Friday, February 16, 2018

Typosquatter loses domain infringing on Costco's rights


Image result for costco
In a straightforward, old-fashioned typosquatting dispute, Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Vladimir Snezko, WIPO Case No. D2017-2405 (Andrea Jaeger-Lenz, February 2, 2018), the Panel ordered transfer of the domain costoco.com to the wholesale company Costco. Respondent, which had held the disputed domain since 2000, did not respond to the UDRP complaint.


Starting with the first of the three factors necessary for a complainant to prevail in a UDRP dispute, namely, whether the disputed domain is identical or confusingly similar to the complainant's trademark, the Panel noted that "[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark." The Panel found that that minor differences between the disputed domain and Complainant's COSTCO trademark did not obviate the visual and phonetic similarities between them, and thus found the first prong of a successful UDRP claim to be satisfied.

As to whether Respondent has rights or legitimate interests in respect of the disputed domain, the Panel noted that "it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interest in the disputed domain name in order to place the burden of production on the Respondent." As the Panel then found that there was "no evidence" that Respondent (1) "before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services," (2) "has ever been commonly known by the disputed domain name or has acquired trademark rights," or (3) has made and is making a legitimate noncommercial or fair use of the disputed domain name or used the domain in connection with a bona fide offering of goods and services, the Panel found that Complainant had made such prima facie case. "Hence, the burden of production is on the Respondent. In such case, the Respondent must, by substantial evidence, demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing, since there has not been any response to the Complainant's contentions."

As to the final element of a UDRP complaint, namely, whether Respondent registered and has used the disputed domain in bad faith, the Panel summarily concluded that Respondent must have been aware of Complainant at the time of registering the disputed domain, and thus registered the domain in bad faith. As to use in bad faith, the Panel noted that "UDRP panels will normally find that employing a misspelling in the way that Internet users are misled to another website by typing mistakes signals an intention on the part of the Respondent to confuse users seeking or expecting the Complainant." Here, "[t]he disputed domain name <costoco.com> leads to the website of the Complainant's biggest competitor [Sam's Club] although Internet users expect to find the Complainant's website." Based on the foregoing, "[s]ince the Respondent does not have any rights or legitimate interests in the use of the disputed domain name, there is no legitimate, good faith use of the disputed domain name possible by the Respondent."

And thus, the Panel ordered transfer of the domain.

Monday, January 29, 2018

The "Good Vibrations" are over for this domain infringer

 

In Brother Records, Inc. v. David J. Roberts, Good Vibrations, WIPO Case No. D2017-2287 (John Swinson, January 10, 2018), the Panel transferred the domain beachboys.org to the recording company that owns the intellectual property rights relating to the famous band "The Beach Boys." Respondent is a tribute band that performs songs by "The Beach Boys."  Despite the fact that it registered the disputed domain name way back in 2002 and included a disclaimer on its website negating affiliation with The Beach Boys, there was no "Fun Fun Fun" for Respondent in this "Wipe Out" against Respondent.

As with all UDRP cases, the Panel examined the three factors necessary for a UDRP complainant to prevail. First, as to whether the disputed domain is identical or confusingly similar to a mark in which Complainant owns trademark rights, the Panel readily found similarity, noting that the absence of "The" in the disputed domain name does not differentiate the domain from THE BEACH BOYS trademarks in which Complainant has extensive rights.

Second, in determining whether Respondent has rights or legitimate interests in the disputed domain, the Panel quickly concluded that it did not, as the services offered by Respondent were not bona fide. "While the Panel does not doubt that the Respondent is a legitimate tribute band, the Respondent’s use of the Disputed Domain Name in connection with those services is not bona fide." Expanding on that conclusion, the Panel noted "Respondent’s use of the Trade Mark in the Disputed Domain Name is, on balance, likely an attempt by the Respondent to divert Internet users seeking a website relating to The Beach Boys to the Respondent’s website. As the Respondent’s use of the Trade Mark in the Disputed Domain Name is unauthorized, in these circumstances, such use cannot be considered bona fide."

Finally, as to the third factor, namely, whether the disputed domain was registered and used in bad faith, the Panel concluded that "[a]s the Respondent is a tribute band for The Beach Boys, it is clear that the Respondent registered the Disputed Domain Name with the Trade Mark in mind. The Respondent’s likely intention was to attract Internet users who are fans of The Beach Boys to the Respondent’s website at the Disputed Domain Name." Continuing, "[t]he Panel considers that, by registering and using the Disputed Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship or affiliation." The Panel rejected any contention that the disclaimer on Respondent's website somehow negated Respondent's culpability: "[D]espite the disclaimer appearing on the website at the Disputed Domain Name, the Respondent’s use of the Trade Mark in the Disputed Domain Name creates an implied affiliation with the Complainant." And the Panel appeared to accept Complainant's argument that "the Disputed Domain Name creates initial interest confusion. Although the website at the Disputed Domain Name contains a disclaimer, the initial interest confusion has already occurred."

And thus, the Panel ordered the transfer of the domain name. The Panel did seem to endorse the new domain adopted by Respondent for its tribute activities: "Respondent could have selected another term which would not have carried the same implied affiliation, and which made the Respondent’s position as a tribute band more clear from the outset (and has apparently done so recently with the registration of <surfin-usa.co.uk>)." Personally, it would be hard for me to want to give a "tribute" to an entity that just whooped me in a UDRP proceeding, but to each their own. Maybe the parties can hug it out one day in "Kokamo."

Wednesday, December 20, 2017

LegalZoom uses an outside law firm to enforce its own trademarks

In LegalZoom.com, Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, WIPO Case No. D2017-1894 (Alfred Meijboom, November 14, 2017), the Panel transferred the domain name zoomlegal.com to LegalZoom, the online provider of legal services, including trademark related services. LegalZoom, which boasts on its trademark services page of how it "knows the ropes," and tells its potential customers "[l]et's join forces in protecting your brand," chose itself to join forces with an outside law firm to protect its own brand. That fact, in and of itself, is the story here. More on that later.

As for the merits of the case, this was about as routine as it gets in a UDRP dispute. The Respondent defaulted. LegalZoom demonstrated trademark rights in the mark LEGALZOOM and LEGALZOOM.COM. The disputed domain merely reverses the order of the words in the LEGALZOOM mark. According to the Panel, "[t]his reversal of two terms does not change the overall impression of the disputed domain name as compared to the Complainant's trademarks taking into consideration that it is possible that Internet users unintentionally type in the disputed domain name instead of the Complainant's trademarks."

As to Respondent's rights or legitimate interests in the disputed domain, there was evidence that the disputed domain "was used to install malware on Internet users' computers." Not surprisingly, the Panel held that "[i]nstalling malware on Internet users' computers can never qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use." At some point, the use of the disputed domain changed "to direct Internet users to a website with legal information which directly competes with the services for which the Complainant registered and uses its trademarks," and the Panel concluded that such use does "not constitute a bona fide offering of goods or services."

Finally, the Panel had no problem finding that the disputed domain was registered and used in bad faith. According to the Panel, "it is obvious that at the time the Respondent registered the disputed domain name it must have had the Complainant's trademarks in mind as they had already been registered for many years and have actually been used by the Complainant internationally. Moreover, the Panel agrees with the Complainant that its trademarks are an invented word, and as such, third parties would not legitimately choose this name or a variation of it, unless seeking to create an impression of an association with the Complainant." Continuing, the Panel confirmed that using a domain name to install malware is evidence of bad faith.

As a result of all of the foregoing, the Panel ordered the transfer of the disputed domain.

In a final note, I just want to confirm that our firm owns trademarks and if we ever have to enforce our marks, we will be enforcing those trademarks ourselves, because enforcing trademark rights is what we do.

Friday, September 1, 2017

Serial cybersquatter loses another domain similar to a famous mark

In Audi AG v. DNS Administrator, Cykon Technology Limited, WIPO Case No. D2017-1012 (William R. Towns, July 14, 2017), the Panel ordered the transfer of xaudi.com to the owner and maker of AUDI branded vehicles. The case involved a domain that Respondent owned since 2008, and despite Respondent's defense, the Panel nevertheless ordered the transfer in what turned out to be a pretty clear cut case.

In making its determination, the Panel considered the three factors necessary for a complainant to prevail in a UDRP claim. First, the Panel determined that xaudi.com is confusingly similar to the AUDI mark owned by Complainant, noting that the "inclusion of the preceding letter 'x' does not serve to dispel the confusing similarity of the disputed domain name to the distinctive and well-known AUDI mark."

Turning to the second factor, whether Respondent has rights or legitimate interests in the disputed domain, the Panel emphasized that Respondent "has used [sic] the disputed domain name with parking pages containing pay-per-click advertising links, while also including a banner at the top of the parking pages offering the disputed domain name for sale." The Panel was not impressed by Respondent's assertion of legitimate interest-- "Respondent claims that he registered the disputed domain name because 'xaudi' sounds identical to 'saudi' and the Respondent intended to use the disputed domain name to expand the Respondent’s web hosting business in Saudi Arabia and the Middle East. Yet, despite the passage of more than nine years since the acquisition of the disputed domain name, the Respondent has brought forth not even a scintilla of evidence of demonstrable preparations to use the disputed domain name in this manner. Nor has the Respondent substantiated his claim that 'xaudi' is pronounced identically to 'saudi,' although that would seem easily established by the Respondent if in fact true."

As to the last factor, whether Respondent registered and used the disputed domain in bad faith, as is often the case, the analysis tracked the Panel's handling of the second factor. "Respondent was aware of the Complainant’s AUDI mark when registering the disputed domain name. The Respondent engaged in opportunistic domain name speculation, and the record before this Panel is convincing that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s rights in the distinctive and well-known AUDI mark, for commercial gain."

In analyzing the final factor, the Panel included a footnote in which it emphasized that Respondent has been involved in similar prior UDRP proceedings: "This is not the first time that the Respondent has been found to be in bad faith after registering a domain name appropriating another’s famous or well-known mark... There are striking similarities in these cases and the instant case that arguably reflect a pattern of conduct by the Respondent. For example, in each of these cases, the disputed domain names differ from the complainant’s trademarks only by the addition or subtraction of a single letter. In each of these cases the Respondent claims to have registered the disputed domain name for use with web hosting activities, but then offers only self-serving statements and no proof. Further, in each of these cases the disputed domain names resolve to parking pages with advertising links unrelated to the complainant’s goods or services, with the Respondent arguing that it would have targeted the complainant’s goods and services were it acting in bad faith. That argument has been rejected by the panels in each of these cases."

Under all the foregoing circumstances, the Panel had little difficulty justifying its decision to transfer the disputed domain.

Saturday, July 8, 2017

If something sucks, better to say so than remain quiet

In Philip Morris USA Inc. v. Computer Services, Inc., WIPO Case No. D2017-0847 (Peter L. Michaelson, June 15, 2017), the Panel required the transfer of marlborosucks.com to Complainant owner of the MARLBORO trademark for cigarettes. Philip Morris is one of the, if not the, most active complainants in UDRP matters handled by WIPO, and it secures the transfer of challenged domains nearly every time. In this instance, given that the domain name used the term "sucks," Respondent registered and owned the disputed domain for nearly 18 years (!!!), and Respondent filed a Response to the Complaint, at first glance I thought Respondent had a fighting chance here. Needless to say, its defenses blew up in smoke.

In examining whether the disputed domain is identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted the well-recognized rule that adding the term "sucks" to another's trademark, with the mere addition of a gTLD like ".com," results in a disputed domain that is identical or confusingly similar to a trademark in which a complainant has rights. In an attempt to set a World Record for longest string cite, the Panel cited a whopping 35 UDRP cases in support of this well-recognized point.

Moving to the second factor to be proved in a UDRP dispute, namely, that Respondent has no rights or legitimate interests in the disputed domain, this factor is where it became more clear Respondent was going to lose this case. Of most significance, the Panel emphasized that "Respondent never did and does not now use nor has ever made any demonstrable preparations to use the disputed domain name to resolve to an operational website through which it does or will make bona fide offerings of any goods or services," and then held that "[p]assively holding a domain name, which infringes the trademark rights of another, for nearly an 8 year period does not qualify, on any basis, as a bona fide offering of goods and services." Interestingly, the Panel noted the 8 year period right after stating that Respondent has registered and owned the disputed domain since 1999, which would be an 18 year period. As such, it is not clear if passive holding for 8 years results in no legitimate rights, or if the Panel meant to say 18 throughout the decision.

Turning to the final factor to be proved in a UDRP dispute, namely, bad faith registration and use of the disputed domain by Respondent, the Panel found bad faith as to both. But first, the Panel acknowledged that owning a "sucks" domain is often permitted under the UDRP and not actionable: "The disputed domain name, being a 'sucks'-based name, could, under a proper set of circumstances, legitimately serve as an address of a noncommercial, operational website, e.g., a so-called gripe site, through which the Respondent posts content critical of the Complainant and/or its cigarette products offered under its mark MARLBORO." In this instance, "[h]owever, none of those circumstances has apparently ever existed here and certainly do not now exist."

To its credit, Respondent fought as best it could with the bad fact that it had never used the disputed domain, and cited a bunch of federal court cases arguing that owning a "sucks" domain is permissible. The Panel, however, was not impressed given the facts before it: "Each of the federal cases which the Respondent cites for the proposition that free speech rights attach to a sucks-based domain name is not only clearly distinguishable from the present facts but is irrelevant to those facts simply because in each such case the name at issue was actually used by a defendant as an address of an operational noncommercial website providing critical comment, an aspect totally missing here." Respondent also claimed it had "plans" to use the disputed domain. but failed to identify "with any degree of specificity whatsoever, what those plans are, and when and how they will be implemented."

And so, the Panel ordered the transfer of the domain name, despite it being owned, paid for, and passively held by Respondent for nearly 18 years. Sucks for the Respondent, but the lesson remains for all others-- if you own or plan to register a "sucks" domain, better use it within a reasonable period of time to complain about the trademark owner or you very well may lose it if challenged.

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.