There have been two interesting domain name disputes in two days, dealing with the same mark, resulting in the same manner, but for different reasons. IN the wacky world of domain name and trademark ownership, one can never really guess as to the facts and arguments presented by parties involved in disputes. In the first case, Mt. Vernon Mills, Inc. v. River City Holdings, LLC FA1325209 (Nat. Arb. Forum June 30, 2010) a single member Panel was faced with a dispute over the domain www.textraw.com. The Panel made the following relevant factual findings.

On September 8, 2006 Complainant purchased assets from the Georgia, USA corporation Textraw, Inc. which included the trademark registration for a trademark TEXTRAW which had been registered with the USPTO under number 2,710,148 on April 22, 2003. On November 28, 2009 the TEXTRAW trademark was cancelled. Complainant had no registered TEXTRAW trademark at the date of filing its complaint. In March 2009 Respondent obtained the domain name <textraw.com> through Complainant. Respondent makes no active use of the domain name.

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 light of the findings the Panel reviewed the first element and found that Complainant did not have adequate common law rights, since they failed to present evidence of adequate sales, advertising etc. or show that the mark has secondary meaning. By failing to satisfy the first element, the decision was essentially done, but the Panel chose to review the remainder of the elements. Ultimately the Panel DENIED the request for transfer.

In the second domain name dispute, Mt. Vernon Mills, Inc. v. River City Holdings FA1325214 (Nat. Arb. Forum, July 1, 2010) a single member Panel also DENIED a request for transfer regarding two domains, www.textraw.net  and www.textraw.org. The Panel noted that the parties entered into an agreement on March 16, 2009 which expired on March 15, 2010. The Domain Names were registered by Respondent during the course of that agreement. Complaint had filed a Notice of Opposition to Respondent’s application for federal trademark rights in TEXTRAW. A search of the USPTO records shows that on December 3, 2009 two applications were filed for TEXTRAW (Ser. No. 77885495 and 77885343) by a company named Synco Turf, LLC. The Panel also noted that Complaint has filed other court proceedings related to the ownership and the trademark in Court of Common Pleas, Greenville County, South Carolina, C.A. No. 2010-CP-23-4101.

In light of the court case and the TTAB case, the Panel explained that those proceedings will be critical to the outcome of this UDRP decision. As a result the Panel DENIED the relief requested by Complainant, without prejudice and may seek to refile a Complaint after the other proceedings are finished.

Walk over to any college campus bar and just say the words JAGER BOMB and you will likely get mixed reactions of joy and pain from the students. For years the JAGER BOMB has been a popular drink at bars across the country, and around the world. The people at Mast-Jaegermeister AG know this and made sure to get protection for this famous mixed drink. They have a registration for the JAGER BOMB mark and filed a UDRP domain dispute for the domain www.jager-bomb.com. In Mast-Jaegermeister AG v. John Marzlak FA1317337 (Nat. Arb. Forum, May 18, 2010) a single member Panel agreed with the liquor manufacturer and agreed to transfer the domain. Complainant maintains a website at www.jager.com.

The decision did highlight one relevant fact, which had respondent provided a response may have been fleshed out in more detail. The disputed domain was being used to promote the sale of Jager Bomb Shot Cups. Complainant made note of this and the Panel explained:

Respondent capitalizes on the confusingly similar domain name to attract Internet users seeking Complainant’s website to a website offering plastic cups for consumers to use with Complainant’s product.  Therefore, the Panel finds that such diversionary use of the disputed domain name for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). 

There wasn’t anything too exciting or different about this decision. One side note, the domain www.jagebomb.com is parked with “coming soon” text and an info@jagerbomb.com email address. The domain has a privacy service so it is unclear whether Complainant owns it or whether it will be developed. Complainant appears to operate or at least authorize a website devoted to cups just for Jager bombs, namely www.jagerbombcups.com.

In the recent domain name dispute decision of USADATA, Inc. v. K2, Incorporated and US Data Corporation FA1307329 (Nat. Arb. Forum, April 1, 2010) a single member panel was faced with a dispute over the domains www.usdatacorporation.com and www.usdatawest.com. Complainant claims rights to the mark USADATA, which was registered on the Supplemental Register in 2002. Complainant maintains a web site at www.usadata.com. Respondent provided a response and both parties provided additional submissions.

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’s findings were as follows: (1) The disputed domain names were confusingly similar and Complainant had established it had sufficient common law rights to the mark USADATA.  (2) The Panel found that both parties established rights and legitimate interests in the disputed domain name, therefore noting that Complainant failed to prove up this element.

(3) The bad faith argument is what creates a particular interest in this decision. The Panel found that the evidence did not support Complainant’s assertion that the Respondent has registered the disputed domain names in bad faith nor used them in violation of Policy ¶ 4(a)(iii). Respondent made an argument that the doctrine of laches applied, since Respondent had used the domains for many years prior to this dispute. The Panel explained:

The Respondent asserts that the Complainant has waited five years before making any claim in respect to the disputed domain names, and although not a defense to a complaint brought under the policy, it should be considered by the Panel as evidence for Respondent in its considerations of the elements of the policy.  The Panel understands that the doctrine of laches is no defense but has chosen to consider Complainant’s long delay in asserting any rights to the disputed domain names as a factor against Complainant.  The Panel therefore finds that this evidence is relevant to a determination of whether or not Respondent has been able to build up legitimate rights in the domain name in the interim and whether or not Respondent was using the domain name in bad faith.

Ultimately, the Panel DENIED the request for transfer of the domains.

It should come as no surprise that adult web sites are targeted for cybersquatting. In the recent domain name dispute of Blu Media Inc. v. Transure Enterprise Ltd c/o Host Master FA1307892 (Nat. Arb. Forum, March 30, 2010) a single member panel was faced with a dispute over the domain www.justsuboys.com. Complainant uses its domain www.justusboys.com as a for profit adult website. The domain was originally launched in 2002, although complainant did not purchase it until January 2010. Respondent registered the disputed domain in October 2009.  Respondent failed to respond to the Complaint.

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.

In addressing the first element, the Panel noted that Complainant does not have a registration for the mark JUSTUSBOYS.COM.  Thus the Panel was forced to determine if the Complainant’s mark had established secondary meaning.

In support of its contention Complainant has submitted evidence of awards received for its e-magazine as well as critic reviews of its website and magazine.  Complainant further provides evidence of high “Alexa” rankings for the number of visitors to its website.  The Panel finds that Complainant has produced sufficient evidence to show it has common law rights in the JUSTUSBOYS.COM mark for purposes of Policy ¶ 4(a)(i) through continuous and extensive commercial use before Respondent registered the disputed domain name.

The Panel found that the disputed domain was confusingly similar to Complainant’s mark and that Policy ¶ 4(a)(i) had been satisfied

Moving to the second element, the Panel noted that Complainant submitted evidence sufficient for a showing and establishment of a prima facie case. Regardless the Panel chose to review the evidence presented. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the disputed domain was offering third party links to competing adult oriented web sites. “The Panel finds that Respondent’s reliance on typosquatting to create a confusingly similar disputed domain name, where it receives referral fees to websites in competition with Complainant is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Also, Complainant put forth evidence that Respondent was seeking to sell the disputed domain publicly and to Complainant. Lastly, the Panel remarked that the domain was a typosquatted version of the mark. For all these reasons, the Panel found that Respondent lacked any rights or legitimate interests in the domain, and that Policy ¶ 4(a)(ii) had been satisfied

In addressing the final element, the Panel began by examining Respondent offer to sell the domain for $5,000.00 to Complainant. “The Panel finds that Respondent’s general listing of the disputed domain name for sale, as well as its attempts to sell the disputed domain name to Complainant for amounts in excess of its initial costs are evidence of bad faith registration and use under Policy ¶ 4(b)(i).” The Panel also found that Respondent intentionally disrupted Complainant’s business. Additionally, the Panel found that the use of competitive third party links for financial gain was evidence of bad faith registration and use. Ultimately, the Panel ruled  that Policy ¶ 4(a)(iii) had been satisfied            

After review of all the elements the Panel ruled that Complainant met all three and ordered the domain be TRANSFERRED.

In the recent cybersquatting case of Digital Alchemy, LLC v. Digital Alchemy c/o Ramon Felciano FA1295928 (Nat. Arb. Forum, January 12, 2010) a single member Panel was faced with a dispute over the domain www.DigitalAlchemy.com. Complainant operates in the field of electronic CRM for the Hospitality Industry and maintains a web site at www.data2gold.com. Complainant claims no registered trademark but states it has common law rights dating back to 1996.  Respondent is a consulting firm based in San Francisco, California, specializing in business, product, and technology strategy for life sciences, healthcare and technology markets. Respondent claims to have been offering its consulting services since 1993.

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

In addressing the first element, the Panel noted that the disputed domain is identical to the DIGITAL ALCHEMY mark. But the Panel found that Complainant failed to demonstrate it has rights to the mark. The Panel criticized the Complainant’s contention that it had used the mark in connection with its services since 1996, noting that it was a conclusory statement lacking sufficient evidence. The Panel further finds that Complainant failed to present evidence of secondary meaning. The Panel cited to another prior decision and explained.

 In declining to recognize the complainant’s common law mark in Kip Cashmore the panel stated:  “Here, Complainant has not presented any credible evidence establishing acquired distinctiveness [for the complainant’s goods and services]. The record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin or services. Complainant’s record consists of merely a declaration of Complainant with unsupported facts…” Here the record is even more paltry than in Kip Cashmore, as there isn’t even a self-serving declaration by Complainant that its mark serves as an identifier of its goods and services in the public’s mind.

Moving to the second element, the Panel continued its analysis. The Panel found Complainant failed to present a prima facie case. Respondent presented evidence of doing business since 1993 under the Digital Alchemy name, which was prior to Complainant’s use. The Panel dismissed Complainant’s Additional Submission argument that there was no proof of continuos use by Respondent, noting the UDRP had no such requirement. The Panel also dismissed Complainant’s contention that the offer to sell the domain, after being solicited by Complainant did not satisfy this element.

In addressing the final element, bad faith, the Panel explained:

Given Respondent’s use of the Digital Alchemy name in its business since 1993, and the Panel’s finding that Respondent has rights and legitimate interests in the domain name, the Panel concludes that Respondent did not register and is not using the domain in bad faith. Indeed, as prior panels have held, once a panel has determined that a respondent has rights and legitimate interests in a domain name, the question of bad faith is moot.

Ultimately, the Panel found that Complainant failed to prove any of the three elements, and DENIED the request for transfer.

In the recent cybersquatting action JetPay, LLC v. JetyPayments FA1294887 (Nat. Arb. Forum, January 6, 2010) a single member Panel was faced with a dispute over the domain www.jetypay.com. Complainant offers credit card and check authorization processing services since 2000 and maintains a web site a www.jetpay.com. Complainant holds a trademark registration for the JETPAY mark. Respondent registered the disputed domain in December 2007 and failed to respond to the complaint.

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.

In addressing the first element, the Panel noted that Complainant established its rights in the JETPAY mark pursuant to the Policy. Additionally, the Panel found that Complainant provided sufficient evidence of common law rights and secondary meaning for the mark dating back to 2000. A comparison of the mark with the disputed domain showed that Respondent merely added the letter “y” in the middle. As a result, the Panel found this to be confusingly similar.

Moving to the second element, the Panel explained that Complainant set forth a prima facie case, shifting the burden to Respondent. Interstingly the Panel found that although Respondent appeared to be commonly known by the disputed domain, it still lacked rights and legitimate interests in the domain. The Panel explained that Respondnet’s use of the domain, namely selling goods or services similar to Complainant’s was not a bona fide offering nor a legitimate noncommerical use. As a result, the Panel noted Complainant satisfied this element.

The last element, bad faith, was also favorable to Complainant. The Panel explained the disputed domain linked internet users to a website offering similar products and services as those of Complainant. This was found to be bad faith under the Policy. Additionally, the use of a confusingly similar domain name to attract users for profit, creates a strong likelihood of confusion, thus also being bad faith.

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

In the recent domain name dispute decision of Hargrave Arts LLC c/o Carter Hargrave v. Chiefasian LLC c/o Martin Eng FA1294273 (Nat. Arb. Forum, December 31, 2009), a single member Panel was faced with a dispute over the domain www.jeetkunedo.com. Complainant is the owner of multiple Jeet Kune Do related domains, including www.jeetkunedo.net and www.jeetkunedo.org. Mr. Hargrave is the president of the World Jeet Kune Do Federation. He claims common law trademark rights to the mark JEET KUNE DO. A little background is necessary, for an understanding of the origins of JEET KUNE DO. This form of martial arts was founded by Bruce Lee in the late 1960′s. According to the decision, Complainant is one of about 50 certified instructors. The disputed domain was registered on March 6, 2000 and Respondent provided a response to the complaint.  Although the Response was not provided the Panel noted that Respondent claims Hargrave does not have rights to the JEET KUNE DO mark.

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 explaining that Complainaint contends he acquired rights to the JEET KUNE DO mark from Bruce Lee and the Bruce Lee Jeet Kune DO School. However, the Panel notes that Hargrave fails to provide any evidence that it represents Bruce Lee or the Bruce Lee School. Additionally, Hargrave fails to provide any evidence that any of the rights to the JEET KUNE DO mark were assigned or licensed to him. For these reasons, the Panel found that Hargrave did not satisfy the first element.

The Panel did not review the remaining elements and DENIED the request for transfer.

In the recent domain name dispute decision of Microsoft Corporation v. Doug Goodman FA1294422 (Nat. Arb. Forum, December 31, 2009) a single member Panel was faced with a dispute over 21 separate domains containing the mark BING. Microsoft needs no introduction and maintains many web sites for its business, the most relevant in this case being, www.bing.com. The disputed domains were registered during a three day period of June 24, 2009 through June 26, 2009. Respondent provided a response to the dispute, and gave some colorful defenses, which included:

1.    Respondent “created of formulated” the disputed domain names that had been missed by “Microsoft webmasters” until Respondent offered them to Complainant.
2.      The disputed domain names would bring value to the Complainant and the Complainant should pay for them.
3.      Respondent concedes that each of the names has BING in them and that BING is a pending mark
4.      The domain names were not registered in bad faith because Respondent had no intent to harm BING, Inc.
5.      Respondent does not use the disputed domain names to divert users from BING, Inc.
6.      Because of the value the disputed names will bring to Complainant, the case should be viewed as a case of reverse name highjacking

Paragraph 4(a) of the ICANN UDRP Policy requires Complainant to 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) 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, Microsoft noted that it does not have any registered BING marks yet, but did file for multiple BING related trademarks in March 2009. The Panel noted that Microsoft need not have a trademark registration and can show that it has common law rights to the mark. Microsoft presented evidence that it has continuously used the BING mark since May 28, 2008 and that a previous UDRP Panel found that it had established its rights to the mark. As a result, the Panel reviewed the disputed domains and found that they were confusingly similar to the BING mark. Interestingly, as the Panel explained, Respondent concedes that he intentionally put the BING mark in the domains and was fully aware of Microsoft’s interest in the mark. The Panel found Microsoft satisfied this element.

Moving to the second element, the Panel noted that Microsoft put forth a prima facie case, shifting the burden of argument to Respondent. The Panel noted that Respondent was not commonly known by the disputed domain. Additionally, the Panel found that four (4) of the domains led users to a web site with third party hyperlinks, some of which compete with Microsoft. The Panel found that this was not a bona fide offering of services. Regarding the remaining 17 domains, the Panel noted that they redirected the user to Microsoft’s BING.com web site. The Panel explained that Respondent admitted his primary intention in registering these domains was to sell them to Microsoft. Offering to sell the domains is also not considered a bona fide use. The Panel found that Microsoft satisfied this element.

Moving to the final element, bad faith, the Panel noted that the Respondent attempted to sell the domains for more then his out-of-pocket expenses. This factor is considered bad faith. Additionally, the four domains which landed on parked pages, also were a showing of bad faith, since they likely resulted in click-through fees for Respondent. The Panel found Microsoft satisfied this element as well.

The Panel quickly dispensed with Respondent’s reverse domain name hijacking argument and found that since Microsoft had proved all three elements, it ordered all 21 domains be TRANSFERRED.

In the recent domain name dispute decision of Kim Laube & Company Inc. v. RareNames, WebReg FA1291282 (Nat. Arb. Forum December 22, 2009) a three member Panel was faced with a dispute over the domains www.natureschoice.com and www.natures-choice.com. Complainant sells pet grooming products and has a a trademark registration for the mark NATURE’S CHOICE. Respondent provided a response to the complaint and registered the disputed domains in 2002 and 2003.

Policy ¶ 4(a) of the ICANN UDRP rules requires that Complainant must prove each of the following three elements to obtain an order that the domain names should be cancelled or transferred: 1. the domain names registered by Respondent are 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 names; and 3. the domain names have been registered and is being used in bad faith.

The Panel addressed the first element of the analysis and explained that the domains were identical or confusingly similar to Complainant’s mark. Although Respondent argued that Complainant could not hold exclusive rights on the common words, the Panel dismissed this argument under this prong of analysis.

The Panel declined to address the second prong, directing its attention to the third prong. First the Panel noted that there was no evidence presented that Respondent’s registered the domains primarily for the purpose of disrupting Complainant’s business.  The Panel only paid serious attention to Policy ¶4(b)(i) and (iv). Those sections state:

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel explained as follows:

Turning first to Policy ¶ 4(b)(i), Respondent states that its business is the acquisition then sale of domain names for profit.  The only important issue is whether Complainant can point to circumstances indicating that Respondent registered the names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.

Likewise, Policy ¶ 4(b)(iv) requires proof that Respondent for commercial gain; intentionally used the disputed domain name to attract web users; to an on-line location; by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that on-line location, or of a product or service at that location.

Once more, the key issue is whether Respondent can be said to have used the domain names in a way which intentionally created a likelihood of confusion with Complainant’s trademark.

The Panel recognized that there are other contrary decisions on this topic but noted that their view was that “proof of actual knowledge of a Complianant’s trademark rights is necessary.” The Panel explained that in the situations where there is a trademark with descriptive elements, then the onus rises on proof of knowledge. The Panel discounts the arguments put forth by Complainant of its common law rights, based on a lack of evidentiary support. The Panel concluded by noting:

Taking account of the inherently descriptive character of both the trademark and the disputed domain name, the degree to which either very similar domain names or identical domain names with different extensions have been registered/used by others, the lack of evidence that Respondent has habitually abused third party trademark rights, and all of the circumstances, the Panel finds that neither Policy ¶ 4(b) (i) or (iv) is made out.

Ultimately, the Panel found that Complainant had failed to prove up all three elements, and DENIED the request for transfer.

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

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

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