Friday, June 6, 2008
A couple of days ago, here, I reviewed Gookinaid ERG, Inc. v. Valda Krievane, WIPO Case No. D2008-0487 (Alan L. Limbury, May 28, 2008), a case in which the Complainant failed to demonstrate its common law trademark rights, despite the fact that it appeared as though the Complainant had such rights. In other words, the case turned on a failure of proof. That case raised for me a simple question: What level of proof is sufficient to demonstrate common law trademark rights?
I found the answer this morning in the newly published decision Theodore Presser Company v. John Smith/Whois Protection, WIPO Case No. D2008-0549 (Christopher J. Pibus, May 29, 2008). In that case, the Panel required the transfer of theodorepresser.com to the owner of the common law trademarks THEODORE PRESSER and THEODORE PRESSER COMPANY.
Despite claiming use of the THEODORE PRESSER and THEODORE PRESSER COMPANY marks since 1883, the Complainant had not obtained any registrations for either mark. In the absence of such registrations, the Complainant had to demonstrate its common law rights in such marks (or at least one of those marks) to support its UDRP claim.
Complainant's counsel was up to the task. Rather than rely on bald assertions by counsel or the Respondent's use of the Complainant's mark (as was the case in the aforementioned Gookinaid ERG decision), Complainant here evidenced its trademark rights through a declaration from one of the Complainant's executives. According to the Panel:
"In the absence of any evidence to the contrary, the Panel accepts the evidence put forward by the Complainant, namely the Declaration of Hayden Connor, the Chairman of the Theodore Presser Company. The Connor Declaration confirms that the Complainant has been using the names THEODORE PRESSER and THEODORE PRESSER COMPANY since at least as early 1883, in connection with publication of The Etude magazine, music catalogues, and individual music sheets. In addition to its own publications, the Complainant also represents 70 other American and foreign publishers in connection with the distribution and sale of music catalogues and music sheets.
Based on this evidence, the Panel is prepared to find that the Complainant has a reputation in the trade name and marks THEODORE PRESSER and THEODORE PRESSER COMPANY with respect to music catalogues, individual music sheet packages and with respect to music education and scholarships."
Given the extensive use of the Complainant's mark (as evidenced by the declaration), and the Respondent's use of the disputed domain to provide sponsored links to the Complainant's competitors, the determination of bad faith registration and use was an easy one for the Panel.
Thursday, June 5, 2008
In Cox Newspapers, Inc. d/b/a Dayton Daily News v. PabloPalermao, WIPO Case No. D2008-0372 (Joan Clark, May 19, 2008), the Panel required the transfer of daytondailynew.com to the owner of the registered trademark DAYTON DAILY NEWS.
In finding the Respondent's domain confusingly similar to the Complainant's registered trademark, the Panel made clear that the mere deletion of a letter from the Complainant's mark did not obviate confusing similarity: "The removal of the letter 's' is so minor, at the very end of the principal part of the domain name, that it would not prevent the likelihood of confusion between the Complainant’s mark and the disputed domain name."
In discussing bad faith, the Panel emphasized that the omission of a letter from the Complainant's trademark evidenced the Respondent's bad faith: "The choice of the domain name daytondailynew.com and the omission of an 's' which would normally appear in such a term, is an indication that this domain name was chosen intentionally to be as close as possible to the Complainant’s trademark and the name of its newspaper."
As additional evidence of the Respondent's bad faith, the Panel emphasized the Respondent's use of the Complainant's trademark in providing links to websites of third parties: "A screenshot of daytondailynew.com on March 7, 2008 which shows the inclusion of links on topics similar to the services offered by the Complainant, in fact refers the visitors to 'Dayton daily news', further compounding confusion for the reader."
With such evidence, the Panel had "no hesitation" in finding that the domain name in dispute was registered and used in bad faith.
Tuesday, June 3, 2008
In one of those cases where the Complainant could have but failed to prevail, the Panel in Gookinaid ERG, Inc. v. Valda Krievane, WIPO Case No. D2008-0487 (Alan L. Limbury, May 28, 2008) refused to transfer gookinaid.com and gookinaid.biz to a Complainant that claimed to own unregistered trademark rights in the designation GOOKINAID and GOOKINAID ERG.
The Panel first set out the test for demonstrating unregistered trademark rights under the UDRP:
"To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent." (Emphasis added.)
Here, however, the Complainant provided no evidence from which the Panel could conclude that the Complainant owned trademark rights. Beyond its bald assertion that the Complainant was "the owner of all right, title and interest in and to the tradenames and trademarks GOOKINAID and GOOKINAID ERG for use with its electrolyte replacement products" and self-serving statements that "world class marathon runners have been drinking beverages using the GOOKINAID tradenames/trademarks since the late 1970s and that the Complainant has extensively promoted those tradenames/trademarks," the Complainant offered little to back-up such claims.
Interestingly, it appears that the Complainant relied on the Respondent's use of the Complainant's designation to demonstrate the Complainant's trademark rights. The Panel was not prepared to accept such meager evidence: "The Panel is not prepared to infer, from the Respondent’s web pages printed out on March 28, 2008, that the Complainant has acquired, through many years of use, common law trademark rights in GOOKINAID or GOOKINAID ERG."
Because the Complainant failed to demonstrate the requisite trademark rights to support its UDRP claim, the Panel found it unnecessary to address the other elements of a UDRP claim and denied the Complainant's complaint.
What must make this decision particularly frustrating for the Complainant is the fact that the Respondent claimed to be a victim of an illegal domain transfer to it, claimed no rights in the disputed domains, and filed a statement with the Panel that it was willing to cooperate in the transfer of the disputed domains to the prior listed registrant in the Whois database. Given the Complainant's failure to put forward evidence of trademark rights, however, the Panel did not even have to address that issue.
In The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156 (James A. Barker, May 20, 2008), the Panel required the transfer of middleearthonline.com to the Complainant owner of several registrations for the mark MIDDLE EARTH. Unlike J.R.R. Tolkein's epic The Lord of the Rings series, with which the MIDDLE EARTH mark is associated, the Panel's opinion here was thankfully short and to the point.
First, in concluding that the disputed domain was confusingly similar to the Complainant's trademark, the Panel highlighted the fact that the addition of "online" to another's trademark does not obviate confusing similarity:
"The disputed domain name is not identical to [the MIDDLE EARTH] mark. But it is clearly confusingly similar. The only difference between them is the addition of the generic term ‘online’. It is well-established that the addition of that generic term to a widely-known mark is not relevant for the purpose of determining confusing similarity."
The remainder of the decision dealt with the Respondent's attempt to frustrate the UDRP proceedings, primarily by manipulating the listed registrant info in the Whois database. When the Complainant first learned of the disputed domain, the domain registrant was listed in the Whois database as Web Advertising Corp. Shortly after the Complainant wrote to Web Advertising Corp. regarding its rights in the disputed domain, the registrant details were changed to reflect the owner as "Eurobox Ltd," a privacy service. Eurobox Ltd. was listed as the domain registrant at the time the Complainant filed its complaint. Shortly after the filing of the Complaint, however, the underlying registrant's details in the Whois database were again changed, this time "to reflect the name of the Complainant itself." It is not clear if Eurobox Ltd. changed these registration details or if it was the presumed underlying registrant (Web Advertising Corp.) that made such changes. In any event, there is at least one other decision involving Eurobox Ltd. where a similar change in registrant details occurred. See Weyerhaeuser Company v. Eurobox Ltd., Parallam, DP Manager / “Weyerhaeuser Company”, WIPO Case No. D2007-1792 (Irina V. Savelieva, April 28, 2008).
Once the Panel confirmed that the Complainant did not in fact own the disputed domain, the logical conclusion was that the Respondent was engaging in a pattern of deceptive activity to mask its identity and complicate the UDRP proceedings:
"The attempt by the Respondent to hide its identity, and the change of registration details shortly after the Complaint was filed, to a name that was obviously false, also support a finding of bad faith. That activity suggests that the Respondent has sought to frustrate these proceedings."
Continuing, the Panel held:
"Indeed, the use of a proxy [aka "privacy"] service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide’. Taking into account the circumstances of this case, the Panel draws such a negative inference from the Respondent’s use of Eurobox Ltd as a proxy service."
And thus, transfer of the disputed domain to the Complainant was justified.
Monday, June 2, 2008
With trademark identical domain names in the hands of their rightful owners, cybersquatters became typosquatters, registering misspelled variations of third party trademarks as domain names. But cybersquatters would always prefer to be cybersquatters rather than typosquatters, as consumers are more likely to seek the exact trademark of a third party as a domain name than accidentally enter some misspelled variation thereof. Thus, when the opportunity to register a domain that mirrors a well-known trademark presents itself, cybersquatters pounce.
In this case, the Complainant owned the disputed domain from 1998 to 2007, but allowed the domain registration to lapse (presumably by accident/neglect). The Respondent opportunist registered the domain as it became available. The Complainant's failure to renew the domain name was a costly one, as it probably lost a significant amount of web traffic while the Respondent held the domain, and had to hire a law firm and pay the expenses of a UDRP proceeding to get the domain back.
Given the value of domain names (especially those that are identical to trademarks) and the fact that cyber-pirates are waiting to immediately register domains upon their expiration, it seems prudent to have some safety mechanism in place to prevent the lapse of a domain registration. Some law firms are now offering to monitor domain name renewal deadlines for clients just as they would trademark deadlines. While many registrars will send their registrants reminders that their domain names will expire, some do not, and if a registrant's contact information in the Whois database is inaccurate, there is no guarantee that the registrant will receive the reminder.
Wednesday, May 21, 2008
In Marvel Manufacturing Company Inc. v. Koba Internet Sales, LP, WIPO Case No. D2008-0265 (Peter L. Michaelson, May 5, 2008), the Panel refused to transfer marvelsawparts.com to the Complainant owner of the MARVEL trademark for sawing machines and blades. The Respondent was an unauthorized seller of aftermarket Marvel brand saw replacement parts.
The Panel first concluded that marvelsawparts.com was confusingly similar to the Complainant's MARVEL mark. In so doing, the Panel rejected the Respondent's argument that the existence of other MARVEL trademarks owned by third-parties diluted the Complainant's mark such that confusing similarity should not be found. According to the Panel:
"Under UDRP precedent, a very simple test is used to assess whether a domain name is confusingly similar to a mark: compare the domain with the mark to assess differences there between and then determine whether those differences are sufficient in and of themselves to impart requisite distinctiveness to the name that would reasonably preclude Internet users from becoming confused when faced with concurrent use of both the name and the mark. This does not involve ascertaining whether any third-party rights exist, and assessing both the extent of those rights and any dilution of the mark arising there from. Though the Respondent would like this Panel to conclude otherwise, all those factors are simply immaterial." (Emphasis added.)
The Panel then dedicated the majority of its decision to discussing whether the Respondent had rights or legitimate interests in the disputed domain. The Panel succinctly identified the issue: "[the] question is whether the Respondent’s use of the name, which incorporates the Complainant’s trademark, in connection with its web site offerings was bona fide and specifically in light of the fact that the Respondent had no contractual or other relationship with the Complainant authorizing the Respondent’s use of the mark." (Emphasis added.)
While the Panel appeared to make issue of the fact that the Respondent was not authorized to resell the Complainant's products or use its mark, the Panel then concluded that such distinction was immaterial in determining the test to apply in resolving whether the Respondent's use of the mark was bona fide. And thus, the Panel quoted a case involving an authorized reseller, the oft-cited Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (David H. Bernstein, November 6, 2001), in which the Panel held that a Respondent's use is bona fide if the following four conditions are met:
(a) the respondent must actually be offering the goods or services at issue;
(b) the respondent must use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods;
(c) the respondent’s site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and
(d) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Using this test, the Panel concluded that (a) the Respondent sold the Complainant's goods, (b) the Respondent was only selling the Complainant's goods and not those of third parties (Respondents often fail the test on this point), (c) the Respondent included a disclaimer, the language of which the Complainant's lawyer agreed to, thereby alleviating any false suggestion, and (d) nothing in the record supported any claim that the Respondent attempted to corner the market of MARVEL-formative domain names. Accordingly, the Respondent was making a bona fide use of the disputed domain, thereby rendering an analysis of bad faith unnecessary.
The Panel's decision must have been a tough one for the Complainant to swallow. Instinctively, the fact that the Respondent's sale activities and trademark use were not authorized makes one want to have this case go for the Complainant. While the Complainant does not sell replacement parts for its machines (according to the Respondent), it seems pretty clear from the Complainant's website that it is at least selling parts. An argument could have been made (and perhaps was) that by registering marvelsawparts.com, the Respondent prevented the Complainant trademark owner from providing its customers with the "user-friendly" means to locate the authorized source for "Marvel" "saw" "parts." A similar argument was successful in a decision published just three days ago, FD Management, Inc. v. Telecom Tech Corp., WIPO Case No. D2008-0235 (J. Christopher Thomas, May 5, 2008) (in requiring transfer of shopelizabetharden.com to the Complainant owner of the ELIZABETH ARDEN trademark, Panel emphasized that "[Respondent's] registration of the disputed domain name has precluded the Complainant from making use of the name and has obliged it to use the 'less-than-user friendly' [shop.elizabetharden.com] domain name requiring the insertion of a period between 'shop' and 'elizabetharden'").
Tuesday, May 20, 2008
The Panel first reaffirmed several other decisions in holding that a domain name that omits a letter of another's trademark is confusingly similar for purposes of the UDRP:
"The Respondent’s disputed domain name differs from the Complainant’s mark by simply one letter. In the disputed domain name the first 'a' is omitted. The Panel finds that the Respondent is obviously engaging in deliberately misspelling a known trademark - a practice commonly known as 'typosquatting'. The practice has been condemned by many panels and found to be confusingly similar to the marks which they mimic."
And thus, transfer of the domain name was justified under the UDRP.
Sunday, May 18, 2008
My view of Big Brown just prior to post time
It wasn't even close. Big Brown, the 1-5 favorite (that is 1-5, not 5-1!) to win the Preakness, delivered another convincing first place finish and moved one win away from being the first Triple Crown winner in 30 years. The prized thoroughbred and its namesake, United Parcel Service ("UPS"), are undefeated both in racing and before WIPO. After Big Brown claimed the roses at the Kentucky Derby, I reviewed a contemporaneous UDRP victory for UPS, here. Another win, another post for Big Brown.
In United Parcel Service of America Inc. v. Advanced Express.com, WIPO Case No. D2007-0080 (William R. Towns, March 28, 2007), the Panel required the transfer of overnitedelivery.com to UPS. Without any response from the Respondent, the outcome was never really in doubt. The Big Brown namesake owns an incontestable registration for the mark OVERNITE, the Respondent offers competing delivery services, and the Respondent used the disputed domain to redirect consumers to its website.
Use of a domain name to redirect consumers to a website offering goods or services that compete with those of an owner of a trademark with priority does not demonstrate a Respondent's rights or legitimate interests in a domain name:
"While the record does reflect the Respondent’s use of the disputed domain name prior to notice of this dispute to redirect Internet users to the Respondent’s 'advancedexpress.com' website, such does not constitute the use of the domain in connection with a bona fide offering of goods or within the meaning of paragraph 4(c)(i) [of the UDRP]."
As to the Respondent competitor's bad faith:
"The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another.... The Respondent and the Complainant compete in the package and document delivery business, and the Panel finds that the Respondent’s likely primary motive for registering the mark was an intent to profit from and exploit the goodwill developed in the Complainant’s mark, by using the domain name to divert Internet users to the Respondent’s commercial website, creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the services offered thereon." (Internal citation omitted.)
Despite the Panel's straightforward and sensible opinion, one can't help but wonder whether the Respondent would have had a chance to prevail if it argued that it made a descriptive use of the terms in the domain name. The Respondent provides "delivery" services "overnight," so the argument was there to be made. As for the fact that the Respondent's domain included the term "overnite," instead of "overnight," U.S. law (where both parties are located) generally provides that misspelled variations of descriptive terms are themselves descriptive. See TMEP 1209.03(j) ("A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark").
I've got another UPS case ready if Big Brown completes the Triple Crown at the Belmont Stakes in three weeks. Until the next post time, enjoy this video of my view from the 1/16th pole as Big Brown sprinted to victory at the Preakness:
Friday, May 16, 2008
In Philadelphia Flyers, Inc. v. credoNIC.com/DOMAIN FOR SALE, WIPO Case No. D2006-0199 (Richard W. Page, April 21, 2006), the Panel required the transfer of flyersalumni.com to the top franchise in NHL hockey and owner of the FLYERS trademark.
In finding flyersalumni.com confusingly similar to the Complainant's FLYERS trademark, the Panel emphasized that "the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other generic or descriptive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark." (Internal citations omitted.) Continuing, the Panel held that "[t]he term 'alumni' refers to past players on the hockey team and as such is generic and descriptive."
The Respondent had no affiliation with the Complainant, was not authorized to register or use the domain by the Complainant, and put forward no evidence of any rights or legitimate interests in the disputed domain.
Given the foregoing, combined with the fact that the Respondent used the disputed domain to resolve to a website offering domain names (including the disputed domain) for sale, the decision to transfer was as easy as putting in an empty net goal.
One victory on home ice last night; one victory before WIPO on a UDRP claim. I'm looking for the Flyers to pull the hat trick this Sunday in Pittsburgh. Let's Go Flyers!
Some people acquire domain names; the Flyers acquire star hockey players, including Joffrey Lupul, who put on a clinic last night in scoring 2 goals against the Penguins.
Wednesday, May 14, 2008
The case was no contest, as the Respondent notorious cybersquatter begged for mercy from the Panel by offering to voluntarily transfer the disputed domain name to the Complainant. When a Respondent consents to a transfer, a Panel has two options:
"The Panel may find that in a circumstance such as this, where Respondent has unequivocally consented to the transfer of the disputed domain name, it should forgo the traditional UDRP analysis and order the immediate transfer of the domain name. The Panel may alternately find that the efficacy of such consent notwithstanding, there may nevertheless be circumstances in which it is appropriate to proceed to and record its consideration of the case on its merits under the three elements." (Internal citation omitted).
The Panel chose the latter course of action. It then dedicated the remainder of the decision to explaining why it chose to render a full opinion and, in the process, detailing the bad faith practices engaged in by the Respondent. According to the Panel:
"[I]n cases of this type it would be contrary to the spirit and intent of the Policy for a party to use the expedient of offering to transfer the disputed domain name at the last minute, in order to avoid a decision on the merits and thereby minimize the risk of adverse findings/comments. That is, particularly where that party appears to have done the same previously and where the purpose of the step appears to be to circumvent the Policy. In the instant case the Panel infers that the purpose of this strategy is not only to delay the inevitable... but also effectively to thwart the Policy (where patterns of questionable conduct have always been relevant) and that this is an abuse of process and a further indication of bad faith conduct."
Kudos to the Panel. While it would have been easy for the Panel to simply call it a day and just order the transfer, as did the Panel in another decision published today, KBC Group N.V. and KBC Bank N.V. v. Bank Dir, Bankgroup, WIPO Case No. D2008-0446 (Nicolas Ulmer, May 9, 2008), you have to admire the Panel for sticking it to the Respondent. In the past, the Respondent had been able to avoid the negative consequences of a UDRP decision on the merits by consenting to a transfer. See, e.g., Nutri/System, IPHC, Inc. v. Texas International Property Associates, WIPO C.ase No. D2007-0864 (Nicolas Ulmer, December 21, 2007); but see Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211 (Grant L. Kim, December 12, 2007 (in a decision similar to the one discussed in this post, the Panel completed a full analysis before rendering its decision against the Respondent, despite the Respondent's consent to transfer).
Monday, May 12, 2008
In ACCOR v. Vista Holdings, Inc., WIPO Case No. D2008-0291 (Dietrich Beier, April 21, 2008), the Panel required the transfer of accorhoteels.com to the hotel chain owner of the ACCOR mark. The Panel swiftly concluded that accorhoteels.com was confusingly similar to the Complainant's ACCOR mark, that the failed-to-Respond(ent) had no rights or legitimate interests in the domain, and that the disputed domain was registered and used in bad faith.
This case was one of those complete knock-outs that you just love to read as a trademark attorney. While the facts, reasoning, and law were same old same old, the Panel provided a couple nuggets worth citing if a similar case comes up in your docket. First, in determining that the disputed domain was confusingly similar to the Complainant's trademark, the Panel made a point to reaffirm that nondistinctive terms remain nondistinctive when misspelled:
"The terms 'hotel' and accordingly 'hoteel' are descriptive for hotel and accommodation services as regards the Complainant’s trademark and the domain name. That a deviation in the form of a typographical error, namely, an additional letter 'e' appears in the non distinctive part of the disputed domain name does not change this evaluation." (Emphasis added).
Second, in finding registration in bad faith, the Panel used the Respondent's calculated domain name to evidence that the Respondent knew of the Complainant at the time of registering the disputed domain. According to the Panel:
"In the present case, the Respondent’s awareness of the mark ACCOR of the Complainant can already be derived from the fact that it combined the trademark of the Complainant with the term 'hoteels' obviously derived from the known word 'hotels' using the likely possibility of a typographical error by an Internet user duplicating the letter 'e'."
While it is sometimes challenging to demonstrate a Respondent's awareness of a Complainant's trademark, this case provides an example of how characteristics of a domain name, especially when combined with other factors such as fame of the Complainant's mark, can demonstrate knowing registration in bad faith.
Safe travels to all heading to Berlin, whether you are staying at an Accor® hotel (such as the Sofitel in these photos) or some other temporary residence that becomes your reprieve from the hustle of the INTA annual meeting!
Friday, May 9, 2008
In United Parcel Service of America, Inc. v. Michael Robert, WIPO Case No. D2008-0339 (John R. Keys, Jr., April 29, 2008), the Panel required the transfer of wwwups.org to UPS. The Panel, consistent with several prior Panel decisions, found that the addition of "www" to UPS's trademark did not obviate a finding of confusing similarity:
"In this case, the use of the letters 'www', generally signifying and used to obtain access to the Worldwide Web, is a generic code used by virtually all Internet users to access most domain names and websites on the Web and cannot serve to distinguish the Domain Name from Complainant’s trademark. This is essentially a form of typosquatting in which Respondent attempts to rely upon the Internet user’s potential error in leaving out a dot after 'www' to divert the user to a website that appears to be sponsored by or affiliated with Complainant but which is not."
After the determination of typosquatting, the decision of whether to require transfer of the disputed domain was about as close as 20th place Monba was to Big Brown in the Derby. The Respondent used the domain name in connection with a website containing sponsored links and the Panel found that UPS was a famous trademark that the Respondent had knowledge of at the time of registering the disputed domain. Couple those findings with the Respondent's failure to lodge a response, and the decision to transfer was clear.
Wednesday, May 7, 2008
The Panel spent considerable effort recounting the facts and allegations between the parties, which involved multiple cease-and-desist letters, offers to sell the disputed domains, filing of trademark infringement complaints with the concerned registrars, and a pending petition before the TTAB to cancel the Complainant's federal trademark registration. Faced with conflicting factual claims and an assortment of legal claims, the Panel took the high road:
"On the basis of the statements and documents submitted by the Parties, the Panel has concluded that this case involves disputes regarding trademark rights and usage, trademark infringement, unfair competition, deceptive trade practices and related state law issues beyond the scope of the Panel’s limited jurisdiction under the Policy."
Accordingly, the Panel concluded that it "considers that the domain name dispute in this case is ancillary to the trademark, unfair competition and other trade related disputes between the Parties. Such disputes are more appropriately decided by traditional means, as they turn on questions of fact that cannot be resolved on the basis of the Parties’ statements and documents, and on questions of law beyond the limited scope of the Policy." (Internal citations omitted.) In short, rather than play factfinder and sort through the various legal claims, the Panel resolved to maintain the status quo and find in favor of the Respondent domain name owner.
So as to be clear that it was not offering any opinion of precedential value, the Panel threw the following bone to the Complainant: "[T]he Panel, in rendering its decision below expresses no view on the respective merits of the Parties’ cases, as presented, in the instant dispute. In any event, this decision would have no precedential effect upon any subsequent judicial proceedings."
But was this really a case that the Panel should have shied away from? In my opinion, the undisputed facts pointed to a decision in favor of the Respondent that should not have been watered-down by the Panel. According to the Complainant, the Complainant first used its trademark on June 7, 2005. It applied to federally register its mark on November 9, 2005, and obtained its trademark registration on Ocotber 17, 2006. The Complainant launched its website in August 2007. The Respondent, on the other hand, registered the disputed domains on January 6, 2005. A website first appeared at the disputed domains on February 12, 2005.
Based on these facts, it seems clear that the Respondent registered and used the disputed domain names before the Complainant even alleges that the Complainant first used its own mark. While the Respondent's actions after the Complainant established trademark rights may support a finding of bad faith use of the domains, the UDRP requires both bad faith registration and bad faith use. Here, the facts just do not appear to support bad faith registration, as the Complainant failed to demonstrate trademark rights prior to the Respondent's registration of the disputed domains. And unlike the situation in Futurebazaar India Ltd. v. Rashid Arashid, Chen Xianshang, Bao Shui Chen, WIPO Case No. D2008-0175 (John Swinson, April 10, 2008), blogged here, the Complainant did not even own a domain name registration or claim a web presence prior to the Respondent's registration of the disputed domains.
Monday, May 5, 2008
"With regard to the additional descriptive words 'easy' and 'buy', the Panel accepts the Complainant’s assertion that the mere addition of these generic terms does not necessarily avoid confusing similarity to the Complainant’s trademark...Furthermore, the generic terms are likely to create confusion as to the source of the offered products. Generally speaking, the use of a registered trademark in a domain name allows the registrant of the domain to capture traffic and divert it to its own website. Consumers tend to expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark." (Emphasis added.)
Continuing, the Panel found that: "The Domain Name at issue may suggest, that the Respondent’s website is a location operated by the Complainant to purchase the Complainant’s products in a very easy and uncomplicated way. It is highly likely that the average customer will associate the domain of the Respondent as the source of products of the Complainant. But as matter of fact, the Respondent neither offers the Complainant’s product, nor has he any contractual relationship with the Complainant. Quite the contrary, the Respondent offers a generic product at his online pharmacy. It is also likely, that an average customer might expect the Respondent’s Domain Name – if not genuine from the Complainant – to be somewhat affiliated with the Complainant. To the average consumer, the Domain Name might give the impression that the Respondent’s website constitutes a subsidiary business of the Complainant, or that it is sponsored by the Complainant."
Based on those facts, it was easy to conclude that the domain name at issue was confusingly similar to the Complainant's trademark, and that a transfer of the domain was warranted.
Wednesday, April 30, 2008
In reaching its decision, the Panel addressed two "potential" defenses. I say "potential" because these defenses would have had a better chance of success if the Respondent filed an argumentative response. As in the majority of UDRP cases, however, the Respondent defaulted and suffered the consequences of such default.
The first potential defense related to the scope of the Complainant's trademark rights and the Respondent's knowledge of such rights. More specifically, while the Complainant was located in the United States of America and owned trademark registrations there, the Respondent was located in Germany. Under these circumstances, an argument could have been made that the Respondent was not aware of the Complainant at the time of registering its domain name, thereby negating the necessary finding of bad faith registration. The Panel quickly dismissed any such notion:
"The Complainant adduced evidence only as to its use and registration in the United States of America and none as to its use elsewhere nor to the extent of its sales and promotional costs, consequently this Panel cannot conclude that the Complainant enjoys any significant fame associated with the Trademark. This does not eliminate nor diminish the consequences of this small difference in the deletion of one letter and the addition of the top level domain name '.com'. It is clear to this Panel upon considering the single letter 'r' difference in the domain name in dispute and the Trademark that the Respondent was in all likelihood aware of the existence of the Trademark of the Complainant at the time he registered the domain name in dispute. The alternative would in this Panel’s view be too much of a coincidence.... [typosquatting] alone may constitute registration in bad faith." (Emphasis added) (internal citation omitted).
Second, the Panel addressed the fact that the Complainant's website appeared in the list of links contained on the Respondent's website. Potentially, an argument could have been made that including the Respondent's website in such list obviated any potential confusion, as consumers would quickly realize that the Respondent's website is not provided by the Complainant. On the other hand, an argument could be made that by linking to the Complainant's website, the Respondent clearly knew of the Complainant's existence, thereby evidencing the Respondent's bad faith in registering and using the disputed domain. The Panel addressed neither of these potential arguments, but quickly disposed of any notion that linking to the Complainant's website could obviate the Respondent's bad faith:
"[T]he diversion of users to Respondent’s website to generate traffic and sales commissions for its own commercial benefit, amounts to a conduct uniformly recognized by an earlier panel decision to be in bad faith. This Panel does not consider that the presence of the website of the Complainant within the 10 addresses in the link farm diminishes in any way the use in bad faith of the domain name in dispute by the Respondent." (Emphasis added) (internal citation omitted).
Monday, April 28, 2008
The case is a classic example of typosquatting, where domain profiteers seek to capture on typing mistakes made by Internet surfers seeking a particular website. In this case, the Panel found that "[t]he misspelling of the GEORGIA POWER mark in the domain name is with intent to intercept and siphon off traffic from its intended destination and direct them to the Respondent’s website." This conclusion was easy for the Panel, as "[t]he website under the disputed domain name contains links to 'Georgia Power', 'Georgia Power New Service', 'Online Payments' and 'Pay Georgia Power Bill On Line'." Those links did not lead to the Complainant's website, but rather to other websites with additional lists of links. Given the Respondent's use of a domain name nearly identical to the Complainant's trademark, coupled with the use of the Complainant's trademark in connection with links to third party websites, the Panel had no difficulty finding bad faith on the part of the Respondent.
Thursday, April 24, 2008
Interestingly, you will notice that the Respondent is identified as a privacy service. Where an underlying registrant uses a privacy service, some Panels only include the name of the underlying registrant as the Respondent, others include both the underlying registrant and privacy service as Co-Respondents, and still others, as here, solely list the privacy service as the Respondent.
In this case, the Panel sent the Complaint to the privacy service via email, fax, and courier. Attempts to reach the privacy service via fax and courier were unsuccessful. The privacy service apparently did not provide the Panel with any information regarding the underlying registrant.
In some cases, the Panel will hold that use of a privacy service is evidence of bad faith, especially where there is other evidence of bad faith. The Panel did not go that far here: "The Panel does not draw a negative factual inference from Respondent’s use of a privacy shield in its domain name registration." The Panel did, however, raise another caution against using a privacy service: "However, Respondent bears the risk associated with re-transmission of communications by its privacy provider." (Emphasis added.)
In essence, the Panel held that if the underlying registrant provides incorrect information to its privacy service such that it cannot be reached, or if the privacy service fails to transmit the Complaint, the underlying registrant bears the consequences of such failures and may have its domain transferred without notice of the dispute. In light of the foregoing, domain registrants determined to use a privacy service should ensure that the contact information they provide to a privacy service is accurate. Domain registrants should also ensure that their agreements with privacy services require the privacy services to transfer any incoming correspondence generally or at least as to domain disputes.
Monday, April 21, 2008
First, in determining whether the disputed domain is confusingly similar to the Complainant's trademark, the Complainant argued that the addition of "sucks" to another's trademark is equivalent to adding a descriptive or generic term to that trademark (e.g. appleonline.com). In cases of mere addition of a descriptive or generic term, Panels routinely find the domain name confusingly similar to the Complainant's trademark.
The Panel rejected the Complainant's argument, holding that "[t]his Panel’s view is that it is not helpful to characterize 'sucks' as a generic term in the same way earlier cases have held 'buy-', 'cheap-', '-online' and numerous similar terms to be non-distinctive." The Panel's view makes sense. Generic and descriptive terms arguably enhance confusing similarity, as an Internet user may believe that the disputed domain is affiliated with the Complainant (e.g., it is logical to believe that appleonline.com is associated with Apple Computers, Inc.). In the case of the addition of sucks (e.g. applesucks.com), it is illogical to believe that Apple would maintain a website at that address.
Second, as a back-up argument to deal with the fact that the use of "sucks" suggests a gripe site not associated with the Complainant, the Complainant argued that a large proportion of international consumers are unfamiliar with the pejorative nature of the term “sucks,” and that, therefore, a large proportion of Internet users are likely to be confused by “-sucks” domain names.
The Panel squarely rejected this argument as well. Contrary to the decisions of some prior Panels, "[t]his Panel’s opinion is that, at this time, those people who have no appreciation of the pejorative nuance of the word 'sucks' form such an inappreciable part of the modern Internet audience that concern for their sensibilities should not be a factor in the assessment of confusing similarity under paragraph 4(a)(i) of the Policy."
But I think the Panel''s next statement takes the matter a bit too far. According to the Panel: "[T]he Panel concludes that a domain name is 'identical or confusingly similar' to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity." (Emphasis added.)
Based on this language, any domain name that incorporates another's trademark is automatically confusingly similar under the UDRP. That conclusion seems a bit harsh. What if someone registered grapeappleorange.com-- is that really confusingly similar to Apple's trademark just because it has the term Apple in it? I don't think so.
Friday, April 18, 2008
The plot thickened, however, when it became clear that the initial Respondent registered the disputed domain
Faced with these facts, the Panel had to acknowledge that "[s]ometimes in similar circumstances, it is difficult to prove bad faith, as the Respondent cannot be expected to have known of the Complainant or the Complainant’s trademark rights." With that said, the Panel made the best with what it had, namely, the fact that the Complainant registered its futuerebazaar.com domain name
It is clear that the Panel did not have satisfactory evidence of the Complainant's common law rights in its mark (as opposed to its domain name) prior to the Respondent's registration of the disputed domain. The Panel had plenty of other evidence of bad faith conduct, however, and the absence of a response emphasizing the timing issue really did in Respondents here. In circumstances such as these where there is ample evidence of bad faith use, but not bad faith registration, it may be more desirable to file an ACPA claim in a U.S. District Court. While a UDRP complaint requires both bad faith registration and use, the ACPA merely requires bad faith use, registration, or trafficking in a domain.
Thursday, April 17, 2008
I've always had an interest in and followed decisions pertaining to the Uniform Domain Name Dispute Resolution Policy ("UDRP"). Perhaps my interest stems from the fact that, as a young lawyer fresh out of law school, nobody really thought I had much knowledge or experience--except in the area of Internet law. It was the very fact that I was young that gave people confidence in my understanding of the laws in this area of practice. So I ran with it and determined that I would live up to the reputation that apparently preceded me.
And here today more than eight years later, I am still practicing in the area of Internet law, enforcing my clients' rights as they pertain to domain names, keyword advertising, use of Google AdWords, hyperlinking, framing, and use of metatags. I have the privilege of serving on the International Trademark Association's Whois Subcommittee to the Internet Committee, a group that develops policy pertaining to use of proxy servers and other privacy mechanisms in connection with registration of domain names.
And now, I am launching this blog. Once a skeptic of blogs, I find myself admiring those making the effort to provide the valuable service of a well-written blog. I hope you find this blog to be informative, thought provoking, and entertaining. Happy reading and please share your thoughts.
William J. Morris III