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Posts Tagged ‘Criticism’

RADIO SHACK Doesn’t Suck?

Tuesday, October 6th, 2009

        radio-shack

In the recent domain name dispute decision of TRS Quality, Inc. v. Gu Bei (WIPO D2009-1077, September 25, 2009) a single member Panel was faced with a dispute over the domain www.radioshacksucks.com. Complainant is the parent company of the Radio Shack Corporation (now known as “the Shack” if you have seen the new ads). They maintain a web site at www.radioshack.com and own numerous U.S. trademark registrations for the RADIO SHACK mark. The disputed domain was registered on April 27, 2007 and Respondent failed to respond to the Complaint.

Paragraph 4(a) of the UDRP Policy directs that the Complainant must prove each of the following: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and (ii) that the Respondent has 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 found that the domain contained all of Complainant’s mark with the addition of the generic word sucks. The Panel explained:

Indeed, considering the vulgar and offensive meaning of the term, it is unlikely to believe that companies would publish a website with such a self-denigrating domain name. On these grounds are based some panel decisions which concluded that a domain name containing a well-known trademark and the term “sucks” is not “confusingly similar” to the mark included in the domain name.

But the Panel also noted:

However, as held i.a. in La Quinta Worldwide L.L.C. v. Heartland Times LLC, MD Sullivan, WIPO Case No. D2007-1660, “it is not self-evident that Internet users would always take notice of the slang word following the trademark in the Domain Name and recognize its negative import”, also in light of the fact that many Internet users potentially interested in the Complainant’s services accessing to the web site “www.radioshacksucks.com” may be not fluent English-speakers.

The Panel found that Radio Shack met its first element burden and moved to the second element. The Panel noted that Complainant showed a prima facie case and explained the necessity to review the contents of the disputed domain. The Panel relied on a previous decision for the standard to apply in such a case:

Simply having a domain name with “-sucks” in the name cannot, by itself, establish fair use; one must look to the content of the website to determine if there is an exercise of free speech which allows the Respondent to rely on the fair use exception. To do otherwise would legitimize cybersquatters, who intentionally redirect traffic from a famous mark, simply through the use of a derogatory term.

In light of this the Panel found that Respondent’s domain did not point toward a legitimate gripe web site, and instead contained pay-per-click links at third party commercial web sites. The Panel also found that there is no relationship between the Complainant and Respondent and that no licence or authorization was present.

The Panel found the second element was satisfied and moved onto the last element of bad faith.  The Panel found that Respondent must have known about Complainant due to its 85 year existence prior to registration of the domain. The panel further explained that the third party pay per click links on the pages resulted in an attempt to attract users to the web site for commercial gain. Lastly the Panel found that Respondent’s failure to respond was bad faith.

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

ROCKSTAR ENERGY DRINK Silences Critics

Thursday, October 1st, 2009

          rockstar

In the recent domain name dispute decision of Rockstar, Inc. v. RSRESELLER LTD c/o Andrey Litovchenko (Nat. Arb. Forum FA1279865, September 29, 2009), a single member Panel was faced with a dispute over the domain www.thetruthaboutrockstarenergydrink.com. Complainant is the exclusive licensee of the ROCKSTAR and ROCKSTAR ENERGY DRINK marks in connection with its very popular energy drinks. Complainant has been using the marks since 1999 and has a registered trademark and maintains a web site at www.rockstar69.com. Respondent registered the domain in June 2009 and failed to respond to the complaint.

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

In addressing the first element, the Panel noted that Complainant had sufficient rights to the mark under the Policy  ¶ 4(a)(i). The Panel next compared the disputed domain to Complainant’s mark and found that the disputed domain merely added the generic phrase “the truth about” at the front of the domain. The Panel found that this difference was not significant and found the domain to be confusingly similar.

Moving to the second element, the Panel found that Complainant presented a prima facie case, shifting the burden of proof to Respondent. The Panel found that Respondent was not commonly known by the disputed domain and had no license or permission to use the mark. The most significant findings from this section though were as follows:

Respondent’s disputed domain name redirects Internet users to a website that displays critical and disparaging information about Complainant.  Previous UDRP precedent has held that a respondent does not have the right appropriate Complainant’s mark in a disputed domain name in order to exercise free speech rights on a resolving website.  Therefore, the Panel finds that Respondent has not created a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

The Panel’s support for this finding was based on one citation from a June 2000 WIPO decision and a Second Circuit decision from 2000 as well. As a result the Panel found Complainant satisfied this element as well.

In addressing the final element, the Panel explained that it was within its power to consider additional factors beyond those listed in Policy ¶4(b). The Panel acknowledged that the disputed domain resolved to a web site that criticized Complainant but quoted another decision in support of its finding:

In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel stated that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith.

As a result, the Panel found that “Respondent’s criticism of Complainant’s business through the disputed domain name was achieved only through bad faith registration and use, as Respondent misappropriated Complainant’s trademark through the confusingly similar disputed domain name.” Ultimately, the Panel found that Complainant satisfied all elements of the Policy and ordered the domain be TRANSFERRED.

TELUS CEO Darren Entwistle Gets His Name

Monday, September 14th, 2009

          telus

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.

Yale Professor Joseph Schlessinger Stops The Criticism

Wednesday, July 29th, 2009

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.

NuvaRing Can Prevent Pregnancy, But Not Criticism

Friday, June 19th, 2009

In a recent domain dispute decision of N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields (Nat. Arb. Forum 1259266, June 16, 2009) a single member panel was faced with a dispute over www.nuvaringsideeffects.com. Complainant is the owner of the popular contraceptive device and NUVARING and owns federal trademark registrations for same. Complainant maintains a web site at www.nuvaring.com. Respondent is a personal injury law firm and maintains a web site at www.injurygroup.com. Complainant contends that the disputed domain is being used by Respondent to confuse the public and tarnish the goodwill and reputation of Complainant. The Complaint explains that when a user goes to the disputed domain it seeks to solicit customers to file lawsuits against Complainant resulting from use of the NUVARING. Specifically, Complainant contends the disputed domain includes headings such as “NuvaRing Class Action Information,” “NuvaRing Side Effects – NuvaRing Law Suit,” “NuvaRing Warnings,” “NuvaRing Blood Clot,” NuvaRing pulmonary Embolism,” and “NuvaRing Lawsuit.” Respondent contends that it is using the domain in connection with a bona fide offering of goods and services, prior to notification of any dispute. Further, Respondent claims it is using the domain in a nominative fair use manner for referring to Complainant’s and their NuvaRing product. Both parties provided additional submissions which expounded on their original arguments.

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

The Panel addressed the first element, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found the domain contained Complainant’s entire mark and merely added generic words such as “side” and “effects.” This element favored transfer of the domain to Complainant.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant must first establish a prima facie case. The Panel explained:

Complainants’ evidence establishes that (i) Respondents are not licensees of Complainants, nor have they received permission or consent to use Complainants’ trademark; (ii) Complainants have prior rights in that trademark which precede Respondents’ registration of the Domain Name; and (iii) Respondents are not commonly known by the trademark.  Complainants have thus made a prima facie showing that the Respondents have no legitimate rights or interest in the domain name.

The burden then shifted to Respondent and the Panel made a finding that “Respondents prove[d] that they are using it to offer legal services in connection with consumers who may have been harmed by Complainant’s product and to provide[d] information to the public about Complainant’s product.” The Panel also reviewed and applied the standard for nominative fair use argued by Respondent, and as established by the 9th Circuit Court of Appeals case of  New Kids on the Block v. News Am Publ’g. Inc., 971 F.2d 302, 308 (9th Cir. 1991).  The New Kids case standard is as follows:

(1) The product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark may be used as is reasonably necessary to identify the product or service; and (3) the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

The Panel found that Respondent did establish its nominative fair use of the mark per appellate court precedent. The Panel also addressed Complainant’s assertion of initial interest confusion, noting as follows:

This Domain Name contains nothing to suggest that the related website would be sponsored or endorsed by Complainants or anyone else seeking to promote the NuvaRing product.  The message in the Domain Name tends in the opposite direction.  The plain meaning of the words “NuvaRing side effects” is much closer to “the NuvaRing may be dangerous or have risks associated with it” than to the kind of message that would be offered by its manufacturer.  A reasonable consumer would not assume that a website by this name would be sponsored by the manufacturer of the named product.  A description of “side effects” might be included in a website sponsored by the manufacturer, but “side effects” would not likely be in the name of the website itself.

The Panel also found that Respondent’s use of a disclaimer on the web site was further evidence of their legitimate rights and interests since it immediately and sufficiently informs users of the non-affiliation. Lastly, Complainant cites to three prior domain decisions where an attorney was using domains to promote lawsuits against AIG. (See American International Group, Inc. v. Debra Speyer, FA 422815 (Nat. Arb. Forum Apr. 7, 2005), American International Group, Inc. v. Debra Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005), and American International Group, Inc. v. Bruce Levin, FA 591254 (Nat. Arb. Forum Dec. 21, 2005)). The Panel distinguished all these cases since nominative fair use was not asserted by respondent in any of the cited cases and because “the fact that the Respondents’ use of the Domain Name here may not fit within the provisions of Policy ¶ 4(c)(iii) does not preclude them from establishing their rights or legitimate interest in some other fashion, which they have.”

Ultimately, the Panel found that Claimant did not satisfy the second element and DENIED the request for transfer. The Panel did not address the bad faith element in light of the failure to prove the second element.

Air France Jets “Suck” Up Critic’s Domain!

Friday, May 29th, 2009

In a recent WIPO decision Societe Air France v. Mark Allaye-Chan (WIPO D2009-0327, May 14, 2009) a single member panel was faced with a dispute over www.airfrance-suck.com. A brief history of the airline includes the following. Air France began operations in 1933 and operates an air transport business (involving passenger transport, cargo transport and maintenance services). Air France is a national airline, with flights to over 180 destinations and 98 countries. Air France maintains a website at www.airfrance.us.  Respondent, claimed to be Edmond Chow, and not the listed Respondent. Mr. Chow claimed that he used Mr. Allaye-Chan, his friend, to register the domain using Allaye-Chan’s already established domain name account. Air France complained that the disputed domain was not being used a gripe or “sucks” site but instead redirected visitors to a Google search engine.

The Panel reviewed the ICANN UDRP policy elements, section 4(a), wherein the Complainant must prove (i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in the disputed domain names; and (iii) the disputed domain names have been registered and used by the Respondent in bad faith.

In addressing the first element, whether the domain is identical or confusingly similar to Complainant’s mark, the Panel noted that the domain contained the entire mark of Complainant. The Panel noted that prior panels had found this element could be satisfied because the domain name incorporated Complainant’s entire mark. Interestingly, the Panel explained that there was a significant number of non-English speaking customers who will not automatically recognize “suck” as a pejorative term, since Complainant originates in France. As a result, the Panel found Complainant satisfied this “confusingly similar” element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel quoted a prior decision as follows:

Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, sets out four elements which should be met to succeed under this limb: 1. The Respondent’s use must be legitimate noncommercial or fair use; 2. The use must be without intent for comment gain; 3. The use must be without intent to misleadingly divert consumers; and 4. The use must be without intent to tarnish the trade mark of the complainant. While the Response states that the disputed domain name was registered for the purpose of a legitimate protest site, there is no evidence to support this proposition. The Respondent has not provided evidence before the Panel of any demonstrable steps it has taken to launch a website at the disputed domain name, related to his grievance with the Complainant. At the time of writing this decision, the website was not operational.

Following Mission KwaSizabantu the Panel then noted:

Admittedly the disputed domain name has only been registered for a short time (since January 5, 2009) and it may be that the Respondent has not had sufficient time to launch his protest site. However, the website has previously resolved to a Google search engine (which allows for the possibility of commercial gain), and therefore the Panel cannot see how the Respondent satisfies the four requirements set out in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279.

As a result, the Panel found that Complainant satisfied the second prong as well. Moving onto the last element, whether the Respondent registered and used the domain in bad faith, the Panel  found that “while the website may not currently be active, it previously resolved to a Google search engine, which indicates that at some stage, the disputed domain name was used for commercial gain. While there may be some other intended purpose for the disputed domain name, no clear evidence was put forward by the Respondent of such use.”

Ultimately, the Panel agreed with Complainant and ruled to TRANSFER the disputed domain.

DefendMyDomain Commentary: As noted above, the Panel found that the disputed domain had only been registered for a short time. Since the Complaint was filed in March 2009 and the domain was registered in 2009, we can only assume/recommend that domainers start “using” the domain within three months of ownership. It will be interesting to see if other Panels make similar findings.

Kohler May Still “Suck”

Thursday, March 19th, 2009

In the recent decision of Kohler Co. v. Thomas Mcivor (Nat. Arb. Forum 1245293, March16, 2009), a single member Panel was faced with a dispute over the domain www.kohlersucks.com. Complainant, Kohler, is the well known kitchen and bath supplies company. Kohler maintains a website at www.kohler.com. Kohler also sells other various services and products including furniture, engines, generators, and golf resorts. Respondent appeared to be operating a criticism web site related to Kohler. Respondent claimed to never have used the disputed domain for commercial gain and sought protection of his free speech rights.

Generally panels are tasked with the UDRP policy developed by ICANN: 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 the instant case, the Panel declined to address both the first and second prong of this test and focused its efforts on the third prong. “The Panel finds that Respondent has not registered or used the disputed domain name in bad faith since Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” The Panel went further to explain:

The Panel finds that the “sucks” suffix would create an initial impression of a complaint website that is unaffiliated with Complainant, and when coupled with a link to a better business bureau website, would reinforce this fact and be viewed as a vehicle for enabling visitors to voice complaints.

Based upon the Panel’s findings, it determined that Respondent’s use of a commentary or criticism web site demonstrated a right or legitimate interest and that it fell within the fair use exception stated in Policy ¶4(c)(iii).

Ultimately, the Panel DENIED Complaint’s request for transfer.

DefendMyDomain Commentary: As of the date of this posting, it appears that the disputed domain no longer resolves to an active website. It remains unclear if there was a post-decision settlement agreement between the parties.

ALAMO doesn’t suck!

Tuesday, December 9th, 2008

In a recent domain dispute, Vanguard Trademark Holdings USA, LLC v. European Travel Network (WIPO D2008-1325, October 31, 2008), a Panel was faced with whether or not a “sucks” web site violated the ICANN policies. Critical commentary or “sucks” web sites are many times the subject of domain disputes. Complainant is the owner of the ALAMO and ALAMO RENT A CAR trademarks, which have been in use since at least 1973. Complainant maintains a web site at www.alamo.com. The disputed domain was www.alamo-sucks.com. The disputed domain was registered on April 29, 2008.  Complainant sent the Respondent a cease and desist letter regarding the use of the disputed domain, since it was being redirected to www.lowest-car-rental-price.com, which provided links to other providers of car rentals services.  Respondent’s web site apparently did not criticize Complainant ALAMO. After receiving the cease and desist letter, Complaint changed the domain to a landing site offering the domain for sale at a price of $7,500.00.  As a result the following domain dispute was instituted.

The Panel analyzed the three prong test in the ICANN policy and first addressed whether the disputed domain was identical or confusingly similar. The Panel found that the disputed domain incorporated all of Complainant’s trademark and that inclusion of the additional term “sucks” did not dispel such confusing similarity.

In addressing the second prong, whether or not Respondent had any rights or legitimate interests in the disputed domain, the Panel made some observations regarding the Respondent’s prior use.

The use of a domain name incorporating the Complainant’s well-known ALAMO mark to redirect Internet users to a pay-per-click website containing links to other providers of vehicle rental or leasing services does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor does the offering of the disputed domain name for sale, under the circumstances of this case, fall within this safe harbor provision. To the contrary, as discussed below, such opportunistic behavior is a strong indication of the Respondent’s bad faith intent to profit from and exploit the Complainant’s mark.

As a result the Panel found that Respondent did not have any rights or legitimate interests. The Panel then reviewed the last prong, whether or not the domain was registered and used in bad faith. The Panel explained:

It is an inescapable inference from the circumstances of this case that the Respondent knew of and had in mind the Complainant and the Complainant’s ALAMO Marks when registering the disputed domain name. The Respondent’s opportunistic use of the disputed domain name to redirect Internet visitors to its “www.lowest-car-rental-prices.com” website underscores this conclusion. Such opportunistic use by the Respondent prior to receiving notice of this dispute, followed by the Respondent’s attempt to sell the disputed domain name for an amount appearing to be in excess of the reasonable out-of-pocket expenses directly related to the domain name without any evidence to the contrary shown by the Respondent, manifests the Respondent’s bad faith intent to profit from and exploit the Complainant’s ALAMO Marks. The pattern of cybersquatting indicated by prior decisions under the Policy involving the Respondent provides an exclamation point to the Respondent’s bad faith in this case.

Ultimately the Panel found that all of the ICANN prongs had been met and agreed to TRANSFER the disputed domain to Complainant.

Critical Commentary is Not Bad Faith Use of Troubled Teen Site

Monday, November 10th, 2008

In the recent decision of Susan Scheff v. Psyborgue (WIPO D2008-1177, September 22, 2008), a WIPO panel was faced with a question of a purported criticism web site. The Complainant, Susan Scheff, claims to be a “parent advocate who assists parents of troubled teens [to] research and identify programs and schools that can assist their troubled teens in getting back on track to a healthy, productive lifestyle.” She holds a registered service mark for SUE SCHEFF and another for SUESCHEFF.COM for information about parenting topics, namely drug and alcohol awareness. The Complainant operates two web sites, namely www.suescheff.com and www.helpyourteens.com.

The domain in dispute was www.sueschefftruth.com. The Respondent, who was identified as Michael Crawford, explained:

[T]hat he registered the Domain Name primarily to “provide information to the public regarding Sue Scheff, her company PURE, and the quality of services offered under that name free of charge to parents.” The website associated with the Domain Name posts Mr. Crawford’s blog comments, media articles, court documents, and postings by readers concerning the Complainant. Typical postings question the Complainant’s objectivity, assert that she or her daughter have financial ties to some of the institutions and programs that the Complainant recommends to parents, and allege that some of these programs have been implicated in charges of child abuse or neglect.

The Panel addressed the first prong of the three-part UDRP test and summarily determined that the accused domain was identical or confusingly similar to the Complainant’s marks. The Panel then focused on the second prong of the UDRP test, namely whether the Respondent had any rights or legitimate interests. The Panel noted, “On the face of it, this appears to be a legitimate noncommercial or fair use of the Domain Name. The Complainant characterizes the remarks on the Respondent’s website as ‘disparaging,’ but the Panel is not required (or equipped) in this UDRP proceeding to determine the truth or falsehood of the criticisms that appear on the website.”

Complainant argued that Respondent used the web site for commercial gain, and specifically linked to Amazon’s web site as well as a place where donations were requested. The Panel reviewed these allegations and explained:

In the Panel’s view, a link to a commercial Amazon website and a solicitation of donations, as formerly found on the Respondent’s website, are themselves insufficient in this instance to establish the Respondent’s intent to misleadingly divert consumers for commercial gain. The website is overwhelmingly devoted to criticism of the Complainant’s interests, methods, and advice, not to commercial offers or solicitations of funds.

Complainant also asserted tarnishment of her trademarks, to which the Panel quoted earlier WIPO decisions that generally rejected those assertions. “Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Claims sounding in commercial libel must be brought in other legal venues.”

The Panel then moved onto the last prong of the test, whether the Respondent registered and used the domain in bad faith. The Panel reviewed the Respondent’s web site and evidence from the internet Archive provided by Complainant.

An examination of the Respondent’s website reveals that it is decidedly polemical rather than commercial in nature. The earlier Amazon link and “shopping cart” for donations were both buried at the end of the series of blog posts. They were not prominent, and they were not even visible on the first screen. The Panel on balance finds the Respondent’s explanation credible, that these were weak attempts to help fund the website itself and not a significant purpose of the website.

Ultimately, the Panel found that the Respondent made nominative fair use of the Complainant’s name and the that modifier “truth” casts doubt as to affiliation. As a result, the Panel DENIED the request for transfer.

Withering Heights: Parody, Criticism and Free Speech in the UDRP

Wednesday, September 3rd, 2008

In a recent WIPO decision, the worlds of trademark, domain disputes, initial interest confusion, parody, criticism and first amendment all collided. In the case of Aspis Liv Försäkrings AB v. Neon Network, LLC (WIPO D2008-0387, June 2, 2008), a three member UDRP panel ruled FOR THE TRANSFER of the disputed domain. The Complainant, Aspis Pronia, was incorporated in 2004 and is successor in interest to Aspis Pronia General Insurance Company S.A (“Aspis Pronia”), a company registered in Greece. The Complainant Aspis Pronia is the owner of a Swedish trademark for ASPIS and a European Community trademark for the same mark. The disputed domain was registered in 1998, prior to the creation of the of the Complainant’s company. The Respondent’s web site was a criticism and gripe forum which was directed to Complainant Aspis Pronia, and was used for more than ten (10) years to communicate the perspective of one unhappy investor.

The panel’s decision was split 2-1 with a long, dissenting opinion. Regarding the rights or legitimate interests prong of the UDRP test, the Panel explained:

The majority of the Panel in this case are of the view that the cases cited in paragraph 2.4 of the WIPO Overview as being authority for the proposition that the use of a domain name which essentially comprised a trade mark without any additional “modifier” for a criticism site will not provide “rights” or “legitimate interests”, are to be preferred.

The majority of the Panel held that the critical commentary site at aspis.com should be transferred since the domain was Complainant’s trademark “without any additional modifier.”

One of the more interesting findings by the Panel, one which many U.S. trademark and domain owners should pay close attention to, relates to the First Amendment implications.

This conclusion involves no real curtailment of the principles of free speech. What is being curtailed is not free speech, but impersonation. A respondent can always choose a domain name that does not carry with it the perception of being authorised by the trademark owner. It is also an approach that involves no judgement being made on the content of the criticism site. Of course, it may be that as a consequence of using a different domain name less people will see the criticisms that the registrant wants to make public. However, if this is true, this of itself is evidence of the fact that the misrepresentation inherent in the domain name is the thing that draws people to the site.

The Panel’s discussion regarding bad faith also highlighted the continued split of authority regarding the use of criticism web sites.

It is not the Panel’s role to pass comment on the content of a genuine criticism website. No matter how robust that content may be, that content is incidental to the consideration of the issue of bad faith. The bad faith that exists in this and similar cases arises not from any critical statement or alleged “smear” but from the fact that the Respondent has chosen a domain name that comprises without modification a mark used by the Aspis group and the misrepresentation and impersonation that this involves.

The dissenting Panelist in this decision provided a very long opinion, which covered topics from parody, criticism, commercial use, initial interest confusion, parked pages, and generic words. This dissenting opinion was a strong, scathing indictment of the majority’s decision and discusses issues important to trademark owners, domain owners and UDRP practitioners highlighting divergent UDRP opinions.  Most likely, this case will be cited by many trademark owners fighting against criticism web sites. The larger question still remains though, namely, “What is the extent to which the UDRP process can reach into other areas of the law?”

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