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After Losing MyArt.com in UDRP, Fed Court Awards Owner Domain + Damages + Attorney Fees

July 17th, 2014 Comments off

According to a post on the site of the law firm Lewis & Lin, the domain owner of MyArt.com who lost a UDRP in April, filed a lawsuit in federal court and not only stopped the transfer of the domain name but got an award of statutory damages, attorney’s fees and litigation costs.

We wrote about the UDRP back in April of this year and noted it was the 2nd UDRP filed by the same complaint on the same domain.

David Lin, Esq. writing on his firm’s site in a post entitled: “Reverse Domain Hijacking Defendants Consent to Judgement” says:

Reverse Domain Hijacking Defendants Consent to Judgement – See more at: http://www.ilawco.com/blog/reverse-domain-hijacking-myart.html#sthash.KXCiEDeU.dpuf

“After losing a UDRP proceeding by default, the owners of MyArt.com retained Lewis & Lin to stop the transfer of the domain name under ICANN rules.

Lewis & Lin immediately filed suit in the U.S. District Court for the Southern District of New York against My Art SAS, a French company engaged in the sale of artwork, and its principal shareholder. Our complaint sought relief for reverse domain name hijacking under the Lanham Act, as well as related state unfair competition claims.

Barely a month after being served with the complaint, defendants issued an offer of judgment consenting to all of the declaratory relief that we sought on behalf of our client.

Defendants also offered a monetary judgment in an amount that included statutory damages, attorney’s fees and litigation costs. The offer of judgment was accepted and judgment was entered in favor of our client.

This case illustrates that a UDRP loss has absolutely no bearing on subsequent litigation between the same parties and the same domain name. A UDRP panel’s decision, which is not based on U.S. trademark law, will be entitled to no deference, and will have no preclusive effect in a federal court case. For domain name registrants who fall victim to the efforts of reverse domain hijackers attempting to seize a domain in the UDRP process, there is hope to recover a hijacked domain.

Simply by filing a federal lawsuit and requiring the attempted hijacker to defend their actions, a domain name registrant can keep what’s rightfully theirs. For more information on reverse domain hijacking and the UDRP, contact David Lin at Lewis & Lin LLC.”

We are thrilled that a domain name owner stood up for his rights, took the horrible UDRP decision to court and not only quickly got the transfer of the domain name stopped but also got damages, attorney fees and costs.

Big congrats to

 

Categories: Domains, External Articles, Legal, udrp Tags:

Pinterest Has Universal Rights On Word PIN? Files UDRP On PinSex.com and PinGay.com

July 16th, 2014 Comments off

Pinterest, Inc. filed a UDRP back in June against two domain name PinSex.com and PinGay.com

Before you check out the two domains subject to the UDRP,  I should mention that you better be over 18 and have a strong tolerance for some serious adult material that appears immediately as soon as the sites load.

The domain names are fully developed adult sites and  which are not commonly the types of domains that get hit with a UDRP: parked pages, sites which use adsense, gripe sites, domains that do not resolve.com and  domains that are for sale,

It would appear that Pinterest is basing its UDRP claim on the word Pin combined with another dictionary word and “sex” and “gay”.

Unfortunately unlike court cases, pleadings to UDRP cases are not public so we will have to wait until the decision comes out to see what the WIPO panel has to say, but for now it appears that Pinterest thinks its has rights to any site with pictures and/or videos that at least starts with the word “Pin”

We will let you know how this one turns out.

The case number is D2014-1067 and was filed on June 21.

 

Categories: External Articles, udrp Tags:

BleachStain.com Loses Bid To Grab 8 Year Old Bleachstains.com In UDRP Without A Trademark

July 14th, 2014 Comments off

Jerry G. Roper of Payson, of Utah just lost his attempt to grab two domain names about a generic as they get; Bleachstains.com and Carpetbleachstains.com

BleachStains.com was registered in 2006

The domain owner was Dave Chretien and Color Spot Carpet of Torrance, California, US.

The Complainant which didn’t have a trademark but a patent

In October 2000, Complainant began selling a system for repairing permanent stains either caused by carpet color loss or from additional color added.

Complainant contends he sold that system using the domain name bleachstain.com and used the phrase “bleach stain carpet repair” in describing the process.

In March 2003, Complainant received a United States patent on the process (U.S. Patent No. 6,533,824 (’824 Patent)) – Method for Restoring Original Color to Bleached Regions of Nylon Carpets).

Complainant asserts that “Bleachstain.com” has been associated commercially and with a website for over 13 years and should be regarded as a non-registered trademark based on the continued commercial use during these 13 plus years.

The use of the domain name bleachstain.com does not describe what Complainant does nor does it accurately describe discoloration of a carpet. Complainant chose this domain name from the phrase “bleach stain carpet repair”.

Complainant used this phrase to distinguish himself from the competitor at the very startup of his business. The “Bleach Stain” word usage greatly increased after Complainant advertised the term “Bleach Stain Carpet Repair. Bleach spills, bleached out spots and bleach marks were the common terminology in describing carpet color loss, according to Complainant.

Because Complainant was involved in the bleaching of stains and not just dyeing spots with an eyedropper, Complainant used the term “bleach stain carpet repair” as a name for his business. This phrase relates to bleaching out impossible stains and then color correcting the area. This is mentioned in the ’824 Patent.

Complainant’s domain name is unique in that it is the only carpet dye company selling a patented process for carpet color restoration. Complainant’s method has changed the industry and the way carpet color repair is preformed worldwide. Complainant was the first company to sell and advertise carpet color repair for the homeowner. Shortly after starting business in 2001 Complainant’s website stated in part:

According to Complainant KIK CUSTOM PRODUCTS (http://www.kikcorp.com) makes a variety of consumer products (e.g., shampoos, soaps, body lotions, sunscreens, household bleach, and cleansers) that can remove color from a carpet. Complainant claims that KIK CUSTOM PRODUCTS has recommended and will continue recommending “bleachstain.com” to their consumers for color correction of stains caused by these products.

Complainant contends he had a unique business that clearly defined his product and service for the consumer. Complainant further contends that there is now a great amount of confusion from consumers regarding services offered by and .

Not only are the domain names similar in sound and spelling but Respondents have recently used the term, “carpet bleach stain repair” in most of their advertisement listings, according to Complainant.

Within the last year, Respondents have produced 23 YouTube videos with most of these having the title “carpet bleach stain repair”. Respondents’ use of the term “Carpet Bleach Stain Repair” and the domain name has greatly increased the confusion amongst consumers.

Complainant contends that Respondents have no rights or legitimate interests in the Domain Names. Respondent Chretien does not have any rights superior to the common law rights of the name “bleachstain.com”, in the United States or elsewhere.

Complainant contends that Respondents registered and are using the Domain Names in bad faith. Respondent Chretien knowingly registered the Domain Name in 2006 with an actual awareness of a confusingly similar name prior to registration. He would surely know Complainant and Respondents were competitors for six years. He had a website prior to “bleachstains.com” using and a business name called “Color Spot Carpet Service”. Respondent Chretien’s focus was on the repair of small carpet spots. He did not refer to his services as “bleach stain carpet repair”. He acquired as a means of creating confusion amongst the consumers for financial gain. Respondent Chretien registered in 2006 but did not have a website associated with that name until 2010. He had directed to from 2007 until 2010. The name server for had the same IP address as . If a consumer made the mistake of making plural, then it was directed to Respondents’ website. It is abundantly clear that was registered to gain financially from .

In its Complaint, Complainant states that his domain name has been associated commercially and with a website for over 13 years and should be regarded as a non-registered trademark based on the continued commercial use during these 13 plus years.

Complainant alleges that in October 2000, he began selling a system for repairing permanent stains either caused by carpet color loss or from additional color added. He sold that system on a website having the associated domain name . On the portion of the website provided to the Panel from the WayBackMachine, the only use of “bleachstain.com” was as a domain name, not a trademark.

Complainant also alleges on that early website he used the phrase “bleach stain carpet repair” in describing the process.

Indeed, he did use that descriptive phrase to describe a “NEW and Improved method for restoring color to regions of missing color on nylon carpet.” The phrase “bleach stain carpet repair” was not used as a trademark on the website. Complainant did not provide the Panel with evidence of its use of “bleachstain.com” for the last thirteen years on his company website.

Complainant points to a company called KIK CUSTOM PRODUCTS that makes a variety of consumer products, which can remove color from a carpet. The company has recommended Complainant’s bleach stain removal product to their consumers for color correction of stains caused by their products. Regardless of the success KIK’s customers might have had with Complainant’s product this complement does not establish that “bleachstain.com” has become a distinctive mark. Complainant also claims that its patented system is sold throughout the world with many positive independent reviews, including selling on Amazon and eBay, with a high rating. These conclusory remarks also are not evidence to prove any use of “bleachstain.com” as a trademark.

Under paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. Because Complainant has not carried his burden on this element, the Panel need not decide whether Complainant has met his burden on the other elements.

For the foregoing reasons, the Complaint is denied.

Categories: External Articles, udrp Tags:

Owner of Mobile.Pro Loses UDRP Bid To Grab Mobile.Co

July 11th, 2014 Comments off

Inter123 Corporation lost its bid to grab the domain name mobile.co who was represented by David D. Lin of Lewis & Lin LLC, New York.

The Complainant launched its website in March 2013 at mobile.pro, to provide an online community for mobile communications industry professionals and filed a trademark on the term Mobile.co on March 20, 2014.

Its a pretty interesting case in terms of dealing between the parties but pretty disappointing in terms of the result for the reader as they panel found the complainant having been granted the trademark they applied for in 2013 had to rely on a common law trademark which the panel found the could not estiblish

Here are the highlights of the three member panel decision:

In early 2014, Complainant learned that the disputed domain name was for sale through the domain name auction site at Sedo.com.

A third party, Chadi Ghaith, had registered the disputed domain name and it was hosted on GoDaddy LLC’s server.

Complainant negotiated with Ghaith for purchase of the disputed domain name and reached an agreed price of $59,000.

Ghaith then sent Complainant a “Transfer Overview” page. The purchase agreement between the parties stated that, “in the event a breach of this agreement results in a failed attempt to transfer control of the purchase object mobile.co from seller to buyer, the aggrieved party shall have the right to demand specific performance in lieu of monetary damages.”

Once Complainant’s identity was revealed, Ghaith refused to honour the agreement and did not transfer the disputed domain name to Complainant.

When Ghaith was informed of the suit Complainant brought in the District Court of Arizona, Ghaith attempted to renegotiate sale of the domain name for “not below a $150k reserve.”

Prior to these events the domain name had not been used but now Ghaith began offering services that directly competed with Complainant.

Ghaith then transferred the domain name to Respondent, a personal friend.

13. The disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.

14. Respondent has no rights or legitimate interests in the domain name.

15. Respondent has never been commonly known by the disputed domain name.

16. Respondent acquired the disputed domain name for the purpose of furthering the prior owner’s fraudulent scheme to extort money from Complainant.

17. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

18. Respondent registered and is using the disputed domain name in bad faith.

19. Ghaith and Respondent acquired and registered the disputed domain name for the purposes of engaging in a deliberate and fraudulent scheme to extort substantial sums of money from Complainant by trying to sell the disputed domain name.

B. Respondent

1. Complainant’s allegations do not pertain to any conduct by Respondent apart from his purchase of the domain name from the prior registrant.

2. Complainant asserts a breach of contract claim that is inappropriate for resolution under the UDRP process.

3. There are pending legal proceedings that involve the same issue presented in these Administrative Proceeedings.

4. Complainant has failed to satisfy the elements set forth in the UDRP 4(a) because it does not have trademark rights in the descriptive term “Mobile.”

5. Complainant should be held to have engaged in reverse domain name hijacking.

C. Complainant’s Additional Submissions:

1. Pending litigation does not require dismissal; rather, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.

2. It is a fair and reasonable assumption that Respondent has been inextricably involved from the moment Ghaith transferred the disputed domain name.

3. Complainant has common law rights in the MOBILE.CO, MOBILE.PRO, MOVIL.CO and MOVIL.PRO trademarks.

D. Respondent’s Additional Submissions:

1. There is no possibility that the USPTO will register Complainant’s trademarks since the word “Mobile” (and its Spanish language equivalent, “Movil”) merely describe Complainant’s business and Complainant has not provided any evidence of use proving secondary meaning.

Complainant contends to be the owner of the trademarks MOBILE.CO, MOBILE.PRO, MOVIL.CO and MOVIL.PRO in the United States of America, since their first use in March, 2013. Those trademarks are currently pending registration before the USPTO.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.

Equally, it is the consensus opinion of panelists that a pending application for registration, of itself, gives no such trademark rights. Accordingly, in this case, Complainant must establish unregistered or common law trademark rights if it is to succeed with its Complaint.

In other words, in a common law jurisdiction, if a third party set up in competition with the Complainant under the same or a confusingly similar name, the Complainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.

Therefore, to determine whether or not Complainant owns unregistered trademark rights the Panel must, as a threshold matter, be able to identify a reputation in respect of the name or sign in question. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, available at http://www.wipo.int/amc/en/domains/search/overview2.0/1.9, asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:

The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. 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 trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.

In this case Complainant essentially lays claim to rights in the term MOBILE (or its Spanish language equivalent) either with or without the identifiers “.CO” or “.PRO”, it not being entirely clear from the submissions.

In any event nothing turns on that point since UDRP panelists have long held that the addition of a gTLD or ccTLD to a trademark adds nothing of distinguishing value over and above the trademark. Many panelists, for example, will for the purposes of paragraph 4(a)(i) treat TRADEMARK. COM as “legally identical” to TRADEMARK.

Moreover, this Panel is aware that the USPTO has a similar attitude to the registrability of trademarks which reproduce a domain name. In particular, if the USPTO regards a trademark as prima facie descriptive and unregistrable, then the addition to that trademark of, for example, “.co” or “.pro” will do little if anything to improve the stakes.

In this case Complainant’s trademark applications remain pending and the Panel is told that there is resistance to their registration for reason of lack of distinctive character. Panel need not assume the job of the USPTO examiner since from the Complaint itself Panel is told the Complainant launched the website at to provide an online community for mobile communications industry professionals. In other words, the name was chosen because it was entirely apt to describe the character of the services. On this basis Complainant faces the additional hurdle of showing secondary meaning in a descriptive term other traders are likely to desire to use for their similar services.

The evidence does not advance Complainant’s position. Panel is told that Complainant’s Chairman and Chief Executive Officer, Mr. Jeffrey Peterson, is highly recognized for work for the Hispanic community in the United States of America and that the business has approximately USD 4 million in funding and more than 100 shareholders. Panel is told in broad terms that the promotion of the business under the name MOBILE or MOBILE.PRO is via the Internet and mainly directed to the Hispanic community.

In spite of the great many people who primarily speak Spanish or who would regard themselves as part of the Hispanic community, this information does very little to assist the Panel to understand the reach and recognition of the trademark as an indicator of Complainant’s services and not as a reference to mobile communications services generally.

Finally, it is noted that this enterprise only gained momentum in March 2013. Even allowing for the speed at which online businesses can now promote themselves to a broad audience, the fact remains that 15 months is a very short timeframe for any directly descriptive term to rise to a level where it is connected in the minds of the public, or even a section of the public, with one business undertaking.

For these reasons, this Panel is not able to conclude that Complainant has common law trademark rights and accordingly Panel finds that Complainant has failed to establish the first limb of the Policy.

Rights or Legitimate Interest

No findings required.

Registration and Use in Bad Faith

Again, no findings required.

DECISION

Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Categories: External Articles, udrp Tags:

After Just 12 Short Years Discover Finally Files A UDRP ON DiscoverCards.com

July 9th, 2014 Comments off

Screen Shot 2014-07-09 at 8.03.41 PM

 

The credit card company Discover Financial Services, Inc.

filed a UDRP on the domain names DiscoverCards.com and DiscoverCredit.com.

Discover uses two main domain names to access it services and promote its credit cards Discover and its Discover It.

They own the domain name Discover.com, as well as the domain DiscoverCard.com

Discover is paying Google on a Pay Per Click basis to be on top of the term “Discover” and “Discover Card” and the site that is being advertised is DiscoverCard.com

It’s almost incomprehensible that the domain name DiscoverCards.com was registered in 2002 and the UDRP was just filed in July 2014.

That’s 12 years.

According to Screenshots.com the domain has been parked since at least 2004.

The domain has been owned under privacy at Fabulous since at least 2009.

Needless to say the domain must have gotten a ton of traffic over the years on very high paying terms, credit and credit cards.

I would guess someone made a lot of money off of this domain.

The question is how in the world would it take this company 12 years to file a UDRP on a bang on domain name DiscoverCards.com, correctly spelled and the plural of the site they are spending probably a lot of money advertising on Google.

It’s pretty amazing when so many trademark holders have been at ICANN for 5 + years worrying about what happens if someone registers a new gTLD like DiscoverCards.CEO, while allowing bang on domains like this one to exist without challenge for so many years

Discover Financial Services, Inc. is no stranger to UDRP’s, they have filed 20 over the years on over 100 domain names, including many typo’s.

They filed a UDRP last year on the domain names:

discoverthecard.org
discoverthecard.net
In 2007 they went after these bargains
diccovercard.com
dicoverard.com
dikscovercard.com

disc0overcard.com
disc0vercard.com
disc9vercard.com
discaovercard.com
discobvercard.com
discocercard.com
discove4card.com
discovedrcard.com
discovercardc.com
discovercardcard.com
discovercardx.com
discovercared.com
discovercdard.com
discovercsard.com
discovercxard.com
discovertcard.com
discovfercard.com
discovwercard.com
Categories: External Articles, udrp Tags:

Napster.FM Hit With a UDRP by Rhapsody

July 7th, 2014 Comments off

A name from the past is back in the news, this time the second coming of Napster located at Napster.Fm was hit with a UDRP by online subscription service Rhapsody International, Inc. Rhapsody owns Napster.com and purchased the company a few years back.

Napster.FM has been registered since March of 2012 by Napster.fm LLC.

The website does not look to be operable as the top menu is blurred out where you would look for links to Chat, Discovery, About, etc…

napsterfm

Have Trademark Holders Given Up On The URS? Last 17 Disputes Filed, 15 Were UDRP’s

July 6th, 2014 Comments off

Have trademark holders given up on the Uniform Resolution Service?

The URS is something that trademark holders and their representative pushed for at ICANN for years.

A cheap, quick take down on obviously trademark infringing new gTLD domain registrations.

Although the URS is exactly that a much cheaper and quicker process than a UDRP, if a trademark holder wins a URS the domain registration is simply suspended for the term of the registration and becomes available for re-registration once it drops.

Since June 15th, 26 UDRP have been filed on new gTLD domain names while only 6 URS have been filed.

The last URS was filed on June 30 on the domain name marmara.club and the one before that on June 26th on the domain name ibm.xn--3ds443g. Since June 26th, 15 UDRP’s were filed.

It looks like trademark holders are for the moment opting for filing UDRP’s in lieu of URS

Here are the UDRP filed on new gTLD’s from June 15, 2014:

D2014-1172 garnier.email, kiehls.email L’Oréal SA

D2014-1171 geforce.graphics NVIDIA Corporation

D2014-1167 walmart.reviews Wal-Mart Stores, Inc.

D2014-1145 sanofi.email Sanofi

D2014-1138 clarins.center CLARINS

D2014-1144 uniqlo.clothing Kabushiki Kaisha Fast Retailing, dba Fast Retailing Co., Ltd.,

1567649 corninggorilla.glass

1567719 vivintsolar.solar

1564630 vanheusen.clothing

1564059 kohler.plumbing

D2014-0999 clarins.club Clarins

D2014-1116 kpn.international Koninklijke KPN N.V.

D2014-1102 electrolux.company Aktiebolaget Electrolux

565523 aeo.xyz

D2014-1091 lonelyplanet.photography Lonely Planet Global, Inc.

D2014-1083 osram.lighting OSRAM GmbH

D2014-1077 petrobras.guru Petroleo Brasileiro S.A. Petrobras

D2014-1075 petrobras.holdings Petroleo Brasileiro S.A – Petrobras

D2014-1076 petrobras.technology Petroleo Brasileiro S.A – Petrobras

D2014-1054 sheraton.caB Sheraton International IP, LLC Starwood Hotels & Resorts Worldwide Inc. The Sheraton LLC -
D2014-0698 statoil.today Statoil ASA (“Statoil”)

D2014-1040 stregis.club, westin.club, whotels.club Starwood Hotels & Resorts Worldwide, Inc.

D2014-1038 oshkoshbgosh.clothing OshKosh B’Gosh, Inc

D2014-0434 stihl.equipment Andreas Stihl AG & Co KG

D2014-0576 stihl.ceo Andreas Stihl AG & Co KG

D2014-1029 docmarten.clothing “Dr. Maertens” Marketin

Categories: External Articles, new gTLDs, udrp, URS Tags:

URDP Panel Is Not On Nationwide’s Side Denying Bid To Grab 3 Domains

July 4th, 2014 Comments off

A one member UDRP panel refused Nationwide Insurance Company bid to grab three domain names containing the word “nationwide”

The three domains at issues were; The Respondent registered the disputed domain name nationwideautolending.com on January 5, 2006, nationwideautoapproval.com on April 3, 2006, and nationwideautocredit.com on November 18, 2010.

Two of the three domains resolve to active websites that offer online auto loan application and approval services, said to involve a network of lenders and dealers throughout the United States that can providing financing for individuals with bad or no credit.

The disputed domain name nationwideautoapproval.com currently does not resolve to an active website.

Here are the revlevant facts and findings by the one member panel of William R. Towns:

“The Complainant sent a cease-and-desist letter to the Respondent on or about June 17, 2013, regarding the disputed domain name .1 The Respondent replied, declining to discontinue use of the disputed domain name, but subsequently added a disclaimer to the nationwidelending.com website. The Complainant sent a second cease-and-desist letter in August, 2013, to which it appears the Respondent did not offer a reply.

The Complainant maintains that the disputed domain names are confusingly similar to its NATIONWIDE mark, as each of the disputed domain names incorporates the Complainant’s mark in its entirety. The Complainant submits that it is widely known in the insurance and financial services industry, and that the Complainant and its licensed affiliates and subsidiaries have engaged in the business of providing numerous types of insurance and financial services throughout the United States for 88 years, the last 59 years of which have been under the NATIONWIDE mark. The Complainant asserts that the addition of generic terms such as “auto lending”, “auto approval”, and “auto credit” do not serve to distinguish the disputed domain names from the Complainant’s mark. According to the Complainant, its NATIONWIDE marks are among the most recognized, valued and famous marks in the insurance and financial services industry, and the Complainant maintains strict control over the use of the NATIONWIDE marks. The Complainant asserts that the distinctiveness and fame of the Complainant’s NATIONWIDE marks has been recognized in prior decisions under the UDRP.2

To the contrary, the Complainant contends that the Respondent is attempting to pass off the active websites to which the disputed domain names resolve as affiliated with the Complainant. The Complainant submits that the Respondent’s websites offer referrals to third party auto and auto loan services. The Complainant describes the services offered by the Respondent as lead generation services to third parties that compete directly with auto financing and loan services offered by the Complainant under its NATIONWIDE marks.

In light of the foregoing, the Complainant asserts that the Respondent registered and is using the disputed domain names to profit from and trade off the Complainant’s goodwill and divert to the Respondent’s active websites Internet traffic rightly intended for the Complainant to its competitors. The Complainant submits that such use does not constitute use of the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names within the meaning of the Policy. The Complainant further asserts that the posting of a disclaimer on the Respondent’s nationwideautolending.com website only after receipt of the Complainant’s cease-and-desist letter is evidence of bad faith.

B. Respondent

The Respondent categorically denies all claims and accusations by the Complainant that he registered or is using the disputed domain names in bad faith. The Respondent submits that he chose the disputed domain names because they are generic in nature and accurately describe the Respondent’s business.

The Respondent maintains his business provides assistance to subprime credit customers through local dealers and lenders in all 50 US states. According to the Respondent, he started his business upon registering the disputed domain name in January 2006, and had absolutely no knowledge that the Respondent was using the NATIONWIDE mark with auto loans or auto financing. The Respondent submits that it was not until being contacted by the Complainant in 2013 that he had any idea that the Complainant provided auto loans.

The Respondent further submits that he began using the disputed domain names and almost two years before the Complainant begin making auto loans.

The Respondent, relying on archived records of the Complainant’s natiowide.com website available at “www.archive.org” (commonly known as the Internet Archive), contends that the Complainant did not begin making auto loans until sometime in 2007, following the Complainant’s creation of Nationwide Bank.

The Respondent maintains that he made clear when contacted by the Complainant in 2013 that the disputed domain names were selected because they are generic and accurately describe the Respondent’s business.

The Respondent maintains there are a number of other companies that are making a similar generic or descriptive use of the term “nationwide” in connection with auto loans and auto financing, including Nationwide Auto Finance, LLC (“www.nationwidetoledo.com”), in business in Ohio since 2002; and Nationwide Loans (“www.nac-loans.com”), a Chicago, Illinois based business that, according to the Respondent, has been making subprime auto loans since 1954, and currently operates in 24 states. The Respondent observes that these companies, like the Respondent, are making generic or descriptive uses of the term “nationwide” and began doing so before the Complainant begin making auto loans through Nationwide Bank. The Respondent further points to third-party registrations of nationwide-formative domain names used in connection with various other goods and services

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s NATIONWIDE mark

In this instance, each of the disputed domain names incorporates the Complainant’s NATIONWIDE mark in its entirety, and the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, whichever test is applied. In the Panel’s view, the confusing similarity of the disputed domain names to the Complainant’s NATIONWIDE mark is not overcome merely by the addition of descriptive terms such as “auto lending”, “auto approval”, and “auto credit”.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Respondent asserts that he has established rights or legitimate interests in the disputed domain names based on making a good faith, descriptive use of the disputed domain names prior to any notice of this dispute. The Respondent avers this was his intention when registering the disputed domain names, and that the tem “nationwide” as incorporated in the disputed domain names is being used in keeping with its dictionary meaning and not in the trademark sense. The Respondent claims to have so informed the Complainant when first notified of this dispute by the Complainant in June 2013, at which time, by the account of both parties, he informed the Complainant he had no intention of relinquishing the disputed domain names used with his business since as early as January 2006.

A number of UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, at least in circumstances indicating that the respondent was not aware of the complainant’s trademark rights or believed in good faith that such use would not violate the complainant’s rights. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424.

Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest.

The Panel considers that the word “nationwide”, when used in its commonly understood or dictionary meaning, is descriptive or laudatory in nature.

It is this descriptive quality of the term “nationwide” that the Respondent maintains is why the disputed domain names were registered for use with his business. The Panel notes that Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.

The Panel is inclined to accept that the Respondent would have been aware of the Complainant and the Complainant’s NATIONWIDE mark when registering the disputed domain names. However, as the decisions referred to above indicate, in cases where a respondent makes a plausible claim of descriptive use, the dispositive question is not necessarily limited to whether the respondent was aware of the complainant’s trademark rights, although such knowledge clearly is a relevant consideration.

The larger question as framed in these decisions is whether, in light of the totality of facts and circumstances of a given case, it has been demonstrated that the respondent’s real aim was to exploit and profit from another’s mark.

Given the foregoing, and in view of the Panel’s findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

After careful consideration of the totality of facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain names in bad faith.

Notwithstanding the acknowledged strength and reputation of the Complainant’s NATIONWIDE mark, a plausible good faith basis for the Respondent’s registration of the disputed domain names has been asserted (and not rebutted), and a sufficient showing has not been made that the Respondent’s proffered explanation more likely than not is a pretext, or that the Respondent’s objective in registering the disputed domain names more likely than not was cybersquatting.

As noted earlier, the Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.

At the time of the registration of the disputed domain names, the Complainant’s historic use of the NATIONWIDE mark entailed various insurance and financial services.

The financial services claimed in the Complainant’s trademark registrations, at least prior to registration of the NATIONWIDE BANK mark in October, 2007, related to brokering and distribution of mutual funds, money market funds, pension plans, IRA plans, annuities, stocks and bonds, and mortgage lending. The Complainant has asserted common law rights in the NATIONWIDE mark for auto loans dating back to 1983, but on balance and based on the limited evidence normally permitted under the Policy, the Panel finds this assertion insufficiently convincing. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner.

It would appear from the documents, however, that such loans were available only to members of the credit union and equally, it is not clear to what extent the credit union advertisements were directed to or seen by the general public.

The Complainant’s asserts that it maintains strict control of the NATIONWIDE marks, but the Panel notes that it nonetheless did not object to the Respondent’s registration and use of the disputed domain names until June 2013.

This Panel, in accord with other UDRP panels, generally has declined to apply the doctrine of laches in proceedings under the Policy.

The Panel nonetheless recognizes that lengthy delays in seeking legal or administrative remedies can have the effect of eroding the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent’s alleged bad faith in registering and using a domain name.

Accordingly, for the reasons summarized above, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.

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Owner Of Ruraliving.com A $7 Billion Company Loses UDRP On RuralLiving.com

July 2nd, 2014 Comments off

AgStar Financial Services, ACA (“Complainant”),  just lost its bid to grab the domain name RuralLiving.com from Ashantiplc Ltd, who was represented by John Berryhill, Esq. , who also in full disclosure represents our company in UDRP cases.

The complainant owns the domain name Ruraliving.com (missing the other letter “L”) along with a trademark on the term (also with the missing “L”)

The domain holder registered the domain name RuralLiving.com in August 3, 2005, the Complainant’s trademark was issued by the USPTO on January 17, 2006.

Yet just Two members of the three member panel of HPaul M. DeCicco and James A. Carmody denied the claim.

Panelist Houston Putnam Lowry filed a dissenting opinion, voting to transfer the domain to the Complainant.

Panelist Lowry believed the domain should have be giving to the trademark holder because it was listed for sale at SnapNames.com with a minimum bid of $10,000 or more and quite troubling that since the domain holder held the domain under privacy:

“I would hold this gives rise to a rebuttable presumption of bad faith registration and use.”

Here are the highlights of the rest of a very long opinion:

By way of background, Complainant is one of the largest farm credit associations in the nation with assets in excess of $7 Billion USD.

Complainant provides a full range of financial services including mortgage lending, leasing, consulting, and related services focused at farmers and others in the agricultural and related industries.

Complainant is also the premier provider of custom financing solutions for agribusinesses including, among others, equipment manufacturers, distributors, agricultural wholesalers and retailers, farm commodities merchandisers and processors, and agricultural finance companies that provide services to suppliers, distributors and manufactures. In addition to assisting the agricultural business sector, Complainant also provides financing services to consumers living in farm communities and who are interested in obtaining financing for residences, personal projects and hobbies. Complainant is well-known among the farm communities, especially those located throughout the Midwest.

“Registration and Use in Bad Faith

By a majority vote, the Panel determines Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii).

First of all, Respondent registered the disputed domain name in August 3, 2005, which is substantially before Complainant’s trademark was issued by the USPTO on January 17, 2006.

Therefore, Respondent could not have registered the disputed domain name with Complainant’s mark in mind. Respondent’s statement that it did not register the disputed domain name with Complainant’s rather generic mark in mind further corroborates this finding.

Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii).

Respondent is perfectly entitled to negotiate and sell the domain name at a market value determined by its primary meaning.

The Panel finds Policy ¶4(a)(iii) not satisfied.

Having failed to establish all three elements required under the ICANN Policy by a majority vote, the Panel concludes relief shall be DENIED.

Accordingly, it is Ordered the domain name REMAIN WITH Respondent.”

Here is the dissenting opinion of Houston Putnam Lowry:

“”I differ from my brother Panel on the bad faith element.

Complainant claims Respondent registered and is currently using the domain name in bad faith under Policy ¶ 4(b)(i).

Respondent is offering the disputed domain name for sale through the SNAP names domain name auction site with a minimum bid of $10,000. Prior panels have routinely determined offering to sell a disputed domain name for an excessive price is an indication of bad faith under Policy ¶ 4(b)(i).

Complainant claims Respondent’s previous use of the disputed domain name to resolve to a website displaying links that compete with Complainant indicates bad faith use and registration.

Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name.

Complainant claims Respondent is attempting to attract Internet users to its resolving website for commercial gain by causing confusion between the disputed domain name and Complainant’s RURALIVING mark.

Complainant claims Respondent’s bad faith is further demonstrated by Respondent’s prior use of the domain name in connection with generating revenue as a click-through website.

Respondent does not dispute it gets an economic benefit of some kind from the “click through” links.

I would find Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

Finally, Respondent registered the disputed domain name using a privacy service. I would hold this gives rise to a rebuttable presumption of bad faith registration and use under the penumbra of Policy ¶ 4(b) in the commercial context. Respondent has done nothing to rebut that presumption by showing a bona fide reason to conceal its true identity from the marketplace.””

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UGN.com Under Same Ownership For 10+ Years Hit With UDRP

July 2nd, 2014 Comments off

The three letter domain name UGN.com which appears to have been owned or under the control of  Boca Database Services, Inc since at least 2004, has been hit with a UDRP.

The domain name is not resolving.

The last entry that Screenshots.com has for the domain name is from 2009, and it looks to be an very simply placeholder.

The name of the COmplainant is not listed but their is suprinly only 1 trademark in the USPTO for the term UGN and that was filed on March 1 2014, by United Golf Network, Inc. of Winston Salem NC.

All I can find on The United Golf Network is they have an App in both the Apple and the Android App store.

We will be watching this case.

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