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Posts Tagged ‘Whois data’

No Party for PARTY BOOTHS!

Friday, August 12th, 2011

In a recent domain name dispute decision, Party Booths, LLC v. Cornelius Angsuco (Nat. Arb. Forum, FA1398420 August 10, 2011) a single member panel was faced with a dispute over the domain www.envypartybooths.com.  Complainant, Party Booths, LLC, owns the PARTYBOOTHS mark which it uses in connection with its photo booth rental services. Complainant also maintains a website at www.partybooths.com. The disputed domain was registered on September 9, 2009, prior to the January 13, 2010 filing date of Complainant’s trademark application.  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.

In addressing the first element, the Panel found that Complainant established rights  in the PARTYBOOTHS mark and that the domain name was confusingly similar. Moving to the second element, the Panel found that respondent was not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii). Regarding the offering of bona fide goods or services, the Panel explained:

The <envypartybooths.com> domain name resolves to a website whichsolicits photo booth rentals. This is precisely the same service which Complainant offers through its own website. The Panel therefore finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

For these reasons, the Panel found that the Respondent did not have a legitimate interest in the domain. Moving to the final element, bad faith registration and use, the Panel recognized that the disputed domain was registered prior to the filing date and registration of the trademark. The Panel went further to explain:

Although Complainant claims that the mark had been used prior to the registration of the <envypartybooths.com> domain name, Complainant provides no evidence of such use and fails to state in what way it was used prior to its filing with the USPTO. Therefore, the Panel finds that Respondent could not have registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because its registration of the disputed domain name predated the registration of Complainant’s mark.

Ultimately, the Panel found that Complainant did not satisfy all three elements and DENIED the request to transfer the domain.

P90X Guarantees Results…Just Not These Kind of Results

Thursday, May 5th, 2011

In the recent domain name dispute of Beachbody, LLC v. Gregg Gillies (WIPO Case No. D2011-0358, April 21, 2011) a single member panel was faced with a dispute over the domain www.p90xworkoutschedule.com. The disputed domain was registered on June 11, 2009 and Respondent provided a brief response which included the following statement:

There is no confusion or misrepresentation on the site as to whether it’s the original p90x site or owned by Beach Body, LLC. It clearly gives a review of the product (p90x), which I own, and in fact, even gives a positive review, so I clearly not trying to harm Beach Body or alter sales of p90x in a negative way. I use the site to share my experiences with p90x and to specifically talk about its workout schedule. I don’t pretend to be an official site, nor do I try and confuse anyone about that fact.

Complainant owns multiple trademark registrations in the U.S. and internationally related to its P90X mark. Complainant maintains a website at www.beachbody.com and also owns the domain www.p90x.com, which is forward to its main site.

Paragraph 4(a) of the UDRP ICANN Policy requires that the Complainant must prove each of the following three elements to obtain an order that Disputed Domain Name should be cancelled or transferred. (i) The Disputed Domain Name is identical or is confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) The Disputed Domain Name has been registered and is being used in bad faith.

In addressing the first element the Panel noted that the “addition of a generic or highly descriptive term does not serve to distinguish between the mark of the complainant and the disputed domain name.” The Panel ultimately found that the domain was confusingly similar to Complainant’s mark. In addressing the second element, the Panel explained that Respondent’s name has no correlation to the disputed domain and there is no evidence of authorization or a license. However, the Panel refrained from making its decision on this prong, noting that the third prong would address concerns of the case.

The third prong, registration and use in bad faith, resulted in the most detailed analysis for this Panel. The Panel made the following observation about Complainant’s pleadings:

The heart of the Complainant’s claim in these proceedings is that, under paragraph 4(b)(iv) of the Policy, the Respondent is using the Disputed Domain Name to draw people to its site for the purpose of the promoting the e-book “Truth About Six Pack Abs.” However, the Complainant has not provided any explicit evidentiary support for this claim, other than to refer generally to Respondent’s website accessible through the Disputed Domain Name. The Complaint does not set out where on the website the Respondent has been promoting the e-book “Truth About Six Pack Abs.” Review by the Panel of the exhibits and other materials provided by the Complainant in the Complaint did not disclose any explicit reference to the promotion and sale of the e-book “Truth About Six Pack Abs.”

As a result, the Panel issued an Administrative Procedural Order seeking additional evidence and information, to which Complainant simply restated its prior allegations and failed to provide additional evidence. The Panel also noted that Respondent provided a disclaimer on the disputed domain as the lack of affiliation. In light of that disclaimer the Panel explained:

However, when there is a disclaimer on the Respondent’s website where there is a colorable argument of legitimate use, and the Complainant has provided no convincing evidence to support its claim of bad faith by the Respondent, such a disclaimer may serve to buttress Respondent’s claim that it has not acted in bad faith. The Panel finds that is the situation here. The Panel further takes note of a number of “Ads by Google” apparently present on the website, amidst Respondent’s described work-out schedule. However, even if these might in some way be indicative of use by the Respondent in bad faith, the Complainant has made no contention or submission whatsoever on this issue. As such, based on the record of the Complaint, the Panel does not find it sufficient to carry the balance in the Complainant’s favor.

Ultimately, the Panel found that Complainant failed to satisfy all three prongs and DENIED the request for transfer.

PAM ANDERSON Gets Her Name

Friday, October 1st, 2010

        

In the recent cybersquatting case of Pamela Anderson v. Alberta Hot Rods Case No. D2010-1144 (WIPO September 8, 2010) a three member panel was faced with a dispute over the domain www.pamanderson.com. Pamela Anderson is well known for her acting and modeling. She has multiple trademark registration for the mark PAMELA ANDERSON. She maintains a website at www.pamelaanderson.com. Respondent registered the disputed domain on March 1, 1997 and filed a Response to the Complaint. The parties have been involved in an earlier UDRP proceeding concerning the domain names <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com>, which resulted in the transfer of those domain names (see Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104).

Under paragraph 4(a) of the ICANN UDRP Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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 explained that it must view Anderson’s rights in the mark based on common law, since the Federal trademark rights do not predate the registration of the domain. A discussion of common law rights extending to an abbreviation of Anderson’s first name from PAMELA to PAM, concluded in a finding that it could be found to be confusingly similar. The Panel was satisfied that the domain was confusingly similar to the mark.

Moving on to the second element, the Panel noted that Anderson claims the Respondent is not commonly known by the disputed domain and does not have authorization to use the domain or mark. The Panel noted the following arguments presented by Respondent:

The Respondent claims to have, as a respected publisher of a wealth of information, including biographical data, used the disputed domain name in connection with various websites in the past, all featuring biographical information about various famous personalities, dead or alive. However, the Respondent did not provide any evidence of any contemplated good faith use and therefore failed to prove rights or legitimate interests in the disputed domain name under the Policy.

The Panel found this element also favored Complainant. Moving onto the final element, bad faith registration and use, the Panel made the following observations regarding Respondent knowledge and actions.

Given the Complainant’s broad media coverage and the fact that the Respondent registered the disputed domain name in a chronological sequence with the domain names disputed in Pamela Anderson v. Alberta Hot Rods, supra, (<pamelaanderson.com> registered on November 6, 1996; <pamanderson.com> registered on March 1, 1997; <pamelalee.com> registered on March 27, 1997; <pamelaanderson.net> registered on February 25, 1998), it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. This finding is further supported by the fact that the Complainant seems drawn towards registering well-known people’s names as domain names and therefore seems to be familiar with or at least interested in celebrities. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

The Panel also applied the consensus view regarding lack of active use of a domain, and explained “In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the disputed domain name amounts to use in bad faith.”

Ultimately, the Panel found that all elements were satisfied and ordered the domain be Transferred. This decision was not unanimous though as one of the Panelists provided a dissenting opinion. Additionally, The Panel dismissed the request for Reverse Domain Name Highjacking presented by Respondent.

DISNEY Does Not Like This Cybersquatter’s ‘Offer’

Wednesday, September 1st, 2010

 

In the recent cybersquatting case of Disney Enterprises, Inc. v. ll aka Joe Comeau FA1336979 (Nat. Arb. Forum, August 31, 2010) a single member Panel was faced with a dispute over the domain www.DisneyOffer.com. Disney needs no introduction in this case. You should know who they are, unless you have been living in the one or two places where they haven’t been able to advertise or sell products and services. Either way, go to www.disney.com for anything your heart desires. Respondent filed a response to this dispute and presented some interesting arguments.

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.

The Panel quickly dispensed with the first prong, noting that the DISNEY mark is well established and that the disputed domain contained all of the mark including the additional word “offers.”

Moving to the second prong, the Panel noted that DISNEY had met its small initial burden of proving a prima facie case that Respondent lacked any rights or interests. This included claims that Respondent was not commonly known by the disputed domain. The Panel shifted the burden to Respondent and explained:

Respondent offers no evidence which might tend to show that he has rights in respect of  the domain name pursuant to Policy ¶4(c), or otherwise. Respondent offers no explanation as to why he registered a domain name which overtly references Complainant’s DISNEY trademark and he admits he has not built a website associated with the disputed domain name. Respondent states that the webpage referenced by the at-issue domain name is merely a holding page provided by the registrar, Go-Daddy. Respondent makes no claims regarding any intended use for the domain name.  Furthermore, Respondent makes no claims that he is somehow making a legitimate non-commercial or fair use of the domain name.

The Panel thus found that this second prong was proven. Moving to the third prong, bad faith, the Panel made some relevant findings. First the Paenl explained Respondent failed to present any justification that he did not register the domain name for any r3eason other then the value of the mark. Additionally, the Panel found that Respondent had registered well known domain names in the past using other marks such as EBAY and CHEVY.

The Panel found that Respondent offered to sell the disputed domain to DISNEY after recieving a cease and desist letter, which was is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(I). Respondent had argued that “If Respondent has to turn over the domain name to Complainant, it should at least in good faith have to give Respondent the renewal fees paid over the past few years.” Other interesting arguments presented by Respondent included:

Just because Complainant holds onto the name “disney” it does not have the right to squash and try to control every other holder of the word “disney” in the English speaking community or every domain name with the word “disney” in it. They own the market and brand name, but they do not own the word “disney” across the entire English language as long as those interests pose no threat or try to infringe upon their business.

Lastly, the Panel found that the disputed domain resolved to a parked site, featuring links to third parties offering competing goods and services. For all these reasons, the Panel found that DISNEY met its burden of proving all three prongs and ordered the domain be TRANSFERRED.

Rachael Ray Cooks Up A Win

Thursday, July 8th, 2010

rachaelray

In a very interesting decision, a three member Panel appears to stretch the limits of what is acceptable evidence and methodology for UDRP cases. In the case of Ray Marks Co. LLC v. Rachel Ray Techniques Pvt. Ltd. FA1319966 (Nat. Arb. Forum, July 7, 2010) the Panel was faced with a dispute over the domain www.rachelray.com. Living in the U.S. most of us have all seen on t.v. or heard about Rachael Ray. She maintains a website at www.rachaelray.com  Many would even think this was a slam dunk case for her, since the disputed domain was merely missing a letter. However, Respondent put up a fight and both parties provided additional submissions. As a result the Panel was faced with making some interesting findings.

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.

Some of the relevant arguments presented by Respondent are as follows:

Respondent, Rachel Ray Techniques Private Limited, is a company incorporated in India on July 23, 2009.  Respondent offers products that involve laser ray technology.  Prior to incorporation, Respondent was operated as a partnership that began April 10, 2007….The Complaint misstates the date of the cease and desist letter.  It was sent on February 24, 2010, not February 24, 2009.  This is an attempt by Complainant to mislead the Panel by creating the impression that the letter was sent prior to Respondent’s incorporation on July 23, 2009….Respondent selected the name “Rachel Ray” for its business because the daughter of the technical partner of the original firm was named “Rachel”.  The initial name for the company was going to be “Rachel Lazer Techniques”, but, for reasons related to the practice of numerology, there was a decision to switch to “Rachel Ray Techniques”.

In the decision, the Panel presented the following findings:

Respondent is the owner of the disputed domain name, <rachelray.com>, and the date of creation is September 20, 2001.  The Respondent acquired the name some time later. Respondent is a corporation organized under the laws of India on July 23, 2009, after having been formed as a partnership on April 10, 2007.

With that in mind the Panel reviewed the elements and quickly found that the domain was identical or confusingly similar. The fascinating parts of the decision came during the examination of the second element. The Panel found that the burden was shifted to Respondent to prove it had rights or legitimate interests in the domain. It stated as follows:

Respondent claims to have formed a company in April 2007, which was incorporated in 2009, to market laser-based equipment and other items.  Respondent has supplied the Panel with scads of evidence (Annexes A through W), citing its business name on advertisements, telephone listings, invoices and Indian governmental documents, to support its contention.

However, the Complaint provided evidence that the disputed domain hosted websites that offered Complainants own trademark. Respondent chalked this up to error and lack of control over third party hosting, exclaiming that they are not technical people. Armed with that argument, the Panel made the following statement.

The Panel is presented therefore with competing claims on this issue.  UDRP proceedings provide for only limited evidentiary presentations, and it is difficult for the Panel to make fine assessments as to veracity.  One tool it can employ in this regard is to examine each party’s contentions for consistency.  On this issue, the Panel finds no inconsistency in Complainant’s assertions, whereas there is marked inconsistency with respect to those made by Respondent.  Respondent’s declaration about “not being technical people” is contradicted by Respondent earlier Additional Submission reference to its “technical partner”.  Moreover, that contradiction is heightened by Respondent’s claim to run a business that offers products “using the Technology involving Laser Rays”, which suggests that Respondent’s people must possess fairly sophisticated technical expertise.

Additionally, the Panel found that the lack of proof of sales volume or revenue in connection with products was fatal. Then the Panel turned its attention to the issue of whether Respondent was commonly known by the domain. AS stated earlier Respondents company name specifically includes the domain, but the Panel did not care.

However, it has not escaped the Panel’s notice that the date of Respondent’s origination, April 10, 2007, followed hard upon the date, March 27, 2007, of the USPTO registration of Complainant’s most basic trademark, RACHAEL RAY.  Is this coincidence or design?  Though Respondent is an Indian entity, the miracle of the Internet makes knowledge of such information as USPTO registrations almost instantaneous around the globe, and the Panel must keep in mind that the initiation of the Policy is predicated on the cunning and sophistication of global cyber-squatters. As discussed above, Respondent has provided the Panel with scant evidence of actually conducting business.  Consequently, the Panel cannot conclude that Respondent is  commonly known by that name, as is necessary for application of subparagraph 4(c)(ii).  The Panel believes that that subparagraph requires more than evidence suggesting a hastily formed “paper” company which adopts a name that is nearly indistinguishable from an established trademark and, soon after formation, acquires a corresponding domain name.

The Panel quickly resolved the bad faith element of the case. Ultimately, the Panel ruled that domain be TRANSFERRED.

JAGER BOMBS Are Fun And Are Protected Trademarks

Wednesday, May 19th, 2010

jager

Walk over to any college campus bar and just say the words JAGER BOMB and you will likely get mixed reactions of joy and pain from the students. For years the JAGER BOMB has been a popular drink at bars across the country, and around the world. The people at Mast-Jaegermeister AG know this and made sure to get protection for this famous mixed drink. They have a registration for the JAGER BOMB mark and filed a UDRP domain dispute for the domain www.jager-bomb.com. In Mast-Jaegermeister AG v. John Marzlak FA1317337 (Nat. Arb. Forum, May 18, 2010) a single member Panel agreed with the liquor manufacturer and agreed to transfer the domain. Complainant maintains a website at www.jager.com.

The decision did highlight one relevant fact, which had respondent provided a response may have been fleshed out in more detail. The disputed domain was being used to promote the sale of Jager Bomb Shot Cups. Complainant made note of this and the Panel explained:

Respondent capitalizes on the confusingly similar domain name to attract Internet users seeking Complainant’s website to a website offering plastic cups for consumers to use with Complainant’s product.  Therefore, the Panel finds that such diversionary use of the disputed domain name for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). 

          jager-2

There wasn’t anything too exciting or different about this decision. One side note, the domain www.jagebomb.com is parked with “coming soon” text and an info@jagerbomb.com email address. The domain has a privacy service so it is unclear whether Complainant owns it or whether it will be developed. Complainant appears to operate or at least authorize a website devoted to cups just for Jager bombs, namely www.jagerbombcups.com.

ASHLEY MADISON Gives Cheaters 101 More Domains

Monday, May 17th, 2010

ashleymadison

If you haven’t heard about Ashley Madison, then you are likely in a committed relationship and would never even consider cheating or you don’t pay much attention to commercials. In the recent cybersquatting case of Avid Dating Life, Inc. v. Private Whois Service FA1318204 (Nat. Arb. Forum May 13, 2010) a single member Panel was faced with a dispute over 101 domains. A full list of the domains is provided in the decision. Complainant is the owner of the well known website www.AshleyMadison.com where people can seek out others who are in committed relationships seeking to have an affair. As their own tag line states “Life is Short. Have an Affair.” No matter what you may think about such a service, it has become wildly popular and boasts nearly 6 million anonymous members. One of the disputed domains was registered in 2005, while all the others were registered in 2008 and 2009. Complainant has federal trademark rights dating back to at least 2004.

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 Complainant established rights in its ASHLEY MADISON mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. All of the disputed domain names contained some typographical modification to the registered mark. The Panel found these domains were confusingly similar to the registered mark since they were common misspellings. For this reason, the Panel found that Policy ¶ 4(a)(i) had been satisfied.

The second part of the analysis the Panel noted that Complainant presented a prima facie case, and although Respondent failed to respond, it still chose to review the facts. The Panel found that Respondent was not commonly known by the disputed domains. Evidence presented to the Panel included proof that two of the disputed domains contained links to competing adult dating websites.

The Panel finds that Respondent’s use of the <ashleymadis0on.com> and <ashleymadision.com> domain names to display third-party links to competitors of Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

The Complainant noted that the other 99 domains did not resolve to active websites. The Panl found that failure to make active use of the domains meant they were “not connected with a bona fide offering or goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” And lastly under this section, the Panel found “registration of the disputed domain names containing misspelled versions of Complainant’s mark is further evidence of Respondent’s lack of rights and legitimate interests in the names under Policy ¶ 4(a)(ii).” For all these reasons, Policy ¶ 4(a)(ii) had been satisfied.

Moving to the final element, bad faith, the Panel repeated many of the same facts and applied them in this section as stated earlier. This includes, the third party links, the inactive websites, the typographical variations on the domain names. The Panel also found that “Respondent’s registration of many trademark infringing domain names within a short period of time is evidence of bad faith registration and use under Policy ¶ 4(b)(ii).” For all these reasons, Policy ¶ 4(a)(iii) had been satisfied.

Ultimately, the Panel found that Complainant presented and proved all three elements, and ordered the domains be TRANSFERRED.

24 Hour Fitness Doesn’t Close and Doesn’t Like Typosquatters

Friday, May 7th, 2010

24hrfitness

In the recent domain name dispute decision of 24 Hour Fitness USA, Inc. v. Privacy Locked c/o Privacy Locked LLC FA1315677 (Nat. Arb. Forum, May 6, 2010) a single member Panel was faced with a dispute over the domain www.24horfitness.com. Complainant is the well known national chain of fitness centers and maintains a website at www.24hourfitness.com. Complainant has a trademark registration for 24HOURFITNESS.COM since October 2000. Respondent 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.

The Panel began with a discussion of finding that the Complaint’s rights in the mark 24HOURFITNESS.COM were sufficient to establish trademark rights for the purposes of this dispute. “The Panel finds the misspelling of the mark in the disputed domain name does not differentiate the disputed domain name from Complainant’s mark and that the disputed domain name is confusingly similar to Complainant’s mark, pursuant to Policy ¶ 4(a)(i).” 

For the second element, whether or not respondent had any rights or legitimate interests in the domain, the Panel explained that 24 Hour Fitness had presented a prima facie case, and that although the Respondent did not respond, the Panel still reviewed the facts and evidence presented. First the Panel found that Respondent’s WHOIS information showed it was not commonly known by the disputed domain name. Second the domain name resolved to a web directory with third party competitor links. For this reason, Respondent had failed to use the domain for a bona fide offering of goods ro services. Lastly since this domain was an intentional misspelling of the mark, it was considered typosquatting and thus violated the Policy.

Moving to the final element, bad faith, the Panel explained that the third party competitor links were evidence of bad faith since it would disrupt Complainant’s business. Additionally, the practice of typosquatting was found to be bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 

For all these reasons, the Panel found that Complainant met the requirements and ruled that the domain be TRANSFERRED.

Gay Porn Site Target of Typosquatting

Wednesday, March 31st, 2010

It should come as no surprise that adult web sites are targeted for cybersquatting. In the recent domain name dispute of Blu Media Inc. v. Transure Enterprise Ltd c/o Host Master FA1307892 (Nat. Arb. Forum, March 30, 2010) a single member panel was faced with a dispute over the domain www.justsuboys.com. Complainant uses its domain www.justusboys.com as a for profit adult website. The domain was originally launched in 2002, although complainant did not purchase it until January 2010. Respondent registered the disputed domain in October 2009.  Respondent 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 does not have a registration for the mark JUSTUSBOYS.COM.  Thus the Panel was forced to determine if the Complainant’s mark had established secondary meaning.

In support of its contention Complainant has submitted evidence of awards received for its e-magazine as well as critic reviews of its website and magazine.  Complainant further provides evidence of high “Alexa” rankings for the number of visitors to its website.  The Panel finds that Complainant has produced sufficient evidence to show it has common law rights in the JUSTUSBOYS.COM mark for purposes of Policy ¶ 4(a)(i) through continuous and extensive commercial use before Respondent registered the disputed domain name.

The Panel found that the disputed domain was confusingly similar to Complainant’s mark and that Policy ¶ 4(a)(i) had been satisfied

Moving to the second element, the Panel noted that Complainant submitted evidence sufficient for a showing and establishment of a prima facie case. Regardless the Panel chose to review the evidence presented. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the disputed domain was offering third party links to competing adult oriented web sites. “The Panel finds that Respondent’s reliance on typosquatting to create a confusingly similar disputed domain name, where it receives referral fees to websites in competition with Complainant is not a use in connection with 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).” Also, Complainant put forth evidence that Respondent was seeking to sell the disputed domain publicly and to Complainant. Lastly, the Panel remarked that the domain was a typosquatted version of the mark. For all these reasons, the Panel found that Respondent lacked any rights or legitimate interests in the domain, and that Policy ¶ 4(a)(ii) had been satisfied

In addressing the final element, the Panel began by examining Respondent offer to sell the domain for $5,000.00 to Complainant. “The Panel finds that Respondent’s general listing of the disputed domain name for sale, as well as its attempts to sell the disputed domain name to Complainant for amounts in excess of its initial costs are evidence of bad faith registration and use under Policy ¶ 4(b)(i).” The Panel also found that Respondent intentionally disrupted Complainant’s business. Additionally, the Panel found that the use of competitive third party links for financial gain was evidence of bad faith registration and use. Ultimately, the Panel ruled  that Policy ¶ 4(a)(iii) had been satisfied            

After review of all the elements the Panel ruled that Complainant met all three and ordered the domain be TRANSFERRED.

Time Has Run Out for OMEGA Cybersquatter

Monday, March 1st, 2010

          omega

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.

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