Friday, June 6, 2008

Common law trademark rights demonstrated through Complainant's declaration

The late Theodore Presser would be proud to know that his lawyers got it right

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 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

There is no stopping this press - another typosquatter defeated

Where the powers that be at Dayton Daily News determined to spend some subscription fees and go after a typosquatter

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 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 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 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

To win a UDRP case, a Complainant must provide evidence of its trademark rights

Here look-- we have a trademark! Please believe us!

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 and 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.

Use of privacy service and manipulation of Whois information evidences bad faith

A map of Middle Earth from the famed The Lord of the Rings series

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 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

Cybersquatting case serves as reminder of importance of monitoring domain expirations

One of a number of Golden Door Spa locations

In a throwback to the early days of UDRP decisions, the Panel in Golden Door Licensor, L.L.C. v. Protected, WhoisGuard/Chen Bao Shui, WIPO Case No. D2008-0352 (Arne Ringnes, May 13, 2008) required the transfer of to the owner of the GOLDEN DOOR SPA trademark. In most ways, the case was typical-- the domain name was being used in connection with sponsored links to the Complainant's competitors, the Respondent was a serial cybersquatter that had lost a number of UDRP decisions before WIPO, and the Respondent entered no appearance to defend himself. The decision to transfer was about as easy as they come.

But what was not so typical, at least anymore, was the fact that the domain name at issue was identical (except for ".com") to the Complainant's well-known trademark. In the early years of the UDRP, say around 2001-2002, most WIPO decisions involved what I call "traditional" cybersquatting, where the Respondent registered as a domain name the exact trademark of a third party, with the only difference being the ".com" or some other top level domain. After a few years, most diligent trademark owners recovered their trademark-identical domain names from WIPO, NAF, the courts, through a purchase, or as a result of a negotiation or threat of some sort.

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.