In two different decisions from the National Arbitration Forum, Improv West Associates, d/b/a Improv Comedy Clubs, was not laughing its way to winning some domain names. Improv West Associates maintain web sites at www.improv2.com, www.improv.com and www.improvclubs.com.

The first dispute was Improv West Associates v. Acimasiz Cocuq (Nat. Arb. Forum 1257098, May 12, 2009) where a single member panel was faced with a dispute over the domain www.improvcomedyclubs.com. In the decision, Complainant claims to have used the IMPROV COMEDY CLUB mark since 1963 in connection with live entertainment by stand-up comedians. The Panel noted that 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. Respondent failed to respond to the Complaint. Normally, a Panel will review all three elements in the decision, but this Panel only discussed Complainant’s failure of the third element, bad faith. The Panel explained:

Complainant argues that Respondent has registered and used the disputed domain name in bad faith in that Respondent solely obtained the disputed domain name to sell it to Complainant for value or prevent Complainant from using the disputed domain name.  Noticeably missing from the Complaint, however, is any corroborating or supporting evidence to verify this claim.  The Complaint must provide more than legal assertions and conclusions of bad faith registration and use in order to qualify for its desired remedy under the Policy, and Complainant has failed in this task.  Thus, the Panel cannot, and will not, make a finding of bad faith registration and use on the merits of the case under Policy ¶ 4(a)(iii).

Therefore, the Panel DENIED Complainant’s request for transfer.

The second dispute was Improv West Associates v. Not Applicable a/k/a Kenneth Arnold (Nat. Arb. Forum 1256834, May 13, 2009) where a single member Panel was faced with a dispute over the domain www.improvcomedyclub.com. Unlike the first case above, this Respondent put up a fight and the Panel provided an in-depth analysis of the three UDRP ICANN elements of proof and the parties’ claims.

Although most Panels normally only address the three elements stated above, this Panel created a separate section addressing “rights in a mark” for Complainant.  The Panel noted that Complainant does not have any registered marks for IMPROV COMEDY CLUB, and only recently filed trademark applications for IMPROV. Those applications remain pending, and the Panel explained the under the Policy trademark applications do not give rise to trademark rights. Therefore, the Panel was faced with determining whether Complainant had acquired sufficient common law rights. Interestingly, Complainant’s counsel submitted his own affidavit attesting to 25 years of personal experiences attending the IMPROV COMEDY CLUB. Weighing that “evidence” the Panel explained:

Ignoring those parts of the affidavit [by counsel] expressing opinions about the very issue to be determined, the Panel is prepared to accept, for the purposes of this administrative proceeding and despite the slender evidence which that affidavit provides, that Complainant has, through use, acquired common law rights in the mark IMPROV COMEDY CLUB.  The Panel is not satisfied that the same can be said in relation to the word IMPROV.

The panel next moved into the full three element analysis, where it quickly agreed that the disputed domain was identical or confusingly similar to Complainant’s mark. Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel explained as follows:

Respondent has provided no evidence to support his contention that he intends to use the domain name for the improvised comedy club services it describes or at all. He does not even identify the other domain name under which he claims to have operated a business with which the present domain name is claimed to be associated….In the absence of any evidence of use or demonstrable preparations to use the domain name since it was registered in 1999, the Panel finds Respondent has no rights or legitimate interests in the domain name.

The Panel then moved to the last element, whether the Respondent registered and used the domain in bad faith. Complainant sought an inference from the Panel that bad faith occurred as a result of a finding of no rights or legitimate interests. The Panel rejected this proposition. The Complainant also alleged that Respondent’s lack of use of the domain for 10 years also inferred bad faith in line with the famous “passive holding” case of Telstra Corp. Limited v. Nuclear Marshmallows (D2000-00003 WIPO Feb. 18, 2000). The Panel disagreed with this proposition and stated as follows:

The present case, however, is on all fours with Alberto-Culver Co. v. Pritpal Singh Channa, D2002-0757 (WIPO Oct. 7, 2002), in which the domain names were <staticguard.com> and <staticguards.com>.  The learned panelist said:
 
…Complainant relies on the idea of “passive holding” as established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This case established the proposition that doing nothing with a domain name may amount to bad faith registration and use. However the Panelist in that case was extremely careful to note that this principle does not apply to every example of passive holding. The specific circumstances in that case included false name information in the WHOIS record, false address information, failing to respond to the Complaint, an extremely famous mark within the geographical region of both Complainant and Respondent, and a mark that was entirely invented. This case has none of those features: Respondent has provided his name, and his address, and has responded within time to the Complaint. Complainant has provided no evidence that its mark is so well known that any registration (without use) of a domain name cannot help but lead to the conclusion that Respondent registered with male fides. And, unlike the mark in Telstra, the mark and the domain names here are the concatenation of two generic English words. I conclude therefore that the Telstra passive holding principle does not apply to the facts in this case.

The same words apply here with equal force, the only exception being that the name under which the domain name was registered was “Not Applicable.” The name and address of Respondent, Kenneth Arnold, were disclosed as the Administrative Contact and Technical Contact. Accordingly, registration in the name “Not Applicable” is insufficient to distinguish this case from Alberto-Culver Co., supra and insufficient to attract the “passive use” doctrine of Telstra Corp. Ltd., supra.

Ultimately, the Panel found that Complainant failed to establish the third element and DENIED the request for transfer. The Respondent also made a request for a finding of reverse domain hijacking, which the Panel rejected.

In the recent decision of Digital Playground, Inc. v. Network Telephone Services, Inc., Dan Coleman, Frontier Credit Corp., and Harriet Walkup (WIPO Case No. D2009-0105, March 20, 2009), a single member panel was faced with a dispute over the domain www.virtualsex.com.  Complainant, Digital Playground, maintains a website at www.digitalplayground.com and claims to be a leading producer of adult films with a 40% market share of adult DVD’s. Digital Playground owns a trademark for the mark VIRTUAL SEX, (Reg. No. 3014320) based on a first use date in 1994. Respondent registered the domain on August 24, 1995 and “set up a web site at which adult content DVDs, strip clubs webcam sites, sex chat rooms, adult dating services, and ‘adult toys’ were offered for sale.” Respondent claimed to have no knowledge of Complainant or its mark at the time of the domain registration and argued that the term is generic. [Editor’s note: a “generic” term is one that answers the question “What is it?”]

The Panel reviewed the UDRP policies established by ICANN whereby “Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) that the respondent has no legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith.”

In addressing these elements, the Panel did not provide significant analysis and cited to only one prior domain dispute decision. Regardless, the Panel made the following findings. First, regarding whether the domain was identical or confusingly similar, the Panel explained that although Respondent conceded that the domain was confusingly similar, Respondent did not rebut the presumption that the mark was distinctive. As a result, the Panel found that Complainant satisfied this element.

The Panel next explained that the second element, whether the Respondent had any rights or legitimate interests in the mark, would really depend on an analysis of the third prong, bad faith. So the Panel addressed the bad faith portion of the elements, noting that Complainant claimed to have coined the term VIRTUAL SEX in 1994 and that by August of 1995 it had acquired secondary meaning. The Panel observed as follows:

However, Complainant produces no evidence of the acquisition of secondary meaning by August 1995. Moreover, the fact that Complainant did not bring this action until 14 years after Respondent had registered the domain name at issue and more than 13 years after Respondent had used the domain name at issue to resolve to a web site at which products competitive to those offered by Complainant, as well as products entirely different from those offered by Complainant, is not explained by Complainant. Finally the diverse offerings available on the web site to which the domain name at issue resolves suggest that Respondent is trading on the descriptiveness of the term “virtual sex,” rather than on the goodwill attached to Complainant’s mark.

Ultimately the Panel found that Complainant had failed to establish bad faith and DENIED Digital Playground’s request for transfer.

In the recent decision of Occidental Hoteles Management, S.L. v. Media Insights a/k/a Media Insight (Nat. Arb. Forum, 1239395, March 2, 2009), a single member panel was faced with a dispute over 20 different domains. The domains in dispute are listed below:

www.occidentalallegro.com
www.occidentalallegrocozumel.com
www.occidentalallegroplayacar.com
www.occidentalallegropuertoplata.com
www.occidentalgrandcozumel.com
www.occidentalgrandflamenco.com
www.occidentalgrandpuntacana.com
www.occidentalgrandxcaret.com
www.occidentalroyalhideaway.com
www.occidentalgrandcancunresort.com
www.occidentalgrandpapagayo.com  
www.occidentalgrandpuertoplata.com
www.occidentalgrandarubaresort.com
www.allegrojacktarpuertoplata.com
www.allegroplayacar.com
www.allegropapagayoresorts.com
www.grandcozumelresort.com
www.grandarubaresort.com 
www.grandxcaretresorts.com
www.royalhideawayrivieramaya.com

As the Panel explained the facts the following appears to be clear: (1) Occidental Hotels and Resorts is associated with at least 46 hotels in Europe, Africa, the Caribbean and the Americas, using the mark OCCIDENTAL since at least 1985. Complainant operates a web site locate at www.occidentalhotels.com. The disputed domains were registered by Respondent between November 2001 and April 2008. Respondent claimed to be a wholesale tour operator which provided travel packages, including hotel accommodations. Respondent claims that Complainant not only knew about the web sites for a long period of time, but also encouraged their operation by providing materials to be included on them.

The Panel reviewed the three elements of the Policy under paragraph 4(a), namely:(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, whether the domain names are identical or confusingly similar to Complainant’s mark, the Panel noted that seven (7) of the domains were similar in any manner to the mark. They included www.allegrojacktarpuertoplata.com, www.allegroplayacar.com, www.allegropapagayoresorts.com, www.grandcozumelresort.com, www.grandarubaresort.com,
www.grandxcaretresorts.com, and  www.royalhideawayrivieramaya.com. The Panel found Complainant failed to prove those domains were identical or confusingly similar. The Panel then  oddly made the following statement: “With regard to the remaining domain names, the Panel declines to enter a finding as to identicality or confusing similarity.” Based upon the other factors it appears to have not mattered, but this was an odd lack of review on the part of a Panel.

The Panel then addressed the second prong, whether Respondent had any rights or legitimate interests in the domain. The Panel explains that Complainant had a contractual relationship with Respondent’s “Parent Company” (which the Panel explains as a related entity). The Panel found that the web sites were promoting Complainant, with commissions or other payments being made to Complainant. Although Complainant may not have authorized Respondent directly, the Panel found that Complainant was long aware of these domains. 

The Panel declined to address the bad faith prong based upon its findings in the first two elements, and ruled that Complainant’s request be DENIED. 

DefendMyDomain Commentary: This is another example of why a reseller of goods or services can use a similar domain provided that the reseller adequately discloses the nature of his or her goods or services on the subject website.

In the case of Toilets.com, Inc. v. Porta-Jon of the Piedmont (WIPO D2008-1043, August 22, 2008), the Panel was faced with two long standing companies using nearly identical marks and web sites. Complainant first used the phrase “porta-john” for rented portable toilets in 1962. And owns registered mark for PORTA-JOHN since 1972. Complainant’s principal website is “www.porta-john.com”, which it has used continuously since 1997. Respondent conducted a similar business in the state of North Carolina since May 1969, and incorporated its business under the name Porta-Jon of the Piedmont, Inc. in North Carolina in 1973. Respondent holds state trademark registrations for PORTA-JON in North Carolina and South Carolina. Respondent registered the disputed domain name “porta-jon.com” in 1998 and used it to promote its business.

The Complainant sent many cease and desist letters to Respondent over the years. The panel acknowledged, that the only fathomable argument in favor of finding a lack of legitimate purpose was that the cease and desist letters may have served as notice of the dispute. However, the panel quickly dismissed any validity or support thereto.

Instead the panel focused on the evidence presented in favor of legitimate use by the Respondent, noting:

This Panel cannot conceive circumstances in which decades of use of a business name, without interruption, can fail to give a registrant a right or legitimate interest under the Policy to incorporate the principal word in that name into a domain name used for purposes of that business. Such circumstances are exactly the reason for the safe harbor in paragraph 4(c)(ii) of the Policy.

The Panel observed further that:

To the extent Complainant believes its business has been adversely affected by Respondent’s long-time conduct, an action in court for trademark infringement or unfair competition is the appropriate means for seeking redress. A court action, not a Policy proceeding, similarly is the place to determine “priority” and other rights under national trademark laws. With its abbreviated proceedings and considerably lower costs, the Policy may appear to be a quick-and-dirty alternative to an infringement action or, as appears to be true in this case, to a further cease-and-desist letter.

Ulitimately, the Panel denied the transfer of the domain and found that the complaint was “nothing more than harassment” and was Reverse Domain Name Hijacking.