December 1, 2008
Certification of Pleadings
Parties are required to certify their pleadings under paragraph 3(b)(xiv) of the Rules with language having a family resemblance to Rule 11 of the Federal Rules of Civil Procedure. The Rule reads that “the assertions in this Complaint [Response] are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” The Panel in General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 12, 2006) noted that this “is essentially a certification and expansion of the duty of candor by legal counsel incorporated in ABA Model Rules of Professional Conduct 3.3.” The failure to obey the Rule has different consequences for the complainant and respondent. A finding that the complainant has violated the Rule results in a finding of reverse domain name hijacking, but carries no monetary penalty. Against the respondent, its response will be disregarded.
Counsel in 1 Model Management, LLC. v. L.A.S. Inc., Latifa Aadess, 1 Models LLC, D2008-1173 (WIPO October 24, 2008) certified the complaint which (so the Panel found) “includes facts that demonstrate no likelihood of success.” The case for Reverse Domain Name Hijacking “is especially compelling here given Complainant’s almost total lack of proof on any Policy element and Complainant’s inaction for five years,” citing Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., D2007-1598 (WIPO January 28, 2008).
Interestingly, the dissent in Liquid Nutrition (dissenting only from the reverse domain name hijacking finding) noted that “Respondent has not asked for a finding of Reverse Domain Name Hijacking (although such a finding may be made by a panel on its own motion) and consequently Complainant and its counsel have not had an opportunity to reply to any such submission.” The suggestion is that the Panel should sua sponte have granted the Complainant the right to explain itself in a supplemental submission.
November 28, 2008
Some surname trademarks are canonical, BLOOMBERG, DELL, TRUMP – denial of knowledge is implausible; others are famous or well known in their niches or regions, but unknown elsewhere, CHARTIER, HOERBIGER, SAVINO DEL BENE – the complainant has to offer sufficient evidence from which the Panel can infer respondent's knowledge; and still others that have no recognition beyond the territories in which they are known or in which they serve, BARDOT – in which case denial of knowledge is plausible. The burden of persuasion is variable depending on the circumstances. The Panel in Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, D2004-0108 (WIPO July 22, 2004) (<tonysnow.com>) notes that as “the degree of fame decreases from clearly identifiable celebrities with worldwide renown, to nationwide renown or to less well known authors, actors or businessmen with limited renown in a specific field, the burden of proof on the Complainant increases and the need for clear and convincing evidence becomes paramount.”
When a company with a trademark surname sues an individual for registering a domain name identical or confusingly similar to it there are three possibilities; that the respondent 1) is taking advantage of the complainant’s reputation; 2) has a right to the domain name because his or her surname is identical to the trademark. Harrods Ltd. v. HDU Inc., D2004-0093 (WIPO April 27, 2004) (<harrodssalon.com>); Mattel, Inc. v. Gopi Mattel, FA0411000372847 (Nat. Arb. Forum February 15, 2005) (<mattel.org>, it was not for “Complainant to deem what is a ‘proper’ surname simply because it owns a trademark on the same name in conjunction with the sale of certain wares”); or, 3) plausibly has no knowledge of the complainant or its trademark.
In Artemides Holdings Pty Ltd v. Gregory Ricks, D2008-1254 (WIPO October 29, 2008), the third case, the Complainant owned numerous BARDOT trademarks and variations thereof. The Respondent who defaulted in appearance registered <bardot.com>. Some of the trademarks were registered before the domain name and many after. The Panel held for the Respondent “mainly for two reasons”:
Firstly, the Complainant provided evidence that it was the registered owner of trademark rights in Australia and New Zealand only, at the time of the registration of the disputed domain name by the Respondent, who is located in the United States of America.. ..
Secondly, the name “Bardot” also is a common French family name, often connected to the famous French actress Brigitte Bardot. The Respondent may well have had reasons for registering the disputed domain name other than the Complainant’s trademark rights.
In the case of BARDOT, Brigitte was not the eponymous founder of the company. Neither was there any evidence that company's existence projected beyond the territory in which it did business or that the Respondent had any past association with it. Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX, D2005-0179 (WIPO April 20, 2005) (<schwabbanking.com>).
November 26, 2008
Bait and switch cases are characterized by the use of domains in the name of Company A to attract consumers interested in purchasing goods or services from it and offering them instead “comparable” goods or services from Company B. Respondents operate without authorization but pretend otherwise. The Respondent (who chose not to appear) in Bel-Ray Company Inc. v. Belray Caribe, S.A., Angel Pons Roura, D2008-1365 (WIPO November 11, 2008) is described as a former distributor of the Complainant. However, the domain name <belraysa.com> resolved to a website that stated that the Respondent is a distributor of the Shell Company, a competitor of the Complainant. Contradictorily, the website reproduces the Complainant’s trademark, logo and slogan “Total Performance Lubricants” and appears to be “offering prima facie BEL RAY products.”
Unlike other unauthorized registrants discussed in the Note of November 20, 2008 operating businesses legally selling or reselling goods for targeted markets this Respondent registered a domain name virtually identical to the Complainant’s trademark – the suffix “sa” is disregarded – and falsely suggested – but also implicitly disclaimed – an association with the Complainant. To be permissible, the complainant's trademark must be embedded in a name with descriptive elements; for example, <volvo-auto-body-parts-online.com>,Volvo Trademark Holding AB v. Auto Shivuk, D2005-0447 (WIPO June 8, 2005). It is always true in these cases that the complainant's trademark is an essential term in advertising the respondent's business.
In Bel-Ray, the Panel held that the Respondent's conduct was not consistent with a bona fide offering of goods or services [¶4(c)(i)] and “it cannot be excluded that Internet users were not baited and switched to other goods [that is, goods manufactured by the Shell Company],” citing Nikon, Inc. and Nikon Corporation v. Technilab Inc., D2000-1774 (WIPO February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate) [¶4(b)(iv)].
In addition to evidence observed directly from the Respondent's website in Bel-Ray, the Complainant had obtained a judgment against the Respondent of the Superior Court of New Jersey confirming that the Respondent has no authority to use the Complainant’s marks. Accordingly, “the Respondent was certainly well aware [indeed, had actual knowledge] of the Complainant’s trademarks at the time of the registration of the disputed domain name on November 7, 2005.”
November 25, 2008
Expanding the Scope (Opening up the Space) of the Policy
In a number of ways that I have tried to suggest in earlier Notes the UDRP has over its eight years of existence discernibly developed its jurisprudence. This includes opening up of space or expansion of the Policy’s scope to include as evidence of good faith – to take two circumstances of several that do not fit easily into any of the three expressly described in ¶4(c)(i, ii and iii) – “nominative fair use” and “acquiescence.” Nominative fair use was recently discussed in ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., D2008-0936 (WIPO November 7, 2008) [Note of November 20, 2008]; acquiescence was noted in Ivanko Barbell Company v. Syclone Corporation c/o Adam Auerbach, FA0805001191122 (Nat. Arb. Forum July 22, 2008) [Note of July 23, 2008].
Panelists were initially cautious in determining the Policy’s scope and a number of complaints were denied as raising issues determined to be more properly candidates for courts of law that later panelists have decided on the merits. This is illustrated in the sixth case to be decided under the UDRP, Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, D2000-0006 (WIPO February 28, 2000) the Panel stated that the factual circumstances were such that
it cannot be concluded that Respondent has no ‘rights or legitimate interests’ in the domain as is required under the Policy. While Respondent does not own MILITEC as a trademark, questions remain as to whether Complainant legally acquiesced in Respondent’s registration and use of the domain, at least initially, or whether Respondent’s use is a nominative fair use. Acquiescence and fair use are principles of trademark law, each requiring full analysis of the underlying facts. These are issues for the courts.
Of course, in denying the complaint – the issues were not further tested in an ACPA case – the Panel implicitly upheld the Respondent’s legitimate interest in the domain name without declaring it openly. This was too bad because assuming the parties have submitted a sufficient record the principles for declaring a party’s right were available in the language of the Policy. Affirmative defenses are not limited to those circumstances prescribed in ¶4(c) (i, ii and iii); they were never intended to be a procrustean bed for proving good faith. Far from being a universe of possibilities Paragraph 4(c) states that “[a]ny of the following circumstances [that is, the circumstances set forth in (i), (ii) and (iii)], in particular but without limitation.” A determination of good faith is “based on [the Panel’s] evaluation of all evidence presented.”
The early view of the Policy expressed in Adaptive Molecular Technologies proved too narrow jurisdictionally to gain support from other panelists. The direction in opening up or expanding the Policy’s scope is more clearly spelled out in DaimlerChrysler A.G. v. Donald Drummond, D2001-0160 (WIPO June 18, 2001), a spare parts case involving the domain name <mercedesshop.com> which implicitly raised the defense of nominative fair use. The Panel concluded that “[u]nder the present facts, if [it] were to find for the Complainant, the majority can conceive of no case in which a legitimate competitor in the sale of parts and aftermarket accessories could ever register a domain name descriptive of that business.” In reaching its conclusion the majority held in essence that the Respondent was using the Complainant’s trademark “fairly” – not in the sense provided in ¶4(c)(iii), but nevertheless bringing the circumstance within the Policy’s mandate. The dissent rejected a finding of good faith on the grounds that it caused initial interest confusion. The two concepts, nominative fair use and initial interest confusion, are the obverse of each other and fundamentally at odds.
The inclusion of nominative fair use within the scope of the Policy follows U.S. law so it is not surprising – as with the doctrine of “constructive notice” whenever it is (rarely) applied – that the parties are U.S. citizens. Thus, the Panel in Preston Gates & Ellis, LLP v. defaultdata.com and Brian Wick, D2001-1381 (February 13, 2002) (U.S. parties) stated that the “doctrine of nominative fair use of marks allows the use of a mark when it is reasonably necessary to facilitate free expression and the dissemination of information,” citing New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1991). Later cases have cited Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002) and Horphag Research v. Mario Pellegrini, 328 F. 3d 1108 (9th Cir. 2003). When nominative fair use is rejected panelists opt for initial interest confusion to rule in the Complainant's favor – severely criticized in Aspis Liv Försäkrings AB v. Neon Network, LLC, D2008-0387 (WIPO June 2, 2008).
November 24, 2008
Offering a Domain Name for Sale; When Not a Violation
Paragraph 4(b)(i) of the Policy does not make all offerings for sale of domain names to complainants a violation warranting forfeiture, but only those acquired by the respondent “primarily” for the interdicted purpose, that is “selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
If the acquisition was made for another purpose, not primarily to take advantage of the complainant's trademark, there cannot be bad faith registration. This is often the case when the domain name registration precedes the complainant’s acquisition of a trademark right. This was the case in Daysoft Limited v. Newmarket International, D2008-1347 (WIPO November 10, 2008) in which the Respondent was the registrant of <daysoft.com>. The Complainant was shocked, shocked in response to its query to the Respondent about purchasing the domain name to receive an offer to sell it for “valuable consideration [far, far] in excess of” of the Respondent’s “out of pocket costs directly related to the domain name.” However, offers of sale do not violate the Policy when (quoting the Panel):
(i) the domain name is registered many years before the respondent makes an offer of sale and it was unlikely that the respondent knew of the complainant at the time of registration (see SOUTHBank v. Media Street, WIPO Case No. D2001-0294);
(ii) the complainant first solicited an offer of purchase (see SOUTHBank v. Media Street, WIPO Case No. D2001-0294);
(iii) where the respondent had legitimate interests in the domain name and offered to sell the domain name at a reasonable market price (above out of pocket expenses) (see Avnet, Inc. v. Aviation Network, Inc, WIPO Case No. D2000-0046).
No knowledge of another’s rights such as to prove bad faith registration can be imputed that has yet to come into existence. All three circumstances were present in Daysoft; the domain name was acquired in good faith and the complaint was denied.
November 21, 2008
Misapprehending (Domain Name) Law
A sure indication that one or the other party misapprehends the law is his failure to present the right facts, support his contentions with evidence or to argue the right theories. Many are the cases in which counsel are humbled by such failings; they should have known better, which for complainants sometimes means not having commenced the proceedings in the first place. Rohl, LLC v. ROHL SA, D2006-0645 (WIPO July 12, 2006) (“[T]he Complaint was filed by a significant company, assisted by lawyers, acting in bad faith” etc). It is more painful when it happens to pro se parties because either or both missed opportunities as complainant or, as a respondent, believing there is a right or legitimate interest where none exists.
Taking respondent misunderstanding first. It is elementary that square pegs are not for round holes. Similarly with doctrines of law; there is no interchangeability. Thus, invoking “fair use” to defend a registration under Paragraph 4(c)(iii) of the Policy in the belief it carries the same meaning in trademark as it does under copyright law merely highlights the respondent’s naivete. “Googler” is a derivative verb; undoubtedly a creative neologism, but <googler.au.com> nevertheless rides on the fame of Google, Inc., as in Google Inc. v. Jan Jeltes, DAU2008-0012 (WIPO October 20, 2008); as does <businessgoogler.com> (among other domains registered by the Respondent incorporating the neologism), Google Inc. v. Jeltes Consulting/N. Tea Pty Ltd, D2008-0994 (WIPO August 20, 2008). The “googler” cases were the subject of a Note on November 7, 2008.
It is particularly hard on a pro se complainant to find himself against a respondent who makes sport of the complainant’s ignorance of the law in a derisive, hectoring, mocking tone. Such is the case in B C Furtney v. Afterthought Productions, FA0809001226494 (Nat. Arb. Forum November 17, 2008). Both Complainant and his nemesis are residents of Pennsylvania. The Respondent exudes a sensation of unwholesome complacency. From the tone of the response and the venom – if accurately conveyed by the Panel – it appears that the parties may know each other or are competitors. Evidently, the Complainant once had but lost control of the disputed domain name by failing to renew his registration. In seeking to recover the domain name he had to overcome two evidentiary problems, the second only if he could solve the first. First, that he failed to demonstrate that his personal name qualified as a common law trademark, although – and this is what is painful – there appeared to be some factual but undeveloped basis for an unregistered mark. Second, to persuade the Panel that his superior right (assuming he could have proved ownership of a trademark in his personal name) warranted transfer. At least – yielding, though, little compensation – he avoided the humiliation of a reverse domain name hijacking.
The Lanham Act, 15 U.S.C. 1129 (Cyberpiracy protections for individuals), Section (1)(A) provides a remedy for cyberpiracy of personal names that do not qualify for trademark protection, but only if the registrant's “specific intent” is “to profit from such name by selling the domain name for financial gain to that person or any third party,” in which event the registrant “shall be liable in a civil action by such person.” Personal names that qualify as trademarks are protected under 15 U.S.C. 1125(d)(1)(A). Some states also have laws that address the issue [Hawaii Revd Statutes, Div. 2, Title 26, Ch. 481B (2003), 481B-22 (b) “Any person who in bad faith registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, shall be liable in a civil action by the person.”]. See also, New York State General Business Law, Sec. 146 et seq. (Cyber Piracy Protections; Domain Names). [If any reader knows of other local laws enacted or proposed on cyber piracy of personal names, please let me know].
November 20, 2008
Reseller’s Legitimate Interest in Domain Name
Authorized dealers and resellers are limited in their use of a complainant’s trademarks by contract; other categories of Internet merchants offering goods or services in after markets dealing in manufacturers' products while not so limited have to meet a rigorous test for incorporating a complainant’s trademark in a domain name without permission. A respondent can permissibly register and use a domain name that is confusingly similar to the complainant’s trademark if it is “descriptive of the business conducted under the domain name,” Volvo Trademark Holding AB v. Auto Shivuk, D2005-0447 (WIPO June 8, 2005) [<volvo-auto-body-parts-online.com>] (Respondent defaulted; Relief denied) and satisfies the test set forth in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) (<okidataparts.com>). The Panel in Oki Data gave structural shape to the principle for determining whether authorized resellers have a legitimate interest in a domain name. He essentially harmonized earlier decisions in setting out a four-point test. I have noted the earlier cases in brackets:
(1) The respondent must actually be offering the goods or services at issue [World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, D2000-1306 (WIPO January 24, 2001)];
(2) The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods [Nikon, Inc. v. Technilab, D2000-1774 (WIPO February 26, 2001); Kanao v. J.W. Roberts Co., CPR 0109 (July 25, 2001)];
(3) The respondent’s website must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents [Houghton Mifflin Co. v. The Weatherman, Inc., D2001-0211 (WIPO April 17, 2001); R.T. Quaife Engineering v. Luton, D2000-1201 (WIPO November 14, 2000); Easy Heat, Inc. v. Shelter Prods., D2001-0344 (WIPO June 14, 2001)];
(4) The respondent must not try to corner the market in all domain names, thus depriving the owner of reflecting its own mark in a domain name [Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO January 29, 2001)].
The Oki Data test is not limited to authorized selles, but is also employed to determine rights of unauthorized dealers and resellers. Respondents in the case of the day, ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., D2008-0936 (WIPO November 7, 2008) were unauthorized resellers who “unquestionably offer devices that were originally sold and labeled as ITT or ITT Barton products.” The disputed domain names are variants of the Complainant’s trademark that included the term BARTON, a discontinued line of products.
The Panel found that “Respondents’ website accurately disclosed in its heading the name of the company offering those products (DPI) and includes a home-page disclaimer of affiliation with the Complainants.” In addition, the “website includes a more detailed explanation, on a page linked from the home page, of how the Respondents have purchased and stocked 'new surplus' ITT Barton devices for resale.” There was no proof that the Respondents had attempted to “corner the market” in relevant domain names and “the Complainants themselves have not evinced an interest in perpetuating the “ITT Barton” name or product lines.”
Why is the complaint dismissed if the Respondent is a reseller but not an authorized dealer? The answer lies in nominative fair use of the trademark, a doctrine that has found significant support among panelists notwithstanding tension between nominative fair use and initial intereset confusion. The latter has come in for criticism in its application to domain names. However, “[i]f any nominative fair use of domain names is to be permitted, initial interest confusion cannot standing alone act as a per se preclusion,” Pfizer Inc. v. Van Robichaux, D2003-0399 (WIPO July 16, 2003). On a preponderance of the evidence in ITT Manufacturing, the Panel found that the Respondents had demonstrated a legitimate interest in the domain names in registering them in connection with their business. The Panel could have stopped at this finding, but continued to analyze the issue of bad faith registration and use. It held that “the Respondents have from the beginning possessed a legitimate interest in making nominative use of the ITT mark consistent with the Oki Data requirements; consequently, this use does not reflect bad faith. Nor is it bad faith to rely on this legitimate interest in declining to accede to the Complainants’ demands to transfer the Domain Names.”
November 19, 2008
Court Decisions Filed Prior to Commencement of UDRP Proceedings
Resort to courts of law prior to commencement of UDRP proceedings has a different purpose than court filings during or after proceedings. Actions commenced during a proceeding are essentially to remove the dispute; those commenced after a UDRP decision are intended to “appeal” (using the term loosely) an adverse decision; whereas those commenced prior to a UDRP procceding seek either to stay the arbitration, obtain preliminary injunctive relief to prevent further use of the domain name and, in other instances prosecute to judgment. Two prior court decisions were reported in the Note for November 17th, Mattel, Inc. v. Barbie of Cleveland a/k/a Barbie Beeler, FA0403000248741 (Nat. Arb. Forum May 12, 2004) in which the proceedings were terminated because the Complainant was seeking the same relief under the UDRP as it had already obtained in court and Sonido, Inc. v. MU21C.COM Inc., D2006-0685 (WIPO September 6, 2006) in which the Respondent had applied for a stay which the court denied and in the UDRP proceeding requested that the complaint be dismissed which the Panel rejected.
Two recent pre-arbitration court decisions are noteworthy to illustrate how they influence panelists' decisions, one having no benefit to the complainant and the other resulting in the complainant's favor, MLP Finanzdienstleistungen AG v. WhoisGuard Protected, D2008-0987 (WIPO September 10, 2008) (<mlpwatchblog.com>) (no influence; the case also involved protected right of speech to criticize the Complainant; complaint denied) and Gerolsteiner Brunnen GmbH & Co., KG v. R4L Privacy Advocate / Gero Leon Steiner, D2008-1450 (WIPO November 7, 2008) (<gerolsteiner.infor>) (Prior court judgment with respect to the domain name in issue; complaint granted).
In MLP Finanzdienstleistungen the Complainant invoked the decision of the Oberlandesgericht Hamburg against <mlpblog.de> to demonstrate that the Respondent could have no rights to the domain name under German law. However, there has to be congruence between the domain names in issue and the parties. Thus,
Assuming in the Complainant’s favour that the Respondent is in fact the same person as the defendant in that case ... there are a number of reasons why that decision does not assist the Complainant here. [First,] ... the Respondent expressly denies that it is located in Germany, claiming to be American or based in the United States of America.... Secondly, the Oberlandesgericht Hamburg was concerned with a different, albeit similar, domain name. Thirdly, the Respondent contends that the decision of the Oberlandsgericht Hamburg concerned a right of personality, not a trademark right.
The lack of congruence was conclusive, was not res judicata against this particular Respondent, but also the Panel made it clear “that the Policy is limited to abusive registrations in violation of trademark rights and is not directed to rights of personality.”
In contrast, in Gerolsteiner Brunnen the Complainant offered a judgment in its favor against the former registrant – there being some indication of a relationship with successor registrant – directly relating to the disputed domain name. The Panel construed the term “dispute”, as used in paragraph 4(k) “in the broad sense, of the dispute concerning the domain name, .. rather than the narrow sense, of the particular dispute as filed between the Complainant and Respondent.” He explained that this “approach appears more consistent with the allowance in paragraph 4(k) of the dispute to be submitted to a court before there is a dispute filed under the Policy.”
The Respondent in Gerolsteiner Brunnen argued that the German court did not have jurisdiction over the former registrant because he resided in New Mexico; neither was it a “court of competent jurisdiction.” The Panel’s response was that the “WhoIs details as at May 2007 indicated that Mr. Mueller then had an address in Germany.” In any event, regardless of these arguments, “it is not a matter for the Panel to consider whether or not the court had jurisdiction, in relation to a case brought against a third party to these proceedings. The court plainly considered that [in judging the issue and filing a decision] it had that jurisdiction.”
November 18, 2008
Multiple Users of Terms; Trademark Rights
The UDRP is not a general purpose forum for determining whether any complainant who claims a right to a trademark composed of common words used by many can win a disputed domain name for which its particular mark was not the registrant’s target. Ultrafem, Inc. v. Warren R. Royal, FA0106000097682 (Nat. Arb. Forum August 2, 2001) (<instead.com>) (“In the absence of an intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common generic term”). The Panel in HP Hood LLC v. hood.com, FA0408000313566 (Nat. Arb. Forum October 20, 2004) held that the “policy requires some degree of intended targeting of the mark owner, some level of abuse directed specifically toward that victim.” This “reflects UDRP’s respect for the fact that trademark law does not prevent non-trademark uses of [common] words by people other than the mark owner.”
The principle is not limited to common words of course. It can apply to acronyms as well as word combinations. As for acronyms, the Panel after making an Internet search points out in Bolsa de Valores de Sao Paulo S.A. - BVSP v. Domainsource.com Inc., D2008-1362 (WIPO November 4, 2008) that there are numerous users of the letters “cblc” and “is satisfied that the acronym ... is not exclusive to the Complainant but is in wide usage.” In all these instances, not unexpectedly, the complaints are denied, not because the complainants do not have trademarks but because the registrations of the domain names are not abusive as to them.
Boy Scouts of America v. Salvador Preckler Arias, D2008-1367 (WIPO October 31, 2008) illustrates an exception to the general rule. The not uncommon word combination “boyscout” is or can be claimed by many and, although <boyscout.info> cannot be said to target this particular Complainant, it can also be said that it does. The Panel noted that it was “satisfied that a not insignificant proportion of Internet users in the United States of America will be likely to visit the Respondent’s website believing it to be a website of or authorized by the Complainant and that it was the intention of the Respondent, when he registered the Domain Name, to attract Internet users by that means and for commercial gain.” However, the Panel did have a concern, which is that
while those contentions may be true of Internet users in the United States of America, in other parts of the world Internet users thus deceived will have been expecting to visit a site of or authorized by their local arm of the World Organization of Scouting Movement, not the Complainant.
This prompted the following rhetorical question, Does it matter that the Complainant is only one of a number of entities around the world entitled to use the relevant trade marks? To which the Panel stated that it does not believe so. It held
What is clear is that the Respondent has no entitlement to the Domain Name and the interests of justice will best be served by removing the Domain Name from the Respondent and putting into the care of an entity which does have such an entitlement, namely the Complainant, which has proved to the satisfaction of the Panel that each of the elements of paragraph 4(a) of the Policy is present.
November 17, 2008
Grounds for Suspending or Terminating a Proceeding
The Respondent in Private Communities Registry, Inc. v. Himalaya Rankings LLC and John Sweeney, FA0808001220432 (Nat. Arb. Forum October 23, 2008) urged the Panel to stay the UDRP proceedings pending the outcome of the Respondent’s petition filed with the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“USPO”) to cancel the Complainant’s marks on the ground that they are “merely generic and descriptive, and also alleged fraud on the trademark office.”
Rule 18(a) grants the Panel discretionary authority to suspend or terminate proceedings “[i]In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute.” The 3-Member Panel unanimously held that “Respondent’s petition to cancel Complainant’s trademarks before the USPTO is not a legal proceeding concerning a ‘domain-name dispute that is the subject of the [Complainant’s] complaint’ here. “ Rather,
the subject matter of the USPTO proceedings – whether Complainant’s trademarks should be cancelled – relates to one of the issues raised as a defense by Respondent in this UDRP case: whether Complainant’s trademarks are generic and thus not entitled to protection.
Proceedings are properly terminated where the Complainant is in essence seeking the same relief under the UDRP as it had already obtained in court. Mattel, Inc. v. Barbie of Cleveland a/k/a Barbie Beeler, FA0403000248741 (Nat. Arb. Forum May 12, 2004) The Complainant obtained a default judgment in the District Court for the Southern District of New York, but the registrar located in Australia refused to enforce the judgment. The Panel “chose not to act” because “the court presumably maintains a continuing jurisdiction to enforce its judgment. Accordingly, the Complainant may choose to pursue enforcement of the U.S. district court’s order.”
Other the other hand, denial of an application for a stay of arbitration is not grounds to either suspend or terminate a proceeding. Sonido, Inc. v. MU21C.COM Inc., D2006-0685 (WIPO September 6, 2006) (“The purposes of the Policy would be frustrated if any complaint were dismissed merely because a respondent had filed a case in national court claiming some sort of right to the disputed domain name.”)
November 14, 2008
There are two views of a griper’s right to register and use a domain name identical or confusingly similar to a complainant’s trademark. WIPO Overview of WIPO Panel Views on Selected UDRP Issues, Paragraph 1.3 (concerns gripe domains identical or confusingly similar to the disputed domain name) and Paragraph 2.4 (concerns griper rights or legitimate interests in the disputed domain name). Paragraph 2.4 reads:
View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.
View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.
View 1 – most recently represented by Curt Manufacturing, Inc. v. George Sabin, FA0808001220025 (Nat. Arb. Forum September 23, 2008) (<curt-mfg.com>) – is intolerant of any respondent even if the website is clearly devoted to criticism or some other non-commercial use. It is a view that has not found support in federal case law, Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (the circuit court rejected the opinion of the district court as well as the ICANN Panel’s reasoning in the The Reverend Dr. Jerry L. Falwell and The Liberty Alliance v. Lamparello International, FA0310000198936 (Nat. Arb. Forum November 20, 2003)), although the issue is not entirely settled, Bosley v. Kremer, 403 F.3d 672 (9th Cir. 2005) (the Court held that unlike trademark infringement, there is no commercial use requirement for relief under the ACPA. In remanding, the Court further noted that: “Allowing a cybersquatter to register a domain name with a bad faith intent to profit but get around the law by making noncommercial use of the mark would run counter to the purpose of the Act.” On remand, a subsequent motion by the defendant to dismiss the complaint was denied, 01cv1752 (March 22, 2007). In both Falwell and Bosley the UDRP Panels held in favor of Respondents.
View 2 rejects any infringement of the respondent’s free speech rights. Representative of this view is Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004) and more recently 322 West 57th Owner LLC v. Administrator, Domain, D2008-0736 (WIPO August 6, 2008) (<sheffield57resident.com>)(complaint denied). The Respondent in Howard Jarvis registered the acronym of the Complainant <hjta.com>. The Panel points out that “under Section 43(c) of the Lanham Act, there is no cause of action for trademark dilution (which encompasses both blurring and tarnishment) if a party is making a ‘[n]oncommercial use of a mark,’ 15 U.S.C. § 1125(c)(4)B), which is the case if the site is a legitimate gripe site.” Citing among other cases Northland Insurance Co. v. Blaylock, 115 F. Supp. 2d 1108 (D.C. Minn. 2000) (criticism site at <www.northlandinsurance.com> is protected speech and, because the website was non-commercial commentary, it could not generate initial interest confusion and did not constitute dilution). The Policy in the view of the Panel for Howard Jarvis is not designed to insulate
trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain.... Use of the Policy to provide such insulation may undermine freedom of discourse on the Internet and undercut the free and orderly exchange of ideas that the First Amendment seeks to promote.
The split view raises, of course, the disturbing fact that a party's “legitimate interest” in the disputed domain name is dependant on the view of the panelist chosen, not on a principal adhered to precedentially by all panelists.
November 13, 2008
Inactive domains, that do not resolve to a website – whose passivity can under certain circumstances constitute “use” [Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000] – may be a pathway to finding bad faith, but not without other evidence that the respondent was targeting the complainant or its trademark when it registered the disputed domain name. Other evidence would include the mark’s fame or obscurity and the relative locations of the parties; it also involves weighing the respondent’s plausibility in denying it had any knowledge of the complainant at the time of the registration. The disputed, inactive domain name in Care Management Associates, Inc. v. Susan Hagin dba RV Central, D2008-1211 (WIPO October 25, 2008) is <floridaassistedliving.com>; the registered trademark is FLAASSISTEDLIVING.COM.
Both parties came up with the names within months of eachother and the Complainant subsequently registered its domain as a trademark. The Panel concluded that the disputed domain name was confusingly similar to the Complainant’s trademark and also that the Respondent had no right or legitimate interest in it. However, the Complainant presented no evidence that the trademark was well known or traveled outside of its market to the Respondent’s residence or that the Respondent had knowledge of the trademark at the time that she registered the domain name.
Quotations:
The term “passive use” may sound like an oxymoron but is explained in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000):
The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.
November 12, 2008
There is developing case authority on registration by proxy and through privacy services – see among others Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007); more recently, Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008) (“a proper balance between privacy, on the one hand, and the need for accountability and cybersquatting prevention, on the other hand, must be struck”) – but it is rare that a party deliberately elects anonymity, which it did in Bank of America Corporation v. [Registrant], FA0809001226147 (Nat. Arb. Forum November 7, 2008), and when it does, concealing its true identity carries a negative inference of its motivation in registering the disputed domain name. The Complainant owns the trademark USTRUST. The Respondent added CAPITAL and registered <uscapitaltrust.com> anonymously. On the proceedings it argued that the “anonymous registration and continuous anonymous holding of the domain name is irrelevant to the Respondent’s bona fide use of the domain name.” It explained that is uses a web developer to register its domains and that the “web developer [who makes the decision about its clients’ privacy] uses private listings to avoid unwanted solicitations of his customer.” According to this view a respondent never has to identify himself. After all [says the Respondent] a “person can have an unpublished phone number without being a criminal. There is no reason to apply a different standard to a business.” This cuts against the rationale for the Whois directory, although since the proceedings are essentially in rem rights to the domain name will be adjusted whether or not the registrant identifies itself or even appears.
The answer whether a respondent’s anonymity is sufficient to in itself to prove bad faith depends of course on factual circumstances, including inferences of actual knowledge or awareness of another’s rights. In Bank of America, the Respondent offered financial services, as does the Complaint. This yielded the inference of knowledge:
[the] mark may or may not be famous, but it is certainly well known. The Respondent is, by its own admission, a business offering financial services. Therefore, it seems highly unlikely that it was unaware of the services offered by the Complainant under its mark U.S. TRUST.
On the issue of anonymity, the Panel rejected the Respondent’s argument that there was no difference between individuals and businesses who elect anonymity. Rather, “there is every reason to apply a different standard.” In fact, the Panel noted that it could not “understand why a legitimate business would wish to hide its address and telephone number....” While anonymity taken alone would not necessarily be sufficient, “it is an element indicating bad faith intent” which taken together with other proof leads inexorably to the conclusion that the respondent chose the name to take advantage of a complainant’s trademark.
November 11, 2008
Paragraph 4(a)(i) requires the complainant to prove both that it has rights in the trademark and that the domain name in dispute is identical or confusingly similar to it. Not infrequently the domain name is shown to have been registered prior to the complainant acquiring a registered trademark, in which case the complainant can satisfy its burden by proving use in commerce prior to registration of the domain name. However, as the Panel points out in Automotive Networks Corporation v. Scripps Networks LLC c/o Phil Cornell, FA0809001224664 (Nat. Arb. Forum November 6, 2008)
Since these marks consist of or contain the term “wheels”, a common word obviously related to the automotive sector, evidence of a secondary meaning is even more necessary than in cases where the mark is fanciful.
The Complainant in this case has a registered trademark, but wanted proof that its right antedated the registration of the domain names. There are two views about reviewing and deciding the jurisdictional element. The first calls for terminating the proceeding if the complainant is unable to prove anterior rights. The second proceeds through the other requirements and, if such is the case, denies the complaint on the grounds that a respondent’s anterior registration of domain names negates bad faith registration. The complainant loses in both cases but in the second the Panel fully reviews the factual record for all elements of proof before announcing his decision. The Panel in Automotive Networks subscribes to the first view – “In light of this finding, it is unnecessary to determine whether Respondent has rights or legitimate interests in respect of the disputed domain names, or whether it has registered and is using them in bad faith.”
If the result is the same, that the domain name stays with the respondent, what difference does it make to terminate the proceeding at ¶4(a)(i)? The rationale for continuing the proceeding is that post-dated trademarks “may [nevertheless] be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii),” Digital Vision , Ltd. V. Advanced Chemill Systems, D2001-0827 (WIPO September 21, 2001). The Panel held that “Paragraph 4.a.(i) does not require that the trademark be registered prior to the domain name.” This view subscribes to the proposition that the evidence has to be examined for each of the requirements before announcing the decision. In Digital Vision, the Panel determined that although there was evidence of bad faith use there was none of bad faith registration.
November 10, 2008
Procedural Orders are authorized by Rule 12 of the Rules of the Policy which reads that “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” Implicit – only a complaint and response are mentioned – is that the complainant is not permitted to reply to the response or the respondent to sur-reply. This construction is carried forward in the WIPO Supplementary Rules and generally enforced by WIPO panelists – “[i]t is now well established from previous panel decisions that a supplemental [unsolicited] filing will rarely be considered,” Olymp Bezner GmbH & Co. KG v. Olympus Access Service, D2003-0958 (WIPO February 17, 2003). See, Supplementing the Record.
However, the discretionary authority, typically used to obtain additional information or to request a party to clarify its position, must be exercised circumspectly, otherwise it may come to seem that it is being used to assist one or the other party. For example, deciding whether to exercise discretion, the Panel in Fasthosts Internet Ltd v. Jamie Scott, Smudge It Solutions Ltd., D2008-0841 (WIPO July 24, 2008) stated that it was issuing the Procedural Order with some misgiving because it “is for the complainant to prove its case and it not for a panel to do so on a complainant’s behalf”. However, it did so because
the Complainant was not legally represented, may not have been legally advised and because the gaps in question were ones that it seemed the Complainant might have been able to fill. However, so far as the issue of bad faith registration was concerned, the Complainant chose not to avail itself of that additional opportunity.
In IFA Hotels & Resorts FZE v. Jaffar Sharif, D2008-0895 (WIPO October 16, 2008) the Panel issued a Procedural Order not to obtain “further statements or documents” but to suspend the proceedings at the parties’ request to enable them to engage in settlement discussions which, however, were unsuccessful, and when the proceedings continued resulted in denial of the complaint.
Quotations:
Outcomes should not be governed by caprice, Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001):
[T]he UDRP procedure should be governed by the rule of law, rather than by the individual consciences of the panelists. If a principle enunciated in a decision is well-reasoned and repeatedly adopted by other panels, the majority believes that absent compelling reasons which require a determination otherwise, the rule established should be respected. The majority believes that potential users of the UDRP are entitled to some degree of predictability.
November 7, 2008
A respondent is more likely to prevail if it appears, but unpersuasive argument for right or legitimate interest and failure to prove good faith registration sinks it. Pre-arbitration correspondence – which is admissible even if marked “without prejudice” – frequently trips respondent up, as it did the Respondent in Google Inc. v. Jan Jeltes, DAU2008-0012 (WIPO October 20, 2008).
The Respondent registered <googler.au.com>). His “main theme” – advanced in an earlier case, Google Inc. v. Jeltes Consulting/N. Tea Pty Ltd, D2008-0994 (WIPO August 20, 2008)[see below], was that the gerund “googling” and derivatives therefrom such “googler” “have become new words in the English language, rather than an infringement of the GOOGLE brand and trade marks.” This, the Panel rejected; the neologism “creat[ed] a likelihood of confusion with the Complainant’s mark as to affiliation of its produces or services.”
The Respondent in correspondence prior to the commencement of the proceedings stated that he was “open to commercially reasonable offers.” He continued in further correspondence “it was an offer to discuss, collaborate and/or be open to commercially realistic offers…I will therefore, one final time, repeat my offer to you and your client to actively consider a commercially realistic offer.” He explains that
A commercially realistic offer, in that context, could therefore conceivably consist of a collaborative scenario where some or all of the assets in question are jointly utilized (or utilized exclusively by your client) for a shared reward scenario. Another option might be that your client exchanges some form of incentive (whatever form that might take) for certain negotiated rights to my assets … It would be my intent to be very flexible in such discussions. Finally I’d be happy to discuss and consider any other options that your client chooses to place before me; even if they are not explicitly covered here.
The correspondence sealed the Respondent’s bad faith. Essentially, he was holding the domain name hostage for an economic advantage.
Quotations:
“Informing a trademark owner of a bad faith registration of a domain name does not make its registration or use in good faith,” Google Inc. v. Jeltes Consulting/N. Tea Pty Ltd, D2008-0994 (WIPO August 20, 2008):
On the contrary, it is very often an opening gambit in an exercise of inducing the trademark owner to offer to buy the domain name without providing direct evidence to support a complaint under the Policy. Trademark owners are entitled to ignore such letters, rather than waste time and incur expense in replying to them, particularly as a reply may encourage the registrant to believe that the trademark owner will pay more rather than less to secure the domain name in question.
November 6, 2008
Priority; Parties in the Same Industry
Parties in the same industry who employ terms common to their trade are hard put to establish bad faith when the common term is registered as a domain name even when a complaining party has obtained a trademark for the common term or a minor variant thereof. Tuesday’s Note illustrated this principle with a common scientific term, RORSCHACH. The disputed domain name in Super-Krete International, Inc. v. Concrete Solutions, Inc., D2008-1333 (WIPO October 14, 2008) is <supercrete.com>; the Complainant’s trademarks SUPER-CRETE and SUPER-KRETE. are neologisms common in the industry to mean super strong concrete.
The Respondent registered the disputed domain name several months prior to the Complainant establishing constructive first use and rights in the SUPER-CRETE and SUPER-KRETE trademarks through the filing of its applications for registration with the USPTO. In such circumstances, the “general sequencing principle” is that no bad faith cannot be attributed to the registrant.
The Panel noted in Super-Krete International that although there are limited exceptions to the sequencing principle they involve cases in which the respondent either had prior knowledge – widely reported in news accounts – or the disputed domain name incorporates part of a combined anticipated new trademark, citing SBC Knowledge Ventures LP v. John Huberdeau aka J. Johnston, D2003-0642 (WIPO), where the Respondent registered <sbclaboratories.com> on the same day that Complainant issued a press release announcing that the new name of its research arm was “SBC Laboratories.” The Panel stated that
Although Complainant did not have a matured common law mark with secondary meaning in "SBC Laboratories" at the time of the registration, it had a Federally registered trademark in "SBC." In cases such as this, assuming the other elements are found, the domain name must be transferred because of the substantial similarity to Complainant’s existing trademark.
Choosing a common term from the lexicon of science or industry is acceptable if the registrant has not chosen it with the intent to profit from or otherwise abuse a complainant’s trademark rights for the very good reason that the “Policy was not intended to permit a party who elects to register as a trademark or service mark a common word to bar all others from using the common word in combination with other common words, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the mark holder” Match.com, LP v. Bill Zag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004).
November 5, 2008
Traveling, Next Post November 6
Quotations
“[Domain names] registered because of their attraction as dictionary words, and not because of their value as trademarks [do not contravene the Policy],” The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum August 6, 2004) (<landmarks.com>).
Demand for business concessions to relinquish the domain name falls within the prohibition of ¶4(b)(i) of the Policy. Takaso Rubber Products Sdn Bhd v. Selim Tasci and Tasci Dis Tic. Ltd. STI, D2006-1263 (WIPO December 16, 2006):
The demand by Respondent for such a business concession in exchange for transfer of the disputed domain name constitutes an offer to transfer the disputed domain name for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
November 4, 2008
Scientific Terms; Common in Profession
The Complainant in Hogrefe AG v. Ney Limonge, D2008-1206 (WIPO October 3, 2008) owns a trademark for the term RORSCHACH registered in the United States and other countries, allegedly including Brazil – although the Panel was unimpressed with the evidence of such – which is the Respondent's residence. The Respondent, a clinical psychologist, registered (<rorschachonline.com>) to distribute “an interactive online computer program used in the administration of the Rorschach inkblot test.” Complainant is a publishing house operating out of Switzerland with niche publications in medicine, including psychology. It asserts that it is “owner of the copyright of the so called RORSCHACH Ink Blot Test, a psychological test with ink blots.” (Complaint).
The Complainant has to overcome two kinds of evidentiary problems: its registered trademark is common in the psychiatric profession and it is used by many others in a variety of contexts, as is apparent from a Google search. Respondent challenged the Complainant’s claim of exclusive rights with respect to the term RORSCHACH principally on two grounds, copyright and trademark under Brazilian law. The Panel rejected the copyright argument since the Complainant provided no evidence to substantiate its claim and no information about the national jurisdiction under which it allegedly acquired that interest, but stated that the “fact that a term is not protected by copyright does not establish that the term is not protected as a trademark.” Based on the registration in the United States, the Panel found that the Complainant had satisfied the ¶4(a)(i) jurisdictional requirement. The Respondent also disclaimed any knowledge of the Complainant or its trademark.
However, the Complainant failed on the second factor, ¶4(a)(ii) requiring proof that the Respondent lacked rights or legitimate interests in the disputed domain name. It is plausible that a professional would register a domain name incorporating a scientific term to carry out an intended project in the good faith belief that he was not infringing another's rights. In this particular case, the Respondent submitted evidence of his professional interest and product, which together with the Complainant’s failure to prove its presence in the Brazilian market added credibility to the Respondent’s disclaimer of knowledge. Although the Complainant argued that the Respondent “should have been aware of its ‘famous’ trademark rights because he is a clinical psychologist,” there appeared to be no evidence of publications in Portuguese. In any event a “should have” argument is a sure sign that the proponent lacks evidence to support its contention.
The Respondent also submitted evidence that under Brazilian trademark law “scientific or technical terms are not subject to registration as trademarks. Article 124, XVIII Article 124, XVIII, of Industrial Property, Law, 14/05/1996, No. 9.279 (available from the WIPO CLEA database at “www.wipo.int/clea/en/text_pdf.jsp?lang=EN&id=515” provides (in English translation):
124. The following are not registrable as marks:
XVIII. Technical terms used in industry, science and art, that are related to the product or service to be distinguished;
The record established that the Respondent registered the disputed domain name on March 9, 2006 and that within a few months thereafter he was offering his interactive computer program on the website. This proof satisfies ¶4(c)(i) that “before any notice to you of the dispute [you commenced using] ... the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
November 3, 2008
Parody and Satire: Objectionable but Protected
Both the Anticybersquatting Consumer Protection Act [15 U.S.C.S § 1125(d)(1)(B)(ii)] and the Uniform Domain Name Resolution Policy [¶4(c)(iii)] provide safe harbors for objectionable speech that is fair or otherwise lawful. This includes parody and satire. Two recent cases illustrate the principle, Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Circ. 2008) [Decision dated May 29, 2008] (not, incidentally the subject of a prior UDRP decision) and Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman, D2008-1267 (WIPO October 18, 2008). The defendant in the federal action registered a domain name that was virtually identical to the plaintiff’s trademark, <utahlighthouse.com>. The respondent in the UDRP case registered a humorous variation of the Complainant’s trademark, <hairywinston.com> which she adopted as a cognomen for her high class hairy animal business.
To succeed under either either the Statute or the Policy the complaining party must show that the trademark is protectable; demonstrate that the alleged offender is using the trademark in connection with any goods or services; and establish that the offender’s use is, as the ACPA reads “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” 15 U.S.C. § 1125(a)(1).
In Utah Lighthouse, the court held that the Defendant’s website was a “successful parody” and that “Defendants could have reasonably believed that use of the domain names was legal.” Plaintiff's contention that the “Defendants lacked such a reasonable belief because they did not contact an attorney to verify the legality of the Wyatt parody” was given shourt shrift. The circuit court noted that the Plaintiff “cites to no authority that an attorney’s opinion is necessary to forming a good faith, reasonable belief in this context.” The parody, essentially criticism of the Plaintiff amounted to little more than making fun of the its “ministry.” The parody site reproduced the Plaintiff's trademark, a lighthouse and had language similar to the one found in the Plaintiff's site but distorted it. Otherwise there was no advertising or goods for sale.
The Respondent in Harry Winston owns a dog that she calls “Winston” who is hairy. She is the proprietor of a ‘luxury pet boutique’ business' that she calls Hairy Winston and contends that it will be obvious to all that her use of the name is a playful variation of the Complainants’ famous trade mark. She acknowledges and intends that the name will bring the name of the Complainants to mind, but not in a context likely to lead to any confusion. As she puts it, “thus, the name playfully suggests to the customer both high-quality goods and an incongruous association with the hairy canine world.” Although the name Hairy Winston on the home page of her website is composed of a similar style and size of font as the Complainant's, “[e]ven if one assumes that the similarity was deliberate, it would have been in aid of the parody and since the font selected is a clear large upper case font, the scope for any misreading of the name is reduced” and any confusion “inconceivable.” The Panel says further that he “is much taken by three quotations from US authorities cited by the Respondent.” Since these quotations go to the heart of parody they are worth reproducing:
“A parody must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody.” [People for the Ethical Treatment of Animals –v- Doughney 263 F.3d (4th Cir. 2001)]
and:
“Thus a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.”[Jordache Enterprises, Inc. v Hogg Wyld, Ltd 828 F.2d (10th Cir. 1987)]
and:
“It is a matter of common sense that the strength of a famous mark allows consumers immediately to perceive the target of the parody, while simultaneously allowing them to recognize the changes to the mark that make the parody funny or biting.” [Tommy Hilfiger Licensing, Inc. v Nature Labs, LLC [221 F.Supp.2d (S.D.N.Y. 2002)]
The Panel concluded that judged by the principles that animate the UDRP, the appropriation of the Complainant's trademark for the Respondent's business came within the safe harbor of ¶4(c)(iii). However,
What the Respondent has done may constitute trade mark infringement under United States of America law. The Panel does not know, but the Panel is satisfied that the Respondent, when registering the Domain Name, had no intention of deceiving Internet users. That said, the Respondent’s intentions cannot be determinative of the issue. The test has to have an objective element. Was it reasonable for the Respondent to assume that what she was doing was not likely to cause confusion?
In the Panel's view, what the Respondent was doing was not likely to cause confusion and thus denied the Complainant's request to cancel or transfer the domain name.
October 31, 2008
This Note on post-UDRP actions complements the one on October 6th dealing with terminating the arbitration prior to a decision. The Policy grants a losing respondent a stipulated stay of enforcement should he wish to contest a decision depriving him of his registration of the disputed domain name. Paragraph 4(k) of the Policy reads
If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure.
A divided Panel in Sarasota Association of Realtors, Inc. v. Private Stuff, FA0806001213084 (Nat. Arb. Forum August 27, 2008) held that <thesarasotamls.com> was an abusive registration. The letters “mls”, short for “multiple listing service”, is a common term within the realty industry. There has been substantial chatter by bloggers and others about the case condemning the decision. The Respondent timely filed an ACPA action, Rasmussen v. Sarasota Association of Realtors, Inc., 2008 cv 00954 (ED VA).
The Complainant operates a database of listings accessible through <sarasotamls.com>. The Respondent, a member of the Sarasota Association of Realtors, argued that by adding “the” in front of “sarasota” was not a confusing similarity to any trademark in which the Complainant had a right, since the Complainant had no protectable trademark in SARASOTAMLS. Alternatively, his registration was protected under the doctrine of nominative fair use. However, the majority held that the doctrine applies only when three requirements are met:
First, the product or services in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. [Citing New Kids on the Block v. New America Pub. Inc., 971 F.2d 302, 308 (9th Cir. 1992).
It concluded that “none of those requirements are met here.” Rather, the “record establishes that Respondent is using the disputed domain name to divert Internet users seeking access to the Sarasota MLS site to his site for commercial gain.” Moreover,
Respondent’s link to a disclaimer that his site is not the “actual” Sarasota MLS site does not cure the problem. Once Respondent has succeeded in taking advantage of Internet users’ confusion by attracting them to his site, his link to a disclaimer that his site is not the “actual” MLS does not obviate the initial misdirection. See AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000).
The dissent was not convinced that the Complainant had established common law trademark rights prior to the registration of the domain because “[n]one of Complainant’s historical exhibits showed a specific intention of using the term in a trademark sense; the term was used interchangeably as both a noun and adjective and never included any trademark symbol.” Respondent, now plaintiff in the ACPA action adopts wholesale the dissent’s analysis, although it would appear that the central issue is whether the use of “mls” (used by realtors industry wide and arguably descriptive) combined with the defendant’s name satisfies the statutory requirements for an unregistered trademark.
October 30, 2008
Use and Registration: Determining Bad Faith
Use in bad faith is not proof of registration in bad faith. However, a domain’s use can be a tipping factor in determining bad faith registration. The complainant must prove both use and registration to satisfy ¶4(a)(iii). Cedric Manara tackled these issues in a talk at the Sedo Pro Partner Forum 2008 on October 28th and has has posted the slides used in connection with the talk on his Blog, Domaine Blogspot. The cases selected to illustrate his point are valuable for counsel and pro se parties looking to come to grips with consequences of different uses. He concludes that “panel[ist]s' view on this notion of use seems to have evolved in the recent months.”
What is clear (at least it seems to me) is that there are a variety of uses that cannot be lumped together as a single class, for which discrimination is required, and that each class of use in its own way dictates the principle to be applied. The cases cited by Professor Manara support (I believe) support this point. In Wildfire, Inc. v. Namebase, D2007-1611 (WIPO January 29, 2008) the Panel hues closely to precedent, as do the Panels in the redirection and lease/buyback cases. No new ground is broken.
The lease/buyback cases in fact – a relatively new business – are interesting in that the standards developed for the other use cases cited are applied to this new class. In Wildfire the Respondent is “passively” holding <ironarc.com>, which it registered two years prior to the Complainant’s USPTO application for a trademark for IRONARC. Even if the Respondent had been a multiple registrant of domain names for commercial exploitation its interest would not be disturbed since the Complainant offered no – in fact could not offer any – evidence that the domain name was registered with its (not yet acquired) trademark in mind. The fact that it had not acquired its trademark supported the Panel's finding of reverse domain name hijacking.
October 29, 2008
History of Cybersquatting: “Pattern of Conduct”
This Post is triggered by Wal-Mart Stores, Inc. v. Hostmaster Hostmaster, Domain Park Limited,
D2008-1158 (WIPO October 10, 2008). The respondent registered 15 domains most of which “include generic terms (or mis-spellings thereof) relating to the Complainant’s business.” It had previously been found to have registered and used domain names in bad faith in two previous UDRP cases. Information about a respondent's UDRP history can now be found more easily in a new service that searches and returns combined information on parties and case numbers as well as full texts of decisions for both WIPO & Nat. Arb. Forum, DomainFight.NetTM.
The typical registration agreement provides in words or substance that in registering the domain name the registrant warrants and agrees that it will not use the domain name in any manner that will directly or indirectly infringe the legal rights of a third party. Paragraph 4(b)(ii) of the Policy provides that it is proof of bad faith, that the respondent has infringed the complainant's legal rights, if it can show that the respondent
registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.
The question is, How many instances of cybersquatting does it take to become a “pattern of such conduct”? In some cases it is the number of misappropriations of different trademarks over a period of time. In other cases, it is the number of registrations of a particular trademark at one time. This was pointed out by the Panel in Smokey Mountain Knife Works v. Deon Carpenter, AF-230 (a,b) (eResolution July 3, 2000). “Such a pattern of abusive domain registrations [he held] can occur along two distinct dimensions”
First, a domain registrant can operate ‘horizontally’, targeting multiple entities, perhaps in multiple industries [citing Panavision v. Toeppen, 141 F.3d 1316 (9th Cir., 1998)];.
Second, a domain registrant can operate ‘vertically’, targeting a single entity, but registering multiple domains which reflect either different aspects of the target's business, or different alphabetic variations of the target's trademark [citing Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 49 F.Supp.2d 496 (E.D. Va., 1999)] .
A registrant’s past history as a respondent in UDRP proceedings can be probative of its intentions and motivation. Serial cybersquatters lack credibility, although they may occasionally successfully defend; serial typosquatters lack credibility altogether. Parrying Respondent’s objection to a Complainant’s allegation, the Panel in Collections ETC., Inc. v. Cupcake Patrol, D2001-0305 (WIPO May 10, 2001) stated that “[c]onduct that reveals a scheme or plan, a course of operations, is not irrelevant.” In fact, although its
probative value may be one of weight ... it is a matter [] which can be taken into account in assessing the implications of all of the information that an administrative panel has at hand.
The fact that a serial respondent may have successfully defended itself against one or more complaints in earlier proceedings does not make its conduct less a “pattern” if the disputed domain name is identical or confusingly similar to the complainant’s trademark and the respondent has no right or interest in it. Société BIC v. Domain Deluxe, D2005-0369 (WIPO June 2, 2005).
October 28, 2008
While the respondent is not obliged to answer the complaint – see yesterday's Note – and default does not constitute an admission, failure to respond, although not dispositive of abusive registration, certainly lays the foundation for negative inferences of bad faith. Respondents can choose to appear and plead; they are entitled to due process of notice and opportunity to be heard. However, default does not assure success – complainants are unsuccessful approximately 15% of the time. The burden of proof remains with the complainant. It (he/she) must marshal and submit a Record sufficient in direct and inferential proof to tip the scale in its (his/her) favor.
The Abuela Company LLC v. ARISU TECH, FA0808001222449 (Nat. Arb. Forum October 21, 2008) is another one of those cases in which the Complainant contends that it is entitled to a disputed domain name registered prior to its acquiring its interest in the trademark. The Respondent did not respond to the complaint. The case spotlights two kinds of (perhaps self-created) problems for the Complainant. If it had common law rights prior to the registration of the domain name, then its submission was deficient in failing to prove its case. If it did not have prior acquired rights then it misapprehends the threshold requirement of the UDRP that it has a trademark “in which [it] has rights.”
In this particular case, the Complainant disclosed in its “intent to use” application for a service mark a date for first use subsequent to the registration of <coquito.com>. The disclosure in the application is not necessarily conclusive under the Policy – it could have been a scrivener’s error. The Complainant is not estopped from proving that its common law trademark antedated the registration of the domain name. The trademark application is simply one piece of proof in the respondent’s favor. Here, however, the Complainant offered no proof of an earlier date in the marketplace and from its absence the natural inference is that the defaulting Respondent was the first to register the name and is entitled to keep it despite the Complainant’s subsequently acquired right. As the Panel noted
Previous panels have found that a respondent could not have registered or used its disputed domain name in bad faith when it registered the disputed domain name before the time that the complainant’s rights in the mark commenced.
It should be noted for clarification that the Record contains both the affirmative proof offered in support of the complainant’s case together with the Whois information which includes the registration date of the domain name.
October 27, 2008
The UDRP is a private alternative dispute resolution procedure. Like other ADRs it is a product of agreement; unlike other ADRs the agreement that mandates the arbitration is unusual in that the terms are not negotiable, but imposed -- dictated to registrars by ICANN -- as part of the registration of the domain name. Registrants have from time to time without success railed against the imposition, but there is no escape.
This Note does not concern any particular case – although many may be cited – but refers generally to all cases and particularly to respondents. Paragraph 4 of the Policy describes the procedure as a “mandatory administrative proceeding.” However, the term “mandatory” should not be understood as meaning that the registrant itself must participate in the proceeding – indeed respondents default approximately 85% of the time. Rather “[y]ou are required to submit to a mandatory administrative proceeding.” The term refers to the respondent’s contractual “agreement” to submit the domain name to an impartial arbitrator to determine a complainant's claim of abusive registration. A typical statement that anchors the respondent to its obligation is the following in Affliction, Inc. v. Chinasupply c/o Tan Longli, FA0809001223521(Nat. Arb. Forum October 23, 2008):
On September 8, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <afffflictionshirt.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy") (Emphasis added).
The procedure to which the registrant assents is mandatory in that it compels it – an unwilling even if absent participant – to be a respondent in a UDRP proceeding; or, at the registrant’s option to become a plaintiff in an action for declaratory judgment under the Anticybersquatting Consumer Protection Act.
October 24 2008
Panelists are careful to delineate boundaries to both the Policy and their own authority. One such boundary is the threshold that requires the complainant to have a trademark, lacking which the complaint must be dismissed. Another is subject matter jurisdiction. While there is a degree of elasticity in the Policy, it was not intended to provide a remedy for soured business relationships or statutory violations. In these factual circumstances, either the complainant is unable to prove that the respondent lacks rights or interests or that it registered and is using the disputed domain name in bad faith. 7th Kid Entertainment, Inc. v. Self, D2008-1259 (WIPO October 10, 2008) (dispute between current and former members of a hard rock band).
The Panel in Hotel Connect Ltd. v. Bob Martin, D2008-1229 (WIPO October 6, 2008) notes another boundary, one that separates a distinctive trademark from a generic or descriptive identifier in commerce that is the subject of the dispute. The Panel observes tha