iEstates.com

A three member UDRP panel had held in favor of the domain holder on the domain name Masai.com which was represented by John Berryhill.

The complaint was brought by Masai Clothing Company of Copenhagen, Denmark which holds several community trademarks from “several European countries”  on the term Masai.

Masai is also a dictionary word for the name of an African Tribe.

Here are the relevant facts and findings by the panel:

The domain name was originally registered on May 15, 2000. It currently routes to a website posting directory links to sites related to Africa and travel.

“According to archives available at “www.archive.org”, the website in 2000 advertised a Chicago-based software services company named “Masai Management.” From 2001 to 2005 the website displayed instead text-generated directory links referring to a number of categories (often travel related).”

“In September 2005, the website displayed an African animal scene banner, then later in 2005, the site displayed numerous links relating to African travel destinations. Near the end of 2005, there are no available archives.”

“Screen captures of the website on September 15, 2008 show a photo of what appears to be African tribes-people, with a search box, an appearance that is consistent until September 2009″

“Respondent contends that the links were generated by a third-party search result service provider. Respondent also appears to make the debatable assertion that a Respondent absolves itself of responsibility for the appearance of its website if a third party actually generates the content. Although Complaint Annexes 8 and 9 are ambiguously presented, the Response nonetheless concedes that “[a] recent change in service providers by the Respondent caused a brief and incidental display of subject matter relating to clothing.”

Based upon this concession, Complainant’s evidence, and other evidence bearing upon the appearance of the website during years prior to the time of Complainant’s Annexes 8 and 9, the Panel finds that there was a brief display of links on Respondent’s website that directed users to Complainant’s competitors in the recent past. ”

Those links are no longer present.”

“Whether or not that recent display of links to competitors was a deliberate act for which Respondent has responsibility does not, in the Panel’s view, shed light on the question of bad faith registration nearly six and one-half years ago. ”

“The Panel appreciates that it can be difficult for a complainant to prove a respondent’s intention at the time of registration.”

“The only allegations touching on the element of bad faith registration are limited to the following: “It is held that the Respondent has registered and used the domain name to disrupt the Complainant’s business.…

AriGoldberger just successfully defended a UDRP on the domain name Stage.com, from a complaint brought by Specialty Retailers, Inc.  which owned a trademark on the term “Stage”, despite the fact that the domain name was parked and that the domain holder offered to sell the domain to the Complainant for hundreds of thousands of dollars.

Here are the relevant facts and finding by the TWO member panel:

“Complainant has used the STAGE mark in commerce since 1969 and has acquired a trademark registration with the United States Patent and Trademark Office Complainant, Specialty Retailers, Inc., is active in the retail business. Complainant has used the STAGE mark in commerce and in connection with retail store services, since 1969 and has acquired a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg. No. 1,525,762 registered February 21, 1989).”

“Respondent, a Canadian resident, registered the disputed domain name on June 4, 1997.”

“Respondent has only made a limited use of the disputed domain name and currently uses the disputed domain name for pay-per-click advertising”

” In 2012, Respondent’s representative has approached many companies, including Complainant, regarding their potential interest in purchasing the disputed domain name in the price range of $300,000- $500,000

“The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). ”

“The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common term. ”

“For multiple years, Respondent did not use the disputed domain name in a way that was considered a violation of Complainant’s trademarks and Complainant itself is of the opinion that it had no indication of Registrant’s alleged subjective intent at the time of registration.”

“Respondent has recently offered to sell the disputed domain name to at least 10 parties for an amount vastly exceeding Respondent’s documented out-of-pocket costs directly relating to the disputed domain name. ”

“However, the Panel is of the opinion that there are no other circumstances indicating that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant. ”

“According to the Panel, there are no indications that the Respondent targeted the Complainant, a trademark or service mark holder or any of their respective competitors when, in 1997, registering the disputed domain name, consisting of a dictionary word.…

A complaint was just filed with the World Intellectual Property Organization (WIPO) on the domain name Vanity.com.

Beyond the fact that an undisclosed complainant is trying to take away a dictionary word domain, the even more shocking part is that the domain name is not parked, not inactive but a fully developed site owned by a company named Vanity.com, Inc.

The site has a members area and has sections for Fashion, Beauty, Cosmetic Surgery, well all things about vanity.

The case number is 1443435.

The complainant is not yet listed.

The word Vanity has  27,900,000 results on Google so it’s an often used word.

The UDRP is well out of control now, where those wanting to acquire a domain name that is unavailable due to use or price, are now taking a risk free shot at grabbing the domain name from its lawful owner.

We need UDRP reform and we need it now.…

A one member UDRP panel has just awarded a pretty generic domain name StocktonGolf.com to  StocktonEnterprises, Inc. a company owned and operated by  professional golfer, Dave Stockton, a 10-time PGA Tour winner and a 14-time Champions Tour winner.

The panel rejected that the domain represented the city of Stockton and terms related to Golf.

The panel found that the ““Stockton” name is, and has been, synonymous with professional golf since at least the early 1970s and awarded the domain to him based off a finding of a common law trademark.
The Panel rejected the domain holders argument that it has been  using the disputed domain name in connection with a bona fide offering of goods or services.

Here are the relevant findings by the Panel:

“The service being offered is Internet Advertising.   Much like the Yellow Pages® provides visibility for print advertisers, the Respondent company provides visibility for Internet advertisers.  The Respondent started its commercial activities in 1999.  Its principals had been raising and competing with English Setter hunting dogs on a national level for several years.  Throughout the summer and fall of 1998, they had been discussing how they could most effectively and economically bring national exposure for a local product, like their English Setters.  That discussion of a private business gradually evolved into a much more global discussion of how people from around the world could get exposure for their products across a much wider global area.  In the late winter of 1998, the early discussion of resolving the problem of global recognition and exposure for a local product took a turn in a new direction as they began to learn and realize how a “global” medium like the Internet could help nearly any business sell their goods and services.  The solution to the global marketing problem eventually emerged as the ability of small and large businesses to economically promote their offerings in a network of advertising and information websites concentrated in the areas of real estate, hunting, fishing, dogs, travel, and golf.  While the Respondent registered some generic websites like <dogforsale.com> and <pheasanthunt.com>, it mostly registered geographic domain names, such as <huntnorthdakota.com>, <northdakotahunt.com>, <minnesotahunt.com>, <huntminnesota.com>, <dickinsonrealestate.com>, <topekagolf.com>, <bismarckgolf.com>, <stocktongolf.com>, etc.”

“The Respondent states that the website at the disputed domain name contains the following statement:

“Welcome to www.stocktongolf.com. A Global network directory of Stockton golf. Golf courses, tee times, golf shops, supplies,  equipment, golf real estate and related products and services.…

Facebook, Inc. has just filed a UDRP with the World Intellectual Property Organization (WIPO)  to gain control of the domain name Facebook.info

The domain Facebook.info was 1st registered in 2004.

The domain is not parked, but rather has a choice of taking you to its Twitter account or to something its calls Forum.Facebook.info

Many of the posts on the “forum” have such titles as “Copy Breitling Emergency Watch For Sale”, download Friends With Benefits, and “Watch Bad Teacher Online” certainly things Facebook, Inc wouldn’t want to appear to be involved in.

It look like the owner of the domain name has owned the domain and used it in the same fashion since at least 2005 and other than its IPO I’m not sure what has changed that has caused Facebook to finally wake up and file a UDRP on the domain.

The case number is D2012-1008

 …

Alton Flanders represented by John Berryhill, just beat back a UDRP on his domain name CondomWorld.com

The complaint was bought by Nicholas Perez who claimed he owned an US Trademark on the term CONDOM WORLD and common law rights to the term.

The complaint said he uses the term as the name of retail stores that sell condoms and other adult-oriented products in Puerto Rico.

Here are the relevant facts and findings from the one man Panel said:

“”There can be no bad faith registration of the domain name because no evidence has been presented that Complainant had rights in a trademark or common law mark at the time the domain name was registered. ”

“Furthermore, no evidence was presented that Respondent could have had, or did have, knowledge of Complainant’s business at the time the domain name was registered.

“Respondent registered the domain name in 1996.”

“Complainant has not presented evidence that he held either trademark rights or common law rights in the CONDOM WORLD mark as of the date the domain name was registered.”

” Moreover, there is no evidence that Respondent had any knowledge of Complainant in 1996 when Respondent registered the domain name.  Under these circumstances, there can be no bad faith registration of the domain name.”

“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date. . .when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”

Accordingly, it is Ordered that the <condomworld.com> domain name REMAIN WITH Respondent.

Bruce E. Meyerson, Panelist…

A UDRP has been filed for another three letter .com domain name

The UDRP was filed by Albir Hills Resort, S.A. against the domain SHA.com

SHA.com is owned by Telepathy, Inc.

The complainant does own a federal US Trademark on the term SHA with a filing date of July 27, 2007 and a registration date of August 26, 2008

According to DomainTools.com, Telepathy has owned the domain name since October 22, 2001 which is the oldest record they have on file for the domain.

Although the domain name is parked there are no suggest terms on the page.

The Albir Hills Resort is located in Spain and seems to own and operate the SHA Wellness Spa which has its own site at shawellnessclinic.com

Here is some information from the site:

“”SHA is a wellness clinic dedicated to improving the health and welfare of people through the fusion of ancient oriental disciplines and revolutionary western techniques. The main areas of SHA: SHA method, which is based on a highly cleansing diet based on macrobiotic principles adapted to modern times, balanced to the needs of each person, combined with natural therapies, anti-aging medicine unit ( healthy-aging), capable of slowing the aging process and prevent disease by applying the most advanced techniques and aesthetic medicine unit, which will allow you to achieve excellent results both facial and body at the way less invasive as possible. All designed and supervised by world renowned experts including Michio Kushi-known figure, a world leader in modern macrobiotics.”"

 …

Yesterday we wrote about a UDRP being filed by the owner eLeader.eu against eLeader.com.

However the case was actually decided yesterday by the Czech Arbitration Court (CAC) who awarded the domain name to the owner of eLeader.eu which is a company out of Poland.

Its another decision in my opinion one in which the panel decided it was going to give the domain to the TM holder and then found a way to hand it over saying that:

“”" The fact that the registration of this trademark was granted after the disputed domain name was registered does not prevent a finding of identity or confusing similarity.”"”

Right like someone in the US in going to be held to a standard of not only knowing every registered trademark somewhere in the world but domain holders apparently must also know every unregistered common law trademark as well, even if the company and common law trademark is in Poland.

Here are the relevant facts and findings by the panel:

The company name ‘eLeader’ (Full name ‘eLeader Sp. z o.o.’ equivalent of ‘eLeader Ltd.’), was registered in the year 2000.

“Although the mark eLeader was not registered until later, it has been a distinctive identifier of all eLeader’s products and services, internationally, since the inception of the company (year 2000), and as such eLeader asserts that, before the date of Domain Name registration, eLeader had established common law rights to the mark and that the mark had acquired secondary meaning.”

“The Trademark ‘eLeader’ Registered in Poland in 2004.”

eLeader owns the following ‘eLeader’ domains:

eleader.pl (since 2000)
eleader.com.pl (since 2000)
eleader.biz (since 2005)
eleader.eu (since 2006)
eleader.us (since 2011)

“The Respondent has never made any use of and has not demonstrated preparations to use the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

“This domain name has only ever contained a message regarding the domain being for sale and some unrelated advertising.”

“The Respondent is not making a legitimate non-commercial or fair use of the domain name. The domain has only ever contained a message regarding the domain being for sale and some unrelated advertising.”

i. The page shown on the Domain Name has listed this domain name as ‘For Sale’ at all times since its initial registration.

ii. Other than the ‘for sale’ message, and unrelated advertising, the domain has been parked and held passively for the duration of the registration.…

The owner of the domain name name eLeader.eu has just filed a UDRP against the owner of the domain name eLeader.com

According to eLeader’s site, it is:

“one of the world’s top mobile innovators in the smartphone business software market, with experience from the beginning of the smartphone industry.”

“eLeader’s state-of-the-art mobile enterprise solutions and associated cloud services are used today by global and national companies in over 50 countries worldwide.”

The corporation filing the complant is headquartered in Poland but has a US office in Colorado.

I checked the USPTO and did not find any live Trademarks for the term eleader but three dead ones.

The domain name eLeader.com was first registered in 2003 and the current owner of the domain has owned it since at least 2004 according to Domaintools.com

The domain in question currently goes to a landing page with a big “this domain is for sale” on the top of the page.…

Path Media Holdings, LLC (“Complainant”) just suffered what appears to be its 1st loss on a UDRP on its Girls Gone Wild Trademark on the domain name girlsgonewild.name

And here’s the most amazing part, the domain holder did not even respond to the complaint.

At the end of the day, the domain name at issue was registered a year before the trademark was filed and the pre-registration of the domain to the trademark carried the day.

Here are the relevant facts and findings by the panel:

Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its GIRLS GONE WILD mark (Reg. No. 4,010,741 filed June 18, 2007; registered August 16, 2011).

Respondent registered the <girlsgonewild.name> domain name on February 3, 2006.

The second question is whether Respondent’s <girlsgonewild.name> domain name is identical or confusingly similar to the GIRLS GONE WILD mark.

Respondent has chosen to take Complainant’s GIRLS GONE WILD trademark and to use it in his domain name, creating the likelihood that internet users would assume that it was an official domain  name of Complainant and that , if used, it would lead to an official website of Complainant;                              

Complainant does not make any contentions regarding whether or not Respondent is commonly known by the <girlsgonewild.name> domain name.

As Respondent did not respond to this case, the Panel nevertheless notes that Respondent failed to submit evidence that he is commonly known by the disputed domain name and the inference must therefore be that he is not so known.  As for the evidence in the record, the Panel notes that the WHOIS information lists “Jim durflo” as the registrant of the disputed domain name, which the Panel  finds is not similar to the <girlsgonewild.name> domain name.  Based on the WHOIS information, the Panel therefore finds that Respondent is not commonly known by the <girlsgonewild.name> domain name for the purposes of Policy ¶ 4(c) (ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c) (ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).…