In the recent domain name dispute decision My Health, Inc. v. Top Tier Consulting, Inc. FA1332064 (Nat. Arb. Forum August 26, 2010) a single member Panel was faced with a dispute over the domain www.myhealth.com. Complainant is owns a trademark for MY HEALTH, related to, among other things, a website for medical professionals. Additionally, Complainant maintains a website at www.myhealthincorporated.com. Respondent filed a Response to the dispute, contending it registered the domain prior to the Complainant ever being in business.

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

 Both parties made objections to the level of authenticity of documents required, but the Panel explained as follows: “The Panel reminds the parties of UDRP Policy Rules ¶¶ 3(b)(xv), 5(b)(ix), and 10(d), which in sum direct all parties to submit their complete evidence and that the Panel ‘shall determine the admissibility, relevance, materiality and weight of the evidence.’”

Moving onto the substance of the dispute, the Panel quickly found that the disputed domain was identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). In addressing the next prong, whether the Respondent had any rights or legitimate interests in the domain, the Panel explained that Complainant made its prima facie case. The Panel found that “Respondent’s failure to make an active use of the disputed domain name for the last three years is evidence that Respondent lacks rights and legitimate interests in the disputed domain name as Respondent is not using the disputed domain name for either a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” The Panel also noted that the burden then shifted to Respondent to prove otherwise.

The Panel then detailed Respondents assertions about its preparations for the website as follows:

Respondent argues that it has made efforts to seek funding for its medical website and has thus demonstrated use and preparations to use the disputed domain name in connection with a bona fide offering of goods or services, namely personal healthcare and related services.  Respondent asserts that its goal has been to use the disputed domain name for a consumer healthcare portal website to put healthcare in the hands of patients and doctors, where appointments with doctors can be made, prior visits confirmed, physician consults made online, and informed decisions made when searching for a new physician.  Respondent further asserts that it has conducted a number of meetings to develop the website by either financing or joint ventures. 

Interestingly, the Panel agreed and found that these preparations were a bona fide offering of goods or services. The Panel moved onto the final prong, bad faith, and explained that there was no evidence presented by Complainant of any bad faith purchase or use of the disputed domain.

Respondent asserts, correctly, that there is no evidence that Respondent has either registered or used the domain name in bad faith as Respondent registered the disputed domain name more than fourteen months before Complainant or its MY HEALTH mark even existed.  Respondent indicates that it purchased the <myhealth.com> domain name in early February 2007 for $150,000.   Respondent further contends that this was long before Complainant’s first use of the MY HEALTH mark in mid-April 2008.  The Panel finds that Respondent’s purchase and registration of the disputed domain name nearly fourteen months before Complainant’s first use of its mark in commerce is evidence that Respondent has not engaged in bad faith registration as defined in the Policy.

The Panel, on its own noted that it could be determined that this was a case of reverse domain name hijacking, but since it was not raised nor briefed by either party it would not make such a finding. Ultimately, the Panel found that Complainant failed to establish all the elements and DENIED the request for transfer.

In the recent case of Fender Musical Instruments Corporation v. Christopher Ruth (Nat. Arb. Forum FA1333857 August 9, 2010), a single member Panel was faced with a dispute over the domain www.fendercustomshop.com. Complainant Fender Musical Instruments Corporation, is the well known seller of musical instruments, amplifiers, and accessories.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FENDER mark (e.g., Reg. No. 805,075 registered on March 8, 1966). Fender maintains a website at www.fender.com. Respondent registered the disputed domain in 2003 and failed to respond to this complaint.

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

The Panel quickly dispensed with the first prong, noting that “Based on precedent and Complainant’s trademark registrations, the Panel finds Complainant has sufficiently proved its rights in the FENDER mark pursuant to Policy ¶ 4(a)(I).” The Panel found that Respondent merely added the descriptive phrase “custom shop “ at the end of the domain, which was not enough to distinguish it from the FENDER mark.

Moving to the second prong, the Panel explained that Fender must make a prima facie case that Respondent lacked any rights or legitimate interests in the domain. The Panel found as follows:

Here, Complainant claims Respondent made no use of, or any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.  However, Complainant fails to allege any facts related to Respondent’s use or provide any screen shots of Respondent’s resolving website.  The Panel finds Complainant’s assertions, without any supporting evidence or analysis, do not sufficiently establish Respondent lacks rights or legitimate interests in the <fendercustomshop.com> domain name.  Therefore, the Panel finds Complainant has failed to make a prima facie case showing Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).

For these reasons, the Panel found that Fender failed to prove up its case, and the Panel declined to review the final element. Ultimately, the Panel DENIED Fender’s request for transfer of the domain.

In the recent domain name dispute decision of RapidShare AG , Christian Schmid v. N/A Maxim Tvortsov WIPO Case No. D2010-0696 (June 22, 2010) a single member Panel was faced with a dispute over the domain www.rapidbay.net. Complaint, Rapid Share is the well known file-hosting website which maintains a website at www.rapidshare.com. The respondent did not reply to the Complaint, but the domain was registered on September 22, 2009. Complainant owns a Community Trademark for RAPIDSHARE with a priority date of 2005.

Under Paragraph 4(a) of the ICANN UDRP 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 prong of the test, and noted that Complainant was unable to establish ownership rights to RAPIDBAY or to the word RAPID. The Panel compare the mark RAPIDSHARE with the disputed domain and could not find enough of a similarity. The Panel explained that there was no evidence presented by Complainant to show how the two names were confusingly similar. Interestingly, the Panel noted there was a disclaimer present on the website, based on a review of a cached page of the disputed domain, which noted they were not affiliated with RAPIDSHARE. Hoever, this was not addressed in the substantive portions of the decision. The Panel found that this prong was not met and declined to review the remainder of the prongs. The Panel ended its decision with this statement.

Where a complainant’s mark consists of a combination of two common descriptive or generic words, and only one of those words has been used in the disputed domain name, satisfying the requirements of Paragraph 4(a)(i) can be a formidable task. So it has proved in this case.

Ultimately, the Panel DENIED the request for transfer.

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

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

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

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

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

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

For those of you who don’t know, a company has a Federal Registration for the mark HOT RUSSIAN BRIDES. Complainant maintains a website at www.hotrussianbrides.com and they have previously been successful in using the UDRP to get some domains, such as www.hotrussianbrides.org, www.hotrussionbrides.com and www.hotrusianbride.com. However, they have also now lost two consecutive domain disputes when trying to get domains when their mark was incorporated into a  “post-domain.”

In the most recent case of Romantic Tours, Inc. v. LiquidNet US LLC (Whois Protection Dept.)  c/o Whois Agent FA1316585 (Nat. Arb. Forum, May 17, 2010) a single member panel was faced with a dispute over the domain www.agencyscams.com. Complainant alleged that the disputed domain contained information about Complainant and services which Complainant offered. What was interesting about this case though was Complainant’s allegations are based, not on the TLD (top level domain), but instead on the following post-domain: www.agencyscams.com/why/hotrussianbrides.

The Panel recognized that Complainant had a trademark registration for the mark HOT RUSSIAN BRIDES, but did not find the disputed domain to be confusingly similar to the mark. The Panel cited to Complainant’s previous earlier UDRP loss Romantic Tours, Inc. v. Whois Privacy Prot. Serv., Inc., FA 1316557 (Nat. Arb. Forum Apr. 28, 2010) (“The Panelist notes that the UDRP does not offer relief for infringements via use of registered trademarks in post-domains and that the proceedings under the UDRP may be applied only to domain names.”). For this reason the Panel found that the identical or confusingly similar prong was not met and therefore there was no need to review the remaining elements.  The Panel DENIED the request for transfer.

Let this be another lesson to domain dispute attorneys, simply having a U.S. trademark registration is not always enough. In the recent domain name dispute of A & H Sportswear Co., Inc. v. Hu Yanlin (WIPO D2010-0476, May 12, 2010) a single member Panel was faced with an interesting international dispute over the domain www.magicbra.com. Complainant is the manufacturer and designer of women’s apparel. Complainant is the owner of two trademark registrations for MAGIC BRA, 2756417 and 3335611 dating from as early as 1994. The Respondent filed a response and raised numerous objections. Some of Respondent noteworthy arguments include the following:

[T]he term “magic bra” is a descriptive term which not only refers to a brassiere which will make breasts look bigger but also refers to different methods of breast enlargement such as by nutritional, sports or medial operative means and the Complainant cannot claim exclusive rights over general and descriptive words which are used in accordance with their natural meaning….Complainant has no registered trade mark rights in China and to his knowledge does not sell its MAGIC BRA products in that country….[E]ven in the United States there appears to be several trade marks which incorporate the words “magic bra” and therefore even in the United States the term is common or descriptive…..

Interestingly when on looks at the USPTO database, there is another company who has two other trademark registrations, MAGIC BRA COLLECTION SWIM (Reg. No. 3552163) and MAGIC BRA COLLECTION (Reg. No. 3593248). The owner of those marks appears to maintain a website at www.magicbraswim.com. As Respondent noted, it does not appear as though Complainant is operating a website of their own.  The Panel agreed with the Respondent noting as follows:

The Complainant asserts that its MAGIC BRA mark is well-known and that it owns exclusive rights in relation to the mark and that people would associate the mark with products produced by the Complainant and that it has not authorised the Respondent to use its mark and essentially that the Respondent is using its mark to attract traffic to its website. However, none of these bald assertions are supported by any evidence or even by circumstantial evidence which would allow the Panel to draw appropriate inferences.

The Panel accepted Respondent’s assertions that it did not know about Complainant before registering the domain. Additionally, the Panel noted that since the disputed domain was written entirely in Chinese, and Complainant had failed to provide any evidence of registration or use in China, it would be unlikely to compete with Complainant. The Panel recognized that it was being used for a prking site, it was unclear to the Panel if that domain had been parked since its registration and if so, why Complainant waited seven years to complain. The Panel found that the two operated in separate geographical markets and found Complainant failed to submit evidence of bad faith. For all these reasons, the Panel DENIED the request for transfer.

In the recent domain name dispute decision of VRSim, Inc. v. John Makara FA1314947 (Nat Arb. Forum April 30, 2010) a single member Panel was faced with a dispute over the domain www.vrsim.com. Complainant is a Connecticut based company who creates “innovative visual environments and displays for interactive simulations.” The maintain a website at www.vrsim.net. Respondent attempted to respond to the Complaint but was late in submitting the Response in the appropriate electronic format. The Panel rejected any consideration of the Response.

Despite not reviewing the information contained in the Response, the Panel did not seem to worry too much about the factual arguments, since there was a major procedural hurdle facing Complainant, namely Res Judicata. This domain and this Respondent have been decided already under a previous decision, VRSim, Inc. v. Makara, FA 1233521 (Nat. Arb. Forum Jan. 2, 2009). Interestingly, that prior decision was based on Complainant’s failure to establish it had protectable trademark rights, since the mark was registered on the Supplemental Register. Additionally, Complainant never produce evidence showing secondary meaning.

The Panel explained that in very limited circumstances a case can be re-filed and reviewed again.

Several criteria have been set forth for determining whether a complaint may be refilled. See Grove Broad Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) (noting, and subsequently applying to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision as (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice).

The Panel found that Complainant failed to present anything to support the new case and barred it under the findings from the earlier case. For these reasons alone, the Panel DENIED the Complainant.

This should be a lesson to UDRP practitioners and trademark owners, to pay attention to details when filing a Complaint and to realize that some of the Panelists actually read these Complaints. In the recent domain name dispute decision of Letstalk.com, Inc. v. Inofirma, Ltd c/o Domain Administrator FA1310279 (Nat. Arb. Forum, April 21, 2010), a single member Panel made some harsh statements about the shortcomings of a Complaint filed by Citizen Hawk.  Although we would normally go through the elements and facts in the case, the important lesson for this posting is how the Panel addressed some procedural and substantive issues. The Complainant filed an Additional Submission to which the Panel provided the following ruling:

Having carefully reviewed Complainant’s initial submission, the Panel believes that it was prepared by some sort of automatic process with little or no human review.  For example, the Complaint refers throughout to “Complainant’s Mark(s)” and “Disputed Domain Name(s),” even though there is only one relevant mark and one domain name in dispute.  The Complaint includes an obviously false contention regarding the timing of the registration of the disputed domain name, and includes other extraneous boilerplate material (for example, argument and authorities for the proposition that a top-level domain is irrelevant to the question of identicality or confusing similarity—clearly inapplicable in this case, where the trademark includes “.com”). Given the lack of care devoted to the preparation of the Complaint, the Panel is not inclined to exercise its discretion to consider an Additional Submission from Complainant.  The Panel has reviewed the parties’ initial and additional submissions, and finds no compelling reason to consider any additional material in this proceeding.

The scolding by the Panel did not end there. The Panel skipped right to the third element, bad faith and explained that the facts were not sufficient in showing the Respondent was directing any of its activity towards Complainant or, Complainant’s customers. In fact, as the Panel noted in the Respondent’s argument section, the disputed domain was registered in 2003, whereas Complainant’s mark had not been registered until 2010. In light of the delay for filing the UDRP action, Respondent sought a ruling of Reverse Domain Name Hijacking. The Panel made the following observations:

Mere lack of success of the Complaint is not itself sufficient to demonstrate that it was brought in bad faith. Such a finding may be appropriate where the disputed domain name predates the Complainant’s trademark, see id., but in this case Complainant had made active use of its later-registered mark for several years prior to Respondent’s registration of the similar domain name.  Nor does the passage of time between the domain name registration and the initiation of this proceeding lend substantial support to Respondent’s claim of bad faith.  As noted above (in the discussion of the parties’ Additional Submissions) the Panel is quite troubled by the apparent carelessness with which the Complaint in this proceeding was prepared.

Ultimately, the Panel DENIED the Complainant’s requested transfer and found that Complainant had engaged in Reverse Domain Name Hijacking.

Normally we would spend some time reviewing the facts and findings of the case, however Domain Name Wire did a great job, so we suggest you read thier post available HERE. We were preparing to provide a full write up on this case, but they did a perfect job summarizing and highlighting what every practioner should know about domain disputes.  The case  Doctor’s Associates Inc. v. Atomix (WIPO D2010-0060, April 6, 2010) is a lesson learned for other attorneys and trademark owners. Looks like Subway needs to sell a few more $5 Footlongs.

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

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

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

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

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

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