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. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Update and Supplement published January 2017.
Analytical discussions of decisions can be found in recent and archival essays. Noteworthy Domain Name decisions for 2016 can be read here.
Fraudulently transferred domain names
In cases that raise issues of fraudulently transfer UDRP Panels have consistently ruled complainants are entitled to relief. However, the question is whether the UDRP remedy is fast enough to prevent further transfers that could cause complications for recovery rather than taking emergency action under the ACPA. Between May and September 2015 the United States District Court for the Eastern District of Virginia, Alexandria Division entered default judgements in in rem actions ordering Verisign, Inc. to transfer fraudulently transferred domain names to plaintiffs:
Acme Billing Company v. John Doe, 14-cv-1379
Traffic Names, Ltd. Zhengui Yiming, 14-cv-1607
Anthony J. Alfieri-Crispin v. Li Ting, 15-cv-608
Jysk Bed’N Linen v. Dutta-Roy, 13-15309 (11th Cir. December 16, 2015)
Jysk joins three other federal cases in which domain name holders are accused of abusive registration for “re-registering” or renewing domain names in violation of the ACPA: Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003) (“re-registering”), Southern Grouts & Mortars, Inc. v. 3M Company, 575 F.3d 1235 (11th Cir. 2009) (renewing registration), and GOPETS Ltd. v. Hise, Digital Overture, Inc., 657 F.3d 1024, 1032 (9th Cir. 2011) (re-registering and renewing by a transferee). The court uses “re-registration” to describe a situation in which the domain name has been registered by subsequent purchaser; to distinguish it from the original registration).
The Third and Ninth Circuits construe the concept of “registration” under the ACPA differently, at least as they apply the law to the particular facts in dispute. According to the Eleventh Circuit in Jysk, which now sides with the Third Circuit, the Ninth Circuit “viewed the domain-name registration through the lens of property law, rather than through the Third Circuit’s analogy to contract law.” This reference to lenses may be true, but a better explanation for the different results in Schmidheiny and GOPETS is that the courts were responding to different factual circumstances.
The different results in Schmidheiny and GOPETS have been absorbed into the UDRP jurisprudence. See Twitter, Inc. v. Geigo, Inc., D2011-1210 (WIPO November 2, 2011).
Yoyo.email Limited v. Royal Bank of Scotland Group PLC and Others,  EWHC 3509 (Ch)
By design the UDRP is a nonexclusive, alternative forum for resolving claims of cybersquatting. The opening sentence of paragraph 4(k) affirms respondent’s right to submit “the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.” This assumes there are national laws providing subject matter jurisdiction for claims of cybesquatting, but if there are no such laws then paragraph 4(k) is illusory. Yoyo.email and earlier UK cases make it clear that awards under Nominet’s Dispute Resolution Policy and the UDRP canceling or transferring domain names to complainants are conclusive against respondents. Big thank you to Rebecca Mitton UK attorney for sending me a copy of the judgment and Order.
In contrast, in the United States jurisdiction is granted under the Anticybersquatting Consumer Protection Act (ACPA) and associated provisions of the Lanham Act, specifically Section 1114(D)(2)(iv) and (v). Subsection (v) provides that “A domain name registrant whose domain name has been … transferred under a policy … may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this act.”
Quicken Loans Inc. v. Laura Yun / Offshore Hosting Solutions Ltd., FA1510001644564 (Forum December 11, 2015) (<clicknloan.org>).
In assessing similarity that is confusing—one of the two elements for standing to maintain a UDRP proceeding—inferences are based on adding, subtracting, exchanging, reversing, and omitting characters in comparing the second level domain with the trademark. Sound, look, sense, and feel are prominent clues in making the assessment: aural (<ecolab.com> and EKOLAB), visual (<awardsforce.com and AWARD FORCE), conceptual (<tumlr.com> and TUMBLR), and phonetic (<bunsandnoble.com> and BARNES AND NOBLE).
In Quicken Loans the phonetic similarities between QUICKEN LOANS and the phrase “clicknloan” include syllables in common (“ickn”), the hard “k” sound, and pattern of stressing syllables (opening and closing sounds of “clickn” and “quicken”), and omission of “s” from “loans.”
SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, D2015-1566 (WIPO November 23, 2015) (<zic.com>)
Claims of cybersquatting for registering and holding two and three letter domain names have a long history. Two 2000 cases for example involved <daf.com>, Tenenhaus Philippe v. Telepathy, Inc, 94355 (Nat. Arb. Forum May 17, 2000), and <kis.com> Kis v. Anything.com Ltd, D2000-0770 (WIPO November 20, 2000). In both, the Panels confirmed Respondents had legitimate interests in the short letter domain names. In many other cases over the years involving short strings complainants contentions of bad faith have been rejected unless—and this is the takeaway—complainants offer substantive proof that it is they, in particular, who respondents are targeting for their trademarks’ goodwill and reputation. For <zic.com> Complainant offered no proof of targeting and the Panel held that the “complaint … should never have been launched.”
Russ Smith v. Director’s Choice, LLC., 15-00081 (D. NJ. November 30, 2015) (<directorschoice.com>)
Following adverse award domain name holder transferred the registration from his business into his own name and commenced ACPA action. Defendant moved to dismiss for lack of standing on the theory that only the business has an actionable claim. The court rejected this argument: “The UDRP decision binds A and anyone else with whom A is in privity, such as B. If registration of the domain name was later transferred to B, B would fall within the meaning of “domain name registrant whose domain name has been suspended, disabled, or transferred.” 9. Footnote 9 reads:
“Plaintiff does not lose standing to sue by changing the domain name registrant from an entity owned by him to himself, but neither will he insulate himself from the prior conduct of HELP.org. Because he is in privity with HELP.org, in order to prove that registration and use of <directorschoice.com> were lawful, Plaintiff must still prove that the actions taken by domain name registrant HELP.org were not in bad faith.”
bwin.party digital entertainment plc and ElectraWorks Limited v. B7win Ltd, D2015-1709 (WIPO November 25, 2015).
There is no patience for parties who fail to comply with the demands of the Policy, procedurally and substantively, although this does not necessarily result in forfeiture. See for example Edatanetworks Inc. v. Joe Racek, Network of Giving, D2015-1608 (WIPO November 18, 2015) (Earlier registered domain name, later acquired trademark). As a general rule late responses are accepted where 1) they are not filed substantially late and before commencement of the decision making process; 2) failure to take the response into account would have led to a miscarriage of justice; and 3) the response is late by only one day and would not have prejudiced the complainant.
However, in bwin.party “Respondent did not reply to the Complainants’ contentions. Instead, it asks for an extension of time to respond, which it submitted well after this Panel’s appointment and three days prior to the decision deadline. The only reason submitted for the request was: ‘We check the complaint with our lawyers, and ask for more time to respond.’” In Edatanetworks Respondent did not appear but it made no difference.
T-Mobile USA, Inc. dba MetroPCS v. amit patel / Lead Generation, FA1510001643152 (Forum November 19, 2015)
The Panel found <metro-franchise.com> sufficiently similar to METROPCS to be confusing in that it contained the dominant element of the trademark, “Metro.” The similarity here appears to be on the border line of confusing, but the burden is relatively light and any doubt favors standing; this is even more so when considering the totality of circumstances which in this case showed that Respondent was phishing for personal information from Complainant’s customers. Under other circumstances, a dictionary word (or, in this case an abbreviation of “Metropolitan”) could support a legitimate interest. However, since the domain name postdated the mark its unlawful use supported bad faith registration.
Bankwell Financial Group, Inc. v. Whois Privacy Protection Service, Inc. / Domain Manager, Affordable Webhosting, Inc., Advertising, D2015-1664 (WIPO November 13, 2015) (<bankwell.com>).
Ordinarily, a change of registration information signals a new holder of the challenged domain name, but “where [there is] an unbroken chain of underlying ownership by a single person . . . a change in the recorded WhoIs details will not be considered a new registration for the purposes of the UDRP.”
Geopost v. Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Domain Admin, D2015- 1602 (WIPO November 8, 2015)
Determining confusing similarity where the alleged mark is a generic phrase, here “your delivery experts” embedded in a device mark, is not a simple side-by-side comparison of the trademark and the relevant domain name particularly where the words are not separately distinctive. The Panel found that “[t]he strikingly dominant visual element of the Complainant’s mark is without doubt the red stylised parcel design. It is very considerably larger than the words ‘your delivery experts’ which is in relatively small and indistinctive font inserted at the foot of the parcel design. Although ‘your delivery experts’ is clearly the sole textual element of the mark, in the Panel’s view the overall impression given by the mark is that the parcel design is by far the most dominant element and that the slogan ‘”your delivery experts’ is an addendum to the red stylised parcel design.”
Greencraft LLC v. Kim, James / Mediablue, FA1509001636762 (Forum November 4, 2015) (GREENCRAFT and <greencraft.com>
Dictionary words are generic when employed denotatively for their ascribed meanings, therefore incapable of trademark status, but can nevertheless acquire distinction if used connotatively as arbitrary or suggestive symbols. It follows too that compounds composed of generic terms are not condemned to being generic; can in fact be distinctive and qualify for trademark registration on the Principal Register. In this case, Respondent and Dissent argued that “greencraft” was as generic as “green” and “craft.” However, the creation of a compound can be an imaginative act that is not merely descriptive; it does not descend in value because it is composed of two generic terms.
Bridgewater Associates, LP v. Private Registration, FA1509001637996 (Forum October 19, 2015) (BRIDGEWATER and <bwater.site>)
If a domain name is similar but not confusingly similar to the trademark in which complainant has rights the complaint must be dismissed for lack of standing. But there is a thin line separating similar from confusingly similar. Where it is difficult to decide which side of the thin line the domain name is on Panels ordinarily opt for confusing similarity and rest their decisions on the second and third requirements of the Policy. The Panel in this case did not follow this procedure for the reason that “[c]onfusing similarity is to be determined by reference only to the disputed domain name and the mark or marks in which Complainant claims rights. The manner in which the domain name has been used, including the content of the corresponding website, is not relevant for purposes of paragraph 4(a)(i) of the Policy.”
However, applied too rigidly this mantra can create an injustice which the Panel particularly highlights in this case because it also found that Respondent had no right or legitimate interest in the domain name and was using it unlawfully to phish Complainant’s customers.
Brian Fera v. Media Options S.A., D2015-1470 (WIPO October 16, 2015) and Delta Air Lines, Inc. v. Chad Meyerson, FA1509001636800 (Forum October 19, 2015).
Ordinarily, the top level domain is “traditionally discounted . . . when making the assessment [of abusive registration] . . . precisely because the top level domain identifier is generic and of neutral effect when considering the significance of the domain name at the second level.” Brian Fera. However, the significance of top level domains must be considered where in combination with the second level they appear to take advantage of complainants’ trademarks. In both these cases Complainants succeeded in establishing that the domain names were identical or confusingly similar to registered trademarks—WICOM and <wi.com>, visually identical, and DELTA, no trademark for “delta tours”—but for different reasons both failed on the second or third requirements. These two can be compared with Securian Financial Group, Inc. v. me s / enom, FA1595614 (Forum January 16, 2015) (MINNESOTA LIFE and <minnesota.life>) in which the Panel noted that the combination of second level and top level domain was identical to Complainant’s trademark.
Katch, LLC v. Thomas Korula / Mahaya, FA1508001633953 (Forum October 3, 2015).
For unregistered trademarks complainants must establish their market presence and respondents knowledge of them. This is typically done by offering evidence as to (1) the length and continuity of a mark’s use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures. In Katch, the majority found that although several business outlets carried the news of the change of name of Complainant “the Panel is not convinced that the reports in the business media outlets relied on were unsolicited, as they appear to be services that carry the press releases of companies who issue them, a useful service of course but not evidence that the market has come to associate the alleged mark with the goods and services of Complainant.”
MAGIX Software GmbH v. The Music Connection, D2015-1216 (WIPO October 1, 2015)
The consensus is that panelists are not prohibited from doing independent factual research in aid of “reach[ing] the right decision.” However, although the right decision theoretically delivers justice it relieves the benefiting party from having to prove its case, thereby raising a question as to the Panel’s neutrality. This is particularly problematic with a defaulting respondent who benefits from the Panel’s factual research as was the case in Magix. In any event, the best practice if the Panel undertakes the factual research is to provide an opportunity for the parties to respond, which is also noted as a consensus view in Paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
Strebor, LLC d/b/a Power Tool Repair v. Ronald Manuele / R & R TOOL REPAIR, FA150800 1634899 (Forum September 28, 2015) (<ohiopowertoolrepair.com>).
No standing based on application for trademark, and if common law is alleged it must be proved. In this case Complainant submitted no evidence of secondary meaning showing its services are widely associated with “power tool repair.”
Important lesson. As the Panel makes clear in denying reverse domain name hijacking if Complainant (represented by counsel) had marshaled its evidence for unregistered rights it could have prevailed.
San Francisco Bay Area Rapid Transit District v. Chad Laughlin, FA1508001633388 (Forum September 25, 2015) (<bart.net>)
Although registrants generally have no duty to investigate whether third parties have trademarks some investigation is expected for parties in the domain name reselling business. Denial of knowledge is particularly implausible where the mark is well known, and particularly in those cases (as here) where respondents immediately after acquiring domain names offer them to complainants.
Panel held: “In this case, the Panel notes that the BART mark was registered and Complainant has been in operation since 1973. Both of those circumstances arose in the country of Respondent’s residence and occurred more than forty years before Respondent purchased the disputed domain name. Moreover, while it is a stretch for the Panel to believe that Respondent was unaware of Complainant or its mark before said purchase, certainly minimal effort in running such a reselling business, in which Respondent claims to be engaged, would have disclosed those circumstances.”
800 Response Marketing, LLC v. Nalbant Holding AS, FA1508001632497 (Forum September 18, 2015)
The consensus position for standing under paragraph 4(a)(i) of the Policy is that it is satisfied regardless of the date of complainant’s acquisition of trademark. Panelist in this case (as he has in deciding earlier cases) departs from consensus: “As Complainant has not demonstrated that its rights predate Registrant’s domain name, Complainant has not satisfied paragraph 4(a)(i) of the Policy.” The logic is plain even though not generally accepted by other panelists: unless complainant is able to establish use in commerce earlier than registration of the domain name it lacks standing to maintain the proceedings.
Academy of Motion Picture Arts & Sciences v. GoDaddy.com, Inc., CV 10-03738 (C.D. CA September 10, 2015).
In this action against a service provider for providing parking services to registrant infringing plaintiff’s trademarks the court found defendant “has met its burden on its affirmative good faith safe harbor defense, which is a complete defense to liability.” To prevail in an action under the ACPA plaintiff must prove “subjective bad faith.” It is not sufficient to prove a registrar’s “intent to profit” by the fact that it offers particular services plaintiff claims infringes its rights; the “bad faith” must be motivated by subjective intent in profit from plaintiff’s mark. That is, “the plaintiff must prove a defendant subjectively intended to profit from the specific mark at issue in bad faith.” Question, however, whether subjective bad faith applies to registrants or limited to neutral service providers
Particularly interesting is the court’s endorsement of a DMCA-style notice and takedown process as a means of allowing trademark holders to report potential trademark infringements. Moving registrants out of the “parked page program” is not inconsistent with ICANN’s policy since the remedy does not involve canceling, suspending, or transferring the domain name.
iPayment, Inc. v. Domain Hostmaster, Customer ID: 83314393006017, Whois Privacy Services Pty Ltd / Kwangpyo Kim, Mediablue Inc., D2015-1014 (WIPO September 2, 2015) (<ipayments.com>).
Credibility plays a significant role in assessing merits of parties’ positions. In this case Complainant’s failure to disclose material facts coupled with making unfounded allegations and falsifying the circumstances of its prior ownership of the domain name resulted in the three member Panel dismissing the complaint and finding reverse domain name hijacking. Although not mentioned by the Panel Complainant’s conduct violated the certification Rule 3(b)(xiv) and (5(b)(viii) for respondent). The certification rule is equivalent to Rule 11 of the Federal Rules of Civil Procedure.
Philip Morris USA Inc. v. Lori Wagner / David Delman / David@delman.tv, FA1507001627979 (Forum August 19, 2015)
On the issue of free speech there are always aberrational panelists so adamant in their espousal of View 1 that website content is ignored entirely even though a domain name may clearly forecast commentary and criticism. The Panel in this case held that “Respondent’s bad faith use or registration may not be defended by any claim that using a confusingly similar domain name is protected by free speech rights.” The award will depend on the panelist appointed to hear the dispute.
See Comment by smlevy42 on www.udrpsearch.com: “I’m concerned that this decision guts the entirety of the fair use defense as well as years of contrary UDRP precedent by setting out a blanket rule that, if a respondent uses a brand in a domain, it is doomed regardless of the web content or other words in the domain.”
Boehringer Ingelheim Pharma GmbH & Co. KG v. Whoisguard Protected, Whoisguard, Inc. / ESQUIRE 5, J Gates, D2015-0978 (WIPO August 17, 2015), citing Christian Dior Couture v. Christina Dior/Chris Vella, D2009-0032 (WIPO February 27, 2009)
Failure to comply with the certification requirement is no trivial matter. Informal assertions in email responses to the complaint have no evidentiary value. Christian Dior: “The Policy provides a relatively informal process of dispute resolution. It has no formal rules of evidence and panels frequently are prepared to treat as evidence assertions of fact to be found in the parties’ submissions insofar as these facts can reasonably be expected to be within the knowledge of that party. In the circumstances, it is imperative that submissions contain at the very least the limited safeguard provided by paragraph 5(b)(viii).”
Zippo Manufacturing Company v. Perfect Privacy, LLC / Fred Martin, D2015-0964 (WIPO August 12, 2015) (<zippolighterproducts.com>).
Confusingly similar though a domain name may be it may also be permissible if the parties are engaged in entirely different enterprises and not competitors in the same market, targeting the same consumers, or taking advantage of the trademark. In this case Respondent is selling genuine Zippo products. Panel cited Oki Data Americas, Inc. v. ASD, Inc, D2001-0903 (WIPO November 6, 2001)
Ramsey Mankarious v. Stanley Pace, D2015-1100 (WIPO August 11, 2015)
Complainant, a prominent businessman, was the registered holder of <mankarious> for 15 years before inadvertent lapse of registration but has no trademark with bitter consequences: “On the evidence before the Panel, the Complainant falls squarely into the category of a businessperson (potentially) having a famous name but who does not actually use his/her name as an identifier for the business engaged in, which . . . is insufficient to constitute unregistered trade mark rights.”
Sony Pictures Television Inc. v. Thomas, Jeff, FA1506001625643 (Forum August 6,2015) (<sharktank.com>)
3-Member Panel rejects the proposition that subsequent renewals of disputed domain name “with knowledge of Complainant’s trademark suffice to establish bad faith registration,” citing several UDRP decisions to that effect, including Big 5 Corp. v EyeAim.com, FA 1513704 (NAF, Oct. 11, 2013) but inexplicably elevates the view into an official “minority position” (which it is not) to deny reverse domain name hijacking.
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 registration 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).