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Posts Tagged ‘Initial Interest Confusion’

NuvaRing Can Prevent Pregnancy, But Not Criticism

Friday, June 19th, 2009

In a recent domain dispute decision of N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields (Nat. Arb. Forum 1259266, June 16, 2009) a single member panel was faced with a dispute over www.nuvaringsideeffects.com. Complainant is the owner of the popular contraceptive device and NUVARING and owns federal trademark registrations for same. Complainant maintains a web site at www.nuvaring.com. Respondent is a personal injury law firm and maintains a web site at www.injurygroup.com. Complainant contends that the disputed domain is being used by Respondent to confuse the public and tarnish the goodwill and reputation of Complainant. The Complaint explains that when a user goes to the disputed domain it seeks to solicit customers to file lawsuits against Complainant resulting from use of the NUVARING. Specifically, Complainant contends the disputed domain includes headings such as “NuvaRing Class Action Information,” “NuvaRing Side Effects – NuvaRing Law Suit,” “NuvaRing Warnings,” “NuvaRing Blood Clot,” NuvaRing pulmonary Embolism,” and “NuvaRing Lawsuit.” Respondent contends that it is using the domain in connection with a bona fide offering of goods and services, prior to notification of any dispute. Further, Respondent claims it is using the domain in a nominative fair use manner for referring to Complainant’s and their NuvaRing product. Both parties provided additional submissions which expounded on their original arguments.

Under the ICANN UDRP Policy paragraph 4(a) the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interest 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, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found the domain contained Complainant’s entire mark and merely added generic words such as “side” and “effects.” This element favored transfer of the domain to Complainant.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant must first establish a prima facie case. The Panel explained:

Complainants’ evidence establishes that (i) Respondents are not licensees of Complainants, nor have they received permission or consent to use Complainants’ trademark; (ii) Complainants have prior rights in that trademark which precede Respondents’ registration of the Domain Name; and (iii) Respondents are not commonly known by the trademark.  Complainants have thus made a prima facie showing that the Respondents have no legitimate rights or interest in the domain name.

The burden then shifted to Respondent and the Panel made a finding that “Respondents prove[d] that they are using it to offer legal services in connection with consumers who may have been harmed by Complainant’s product and to provide[d] information to the public about Complainant’s product.” The Panel also reviewed and applied the standard for nominative fair use argued by Respondent, and as established by the 9th Circuit Court of Appeals case of  New Kids on the Block v. News Am Publ’g. Inc., 971 F.2d 302, 308 (9th Cir. 1991).  The New Kids case standard is as follows:

(1) The product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark may be used as is reasonably necessary to identify the product or service; and (3) the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

The Panel found that Respondent did establish its nominative fair use of the mark per appellate court precedent. The Panel also addressed Complainant’s assertion of initial interest confusion, noting as follows:

This Domain Name contains nothing to suggest that the related website would be sponsored or endorsed by Complainants or anyone else seeking to promote the NuvaRing product.  The message in the Domain Name tends in the opposite direction.  The plain meaning of the words “NuvaRing side effects” is much closer to “the NuvaRing may be dangerous or have risks associated with it” than to the kind of message that would be offered by its manufacturer.  A reasonable consumer would not assume that a website by this name would be sponsored by the manufacturer of the named product.  A description of “side effects” might be included in a website sponsored by the manufacturer, but “side effects” would not likely be in the name of the website itself.

The Panel also found that Respondent’s use of a disclaimer on the web site was further evidence of their legitimate rights and interests since it immediately and sufficiently informs users of the non-affiliation. Lastly, Complainant cites to three prior domain decisions where an attorney was using domains to promote lawsuits against AIG. (See American International Group, Inc. v. Debra Speyer, FA 422815 (Nat. Arb. Forum Apr. 7, 2005), American International Group, Inc. v. Debra Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005), and American International Group, Inc. v. Bruce Levin, FA 591254 (Nat. Arb. Forum Dec. 21, 2005)). The Panel distinguished all these cases since nominative fair use was not asserted by respondent in any of the cited cases and because “the fact that the Respondents’ use of the Domain Name here may not fit within the provisions of Policy ¶ 4(c)(iii) does not preclude them from establishing their rights or legitimate interest in some other fashion, which they have.”

Ultimately, the Panel found that Claimant did not satisfy the second element and DENIED the request for transfer. The Panel did not address the bad faith element in light of the failure to prove the second element.

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

Wednesday, September 3rd, 2008

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

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

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

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

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

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

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

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

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

Trademarks in Metatags, But No Initial Confusion Says the 11th Circuit Appeals Court

Tuesday, August 26th, 2008

The Eleventh Circuit Court of Appeals recently ruled on an important case regarding trademarks and metatags. In North American Medical Corp. v Axiom Worldwide, Inc., (11th Cir. 2008) NAM alleged that Axiom used two of NAM’s registered trademarks on Axiom’s website within metatags in an effort to influence search engine results. One of the major issues the Court was faced with was whether Axiom’s use of the metatags constituted “use in commerce” sufficient to trigger liability under the Federal Trademark law (the Lanham Act). The Court explained:

However, we readily conclude that the facts of the instant case do involve a “use” as contemplated in the Lanham Act — that is, a use in connection with the sale or advertisement of goods. In deciding whether Axiom has made an infringing “use,” we focus on the plain language of § 1114(1)(a), which, as noted above, requires a “use in commerce . . . of a registered mark in connection with the sale . . . or advertising of any goods.” 15 U.S.C. § 1114(1)(a). The facts of the instant case are absolutely clear that Axiom used NAM’s two trademarks as meta tags as part of its effort to promote and advertise its products on the Internet. Under the plain meaning of the language of the statute, such use constitutes a use in commerce in connection with the advertising of any goods. Accordingly, we readily conclude that plaintiffs in this case have satisfied that (1) they possessed a valid mark, (2) that the defendant used the mark, (3) that the defendant’s use of the mark occurred “in commerce,” and (4) that the defendant used the mark “in connection with the sale . . . or advertising of any goods.”

The Court also discussed a key element of almost every trademark infringement action, whether there is a likelihood of confusion between Axiom’s unauthorized use and NAM’s rights.

[W]e ultimately conclude that a company’s use in meta tags of its competitor’s trademarks may result in a likelihood of confusion. However, because NAM and Adagen have demonstrated a likelihood of actual source confusion, we need not decide, as those courts did, whether initial interest confusion alone may provide a viable method of establishing a likelihood of confusion…. Because Axiom’s use of NAM’s trademarks as meta tags caused the Google search to suggest that Axiom’s products and NAM’s products had the same source, or that Axiom sold both lines, or that there was some other relationship between Axiom and NAM, Axiom’s use of the meta tags caused a likelihood of actual source confusion.

This is the first discussion of initial interest confusion by the 11th Circuit Court of Appeals. One of the more interesting developments in this case is found in a footnote wherein the Court limits its their opinion and opened the door to additional litigation in the trademark/metatag world.

We note that our holding is narrow, and emphasize what kind of case and what kind of facts are not before us. This is not a case like Brookfield or Promatek where a defendant’s use of the plaintiff’s trademark as a meta tag causes in the search result merely a listing of the defendant’s website along with other legitimate websites, without any misleading descriptions. This is also not a case where the defendant’s website includes an explicit comparative advertisement (e.g., our product uses a technology similar to that of a trademarked product of our competitor, accomplishes similar results, but costs approximately half as much as the competitor’s product). Although we express no opinion thereon, such a defendant may have a legitimate reason to use the competitor’s trademark as a meta tag and, in any event, when the defendant’s website is actually accessed, it will be clear to the consumer that there is no relationship between the defendant and the competitor beyond the competitive relationship. Resolution of the foregoing, as well as other factual situations not before us, appropriately await the day that such factual situations are presented concretely.

Ultimately the Court affirmed the district court’s findings with respect to the likelihood of success on the merits for the trademark and false advertising claims, but vacated the lower court’s preliminary injunction order.

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