Wednesday, May 21, 2008

Bet no one at Marvel saw this coming - complaint denied

What everyone secretly wants for Christmas, a Marvel vertical band saw.

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 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 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, 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 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' [] domain name requiring the insertion of a period between 'shop' and 'elizabetharden'").

Tuesday, May 20, 2008

Typosquatter's domain name found to dilute Complainant's trademark

One of two Wagamama® noodle house locations in Boston. Bet my friends in the UK love this place too.

In Wagamama Limited v. Park Hae Dong, Hae Dong Limited, WIPO Case No. D2008-0301 (Ross Wilson, May 6, 2008), the Panel required the transfer of to the Complainant owner the WAGAMAMA trademark.

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."

Because the Respondent used the domain in connection with a website offering "herbal supplements which claim to enlarge the male genitalia," the Panel concluded that the Respondent had no rights or legitimate interests in the domain name.

The following statement from the Panel made me wonder why it bothered to continue with an analysis of bad faith: "the Panel agrees with the Complainant that in the absence of any legitimate interests in the disputed domain name, its registration by the Respondent, and its subsequent use of it, cannot have been in good faith."

With bad faith apparently a moot point, the Panel nevertheless decided to find bad faith based on a dilution argument:

"[B]ad faith registration and use exists because many Internet users seeking the Complainant’s site would find the Respondent’s website offensive and, therefore, likely to cause tarnishment and dilution of the Complainant’s trademarks. The nature of a website (whether pornographic or otherwise) was considered in Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008 (Warwick Smith, February 8, 2008). The panel stated that if the nature of the website is such that linkage with a complainant’s mark could reasonably be supposed to tarnish that mark then the result would be bad faith use. As in that case, this Panel has no doubt that the Respondent’s website is of a kind that would tarnish the Complainant’s marks if it were confusingly linked to those marks." (Emphasis added.)

And thus, transfer of the domain name was justified under the UDRP.

Sunday, May 18, 2008

Big Brown posts another win and earns another post

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, WIPO Case No. D2007-0080 (William R. Towns, March 28, 2007), the Panel required the transfer of 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 '' 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

The Philadelphia Flyers are kickin' butt and taking (domain) names

As a tribute to my beloved Philadelphia Flyers, who finally put the beat-down on the Pittsburgh Penguins last night, I am going to break from the normal format and review an older decision involving the best team in all of sports.

In Philadelphia Flyers, Inc. v. FOR SALE, WIPO Case No. D2006-0199 (Richard W. Page, April 21, 2006), the Panel required the transfer of to the top franchise in NHL hockey and owner of the FLYERS trademark.

In finding 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

Notorious domain pirate's attempt to subvert UDRP used to evidence bad faith

Don't Mess With Texas!!!!....unless you are dealing with Texas International Property Associates.

In a case where you knew the result upon seeing the Respondent's name, Messe Frankfurt GmbH v. Texas International Property Associates, WIPO Case No. D2008-0375 (Clive L. Elliott, April 29, 2008), the Panel required the transfer of to the owner of the MESSE FRANKFURT mark.

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

What hoteel are you staying at in Berlin?

A fancy room at the Sofitel Berlin Schweizerhof

Ever try to book a hotel for an INTA annual meeting in the last weeks leading up to the meeting? Yeah, you feel me, right? No way you are scoring a room at a fancy hotel, and if you do find such a room, you are paying the equivalent of several Thomson search reports to get it. Thus, in the spirit of the upcoming INTA annual meeting, I couldn't resist the following case.

In ACCOR v. Vista Holdings, Inc., WIPO Case No. D2008-0291 (Dietrich Beier, April 21, 2008), the Panel required the transfer of to the hotel chain owner of the ACCOR mark. The Panel swiftly concluded that 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!

INTA meeting tip: After a day of meetings with other attorneys, nothing beats a soak in the jacuzzi- excuse me- Jacuzzi® brand therapeutic whirlpool bath.

Friday, May 9, 2008

Big Brown wins the Derby and its misappropriated domain name

There seems to be no stopping Big Brown. The horse dominated the Kentucky Derby, is the hands-down favorite to win the Preakness, and has its eye on the prized Triple Crown. But Big Brown's namesake, United Parcel Service of America, Inc. ("UPS"), is focused on a different "triple," namely, the "www" contained in the domain name And just like Big Brown, UPS's complaint to secure was a runaway winner.

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 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.

My only question is what odds would you give a UPS truck against Big Brown in a lap around the track? Perhaps this fancy one with the flames could take Big Brown, but I'd put my money on the Derby winner.

Wednesday, May 7, 2008

We'll resolve your domain dispute...unless it is complicated, that is

In Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183 (William R. Towns, April 23, 2008), the Panel refused to transfer,, and to the owner of a U.S. Trademark Registration for the mark FAMILY WATCHDOG. In so doing, the Panel made clear the limitations of seeking redress under the UDRP.

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

Addition of terms "easy" and "buy" to registered trademark increase likelihood of confusion

In F. Hoffmann-La Roche AG v. Julio Alvares, WIPO Case No. D2008-0254 (Andrea Jaeger-Lenz, April 18, 2008), the Panel compelled the transfer of to the Complainant, which owned the registered trademark VALIUM. In finding that the domain name was confusingly similar to the Complainant's trademark, the Panel emphasized that the addition of "easy" and "buy" to the Complainant's trademark increased the likelihood of confusion as to the source of the drugs offered by the Respondent. According to the Panel:

"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.