In the case of Eliot Spitzer v. Eliot Spitzer, FA 919828 (Nat. Arb. Forum Mar. 20, 2007), the Panel agreed with the New York state Governor that the domain names eliotspitzer.com and eliotspitzer.org should be transferred to him.
Turning first to the question of whether the domain names registered by Respondent were identical or confusingly similar to a trademark or service mark in which the Complainant has any rights, the Panel noted that although Complainant did not have a federal trademark registration associated with the ELIOT SPITZER mark, a federal registration was unnecessary to establish rights in the mark pursuant to Policy ¶ 4(a)(i). Complainant asserted common law rights in the ELIOT SPITZER mark through the continuous and ongoing use of the mark as Governor of New York and as a prominent public figure, establishing secondary meaning in the mark. The Panel found that Complainant’s continuous and ongoing use of the mark was sufficient to establish secondary meaning in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contended that Respondent’s eliotspitzer.com and eliotspitzer.org disputed domain names were identical to Complainant’s protected mark. The disputed domain names contained Complainant’s mark in its entirety and merely add the generic top-level domains (“gTLDs”) “.com” and “.org.” The Panel found that the addition of a gTLD to an otherwise identical mark failed to sufficiently distinguish the domain names from the mark pursuant to Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain names at issue, the Panel noted that Respondent was not currently using the disputed domain names to resolve to any content. The Panel found that Respondent’s failure to associate any content with its disputed domain names evinced a lack of right or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent had not proffered any evidence to suggest that it was commonly known by the disputed domain names, or that it was licensed or permitted to use or own any domain name registrations that were identical to Complainant’s mark. Although Respondent’s WHOIS information listed “Eliot Spitzer” as the registrant of the disputed domain name, the Panel found that there was no evidence showing that Respondent was commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Turning finally to the question of whether the domain names were registered and used in bad faith, the Panel held that Respondent’s failure to resolve its disputed domain names to any content evinced registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel granted Governor Eliot Spitzer's request that the eliotspitzer.com and eliotspitzer.org domain names be transferred to him.
Saturday, March 31, 2007
Wednesday, March 21, 2007
American Airlines Recaptures SHAREAAMILES.COM Domain Name from Cybersquatter
In the case of American Airlines, Inc. v. Jucco Holdings, FA 914853 (Nat. Arb. Forum Mar. 19, 2007), American Airlines successfully wrestled the shareaamiles.com domain name from a cybersquatter.
Complainant, American Airlines, Inc., is one of the world’s largest airlines. In connection with the provision of these services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the SHAREAAMILES mark (Reg. No. 2,755,924 issued August 16, 2003).
Respondent registered the shareaamiles.com domain name on June 15, 2004. The disputed domain name resolved to a website featuring category links, some of which led to websites operated by airlines in competition with Complainant.
Turning first to the question of whether the domain name registered by Respondent was identical or confusingly similar to a trademark or service mark in which Complainant had rights, the Panel noted that the Complainant asserted rights in the SHAREAAMILES mark through registration with the USPTO. The Panel found that Complainant’s timely registration and subsequent use of the SHAREAAMILES mark sufficiently established rights in the mark for purposes of Policy ¶ 4(a)(i). Complainant further asserted that its SHAREAAMILES mark was identical to Respondent’s shareaamiles.com domain name. The disputed domain name contained Complainant’s mark in its entirety and merely added the generic top-level domain (“gTLD”) “.com.” The Panel found that the addition of a gTLD to an otherwise identical mark failed to establish distinctiveness in the mark pursuant to Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain name at issue, the Panel noted that Complainant alleged that Respondent was using the disputed domain name to operate a website featuring links to commercial, third-party websites, some of which were competitors of the Complainant. Presumably, Respondent received referral fees for each misdirected Internet user. The Panel found that Respondent’s use of the disputed domain name was neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial use in accordance with Policy ¶ 4(c)(iii).
Furthermore, an investigation of Respondent’s WHOIS information revealed that the registrant of the shareaamiles.com domain name was “Jucco Holdings.” In lieu of any information proffered by Respondent to indicate otherwise, the Panel found that Respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Turning lastly to the question of whether the domain name was registered and used in bad faith, the Panel noted that Internet users, presumably wishing to locate a website operated by Complainant, were likely to be confused as to the source of the resultant website. Further, Respondent’s use of the disputed domain name apparently redirected unsuspecting Internet users to competitors of Complainant. The Panel therefore found that Respondent’s actions constituted a disruption of Complainant’s business, thereby evincing registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). Presumably, Respondent received monetary gain from its attempt to redirect Internet users to its website. The Panel found that Respondent’s use constituted an attraction for commercial gain, which further evinced registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the shareaamiles.com domain name should be transferred to American Airlines.
Complainant, American Airlines, Inc., is one of the world’s largest airlines. In connection with the provision of these services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the SHAREAAMILES mark (Reg. No. 2,755,924 issued August 16, 2003).
Respondent registered the shareaamiles.com domain name on June 15, 2004. The disputed domain name resolved to a website featuring category links, some of which led to websites operated by airlines in competition with Complainant.
Turning first to the question of whether the domain name registered by Respondent was identical or confusingly similar to a trademark or service mark in which Complainant had rights, the Panel noted that the Complainant asserted rights in the SHAREAAMILES mark through registration with the USPTO. The Panel found that Complainant’s timely registration and subsequent use of the SHAREAAMILES mark sufficiently established rights in the mark for purposes of Policy ¶ 4(a)(i). Complainant further asserted that its SHAREAAMILES mark was identical to Respondent’s shareaamiles.com domain name. The disputed domain name contained Complainant’s mark in its entirety and merely added the generic top-level domain (“gTLD”) “.com.” The Panel found that the addition of a gTLD to an otherwise identical mark failed to establish distinctiveness in the mark pursuant to Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain name at issue, the Panel noted that Complainant alleged that Respondent was using the disputed domain name to operate a website featuring links to commercial, third-party websites, some of which were competitors of the Complainant. Presumably, Respondent received referral fees for each misdirected Internet user. The Panel found that Respondent’s use of the disputed domain name was neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial use in accordance with Policy ¶ 4(c)(iii).
Furthermore, an investigation of Respondent’s WHOIS information revealed that the registrant of the shareaamiles.com domain name was “Jucco Holdings.” In lieu of any information proffered by Respondent to indicate otherwise, the Panel found that Respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Turning lastly to the question of whether the domain name was registered and used in bad faith, the Panel noted that Internet users, presumably wishing to locate a website operated by Complainant, were likely to be confused as to the source of the resultant website. Further, Respondent’s use of the disputed domain name apparently redirected unsuspecting Internet users to competitors of Complainant. The Panel therefore found that Respondent’s actions constituted a disruption of Complainant’s business, thereby evincing registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). Presumably, Respondent received monetary gain from its attempt to redirect Internet users to its website. The Panel found that Respondent’s use constituted an attraction for commercial gain, which further evinced registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the shareaamiles.com domain name should be transferred to American Airlines.
Tuesday, March 20, 2007
Enterprise-Rent-A-Car Reclaims CARENTERPRISERENT.INFO Domain Name from Cybersquatter
In the case of Enterprise Rent-A-Car Company v. Marco Costa, FA 908572 (Nat. Arb. Forum Mar. 13, 2007), Enterprise Rent-A-Car was able to get the carenterpriserent.info domain name transferred to it from a cybersquatter.
Complainant, Enterprise Rent-A-Car Company, is a well known provider of vehicle rental, leasing and sales services. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE (Reg. No. 1,343,167 issued June 18, 1985) and ENTERPRISE RENT-A-CAR (Reg. No. 2,371,192 issued July 25, 2000) marks. Complainant also holds registrations with the Portugal Instituto Nacional da Propriedade Industrial for the ENTERPRISE (Reg. No. 294,354 issued November 11, 1994) and ENTERPRISE RENT-A-CAR (Reg. No. 345,883 issued April 9, 2001) marks. Complainant also holds registrations for the enterpriserentacar.com and enterprise.com domain names for use in connection with its business.
Respondent registered the carenterpriserent.info domain name on April 15, 2006. Respondent was using the disputed domain to redirect Internet users to its website.
Addressing first the question of whether the domain name was identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted that Complainant had established rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks through registrations of those marks with the USPTO. Complainant also held registrations of its marks in Portugal, the country in which Respondent appeared to be located. The Panel found that Complainant’s registrations of its marks created rights in those marks as required under Policy ¶ 4(a)(i).
The Panel also found that Respondent’s carenterpriserent.info domain name was confusingly similar to Complainant’s marks. The disputed domain name included the word “enterprise” in its entirety, which was present in both of Complainant’s marks, plus the words “car” and “rent” which were features of Complainant’s ENTERPRISE RENT-A-CAR mark. Merely reordering the terms did not distinguish the disputed domain name from Complainant’s marks. Additionally, the terms “car” and “rent” were deemed descriptive of Complainant’s business. The Panel therefore found that the disputed domain name was confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain name at issue, the Panel held that Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as contemplated by Policy ¶¶ 4(c)(i) and (iii). Indeed, there was no available evidence that Respondent was commonly known by the carenterpriserent.info domain name. Respondent’s WHOIS information identified Respondent as “Marco Costa”--a name with no obvious relationship to the disputed domain name. Further, Respondent was not affiliated with or sponsored by Complainant in any way. The Panel therefore found that Respondent was not commonly known by the disputed domain name and had not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Turning finally to the question of whether the Respondent had registered and used the domain name in bad faith, the Panel noted that Respondent’s inclusion of Complainant’s marks in its domain name suggested that Respondent registered and was using the disputed domain name in bad faith. Because the carenterpriserent.info domain name was confusingly similar to Complainant’s marks, Internet users seeking Complainant’s genuine website may instead find themselves misdirected to Respondent’s website. Presumably, Respondent was profiting from this confusion. The Panel therefore found that such use was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the carenterpriserent.info domain name should be transferred to Complainant Enterprise Rent-A-Car.
Complainant, Enterprise Rent-A-Car Company, is a well known provider of vehicle rental, leasing and sales services. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE (Reg. No. 1,343,167 issued June 18, 1985) and ENTERPRISE RENT-A-CAR (Reg. No. 2,371,192 issued July 25, 2000) marks. Complainant also holds registrations with the Portugal Instituto Nacional da Propriedade Industrial for the ENTERPRISE (Reg. No. 294,354 issued November 11, 1994) and ENTERPRISE RENT-A-CAR (Reg. No. 345,883 issued April 9, 2001) marks. Complainant also holds registrations for the enterpriserentacar.com and enterprise.com domain names for use in connection with its business.
Respondent registered the carenterpriserent.info domain name on April 15, 2006. Respondent was using the disputed domain to redirect Internet users to its website.
Addressing first the question of whether the domain name was identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted that Complainant had established rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks through registrations of those marks with the USPTO. Complainant also held registrations of its marks in Portugal, the country in which Respondent appeared to be located. The Panel found that Complainant’s registrations of its marks created rights in those marks as required under Policy ¶ 4(a)(i).
The Panel also found that Respondent’s carenterpriserent.info domain name was confusingly similar to Complainant’s marks. The disputed domain name included the word “enterprise” in its entirety, which was present in both of Complainant’s marks, plus the words “car” and “rent” which were features of Complainant’s ENTERPRISE RENT-A-CAR mark. Merely reordering the terms did not distinguish the disputed domain name from Complainant’s marks. Additionally, the terms “car” and “rent” were deemed descriptive of Complainant’s business. The Panel therefore found that the disputed domain name was confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain name at issue, the Panel held that Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as contemplated by Policy ¶¶ 4(c)(i) and (iii). Indeed, there was no available evidence that Respondent was commonly known by the carenterpriserent.info domain name. Respondent’s WHOIS information identified Respondent as “Marco Costa”--a name with no obvious relationship to the disputed domain name. Further, Respondent was not affiliated with or sponsored by Complainant in any way. The Panel therefore found that Respondent was not commonly known by the disputed domain name and had not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Turning finally to the question of whether the Respondent had registered and used the domain name in bad faith, the Panel noted that Respondent’s inclusion of Complainant’s marks in its domain name suggested that Respondent registered and was using the disputed domain name in bad faith. Because the carenterpriserent.info domain name was confusingly similar to Complainant’s marks, Internet users seeking Complainant’s genuine website may instead find themselves misdirected to Respondent’s website. Presumably, Respondent was profiting from this confusion. The Panel therefore found that such use was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the carenterpriserent.info domain name should be transferred to Complainant Enterprise Rent-A-Car.
Monday, March 19, 2007
Expedia Reclaims Nine Domain Names from Cybersquatter
In the case of Expedia, Inc. v. Domain Explorer, FA 904266 (Nat. Arb. Forum Mar. 19, 2007), Expedia recaptured no less than nine domain names from a cybersquatter.
Complainant, Expedia, Inc., is in the business of providing a wide variety of services over the Internet, but it is best known for providing discount travel services via the Internet. Complainant holds trademark registrations with the United States Patent and Trademark Office for the the EXPEDIA.COM mark (including Reg. No. 2,405,746 issued November 21, 2000 and Reg. No. 2,610,291 issued August 20, 2002). Complainant has used the EXPEDIA.COM marks continuously and extensively since 1996 and has invested millions of dollars in advertising and promotions of its mark and has sold or licensed many hundreds of millions of dollars in goods and services associated with the EXPEDIA.COM mark.
Respondent registered the expediz.com, 3xpedia.com, 4xpedia.com, ex0edia.com, expddia.com, expsdia.com, expexia.com, and exp4dia.com domain names on July 21, 2002 and registered the expediq.com domain name on March 5, 2003. The disputed domain names resolve to Complainant’s homepage at the expedia.com domain name. Respondent was previously enrolled in Complainant’s associate program. Respondent’s participation in that program was terminated, and Respondent is no longer affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use Complainant’s mark.
Turning first to the question of whether the domain names registered by Respondent were identical or confusingly similar to a trademark in which Complainant had rights, the Panel noted that Complainant had established rights in the EXPEDIA.COM mark through registration with the USPTO. The Panel found that such registration is sufficient to establish rights as required by Policy ¶ 4(a)(i). Respondent’s expediz.com, 3xpedia.com, 4xpedia.com, expediq.com, ex0edia.com, expddia.com, expsdia.com, expexia.com, and exp4dia.com domain names were confusingly similar to Complainant’s EXPEDIA.COM mark. The disputed domain names contained the dominant features of Complainant’s mark and omitted letters and added letters or numbers in their place. The Panel found that such alterations to Complainant’s mark in order to create a misspelling of Complainant’s mark did not overcome the confusing similarity between the disputed domain names and Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain names at issue, the Panel noted that due to Respondent’s affiliation with Complainant’s associate program, Respondent’s registration made it possible to impute that Respondent may have registered the disputed domain names with the intention of taking advantage of Complainant’s associate program by using the confusingly similar domain names to redirect Internet users through Respondent’s domain names to Complainant’s website, generating referral fees for Respondent. The panel found that Respondent’s use of the disputed domain names did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate or noncommercial use pursuant to Policy ¶ 4(c)(iii).
Furthermore, there was no evidence that Respondent was commonly known by the disputed domain names. Respondent’s WHOIS information identified Respondent as “Domain Explorer.” Complainant asserted that while Respondent was once a member of Complainant’s associate program, Respondent was no longer affiliated or sponsored by Complainant and Respondent did not now, nor did it ever, have permission to use Complainant’s mark in a domain name. Thus, the Panel found that Respondent was not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Addressing the issue of whether the Respondent had registered and used the domain names in bad faith, the Panel noted that Respondent intentionally registered domain names that were confusingly similar to Complainant’s mark for Respondent’s commercial gain. The disputed domain names diverted Internet users who sought Complainant’s EXPEDIA.COM mark to Complainant’s expedia.com homepage through the use of domain names that were confusingly similar to Complainant’s marks. Furthermore, Respondent was unfairly and opportunistically benefiting from the goodwill associated with Complainant’s EXPEDIA.COM mark. Respondent’s practice of diversion, motivated by commercial gain, therefore constituted bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Furthermore, the Panel noted that Complainant had engaged in extensive advertising under the EXPEDIA.COM mark, making the mark quite popular and commonly known. However, even if Respondent was unaware of Complainant’s marks, once Respondent enrolled in Complainant’s associate program, Respondent had actual knowledge of Complainant’s rights in the mark. The Panel found that Respondent’s registration of the disputed domain names, despite knowledge of Complainant’s rights in the mark, was evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concluded that the domain names be transferred to Complainant Expedia.
Complainant, Expedia, Inc., is in the business of providing a wide variety of services over the Internet, but it is best known for providing discount travel services via the Internet. Complainant holds trademark registrations with the United States Patent and Trademark Office for the the EXPEDIA.COM mark (including Reg. No. 2,405,746 issued November 21, 2000 and Reg. No. 2,610,291 issued August 20, 2002). Complainant has used the EXPEDIA.COM marks continuously and extensively since 1996 and has invested millions of dollars in advertising and promotions of its mark and has sold or licensed many hundreds of millions of dollars in goods and services associated with the EXPEDIA.COM mark.
Respondent registered the expediz.com, 3xpedia.com, 4xpedia.com, ex0edia.com, expddia.com, expsdia.com, expexia.com, and exp4dia.com domain names on July 21, 2002 and registered the expediq.com domain name on March 5, 2003. The disputed domain names resolve to Complainant’s homepage at the expedia.com domain name. Respondent was previously enrolled in Complainant’s associate program. Respondent’s participation in that program was terminated, and Respondent is no longer affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use Complainant’s mark.
Turning first to the question of whether the domain names registered by Respondent were identical or confusingly similar to a trademark in which Complainant had rights, the Panel noted that Complainant had established rights in the EXPEDIA.COM mark through registration with the USPTO. The Panel found that such registration is sufficient to establish rights as required by Policy ¶ 4(a)(i). Respondent’s expediz.com, 3xpedia.com, 4xpedia.com, expediq.com, ex0edia.com, expddia.com, expsdia.com, expexia.com, and exp4dia.com domain names were confusingly similar to Complainant’s EXPEDIA.COM mark. The disputed domain names contained the dominant features of Complainant’s mark and omitted letters and added letters or numbers in their place. The Panel found that such alterations to Complainant’s mark in order to create a misspelling of Complainant’s mark did not overcome the confusing similarity between the disputed domain names and Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain names at issue, the Panel noted that due to Respondent’s affiliation with Complainant’s associate program, Respondent’s registration made it possible to impute that Respondent may have registered the disputed domain names with the intention of taking advantage of Complainant’s associate program by using the confusingly similar domain names to redirect Internet users through Respondent’s domain names to Complainant’s website, generating referral fees for Respondent. The panel found that Respondent’s use of the disputed domain names did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate or noncommercial use pursuant to Policy ¶ 4(c)(iii).
Furthermore, there was no evidence that Respondent was commonly known by the disputed domain names. Respondent’s WHOIS information identified Respondent as “Domain Explorer.” Complainant asserted that while Respondent was once a member of Complainant’s associate program, Respondent was no longer affiliated or sponsored by Complainant and Respondent did not now, nor did it ever, have permission to use Complainant’s mark in a domain name. Thus, the Panel found that Respondent was not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Addressing the issue of whether the Respondent had registered and used the domain names in bad faith, the Panel noted that Respondent intentionally registered domain names that were confusingly similar to Complainant’s mark for Respondent’s commercial gain. The disputed domain names diverted Internet users who sought Complainant’s EXPEDIA.COM mark to Complainant’s expedia.com homepage through the use of domain names that were confusingly similar to Complainant’s marks. Furthermore, Respondent was unfairly and opportunistically benefiting from the goodwill associated with Complainant’s EXPEDIA.COM mark. Respondent’s practice of diversion, motivated by commercial gain, therefore constituted bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Furthermore, the Panel noted that Complainant had engaged in extensive advertising under the EXPEDIA.COM mark, making the mark quite popular and commonly known. However, even if Respondent was unaware of Complainant’s marks, once Respondent enrolled in Complainant’s associate program, Respondent had actual knowledge of Complainant’s rights in the mark. The Panel found that Respondent’s registration of the disputed domain names, despite knowledge of Complainant’s rights in the mark, was evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concluded that the domain names be transferred to Complainant Expedia.
Friday, March 16, 2007
Home Depot Reclaims the HOMDEPOT.COM Domain Name from Typosquatter
In the case of Homer TLC, Inc. v. Web Master, FA 904244 (Nat. Arb. Forum Mar. 13, 2007), the Panel held that the domain name homdepot.com should be transferred to the Home Depot franchise.
Complainant, Homer TLC, Inc., holds several trademark registrations for the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 2,314,081 issued February 1, 2000), which have been used in connection with a wide variety home improvement products and services. In connection with its licensee, Complainant operates a chain of over 2,100 home improvement stores in the United States, Canada, and Mexico. Complainant employs over 355,000 people and has annual worldwide sales under the HOME DEPOT mark totaling $81.5 billion US dollars. In connection with its retail stores, Complainant has operated an informational and shopping website at the homedepot.com domain name since 1992. As a result of nationwide marketing and advertising promotion, Complainant’s HOME DEPOT mark has become a commonly known mark throughout the United States.
Respondent registered the homdepot.com domain name on January 30, 2007. Internet users who access this domain name are directed to a website that lists “sponsored links” and “related categories” for “Home Improvement Pros,” “Hardware Stores,” “Kitchen Cabinet Refacing,” and other similar goods and services, including links to the sites of Complainant’s competitors.
Turning first to the question of whether the domain name registered by Respondent was confusingly similar to a trademark in which Complainant has rights, the Panel noted that Respondent’s homdepot.com domain name was confusingly similar to Complainant’s HOME DEPOT mark pursuant to Policy ¶ 4(a)(i) because the domain name was simply a misspelled variation of the HOME DEPOT mark, as it differed from Complainant’s mark by omitting the letter “e” and a space. Thus, Respondent was taking advantage of a common typographical error, which was insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). Furthermore, the addition of a top-level domain “.com” did not avoid a finding of confusing similarity under Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain name at issue, the Panel noted that the Complainant had alleged that Respondent was not commonly known by homdepot.com domain name. The WHOIS information identified Respondent as “Web Master,” and Complainant had alleged that Respondent had no rights or legitimate interests in the HOME DEPOT mark. The Panel found no other evidence in the record suggesting that Respondent was commonly known by the disputed domain name. Therefore, the Panel found that Respondent was not commonly known by the homdepot.com domain name pursuant to Policy ¶ 4(c)(ii).
Furthermore, the Panel noted that Respondent was using the homdepot.com domain name to redirect Internet users to its website, which promoted “sponsored links” for various home improvement goods and services, including links to the sites of Complainant’s competitors. Presumably, Respondent received referral fees for each redirected Internet user. Thus, Respondent’s diversion of Complainant’s customers and potential customers did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Addressing the question of whether the domain name at issue was registered and used in bad faith, the Panel noted that Respondent was using the homdepot.com domain name to redirect Internet users to a website that offered links to Respondent’s competitors. This use of the disputed domain name was likely to disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel found that Respondent’s registration and use of the homdepot.com domain name constituted bad faith pursuant to Policy ¶ 4(b)(iii). Moreover, the Panel noted that Respondent’s use of the homdepot.com domain name, which was confusingly similar to Complainant’s HOME DEPOT mark, was likely to cause confusion among customers searching for Complainant’s home improvement goods or services. Indeed, Respondent presumably profited from this confusion by receiving referral fees for each Internet user it redirected to other websites. The Panel therefore found that such registration and use of the disputed domain name constituted bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the homdepot.com domain name be transferred to Complainant.
Complainant, Homer TLC, Inc., holds several trademark registrations for the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 2,314,081 issued February 1, 2000), which have been used in connection with a wide variety home improvement products and services. In connection with its licensee, Complainant operates a chain of over 2,100 home improvement stores in the United States, Canada, and Mexico. Complainant employs over 355,000 people and has annual worldwide sales under the HOME DEPOT mark totaling $81.5 billion US dollars. In connection with its retail stores, Complainant has operated an informational and shopping website at the homedepot.com domain name since 1992. As a result of nationwide marketing and advertising promotion, Complainant’s HOME DEPOT mark has become a commonly known mark throughout the United States.
Respondent registered the homdepot.com domain name on January 30, 2007. Internet users who access this domain name are directed to a website that lists “sponsored links” and “related categories” for “Home Improvement Pros,” “Hardware Stores,” “Kitchen Cabinet Refacing,” and other similar goods and services, including links to the sites of Complainant’s competitors.
Turning first to the question of whether the domain name registered by Respondent was confusingly similar to a trademark in which Complainant has rights, the Panel noted that Respondent’s homdepot.com domain name was confusingly similar to Complainant’s HOME DEPOT mark pursuant to Policy ¶ 4(a)(i) because the domain name was simply a misspelled variation of the HOME DEPOT mark, as it differed from Complainant’s mark by omitting the letter “e” and a space. Thus, Respondent was taking advantage of a common typographical error, which was insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). Furthermore, the addition of a top-level domain “.com” did not avoid a finding of confusing similarity under Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain name at issue, the Panel noted that the Complainant had alleged that Respondent was not commonly known by homdepot.com domain name. The WHOIS information identified Respondent as “Web Master,” and Complainant had alleged that Respondent had no rights or legitimate interests in the HOME DEPOT mark. The Panel found no other evidence in the record suggesting that Respondent was commonly known by the disputed domain name. Therefore, the Panel found that Respondent was not commonly known by the homdepot.com domain name pursuant to Policy ¶ 4(c)(ii).
Furthermore, the Panel noted that Respondent was using the homdepot.com domain name to redirect Internet users to its website, which promoted “sponsored links” for various home improvement goods and services, including links to the sites of Complainant’s competitors. Presumably, Respondent received referral fees for each redirected Internet user. Thus, Respondent’s diversion of Complainant’s customers and potential customers did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Addressing the question of whether the domain name at issue was registered and used in bad faith, the Panel noted that Respondent was using the homdepot.com domain name to redirect Internet users to a website that offered links to Respondent’s competitors. This use of the disputed domain name was likely to disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel found that Respondent’s registration and use of the homdepot.com domain name constituted bad faith pursuant to Policy ¶ 4(b)(iii). Moreover, the Panel noted that Respondent’s use of the homdepot.com domain name, which was confusingly similar to Complainant’s HOME DEPOT mark, was likely to cause confusion among customers searching for Complainant’s home improvement goods or services. Indeed, Respondent presumably profited from this confusion by receiving referral fees for each Internet user it redirected to other websites. The Panel therefore found that such registration and use of the disputed domain name constituted bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the homdepot.com domain name be transferred to Complainant.
Thursday, March 15, 2007
The American Red Cross Reclaims the REDCROSSS.ORG Domain Name from Typosquatter
In the case of The American National Red Cross v. Ms MDM, FA 909826 (Nat. Arb. Forum Mar. 13, 2007), the American Red Cross succeeded in its effort to reclaim the redcrosss.org domain name from a typosquatter.
Complainant, The American Red Cross, works with a global network, “National Societies,” in 175 countries where it provides relief services to those affected by natural or man-made disasters, including fires, hurricanes, floods, earthquakes, tornados, hazardous material spills, transportation accidents, and explosions. In addition, Complainant collects blood donations for hospitals and is the steward for more than half of the United States blood supply. Complainant holds rights in the well-known RED CROSS mark by way of statutory protection through 18 U.S.C. § 706.
Respondent registered the redcrosss.org domain name on October 22, 2004. Respondent’s domain name resolved to a website that contained links to first-aid certification programs, disaster relief funds, and various other commercial websites.
Turning first to the question of whether the domain name was identical or confusingly similar to a trademark in which Complainant has rights, the Panel first noted that under 18 U.S.C. §706, the U.S. Congress had provided federal statutory protection of the RED CROSS mark. The Panel found that Complainant had therefore established rights in the well-known mark for purposes of Policy ¶ 4(a)(i).
Indeed, the Panel found that Respondent’s redcrosss.org domain name was confusingly similar to Complainant’s well-known RED CROSS mark. Respondent’s domain name contained Complainant’s mark in its entirety and merely added the letter “s” and the generic top-level domain (“gTLD”) “.org.” The Panel found that neither addition succeeded in distinguishing Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Turning to the question of whether the Respondent had any rights to or legitimate interests in the domain name at issue, the Panel noted that Respondent was using the redcrosss.org domain name to operate a website that featured links to various commercial websites, some of which were related to Complainant. The Panel inferred from Respondent’s use that it was collecting referral fees for each misdirected Internet user. The Panel found that such use was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Moreover, no evidence was presented that Respondent was commonly known by the redcrosss.org domain name. The WHOIS information listed the registrant as “Ms MGM.” In the absence of evidence suggesting otherwise, the Panel found that Respondent had not established rights or legitimate interests under Policy ¶ 4(c)(ii).
Turning finally to the question of whether the domain name had been registered and used in bad faith, the Panel noted that Respondent was using the redcrosss.org domain name to operate a website that featured links to various related and unrelated commercial websites, presumably for the purpose of collecting referral fees. The Panel found that Internet users searching for Complainant’s legitimate website would likely be confused when stumbling upon Respondent’s website as to Complainant’s sponsorship of or affiliation with the resulting website. Such use was deemed to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the domain name should be transferred to Complainant.
Complainant, The American Red Cross, works with a global network, “National Societies,” in 175 countries where it provides relief services to those affected by natural or man-made disasters, including fires, hurricanes, floods, earthquakes, tornados, hazardous material spills, transportation accidents, and explosions. In addition, Complainant collects blood donations for hospitals and is the steward for more than half of the United States blood supply. Complainant holds rights in the well-known RED CROSS mark by way of statutory protection through 18 U.S.C. § 706.
Respondent registered the redcrosss.org domain name on October 22, 2004. Respondent’s domain name resolved to a website that contained links to first-aid certification programs, disaster relief funds, and various other commercial websites.
Turning first to the question of whether the domain name was identical or confusingly similar to a trademark in which Complainant has rights, the Panel first noted that under 18 U.S.C. §706, the U.S. Congress had provided federal statutory protection of the RED CROSS mark. The Panel found that Complainant had therefore established rights in the well-known mark for purposes of Policy ¶ 4(a)(i).
Indeed, the Panel found that Respondent’s redcrosss.org domain name was confusingly similar to Complainant’s well-known RED CROSS mark. Respondent’s domain name contained Complainant’s mark in its entirety and merely added the letter “s” and the generic top-level domain (“gTLD”) “.org.” The Panel found that neither addition succeeded in distinguishing Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Turning to the question of whether the Respondent had any rights to or legitimate interests in the domain name at issue, the Panel noted that Respondent was using the redcrosss.org domain name to operate a website that featured links to various commercial websites, some of which were related to Complainant. The Panel inferred from Respondent’s use that it was collecting referral fees for each misdirected Internet user. The Panel found that such use was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Moreover, no evidence was presented that Respondent was commonly known by the redcrosss.org domain name. The WHOIS information listed the registrant as “Ms MGM.” In the absence of evidence suggesting otherwise, the Panel found that Respondent had not established rights or legitimate interests under Policy ¶ 4(c)(ii).
Turning finally to the question of whether the domain name had been registered and used in bad faith, the Panel noted that Respondent was using the redcrosss.org domain name to operate a website that featured links to various related and unrelated commercial websites, presumably for the purpose of collecting referral fees. The Panel found that Internet users searching for Complainant’s legitimate website would likely be confused when stumbling upon Respondent’s website as to Complainant’s sponsorship of or affiliation with the resulting website. Such use was deemed to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the domain name should be transferred to Complainant.
Monday, March 12, 2007
Bausch & Lomb Regains Domain Name from Cybersquatter
In the case of Bausch & Lomb Incorporated v. Johnny Carpela, FA 910746 (Nat. Arb. Forum March 9, 2007), the court ruled that the domain name lotemax.com should be transferred to Bausch & Lomb. Complainant, Bausch & Lomb Inc., had registered the LOTEMAX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,182,587 issued August 18, 1998). Respondent registered the lotemax.com domain name on February 13, 2002. The disputed domain name resolved to no content.
The Panel first held that Respondent’s lotemax.com domain name contained Complainant’s LOTEMAX mark in its entirety and merely added the generic top-level domain (“gTLD”) “.com.” The Panel found that the mere addition of the gTLD “.com” to an otherwise identical mark failed to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i).
The Panel then noted that Respondent’s disputed domain name currently resolved to no content. The Panel found that Respondent’s failure to associate any content with its disputed domain name was neither a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Furthermore, a review of Respondent’s WHOIS information revealed that the registrant of the lotemax.com domain name was “Johnny Carpela.” Lacking evidence to the contrary, the Panel found that Respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Turning to the question of whether the domain name was registered and used in bad faith, the Panel noted that the Respondent was not currently attaching any content to its lotemax.com domain name. The Panel therefore found that Respondent’s failure to provide any content in association with its disputed domain name evinced registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concluded that relief be GRANTED.
The Panel first held that Respondent’s lotemax.com domain name contained Complainant’s LOTEMAX mark in its entirety and merely added the generic top-level domain (“gTLD”) “.com.” The Panel found that the mere addition of the gTLD “.com” to an otherwise identical mark failed to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i).
The Panel then noted that Respondent’s disputed domain name currently resolved to no content. The Panel found that Respondent’s failure to associate any content with its disputed domain name was neither a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Furthermore, a review of Respondent’s WHOIS information revealed that the registrant of the lotemax.com domain name was “Johnny Carpela.” Lacking evidence to the contrary, the Panel found that Respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Turning to the question of whether the domain name was registered and used in bad faith, the Panel noted that the Respondent was not currently attaching any content to its lotemax.com domain name. The Panel therefore found that Respondent’s failure to provide any content in association with its disputed domain name evinced registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concluded that relief be GRANTED.
Friday, March 9, 2007
Morgan Stanley Reclaims MOORGANSTANLEY.COM from Typosquatter
In the case of Morgan Stanley v. Terence tsang, FA 896636 (Nat. Arb. Forum March 9, 2007), Morgan Stanley was able to reclaim the domain name moorganstanley.com from a typosquatter. Complainant, Morgan Stanley, has been an international leader in investment banking and an innovator in financial services and products since its founding in 1935. With over 600 offices in twenty-eight countries, Complainant is able to offer global access to financial markets. Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) and other international trademark authorities for the MORGAN STANLEY mark (i.e., Reg. No. 1,707,196 issued August 11, 1992) in connection with a variety of financial services. Respondent registered the moorganstanley.com domain name on November 28, 2006. Respondent was using the disputed domain name to redirect Internet users to a website that provided links to Complainant’s competitors.
The Panel first held that Respondent’s moorganstanley.com domain name was confusingly similar to Complainant’s MORGAN STANLEY mark because Respondent’s domain name incorporated Complainant’s entire mark, added the letter “o,” and added the generic top-level domain “.com.” The Panel found that such minor alterations to Complainant’s registered mark did not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
On the question of whether Respondent had any rights or legitimate interests in the domain name, the Panel noted that the Respondent was using the domain name to redirect Internet users to Respondent’s website that featured links to financial services that compete with Complainant’s services. Respondent’s use of a domain name that was confusingly similar to Complainant’s MORGAN STANLEY mark to redirect Internet users interested in Complainant’s financial services to a website that offers similar financial services in competition with Complainant’s business was deemed not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel further noted that the WHOIS database listed the Registrant of the disputed domain name as “Terence tsang,” and Complainant asserted that Respondent was not publicly known as MOORGAN STANLEY. Furthermore, Respondent had offered no evidence and there was no evidence in the record suggesting that Respondent was commonly known by the moorganstanley.com domain name. Thus, Respondent had not established rights or legitimate interests in the moorganstanley.com domain name pursuant to Policy ¶ 4(c)(ii).
Turning to the question of whether the Respondent had registered and used the domain name in bad faith, the Panel found that Respondent was using the moorganstanley.com domain name to redirect Internet users to a website featuring links to financial services that competed with Complainant. Respondent’s use of the disputed domain name containing Complainant’s entire mark suggested to the Panel that Respondent registered the disputed domain name intending to disrupt Complainant’s business. The Panel therefore found that this was evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
Additionally, Respondent was using the morganstanley.com domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent was using Complainant’s MORGAN STANLEY mark to attract Internet users to a website that featured links to financial services that competed with Complainant’s services. Respondent was presumably using the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source of the website.
Finally, the Panel noted that Respondent’s registered domain name moorganstanley.com contained Complainant’s entire mark and added an additional “o.” The Panel held that website users might mistakenly type the letter “o” twice instead of once when typing Complainant’s web address into their browser. The Panel assumed therefore that this was a scrupulous attempt by Respondent to capitalize on a common typographical error, thus constituting typosquatting, which was a further indication of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN policy, the Panel ordered that the moorganstanley.com domain name be TRANSFERRED from Respondent to Complainant.
The Panel first held that Respondent’s moorganstanley.com domain name was confusingly similar to Complainant’s MORGAN STANLEY mark because Respondent’s domain name incorporated Complainant’s entire mark, added the letter “o,” and added the generic top-level domain “.com.” The Panel found that such minor alterations to Complainant’s registered mark did not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
On the question of whether Respondent had any rights or legitimate interests in the domain name, the Panel noted that the Respondent was using the
The Panel further noted that the WHOIS database listed the Registrant of the disputed domain name as “Terence tsang,” and Complainant asserted that Respondent was not publicly known as MOORGAN STANLEY. Furthermore, Respondent had offered no evidence and there was no evidence in the record suggesting that Respondent was commonly known by the moorganstanley.com domain name. Thus, Respondent had not established rights or legitimate interests in the moorganstanley.com domain name pursuant to Policy ¶ 4(c)(ii).
Turning to the question of whether the Respondent had registered and used the domain name in bad faith, the Panel found that Respondent was using the moorganstanley.com domain name to redirect Internet users to a website featuring links to financial services that competed with Complainant. Respondent’s use of the disputed domain name containing Complainant’s entire mark suggested to the Panel that Respondent registered the disputed domain name intending to disrupt Complainant’s business. The Panel therefore found that this was evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
Additionally, Respondent was using the morganstanley.com domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent was using Complainant’s MORGAN STANLEY mark to attract Internet users to a website that featured links to financial services that competed with Complainant’s services. Respondent was presumably using the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source of the website.
Finally, the Panel noted that Respondent’s registered domain name moorganstanley.com contained Complainant’s entire mark and added an additional “o.” The Panel held that website users might mistakenly type the letter “o” twice instead of once when typing Complainant’s web address into their browser. The Panel assumed therefore that this was a scrupulous attempt by Respondent to capitalize on a common typographical error, thus constituting typosquatting, which was a further indication of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN policy, the Panel ordered that the moorganstanley.com domain name be TRANSFERRED from Respondent to Complainant.
Thursday, March 8, 2007
Enterprise Rent-A-Car Loses Domain Dispute for Enterprize.com
In the case of Enterprise Rent-A-Car Company v. Private WHOIS c/o Privacy Protection, the Panel found that because the Respondent had rights or legitimate interests in respect of the domain name enterprize.com, Complainant's claim was denied.
The Panel first noted that Complainant had established rights in theENTERPRISE
The Complainant alleged Respondent was using the enterprize.com domain name to redirect Internet users to Respondent’s website displaying links to competing goods and services. Respondent’s use of the domain name to display links to Complainant’s competitors was deemed not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). However, the Panel noted that Respondent need not have a bona fide use if Respondent was commonly known by the domain name (Policy ¶ 4(c)(ii)). The Panel noted that while it took some leap to decide EEM means Enterprise Event Management, the Panel was willing to make that leap. While the Panel understood how Complainant could not have figured out Respondent’s proper name was “Enterprise Event Management,” the Panel accepted Respondent’s evidence on this point. For the same reasons, the Panel found there was no reverse domain hijacking in this case.
Tackling the question of whether the Respondent had registered and used the domain name in bad faith, the Panel found that because Respondent had registered and was using the enterprize.com domain name in order to redirect Internet users to Respondent’s website displaying links to Complainant’s competitors, such use constituted disruption and was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel reached this conclusion based upon two unusual factors:
Respondent was using the enterprize.com domain name to redirect Internet users to Respondent’s website displaying links to competing goods and services for the assumed profit of Respondent. The Panel noted that Internet users may become confused as to Complainant’s affiliation with the disputed domain name and corresponding website because Respondent’s domain name was confusingly similar to Complaint’s ENTERPRISE mark. Respondent was profiting from this confusion with its special parking page. Therefore, the Panel held that Respondent’s use of the enterprize.com domain name to display links to competing goods and services constituted bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
However, having failed to establish all three elements required under the ICANN Policy, the Panel concluded that relief be DENIED.
The Panel first noted that Complainant had established rights in the
The Complainant alleged Respondent was using the enterprize.com domain name to redirect Internet users to Respondent’s website displaying links to competing goods and services. Respondent’s use of the domain name to display links to Complainant’s competitors was deemed not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). However, the Panel noted that Respondent need not have a bona fide use if Respondent was commonly known by the domain name (Policy ¶ 4(c)(ii)). The Panel noted that while it took some leap to decide EEM means Enterprise Event Management, the Panel was willing to make that leap. While the Panel understood how Complainant could not have figured out Respondent’s proper name was “Enterprise Event Management,” the Panel accepted Respondent’s evidence on this point. For the same reasons, the Panel found there was no reverse domain hijacking in this case.
Tackling the question of whether the Respondent had registered and used the domain name in bad faith, the Panel found that because Respondent had registered and was using the enterprize.com domain name in order to redirect Internet users to Respondent’s website displaying links to Complainant’s competitors, such use constituted disruption and was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel reached this conclusion based upon two unusual factors:
- Respondent had failed to develop a web site for a decade. The Panel found it improbable that Respondent had a bona fide business reason to have a domain name for such a long period of time without exploiting it. Respondent had not given any explanation, much less a bona fide business reason.
- Respondent concealed its WHOIS information. While the Panel conceded that there might be valid business reasons for doing so, Respondent did not advance any. It was therefore hard for the Panel to believe there was a valid business reason to keep the identity of a domain name owner secret.
Respondent was using the enterprize.com domain name to redirect Internet users to Respondent’s website displaying links to competing goods and services for the assumed profit of Respondent. The Panel noted that Internet users may become confused as to Complainant’s affiliation with the disputed domain name and corresponding website because Respondent’s domain name was confusingly similar to Complaint’s ENTERPRISE mark. Respondent was profiting from this confusion with its special parking page. Therefore, the Panel held that Respondent’s use of the enterprize.com domain name to display links to competing goods and services constituted bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
However, having failed to establish all three elements required under the ICANN Policy, the Panel concluded that relief be DENIED.
Wednesday, March 7, 2007
Cingular Wireless Reclaims Five Domain Names from Typosquatter
In the case of Cingular Wireless II, LLC v. Ali Aziz, FA 892865 (Nat. Arb. Forum March 7, 2007), Cingular Wireless managed to wrestle no less than five domain names from a typosquatter.
Complainant, Cingular Wireless II, LLC, is the largest wireless carrier in the United States, offering digital voice and data goods and services. In connection with its wireless goods and services, Complainant registered numerous marks with the United States Patent and Trademark Office (“USPTO”), including CINGULAR (Reg. No. 2,596,041 issued July 16, 2002, filed September 8, 2000).
Respondent registered the cingualar.com and cungular.com domain names April 17, 2002, the cingurlar.com and cinglular.com domain names May 8, 2002, and the ciingular.com domain name May 24, 2002. Respondent was using the disputed domain names to display directories of links to third-party websites that offered goods and services in competition with Complainant.
The Panel first found that Complainant’s trademark registration of the CINGULAR mark with the USPTO sufficiently established Complainant’s rights in the CINGULAR mark pursuant to Policy ¶ 4(a)(i). Although Respondent’s registration of the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names predated Complainant’s USPTO registration, Complainant’s filing date of September 8, 2000, predated Respondent’s registration. Therefore, the Panel found that Complainant’s rights in the mark predated Respondent’s registration of the domain names in dispute. Furthermore, because each of the disputed domain names was found to be a slight misspelling of Complainant’s CINGULAR mark, the disputed domain names were found to be confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Respondent failed to sufficiently distinguish the domain names from Complainant’s mark.
Turning next to the question of whether Respondent had any legitimate rights or interests in the domain names at issue, the Panel noted that the Complainant asserted that Respondent was not authorized to use Complainant’s CINGULAR mark or any variations of the mark. A review of the Respondent’s WHOIS information did not suggest, nor did any additional information in the record suggest, that Respondent was commonly known by the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names. Therefore, the Panel found that Respondent was not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). Furthermore, Respondent was using the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names, which were confusingly similar to Complainant’s mark, to redirect Internet users seeking Complainant’s products and services to other websites, which offer competing products and services. Therefore, the Panel found that Respondent was not using the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and was not making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Turning to the question of bad faith registration, the Panel found that because the Respondent presumably received click-through profits from its diversion scheme, it was taking commercial advantage of the confusing similarity between the disputed domain names and Complainant’s mark. Such use of the disputed domain names constituted bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that relief be granted, and that the domain names be transferred to Cingular.
Complainant, Cingular Wireless II, LLC, is the largest wireless carrier in the United States, offering digital voice and data goods and services. In connection with its wireless goods and services, Complainant registered numerous marks with the United States Patent and Trademark Office (“USPTO”), including CINGULAR (Reg. No. 2,596,041 issued July 16, 2002, filed September 8, 2000).
Respondent registered the cingualar.com and cungular.com domain names April 17, 2002, the cingurlar.com and cinglular.com domain names May 8, 2002, and the ciingular.com domain name May 24, 2002. Respondent was using the disputed domain names to display directories of links to third-party websites that offered goods and services in competition with Complainant.
The Panel first found that Complainant’s trademark registration of the CINGULAR mark with the USPTO sufficiently established Complainant’s rights in the CINGULAR mark pursuant to Policy ¶ 4(a)(i). Although Respondent’s registration of the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names predated Complainant’s USPTO registration, Complainant’s filing date of September 8, 2000, predated Respondent’s registration. Therefore, the Panel found that Complainant’s rights in the mark predated Respondent’s registration of the domain names in dispute. Furthermore, because each of the disputed domain names was found to be a slight misspelling of Complainant’s CINGULAR mark, the disputed domain names were found to be confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Respondent failed to sufficiently distinguish the domain names from Complainant’s mark.
Turning next to the question of whether Respondent had any legitimate rights or interests in the domain names at issue, the Panel noted that the Complainant asserted that Respondent was not authorized to use Complainant’s CINGULAR mark or any variations of the mark. A review of the Respondent’s WHOIS information did not suggest, nor did any additional information in the record suggest, that Respondent was commonly known by the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names. Therefore, the Panel found that Respondent was not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). Furthermore, Respondent was using the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names, which were confusingly similar to Complainant’s mark, to redirect Internet users seeking Complainant’s products and services to other websites, which offer competing products and services. Therefore, the Panel found that Respondent was not using the cingualar.com, cingurlar.com, ciingular.com, cinglular.com, and cungular.com domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and was not making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Turning to the question of bad faith registration, the Panel found that because the Respondent presumably received click-through profits from its diversion scheme, it was taking commercial advantage of the confusing similarity between the disputed domain names and Complainant’s mark. Such use of the disputed domain names constituted bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that relief be granted, and that the domain names be transferred to Cingular.
Tuesday, March 6, 2007
Avery Dennison Loses Domain Name Dispute
In the case of Avery Dennison Corporation v. Dennison-Hesperia S.A., the Panel
The Panel first found that Complainant Avery Dennison, the famous manufacturer of paper products and office supplies, had established, through its ownership of registrations for, and use of, the DENNISON mark, rights in the mark. The Panel further concluded that the disputed domain name dennison-hesperia.com was confusingly similar to the DENNISON mark. The parties disputed whether the term “hesperia” was geographically descriptive and, thus, of weak trademark significance absent proof of secondary meaning. However, even if, as Respondent contended, “Hesperia” was not an actual geographical term, the Panel noted that the term “dennison” constitutes the first and, thus, dominant portion of the domain name and that the domain name incorporated Complainant’s mark in its entirety.
The Panel further concluded that Respondent had rights or legitimate interests in the domain name. The evidence established that Complainant’s predecessor in interest, in 1990, authorized Respondent’s predecessor in interest to register and use the DENNISON name in Spain and that Respondent obtained a registration for the DENNISON mark in Spain prior to its registration of the disputed domain name. The evidence also indicated that Respondent had been using the corporate and trade name Dennison-Hesperia S.A. since 1996, following 40 years of use of the trade name Manufacturas Hesperia by Respondent’s predecessor in interest. Under such circumstances, the Panel found that Respondent was using the domain name in connection with a bona fide offering of goods and services before any notice of the dispute, within the meaning of paragraph 4(c)(i) of the Policy.
Given the determination that Respondent registered the domain name during a period of time when it was authorized by Complainant to register and use the DENNISON mark in Spain, the Panel concluded that the domain name was not registered in bad faith.
Accordingly, the Complainant Avery Dennison's claim was denied.
The Panel first found that Complainant Avery Dennison, the famous manufacturer of paper products and office supplies, had established, through its ownership of registrations for, and use of, the DENNISON mark, rights in the mark. The Panel further concluded that the disputed domain name dennison-hesperia.com was confusingly similar to the DENNISON mark. The parties disputed whether the term “hesperia” was geographically descriptive and, thus, of weak trademark significance absent proof of secondary meaning. However, even if, as Respondent contended, “Hesperia” was not an actual geographical term, the Panel noted that the term “dennison” constitutes the first and, thus, dominant portion of the domain name and that the domain name incorporated Complainant’s mark in its entirety.
The Panel further concluded that Respondent had rights or legitimate interests in the domain name. The evidence established that Complainant’s predecessor in interest, in 1990, authorized Respondent’s predecessor in interest to register and use the DENNISON name in Spain and that Respondent obtained a registration for the DENNISON mark in Spain prior to its registration of the disputed domain name. The evidence also indicated that Respondent had been using the corporate and trade name Dennison-Hesperia S.A. since 1996, following 40 years of use of the trade name Manufacturas Hesperia by Respondent’s predecessor in interest. Under such circumstances, the Panel found that Respondent was using the domain name in connection with a bona fide offering of goods and services before any notice of the dispute, within the meaning of paragraph 4(c)(i) of the Policy.
Given the determination that Respondent registered the domain name during a period of time when it was authorized by Complainant to register and use the DENNISON mark in Spain, the Panel concluded that the domain name was not registered in bad faith.
Accordingly, the Complainant Avery Dennison's claim was denied.
Monday, March 5, 2007
BIGFISHGAMES.NET Ordered Transferred to Big Fish Games, Inc.
In the case of Big Fish Games, Inc. v. Download Soft, the National Arbitration Forum ruled that that the bigfishgames.net be TRANSFERRED from Respondent to Complainant.
Paragraph 4(a) of ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:
Respondent also did not deny that its domain name was identical to Complainant’s BIG FISH GAMES mark because the domain name uses Complainant’s mark in its entirety and merely adds to it the generic top-level domain (“gTLD”) “.net”. The Panel correctly held that the addition of a gTLD is not a distinguishing difference under Policy ¶ 4(a)(i). Accordingly, the Panel found Policy ¶ 4(a)(i) had been satisfied.
The Panel then sought to determine whether there was any basis for concluding that Respondent had rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). The Panel first noted that Complainant alleged that Respondent was using the domain name to redirect Internet users to Respondent’s website selling Complainant’s goods and services as well as competing goods and services. Respondent’s use of the disputed domain name to sell Complainant’s goods and competing goods and services was found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Additionally, Respondent had offered no evidence suggesting that Respondent was commonly known by the domain name. Respondent’s WHOIS information identified the Respondent as “Download Soft”. Therefore, Respondent failed to establish rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
On the question of whether the Respondent had registered the domain name in bad faith, the Panel noted that there was no dispute that Respondent was using the domain name to redirect Internet users to Respondent’s website, which sells both Complainant’s goods and services and competing goods and services. Because Respondent’s domain name was substantively identical to Complainant’s BIG FISH GAMES mark, Internet users could become confused as to Complainant’s possible affiliation with Respondent’s website. The Panel presumed that Respondent profited from that confusion through the sale of goods and services. As a result, Respondent's use of the domain name constituted bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concluded that the relief requested must be GRANTED, and therefore the domain name was ordered TRANSFERRED.
Paragraph 4(a) of ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:
- the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
Respondent also did not deny that its domain name was identical to Complainant’s BIG FISH GAMES mark because the domain name uses Complainant’s mark in its entirety and merely adds to it the generic top-level domain (“gTLD”) “.net”. The Panel correctly held that the addition of a gTLD is not a distinguishing difference under Policy ¶ 4(a)(i). Accordingly, the Panel found Policy ¶ 4(a)(i) had been satisfied.
The Panel then sought to determine whether there was any basis for concluding that Respondent had rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). The Panel first noted that Complainant alleged that Respondent was using the domain name to redirect Internet users to Respondent’s website selling Complainant’s goods and services as well as competing goods and services. Respondent’s use of the disputed domain name to sell Complainant’s goods and competing goods and services was found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Additionally, Respondent had offered no evidence suggesting that Respondent was commonly known by the domain name. Respondent’s WHOIS information identified the Respondent as “Download Soft”. Therefore, Respondent failed to establish rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
On the question of whether the Respondent had registered the domain name in bad faith, the Panel noted that there was no dispute that Respondent was using the domain name to redirect Internet users to Respondent’s website, which sells both Complainant’s goods and services and competing goods and services. Because Respondent’s domain name was substantively identical to Complainant’s BIG FISH GAMES mark, Internet users could become confused as to Complainant’s possible affiliation with Respondent’s website. The Panel presumed that Respondent profited from that confusion through the sale of goods and services. As a result, Respondent's use of the domain name constituted bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concluded that the relief requested must be GRANTED, and therefore the domain name was ordered TRANSFERRED.
Sunday, March 4, 2007
Welcome to the Domain Dispute Blog!
This Domain Dispute Blog, maintained by Xavier Morales of the Law Office of Xavier Morales at SecureYourTrademark.com, will chronicle important news and decisions regarding domain name disputes and cybersquatting, especially arbitration proceedings filed under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The Law Office of Xavier Morales provides domain name dispute counseling, and offers a flat-fee service (plus costs) for the recovery or defense of your Domain Name through a process known as a UDRP proceeding.
For those of you who are unfamiliar with UDRP proceedings, the UDRP is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP policy currently applies to all .biz, .com, .info, .name, .net, and .org top-level domains, and some country code top-level domains.
For those of you who are unfamiliar with UDRP proceedings, the UDRP is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP policy currently applies to all .biz, .com, .info, .name, .net, and .org top-level domains, and some country code top-level domains.
When a registrant chooses a domain name, he or she must “represent and warrant,” among other things, that registering the name “will not infringe upon or otherwise violate the rights of any third party,” and agree to participate in an arbitration-like proceeding should any third party assert a claim.
In a UDRP proceeding, the panel will consider factors such as, whether the defendant registrant’s domain name is identical or confusingly similar to a trademark in which the complainant has rights; whether the defendant has any rights or legitimate interests in a name; and whether the defendant registered and is using the name in bad faith.
The goal of the UDRP is to create a streamlined process for resolving such disputes, which would be quicker and cheaper than a standard legal challenge. However, a party dissatisfied by a UDRP decision may challenge the decision in court.
The UDRP process has already been used in a number of well-known cases, such as Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com". There the panel found against the defendant registrant based on all three of the above factors, and ordered the domain name turned over to Madonna.
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