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Posts Tagged ‘Fair Use’

P90X Guarantees Results…Just Not These Kind of Results

Thursday, May 5th, 2011

In the recent domain name dispute of Beachbody, LLC v. Gregg Gillies (WIPO Case No. D2011-0358, April 21, 2011) a single member panel was faced with a dispute over the domain www.p90xworkoutschedule.com. The disputed domain was registered on June 11, 2009 and Respondent provided a brief response which included the following statement:

There is no confusion or misrepresentation on the site as to whether it’s the original p90x site or owned by Beach Body, LLC. It clearly gives a review of the product (p90x), which I own, and in fact, even gives a positive review, so I clearly not trying to harm Beach Body or alter sales of p90x in a negative way. I use the site to share my experiences with p90x and to specifically talk about its workout schedule. I don’t pretend to be an official site, nor do I try and confuse anyone about that fact.

Complainant owns multiple trademark registrations in the U.S. and internationally related to its P90X mark. Complainant maintains a website at www.beachbody.com and also owns the domain www.p90x.com, which is forward to its main site.

Paragraph 4(a) of the UDRP ICANN Policy requires that the Complainant must prove each of the following three elements to obtain an order that Disputed Domain Name should be cancelled or transferred. (i) The Disputed Domain Name is identical or is confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) The Disputed Domain Name has been registered and is being used in bad faith.

In addressing the first element the Panel noted that the “addition of a generic or highly descriptive term does not serve to distinguish between the mark of the complainant and the disputed domain name.” The Panel ultimately found that the domain was confusingly similar to Complainant’s mark. In addressing the second element, the Panel explained that Respondent’s name has no correlation to the disputed domain and there is no evidence of authorization or a license. However, the Panel refrained from making its decision on this prong, noting that the third prong would address concerns of the case.

The third prong, registration and use in bad faith, resulted in the most detailed analysis for this Panel. The Panel made the following observation about Complainant’s pleadings:

The heart of the Complainant’s claim in these proceedings is that, under paragraph 4(b)(iv) of the Policy, the Respondent is using the Disputed Domain Name to draw people to its site for the purpose of the promoting the e-book “Truth About Six Pack Abs.” However, the Complainant has not provided any explicit evidentiary support for this claim, other than to refer generally to Respondent’s website accessible through the Disputed Domain Name. The Complaint does not set out where on the website the Respondent has been promoting the e-book “Truth About Six Pack Abs.” Review by the Panel of the exhibits and other materials provided by the Complainant in the Complaint did not disclose any explicit reference to the promotion and sale of the e-book “Truth About Six Pack Abs.”

As a result, the Panel issued an Administrative Procedural Order seeking additional evidence and information, to which Complainant simply restated its prior allegations and failed to provide additional evidence. The Panel also noted that Respondent provided a disclaimer on the disputed domain as the lack of affiliation. In light of that disclaimer the Panel explained:

However, when there is a disclaimer on the Respondent’s website where there is a colorable argument of legitimate use, and the Complainant has provided no convincing evidence to support its claim of bad faith by the Respondent, such a disclaimer may serve to buttress Respondent’s claim that it has not acted in bad faith. The Panel finds that is the situation here. The Panel further takes note of a number of “Ads by Google” apparently present on the website, amidst Respondent’s described work-out schedule. However, even if these might in some way be indicative of use by the Respondent in bad faith, the Complainant has made no contention or submission whatsoever on this issue. As such, based on the record of the Complaint, the Panel does not find it sufficient to carry the balance in the Complainant’s favor.

Ultimately, the Panel found that Complainant failed to satisfy all three prongs and DENIED the request for transfer.

KILLER BROWNIE Delivers A Death Blow

Wednesday, August 19th, 2009

         killerbrownie

In the recent domain name dispute of Dorothy Lane Market v. Tony Chang FA1271237 (Nat. Arb. Forum August 18, 2009) a single member Panel was faced with a dispute over the domain www.killerbrownie.com. Complainant markets and sells a multilayed brownie called the KILLER BROWNIE. The maintain a web site at www.dorothylane.com and have a federal trademark registration for KILLER BROWNIE with rights dating back to at least 1988. Respondent registered the disputed domain in September 2006 and failed to respond to the dispute.

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 the disputed domain contained all of complainant’s mark, with the omission of the space between the words and the addition of the generic top level domain “.com” The Panel found the domain was identical to Complainant’s mark.

Moving onto the second element, the Panel explained that although Complainant had shown a prima facie case, it would still review the record. The disputed domain resolved to a web site containing Respondent’s personal biography and resume. The Panel found “that Respondent’s use of the identical <killerbrownie.com> domain name, to divert Internet users to a website that is unrelated to Complainant’s KILLER BROWNIE mark, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii), respectively.” The Panel also noted that Respondent was not commonly know by the disputed domain.

Moving to the final element, bad faith, the Panel explained that under the Policy, “that it may look beyond the Policy ¶ 4(b) elements while considering a Policy ¶ 4(a)(iii) analysis, and may find bad faith registration and use from the totality of the circumstances under Policy ¶ 4(a)(iii).” The Panel found that there appeared to be no commercial use of the site, but that the disputed domain lends itself to the impression that there was a goal of confusion.

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

DefendMyDomain Commentary: At first blush, it is unclear why the Panel did not view Respondent’s use of a personal web site as fair use. Actual review of the disputed site may better answer that question. For instance, the site was purportedly registered by Respondent in 2006 yet it has a “2000-2008″ copyright notification on the site. Also it lists a different domain at the bottom, www.eliminated.org, which has the identical information. Therefore one can only assume there was never an intention to actually use the site as a blog, despite wording on the site to the contrary. Since the Panel decision did not mention any of these facts we cannot assume they were actually considered. If they weren’t considered, then we have concerns about the potential implications of this decision. As usual the world of domain disputes remains uncertain.

Comparison Site Considered Commercial-Transfer Ordered

Tuesday, August 11th, 2009

In the recent domain name dispute decision of C. Crane Company Inc. v. Robbie Crossley (WIPO D2009-0815, August 10, 2009), a single member Panel was faced with a dispute over the domain www.geobulbs.com. Complainant sells radios and LED lighting products branded as GEOBULB and maintains web sites at www.geobulb.com and www.ccrane.com. Respondent had some prior relationship with Complainant, which the Panel was unable to surmise, but which became relevant later in determining the knowledge of Respondent at the time of registration. Complainant has a federal trademark registration and the disputed domain was registered before Complainant’s federal trademark application.

geobulb

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 quickly found that the disputed domain was confusingly similar to Complainant’s mark, in that it merely was a plural form of the mark. Moving to the second prong, the Panel spent more time reviewing the facts presented by each side. The Panel found Complainant presented a prima facie case and shifted the burden of proof to Respondent. The Panel explained that Respondent’s use of the domain was done in two ways. First the domain was redirected to Complainant’s web site. The Panel found Respondent intended this use to be temporary and thus not legitimate.

Respondent’s second use of the domain was that of a comparison site. Respondent argued the site was entirely non commercial with no products being offered for sale. However, in emails exchanged between the parties, Respondent offered to sell the domain to Complainant and noted that the decrease in recent sales by Complainant should help Complainant to determine how much the domain is worth. The Panel used this information and found as follows:

In this context, even if no products were actually sold through the disputed domain name, the “comparison site” was commercial – a means to get a higher price from sale of the disputed domain name or otherwise acquire (to use Respondent’s phrase) “something beneficial for . . . myself” – and not legitimate for purposes of paragraph 4(a)(ii) of the Policy.

Ultimately, the Panel found that Respondent lacked any rights or legitimate interests. Moving to the last element, bad faith, the Panel addressed Respondent’s argument that a domain registered prior to acquisition of trademark rights could not be in bad faith. The Panel explained however, the WIPO consensus view on an exception to that general concept.

“However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.” (WIPO Overview Paragraph 3.1)

The Panel found that since Respondent knew about Complainant’s mark prior to registration, this was sufficient to find bad faith. 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.

Christian Dior Fails Against Pornstar Kianna Dior

Tuesday, June 9th, 2009

In the recent decision of CHRISTIAN DIOR COUTURE v. Kianna Dior Productions (WIPO D2009-0353, May 24, 2009),  a single member Panel was faced with a dispute over the domain www.kianndior.com. Complainant, famous French fashion house known for fragrances, clothing and other fashion accessories and maintains a web site at www.dior.com. Respondent, is a well known pornstar working in the adult entertainment industry for more then a decade and also maintains an additonal web site at www.kiannaxxx.com. The Panel noted that Christian Dior must prove three elements under the ICANN UDRP policy section 4(a) which include: “(i) the domain name is 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 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, whether the domain was identical or confusingly similar to Complainant’s mark(s), the Panel first noted there was no doubt that Complainant had trademark rights in DIOR, CHRISTIAN DIOR and MISS DIOR. Complainant argued that since the domain wholly incorporates the DIOR mark, that it would be sufficient to establish confusing similarity. Interestingly, the Panel stated:

This Panel is of the opinion that the unqualified statement that confusing similarity exists if a disputed domain name completely incorporates the relevant trademark does not, without more, prove dispositive in the present case. For example, the Complainant’s trademark DIOR could be wholly incorporated in the hypothetical domain name <diorama.com>, however the word “diorama” has, in English at least, an independent dictionary meaning which dispels any confusion with DIOR. The trademark NIKE is incorporated within, for example, the domain name <nikethamide.com>, a drug used as a respiratory stimulant. In such cases, there may very well be no confusing similarity. Added matter invites a contextual comparison on a case by case basis. Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity.

Ultimately though, the Panel concluded that Complainant had established this element and that the domain was confusingly similar to the Complainant’s DIOR mark.

Moving to the second element, whether Kianna Dior had any rights or legitimate interests in the domain, the Panel noted that Complainant established a prima facie case. Once a Panel makes that determination, the burden of proof switches to Respondent. The Panel relied on evidence and arguments presented by Respondent that Respondent’s company, Kianna Dior Productions was an active corporation which registered the domain. The Panel in analyzing the facts made the following finding:

Paragraph 4(c)(ii) of the Policy requires only that the Respondent has been commonly known by the domain name. The Panel finds that by virtue of use since 2001, the Respondent (to use the words of paragraph 4(c)(ii), “as an individual, business, or other organization”) has provided evidence of being commonly known in her industry and by her audience by the domain name. If the Respondent is infringing the Complainant’s trademark rights, the Complainant may initiate infringement proceedings in an appropriate court. But in this case, the Panel has applied the Policy to the facts, and that includes paragraph 4(c)(ii). The Panel finds that the Respondent has on balance discharged the onus which fell to it under paragraph 4(a)(ii) of the Policy and accordingly finds that the Complainant has in the present administrative proceedings failed to establish the second limb of its case.

As a result, the Panel declined to review the final bad faith element, since Complainant failed to establish the second element. The Panel DENIED Complainant’s request for transfer.

DefendMyDomain Commentary: But See our previous posting on June 8, 2009, “Jim’s Dead, But His Music and Persona Only Live On In One Jim Morrison Domain” wherein the JimMorrison domain was Transferred.

Jim’s Dead, But His Music and Persona Only Live On In One Jim Morrison Domain

Monday, June 8th, 2009

In the recent decision of The Estate of Jim Morrison a/k/a Lou and Pearl Courson v. Rick Sentieri, Communication Services Group (WIPO D2009-0334, May 29, 2009), a single member Panel was faced with a dispute over the domain www.jimmorrison.com . Jim Morrison was the hard partying, sultry and sexy front man for the 1960s band The Doors. Information about Jim Morrison and The Doors can be found at www.thedoors.com. Complainant represents Morrison’s estate and provided additional information about his success and credits, which included being a playwright and poet.

The Panel reviewed the three element ICANN UDRP Policy where Complainant must prove (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the 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.

In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel first dealt with whether Complainant had a protectable mark. The Panel noted that Complainant did not have a federal trademark registration or application. However, after reviewing the evidence presented by Complaint initially and through an Additional Submission, the Panel found Complainant had established common law rights in the mark Jim Morrison. The Panel then quickly found that the domain was identical or confusingly similar to Complainant’s mark, since it wholly incorporated all portions of the mark.

Moving to the second prong, whether Respondent had any rights or legitimate interests in the disputed domain, the Panel noted that once Complainant makes a prima facie case, the burden shifts to Respondent. The Panel referenced Respondent’s reply as follows:

Respondent refers to himself as “Rick Sentieri aka Jim Morrison.” He registered the Domain Name on March 1, 1997, twelve years ago. Respondent uses the Domain Name to operate a web site which sells posters of entertainers (including Jim Morrison and The Doors), and it advertises and sells other merchandise and services for third parties through links. Respondent’s (sole) reply of April 6, 2009 was an email having as the Subject Line: “please leave me alone you are making me sick and very unhappy.” The e-mail included a poem Respondent allegedly wrote and the following message:

“I have received your letter that has print outs of my web site, <jimmorrison.com>. Your organization has violated my webpage disclaimer. You must have written permission to produce copies of my web page. Please read disclaimer on the bottom of the <jimmorrison.com> (JIMMORRISON.COM 1996-2009 trademark of Rick Sentieri aka JIM MORRISON) Rick Sentieri aka Jim Morrison is a published author and singer who LIVES in Kenosha Wisconsin. His Jim Morrison.com videos have been downloaded THIS YEAR, over two hundred thousands times. Rick Sentieri aka Jim Morrison’s poetry is the best ever written. Potentially a Nobel Peace Prize winner. His poetry can be downloaded (some with his OWN voce reading his poems) here: http://jimmorrison.com/love.htm.”

Based upon Respondent’s failure to address Complainant’s allegations and evidence, the Panel took Complainant’s facts as proven and found that the second prong was satisfied. The Panel moved to the last element, whether the disputed domain was registered and used in bad faith. The Panel noted that Respondent was using the domain name to sell products and service of third parties with products bearing the JIM MORRISON mark that compete with Complainant’s products.

Ultimately, the Panel found Complainant had satisfied all three elements and granted the TRANSFER.

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.

“Hairy Winston”: Diamonds for Dogs?

Thursday, October 30th, 2008

In the recent case of Harry Winston, Inc. and Harry Winston S.A. v. Jennifer Katherman WIPO D2008-1267 (October 18, 2008), a Panel was presented with an interesting decision which covered numerous topics defenses not often raised by Respondents, which included fair use and parody. The Respondent registered the disputed domain, www.hairywinston.com on March 11, 2008, to purportedly run her business of retail sales of dog and cat supplies and accessories (for example: leashes, collars and toys). The Complainant is the well known Harry Winston, who owns the federally registered trademark HARRY WINSTON for jewelry, diamonds, and timepieces and operates a website at www.harrywinston.com.

Respondent acknowledges that the name was selected to make a playful use of the name of her dog, Winston, and that the name will bring to mind the Complainant. The Respondent contends that her use of the name is fair use by way of parody. The Respondent notes that “for the Panel to hold that she has no rights or legitimate interests in respect of the Domain Name, is tantamount to a finding of trade mark infringement, a finding that is outwith the scope of the Policy and the Panel’s competence.”

In addressing the three prong UDRP test, the Panel first addresses whether or not the domain name is identical or confusingly similar. The Respondent argues that anyone who simply views the site could not possibly believe that it is related in any way to the Complainant. However, as the Panel explained, “it is now well-established that the content of the Respondent’s website is an irrelevant factor when assessing confusing similarity under the first element of the Policy. The test is to be conducted by way of a side-by-side comparison of the Complainants’ trade mark and the Domain Name.” Therefore, the Panel found this factor in favor of the Complainant.

The Panel next briefly addressed the second prong, whether the Respondent had any rights or legitimate interests. The Respondent claims that she had a bonafide offering of goods and services prior to notification by the Complainant. However, the Panel explained that the potential for the dispute arose the moment she considered adopting the parody name, and thus she could not enjoy the benefit of the bona fide offering. Interestingly though, the Panel did not make a decision regarding the second prong, and instead explained that the third prong was determinative of the case.

The Panel appears to almost chastise the Complainant for their attempt to “adopt a scatter gun approach” regarding their contentions of bad faith. One of the Complainant s arguments is explained by the Panel as follows:

The Complainants then go on to contend that the commercial gain that the Respondent is hoping and expecting to derive from the Domain Name will be achieved by visitors visiting the Respondent’s website in the mistaken belief that, because of the confusing similarity of the Domain Name to the Complainants’ trade mark, the Respondent’s website is a site of or associated with the Complainants (paragraph 4(b)(iv) of the Policy). On arriving at the site, those visitors will appreciate their mistake, but insofar as any of those visitors may be interested in acquiring pet supplies and accessories, the Respondent will thereby have derived an unfair business opportunity, the unfairness lying in the deceit by which the Respondent has diverted the visitors to her site.

Interestingly though, the Panel explains that it is not their task to “attempt to assess whether the Respondent’s activities constitute infringement of the Complainant’s trade mark rights.”
The Respondent acknowledges that the Complainant’s name will come to mind among consumers, but believes it will not lead to confusion. The Panel agreed and explained:

In the view of the Panel, it is inconceivable that people of the sophistication of the Complainants’ clientele will believe that the Complainants could begin to countenance use of such a variant of their name for their business. Even if the Complainants were minded to consider brand extensions, it is most unlikely that Hairy Winston would feature as a candidate.

The Panel also examined the parody arguments, and apparently believed that in the domain context her usage was not bad faith in accordance with the UDRP. The Panel noted that it may constitute trademark infringement, but that is not within the Panel’s decision making powers. The Panel explained:

The Panel is satisfied that the Respondent’s intention in registering and using the Domain Name as she has was to parody the Complainants’ famous name and trade mark and that she was justified in believing that the parody would successfully differentiate the parody from the original such as to obviate any significant risk of confusion or deception. In such circumstances it would be perverse to categorise the Respondent’s intentions when she registered the Domain Name as bad faith intentions for the purposes of the Policy.

Ultimately, the Panel DENIED the request for transfer.

Domains Which Criticize: Two Divergent Views

Tuesday, August 26th, 2008

There have been numerous decisions regarding whether criticism websites fall under the UDRP  exceptions for legitimate non-commercial use.

In the first case, Bridgestone Firestone, Inc. v. Jack Myers (WIPO D2000-0190, July 6, 2000) the Panel found that the domain owner’s use of “Bridgestone-Firestone.net” was allowable usage and fell within the scope of legitimate non-commercial usage.  See opinion here. In this case, Respondent was a former employee and current pensioner of the Firestone Tire and Rubber Company, and had been engaged in a dispute with Complainant over pension payments since 1990. As a result, Respondent registered the disputed domain and posted content thereon, which included sharp criticism of the Complainant and also included the following quote “Why Bridgestone/Firestone must pay John Myers.”

The Panel quickly acknowledged that the domain name was identical or confusing similarity of Complainant’s trademark. The crux of the decision rested on the second prong of the UDRP Policy, namely, whether there was any legitimate interest in the domain. Paragraph 4(c)(iii) of the Policy states that one of the ways to show legitimate rights is by “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel explained:

In this case, the Respondent’s principal purpose in using the domain name appears not to be for commercial  gain, but rather to exercise his First Amendment right to criticize the Complainants. The use of the  <trademark.net> domain name appears to be for the communicative purpose of identifying the companies,  which are the subject of his complaints. He is not misleadingly diverting users to his website, as he has not  utilized the <.com > domain and has posted adequate disclaimers as to the source of the website. It does not  appear that his actions are intended to tarnish, or have tarnished, the Complainants’ marks. Nor does it appear that Respondent’s registration and use of the Domain Name have harmed Complainants  commercially. Respondent’s use of the <.net>domain has not prevented Complainant from  making its  commercial presence known on the Internet. The Panel notes that the Complainants themselves have registered various <trademark.com> and <trademarksucks.com> domain names, but apparently decided not  to register the <trademark.net> domain name before it was registered by Respondent. Since there are now  seven generic top level domains, with more in the process of being approved, as well as some 240 country top  level domains, there are hundreds of domain name permutations available to Complainants. Respondent’s  use of one of those permutations other than the principal <.com> domain name for purposes of critical commentary is a legitimate noncommercial and fair use. Complainants have thus failed to prove the second  element of a claim for transfer of a domain name under the Policy.

The Panel examined the bad faith prong of the Policy and came to the conclusion that Respondent did engage in bad faith registration and use. Ultimately, the Panel ruled in favor of Respondent, applying fair use and free speech principles and denied the requested transfer of the domain.

Compare the first case with a later case, Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc. (WIPO D2004-0136, April 2, 2004), where the Panel found Respondent’s use of “kirklandandellis.com” was not acceptable under the Policy and did not qualify as fair use. (See decision here). In this case, the well-known law firm Kirkland & Ellis brought the UDRP action. Although Respondent never replied to the complaint, the Panel made some of the following factual observations:

The website to which the domain name resolves declares “Freedom of Speech using Parody” and further  states that the “website is merely a ‘free speech flyer’ being passed out at a possible electronic address to an Established business (no different than free speech at a physical address to a business)…” and “…attempts a U.S.A. Constitutionally granted free speech parody of the Supreme Court Judges, U.S. Legal System, U.S.  Constitution, U.S. Attorney General, U.S. Jury and U.S. Courtroom…” The website further states that it “has no relation to any person, organization, lawyer or law firm claiming rights to Kirkland & Ellis.”

Ultimately the Panel found the following:

(a) Respondent’s website is not a parody in that it does not seek to imitate any distinctive style of the firm for comic effect or ridicule, and (b) that material critical of the U.S. legal system is not fair use  of the Policy….it does not seem a fair use that Respondent deliberately chooses law firm names, including Complainant’s name, in order to criticize the legal profession as a whole. Rather, it seems that Respondent’s purpose is to tarnish the legal profession as a whole, and specifically  tarnish Complainant’s firm, it being a prominent member of the legal profession…. the right to express one’s views is not the same as the right to identify  itself by another’s name when expressing those views. Thus, while Respondent may express its views about  the quality, or lack thereof, of the U.S. legal profession, in general, or any firm offering legal services, in particular, Respondent does not have the right to identify itself as that particular firm. And, there is nothing in  the domain name to indicate that the site is devoted to criticism, even though that fact is apparent when visiting the site.

These two UDRP decisions show divergent views of criticism or fair use – an apparent split of authority. Some may argue that UDRP decision are not precedential and that each case should be decided on its facts in conjunction with the UDRP Policies. However the Policies are broad enough to require a careful review of the domain owner’s free speech and fair use rights and the trademark owner’s ability to protect their marks.

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