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Posts Tagged ‘Beyond Policy Scope’

FORD Has A FIESTA With Domain Names

Thursday, October 21st, 2010

  

In the recent cybersquatting case of Ford Motor Company v. Boomerang Enterprises Inc., FA1344311 (Nat. Arb. Forum October 20, 2010) a single member Panel was faced with a dispute over the domains www.fiesta-armrest.com, www.fiesta-armrest.net, www.fiestaarmrest.com, www.fiestaarmrest.net, and www.fordfiestaarmrest.com. Ford is the well known longstanding car company which needs no introduction. Ford maintains a website at www.ford.com. Ford owns numerous trademark registrations for its FIESTA vehicle. Respondent is an official Ford approved vendor. Respondent claims that it registered and developed the domain names with Ford’s approval and encouragement. As a result Respondent sought to have this dispute not handled under the UDRP, noting that it was contractual and fell outside the purview of the UDRP. The Panel reviewed the information and disagreed with Respondent position regarding the coverage of the UDRP on the facts at issue.

Complainant claims that it has established the elements outlined by the UDRP, and that Respondent’s arguments about Complainant and Respondent’s relationship do not provide sufficient reason for the Panel not to decide the case. Complainant and Respondent have provided sufficient evidence for the Panel to properly decide the dispute under the UDRP, the Panel may thus proceed with the case and consider the contentions of Complainant and Respondent.

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

The Panel reviewed and applied the elements finding that Complaint satisfied all three. Of interesting note, the Panel reviews the concept of disclaimers in avoiding bad faith.

Complainant argues that a disclaimer posted on a website is too late to avoid confusion among Internet users. Complainant claims that Internet users are misdirected to Respondent’s website before seeing the disclaimer.  Therefore, Complainant contends that Respondent’s disclaimer does not mitigate Respondent’s bad faith registration and use of the disputed domain names. In view of the circumstances of the present case, the Panel finds accordingly that the disclaimer posted on Respondent’s website by Respondent is insufficient to prevent a finding of bad faith under Policy ¶ 4(a)(iii) since it does not prevent initial confusion and may be disregarded by Internet users. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”).

Ultimately, the Panel was not swayed by arguments presented by Respondent. Respondent did seek a finding of Reverse Domain Name Hijacking, which the Panel also rejected. The domains were ordered to be TRANSFERRED.

CONTENDER Boats Needs To Fish Somewhere Else

Wednesday, August 12th, 2009

contender

In the recent domain name dispute decision of Contender Boats, Inc. v. The Schmidt Group FA1271168 (Nat. Arb. Forum , August 11, 2009), a single member Panel was faced with a dispute over the domain www.contender.com. Complainant is the well known manufacturer of boats and maintains a web site at www.contenderfishingboats.com. Complainant has a federal trademark registration for the mark CONTENDER. The allegations presented by Complainant are relevant to the ultimate outcome of the case. Respondent failed to provide a response to this dispute.

On November 13, 2006, Complainant entered into a contract with Respondent for advertising services and website development.  Respondent registered the <contender.com> domain name under the name “The Schmidt Group,” and listed the Administrative Contact as “Ronald Schmidt” instead of its principal, Complainant, without the knowledge or authority of Complainant.  Respondent has ceased business in the website development industry, and Respondent is no longer employed as an independent contractor for Complainant.

In light of the arguments presented by Complainant, the Panel found this dispute was beyond the scope of the Policy and was instead a dispute over the terms and conduct of a business arrangement. The Panel cited to other prior decisions which made the same ruling. Summit Industries, Inc. v. Jardine Performance Exhaust Inc., D2001-1001 (WIPO Oct. 15, 2001), Nintendo of America Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000), Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007). For this reason the Panel DISMISSED the claim.

Local Nissan Dealership Finds No Buyer For Domain Dispute

Monday, August 10th, 2009

In the recent domain name dispute decision of Nissan of Fort Worth c/o Frank Figueredo, Jr. v. Thornhill Auto Group FA1270184 (Nat. Arb Forum, August 6, 2009), a single member Panel was faced with a dispute over the domain www.nissanoffortworth.com. Respondent did not respond to the Complaint.

Normally, under most domain disputes, a Panel reviews the three elements required under the Policy 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 opinion was short and did not address the merits of the dispute. Instead the dispute was DENIED and dismissed as being outside the scope of the UDRP Policy. The Facts of the case according to Complainant included (1) Complainant purchased the Nissan Dealership in Forth Worth, Texas from Respondent on October 1, 2008; (2) In the purchase agreement Respondent agreed to transfer all intellectual property and contract rights associated with the dealership to Complainant; and (3) Respondent had not turned over the domain.

“The Panel finds that this is a contractual issue that falls outside the scope of review under the UDRP and that such an issue must be resolved in a Court of competent jurisdiction.” The Panel cited several prior cases which held the same proposition. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005); Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007); Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006).

No Flowery Result For Amy’s Orchids

Monday, June 15th, 2009

In the recent decision of Amy’s Orchids v. EIC (WIPO D2009-0466, June 8, 2009) a single member Panel was faced with a dispute over four domains, www.amysorchids.com, www.amyorchid.com, www.amyorchids.com, and www.amysorchid.com. Complainant provides fresh orchids from Thailand and utilizes a main web site located at www.amysorchids.com. Respondent, EIC, is a web development company with a web site located at www.eic.net.

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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 explained some general background facts which proved to be very relevant to the decision. Complainant noted that they hired Respondent for web site design and that they transferred the registration of the domain to Respondent. Respondent noted that Complainant had an outstanding balance from work completed on the web site design and hosting services. Complainant claims to have terminated the agreement and Respondent refused to transfer the domains back.

The Panel reviewed the first element, whether the domain was identical or confusingly similar to Complainant’s mark. The Complainant has a federal trademark registration for AMY’S ORCHIDS since December 2008. The Panel found there was a presumption of ownership and validity in light of the registration and that the domains were either identical or were variations that were confusingly similar.

The Panel moved onto the second prong, whether Respondent had any rights or legitimate interests in the domains. Since Respondent claimed an unpaid balance and refused to re-convey the domains the Panel made the following observations and findings:

The Panel finds the dicta of Map Supply v. On-line Colour Graphics, FA0096332 persuasive: “The Respondent[‘s] argument does raise the interesting question whether an unpaid web designer once given control over a domain name by the client can retain it as a security for payment. In my view, this may be so. The law may recognize some sort of lien or charge against a domain name. To assert such a claim is to assert a legitimate interest. On that assumption, this could be a dispute to be decided by traditional means – as it would fall outside the scope of this tribunal.”  

As a result the Panel further explained “To conclusively decide whether Respondent has a legitimate interest, the question of whether a lien or charge against a domain name can be made in this circumstance must be answered. That determination is beyond the scope of this tribunal.”

Moving to the final prong, bad faith, the Panel noted that Complainant acknowledged giving permission to Respondent to become record owner and had not provided contrary evidence or arguments that the domains were being held in as a lien. Therefore the Panel found that Complainant failed to establish the second and third prong. Ultimately, the Panel DENIED transfer of the disputed domains.

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