It is always interesting when a large media outlet writes up an article about legal topics, but it is even more interesting when they write one up about cybersquatting. The New York Times published an article today about the political environment where cybersquatters go after domains containing candidates’ names. For an interesting read of the article, click here. The article is laden with examples of political names and associated domains, but lacks any substance related to the law. It does not even mention the use of the UDRP. This is the media’s attempt at telling the masses about this topic.
Posts Tagged ‘Surname’
In the recent domain name dispute decision of Brayden T. Quinn a/k/a Brady Quinn v. Randy Darr FA1267051 (Nat. Arb. Forum July 20, 2009) a single member panel was faced with a dispute over the domain www.bradyquinn.com. Many of you may know the Complainant as the famous Notre Dame quarterback (now playing for the Cleveland Browns).
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.
In addressing the first element, the Panel noted that Complainant has filed for a service mark in April 2009, with rights dating back to December 2007. The Panel noted that since the the mark was only still subject to an application, a review of the common law rights standards would apply. The Panel found that “it is not inconceivable that the service mark already had acquired secondary meaning shortly after the first use of the service mark, as a result of the media attention and fame of Complainant.” The Panel found that Complainant established sufficient common law rights and that the domain was identical to Complainant’s mark.
In addressing the second element the Panel found that Respondent is not commonly known by the disputed domain as shown in the Whois records. Additionally, the Panel noted:
Respondent is using the <bradyquinn.com> domain name to redirect Internet visitors to a parking site with links advertising products related to Complainant. The Panel finds that Respondent’s use of the <bradyquinn.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel also included discussion of an offer to sell the domain for $2,000.00. The Panel explained, “The Panel is of the opinion that this is evidence that Respondent has foregone any claim to rights or legitimate interests in the <bradyquinn.com> domain name pursuant to Policy ¶ 4(a)(ii).”
The Panel found Complainant satisfied this element as well, and moved to the final element, bad faith. The Panel explained:
As Respondent’s registration of the disputed domain name predates Complainant’s common law rights, the Panel finds that there is no possibility that Respondent could have registered, the <bradyquinn.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii)….The fact that Complainant’s accomplishments as a sportsman have been featured in national media before the registration of the disputed domain name does not evidence bad faith registration, since Complainant does not adduce conclusive evidence that its unregistered personal name was being used for trade or commerce at the date of the registration of the disputed domain name, let aside that the Complainant established common law trademark rights in the name predating the registration of the disputed domain name.
As a result, the Panel found that Complainant failed to establish the final element, and DENIED an order to transfer the domain.
DefendMyDomain Commentary: It is unclear why the Panel did not address the offer to sell factor in the bad faith section. This is another example of the unsecure world of famous persons names and domain disputes. We question again, knowing the facts of the case, why Complainant didn’t choose three Panelists.
In the recent domain dispute decision of Sigourney Weaver v. Stephen Gregory a/k/a ‘THIS DOMAIN NAME IS FOR SALE’ (Nat. Arb. Forum 1256394, May 22, 2009) a three member Panel was faced with a dispute over www.sigourneyweaver.com. We all know who Sigourney Weaver is, so we won’t waste time with her list of credits. (Although she deserves an extra nod of appreciation for the Alien movies) Respondent, purportedly located in the Philippines, registered the disputed domain in 1999, nearly 20 years after her emergence in the entertainment world. Weaver argued that the disputed domain was being used to automatically forward to a pornographic web site located at www.clubpink.com which then takes the user to www.nymphogirls.com. Weaver also argued that Respondent was using the domain to sell it for profit, based upon the Whois information which stated “Stephen Gregory ‘THIS DOMAIN NAME IS FOR SALE.’”
Under the ICANN UDRP policy Complainant must prove (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 Weaver did not have a federal registration for her name and thus reviewed the evidence to determine if she possessed common law rights. The Panel found that her career has made her sufficiently famous and that she demonstrated secondary meaning to establish common law rights. Thus the Panel found that the domain was identical to Weaver’s rights in the mark.
Moving to the second element, the Panel noted that Weaver made a prima facie case that Respondent lack any rights or legitimate interests. This was based on the fact that Respondent was not commonly known by the disputed domain name, as stated earlier regarding the Whois information. Additionally, since the domain was being linked to pornographic material, this use was not in connection with a bona fide offering of goods and services. The Panel noted that Respondent stopped the forwarding to the pron web sites after receiving a cease and desist from Complainant. Lastly, the Panel found that since Respondent was offering to sell the domain this showed a lack of legitimate rights or interests in the domain.
Moving to the final element, bad faith, the Panel noted that Respondent had been involved in numerous prior analogous UDRP proceedings and that he engaged in a pattern of bad faith registration and use. Additionally, the Panel noted that the pornographic nature of the redirected web site also satisfied the bad faith element.
Ultimately, the Panel ruled to TRANSFER the disputed domain.
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 the case of Sony Kabushiki Kaisha aka Sony Corporation v. Sony Holland, Case No. D2008-1025 (WIPO October 2, 2008) a three member panel was faced with an decision regarding the disputed domain www.sonyholland.com. In this case Sony, the well known manufacturer of audio video and technology products, which operates a website at www.sony.com, objected to the use of the disputed website contending that it violated its trademark rights and the policies set forth in the UDRP. The facts of this case are interesting though, as the Respondent claims to be known by the name “Sony Holland.” The Respondent’s full legal name is “Sonia Holland”, although she claims to be known by “Sony”. The decision noted that the disputed domain is “used for the promotion of the Respondent’s music career, and prominently features the Respondent’s image. The Respondent’s website also contains links to other web pages, including a contact information page, and a page dealing with the sale of CDs.”
The three member Panel immediately acknowledged that the first prong of UDRP decisions, namely whether the disputed domain is identical or confusingly similar to the Complainant’s mark. The crux of the opinion centered on whether or not the Respondent had any rights or legitimate interests in the domain. The Panel observed:
The Panel must approach the claim to a right or legitimate interest on the “commonly known by” ground, with considerable caution. Such claims are very easily made, and of course if they are upheld, that is sufficient on its own to defeat a complaint under the Policy. The Panel agrees with, and respectfully adopts, the approach followed by the panel in Banco Espirito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890, where the panel said:
“Since a ‘legitimate interest’ is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has been “commonly known by” the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been “commonly known” by the domain name. See e.g., Red Bull GmbH v Harold Gutch, WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by the nickname “Red Bull” since childhood because Respondent did not provide any evidence to support the contention. See also, e.g., DIMC Inc., & The Sherwin-Williams Company v. Quang Phan, WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by the nickname “Krylon” due to absence of evidence when alleged nickname was adopted and how it was used.”
The Panel went further to explain:
In the end, the Panel is of the view that the Respondent has produced just sufficient evidence in support of her “commonly known by” claim, to meet the requirements of the Banco Espirito Santo S.A. test referred to above. Her claims are not implausible, and in an administrative proceeding such as this, where there is no discovery of documents and the Panel does not have the benefit of seeing the parties’ cross-examined, the Panel has little basis for rejecting them.
Ultimately the Panel found that the respondent did have rights or a legitimate interest in the domain. Regardless, the Panel still analyzed the third and final prong, bad faith. The Panel explained:
The Panel accepts the Respondent’s submission that an Internet browser arriving at the Respondent’s website, looking for a website of the Complainant, would immediately appreciate that he or she was in the wrong place. This is not a case where the disputed domain name resolves to a landing page, where the respondent derives “click-through” revenue from site visitors who arrive at the respondent’s website and then “click –through” to sponsored third party sites. In such cases, the respondent clearly benefits from the increased web traffic generated by what is commonly referred to as “initial interest confusion”, arising out of the identity or confusing similarity of the disputed domain name to the complainant’s trade mark – a proportion of browsers who mistakenly arrive at such a landing page site will click on the links to third party sites, and thus provide the respondent website operator with additional revenue.
As a result of these findings, this three member Panel DENIED the Complainant’s request for transfer.
In a scathing opinion, another panel has required the transfer of a domain from Texas International Property Associates. In Dr. Pamela Peeke v. Texas International Property Associates-NA NA, FA1216216 (Nat. Arb. Forum September 8, 2008), the panel found that Respondent’s use of PamelaPeeke.com violated the UDRP policy. Peeke is a purportedly “well-known physician, author, speaker and media personality.” While the Complainant did not have a registered trademark, the panel still found that Complainant established secondary meaning as a source identifier and had “developed its reputation on a national level in the United States since the early 1990’s.” In the first of many scathing comments, the panel observed, “We find Complainant’s assertions persuasive and Respondent’s assertion of ignorance of Complainant, particularly in light of those undenied assertions, patently incredible.”
Regarding the Rights or Legitimate Interests factor, The Respondent did not deny allegations that disputed domain name displayed “hyperlinks to advertising of health-related products and services that may be of interest to Complainant’s customers” and received “click-through fees from these links.” Ultimately the panel found that there was “neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”
Interestingly the following statement by the panel served as the second scathing commentary/finding.
In its defense, Respondent alleges that the hyperlinks posted to its website resolving from the <pamelapeeke.com> domain name are the responsibility of a contract site manager, and that Respondent has no control over the posted hyperlinks. We find this position-taking disturbingly disingenuous.
For the bad faith prong of the analysis, the panel found the Respondent’s assertion regarding it lack of knowledge of the Complainant to be “incredible in light of the distinctive character of Complainant’s name and the undenied lengths to which Complainant has gone over a long period of years in promoting its profession and business under this mark.”
Since the panel found all three elements proven, the domain transfer request was granted.