Thursday, June 8, 2017

It doesn't always pay to be on the fast track

In FastTrak v. Tech Admin, Virtual Point, WIPO Case No. D2017-0652 (Evan D. Brown, May 16, 2017), the Panel denied a Complaint seeking the transfer of fasttrak.com. This was a particularly interesting case that involved a simultaneous federal court proceeding and a request for suspension of the UDRP proceeding that was denied.

In the UDRP case, Complainant owned a federal trademark registration for FASTTRAK (plus design), which it had used since 2011. The disputed domain was alleged by Complainant to be registered by Respondent in 2015. Sounds good for the Complainant, but then entered Respondent. Rather the file a formal response, Respondent simply submitted to the Panel a copy of the Reverse Domain Name Hijacking complaint it had filed against Complainant in federal court, and requested suspension of the UDRP proceeding.

The Panel first determined not to suspend the UDRP case before it. According to WIPO's rules governing UDRP disputes, "in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision." The Panel, using its discretion, reasoned "The Complainant has asked for a decision in the dispute, and from a certain perspective, is entitled to an answer to the question for which it paid a filing fee to the Center." The Panel also noted that the federal complaint raises the same defenses the Respondent would have raised if it had filed a formal response to the UDRP Complaint.

Next, the Panel confronted whether to consider the federal complaint filed by Respondent as evidence, and determined that such complaint should be considered and given "notable weight." It reached this conclusion because the complaint was signed, file-stamped, and submitted to the a federal court under the guidelines of Federal Rule of Civil Procedure 11.

Turning finally to the merits of the case, the Panel gave deference to the allegations made by Respondent in its federal complaint, in which Respondent claimed to have registered the domain prior to any rights Complainant had in the FASTTRAK mark. The Panel did this because all of the evidence in the UDRP case, including the WHOIS report submitted by Complainant, supported such a finding. Indeed, the WHOIS report for the disputed domain showed a registration date of 2004, not 2015. "Accordingly, given the Panel’s finding that the Respondent has controlled the registration of the domain name since before the Complainant’s trademark rights arose, the Respondent could not have registered the disputed domain name in bad faith. For this reason, the Complaint fails on the third UDRP element. Since the three UDRP elements are conjunctive, i.e. the Complainant must prove all three, it is not necessary to analyze the first two elements."

Respondent went for the jugular and, as noted above, claimed that Complainant engaged in Reverse Domain Name Hijacking. "If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." Mercifully, the Panel took it easy on Complainant, noting that Complainant proceeded without counsel, and that while the Panel found its actions to be "misdirected and generally wrongly pursued," the filing of the UDRP Complaint did not rise to the level of bad faith. And so, the Panel denied the Complaint and left the parties to fight it out further, if they want to, in federal court, which "will not be bound by the decision of this Panel."

Friday, May 26, 2017

Cybersquatter gets taken to school

In Bartram Academy, Inc. v. Al Perkins, WIPO Case No. D2017-0584 (Benoit Van Asbroeck, May 18, 2017), the Panel transferred the domain bartramacademy.com to Complainant. This is a rare case of old-fashioned cybersquatting, where a respondent registers a domain name that exactly matches a complainant's trademark. Most of those domains are now in the hands of their rightful owners, and indeed such was the case here. In that sense, the case also serves as a reminder of the importance of renewing domain name registrations, as it was the failure to renew such registration that resulted in the domain being snatched up by a cybersquatter.

In this UDRP case, Complainant owns and operates a preschool and child care facility in Florida, and has done so since 2012. It obtained a Florida state trademark registration for BARTRAM ACADEMY in January 2017. In March 2017, however, it allowed its domain registration for bartramacademy.com to lapse. Enter Respondent, who scooped up the domain upon expiration and redirected the domain to a website featuring adult-oriented content. I bet there were some angry parents!

The opinion, as you can imagine, was routine and predictable as to its outcome. Examining the three factors necessary for Complainant to prevail, the Panel had no problem readily finding for Complainant, especially since Respondent filed no formal response, other than advising the Panel "Shame they chose this route I was gonna give it them free lol but they chose to waste Money." Yeah, somehow I doubt it-- props to the school for not giving in and encouraging cybersquatting behavior.

Examining the first factor, whether the domain is identical of confusingly similar to a mark in which Complainant has rights, the above-referenced state trademark registration, thought just recently obtained, was sufficient to meet the requirement.

As to the second factor, whether Respondent has rights or legitimate interests in the disputed domain, the Panel noted Respondent has no affiliation with Complainant and is not known by the name BARTRAM ACADEMY. But dispositively, the Panel emphasized "that the Respondent registered the disputed domain name with the intention of selling it for an amount in considerable excess of its out-of-pocket expenses or, alternatively, of making a profit by redirecting the website to a pornographic website." Under the UDRP, nothing legitimate there.

As to the final factor, whether the domain was registered and used in bad faith by Respondent, the Panel emphasized that "Respondent intended to sell the disputed domain name for valuable consideration in excess of its out-of-pocket expenses related to the disputed domain name." It then noted that such action "constitutes compelling evidence of registration and use in bad faith." Further, the Panel emphasized that "Respondent also appears to have made use of the disputed domain name to redirect visitors towards a website with pornographic content," holding that "the diversion of domain names to a pornographic site is consistent with a finding that the disputed domain name is being used in bad faith." And such, the domain was transferred back to its rightful owner.

Monday, May 8, 2017

"I want a reason to go to Tractor Supply"

In Tractor Supply Company v. WhoisGuard Protected, WhoisGuard, Inc. / Party Brands LLC, WIPO Case No. D2017-0325 (Jeffrey M. Samuels, April 18, 2017), the Panel ordered the transfer of tractorsupply.store to the owner of the TSC TRACTOR SUPPLY CO. mark. Honestly, this was a pretty straightforward and simple case, but it gives me an excuse to talk about my beautiful wife, so I couldn't resist blogging about it.

True story-- Met my wife just over ten years ago as a result of an introduction made by my very first client, the amazing band sirsy. We went to two sirsy concerts together on back-to-back nights, and this blog post contains way more words than my future-to-be wife said about herself over those two nights. On the second night, desperate for information, and exasperated after several attempts to get her to reveal something about herself, I finally just laid it on the line and bluntly asked: "So, what is it that you want out of life???" Her response:
 
"I want a reason to go to Tractor Supply."

Now just think about that response for a second. There are over 320,000,000 people in the USA alone. If I asked that question to all 320+million people, I bet no one else would give that answer. And I loved the answer. I knew I loved her. I had never stepped foot in a Tractor Supply, but suddenly I wanted to walk through those doors more than any set of doors anywhere. So yeah, I proposed a few weeks later and my wife and I were married almost 6 months to the day from when she matter-of-factly said those words. For the conclusion of our Tractor Supply story, skip to the end, but for now, the merits of the case...

As always, the Panel considered the three elements necessary for a complainant to prevail in a UDRP dispute:
(1) Whether the disputed domain is confusingly similar to a trademark in which Complainant has rights;
(2) Whether Respondent has any rights or legitimate interests in the disputed domain; and
(3) Whether Respondent registered and has used the disputed domain in bad faith.

In this case, Respondent had about as much a chance of prevailing as I do of walking out of a Tractor Supply store empty handed-- none.

As to the first element, confusing similarity was easily shown. Complainant adeptly pointed out that Respondent's domain consisted of the most distinctive element of the TSC TRACTOR SUPPLY CO. mark, TRACTOR SUPPLY, with the mere addition of ".store," the latter of which "creates an association with the way in which Complainant sells its products to the general public, i.e. from their large stores." In this sense, the Panel considered the use of the ".store" extension an aggravating factor.

As to the second element, finding that the "evidence indicates that the disputed domain name resolves to a landing page with PPC links to third-party sites that feature aspects of Complainant's mark and that offer products and/or services that compete with those provided by Complainant," the Panel readily found that Respondent had no rights or legitimate interests in the disputed domain.

As to the final element, the Panel found bad faith, noting that the "evidence indicates that Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of such site or locations or of the products or services on the site or location." To that end, the Panel found that "some of the goods and services offered on the third-party sites [linked to from the disputed domain] compete with those offered by Complainant" and that "[i]t is also reasonable to assume, given Complainant's longstanding and widespread use of the TSC TRACTOR SUPPLY CO. mark prior to the registration of the disputed domain name, that Respondent had actual knowledge of Complainant and of its mark at the time of the disputed domain name's registration." Finally, Respondent paid the typical price for ignoring a cease and desist letter: "Respondent's failure to respond to the 'cease and desist' letter and email is an additional factor in support of a finding of bad faith." And so, the decision to transfer was made.

Now, back to my wife and her quest for a reason to visit Tractor Supply. After we got married, we bought a house with some land. We got some chickens and rabbits to go along with our horse, cats, and dogs. We had a lawn to mow and many mouths to feed. Seemed like a good time, so I bought her a nice John Deere riding mower, got her a hefty gift card, and made sure to take her to Tractor Supply so she could get whatever she wanted. That first trip to Tractor Supply was one of the better days of my life.

Now, whenever we can, wherever we travel, we always stop in to pick up something at Tractor Supply. And Sunshine, if you are reading this, I just got you a gift card to Tractor Supply so we can visit again real soon, maybe a Mother's Day trip cause I know chicken feed > flowers for my Tractor Supply lovin' lady. Love ya.

Monday, May 1, 2017

Doc Martens gives a cybersquatter the boot

Image result for doc martens logoIn “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246 (David Taylor, April 10, 2017), the Panel ordered the transfer of docmartens.xyz to the owner of the famous DOC MARTENS trademark. This case was interesting for two reasons. First, while the Respondent appears to be the registrar GoDaddy,Inc., it is not (more on that later), and second, I find it fascinating that in the balance of cost/benefit ratio, an entity would pursue any domain ending with the .xyz extension, especially where such domain is not being actively used, as was the case here. Have you ever sought out a .xyz domain name? I didn't think so, which begs the question of what harm Complainant was suffering to justify the effort and expense to pursue this infringement. Sales of footwear must be good, or its lawyers must be bored, for Complainant to prioritize going after this domain.

Turning to the merits and the three elements to prove in order to prevail in a UDRP dispute, the case was pretty straightforward. Complainant owns many trademarks with DOC MARTENS or DR. MARTENS, which it uses in connection with footwear and clothing. Given that the disputed domain matches Complainant's mark exactly, with the mere addition of the .xyz extension, which "is generally disregarded under the identity or confusing similarity test as it is a functional element," the Panel readily found that the disputed domain is identical or confusingly similar to a mark in which Complainant has rights.

Turning to the second element, whether Respondent has rights or legitimate interest in the disputed domain, Complainant failed to prove (as it alleged) that the disputed domain was used as a link farm to websites selling competing goods. But, since the domain name did not resolve to an active website, and "taking into account the overall circumstances of this case.. Respondent's lack of use of the Domain Name is a strong indication of its lack of rights or legitimate interests." In other words, something stinks in Denmark, so the Panel decided to let Complainant off the hook for its failure of proof. And here we have a great example of why WIPO is a great forum for complainants.

As to the final factor, whether the disputed domain was registered and used in bad faith, Complainant did a better job and made the Panel's job easier to find this element satisfied. As to registration, since "Complainant's registered trade mark rights in DOC MARTENS... significantly predate the registration date of the Domain Name by at least 15 years...[t]he Panel is therefore of the view that the Respondent registered the Domain Name in full knowledge of the Complainant's trade mark rights and, on balance, with the intention of taking advantage of such rights." Bad faith use was found based on the facts that (1) the disputed domain was not being actively used, (2) Complainant owns a well-known trademark, (3) Respondent filed no response to the Complaint, and (4) Respondent concealed its identity. As to the last point, Respondent was not actually GoDaddy Inc., the registrar involved in the matter, but Respondent entered as its registration details information nearly identical to its registrar. One would think that GoDaddy would have in place some sort of mechanism to prevent registrations of domain names through its website where the registrant claims to be an iteration of GoDaddy itself (in this case Respondent claimed to be Godaddy.com, Inc.). It will be interesting to see if future cases have similar iterations in respondent names--something to look out for.

Sunday, April 23, 2017

Shocker: chineselego.com used to sell couunterfeit LEGO building bricks

In LEGO Juris A/S v. Whoisguard Protected, Whoisguard, Inc. / Giovanni Bonny, WIPO Case No. D2017-0143 (Peter Wild, March 15, 2017), the Panel ordered the transfer of chineselego.com to the owner of the famous LEGO trademark. This was a case I could not resist blogging about, as my life just changed for the better this past week when my son wandered into a LEGO store at a local mall. He thought he was forcing me to buy LEGO bricks, but I may have been more excited about his "discovery" than he was. And I am glad to see that my money-for-bricks is being used to quash counterfeit enterprises. Well done LEGO!

Reading this decision was almost as enjoyable as building my son's first LEGO kit. There is some great language in the decision for brand owners. To start, the Panel noted the significance of the fact that Complainant not only owns the LEGO mark and corresponding lego.com domain, but also owns "a large number of similar domain names." It is always wise to build up a portfolio of domain names around your core trademark/domain, and Complainant here appears to have done just that.

From there, piecing together a victory for Complainant was easy. Examining the three factors necessary for Complainant to prevail in its UDRP dispute, whether the disputed domain is identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted that the disputed domain consists of Complainant's trademark plus a geographic term that "does not alter the overall similarity" of the mark and disputed domain.

Looking at the second factor, Respondent's rights or legitimate interests in the disputed domain, Respondent here actually filed a response and tried to defend its right to the disputed domain, which he used to sell building bricks designed to imitate and compete with LEGO bricks. The Panel was not impressed: "It is clear that the toys offered for sale through the links on the website under the disputed domain name are toys which imitate, copy, or counterfeit the Complainant’s well known trademark and toys. As such, they are competing goods." Respondent attempted to argue that LEGO has become generic for building bricks, and that he made clear on his website that the bricks he was selling were not LEGO branded bricks. Again, the Panel scoffed: "The Panel does not find the Respondent’s submission that LEGO has somehow become 'genericized' to be convincing, nor does it accept that the Respondent’s statement on the website (that the products referred to are not genuine products of the Complainant) could give rise to rights or legitimate interests on the part of the Respondent."

As to the final factor, bad faith registration and use of the disputed domain, the Panel found that "[r]egistering a domain name with a famous trademark to draw Internet users to unauthorized copies and counterfeits of products which are sold under that famous trademark is a clear case of bad faith registration." As to bad faith use of the disputed domain, the Panel again balked at Respondent's defenses: "The Respondent claims that, on the website, he clearly states that there is no connection with the Complainant and, therefore, the use of the disputed domain name cannot be in bad faith. The Panel rejects this view. Using a domain name which refers to the Complainant’s well-known products but links to counterfeit products will attract Internet users who are interested in the Complainant’s products... [t]his establishes bad faith use of the disputed domain name."

This was a fun read, but getting back to building my son's new LEGO Batman set will be even more fun. There is only one true LEGO brand, and I'm glad my son is learning to appreciate the authentic and best building blocks out there.

Sunday, April 16, 2017

Hershey scores a sweet victory to recover a salaciously used domain name

In Hershey Chocolate & Confectionery Corporation v. L. Roman T. Sorrells, PARI’ZA Studios, WIPO Case No. D2017-0128 (John C. McElwaine, March 31, 2017), the Panel ordered the transfer of hersheykyss.com to Complainant owner of the famous chocolate brand KISSES. This was actually a case I worked on when I had the privilege of serving as President and Counsel to Hershey Chocolate & Confectionery Corporation.

I learned of this infringing domain name through a domain watch I had ordered to monitor domain names that potentially infringe on the HERSHEY'S and KISSES trademarks. We offer this type of domain watching service at my new firm, Alprin Law Offices, and I highly recommend it for anyone concerned about cybersquatting and/or typosquatting. A domain watch is an inexpensive way to monitor and protect one's valuable intellectual property from being infringed, which in the case of hersheykyss.com involved the association of famous trademarks to unsavory sexual content. It is almost always money well spent, and that was certainly the case here.

As to the merits of the case, which fit the mold of classic typosquatting and tarnishment, the Panel marched through the 3 factors necessary for a complainant to prevail in a UDRP dispute. First, examining the similarity of the disputed domain to Complainant's marks, the Panel held that "the consensus view is that a domain name consisting of a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name." As to the specific domain and marks, the Panel found that "the difference between HERSHEY and HERSHEY’S is not so significant as to create a different commercial impression" and "the replacement of the 'i' in the word 'kiss' with the letter 'y' leaves a visually similar word with an identical pronunciation."

Moving to the second factor, whether Respondent has legitimate rights or interests in the disputed domain, Respondent filed no substantive response (though it did contact WIPO informally) and the Panel held that "[t]he silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name" and noted that "previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue." More specifically as to the second factor, the Panel found that Respondent, who claimed to register the domain name for a "client" who is a "model" named Jackie Hershey, "Respondent’s leasing of domain names to a third party for use without complainant’s authorization does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy 4(c)(i) or 4(c)(iii)." Going further, the Panel held that "even if it was accepted that Respondent (standing, as if it were, in the client’s shoes) thought his client had a bona fide intention to use the surname, Hershey, in a domain name, such good faith evaporates when Respondent intentionally added the term 'KYSS' to the surname thereby creating a domain name that is confusingly similar to and dilutive of the Complainant’s HERSHEY’S KISSES trademark. The logo incorporating 'Hershey' featured on the website has a striking resemblance to Complainant’s logo mark, and the Panel infers that this was a deliberate attempt to draw an unjust association with Complainant’s name."

As to the final factor, Respondent's bad faith use and registration of the disputed domain, the Panel stated that "[b]ad faith can be found where respondents 'knew or should have known' of complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest." With this in mind, the Panel concluded that "Respondent linked the Domain Name to a website that mimicked Complainant’s stylized HERSHEY’S trademark. The Domain Name also includes a misspelling of Complainant’s HERSHEY’S KISSES trademark. The Panel finds that the Respondent (or his client) unquestionably had Complainant’s HERSHEY’S Mark in mind when the Domain Name was selected."

Finally, moving to the topic of tarnishment, the Panel noted that "intentional tarnishment of a complainant’s trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith." In this case, Respondent denied in its informal communication to WIPO that the website at the disputed domain was pornographic. The Panel nevertheless found tarnishment: "the website in this case advertises 'provocative videos' and 'sexy, hot behind the scenes' content. Complainant’s candy products are known to be enjoyed by adults and children alike. The Panel finds that the website in this case is of a kind that could reasonably tarnish" Complainant’s marks.

And so, the Panel ordered the transfer of the domain to Hershey. Props to my friends at Downs Rachlin Martin PLLC for the fine job they did on this case. Congratulations!

Sunday, April 9, 2017

It's never too late to go after a misapproriated domain name

In JR Apparel World LLC v. Perfect Privacy, LLC / West Village LLC, WIPO Case No. D2017-0055 (Richard W. Page, February 22, 2017), the Panel transferred the domain membersonly.com to the owner of the federally registered trademark MEMBERS ONLY, despite the fact that the disputed domain was registered way back in 1997. In 1997, the Internet was just starting to gain popularity. The registration is thus very, very old, and made at a time when the Internet was somewhat of the wild west. But matter that did not, and the case serves as a reminder that it is never too late to go after a misappropriated domain. The concepts of latches and acquiescence have little place in uncontested UDRP proceedings.

Complainant is owner of the mark MEMBERS ONLY, which the panel found to be famous, and which Complainant had used (through itself and its predecessor in interest) in connection with apparel products since 1975. But neither Complainant nor its predecessor seemed to have taken any action against Respondent (or its predecessor) until 2013, when it sent a cease and desist letter to Respondent. Complainant appeared to take no further action until 2016, when it sent another cease and desist letter. Let's just say that, at best, such lack of enforcement is not very aggressive policing of a famous trademark. At worst, it is latches and acquiescence. In a UDRP forum, with no response filed by Respondent, the best possible interpretation for a complainant seems to control, and that was the case here.

Putting aside the delays in enforcement, examining the three factors to justify a transfer proved easy for the Panel. First, citing several cases, it was easy for the Panel to conclude that the disputed domain, which contained the entirety of Complainant's mark with the mere addition of the gTLD .com, is confusingly similar to Complainant's mark.

As to the second factor, the Panel found that Respondent did not have legitimate rights or interests in the domain. Dispositive here was the fact that Respondent used the domain as a link farm to various websites selling authentic MEMBERS ONLY branded products. The Panel concluded such use of the domain was for commercial gain and not legitimate.

As to the final factor, bad faith registration and use of the domain, the Panel basically repeated its reasoning as to the second factor, concluding that linking to websites, for commercial gain, that sell Complainant's goods, amounts to bad faith.

This is a case where, had Respondent filed a response, the outcome may have been different. Similarly, one could imagine several ways to use the domain membersonly.com that do not infringe upon Complainant's trademark. But the targeting of Complainant by linking to stores selling its merchandise, as is often the case in UDRP proceedings, proved to be the determining factor, while Complainant's failure to file the dispute for nearly 20 years proved inconsequential.