Wednesday, April 30, 2008

Two potential defenses to bad faith shot down

In Forever 21 v. Matthias Moench, WIPO Case No. D2008-0258 (J. Nelson Landry, April 16, 2008), the Panel required the transfer of foever.com. The Complainant owned the registered mark FOREVER 21, and the Panel was readily satisfied that the omission of the first "r" in FOREVER within the disputed domain evidenced actionable typosquatting. This conclusion was bolstered by the fact that the Respondent used the disputed domain in connection with a website containing a link farm, and had been on the losing end of four prior UDRP decisions.

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

Inevrsion of letters in domain name is bad faith

In Georgia Power Company, the Southern Company v. Wang Congming, WIPO Case No. D2008-0234 (David Taylor, April 16, 2008), the Panel required the transfer of gerogiapower.com to the Complainant. Aside from the addition of the top level domain (.com) and the inversion of the "o" and "r" in "Georgia," the domain name was identical to the Complainant's registered GEORGIA POWER trademark.

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

A caution against use of a privacy service

In Darkside Productions Inc. v. Whois Guard Protected, WIPO Case No. D2008-0263 (Frederick M. Aboott, April 11, 2008), the Panel required the transfer of hqerosescorts.com to the Complainant. The Complainant, an escort services provider, had trademark rights in EROS and a few EROS-formative marks. The Panel found that, because the Respondent provided escort services, EROS was the dominant portion of the domain name. The Panel further found that the Respondent used "hq" in the domain name to signify "high quality," which heightened the confusing similarity between the marks. Given that the Respondent provided competing services to those of the Complainant, the case was a slam dunk.

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

You suck! No, you suck! - The fight over redbullsucks.com

In Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253 (Debrett G. Lyons, April 14, 2008), the Panel required the transfer of redbullsucks.com to the Complainant. In many "sucks" cases (where a party registers a domain name identical to another's trademark with the mere addition of "sucks" and a top-level domain (e.g. ".com")) the Panel refuses to transfer the "sucks" domain. In such cases, it is held that the Respondent is making a "fair use" of the domain name in that it uses the domain's corresponding website solely as a non-commercial gripe site about the trademark owner. In this case, however, the Respondent used its website to complain about the trademark owner and sell competing goods. Therefore, judgment in favor of the Complainant was predictable based on prior decisions. The Panel did go out of its way, however, to specifically disagree with two assertions made by the Complainant, which are discussed below.
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

Transfer based on rights in earlier registered domain name?

In Futurebazaar India Ltd. v. Rashid Arashid, Chen Xianshang, Bao Shui Chen, WIPO Case No. D2008-0175 (John Swinson, April 10, 2008), the Panel required the transfer of futurebazar.com to a Complainant claiming rights in FUTUREBAZAAR and (more importantly) the domain name futurebazaar.com. With the Respondents defaulting, having a reputation as cyber pirates, and using the disputed domain in connection with a website featuring sponsored links, this matter appeared to be another straightforward typosquatting dispute.

The plot thickened, however, when it became clear that the initial Respondent registered the disputed domain before the Complainant filed trademark applications for FUTUREBAZAAR and before Complainant embarked on a $2 million advertising campaign to generate goodwill and establish common law rights in the FUTUREBAZAAR mark.

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 over a year before the Respondent registered the disputed domain. With that ledge to hang on, the Panel concluded that "[b]ecause the Complainant conducts its primary business via a website, it is likely that the Respondents became aware of this website and the name of the Complainant’s brand, recognised the popularity or potential popularity of the website, and recognised the popularity or potential popularity of the website, and registered a domain name which was likely to be confused with it." Based on this reasoning, the Panel found the necessary bad faith registration required under the UDRP.

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

Launch of The UDRP Blog!

Welcome!

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.

Best Regards,
William J. Morris III