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.

In the recent cybersquatting dispute of Taeho Kim v. Skelton Logic FA1305934 (Nat. Arb. Forum March 22, 2010) a single member panel was faced with a dispute over the domains www.recent.net, www.they.net, and www.than.net. Complainaint claimed to have purchased the domains on June 30, 2009 and that they were stolen in December 2009. Complainant contends the domains were ultimately resold to Respondent. As the Panel noted “The Complaint is based on Complainant’s ownership of the domain names and his stated intention to use the marks RECENT.NET, THEY.NET and THAN.NET in the future, even though he does not have a trademark or service mark corresponding to any of the domain names.”

Respondent contends to be a bona fide purchaser of the domain, which were purchased from a common domain marketplace reseller. 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.

The Panel explained that “The Policy is not designed to address cases of theft of domain names, whether brought against the alleged thief or against a subsequent purchaser.” In spite of that statement the Panel chose to review the facts under the policy and stated:

Complainant concedes that he has no trademark or service mark rights and relies solely on his prior registration of the domain names and his stated intent to use marks corresponding to the domain names in the future. Given the generic nature of the second level domains, “recent,” “they” and “that,” the mere acquisition by Complainant of the disputed domain names cannot possibly give rise to trademark rights in RECENT.NET, THEY.NET or THAT.NET. Nor can intent to use give rise to trademark rights.

For this reason the Panel DENIED Complainant’s request for transfer.

In the recent cybersquatting decision of CruiseShipCenters International Inc. v. Leonard Brody FA1297509 (Nat. Arb. Forum February 10, 2010) a single member Panel was faced with a dispute over the domain www.cruiseshipcenters.mobi. Complainant maintains a web site at www.cruiseshipcenters.com, which appears to be run in connection with Expedia. Respondent registered the disputed domain name on November 9, 2006.  The disputed domain name does not resolve to an active website. 

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 noted that Complainant had registered marks for CRUISESHIPCENTERS with Canada, the European Union and the U.S., which all were registered in early 2008. In addressing the first element, the Panel found that the registrations were enough to prove complainant’s rights in the mark. As a result the Panel found that the disputed domain was identical to Complainant’s mark. The Panel declined to review the second element in light of its findings from the third element.

The Panel explained that although Complainant proved its rights in the mark, none of the registrations predated the November 2006 registration date of the disputed domain. The Complainant failed to provide any evidence showing common law rights which may have predated the domain registration. For these reasons, the Panel found Respondent did not register the disputed domain in bad faith. Ultimately, the Panel ruled that the request for transfer be DENIED.

Inter-Continental Hotels Corporation and Six Continents Hotels, Inc. decided that one man’s ownership of 1,542 domains was just too much to bear. In the recent cybersquatting decision of Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof (WIPO Case No. D2009-1661, January 19, 2010) a single member panel had the long task of sorting through these domains. For a full listing of all the domains in dispute please see the decision.

Paragraph 4(a) of the ICANN UDRP Policy provides that a complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.

Complainants are the well known corporate owners of multiple hotel chains which include, Holiday Inn, Holiday Inn Express, Intercontinental, Crowne Plaza, Staybridge Suites, Staybridge, Hotel Indigo, Candlewood, and Candlewood Suites. For more info about Complainants go to www.ichotelsgroup.com or www.ihg.com .

The Panel, in addressing the first element noted that most of the domain names included Complainants’ trademarks with the addition of some geographic indicator. Thus the domains were found to be identical or confusingly similar. The Panel also found that many of the domains contained Complainants’ trademarks and a descriptive term. These were also determined to be confusingly similar. The Panel further found that many of the disputed domain names started with part of the Complainant’s trademark in combination with a geographic location or generic term. These were also found to be confusingly similar. However, a total of ten (10) of the disputed domain names were found to not be confusingly similar to any of Complainant’s trademarks.

The Panel quickly dealt with the second element noting:

The websites resolving from the disputed domain names create the impression that they are official websites for the relevant hotel, or potentially, that the Respondent manages the hotel. By using the Complainant’s trade marks, the Respondent is falsely suggesting he is the trade mark owner or the website is the official site for the accommodation of the Complainant’s related entities when it is not…. Accordingly, the Panel concludes that the Respondent intentionally selected domain names which contained the Complainant’s trade marks, and added a word or words which do not serve to distinguish them, but which strengthens the association with the Complainant or its goods and services, for the purpose of redirecting Internet users to his own websites. Such use cannot constitute a bona fide offering of goods of services.

Although previous domain dispute decisions have an effect on a finding of bad faith, Respondent’s lack of previous decisions didn’t sway the Panel.

The Respondent has not been named as a respondent in previous UDRP decisions. However the fact that this proceeding has been brought in relation to over 1,500 domain names which contain the Complainant’s trade marks, makes it clear that the Respondent has engaged in a pattern of registering domain names in order to prevent a trade mark owner from reflecting their mark in a corresponding domain name. The Panel’s view is further supported by the fact that the Respondent owns a vast array of other domain names. This is clear evidence of bad faith.

Ultimately, the Panel agreed that 1,519 of the domains should be TRANSFERRED. There was a remaining 23 domains, of which 13 with withdrawn and 10 were DENIED.

In the recent cybersquatting case of Digital Alchemy, LLC v. Digital Alchemy c/o Ramon Felciano FA1295928 (Nat. Arb. Forum, January 12, 2010) a single member Panel was faced with a dispute over the domain www.DigitalAlchemy.com. Complainant operates in the field of electronic CRM for the Hospitality Industry and maintains a web site at www.data2gold.com. Complainant claims no registered trademark but states it has common law rights dating back to 1996.  Respondent is a consulting firm based in San Francisco, California, specializing in business, product, and technology strategy for life sciences, healthcare and technology markets. Respondent claims to have been offering its consulting services since 1993.

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

In addressing the first element, the Panel noted that the disputed domain is identical to the DIGITAL ALCHEMY mark. But the Panel found that Complainant failed to demonstrate it has rights to the mark. The Panel criticized the Complainant’s contention that it had used the mark in connection with its services since 1996, noting that it was a conclusory statement lacking sufficient evidence. The Panel further finds that Complainant failed to present evidence of secondary meaning. The Panel cited to another prior decision and explained.

 In declining to recognize the complainant’s common law mark in Kip Cashmore the panel stated:  “Here, Complainant has not presented any credible evidence establishing acquired distinctiveness [for the complainant’s goods and services]. The record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin or services. Complainant’s record consists of merely a declaration of Complainant with unsupported facts…” Here the record is even more paltry than in Kip Cashmore, as there isn’t even a self-serving declaration by Complainant that its mark serves as an identifier of its goods and services in the public’s mind.

Moving to the second element, the Panel continued its analysis. The Panel found Complainant failed to present a prima facie case. Respondent presented evidence of doing business since 1993 under the Digital Alchemy name, which was prior to Complainant’s use. The Panel dismissed Complainant’s Additional Submission argument that there was no proof of continuos use by Respondent, noting the UDRP had no such requirement. The Panel also dismissed Complainant’s contention that the offer to sell the domain, after being solicited by Complainant did not satisfy this element.

In addressing the final element, bad faith, the Panel explained:

Given Respondent’s use of the Digital Alchemy name in its business since 1993, and the Panel’s finding that Respondent has rights and legitimate interests in the domain name, the Panel concludes that Respondent did not register and is not using the domain in bad faith. Indeed, as prior panels have held, once a panel has determined that a respondent has rights and legitimate interests in a domain name, the question of bad faith is moot.

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

In the recent domain name dispute decision of Hargrave Arts LLC c/o Carter Hargrave v. Chiefasian LLC c/o Martin Eng FA1294273 (Nat. Arb. Forum, December 31, 2009), a single member Panel was faced with a dispute over the domain www.jeetkunedo.com. Complainant is the owner of multiple Jeet Kune Do related domains, including www.jeetkunedo.net and www.jeetkunedo.org. Mr. Hargrave is the president of the World Jeet Kune Do Federation. He claims common law trademark rights to the mark JEET KUNE DO. A little background is necessary, for an understanding of the origins of JEET KUNE DO. This form of martial arts was founded by Bruce Lee in the late 1960′s. According to the decision, Complainant is one of about 50 certified instructors. The disputed domain was registered on March 6, 2000 and Respondent provided a response to the complaint.  Although the Response was not provided the Panel noted that Respondent claims Hargrave does not have rights to the JEET KUNE DO mark.

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.

The Panel addressed the first element explaining that Complainaint contends he acquired rights to the JEET KUNE DO mark from Bruce Lee and the Bruce Lee Jeet Kune DO School. However, the Panel notes that Hargrave fails to provide any evidence that it represents Bruce Lee or the Bruce Lee School. Additionally, Hargrave fails to provide any evidence that any of the rights to the JEET KUNE DO mark were assigned or licensed to him. For these reasons, the Panel found that Hargrave did not satisfy the first element.

The Panel did not review the remaining elements and DENIED the request for transfer.

In the recent domain name dispute decision of Kim Laube & Company Inc. v. RareNames, WebReg FA1291282 (Nat. Arb. Forum December 22, 2009) a three member Panel was faced with a dispute over the domains www.natureschoice.com and www.natures-choice.com. Complainant sells pet grooming products and has a a trademark registration for the mark NATURE’S CHOICE. Respondent provided a response to the complaint and registered the disputed domains in 2002 and 2003.

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

The Panel addressed the first element of the analysis and explained that the domains were identical or confusingly similar to Complainant’s mark. Although Respondent argued that Complainant could not hold exclusive rights on the common words, the Panel dismissed this argument under this prong of analysis.

The Panel declined to address the second prong, directing its attention to the third prong. First the Panel noted that there was no evidence presented that Respondent’s registered the domains primarily for the purpose of disrupting Complainant’s business.  The Panel only paid serious attention to Policy ¶4(b)(i) and (iv). Those sections state:

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or…

(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.

The Panel explained as follows:

Turning first to Policy ¶ 4(b)(i), Respondent states that its business is the acquisition then sale of domain names for profit.  The only important issue is whether Complainant can point to circumstances indicating that Respondent registered the names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.

Likewise, Policy ¶ 4(b)(iv) requires proof that Respondent for commercial gain; intentionally used the disputed domain name to attract web users; to an on-line location; by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that on-line location, or of a product or service at that location.

Once more, the key issue is whether Respondent can be said to have used the domain names in a way which intentionally created a likelihood of confusion with Complainant’s trademark.

The Panel recognized that there are other contrary decisions on this topic but noted that their view was that “proof of actual knowledge of a Complianant’s trademark rights is necessary.” The Panel explained that in the situations where there is a trademark with descriptive elements, then the onus rises on proof of knowledge. The Panel discounts the arguments put forth by Complainant of its common law rights, based on a lack of evidentiary support. The Panel concluded by noting:

Taking account of the inherently descriptive character of both the trademark and the disputed domain name, the degree to which either very similar domain names or identical domain names with different extensions have been registered/used by others, the lack of evidence that Respondent has habitually abused third party trademark rights, and all of the circumstances, the Panel finds that neither Policy ¶ 4(b) (i) or (iv) is made out.

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

In the recent domain name dispute decision of Greatwater, Inc. v. Greatwater Custom Label (2004) Inc FA1287920 (Nat. Arb. Forum November 25, 2009) a single member Panel was faced with a dispute over the domains www.greatwater.com and www.nationwidesprings.com. Complainant is the supplier of private label bottled water. Complainant originally registered the greatwater.com domain and its parent company purchased the nationwidesprings.com domain. Complainant’s company was sold to a third party company, who in turn sold it to a fourth company. That fourth company supposed then sold it to a fifth company, but started their own new bottled water business (Respondent) in competition with Complainant. That competition included Respondent maintaining control of and using the two disputed domains. Respondent argues that Complainant has failed to show it has any trademark rights, and challenges that Complainant has not established secondary meaning.

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

In addressing the first element, the Panel found that Complainant failed to establish common law rights through secondary meaning of either domain name. Although the Complainant failed to prove the first element the Panel chose to review all of the elements.

Moving to the second element, the Panel found that Complainant failed to present a prima facie case in support of its arguments.

Respondent presents evidence and argues that it has used the disputed domain names in connection with its business selling bottled water since its incorporation in 2004. The Panel finds that Respondent has made demonstrable use the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)….Respondent argues that Respondent has been commonly known by the disputed domain names since its incorporation in 2004 for the business of selling bottled water. The Panel finds that Respondent has rights and legitimate interests in the disputed domain names due to it being commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).

The Panel moved to the final element, bad faith, noting that Complainant did not present sufficient evidence. The Panel concluded that since Respondent had rights or legitimate interests in the domains, they had also not registered the domains in bad faith.

Ultimately, the Panel DENIED Complainant’s request to transfer the domains.