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Posts Tagged ‘Bona Fide’

“Tata Massage” can keep its domain

Thursday, March 7th, 2013

In a recent domain name dispute over the domain, www.tatamassage.com, a single member Panel  denied a request to transfer. See Tata Sons Limited v. Tata Massage (WIPO Case No. D2012-2467 , March 4, 2013). Complainant Tata Sons Limited is a company established in 1917, with business activities from a predecessor dating back to 1868. The company includes approximately 100 major companies, 28 of which on are the stock exchange. Some of its companies include Tata Steel, Tata Motors, Tata Power, etc. Complainant owns many trade marks involving the words “TATA” in the U.S. and around the world. Complainant operates a domain at  www.TATA.com. The disputed domain was registered in 2011. Respondent provided a response and was represented internally.

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.

Regarding the first element, the Panel agreed that Complainant proved up rights to its marks. The Panel explained that “The disputed domain name is not identical to any of the Complainant’s trademarks as, even disregarding the “.com” extension, none of the Complainant’s trademarks include the alphabetical string “massage”. Even so, the disputed domain name is plainly confusingly similar to the Complainant’s trademarks.” Therefore, according to the Panel, the use of TATA in the domain was enough to satisfy ¶4(a)(i) of the Policy.

In addressing the second prong, the Panel noted “the Respondent claims that the massage services being promoted at the website to which the disputed domain name resolves are being provided by the wife of the individual disclosed in the WhoIs details for the disputed domain name and her nickname, or the name by which she is commonly known amongst her friends and family, is Tata.” To support this claim Respondent submitted exhibits showing reporters discussed visiting the services of Respondent and that the masseuse was introduced as Tata. The Panel also found it convincing that Respondent was operating a legitimate massage business, although explaining that a storefront is not required for the Policy.  Third, and hold the laughter please, the Panel found that the nature of massage services offered was different from anything covered by Complainant’s marks.  The decision provides no details, but simply states that the technique used is “face slapping.” Interestingly a review of the disputed domain explains the following “Face slapping is well known internationally and uses Thai wisdom to bring out your own beauty that is 100% chemical free. Most importantly nothing is forever and this is what you call natural beauty. Tata massage is unique beauty, and is a profession of true wisdom.”
Ultimately, the Panel found that Complainant was unable to satisfy ¶4(a)(ii) of the Policy. The Panel declined to review ¶4(a)(iii) of the Policy

As a result, the Panel DENIED Complaint’s request to transfer the disputed domain.

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.

SAP Shuts Down Job Posting Site

Tuesday, November 24th, 2009

         SAP-Logo

In the recent domain name dispute decision of SAP AG v. Harrison Barnes (WIPO D2009-1298, November 18, 2009), a single member Panel was faced with a dispute over the domain www.sapcrossing.com. Complainant, SAP, is a global provider of business software and maintains a web site at www.sap.com. SAP claims to own over 600 domains with the SAP mark incorporated therein. Respondent, claims to run a job posting web site with industry specific jobs for each site. Respondent claims to have over 140 web sites with each being industry specific and adding the suffix “crossing” at the end of the domain. It appears as though Respondent’s main web site is www.employmentcrossing.com. Respondent registered the disputed domain in October 2007.

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 SAP proved it was the owner of trademark rights in SAP and was a recognizable source of IT related services throughout the world. The Panel concluded that the use of a well known trademark, namely SAP, with the descriptive term “crossing” was confusingly similar to Complainant’s mark.

Moving to the second element, Respondent argued that he was offering bona fide services to job seekers. The Panel explained:

There is no doubt that Respondent is entitled to use its “EmploymentCrossing” domain name to attract potential employers or employees interested in SAP software. It may also be legitimate to refer to the company SAP in the course of communications between interested parties. In the Panel’s view it is however a different matter to use the SAP trademark in the Domain Name itself, particularly in the dominant first part of the Domain Name and in doing so to acknowledge that such reference is to the company SAP. That is, to use the SAP trademark as an indication of product or service origin, in circumstances in which it is acknowledged that Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use the SAP trademark.

The Panel concluded that SAP proved the second element. Moving to the final element, bad faith, the Panel rejected Respondents arguments that job seekers looking for jobs that require SAP proficiency merit its use of the term in the domain name. For these reasons, the Panel found that Respondent registered the domain in bad faith.

Ultimately, the Panel found that SAP proved all three elements and ordered the domain be TRANSFERRED.

Tiger Woods Can’t Win…His Son’s Domain Name

Thursday, June 25th, 2009

In the recent domain dispute of ETW Corp. and Eldrick ‘Tiger’ Woods, for itself, Tiger Woods and his minor child, Charlie Axel Woods v. Josh Whitford (Nat. Arb. Forum 1263352, June 24, 2009) a single member Panel was faced with a dispute over the domain www.charlieaxelwoods.com. Essentially, this case was brought by Tiger Woods on behalf of his second son Charlie Axel Woods. Tiger Woods remains one of the most famous people in the world, let alone the greatest golfer. He maintains a web site at www.tigerwoods.com.

In all ICANN UDRP cases Panels review, and Complainants must prove three elements: (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 this case the Panel reviewed arguments submitted by both parties. Woods relied upon a federal trademark registration for his own name as well as common law rights in his son’s name. Tiger Woods’ son was born on February 8, 2009 and the disputed domain was registered on February 9, 2009. Tiger argued that the domain was being held primarily for the purpose of selling it. Tiger argued that Respondent listed the domain for sale on eBay nine days after its acquisition stating:

“This is your chance to own the domain to a future golf legend or use it in some way to extord (sic) the current golf legend for some extra cash (not highly recomended (sic) seeing he has lots of money and lawyers.)  I personally feel someone much more into golf would appreciate the address much more than myself.  I am not really sure why I bought the domain, but since I am loosing (sic) my job on the 1st of April anything sounded like a good idea.” 

Tiger further argued that the Whois information for the domain directed viewers to the eBay listing as well. (The current Whois information has been changed and is now hidden through a privacy service).

The Respondent made several counter arguments. Respondent argued that Tiger Woods had no rights under the Policy to the domain since there was no common law protection for Charlie Axel Woods. Respondent claimed that a birth certificate did not create rights. In addressing the bona fide legitimate noncommercial use of the domain, Respondent stated he was using the domain as a fan page. Respondent claimed his eBay listing was satire.

In light of the arguments presented, the Panel addressed the first element, wether the domain was identical or confusingly similar to a protectable mark. First the Panel found that the domain was not sufficiently similar to the TIGER WOODS mark. The Panel agreed it was identical to the name Charlie Axel Woods, but proceeded through an analysis of whether such name was a protectable common law mark. The Panel relied upon the Wipo Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names in the Internet Name System (2001) and upon the case of Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, D2002-1073 (WIPO March 6, 2003), which explained the current status of most “personal name” disputes. Specifically that case stated as follows:

The Panelist divided the personal name cases into six categories. The category that includes the most cases is that involving persons from the entertainment industry. The second most numerous category was that of professional athletes. The four other categories, with few cases in each (some overlapping) were authors, business people, royalty and politicians. The Panel found that the cases effectively required that for a personal name to be eligible for trademark or service mark status it needed to be used “for the purpose of merchandising or other commercial promotion of goods or services.” …Later cases have held that in order for a personal name to acquire trademark or service mark status in a jurisdiction that recognizes common law marks, the personal name must be used in connection with the commercial offering of goods or services and must have acquired secondary meaning as the source of such goods or services.

In light of the WIPO report and prior case decisions, the Panel found that Woods presented no evidence that Charlie Axel Woods was used in connection with commercial offering of goods and services or that it had acquired secondary meaning. The Panel found Woods failed to satisfy the first element and declined to consider the other elements. The Panel DENIED the request for transfer.

Dolly Parton’s Dollywood Adds Another Attraction…A New Domain Name

Wednesday, June 24th, 2009

In the recent domain dispute of Dollywood Company v. Dewayne Hensley (Nat. Arb. Forum 1256567, May 22, 2009) a single member Panel was faced with a dispute over www.dollywoodresort.com. Dolly Parton is too famous to provide a factual background, but many of you may not know that she also lends her name to a theme park located in Tennessee, aptly named DOLLYWOOD. The Dollywood company owns a trademark registration for DOLLYWOOD with rights dating back to 1986 and they maintain a web site at www.dollywood.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.

The Panel addressed the first prong and recognized Complainant’s registered trademark rights as established under paragraph 4(a)(i) of the UDRP ICANN Policy. The Panel found that the domain name encompassed all of the mark DOLLYWOOD with the addition of a generic term “resort.” In light of this the Panel found Complainant satisfied the first element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel found that Complainant made a prima facie case causing the burden of proof to shift to Respondent. Since Respondent failed to respond to the Complaint the Panel assumed no rights or legitimate interests existed, however, still chose to review the record. The Panel noted that the domain did not resolve to an active web site, which was not a bona fide offering of goods or services and was not considered legitimate non-commercial or fair use. Additionally, the Panel found that Respondent was not commonly known by the disputed domain as stated in Policy paragraph 4(c)(ii).

Moving to the final element, bad faith, the Panel explained that “the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii).” Since the web site did not resolve to an active site, the Panel found that it was indicative of bad faith registration and use under the Policy paragraph 4(a)(iii).

Ultimately, the Panel found that Complainant satisfied all of the elements and ruled to TRANSFER the disputed domain.

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.

Occidental Hotel Domains Were Not Accidental

Wednesday, March 11th, 2009

In the recent decision of Occidental Hoteles Management, S.L. v. Media Insights a/k/a Media Insight (Nat. Arb. Forum, 1239395, March 2, 2009), a single member panel was faced with a dispute over 20 different domains. The domains in dispute are listed below:

www.occidentalallegro.com
www.occidentalallegrocozumel.com
www.occidentalallegroplayacar.com
www.occidentalallegropuertoplata.com
www.occidentalgrandcozumel.com
www.occidentalgrandflamenco.com
www.occidentalgrandpuntacana.com
www.occidentalgrandxcaret.com
www.occidentalroyalhideaway.com
www.occidentalgrandcancunresort.com
www.occidentalgrandpapagayo.com  
www.occidentalgrandpuertoplata.com
www.occidentalgrandarubaresort.com
www.allegrojacktarpuertoplata.com
www.allegroplayacar.com
www.allegropapagayoresorts.com
www.grandcozumelresort.com
www.grandarubaresort.com 
www.grandxcaretresorts.com
www.royalhideawayrivieramaya.com

As the Panel explained the facts the following appears to be clear: (1) Occidental Hotels and Resorts is associated with at least 46 hotels in Europe, Africa, the Caribbean and the Americas, using the mark OCCIDENTAL since at least 1985. Complainant operates a web site locate at www.occidentalhotels.com. The disputed domains were registered by Respondent between November 2001 and April 2008. Respondent claimed to be a wholesale tour operator which provided travel packages, including hotel accommodations. Respondent claims that Complainant not only knew about the web sites for a long period of time, but also encouraged their operation by providing materials to be included on them.

The Panel reviewed the three elements of the Policy under paragraph 4(a), namely:(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, whether the domain names are identical or confusingly similar to Complainant’s mark, the Panel noted that seven (7) of the domains were similar in any manner to the mark. They included www.allegrojacktarpuertoplata.com, www.allegroplayacar.com, www.allegropapagayoresorts.com, www.grandcozumelresort.com, www.grandarubaresort.com,
www.grandxcaretresorts.com, and  www.royalhideawayrivieramaya.com. The Panel found Complainant failed to prove those domains were identical or confusingly similar. The Panel then  oddly made the following statement: “With regard to the remaining domain names, the Panel declines to enter a finding as to identicality or confusing similarity.” Based upon the other factors it appears to have not mattered, but this was an odd lack of review on the part of a Panel.

The Panel then addressed the second prong, whether Respondent had any rights or legitimate interests in the domain. The Panel explains that Complainant had a contractual relationship with Respondent’s “Parent Company” (which the Panel explains as a related entity). The Panel found that the web sites were promoting Complainant, with commissions or other payments being made to Complainant. Although Complainant may not have authorized Respondent directly, the Panel found that Complainant was long aware of these domains. 

The Panel declined to address the bad faith prong based upon its findings in the first two elements, and ruled that Complainant’s request be DENIED. 

DefendMyDomain Commentary: This is another example of why a reseller of goods or services can use a similar domain provided that the reseller adequately discloses the nature of his or her goods or services on the subject website.

VOLVO: Not Safe When it Comes to Domain Names- – Reseller of Parts OK!

Friday, March 6th, 2009

In the recent decision of Volvo Trademark Holding AB v. Volvospares / Keith White (WIPO Case No. D2008-1860, February 10, 2009) a single member Panel was faced with a dispute regarding www.volvospares.com. Since everyone knows who Volvo is, we will skip over the background info about Complainant. If you want to know more about them, go to www.volvo.com. The disputed domain was registered on January 13, 1997. The domain supposedly resolved to a web site where reconditioned, used or new replacement parts for VOLVO vehicles were offered for sale.

                 volvo-2006-logo

The Panel addressed the three elements which Complainant must prove: (i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the domain name; and (iii) The domain name has been registered and is being used in bad faith.

First the Panel reviewed whether the domain was identical or confusingly similar to the VOLVO mark. The Panel explained:

The Panel has no hesitation in finding that the disputed domain name is confusingly similar to those trademark rights. The Respondent appears to dispute this, contending that the disputed domain name is totally representative of what is to be found at the website. This mistakes the nature of the inquiry at this stage. What is required at this stage is a comparison of the disputed domain name itself to the proved trademark rights. The point made by the Respondent, however, may be relevant at the stages of considering rights or legitimate interests and registration and use in bad faith.

The Panel then moved to the second prong, namely, whether or not Respondent had any rights or legitimate interests in the domain. The Panel spent much of its opinion on this factor. The Panel explained that WIPO provides an overview of principles which address some of the specific concerns in this dispute. The question presented was whether or not a reseller can have a legitimate interest in the disputed domain. WIPO Overview paragraph 2.3 states:

A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.

The Panel reviewed the facts and evidence presented and concluded that Respondent was offering Complainant’s goods for sale in good faith. The Panel also found that Respondent is not disentitled to sell the products, because although not all products were actually branded as VOLVO, it is understood that even VOLVO has parts in their vehicles which do not have the VOLVO mark on them. Instead as Respondent points out, many parts bear a third party mark, such as BOSCH spark plugs.  

The parties also argued about the presence and the timing of a disclaimer on the disputed domain, which stated “Volvospares.com has no affiliation with Volvo Group and makes no claim to or implication of being associated in any official business capacity in conjunction with or for such companies.” Complainant contended that the disclaimer was not put on the site until after the commencement of the dispute. The Panel found that the presence or absence of a disclaimer was not conclusive or fatal.

The Panel made the additional following observations and findings:

Considering the Respondent’s website as a whole and each specific page, the Panel finds it does not misrepresent any association with the Complainant (or the VOLVO group). It represents nothing other than what appears to be true – that the Respondent offers for sale from the website parts for VOLVO vehicles. On balance, the website does not have an appearance which suggests it is likely to be mistaken for an official or authorized site of the Complainant or the Volvo group. In the circumstances, the Panel finds that it is most unlikely that anyone would have been misled by the website even before the disclaimer was added.

Ultimately the Panel found that Respondent had rights or legitimate interests in the domain. The Panel quickly made finding regarding the bad faith prong, noting that the domain was not registered or used in bad faith. As a result, the Panel DENIED the request for transfer.

Defend My Domain Commentary: The U.S. Supreme Court, in the 1947 ruling in Champion Spark Plug Co. v. Sander, 331 U.S. 125 (1947), found that a second-hand dealer may use the trademark of the manufacturer so long as the manufacturer is not identified with inferior qualities of reconditioned parts. A full and clear disclosure by the reseller that it sells reconditioned parts is necessary.

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