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.

In the recent domain name dispute decision of Microsoft Corporation v. MeiXun Technology Ltd. GuangZhou FA1271176 (Nat. Arb. Forum August 12, 2009), a single member Panel was faced with a dispute over the domain www.psxbox.net. Complainant needs no introduction, but if you really need more info you can go to www.mircosoft.com and www.xbox.com. Respondent failed to reply to the Complaint.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel addressed the first element noting that Microsoft has trademark registrations for XBOX in the U.S. and in China. The Panel found that the disputed domain incorporated all of the mark and merely added the letters “ps” at the front. The Panel explained that the terms “ps” and XBOX are both readily associated with gaming consoles, the merging of the two exacerbated the confusion. The Panel found that Microsoft satisfied this element.

Moving to the second element, the Panel noted Complainant presented a prima facie case and although Respondent failed to provide a response, a review of the record would still be completed. The disputed web site resolved to a commercial site selling third-party modification chips for gaming consoles, including the XBOX. The Panel found this use was not a bona fide offering of goods or services nor a legitimate non-commercial or fair use manner pursuant to the Policy. Additionally, the Panel found that the Whois information showed Respondent was not commonly known by the disputed domain. Therefore, the Panel found Microsoft satisfied this element as well.

Moving to the last element, bad faith, the Panel explained:

The Panel finds that Respondent’s use of a domain name confusingly similar to Complainant’s mark, which resolves to a commercial website offering game console accessories for Complainant’s products and those of Complainant’s competitors, likely disrupts Complainant’s business.  Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii)….Bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv) can also be inferred because Respondent is intentionally attempting to attract Internet users, for financial gain, to its domain name by creating a likelihood of confusion with Complainant and its XBOX mark.  Respondent profits from this confusion by selling game console parts that compete with Complainant.  The Panel concludes that Respondent has engaged in bad faith registration and use of the <psxbox.net> domain name under Policy ¶ 4(b)(iv).

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

In the recent domain name dispute decision of inXile Entertainment, Inc. v. Telecom Tech Corp (WIPO D2009-0655, July 3, 2009) a single member panel was faced with a dispute over the domain www.superstacker2.com. Complainant appears to be a video game producer which maintains web sites at www.inxile-entertainment.com and www.super-stacker.com. The disputed domain was registered on February 15, 2009.

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 addressed the first element noting that Complainant does not have a registered mark for SUPER STACKER but did have a pending trademark application, which hadn’t proceeded beyond the initial filing of the mark. Since Complainant did not have registered trademark rights, the Panel explained common law rights to the mark. The Panel noted that others use the word “stack” in similar gaming product titles. Complainant provided no evidence of advertising dollars relative the mark, nor a complete description of the product, or a copy of the web site at www.super-stacker.com. The Panel notes the only possible evidence of first use of the mark by Complainant was on a third party web site from November 2008. It appears as though the Panel reviewed the trademark application from Complainant and made some findings relative to Complainant’s date of first use:

The Complainant produced with its Complaint a printout from the USPTO database dated April 27, 2009, and although in its Complaint the Complainant asserts a first use of the claimed mark in commerce (through a predecessor in interest) dating back to November 12, 2008, the USPTO database extract produced by the Complainant states “date not available” for both the “first use” and “first use in commerce” dates. A document produced by the Complainant, downloaded from the Internet on April 29, 2009 (an extract from the website at “www.newgrounds.com”), appears to show that the date the Complainant’s game was “first submitted” was November 12, 2008. The Complainant asserts that that was the date on which the “Complainant’s game was first posted to the Internet”, but it is not clear who effected the “posting”, or how long the Complainant’s game was referenced on the “www.newgrounds.com” website.

In light of Complainant’s lack of evidence, the Panel found Complainant failed to satisfy the first element. The Panel noted it was not necessary to review the other two elements, but did provide some observations regarding the bad faith element. The Panel’s observations showed that there were significant evidentiary obstacles in finding bad faith, which included:

1. At the date on which the Domain Name was registered, the Complainant had not applied for a trademark registration anywhere in the world. 2. There is no provided evidence of when the Complainant registered its own domain name, <super-stacker.com>, and in particular whether that domain name was registered before or after the Respondent registered the Domain Name. 3. Particularly having regard to the apparent existence in the market of other “stack” or “stacker” games, the situation called for substantial evidence that the Respondent, apparently based in Panama, knew or should have known of the Complainant and or/ its claimed SUPER STACKER mark when the Domain Name was registered. There was little or no evidence on that topic.

Ultimately, the Panel found Complainant failed to prove all three elements and DENIED the request for transfer.

DefendMyDomain Commentary: When you do not have a registered trademark, Complainant’s need to show (a) first use of the mark; (b) explain the type of goods or services used with the trademark; (c) the marketing channels; (d) advertising or marketing efforts to show exposure to and/or recognition of the trademark to end-user consumers and (e) sometimes show sales of branded goods or services. This evidence proves up common law trademark rights. Although many view UDRP actions as “litigation lite” there are still minimum evidentiary requirements for a Complainant to win.

In the recent National Arbitration Forum case of Bank of America Corporation v. [Registrant] (Nat. Arb. Forum 1226147, November 7, 2008), the UDRP Panel was presented with a dispute over the domain www.uscapitaltrust.com. Bank of America is in the business of banking, fiduciary, and investment management services, and claims ownership to three separate trademarks related to the instant dispute which included UNITED STATES TRUST COMPANY with rights dating back to 1853, UNITED STATES TRUST with rights relating back to 1964 and U.S. TRUST with rights relating back to 1976. Bank of America also claims to maintain a domain at www.ustrust.com. 

The Respondent, who was never identified by name, was represented by counsel, and claims to be known as US Capital Trust. Some of the arguments presented by each side included a debate over whether or not line of business for each party was similar enough to create confusion. Respondent claimed that although both businesses were in the financial services industry, there was a distinction among the actual businesses. Specifically, Respondent alleges that it is in the business of providing financing for the purchase of buses. However, the Panel points out that Respondent’s answer quoted a citation from its own website from 2007 (the web site was supposedly changed upon notification of the dispute), which stated:

US Capital Trust is a leading private equity and venture capital firm committed to empowering entrepreneurs to build innovative and industry leading businesses.  US Capital Trust is a focused effort to develop world class business in a wide variety of fields.  US Capital Trust invests in companies independent of size or stage of growth.  We leverage our experiences, industry expertise and contracts to guide talented entrepreneurs to market success.

Bank of America claimed that the 2007 web site by Respondent offered private equity and venture capital services, which was in direct competition with Bank of America. The Respondent also attempted to claim that the addition of the word CAPITAL created a distinct domain which was not confusing.

The Panel in addressing the three factors in UDRP proceedings explained that the first prong, whether or not the domain was identical or confusingly similar to Complainant’s mark, was satisfied. The Panel explained:

But it cannot be denied that the word “capital” is closely related to “wealth” and “money”, and that, in turn, those words are closely related to the word “trust” as used in the Complainant’s mark (that is, a “trust fund”). Given the common use of the words, the term “capital”, in context, must be considered to be a generic term.  Its addition to the mark US TRUST does not create a domain name that is distinctive from the mark.

The Panel cited previous decisions for the proposition that the line of business of both parties is not relevant for this element of the policy, and applied that concept to the facts in this case.

Turning to the second prong of the policy, whether or not the respondent had any rights or legitimate interests in the domain, the Panel found that the Respondent did not create a bona fide offerings of goods or services based upon the 2007 description. As a result the Panel found this factor favored Complainant as well.

Lastly, the Panel reviewed the third prong, whether or not the domain was registered and used in bad faith. The Panel noted:

As the Complainant correctly points out, the description that the Respondent gives of its business on the 2007 version of its website does not correspond to the description given to the Panel.  On the 2007 version of the website, the Respondent claims to provide a broad range of financial services to entrepreneurs.  In its Response and in its Additional Submission to this Panel, the Respondent states that its main business is to provide financing for the purchase of buses (motor vehicles). On the basis of the evidence submitted by the Respondent, the Panel accepts that an accurate description of the Respondent’s business is that it provides financing for the purchase of buses.   As a consequence, the Panel finds that the description provided on the 2007 version of the web site is misleading.

The Panel went further and noted, “the Panel finds that the most likely explanation for the misleading description given in the 2007 version of the website was to attract users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark, in violation of 4(b)(iv) of the Policy.” Additionally, the Panel found that the anonymous registration information placed on the WHOIS data for the disputed domain was a element that reinforced the determination of bad faith.

Ultimately the Panel ruled that the domain be TRANSFERRED.
          
Defend My Domain Commentary: The Panel’s finding that the line of business is irrelevant, is contrary to basic trademark law principles. Typically, under trademark law, the test to determine confusing similarity includes an analysis of the line of business associated with each mark.

In the recent case of NAOP, LLC, v. Name Administration, Inc. (BVI) (Nat. Arb. Forum. 1220825, October 7, 2008), a three-member Panel was faced with the interesting task of determining when applicable trademark rights existed for the purposes of UDRP decisions. Respondent states to be in the business of acquiring domain names that use common terms, which in the instant case were “jump” and “pro.” The Complainant, North American Outdoor Products, LLC, claims ownership to a trademark for JUMPRO, for exercise and recreational trampolines and replacement parts therefor. The mark was registered on July 18, 2006, with the application first being filed on October 2, 2003. The decision noted that the registration claims a first use in commerce date of April 2003. The disputed domain, www.jumppro.com was registered on January 19, 2004.

The Panel, in reviewing the first prong of the UDRP test, whether the domain in dispute is identical or confusingly similar to the Complainant’s trademark, acknowledged that the domain and the mark were identical or confusingly similar. However, the Panel explained the “Complainant had not shown it had rights in the name at the time the domain name was registered.” (Compare domain registration in January 2004 and mark registration in July 2006).

The Panel reviewed the evidence and explained:

In the instant case Complainant has submitted no evidence whatsoever to demonstrate use of the mark in commerce prior to the time Respondent registered the domain name. All that Complainant has done is assert (without providing a copy to the Panel) that it provided a specimen to the USPTO and claimed use in commerce when it filed its application in 2003. This falls far short of the required evidence.

The Panel went further to rely on prior decisions and noted:

This Panel agrees with the recent decision of the panel in Xoft Inc. v. Name Administration Inc. (BVI) (Nat. Arb. Forum Apr. 25, 2008) which stated: “The relevant time for the determination of whether or not the complainant has rights in a mark is the time that respondent registered the disputed domain name. …The question for this panel is what rights had Complainant demonstrated in the mark XOFT on that date?” In the Xoft case, as here, the complainant had filed an intent-to-use trademark application prior to the time that the domain name was registered, but that panel held, as we do, that the date of registration does not relate back to the date that the application was filed unless there is clear evidence of use in commerce sufficient to create a secondary meaning in the mark.

As a result the three-member Panel found that the Complainant did not satisfy the first portion of the UDRP Policy. The Panel also declined to find that the Complainant engaged in reverse domain name hijacking. Ultimately, the Panel DENIED the request for transfer.

DefendMyDomain Commentary:
Although not discussed by the Panel, a more detailed investigation into the trademark registration records available at www.USPTO.gov reveal that the trademark specimen filed in the USPTO by Complainant shows the packaging of the goods to be labeled as JUMPPRO instead of JUMPRO (the registered mark). It is not clear if a mistake was made during the registration process. This point is of interest because when one visits www.jumpro.com, the link leads to a marketing company web site (vertically integrating merchandising, advertising and marketing). The Complainant and the marketing company appear to have nothing to do with each other.