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Posts Tagged ‘Pay-Per-Click’

RADIO SHACK Doesn’t Suck?

Tuesday, October 6th, 2009

        radio-shack

In the recent domain name dispute decision of TRS Quality, Inc. v. Gu Bei (WIPO D2009-1077, September 25, 2009) a single member Panel was faced with a dispute over the domain www.radioshacksucks.com. Complainant is the parent company of the Radio Shack Corporation (now known as “the Shack” if you have seen the new ads). They maintain a web site at www.radioshack.com and own numerous U.S. trademark registrations for the RADIO SHACK mark. The disputed domain was registered on April 27, 2007 and Respondent failed to respond to the Complaint.

Paragraph 4(a) of the UDRP Policy directs that the Complainant must prove each of the following: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

In addressing the first element, the Panel found that the domain contained all of Complainant’s mark with the addition of the generic word sucks. The Panel explained:

Indeed, considering the vulgar and offensive meaning of the term, it is unlikely to believe that companies would publish a website with such a self-denigrating domain name. On these grounds are based some panel decisions which concluded that a domain name containing a well-known trademark and the term “sucks” is not “confusingly similar” to the mark included in the domain name.

But the Panel also noted:

However, as held i.a. in La Quinta Worldwide L.L.C. v. Heartland Times LLC, MD Sullivan, WIPO Case No. D2007-1660, “it is not self-evident that Internet users would always take notice of the slang word following the trademark in the Domain Name and recognize its negative import”, also in light of the fact that many Internet users potentially interested in the Complainant’s services accessing to the web site “www.radioshacksucks.com” may be not fluent English-speakers.

The Panel found that Radio Shack met its first element burden and moved to the second element. The Panel noted that Complainant showed a prima facie case and explained the necessity to review the contents of the disputed domain. The Panel relied on a previous decision for the standard to apply in such a case:

Simply having a domain name with “-sucks” in the name cannot, by itself, establish fair use; one must look to the content of the website to determine if there is an exercise of free speech which allows the Respondent to rely on the fair use exception. To do otherwise would legitimize cybersquatters, who intentionally redirect traffic from a famous mark, simply through the use of a derogatory term.

In light of this the Panel found that Respondent’s domain did not point toward a legitimate gripe web site, and instead contained pay-per-click links at third party commercial web sites. The Panel also found that there is no relationship between the Complainant and Respondent and that no licence or authorization was present.

The Panel found the second element was satisfied and moved onto the last element of bad faith.  The Panel found that Respondent must have known about Complainant due to its 85 year existence prior to registration of the domain. The panel further explained that the third party pay per click links on the pages resulted in an attempt to attract users to the web site for commercial gain. Lastly the Panel found that Respondent’s failure to respond was bad faith.

Ultimately, the Panel found that Radio Shack satisfied all elements and ordered the domain 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.

Big Law Firm Greenberg Traurig…Big Win…Did You Expect Anything Less?

Friday, August 14th, 2009

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.

AAA Auto Club Can’t Get AAA.net

Monday, July 27th, 2009

In the recent domain dispute decision of The American Automobile Association, Inc. v. QTK Internet c/o James M. van Johns FA1261364 (Nat. Arb. Forum, July 25, 2009) a three member Panel provided an interesting decision regarding www.aaa.net. Our friends over at Domain Name Wire provided an excellent review of the decision, so we suggest you read their version. (available here). We can already forsee that there will be many future disputes which cite to this decision.

SCOPE Mouthwash Rinses Out A Domain

Thursday, July 23rd, 2009

In the recent domain name dispute decision of The Procter & Gamble Company v. Richard Jones FA 1266787 (Nat. Arb. Forum July 22, 2009) a single member Panel was faced with a dispute over the domain www.scopemouthwash.com. Complainant is the well known global products company with such famous brands as TIDE, PAMPERS, and CREST. They maintain a web site at www.pg.com and also have a web site for SCOPE at www.getclose.com. Respondent failed to respond to this Complaint.

scope

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 P&G has a trademark registration for the mark SCOPE in the U.S. and in other countries around the world. The Panel found that the term mouthwash was descriptive of P&G’s business. As a result the Panel found that the domain was confusingly similar to P&G’s mark.

Moving to the second element the Panel noted that P&G presented a prima facie case, and since Respondent failed to submit a response the Panel could assume there were no rights or legitimate interests. Regardless, the Panel still chose to review the evidence presented by P&G. Respondent’s web site resolved to a parked page with click-through links, for which the Panel presumed Respondent was gaining revenue. The Panel also found that the Whois information provided showed that Respondent was not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii). For these reasons the Panel found P&G satisfied the second element.

Moving to the final element, bad faith, the Panel explained:

Complainant alleges that Respondent is using a domain name, which is confusingly similar to Complainant’s SCOPE mark, to attract Internet users to a website containing links, some of which resolve to websites of Complainant’s competitors.  The Panel concludes that appropriating Complainant’s SCOPE mark to divert Internet users is likely disrupting Complainant’s business and that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iii). 

The Panel also found the bad faith under Policy ¶ 4(b)(iv) since Respondent intentionally attracted Internet users for financial gain. Ultimately, the Panel found that P&G satisfied all elements and ordered the TRANSFER of the domain.

VIAGRA Takes A Hard Stance On Domains

Friday, July 17th, 2009

In the recent domain name dispute decision of Pfizer Inc. v. Igor Shorop FA1266024 (Nat. Arb. Forum July 15, 2009) a single member Panel was faced with a dispute over the domain www.viagra.us. Phizer is the famous pharmaceutical company who markets and sells well-known erection pill VIAGRA. Complainant maintains web sites at www.pfizer.com and www.viagra.com. Respondent failed to respond to the dispute.

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; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered or is being used in bad faith

In addressing the first element the Panel explained “The disputed domain name contains Complainant’s VIAGRA mark in its entirety with the addition of the country-code top-level domain (“ccTLD”) “.us.”  The Panel concludes that the addition of the ccTLD is insignificant, rendering Respondent’s <viagra.us> domain name identical to Complainant’s VIAGRA mark under Policy ¶ 4(a)(I).” The Panel found that Pfizer satisfied the first element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel noted that Respondent’s failure to respond raises a presumption of lacking such rights. There was no evidence that Respondent owned any trademark rights or was commonly known by the disputed domain. Additionally the Panel found:

The disputed domain name resolves to a website featuring click-through links and advertisements, which divert Internet users to the websites of Complainant’s competitors.  The Panel presumes that Respondent is generating revenue from such use and therefore finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv), respectively.

 Moving to the final element, the Panel found that Respondent’s use of click-through fee links was evidence of bad faith. Additionally the Panel found that since the domain name was identical this was also evidence of bad faith.  

 Ultimately, the Panel found Phizer satisfied all three elements and ordered the TRANSFER of the disputed domain.

SKOAL Tells Cybersquatter To Chew On Something Else

Wednesday, July 15th, 2009

In the recent domain name dispute decision of U.S. Smokeless Tobacco Manufacturing Company LLC v. Four Feathers LLC, FA1266017 (Nat. Arb Forum July 14, 2009), a single member panel was faced with a dispute over the domain www.skoal.com. As explained in the brief factual background, “Complainant, U.S. Smokeless Tobacco Manufacturing Company LLC, sells smokeless tobacco products and has been in business since the 1800s.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SKOAL mark (i.e., Reg. No. 504,609 issued December 7, 1948).” Complainant appears to maintain a web site at www.skoalbrotherhood.com. The disputed domain was registered in 1997. (There is no discussion throughout the opinion about the delay in bringing this dispute.)

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 prong the Panel found the domain was identical except for the additional of the generic top-level domain “.com.” As many Panels in the past have explained this is insignificant and this Panel quickly moved to the second element.

In discussing the second element, the Panel explained:

 The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 

The Panel found that respondent’s web site contained links to competing products and that this was not a bona fide offering of goods and services. The Panel also determined that there was no evidence presented to show that Respondent was commonly known by the domain.

Moving to the last element, bad faith, the Panel found as follows:

Respondent is using the <skoal.com> domain name to resolve to a website featuring links to competing products presumably for the profit of Respondent.  The Panel finds Respondent’s use of the disputed domain identical to Complainant’s SKOAL mark to redirect Internet users interested in Complainant’s products to competing website links constitutes disruption and bad faith registration and use under Policy ¶ 4(b)(iii)….In addition, the Panel finds Respondent presumably receives click-through fees from links on the disputed domain name sponsored by Complainant’s competitors.  Respondent likely profits from Internet users’ likelihood of confusion with Complainant’s affiliation with the disputed domain name.  The Panel finds that this use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).

Ultimately, the Panel finds that Complainant proved all three elements and agreed to order the TRANSFER of the domain.

4INKJETS Prints Up A Win

Tuesday, July 7th, 2009

In the recent domain dispute decision of LD Products, Inc. v. Gary Lam c/o XC2 (Nat. Arb. Forum FA 1265729, July 2, 2009) a single member Panel was faced with a dispute over the domain www.4inkjetss.com. As explained in the decision, “Complainant is an Internet retailer for printer supplies and accessories, which markets its products under the 4INKJETS mark.  Complainant registered the 4INKJETS mark with the United States Patent and Trademark Office (“USPTO”) on September 20, 2005 (Reg. No. 2,998,115, filed August 3, 2004).  Complainant has operated its printer supplies business, and advertised its products under the 4INKJETS mark, since at least as early as 1999, and since that time Complainant has grown its business to US $27 million in sales in 2007 and US $34 million in 2008.” Complainant maintains a web site at www.4inkjets.com.

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 addressed the first element, noting Complainant’s trademark registration and significant common law rights in the mark dating back to 1999. The Panel found that the disputed domain was typosquatting, in that it merely added an additional letter s to the end of the top level domain.

The Panel then moved to the second element, wherein it acknowledged that Complainant made its prima facie case, shifting the burden to Respondent. Since Respondent did not reply to the complaint, the Panel accepts all reasonable allegations from Complainant as true. Therefore the Panel made the following observations and findings:

Complainant contends that Respondent is neither commonly known by, nor licensed to register, the disputed domain name.  Respondent’s WHOIS information identifies Respondent as “Gary Lam c/o XC2.”  Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name….Respondent is using the <4inkjetss.com> domain name to display links to third-party websites that are in competition with Complainant.  Complainant contends, and the Panel agrees, that Respondent is using the disputed domain name to collect click-through fees from those third parties, and thus the Panel finds that Respondent has not made 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). 

The Panel then moved to the third element, bad faith, and the Panel made the following findings:

The Panel finds that Respondent is using the <4inkjetss.com> domain name to disrupt the business of Complainant by offering links to competitors, and that this use is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii)….The Panel agrees that Respondent is collecting click-through fees as a result of its use of the disputed domain name, and therefore finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 

Ultimately, the Panel found that Complainant proved all the elements and agreed to order the TRANSFER of the domain.

Pearl Jam Wins “Ten Club” Domain For The Second Time

Thursday, July 2nd, 2009

In a recent domain dispute decision of Pearl Jam, LLC. f/k/a Pearl Jam, A General Partnership v. J.S.E. Janssen a/k/a Stijn Enzo Holding BV (Nat. Arb. Forum 1262659, July 1, 2009) a single member Panel was faced with a dispute over the domain www.tenclub.org. Pearl Jam is the popular and well known rock band who has been cranking out hits since the early 90’s. Pearl Jam established an authorized fan club known by the mark TEN CLUB. The band maintains a web site at www.pearljam.com and www.tenclub.net. Pearl Jam’s debut album was entitled TEN and had amazing success. Respondent replied to the Complaint stating that the domain was going to be used as follows:

Tenclub is a specific project. Respondent is in the process of setting up a church/club in which all sorts of activities will take place. The essence of the project is that its members will dedicate ten per cent of their time and money to each other.  Thus, learning that sharing will bring a better human society. That is where the name Ten club comes from. There is absolutely no financial perspective, except being able to pay for the costs of the project. Currently, Respondent is looking at buildings, the structure and the communication, hence the website.

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 addressed some procedural issues first, noting that requests were made to Respondent to provide certain documents and translations of certain documents, which the Respondent did not provide. Additionally, Complainant points out, although the Panel does not address, the fact that this domain was once the subject of a prior domain dispute. Specifically, Pearl Jam had already won a dispute over this domain in the decision of Pearl Jam, A General Partnership v. Jongcheol Lee (Nat. Arb. Forum 406483, March 17, 2005). Pearl Jam explained that the registrar did not cooperate or agree to transfer the domain. It is unclear why the transfer was not enforced.

In addressing the first element, the Panel quickly found the domain was identical or confusingly similar to Pearl Jam’s multiple U.S. and foreign trademark registrations for TEN CLUB. Most of the Panel’s decision centered around the second element. The Panel found Pearl Jam established a prima facie case, shifting the burden to Respondent. In response to Respondent’s assertions about the proposed use of the domain the Panel explained:

The Panel believes that none of these unsupported contentions of Respondent is evidence that before any notice to Respondent of the dispute, he used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services according to Policy ¶ 4(c)(i). For instance, Respondent fails to show that he has posted any contents related to the purported uses of the domain name (“church/club”) on the website at the disputed domain name. Nor does he submit any affidavit or documents evidencing any preparations to use the domain name.

The Panel went further to break down Respondent’s evidence by stating:

The Panel cannot overlook the fact that in Respondent’s attachment to the email with the Response, he added the “®” symbol to the TenClub term, thus attempting to create the false impression that he owned a registered trademark. Only after this Panel requested Respondent to submit a full translation of the attachment in Dutch, it appeared that no such trademark registration had ever been granted. As a result from Respondent’s failure to comply with the request from the Panel, there is no evidence that Respondent has even applied for a trademark registration before the Benelux trademark office. Respondent’s failure to comply with the Panel’s requests of full translations of the attachments in Dutch allows the Panel to infer that such translations would not have been favorable to Respondent, pursuant to Rules ¶ 14(b).

As a result, the Panel found that Respondent failed to establish any rights or legitimate interests. The Panel also discussed the third element, bad faith. The Panel found that Respondent was extracting a financial benefit from click-through fees generated as a result of the parked web site. Additionally, the Panel noted that although Respondent claimed to never have heard about the TEN CLUB associated with Pearl Jam, the postings on the disputed domain led the Panel to infer otherwise.

Ultimately, the Panel found Pearl Jam had established all three elements and ordered to TRANSFER the domain.

DefendMyDomain Commentary:
It is unclear why or how Pearl Jam was unable to get a successful transfer after the 2005 domain decision. Regardless, it is more puzzling that the Panel made no affirmative discussion about the prior decision and the effect it may have had on the current decision.

Victoria’s Secret Spreads Its Angel Wings Further

Wednesday, July 1st, 2009

In the recent domain dispute decision of Victoria’s Secret Stores Brand Management, Inc. v. Open Water Enterprises Limited c/o Louis S (Nat. Arb. Forum 1264419, June 29, 2009) a single member Panel was faced with a dispute over the domain www.victoriasecretangelcard.com. We know that you do not live under a rock so we will avoid discussing the fame of Victoria’s Secret. Victoria’s Secret maintains a web site at www.victoriassecret.com.

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 contained all of Complainant’s mark VICTORIA’S SECRET with the addition of the descriptive phrase “angel card” on the end. There was no mention in the decision though that the disputed domain dropped an “s” from the domain name, although it generally has no significance in the domain dispute world. These descriptive words were not sufficient enough for Respondent’s use and thus Complainant satisfied the first element.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel explained that Complainant set forth a prima facie case, shifting the burden to Respondent. The Panel found that Respondent was using the domain to divert viewers to competitors of Victoria’s Secret for commercial gain. Further, the Panel found that the Whois information associated with Respondent showed Respondent was not commonly known by the domain name.

Moving to the last element, bad faith, the Panel stated as follows:

Respondent’s disputed domain name resolves to a website that displays links to third-party websites, some of which directly compete with Complainant’s business.  The Panel finds Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent presumably received payment for displaying links to Complainant’s competitors on the website which resolved from the confusingly similar <victoriasecretangelcard.com> domain name.  Thus, the Panel finds Respondent is attempting to profit from the goodwill associated with Complainant’s mark, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

As a result, the Panel found that Victoria’s Secret proved all three elements and agreed to TRANSFER the domain.

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