In the recent domain name dispute decision of ACCION USA Inc. and ACCION International v. Accion Now c/o Brian Accion (Nat Arb Forum FA 1278458, September 23, 2009), a single member Panel was faced with a dispute over the domain www.accionnow.com. ACCION USA is a nonprofit organization which helps small business get loans. ACCION USA has a trademark for ACCION in connection with its services dating back to 1983, with an issued registration in 2005. ACCION maintains a web site at www.accionusa.org. Respondent registered the domain on June 9, 2009 and failed to respond to the Complaint.

Paragraph 4(a) of the 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 prong and noted that the disputed domain contained all of ACCION’s mark. “Accordingly, the Panel finds that the <accionnow.com> domain name is confusingly similar to Complainant’s ACCION mark under Policy ¶ 4(a)(i) because none of these additions to Complainant’s mark sufficiently distinguish the disputed domain from Complainant’s mark.”

Moving to the second element, the Panel noted that ACCION made a prima facie showing, and that the burden shifted to Respondent. The Panel next reviewed the Whois information provided by Respondent and explained:

The WHOIS information for the <accionnow.com> domain name lists “Accion Now c/o Brian Accion.”  While this information suggests that Respondent may be commonly known by the disputed domain, no other information in the record corroborates this suggestion.  Therefore, the Panel finds that Respondent is not commonly known by the the <accionnow.com> domain name under Policy ¶ 4(c)(ii). 

ACCION’s business predominantly involves providing small businesses with loans. The Panel found that the disputed domain purported to allow individuals to apply for loans, which was a passing off of Complainant’s business. Additionally the Panel found that the disputed domain offered fraudulent loan opportunities as part of a phising scheme to obtain confidential information.  These phising attempts and the attempt to pass off as ACCION was not a bona fide offering of business services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

The Panel moved to the last element, bad faith, and found as follows:

The Panel finds that Respondent’s attempt to pass itself off as Complainant in order to financially gain by obtaining confidential information constitutes bad faith registration and use under Policy ¶ 4(b)(iv), as Respondent has created a likelihood of confusion as to Complainant’s affiliation with the disputed domain name…Moreover, the Panel finds that Respondent’s aforementioned phishing attempt to fraudulently acquire Internet users’ personal information represents further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 

Ultimately, the Panel found that ACCION met all of the elements and ordered the domain be TRANSFERRED.

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.

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 a recent domain dispute decision of N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields (Nat. Arb. Forum 1259266, June 16, 2009) a single member panel was faced with a dispute over www.nuvaringsideeffects.com. Complainant is the owner of the popular contraceptive device and NUVARING and owns federal trademark registrations for same. Complainant maintains a web site at www.nuvaring.com. Respondent is a personal injury law firm and maintains a web site at www.injurygroup.com. Complainant contends that the disputed domain is being used by Respondent to confuse the public and tarnish the goodwill and reputation of Complainant. The Complaint explains that when a user goes to the disputed domain it seeks to solicit customers to file lawsuits against Complainant resulting from use of the NUVARING. Specifically, Complainant contends the disputed domain includes headings such as “NuvaRing Class Action Information,” “NuvaRing Side Effects – NuvaRing Law Suit,” “NuvaRing Warnings,” “NuvaRing Blood Clot,” NuvaRing pulmonary Embolism,” and “NuvaRing Lawsuit.” Respondent contends that it is using the domain in connection with a bona fide offering of goods and services, prior to notification of any dispute. Further, Respondent claims it is using the domain in a nominative fair use manner for referring to Complainant’s and their NuvaRing product. Both parties provided additional submissions which expounded on their original arguments.

Under the ICANN UDRP Policy paragraph 4(a) 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 interest 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, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found the domain contained Complainant’s entire mark and merely added generic words such as “side” and “effects.” This element favored transfer of the domain to Complainant.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant must first establish a prima facie case. The Panel explained:

Complainants’ evidence establishes that (i) Respondents are not licensees of Complainants, nor have they received permission or consent to use Complainants’ trademark; (ii) Complainants have prior rights in that trademark which precede Respondents’ registration of the Domain Name; and (iii) Respondents are not commonly known by the trademark.  Complainants have thus made a prima facie showing that the Respondents have no legitimate rights or interest in the domain name.

The burden then shifted to Respondent and the Panel made a finding that “Respondents prove[d] that they are using it to offer legal services in connection with consumers who may have been harmed by Complainant’s product and to provide[d] information to the public about Complainant’s product.” The Panel also reviewed and applied the standard for nominative fair use argued by Respondent, and as established by the 9th Circuit Court of Appeals case of  New Kids on the Block v. News Am Publ’g. Inc., 971 F.2d 302, 308 (9th Cir. 1991).  The New Kids case standard is as follows:

(1) The product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark may be used as is reasonably necessary to identify the product or service; and (3) the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

The Panel found that Respondent did establish its nominative fair use of the mark per appellate court precedent. The Panel also addressed Complainant’s assertion of initial interest confusion, noting as follows:

This Domain Name contains nothing to suggest that the related website would be sponsored or endorsed by Complainants or anyone else seeking to promote the NuvaRing product.  The message in the Domain Name tends in the opposite direction.  The plain meaning of the words “NuvaRing side effects” is much closer to “the NuvaRing may be dangerous or have risks associated with it” than to the kind of message that would be offered by its manufacturer.  A reasonable consumer would not assume that a website by this name would be sponsored by the manufacturer of the named product.  A description of “side effects” might be included in a website sponsored by the manufacturer, but “side effects” would not likely be in the name of the website itself.

The Panel also found that Respondent’s use of a disclaimer on the web site was further evidence of their legitimate rights and interests since it immediately and sufficiently informs users of the non-affiliation. Lastly, Complainant cites to three prior domain decisions where an attorney was using domains to promote lawsuits against AIG. (See American International Group, Inc. v. Debra Speyer, FA 422815 (Nat. Arb. Forum Apr. 7, 2005), American International Group, Inc. v. Debra Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005), and American International Group, Inc. v. Bruce Levin, FA 591254 (Nat. Arb. Forum Dec. 21, 2005)). The Panel distinguished all these cases since nominative fair use was not asserted by respondent in any of the cited cases and because “the fact that the Respondents’ use of the Domain Name here may not fit within the provisions of Policy ¶ 4(c)(iii) does not preclude them from establishing their rights or legitimate interest in some other fashion, which they have.”

Ultimately, the Panel found that Claimant did not satisfy the second element and DENIED the request for transfer. The Panel did not address the bad faith element in light of the failure to prove the second element.

In the recent decision of CHRISTIAN DIOR COUTURE v. Kianna Dior Productions (WIPO D2009-0353, May 24, 2009),  a single member Panel was faced with a dispute over the domain www.kianndior.com. Complainant, famous French fashion house known for fragrances, clothing and other fashion accessories and maintains a web site at www.dior.com. Respondent, is a well known pornstar working in the adult entertainment industry for more then a decade and also maintains an additonal web site at www.kiannaxxx.com. The Panel noted that Christian Dior must prove three elements under the ICANN UDRP policy section 4(a) which include: “(i) the domain name is identical or confusingly similar to a trade mark 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.”

In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark(s), the Panel first noted there was no doubt that Complainant had trademark rights in DIOR, CHRISTIAN DIOR and MISS DIOR. Complainant argued that since the domain wholly incorporates the DIOR mark, that it would be sufficient to establish confusing similarity. Interestingly, the Panel stated:

This Panel is of the opinion that the unqualified statement that confusing similarity exists if a disputed domain name completely incorporates the relevant trademark does not, without more, prove dispositive in the present case. For example, the Complainant’s trademark DIOR could be wholly incorporated in the hypothetical domain name <diorama.com>, however the word “diorama” has, in English at least, an independent dictionary meaning which dispels any confusion with DIOR. The trademark NIKE is incorporated within, for example, the domain name <nikethamide.com>, a drug used as a respiratory stimulant. In such cases, there may very well be no confusing similarity. Added matter invites a contextual comparison on a case by case basis. Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity.

Ultimately though, the Panel concluded that Complainant had established this element and that the domain was confusingly similar to the Complainant’s DIOR mark.

Moving to the second element, whether Kianna Dior had any rights or legitimate interests in the domain, the Panel noted that Complainant established a prima facie case. Once a Panel makes that determination, the burden of proof switches to Respondent. The Panel relied on evidence and arguments presented by Respondent that Respondent’s company, Kianna Dior Productions was an active corporation which registered the domain. The Panel in analyzing the facts made the following finding:

Paragraph 4(c)(ii) of the Policy requires only that the Respondent has been commonly known by the domain name. The Panel finds that by virtue of use since 2001, the Respondent (to use the words of paragraph 4(c)(ii), “as an individual, business, or other organization”) has provided evidence of being commonly known in her industry and by her audience by the domain name. If the Respondent is infringing the Complainant’s trademark rights, the Complainant may initiate infringement proceedings in an appropriate court. But in this case, the Panel has applied the Policy to the facts, and that includes paragraph 4(c)(ii). The Panel finds that the Respondent has on balance discharged the onus which fell to it under paragraph 4(a)(ii) of the Policy and accordingly finds that the Complainant has in the present administrative proceedings failed to establish the second limb of its case.

As a result, the Panel declined to review the final bad faith element, since Complainant failed to establish the second element. The Panel DENIED Complainant’s request for transfer.

DefendMyDomain Commentary: But See our previous posting on June 8, 2009, “Jim’s Dead, But His Music and Persona Only Live On In One Jim Morrison Domain” wherein the JimMorrison domain was Transferred.

In the recent decision of Rotobrush International LLC v. Vacbrush a/k/a Ming Liu (FA 1253370, Nat. Arb. Forum May 8, 2009) through the National Arbitration Forum, a single member panel was faced with a dispute over four domains which included www.real-rotobrush.com, www.used-rotobrush.com, www.rotobrush-online.com, and www.rotobrush.org. Complainant, Rotobrush is in the business of manufacturing and distribution of air duct cleaning systems. They maintain a website at www.rotobrush.com. Rotobrush has a trademark for ROTOBRUSH, (Reg. No. 2,021,581) in connection with those goods since at least 1996.  Respondent registered the disputed domains in July and August of 2008. The Respondent did not mount a defense or respond in any manner 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.

The Panel began its analysis with the first prong, namely, whether the domain is identical or confusingly similar to the Complainant’s mark. The Panel found that all of the disputed domains contained Complainant’s entire ROTOBRUSH mark, even though some of them included generic terms such as real, used, or online in addition to the full domain name. Regardless, the Panel found that Complainant satisfied this element.

The second element, whether the Respondent had any rights or legitimate interest in the domains, was not such a clear path for Complainant. The Panel noted that Complainant must initially make a prima facie case, and if established the burden of proof shifts to the Respondent. The Panel stated:

Complainant has failed to allege any facts whatever in support of its bald assertion that Respondent lacks rights to or legitimate interests in the disputed domain names, including as to the specifics of Respondent’s use or nonuse of the domain names.  Thus we are forced to conclude that Complainant has failed to make out a prima facie showing under Policy ¶ (a)(ii). 

As a result, the Panel found that Complainant failed to prove up its second element. Although a Complainant must prove up all three elements, the Panel still decided to analyze the final prong, whether or not the domains were registered and used in bad faith. The Panel made the additional observations and findings:

Complainant has failed to allege any facts to establish that Respondent’s registration and use of any of the domain names here in issue was or is in bad faith.  The mere assertion of bad faith without any supporting evidence is insufficient to justify a finding of bad faith registration and use of contested domain names under Policy ¶ 4(a)(iii).

Ultimately, the Complainant failed to satisfy the three elements of proof necessary for a UDRP case and the Panel DENIED the request for transfer.

DefendMyDomain Commentary:
This case illustrates that the Complainant must establish facts to support Respondent’s lack of legitimate interests and facts to support Respondent’s bad faith. Raw, unsupported legal conclusions, which mimic the UDRP elements are insufficient to meet a Complainant’s burden of proof.

In the recent case of Hogrefe AG v. Ney Limonge D2008-1206, (WIPO October 3, 2008), a UDRP Panel had to provide a Rorschach review of whether www.RorschachOnline.com should be transferred. If you don’t already know who Hermann Rorschach is, the Panel provided a good summary as follows:

The Rorschach inkblot test … is a method of psychological evaluation. Psychologists use this test to try to examine the personality characteristics and emotional functioning of their patients. The Rorschach is currently the second most commonly used test in forensic assessment, after the MMPI, and is the second most widely used test by members of the Society for Personality Assessment. It has been employed in diagnosing underlying thought disorder and differentiating psychotic from nonpsychotic thinking in cases where the patient is reluctant to openly admit to psychotic thinking.

Complainant in the case, is the owner of numerous trademark registrations for RORSCHACH both in the U.S. (Reg. No. 2,276,256) and abroad. “Complainant is a publishing house specializing in books and magazines relating to medicine, including psychology. Complainant asserts that it is ‘owner of the copyright of the so called RORSCHACH Ink Blot Test, a psychological test with ink blots.’” Respondent is a clinical psychologist, who is using the disputed domain which “offers interactive online software designed to facilitate administration by professional psychologists of the Rorschach test.”

The crux of the decision centered around supposed numerous and unenforced trademark usage by many across the Internet and publishing world of the word “Rorschach.” As Respondent explained:

Respondent asserts that “Rorschach” is freely used by psychologists worldwide as a common term in the science of psychology and that a book search at “www.amazon.com” using the keyword “Rorschach” as part of the title yielded not less than 9,333 different books, the “vast majority related to Rorschach Test belonging publishers and authors that does not hold the alleged copyright .”

The Panel found that the use of the disputed domain was identical or confusingly similar to Complainant’s trademark. In determining the second aspect of UDRP decisions, rights or legitimate interests, the Panel took careful note of the use of the trademark on the Internet.

Although there are a few Internet references using “Rorschach” that include a notice of trademark registration (i.e., “®”), the vast majority do not. The Merriam-Webster Online Medical Dictionary definitions for “Rorschach test” (“a projective psychological test that uses a subject’s interpretation of 10 standard black or colored inkblot designs to assess personality traits and emotional tendencies – called also Rorschach, Rorschach inkblot test”) and “Rorschach” (“of, relating to, used in connection with, or resulting from the Rorschach test”),1 do not indicate that the terms are the subject of trademark rights or claims. The Panel considers it established that the term “Rorschach” is widely used in the field of psychology to refer to a test initially developed by Hermann Rorschach. The term is not predominately used as a trademark identifier associated with goods or services of Complainant.

As a result, the Panel found that the Respondent has a legitimate interest in the domain name, and explained there was no need to address the issue of bad faith. Ultimately, the Panel DENIED Complainant’s request for transfer.