Sunday, April 23, 2017

Shocker: used to sell couunterfeit LEGO building bricks

In LEGO Juris A/S v. Whoisguard Protected, Whoisguard, Inc. / Giovanni Bonny, WIPO Case No. D2017-0143 (Peter Wild, March 15, 2017), the Panel ordered the transfer of to the owner of the famous LEGO trademark. This was a case I could not resist blogging about, as my life just changed for the better this past week when my son wandered into a LEGO store at a local mall. He thought he was forcing me to buy LEGO bricks, but I may have been more excited about his "discovery" than he was. And I am glad to see that my money-for-bricks is being used to quash counterfeit enterprises. Well done LEGO!

Reading this decision was almost as enjoyable as building my son's first LEGO kit. There is some great language in the decision for brand owners. To start, the Panel noted the significance of the fact that Complainant not only owns the LEGO mark and corresponding domain, but also owns "a large number of similar domain names." It is always wise to build up a portfolio of domain names around your core trademark/domain, and Complainant here appears to have done just that.

From there, piecing together a victory for Complainant was easy. Examining the three factors necessary for Complainant to prevail in its UDRP dispute, whether the disputed domain is identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted that the disputed domain consists of Complainant's trademark plus a geographic term that "does not alter the overall similarity" of the mark and disputed domain.

Looking at the second factor, Respondent's rights or legitimate interests in the disputed domain, Respondent here actually filed a response and tried to defend its right to the disputed domain, which he used to sell building bricks designed to imitate and compete with LEGO bricks. The Panel was not impressed: "It is clear that the toys offered for sale through the links on the website under the disputed domain name are toys which imitate, copy, or counterfeit the Complainant’s well known trademark and toys. As such, they are competing goods." Respondent attempted to argue that LEGO has become generic for building bricks, and that he made clear on his website that the bricks he was selling were not LEGO branded bricks. Again, the Panel scoffed: "The Panel does not find the Respondent’s submission that LEGO has somehow become 'genericized' to be convincing, nor does it accept that the Respondent’s statement on the website (that the products referred to are not genuine products of the Complainant) could give rise to rights or legitimate interests on the part of the Respondent."

As to the final factor, bad faith registration and use of the disputed domain, the Panel found that "[r]egistering a domain name with a famous trademark to draw Internet users to unauthorized copies and counterfeits of products which are sold under that famous trademark is a clear case of bad faith registration." As to bad faith use of the disputed domain, the Panel again balked at Respondent's defenses: "The Respondent claims that, on the website, he clearly states that there is no connection with the Complainant and, therefore, the use of the disputed domain name cannot be in bad faith. The Panel rejects this view. Using a domain name which refers to the Complainant’s well-known products but links to counterfeit products will attract Internet users who are interested in the Complainant’s products... [t]his establishes bad faith use of the disputed domain name."

This was a fun read, but getting back to building my son's new LEGO Batman set will be even more fun. There is only one true LEGO brand, and I'm glad my son is learning to appreciate the authentic and best building blocks out there.

Sunday, April 16, 2017

Hershey scores a sweet victory to recover a salaciously used domain name

In Hershey Chocolate & Confectionery Corporation v. L. Roman T. Sorrells, PARI’ZA Studios, WIPO Case No. D2017-0128 (John C. McElwaine, March 31, 2017), the Panel ordered the transfer of to Complainant owner of the famous chocolate brand KISSES. This was actually a case I worked on when I had the privilege of serving as President and Counsel to Hershey Chocolate & Confectionery Corporation.

I learned of this infringing domain name through a domain watch I had ordered to monitor domain names that potentially infringe on the HERSHEY'S and KISSES trademarks. We offer this type of domain watching service at my new firm, Alprin Law Offices, and I highly recommend it for anyone concerned about cybersquatting and/or typosquatting. A domain watch is an inexpensive way to monitor and protect one's valuable intellectual property from being infringed, which in the case of involved the association of famous trademarks to unsavory sexual content. It is almost always money well spent, and that was certainly the case here.

As to the merits of the case, which fit the mold of classic typosquatting and tarnishment, the Panel marched through the 3 factors necessary for a complainant to prevail in a UDRP dispute. First, examining the similarity of the disputed domain to Complainant's marks, the Panel held that "the consensus view is that a domain name consisting of a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name." As to the specific domain and marks, the Panel found that "the difference between HERSHEY and HERSHEY’S is not so significant as to create a different commercial impression" and "the replacement of the 'i' in the word 'kiss' with the letter 'y' leaves a visually similar word with an identical pronunciation."

Moving to the second factor, whether Respondent has legitimate rights or interests in the disputed domain, Respondent filed no substantive response (though it did contact WIPO informally) and the Panel held that "[t]he silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name" and noted that "previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue." More specifically as to the second factor, the Panel found that Respondent, who claimed to register the domain name for a "client" who is a "model" named Jackie Hershey, "Respondent’s leasing of domain names to a third party for use without complainant’s authorization does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy 4(c)(i) or 4(c)(iii)." Going further, the Panel held that "even if it was accepted that Respondent (standing, as if it were, in the client’s shoes) thought his client had a bona fide intention to use the surname, Hershey, in a domain name, such good faith evaporates when Respondent intentionally added the term 'KYSS' to the surname thereby creating a domain name that is confusingly similar to and dilutive of the Complainant’s HERSHEY’S KISSES trademark. The logo incorporating 'Hershey' featured on the website has a striking resemblance to Complainant’s logo mark, and the Panel infers that this was a deliberate attempt to draw an unjust association with Complainant’s name."

As to the final factor, Respondent's bad faith use and registration of the disputed domain, the Panel stated that "[b]ad faith can be found where respondents 'knew or should have known' of complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest." With this in mind, the Panel concluded that "Respondent linked the Domain Name to a website that mimicked Complainant’s stylized HERSHEY’S trademark. The Domain Name also includes a misspelling of Complainant’s HERSHEY’S KISSES trademark. The Panel finds that the Respondent (or his client) unquestionably had Complainant’s HERSHEY’S Mark in mind when the Domain Name was selected."

Finally, moving to the topic of tarnishment, the Panel noted that "intentional tarnishment of a complainant’s trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith." In this case, Respondent denied in its informal communication to WIPO that the website at the disputed domain was pornographic. The Panel nevertheless found tarnishment: "the website in this case advertises 'provocative videos' and 'sexy, hot behind the scenes' content. Complainant’s candy products are known to be enjoyed by adults and children alike. The Panel finds that the website in this case is of a kind that could reasonably tarnish" Complainant’s marks.

And so, the Panel ordered the transfer of the domain to Hershey. Props to my friends at Downs Rachlin Martin PLLC for the fine job they did on this case. Congratulations!

Sunday, April 9, 2017

It's never too late to go after a misapproriated domain name

In JR Apparel World LLC v. Perfect Privacy, LLC / West Village LLC, WIPO Case No. D2017-0055 (Richard W. Page, February 22, 2017), the Panel transferred the domain to the owner of the federally registered trademark MEMBERS ONLY, despite the fact that the disputed domain was registered way back in 1997. In 1997, the Internet was just starting to gain popularity. The registration is thus very, very old, and made at a time when the Internet was somewhat of the wild west. But matter that did not, and the case serves as a reminder that it is never too late to go after a misappropriated domain. The concepts of latches and acquiescence have little place in uncontested UDRP proceedings.

Complainant is owner of the mark MEMBERS ONLY, which the panel found to be famous, and which Complainant had used (through itself and its predecessor in interest) in connection with apparel products since 1975. But neither Complainant nor its predecessor seemed to have taken any action against Respondent (or its predecessor) until 2013, when it sent a cease and desist letter to Respondent. Complainant appeared to take no further action until 2016, when it sent another cease and desist letter. Let's just say that, at best, such lack of enforcement is not very aggressive policing of a famous trademark. At worst, it is latches and acquiescence. In a UDRP forum, with no response filed by Respondent, the best possible interpretation for a complainant seems to control, and that was the case here.

Putting aside the delays in enforcement, examining the three factors to justify a transfer proved easy for the Panel. First, citing several cases, it was easy for the Panel to conclude that the disputed domain, which contained the entirety of Complainant's mark with the mere addition of the gTLD .com, is confusingly similar to Complainant's mark.

As to the second factor, the Panel found that Respondent did not have legitimate rights or interests in the domain. Dispositive here was the fact that Respondent used the domain as a link farm to various websites selling authentic MEMBERS ONLY branded products. The Panel concluded such use of the domain was for commercial gain and not legitimate.

As to the final factor, bad faith registration and use of the domain, the Panel basically repeated its reasoning as to the second factor, concluding that linking to websites, for commercial gain, that sell Complainant's goods, amounts to bad faith.

This is a case where, had Respondent filed a response, the outcome may have been different. Similarly, one could imagine several ways to use the domain that do not infringe upon Complainant's trademark. But the targeting of Complainant by linking to stores selling its merchandise, as is often the case in UDRP proceedings, proved to be the determining factor, while Complainant's failure to file the dispute for nearly 20 years proved inconsequential.

Saturday, April 1, 2017

The Jazz score a three-pointer for the win!

In Jazz Basketball Investors, Inc. v. WhoisguardProtected,Whoisguard, Inc. / Big Shen, Joan Bristol, WIPO Case No. D2017-0031 (Desmond J. Ryan, March 8, 2017), the Panel ordered the transfer of to Complainant, the owner of the Utah Jazz professional basketball team. It was a fairly straightforward case where Respondent had about as much chance of retaining the domain name as the Washington Generals had of beating the Harlem Globetrotters through history (random basketball history fact: the Generals only won once against the Globetrotters, due to an accidental time clock error, after losing 2,495 straight games). For this reason, Respondent didn’t even show up for the game (it defaulted).
Complainant swooshed a three pointer in this one, satisfying all three factors necessary to prevail in a UDRP complaint. First, it easily demonstrated that the disputed domain name was confusingly similar to a trademark in which Complainant had rights. Complainant owns the federally registered trademark UTAH JAZZ, and the Panel found that “[t]he disputed domain name wholly incorporates the word ‘jazz’. It is the first and distinguishing element of the disputed domain name. The added descriptive words ‘basketball team shop’ serve to increase the likelihood that consumers would associate the disputed domain name with the famous basketball team and compound the confusion thereby created."
As to the second factor, whether Respondent has rights or legitimate interests in the domain, Complainant merely confirmed that it had not licensed or authorized Respondent to use the UTAH JAZZ trademark, and that assertion plus the fact that the domain name featured a webpage purporting to sell counterfeit UTAH JAZZ merchandise, made the finding of illegitimacy a slam dunk.
Finally, as to the third factor, bad faith registration and use of the domain name, the Panel found:
The word string of which the disputed domain name is composed is clearly designed to suggest, and does suggest, that the online location to which the disputed domain name directs is the online shop or e-store location of the Utah Jazz basketball team but there is the uncontradicted assertion by the Complainant that the Respondent has no connection or association with the Complainant. There could hardly be more cogent evidence of registration in bad faith. Added to that are the collateral facts that the registration sits behind a privacy shield and the contact details of the personally named Respondents are apparently fictitious.
These findings plus the asserted counterfeited nature of the goods sold on the Respondent’s website, sealed the win for Complainant.