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Posts Tagged ‘Identical and/or Confusingly Similar’

Panel tells Alcohol Monitoring Systems to SCRAM

Thursday, April 18th, 2013

In a recent domain name dispute over the domain www.SCRAM.com a single member panel denied a request to transfer. See Alcohol Monitoring Systems, Inc.v. Peter Stranney (Nat. Arb. Forum FA 1488482, April 11, 2013). Complainant, offering continuous alcohol monitoring systems and operates a domain located at www.alcoholmonitoring.com. Complainant is the owner of the trademark SCRAM with rights dating back to at least 2003. Complainant alleges that the disputed domain is not functioning site is a sample word press site which is not active and is not used as a commercial website only as a placeholder. Complainant also noted that the respondent offered to sell the domain for approximately $40,000 pursuant to an invitation to sell the domain name. The Respondent provided a defense and response to the allegations noting that the disputed domain name incorporates a generic term and therefore is not exclusive to the trademark holder. The Panel found that the respondent is the sole owner of a business located in the UK. The Respondent also has experience in web development and online marketing and acquired the domain in January 2007 for approximately $6000. The Panel found that Respondent indicated an intention to focus the disputed domain on development for a traveling business to be launched in approximately August or September 2013

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 the respondent did not oppose complainants claim to its trademark rights. The panel explained that complainant only valid registered trademark and that it was identical or confusingly similar to the demeaning. Therefore the panel found that this factor have been met by complainant.

Regarding the second element rights or legitimate interests, the panel found the complainant made a prima facie case the respondent lack rights religion interest in the domain name. If you’ve the evidence however the Panel found that respondent met the shifted burden and demonstrated that he did have rights or legitimate interests in the domain name under the policy section 4(a)(ii) and 4(c). The Panel noted that prior to any notification of the dispute that the Respondent made preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent’s materials revealed that he developed a business plan for the opportunity to advertise goods and services for people wishing to travel to particular destinations within the UK. The business plan provided details regarding Respondent’s preparation of the domain with that purpose. For those reasons the Panel found the Complainants second prong allegations failed.

Despite the fact that Complainant failed to meet the second prong the Panel still chose to review the third prong of elements regarding registration in use in bad faith. The Panel noted that “scram” is a generic term and that transferring such a generic term for value is not bad faith unless the registration was undertaken with the intent of selling it to a Complainant or its competitor. The Panel noted that generic domain names possess intrinsic value that for all intents and purposes exceed the cost of registration. For those reasons the Panel noted that scram as a generic term has intrinsic value that can go beyond on the cost of registration. Accordingly the Panel found the Complainant failed to satisfy the sprung as well.

The Panel also reviewed an allegation of the first domain name hijacking but found that there was no evidence of reversed meaning hijacking in this instant case. The Panel noted there was no evidence of harassment or similar conduct by Complainant in lieu of knowledge of Respondents rights or legitimate interests.

As a result, the Panel denied Complainant’s request to transfer the disputed domain.

“Tata Massage” can keep its domain

Thursday, March 7th, 2013

In a recent domain name dispute over the domain, www.tatamassage.com, a single member Panel  denied a request to transfer. See Tata Sons Limited v. Tata Massage (WIPO Case No. D2012-2467 , March 4, 2013). Complainant Tata Sons Limited is a company established in 1917, with business activities from a predecessor dating back to 1868. The company includes approximately 100 major companies, 28 of which on are the stock exchange. Some of its companies include Tata Steel, Tata Motors, Tata Power, etc. Complainant owns many trade marks involving the words “TATA” in the U.S. and around the world. Complainant operates a domain at  www.TATA.com. The disputed domain was registered in 2011. Respondent provided a response and was represented internally.

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, the Panel agreed that Complainant proved up rights to its marks. The Panel explained that “The disputed domain name is not identical to any of the Complainant’s trademarks as, even disregarding the “.com” extension, none of the Complainant’s trademarks include the alphabetical string “massage”. Even so, the disputed domain name is plainly confusingly similar to the Complainant’s trademarks.” Therefore, according to the Panel, the use of TATA in the domain was enough to satisfy ¶4(a)(i) of the Policy.

In addressing the second prong, the Panel noted “the Respondent claims that the massage services being promoted at the website to which the disputed domain name resolves are being provided by the wife of the individual disclosed in the WhoIs details for the disputed domain name and her nickname, or the name by which she is commonly known amongst her friends and family, is Tata.” To support this claim Respondent submitted exhibits showing reporters discussed visiting the services of Respondent and that the masseuse was introduced as Tata. The Panel also found it convincing that Respondent was operating a legitimate massage business, although explaining that a storefront is not required for the Policy.  Third, and hold the laughter please, the Panel found that the nature of massage services offered was different from anything covered by Complainant’s marks.  The decision provides no details, but simply states that the technique used is “face slapping.” Interestingly a review of the disputed domain explains the following “Face slapping is well known internationally and uses Thai wisdom to bring out your own beauty that is 100% chemical free. Most importantly nothing is forever and this is what you call natural beauty. Tata massage is unique beauty, and is a profession of true wisdom.”
Ultimately, the Panel found that Complainant was unable to satisfy ¶4(a)(ii) of the Policy. The Panel declined to review ¶4(a)(iii) of the Policy

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

No Party for PARTY BOOTHS!

Friday, August 12th, 2011

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.

American Express Loses UDRP Based on Inadequate “Bad Faith” Arguments

Wednesday, July 20th, 2011

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.

3 Strikes for RAPIDSHARE

Wednesday, September 15th, 2010

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.

RAPIDSHARE, Tries But Fails Again To Own The Word “RAPID”

Wednesday, September 8th, 2010

   

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.

Life Extension Foundation Wins Its Domain

Wednesday, November 25th, 2009

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).

APPLE Waited Four Years, But Now Owns IPOD NANO

Thursday, November 19th, 2009

     ipodnano

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.

SUBLIME DIRECTORY Wins Domain Dispute Through the Czech Arbitration Court

Friday, November 6th, 2009

          sublimedirectory

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.

AMERICAN GIRL’s New Character …Domain Enforcer

Tuesday, September 29th, 2009

   americangirl

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.

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