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Noteworthy Domain Decisions April to July 2015

Noteworthy Domain Decisions for August 2015

Hugedomains.com, LLC. v. Wills, 14-cv-00946 (D.Colorado July 21, 2015).
Plaintiff, earlier Respondent Austen Pain Associates v. Jeffrey Reberry, FA1312001536356 (Forum March 18, 2014), commenced an ACPA action for declaratory judgment that its registration or use of <austinpain.com> was not unlawful under the Act; defendant capitulated to a consent judgment and agreed to pay plaintiff $25,000.

NOTE: In view of the findings by the 3-member Panel in Austen Pain its holding is inconsistent with the record: “Panel makes two preliminary findings.  First, it accepts as more likely than not to be true Respondent’s claim that, at the time it registered the disputed domain name, it had no knowledge of Complainant or of its trademark. . . . Secondly, Panel also accepts that on a balance of the evidence it would appear that, contrary to Complainant’s submission, it was in fact Complainant who first contacted Respondent about purchasing the domain name for USD 6,000.  There is no evidence that Respondent reached out to Complainant.”
Notwithstanding these findings the Panel held in Complainant’s favor because “it stands to reason that [it] is the only class of persons to whom the domain name would have interest.” But, this is not the criterion for establishing a superior right to the domain name. By assuming Complainant has the “better right” the Panel misstates the law.

Telepathy, Inc. v. SDT International SA-NV, 14-cv-01912 (D. Columbia July 9, 2015).
Plaintiff, earlier Respondent in SDT International SA-NV v. Telepathy, Inc., D2014-1870 (WIPO January 13, 2015) (Respondent put Complainant on notice the complaint was without merit and explained why but Complainant refused to withdraw the complaint; proceeding terminated after Respondent commenced the ACPA action).
Defendant capitulated in a Consent Judgment and agreed to pay Plaintiff $50,000 together with a permanent injunction.

eWomenNetwork, Inc. v. Terra Serve c/o Domain Administrator, FA1506001622849 (Forum July 27, 2015)
Respondent prevailed because it had priority in the name Complainant subsequently chose for its trademark. In denying reverse domain name hijacking the Panel notes that “as well as the lack of merit in a claim, there must also be evidence of harassment or some ill-motivated conduct directed to the respondent, before it can be found that a finding of reverse domain name hijacking is justified.” The Panel concluded that the “present case does not fall into that category but into the category of cases where the dominant motive of the complainant is not to harass the Respondent but to defend its trademark by legitimate means.” Although not expressly stated, it is likely that this conclusion also rested on the Panel’s sense (it declined to rule on bad faith use) that the domain name was being (or had been) used in bad faith.

Aena, S.A., ENAIRE v. John Hamblin, All England Netball Association, D2015-0996 (WIPO July 17, 2015)
A string of letters that by happenstance is a trademark for complainant is an acronym for respondent (AENA and acronym for “All England Netball Association). This decision illustrates a result in which Respondent prevails not because Complainant is unable to prove bad faith but because it affirmatively proves good faith registration.

Live-Right, LLC v. Domain Administrator / Vertical Axis Inc., FA1506001622960 (Forum July 16, 2015) (<babybanana.com>).
The 3-member Panel “finds that renewal of a disputed domain name by the original owner of the domain name is irrelevant to a Policy ¶ 4(a)(iii) [bad faith] analysis. There is no evidence that the renewal of the domain name was anything more than protecting an existing investment.” See Office Space Solutions below for evidence that this misguided theory for forfeiture has spilled over to federal court.

John Dilks v. Privacy Administrator / Anonymize, Inc., FA1506001623023 (Forum July 10, 2015) (<eht.com>)
Hijacking variant: “In order to avoid detection by the domain registrant” hijacker allowed the nameservers to function as originally set “so that the domain name appears to operate normally and to resolve to the correct web server.” The Panel continues, “In this manner, the original domain registrant does not realize the domain name has actually been transferred away, until the domain name has been transferred multiple times.” Held:

[Policy 4(a)(ii)] The Respondent cannot have legitimate interests in a domain name acquired by theft, nor can the Respondent claim that its use of the domain name to continue to resolve to the Complainant’s website operates to confer any sort of right or interest to the Respondent.

[Policy 4(a)(iii)] There is no credible explanation as to why one would purchase a domain name for the apparent purpose of resolving it to a website with which one has no association, but which is still the site of the Complainant from whom the domain name was stolen.  Additionally, it is certainly the case that the Respondent could not have obtained good title from a thief through some chain of laundering transactions.

Chris Pearson v. Domain Admin / Automattic, Inc., FA1504001613723 (Forum July 3, 2015)
It cannot be emphasized too often that the claim of cybersquatting must be fully supported, or lose for insufficiency of evidence. In this case the 3-member Panel noted that “Complainant did not include an exhibit showing that <thesis.com> redirects to a webpage owned by Respondent.” It continued with this suggestion, implying that if the evidence had been submitted the result may have been different: “The Panel suggests that the submissions might point toward use by Respondent that would support findings of bad faith, pursuant to Policy ¶ 4(b)(iv) if evidence had been adduced to that effect. However, Complainant failed to bring that proof to the Panel.” Emphasis added)

Nicolas Gaiardo, Allan Verdu, Warning Trading Ood v. Anonymousspeech, Anonymousspeech, D2015-0575 (WIPO July 7, 2015) (<warningtrading.com>. Website displays content heavily criticizing Complainants and their activities. Panels divide into two camps about criticism websites. This Panel adheres to View 1 (WIPO Overview 2.0, para 2.4): “[T]he right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark [even though the content is genuine criticism].” View 2 Panels look at the content regardless whether the domain name is identical or confusingly similar to the trademark or the content characterized as defamatory.

Office Space Solutions, Inc. v. Kneen, 1:15-cv-04941 (SDNY)
The reason for reporting on this case (filed June 24 and withdrawn with prejudice July 8, 2015) is that plaintiff, owner of a newly registered trademark, charged defendant in this ACPA case with cybersquatting after it renewed its registration of a domain name originally registered in 1999. Its theory of the case aligns with outlier UDRP Panels who equate renewal of registration with registration in order to reallocate priority in complainant’s favor.
It has been reported, although I’ve not seen the transcript of argument on July 7 yet for preliminary injunction, that Judge Kaplan made it clear that plaintiff was barking up the wrong tree, hence the reason for withdrawing the complaint. More to come when the transcript becomes available.
Withdrawal deprives us of a decision on the merits which would have been immensely interesting (alas!), but on the other hand plaintiff made a prudent call because it protects it from statutory damages up to $100,000 for reverse domain name hijacking.

Toyotomi Co., Ltd. v. Digital Domains MEPE, D2015-0710 (WIPO June 29, 2015)
No bad faith in counter-offering to complainant’s initiating an offer to purchase the domain name: “This is relevant because previous panels have determined that, when a complainant initiates an offer for the sale of a domain name, a respondent’s willingness to engage in negotiations for the sale of the domain name does not necessarily equate to bad faith.”

X-SCREAM VIDEO PRODUCTIONS INC. v. IT Manager, FA1505001619522 (Forum June 25, 2015)
The decision to terminate, suspend, or proceed to an award is discretionary with the Panel (Rule 18) regardless whether there is an already pending action or a new action timely filed under Rule 4(k)

Wirecard AG v. Telepathy Inc., Development Services, D2015-0703 (WIPO June 22, 2015)
Futile contentions in a UDRP proceeding: 1) Respondent’s counter offer to sell the disputed domain name for sum Complainant is unwilling to pay “shows that [Respondent’s] only intention was to fraudulently transfer the disputed domain name to the highest bidder”; 2) Respondent has not used the disputed domain name for any commercial purpose and “is thereby proven merely to have a financial interest in the disputed domain name; and 3) “It is evident that the Respondent is a professional ‘domain grabber’ who has only registered the disputed domain name in bad faith to sell the highest bidder.”
1) No fraud in counter-offering to sell domain names acquired many years prior to complainant’s trademark rights for sums complainant’s believe outrageous;
2) Not illegal for domain name holders to maximize their profits;
3) No illegitimacy in being a “professional domain grabber”.

win.rarGmbH v. Win Road Assistance Repairs Pvt. Ltd., D2015-0398 (WIPO June 2, 2015)
Respondent appeared and rested its defense on ownership of a registered trademark and that it was commonly known by the domain name. However, the three  member Panel concluded that the registration was part of a design to hide bad faith regisstration and can be disregarded “if the overall circumstances demonstrate it was obtained primarily to circumvent the application of the UDRP.”

Mark C. Spicher v. Frogi Design, s.r.o. / The Artwork Factory, s.r.o., D2015-0606 (WIPO June 3, 2015)
Complainant lacks standing to maintain a UDRP proceeding for two reasons: first, its trademark registration with the Pennsylvania Department of State is not evidence of a right—the consensus under the Policy is that Panels “have been reluctant to accord US state registered marks any evidentiary consideration on the basis that such registrations are issued with no examination, and do not give rise to the same presumptions of validity and ownership as does a federal US trademark registration”; and second, it offers no evidence that its use of THE ARTWORK FACTORY has become distinctive of its goods—“[C]onclusory allegations of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.”

University Athletic Association, Inc. v. Frank Apuzzo / FKLA, Inc., FA1504001613918 (Forum June 1, 2015) (floridagators.com).
Completely changing the website following receipt of Complainant’s cease and desist letter is evidence of bad faith use in a udrp proceeding, which is conclusive if the website has been infringing from purchase of the domain name, regardless of the length of time held and even for domain names made up of generic words. (My emphasis).

Traffic Names, Ltd. V. Zhenghui Yiming, In Re: 224.com, 604.com; and 452.com, 1:14cv1607 (E.D. Va, Alexandria Division May 12, 2015). Magistrate’s Report dated April 14, 2015.
In Rem action under the ACPA for fraudulent transfer of domain names. Magistrate Judge found: “Plaintiff’s registration of the Subject Domain Names and use of them in business since that registration establishes his common law rights in the marks. Therefore, plaintiff is entitled to enforce the provisions of § 1125(d) against any domain name that violates its rights in the protected marks.” The court entered default judgment ordering Verisign, Inc. to cancel defendant’s registration and transfer the names to plaintiff.

Adam Summers v. Georgina Nelson, CEO and Founder of truRating Limited, D2015-0592 (WIPO May 24, 2015)
The defense of “commonly known by the domain name” can be satisfied if there is “sufficient commonality” between the domain name and the name of the business, <trueratings.com> and “tru rating Limited.” citing <vaughan.com> / “Vaughan Enterprises” and <kronopol.com> / “Kronopol Marketing.”

VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) and Playworld Systems, Inc. v. Domain Manager / Giant Distributors Inc., FA1504001613470 (Forum May 21, 2015)
These two cases decided by single Panels illustrate the attraction of equating renewal of registration with original registration, which is an unfortunate departure from consensus and precedent. If ever the complaint of bias can be made in favor of complainants whose trademarks did not exist when the domain names were registered, this is it! It would be a service to the bar to have these cases tried under the Anticybersquatting Consumer Protection Act.

GPZ Technology, Inc. v. Aleksandr Vedmidskiy / Private Person, FA1504001612935 (Forum May 11, 2015)
Fraudulent transfer of domain name supports abusive registration. “[W]hile Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances.” Here, Complainant has adduced evidence to substantiate that Respondent wrongfully acquired the disputed domain name through hacking.

Kite Solutions, Inc. v. Brandon Abbey / Escrow.com, FA1503001609855 (Nat. Arb. Forum May 4, 2015)
Transfer to an escrow agent in connection with a sale of a domain name in which respondent owns a reversion interest in the event of a purchaser default is not a new registration for the purpose of establishing priority.

Beautiful People Magazine, Inc. v. Domain Manager / PeopleNetwork ApS / Kofod Nicolai / People Network Aps / Nicolai Kofod / People Network, FA1502001606976 (Nat. Arb. Forum May 4, 2015)
Respondent’s lack of state, federal or common law trademarks in the US for “beautiful people” is irrelevant, since the question to be decided is not whether Respondent has a valid trademark but whether Respondent has rights or legitimate interests in the domain names that contain that phrase.

HomeAway, Inc. v. Timothy Hall (aka Tim Hall), D2015-0211 (WIPO April 21, 2015)
Complainant’s allegation it is a licensee is insufficient evidence from which to “infer the existence of a license/authorization.”

INVISTA North America S.a.r.l. v. Whois Privacy Service, FA1502001607177 (Nat. Arb. Forum April 14, 2015)
While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant’s mark because of its fame which has been established by the evidence and the absence of any known meaning of TERATE other than as an identifier of Complainant’s products and that Respondent thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

Daredevil Brewing Company LLC v. Matthew O’Brien, FA150300 1608504 (Nat. Arb. Forum April 23 2015).
Renewal of registration of domain name registered prior to complainant’s trademark right does not reset priority and “cannot justify the inference of Respondent’s bad faith registration unless it is coupled with other circumstances.” Complainant’s predecessor owned a registered international and U.S. mark in DAREDEVIL CROSSING that it claimed gave it priority as a family mark but the mark was cancelled on October 4, 2013 due to the failure of filing an acceptable declaration of use of the mark: “However, the Panel is of the view that the filing date or the priority date of a family mark cannot be the priority date of the Complainant’s DAREDEVIL BREWING CO mark with the USPTO.”

Aspect Capital Limited v. Fluder (aka Pierre Fluder), D2015-0475 (WIPO April 14, 2015); Riverbed Technology, Inc. v. Nicholas Bonner, FA1503001608365 (Nat. Arb. Forum April 17, 2015).
In determining whether a domain name is identical or confusingly similar to trademark the dot can be ignored. In Aspect, Respondent coupled “aspect” with the new TLD “capital” to form <aspect.capital>. In Riverbed, Respondent coupled “riverbed” with the new TLD “technology” to form <riverbed.technology>.

Chiu Tsen Hu v. Andy Rose, HK-1500719 (ADNDRC April 16, 2015), citing several other cases from ADNDRC including Dracco Company Ltd. v. NJ T Ech Solutions Inc., HK-1400577 (ADNDRC April 14, 2014).
Panelists have not hesitated to condemn fraudulent transfers and return domain names to complainants on the theory of abusive registration. “Abusive registration” is the highest level of actionable conduct; it subsumes cybersquatting.

Domain Name Vault LLC v. John C. Bush and EClinical Works LLC, 14-cv-2621 (District of Colorado April 15, 2015).
Trademark owner’s submission to choice of court under the “mutual jurisdiction” provision does not extend to submission of personal jurisdiction of its attorney who represented it in the UDRP proceeding.

iSystems v. Spark Network, 3:08-CV-1175-N (N.D. TX, Dallas Div. Sept. 19, 2014).
In a declaratory judgment action under the ACPA the court is not deciding whether the domain name infringes defendant’s trademark, but whether defendant materially misrepresented “that a domain name is identical to, confusingly similar to or dilutive of a mark. The “NAF arbitration award was not based on any misrepresentation that the JDate Domain was dilutive of the JDATE Mark, but rather on the true representation that the JDate Domain was identical to, or confusingly similar to, the JDATE Mark.” Paragraph 10 Conclusions of Law).

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