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Noteworthy Domain Name Decisions for 2017

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015) and Supplement and Update (2016). Learn more about the book and Supplement at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement to the book here. Review and notices of the book here.

More detailed analytical discussions of decisions can be found in recent and archival essays posted on the website and republished on udrpsearch.com and circleid.com. Noteworthy Domain Decisions for 2015 can be found here and 2016 can be found here.

Indoor Air Technologies, Inc. v. Casey Janke / My Tech Company LLC / Privacy Administrator / Anonymize, Inc., FA1701001714547 (Forum March 14, 2017) (<iatcorpusa.com>, <indoorairtechnologies.net>, and <iatcorpusa.net>)
The Panel found the dispute outside the scope of the Policy: “Both parties agreed … that Complainant engaged with Respondent to make use of Respondent’s IT services in developing and promoting Complainant’s business.” Two earlier cases are cited and quoted that are precedential on this issue.
Love v. Barnett, FA 944826 (Forum May 14, 2007) (“the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.” Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) (“[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. . . . The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues.  There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated.  Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses.  So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”)

Clasen Quality Chocolate, Inc. v. Earthlink, Inc., D2017-0129 (WIPO March 1, 2017) (<cqc.com>)
Panel held complaint excusable of reverse domain name hijacking because it “appears, on balance, to be more misconceived than malicious in nature” (emphasis added). The head scratcher in this decision is that the Panel also stated that the “Complaint should not have been brought” which is the formulaic language used by panelists on the other end of the spectrum for expressing abuse of the proceeding.

Dividex Management, LLC v. Rory Blake, D2016-2574 (WIPO February 17, 2017) (<dividex.com>).
Panel in a recent case declined to find reverse domain name hijacking because Complainant “at least [presented] a colorable argument” (albeit relying on a principle of bad faith that has essentially been rejected by other panelists). The Panel found this reliance (that renewal of registration with knowledge of a mark is bad faith) “was reasonable.” Some commentators would find that relying on a rejected proposition of bad faith is “not reasonable” at all, in fact dubious and particularly so where the mark was “not distinctive” and postdated the registration of the domain name by more than a decade, since in that factual context there could not have been bad faith registration.

NSK LTD. v. Li shuo, FA1701001712449 (Forum February 16, 2017) (<skfnsk.com>).
Complainant owns the NSK mark but has no interest in the SKF mark. Panel (Forum appointed) dismisses complaint because Complainant fails to allege any “nexus between it and the owner of the [SKF] mark” and concludes that “[a]s such, Complainant essentially has standing to bring this claim regarding the NSK mark but not the SKF mark.”
In contrast to the Forum, WIPO panelists have a long history of mulling over the problem of multiple marks incorporated into domain names. In Kabbage, Inc. v. Oneandone Private Registration 1, 1&1 Internet Inc. – www.1.and1.com/oert Hanssen, Ridiculous File Sharing, D2015-1507 (WIPO November 20, 2015) (<kabbage4amazon.com>) the Panel rested its reasoning on earlier decisions held that “where Complainant has fulfilled all the elements of Policy paragraph 4(a), expressed a strong preference for transfer over cancellation, and demonstrated to the satisfaction of the Panel that it is cognizant of its obligations to respect the rights of third-party trademark holders, the Panel is willing” to grant the request. The same Panel had previously mulled the problem three years earlier in Incase Designs Corp. v. Rogenie LLC, Rogenie Cordero, D2012-1491 (WIPO September 12, 2012) (<iponeincase.com> in which it concluded “[t]here is no indication in the record that Apple Inc. would consent to the remedy of transfer to Complainant, and indeed, Complainant appears to be disinclined to request Apple Inc.’s authorization. In these circumstances, therefore, the Panel has determined that it is most consistent with the Policy and its injunction of efficiency not to delay the proceedings by ordering Complainant to seek such authorization.
The Panel’s reasoning in NSK is a departure from WIPO appointed Panels. It accepts without other authority a recently created theory which itself cites no authority. NIKE, Inc. and Nike Innovate, C.V. v. Mattia Lumini and Yykk Snc. FA1606001679233 (Forum July 15, 2016) (<nikegoogle.com>). The reasoning comes from nowhere although there may be a clue in the use of “nexus” which is found in the Forum rule concerning multiple complainants. In any event, the “nikegoogle” dispute was refiled with both mark owners as complainants and the domain name transferred, NIKE, Inc., Nike Innovate, C.V., and Google Inc. v. Mattia Lumini / Yykk Snc, FA160800 1687597 (Forum September 20, 2016).

CIA. Industrial H. Carlos Schneider v. WHOIS Privacy Service Pty Ltd. / Domain Admin, Ashantiplc Limited, D2016-2167 (WIPO January 26, 2017)
Complaint denied where Complainant having allowed <ciser.com> to lapse in 2006 now attempts through the UDRP proceeding to regain it after expanding its geographic market. While the Panel recognized that “the term “-ciser” is sometimes used as a suffix in words such as ‘x-ciser’ or ‘shoulder-ciser’ it found “no evidence that the suffix ‘ciser’ has any generic meaning if used individually.” Nevertheless, the Panel held that “[i]n the circumstances of the case, and absent evidence to the contrary, it seems that Complainant acquiesced in Respondent’s registration of the disputed domain name.” Complainant failed to provide any “explanation as to why it abandoned the registration of the disputed domain name [in 2006] and waited for more than a decade to file a complaint.”

Bayerische Motoren Werke AG v. MIKE LEE / WHOISGUARD PROTECTED, WHOISGUARD, INC., Yang Xiao, Xiao Yang, Ning Li, Li Ning, MIKE LEE, D2016-2268 (WIPO January 6, 2017) (<bmw-icom.com> and several others); Fifty Shades Limited v. Domain Admin / Whois Privacy Corp., FA161100 1704616 (Forum January 17, 2017) (<fiftyshades2.com>).
There are two different senses of “counterfeit.” When it refers to a “spurious mark” registrants found to have registered domain names in bad faith are cybersquatters by definition. Noun infringements are the province of the UDRP/URS. However, more commonly we encounter counterfeiting as an adjective as it applies to spurious goods (counterfeit goods) –“made in exact imitation of something valuable or important with the intention to deceive or defraud.” Webster’s Ninth New Collegiate Dictionary. Under U.S. trademark law noun claims can be joined with adjectival claims under the Anticybersquatting Consumer Protection Act (ACPA) which is a section of the Lanham Act but adjectival claims are not actionable under the UDRP/URS.

Complainants in the following two cases initiated complaints for cybersquatting against respondents acquiring domain names by auction.
In Larry S. Nichter, M.D. and Jed H. Horowitz, M.D., a Medical Corporation, DBA Pacific Center for Plastic Surgery v. DOMAIN ADMINISTRATOR / THOUGHT CONVERGENCE, INC., FA1611001702547 (Forum January 3, 2017) (<biospa.com>)
In this case, Complainant’s predecessor owned a trademark that lapsed and Complainant applied for a trademark that was registered in 2016. Respondent acquired the domain name after it was abandoned by a third-party and later than the lapsed trademark but earlier than Complainant’s recently acquired trademark. Since Respondent’s registration of <biospa.com> is senior to Complainant’s filing date for the BIOSPA mark with the USPTO there can be no bad faith.
In Advanced Analytical Technologies, Inc. v. Hare, Myles / URL Enterprises Ltd., FA161100 1701430 (Forum January 1, 2017) (<aati.com>) the parties competed with each other (with many others) at an auction in which Respondent was the winning bidder. It then put the domain name up for sale within 24 hours. Complainant failed to prove rights to “aati.” Panel noted that “[l]ack of governmental registration of a mark may impute a lack of standing, especially where common law evidence is lacking.”

Sven Mark Sawatzki v. WHOIS PRIVACY PROTECTION SERVICE, INC., CAC 101337 (ADR.eu January 3, 2017) (<lunchmail.com>)
Domain name abandoned by earlier registrant and immediately registered by Respondent for its own account. Complaint denied even though Complainant’s mark has priority; weak trademark and no evidence of Respondent capitalizing on the mark.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement and Update here.  Supplement and Update through August 2016 will be available in e-book format on October 1, 2016; the print format will be published on December 1, 2016. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.

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