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 Juicy Couture, Inc. v. Francisco Gibbs FA1296086 (Nat. Arb. Forum, January 13, 2009) a single member Panel was faced with a dispute over the domain www.JuicyCoutureWholesale.com. Complainant is the well known retailer of men’s, women’s, and children’s apparel, toiletries, paper products, and accessories.  Complainant purchased the JUICY COUTURE mark in 2003 and has continued use of the mark. Complainant maintains a web site at www.juicycouture.com. Respondent registered the disputed domain on November 6, 2009 and failed to respond to the 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.

In addressing the first element, the Panel noted that Complainant’s multiple JUICY COUTURE trademark registrations sufficiently established their rights to the mark. The Panel found that the domain incorporated all of the JUICY COUTURE mark and merely added the generic word wholesale. For this reason the Complainant was able to prove the first element.

The Panel moved to the second element, noting that Complainant presented a prima facie case, shifting the burden to Respondent. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, Respondent was found to not have authorization to use the mark. The Panel further explained:

According to Complainant, the <juicycouturewholesale.com> domain name is being used in association with a website that offers counterfeits of Complainant’s products for sale without authorization.  Such use for the purpose of benefiting from the goodwill associated with Complainant’s JUICY COUTURE mark does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i).  Furthermore, Respondent’s use of the JUICY COUTURE mark in the domain name to operate a competing website for profit is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

For these reasons, Complainant proved the second element. Moving to the final element, the Panel again discussed the presence of the domain offering counterfeit goods. The Panel found this counterfeit use suggests the domain was registered for the purpose of disrupting Complainant’s business and thus was bad faith. Additionally, the offering of counterfeit goods was an attempt to profit by creating a likelihood of confusion. For these reasons, the Panel found this element was proven by Complainant.

Ultimately, the Panel found the Juicy Couture proved all three elements and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Mary Kay Inc. v. Open Water Enterprises Limited c/o Louis S FA1286701 (Nat. Arb Forum, November 12, 2009) a single member Panel was faced with a dispute over the domain www.mayrkay.com. Complainant Mary Kay is the well known manufacturer and distributor of body care and cosmetic products, with rights dating back to 1963. Complainant owns the mark MARY KAY and operates a web site at www.marykay.com. Respondent registered the disputed domain in 2003 and failed to respond 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.

In addressing the first element, the Panel recognized the trademark registrations for the MARY KAY mark and found that Complainant’s rights were established under Policy paragraph 4(a)(I). The Panel found that the disputed domain was a misspelled version of Complainant’s mark MARY KAY, with the r and y letters transposed. For this reason, the Panel found that MARY KAY satisfied the first element.

In addressing the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel explained:

The relevant WHOIS information identifies the registrant of the disputed domain name as “Open Water Enterprises Limited c/o Louis S,” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the <mayrkay.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)….Respondent’s <mayrkay.com> domain name resolves to a website featuring click-through links and advertisements for Complainant’s competitors in the body care and cosmetics industry.  The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii)….Respondent’s <mayrkay.com> domain name qualifies as typosquatting, given the transposition of two letters in the MARY KAY mark.  As such, Respondent’s attempt to capitalize on the typographical errors of Internet users constitutes evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

Moving to the final element, bad faith, the Panel explained that Respondent had been involved in other prior UDRP proceedings and a pattern of bad faith registration has been established. Additionally, since the web site resolved to promote MARY KAY competitors via click-through links, it disrupted Complainant’s business. Further evidence of bad faith was from click through fees presumably generated from these links. Lastly, the Panel found that Respondent engaged in typosquatting.

For all these reasons, the Panel ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Shoe Zone Limited v. Moniker Privacy Services / DNS Admin (WIPO D2009-0946, September 2, 2009) a single member Panel was faced with a dispute over the domain www.shoezone.com. Complainant is a retailer and distributor of footwear throughout Ireland and the U.K. Complainant has multiple trademark registration, including one in the U.K. and a Community Trademark registration.  Complainant maintains a web site at www.shoezone.net. The disputed domain was registered in November 1998. According to the decision, the disputed domain has changed ownership at least three times since its original registration, with Respondent gaining ownership some time after June 2006. Complainant contends that sometime in May 2009 the disputed domain started to have advertising links to competitors of Complainant. Respondent failed to respond to the Complaint.

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 simply and quickly found that the disputed domain was identical to the mark and that Complainant has rights through its registrations to the mark. Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant made a sufficient prima facie case. The Panel found that there was no suggestion of authorization by Complainant, no evidence of “commonly known” by proof of Respondent, and that the use was clearly commercial through use of the sponsored links. The Panel thus found that Complainant satisfied the second element as well.

Moving to the final element, bad faith, the Panel noted that Respondent’s use of the domain as a landing page with sponsored links, without any explanation from Respondent, was sufficient proof of this element. The Panel also justified finding bad faith due to Respondent’s failure to respond and Respondent’s use of a privacy service.

Ultimately, the Panel found that Complainant had proved all three elements and ordered the domain be TRANSFERRED.

DefendMyDomain Commentary: Compare this case to the SHOE LAND case we previously blogged on (available here), Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009). Of course the facts are different, but one has to wonder whether a response by Respondent would have created a different outcome.

In the recent domain name dispute decision of Greenberg Traurig, LLP and Greenberg Traurig of New York, P.C. and Greenberg Traurig, P.A. v. Louis Zweifach FA1271922 (Nat. Arb. Forum, August 13, 2009), a single member Panel was faced with a dispute over the domain www.greenbergtraurigharassment.com. We all know who the law firm Greenberg Traurig, LLP is, so I won’t go into much detail about them. Complainant has a registered mark for GREENBERG TRAURIG and the decision notes that with over 1,800 attorneys worldwide, the law firm specializes in harassment, intellectual property and business law. If you want more information go to their web site at www.gtlaw.com. The respondent failed to respond 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.

In addressing the first element, the Panel noted that the domain name incorporated all of Complainant’s mark, and merely added the term harassment.

The term “harassment” refers to employment law and harassment lawsuits and thus, is descriptive of Complainant’s business.  The Panel concludes that these alterations are insufficient to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). 

The Panel found Complainant satisfied the first element.

Moving to the second element, whether Respondent had any right or legitimate interest in the domain, the Panel found that Complainant set out a prima facie case in accordance with Policy ¶ 4(a)(ii).  Since Respondent failed to reply this Panel noted that they may infer a lack of rights or legitimate interests. However, as most Panels often do, they still reviewed the evidence. The Panel explained:

The disputed domain name resolves to a website displaying click-through links that further resolve to the websites of Complainant’s competitors in the legal services industry.  Complainant contends , and the Panel agrees, that Respondent’s use of a confusingly similar domain name to redirect Internet users to a website displaying links to competing law firms is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.

The Panel also found that Respondent was not commonly known by the disputed domain after reviewing the Whois records. As a result, the Panel found Complainant satisfied the second element as well.

Moving to the last element, the Panel noted that using the disputed domain to resolve to a web site which had click-through links was bad faith since they were in direct competition with Complainant. The use of the domain diverted consumers and disrupted Complainant’s business. The Panel found that Respondent was presumably collecting fees from the click-through links and such profit was also considered bad faith.
       
Ultimately, the Panel ordered the domain to be TRANSFERRED.

In the recent domain name dispute decision of Nissan of Fort Worth c/o Frank Figueredo, Jr. v. Thornhill Auto Group FA1270184 (Nat. Arb Forum, August 6, 2009), a single member Panel was faced with a dispute over the domain www.nissanoffortworth.com. Respondent did not respond to the Complaint.

Normally, under most domain disputes, a Panel reviews the three elements required under the Policy 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 opinion was short and did not address the merits of the dispute. Instead the dispute was DENIED and dismissed as being outside the scope of the UDRP Policy. The Facts of the case according to Complainant included (1) Complainant purchased the Nissan Dealership in Forth Worth, Texas from Respondent on October 1, 2008; (2) In the purchase agreement Respondent agreed to transfer all intellectual property and contract rights associated with the dealership to Complainant; and (3) Respondent had not turned over the domain.

“The Panel finds that this is a contractual issue that falls outside the scope of review under the UDRP and that such an issue must be resolved in a Court of competent jurisdiction.” The Panel cited several prior cases which held the same proposition. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005); Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007); Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006).

In the recent domain name dispute decision of Alticor Inc. v. Konstantin Becker a/k/a Sei-Sexy FA 1265965, (Nat. Arb. Forum July 15, 2009), a single member Panel was faced with a dispute over the domain www.amway-products.com. Complainant markets and sells over 450 products under the AMWAY mark, and has a trademark registration fro AMWAY dating back to the 1960s. Complainant maintains a web site at www.amway.com. Respondent did not provide a response 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.

In addressing the first element, the Panel noted that Complainant does have federal trademark rights but also explained “The Policy does not require that the mark be registered in the country in which Respondent resides.”  The Panel also found that the addition of the generic term “products” and the top-level domain “.com” was insufficient to distinguish the domain from the AMWAY mark. Thus, the Panel found Complainant satisfied the first element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel observed that Respondent’s failure to respond to the Complaint allows for the Panel to infer a lack of rights. The Panel went further and found as follows:

Respondent is using the <amway-products.com> domain name to sell Complainant’s products.  Complainant alleges that Respondent is attempting to pass itself off as an authorized distributor of Complainant’s products, undoubtedly for financial gain.  The Panel therefore concludes that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the subject domain name pursuant to Policy ¶ 4(c)(i) or (iii). 

The Panel also reviewed the Whois information provided by Respondent was not commonly known by the domain. The Panel found Complainant satisfied this element as well. Moving to the final element, bad faith, the Panel reviewed the use of the web site and explained:

The Panel agrees because Respondent’s use of a domain name confusingly similar to Complainant’s mark, which resolves to a commercial website offering Complainant’s products for sale, likely disrupts Complainant’s business.  Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the contested domain pursuant to Policy ¶ 4(b)(iii)….Bad faith registration and use of the <amway-products.com> domain name under Policy ¶ 4(b)(iv) can also be inferred based on Respondent’s use of a confusingly similar domain name to attract Internet users to a website that offers Complainant’s products for sale.  The Panel may presume that Respondent profits from such use.

Ultimately the Panel found that Complainant satisfied all three element s and ordered the domain be TRANSFERRED.