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.

In the recent domain dispute decision of Sigourney Weaver v. Stephen Gregory a/k/a ‘THIS DOMAIN NAME IS FOR SALE’ (Nat. Arb. Forum 1256394, May 22, 2009) a three member Panel was faced with a dispute over www.sigourneyweaver.com. We all know who Sigourney Weaver is, so we won’t waste time with her list of credits. (Although she deserves an extra nod of appreciation for the Alien movies) Respondent, purportedly located in the Philippines, registered the disputed domain in 1999, nearly 20 years after her emergence in the entertainment world. Weaver argued that the disputed domain was being used to automatically forward to a pornographic web site located at www.clubpink.com which then takes the user to www.nymphogirls.com. Weaver also argued that Respondent was using the domain to sell it for profit, based upon the Whois information which stated “Stephen Gregory ‘THIS DOMAIN NAME IS FOR SALE.’”

Under the ICANN UDRP policy Complainant must prove (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 Weaver did not have a federal registration for her name and thus reviewed the evidence to determine if she possessed common law rights. The Panel found that her career has made her sufficiently famous and that she demonstrated secondary meaning to establish common law rights. Thus the Panel found that the domain was identical to Weaver’s rights in the mark.

Moving to the second element, the Panel noted that Weaver made a prima facie case that Respondent lack any rights or legitimate interests. This was based on the fact that Respondent was not commonly known by the disputed domain name, as stated earlier regarding the Whois information. Additionally, since the domain was being linked to pornographic material, this use was not in connection with a bona fide offering of goods and services. The Panel noted that Respondent stopped the forwarding to the pron web sites after receiving a cease and desist from Complainant. Lastly, the Panel found that since Respondent was offering to sell the domain this showed a lack of legitimate rights or interests in the domain.

Moving to the final element, bad faith, the Panel noted that Respondent had been involved in numerous prior analogous UDRP proceedings and that he engaged in a pattern of bad faith registration and use. Additionally, the Panel noted that the pornographic nature of the redirected web site also satisfied the bad faith element.

Ultimately, the Panel ruled to TRANSFER the disputed domain.

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.

In the recent domain dispute decision of Jim Carrey v. BWI Domains (WIPO D2009-0563, June 16, 2009) a single member Panel was faced with a dispute over the domain www.jimcarrey.com. We are going to assume you know who Jim Carrey is and refrain from providing a list of accolades and accomplishments. Jim Carrey argued that Respondent was using the domain to misdirect users to pay-per-click linking portals for financial benefit.

UDRP policy provides that if the Complainant is to succeed, he must prove each of the three ICANN UDRP elements referred to in paragraph 4(a) of the Policy, namely that; (i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that Jim Carrey does not have a registered trademark for JIM CARREY. The Panel explained that other prior panels “held that in order for an individual to rely on unregistered trade mark rights he or she must be able to demonstrate use of the mark in trade or commerce. Merely having a famous name is not necessarily sufficient to demonstrate unregistered trademark rights.” As a result personal names can serve as common law marks by showing they have “acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or business, not as a personal name, but as referring to a particular source or organization.” In light of this standard the Panel made the following finding:

By virtue of the success of his numerous films the Complainant has achieved renown as one of the world’s most famous actors and comedians. The Panel considers that the use of the Complainant’s name in connection with entertainment services provides a strong indication of source.

Moving to the second prong the Panel found that Jim Carrey made a prima facie case based on showing the domain name was identical or confusingly similar, that Respondent was not commonly known by the disputed domain and that Respondent was not authorized to use the mark. The Panel explained:

The Panel accepts that the Complainant has established common law trade mark rights in his name and has a substantial worldwide reputation in the JIM CARREY trade mark. The Respondent has provided no explanation for its use of the Complainant’s trade mark and considering that it registered the Disputed Domain Name as recently as 2007, the Panel infers that the Respondent must have been aware of the Complainant’s rights and expressly choose the Disputed Domain Name for the purpose of deriving revenue from a pay-per-click linking portal.

Moving to the third element the Panel reasoned that in light of Jim Carrey’s substantial reputation and evidence presented there was no objective reason other than to create a likelihood of confusion, therefore creating a finding of bad faith.

Ultimately, the Panel agreed to TRANSFER the domain.

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.

In the recent decision of The Estate of Jim Morrison a/k/a Lou and Pearl Courson v. Rick Sentieri, Communication Services Group (WIPO D2009-0334, May 29, 2009), a single member Panel was faced with a dispute over the domain www.jimmorrison.com . Jim Morrison was the hard partying, sultry and sexy front man for the 1960s band The Doors. Information about Jim Morrison and The Doors can be found at www.thedoors.com. Complainant represents Morrison’s estate and provided additional information about his success and credits, which included being a playwright and poet.

The Panel reviewed the three element ICANN UDRP Policy where Complainant must prove (i) the domain name registered by the respondent 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.

In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel first dealt with whether Complainant had a protectable mark. The Panel noted that Complainant did not have a federal trademark registration or application. However, after reviewing the evidence presented by Complaint initially and through an Additional Submission, the Panel found Complainant had established common law rights in the mark Jim Morrison. The Panel then quickly found that the domain was identical or confusingly similar to Complainant’s mark, since it wholly incorporated all portions of the mark.

Moving to the second prong, whether Respondent had any rights or legitimate interests in the disputed domain, the Panel noted that once Complainant makes a prima facie case, the burden shifts to Respondent. The Panel referenced Respondent’s reply as follows:

Respondent refers to himself as “Rick Sentieri aka Jim Morrison.” He registered the Domain Name on March 1, 1997, twelve years ago. Respondent uses the Domain Name to operate a web site which sells posters of entertainers (including Jim Morrison and The Doors), and it advertises and sells other merchandise and services for third parties through links. Respondent’s (sole) reply of April 6, 2009 was an email having as the Subject Line: “please leave me alone you are making me sick and very unhappy.” The e-mail included a poem Respondent allegedly wrote and the following message:

“I have received your letter that has print outs of my web site, <jimmorrison.com>. Your organization has violated my webpage disclaimer. You must have written permission to produce copies of my web page. Please read disclaimer on the bottom of the <jimmorrison.com> (JIMMORRISON.COM 1996-2009 trademark of Rick Sentieri aka JIM MORRISON) Rick Sentieri aka Jim Morrison is a published author and singer who LIVES in Kenosha Wisconsin. His Jim Morrison.com videos have been downloaded THIS YEAR, over two hundred thousands times. Rick Sentieri aka Jim Morrison’s poetry is the best ever written. Potentially a Nobel Peace Prize winner. His poetry can be downloaded (some with his OWN voce reading his poems) here: http://jimmorrison.com/love.htm.”

Based upon Respondent’s failure to address Complainant’s allegations and evidence, the Panel took Complainant’s facts as proven and found that the second prong was satisfied. The Panel moved to the last element, whether the disputed domain was registered and used in bad faith. The Panel noted that Respondent was using the domain name to sell products and service of third parties with products bearing the JIM MORRISON mark that compete with Complainant’s products.

Ultimately, the Panel found Complainant had satisfied all three elements and granted the TRANSFER.

In the recent decision of William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception (Nat. Arb Forum 1256123, June 1, 2009), a single member panel was faced with a dispute over three domains: www.williamclinton.com, www.williamjclinton.com and www.presidentbillclinton.com. This very interesting case provides an insight into the potentially arbitrary nature of the non-binding UDRP arbitration system and the application of the three element ICANN UDRP test for domain disputes. Complainant needs no introduction, so some background on Respondent is helpful. The Panel summarized Respondent’s Additional Submission arguments, as follows:

Respondents timely Additional Submission first focuses on the issue of common law marks, arguing that most of the famous person common law mark opinions are defaults.  As to bad faith, Respondent notes that he has never acted in bad faith.  When requested, for example, [Respondent] surrendered domain names to the United States Government.  Respondent also states that he registered domain names of famous persons in part to make a point concerning the ease of registration of such domain names.  He further notes that he has never sold a politician’s domain name.  He also states that he has worked with Senator Hatch and others to promote the idea that some domain names deserve protection under the federal statutes, including the names of famous places and politicians.

The Panel began its analysis of the case by “reluctantly” [actual words used by Panel] finding that Clinton had established a common law mark in his name. Interestingly, the Panel felt obliged to also note that he is “partially responsible for the problems created by allowing common law marks in personal names, having been the Panelist that wrote Mick Jagger v. Denny Hammerton, FA7000095261 (Nat. Arb. Forum Sept. 11, 2000).”

In addressing the first prong, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel went through a more detailed analysis of applying the common law mark theory. Regarding one of the disputed domains, the Panel noted, “The addition of the term “president,” or the use of an abbreviated version of Complainant’s mark in a disputed domain name creates a confusing similarity between the disputed domain name and Complainant’s mark.” Ultimately, the Panel found Complainant President Clinton had satisfied this element.

Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel explained:

Complainant has shown that Respondent is not commonly known by the disputed domain names.  Complainant states that Respondent is known as “web of deception,” which is also how Respondent is identified in the WHOIS information.  Complainant also claims that Respondent is not affiliated in any way with Complainant.  Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 

The Panel went further to make the following findings:

Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Respondent’s rebuttal fails.  Respondent’s disputed domain names resolve to an official website related to the Republican Party, which is the party in direct opposition to the political party Complainant endorses.  Such use of the disputed domain names does not equate to a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 

The Panel found that Clinton had satisfied the second prong and moved to the third prong, whether Respondent registered and used the domain in bad faith. This is where the Panel took some serious liberties in applying the UDRP policy.

However, the Panelist cannot find that Respondent’s registration and subsequent use of the disputed domain names to resolve to a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent is allegedly using the disputed domain names in order to intentionally attract Internet users to an opposing website by creating confusion among Internet users who are seeking Complainant’s WILLIAM CLINTON mark.  Allegedly, the disputed domain names resolve to the official Republican party website in direct competition with Complainant, giving the impression Complainant is affiliated with its political competitor.  The Panelist declines to find that this is a violation of Policy ¶ 4(b)(iv) and is not bad faith registration and use….Links to the Republican National Committee website are simply not within the scope of this Policy.

As a result the Panel found that Clinton had not established bad faith and therefore DENIED the request for transfer.

DefendMyDomain Commentary: We are unsure how the Panel can square the second and third prong in light of the evidence and the finding that Respondent “use[s] the disputed domain names in order to intentionally attract Internet users to an opposing web site by creating confusion.” Since the domain was owned by “Web of Deception” and was being redirected to a Republican National Committee website, it seems clear that bad faith existed. Additionally, Respondent’s own arguments were that his reason for ownership was to show the ease of registration of such famous person domain names and was trying to promote the idea of protection under the federal statutes. One should ask whether Respondent’s use of the domain falls squarely within section 4(b)(iv) of the UDRP policy which discusses instances of evidence of bad faith and states “(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.” One should also ask whether Respondent’s admissions fit into section 4(b)(ii), which states “(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.” This single Panelist decision teaches us that for important domains, three member Panels may provide different results.

In two different decisions from the National Arbitration Forum, Improv West Associates, d/b/a Improv Comedy Clubs, was not laughing its way to winning some domain names. Improv West Associates maintain web sites at www.improv2.com, www.improv.com and www.improvclubs.com.

The first dispute was Improv West Associates v. Acimasiz Cocuq (Nat. Arb. Forum 1257098, May 12, 2009) where a single member panel was faced with a dispute over the domain www.improvcomedyclubs.com. In the decision, Complainant claims to have used the IMPROV COMEDY CLUB mark since 1963 in connection with live entertainment by stand-up comedians. The Panel noted that 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. Respondent failed to respond to the Complaint. Normally, a Panel will review all three elements in the decision, but this Panel only discussed Complainant’s failure of the third element, bad faith. The Panel explained:

Complainant argues that Respondent has registered and used the disputed domain name in bad faith in that Respondent solely obtained the disputed domain name to sell it to Complainant for value or prevent Complainant from using the disputed domain name.  Noticeably missing from the Complaint, however, is any corroborating or supporting evidence to verify this claim.  The Complaint must provide more than legal assertions and conclusions of bad faith registration and use in order to qualify for its desired remedy under the Policy, and Complainant has failed in this task.  Thus, the Panel cannot, and will not, make a finding of bad faith registration and use on the merits of the case under Policy ¶ 4(a)(iii).

Therefore, the Panel DENIED Complainant’s request for transfer.

The second dispute was Improv West Associates v. Not Applicable a/k/a Kenneth Arnold (Nat. Arb. Forum 1256834, May 13, 2009) where a single member Panel was faced with a dispute over the domain www.improvcomedyclub.com. Unlike the first case above, this Respondent put up a fight and the Panel provided an in-depth analysis of the three UDRP ICANN elements of proof and the parties’ claims.

Although most Panels normally only address the three elements stated above, this Panel created a separate section addressing “rights in a mark” for Complainant.  The Panel noted that Complainant does not have any registered marks for IMPROV COMEDY CLUB, and only recently filed trademark applications for IMPROV. Those applications remain pending, and the Panel explained the under the Policy trademark applications do not give rise to trademark rights. Therefore, the Panel was faced with determining whether Complainant had acquired sufficient common law rights. Interestingly, Complainant’s counsel submitted his own affidavit attesting to 25 years of personal experiences attending the IMPROV COMEDY CLUB. Weighing that “evidence” the Panel explained:

Ignoring those parts of the affidavit [by counsel] expressing opinions about the very issue to be determined, the Panel is prepared to accept, for the purposes of this administrative proceeding and despite the slender evidence which that affidavit provides, that Complainant has, through use, acquired common law rights in the mark IMPROV COMEDY CLUB.  The Panel is not satisfied that the same can be said in relation to the word IMPROV.

The panel next moved into the full three element analysis, where it quickly agreed that the disputed domain was identical or confusingly similar to Complainant’s mark. Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel explained as follows:

Respondent has provided no evidence to support his contention that he intends to use the domain name for the improvised comedy club services it describes or at all. He does not even identify the other domain name under which he claims to have operated a business with which the present domain name is claimed to be associated….In the absence of any evidence of use or demonstrable preparations to use the domain name since it was registered in 1999, the Panel finds Respondent has no rights or legitimate interests in the domain name.

The Panel then moved to the last element, whether the Respondent registered and used the domain in bad faith. Complainant sought an inference from the Panel that bad faith occurred as a result of a finding of no rights or legitimate interests. The Panel rejected this proposition. The Complainant also alleged that Respondent’s lack of use of the domain for 10 years also inferred bad faith in line with the famous “passive holding” case of Telstra Corp. Limited v. Nuclear Marshmallows (D2000-00003 WIPO Feb. 18, 2000). The Panel disagreed with this proposition and stated as follows:

The present case, however, is on all fours with Alberto-Culver Co. v. Pritpal Singh Channa, D2002-0757 (WIPO Oct. 7, 2002), in which the domain names were <staticguard.com> and <staticguards.com>.  The learned panelist said:
 
…Complainant relies on the idea of “passive holding” as established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This case established the proposition that doing nothing with a domain name may amount to bad faith registration and use. However the Panelist in that case was extremely careful to note that this principle does not apply to every example of passive holding. The specific circumstances in that case included false name information in the WHOIS record, false address information, failing to respond to the Complaint, an extremely famous mark within the geographical region of both Complainant and Respondent, and a mark that was entirely invented. This case has none of those features: Respondent has provided his name, and his address, and has responded within time to the Complaint. Complainant has provided no evidence that its mark is so well known that any registration (without use) of a domain name cannot help but lead to the conclusion that Respondent registered with male fides. And, unlike the mark in Telstra, the mark and the domain names here are the concatenation of two generic English words. I conclude therefore that the Telstra passive holding principle does not apply to the facts in this case.

The same words apply here with equal force, the only exception being that the name under which the domain name was registered was “Not Applicable.” The name and address of Respondent, Kenneth Arnold, were disclosed as the Administrative Contact and Technical Contact. Accordingly, registration in the name “Not Applicable” is insufficient to distinguish this case from Alberto-Culver Co., supra and insufficient to attract the “passive use” doctrine of Telstra Corp. Ltd., supra.

Ultimately, the Panel found that Complainant failed to establish the third element and DENIED the request for transfer. The Respondent also made a request for a finding of reverse domain hijacking, which the Panel rejected.