In the recent cybersquatting case of Omega SA v. Domain Admin1302921 (Nat Arb. Forum, February 24, 2010) a single member Panel was faced with a dispute over the domain www.omegawatchstore.com. Omega is the well known watch maker with rights to the mark OMEGA. They maintain a web site at www.omegawatches.com. Respondent registered the disputed domain on March 6, 2009 and failed to respond to the 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.

In addressing the first element, the Panel noted that Complainant established rights to the OMEGA mark pursuant to Policy ¶4(a)(i). The Panel found that the disputed domain merely added the descriptive phrase watch store, creating a confusingly similar domain to that of Complainant’s mark. The Panel found Complainant satisfied this element.

Moving to the second element, the Panel found that OMEGA set forth a prima facie case, but decided to review the evidence anyway. The Panel found that the Whois information for Respondent did not show that it was commonly known by the domain. Additionally, it was determined that the disputed domain sold counterfeit watches, which was not a bona fide offering of goods. The Panel found this element was satisfied by OMEGA as well.

For the last element, bad faith, the Panel explained that the selling of counterfeit goods constituted a disruption of OMEGA’s business. This attempt to redirect consumers for profit was evidence of bad faith.

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

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.

In the recent cybersquatting action JetPay, LLC v. JetyPayments FA1294887 (Nat. Arb. Forum, January 6, 2010) a single member Panel was faced with a dispute over the domain www.jetypay.com. Complainant offers credit card and check authorization processing services since 2000 and maintains a web site a www.jetpay.com. Complainant holds a trademark registration for the JETPAY mark. Respondent registered the disputed domain in December 2007 and failed to respond to the 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.

In addressing the first element, the Panel noted that Complainant established its rights in the JETPAY mark pursuant to the Policy. Additionally, the Panel found that Complainant provided sufficient evidence of common law rights and secondary meaning for the mark dating back to 2000. A comparison of the mark with the disputed domain showed that Respondent merely added the letter “y” in the middle. As a result, the Panel found this to be confusingly similar.

Moving to the second element, the Panel explained that Complainant set forth a prima facie case, shifting the burden to Respondent. Interstingly the Panel found that although Respondent appeared to be commonly known by the disputed domain, it still lacked rights and legitimate interests in the domain. The Panel explained that Respondnet’s use of the domain, namely selling goods or services similar to Complainant’s was not a bona fide offering nor a legitimate noncommerical use. As a result, the Panel noted Complainant satisfied this element.

The last element, bad faith, was also favorable to Complainant. The Panel explained the disputed domain linked internet users to a website offering similar products and services as those of Complainant. This was found to be bad faith under the Policy. Additionally, the use of a confusingly similar domain name to attract users for profit, creates a strong likelihood of confusion, thus also being bad faith.

Ultimately, the Panel found that Complainant satisfied all three elements and ordered the domain be TRANSFERRED.

In two recent domain name dispute decisions, Mattel, Inc. v. Bladimir Boyiko (Nat. Arb. Forum, FA1290718, Dec. 16, 2009) and Mattel, Inc. v. Domain c/o VO (Nat. Arb. Forum, FA1289791 Dec. 15, 2009) two separate three member Panels were faced with disputes over www.wwwhotwheels.com and www.hotwheels.org. Mattel is the well known toy company responsible for the HOT WHEELS die cast cars. HOT WHEELS were first sold in the U.S. in 1968. Complainant operates web sites at www.hotwheels.com and www.mattel.com. Both Respondents failed to provide a response to the complaints.

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.

In the first case referenced above, the Panel recognized Mattel’s HOT WHEELS mark and had  “no difficulty in finding that the Domain Name is confusingly similar” to the mark. Mattel presented a prima facie case, which included an argument that Respondent was not commonly known by the disputed domain. Additionally, as the Panel found, Respondent was using the domain for third party link click through fee generation.  Lastly the Panel noted that the domain was an example of typosquatting. The Panel found that Respondent was involved in other UDRP proceedings and therefore was engaged in a pattern of bad faith.

In the second mentioned case, the Panel also noted that the HOT WHEELS mark was well known throughout the world and that the domain was identical to the disputed domain. The Panel found that Respondent was not commonly known by the disputed domain and that Mattel had presented a prima facie case. Lastly the Panel found that Respondent’s inaccurate or incomplete contact information was evidence of bad faith. Additionally, Respondent’s failure to respond was evidence against.

Ultimately, the Panels found in favor of Mattel and ordered the domains be TRANSFERRED.

In the recent domain name dispute decision of The Office Club, Inc. and Office Depot, Inc. v. Name Holding Company c/o Name Holding FA1287148 (Nat. Arb. Forum, November 16, 2009), a single member Panel was faced with a dispute over the domain www.officedpot.com. Complainant, Office Depot is the well known office products retailer and has used the OFFICE DEPOT mark since 1986. Office Depot maintains a website at www.officedepot.com. Respondent registered the disputed domain in May 2000 and failed to respond to this dispute.

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.

In addressing the first element, the Panel noted that Complainant established rights in the OFFICE DEPOT mark. The Panel explained that the disputed domain differed from the mark only in that there was no space and the domain had removed the second letter “e” from the word. The Panel found this to be too close and thus confusingly similar to the OFFICE DEPOT mark.

Moving to the second element, the Panel noted that Office Depot presented a prima facie case, b ut still reviewed the record in consideration of the elements. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the disputed domain resolved to a web site where links to competitors were presented. This was considered to not be a bona fide offering of services. As a result, the Panel found Office Depot satisfied the second element.

The Panel analyzed the last element, bad faith, the Panel found that Respondent’s web site was disrupting Office Depot’s business by its competitive activity. Additionally, since Respondent was presumably commercially benefitting from the competing products and services, this was an intentional creation of likelihood of confusion.

Ultimately, the Panel found that Office Depot proved all three elements and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of APPLE INC. v. Fusion Media Ltd. FA1288071, (Nat. Arb. Forum, November 18, 2009) a single member Panel was faced with a dispute over the domain www.ipodnano.com. Apple needs no introduction, nor should an explanation of the iPod be needed. If you are so curious and have been living under a rock though, please go to www.ipod.com or www.apple.com. Respondent registered the disputed domain in September 2005 and failed to respond to the dispute.

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 examined the first element of the Policy, noting that Apple had sufficient rights and trademark registrations for the IPOD mark. It found that the addition of the word “nano” created a confusing similarity to Apple’s IPOD mark since it has an obvious relationship to the products sold. The Panel found that Apple satisfied this element.

Moving to the second element, the Panel explained that Apple presented a prima facie case, but decided to review the record anyway. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the Panel explained:

Complainant argues that Respondent’s <ipodnano.com> domain name resolves to a website soliciting Internet user’s personal information, presumably for marketing leads, by offering a “giveaway” of ipod nanos.  The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Respondent’s website soliciting personal information by promising a “giveaway” of ipod nanos, presumably for financial gain, does not constitute 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).

As a result, the Panel found that Apple satisfied the second element. The Panel, in addressing the last element, bad faith, explained that Respondent’s use of the disputed domain intentionally caused a likelihood of confusion. Additionally, Respondent commercially benefitted by gaining marketting leads through the web site. For these reasons, the Panel found this third element was satisfied.

Ultimately, the Panel found that Apple proved all three elements and ordered the domain be TRANSFERRED.

In the recent domain name dispute of Provide Gifts, Inc. d/b/a RedEnvelope v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin FA1286921 (Nat. Arb. Forum, November 9, 2009) a single member Panel was faced with a dispute over the domain www.redenevelope.com. Complainant is the well known online gift retailer who maintains a web site at www.redenvelope.com. Respondent registered the disputed domain in August 2000 and failed to reply to the Complaint.

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.

In addressing the first element the Panel noted that Complainant had rights to the RED ENVELOPE mark through various trademark registrations. The Panel found that the disputed domain contained a misspelled version of Complainant’s RED ENVELOPE mark which was confusingly similar. The Panel found that Complainant satisfied Policy paragraph 4(a)(i).
 
Moving to the second element, the Panel found that Red Envelope presented a prima facie case and that Respondent failed to submit a response. The Panel found that Respondent was not commonly known by the disputed domain, was using the domain to display links advertising third-party web sites in competition with Red Envelope, and engaged in typosquatting. All these factors culminated to a conclusion that Respondent lacked any rights or legitimate interests in the domain. The Panel found Red Envelope satisfied Policy paragraph 4(a)(ii).

In reviewing the third element, bad faith, the Panel began by explaining:

…Respondent intended to disrupt Complainant’s business and take advantage of Complainant’s goodwill surrounding its mark by displaying third-party links to Complainant’s competitors in the online retail industry for upscale gifts.  The Panel therefore finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). 

The Panel also relied on another bad faith factor and explained:

Additionally, Respondent has created a substantial likelihood of confusion as to the source and affiliation of the <redenevelope.com> domain name and the corresponding website.  Respondent benefits from such a likelihood of confusion, as it receives referral fees for the competitive upscale gifts advertisements that are displayed to the diverted Internet users.  The Panel finds this to be adequate evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 

The Panel didn’t stop there noting that the typosquating also qualified for proof of bad faith under Policy paragraph 4(a)(iii).

Ultimately, the Panel found that Red Envelope satisfied all elements of the ICANN UDRP Policy  and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Netflix Inc. v. Domain Name (FA1287000, Nat. Arb. Forum November 9, 2009), a single member arbitrator was faced with a dispute over the domain www.netfilx.com. Netflix is the well known online movie rental service and owns multiple registrations for the NETFLIX mark. Netflix operates a web site at www.netflix.com.  The disputed domain was registered on September 27, 1999 and Respondent failed to respond to the Complaint.

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.

In addressing the first element, the Panel found that Netflix had established its rights in the mark NETFLIX through its trademark registrations. The Panel noted that the domain was a misspelled version of the NETFLIX mark, where the “i” and “l” were switched. The Panel found that the domain was confusingly similar and that Netflix had satisfied this element.

Moving to the second element the Panel explained that Netflix made a prima facie case in support of its allegations. The Panel chose to analyze the facts presented despite Respondent’s failure to provide a response.

The Panel finds that registrant’s WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name.  Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain name….Respondent’s <netfilx.com> domain name resolves to a blank website.  The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

Interestingly, the Panel notes that Netflix failed to allege abuse through the misspelling, but the Panel still found this to be relevant in the overall decision. The Panel found that Netflix satisfied this element as well.

Moving to the final element, the Panel found that the disputed domain remained inactive, and that such inactivity was evidence of bad faith. Additionally, the Panel found that the typosquatted version of Complainant’s mark NETFLIX also constituted bad faith. Ultimately, the Panel found that Netflix proved all three elements and ordered the domain be TRANSFERRED.

In a rarely reported section of the domain dispute world, one of DefendMyDomain’s friends had a successful result with the Czech Arbitration Court. Marc Randazza braved the realm of the CAC in a domain dispute, (available here) against Gu Bei, who is slowly becoming an infamous cybersquatter. The disputed domain was www.sublimedirectories.com. We recently reported on another case where Disney won against this same Respondent. (available here). In the instant dispute, Mr. Randazza represented Redfan of Panama, Inc., who runs an aggregation web site containing links and information about adult entertainment. Complainant owns the mark SUBLIME DIRECTORY, with rights dating back to 1996, and maintains a web site at www.sublimedirectory.com. Respondent registered the domain on August 18, 2009 and failed to respond to the Complaint.

The normal UDRP rules apply in the CAC, wherein Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel, addressed the first element and found that Complainant had established rights to the mark SUBLIME DIRECTORY. The Panel found that the disputed domain was merely a plural form of the mark, thus it was confusingly similar. Moving to the second element, the Panel confirmed that the disputed domain contains content related to adult entertainment, which is similar to Complainant’s. The Panel found that Complainant had presented a prima facie case and Respondent’s failure to respond was sufficient to make a finding of lacking rights or legitimate interests. Lastly, the Panel reviewed whether the disputed domain was registered and used in bad faith. The Panel found that once the first two elements were proven and that the disputed domain was used in connection with a web site offering similar goods or services, that bad faith can be found. AS a result, the Panel found that Complainant satisfied all elements of the Policy and ordered the domain be TRANSFERRED.

A tip of the hat goes out to Randazza for braving the CAC.

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.