Friday, May 26, 2017

Cybersquatter gets taken to school

In Bartram Academy, Inc. v. Al Perkins, WIPO Case No. D2017-0584 (Benoit Van Asbroeck, May 18, 2017), the Panel transferred the domain to Complainant. This is a rare case of old-fashioned cybersquatting, where a respondent registers a domain name that exactly matches a complainant's trademark. Most of those domains are now in the hands of their rightful owners, and indeed such was the case here. In that sense, the case also serves as a reminder of the importance of renewing domain name registrations, as it was the failure to renew such registration that resulted in the domain being snatched up by a cybersquatter.

In this UDRP case, Complainant owns and operates a preschool and child care facility in Florida, and has done so since 2012. It obtained a Florida state trademark registration for BARTRAM ACADEMY in January 2017. In March 2017, however, it allowed its domain registration for to lapse. Enter Respondent, who scooped up the domain upon expiration and redirected the domain to a website featuring adult-oriented content. I bet there were some angry parents!

The opinion, as you can imagine, was routine and predictable as to its outcome. Examining the three factors necessary for Complainant to prevail, the Panel had no problem readily finding for Complainant, especially since Respondent filed no formal response, other than advising the Panel "Shame they chose this route I was gonna give it them free lol but they chose to waste Money." Yeah, somehow I doubt it-- props to the school for not giving in and encouraging cybersquatting behavior.

Examining the first factor, whether the domain is identical of confusingly similar to a mark in which Complainant has rights, the above-referenced state trademark registration, thought just recently obtained, was sufficient to meet the requirement.

As to the second factor, whether Respondent has rights or legitimate interests in the disputed domain, the Panel noted Respondent has no affiliation with Complainant and is not known by the name BARTRAM ACADEMY. But dispositively, the Panel emphasized "that the Respondent registered the disputed domain name with the intention of selling it for an amount in considerable excess of its out-of-pocket expenses or, alternatively, of making a profit by redirecting the website to a pornographic website." Under the UDRP, nothing legitimate there.

As to the final factor, whether the domain was registered and used in bad faith by Respondent, the Panel emphasized that "Respondent intended to sell the disputed domain name for valuable consideration in excess of its out-of-pocket expenses related to the disputed domain name." It then noted that such action "constitutes compelling evidence of registration and use in bad faith." Further, the Panel emphasized that "Respondent also appears to have made use of the disputed domain name to redirect visitors towards a website with pornographic content," holding that "the diversion of domain names to a pornographic site is consistent with a finding that the disputed domain name is being used in bad faith." And such, the domain was transferred back to its rightful owner.

Monday, May 8, 2017

"I want a reason to go to Tractor Supply"

In Tractor Supply Company v. WhoisGuard Protected, WhoisGuard, Inc. / Party Brands LLC, WIPO Case No. D2017-0325 (Jeffrey M. Samuels, April 18, 2017), the Panel ordered the transfer of to the owner of the TSC TRACTOR SUPPLY CO. mark. Honestly, this was a pretty straightforward and simple case, but it gives me an excuse to talk about my beautiful wife, so I couldn't resist blogging about it.

True story-- Met my wife just over ten years ago as a result of an introduction made by my very first client, the amazing band sirsy. We went to two sirsy concerts together on back-to-back nights, and this blog post contains way more words than my future-to-be wife said about herself over those two nights. On the second night, desperate for information, and exasperated after several attempts to get her to reveal something about herself, I finally just laid it on the line and bluntly asked: "So, what is it that you want out of life???" Her response:
"I want a reason to go to Tractor Supply."

Now just think about that response for a second. There are over 320,000,000 people in the USA alone. If I asked that question to all 320+million people, I bet no one else would give that answer. And I loved the answer. I knew I loved her. I had never stepped foot in a Tractor Supply, but suddenly I wanted to walk through those doors more than any set of doors anywhere. So yeah, I proposed a few weeks later and my wife and I were married almost 6 months to the day from when she matter-of-factly said those words. For the conclusion of our Tractor Supply story, skip to the end, but for now, the merits of the case...

As always, the Panel considered the three elements necessary for a complainant to prevail in a UDRP dispute:
(1) Whether the disputed domain is confusingly similar to a trademark in which Complainant has rights;
(2) Whether Respondent has any rights or legitimate interests in the disputed domain; and
(3) Whether Respondent registered and has used the disputed domain in bad faith.

In this case, Respondent had about as much a chance of prevailing as I do of walking out of a Tractor Supply store empty handed-- none.

As to the first element, confusing similarity was easily shown. Complainant adeptly pointed out that Respondent's domain consisted of the most distinctive element of the TSC TRACTOR SUPPLY CO. mark, TRACTOR SUPPLY, with the mere addition of ".store," the latter of which "creates an association with the way in which Complainant sells its products to the general public, i.e. from their large stores." In this sense, the Panel considered the use of the ".store" extension an aggravating factor.

As to the second element, finding that the "evidence indicates that the disputed domain name resolves to a landing page with PPC links to third-party sites that feature aspects of Complainant's mark and that offer products and/or services that compete with those provided by Complainant," the Panel readily found that Respondent had no rights or legitimate interests in the disputed domain.

As to the final element, the Panel found bad faith, noting that the "evidence indicates that Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of such site or locations or of the products or services on the site or location." To that end, the Panel found that "some of the goods and services offered on the third-party sites [linked to from the disputed domain] compete with those offered by Complainant" and that "[i]t is also reasonable to assume, given Complainant's longstanding and widespread use of the TSC TRACTOR SUPPLY CO. mark prior to the registration of the disputed domain name, that Respondent had actual knowledge of Complainant and of its mark at the time of the disputed domain name's registration." Finally, Respondent paid the typical price for ignoring a cease and desist letter: "Respondent's failure to respond to the 'cease and desist' letter and email is an additional factor in support of a finding of bad faith." And so, the decision to transfer was made.

Now, back to my wife and her quest for a reason to visit Tractor Supply. After we got married, we bought a house with some land. We got some chickens and rabbits to go along with our horse, cats, and dogs. We had a lawn to mow and many mouths to feed. Seemed like a good time, so I bought her a nice John Deere riding mower, got her a hefty gift card, and made sure to take her to Tractor Supply so she could get whatever she wanted. That first trip to Tractor Supply was one of the better days of my life.

Now, whenever we can, wherever we travel, we always stop in to pick up something at Tractor Supply. And Sunshine, if you are reading this, I just got you a gift card to Tractor Supply so we can visit again real soon, maybe a Mother's Day trip cause I know chicken feed > flowers for my Tractor Supply lovin' lady. Love ya.

Monday, May 1, 2017

Doc Martens gives a cybersquatter the boot

Image result for doc martens logoIn “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v., Inc., WIPO Case No. D2017-0246 (David Taylor, April 10, 2017), the Panel ordered the transfer of to the owner of the famous DOC MARTENS trademark. This case was interesting for two reasons. First, while the Respondent appears to be the registrar GoDaddy,Inc., it is not (more on that later), and second, I find it fascinating that in the balance of cost/benefit ratio, an entity would pursue any domain ending with the .xyz extension, especially where such domain is not being actively used, as was the case here. Have you ever sought out a .xyz domain name? I didn't think so, which begs the question of what harm Complainant was suffering to justify the effort and expense to pursue this infringement. Sales of footwear must be good, or its lawyers must be bored, for Complainant to prioritize going after this domain.

Turning to the merits and the three elements to prove in order to prevail in a UDRP dispute, the case was pretty straightforward. Complainant owns many trademarks with DOC MARTENS or DR. MARTENS, which it uses in connection with footwear and clothing. Given that the disputed domain matches Complainant's mark exactly, with the mere addition of the .xyz extension, which "is generally disregarded under the identity or confusing similarity test as it is a functional element," the Panel readily found that the disputed domain is identical or confusingly similar to a mark in which Complainant has rights.

Turning to the second element, whether Respondent has rights or legitimate interest in the disputed domain, Complainant failed to prove (as it alleged) that the disputed domain was used as a link farm to websites selling competing goods. But, since the domain name did not resolve to an active website, and "taking into account the overall circumstances of this case.. Respondent's lack of use of the Domain Name is a strong indication of its lack of rights or legitimate interests." In other words, something stinks in Denmark, so the Panel decided to let Complainant off the hook for its failure of proof. And here we have a great example of why WIPO is a great forum for complainants.

As to the final factor, whether the disputed domain was registered and used in bad faith, Complainant did a better job and made the Panel's job easier to find this element satisfied. As to registration, since "Complainant's registered trade mark rights in DOC MARTENS... significantly predate the registration date of the Domain Name by at least 15 years...[t]he Panel is therefore of the view that the Respondent registered the Domain Name in full knowledge of the Complainant's trade mark rights and, on balance, with the intention of taking advantage of such rights." Bad faith use was found based on the facts that (1) the disputed domain was not being actively used, (2) Complainant owns a well-known trademark, (3) Respondent filed no response to the Complaint, and (4) Respondent concealed its identity. As to the last point, Respondent was not actually GoDaddy Inc., the registrar involved in the matter, but Respondent entered as its registration details information nearly identical to its registrar. One would think that GoDaddy would have in place some sort of mechanism to prevent registrations of domain names through its website where the registrant claims to be an iteration of GoDaddy itself (in this case Respondent claimed to be, Inc.). It will be interesting to see if future cases have similar iterations in respondent names--something to look out for.