In the recent cybersquatting decision of CruiseShipCenters International Inc. v. Leonard Brody FA1297509 (Nat. Arb. Forum February 10, 2010) a single member Panel was faced with a dispute over the domain www.cruiseshipcenters.mobi. Complainant maintains a web site at www.cruiseshipcenters.com, which appears to be run in connection with Expedia. Respondent registered the disputed domain name on November 9, 2006.  The disputed domain name does not resolve to an active website. 

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 noted that Complainant had registered marks for CRUISESHIPCENTERS with Canada, the European Union and the U.S., which all were registered in early 2008. In addressing the first element, the Panel found that the registrations were enough to prove complainant’s rights in the mark. As a result the Panel found that the disputed domain was identical to Complainant’s mark. The Panel declined to review the second element in light of its findings from the third element.

The Panel explained that although Complainant proved its rights in the mark, none of the registrations predated the November 2006 registration date of the disputed domain. The Complainant failed to provide any evidence showing common law rights which may have predated the domain registration. For these reasons, the Panel found Respondent did not register the disputed domain in bad faith. Ultimately, the Panel ruled that the request for transfer be DENIED.

In the recent cybersquatting case of Digital Alchemy, LLC v. Digital Alchemy c/o Ramon Felciano FA1295928 (Nat. Arb. Forum, January 12, 2010) a single member Panel was faced with a dispute over the domain www.DigitalAlchemy.com. Complainant operates in the field of electronic CRM for the Hospitality Industry and maintains a web site at www.data2gold.com. Complainant claims no registered trademark but states it has common law rights dating back to 1996.  Respondent is a consulting firm based in San Francisco, California, specializing in business, product, and technology strategy for life sciences, healthcare and technology markets. Respondent claims to have been offering its consulting services since 1993.

Paragraph 4(a) of the ICANN UDRP Policy requires that 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 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 disputed domain is identical to the DIGITAL ALCHEMY mark. But the Panel found that Complainant failed to demonstrate it has rights to the mark. The Panel criticized the Complainant’s contention that it had used the mark in connection with its services since 1996, noting that it was a conclusory statement lacking sufficient evidence. The Panel further finds that Complainant failed to present evidence of secondary meaning. The Panel cited to another prior decision and explained.

 In declining to recognize the complainant’s common law mark in Kip Cashmore the panel stated:  “Here, Complainant has not presented any credible evidence establishing acquired distinctiveness [for the complainant’s goods and services]. The record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin or services. Complainant’s record consists of merely a declaration of Complainant with unsupported facts…” Here the record is even more paltry than in Kip Cashmore, as there isn’t even a self-serving declaration by Complainant that its mark serves as an identifier of its goods and services in the public’s mind.

Moving to the second element, the Panel continued its analysis. The Panel found Complainant failed to present a prima facie case. Respondent presented evidence of doing business since 1993 under the Digital Alchemy name, which was prior to Complainant’s use. The Panel dismissed Complainant’s Additional Submission argument that there was no proof of continuos use by Respondent, noting the UDRP had no such requirement. The Panel also dismissed Complainant’s contention that the offer to sell the domain, after being solicited by Complainant did not satisfy this element.

In addressing the final element, bad faith, the Panel explained:

Given Respondent’s use of the Digital Alchemy name in its business since 1993, and the Panel’s finding that Respondent has rights and legitimate interests in the domain name, the Panel concludes that Respondent did not register and is not using the domain in bad faith. Indeed, as prior panels have held, once a panel has determined that a respondent has rights and legitimate interests in a domain name, the question of bad faith is moot.

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

In the recent domain name dispute decision of Hargrave Arts LLC c/o Carter Hargrave v. Chiefasian LLC c/o Martin Eng FA1294273 (Nat. Arb. Forum, December 31, 2009), a single member Panel was faced with a dispute over the domain www.jeetkunedo.com. Complainant is the owner of multiple Jeet Kune Do related domains, including www.jeetkunedo.net and www.jeetkunedo.org. Mr. Hargrave is the president of the World Jeet Kune Do Federation. He claims common law trademark rights to the mark JEET KUNE DO. A little background is necessary, for an understanding of the origins of JEET KUNE DO. This form of martial arts was founded by Bruce Lee in the late 1960’s. According to the decision, Complainant is one of about 50 certified instructors. The disputed domain was registered on March 6, 2000 and Respondent provided a response to the complaint.  Although the Response was not provided the Panel noted that Respondent claims Hargrave does not have rights to the JEET KUNE DO mark.

Paragraph 4(a) of the ICANN UDRP Policy requires that 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 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 explaining that Complainaint contends he acquired rights to the JEET KUNE DO mark from Bruce Lee and the Bruce Lee Jeet Kune DO School. However, the Panel notes that Hargrave fails to provide any evidence that it represents Bruce Lee or the Bruce Lee School. Additionally, Hargrave fails to provide any evidence that any of the rights to the JEET KUNE DO mark were assigned or licensed to him. For these reasons, the Panel found that Hargrave did not satisfy the first element.

The Panel did not review the remaining elements and DENIED the request for transfer.

In the recent domain name dispute decision of Kim Laube & Company Inc. v. RareNames, WebReg FA1291282 (Nat. Arb. Forum December 22, 2009) a three member Panel was faced with a dispute over the domains www.natureschoice.com and www.natures-choice.com. Complainant sells pet grooming products and has a a trademark registration for the mark NATURE’S CHOICE. Respondent provided a response to the complaint and registered the disputed domains in 2002 and 2003.

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

The Panel addressed the first element of the analysis and explained that the domains were identical or confusingly similar to Complainant’s mark. Although Respondent argued that Complainant could not hold exclusive rights on the common words, the Panel dismissed this argument under this prong of analysis.

The Panel declined to address the second prong, directing its attention to the third prong. First the Panel noted that there was no evidence presented that Respondent’s registered the domains primarily for the purpose of disrupting Complainant’s business.  The Panel only paid serious attention to Policy ¶4(b)(i) and (iv). Those sections state:

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel explained as follows:

Turning first to Policy ¶ 4(b)(i), Respondent states that its business is the acquisition then sale of domain names for profit.  The only important issue is whether Complainant can point to circumstances indicating that Respondent registered the names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.

Likewise, Policy ¶ 4(b)(iv) requires proof that Respondent for commercial gain; intentionally used the disputed domain name to attract web users; to an on-line location; by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that on-line location, or of a product or service at that location.

Once more, the key issue is whether Respondent can be said to have used the domain names in a way which intentionally created a likelihood of confusion with Complainant’s trademark.

The Panel recognized that there are other contrary decisions on this topic but noted that their view was that “proof of actual knowledge of a Complianant’s trademark rights is necessary.” The Panel explained that in the situations where there is a trademark with descriptive elements, then the onus rises on proof of knowledge. The Panel discounts the arguments put forth by Complainant of its common law rights, based on a lack of evidentiary support. The Panel concluded by noting:

Taking account of the inherently descriptive character of both the trademark and the disputed domain name, the degree to which either very similar domain names or identical domain names with different extensions have been registered/used by others, the lack of evidence that Respondent has habitually abused third party trademark rights, and all of the circumstances, the Panel finds that neither Policy ¶ 4(b) (i) or (iv) is made out.

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

In the recent domain name dispute decision of Greatwater, Inc. v. Greatwater Custom Label (2004) Inc FA1287920 (Nat. Arb. Forum November 25, 2009) a single member Panel was faced with a dispute over the domains www.greatwater.com and www.nationwidesprings.com. Complainant is the supplier of private label bottled water. Complainant originally registered the greatwater.com domain and its parent company purchased the nationwidesprings.com domain. Complainant’s company was sold to a third party company, who in turn sold it to a fourth company. That fourth company supposed then sold it to a fifth company, but started their own new bottled water business (Respondent) in competition with Complainant. That competition included Respondent maintaining control of and using the two disputed domains. Respondent argues that Complainant has failed to show it has any trademark rights, and challenges that Complainant has not established secondary meaning.

Paragraph 4(a) of the ICANN UDRP Policy requires that 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 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 failed to establish common law rights through secondary meaning of either domain name. Although the Complainant failed to prove the first element the Panel chose to review all of the elements.

Moving to the second element, the Panel found that Complainant failed to present a prima facie case in support of its arguments.

Respondent presents evidence and argues that it has used the disputed domain names in connection with its business selling bottled water since its incorporation in 2004. The Panel finds that Respondent has made demonstrable use the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)….Respondent argues that Respondent has been commonly known by the disputed domain names since its incorporation in 2004 for the business of selling bottled water. The Panel finds that Respondent has rights and legitimate interests in the disputed domain names due to it being commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).

The Panel moved to the final element, bad faith, noting that Complainant did not present sufficient evidence. The Panel concluded that since Respondent had rights or legitimate interests in the domains, they had also not registered the domains in bad faith.

Ultimately, the Panel DENIED Complainant’s request to transfer the domains.

In the recent domain name decision of National Association of Competitive Soccer Clubs v. Bruce Binler (WIPO, D2009-0957, September 7, 2009), a single member panel was faced with a dispute over the domain www.usclubsoccer.net. Complainant is a non-for profit organization responsible for putting together soccer clubs, leagues and tournaments across the U.S. Complainant maintains a web site at www.usclubsoccer.org and has a servicemark registration for US CLUB SOCCER. Respondent registered the domain in 2007 and failed to provide a response to the Complaint.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that: (i) respondent’s 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) respondent’s domain name has been registered and is being used in bad faith.

Some of the facts presented included that Respondent used the domain in connection with promoting soccer events sanctioned by Complainant in 2006 and 2007.These facts may have been relevant in the Panel’s findings, however, the Panel did not make it passed the first element.

The Panel found that Complainant did not establish sufficient rights in the mark US CLUB SOCCER. The Panel noted that Complainant’s citation to a federal registration failed to inform the Panel that it was actually on the Supplemental Register.

Complainant does not enjoy a presumption of service mark rights based on registration of US CLUB SOCCER on the Supplemental Register of the USPTO. Complainant does not enjoy any presumption of rights based on the submission of a recent application for registration of the same term on the Principal Register of the USPTO.

Although Complainant has recently applied again to the USPTO for the same mark seeking registration on the Principal Register. Therefore, the Panel noted that Complainant must show that it had sufficient common law rights. The Panel was concerned that the USPTO rejected the original application for being primarily geographically descriptive with terms that are generic or merely descriptive. The Panel took some liberties in doing some market reserach and made the following observations:

Critically however, Complainant did not address the question whether the terms are commonly descriptive or generic. In the interests of fairness, the Panel performed Google and Bing searches for CLUB SOCCER together. Those searches returned many millions of “hits”. While Complainant’s organization was listed first in non-advertising rank, there was a substantial number of references to organizations, news reports, domain names and other listings that include “club soccer” as a descriptive term. The Panel does not consider this search to be ultimately determinative on the question whether Complainant might establish rights in US CLUB SOCCER as a service mark, but it was sufficient to persuade the Panel that Complainant has not here carried its burden of demonstrating that the terms are more than commonly descriptive or generic, given that the USPTO previously decided to that effect.

In light of these findings the Panel found as follows:

The rejection by the USPTO of Complainant’s application for registration on the Principal Register and Complainant’s conversion of that application to the Supplemental Register implies that its alleged service mark is not distinctive. The grounds of rejection by the USPTO expressly related to characteristics that may be understood to preclude the establishment of secondary meaning (i.e., primarily geographically descriptive term, generic-ness or mere description).

The Panel found that Complainant failed to establish the first element and thus did not address the other two elements. The Panel ordered the request for transfer be DENIED.

In the recent domain name dispute, Spinsix Strategic Marketing Design, LLC v. RareNames, WebReg FA1273907 (Nat. Arb. Forum, September 3, 2009), a single member Panel was faced with a dispute over the domain www.lincs.com. Complainant appears to be an marketing firm, which sells computer related online marketing tools. Complainant maintains a web site at www.spinsix.com. Complainant owns a trademark registration for the mark LINCS. Respondent appears to be a domainer and registered the disputed domain in September 2003.

Paragraph 4(a) of the Policy requires that 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 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 had established rights to the mark LINCS through its trademark registration. However, the Panel noted Complainant did not provide sufficient evidence of common law rights dating back to the first use date of January 2004. The Panel recognized that Respondent argued that the disputed domain registration date predated the first use allegations from Complainant, but declined to review the information for this element. The Panel found this element satisfied by Complainant.

Moving to the second element, the Panel found that Complainant failed to establish a prima facie case under the Policy. The Panel noted:

Respondent has offered convincing proof that it is in the business of registering generic domain names and displaying advertising that relates to the generic nature of the terms in the domain names. Respondent asserts that engaging in the sale of generic domain names is a legitimate business.  The Panel finds that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)….Respondent also argues that the term in the <lincs.com> domain name is generic and of common use and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent has offered convincing evidence that the contested domain name is comprised of a common term, such that the Panel finds that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

The Panel then simply stated that the disputed domain was registered before Complainant’s first use of the mark, and then concluded that section finding Respondent had rights or legitimate interests in the domain.

The Panel declined to review the bad faith element in light of this finding and instead moved to Respondent request for a finding of Reverse Domain Name Hijacking. The Panel repeated some of Respondent’s arguments, but did not provide much of its own analysis. Respondent argued:

Complainant has attempted to engage in reverse domain name hijacking by filing the instant UDRP case, with the knowledge both that Respondent had rights or legitimate interests in the disputed domain name, and that Respondent could not have registered  the disputed domain name in bad faith, because its registration of September 01, 2003, pre-dated Complainant’s asserted common law usage of the mark in January of 2004.

In light of these arguments, the Panel found that Complainant engaged in reverse domain name hijacking and DENIED Complainant’s request for transfer.

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 domain dispute of ETW Corp. and Eldrick ‘Tiger’ Woods, for itself, Tiger Woods and his minor child, Charlie Axel Woods v. Josh Whitford (Nat. Arb. Forum 1263352, June 24, 2009) a single member Panel was faced with a dispute over the domain www.charlieaxelwoods.com. Essentially, this case was brought by Tiger Woods on behalf of his second son Charlie Axel Woods. Tiger Woods remains one of the most famous people in the world, let alone the greatest golfer. He maintains a web site at www.tigerwoods.com.

In all ICANN UDRP cases Panels review, and Complainants must prove three elements: (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 interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In this case the Panel reviewed arguments submitted by both parties. Woods relied upon a federal trademark registration for his own name as well as common law rights in his son’s name. Tiger Woods’ son was born on February 8, 2009 and the disputed domain was registered on February 9, 2009. Tiger argued that the domain was being held primarily for the purpose of selling it. Tiger argued that Respondent listed the domain for sale on eBay nine days after its acquisition stating:

“This is your chance to own the domain to a future golf legend or use it in some way to extord (sic) the current golf legend for some extra cash (not highly recomended (sic) seeing he has lots of money and lawyers.)  I personally feel someone much more into golf would appreciate the address much more than myself.  I am not really sure why I bought the domain, but since I am loosing (sic) my job on the 1st of April anything sounded like a good idea.” 

Tiger further argued that the Whois information for the domain directed viewers to the eBay listing as well. (The current Whois information has been changed and is now hidden through a privacy service).

The Respondent made several counter arguments. Respondent argued that Tiger Woods had no rights under the Policy to the domain since there was no common law protection for Charlie Axel Woods. Respondent claimed that a birth certificate did not create rights. In addressing the bona fide legitimate noncommercial use of the domain, Respondent stated he was using the domain as a fan page. Respondent claimed his eBay listing was satire.

In light of the arguments presented, the Panel addressed the first element, wether the domain was identical or confusingly similar to a protectable mark. First the Panel found that the domain was not sufficiently similar to the TIGER WOODS mark. The Panel agreed it was identical to the name Charlie Axel Woods, but proceeded through an analysis of whether such name was a protectable common law mark. The Panel relied upon the Wipo Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names in the Internet Name System (2001) and upon the case of Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, D2002-1073 (WIPO March 6, 2003), which explained the current status of most “personal name” disputes. Specifically that case stated as follows:

The Panelist divided the personal name cases into six categories. The category that includes the most cases is that involving persons from the entertainment industry. The second most numerous category was that of professional athletes. The four other categories, with few cases in each (some overlapping) were authors, business people, royalty and politicians. The Panel found that the cases effectively required that for a personal name to be eligible for trademark or service mark status it needed to be used “for the purpose of merchandising or other commercial promotion of goods or services.” …Later cases have held that in order for a personal name to acquire trademark or service mark status in a jurisdiction that recognizes common law marks, the personal name must be used in connection with the commercial offering of goods or services and must have acquired secondary meaning as the source of such goods or services.

In light of the WIPO report and prior case decisions, the Panel found that Woods presented no evidence that Charlie Axel Woods was used in connection with commercial offering of goods and services or that it had acquired secondary meaning. The Panel found Woods failed to satisfy the first element and declined to consider the other elements. The Panel DENIED the request for transfer.

In the recent decision of Rotobrush International LLC v. Vacbrush a/k/a Ming Liu (FA 1253370, Nat. Arb. Forum May 8, 2009) through the National Arbitration Forum, a single member panel was faced with a dispute over four domains which included www.real-rotobrush.com, www.used-rotobrush.com, www.rotobrush-online.com, and www.rotobrush.org. Complainant, Rotobrush is in the business of manufacturing and distribution of air duct cleaning systems. They maintain a website at www.rotobrush.com. Rotobrush has a trademark for ROTOBRUSH, (Reg. No. 2,021,581) in connection with those goods since at least 1996.  Respondent registered the disputed domains in July and August of 2008. The Respondent did not mount a defense or respond in any manner 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 began its analysis with the first prong, namely, whether the domain is identical or confusingly similar to the Complainant’s mark. The Panel found that all of the disputed domains contained Complainant’s entire ROTOBRUSH mark, even though some of them included generic terms such as real, used, or online in addition to the full domain name. Regardless, the Panel found that Complainant satisfied this element.

The second element, whether the Respondent had any rights or legitimate interest in the domains, was not such a clear path for Complainant. The Panel noted that Complainant must initially make a prima facie case, and if established the burden of proof shifts to the Respondent. The Panel stated:

Complainant has failed to allege any facts whatever in support of its bald assertion that Respondent lacks rights to or legitimate interests in the disputed domain names, including as to the specifics of Respondent’s use or nonuse of the domain names.  Thus we are forced to conclude that Complainant has failed to make out a prima facie showing under Policy ¶ (a)(ii). 

As a result, the Panel found that Complainant failed to prove up its second element. Although a Complainant must prove up all three elements, the Panel still decided to analyze the final prong, whether or not the domains were registered and used in bad faith. The Panel made the additional observations and findings:

Complainant has failed to allege any facts to establish that Respondent’s registration and use of any of the domain names here in issue was or is in bad faith.  The mere assertion of bad faith without any supporting evidence is insufficient to justify a finding of bad faith registration and use of contested domain names under Policy ¶ 4(a)(iii).

Ultimately, the Complainant failed to satisfy the three elements of proof necessary for a UDRP case and the Panel DENIED the request for transfer.

DefendMyDomain Commentary:
This case illustrates that the Complainant must establish facts to support Respondent’s lack of legitimate interests and facts to support Respondent’s bad faith. Raw, unsupported legal conclusions, which mimic the UDRP elements are insufficient to meet a Complainant’s burden of proof.