In the recent domain name dispute decision of Disney Enterprises, Inc. v. Gu Bei FA1284140 (Nat. Arb. Forum October 31, 2009) a single member Panel was faced with a dispute over 33 domains. Disney needs no introduction and appears to have done its homework on going after so many domains at once. Disney maintains a web site at www.disney.com. Respondent failed to respond 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.

A list of the 33 domains is provided below:
<disneycaliforniaadventure.com>, <disaneychannle.com>, <disanychannle.com>, <disentchannel.com>, <disenychanne.com>, <diseychanell.com>, <disnecanl.com>, <disnenchannel.com>, <disneychaael.com>, <disneychanele.com>, <disneycruiselines.com>, <disneyemployment.com>, <disneyhcannel.com>, <disneyswan.com>, <disneyvacationpackage.com>, <disnneychannnel.com>, <disnycanal.com>, <disnypornland.com>, <dissne.com>, <disyneychannel.com>, <wwdisneychannel.com>, <waltdisneycruises.com>, <toondineyindia.com>, <toondinsy.com>, <toondisneygames.com>, <toondisniey.com>, <toondisnney.com>, <toondysney.com>, <tooondisney.com>, <playhousedisneey.com>, <playhousedisneychannelasia.com>, <plaayhousedisney.com>, and <freedisneyporn.com>

In addressing the elements, the Panel quickly reviewed the facts and applied what appears to be an expected result. Generally, the Panel found that Disney had hundreds of registrations for its family of DISNEY marks and that the domains were confusingly similar to these marks. Most of the domains were misspellings of the marks. The Panel found that Disney made a prima facie case, with the burden shifting to Respondent. Additionally, the Whois information provided no support that Respondent was commonly known by the disputed domains. The Panel found that Respondent was using the domains to display advertising links to third party web sites. The Panel made a finding that Respondent was engaged in typosquatting, causing a finding of no rights or legitimate interests. The Panel also relied on this to infer bad faith, although the Panel also relied on the click-through fees from the links.

This was a pretty standard case, but was worth a note since they were able to get a decision on 33 domains. Ultimately, the Panel ordered all domains be TRANSFERRED.

In the recent domain name dispute decision of ABC Liquors, Inc. v. Texas International Property Associates – NA NA FA1266499 (Nat. Arb. Forum, July 28, 2009) a single member Panel was faced with a dispute over the domain www.abcfinewinesandspirits.com. Complainant is the well known retail store for all things alcohol, including beer, wine and liquor. ABC Liquors maintains a web site at www.abcfws.com. Respondent is the infamous domainer who has over 100 adverse decisions through the UDRP process. Anyone who has tried to find the Whois information using simple Whois search tools for domains owned by Respondent has likely hit the dead end known as Compana LLC. We have previously blogged about this Respondent, but it has been a while, so we figured this would be a good time to revisit a case with this Respondent.

On a procedural level, Respondent argued that it agreed to the transfer of the domain and provided three possible ways which a Panel could proceed which include:

(i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claims (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis or (iii)  to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right, or because there is some reason to doubt the genuineness of the Respondent’s consent.

The Panel pointed out that Respondent requested the Panel should follow choice number (1) for the following reasons:

The Respondent further states that the Panel should opt for the first alternative and grant the Complainant an immediate transfer without discussing the merits. The Respondent finds an expeditious decision to be more suited to the facts of the case, as both parties agree upon a transfer. Furthermore, the Respondent evokes arguments of judicial economy as well as Section 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), both of which, according to the Respondent, support an immediate transfer.

Interestingly Respondent requested that “it should be given the opportunity to prepare a more formal response if the Panel decides that further analysis is required.” The Panel rejected this request noting “the Respondent was already given twenty (20) days from the date of the commencement of the proceedings to submit such a response.  Had the Respondent wanted to appropriately and fully reply to the Complaint, it would have had more than enough time to do so.”

So the Panel reviewed the arguments presented and decided that it would go through the full analysis of the three elements.

However, alternatively, it may be decided that this expeditious approach would be a way for cybersquatters to avoid adverse findings against them. This is the reason why the Panel, in Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), stated that “the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.”

The decision by the Panel was fairly consistent with other Panels. The Panel found that the domain was confusingly similar and nearly identical to Complainant’s mark ABC FINE WINE & SPIRITS with the exception of the additional “s” on the end of the word wine. The Panel found that Respondent was not commonly known by the domain name and based on the typosquatting it inferred no rights or legitimate interests. Lastly, the Panel found that Respondent engaged in a pattern of bad faith registration and attempted to create a likelihood of confusion for commercial gain by using the domain.

Ultimately, the Panel ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Lorillard Tobacco Company, Lorillard Licensing Company LLC v. Bao Shui Chen (WIPO D2009-0743, July 16, 2009), a single member Panel was faced with a dispute over the domain www.lorilard.com. Complainants manufacture and sell cigarettes in the U.S and in other countries throughout the world. They own trademarks registrations for LORILLARD and maintain a web site at www.lorillard.com. Respondent failed to respond to this dispute.

Under the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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 has been registered and is being used in bad faith.

In addressing the first element, the Panel noted the disputed domain is identical to Complainants’ marks except for the omission of one of the L’s from the word. The Panel found the disputed domain was at least confusingly similar to the marks.

Moving to the second element, the Panel noted that (i) Respondent was not commonly known by the disputed domain, (ii) there was no evidence of authorization to use it, and (iii) has never asserted any rights or legitimate interests in the domain. Therefore, the Panel found the Complainants satisfied this element as well.

Moving to the final element, bad faith, the Panel explained that the disputed domain spelling of “lorilard” had no independent existence or meaning besides a misspelling of Complainants’ marks. The Panel quoted another decision dealing with typosqautting which stated as follows:

“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source” of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services.” (See Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568)

The Panel also found that the Respondent had a history of being found in bad faith with regards to registrations. For these reasons, the Panel found that Complainants satisfied all three elements and ordered the disputed domain be TRANSFERRED.

In the recent domain dispute decision of LD Products, Inc. v. Gary Lam c/o XC2 (Nat. Arb. Forum FA 1265729, July 2, 2009) a single member Panel was faced with a dispute over the domain www.4inkjetss.com. As explained in the decision, “Complainant is an Internet retailer for printer supplies and accessories, which markets its products under the 4INKJETS mark.  Complainant registered the 4INKJETS mark with the United States Patent and Trademark Office (“USPTO”) on September 20, 2005 (Reg. No. 2,998,115, filed August 3, 2004).  Complainant has operated its printer supplies business, and advertised its products under the 4INKJETS mark, since at least as early as 1999, and since that time Complainant has grown its business to US $27 million in sales in 2007 and US $34 million in 2008.” Complainant maintains a web site at www.4inkjets.com.

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 addressed the first element, noting Complainant’s trademark registration and significant common law rights in the mark dating back to 1999. The Panel found that the disputed domain was typosquatting, in that it merely added an additional letter s to the end of the top level domain.

The Panel then moved to the second element, wherein it acknowledged that Complainant made its prima facie case, shifting the burden to Respondent. Since Respondent did not reply to the complaint, the Panel accepts all reasonable allegations from Complainant as true. Therefore the Panel made the following observations and findings:

Complainant contends that Respondent is neither commonly known by, nor licensed to register, the disputed domain name.  Respondent’s WHOIS information identifies Respondent as “Gary Lam c/o XC2.”  Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name….Respondent is using the <4inkjetss.com> domain name to display links to third-party websites that are in competition with Complainant.  Complainant contends, and the Panel agrees, that Respondent is using the disputed domain name to collect click-through fees from those third parties, and thus the Panel finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

The Panel then moved to the third element, bad faith, and the Panel made the following findings:

The Panel finds that Respondent is using the <4inkjetss.com> domain name to disrupt the business of Complainant by offering links to competitors, and that this use is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii)….The Panel agrees that Respondent is collecting click-through fees as a result of its use of the disputed domain name, and therefore finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 

Ultimately, the Panel found that Complainant proved all the elements and agreed to order the TRANSFER of the domain.

In the recent domain dispute decision of Victoria’s Secret Stores Brand Management, Inc. v. Open Water Enterprises Limited c/o Louis S (Nat. Arb. Forum 1264419, June 29, 2009) a single member Panel was faced with a dispute over the domain www.victoriasecretangelcard.com. We know that you do not live under a rock so we will avoid discussing the fame of Victoria’s Secret. Victoria’s Secret maintains a web site at www.victoriassecret.com.

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.

In addressing the first element, the Panel noted that the domain contained all of Complainant’s mark VICTORIA’S SECRET with the addition of the descriptive phrase “angel card” on the end. There was no mention in the decision though that the disputed domain dropped an “s” from the domain name, although it generally has no significance in the domain dispute world. These descriptive words were not sufficient enough for Respondent’s use and thus Complainant satisfied the first element.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel explained that Complainant set forth a prima facie case, shifting the burden to Respondent. The Panel found that Respondent was using the domain to divert viewers to competitors of Victoria’s Secret for commercial gain. Further, the Panel found that the Whois information associated with Respondent showed Respondent was not commonly known by the domain name.

Moving to the last element, bad faith, the Panel stated as follows:

Respondent’s disputed domain name resolves to a website that displays links to third-party websites, some of which directly compete with Complainant’s business.  The Panel finds Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent presumably received payment for displaying links to Complainant’s competitors on the website which resolved from the confusingly similar <victoriasecretangelcard.com> domain name.  Thus, the Panel finds Respondent is attempting to profit from the goodwill associated with Complainant’s mark, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

As a result, the Panel found that Victoria’s Secret proved all three elements and agreed to TRANSFER the domain.

In the recent decision of Wells Fargo & Company v. JHN Inc. (Nat. Arb. Forum 1241102, Feb. 16, 2009), a single member Panel was faced with a dispute over the domain www.wellsfarfo.com. Complainant, Wells Fargo is the well known financial services company, which has been around since 1852, although it registered its WELLS FARGO mark (Reg. 779,187) on October 27, 1964. Wells Fargo maintains a web site at www.wellsfargo.com.
In the instant dispute the single member panel addressed (1) whether Respondent’s <wellsfarfo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark; (2) whether Respondent had any rights or legitimate interests in the <wellsfarfo.com> domain name; and (3) whether Respondent registered and used the <wellsfarfo.com> domain name in bad faith. Respondent registered the dispute domain back in 2001, and did not respond to the proceeding. 

In addressing the first prong of the ICANN UDRP policy ¶4(a)(i) the Panel noted that Wells Fargo sufficiently established its rights to the mark. Additionally, the Panel found that the disputed domain merely substituted the letter “f” for the letter “g” and added the top level domain “.com.” This effect of typosquatting, by merely creating a slightly misspelled domain, still creates a confusingly similar domain.

The Panel next moved onto the second prong of the ICANN UDRP Policy ¶ 4(a)(ii), whether the Respondent had any rights or legitimate interests in the domain. The Panel noted that once the Complainant made a prima facie case, the burden shifts to Respondent. Since Respondent did not respond to the dispute, some Panels have found the inquiry can stop there and the factor should be ruled in favor of Complainant. In this case the Panel still chose to review the evidence presented by Wells Fargo. The Panel made the following observations and findings (1) Respondent was not commonly known by the wellsfarfo.com domain; (2) Respondent was not authorized by Wells Fargo to use its mark in any manner; (3) the disputed domain resolved to a commercial site displaying links to Wells Fargo competitors in the financial industry; and (4) Respondent’s typosquatting all were justifiable reasons to find that Respondent did not have any rights or legitimate interests in the domain.

Lastly the Panel reviewed ICANN UDRP policy ¶4(a)(iii) regarding whether Respondent registered the domain in bad faith. The Panel found that the third party links on the domain, where Respondent received click-through fees was evidence of bad faith. Additionally, the Panel again pointed toward the typosquatting issues as further evidence of bad faith.

Ultimately, the Panel found Complainant satisfied all three factors and ordered the domain be TRANSFERRED.

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.

In the recent decision of Larry Flynt and LFP Casino IP and LFP Internet Group LLC v. Valery Nikiforov (Nat. Arb. Forum 1225389, November 24, 2008), a single member panel was faced with a dispute over www.laryflynt.com. For those of you who aren’t aware, he is the well known publisher of Hustler Magazine since the 1970′s. The decision explained that he does not own a trademark registration for his name but does offer a blog available at www.larryflynt.com, offers his main business at www.hustler.com and has several other registrations which incorporate his name.    

In examining the three part test provided by ICANN under the UDRP, the Panel first reviewed whether the domain was identical of confusingly similar. The Panel correctly noted though that the Complainant must first show that it has rights to the mark included in the disputed domain. “As Complainant has been famous since the early 1970s as the publisher of Hustler Magazine and as the subject of the movie The People versus Larry Flynt, the Panel finds that Complainant has common law rights to the LARRY FLYNT mark pursuant to Policy ¶ 4(a)(i)…In addition, the fact that Complainant has registered other marks that include the LARRY FLYNT mark suggest that Complainant has an interest and rights in the mark.”

The Panel then was required to assess whether the disputed domain was identical or confusingly similar. The Panel noted:

Respondent’s <laryflynt.com> domain name is confusingly similar to Complainant’s LARRY FLYNT mark because Respondent’s domain name incorporates the dominant features of Complainant’s mark, omitting one letter “r” and adding the generic top-level domain “.com.”  The Panel finds that such a minor misspelling and the addition of a generic top-level domain does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). 

The Panel found that the disputed domain was identical or confusingly similar and thus moved onto the next part of the test, namely whether the Respondent had any rights or legitimate interests in the domain. The Panel noted that the initial burden is on the Complainant but once a prima facie case is shown that burden shifts to the Respondent. The panel explained that since the Respondent did not respond to the complaint, a presumption is applied that Respondent has no rights or legitimate interests. However, the Panel went further and stated:

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <laryflynt.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the LARRY FLYNT mark, and the WHOIS information identifies Respondent as “Valery Nikiforov.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii)….Respondent is using the <laryflynt.com> domain name to resolve to an adult entertainment website not affiliated with Complainant’s business.  Respondent’s use of a domain name that is confusingly similar to Complainant’s LARRY FLYNT mark to redirect Internet users to a competing website is not a bona fide offering of goods or services under Policy ¶ (4)(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

The Panel found in favor of Complainant on the second prong as well and moved onto the last part of the test, namely, whether the Respondent registered and used the domain in bad faith. The Panel explained:

Respondent’s use of Complainant’s LARRY FLYNT mark in the <laryflynt.com> domain name to redirect Internet users to competing adult-entertainment sites suggests that Respondent registered the disputed domain name intending to disrupt Complainant’s business.  The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii)…Under Policy ¶ 4(b)(iv), Respondent is acting in bad faith when using a confusingly similar domain name to attract Internet users for commercial gain.  In this case, Respondent is using the <laryflynt.com> domain name to attract users to an adult-orientated website in competition to Complainant’s business.  The Panel infers that Respondent is after commercial gain through advertisements which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  The Panel finds that the disputed domain name is capable of creating a likelihood of confusion with Complainant’s mark and that Respondent has sought to profit from this confusion through click-through fees. 

Ultimately the Panel ruled in favor of Complainant and agreed to TRANSFER the disputed domain.

In the recent case of Alliance Bernstein LP v. Texas International Property Associates (WIPO D2008-1230, October 12, 2008), another Panel found that Texas International Property Associates (TIPA) had violated the UDRP. The Complainant, Alliance Bernstein, “is one of the largest publicly traded global asset management firms in the world, with offices in 47 cities in 25 different countries, providing diversified, global investment management services to institutional, high net worth and retail clients worldwide, and managing billions of dollars.” The Complainant maintains its web site at www.alliancebernstein.com. The disputed domain was slightly changed as www.allaincebernstein.com. The Complainant owns approximately eight (8) trademark registrations incorporating the ALLIANCE BERNSTEIN mark. The Complainant’s trademark rights dated back to as early as August 1, 2002. The disputed domain was registered after the Complainant’s rights had been established.

 The Panel noted that TIPA, like it had attempted in many previous disputes, responded to the Complaint by stating that it agrees to the requested relief requested by the Complainant and consented to the entry of an order transferring the domain name. TIPA further requested, based on judicial economy, that the domain should be transferred immediately without entry of findings.

 The Panel did not grant all of TIPA’s wishes, and instead completed the UDRP analysis. The Panel explained that the disputed domain was identical or confusingly similar to the Complaint’s mark since it merely transposed two letters, and was a classic case of typosquatting. The Panel also found that TIPA lacked any rights or legitimate interests in the disputed domain since it was using the domain for links to thrid party vendors, some of which were in competition with the Complainant, for commercial gain from click-through revenues.

 The Panel also explored the last portion of the UDRP test, whether TIPA acted in bad faith. The Panel noted that Complainant has shown that TIPA is a serial cybersquatter. The Panel explained that other previous Panels had rejected TIPA’s request to forgo the analysis and discussion of the merits of the case and instead made findings relative to the three prongs of the UDRP. The Panel quoted the ealrier decision of Usborne Publishing Limited v. Texas International Property Associates, WIPO Case No. D2007-1913, which stated “If panels simply comply with respondents’ surrender when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate ‘cybersquatting’ conduct might be perpetuated.”

The Panel also quoted the decision of Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, which stated “Respondent appears to be engaged in a pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits. The Panel believes that a discussion of this pattern of conduct may be helpful to other Complainants and WIPO Panels….If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent’s failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants.”

Ultimately, the Panel GRANTED the request for Transfer and ended the decision with some commentary of its own: “The Panel finds it regrettable that the Policy and Rules do not include a provision for an award of costs and attorneys’ fees in such cases.”