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Hershey’s Files UDRP On 16 Year Old ChocolateWorld.com; 17 Year old NewBody.com Also Hit

April 15th, 2014 Comments off

A couple of interesting UDRP filings today

Hershey’s filed a UDRP on the domain name ChocolateWorld.com

The domain name was registered in back in 1997 however it is going to a blank page and according to Screenshots.com the domain may never have resolved to any type of site or page, not even a parked page.

Hershey does have a trademark on the term Chocolate World going back to 2005 as well as HERSHEY’S CHOCOLATE WORLD which was registered in 2011/2012

Another UDRP filed today is against another domain consisting of a seemly generic term, NewBody.com

NewBody.com has an original registration date older than ChocolateWorld.com or 1996

The complainant in the NewBody.com case is Cocolabel AB which filed for a US trademark on the term New Body in 2012 and to which opposition was filed to in 2013.

The domain appears to have sold or been transferred to a new owner in late 2013 or early 2014

NewBody.com currently goes to a parked page

 

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Y8.net Lost in UDRP

April 15th, 2014 Comments off

Web Entertainment, LLC of Las Vegas, Nevada, just won a UDRP on the domain name y8.net

The Respondent did not reply to the UDRP

The complainant has a trademark on the term Y8 that was filed in 2012 and has a gambling website at Y8.com

The domain name Y8.net was first registered in 1998 but the current owner acquired it in May 2012.

The panel found

“although the Domain Name was first registered in 1998,  for the purposes of finding bad faith, May 2012 or later, is when the Respondent first acquired the Domain Name.

Under the UDRP, a change of registrant or transfer of a domain name constitutes a new registration.

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the Y8 Mark at the time the Respondent registered the Domain Name. The Respondent’s Website offers services that directly compete with the Complainant and make reference to the Complainant. The registration of the Domain Name in awareness of the Y8 Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

 

The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Y8 Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website offers online gaming services that compete with the Complainant, makes references to the Complainant’s Website and is of a similar design to the Complainant’s Website. The Respondent’s Website also contains prominent advertising, suggesting that the Respondent receives revenue from the site. It appears both from the Domain Name itself and from the Respondent’s Website that it highly likely that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Y8 Mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s Website. The Panel finds that such use amounts to use in bad faith.

 

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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Dune.com Hit With UDRP

April 11th, 2014 Comments off
The domain name Dune.com has been hit with a UDRP. The complainant was filed by Dune Holdings Limited which was formed in 2001 and uses the domain name dunelondon.com According to BusinessWeek.com, “Dune Holdings Ltd. designs and retails fashion footwear and accessories for men and women. It offers boots, shoes, sandals, bags, scarves/gloves/hats, and sunglasses, […]
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Thamesrivers.com Lost in UDRP

April 10th, 2014 Comments off
F&C Management Limited of London, United Kingdom of Great Britain just got the domain name thamesrivers.com awarded to them by a UDRP panel based off of a Community Trade Mark registration. The domain holder did not respond to the complaint Here is the relevant facts and findings: The Complainant states that it is an international […]
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Inbay Limited of London Guilty Of Reverse Domain Name Hijacking

April 7th, 2014 Comments off
Inbay Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Keystone Law, United Kingdom has been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name inbay.com which was registered back on December 11, 1998. The trademark which inBay Limited of London based their claim on wasn’t […]

Vertical Axis Beats Back a UDRP on the Domain ThinkThin.com Registered in 2001

April 2nd, 2014 Comments off

Vertical Axis Inc which was as always represented by Esqwire.com beat back a UDRP on the domain name ThinkThin.com

The trademark holder 1st registered their trademark and started selling their product in 2006, somehow they thought they were entitled to the domain although it was registered back in 2001.

Typical.

The three member panel should have found Reverse Domain Name Hijacking but instead just denied the UDRP:

The factual findings pertinent to the decision in this case are that:

1. Complainant has sold weight management snack bars by reference to the trademark THINKTHIN since 2006;

2. Complainant is the proprietor of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,238,772 filed October 19, 2006 for the word mark THINKTHIN;

3. Respondent registered the disputed domain name on August 8, 2001;

4. Respondent is a domain name reseller and the domain name is for sale;

5. The disputed domain name resolves to a portal-style website with links to diet and weight loss plans, including a link to Complainant’s website;

6. Complainant has not licensed or otherwise given permission to Respondent to use its trademark or to register any domain name incorporating the trademark.

Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.

The only live question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Respondent states that it is a generic domain name reseller, and submits that the sale of domain names containing generic terms is a bona fide offering of goods or services.

Respondent registered the domain name five years before Complainant had any interest in the trademark.

The domain name is generic in the sense that it is apt to describe any foodstuffs marketed in connection with weight management.

At that level Respondent had a right to the domain name at the time of registration and in terms of paragraph 4(c)(i) there is a respectable argument that, well before any notice of the dispute, Respondent made bona fide use of the domain name either as part of business which resells generic domain names and this was one such domain name for sale, or as the host site for links to third parties offering goods or services linked in some way to weight loss or dietary products.…

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18 Year Old Domain MyMachine.com Saved in UDRP

April 2nd, 2014 Comments off

Sabrage Media, Inc. just lost his attempt to grab the 18 year old domain name mymachine.com through a UDRP to which the domain owner didn’t even bother to defend.

The factual findings pertinent to the decision in this case are that:

1. Complainant has used the trademark MY MACHINE in connection with a magazine publication, website, and clothing products related generally to motorcycling;

2. Complainant owns United States Trademark Reg. No. 3,158,541, filed November 29, 2005, registered October 17, 2006 for the word trademark MY MACHINE;

3. The disputed domain name was registered on May 13, 1996 by a third party;

4. The domain name resolves to a basic holding webpage showing only a cog device;

5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

The domain name was first registered in 1995 by a third party.

Complainant submits that Respondent became the holder of the name in May 2010.

Provided that were the case, it might have a fundamental impact on assessment of Respondent’s rights and bona fides (see, for example, Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which postdated complainant’s trademark rights).

The evidence before Panel of the claim that Respondent only became the owner of the domain name in 2010 is, forensically, unclear not least because the relevant annexures to the Complainant are not fully legible. In other circumstances that flaw in the Complaint might be corrected by a Panel Order inviting Complainant to provide further and better particulars of the matter but in this case the paragraph 4(a)(iii) bad faith analysis makes that exercise otiose.

Given the following bad faith assessment, Panel finds it unnecessary to reach a final decision as to whether Complainant has made a prima facie case that Respondent lacks a right or legitimate interest in the domain name.

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.

Even making the assumption that Respondent became the holder of the domain name in 2010, there is no evidence showing it to be more likely than not (the relevant standard of proof in these proceedings) that Respondent was, when it acquired the domain name, primarily actuated for the reasons described by any of subparagraphs 4(b)(i)-(iii) above.…

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Twitter Files UDRP On Twıtter.com (Its An IDN)

March 27th, 2014 Comments off

Screen Shot 2014-03-27 at 10.43.59 AM

Twitter.com filed a UDRP on the domain name twıtter.com

Twıtter.com is an IDN; xn--twtter-4ja12b.com and goes to a page that has a picture of what appears to be someone in the armed forces somewhere by the name of RUHUNUZ ŞÂD OLSUN ÖCÜNÜZ ALINDI

There is no advertising or other monetization on the domain nor is there any reference to Twitter.

The domain does not appear to be for sale or have any sort of for sale banner or even contact link.

We will see how this plays out…

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UDRP Panel Punts Denying Google’s UDRP On Androidtv.com

March 27th, 2014 Comments off

Google Inc. (“Complainant”) just lost a UDRP on the domain anem androidtv.com and xbmcandroidtv.com

Its a pretty interesting case in which the Panel winds up punting saying the dispute is outside of scope of the UDRP but I think having read all the facts and findings of the panel and the argument of the respondent, this UDRP should not have been dismissed on its merits not as being outside the scope of the UDRP.

Here we go:

“”"Complainant offers a software platform and operating system under the ANDROID Mark. The Android operating system was first developed in 2003 by Android, Inc., a Palo Alto company specializing in mobile device software.

“Google acquired Android, Inc. in August 2005. Android is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices.

“One of Google’s products that integrates the Android platform is Google TV. ”

“Launched in October 2010, Google TV offers enhanced viewing of TV episodes, movies and YouTube Channels on demand, and allows users to browse websites and watch television at the same time.”

“Android applications developed for Google TV are available for download on the Google Play store.”

:In its Response, Respondent contends the following:”

On November 2, 2006, Mr. Escovar registered the domain name with GoDaddy.com.

The domain name was registered for purposes of displaying the type of Hollywood-centric videographic content that Mr. Escovar produced, but with a “bot” feel (or theme) to it. To some it may seem odd to connect robots and TV as a viable business strategy, but Mr. Escovar was not the only one to build on that connection.

As early as 2002 a business connection already existed between TV and androids by others.

Shortly after registering the disputed domain name, Mr. Escovar began advertising his business in connection with the new domain name as a commercial website that his customers could visit.

For example, he began advertising in January of 2007 in Jack Magazine.

On August 1, 2013, Mr. Escovar formed a partnership with Messrs. Beaman and LaBossiere to execute a more robust business plan through the use of the domain name.

Messrs. Beaman and LaBossiere brought expertise to the table that Mr. Escovar lacked.

The three gentlemen had been engaged in business talks since at least 2012. Pursuant to the terms of the agreement, each of the three gentlemen owned one-third of the partnership that now owned the domain name as part of the partnership named Exo Level.

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Bad Decision: HugeDomains.com Turns Down $6K & Loses Generic Domain In UDRP

March 24th, 2014 Comments off

Austin Pain Association (“Complainant”), just won control of the domain name AustinPain.com which was owned by HugeDomains.com

As someone who is the subject of UDRP complainants as well (2 pending) it brings me no joy to report on these cases, but the cases are the cases and in this case HugeDomains.com lost control of AustinPain.com which the panel acknowledged was generic in nature and for which the complainant didn’t even have a registered trademark and a common law trademark which “Complainant has done just barely enough to show trademark rights in AUSTIN PAIN.:

Yet they awarded the domain to the common law trademark holder,.

Here are the findings of the one member panel:

1.    Complainant operates a number of pain management clinics in Texas doing business as “Austin Pain Associates.”

2.    The disputed domain name was registered by “Interventional Pain Associates” on July 27, 2009.

3.     Complainant registered the business name “Austin Pain Associates” with the County Clerk of Travis County, Texas on December 20, 2003.

4.    Respondent is a domain name reseller.

5.    Respondent registered the disputed domain name on January 1, 2013.

6.    Respondent has not used the domain name.

The question before Panel is whether Complainant has done enough to prove common law or unregistered trademark rights. 

To do so it has been said that “[T]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.”

Complainant claims to have used the name AUSTIN PAIN ASSOCIATES since 2002 and provides evidence of registration of the business name “Austin Pain Associates” in Travis County, Texas on December 20, 2003.

 It alleges that it is commonly known by the name AUSTIN PAIN but essentially all of the supporting material provided with the Complaint and in response to the Panel Order shows use of the assumed business name, AUSTIN PAIN ASSOCIATES. 

Nonetheless, if it can be said that Complainant has trademark rights in that name, then Panel is of the view that Complainant has trademark rights in the truncated form, AUSTIN PAIN, since the word “Associates” adds nothing more of value to the expression “Austin Pain.”

It is far from easy to assimilate the evidence into a sustainable case for unregistered rights. 

The Texas business name registration from December 2003 is not a substitute for proof of trademark rights in the sense already discussed. 

Registration of the assumed name might be an indication that the name was adopted for use then and may have been used since, but there is no proof of those matters. 

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