In the recent cybersquatting case of Omega SA v. Domain Admin1302921 (Nat Arb. Forum, February 24, 2010) a single member Panel was faced with a dispute over the domain www.omegawatchstore.com. Omega is the well known watch maker with rights to the mark OMEGA. They maintain a web site at www.omegawatches.com. Respondent registered the disputed domain on March 6, 2009 and failed to respond to the Complaint.

Paragraph 4(a) of the ICANN 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.

In addressing the first element, the Panel noted that Complainant established rights to the OMEGA mark pursuant to Policy ¶4(a)(i). The Panel found that the disputed domain merely added the descriptive phrase watch store, creating a confusingly similar domain to that of Complainant’s mark. The Panel found Complainant satisfied this element.

Moving to the second element, the Panel found that OMEGA set forth a prima facie case, but decided to review the evidence anyway. The Panel found that the Whois information for Respondent did not show that it was commonly known by the domain. Additionally, it was determined that the disputed domain sold counterfeit watches, which was not a bona fide offering of goods. The Panel found this element was satisfied by OMEGA as well.

For the last element, bad faith, the Panel explained that the selling of counterfeit goods constituted a disruption of OMEGA’s business. This attempt to redirect consumers for profit was evidence of bad faith.

The Panel found that OMEGA proved all three elements, and ordered the domain be TRANSFERRED.

In the recent cybersquatting decision of Hasbro, Inc. v. City of Media FA1302591 (Nat. Arb. Forum, February 25, 2010) a single member Panel was faced with a dispute over the domain www.monopolybingo.com. Hasbro is the famous game producer of the Monopoly board game, which has been played by approximately 750 million people worldwide. Habsro maintains to relevant web site, namely www.monopoly.com and www.hasbro.com. The MONOPOLY mark has been used in the U.S. since 1935 and Hasbro has been promoting its online version of the game for a few years. Respondent registered the disputed domain on November 10, 2008.

Paragraph 4(a) of the ICANN UDRP 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 Hasbro established rights to the mark MONOPOLY and that the disputed domain merely added the generic word bingo. The Panel found that the domain was confusingly similar to Complainant’s mark.

Moving to the second element, the Panel explained that Respondent is not commonly known by the disputed domain. Additionally, the disputed domain resolved to a wbe site which had third party links and advertisements. The Panel determined that Respondent profited from click through fees generated from these links. Therefore, the use of the site was not a bona fide offering of goods or services and the Panel found Complainant satisfied this element as well.

Finally, the last element, bad faith, the Panel found that some of the third party links displayed the MONOPOLY trademark and some of the links directly competed with the gaming services provided by Hasbro. The Panel believed this domain sought to disrupt Hasbro’s business by redirecting consumers to competitors.
        
For these reasons, the Panel found that Complainant satisfied all the elements and ordered the domain be TRANSFERRED.

In the recent cybersquatting case of Juicy Couture, Inc. v. Francisco Gibbs FA1296086 (Nat. Arb. Forum, January 13, 2009) a single member Panel was faced with a dispute over the domain www.JuicyCoutureWholesale.com. Complainant is the well known retailer of men’s, women’s, and children’s apparel, toiletries, paper products, and accessories.  Complainant purchased the JUICY COUTURE mark in 2003 and has continued use of the mark. Complainant maintains a web site at www.juicycouture.com. Respondent registered the disputed domain on November 6, 2009 and failed to respond to the complaint.

Paragraph 4(a) of the ICANN 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.

In addressing the first element, the Panel noted that Complainant’s multiple JUICY COUTURE trademark registrations sufficiently established their rights to the mark. The Panel found that the domain incorporated all of the JUICY COUTURE mark and merely added the generic word wholesale. For this reason the Complainant was able to prove the first element.

The Panel moved to the second element, noting that Complainant presented a prima facie case, shifting the burden to Respondent. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, Respondent was found to not have authorization to use the mark. The Panel further explained:

According to Complainant, the <juicycouturewholesale.com> domain name is being used in association with a website that offers counterfeits of Complainant’s products for sale without authorization.  Such use for the purpose of benefiting from the goodwill associated with Complainant’s JUICY COUTURE mark does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i).  Furthermore, Respondent’s use of the JUICY COUTURE mark in the domain name to operate a competing website for profit is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

For these reasons, Complainant proved the second element. Moving to the final element, the Panel again discussed the presence of the domain offering counterfeit goods. The Panel found this counterfeit use suggests the domain was registered for the purpose of disrupting Complainant’s business and thus was bad faith. Additionally, the offering of counterfeit goods was an attempt to profit by creating a likelihood of confusion. For these reasons, the Panel found this element was proven by Complainant.

Ultimately, the Panel found the Juicy Couture proved all three elements and ordered the domain be TRANSFERRED.

In the recent cybersquatting action JetPay, LLC v. JetyPayments FA1294887 (Nat. Arb. Forum, January 6, 2010) a single member Panel was faced with a dispute over the domain www.jetypay.com. Complainant offers credit card and check authorization processing services since 2000 and maintains a web site a www.jetpay.com. Complainant holds a trademark registration for the JETPAY mark. Respondent registered the disputed domain in December 2007 and failed to respond to the complaint.

Paragraph 4(a) of the ICANN 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.

In addressing the first element, the Panel noted that Complainant established its rights in the JETPAY mark pursuant to the Policy. Additionally, the Panel found that Complainant provided sufficient evidence of common law rights and secondary meaning for the mark dating back to 2000. A comparison of the mark with the disputed domain showed that Respondent merely added the letter “y” in the middle. As a result, the Panel found this to be confusingly similar.

Moving to the second element, the Panel explained that Complainant set forth a prima facie case, shifting the burden to Respondent. Interstingly the Panel found that although Respondent appeared to be commonly known by the disputed domain, it still lacked rights and legitimate interests in the domain. The Panel explained that Respondnet’s use of the domain, namely selling goods or services similar to Complainant’s was not a bona fide offering nor a legitimate noncommerical use. As a result, the Panel noted Complainant satisfied this element.

The last element, bad faith, was also favorable to Complainant. The Panel explained the disputed domain linked internet users to a website offering similar products and services as those of Complainant. This was found to be bad faith under the Policy. Additionally, the use of a confusingly similar domain name to attract users for profit, creates a strong likelihood of confusion, thus also being bad faith.

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

In the recent domain name dispute decision of Microsoft Corporation v. Doug Goodman FA1294422 (Nat. Arb. Forum, December 31, 2009) a single member Panel was faced with a dispute over 21 separate domains containing the mark BING. Microsoft needs no introduction and maintains many web sites for its business, the most relevant in this case being, www.bing.com. The disputed domains were registered during a three day period of June 24, 2009 through June 26, 2009. Respondent provided a response to the dispute, and gave some colorful defenses, which included:

1.    Respondent “created of formulated” the disputed domain names that had been missed by “Microsoft webmasters” until Respondent offered them to Complainant.
2.      The disputed domain names would bring value to the Complainant and the Complainant should pay for them.
3.      Respondent concedes that each of the names has BING in them and that BING is a pending mark
4.      The domain names were not registered in bad faith because Respondent had no intent to harm BING, Inc.
5.      Respondent does not use the disputed domain names to divert users from BING, Inc.
6.      Because of the value the disputed names will bring to Complainant, the case should be viewed as a case of reverse name highjacking

Paragraph 4(a) of the ICANN UDRP Policy requires Complainant to 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) 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, Microsoft noted that it does not have any registered BING marks yet, but did file for multiple BING related trademarks in March 2009. The Panel noted that Microsoft need not have a trademark registration and can show that it has common law rights to the mark. Microsoft presented evidence that it has continuously used the BING mark since May 28, 2008 and that a previous UDRP Panel found that it had established its rights to the mark. As a result, the Panel reviewed the disputed domains and found that they were confusingly similar to the BING mark. Interestingly, as the Panel explained, Respondent concedes that he intentionally put the BING mark in the domains and was fully aware of Microsoft’s interest in the mark. The Panel found Microsoft satisfied this element.

Moving to the second element, the Panel noted that Microsoft put forth a prima facie case, shifting the burden of argument to Respondent. The Panel noted that Respondent was not commonly known by the disputed domain. Additionally, the Panel found that four (4) of the domains led users to a web site with third party hyperlinks, some of which compete with Microsoft. The Panel found that this was not a bona fide offering of services. Regarding the remaining 17 domains, the Panel noted that they redirected the user to Microsoft’s BING.com web site. The Panel explained that Respondent admitted his primary intention in registering these domains was to sell them to Microsoft. Offering to sell the domains is also not considered a bona fide use. The Panel found that Microsoft satisfied this element.

Moving to the final element, bad faith, the Panel noted that the Respondent attempted to sell the domains for more then his out-of-pocket expenses. This factor is considered bad faith. Additionally, the four domains which landed on parked pages, also were a showing of bad faith, since they likely resulted in click-through fees for Respondent. The Panel found Microsoft satisfied this element as well.

The Panel quickly dispensed with Respondent’s reverse domain name hijacking argument and found that since Microsoft had proved all three elements, it ordered all 21 domains be TRANSFERRED.

In two recent domain name dispute decisions, Mattel, Inc. v. Bladimir Boyiko (Nat. Arb. Forum, FA1290718, Dec. 16, 2009) and Mattel, Inc. v. Domain c/o VO (Nat. Arb. Forum, FA1289791 Dec. 15, 2009) two separate three member Panels were faced with disputes over www.wwwhotwheels.com and www.hotwheels.org. Mattel is the well known toy company responsible for the HOT WHEELS die cast cars. HOT WHEELS were first sold in the U.S. in 1968. Complainant operates web sites at www.hotwheels.com and www.mattel.com. Both Respondents failed to provide a response to the complaints.

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 the first case referenced above, the Panel recognized Mattel’s HOT WHEELS mark and had  “no difficulty in finding that the Domain Name is confusingly similar” to the mark. Mattel presented a prima facie case, which included an argument that Respondent was not commonly known by the disputed domain. Additionally, as the Panel found, Respondent was using the domain for third party link click through fee generation.  Lastly the Panel noted that the domain was an example of typosquatting. The Panel found that Respondent was involved in other UDRP proceedings and therefore was engaged in a pattern of bad faith.

In the second mentioned case, the Panel also noted that the HOT WHEELS mark was well known throughout the world and that the domain was identical to the disputed domain. The Panel found that Respondent was not commonly known by the disputed domain and that Mattel had presented a prima facie case. Lastly the Panel found that Respondent’s inaccurate or incomplete contact information was evidence of bad faith. Additionally, Respondent’s failure to respond was evidence against.

Ultimately, the Panels found in favor of Mattel and ordered the domains be TRANSFERRED.

In the recent cybersquatting domain dispute of Frederick’s of Hollywood Group Inc. v. Blue Water LLC FA1290927 (Nat. Arb. Forum, December 3, 2009) a single member Panel was faced with a dispute over ten domains. Complainant, uses the marks FREDERICK’S OF HOLLYWOOD and FREDERICK’S related to its women’s clothing and lingerie business since 1946. Complainant maintains a web site at www.fredericks.com. Complainant has a specific third party affiliate program, allowing fees to be paid to authorized third parties for directing traffic to Complainant’s official site. The affiliate policy specifically restricts the use of misspelled domains. Respondent registered one of the domain in 2003 and the other nine in 2006. According to the decision, all of the disputed domain names resolved to Complainant’s web site.        

Paragraph 4(a) of the ICANN 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 began its analysis, noting that Frederick’s of Hollywood has sufficiently shown its rights to the marks. The Panel found that the domains contained minor changes which were not sufficient to distinguish them from Complainant’s mark.

Additionally, one or more of the following changes were made in each disputed domain name to the mark (1) the addition of one extra letter; (2) the transposition of two letters in the mark; or (3) the replacement of one letter in the mark with another.  The Panel finds that these changes are insufficient to overcome the confusing similarity that arises from using Complainant’s mark in the disputed domain name. 

The Panel found the domain were confusingly similar to Frederick’s marks.  

Moving to the second element, the Panel noted that Frederick’s presented a prima facie case, and despite the lack of response from Respondent, it would still review the record. Complainant contended that Respondent was not licensed to use the marks. Additionally, the Panel found that Respondent was not commonly known by the disputed domains. The Panel found that Respondent’s attempt at profiting from Complainant’s affiliate program using these typosquatted domains was not a bona fide use. Additionally, the act of typosquatting was found to be evidence of lacking rights or legitimate interests. The Panel found that this second element was satisfied by Complainant.

Moving to the final element, bad faith, the Panel noted that the disputed domains began to be registered nearly forty-five years after Frederick’s established trademark rights. The Panel explained that since the disputed domains resolved to Complainant’s own web site, that consumers would be confused as to affiliation or control. Additionally, since the domains contained typographical errors, this was evidence of bad faith. Lastly, by violating Complainant’s affiliate program, this was also evidence of bad faith.

Ultimately, the Panel found that Complainant satisfied all of the elements, and ordered all ten domains be TRANSFERRED.

In the recent domain name dispute decision of Hard Rock Cafe International (USA), Inc. v. Ronald Robinson FA1290206 (Nat. Arb. Forum, November 25, 2009), a single member Panel was faced with a dispute over the domain www.hardrockpoker.net. Hard Rock is the well known chain of Hotels, Casinos and Restaurants that are all over the world. They have been in business since 1978 and have trademark rights to the HARD ROCK mark. Hard Rock maintains several website located at www.hardrock.com, www.hardrockhotels.com, and www.hardrockpoker.com. Respondent registered the disputed domain in May 2009 and failed to respond to the disputed domain.

Paragraph 4(a) of the ICANN 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 element, noting that Complainant established rights in the HARD ROCK mark through multiple registrations of the mark. The Panel found that the disputed domain merely added the descriptive word poker, which was not different enough from the mark.

Moving to the second element, the Panel found that Hard Rock presented a prima facie case, shifting the burden to Respondent. Although the Respondent failed to respond to the complaint, the Panel chose to review the record anyway. The Panel found that Respondent was not commonly known by the disputed domain under Policy paragraph 4(c)(ii). Additionally, the Panel noted that the disputed domain resolved top show banner advertisements and links to gaming web sites. For this reasons, the Panel determined this was not a bona fide offering of goods and services under Policy paragraph 4(c)(i).

When discussing the last element, bad faith, the Panel noted that the domain was hosting links to advertisements for gambling web sites. The Panel inferred that Respondent was attempting to disrupt Hard Rock’s business by competing directly. Additionally, it was determined that Respondent was receiving click through fees from the links and profiting from the confusion.

Ultimately, the Panel found that Hard Rock proved all three elements and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited (FA1289603, Nat. Arb. Forum, November 25, 2009) a three member Panel agreed to transfer the domain www.lifeextensionfoundation.com to Complainant. Life Extension Foundation maintains web sites at www.lef.org and www.lifeextension.com. As their web site states:

The Life Extension Foundation is the world’s largest organization dedicated to finding scientific methods for addressing disease, aging, and death. The Life Extension Foundation is a non-profit group that funds pioneering scientific research aimed at achieving an indefinitely extended healthy human lifespan. The fruits of this research are used to develop novel disease prevention and treatment protocols.

 Our law firm represented Life Extension Foundation in this dispute, so we will refrain from providing our normal commentary. If you would like to know more details please read the decision (here).

In the recent domain name dispute decision of The Office Club, Inc. and Office Depot, Inc. v. Name Holding Company c/o Name Holding FA1287148 (Nat. Arb. Forum, November 16, 2009), a single member Panel was faced with a dispute over the domain www.officedpot.com. Complainant, Office Depot is the well known office products retailer and has used the OFFICE DEPOT mark since 1986. Office Depot maintains a website at www.officedepot.com. Respondent registered the disputed domain in May 2000 and failed to respond to this dispute.

Paragraph 4(a) of the ICANN 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.

In addressing the first element, the Panel noted that Complainant established rights in the OFFICE DEPOT mark. The Panel explained that the disputed domain differed from the mark only in that there was no space and the domain had removed the second letter “e” from the word. The Panel found this to be too close and thus confusingly similar to the OFFICE DEPOT mark.

Moving to the second element, the Panel noted that Office Depot presented a prima facie case, b ut still reviewed the record in consideration of the elements. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the disputed domain resolved to a web site where links to competitors were presented. This was considered to not be a bona fide offering of services. As a result, the Panel found Office Depot satisfied the second element.

The Panel analyzed the last element, bad faith, the Panel found that Respondent’s web site was disrupting Office Depot’s business by its competitive activity. Additionally, since Respondent was presumably commercially benefitting from the competing products and services, this was an intentional creation of likelihood of confusion.

Ultimately, the Panel found that Office Depot proved all three elements and ordered the domain be TRANSFERRED.