Apparently blood may not be thicker than water. The estate of the late Malcolm McLaren was recently unsuccessful in recovering the domain name malcolmmclaren.com from a cousin of one of Mr. McLaren’s former girlfriends through UDRP action filed with the National Arbitration Forum (NAF).
In his decision, the Panelist noted that the issues raised in the case, specifically a business/contractual dispute, are outside the scope of the UDRP, and did not appear to constitute a case of cybersquatting. The panelist cited Love v. Barnett, FA 944826 (NAF May 14, 2007), in which the case was dismissed because the dispute “appears to hinge mostly on a business or civil dispute between the parties.” Several other prior case examples were cited, but the message is clear: the UDRP is not a family counselor.
Cases such as this highlight anew the need to be strategic and selective in filing UDRPs where clear cybersquatting exists. Although you can’t pick your family members, try to make good decisions when it comes to girlfriends and UDRP filings.
Haas Automation, Inc. recently won a major victory in the fight against cybersquatting by successfully recovering 17 domain names in a single decision. The CNC machine tool builder’s recent haul included domain names such as haasvalves.co and haasrentals.co.
The National Arbitration Forum (NAF) panelist found that the domain names are confusingly similar to the Complainant’s mark, the Respondent has not established rights and legitimate interests in the domain name and the Respondent registered and uses the domain names in bad faith. In an apparently conspicuous show of its guilt, the Respondent failed to even submit a response in the proceedings. The Respondent was even found to have had prior knowledge of the Complainant’s brands and trademarks, in addition to prior UDRP decisions against the Respondent.
Although we frequently present cases in which complaints were denied, we love seeing instances of resounding victories for Complainants against repeat-offending cybersquatters. Way to go Haas.
Help Scout may need to start scouting for some new domain names. The online customer support solutions company recently unsuccessfully attempted to recover the domain names helpscout.com and help-scout.com.
The National Arbitration Forum (NAF) panelist found that the domain names are both confusingly similar to the Complainant’s mark and that the Respondent has not established rights and legitimate interests in the domain name. However, because no trademark rights for the Help Scout name existed at the time the domain names were registered, no evidence of bad faith usage of the domain names by the Respondent was found. As such, Help Scout was not able to meet the third requirement of the UDRP (bad faith by Respondent) and the Complaint was therefore denied. It is rather surprising that reverse domain name hijacking (RDNH) was not found as it so often is when a Complainant’s trademark rights don’t pre-date the creation of the domain name.
As we noted last week, cases such as this underline the importance of promptly registering trademarks, presenting clear and incontrovertible evidence of infringement in the complaint, and carefully selecting which domain names to pursue via UDRP action. Experienced UDRP counsel can help complainants, such as Help Scout, select winnable cases and solid domain name advisors can assist with longer-term digital strategy.
Politics and domain names often walk hand in hand these days. Organizing for Action, a non-profit organization aligned with the Democratic Party, was recently unsuccessful in recovering two domain names containing its name: organizingforaction.com and organizingforaction.org. In addition, the domain name organizingforaction.net was registered by a third party who indicated that he would refuse to sell or transfer the domain to the organization. Initially, the domain pointed to the home page for the National Rifle Association ("NRA") and now points to a YouTube video of Ben Carson's speech at the National Prayer Breakfast.
In its decision, the three-member UDRP Panel noted that while Organizing for Action did satisfy the requirement that the domain names are "confusingly similar, if not legally identical", to its name, it did not have a trademark registration and insufficient time had passed since the first use of the name to create common law trademark rights. The Panel also noted that the "non-distinctive nature of the expression" was a significant factor in its decision. In addition, it is interesting to note that the Panel cited one of the WIPO Panel Views on Selected UDRP Questions despite the fact that this case was filed with the National Arbitration Forum.
Based on the above factors, the Panel ordered that the complaint be denied. Organizing for Action will, for the time being at least, rely on its https://my.barackobama.com/page/s/organizing-for-action microsite. It will be interesting to see if Organizing for Action pursues other domain names ahead of the 2014 Congressional races and if its pending trademark application is granted, perhaps giving it a renewed opportunity to go after against these domain names again.
The 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.
Sometimes a UDRP complaint comes along which obviously never should have been filed in the first place. The Restored Church of God's complaint against Alexa Properties, LLC over the domain name RT.org, filed with the World Intellectual Property Organization, falls into that category.
The Ohio-based church likely did not consult outside UDRP experts when filing the complaint, as it was "represented internally," and this lack of experience contributed to the filing meeting not one, not two, but none of the required elements for domain name transfer.
The Complainant asserted common law rights to the mark "RT", as it operates a magazine called The Real Truth Magazine, and purportedly uses "RT" as an abbreviation commercially. The Complainant also alleges that consumers are confused by the Respondent's use of RT.org to host links in lieu of legitimate content and alleges that it offered to buy the domain name from the Respondent for $5,000, only to be countered by a $30,000 price tag.
The Respondent pointed out that his use of the domain name is largely irrelevant for purposes of the UDRP because the Complainant has no prior rights to the mark. The respondent registered RT.org in 1998, a full four years before the Complainant alleges any common law rights to the RT mark, and moreover, those common law rights are very suspect, according to the Panelist.
In the end, the Panelist ordered that the domain name remain with the Respondent, as the Complainant could not prove any rights to the disputed domain name. It also narrowly avoided a finding of reverse domain hijacking. Complaints like this should be a lesson on how important it is to consult UDRP experts before filing a complaint, because they can save time and money, as well as a brand owner’s valuable reputation.
The 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.
Sometimes 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.
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.
Popular 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.