In the recent decision of Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009) a three member Panel was faced with a dispute over the domain www.shoeland.com. Complainant, is a footwear retail store and maintains a web site at www.shoeland.net. Complainant claimed use of the mark SHOE LAND since March 1, 1997 and has a Federal registration for the mark since April4, 2006. Respondent replied to the ICANN UDRP complaint noting that they are a business who regularly registers domains with intrinsic value and generates revenue from pay-per-click advertising links. The disputed domain was registered in 1998.

As the Panel noted, 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 began with the first prong, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found that complainant had sufficient rights under the Policy ¶4(a)(i), but noted as follows:

In its Complaint and Additional Submission, Complainant also asserts and provides evidence of its rights in the SHOE LAND mark through its continuous use of the mark in commerce since at least as early as March 1997. Nevertheless this use of the mark remained local, and does not provide the mark with secondary meaning. As a result, the Panel finds that Complainant does not have sufficient common law rights in the SHOE LAND mark under Policy ¶ 4(a)(i), dating back to March 1997. 

Regardless the Panel found Complainant had satisfied the first prong. Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant failed to establish a prima facie case. Respondent argued, and the Panel agreed as follows:

Complainant does not have common law rights dating back as far as September 1998, when Respondent registered the disputed domain name, because Complainant’s SHOE LAND mark had not acquired secondary meaning by that time.  Respondent contends that the evidence put forth by Complainant fails to demonstrate that Complainant was well-known yet outside of the Orlando, Florida area, or that Complainant had spent much money promoting the SHOE LAND mark.    

Respondent also argued that it registered generic domain names as a business practice, which would satisfy the rights or legitimate interests section of the policy. The Panel agreed with this concept as well finding that “registering such a generic domain name is a business practice that confers upon the practitioner rights or legitimate interests in that domain name. As a result, the Panel finds that Respondent established rights in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”

Moving to the last prong, whether the domain was registered and used in bad faith, the Panel explained that since Respondent had proved it had rights or legitimate interests in the domain at the time of registration, then the registration could not have been in bad faith. The Panel explained:

The Panel finds that a respondent is free to register a domain name consisting of common terms, unless he is aware or should have been aware of the secondary meaning those common terms had at the time of the registration. Since the disputed domain name contains such common terms and as there was no secondary meaning at the time of the registration, the Panel is of the opinion that Respondent did not register  the <shoeland.com> domain name in bad faith under Policy ¶ 4(a)(iii).

The Panel also addressed a request by Respondent to find Reverse Domain Name Hijacking. The Panel explained that since Complainant provided evidenced of active promotion of the SHOE LAND mark since 1997 there could not be reverse domain name hijacking. The Panel further explained that reverse domain name hijacking requires bad faith on the part of Complainant and that none was present.

For an interesting counter perspective on the issue of reverse domain name hijacking, read the dissenting opinion by one of the Panelists, who believes this was a clear case of reverse domain name hijacking. He argues that the Complainant had no reasonable basis for arguing bad faith The single dissenting Panelist also chastises the Complainant for revealing emails and facts that the parties engaged in settlement discussions and sale of the domain negotiations prior to the dispute, despite the fact that those communications were labeled “Confidential-For Settlement Purposes Only.”

Ultimately, the Panel DENIED Complainant’s request for transfer and DENIED Respondents request for reverse domain name hijacking.

In the recent decision of Norbert A. Aleman v. Crazygirls.com/Vertical Axis, Inc., WIPO Case No. D2008-1252, (October 29, 2008), a three member Panel was faced with a dipsute over the domain www.crazygirls.com. The Complainant claimed ownership of a registration for the mark CRAZY GIRLS, registered on November 20, 2001, for services of a live stage show, based on a first use date of August 1986. The Claimant maintains a domain at www.crazygirlslasvegas.com.  The disputed domain was first registered on August 8, 2001, and at the time of the dispute, was resolving to a generic landing page with automatically generated links.

The three member Panel found that the domain was identical or confusingly similar, regarding the first prong of the UDRP/ICANN policy. Regarding the second prong of the Policy, namely whether the Respondent has any rights or legitimate interests in the disputed domain, the Panel made the following observation:

[T]here is no evidence of any of the following circumstances: (i) that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding to the disputed domain name; (ii) that the Respondent is authorized or licensed by the Complainant to use the CRAZY GIRLS trademark or to register and use the disputed domain name; (iii) that the Respondent has been commonly known by the disputed domain name.

The Panel also analyzed Respondent’s arguments that the domain was made up of two generic words and Complainant’s complaints about the Respondent’s use of pay-per-click advertising links, but ultimately the Panel found the “legitimate rights” factor to be in favor of Complainant.

Moving on to the last prong of the Policy, whether or not the Respondent registered and used the domain in bad faith, the Panel noted that Respondent’s use of a privacy service for the registration data does not, by itself, establish bad faith. In fact, the Panel noted there are legitimate reasons for using such a service.

Addressing other aspects of bad faith, the Panel also explained about:

Further, the Complainant has not identified any source of actual confusion between the Respondent’s use of the disputed domain name and the Complainant’s trademark, such as links within the Respondent’s website to the Complainant’s show, or shows of its competitors. The Complainant states that it has continuously used the CRAZY GIRLS trademark since August 1986 to brand a stage show and review running in Las Vegas, and has owned the trademark registration since 2001. It has not provided any evidence of the extent of the goodwill or reputation of its trademark beyond Las Vegas, such as its own Internet use of its trademark, that might assist the Panel in inferring that the Respondent knew of or intended to profit from the CRAZY GIRLS trademark. The Complainant does not explain when it first learnt of the Respondent’s registration of the disputed domain name, or explain its inaction in defending its trademark during the period of nearly seven years since the Respondent’s registration.

Ultimately, the Panel DENIED Complainant’s request to Transfer.

In the recent case of NAOP, LLC, v. Name Administration, Inc. (BVI) (Nat. Arb. Forum. 1220825, October 7, 2008), a three-member Panel was faced with the interesting task of determining when applicable trademark rights existed for the purposes of UDRP decisions. Respondent states to be in the business of acquiring domain names that use common terms, which in the instant case were “jump” and “pro.” The Complainant, North American Outdoor Products, LLC, claims ownership to a trademark for JUMPRO, for exercise and recreational trampolines and replacement parts therefor. The mark was registered on July 18, 2006, with the application first being filed on October 2, 2003. The decision noted that the registration claims a first use in commerce date of April 2003. The disputed domain, www.jumppro.com was registered on January 19, 2004.

The Panel, in reviewing the first prong of the UDRP test, whether the domain in dispute is identical or confusingly similar to the Complainant’s trademark, acknowledged that the domain and the mark were identical or confusingly similar. However, the Panel explained the “Complainant had not shown it had rights in the name at the time the domain name was registered.” (Compare domain registration in January 2004 and mark registration in July 2006).

The Panel reviewed the evidence and explained:

In the instant case Complainant has submitted no evidence whatsoever to demonstrate use of the mark in commerce prior to the time Respondent registered the domain name. All that Complainant has done is assert (without providing a copy to the Panel) that it provided a specimen to the USPTO and claimed use in commerce when it filed its application in 2003. This falls far short of the required evidence.

The Panel went further to rely on prior decisions and noted:

This Panel agrees with the recent decision of the panel in Xoft Inc. v. Name Administration Inc. (BVI) (Nat. Arb. Forum Apr. 25, 2008) which stated: “The relevant time for the determination of whether or not the complainant has rights in a mark is the time that respondent registered the disputed domain name. …The question for this panel is what rights had Complainant demonstrated in the mark XOFT on that date?” In the Xoft case, as here, the complainant had filed an intent-to-use trademark application prior to the time that the domain name was registered, but that panel held, as we do, that the date of registration does not relate back to the date that the application was filed unless there is clear evidence of use in commerce sufficient to create a secondary meaning in the mark.

As a result the three-member Panel found that the Complainant did not satisfy the first portion of the UDRP Policy. The Panel also declined to find that the Complainant engaged in reverse domain name hijacking. Ultimately, the Panel DENIED the request for transfer.

DefendMyDomain Commentary:
Although not discussed by the Panel, a more detailed investigation into the trademark registration records available at www.USPTO.gov reveal that the trademark specimen filed in the USPTO by Complainant shows the packaging of the goods to be labeled as JUMPPRO instead of JUMPRO (the registered mark). It is not clear if a mistake was made during the registration process. This point is of interest because when one visits www.jumpro.com, the link leads to a marketing company web site (vertically integrating merchandising, advertising and marketing). The Complainant and the marketing company appear to have nothing to do with each other.