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Posts Tagged ‘Reseller’

Roberto Cavalli Designs A Winning Arbitration

Monday, August 17th, 2009

In the recent domain name dispute decision of Roberto Cavalli S.p.A., IGA Finance B.V. v. Jekaterina Kaidanovits-Rogers (WIPO D2009-0740, August 5, 2009), a single member Panel was faced with a dispute over the domain www.robertocavalliusa.com. Complainant is the famous Italian designer and has trademark rights in the name ROBERTO CAVALLI. Cavalli maintains a web site at www.robertocavalli.com. Respondent failed to respond to the complaint.

             robertocavalli1

Paragraph 4(a) of the ICANN UDRP Policy states that Complainant must prove (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel found that the disputed domain contained all of Complainant’s mark and merely added “usa” at the end. This was enough for the Panel to determine the domain was confusingly similar.

Moving to the second element, the Panel agreed with Complainant’s arguments which included:

(i) The Respondent has not been authorised by the Complainant to register nor to use the Complainant’s marks. (ii) The Respondent is not associated in any way with the Complainant or its distribution network. (iii) The Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ROBERTO CAVALLI. (iv) There is no evidence of a bona fide noncommercial or other legitimate fair use by the Respondent.

The Panel found that Complainant provided sufficient unrebutted evidence and noted that the second element was satisfied.

Moving to the final element, bad faith, the Panel explained that Complainant’s evidence of the disputed domain showed it was being used for “promoting sales of Complainant’s products which appear to be paralell imported and may even be counterfeited.” In light of these findings the Panel found that Complainant satisfied this element as well.

Ultimately, the Panel agreed with Complainant and ordered the disputed domain be TRANSFERRED.

Tiffany & Co. Wins Two Domains In Blue Box

Tuesday, June 23rd, 2009

In two recent domain dispute decisions Tiffany (NJ) LLC and Tiffany and Company v. Tiffany Store Net (WIPO D2009-0427, June 9, 2009) and Tiffany (NJ) LLC, and Tiffany and Company v. Vincent & Co. (WIPO D2009-0428, June 9, 2009) a single member Panel addressed the domains www.tiffanystore.net and www.tiffanylife.com respectively. Although the decisions were separate, the same Panelist handled the opinions. Tiffany and Company is the famous international jewelry store which maintains a web site at www.tiffany.com.

Under the ICANN UDRP policy a Complainant must prove (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the respondent’s domain name has been registered and is being used in bad faith.

In the first decision, www.tiffanystore.net the Panel reviewed the first of the three elements noting that the domain encompassed all of the mark TIFFANY. The crux of the decision though rested in the second element, wherein the Panel noted that Respondent’s web site claimed to sell identical goods manufactured by or for the Complainant, but that Respondent was not an authorized reseller and would not provide a certificate of authenticity. The Panel explained:

Respondent’s website disclaimer as to the lack of any relationship to or authorization from Complainant for sale of jewelry similar to or even identical to Complainant’s jewelry does not make Respondent’s offering of goods and services bona fide under paragraph 4(c)(i) of the Policy. In this regard, it is immaterial whether the goods may be “counterfeit”, as Complainant contends (without submitting evidence on the point), or “authentic” or “from the same factory”, as Respondent’s website asserts. In either event, as evidenced by Complainant’s submission of pages from Respondent’s website, Respondent’s use of Complainant’s famous trademarks in the Domain Name and throughout the Domain Name website is a clear attempt to confuse consumers and divert them to Respondent’s competing website.

Moving to the last prong, bad faith, the Panel relied on Policy paragraph 4(b)(iv) to note that Respondent had to know of Complainant’s well known trademark when it registered and used the domain. Additionally, the Panel found that Respondent’s use of Complainant’s TIFFANY marks on the domain to describe the jewelry was evidence of likelihood of confusion. Ultimately, the Panel ruled to TRANSFER the domain.

In the second dispute, www.tiffanylife.com the Panel made a similar quick analysis regarding the first element, and finding that the domain contained all of the Complainant’s mark with the addition of the descriptive word “life.” In this decision the Panel simply relied on Complainant’s prima facie showing of no rights in regards to the second element. The Panel noted that, according to Complainant, Respondent used the TIFFANY marks throughout the web site to confuse consumers.

Moving to the bad faith element, the Panel again relied on paragraph section 4(b)(iv) in finding that Respondent must have known about Complainant’s TIFFANY marks prior to the registration and use. Respondent’s use of the domain was found to attract users to this competing site for commercial gain by creating a likelihood of confusion. Ultimately, the Panel agreed to TRANSFER this domain as well.

MagicJack Calls In An International Win

Monday, June 22nd, 2009

In a recent domain dispute decision of MagicJack LP v. Neil Adams 1258600 (Nat. Arb. Forum June 11, 2009), a single member Panel was faced with a dispute over the domain www.canadianmagicjack.com. Complainant sells the popular MAGICJACK voice over Internet protocol (VOIP) device which permits customers to make and receive calls through an Internet connection. The MAGICJACK product has been marketed and sold since at least March 2008 and they maintain a web site at www.magicjack.com. Complainant has a federally registered trademark for MAGICJACK. Respondent registered the disputed domain on August 1, 2008. Complainant contends that Respondent’s domain offers telephone service identical to its own service, including International local phone numbers that can be forwarded to existing U.S. Magic Jack numbers. Complainant also argues that Respondent sent MagicJack’s CEO an email taunting them and admitting that Respondent crossed into the U.S. border to purchase and resell Complainant’s device in Canada. Respondent claimed that since Complainant had only applied for a trademark application as of May 13, 2008, that Respondent had prior Canadian rights since it was in business as of April 30, 2008.

A review of the three ICANN UDRP policies requires a Complainant to prove (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 explained that merely adding the geographic term “Canadian” was not a significant alteration to result in a distinguishable domain. The Panel found that the domain contained all of Complainant’s mark and determined that Complainant therefore satisfied this element.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel found that Complainant made a prima facie case and thus shifted the burden of proof to the Respondent. The Panel explained that Respondent failed to show it had any rights or legitimate interests and used the domain knowing of Complainant’s rights. The Panel further found Respondent used the domain to draw Internet traffic to advertise competing goods and services. Additionally Respondent was not commonly known by the disputed domain according to the WHOIS records. Lastly, the Panel addressed Respondent’s Canadian trademark application priority theory and explained:

Respondent asserts its registration of the disputed domain name predates Complainant’s rights in the mark because Complainant’s application with the Canadian Intellectual Property Office (“CIPO”) for its MAGICJACK mark has yet to be granted registration.  The Panel notes, however, that Complainant has provided evidence of the June 10, 2008 USPTO registration of its MAGICJACK mark, prior to Respondent’s registration of the disputed domain name.  The Panel chooses to dismiss Respondent’s argument here. 

Moving to the final element, the Panel found that using the domain to compete with Complainant’s business was evidence of bad faith. Additionally, the use of the domain would create a likelihood of confusion pursuant to ¶4(b)(iv) of the Policy. Ultimately, the Panel found that Complainant satisfied all of the elements, and agreed to TRANSFER the disputed domain.

(UPDATE 7/20/09): Subsequent to the UDRP decision reported above, we were informed by Respondent that it filed a Canadian law suit to block the Panel’s order transferring the domain. The outcome of this dispute remains uncertain, but as of this posting Respondent continues to control the domain.

Occidental Hotel Domains Were Not Accidental

Wednesday, March 11th, 2009

In the recent decision of Occidental Hoteles Management, S.L. v. Media Insights a/k/a Media Insight (Nat. Arb. Forum, 1239395, March 2, 2009), a single member panel was faced with a dispute over 20 different domains. The domains in dispute are listed below:

www.occidentalallegro.com
www.occidentalallegrocozumel.com
www.occidentalallegroplayacar.com
www.occidentalallegropuertoplata.com
www.occidentalgrandcozumel.com
www.occidentalgrandflamenco.com
www.occidentalgrandpuntacana.com
www.occidentalgrandxcaret.com
www.occidentalroyalhideaway.com
www.occidentalgrandcancunresort.com
www.occidentalgrandpapagayo.com  
www.occidentalgrandpuertoplata.com
www.occidentalgrandarubaresort.com
www.allegrojacktarpuertoplata.com
www.allegroplayacar.com
www.allegropapagayoresorts.com
www.grandcozumelresort.com
www.grandarubaresort.com 
www.grandxcaretresorts.com
www.royalhideawayrivieramaya.com

As the Panel explained the facts the following appears to be clear: (1) Occidental Hotels and Resorts is associated with at least 46 hotels in Europe, Africa, the Caribbean and the Americas, using the mark OCCIDENTAL since at least 1985. Complainant operates a web site locate at www.occidentalhotels.com. The disputed domains were registered by Respondent between November 2001 and April 2008. Respondent claimed to be a wholesale tour operator which provided travel packages, including hotel accommodations. Respondent claims that Complainant not only knew about the web sites for a long period of time, but also encouraged their operation by providing materials to be included on them.

The Panel reviewed the three elements of the Policy under paragraph 4(a), namely:(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, whether the domain names are identical or confusingly similar to Complainant’s mark, the Panel noted that seven (7) of the domains were similar in any manner to the mark. They included www.allegrojacktarpuertoplata.com, www.allegroplayacar.com, www.allegropapagayoresorts.com, www.grandcozumelresort.com, www.grandarubaresort.com,
www.grandxcaretresorts.com, and  www.royalhideawayrivieramaya.com. The Panel found Complainant failed to prove those domains were identical or confusingly similar. The Panel then  oddly made the following statement: “With regard to the remaining domain names, the Panel declines to enter a finding as to identicality or confusing similarity.” Based upon the other factors it appears to have not mattered, but this was an odd lack of review on the part of a Panel.

The Panel then addressed the second prong, whether Respondent had any rights or legitimate interests in the domain. The Panel explains that Complainant had a contractual relationship with Respondent’s “Parent Company” (which the Panel explains as a related entity). The Panel found that the web sites were promoting Complainant, with commissions or other payments being made to Complainant. Although Complainant may not have authorized Respondent directly, the Panel found that Complainant was long aware of these domains. 

The Panel declined to address the bad faith prong based upon its findings in the first two elements, and ruled that Complainant’s request be DENIED. 

DefendMyDomain Commentary: This is another example of why a reseller of goods or services can use a similar domain provided that the reseller adequately discloses the nature of his or her goods or services on the subject website.

VOLVO: Not Safe When it Comes to Domain Names- – Reseller of Parts OK!

Friday, March 6th, 2009

In the recent decision of Volvo Trademark Holding AB v. Volvospares / Keith White (WIPO Case No. D2008-1860, February 10, 2009) a single member Panel was faced with a dispute regarding www.volvospares.com. Since everyone knows who Volvo is, we will skip over the background info about Complainant. If you want to know more about them, go to www.volvo.com. The disputed domain was registered on January 13, 1997. The domain supposedly resolved to a web site where reconditioned, used or new replacement parts for VOLVO vehicles were offered for sale.

                 volvo-2006-logo

The Panel addressed the three elements which Complainant must prove: (i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the domain name; and (iii) The domain name has been registered and is being used in bad faith.

First the Panel reviewed whether the domain was identical or confusingly similar to the VOLVO mark. The Panel explained:

The Panel has no hesitation in finding that the disputed domain name is confusingly similar to those trademark rights. The Respondent appears to dispute this, contending that the disputed domain name is totally representative of what is to be found at the website. This mistakes the nature of the inquiry at this stage. What is required at this stage is a comparison of the disputed domain name itself to the proved trademark rights. The point made by the Respondent, however, may be relevant at the stages of considering rights or legitimate interests and registration and use in bad faith.

The Panel then moved to the second prong, namely, whether or not Respondent had any rights or legitimate interests in the domain. The Panel spent much of its opinion on this factor. The Panel explained that WIPO provides an overview of principles which address some of the specific concerns in this dispute. The question presented was whether or not a reseller can have a legitimate interest in the disputed domain. WIPO Overview paragraph 2.3 states:

A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.

The Panel reviewed the facts and evidence presented and concluded that Respondent was offering Complainant’s goods for sale in good faith. The Panel also found that Respondent is not disentitled to sell the products, because although not all products were actually branded as VOLVO, it is understood that even VOLVO has parts in their vehicles which do not have the VOLVO mark on them. Instead as Respondent points out, many parts bear a third party mark, such as BOSCH spark plugs.  

The parties also argued about the presence and the timing of a disclaimer on the disputed domain, which stated “Volvospares.com has no affiliation with Volvo Group and makes no claim to or implication of being associated in any official business capacity in conjunction with or for such companies.” Complainant contended that the disclaimer was not put on the site until after the commencement of the dispute. The Panel found that the presence or absence of a disclaimer was not conclusive or fatal.

The Panel made the additional following observations and findings:

Considering the Respondent’s website as a whole and each specific page, the Panel finds it does not misrepresent any association with the Complainant (or the VOLVO group). It represents nothing other than what appears to be true – that the Respondent offers for sale from the website parts for VOLVO vehicles. On balance, the website does not have an appearance which suggests it is likely to be mistaken for an official or authorized site of the Complainant or the Volvo group. In the circumstances, the Panel finds that it is most unlikely that anyone would have been misled by the website even before the disclaimer was added.

Ultimately the Panel found that Respondent had rights or legitimate interests in the domain. The Panel quickly made finding regarding the bad faith prong, noting that the domain was not registered or used in bad faith. As a result, the Panel DENIED the request for transfer.

Defend My Domain Commentary: The U.S. Supreme Court, in the 1947 ruling in Champion Spark Plug Co. v. Sander, 331 U.S. 125 (1947), found that a second-hand dealer may use the trademark of the manufacturer so long as the manufacturer is not identified with inferior qualities of reconditioned parts. A full and clear disclosure by the reseller that it sells reconditioned parts is necessary.

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