In an odd, yet interesting recent domain name dispute, a single member Panel essentially punted on making a ruling, since the Respondent consented to the transfer. In Bond Fletcher, Chief Executive Officer c/o Typehaus, Inc. v. Brian Kemmenoe FA1316357 (Nat. Arb. Forum May 12, 2010) the dispute over the domain name www.checkjet.com barely cleared the runway before coming to a short end. Complainant has a federal registration over the mark CHECKJET for “Computer hardware and software for creating, generating and printing checks.” The disputed domain was registered in March 2007, whereas the CHECKJET trademark rights did not accrue until April 2007.
 
The domain was renewed in March 2010, shortly after Complainant put Respondent on notice of possible trademark infringement.  The Respondent replied to the dispute, noting that the domain was registered prior to the creation of any trademark rights. However, the Respondent consented to the transfer and essentially forced the hand of the Panelist. What is odd about this case is the Panelist clearly wanted to explore the facts of the case and render a full ruling.

The Panel notes that the domain name was registered before Complainant acquired any trademark rights and finds that there are no circumstances to indicate that Respondent could have had Complainant or its mark in mind when he registered the domain name in March, 2007. But for Respondent’s consent to the transfer of the domain name to Complainant, this case would have presented an opportunity to consider the careful reasoning in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688, which questions whether it is appropriate to continue to follow early Panel decisions that do not accept renewal as registration for the purposes of the Policy.

One can only wonder what the outcome would have been. It is unclear why this Panelist chose not to go through the factors, as other Panels had done, despite the Respondent’s consent for transfer. Infamous Cybersquatter Texas Property Associates often consents to the transfer, however many Panels choose to go through the full analysis anyway. Regardless, the Panel granted the TRANSFER, but made it clear there were no adverse findings to Respondent.

In the recent cybersquatting action, Asahi Breweries Ltd. v. Whois Privacy Protection Service, Inc., Demand Domains, Inc. WIPO D2009-1481 (December 25, 2009), a single member Panel was faced with a dispute over the domain www.asahibeer.com. Complainant has used the mark ASAHI for beer since 1892 and maintains a domain at www.asahibeerusa.com. The disputed domain was registered in 1998 and Respondent provided a Response to the Complaint.

Under paragraph 4(a) of the ICANN UDRP Policy, in order to obtain the remedy of transfer of the disputed domain name, Complainant must prove (i) the disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent.

Respondent requested that the decision be dismissed and agreed to transfer the domain to Complainant. Respondent sought the Panel to not render a decision in light of its agreement to transfer, but the Panel explained that Complainant’s failure to accept the offer of settlement under paragraph 17 of the Rules, it would proceed with the decision.

In addressing the first element, the Panel explained that the long standing rights to the ASAHI mark were established and that the domain was identical and confusingly similar to the domain. As a result the Panel found Complainant proved this element.

Moving to the second element, the Panel explained that Complainant made a prima facie case. The Panel found that Respondent did not use the web site for any legitimate, bona fide or non-commercial purpose. The Panel found that Complainant satisfied this element as well.

The final element, bad faith, provided more review by the Panel. The Panel found that the sponsored links to third party web sites was evidence of bad faith registration and use. Respondent argued that its offer to transfer was evidence to demonstrate its good faith. The Panel dismissed this argument noting recent cases and explained:

In some recent cases respondents have taken advantage of complainants, who in good faith had accepted their offers of transfer to settle disputes. The respondents in such cases typically put forward a proposal to transfer the domain name, with a specific request that there should be no finding of bad faith. It appears, in some of those cases, the requests for settlement were only a ploy to gain additional time in order to continue deriving the revenue generated from the disputed domain names and were apparently not genuine offers of settlement. The cases then had to be reinstituted by the complainant, while the respondent had managed to gain further time generating pay-per-click revenue in the guise of making an offer of settlement.

The Panel went further to note that bad faith had been found in cases where inadvertent registration through semi-automated processes occurred. The Panel also found that the number of cases Respondent had been involved in showed a consistent pattern and was additional proof of bad faith.

The Panel found that ASAHI proved all three elements and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of ABC Liquors, Inc. v. Texas International Property Associates – NA NA FA1266499 (Nat. Arb. Forum, July 28, 2009) a single member Panel was faced with a dispute over the domain www.abcfinewinesandspirits.com. Complainant is the well known retail store for all things alcohol, including beer, wine and liquor. ABC Liquors maintains a web site at www.abcfws.com. Respondent is the infamous domainer who has over 100 adverse decisions through the UDRP process. Anyone who has tried to find the Whois information using simple Whois search tools for domains owned by Respondent has likely hit the dead end known as Compana LLC. We have previously blogged about this Respondent, but it has been a while, so we figured this would be a good time to revisit a case with this Respondent.

On a procedural level, Respondent argued that it agreed to the transfer of the domain and provided three possible ways which a Panel could proceed which include:

(i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claims (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis or (iii)  to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right, or because there is some reason to doubt the genuineness of the Respondent’s consent.

The Panel pointed out that Respondent requested the Panel should follow choice number (1) for the following reasons:

The Respondent further states that the Panel should opt for the first alternative and grant the Complainant an immediate transfer without discussing the merits. The Respondent finds an expeditious decision to be more suited to the facts of the case, as both parties agree upon a transfer. Furthermore, the Respondent evokes arguments of judicial economy as well as Section 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), both of which, according to the Respondent, support an immediate transfer.

Interestingly Respondent requested that “it should be given the opportunity to prepare a more formal response if the Panel decides that further analysis is required.” The Panel rejected this request noting “the Respondent was already given twenty (20) days from the date of the commencement of the proceedings to submit such a response.  Had the Respondent wanted to appropriately and fully reply to the Complaint, it would have had more than enough time to do so.”

So the Panel reviewed the arguments presented and decided that it would go through the full analysis of the three elements.

However, alternatively, it may be decided that this expeditious approach would be a way for cybersquatters to avoid adverse findings against them. This is the reason why the Panel, in Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), stated that “the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.”

The decision by the Panel was fairly consistent with other Panels. The Panel found that the domain was confusingly similar and nearly identical to Complainant’s mark ABC FINE WINE & SPIRITS with the exception of the additional “s” on the end of the word wine. The Panel found that Respondent was not commonly known by the domain name and based on the typosquatting it inferred no rights or legitimate interests. Lastly, the Panel found that Respondent engaged in a pattern of bad faith registration and attempted to create a likelihood of confusion for commercial gain by using the domain.

Ultimately, the Panel ordered the domain be TRANSFERRED.

It looks like Ashley Furniture decided that too many third parties own domains that were confusingly similar to their trademarks. In eight (8) decisions, no response was filed by the Respondent. In each of those eight (8) decisions the Panel went through the three (3) step analysis required in the ICANN policies.  In the one decision where the Respondent provided a response, the Respondent consented to the transfer and the Panel decided to forgo the full analysis.
Ashley Furniture’s trademark portfolio includes, ASHLEY FURNITURE, ASHLEY HOMESTORES, ASHLEY FURNITURE HOMESTORES, A ASHLEY FURNITURE, DURAPELLA, and ASHLEY. These trademarks registrations serve as the driving force behind the domain disputes. In light of the number of disputes, it appears as though Ashley Furniture recognized the importance of enforcing trademark rights on the Internet.
 Below is a listing of all the decisions for Ashley Furniture in November, 2008:

www.ashleyhomestore.com
Ashley Furniture Industries, Inc. v Laksh Internet Solutions Pvt Ltd
Nat. Arb. Forum 1226035 (11/12/2008)

www.ashleyfurnitures.biz, www.ashleyfurnitures.net 
Ashley Furniture Industries, Inc. v Kegelmaster Intl. c/o David Wallick
Nat. Arb. Forum 1226148 (11/11/2008)

www.ashleyfurniturestore.com 
Ashley Furniture Industries, Inc. v Pluto Domain Services Private Limited
Nat. Arb. Forum 1226419 (11/14/2008)

www.ashleyfurniturecheap.com 
Ashley Furniture Industries, Inc. v Cripple Creek Roadhouse Grill c/o Michael Dills
Nat. Arb. Forum 1226654 (11/18/2008)

www.ashleyfurnitureoutlet.com 
Ashley Furniture Industries, Inc v Pluto Domain Services Private Limited
Nat. Arb. Forum 1227159 (11/18/2008)  

www.ashleyfurnituresale.com 
Ashley Furniture Industries, Inc. v Robert Cole
Nat. Arb. Forum 1227714 (11/13/2008)

www.durapella.com 
Ashley Furniture Industries, Inc. v Diamond Point Enterprises Limited
Nat. Arb. Forum 1227724 (11/12/2008)

www.ashleybeds.com  
Ashley Furniture Industries, Inc. v Transure Enterprise Ltd. c/o Host Master
Nat. Arb. Forum 1227729 (11/11/2008)

www.furnitureashley.com 
Ashley Furniture Industries, Inc. v Jack Brosseit
Nat. Arb. Forum 1228455 (11/07/2008)

In the recent case of Alliance Bernstein LP v. Texas International Property Associates (WIPO D2008-1230, October 12, 2008), another Panel found that Texas International Property Associates (TIPA) had violated the UDRP. The Complainant, Alliance Bernstein, “is one of the largest publicly traded global asset management firms in the world, with offices in 47 cities in 25 different countries, providing diversified, global investment management services to institutional, high net worth and retail clients worldwide, and managing billions of dollars.” The Complainant maintains its web site at www.alliancebernstein.com. The disputed domain was slightly changed as www.allaincebernstein.com. The Complainant owns approximately eight (8) trademark registrations incorporating the ALLIANCE BERNSTEIN mark. The Complainant’s trademark rights dated back to as early as August 1, 2002. The disputed domain was registered after the Complainant’s rights had been established.

 The Panel noted that TIPA, like it had attempted in many previous disputes, responded to the Complaint by stating that it agrees to the requested relief requested by the Complainant and consented to the entry of an order transferring the domain name. TIPA further requested, based on judicial economy, that the domain should be transferred immediately without entry of findings.

 The Panel did not grant all of TIPA’s wishes, and instead completed the UDRP analysis. The Panel explained that the disputed domain was identical or confusingly similar to the Complaint’s mark since it merely transposed two letters, and was a classic case of typosquatting. The Panel also found that TIPA lacked any rights or legitimate interests in the disputed domain since it was using the domain for links to thrid party vendors, some of which were in competition with the Complainant, for commercial gain from click-through revenues.

 The Panel also explored the last portion of the UDRP test, whether TIPA acted in bad faith. The Panel noted that Complainant has shown that TIPA is a serial cybersquatter. The Panel explained that other previous Panels had rejected TIPA’s request to forgo the analysis and discussion of the merits of the case and instead made findings relative to the three prongs of the UDRP. The Panel quoted the ealrier decision of Usborne Publishing Limited v. Texas International Property Associates, WIPO Case No. D2007-1913, which stated “If panels simply comply with respondents’ surrender when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate ‘cybersquatting’ conduct might be perpetuated.”

The Panel also quoted the decision of Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, which stated “Respondent appears to be engaged in a pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits. The Panel believes that a discussion of this pattern of conduct may be helpful to other Complainants and WIPO Panels….If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent’s failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants.”

Ultimately, the Panel GRANTED the request for Transfer and ended the decision with some commentary of its own: “The Panel finds it regrettable that the Policy and Rules do not include a provision for an award of costs and attorneys’ fees in such cases.”

In an interesting move by a panel, a Respondent’s attempt at agreeing to the transfer was not sufficient. In the case of ANOVO v. Moniker Privacy Services / Alexander Lerman (WIPO  D2008-1049, September 8, 2008), despite the Respondent’s assertion that it had no objection to the transfer of the domain, the panel decided to still go through the full three prong analysis in accordance with paragraph 4(a) of the UDRP Policy.

The Complainant is a French company incorporated since 1992 and is the owner of various trademark registrations, including a Community Trademark registration for ANOVO. Respondent registered the disputed domain, anovo.com, on May 7 2007. Respondent used Moniker Privacy Services who identified Alexander Lerman as the owner.

The Respondent’s representative proposed a suspension of the proceedings to enable the transfer to take place, by Complainant’s representative declined. Respondent noted that many prior panels had explored this similar situation, where there was a unilateral consent to transfer. See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, and Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336.

Wihtout regard to the Respondent’s consent to trasnfer, the Panel found that Paragraph 10 of the UDRP Policy did not grant broad powers to disregard the substantive requirement of paragraph 4(a) of the UDRP Policy and further found as follows:

In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” It is this Panel’s opinion that this does not mean a default decision is automatically to be issued in favour of the Complainant. Consequently, the Panel must proceed with at least a basic assessment of the Complaint on its merits.

Additionally, the Panel observed:

Nor is it necessarily true that a complainant will only cause further delay by having a case taken to a decision rather than having the proceedings suspended in reply to a respondent’s reported intention to facilitate a transfer of the domain name at issue. Past experience suggests that such expressed intentions may also be employed as a delaying tactic by a Respondent. Furthermore, in cases where a respondent believes that it is likely to lose, it may also prefer to propose a transfer simply to avoid having itself identified on the list of UDRP respondents. The Panel considers it quite understandable that a complainant, having gone to the trouble and expense of preparing and filing a Complaint, might not wish to allow the respondent to avoid a formal decision at such a late stage.

As a result, the Panel embarked through the full analysis of the three prong policy test and ultimately ordered transfer of the domain.