinguish the domains from the C-SPAN marks. The Panel found Complainant proved this element.

The Panel next reviewed whether the Respondent has any rights or legitimate interests in the domain names. The Panel found that Respondent was not commonly known by the disputed domains. Additionally the Panel noted that the domains redirected Internet users to web sites that offered unrelated services and that this redirection was not a bona fide offering of goods and services. The Panel determined that Complainant proved this element as well.

The Panel last reviewed whether the domain names have been registered and are being used in bad faith. First, the Panel noted that the bottom of the domains contained language asking a visitor to “make an offer” regarding the domain. Therefore, the Panel explained that the primary intent of the web site was to sell the domains. Further, the Panel found that since all 91 domains were registered on the same day, this established a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). The Panel explained that Respondent’s use of a privacy service and collection of money from click-through fees associated with the domains was further evidence of bad faith. Lastly the Panel noted that since Respondent admitted to completing a trademark and/or Internet search, Respondent could not have been unaware of Complainant, that is, Respondent must have discovered C-SPAN during his search.

Ultimately the Panel agreed to TRANSFER all 91 domains.

In the recent domain dispute Publix Asset Management Company v. (**Domain For Sale**) Momentum Technology Corp c/o Paul Barbell, (Nat. Arb. Forum 1238082 January 21, 2009), a single member panel was faced with a determination over www.publix.net. Publix offers grocery store services throughout the state of Florida. It owns a trademark registration for the mark PUBLIX, (Reg. No. 1,339,762 registered June 4, 1985). Publix also mainatins a website located at www.publix.com.

The panel reviewed the three elements of domain disputes, despite the lack of response by Respondent. First the panel reviewed whether the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The panel noted that the addition of “.net” failed to distinguish the domain from Complainant’s mark, therefore finding that this element was satisfied.

Next the panel addressed whether Respondent had any rights or legitimate interests in respect of the domain name. Since Respondent failed to respond, the panel could assume that there are no rights or legitimate interests, however, the panel opted instead to review the evidence submitted by Complainant. The Panel made the following observations:

Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names using the PUBLIX mark.  Respondent’s WHOIS information lists Respondent as “Paul Barbell (**Domain For Sale**) Momentum Technology Corp,” thus providing no affirmative evidence that Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii)….
 
Complainant provides evidence and argues that Respondent’s use of the disputed domain name is both commercial and competitive with Complainant.  Respondent’s <publix.net> domain name resolves to a website offering grocery store services in direct competition with Complainant.  The Panel finds that Respondent’s use of the disputed domain name is neither 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)…. 
 
In addition, the Panel finds that Respondent lacks rights and legitimate interests in the <publix.net> domain name pursuant to Policy ¶ 4(a)(ii) due to Respondent’s WHOIS information explicitly showing that the disputed domain name is for sale….

As such, the panel found this “no legitimate interest” element was satisfied as well. The panel finally moved to the last element, whether the domain name has been registered and is being used in bad faith. Here again the panel noted that since the domain was being presented for sale is also evidence of bad faith. The panel further explained:

The Panel finds that Respondent’s registration and use of the disputed domain name to operate 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’s use of the disputed domain name in order to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s PUBLIX mark and offering products and services in direct competition with Complainant is further evidence of bad faith.  Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use.

Ultimately, the panel found that all three elements had been satisfied and ruled to TRANSFER the disputed domain.

In the recent decision of Larry Flynt and LFP Casino IP and LFP Internet Group LLC v. Valery Nikiforov (Nat. Arb. Forum 1225389, November 24, 2008), a single member panel was faced with a dispute over www.laryflynt.com. For those of you who aren’t aware, he is the well known publisher of Hustler Magazine since the 1970′s. The decision explained that he does not own a trademark registration for his name but does offer a blog available at www.larryflynt.com, offers his main business at www.hustler.com and has several other registrations which incorporate his name.    

In examining the three part test provided by ICANN under the UDRP, the Panel first reviewed whether the domain was identical of confusingly similar. The Panel correctly noted though that the Complainant must first show that it has rights to the mark included in the disputed domain. “As Complainant has been famous since the early 1970s as the publisher of Hustler Magazine and as the subject of the movie The People versus Larry Flynt, the Panel finds that Complainant has common law rights to the LARRY FLYNT mark pursuant to Policy ¶ 4(a)(i)…In addition, the fact that Complainant has registered other marks that include the LARRY FLYNT mark suggest that Complainant has an interest and rights in the mark.”

The Panel then was required to assess whether the disputed domain was identical or confusingly similar. The Panel noted:

Respondent’s <laryflynt.com> domain name is confusingly similar to Complainant’s LARRY FLYNT mark because Respondent’s domain name incorporates the dominant features of Complainant’s mark, omitting one letter “r” and adding the generic top-level domain “.com.”  The Panel finds that such a minor misspelling and the addition of a generic top-level domain does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). 

The Panel found that the disputed domain was identical or confusingly similar and thus moved onto the next part of the test, namely whether the Respondent had any rights or legitimate interests in the domain. The Panel noted that the initial burden is on the Complainant but once a prima facie case is shown that burden shifts to the Respondent. The panel explained that since the Respondent did not respond to the complaint, a presumption is applied that Respondent has no rights or legitimate interests. However, the Panel went further and stated:

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <laryflynt.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the LARRY FLYNT mark, and the WHOIS information identifies Respondent as “Valery Nikiforov.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii)….Respondent is using the <laryflynt.com> domain name to resolve to an adult entertainment website not affiliated with Complainant’s business.  Respondent’s use of a domain name that is confusingly similar to Complainant’s LARRY FLYNT mark to redirect Internet users to a competing website is not a bona fide offering of goods or services under Policy ¶ (4)(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

The Panel found in favor of Complainant on the second prong as well and moved onto the last part of the test, namely, whether the Respondent registered and used the domain in bad faith. The Panel explained:

Respondent’s use of Complainant’s LARRY FLYNT mark in the <laryflynt.com> domain name to redirect Internet users to competing adult-entertainment sites suggests that Respondent registered the disputed domain name intending to disrupt Complainant’s business.  The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii)…Under Policy ¶ 4(b)(iv), Respondent is acting in bad faith when using a confusingly similar domain name to attract Internet users for commercial gain.  In this case, Respondent is using the <laryflynt.com> domain name to attract users to an adult-orientated website in competition to Complainant’s business.  The Panel infers that Respondent is after commercial gain through advertisements which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  The Panel finds that the disputed domain name is capable of creating a likelihood of confusion with Complainant’s mark and that Respondent has sought to profit from this confusion through click-through fees. 

Ultimately the Panel ruled in favor of Complainant and agreed to TRANSFER the disputed domain.

In the recent decision of The American Automobile Association, Inc. v. Zag Media Corp. C/o Whois Privacy Services (Nat. Arb. Forum 1226952, November 13, 2008), a single member Panel was faced with a dispute over www.aaacars.com. Complainant is the owner of the trademark AAA with rights dating back to 1903 for automobile association services rendered to motor vehicles, motorists and travelers. Complainant owns and operates several domains including www.aaa.com, www.aaaautos.com, www.aaaautobuyer.com, www.aaaautosales.com, www.aaacarprices.com, and www.aaausedautos.com.

The identity of Respondent was not as clear. Zag Media Corp. is a “proxy service” whereby it registers domain names in its own name on behalf of its customers. Zag Media then used a privacy service to hide the publication of the Registrant data. Complainant contends that the disputed web site resolved to a parked page with sponsored links which generate click-through revenue for the domain owner. Respondent, Zag Media attempted to distinguish itself from the actual customer/domain owner, but refused to identify who that customer was. However, Respondent explains that the customer/domain owner had plans to develop the domain for high quality used car auctions.

In reviewing the procedural issue of who the proper Respondent was, the Panel found Zag Media was the proper party, since they were listed in the Whois registration information. The Panel then  reviewed the three prong test set up in accordance with ICANN/UDRP policies. The Panel found that the domain was confusingly similar to Complainant’s mark, noting that the additional word “cars” to the “aaa” evokes Complainant’s automobile and travel related services and products.

Moving onto the next prong, whether or not the Respondent had any rights or legitimate interests, the Panel made an interesting observation:

In seeking to demonstrate that it has rights or legitimate interests in the disputed domain name, Respondent, Zag Media Corp. c/o Whois Privacy Services, finds itself in a dilemma. On the one hand, it registered the domain name in its own name, acting as a privacy shield on behalf of the person or entity which it calls the “domain owner.” As agent, Respondent has neither rights nor legitimate interests in the domain name of the kind that are relevant in this proceeding. Any such rights or interests belong to the unidentified principal on whose behalf Respondent acted in registering the domain name. Respondent’s rights or interests as registrant consequent upon mere compliance with the requirements for registration are of no consequence in a proceeding under the Policy. On the other hand, Respondent seeks to argue that the “domain owner,” whose identity it has studiously failed to disclose, has rights or legitimate interests in the domain name by reason of its plans to use and its actual use of the domain name prior to notice of this dispute. However, the only rights and interests that are relevant in this proceeding are those of Respondent, being the registrant of the domain name at the time of the filing of the Complaint. For this reason alone, the Panel finds that Respondent has failed to discharge the shifted onus and that Complainant has established this element of its case.

The Panel then moved onto the last prong, whether or not the domain was registered and used in bad faith. The Panel explained that despite Respondent’s assertion that it was just an agent of the real domain owner, that an agent is still liable of an undisclosed principal. However, the Panel noted that Respondent’s customer/domain owner, was more likely than not to have had actual knowledge of Complainant’s AAA trademark, creating a finding of bad faith. The Panel went further explaining other reasons for a finding of bad faith:

Although proxy registration is not necessarily a sign of illegitimate purpose, the concealment provided by proxy registration can be indicative of bad faith registration and use and can be abused by cybersquatters. Whether the purpose of the customer in using a proxy service be innocent or guilty, for the actual registrant (the proxy service provider) to conceal the identity of its customer in the face of a UDRP complaint, as Respondent has done here, is to obstruct the UDRP system. In this Panel’s opinion, such concealment amounts to bad faith on the part of the proxy service provider.

Ultimately, the Panel granted the TRANSFER of the domain.

In the recent National Arbitration Forum case of Bank of America Corporation v. [Registrant] (Nat. Arb. Forum 1226147, November 7, 2008), the UDRP Panel was presented with a dispute over the domain www.uscapitaltrust.com. Bank of America is in the business of banking, fiduciary, and investment management services, and claims ownership to three separate trademarks related to the instant dispute which included UNITED STATES TRUST COMPANY with rights dating back to 1853, UNITED STATES TRUST with rights relating back to 1964 and U.S. TRUST with rights relating back to 1976. Bank of America also claims to maintain a domain at www.ustrust.com. 

The Respondent, who was never identified by name, was represented by counsel, and claims to be known as US Capital Trust. Some of the arguments presented by each side included a debate over whether or not line of business for each party was similar enough to create confusion. Respondent claimed that although both businesses were in the financial services industry, there was a distinction among the actual businesses. Specifically, Respondent alleges that it is in the business of providing financing for the purchase of buses. However, the Panel points out that Respondent’s answer quoted a citation from its own website from 2007 (the web site was supposedly changed upon notification of the dispute), which stated:

US Capital Trust is a leading private equity and venture capital firm committed to empowering entrepreneurs to build innovative and industry leading businesses.  US Capital Trust is a focused effort to develop world class business in a wide variety of fields.  US Capital Trust invests in companies independent of size or stage of growth.  We leverage our experiences, industry expertise and contracts to guide talented entrepreneurs to market success.

Bank of America claimed that the 2007 web site by Respondent offered private equity and venture capital services, which was in direct competition with Bank of America. The Respondent also attempted to claim that the addition of the word CAPITAL created a distinct domain which was not confusing.

The Panel in addressing the three factors in UDRP proceedings explained that the first prong, whether or not the domain was identical or confusingly similar to Complainant’s mark, was satisfied. The Panel explained:

But it cannot be denied that the word “capital” is closely related to “wealth” and “money”, and that, in turn, those words are closely related to the word “trust” as used in the Complainant’s mark (that is, a “trust fund”). Given the common use of the words, the term “capital”, in context, must be considered to be a generic term.  Its addition to the mark US TRUST does not create a domain name that is distinctive from the mark.

The Panel cited previous decisions for the proposition that the line of business of both parties is not relevant for this element of the policy, and applied that concept to the facts in this case.

Turning to the second prong of the policy, whether or not the respondent had any rights or legitimate interests in the domain, the Panel found that the Respondent did not create a bona fide offerings of goods or services based upon the 2007 description. As a result the Panel found this factor favored Complainant as well.

Lastly, the Panel reviewed the third prong, whether or not the domain was registered and used in bad faith. The Panel noted:

As the Complainant correctly points out, the description that the Respondent gives of its business on the 2007 version of its website does not correspond to the description given to the Panel.  On the 2007 version of the website, the Respondent claims to provide a broad range of financial services to entrepreneurs.  In its Response and in its Additional Submission to this Panel, the Respondent states that its main business is to provide financing for the purchase of buses (motor vehicles). On the basis of the evidence submitted by the Respondent, the Panel accepts that an accurate description of the Respondent’s business is that it provides financing for the purchase of buses.   As a consequence, the Panel finds that the description provided on the 2007 version of the web site is misleading.

The Panel went further and noted, “the Panel finds that the most likely explanation for the misleading description given in the 2007 version of the website was to attract users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark, in violation of 4(b)(iv) of the Policy.” Additionally, the Panel found that the anonymous registration information placed on the WHOIS data for the disputed domain was a element that reinforced the determination of bad faith.

Ultimately the Panel ruled that the domain be TRANSFERRED.
          
Defend My Domain Commentary: The Panel’s finding that the line of business is irrelevant, is contrary to basic trademark law principles. Typically, under trademark law, the test to determine confusing similarity includes an analysis of the line of business associated with each mark.

In the recent case of Alliance Bernstein LP v. Texas International Property Associates (WIPO D2008-1230, October 12, 2008), another Panel found that Texas International Property Associates (TIPA) had violated the UDRP. The Complainant, Alliance Bernstein, “is one of the largest publicly traded global asset management firms in the world, with offices in 47 cities in 25 different countries, providing diversified, global investment management services to institutional, high net worth and retail clients worldwide, and managing billions of dollars.” The Complainant maintains its web site at www.alliancebernstein.com. The disputed domain was slightly changed as www.allaincebernstein.com. The Complainant owns approximately eight (8) trademark registrations incorporating the ALLIANCE BERNSTEIN mark. The Complainant’s trademark rights dated back to as early as August 1, 2002. The disputed domain was registered after the Complainant’s rights had been established.

 The Panel noted that TIPA, like it had attempted in many previous disputes, responded to the Complaint by stating that it agrees to the requested relief requested by the Complainant and consented to the entry of an order transferring the domain name. TIPA further requested, based on judicial economy, that the domain should be transferred immediately without entry of findings.

 The Panel did not grant all of TIPA’s wishes, and instead completed the UDRP analysis. The Panel explained that the disputed domain was identical or confusingly similar to the Complaint’s mark since it merely transposed two letters, and was a classic case of typosquatting. The Panel also found that TIPA lacked any rights or legitimate interests in the disputed domain since it was using the domain for links to thrid party vendors, some of which were in competition with the Complainant, for commercial gain from click-through revenues.

 The Panel also explored the last portion of the UDRP test, whether TIPA acted in bad faith. The Panel noted that Complainant has shown that TIPA is a serial cybersquatter. The Panel explained that other previous Panels had rejected TIPA’s request to forgo the analysis and discussion of the merits of the case and instead made findings relative to the three prongs of the UDRP. The Panel quoted the ealrier decision of Usborne Publishing Limited v. Texas International Property Associates, WIPO Case No. D2007-1913, which stated “If panels simply comply with respondents’ surrender when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate ‘cybersquatting’ conduct might be perpetuated.”

The Panel also quoted the decision of Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, which stated “Respondent appears to be engaged in a pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits. The Panel believes that a discussion of this pattern of conduct may be helpful to other Complainants and WIPO Panels….If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent’s failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants.”

Ultimately, the Panel GRANTED the request for Transfer and ended the decision with some commentary of its own: “The Panel finds it regrettable that the Policy and Rules do not include a provision for an award of costs and attorneys’ fees in such cases.”

In the recent case of Harry Winston, Inc. and Harry Winston S.A. v. Jennifer Katherman WIPO D2008-1267 (October 18, 2008), a Panel was presented with an interesting decision which covered numerous topics defenses not often raised by Respondents, which included fair use and parody. The Respondent registered the disputed domain, www.hairywinston.com on March 11, 2008, to purportedly run her business of retail sales of dog and cat supplies and accessories (for example: leashes, collars and toys). The Complainant is the well known Harry Winston, who owns the federally registered trademark HARRY WINSTON for jewelry, diamonds, and timepieces and operates a website at www.harrywinston.com.

Respondent acknowledges that the name was selected to make a playful use of the name of her dog, Winston, and that the name will bring to mind the Complainant. The Respondent contends that her use of the name is fair use by way of parody. The Respondent notes that “for the Panel to hold that she has no rights or legitimate interests in respect of the Domain Name, is tantamount to a finding of trade mark infringement, a finding that is outwith the scope of the Policy and the Panel’s competence.”

In addressing the three prong UDRP test, the Panel first addresses whether or not the domain name is identical or confusingly similar. The Respondent argues that anyone who simply views the site could not possibly believe that it is related in any way to the Complainant. However, as the Panel explained, “it is now well-established that the content of the Respondent’s website is an irrelevant factor when assessing confusing similarity under the first element of the Policy. The test is to be conducted by way of a side-by-side comparison of the Complainants’ trade mark and the Domain Name.” Therefore, the Panel found this factor in favor of the Complainant.

The Panel next briefly addressed the second prong, whether the Respondent had any rights or legitimate interests. The Respondent claims that she had a bonafide offering of goods and services prior to notification by the Complainant. However, the Panel explained that the potential for the dispute arose the moment she considered adopting the parody name, and thus she could not enjoy the benefit of the bona fide offering. Interestingly though, the Panel did not make a decision regarding the second prong, and instead explained that the third prong was determinative of the case.

The Panel appears to almost chastise the Complainant for their attempt to “adopt a scatter gun approach” regarding their contentions of bad faith. One of the Complainant s arguments is explained by the Panel as follows:

The Complainants then go on to contend that the commercial gain that the Respondent is hoping and expecting to derive from the Domain Name will be achieved by visitors visiting the Respondent’s website in the mistaken belief that, because of the confusing similarity of the Domain Name to the Complainants’ trade mark, the Respondent’s website is a site of or associated with the Complainants (paragraph 4(b)(iv) of the Policy). On arriving at the site, those visitors will appreciate their mistake, but insofar as any of those visitors may be interested in acquiring pet supplies and accessories, the Respondent will thereby have derived an unfair business opportunity, the unfairness lying in the deceit by which the Respondent has diverted the visitors to her site.

Interestingly though, the Panel explains that it is not their task to “attempt to assess whether the Respondent’s activities constitute infringement of the Complainant’s trade mark rights.”
The Respondent acknowledges that the Complainant’s name will come to mind among consumers, but believes it will not lead to confusion. The Panel agreed and explained:

In the view of the Panel, it is inconceivable that people of the sophistication of the Complainants’ clientele will believe that the Complainants could begin to countenance use of such a variant of their name for their business. Even if the Complainants were minded to consider brand extensions, it is most unlikely that Hairy Winston would feature as a candidate.

The Panel also examined the parody arguments, and apparently believed that in the domain context her usage was not bad faith in accordance with the UDRP. The Panel noted that it may constitute trademark infringement, but that is not within the Panel’s decision making powers. The Panel explained:

The Panel is satisfied that the Respondent’s intention in registering and using the Domain Name as she has was to parody the Complainants’ famous name and trade mark and that she was justified in believing that the parody would successfully differentiate the parody from the original such as to obviate any significant risk of confusion or deception. In such circumstances it would be perverse to categorise the Respondent’s intentions when she registered the Domain Name as bad faith intentions for the purposes of the Policy.

Ultimately, the Panel DENIED the request for transfer.

In the case of Jelique Products Inc. v. Cybarcafe, D2008-1255 (WIPO October 13, 2008), the WIPO panel was faced with a comparison of sexual products or ice cream. The disputed domain was www.tastytwist.com.  The Complainant, which operates its business at www.jelique.com, has a trademark for TASTY TWIST, related to products designed to enhance sexual performance and pleasure, specifically in class 3 for body creams and lotions. The Respondent, on the other hand, contended that the domain name was registered for an ice-cream related invention, claiming that his family has been in the ice-cream business since 1953.

The Panel review the three prong test for UDRP decisions and found that the disputed domain was in fat identical or confusingly similar to Complainant’s mark. Despite producing an email showing an intent regarding the domain and ice-cream development, the Panel did not find sufficient evidence to support a claim of rights or legitimate interests.

In the last factor of analysis the Panel reviewed whether the domain was registered and used in bad faith. The Panel acknowledges, albeit very skeptically, the facts presented in Respondent’s story. However, as the Panel notes, the story would have more weight if the Respondent’s hadn’t registered the domain in June 2006, while only appearing to have come up with the invention in January 2008. The Panel also found concern that none of the materials presented by Respondent, which were designed to support his assertion that his family was in the ice-cream business for 40 years, actually identified any of his family members by name.

Regardless, the Panel explained:

However, the fact is that it is for the Complainant to prove that the Respondent was targeting the Complainant when he registered the Domain Name, not for the Respondent to prove his innocence and there is nothing of sufficient weight before the Panel to justify the Panel drawing inferences adverse to the Respondent.

Ultimately, the Panel found in favor of the Respondent and DENIED the transfer of the domain.