iEstates.com

John Berryhill has won yet another UDRP this time successfully defending the domain holder SearchMachine on the domain name BMA.com

Here are the relevant findings of facts:

“The Complainant Braunschweiger Maschinenanstalt AG of Braunschweig, Germany, is the owner of registered trademarks for the letters BMA in China in class 7 (covering mechanical control fittings, filters, pumps, conveyers, agitators, centrifuges, vapor separators, valves and the like); class 37 (machinery installation, maintenance and repair, installation and repair of machines for the treatment and processing of renewable raw materials as well as machines for woodworking and machines for agriculture and for food industries) and services in class 42 (not disclosed). The Complainant has a trademark registration for BMA together with a globe logo in Germany in classes 7, 37, and 42 and a Community Trademark registration for the letters BMA”

“First, the Respondent states that the disputed domain name comprises a non-distinctive three letter combination.

“It states, by reference to the Complainant’s German trademark registration, that the Complainant is engaged in the provision of design, manufacture and installation of equipment in a highly specialized market to industrial customers engaged in unspecified processing of agricultural raw materials and wood. Further, the Respondent points out that even in Germany the Complainant has no exclusivity over the letters BMA per se and that there are eight other registrants of the letters BMA as a trademark in other classes.

“Second, as to rights or legitimate interests, the Respondent states that its website contains the prominent graphics “Bachelor of Musical Arts & More”. It asserts that searches on its own website contain links to educational providers. It also provides evidence that “Bachelor of Musical Arts” is a degree which is offered by a number of universities and higher education providers and that Google searches reveal some 209,000 results.

“The Respondent contends that the letters BMA are not exclusively or notoriously associated with the Complainant outside its specialized field and it produces a Wikipedia entry for BMA showing 32 separate possible organizations or references for the initials BMA. Moreover, the Respondent states that it registered the disputed domain name “precisely because it is a three letter domain name that is a useful acronym for a variety of things”.

“Thirdly, the Respondent states that its use of the disputed domain name does not relate to the Complainant’s business in that there is no suggestion of passing off or attempting to masquerade as the Complainant. The Complainant is based in Germany and the Respondent’s pages and graphic materials are all in English. The Respondent states that it is entitled to use the disputed domain name for purposes “unrelated to the Complainant’s limited claim to particular types of machinery and industrial design and construction services”.

“Fourthly as to bad faith registration and use, the Respondent points to the fact that the Complainant’s allegations are brief. The Respondent rejects the contention that its own website cannot be searched for Bachelor of Musical Arts. The Respondent further says that the fact that it did not engage with an anonymous purchase enquiry cannot be evidence of bad faith. In particular the Respondent says that it “registered a three-letter domain name that literally has hundreds of non-distinctive and non-exclusive uses, because it corresponds to an academic degree”. The Respondent says that it has a broad collection of three letter domain names and provides 10 other examples which it claims are “topically-suggestive search strings and corresponding title banners relating to educational and vocational subjects”.

“Fifthly, the Respondent states that where such a non-distinctive and short combination of letters is in dispute, the Complainant “must demonstrate how it was the peculiar target of some kind of abusive intent” or that the Respondent had the intent in some manner deliberately to “target” the Complainant and its marks or goodwill in order to capitalize on them. The Respondent says that it has registered and used a number of three letter domain names and the reason why it does so is “precisely because they are neither unique nor strongly distinctive of any trade or service mark, and are thus useful for the purposes indicated and indeed for the speculative interest in things of inherent rarity (as there is a finite supply of them)”.

The three member panel agreed that the Complainant did not satisfy the bad faith requirement has not made out this second element of the Policy:

“”The Respondent demonstrated that it has a series of ten other domain name registrations for three letter domain names with title banners relating to educational and vocational subjects all of which use the same format and default to pay per click (PPC) webpages.”

“These were:

CGE – college graduate employment

TIM – technology & information management

MSS – math, science, & social studies

GPP – graduate programs, psychology

OMP – online marketing programs

LAD – learning and development

HAL – humanities, arts & literature

ITF – investing, trading & finance

BNE – business and economics

DID – degrees in dentistry

“The Respondent has asserted that it registered the disputed domain name “because it corresponds to an academic degree” and “because it is a three letter domain name that is a useful acronym for a variety of things”. The Respondent denies having been aware of the Complainant until having received the Complaint. Importantly there is nothing on the website corresponding to the disputed domain name which targets or refers to the Complainant.

“Even though the Respondent has not disclosed exactly when it acquired the disputed domain name, it is clear from the evidence filed that the Respondent has owned it since at least May 4, 2008. The Panel is satisfied that there is no evidence that the Respondent had the Complainant’s trademark in mind at the time of acquisition and transfer of the disputed domain name to it – given that it did not become aware of the Complainant’s existence until after filing of the Complaint.

“The Complainant has not advanced any evidence to demonstrate that, as a result of promotion or extended use, its generally non-distinct three letter mark BMA has achieved widespread fame, awareness and reputation. The Complainant has also not elaborated on how long it has used its mark. The earliest evidence of assertion to the mark is the trademark application in Germany on June 25, 2004. Further, that mark was not for BMA on its own, but included a globe device.

“No evidence has been advanced by the Complainant to demonstrate the general fame of what is a three-letter trademark such that the Respondent, as a United States-based registrant of the disputed domain name, must or should have known of the Complainant’s trademark rights or was willfully blind to them.

“For these reasons, the Panel finds that the Complainant has not shown that the disputed domain name was registered and is being used in bad faith.”

 

It didn’t take long into the new year for a strange UDRP decision to be published and this time its the Trademark Holder that can complain.

Inter-Continental Hotels lost a  UDRP on the domain name intercontinentalkabul.com.

Even more interesting is the domain name holder didn’t even respond to the UDRP

The decision doesn’t make much sense to me but I did find the following comment by the one member panelist to be most interesting:

“”Whatever else the Respondent may be it is not a typosquatter; nor is it using the Domain Name for a portal site; nor, in the view of the Panel, is it a typical cybersquatter.”

Here are some of the facts found by the panel

The Complainant (or a predecessor) licensed the hotel to use the trade mark INTERCONTINENTAL. The licence was terminated following the Russian invasion of Afghanistan in 1979 and since then the Complainant (and its predecessors) have had no association of any kind with the hotel.

The Domain Name was registered on March 23, 2005.

“”The Respondent’s hotel underwent a major refurbishment in the mid-2000s and, according to Wikipedia, is decorated to an international standard. In June 2011 the hotel was subjected to an attack by suicide bombers. The Complainant issued statements at the time informing interested parties that the Complainant had no association with the hotel.”"

“”The Panel is of the view that the Respondent is unlikely to be the operator of the hotel and much more likely to be a website developer commissioned by the operator of the hotel. However, it seems to the Panel sensible that the practical realities be recognized and that principal and agent be treated as one. That is what the Panel proposes to do. For practical purposes therefore the term “Respondent” when used in this decision includes the operator of the hotel as well as the named Respondent.”"

(No In don’t understand that paragraph either)

“”The Complainant makes out what appears on its face to be a strong case. Its InterContinental hotel brand has been well known internationally for many decades. It was well known in Kabul back in the 1970s when lawfully used in relation to the hotel from 1969 to 1979 prior to the Russian invasion of Afghanistan.”

“The Complainant has an Afghan trade mark registration pre-dating the registration of the Domain Name and the Respondent is using the Domain Name in relation to the services covered by the Complainant’s trade mark registration without the authority of the Complainant. The Panel agrees with the Complainant that the Respondent, which is engaged in the hotel industry, must at all material times have been aware of the existence of the Complainant and its internationally recognized brand.”

“Whether it will have been aware of the Complainant’s Afghan trade mark registration is another matter. There is no indication before the Panel that the Complainant has ever been in communication with the Respondent.”

“Clearly, the Respondent has a case to answer, but none has been provided.”

“The Respondent has not responded.”

“The Respondent and its predecessors have been trading under and by reference to the name “Hotel Inter-Continental [in] Kabul” for nearly 40 years, albeit only licensed by the Complainant to do so for the first 10 years.”

“The Panel does not know the name of the hotel operator, but that is neither here nor there.”

“The Panel in the present case is satisfied that the Respondent’s business, the Hotel Inter-Continental in Kabul, was commonly known by the name reflected in the Domain Name by the time the Respondent registered the Domain Name in 2005. ”

“The key issue for the Panel is whether that fact is to be ignored, notwithstanding the mandatory terms of paragraph 4(c) of the Policy, for the reason that the use of the name of the hotel had been unlicensed since 1979, when the Russians invaded Afghanistan.”

“”The Panel is satisfied that for many years the Respondent’s business has been commonly known in Afghanistan by the name “Inter-Continental Kabul”.”"

“”Another puzzling aspect insofar as the Panel is concerned is what were the Afghan rights the Complainant had in the 24 years between 1979 (termination of the licence) and 2003 (date of the Complainant’s Afghan trade mark registration). Could the answer relate to why the Complainant has not sought to enforce such rights against the Respondent and/or its predecessors? “”

“Most puzzling of all is the apparent failure of the Complainant to have entered into any correspondence with the Respondent over the Respondent’s unauthorized use of its trade mark as the name of the hotel and, more recently, the use of the trade mark for the Domain Name.”

 

In a UDRP published today, a lawyer domain holder beat back a challenge from The California Milk Processor Board on the domain name GotMilkAds.com

California Milk Processor Board is the owner of the registered trademark GOT MILK?

Its a interesting opinion especially in light of the fact that UDRP’s panels have awarded domain names to this same complainant based off of this trademark and led one domain blogger to recommend to domain holders not to mess with domains that might infringe on the Got Milk trademark.

Here are the relevant facts and findings by the one person panel:

“”The disputed domain name was registered with the registrar GoDaddy.com, Inc. on August 3, 2009.”

“The disputed domain name resolves to a parked web page provided by GoDaddy.com, which contains advertising links (“ads”) to third-party websites offering various goods or services, none of which appear to be related to the Complainant or its goods and services.”

“The Complainant maintains that the disputed domain name is confusingly similar to the GOT MILK? trademark”

“The estimated number of page views of the Complainant’s website at “www.gotmilk.com” exceeds 1.8 million annually.”

“The Complainant further contends that the fame of the GOT MILK? trademark is such that the Complainant’s advertisements are sold as memorabilia on eBay.”

“The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.”

“”The Respondent maintains that as the parties are domiciled or incorporated in the U.S., and subject to and bound by applicable U.S. law. For purposes of the first element of the Policy, the Respondent argues from several trademark law decisions issued by the Federal Ninth Circuit Court of Appeals that the disputed domain name cannot be considered confusingly similar to the Complainant’s trademark.”

^“Relying primarily on such decisions, the Respondent asserts that online consumers of products are generally quite sophisticated about such matters, and that it is unlikely that a reasonably prudent consumer encountering a domain name that includes a product name would be confused whether the website they have come to is formally affiliated with the product manufacturer. The Respondent further notes that the website to which the disputed domain name resolves contains no content in any manner affiliated or related to the Complainant’s products or services, or those of the Complainant’s competitors. The Respondent further observes that the UDRP decisions relied upon by the Complainant are largely default cases or other cases in which no real substantive response was submitted.”"

“”The Respondent asserts that the Complainant has failed to meet its burden of proof respecting the second and third elements of the Policy as well. “”

“”The Respondent avers that he registered the disputed domain name with the intent to develop a website for the purpose of selling GOT MILK? advertisements, but has yet to make such use of the disputed domain name because of his busy law practice and the development of another website at “www.brotherlylovesports.com”. “”

“”The Respondent notes that, as the Complaint itself points out, there have been significant third-party sales of GOT MILK? advertisements in the U.S. and elsewhere on a daily basis at eBay.com. The Respondent observes that the Complainant has never objected to such sales, and further notes that the Complainant does not sell GOT MILK? advertisements on its own website.”"

“”The Respondent further maintains that he disclosed to the Complainant’s counsel during their discussions preceding the commencement of this administrative proceeding that it was the Respondent’s intent to use the disputed domain name with a website offering GOT MILK? advertisements. According to the Respondent, he has sold various print advertisements and posters, including the Complainant’s advertisements, over eBay for a number of years, and he has offered evidence of his activities on eBay. In view of the foregoing, the Respondent maintains that his intention to use the disputed domain name with a website offering GOT MILK? advertisements demonstrates rights or legitimate interests in the disputed domain name.”

“”The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <gotmilkads.com> is confusingly similar to the Complainant’s GOT MILK? trademark, in which the Complainant clearly has established rights.”

“”The Respondent maintains that he has established rights or legitimate interests in the disputed domain name based on the intent to use the disputed domain name in connection with a website offering for sale GOT MILK? advertisements.”"

“”The Respondent has submitted a sworn statement attesting that this was his intention when registering the disputed domain name and he avows that it remains his intention. The Respondent maintains that this constitutes a “nominative fair use” of the disputed domain name under relevant U.S. law, which qualifies as a bona fide use of the disputed domain name in connection with an offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.”"

“”In this instance, the disputed domain name has been used since its registration in August 2009 with a parking page featuring pay-per-click advertising links. The disputed domain name is confusingly similar to the Complainant’s well-known GOT MILK? trademark, such that Internet users looking for websites associated with the Complainant are likely to arrive at the Respondent’s pay-per-click website by mistake. “”

“”Regardless of who may have benefited from this arrangement, the Respondent, as the disputed domain name registrant, ultimately is responsible for the content of the website.”"

“”However, after careful consideration of the totality of facts and circumstances reflected in the record, the Panel is not convinced that the Respondent possessed at the time of registration of the disputed domain name the bad faith intent to exploit or profit from the Complainant’s trademark rights.”

“While, as noted earlier, the Respondent has not used or made a showing of demonstrable preparation to use the disputed domain name with a website offering GOT MILK? advertisements for sale, his claim to have registered the disputed domain name with the intention of doing so is plausible. ”

“There is nothing in the record reflecting that the Respondent is a professional domainer, nor evidence that the Respondent has in the past engaged in a pattern of registering domain names comprised of the well-known trademarks of third parties. At the same time, based on the parties’ submissions there is an established online market that exists and has existed for some time for the sale (resale) of GOT MILK? advertisements. And the Respondent has presented documentation (in the form of a sworn affidavit) supporting his claim already to have sold GOT MILK? advertisements on eBay.”"

“”To the Panel’s appreciation, the issue in this administrative proceeding is not whether the Respondent (or others) has a right per se to sell (or resell) the Complainant’s GOT MILK advertisements. “”

“”Rather, the issue is whether the Respondent consistent with the Policy may register and use a domain name incorporating the Complainant’s trademark for that purpose. In that regard, the consensus view of UDRP panelists is that a reseller or distributor making a bona fide offering of trademarked goods or services using a domain name which contains the trademark has a legitimate interest in the disputed domain name.”"

“”Under the Oki Data decision, a reseller may establish rights or legitimate interests in a domain name incorporating the manufacturer’s trademark if the following conditions are met:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

“”Several panel decisions have concluded that the application of the Oki Data criteria may be appropriate under the Policy where the respondent is not purely a reseller or distributor of a trademark owner’s goods or services, so long as the respondent operates a business genuinely revolving around the trademark owner’s goods or services. See National Association for Stock Car Auto Racing, supra; Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211 (hereinafter “Starwood Hotels & Resorts”). Additionally, panels subscribing to the principles established in Oki Data have determined it may be applicable to both authorized and unauthorized resellers. See WIPO Overview 2.0, at paragraph 2.3.”"

“”As this Panel has previously noted, such an approach is not only consistent with the Policy, but also is consistent with the nominative fair use principles that apply under the trademark law of the U.S., which is relevant here given that both parties are from the U.S. Starwood Hotels & Resorts, supra. Further, the Oki Data approach considers and applies nominative fair use principles not in the broader context of traditional trademark disputes, but with reference to the limited scope of the Policy, and specifically with respect to the a respondent’s use of the complainant’s trademark in a disputed domain name.”"

“However, it is difficult to make an affirmative finding under these principles in the Respondent’s favor, because as noted the Respondent is not presently making any active “use” of the disputed domain name to offer the goods or services at issue – though he certainly claims an intention to do so, which is supported to some extent by the evidence in this case. This is a factor which has given the Panel serious pause for thought in so far as the assessment of the Respondent’s likely intentions on registration of the disputed domain name are concerned. Does the fact that the Respondent’s claimed intentions with respect to the disputed domain name have not yet materialized mean that the Panel should therefore conclude that the disputed domain name was registered and is being used in bad faith because it is passively held? In the circumstances of this present case, the Panel is not prepared to go that far on this record.”"

“”The Panel is not persuaded that the facts and circumstances of this case are sufficiently analogous to those in Telstra Corporation Limited v. Nuclear Marshmallows, supra, to sustain a finding of bad faith registration and use based on the Respondent’s passive holding of the disputed domain name. As the panel in Telstra made clear, a finding of bad faith based on passive holding necessarily depends on the particular facts of a specific case. The Telstra panel relied on several bad faith indicators that are not clearly present in the instant record, (which, unlike the Telestra case includes a submission of a sworn statement) and found bad faith based on a conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”. The Panel is unable to reach such a categorical conclusion in this case for the reasons discussed above.”"

“”The Respondent in his sworn statement denies any benefit from the advertising links on the parking page to which the disputed domain name resolves. The record indicates that the parking page was provided by the registrar GoDaddy.com, Inc., a factor that supports the Respondent’s averment not to be directly responsible for the links appearing on the site. While the Panel does not retreat from the basic precept that the domain name registrant ultimately is responsible for the content on his or her website, the Panel still is not convinced from the overall facts and circumstances in the record before it at present that the Respondent (who does not appear to have a history of cybersquatting) registered the disputed domain name intending to trade on the Complainant’s trademark in order to generate pay-per-click revenue.”"”

“”Finally, whatever the hotly disputed circumstances surrounding the Respondent’s offer to sell the disputed domain name to the Complainant may have been, the Panel also is not persuaded from the totality of circumstances in the record in these Policy proceedings that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant at an exorbitant cost.”"

“”In conclusion, the Panel wishes to note that while it is to some extent, giving the Respondent the benefit of the doubt with respect to its claimed intended use of the disputed domain name, if in the future such use would not materialize, or the use would change in such a way to suggest a clear abusive intent, this may well constitute a relevant consideration in any future dispute brought over the disputed domain name”"

“”In any event, for the reasons outlined above, the Panel finds that the Complainant has, on balance, failed in these Policy proceedings to satisfy the requirements of paragraph 4(a)(iii) of the Policy.”"

“”For all the foregoing reasons, the Complaint is denied.”"

 

Do Facebook and Twitter need a UDRP?

As reported by Tech:Blorge today, German pharmaceutical giant Merck is suing Facebook in a New York Court (reported by WSJ) to demand details as to why Facebook will not allow them to use the “facebook.com/merck” username for their Facebook page.

According to Tech:Blorge, “The German firm came first, while the US firm was created using American assets surrendered by the German firm during the first world war. To minimize confusion and to avoid trademark disputes, the German firm is known as EMD Chemicals in North America, while the US firm is known as Merck Sharp & Dohme outside of North America.”

The German company says it cut a deal with Facebook last year allowing them exclusive rights to the address but has failed to follow through (BBC).

What do you think, do we need UDRP-like rules for social media URLs?

[via Tech:Blorge]

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Mr. John Berryhill has just won another UDRP this time on a .TV domain, Channel.TV

The Complaint was brought by Channel Television Limited of St Helier, Jersey, United Kingdom of Great Britain whom despite finding that they had “unregistered trademark rights” to the domain, found no bad faith by the registrants.

Here are the relevant facts and findings of the three member panel:

“The Complainant is a television broadcaster that has operated in the Channel Islands since 1962 under various names including the words “channel” and “television” or “TV”.

“The company employs 70 people.  Operating a statutory monopoly on the provision of broadcast services, it is well-known amongst the approximately 160,000 residents of the British Crown Dependencies in the English Channel.  The Respondent operates in the secondary market for domain names.

“On February 16, 2011 it purchased the disputed domain name, which it regarded as consisting of merely generic words common in the television industry, for the purpose of on-sale as a part of its business.”

“The Complainant contends:  that it has a longstanding acquired reputation in the trade marks “channel television” or “channel TV”.;  that the disputed domain name is identical, or confusingly similar, to its marks;  that the Respondent has no rights or legitimate interests in the disputed domain name (in particular that trading in the name itself does not constitute rights or legitimate interests);  and that the disputed domain name was registered in bad faith and for the sole purpose of preventing the Complainant from registering a domain name corresponding to its well-known trade marks.”

 

“”In this case the Complainant has brought little evidence of acquired distinctiveness and even less of acquired distinctiveness outside the geographically restricted area of the Channel Islands where it is well-known.”

“In contrast the Respondent has been able to bring Internet search based evidence to demonstrate the ubiquity of business identifying terms involving the words “channel” and “TV” and the lack of a strong presumptive connection between the terms and the Complainant.”

“The Respondent makes a number of points in support of its allegation that “Channel TV” is not a trade mark or service mark in the hands of the Complainant.  It contends that trade names (and Channel TV is a trade name of the Complainant) are expressly excluded from the Policy.  It also contends that the public awareness of Channel TV is confined to such a small geographical area that it “cannot credibly assert a monopoly in the primary generic meaning of the word ‘channel’ in connection with television, and certainly not on an international basis”.

“Taking the second point first, paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) includes the following sentence:  “The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trade mark.”

“In relation to the first point, while it is accurate, it is incomplete.  Personal names are also excluded from the operation of the Policy as are geographical identifiers. ”

“In the view of the Panel, the Complainant has just got over the threshold for establishing unregistered rights in a name.  Given the highly descriptive nature of the name, the scope of those rights will of course be very narrow.  Nonetheless, it is unlikely that a competing broadcaster could lawfully trade under and by reference to the name “Channel TV” in the Channel Islands.”

“The disputed domain name is therefore identical to the Complainant’s unregistered trade mark “Channel TV”.

The Panel therefore finds that the Complainant has established the first element of paragraph 4 (a) of the UDRP Policy.

As to bad faith the panel found:

 

“It is not in itself wrongful to trade in domain names, and investment in the secondary market for domain names can constitute the basis of a legitimate interest in a domain name, provided that the domain name is not being acquired in contexts in which its use identical, or confusingly similar to, a complainant’s trade mark and the registration is not in bad faith.”

“In this case, the Complainant has brought little evidence that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has made the plausible claim that it was legitimately engaging the secondary market for domain names in ignorance of the Complainant’s business.”

“The Panel therefore finds that the Complainant has failed to establish the second element of paragraph 4(a) of the UDRP Policy.”

D. Reverse Domain Name Hijacking

“Although the Respondent alludes to the possibility that the complaint in this case entails reverse domain name hijacking, it has not fully argued this point.  Evidence of such abuse of the UDRP process must be clearer than it is in this case for such a finding to be made by a Panel on its own account.  For that reason, the Panel declines to make any finding on this point.”

 

I don’t know about this one.

No registered trademark.

Generic term

Panel finds “the Complainant has brought little evidence that the Respondent has no rights or legitimate interests in the disputed domain name”

Well actually the panel found no evidence that the “Respondent has no rights or legitimate interests in the disputed domain name”.

So if this is not an attempted reserve hijacking what is?

Congrats to John and Legacy Fund LLC the domain holders.

 

In a three member WIPO decision the 42nd oldest domain name,  Octopus.com was lost in a UDRP.

The domain name had a registration date of 1986 but was acquired by the domain holder in 2006.

The Complainant was brought by Octopustravel Group Limited of London.

Here is the relevant parts of the decision

“The Complainant is doing business as a retailer of hotel accommodation and related services throughout the world and has been trading under the name OctopusTravel since 1999.”

“Accommodation booked through the Complainant and its retailers covered more than 700,000 nights in 2010, and the Complainant’s global revenue amounted to $217.9 million in 2010 with marketing expenses in the amount of $4.8 million.”

“The Complainant provides its services on the Internet at “www.octopustravel.com”.

“The Complainant is the registered owner of numerous trademark registrations for “OCTOPUSTRAVEL”, inter alia International Registration No. 823144 OCTOPUSTRAVEL registered on November 24, 2003 (hereinafter referred to as the “OCTOPUSTRAVEL Mark”). The Complainant’s trademark covers services in international classes 39, 41, 42 and 43.”

The disputed domain name was first registered in 1986 and was acquired by the Respondent on June 9, 2006.

The disputed domain name has been used in connection with a website providing information on octopi and travel related advertising.”

“The first point to be dealt with is the identity of the Respondent.”
“The Complainant named a total number of ten Respondents all allegedly being related somehow to the disputed domain name, including Alexander Rosenblatt and Yana Belkova. ”

“According to the information in the concerned registrar’s WhoIs database, the disputed domain name is registered in the name of Mr. Alexander Rosenblatt only. As per the Respondent’s plausible contentions, Alexander Rosenblatt is an alias of Yana Belkova. Therefore, the Panel will treat Yana Belkova aka Alexander Rosenblatt as sole Respondent in this proceeding. The Complainant’s contentions regarding the relations of the other alleged Respondents to the disputed domain name are irrelevant.”

“The disputed domain name consists of the term “octopus”, which is included in the Complainant’s OCTOPUSTRAVEL Mark”

“The fact that the Complainant’s trademark contains an additional element, namely the word “travel”, does not hinder a finding of confusing similarity.”

“”Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent. ”

“Although the disputed domain name consists only of a generic term, the Respondent has not provided any persuasive evidence under paragraph 4(c) of the Policy for the following reasons:”

“The website available at the disputed domain name contains advertising links to the Complainant’s competitors (i.e., bookings.com). ”

“It is well established that there is no bona fide offering of goods and services where the use of the disputed domain name for such offering constitutes a trademark infringement.”

“Furthermore, the Respondent has not shown that she is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the domain name.”

“In addition, the Respondent, having once worked for the Complainant, was obviously aware of the Complainant at the time when she purchased the disputed domain name and therefore registered the disputed domain name in bad faith. ”

“The mere registration of a generic word as a domain name will only be sufficient in and of itself to create a legitimate interest if the domain name is registered in good faith ”

“Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name.”

“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”

“Finally, the Panel is not satisfied that the website at the disputed domain name can seriously be considered as providing bona fide information on octopi; rather, it strikes the Panel as (at least) pretextual The generic use of “octopus” could well be plausible if for example combined with credible other supporting evidence, but even a superficial Google search reveals that the text about the cephalopod species that appears on the Respondent’s website appears wholly copied from other sites.”

“Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.”

“The Panel finds that the Respondent registered the disputed domain name in bad faith.”

“As noted above, the Respondent registered the disputed domain name in 2006, by virtue of an acquisition from a third party. It is well established that a transfer of a domain name to a third party amounts to a new registration under the Policy”

“The Respondent, a former employee of the Complainant, admitted that she was aware of the Complainant at the time when she purchased the disputed domain name.”

“In the absence of the Respondent having established rights or legitimate interests in the disputed domain name, her claims of having no intention to capitalize on likely confusion with the Complainant’s trademark lacks persuasiveness in the circumstances.”

“As to bad faith use, by using the disputed domain name in connection with a website offering advertising from the Complainant’s direct competitors, which constitutes an infringement of the Complainant’s right in its OCTOPUSTRAVEL Mark, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain. Such use and exploitation of trademarks to obtain commercial profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy.”

“Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met.”

“The Panel points out that, although the disputed domain name has been first registered back in 1986, the Complainant’s trademark registrations predate the Respondent’s acquisition of the disputed domain name by many years. Furthermore, although the disputed domain name may have a substantial value based on its generic meaning, this for itself is no basis to deny the Complaint. Even if a domain name is generic, there is always the possibility of a trademark infringement and the registrant of such domain name, especially one with such clear prior knowledge of a relevant rights holder’s trademark rights, has to be aware of this.”

So a generic domain gets taken in a UDRP from a trademark on a longer term that incorporates Octopus.

You would have to assume this domain was not a cheap acquisition in 2006 and the loss of the domain is a harsh penalty.

 

 

While WIPO recently reported somewhat misleading that “Cybersquatting hit(s) record level“, the National Arbitration Forum reported their numbers today. They also report a higher amount of filed cases for 2010, up to 2,177 from 1,759 in 2009. Only 1,819 of the cases were actually heard by panellists, the remainder were settled beforehand.

When looking at Cybersquatting you need to put the numbers in relation to numbers of registered domain names and only look at those cases where a transfer or cancellation was ordered as a result of the dispute.

[via Press Release]

(c) 2011 DomainNameNews.com (2)

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DomainConvergence 2011, May 12-13, Montreal, Canada

While the loss of the UDRP over ChiliBeans.com at the end of 2008 was certainly bad news for Frank Schilling’s Name Administration Inc. (NAI), Schilling did not sit still, but fought back. Now, after the suit made its way through the court of the Cayman Islands the result is a significant (but non-disclosed) settlement payment to NAI, acknowledging the generic nature of the domain name.

Both parties have agreed that NAI’s use of the generic Chillibeans.com domain name violated no enforceable rights of Balglow Finance. The settlement of this dispute will see NAI transfer title of this generic name to Balglow Finance to assist it in its online efforts relating to Balglow Finance’s expansion of the “Chilli Beans” brand of eyewear.

“While it’s unfortunate that this dispute necessitated a trip to the Cayman Court, we are most pleased to have resolved the matter in such a mutually beneficial way”, Frank Schilling MD for NAI told DNN. He continued, “NAI’s only interest in the domain name was as a generic term. Now that it’s been settled that NAI’s registration and use of the domain name violated no rights of Balglow Finance we are pleased to facilitate the transfer, as the domain name is beneficial in advancing the business of Balglow Fianance, and while valuable to NAI, has less long term value to our company”".

(c) 2010 DomainNameNews.com

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In a recent decision in the dispute for the domain name Evoq.com, the WIPO panel let the original registrant keep the domain name. However the 3-person panel did not agree how exactly the “bad faith” criteria should be applied. The panel was not clear whether it mattered if a domain name was registered in bad faith when compared to the complainant’s trademark, or if this criteria could be applied against any existing trademark.

From the decision (emphasis added):

Faced with the fact that the Domain Name was registered in 2004, well before the Complainant was formed in 2007, the Complainant argues that the Domain Name was registered in bad faith directed at General Motors, which had announced a concept car called “Evoq” in 1999.

Some members of the Panel are inclined to conclude that, to prove bad faith registration, the Respondent must have had a bad faith intention with respect to the Complainant’s mark. However, the Panel does not need to reach a definitive conclusion on that issue because, even if bad faith directed at third parties could constitute bad faith for the purpose of this requirement, the Panel does not find the existence of any such bad faith on the evidence in this case.

So while the panel clearly thought that the domain owner did not register this domain in order to infringe on the complainant’s brand, at least one panelist thought it may have been infringing on another companies’ brand and thus could potentially constitute a bad faith registration.

In a conversation with DNN, Zak Muscovitch of DNAttorney commented as follows:

Zak Muscovitch at DomainConvergence

The Complainant’s position is absurd. The Complainant argues that the Respondent should be found to have registered the domain name in bad faith, even though the Complainant wasn’t even in existence at the time the domain name was registered, because the disputed domain name was registered after  an unrelated third party; General Motors, acquired trademark rights. The fact that the Complainant was able to adopt EVOQ as a trade name and trademark for its communications and branding business years after General  Motors acquired trademark rights,  in ostensible “good faith”, means that  the Respondent was equally able to register the domain name in good faith notwithstanding General Motor’s limited rights. What is good for the goose is good for the gander. EVOQ is a name that could lend itself to any number of business endeavours. This is a case of attempted domain name hijacking in my opinion, pure and simple.

[Thank you safesys/DBR]

(c) 2010 DomainNameNews.com

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In a WIPO decision issued today a pretty generic domain domain,  7Days.com was awarded to a the owner of a trademark registered in Greece and Portugal.

Although the domain was parked, none of the links were alleged to go to the trademark owners site or competitors site, just a general parking page.

“”The Panel finds on the undisputed evidence of the Complainant that the Respondent has not used or made demonstrable preparations to use the Domain Name for a bona fide offering of goods or services. The Panel considers that the Respondent’s use of the Domain Name for a generic holding page does not constitute an offering of goods or services for this purpose.”

The domain holder did not file a response to the complaint.