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Decisions: "Nice" Trademark!
Mon, 04/15/2013 - 09:51 — Steve Levy — PermalinkThe presence or absence of a trademark can sometimes make or break a UDRP case for a Complainant. Nice Car Inc.'s trademark for NICE CAR seemingly played a large role in deciding the outcome in its complaint against choi sung sik over the domain name NiceCar.com, filed with the National Arbitration Forum.
In the case of a default (non-response) by the Respondent, the Panelist made her decision based only on the information that the Complainant presented. The Complainant has owned a US Trademark for NICE CAR in relation to motor vehicle dealerships and repair services since 1975. Surprisingly, despite some technical issues in the PTO application process and a cancellation action by a competitor claiming prior use, the trademark was never called into question for being descriptive of the Complainant’s services.
Owning rights to such a borderline mark may be unusual, but the Panelist determined that the it was identical or confusingly similar to the NiceCar.com domain name. The Complainant was also able to prove that the Respondent lacked rights or legitimate interests in the disputed domain name and that he had registered the name in bad faith, as he offered to sell it to the Complainant for $100,000, a sum that greatly exceeds the Respondent's costs of registering and maintaining the domain name.
Based on the above factors, the Panelist ordered that the domain name be transferred to the Complainant. While the proceedings themselves were somewhat straightforward based on the evidence presented, it's somewhat unusual for a case involving such a descriptive term to proceed to smoothly. This shows that if the Complainant can satisfy all three requirements and the respondent defaults, a transfer of almost any name is possible.
Decisions: In Bad Faith?
Mon, 04/01/2013 - 09:22 — Steve Levy — PermalinkThe UDRP complaint that Edward Smith’s attorney filed against Douglas Bates over the domain name Joopa.com hinged on one of the three elements required for domain name transfer. Was the Complainant able to prove that the Respondent registered the domain name in bad faith?
The Complainant is the owner of the JOOPA mark, which it registered in March 2011. In his Complaint with the National Arbitration Forum (NAF), the Complainant states that because the trademark is identical to the disputed domain name, he has rights and legitimate interests to it, while the Respondent does not. Furthermore, he explains that he tried to purchase the domain name from the Respondent at multiple points, but each time, the Respondent asked for substantially more money than he was offering.
The Respondent, a doctor who develops websites on the side, explains that he has owned the disputed domain name for 11 years, which far exceeds the length of the Complainant's trademark (not even filed until after the Complainant first contacted the Respondent about Joopa.com). The Respondent explains that he is developing the domain name, albeit slowly because of his fulltime job, and offering to sell it to the Complainant does not demonstrate bad faith. Finally, he accused the Complainant of attempting Reverse Domain Name Hijacking.
In its decision, the Panel found that the Complainant satisfied the first two necessary elements of a UDRP complaint, but when it came down to the bad faith requirement, the 11-years between the Respondent's website registration and the Complainant's trademark registration proved that this element would not be satisfied. Additionally, the Panel found the Complainant guilty of Reverse Domain Name Hijacking, citing an earlier complaint in which the Complainant "was not entitled to the domain name and hence had no colorable claim under the Policy."
Once again, this is a reminder that all three elements must be satisfied in order to have a successful UDRP complaint, and if the Complainant simply does not have trademark rights that predate the domain name, the Panel will get to the bottom of it.
Decisions: Adjudication Situation
Mon, 03/25/2013 - 09:33 — Steve Levy — PermalinkSometimes UDRP complaints come along that are obvious attempts at gaining control of a domain name to which the Complainant simply does not have rights. A complaint filed by Adjudicate Today Pty Limited against the domain Adjudicate.org.au, filed with the World Intellectual Property Organization (WIPO) against The Institute of Arbitrators and Mediators, is a clear example of this form of over-reaching.
Quite simply, the Complainant attempted to build a case against the Respondent based on mistruths and stretched allegations. First of all, the Complainant stated that its common law rights to the term "Adjudicate Today" should give it rights to the disputed domain name based on it being identical or confusingly similar.
Additionally, the Complainant claims that the site is being used to deliberately mislead customers searching for the Complainant's services, despite the different names of the organizations. Finally, the Complainant questions the Respondent's trading company's status as a non-profit.
When a complaint like this is filed, the Panelist usually breaks down and sifts through the Complainant's falsities comprehensively, and this case was no exception. The Panelist found that the Complainant failed to satisfy any of the three requirements for domain name transfer, and as a final blow, found the Complainant guilty of Reverse Domain Name Hijacking.
This complaint should be a lesson to brand owners that UDRP complaints are not a quick fix if one does not have a solid case and should not be used merely to gain negotiating leverage. UDRP Panelists have seen it all, and they are very rarely fooled by complaints without merit.
Decisions: Colorblind
Mon, 03/18/2013 - 09:32 — Steve Levy — Permalink
The University of Miami filed two UDRP complaints with the National Arbitration Forum (NAF) over UHealth.com and UHealth.org, and although the domain names and complaints were similar, the outcomes were decidedly different.
It's important to note that while the Complainant, the University of Miami, was the same in both complaints, the Respondents were different. Marchex Sales was the Respondent in the UHealth.com complaint, and DNS Manager/Sentri group was the Respondent in the UHealth.org complaint. In both cases, a three-person panel from the NAF decided the outcome of the case, and one Panelist, Wolter Bettink, sat on both panels.
Despite the similarities on the surface, there were a number of factors that distinguished the complaints and led to the different results. The University of Miami registered the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM in 2007, and at that point, UHealth.com was already in existence, while UHealth.org changed ownership and content after the trademark went into use. This distinction, along with an orange and green color scheme that mirrored the University's official colors, was one of the reasons that the Respondent of the .ORG complaint was found to be using the domain name in bad faith and had no rights or legitimate interests.
In fact, the connection between the term UHEALTH and the colors was a point of contention in both complaints. While both Respondents argued that the connection between an established mark and specific colors should not affect domain name disputes, the .ORG Respondent's use of the colors on a similar pay-per-click page ultimately contributed to losing the complaint.
In the end, the .COM domain name was ordered to stay with the Respondent, while the University of Miami acquired the .ORG domain name. It's worth noting that in the transfer, however, there was a dissenting opinion by one Panelist that echoed many of the reasons that the University did not win the .COM complaint, which reinforces the inherently subjective nature of UDRP decisions.
The case highlights the critical factor of timing in UDRP disputes. If a domain was owned by a respondent before the complainant’s trademark rights were created it is nearly impossible to show that bad faith was involved.
Decisions: Is There a Meme for Losing a UDRP Complaint?
Mon, 03/11/2013 - 00:29 — Steve Levy — PermalinkPopular meme-generator Cheezburger Inc. filed a UDRP complaint against rival site WeKnowMemes over its primary domain name WeKnowMemes.com with the World Intellectual Property Organization (WIPO) citing infringement of one of its registered trademarks. It was up to WIPO to determine if the Complainant actually had rights to the disputed domain name or if the UDRP complaint was a thinly veiled bid to take down a competitor.
Cheezburger filed the UDRP complaint primarily on the grounds that the disputed domain name was identical or confusingly similar to its registered mark KNOW YOUR MEME. Additionally, the fact that both parties provide similar content might confuse Internet users searching for the Complainant's content.
To clarify, both sites are active generators of "memes," which are broadly defined as "concepts that spread from person to person via the Internet." Memes can take the form of videos, images, written content, virtually anything that can be shared by Internet users. Cheezburger Inc. is most famous for its "lolcats" memes and is widely seen as one of the foremost meme producers on the web.
WeKnowMemes.com, though, is also a popular page, snagging almost 200,000 unique visitors in the month of February, according to Compete.com. The Respondent defended itself by saying that the established mark is made of generic terms and expressly states that it does not cover all uses of the term "meme.
In the end, the WIPO Panelist denied the complaint. It said that the question of whether or not the domain name is identical or confusingly similar to the established mark is a close call but it found that the Respondent had a legitimate interest in the domain and that it did not have a bad faith intention in registering and using it. This case highlights the fact that a UDRP complaint is not the appropriate avenue for attempting to quell a rival site, especially without strong evidence.
Decisions: The Wonderful World of UDRP
Mon, 03/04/2013 - 10:34 — Steve Levy — PermalinkDisney filed a UDRP complaint with the National Arbitration Forum (NAF) against Greg Beinstock over 13 domain names related to a number of its titles, including Mickey Mouse, Tangled, and Aladdin. The proceedings were mostly standard for a complaint against an alleged squatter using marks for PPC sites, save for a notable exception.
It turns out that, while Disney owns the key marks for the primary terms in the majority of the disputed domain names, the most basic Aladdin mark it owns is for ALADDIN'S MAGIC CARPET RIDE and a French trademark for ALADDIN. The disputed Aladdin domain names featured no mention of the ride but rather referenced an Aladdin musical. In January, Disney announced plans to bring Aladdin to Broadway, but it clearly has not yet obtained any trademarks related to the show.
The Respondent, probably sensing that the other domain names were surefire transfers to the Complainant, singled out the Aladdin domain names in his filing, stating that they are not identical or confusingly similar to Disney's mark and pointing out the 219 U.S. trademark applications containing the word Aladdin. He also states that he had been trying to create a stage version of Aladdin prior to Disney's announcement, although he provides no facts to back this claim up. In his decision, the Panelist explains that while all of the other domain names are sufficiently similar to the Complainant's marks, the Aladdin ones are not, and he orders them to remain with the Respondent.
Panelists are required to examine each domain in a complaint individually and some are not willing to transfer certain domains even if others at issue are clearly cybersquatted. As such, this case should be a lesson to all brand owners that, regardless of your company's size or influence, pre-existing trademark rights are essential in UDRP proceedings. Proof of rights to important marks must be fully prepared before considering a UDRP complaint.
Decisions: "Eye" for Detail
Mon, 02/25/2013 - 10:26 — Steve Levy — Permalink
Here’s another example of why filing UDRP complaints should be left to the experts. Even lawyers experienced in trademark litigation may not know their way around this tricky field.
At first glance, it would appear that Eyemagine Technology would have a good chance in its UDRP complaint, filed with the World Intellectual Property Organization (WIPO), against Clough Construction concerning the domains Eyemagine.com and Eyemagine.info. However, the Complainant made a number of critical errors that jeopardized its chances of reclaiming the domain name.
Eyemagine is a California-based design and tech firm specializing in ecommerce, and it owns both design and character marks for the term EYEMAGINE. The Respondent, which makes custom home decks, is also a California company, and its current Eyemagine domain names redirect to its construction company homepage.
While the Complainant might own character and design marks for EYEMAGINE, they were not registered until 2012 and 2009, respectively, more than a decade after Clough Construction registered Eyemagine.com in 1996. Thus, its claim that the domain names were registered in bad faith seems dubious, given that the Complainant's company did not even exist then.
Additionally, the Respondent urges the Panelist to consider charging the Complainant with Reverse Domain Name Hijacking (RDNH), given the fact that after negotiations on the sale of the domain name between the parties broke down, the Complainant filed a UDRP complaint close to the year-end holidays and without telling the Respondent's attorneys. The Respondent believes that the Complainant was trying to cut response time short to have a better chance of winning the UDRP complaint.
In the end, the dual filings seem to reveal two approaches to the UDRP Complaint. The Complainant attempted to play dirty, being dishonest in its filing and attempting to limit the Respondent's ability to properly defend itself. The Respondent, on the other hand, clearly and concisely responded to each of the Complainant's allegations and made a strong case for RDNH. The WIPO Panelist sided with the Respondent and, in finding the Complainant guilty of RDNH, said “It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules."
This complaint should be a lesson to all brand owners to play by the rules and to hire legal counsel specifically experienced in UDRP complaints. Ultimately, the truth will emerge.
Decisions: The "Fine" Print
Mon, 02/18/2013 - 10:13 — Steve Levy — PermalinkThe term "fine tubes" generally refers to a variety of metal precision tubes used in construction and manufacturing. Fine Tubes Ltd. is a UK-based manufacturer of these tubes that ships its products around the world. Fine Tubes Ltd. is also the Complainant in a UDRP complaint with the World Intellectual Property Organization (WIPO) for the domain name fine-tubes.com against Ethen Rohre, a German company that makes the same type of tubes.
Follow all of that? The crux of the issue is Fine Tubes Ltd. claiming rights to a term that is both its company name and a generic term used to describe the type of tubes that both companies manufacture. Fine Tubes already owns FineTubes.com, which redirects to its homepage, FineTubes.co.uk, so this seems like a case of attempting to stop a competitor from using a domain name that could be potentially confusing.
The major issue in the complaint is that Fine Tubes Ltd.'s attempt to trademark the term FINE TUBES was rejected by the Office of Harmonization for the Internal Market (OHIM), which registers the Community Trade Mark in the European Union. The Complainant failed to disclose this rejection, which essentially consisted of OHIM saying that the term was too generic to claim rights to, and the Respondent made note of it in its submission.
WIPO explained that it could not refute OHIM and say that Fine Tubes Ltd. has rights to such a generic term, thus the domain name, so it rejected the complaint and ordered the domain name to remain with the Respondent. This case should be a lesson to all brand owners not to rely on UDRP arbitration to decide differently from previous trademark rulings, because the body will most likely agree with precedent.
Decisions: Trademark Protection Company Can't Protect Its Own Mark
Mon, 02/11/2013 - 10:21 — Steve Levy — PermalinkDutch company Merk-Echt describes itself as a "trademark agency" committed to protecting its clients' intellectual property and combating trademark infringement. You would think that a firm dedicated to trademark matters would have its own trademark and domain portfolio in order, but a recent UDRP filing reveals otherwise.
Merk-Echt filed a complaint with the World Intellectual Property Organization (WIPO) against Tilma Consultants over the domain name MerckEcht.com. In its complaint, the company claims that it holds registrations for both a stylized logo trademark and a word trademark in Benelux (the region comprised of Belgium, the Netherlands and Luxembourg), which were originally filed by the Respondent in 1999 and 2001, respectively but then handed over to Merk-Echt. Why would the Respondent simply hand over the marks? It turns out that Tilma Consultants was one of the founding shareholders of Merk-Echt, and Merk-Echt agreed to purchase Tilma's shares of the company in 2009.
As of now, the disputed domain name hosts the official page for Merk-Echt, but the company fears that the Respondent will soon take over site content. According to the Complainant, it talked with the Respondent in early summer 2009 about transferring the domain name to the Complainant, but discussions fell apart that July and the domain was never transferred. The Respondent claims that the payment for the shares and domain transfer was never received, so the transfer never occurred.
The Panelist sifted through the arguments and found that although the disputed domain is identical or confusingly similar to the Complainant's mark, there was no evidence that the Respondent initially registered the domain name in bad faith. Additionally, he suggested that the matter would better be settled in "ordinary court," before deciding that the domain should remain with the Respondent.
This case should be a lesson to any brand owners regarding trademarks and domain name protection, especially in cases of company division or changes in ownership. When a significant change like this happens, it's critical for domain names and trademarks to come as a package deal to avoid disputes like this one down the road.
Decisions: Model Complainant
Mon, 02/04/2013 - 10:33 — Steve Levy — PermalinkIt might seem strange that one of the world's most recognizable supermodels over the past two decades does not own her name as a .COM domain, but Cindy Crawford falls into this category. It seems like the model finally had enough, however, and she filed a UDRP complaint at the World Intellectual Property Organization (WIPO) against Julian Garcia, the owner of CindyCrawford.com.
It's not clear what finally pushed Crawford to try to gain control of the domain, because she states in the complaint that she has never owned it, but since August, 2012, the site has hosted pornographic content related to an actress who also uses the Cindy Crawford moniker. It's possible that this "pornosquatting" compelled the Complainant to take protection of her brand image more seriously.
Garcia did not file a response to the complaint, but it's clear from the Panelist's decision that even if he had submitted something, the odds would have been stacked against him. Crawford owns trademarks of her name in more than 50 countries and according to the WIPO, is famous enough that she might have not even needed these registrations to claim rights to the disputed domain name. The Panelist also found that the Respondent had little to show in terms of rights or legitimate interests in regards to CindyCrawford.com and ordered the transfer of the domain name.
According to the filing, third parties have controlled the domain name since 2004, and Crawford used Cindy.com as her professional site. It's not clear what took Crawford so long to file this UDRP complaint, but by the time that she did, she had a rock solid case to earn it back. This case should be a lesson to all celebrities of how important it is to own the most intuitive domains related to your personal or stage name, because third parties could be using them to earn countless hits on unauthorized, and even harmful content.
