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Posts Tagged ‘Multiple Domains’

Domain Dispute With 5 Complainants and 25 Domains DENIED on Procedural Grounds

Wednesday, January 5th, 2011

In the recent cybersquatting case of Grupo Bimbo S.A.B. de C.V., Bimbo Hungria ZRT., Arnold Products, Inc., Orograin Bakeries Products, Inc., Bimbo Bakeries USA, Inc. v. John Paulsen (WIPO Case No. D2010-1647, December 3, 2010) a single member Panel was faced with an interesting dispute brought by five (5) different Complainants seeking the transfer of 25 domains.

The domains at issues included <aboutgrupobimbo.com>, <arnoldfillems.com>, <bagelthin.com>, <bagelthins.com>, <bimbobrands.com>, <bimbobreads.com>, <bobolipizza.com>, <bobolipizzacrust.com>, <bobolisauce.com>, <brownberrybreads.com>, <brownberryjr.com>, <coronadocandy.com>, <entenmannscakes.com>, <entenmannscookies.com>, <entenmannsdonuts.com>, <fillems.com>, <franciscobreads.com>, <freihofersbread.com>, <laracookies.com>, <oldcountrybreads.com>, <oroweatbread.com>, <sandwichthin.com>, <stroehmannbread.com>, <tiarosatortilla.com> and <tiarosatortillas.com>.

The Panel explained that Grupo Bimbo is a large and internationally known baking company. and that the other Complainants appeared to be subsidiaries. Each of the Complainants individually owned trademark registrations and rights in one or more trademarks. The marks being claimed included GRUPO BIMBO, BIMBO, TIA ROSA, CORONADO, LARA, SANDWICH THINS, BROWNBERRY, FILL `EMS, BOBOLI, ENTENMANN’S, FREIHOFER’S, STROEHMANN, FRANCISCO, OLD COUNTRY, and OROWEAT.

Respondent filed a response which did not address the merits of the case, but the Panel explained that Respondent instead asserts that the process provided for under the UDRP is corrupt and inherently unfair in that “it favors the haves and unfairly penalizes and punishes the have nots”. The Respondent states that he does not recognize “the authority of WIPO or any other would be ‘World Policing Organization’”, and that he is certain his domain names “will be stolen” by the Complainants and their attorneys.

The remainder of the decision focused on the singular procedural issue of whether or not multiple complainants in this case was appropriate. The Panel explained:

The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. This Panel, along with a number of WIPO Panels, nonetheless has concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy.

The Panel recognized that prior Panels have allowed consolidation and that a “test” has been created for the determination of whether it is appropriate. The factors to be analyzed for consolidation are as follows:

(1) Number of complainants; (2) Number of domain names; (3) Voluminous filings; (4) Novel, difficult or largely untested issues; and (5) Potential for different outcomes for domain name disputes depending on nature of rights asserted.

The Panel reviewed these factors and found that there were too many overriding procedural issues to efficiently decide the case on its merits. For instance the Panel explained:

As a result, there appear to be different issues to be addressed under the first element of the Policy involving the disputed domain names <bagelthins.com> and <bagelthin.com> arising from the differing nature of the rights asserted by the Complainants in BAGEL THINS. In addition the descriptiveness question referred to above may also create the potential for different outcomes with respect to these disputed domain names under the second or third elements of the Policy. And, as noted earlier, <bagelthins.com> initially was used by the Respondent in a way that it appears the other disputed domain names have not been used. For all of the foregoing reasons, the Panel after careful consideration is not persuaded that the Complainants have made a sufficient showing to permit consolidation of the multiple complainants involved here. The Panel is concerned among other things that a multiplicity of issues could render the summary and expedited dispute resolution process envisioned by the Policy inefficient or ineffective, or even raise issues concerning fairness and equity.

Ultimately the Panel DENIED the request for transfer, but did so without prejudice, permitting the Complainants to re-file individually.

1,542…Wow, That’s A Lot Of Domains!

Tuesday, January 26th, 2010

Inter-Continental Hotels Corporation and Six Continents Hotels, Inc. decided that one man’s ownership of 1,542 domains was just too much to bear. In the recent cybersquatting decision of Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof (WIPO Case No. D2009-1661, January 19, 2010) a single member panel had the long task of sorting through these domains. For a full listing of all the domains in dispute please see the decision.

Paragraph 4(a) of the ICANN UDRP Policy provides that a complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.

Complainants are the well known corporate owners of multiple hotel chains which include, Holiday Inn, Holiday Inn Express, Intercontinental, Crowne Plaza, Staybridge Suites, Staybridge, Hotel Indigo, Candlewood, and Candlewood Suites. For more info about Complainants go to www.ichotelsgroup.com or www.ihg.com .

The Panel, in addressing the first element noted that most of the domain names included Complainants’ trademarks with the addition of some geographic indicator. Thus the domains were found to be identical or confusingly similar. The Panel also found that many of the domains contained Complainants’ trademarks and a descriptive term. These were also determined to be confusingly similar. The Panel further found that many of the disputed domain names started with part of the Complainant’s trademark in combination with a geographic location or generic term. These were also found to be confusingly similar. However, a total of ten (10) of the disputed domain names were found to not be confusingly similar to any of Complainant’s trademarks.

The Panel quickly dealt with the second element noting:

The websites resolving from the disputed domain names create the impression that they are official websites for the relevant hotel, or potentially, that the Respondent manages the hotel. By using the Complainant’s trade marks, the Respondent is falsely suggesting he is the trade mark owner or the website is the official site for the accommodation of the Complainant’s related entities when it is not…. Accordingly, the Panel concludes that the Respondent intentionally selected domain names which contained the Complainant’s trade marks, and added a word or words which do not serve to distinguish them, but which strengthens the association with the Complainant or its goods and services, for the purpose of redirecting Internet users to his own websites. Such use cannot constitute a bona fide offering of goods of services.

Although previous domain dispute decisions have an effect on a finding of bad faith, Respondent’s lack of previous decisions didn’t sway the Panel.

The Respondent has not been named as a respondent in previous UDRP decisions. However the fact that this proceeding has been brought in relation to over 1,500 domain names which contain the Complainant’s trade marks, makes it clear that the Respondent has engaged in a pattern of registering domain names in order to prevent a trade mark owner from reflecting their mark in a corresponding domain name. The Panel’s view is further supported by the fact that the Respondent owns a vast array of other domain names. This is clear evidence of bad faith.

Ultimately, the Panel agreed that 1,519 of the domains should be TRANSFERRED. There was a remaining 23 domains, of which 13 with withdrawn and 10 were DENIED.

Respondent Has Interesting Arguments For Registering Microsoft’s BING Domains

Monday, January 4th, 2010

       bing-logo

In the recent domain name dispute decision of Microsoft Corporation v. Doug Goodman FA1294422 (Nat. Arb. Forum, December 31, 2009) a single member Panel was faced with a dispute over 21 separate domains containing the mark BING. Microsoft needs no introduction and maintains many web sites for its business, the most relevant in this case being, www.bing.com. The disputed domains were registered during a three day period of June 24, 2009 through June 26, 2009. Respondent provided a response to the dispute, and gave some colorful defenses, which included:

1.    Respondent “created of formulated” the disputed domain names that had been missed by “Microsoft webmasters” until Respondent offered them to Complainant.
2.      The disputed domain names would bring value to the Complainant and the Complainant should pay for them.
3.      Respondent concedes that each of the names has BING in them and that BING is a pending mark
4.      The domain names were not registered in bad faith because Respondent had no intent to harm BING, Inc.
5.      Respondent does not use the disputed domain names to divert users from BING, Inc.
6.      Because of the value the disputed names will bring to Complainant, the case should be viewed as a case of reverse name highjacking

Paragraph 4(a) of the ICANN UDRP Policy requires Complainant to 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) 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, Microsoft noted that it does not have any registered BING marks yet, but did file for multiple BING related trademarks in March 2009. The Panel noted that Microsoft need not have a trademark registration and can show that it has common law rights to the mark. Microsoft presented evidence that it has continuously used the BING mark since May 28, 2008 and that a previous UDRP Panel found that it had established its rights to the mark. As a result, the Panel reviewed the disputed domains and found that they were confusingly similar to the BING mark. Interestingly, as the Panel explained, Respondent concedes that he intentionally put the BING mark in the domains and was fully aware of Microsoft’s interest in the mark. The Panel found Microsoft satisfied this element.

Moving to the second element, the Panel noted that Microsoft put forth a prima facie case, shifting the burden of argument to Respondent. The Panel noted that Respondent was not commonly known by the disputed domain. Additionally, the Panel found that four (4) of the domains led users to a web site with third party hyperlinks, some of which compete with Microsoft. The Panel found that this was not a bona fide offering of services. Regarding the remaining 17 domains, the Panel noted that they redirected the user to Microsoft’s BING.com web site. The Panel explained that Respondent admitted his primary intention in registering these domains was to sell them to Microsoft. Offering to sell the domains is also not considered a bona fide use. The Panel found that Microsoft satisfied this element.

Moving to the final element, bad faith, the Panel noted that the Respondent attempted to sell the domains for more then his out-of-pocket expenses. This factor is considered bad faith. Additionally, the four domains which landed on parked pages, also were a showing of bad faith, since they likely resulted in click-through fees for Respondent. The Panel found Microsoft satisfied this element as well.

The Panel quickly dispensed with Respondent’s reverse domain name hijacking argument and found that since Microsoft had proved all three elements, it ordered all 21 domains be TRANSFERRED.

Frederick’s of Hollywood Wins Ten Typosqautted Domains

Friday, December 4th, 2009

         Frederickslogo_FREDERICKS

In the recent cybersquatting domain dispute of Frederick’s of Hollywood Group Inc. v. Blue Water LLC FA1290927 (Nat. Arb. Forum, December 3, 2009) a single member Panel was faced with a dispute over ten domains. Complainant, uses the marks FREDERICK’S OF HOLLYWOOD and FREDERICK’S related to its women’s clothing and lingerie business since 1946. Complainant maintains a web site at www.fredericks.com. Complainant has a specific third party affiliate program, allowing fees to be paid to authorized third parties for directing traffic to Complainant’s official site. The affiliate policy specifically restricts the use of misspelled domains. Respondent registered one of the domain in 2003 and the other nine in 2006. According to the decision, all of the disputed domain names resolved to Complainant’s web site.        

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 began its analysis, noting that Frederick’s of Hollywood has sufficiently shown its rights to the marks. The Panel found that the domains contained minor changes which were not sufficient to distinguish them from Complainant’s mark.

Additionally, one or more of the following changes were made in each disputed domain name to the mark (1) the addition of one extra letter; (2) the transposition of two letters in the mark; or (3) the replacement of one letter in the mark with another.  The Panel finds that these changes are insufficient to overcome the confusing similarity that arises from using Complainant’s mark in the disputed domain name. 

The Panel found the domain were confusingly similar to Frederick’s marks.  

Moving to the second element, the Panel noted that Frederick’s presented a prima facie case, and despite the lack of response from Respondent, it would still review the record. Complainant contended that Respondent was not licensed to use the marks. Additionally, the Panel found that Respondent was not commonly known by the disputed domains. The Panel found that Respondent’s attempt at profiting from Complainant’s affiliate program using these typosquatted domains was not a bona fide use. Additionally, the act of typosquatting was found to be evidence of lacking rights or legitimate interests. The Panel found that this second element was satisfied by Complainant.

Moving to the final element, bad faith, the Panel noted that the disputed domains began to be registered nearly forty-five years after Frederick’s established trademark rights. The Panel explained that since the disputed domains resolved to Complainant’s own web site, that consumers would be confused as to affiliation or control. Additionally, since the domains contained typographical errors, this was evidence of bad faith. Lastly, by violating Complainant’s affiliate program, this was also evidence of bad faith.

Ultimately, the Panel found that Complainant satisfied all of the elements, and ordered all ten domains be TRANSFERRED.

FREECREDITREPORT.COM Wins 1,017 Domains!

Friday, November 13th, 2009

    FreeCreditReport

This domain dispute just needed to be discussed based purely on the number of domains at issue. In the recent domain name dispute decision of ConsumerInfo.com, Inc. v. Netcorp Netcorp c/o Netcorp FA1283469 (Nat. Arb. Forum, November 11, 2009), a single member arbitrator was faced with a dispute over 1,017 domains. The arbitrator, James Carmody has been involved with the UDRP for a long time and has decided more disputes then most, but he certainly earned his money sorting through all of these domains in this case. Complainant is the owner of the mark FREECREDITREPORT.COM. We know you have all seen the commercials so we won’t discuss belabor on the background. Suffice it to say they maintain a web site at www.freecreditreport.com. The disputed domains at issue were all registered after Complainant filed its trademark application, but before the mark was registered. Due to the large number of domains at issue we will not reproduce them, but see the decision if you are dying to know.

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 explained that the application and subsequent registration of the mark established Complainant’s rights dating back to the application date. The Panel found that Complainant established its common law rights sufficiently to merit protection and moved towards comparing the mark with the disputed domains. The Panel listed 15 separate ways in which the domains were similar to the mark:

(1) adding “ing,” changing the tense of the mark to a present participle; (2) adding the letter “s,” changing the mark from singular to plural; (3) adding a generic or descriptive word to the mark; (4) adding a generic or descriptive word to the mark that has an obvious association with Complainant’s business; (5) adding an abbreviation of a geographic word to the mark; (6) adding a geographic word to the mark; (7) misspelling the mark by changing a letter in the mark to a different letter; (8) misspelling the mark by changing a letter in the mark to a number; (9) misspelling the mark by adding a letter within the mark; (10) adding a letter to the beginning or end of the mark; (11) misspelling the mark by adding a number within the mark; (12) adding a number to the beginning or end of the mark; (13) omitting the period between the first-level domain, “www,” and the mark; (14) changing the generic top-level domain (gTLD) included in the mark from “.com” to “.org;” and/or (15) adding hyphens to the mark.  Any individual disputed domain name typically contains Complainant’s mark and one of these changes.  A few contain a combination of two of these changes.  The Panel finds that none of these differences between the mark and the disputed domain names create distinctiveness and that, therefore, the disputed domain names are confusingly similar to Complainant’s FREECREDITREPORT.COM mark pursuant to Policy ¶ 4(a)(i). 

As a result the Panel found that Complainant satisfied the first element. Moving to the second element the Panel noted that Respondent was not commonly known by any of the domains in dispute. Addiitonally, the Panel found that the disputed domains resolved to web sites with links to third party web sites and that this use was not in connection with a bona fide offering. In addressing the argument by Respondent that the disputed domains are comprised of generic words in common usage, the Complainant questioned why the majority of the domains were misspellings of the mark. The Panel found that Respondent was typosquatting. As a result, the Panel found that Complainant satisfied the second element.

Moving to the final element, the Panel found that all of the disputed domains contained variations of the mark, which was evidence of bad faith registration and use. Additionally, since the domains offered links which disrupted Complainant’s business, this was further evidence. Lastly, since Respondent engaged in typosquatting, this was more evidence of bad faith.

Ultimately, the Panel found that Complainant satisfied all the elements and ordered that all the domains be TRANSFERRED.

Davidoff Extinguishes Squatter

Wednesday, September 9th, 2009

                  davidoff

In the recent domain name dispute decision of Davidoff & Cie SA v. Nicaragua Tobacco Imports, Inc. / Jorge Salazar (WIPO D2009-0923 August 20, 2009), a single member Panel was faced with a dispute over the domains www.davidoffcigarcutter.com, www.davidoffhumidor.com and www.davidoffhumidors.com. Complainant is the well known tobacco products company with a presence for nearly 100 years. They maintain a web site at www.davidoff.com. Respondent failed to respond to the complaint. Complainant has numerous trademark registrations for the DAVIDOFF mark.

The Panel provided one of the shortest decisions yet.  First, the Panel found that the domain names all incorporated Complainant’s full mark with the addition of generic words related to Complainant’s business. Second, the Panel found that there was no evidence of any right or legitimate interest in the domain by Respondent. Lastly, the Panel addressed the issue of bad faith. The Panel found that due to the long existence of Complainant and its use of the marks, the disputed domains could only have been registered in bad faith. Many of the links on the pages of the domains led to links of direct competitors with Complainant.

Ultimately, the Panel found that Complainant satisfied all elements of the Policy and ordered the domain be TRANSFERRED.

Tiffany & Co. Wins Two Domains In Blue Box

Tuesday, June 23rd, 2009

In two recent domain dispute decisions Tiffany (NJ) LLC and Tiffany and Company v. Tiffany Store Net (WIPO D2009-0427, June 9, 2009) and Tiffany (NJ) LLC, and Tiffany and Company v. Vincent & Co. (WIPO D2009-0428, June 9, 2009) a single member Panel addressed the domains www.tiffanystore.net and www.tiffanylife.com respectively. Although the decisions were separate, the same Panelist handled the opinions. Tiffany and Company is the famous international jewelry store which maintains a web site at www.tiffany.com.

Under the ICANN UDRP policy a Complainant must prove (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the respondent’s domain name has been registered and is being used in bad faith.

In the first decision, www.tiffanystore.net the Panel reviewed the first of the three elements noting that the domain encompassed all of the mark TIFFANY. The crux of the decision though rested in the second element, wherein the Panel noted that Respondent’s web site claimed to sell identical goods manufactured by or for the Complainant, but that Respondent was not an authorized reseller and would not provide a certificate of authenticity. The Panel explained:

Respondent’s website disclaimer as to the lack of any relationship to or authorization from Complainant for sale of jewelry similar to or even identical to Complainant’s jewelry does not make Respondent’s offering of goods and services bona fide under paragraph 4(c)(i) of the Policy. In this regard, it is immaterial whether the goods may be “counterfeit”, as Complainant contends (without submitting evidence on the point), or “authentic” or “from the same factory”, as Respondent’s website asserts. In either event, as evidenced by Complainant’s submission of pages from Respondent’s website, Respondent’s use of Complainant’s famous trademarks in the Domain Name and throughout the Domain Name website is a clear attempt to confuse consumers and divert them to Respondent’s competing website.

Moving to the last prong, bad faith, the Panel relied on Policy paragraph 4(b)(iv) to note that Respondent had to know of Complainant’s well known trademark when it registered and used the domain. Additionally, the Panel found that Respondent’s use of Complainant’s TIFFANY marks on the domain to describe the jewelry was evidence of likelihood of confusion. Ultimately, the Panel ruled to TRANSFER the domain.

In the second dispute, www.tiffanylife.com the Panel made a similar quick analysis regarding the first element, and finding that the domain contained all of the Complainant’s mark with the addition of the descriptive word “life.” In this decision the Panel simply relied on Complainant’s prima facie showing of no rights in regards to the second element. The Panel noted that, according to Complainant, Respondent used the TIFFANY marks throughout the web site to confuse consumers.

Moving to the bad faith element, the Panel again relied on paragraph section 4(b)(iv) in finding that Respondent must have known about Complainant’s TIFFANY marks prior to the registration and use. Respondent’s use of the domain was found to attract users to this competing site for commercial gain by creating a likelihood of confusion. Ultimately, the Panel agreed to TRANSFER this domain as well.

No Flowery Result For Amy’s Orchids

Monday, June 15th, 2009

In the recent decision of Amy’s Orchids v. EIC (WIPO D2009-0466, June 8, 2009) a single member Panel was faced with a dispute over four domains, www.amysorchids.com, www.amyorchid.com, www.amyorchids.com, and www.amysorchid.com. Complainant provides fresh orchids from Thailand and utilizes a main web site located at www.amysorchids.com. Respondent, EIC, is a web development company with a web site located at www.eic.net.

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; (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 explained some general background facts which proved to be very relevant to the decision. Complainant noted that they hired Respondent for web site design and that they transferred the registration of the domain to Respondent. Respondent noted that Complainant had an outstanding balance from work completed on the web site design and hosting services. Complainant claims to have terminated the agreement and Respondent refused to transfer the domains back.

The Panel reviewed the first element, whether the domain was identical or confusingly similar to Complainant’s mark. The Complainant has a federal trademark registration for AMY’S ORCHIDS since December 2008. The Panel found there was a presumption of ownership and validity in light of the registration and that the domains were either identical or were variations that were confusingly similar.

The Panel moved onto the second prong, whether Respondent had any rights or legitimate interests in the domains. Since Respondent claimed an unpaid balance and refused to re-convey the domains the Panel made the following observations and findings:

The Panel finds the dicta of Map Supply v. On-line Colour Graphics, FA0096332 persuasive: “The Respondent[‘s] argument does raise the interesting question whether an unpaid web designer once given control over a domain name by the client can retain it as a security for payment. In my view, this may be so. The law may recognize some sort of lien or charge against a domain name. To assert such a claim is to assert a legitimate interest. On that assumption, this could be a dispute to be decided by traditional means – as it would fall outside the scope of this tribunal.”  

As a result the Panel further explained “To conclusively decide whether Respondent has a legitimate interest, the question of whether a lien or charge against a domain name can be made in this circumstance must be answered. That determination is beyond the scope of this tribunal.”

Moving to the final prong, bad faith, the Panel noted that Complainant acknowledged giving permission to Respondent to become record owner and had not provided contrary evidence or arguments that the domains were being held in as a lien. Therefore the Panel found that Complainant failed to establish the second and third prong. Ultimately, the Panel DENIED transfer of the disputed domains.

Blackberry Sends 101 “TRANSFER GRANTED” Messages To Cybersquatters

Thursday, May 28th, 2009

In the recent decision of Research in Motion Limited v. Georges Elias (WIPO D2009-0218, April 27, 2009), a single member panel was faced with a dispute over 111 (that’s not a typo) domains. Research in Motion (herein “RIM”) is the company most famously known for bringing us the BLACKBERRY cell phones and personal communication devices. RIM maintains two web sites at www.blackberry.com and www.shopblackberry.com. RIM claimed rights to the term BLACKBERRY and to the term BERRY.

Essentially, the Panel found that 101 of the domains met the three elements for ICANN UDRP domain disputes. Under paragraph 4(a) of the Policy, to succeed the Complainant must prove all of the following: (i) the disputed domain names are 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 names; and (iii) the disputed domain names were registered and are being used in bad faith.

In this case, the Panel determined that 10 of the domains did not satisfy the elements and made the following observations:

 For a minority of the disputed domain names (e.g. <copberry.com>), there is a more difficult issue of confusing similarity with the Complainant’s weaker BERRY mark. In these cases, the Panel considers that it would only be possible to find confusing similarity if the Respondent’s intent was determinative. For the reasons discussed further below, the Panel considers that the Complainant’s BERRY mark is insufficiently distinctive in the context of the domain names, and the disputed domain names therefore insufficiently similar on an objective comparison, for the Respondent’s intention to tip the balance.

Essentially, a close look at the domains which were not transferred show that they contained just the word “berry” with some other word, but lacked the prefix “black.” For a full listing of the domains transferred, please see a copy of the decision here.

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