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Posts Tagged ‘Privacy Service’

Japanese Beer ASAHI Chugs One After Successful Cybersquatting Win

Friday, January 8th, 2010

        asahi-beer

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.

C-SPAN wins 91 domains in a large UDRP filing!

Thursday, February 12th, 2009

In the recent decision of National Cable Satellite Corporation d/b/a C-SPAN v. New Media Nexus c/o Lyle, Rumble (Nat. Arb. Forum 1236010, January 26, 2009), a single member panel was faced with a dispute over 91 (that’s not a typo folks!) domains. (For a full listing of the disputed domains please click here).  National Cable Satellite Corporation (“NCSC”) is a nonprofit corporation which owns and operates C-SPAN, the well known producers of public affairs television. NCSC has used the C-SPAN mark since 1979 and maintains its main internet presence at www.c-span.org. NCSC also holds trademarks for other variations of C-SPAN including C-SPAN 2 and C-SPAN 3. NCSC contends that Respondent registered numerous domains which were identical to its marks, or which included the addition of words like book, video, TV and watch, to those marks contained in the domain address.

Respondent claims to be the Managing Editor and Publisher of Sky and Space Magazine, which maintains a domain at www.SkyandSpace.com.au. Respondent also claims to operate a domain business with about 4,000 domains. Respondent’s justification for the registration of the disputed domains was that he wanted to establish a new marketing and sales network names Cyber Space Astro Network (CSPAN). Respondent argued that his trademark search revealed that the CSPAN mark had been abandoned in 2002.

The Panel reviewed the arguments presented by each side and used the three part test to determine whether the domains should be transferred. First, the Panel discussed whether the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The panel explained that Complainant had rights to the marks C-SPAN, C-SPAN 2 and C-SPAN 3 and that Respondent’s addition of a letter, symbol or generic top-level domain such as “.com” was insufficient to distinguish the domains from the C-SPAN marks. The Panel found Complainant proved this element.

The Panel next reviewed whether the Respondent has any rights or legitimate interests in the domain names. The Panel found that Respondent was not commonly known by the disputed domains. Additionally the Panel noted that the domains redirected Internet users to web sites that offered unrelated services and that this redirection was not a bona fide offering of goods and services. The Panel determined that Complainant proved this element as well.

The Panel last reviewed whether the domain names have been registered and are being used in bad faith. First, the Panel noted that the bottom of the domains contained language asking a visitor to “make an offer” regarding the domain. Therefore, the Panel explained that the primary intent of the web site was to sell the domains. Further, the Panel found that since all 91 domains were registered on the same day, this established a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). The Panel explained that Respondent’s use of a privacy service and collection of money from click-through fees associated with the domains was further evidence of bad faith. Lastly the Panel noted that since Respondent admitted to completing a trademark and/or Internet search, Respondent could not have been unaware of Complainant, that is, Respondent must have discovered C-SPAN during his search.

Ultimately the Panel agreed to TRANSFER all 91 domains.

American Automobile Association (AAA) Flexes its Horsepower: Concealing Domain Owner is Bad Faith

Tuesday, December 30th, 2008

In the recent decision of The American Automobile Association, Inc. v. Zag Media Corp. C/o Whois Privacy Services (Nat. Arb. Forum 1226952, November 13, 2008), a single member Panel was faced with a dispute over www.aaacars.com. Complainant is the owner of the trademark AAA with rights dating back to 1903 for automobile association services rendered to motor vehicles, motorists and travelers. Complainant owns and operates several domains including www.aaa.com, www.aaaautos.com, www.aaaautobuyer.com, www.aaaautosales.com, www.aaacarprices.com, and www.aaausedautos.com.

The identity of Respondent was not as clear. Zag Media Corp. is a “proxy service” whereby it registers domain names in its own name on behalf of its customers. Zag Media then used a privacy service to hide the publication of the Registrant data. Complainant contends that the disputed web site resolved to a parked page with sponsored links which generate click-through revenue for the domain owner. Respondent, Zag Media attempted to distinguish itself from the actual customer/domain owner, but refused to identify who that customer was. However, Respondent explains that the customer/domain owner had plans to develop the domain for high quality used car auctions.

In reviewing the procedural issue of who the proper Respondent was, the Panel found Zag Media was the proper party, since they were listed in the Whois registration information. The Panel then  reviewed the three prong test set up in accordance with ICANN/UDRP policies. The Panel found that the domain was confusingly similar to Complainant’s mark, noting that the additional word “cars” to the “aaa” evokes Complainant’s automobile and travel related services and products.

Moving onto the next prong, whether or not the Respondent had any rights or legitimate interests, the Panel made an interesting observation:

In seeking to demonstrate that it has rights or legitimate interests in the disputed domain name, Respondent, Zag Media Corp. c/o Whois Privacy Services, finds itself in a dilemma. On the one hand, it registered the domain name in its own name, acting as a privacy shield on behalf of the person or entity which it calls the “domain owner.” As agent, Respondent has neither rights nor legitimate interests in the domain name of the kind that are relevant in this proceeding. Any such rights or interests belong to the unidentified principal on whose behalf Respondent acted in registering the domain name. Respondent’s rights or interests as registrant consequent upon mere compliance with the requirements for registration are of no consequence in a proceeding under the Policy. On the other hand, Respondent seeks to argue that the “domain owner,” whose identity it has studiously failed to disclose, has rights or legitimate interests in the domain name by reason of its plans to use and its actual use of the domain name prior to notice of this dispute. However, the only rights and interests that are relevant in this proceeding are those of Respondent, being the registrant of the domain name at the time of the filing of the Complaint. For this reason alone, the Panel finds that Respondent has failed to discharge the shifted onus and that Complainant has established this element of its case.

The Panel then moved onto the last prong, whether or not the domain was registered and used in bad faith. The Panel explained that despite Respondent’s assertion that it was just an agent of the real domain owner, that an agent is still liable of an undisclosed principal. However, the Panel noted that Respondent’s customer/domain owner, was more likely than not to have had actual knowledge of Complainant’s AAA trademark, creating a finding of bad faith. The Panel went further explaining other reasons for a finding of bad faith:

Although proxy registration is not necessarily a sign of illegitimate purpose, the concealment provided by proxy registration can be indicative of bad faith registration and use and can be abused by cybersquatters. Whether the purpose of the customer in using a proxy service be innocent or guilty, for the actual registrant (the proxy service provider) to conceal the identity of its customer in the face of a UDRP complaint, as Respondent has done here, is to obstruct the UDRP system. In this Panel’s opinion, such concealment amounts to bad faith on the part of the proxy service provider.

Ultimately, the Panel granted the TRANSFER of the domain.

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