In a recent domain name dispute decision, Party Booths, LLC v. Cornelius Angsuco (Nat. Arb. Forum, FA1398420 August 10, 2011) a single member panel was faced with a dispute over the domain www.envypartybooths.com.  Complainant, Party Booths, LLC, owns the PARTYBOOTHS mark which it uses in connection with its photo booth rental services. Complainant also maintains a website at www.partybooths.com. The disputed domain was registered on September 9, 2009, prior to the January 13, 2010 filing date of Complainant’s trademark application.  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 Complainant established rights  in the PARTYBOOTHS mark and that the domain name was confusingly similar. Moving to the second element, the Panel found that respondent was not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii). Regarding the offering of bona fide goods or services, the Panel explained:

The <envypartybooths.com> domain name resolves to a website whichsolicits photo booth rentals. This is precisely the same service which Complainant offers through its own website. The Panel therefore finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

For these reasons, the Panel found that the Respondent did not have a legitimate interest in the domain. Moving to the final element, bad faith registration and use, the Panel recognized that the disputed domain was registered prior to the filing date and registration of the trademark. The Panel went further to explain:

Although Complainant claims that the mark had been used prior to the registration of the <envypartybooths.com> domain name, Complainant provides no evidence of such use and fails to state in what way it was used prior to its filing with the USPTO. Therefore, the Panel finds that Respondent could not have registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because its registration of the disputed domain name predated the registration of Complainant’s mark.

Ultimately, the Panel found that Complainant did not satisfy all three elements and DENIED the request to transfer the domain.

In a recent domain name dispute over the domain, www.syncard.com, a single member Panel let American Express “Leave Home Without It” and denied a request to transfer a purported cybersquatters domain. See American Express Marketing & Development Corp. v. Admin Support / SEOMarketing.org (Nat. Arb. Forum FA1392387, July 14, 2011). American Express needs no introduction, so let’s skip ahead to the important stuff. ( If you want to know more about AMEX, here is a link to their website www.americanexpress.com). American Express owns the mark ZYNC CARD (Reg. No. 3,848,858, issued on September 14, 2010). The disputed domain was registered on February 26, 2011. Respondent failed to submit a Response.

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 found that the disputed domain simply differed from the mark by deleting the letter “c” from the domain. For this reason, the Panel found that the domain was confusingly similar to American Express’ mark.

Moving onto the second prong, rights or legitimate interests, the Panel declined to review this element, citing to a case which essentially held that a failure to prove any one element was fatal. Therefore, the remainder of the analysis focused on the third prong, registration and use in bad faith. The Panel states its position best:

The Panel finds that Complainant has failed to sufficiently allege a use consonant with a finding of bad faith registration and use under Policy ¶ 4(a)(iii). Complainant has not only failed to allege a use that would constitute bad faith but has failed to allege any use whatsoever. Thus, the Panel finds that Complainant has failed to prove bad faith registration and use under Policy ¶ 4(a)(iii).

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

In another domain name dispute filed by RAPIDSHARE, the concept of owning the word RAPID was denied for the third time. In RapidShare AG and Christian Schmid v. Protected Domain Services Customer ID: NCR-785723/ n/a Sergey Vlasov (WIPO Case No. D2010-1106, August 27, 2010) a single member Panel was faced with a dispute over the domain www.rapid4me.com. We have previously blogged about the two prior failures of RAPIDSHARE’s attempts to own the word “rapid.” However, each time the Panel has found this was too much and that RAPIDSHARE did not use RAPID as a mark and was not commonly known by the name RAPID.

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In this case the Panel cited to some of the prior decisions, both for and against RAPIDSHARE, and noted that in the prior denial cases, such as RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696, that Panel found that www.rapidbay.net was not able to be transferred under the policy. This Panel adopted many of the same arguments, however did not get past the first element of whether or not the domain was identical or confusingly similar to the RAPIDSHARE mark. The Panel chose not to review the remaining elements.

In the recent domain name dispute decision of RapidShare AG and Christian Schmid v. Ilya, Ilya Efimov WIPO Case No. D2010-1105 (August 17, 2010) a single member Panel was faced with a dispute over the domain www.rapid.org. As we previously posted on July 13, 2010, RAPID SHARE tried to claim rights to the word RAPID when seeking to get the “rapidbay.net” domain. (See post here) Complaint, Rapid Share is the well known file-hosting website which maintains a website at www.rapidshare.com. The Respondent did file a reply to the Complaint, and cited to the previous decision regarding RAPIDSHARE’s lack of rights to the word RAPID. Complainant owns a Community Trademark for RAPIDSHARE with a priority date of 2005.

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

The Panel in this case made similar findings to the previous rapidbay.net decision. The Panel noted that no evidence was put forth by RAPIDSHARE to show that it was frequently referred to as “RAPID.” The Panel found this to be fatal to Complainant’s case. Ultimately, the Panel found that Complainant failed to establish identical or confusingly similar elements as required under the policy. The Panel DENIED the request for transfer.

In the recent domain name dispute decision of Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited (FA1289603, Nat. Arb. Forum, November 25, 2009) a three member Panel agreed to transfer the domain www.lifeextensionfoundation.com to Complainant. Life Extension Foundation maintains web sites at www.lef.org and www.lifeextension.com. As their web site states:

The Life Extension Foundation is the world’s largest organization dedicated to finding scientific methods for addressing disease, aging, and death. The Life Extension Foundation is a non-profit group that funds pioneering scientific research aimed at achieving an indefinitely extended healthy human lifespan. The fruits of this research are used to develop novel disease prevention and treatment protocols.

 Our law firm represented Life Extension Foundation in this dispute, so we will refrain from providing our normal commentary. If you would like to know more details please read the decision (here).

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 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 American Girl, LLC and American Girl Brands, LLC v. Eileen Coleman (Nat. Arb. Forum FA1279516, September 28, 2009), a single member Panel was faced with a dispute over the domain www.americangirldollsclothing.com. Complainant is the widely popular creator and seller of dolls, dolls accessories, and books for young girls. They have many trademark registrations for the mark AMERICAN GIRL and maintain a web site at www.americangirl.com. Respondent registered the disputed domain on July 18, 2008 and failed to respond to the complaint.

Paragraph 4(a) of the 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’s multiple registrations were sufficient to establish rights for the AMERICAN GIRL mark under the UDRP Policy. The Panel found that the disputed domain contained all of Complainant’s mark with the addition of the words dolls and clothing. These additional words describe products sold by Complainant, thus there was no significant distinguishing nature of the disputed domain. The Panel found that Policy ¶4(a)(i) was satisfied.

Moving to the second element, the Panel noted that Complainant made a prima facie showing under the UDRP Policy. Additionally, the Panel found that the Whois information did not show that Respondent was commonly known by the domain. The disputed domain resolved to a web site with a similar color scheme as Complainant and also displayed Complainant’s mark. The Panel found this use to be a passing off of Complainant.  The disputed domain also contained links to competing third party web sites. For these reasons, the Panel found that Policy ¶4(a)(ii) was satisfied.

Moving to the final element, the Panel explained:

Respondent, upon registering the <americangirldollsclothing.com> domain name on July 18, 2008, uses the disputed domain and its similar resolving website to divert Internet users to competing third-party websites that sell Complainant’s products.  The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iii) because it disrupts Complainant’s business… The Panel further finds that Respondent’s conduct, presumably for commercial gain, constitutes bad faith registration and use under Policy ¶ 4(b)(iv).

For these reasons, the Panel found that Complainant satisfied the last element, thus meeting its overall burden. As a result, the Panel ordered the disputed domain be TRANSFERRED.

In the recent domain name dispute of L.F.P., Inc. and LFP IP, LLC v. Anthonny, Network Service (WIPO D2009-0984, September 13, 2009), a single member Panel was faced with a dispute over the domain www.hustlerlesbians.com. Complainant is the famous publisher of Hustler magazine and has many other ventures including videos and clothing under the HUSTLER mark. Complainant maintains a web site at www.hustler.com. The disputed domain was registered in September 2007 and the Respondent failed to respond to the complaint.

In accordance with Policy the Complainant must demonstrate that: (i) The disputed domain name 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 disputed domain name; and (iii) The disputed domain name was registered and is being used by the Respondent in bad faith.

In addressing the first element, the Panel noted that L.F.P. (“Larry Flynt Productions”) had valid and long term trademark registrations for the HUSTLER mark. The Panel found that the disputed domain incorporated all of complainant’s mark including the generic word lesbians. The Panel explained:

The Complainant contends persuasively, and without contradiction from the Respondent, that a significant portion of the Complainant’s exploitation of adult entertainment products involves lesbian sexual activity. Ergo, the Panel concludes that a reasonable Internet user would find the similarity between the disputed domain name and the trademark confusing as to the source of the material found at the web site corresponding to the disputed domain name.

As a result, the Panel found Hustler satisfied this element. Moving to the second element, rights or legitimate interests, the Panel found that the disputed domain redirected users to adult material which competed directly with Hustler. The respondent did not make a bona fide offering of goods or services pursuant to the Policy. Additionally the Panel noted that Respondent was not commonly known by the disputed domain. For these reasons, the Panel found Hustler satisfied the second element.

Moving to the final element, bad faith, the Panel explained that HUSTLER has been well known throughout the world and the U.S. for years. The Panel held:

Furthermore, the Complainant has provided the Panel with acceptable visual evidence that the Respondent uses the disputed domain name for its web site that prompts Internet users to acquire material depicting lesbian sexual liaisons. Such material is a mainstay of the Complainant’s business, and the use of the Complainant’s full trademark as the first and dominant part of the disputed domain name compels the Panel to believe that the Respondent deliberately registered the name to confuse the public as to the source of said material for the Respondent’s commercial gain.

As a result, the Panel found that Complainant met all three elements and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Roberto Cavalli S.p.A., IGA Finance B.V. v. Jekaterina Kaidanovits-Rogers (WIPO D2009-0740, August 5, 2009), a single member Panel was faced with a dispute over the domain www.robertocavalliusa.com. Complainant is the famous Italian designer and has trademark rights in the name ROBERTO CAVALLI. Cavalli maintains a web site at www.robertocavalli.com. Respondent failed to respond to the complaint.

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.

In addressing the first element, the Panel found that the disputed domain contained all of Complainant’s mark and merely added “usa” at the end. This was enough for the Panel to determine the domain was confusingly similar.

Moving to the second element, the Panel agreed with Complainant’s arguments which included:

(i) The Respondent has not been authorised by the Complainant to register nor to use the Complainant’s marks. (ii) The Respondent is not associated in any way with the Complainant or its distribution network. (iii) The Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ROBERTO CAVALLI. (iv) There is no evidence of a bona fide noncommercial or other legitimate fair use by the Respondent.

The Panel found that Complainant provided sufficient unrebutted evidence and noted that the second element was satisfied.

Moving to the final element, bad faith, the Panel explained that Complainant’s evidence of the disputed domain showed it was being used for “promoting sales of Complainant’s products which appear to be paralell imported and may even be counterfeited.” In light of these findings the Panel found that Complainant satisfied this element as well.

Ultimately, the Panel agreed with Complainant and ordered the disputed domain be TRANSFERRED.