In the recent domain name dispute decision of Bin Shabib & Associates (BSA) LLP v. Hebei IT Shanghai ltd c/o Domain Administrator FA1287164 (Nat. Arb. Forum, November 19, 2009), a three member Panel was faced with a dispute over the domain www.bsa.com. Complainant is a law firm which operates in the United Arab Emirates and maintains a website at www.bsa.ae. Complainant claims rights to the BSA mark since based on two different dates, 2001 and 2007. Complainant filed for a trademark in the UAE, but has not yet received a registration. Respondent provided a Response, including an additional submission. The Panel noted that the Response was deficient for not being timely, but concluded to review the materials regardless.

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 explained:

The Panel finds that Complainant has failed to establish registered trademark rights or common law rights in the BSA mark. Specifically, Complainant’s use of the BSA mark for less than two years has been too short, and Complainant has not shown any evidence of the sort that is usually used to establish that a mark has acquired secondary meaning. In light of Respondent’s arguments, the Panel finds that Complainant has failed to establish common law rights in the BSA mark pursuant to Policy ¶ 4(a)(i)….Having found that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy.

The Panel was not finished though, since it then addressed the issue of Reverse Domain Name Hijacking.

The panel finds that Complainant has failed to present any evidence to support its claimed rights in the disputed domain name. It only provided an application for trademark registration which does not establish any enforceable rights under the UDRP. It did not offer any evidence to support a finding of common law rights in the disputed mark. Also, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name or that Respondent registered and is using the disputed domain name in bad faith. Based on the foregoing, the panel finds that reverse domain name hijacking has occurred.

In light of the following, the Panel DENIED Complainant’s request to transfer the domain. and made a finding of reverse domain name hijacking.

For anyone following UDRP cases, this one was highly anticipated. The case of Mercury Radio Arts, Inc. and Glenn Beck v. Isaac Eiland-Hall (WIPO D2009-1182, October 29, 2009) dealt with the domain www.glennbeckrapedandmurderedayounggirlin1990.com. (For all the case filings and opinion please go here.) If you don’t know anything about this case you should read the full decision to get an understanding of the UDRP process. It seems as though Mr. Beck got a taste of his own rhetoric today, but if you want to know more about him visit his web site at www.glennbeck.com. Our friend Marc Randazza has won another case with some very “eloquent” language in his pleadings and has provided many First Amendment proponents with a significant case for later use.

Essentially, the Panel found that the domain was confusingly similar to Mr. Beck’s trademark. The case turned on the issue of whether the domain was being used in a manner consistent with the First Amendment rights to publish satyrical content. The Panel believed that the disputed domain was a parody and should be afforded such protection. The Panel explained:

It can be and has been argued by Complainant that the disputed domain name should be assessed “standing alone” because at least some Internet viewers will only have that first impression (i.e., they will not click through).  However, this case involves a form of speech arguably strongly protected under the First Amendment of the U.S. Constitution.  This Panel is very reluctant to reject Respondent’s claim of legitimate noncommercial and fair use on the distinction between viewing of the disputed domain name itself and clicking through to Respondent’s website.  On the same basis by which the Panel has determined the disputed domain name is confusingly similar to Complainant’s trademark – that is, Internet users viewing the disputed domain name will be curious and motivated to visit the website – the Panel also considers that Respondent’s speech should be assessed as a whole, both by reference to the disputed domain name and the content of Respondent’s website (i.e., on the assumption the preponderance of Internet users will indeed click through).

The Panel did not address any issues of bad faith since they found that there was legitimate rights involved. The Panel stated “The Panel notes, however, that the combination of political speech engaged in by Respondent and the substantial lack of commercial intent makes it unlikely to this Panel that Complainant would have succeeded in demonstrating bad faith registration and use.”
A large tip of the hat goes out to Mr. Randazza for a great win.

Update: The Respondent pulled a fast one on Mr. Beck and relinquished the domain. See his letter to Beck (here)

In the recent domain name dispute decision of Ashley Judd v. Alberta Hot Rods, Jeff Burgar (WIPO D2009-1099, September 25, 2009), a single member Panel was faced with a dispute over the domain www.ashleyjudd.com. Judd is the well known actress who has appeared in countless film and television roles throughout the 1990′s and 2000′s. Respondent registered the disputed domain in 1996 and failed to reply to the Complaint.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which she has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that Judd had common law rights in her name.

It is well-established that where an actor has a sufficient reputation for her professional work under her name or stage name, that name is a marke in which she has rights for the purpose of the UDRP: see, for example, Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210. The Panel finds on the evidence that the Complainant has amply sufficient reputation to satisfy this requirement. As a result, the Panel found the Judd satisfied the first element.

Moving to the second element, the Panel found that Respondent had failed to use the domain in connection with a bona fide offering of goods or services. Instead the panel found that the disputed domain was used to drive traffic to another web site with the intention of obtaining revenue from sponsored links. The Panel also found that Respondent was not commonly known by the disputed domain.

Moving to the final element, bad faith, the Panel noted that Judd’s reputation as an actress had been well established by 1996. Additionally, the Panel found that Respondent engaged in a pattern of registering domain containing names of famous actors and celebrities. The Panel declined to apply any possible defense of laches. Ultimately, the Panel found that there was no contrary evidence and concluded that Judd satisfied all the elements. The Panel ordered the domain be TRANSFERRED.

In the recent domain name decision of National Association of Competitive Soccer Clubs v. Bruce Binler (WIPO, D2009-0957, September 7, 2009), a single member panel was faced with a dispute over the domain www.usclubsoccer.net. Complainant is a non-for profit organization responsible for putting together soccer clubs, leagues and tournaments across the U.S. Complainant maintains a web site at www.usclubsoccer.org and has a servicemark registration for US CLUB SOCCER. Respondent registered the domain in 2007 and failed to provide a response to the Complaint.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that: (i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the domain name; and (iii) respondent’s domain name has been registered and is being used in bad faith.

Some of the facts presented included that Respondent used the domain in connection with promoting soccer events sanctioned by Complainant in 2006 and 2007.These facts may have been relevant in the Panel’s findings, however, the Panel did not make it passed the first element.

The Panel found that Complainant did not establish sufficient rights in the mark US CLUB SOCCER. The Panel noted that Complainant’s citation to a federal registration failed to inform the Panel that it was actually on the Supplemental Register.

Complainant does not enjoy a presumption of service mark rights based on registration of US CLUB SOCCER on the Supplemental Register of the USPTO. Complainant does not enjoy any presumption of rights based on the submission of a recent application for registration of the same term on the Principal Register of the USPTO.

Although Complainant has recently applied again to the USPTO for the same mark seeking registration on the Principal Register. Therefore, the Panel noted that Complainant must show that it had sufficient common law rights. The Panel was concerned that the USPTO rejected the original application for being primarily geographically descriptive with terms that are generic or merely descriptive. The Panel took some liberties in doing some market reserach and made the following observations:

Critically however, Complainant did not address the question whether the terms are commonly descriptive or generic. In the interests of fairness, the Panel performed Google and Bing searches for CLUB SOCCER together. Those searches returned many millions of “hits”. While Complainant’s organization was listed first in non-advertising rank, there was a substantial number of references to organizations, news reports, domain names and other listings that include “club soccer” as a descriptive term. The Panel does not consider this search to be ultimately determinative on the question whether Complainant might establish rights in US CLUB SOCCER as a service mark, but it was sufficient to persuade the Panel that Complainant has not here carried its burden of demonstrating that the terms are more than commonly descriptive or generic, given that the USPTO previously decided to that effect.

In light of these findings the Panel found as follows:

The rejection by the USPTO of Complainant’s application for registration on the Principal Register and Complainant’s conversion of that application to the Supplemental Register implies that its alleged service mark is not distinctive. The grounds of rejection by the USPTO expressly related to characteristics that may be understood to preclude the establishment of secondary meaning (i.e., primarily geographically descriptive term, generic-ness or mere description).

The Panel found that Complainant failed to establish the first element and thus did not address the other two elements. The Panel ordered the request for transfer be DENIED.

In the recent domain name dispute decision of Darren Entwistle, Telus Corporation v. Finian Commission (WIPO D2009-0961, September 1, 2009), a single member Panel was faced with a dispute over the domain www.darrenentwistle.com. Darren Entwistle is the President and CEO of TELUS, a leading national telecommunications company in Canada. TELUS provides a wide range of communications products and services including data, Internet protocol (IP), voice, entertainment and video and maintains a web site at www.telus.com. Respondent provided a response, but it is unclear from the decision how detailed it actually was.

Under 4(a) of the Policy, the Complainants must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights; (ii) The Respondent has no rights or legitimate interest in respect of the domain name; and (iii) The domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel acknowledged that Mr. Entwistle does not have any federal trademark rights and instead needed to establish sufficient common law rights. The Panel  relied on the prior decision of Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, which sets out six factors needed to establish a nexus between an individual’s name and its use and association in trade and commerce. They include:

1) the extent to which the commercial community identifies the individual with the company;
2) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company;
3) the extent of the personal ownership of the company by the individual;
4) the degree of personal control that the individual exercises over the enterprise;
5) the extent to which the individual is identified with any major achievements of the enterprise; and
6) whether the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.

The Panel then reviewed the evidence and found that Complainant sufficiently proved all of those six factors to show a nexus between Complainant and his company. AS a result, the Panel found that Complainant had shown sufficient common law rights, and finding that the domain was identical to the mark.

Moving to the second element, the Panel found that respondent was not known by the disputed domain. The Panel then relies on prior domain decisions which stood for the proposition that “it is not appropriate to use the name of the entity whom one wishes to criticize on the basis of ‘fair use’ to divert Internet traffic to the site.” The Panel seems to acknowledge that the disputed domain was used to criticize, but in the same respect it finds that since “the website at the disputed domain name also provides links to goods and services of third party entities for the purpose of monetary gain, the Respondent cannot be said to be making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, paragraph 4(c)(iii) of the Policy.” Thus the Panel found that Complainant satisfied the second element as well.

Moving to the final element the Panel addresses Respondent contentions that this proceeding is an attempt at stifling free speech through censorship. The Panel, relying on three prior decisions, explains that the one may be entitled to criticism, but not when it is using a domain which is identical to someone’s trademark. Regardless, the Panel notes that use of the domain to denigrate Complainant, while having commercial links on the same web site cannot be found to be pure criticism.

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

In the recent domain name dispute decision of Phantom Technologies LLC v. Seo Jae Woo FA1272159 (August 18, 2009), a single member Panel was faced with a dispute over the domain www.iboss.com. Complainant develops and markets Internet web filtering technologies and equipment. Complainant began using its mark IBOSS in early 2002, but does not have a federal trademark registration. Complainant maintains relevant web sites at www.iphantom.com and www.myiboss.com. Respondent failed to respond to the complaint. The disputed domain was registered in December 2002.

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

In addressing the first element, the Panel noted that although Complainant did not have a federal registration, the IBOSS mark was nonetheless used on over one hundred additional domain names and web sites. This coupled with Complainant’s long seven year history of use of the IBOSS mark was sufficient to establish common law rights. The Panel found that the disputed domain was identical to Complainant’s mark.

Moving to the second element, the Panel noted that it would review the evidence presented despite Complainant’s showing of a prima facie case. The Panel found:

Respondent’s <iboss.com> domain name resolves to a website featuring third party links unrelated to Complainant.  The Panel infers Respondent profits through click-through fees from the links to the third parties.  The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).

The Panel also found that Respondent was not commonly known by the disputed domain as shown through the Whois information.

Moving to the last element, bad faith, the Panel explained that the disputed domain resolved to a web with unrelated third party links. These links were presumed to result in profits from click through fees. The Panel found this use to be bad faith.

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

In the recent domain name dispute decision of Joseph Schlessinger, Ph.D. v. PrivacyProtect.org / Harold O Connor, JS Players Association (WIPO D2009-0695, July 21, 2009), a single member Panel was faced with a dispute over the domain www.josephschlessinger.com. The Respondent failed to provide a response. Complainant is Dr. Joseph Schlessinger is the Chairman of the Department of Pharmacology, at Yale University School of Medicine. He has hundreds of academic publications and often serves as a lecturer, consultant, book author, and has served on the editorial boards of a number of scientific journals. His biography can be viewed here.

Paragraph 4(a) of the ICANN UDRP Policy states that 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) 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.

The Panel addressed the first element, noting that Complainant does not have any registered trademark in his name, but that he makes claim for common law rights based upon being famous in the scientific community. The Panel found he established common law rights noting, “Complainant is a person of considerable academic stature who has acquired ample secondary rights in his personal name, particularly in the fields of scientific discovery, development and authorship.” The Panel found the domain was identical to Complainant’s mark.

Moving to the second element, the Panel notes that Respondent is not commonly known by the domain. Interestingly though, the Panel explains as follows:

In the terms of paragraph 4(c)(i) of the Policy the Complainant says that the corresponding website conducts no bona fide business but is in fact a criticism site with defamatory content. In the terms of paragraph 4(c)(iii) of the Policy the Complainant says that the use of the website is not fair, as would be required under the Policy, because again, it is a criticism site that in the Complainant’s view exploits the Complainant’s name and is dressed up to appear initially legitimate.

Despite noting that Complainant acknowledges the use of the domain was criticism, the Panel still made the following finding:

The Respondent could perhaps be said to offer a service, whereby he tables his comments about the Complainant. But by the Respondent’s use of the Complainant’s mark in full and in isolation in the domain name without authority, such use is neither bona fide nor fair in the view of the Panel…. In the present case, the Respondent may well be entitled to express its opinion about the Complainant on a website, but in the Panel’s view such entitlement does not extend here to a right or legitimate interest under the Policy in doing so through a domain name that is identical and clearly confusingly similar to the Complainant’s trademark.

The Panel found Respondent lacked any rights or legitimate interest. Moving to the last element, bad faith, the Panel takes us through an interesting factual analysis of the content on Respondent’s site.

[T]he Respondent’s website in the space of only three pages ignores most of the positive dimensions of the Complainant’s stature and concentrates almost exclusively on two uncomplimentary (and contested) allegations distilled out of the Complainant’s life. Likewise these negative aspects predominate in the keywords supplied for the attraction of search engine hits. The Panel recognises the principles of freedom of speech and is not in a position here to assess the veracity or otherwise of the Respondent’s allegations or, on the other hand, whether the purported facts may otherwise be legitimately in the public domain. The key point is that the Respondent’s website posted at a domain name identical to the Complainant’s mark is targeted specifically at the Complainant’s name and mark and uses the domain name to focus on the denigration of the Complainant.

The Panel disclaims any view as to the validity of the content posted on the disputed domain and concludes with the following statement:

Regardless of how benign or otherwise the material, the over-riding consideration in this Panel’s view is that the Respondent’s undoubted freedom of speech within the law, unfettered as it is except by his ability to pay for any possible consequences, does not grant him authority to register a domain name identical and clearly confusingly similar to the Complainant’s mark and use it to point to a website clearly derogatory of the Complainant’s mark.

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

DefendMyDomain Commentary: We normally do not provide our opinion about whether a domain decision was right or wrong, but this one appears to be wrong. It is clear the web site was used for commentary and criticism without commercial gain. Maybe the only criticism against the web site is that it did not contain a disclaimer on the page (which some panels have previously found helpful in finding for Respondents). This appears to be a classic “sucks” case. However, when the Complainant admits it is a criticism site and when a Panel talks about First Amendment rights, yet still decides to transfer the domain, we begin to question the whole UDRP process.

In the recent domain name dispute decision of Brayden T. Quinn a/k/a Brady Quinn v. Randy Darr FA1267051 (Nat. Arb. Forum July 20, 2009) a single member panel was faced with a dispute over the domain www.bradyquinn.com. Many of you may know the Complainant as the famous Notre Dame quarterback (now playing for the Cleveland Browns).

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.

In addressing the first element, the Panel noted that Complainant has filed for a service mark in April 2009, with rights dating back to December 2007. The Panel noted that since the the mark was only still subject to an application, a review of the common law rights standards would apply. The Panel found that “it is not inconceivable that the service mark already had acquired secondary meaning shortly after the first use of the service mark, as a result of the media attention and fame of Complainant.” The Panel found that Complainant established sufficient common law rights and that the domain was identical to Complainant’s mark.

In addressing the second element the Panel found that Respondent is not commonly known by the disputed domain as shown in the Whois records. Additionally, the Panel noted:

Respondent is using the <bradyquinn.com> domain name to redirect Internet visitors to a parking site with links advertising products related to Complainant.  The Panel finds that Respondent’s use of the <bradyquinn.com> domain name is neither 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). 

The Panel also included discussion of an offer to sell the domain for $2,000.00. The Panel explained, “The Panel is of the opinion that this is evidence that Respondent has foregone any claim to rights or legitimate interests in the <bradyquinn.com> domain name pursuant to Policy ¶ 4(a)(ii).”

The Panel found Complainant satisfied this element as well, and moved to the final element, bad faith. The Panel explained:

As Respondent’s registration of the disputed domain name predates Complainant’s common law rights, the Panel finds that there is no possibility that Respondent could have registered, the <bradyquinn.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii)….The fact that Complainant’s accomplishments as a sportsman have been featured in national media before the registration of the disputed domain name does not evidence bad faith registration, since Complainant does not adduce conclusive evidence that its unregistered personal name was being used for trade or commerce at the date of the registration of the disputed domain name, let aside that the Complainant established common law trademark rights in the name predating the registration of the disputed domain name.

As a result, the Panel found that Complainant failed to establish the final element, and DENIED an order to transfer the domain.

DefendMyDomain Commentary: It is unclear why the Panel did not address the offer to sell factor in the bad faith section. This is another example of the unsecure world of famous persons names and domain disputes. We question again, knowing the facts of the case, why Complainant didn’t choose three Panelists.

In the recent domain name dispute decision of inXile Entertainment, Inc. v. Telecom Tech Corp (WIPO D2009-0655, July 3, 2009) a single member panel was faced with a dispute over the domain www.superstacker2.com. Complainant appears to be a video game producer which maintains web sites at www.inxile-entertainment.com and www.super-stacker.com. The disputed domain was registered on February 15, 2009.

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith.

The Panel addressed the first element noting that Complainant does not have a registered mark for SUPER STACKER but did have a pending trademark application, which hadn’t proceeded beyond the initial filing of the mark. Since Complainant did not have registered trademark rights, the Panel explained common law rights to the mark. The Panel noted that others use the word “stack” in similar gaming product titles. Complainant provided no evidence of advertising dollars relative the mark, nor a complete description of the product, or a copy of the web site at www.super-stacker.com. The Panel notes the only possible evidence of first use of the mark by Complainant was on a third party web site from November 2008. It appears as though the Panel reviewed the trademark application from Complainant and made some findings relative to Complainant’s date of first use:

The Complainant produced with its Complaint a printout from the USPTO database dated April 27, 2009, and although in its Complaint the Complainant asserts a first use of the claimed mark in commerce (through a predecessor in interest) dating back to November 12, 2008, the USPTO database extract produced by the Complainant states “date not available” for both the “first use” and “first use in commerce” dates. A document produced by the Complainant, downloaded from the Internet on April 29, 2009 (an extract from the website at “www.newgrounds.com”), appears to show that the date the Complainant’s game was “first submitted” was November 12, 2008. The Complainant asserts that that was the date on which the “Complainant’s game was first posted to the Internet”, but it is not clear who effected the “posting”, or how long the Complainant’s game was referenced on the “www.newgrounds.com” website.

In light of Complainant’s lack of evidence, the Panel found Complainant failed to satisfy the first element. The Panel noted it was not necessary to review the other two elements, but did provide some observations regarding the bad faith element. The Panel’s observations showed that there were significant evidentiary obstacles in finding bad faith, which included:

1. At the date on which the Domain Name was registered, the Complainant had not applied for a trademark registration anywhere in the world. 2. There is no provided evidence of when the Complainant registered its own domain name, <super-stacker.com>, and in particular whether that domain name was registered before or after the Respondent registered the Domain Name. 3. Particularly having regard to the apparent existence in the market of other “stack” or “stacker” games, the situation called for substantial evidence that the Respondent, apparently based in Panama, knew or should have known of the Complainant and or/ its claimed SUPER STACKER mark when the Domain Name was registered. There was little or no evidence on that topic.

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

DefendMyDomain Commentary: When you do not have a registered trademark, Complainant’s need to show (a) first use of the mark; (b) explain the type of goods or services used with the trademark; (c) the marketing channels; (d) advertising or marketing efforts to show exposure to and/or recognition of the trademark to end-user consumers and (e) sometimes show sales of branded goods or services. This evidence proves up common law trademark rights. Although many view UDRP actions as “litigation lite” there are still minimum evidentiary requirements for a Complainant to win.

In the recent domain dispute decision of LD Products, Inc. v. Gary Lam c/o XC2 (Nat. Arb. Forum FA 1265729, July 2, 2009) a single member Panel was faced with a dispute over the domain www.4inkjetss.com. As explained in the decision, “Complainant is an Internet retailer for printer supplies and accessories, which markets its products under the 4INKJETS mark.  Complainant registered the 4INKJETS mark with the United States Patent and Trademark Office (“USPTO”) on September 20, 2005 (Reg. No. 2,998,115, filed August 3, 2004).  Complainant has operated its printer supplies business, and advertised its products under the 4INKJETS mark, since at least as early as 1999, and since that time Complainant has grown its business to US $27 million in sales in 2007 and US $34 million in 2008.” Complainant maintains a web site at www.4inkjets.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 element, noting Complainant’s trademark registration and significant common law rights in the mark dating back to 1999. The Panel found that the disputed domain was typosquatting, in that it merely added an additional letter s to the end of the top level domain.

The Panel then moved to the second element, wherein it acknowledged that Complainant made its prima facie case, shifting the burden to Respondent. Since Respondent did not reply to the complaint, the Panel accepts all reasonable allegations from Complainant as true. Therefore the Panel made the following observations and findings:

Complainant contends that Respondent is neither commonly known by, nor licensed to register, the disputed domain name.  Respondent’s WHOIS information identifies Respondent as “Gary Lam c/o XC2.”  Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name….Respondent is using the <4inkjetss.com> domain name to display links to third-party websites that are in competition with Complainant.  Complainant contends, and the Panel agrees, that Respondent is using the disputed domain name to collect click-through fees from those third parties, and thus the Panel finds that Respondent has not made 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). 

The Panel then moved to the third element, bad faith, and the Panel made the following findings:

The Panel finds that Respondent is using the <4inkjetss.com> domain name to disrupt the business of Complainant by offering links to competitors, and that this use is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii)….The Panel agrees that Respondent is collecting click-through fees as a result of its use of the disputed domain name, and therefore finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 

Ultimately, the Panel found that Complainant proved all the elements and agreed to order the TRANSFER of the domain.