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

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

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

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

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

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

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

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

In the recent cybersquatting action, Asahi Breweries Ltd. v. Whois Privacy Protection Service, Inc., Demand Domains, Inc. WIPO D2009-1481 (December 25, 2009), a single member Panel was faced with a dispute over the domain www.asahibeer.com. Complainant has used the mark ASAHI for beer since 1892 and maintains a domain at www.asahibeerusa.com. The disputed domain was registered in 1998 and Respondent provided a Response to the Complaint.

Under paragraph 4(a) of the ICANN UDRP Policy, in order to obtain the remedy of transfer of the disputed domain name, Complainant must prove (i) the disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent.

Respondent requested that the decision be dismissed and agreed to transfer the domain to Complainant. Respondent sought the Panel to not render a decision in light of its agreement to transfer, but the Panel explained that Complainant’s failure to accept the offer of settlement under paragraph 17 of the Rules, it would proceed with the decision.

In addressing the first element, the Panel explained that the long standing rights to the ASAHI mark were established and that the domain was identical and confusingly similar to the domain. As a result the Panel found Complainant proved this element.

Moving to the second element, the Panel explained that Complainant made a prima facie case. The Panel found that Respondent did not use the web site for any legitimate, bona fide or non-commercial purpose. The Panel found that Complainant satisfied this element as well.

The final element, bad faith, provided more review by the Panel. The Panel found that the sponsored links to third party web sites was evidence of bad faith registration and use. Respondent argued that its offer to transfer was evidence to demonstrate its good faith. The Panel dismissed this argument noting recent cases and explained:

In some recent cases respondents have taken advantage of complainants, who in good faith had accepted their offers of transfer to settle disputes. The respondents in such cases typically put forward a proposal to transfer the domain name, with a specific request that there should be no finding of bad faith. It appears, in some of those cases, the requests for settlement were only a ploy to gain additional time in order to continue deriving the revenue generated from the disputed domain names and were apparently not genuine offers of settlement. The cases then had to be reinstituted by the complainant, while the respondent had managed to gain further time generating pay-per-click revenue in the guise of making an offer of settlement.

The Panel went further to note that bad faith had been found in cases where inadvertent registration through semi-automated processes occurred. The Panel also found that the number of cases Respondent had been involved in showed a consistent pattern and was additional proof of bad faith.

The Panel found that ASAHI proved all three elements and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Alienware Corporation v. James Dann FA1290045 (Nat. Arb. Forum December 28, 2009) a single member Panel was faced with a dispute over the domain www.alienlaptop.com. Alienware, is the well known line of Desktops and Laptop computers, most often sold to gamers. Alienware is wholly owned by Dell, but operates a web site at www.alienware.com. Respondent registered the disputed domain on April 4, 2008 and provided a response to the dispute. Both parties provided Additional Submission arguments in the case.

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

The Panel addressed the first element, noting that Alienware established rights in the ALIENWARE mark through its trademark registrations. The Panel analyzed the disputed domain and noted that “alien” was the dominant part of Complainant’s mark. The Panel found that the addition of the word laptop was confusingly similar due to its obvious relationship to Alienware’s business.

In Alienware’s additional submission, it cited to another decision, Alienware Corporation v. Optimize My Site, FA0910001290038, (Nat. Arb. Forum December 2, 2009), which found that www.alienlaptops.com was confusingly similar. Respondent objected to this reference alleging that it amended the Complaint in violation of NAF Supp Rule 7(f). The Panel disagreed noting that it did not change the arguments of the case. For these reasons the Panel found that Alienware satisfied the first element.

Moving to the second element, the Panel explained that Alienware made a prima facie case, shifting the burden of proof to Respondent. The Panel found Respondent failed to make active use of the domain and therefore did not make a bona fide offering of goods or services. Respondent argued that he used an email address with the domain name, but the Panel was not convinced that this was sufficient. The Panel dismissed such argument, noting that if use of an email was sufficient, then the UDRP would become easily avoidable.  The Panel was also not convinced by Respondent’s arguments that he purchased several domains as part of an eventual plan to start a software consulting business. The Panel found this to lack proper demonstrable preparations of a bona fide offering. The Panel found Alienware satisfied this element as well.

Moving to the final element, the Panel appeared to hand Respondent it most direct findings.

The Panel agrees with the Complainant that the Respondent knew or ought to know the existence of the Complainant’s Marks. The leader status of the Complainant as a producer of computers designed for gaming and other graphically intense applications under ALIENWARE trademarks and the profession of the Respondent as Software Engineer and Computational Linguist are sufficient arguments to support a finding of the Respondent’s prior knowledge of the Complainant’s Marks.

Additionally, the Panel found that failure to use the site in an active manner was evidence of bad faith. Ultimately, the Panel found Alienware proved all three elements and ordered the domain be TRANSFERRED.

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

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

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

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

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

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

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

The Panel explained as follows:

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

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

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

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

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

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

In the recent domain name dispute decision of C. Crane Company Inc. v. Robbie Crossley (WIPO D2009-0815, August 10, 2009), a single member Panel was faced with a dispute over the domain www.geobulbs.com. Complainant sells radios and LED lighting products branded as GEOBULB and maintains web sites at www.geobulb.com and www.ccrane.com. Respondent had some prior relationship with Complainant, which the Panel was unable to surmise, but which became relevant later in determining the knowledge of Respondent at the time of registration. Complainant has a federal trademark registration and the disputed domain was registered before Complainant’s federal trademark application.

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 quickly found that the disputed domain was confusingly similar to Complainant’s mark, in that it merely was a plural form of the mark. Moving to the second prong, the Panel spent more time reviewing the facts presented by each side. The Panel found Complainant presented a prima facie case and shifted the burden of proof to Respondent. The Panel explained that Respondent’s use of the domain was done in two ways. First the domain was redirected to Complainant’s web site. The Panel found Respondent intended this use to be temporary and thus not legitimate.

Respondent’s second use of the domain was that of a comparison site. Respondent argued the site was entirely non commercial with no products being offered for sale. However, in emails exchanged between the parties, Respondent offered to sell the domain to Complainant and noted that the decrease in recent sales by Complainant should help Complainant to determine how much the domain is worth. The Panel used this information and found as follows:

In this context, even if no products were actually sold through the disputed domain name, the “comparison site” was commercial – a means to get a higher price from sale of the disputed domain name or otherwise acquire (to use Respondent’s phrase) “something beneficial for . . . myself” – and not legitimate for purposes of paragraph 4(a)(ii) of the Policy.

Ultimately, the Panel found that Respondent lacked any rights or legitimate interests. Moving to the last element, bad faith, the Panel addressed Respondent’s argument that a domain registered prior to acquisition of trademark rights could not be in bad faith. The Panel explained however, the WIPO consensus view on an exception to that general concept.

“However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.” (WIPO Overview Paragraph 3.1)

The Panel found that since Respondent knew about Complainant’s mark prior to registration, this was sufficient to find bad faith. Ultimately, the Panel found that Complainant satisfied all three elements and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Brayden T. Quinn a/k/a Brady Quinn v. Randy Darr FA1267051 (Nat. Arb. Forum July 20, 2009) a single member panel was faced with a dispute over the domain www.bradyquinn.com. Many of you may know the Complainant as the famous Notre Dame quarterback (now playing for the Cleveland Browns).

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

In addressing the first element, the Panel noted that Complainant has filed for a service mark in April 2009, with rights dating back to December 2007. The Panel noted that since the the mark was only still subject to an application, a review of the common law rights standards would apply. The Panel found that “it is not inconceivable that the service mark already had acquired secondary meaning shortly after the first use of the service mark, as a result of the media attention and fame of Complainant.” The Panel found that Complainant established sufficient common law rights and that the domain was identical to Complainant’s mark.

In addressing the second element the Panel found that Respondent is not commonly known by the disputed domain as shown in the Whois records. Additionally, the Panel noted:

Respondent is using the <bradyquinn.com> domain name to redirect Internet visitors to a parking site with links advertising products related to Complainant.  The Panel finds that Respondent’s use of the <bradyquinn.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

The Panel also included discussion of an offer to sell the domain for $2,000.00. The Panel explained, “The Panel is of the opinion that this is evidence that Respondent has foregone any claim to rights or legitimate interests in the <bradyquinn.com> domain name pursuant to Policy ¶ 4(a)(ii).”

The Panel found Complainant satisfied this element as well, and moved to the final element, bad faith. The Panel explained:

As Respondent’s registration of the disputed domain name predates Complainant’s common law rights, the Panel finds that there is no possibility that Respondent could have registered, the <bradyquinn.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii)….The fact that Complainant’s accomplishments as a sportsman have been featured in national media before the registration of the disputed domain name does not evidence bad faith registration, since Complainant does not adduce conclusive evidence that its unregistered personal name was being used for trade or commerce at the date of the registration of the disputed domain name, let aside that the Complainant established common law trademark rights in the name predating the registration of the disputed domain name.

As a result, the Panel found that Complainant failed to establish the final element, and DENIED an order to transfer the domain.

DefendMyDomain Commentary: It is unclear why the Panel did not address the offer to sell factor in the bad faith section. This is another example of the unsecure world of famous persons names and domain disputes. We question again, knowing the facts of the case, why Complainant didn’t choose three Panelists.

In the recent domain dispute decision of Sigourney Weaver v. Stephen Gregory a/k/a ‘THIS DOMAIN NAME IS FOR SALE’ (Nat. Arb. Forum 1256394, May 22, 2009) a three member Panel was faced with a dispute over www.sigourneyweaver.com. We all know who Sigourney Weaver is, so we won’t waste time with her list of credits. (Although she deserves an extra nod of appreciation for the Alien movies) Respondent, purportedly located in the Philippines, registered the disputed domain in 1999, nearly 20 years after her emergence in the entertainment world. Weaver argued that the disputed domain was being used to automatically forward to a pornographic web site located at www.clubpink.com which then takes the user to www.nymphogirls.com. Weaver also argued that Respondent was using the domain to sell it for profit, based upon the Whois information which stated “Stephen Gregory ‘THIS DOMAIN NAME IS FOR SALE.’”

Under the ICANN UDRP policy Complainant must prove (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 Weaver did not have a federal registration for her name and thus reviewed the evidence to determine if she possessed common law rights. The Panel found that her career has made her sufficiently famous and that she demonstrated secondary meaning to establish common law rights. Thus the Panel found that the domain was identical to Weaver’s rights in the mark.

Moving to the second element, the Panel noted that Weaver made a prima facie case that Respondent lack any rights or legitimate interests. This was based on the fact that Respondent was not commonly known by the disputed domain name, as stated earlier regarding the Whois information. Additionally, since the domain was being linked to pornographic material, this use was not in connection with a bona fide offering of goods and services. The Panel noted that Respondent stopped the forwarding to the pron web sites after receiving a cease and desist from Complainant. Lastly, the Panel found that since Respondent was offering to sell the domain this showed a lack of legitimate rights or interests in the domain.

Moving to the final element, bad faith, the Panel noted that Respondent had been involved in numerous prior analogous UDRP proceedings and that he engaged in a pattern of bad faith registration and use. Additionally, the Panel noted that the pornographic nature of the redirected web site also satisfied the bad faith element.

Ultimately, the Panel ruled to TRANSFER the disputed domain.

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

In all ICANN UDRP cases Panels review, and Complainants must prove three elements: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

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

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

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

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

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

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

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

In the recent decision of FBomb Clothing c/o Joel Jordan v. Domainly.com (Nat. Arb. Forum 1245522, March 16, 2009), a single member Panel was faced with a dispute over www.fbomb.com. Complainant has operated a sportswear clothing company for extreme outdoor sports since late 2002. Complainant claimed to mistakenly let the domain registration lapse after forgetting to pay the renewal fees. Complainant contends that Respondent immediately registered the disputed domain upon its lapse and parked the page with an offer for sale. Complainant and Respondent then entered into some negotiations to purchase the domain back. Those negotiations fell apart after Respondent demanded additional funds.

UDRP Panels are required to analyze each case by reviewing a three prong element test which includes proving that (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 first made some initial findings, which included the following:

Complainant has submitted as evidence of its use of the FBOMB mark the following: its registration of its fictitious business name with the San Diego County Recorder; its California State Seller’s Permit; a sample manufacturer’s invoice; and screenshots of its website resolving from the <fbomb.com> domain name as they appeared in 2002 and 2008.  (These screenshots were provided by using the Way Back Maching from InternetArchive.org.)  Based upon this evidence of Complainant’s Internet-based business, the Panel concludes that Complainant has established sufficient secondary meaning the FBOMB mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i).

Based upon an establishment of trademark rights, the Panel reviewed the first prong and made a quick finding that Complainant had satisfied this element. The Panel Next addressed the second prong, whether the Respondent had any rights or legitimate interests in the domain and made the following observations:

Though Complainant does not argue such, the Panel finds that Respondent is not commonly known by the <fbomb.com> domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information identifies Respondent as “Domainly.com,” and Respondent has not asserted otherwise…. According to Complainant, Respondent has used the <fbomb.com> domain name solely to offer it for sale, first generally and later through an auction.  The Panel finds that Respondent has not used the <fbomb.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)….Respondent allegedly registered the <fbomb.com> domain name on that same day, and immediately began offering it for sale.  The Panel finds that this further evidences Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).

Determining that Respondent did not have any rights or legitimate interests in the domain, the Panel moved onto the last prong, whether Respondent registered the domain in bad faith. The Panel found that “Since Respondent has allegedly not used the <fbomb.com> domain name for any reason other than to offer it for sale, the Panel concludes that Respondent registered the <fbomb.com> domain name primarily for the purpose of selling it.” The Panel also noted that since the domain was immediately registered after it lapsed, this was further evidence that Respondent’s registration was in bad faith.

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

In the recent decision of Francine Drescher v. Stephen Gregory (WIPO D2008-1825, January19, 2009), a single member panel was faced with a dispute over the domain www.frandrescher.com. Complainant is the well known actress who starred the CBS series “The Nanny” from 1993 through 1999. She has appeared in other television shows and movies and has also written a memoir. Respondent is an individual based in the Philippines with a P.O. Box listed as the contact address. The domain information indicated that it was created on March 1, 1999.

The Panel reviewed the ICANN approved UDRP policy elements for domain disputes wherein the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

The Panel addressed the first prong of the test the Panel acknowledges that although Complainant claims only common law trademark rights, nonetheless previous cases have applied the policy to well-known actors and actresses. As a result the Panel found the domain was identical or confusingly similar to Complainant’s common-law trademark.

The Panel next addressed whether Respondent had any rights or legitimate interests in the domain. The Panel noted that respondent is not known by the name used within the domain, but further addresses the legitimate rights issue in connection with the third prong. The Panel then reviews the “registered and used in bad faith” third prong in more detail.

The Panel notes that the disputed domain redirects users to a different domain, namely, http://www.clubpink.com/. This web site displayed text warning no children allowed and indicating that one must be at least 18 to enter. Upon clicking a link, the user is then brought to another domain, namely, http://www.feeds.pornication.com/. Complainant claims this diversion is for commercial gain. The Panel explained:

Even if it is not the Respondent who personally gains from this diversion, but instead either the operators of the website operating from the domain name or the commercial entities to which that website directs Internet users, it does not matter. As this Panel stated in V&S Vin&Sprit AB v. Corinne, Ducos, WIPO Case No. D2003-0301 (another case in which there was diversion to pornographic content), provided that the respondent intends that someone shall gain from the diversion, then the case will fall within the example of circumstances indicating bad faith set out at paragraph 4(b)(iv) of the Policy.

The Panel goes further to note that showing bad faith use is not enough, and proof of bad faith registration is also required. The Panel made some interesting observations and conclusions. First the Panel questioned why the domain had been in use for nearly 10 years without complaint and quoted another case regarding delay which stated:

“…, if a complainant delays in bringing proceedings he will make matters more difficult for himself. First, there is the fact that a complainant must prove not only bad faith use but bad faith registration. Often it is possible to infer bad faith registration from bad faith use, but the longer the delay between registration and the commencement of proceedings, the less likely it is that a panel will be prepared to do so. A complainant may, therefore, need to bring forward direct evidence to address the issue of bad faith registration. Second, there is the possibility that the use that the registrant has made of the domain name since registration may in some cases result in him having developed a right and legitimate interest in the name. … There is also the more general point that extensive delay without explanation may in certain circumstances result in adverse inferences of fact against a complainant.” HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658

Regardless, the Panel moved forward with its analysis and made additional findings. One such finding included the fact that the WhoIs record registrant details included the words “This Domain is for Sale.” The Panel found that although there was no evidence submitted noting when that for sale information was added to the WhoIs record, or more specifically if it was there from the original registration date, that it would infer such bad purpose of registration.

Ultimately, the Panel found in favor of Complainant and ordered to TRANSFER the domain