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Posts Tagged ‘Generic Word’

ASSURANT Unable to Explain Why “Med” is Descriptive

Monday, August 6th, 2012

In a recent domain name dispute over the domain, www.medasurant.com, a single member Panel  denied a request to transfer. See Assurant, Inc. v. ICS INC. (Nat. Arb. Forum FA1447017, July 30, 2012). Complainant Assurant is a well known insurance products provider who operates a domain at  www.assurant.com. Complainant also has long standing rights to a trademark ASSURANT (Reg. 2,543,367, registered on February 26, 2002.) Complainant’s registration claims right dating back to 1999. The disputed domain was registered on February 1, 2012. Respondent did not 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.

Regarding the first element, Complainant argued that the disputed domain features a misspelling of Complainant’s mark by dropping the second letter “s” and adding the generic word “med.” The Panel noted that Complainant failed to show or even allege why the term “med” was descriptive with respect to the insurance and financial services covered by the ASSURANT mark. In fact, the Panel gave Complainant an opportunity to provide supplement arguments and evidence. Regardless, the Panel found that Complainant still failed to provide any arguments or evidence regarding the connection of the term “med” and Complainant’s services. As a result, the Panel found that Complainant was unable to satisfy ¶4(a)(i) of the Policy.

As a result, the Panel DENIED Complaint’s request to get the disputed domain.

3D Glasses Not Needed In UDRP Loss

Monday, December 6th, 2010

In the recent UDRP case of X6D Limited v. Telepathy, Inc. (WIPO Case No. D2010-1519, November 16, 2010) a three member Panel was faced with a dispute over the domain www.xpand.com. Complainant is a supplier of 3D solutions for movie theaters and home use and maintains a website at www.xpandcinema.com. Complainant owns a trademark registration for the mark XPAND BEYOND CINEMA and has pending applications for the single word mark XPAND. The disputed domain was registered on June 25, 2003, which was 3 years prior to the alleged date of first use of the marks by Complainant.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) the 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 found that Complainant established the first prong, since the essence of the registred mark was incorporated into the domain. In addressing the second prong the Panel noted that Respondent alleged the domain was generic or at least descriptive. The Panel found that the word “xpand” was descriptive as a short hand for the word “expand.” The Panel recognized the commercial value of descriptive words, which when such domains are offered for sale can be considered a bona fide offering of goods or services.

The case ultimately seemed to weigh heavily on the third prong, wherein the Panel explained:

The Respondent acquired the disputed domain name in 2003. The Complainant did not use the XpanD Mark until September 2006, more than three years after the Respondent registered the disputed domain name. The Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name.

After making a finding that Complainant failed to prove all three elements, the Panel moved its attention to Respondent’s request for a finding of Reverse Domain Name Hijacking. The Panel explained:

In the present case, the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.

Ultimately the Panel DENIED the request for Transfer.

SHOE LAND Was Generic… But Not SHOE ZONE?

Tuesday, September 15th, 2009

              shoe-zone

In the recent domain name dispute decision of Shoe Zone Limited v. Moniker Privacy Services / DNS Admin (WIPO D2009-0946, September 2, 2009) a single member Panel was faced with a dispute over the domain www.shoezone.com. Complainant is a retailer and distributor of footwear throughout Ireland and the U.K. Complainant has multiple trademark registration, including one in the U.K. and a Community Trademark registration.  Complainant maintains a web site at www.shoezone.net. The disputed domain was registered in November 1998. According to the decision, the disputed domain has changed ownership at least three times since its original registration, with Respondent gaining ownership some time after June 2006. Complainant contends that sometime in May 2009 the disputed domain started to have advertising links to competitors of Complainant. Respondent failed to respond to the Complaint.

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith.

The Panel simply and quickly found that the disputed domain was identical to the mark and that Complainant has rights through its registrations to the mark. Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant made a sufficient prima facie case. The Panel found that there was no suggestion of authorization by Complainant, no evidence of “commonly known” by proof of Respondent, and that the use was clearly commercial through use of the sponsored links. The Panel thus found that Complainant satisfied the second element as well.

Moving to the final element, bad faith, the Panel noted that Respondent’s use of the domain as a landing page with sponsored links, without any explanation from Respondent, was sufficient proof of this element. The Panel also justified finding bad faith due to Respondent’s failure to respond and Respondent’s use of a privacy service.

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

DefendMyDomain Commentary: Compare this case to the SHOE LAND case we previously blogged on (available here), Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009). Of course the facts are different, but one has to wonder whether a response by Respondent would have created a different outcome.

Davidoff Extinguishes Squatter

Wednesday, September 9th, 2009

                  davidoff

In the recent domain name dispute decision of Davidoff & Cie SA v. Nicaragua Tobacco Imports, Inc. / Jorge Salazar (WIPO D2009-0923 August 20, 2009), a single member Panel was faced with a dispute over the domains www.davidoffcigarcutter.com, www.davidoffhumidor.com and www.davidoffhumidors.com. Complainant is the well known tobacco products company with a presence for nearly 100 years. They maintain a web site at www.davidoff.com. Respondent failed to respond to the complaint. Complainant has numerous trademark registrations for the DAVIDOFF mark.

The Panel provided one of the shortest decisions yet.  First, the Panel found that the domain names all incorporated Complainant’s full mark with the addition of generic words related to Complainant’s business. Second, the Panel found that there was no evidence of any right or legitimate interest in the domain by Respondent. Lastly, the Panel addressed the issue of bad faith. The Panel found that due to the long existence of Complainant and its use of the marks, the disputed domains could only have been registered in bad faith. Many of the links on the pages of the domains led to links of direct competitors with Complainant.

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

AMWAY Is Not Buying What This Cybersquatter Is Selling

Monday, July 20th, 2009

In the recent domain name dispute decision of Alticor Inc. v. Konstantin Becker a/k/a Sei-Sexy FA 1265965, (Nat. Arb. Forum July 15, 2009), a single member Panel was faced with a dispute over the domain www.amway-products.com. Complainant markets and sells over 450 products under the AMWAY mark, and has a trademark registration fro AMWAY dating back to the 1960s. Complainant maintains a web site at www.amway.com. Respondent did not provide a response 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 does have federal trademark rights but also explained “The Policy does not require that the mark be registered in the country in which Respondent resides.”  The Panel also found that the addition of the generic term “products” and the top-level domain “.com” was insufficient to distinguish the domain from the AMWAY mark. Thus, the Panel found Complainant satisfied the first element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel observed that Respondent’s failure to respond to the Complaint allows for the Panel to infer a lack of rights. The Panel went further and found as follows:

Respondent is using the <amway-products.com> domain name to sell Complainant’s products.  Complainant alleges that Respondent is attempting to pass itself off as an authorized distributor of Complainant’s products, undoubtedly for financial gain.  The Panel therefore concludes that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the subject domain name pursuant to Policy ¶ 4(c)(i) or (iii). 

The Panel also reviewed the Whois information provided by Respondent was not commonly known by the domain. The Panel found Complainant satisfied this element as well. Moving to the final element, bad faith, the Panel reviewed the use of the web site and explained:

The Panel agrees because Respondent’s use of a domain name confusingly similar to Complainant’s mark, which resolves to a commercial website offering Complainant’s products for sale, likely disrupts Complainant’s business.  Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the contested domain pursuant to Policy ¶ 4(b)(iii)….Bad faith registration and use of the <amway-products.com> domain name under Policy ¶ 4(b)(iv) can also be inferred based on Respondent’s use of a confusingly similar domain name to attract Internet users to a website that offers Complainant’s products for sale.  The Panel may presume that Respondent profits from such use.

Ultimately the Panel found that Complainant satisfied all three element s and ordered the domain be TRANSFERRED.

Is SHOE LAND Generic?

Friday, June 12th, 2009

In the recent decision of Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009) a three member Panel was faced with a dispute over the domain www.shoeland.com. Complainant, is a footwear retail store and maintains a web site at www.shoeland.net. Complainant claimed use of the mark SHOE LAND since March 1, 1997 and has a Federal registration for the mark since April4, 2006. Respondent replied to the ICANN UDRP complaint noting that they are a business who regularly registers domains with intrinsic value and generates revenue from pay-per-click advertising links. The disputed domain was registered in 1998.

As the Panel noted, 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 began with the first prong, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found that complainant had sufficient rights under the Policy ¶4(a)(i), but noted as follows:

In its Complaint and Additional Submission, Complainant also asserts and provides evidence of its rights in the SHOE LAND mark through its continuous use of the mark in commerce since at least as early as March 1997. Nevertheless this use of the mark remained local, and does not provide the mark with secondary meaning. As a result, the Panel finds that Complainant does not have sufficient common law rights in the SHOE LAND mark under Policy ¶ 4(a)(i), dating back to March 1997. 

Regardless the Panel found Complainant had satisfied the first prong. Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant failed to establish a prima facie case. Respondent argued, and the Panel agreed as follows:

Complainant does not have common law rights dating back as far as September 1998, when Respondent registered the disputed domain name, because Complainant’s SHOE LAND mark had not acquired secondary meaning by that time.  Respondent contends that the evidence put forth by Complainant fails to demonstrate that Complainant was well-known yet outside of the Orlando, Florida area, or that Complainant had spent much money promoting the SHOE LAND mark.    

Respondent also argued that it registered generic domain names as a business practice, which would satisfy the rights or legitimate interests section of the policy. The Panel agreed with this concept as well finding that “registering such a generic domain name is a business practice that confers upon the practitioner rights or legitimate interests in that domain name. As a result, the Panel finds that Respondent established rights in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”

Moving to the last prong, whether the domain was registered and used in bad faith, the Panel explained that since Respondent had proved it had rights or legitimate interests in the domain at the time of registration, then the registration could not have been in bad faith. The Panel explained:

The Panel finds that a respondent is free to register a domain name consisting of common terms, unless he is aware or should have been aware of the secondary meaning those common terms had at the time of the registration. Since the disputed domain name contains such common terms and as there was no secondary meaning at the time of the registration, the Panel is of the opinion that Respondent did not register  the <shoeland.com> domain name in bad faith under Policy ¶ 4(a)(iii).

The Panel also addressed a request by Respondent to find Reverse Domain Name Hijacking. The Panel explained that since Complainant provided evidenced of active promotion of the SHOE LAND mark since 1997 there could not be reverse domain name hijacking. The Panel further explained that reverse domain name hijacking requires bad faith on the part of Complainant and that none was present.

For an interesting counter perspective on the issue of reverse domain name hijacking, read the dissenting opinion by one of the Panelists, who believes this was a clear case of reverse domain name hijacking. He argues that the Complainant had no reasonable basis for arguing bad faith The single dissenting Panelist also chastises the Complainant for revealing emails and facts that the parties engaged in settlement discussions and sale of the domain negotiations prior to the dispute, despite the fact that those communications were labeled “Confidential-For Settlement Purposes Only.”

Ultimately, the Panel DENIED Complainant’s request for transfer and DENIED Respondents request for reverse domain name hijacking.

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

Wednesday, September 3rd, 2008

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

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

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

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

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

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

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

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

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

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