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Noteworthy UDRP Decisions April and May 2015

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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