logo

Posts Tagged ‘Lack of Evidence’

Panel tells Alcohol Monitoring Systems to SCRAM

Thursday, April 18th, 2013

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

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

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

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

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

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

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

AirFX, LLC is Free-Falling Without a Parachute

Monday, September 19th, 2011

Although we at DefendMyDomain often blog about UDRP domain name decisions. Sometimes, those decisions go another level higher, into the U.S. federal courts. Under action 15 U.S.C. § 1114(D)(v) a domain name registrant can file a civil action asking the Federal Courts to resolve the dispute. This is sometimes referred to as a reverse domain name hijacking case, depending on the specifics of the case. The prior domain name dispute decision AirFX, LLC v. ATTN AIRFX.COM ( Nat. Arb. Forum FA1384655, May 16, 2011)(available here), was decided by a single member Panel. The Complainant convinced the single member Panel that the elements of the UDRP policy had been met. We are not going to spend time rehashing the elements of that decision, because once the dispute is brought in Federal Court, the UDRP decision is essentially irrelevant. This is an important lesson for those who seek to use the UDRP system. 15 U.S.C. § 1114(D)(v) allows an aggrieved party to seek binding federal court intervention.

Marc J. Randazza, of The Randazza Legal Group, filed the complaint on behalf of the Respondent, which follows well established pleading standards and requirements for these types of actions. (available here) However, the Complainant/Defendant AirFX, LLC, has filed a motion to dismiss, alleging among other things a 12(b)(6) allegation, and other unbelievable theories and accusations. (available here). Among the odd and interesting accusations by AirFX, LLC, they complain that the respondent/plaintiff for the first time is alleging reverse domain name hijacking. This is a misunderstanding of cause of action permitted under 15 U.S.C. § 1114(D)(v). Additionally since the decision at the UDRP level has absolutely no precedential or binding effect, this concept is misplaced. A reverse domain name highjacking claim is one which is permissible in order to prove that the domain name registrants registration was not unlawful.

AirFXS also complains about the location, namely Arizona District Court, in which the case was filed. One of the things that is clear, is when you file a UDRP, you affirmatively select and agree to one of two jurisdictions for a Federal Court challenge. (1) the location of the principal office of the concerned registrar or or (2) where the Respondent is located, as shown by the address(es) given for the domain name holder in the Whois Database at the time of the submission of the Complaint. See UDRP Rule 3(b)(xiii). AirFX asks the Court to transfer the case to another district, namely the Southern District of Indiana. This concept is dead on arrival though, since AirFX was the one demanded the jurisdiction for the resolution of all disputes thus waived any challenge to the jurisdiction.

Essentially, the Motion to Dismiss provides no controlling authority of any kind in the dismissal section. When parties seek to take domains to which they are not entitled, the arguments are often weak. We have seen the Randazza Legal Group in action before and know that AirFX will have their work cut out for them.

We will continue to monitor this case and provide updates. We thought it was an important lesson to provide our readers with an understanding of which arguments should not be raised when defending a reverse domain name highjacking case under 15 U.S.C. § 1114(D)(v).

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

Wednesday, July 20th, 2011

In a recent domain name dispute over the domain, www.syncard.com, a single member Panel let American Express “Leave Home Without It” and denied a request to transfer a purported cybersquatters domain. See American Express Marketing & Development Corp. v. Admin Support / SEOMarketing.org (Nat. Arb. Forum FA1392387, July 14, 2011). American Express needs no introduction, so let’s skip ahead to the important stuff. ( If you want to know more about AMEX, here is a link to their website www.americanexpress.com). American Express owns the mark ZYNC CARD (Reg. No. 3,848,858, issued on September 14, 2010). The disputed domain was registered on February 26, 2011. Respondent failed to submit a Response.

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

In addressing the first element, the Panel found that the disputed domain simply differed from the mark by deleting the letter “c” from the domain. For this reason, the Panel found that the domain was confusingly similar to American Express’ mark.

Moving onto the second prong, rights or legitimate interests, the Panel declined to review this element, citing to a case which essentially held that a failure to prove any one element was fatal. Therefore, the remainder of the analysis focused on the third prong, registration and use in bad faith. The Panel states its position best:

The Panel finds that Complainant has failed to sufficiently allege a use consonant with a finding of bad faith registration and use under Policy ¶ 4(a)(iii). Complainant has not only failed to allege a use that would constitute bad faith but has failed to allege any use whatsoever. Thus, the Panel finds that Complainant has failed to prove bad faith registration and use under Policy ¶ 4(a)(iii).

As a result, the Panel DENIED Complaint American Express’ request to get the disputed domain.

Grab Your Popcorn…Cinema Drama Unfolds

Monday, February 14th, 2011

In the recent domain name dispute of Prime Pictures LLC v. DigiMedia.com L.P. (WIPO Case No. D2010-1877, February 2, 2011) a three member panel was faced with a dispute over the domain www.cinemacity.com. Complainant uses the mark CINEMACITY throughout Lebanon, UAE, Jordan and Syria for movie theaters. Complainant claims rights to a Lebanese registered trademark from 2006. However, as there is some dispute over the facts presented by Complainant , in that there appears to be multiple companies that are related as presented by Complainant. The Panel noted that Complainant failed to adequately identify how these companies are related. Respondent registered the disputed domain on September 24, 1998 and has used the website as a parked page since that time.

 In accordance with paragraph 4(a) of the ICANN UDRP Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

The Panel noted that there are serious questions regarding the first element. As noted above, there were multiple companies referred to in Complainants filing. As a result, the Panel explained “More seriously there is no evidence at all that any of these companies is connected with the Complainant, Prime Pictures LLC, or that Prime Pictures LLC has any right in this mark on any other basis.” The Panel chose not to seek additional proof or information from Complainant in light of its findings under the other prongs.

The Panel then reviewed the second element, and found that Respondent did not have any rights or legitimate interests in the domain. However, as many of you know, all three of the elements must be found in favor of the Complainant. In moving onto the third element, the Panel made the following findings:

In this case the Complaint contains no evidence of any use of “Cinema City” as a mark or company name prior to September 2005. The Domain Name was registered by the Respondent in September 1998. There is no evidence whatsoever that the Domain Name was registered in bad faith. The third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected.

Normally the Panels stop their analysis at this point, making findings for Respondent. However, in this case the Respondent claimed Reverse Domain Name Hijacking. Panels have ben very reluctant to make such a finding. This Panel made the following findings:

In the present case, the Complaint correctly identified that the Domain Name was registered in 1998. Given that the earliest date of any registration or use of the mark relied upon in the Complaint was in 2005, the registration of the Domain Name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint….the Panel considers it unlikely that this deficiency was overlooked by the Complainant’s counsel and more probable that it was deliberately ignored in framing the Complaint. In all the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking.

Ultimately, the Panel DENIED the request for transfer and made a finding that Complainant engaged in Reverse Domain Name Hijacking.

123INKJETS Didn’t Get the Printout on Evidence

Monday, January 10th, 2011

In the recent domain name dispute of LD Products, Inc. v. Webatopia Marketing Limited (Nat. Arb. Forum FA1360908 Jan, 7, 2011) a single member Panel was faced with a dispute over the domain www.123inkjetx.com. Complainant owns rights to the 123INKJETS mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,212,566 issued February 27, 2007), in connection with online retail store services featuring inkjet printer cartridges, inkjet printer ink, filled inkjet printer ink cartridges, toner, toner cartridges and related accessories. Complainant also asserted common law rights in the 123INKJETS mark dating back to 1999. Complainant maintains a website at www.123inkjets.com. Respondent, registered the disputed domain name on October 19, 2004, which resolves to a click-through website featuring links to Complainant’s competitors.

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 only made it through the first element in this case. Since the registration date of the domain predated the registration date for the trademark, Complainant was under an obligation to provide evidence of common law rights to the mark. The Panel explained that Complainant failed to “set forth sufficient evidence supporting” common law rights. It is unclear what evidence, if any was presented by Complainant since the Panel did not elaborate.

In light of the following findings, the Panel explained that Complainant failed to establish the first element. As a result the Panel declined to review the remaining elements. Ultimately, the Panel DENIED the request for transfer.

RUMBERA Loses Based on Domain Registration Six Years Prior to Use

Thursday, January 6th, 2011

In the recent domain name dispute of Pidela Holdings Inc. v. Purple Bucquet / Purple (Nat. Arb. Forum FA1356856, December 31, 2010) a single member panel was faced with a dispute over the domain www.rumberanetwork.com. Complainant is a radio and web broadcasting company using the mark RUMBERA NETWORK. Complainant obtained a registered mark in Panama in May 2010. The disputed domain was registered in August 2004. The Respondent did not file a response.

Paragraph 4(a) of the ICANN 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 quickly addressed the first element, noting that the registration was sufficient to establish its rights in the mark. The Panel found that the domain was essentially identical to the mark. Moving onto the second element, the Panel noted that Complainant presented a prima facie case that Respondent lacked any rights or legitimate interests in the domain. Included in the analysis was a review that Respondent was not commonly known by the disputed domain. Additionally, Complainant submitted evidence of screenshots showing the disputed domain containing links to competing products/services. For those reasons, the Panel found that Complainant satisfied the second prong.

The case turned though on the last element. The Panel noted that Complainant provided evidence only of its trademark registration dating back to May 2010. This was a problem for the Panel since the registration of the domain was six years earlier in 2004. For that reason the Panel concluded that the domain could not have been registered in bad faith.

Ultimately the Panel DENIED the request for transfer.

A Fight Over Wood Means Lots Of Splinters

Thursday, December 16th, 2010

In the recent cybersquatting dispute of Greenply Industries Limited v. Matthew Poston WIPO Case No. D2010-1748, November 29, 2010, single member panel was face with a dispute over the domain www.greenply.net. Complainant is a supplier of plywood and laminate to the Indian market and has multiple Indian trademark registrations.  Complainant also maintains a website at www.greenply.com. Respondent registered the disputed domain in October 2008 and filed a Response to the dispute. Respondent filed for a U.S. trademark registration for the mark GREENPLY in February 2008, and it was published for opposition in July 2008. Respondent argued that since the USPTO had moved the application to publication, he believed that the registration of the domain was not in bad faith.

According to paragraph 4(a) of the ICANN UDRP Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) The Domain Name was registered and is being used in bad faith.

The Panel quickly addressed the first element, noting that the domain was identical to Complainant’s mark. The case turned on the second prong. The Panel noted that Complainant failed to present evidence demonstrating business in the U.S. prior to the Respondent’s registration of the domain. Additionally the Panel notes there was nothing in the record to indicate that Respondent’s intention to target Complainant’s brand. The Panel further rejected any contention that there has been confusion based upon a lack of evidence presented.

The Panel did not address the third prong in light of finding that Respondent established rights or legitimate interests in the domain. Ultimately the Panel DENIED the request for transfer.

PAM ANDERSON Gets Her Name

Friday, October 1st, 2010

        

In the recent cybersquatting case of Pamela Anderson v. Alberta Hot Rods Case No. D2010-1144 (WIPO September 8, 2010) a three member panel was faced with a dispute over the domain www.pamanderson.com. Pamela Anderson is well known for her acting and modeling. She has multiple trademark registration for the mark PAMELA ANDERSON. She maintains a website at www.pamelaanderson.com. Respondent registered the disputed domain on March 1, 1997 and filed a Response to the Complaint. The parties have been involved in an earlier UDRP proceeding concerning the domain names <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com>, which resulted in the transfer of those domain names (see Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104).

Under paragraph 4(a) of the ICANN UDRP Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel explained that it must view Anderson’s rights in the mark based on common law, since the Federal trademark rights do not predate the registration of the domain. A discussion of common law rights extending to an abbreviation of Anderson’s first name from PAMELA to PAM, concluded in a finding that it could be found to be confusingly similar. The Panel was satisfied that the domain was confusingly similar to the mark.

Moving on to the second element, the Panel noted that Anderson claims the Respondent is not commonly known by the disputed domain and does not have authorization to use the domain or mark. The Panel noted the following arguments presented by Respondent:

The Respondent claims to have, as a respected publisher of a wealth of information, including biographical data, used the disputed domain name in connection with various websites in the past, all featuring biographical information about various famous personalities, dead or alive. However, the Respondent did not provide any evidence of any contemplated good faith use and therefore failed to prove rights or legitimate interests in the disputed domain name under the Policy.

The Panel found this element also favored Complainant. Moving onto the final element, bad faith registration and use, the Panel made the following observations regarding Respondent knowledge and actions.

Given the Complainant’s broad media coverage and the fact that the Respondent registered the disputed domain name in a chronological sequence with the domain names disputed in Pamela Anderson v. Alberta Hot Rods, supra, (<pamelaanderson.com> registered on November 6, 1996; <pamanderson.com> registered on March 1, 1997; <pamelalee.com> registered on March 27, 1997; <pamelaanderson.net> registered on February 25, 1998), it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. This finding is further supported by the fact that the Complainant seems drawn towards registering well-known people’s names as domain names and therefore seems to be familiar with or at least interested in celebrities. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

The Panel also applied the consensus view regarding lack of active use of a domain, and explained “In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the disputed domain name amounts to use in bad faith.”

Ultimately, the Panel found that all elements were satisfied and ordered the domain be Transferred. This decision was not unanimous though as one of the Panelists provided a dissenting opinion. Additionally, The Panel dismissed the request for Reverse Domain Name Highjacking presented by Respondent.

3 Strikes for RAPIDSHARE

Wednesday, September 15th, 2010

In another domain name dispute filed by RAPIDSHARE, the concept of owning the word RAPID was denied for the third time. In RapidShare AG and Christian Schmid v. Protected Domain Services Customer ID: NCR-785723/ n/a Sergey Vlasov (WIPO Case No. D2010-1106, August 27, 2010) a single member Panel was faced with a dispute over the domain www.rapid4me.com. We have previously blogged about the two prior failures of RAPIDSHARE’s attempts to own the word “rapid.” However, each time the Panel has found this was too much and that RAPIDSHARE did not use RAPID as a mark and was not commonly known by the name RAPID.

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In this case the Panel cited to some of the prior decisions, both for and against RAPIDSHARE, and noted that in the prior denial cases, such as RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696, that Panel found that www.rapidbay.net was not able to be transferred under the policy. This Panel adopted many of the same arguments, however did not get past the first element of whether or not the domain was identical or confusingly similar to the RAPIDSHARE mark. The Panel chose not to review the remaining elements.

Fender Guitars Playing Sad Song After Losing Dispute

Tuesday, August 10th, 2010

     

In the recent case of Fender Musical Instruments Corporation v. Christopher Ruth (Nat. Arb. Forum FA1333857 August 9, 2010), a single member Panel was faced with a dispute over the domain www.fendercustomshop.com. Complainant Fender Musical Instruments Corporation, is the well known seller of musical instruments, amplifiers, and accessories.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FENDER mark (e.g., Reg. No. 805,075 registered on March 8, 1966). Fender maintains a website at www.fender.com. Respondent registered the disputed domain in 2003 and failed to respond to this complaint.

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 quickly dispensed with the first prong, noting that “Based on precedent and Complainant’s trademark registrations, the Panel finds Complainant has sufficiently proved its rights in the FENDER mark pursuant to Policy ¶ 4(a)(I).” The Panel found that Respondent merely added the descriptive phrase “custom shop “ at the end of the domain, which was not enough to distinguish it from the FENDER mark.

Moving to the second prong, the Panel explained that Fender must make a prima facie case that Respondent lacked any rights or legitimate interests in the domain. The Panel found as follows:

Here, Complainant claims Respondent made no use of, or any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.  However, Complainant fails to allege any facts related to Respondent’s use or provide any screen shots of Respondent’s resolving website.  The Panel finds Complainant’s assertions, without any supporting evidence or analysis, do not sufficiently establish Respondent lacks rights or legitimate interests in the <fendercustomshop.com> domain name.  Therefore, the Panel finds Complainant has failed to make a prima facie case showing Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).

For these reasons, the Panel found that Fender failed to prove up its case, and the Panel declined to review the final element. Ultimately, the Panel DENIED Fender’s request for transfer of the domain.

Switch to our mobile site