Top Menu

Noteworthy Domain Decisions July 2015

For earlier Noteworthy Domain Decisions go to: April, May, & June 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 it 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 facts:
“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.”  This is bad 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.
See my Blog, Overreaching: Priority of Rights to Domain Names.

Print Friendly, PDF & Email

No comments yet.

Leave a Reply

Follow

Get every new post delivered to your Inbox

Join other followers:

4/xVVyQrMpFFp6VcOTT2qD9g.0oyCn-dWDJ0cJvIeHux6iLYvgUztkQI
%d bloggers like this: