logo

Posts Tagged ‘Identical and/or Confusingly Similar’

HUSTLER and Lesbians… Adding Domains to the Empire

Tuesday, September 22nd, 2009

         hustler-2       hustler 

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.

Roberto Cavalli Designs A Winning Arbitration

Monday, August 17th, 2009

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.

             robertocavalli1

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.

XBOX Says Game Over

Thursday, August 13th, 2009

            xbox

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.

Another Case Of Complainant Failing To Provide Evidence Of Common Law Trademark Use

Friday, July 10th, 2009

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.

You can bank on your trademark per Bank of America

Friday, December 12th, 2008

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.

Merely Having A Trademark Registration May Not Be Enough

Thursday, November 13th, 2008

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.

Don’t Forget to Renew Your Trademark-Otherwise Domain is Lost

Monday, September 29th, 2008

A company found out the hard way, that not only must you remember not to let your trademark registrations lapse, but you must remember to renew your domain registrations. In O’Reilly Automotive, Inc. v. Bjarne Lorenzen FA 1220459 (Nat. Arb. Forum Sept. 24, 2008), the domain transfer was DENIED and Mr. Lorenzen of Denmark was able to keep the registration of www.partscity.com. Complainant is an automotive parts retailer who was the owner of federal registrations (Reg. Nos. 2,312,510 and 2,233,940) for the mark PARTS CITY. Unfortunately, those registrations were cancelled on December 31, 2005 and October 28, 2006. Complainant did get a new registration for PARTS CITY on July 15, 2008 (Reg No. 3,465,437). Complainant operated the disputed website until it inadvertently lapsed on June 10, 2003. The Respondent registered the domain on August 23, 2003. The decision does  not indicate how Complainant was using the domain prior to its lapse, nor why it did not notice the loss of the domain for the two months prior to its acquisition by Respondent.

The Panel reviewed each of the three (3) elements of the UDRP policy. First, the Panel noted  that Complainant had not established the identical and/or confusingly similar element. Although this element seems to not require a timeline of trademark ownership, the Panel relied upon other decisions which established that Policy ¶4(a)(i) assumes the Complainant’s rights must predate Respondent’s domain name registration. The Panel noted, “the UDRP was not established to assist current business owners in correcting poor business decisions of the past.”

The Panel also found that the Complainant had not established the second requirement of Rights or Legitimate Interests. In an effort to prove bad faith, Complainant’s own allegations that Respondent is a competitor selling automotive parts, helped to support the finding that Complainant’s rights are therefore junior to Respondent’s registration of the domain. The panel further noted:

Complainant would have the Panel find that it has protectable rights in the domain name despite letting it lapse and languish for months while Respondent has no such rights despite validly registering the unclaimed name and holding it in an undeveloped state for years. Holders of valid domain names are not required to develop them in any particular way within a fixed time or risk losing them, especially when they are not using the domains in a manner that is offensive to the rights of another.

Third, the Panel reviewed the Bad Faith element. The Panel noted that “Complainant’s assertion that merely holding a parked domain disrupts its business because it can not use that domain name for its own benefit does not satisfy this element. Fair competition should not be confused with bad faith use or registration.”

Ultimately, the Panel DENIED the Request for Transfer.

What’s in a Name? Law Firm Falls Short in UDRP

Friday, September 26th, 2008

In a recent decision by a National Arbitration Forum (NAF) Panel, Complainant, the law firm of Gable & Gotwals, Inc., found out the hard way that trademark rights in their own name is not as easy as simply saying that you have those rights. In the case of Gable & Gotwals, Inc. d/b/a GableGotwals v. Dave Jackson, FA 1212305 (Nat. Arb. Forum, Sept. 18, 2008) the Panel heard a dispute over gablegotwals.com. Respondent did not provide file any response, which generally favors a finding for the Complainant an an order transferring the accused domain. However, in this case, the Panel was not so easily convinced by the Complainant’s evidence.

The Panel only focused on the first element, namely whether the Complainant has established rights to a mark and, if so, whether the accused domain is identical or confusingly similar to the mark. The Complainant did not have a trademark registration for GABLEGOTWALS, but alleged common law rights based on continuous use in commerce since January 1, 2006. Despite the assertions that the mark was used in the law firm name on letterhead and marketing materials, the Panel found that no evidence was submitted to support those statements. The panel noted:

Other than Complainant’s assertions, there is no other evidence indicating that the GABLEGOTWALS mark has acquired secondary meaning or source identity in commerce, and use alone is not sufficient to prove this assertion.  On this basis, the Panel concludes that Complainant has failed to establish any trademark or common law rights in the GABLEGOTWALS mark, and has therefore failed to satisfy this element of the Policy.

Finding that the Complainant did not satisfy the requirements of Policy ¶ 4(a)(i), the Panel did not analyze the other factors and DENIED Complainant’s request for transfer.

Switch to our mobile site