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 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.

In two recent domain name dispute decisions, Mattel, Inc. v. Bladimir Boyiko (Nat. Arb. Forum, FA1290718, Dec. 16, 2009) and Mattel, Inc. v. Domain c/o VO (Nat. Arb. Forum, FA1289791 Dec. 15, 2009) two separate three member Panels were faced with disputes over www.wwwhotwheels.com and www.hotwheels.org. Mattel is the well known toy company responsible for the HOT WHEELS die cast cars. HOT WHEELS were first sold in the U.S. in 1968. Complainant operates web sites at www.hotwheels.com and www.mattel.com. Both Respondents failed to provide a response to the complaints.

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 the first case referenced above, the Panel recognized Mattel’s HOT WHEELS mark and had  “no difficulty in finding that the Domain Name is confusingly similar” to the mark. Mattel presented a prima facie case, which included an argument that Respondent was not commonly known by the disputed domain. Additionally, as the Panel found, Respondent was using the domain for third party link click through fee generation.  Lastly the Panel noted that the domain was an example of typosquatting. The Panel found that Respondent was involved in other UDRP proceedings and therefore was engaged in a pattern of bad faith.

In the second mentioned case, the Panel also noted that the HOT WHEELS mark was well known throughout the world and that the domain was identical to the disputed domain. The Panel found that Respondent was not commonly known by the disputed domain and that Mattel had presented a prima facie case. Lastly the Panel found that Respondent’s inaccurate or incomplete contact information was evidence of bad faith. Additionally, Respondent’s failure to respond was evidence against.

Ultimately, the Panels found in favor of Mattel and ordered the domains be TRANSFERRED.

In the recent domain name dispute decision of Kate Hudson v. Fei Zhu FA1290319 (Nat. Arb. Forum, December 8, 2009) a three member Panel was faced with a dispute over the domain www.katehudson.com. Kate Hudson is the famous actress who has been in countless movies, and according to the decision has used her name commercially since 1999.  Respondent registered the domain in 2006 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 Kate Hudson did not have a federal trademark registration for her name, but reviewed the information provided to determine if she could establish secondary meaning in her common law rights. The Panel found that she had established those rights through continuos and extensive commercial use that predated the registration of the domain.  The Panel determined that the disputed domain was identical to the KATE HUDSON mark.

Moving to the second element, rights or legitimate interests, the Panel explained that Kate Hudson made out a prima facie case under this section of the Policy. As a result the Panel concluded that since the burden shifts to Respondent and Respondent failed to provide a response, then there was no evidence suggesting any rights or legitimate interests.

In addrrssing the final element, bad faith, the Panel noted that the disputed domain resolved to a parked web site with unrelated third-party links and adult oriented links. This was found to be bad faith, in and of itself. For these reasons, the Panel’s analysis stopped there.

Ultimately, the Panel found that all three elements were shown and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Vaga-lume Midia Ltda v. Kevo Ouz d/b/a Online Marketing Realty FA1287151 (Nat. Arb. Forum, December 7, 2009) a three member Panel was faced with a dispute over the domain www.vagalume.com. Complainant runs a Brazilian based web site about music, since 2002, located at www.vagalume.com.br and www.vaga-lume.com.br. Respondent is a domain name entrepreneur who admits to registering domains of common or descriptive words. The disputed domain was purchased by Respondent in December 2007.

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.

The Panel provided a split decision, with only two of the Panelists providing the majority opinion. In addressing the first prong the Panel explained that Complainant provided a Brazil  trademark registration certificate for VAGALUME and design. The Panel concluded that the there was letter-by-letter coincidence of the disputed domain and the mark.

The Panel next addressed the second element, whether the Respondent has any rights or legitimate interests in the domain. The Respondent argued that the term vagalume means firefly in Portugese. The Panel however noted that Complainant’s use of the mark is not descriptive and instead was arbitrary. Respondent claimed he registered the domain due to its high traffic, but the Panel noted he failed to provide any evidence of this traffic being a result of common nature use of the term. Instead the Panel noted that results of an Alexa.com search showed that over 91% of the visitors to the disputed domain originated from Brazil. Next the Panel addressed the actual control and use of the domain, and this is where the Panel began to chastize Respondent:

As also shown by Complainant, after having received service of the present complaint, Respondent manually modified the parameters governing the generation of ads appearing on the website at the disputed domain name, from ads almost related to music to generic ads. This shows that Respondent always could and did control the contents of his website (“pay-per-click” links), which deprives of any credibility Respondent’s contention that he did not did not select the links, and that they were auto-generated by Yahoo and Parked.com. Respondent’s manual change of the ads parameters, following his having received service of the complaint, was hidden until Complainant revealed it in its additional submission. This shows that when Respondent registered the disputed domain name he was targeting Complainant’s mark to extract income from pay-per-click links precisely aimed at Complainant’s audience and traffic. Only after having been served with the complaint, did Respondent use his ability to manually control the contents of his website at the disputed domain name, and posted texts explaining that VAGALUME means “firefly”, in an obvious attempt to justify – ex post facto – his having chosen the disputed domain name. All this does not reveal a use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, pursuant to Policy ¶ 4.c.i., or a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers, pursuant to Policy ¶ 4.c.iii.

The Panel then moved to the final element, bad faith. The Panel explained that bad faith requires knowledge or awareness of the mark. This knowledge or awareness is a responsibility for those who own large portfolios of domains. This willful blindness concern was addressed by Respondent who claimed that he conducted a search for the trademark on the USPTO site prior to purchase. Additionally, the Respondent claimed that a U.S. resident should not be obliged to search the records of all foreign trademark offices. The Panel disagreed with this view, noting that since the domain was a Portugese word, a search in Brazil would have been necessary. The Panel went on to explain:

Additionally, the Panel notes that Respondent’s remarks that he had no knowledge of the Complainant or its trademark prior to the instant dispute are contradicted by the uncontroverted circumstantial evidence discussed above.  Respondent’s prevarication regarding his prior knowledge of the Complainant and its common law trademark, as well other apparently disingenuous statements made in his pleadings, is additional independent and sufficient grounds for finding bad faith registration and use.

The Panel does not stop the bleeding there, as they then discuss the three prior UDRP cases which Respondent lost on default. As a result the Panel stated:

While Respondent observes that in all such cases he was in default, the Panel cannot but speculate that an experienced domainer like Respondent may have considered that its case was indefensible. In any event, there is no evidence that Respondent has challenged any of these decisions before a court, as it was his right under the UDRP. Respondent cavalierly considers such cases to be a “few UDRP losses”. The Panel believes that those cases demonstrate that Respondent had engaged “in a pattern of such conduct” when he registered the disputed domain name in order to prevent Complainant from reflecting the VAGALUME mark in a “.com” domain name, which is a circumstance of bad faith registration pursuant to Policy § 4.b.ii.

The reasons for ruling against Respondent did not stop there, though. The Panel criticized Respondent for changing the parameters of the pay per click links on his web site after receiving notice of the dispute. The Panel found that this showed Respondent had control of the web site all along and that since this is an experienced domainer “it is unlikely if not absurd to find that he was unaware of exactly how the parking page worked and that he could manipulate it.”

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

DefendMyDomain Commentary: There is a very long and well thought Dissent opinion. The Panelist takes a careful approach at noting that there are issues on both sides, but that the Complainant just did not provide evidence sufficient for a finding that satisfied all the elements. The dissenting Panelist instead challenged that the decision should not be based on supposition and conjecture. Take the time to read this dissent to get an understanding of just how different Panelists can view a specific case.  We believe the Domainers are going to have a real problem with this decision, but the current UDRP system remains.

In the recent domain name dispute decision of Hard Rock Cafe International (USA), Inc. v. Ronald Robinson FA1290206 (Nat. Arb. Forum, November 25, 2009), a single member Panel was faced with a dispute over the domain www.hardrockpoker.net. Hard Rock is the well known chain of Hotels, Casinos and Restaurants that are all over the world. They have been in business since 1978 and have trademark rights to the HARD ROCK mark. Hard Rock maintains several website located at www.hardrock.com, www.hardrockhotels.com, and www.hardrockpoker.com. Respondent registered the disputed domain in May 2009 and failed to respond to the disputed domain.

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 addressed the first element, noting that Complainant established rights in the HARD ROCK mark through multiple registrations of the mark. The Panel found that the disputed domain merely added the descriptive word poker, which was not different enough from the mark.

Moving to the second element, the Panel found that Hard Rock presented a prima facie case, shifting the burden to Respondent. Although the Respondent failed to respond to the complaint, the Panel chose to review the record anyway. The Panel found that Respondent was not commonly known by the disputed domain under Policy paragraph 4(c)(ii). Additionally, the Panel noted that the disputed domain resolved top show banner advertisements and links to gaming web sites. For this reasons, the Panel determined this was not a bona fide offering of goods and services under Policy paragraph 4(c)(i).

When discussing the last element, bad faith, the Panel noted that the domain was hosting links to advertisements for gambling web sites. The Panel inferred that Respondent was attempting to disrupt Hard Rock’s business by competing directly. Additionally, it was determined that Respondent was receiving click through fees from the links and profiting from the confusion.

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

In the recent domain name dispute of Provide Gifts, Inc. d/b/a RedEnvelope v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin FA1286921 (Nat. Arb. Forum, November 9, 2009) a single member Panel was faced with a dispute over the domain www.redenevelope.com. Complainant is the well known online gift retailer who maintains a web site at www.redenvelope.com. Respondent registered the disputed domain in August 2000 and failed to reply 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 had rights to the RED ENVELOPE mark through various trademark registrations. The Panel found that the disputed domain contained a misspelled version of Complainant’s RED ENVELOPE mark which was confusingly similar. The Panel found that Complainant satisfied Policy paragraph 4(a)(i).
 
Moving to the second element, the Panel found that Red Envelope presented a prima facie case and that Respondent failed to submit a response. The Panel found that Respondent was not commonly known by the disputed domain, was using the domain to display links advertising third-party web sites in competition with Red Envelope, and engaged in typosquatting. All these factors culminated to a conclusion that Respondent lacked any rights or legitimate interests in the domain. The Panel found Red Envelope satisfied Policy paragraph 4(a)(ii).

In reviewing the third element, bad faith, the Panel began by explaining:

…Respondent intended to disrupt Complainant’s business and take advantage of Complainant’s goodwill surrounding its mark by displaying third-party links to Complainant’s competitors in the online retail industry for upscale gifts.  The Panel therefore finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). 

The Panel also relied on another bad faith factor and explained:

Additionally, Respondent has created a substantial likelihood of confusion as to the source and affiliation of the <redenevelope.com> domain name and the corresponding website.  Respondent benefits from such a likelihood of confusion, as it receives referral fees for the competitive upscale gifts advertisements that are displayed to the diverted Internet users.  The Panel finds this to be adequate evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 

The Panel didn’t stop there noting that the typosquating also qualified for proof of bad faith under Policy paragraph 4(a)(iii).

Ultimately, the Panel found that Red Envelope satisfied all elements of the ICANN UDRP Policy  and ordered the domain be TRANSFERRED.

In a rarely reported section of the domain dispute world, one of DefendMyDomain’s friends had a successful result with the Czech Arbitration Court. Marc Randazza braved the realm of the CAC in a domain dispute, (available here) against Gu Bei, who is slowly becoming an infamous cybersquatter. The disputed domain was www.sublimedirectories.com. We recently reported on another case where Disney won against this same Respondent. (available here). In the instant dispute, Mr. Randazza represented Redfan of Panama, Inc., who runs an aggregation web site containing links and information about adult entertainment. Complainant owns the mark SUBLIME DIRECTORY, with rights dating back to 1996, and maintains a web site at www.sublimedirectory.com. Respondent registered the domain on August 18, 2009 and failed to respond to the Complaint.

The normal UDRP rules apply in the CAC, wherein Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel, addressed the first element and found that Complainant had established rights to the mark SUBLIME DIRECTORY. The Panel found that the disputed domain was merely a plural form of the mark, thus it was confusingly similar. Moving to the second element, the Panel confirmed that the disputed domain contains content related to adult entertainment, which is similar to Complainant’s. The Panel found that Complainant had presented a prima facie case and Respondent’s failure to respond was sufficient to make a finding of lacking rights or legitimate interests. Lastly, the Panel reviewed whether the disputed domain was registered and used in bad faith. The Panel found that once the first two elements were proven and that the disputed domain was used in connection with a web site offering similar goods or services, that bad faith can be found. AS a result, the Panel found that Complainant satisfied all elements of the Policy and ordered the domain be TRANSFERRED.

A tip of the hat goes out to Randazza for braving the CAC.

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 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.