iEstates.com

Well another day another horrible decision

A three member UDRP panel just gave away the domain name 32x.com to the Trademark holder of 32Red.

I have no idea of how 32x.com is “Identical or Confusingly Similar”  to a trademark for 32Red but that is what the panel found.  The panel also disregarded the fact that the complaints waited some six years before bringing the complaint.

John Berryhill represented the domain holder.

The complaint was brought by two Complainants.

The first complainant was 32Red Plc of Gibraltar, Overseas Territory of the United Kingdom and the Second Complainant is Trafalgar Media Limited of Gibraltar (together ‘the Complainant).

The Respondent was Baysound LLC of San Pablo, California

Here are the relevant facts and findings:

The Complainant carries on business as a provider of online gambling services and has done so since 2002 under the trade mark 32RED.

The Second Complainant is a wholly owned subsidiary of the First Complainant.

The Complainant advertises and promotes its “32 Red” brand extensively.

The Complainant contends that it is commonly known by its customers and the industry as “32”.

The Complainant owns the following registered trade marks:

32RED (word) under European Community trade mark number 2814424, registered on August 16, 2002;

32RED (figurative) under European Community trade mark number 2907426, registered on October 18, 2002;

32 (word) under United Kingdom trade mark number 2509861, registered on June 5, 2009

32 (word) under European Community trade mark number and 8398695, filed on July 1, 2009 and registered on January 21, 2010.

The Complainant has operated its main website at “www.32red.com” since 2002.

The Domain Name was first registered on June 4, 1996 by the company 32X Corporation in relation to web development services.

The Domain Name was acquired by Fred Hill on or about July 16, 2006. It was then transferred to the Respondent on or about August 1, 2006. Mr. Hill appears to own and manage the Respondent.

In 2006, the website connected to the Domain Name (‘the Website’) was an online gaming site branded “The Online Casino”. As of October 2007, the Website included links to the Complainant’s competitors such as 888.com and Party Poker.

“The Panel is satisfied that the Complainant has clearly established registered rights in the trade marks 32RED and 32.”

“The Panel is also satisfied that it has established unregistered rights in the trade mark 32 RED, however, the evidence submitted to establish unregistered rights in the mark 32, i.e.…

A UDRP has just been filed by SMA Solar Technology AG for the three letter domain, SMA.com

Here’s the really scary part

The owner of the domain is not a domainer.

The domain is owned by Specialized Micro Architects, a company’s who initials match the domain SMA.

The domain was first registered in 1995.

The oldest record on DomainTools.com for the domain is from 2001 and at that time the current domain owner owned the domain.

The domain does not currently resolve and Screenshots.com had nothing on file for the domain.

A quick check of the USPTO found 19 live trademark for the term SMA.…

Buydomains.com just got hit with another UDRP this time on the descriptive term VisibleDifference.com

The complainant this go around is the worldwide cosmetic brand of Elizabeth Arden which uses the term for a skin care product.

The domain name is parked and pulls up results for anti-aging skin products and other skin cremes.

However I couldn’t find a Trademark in the USPTO for the term registered to Elizabeth Arden.  I did find a Trademark on the term that belongs to Eli Lilly for a skin cream.  There are also multiple  trademarks for the term “The Visible Difference”

A quick Google search turned up results for other companies in the skin care industry using the same term like visibledifferenceskincare.com, visibledifference.us, avisibledifference.net, and visibledifferencebeauty.co.uk none of which are parked pages but what appear to be companies selling services and products in the same field as Elizabeth Arden.

This begs the question of what is worse for a brand owner, a parked page full of ads for skin products or business that are actually in the business of skin care that are using the trademarked term but do not appear to even sell the product.

Also I wonder if there is any defense available based on Elizabeth Arden apparent allowance of all of these other uses in the same industry of the term without objection (if that is the case)

This is the third UDRP on a BuyDomains.com domain name in a week.

FACI.com was lost last week and a UDRP was filed last week on another descriptive term, JoyfulEvents.com…

Our resident ICANN expert George Kirikos of Leap.com,  just got hit with a UDRP on a 4 letter .com.

Not unlike the UDRP that went against BuyDomains.com this week for Faci.com, another complainant is playing the UDRP lottery by trying to grab the domain name Pupa.com

How generic is Pupa?

A search under Google for Pupa returns a wikipedia.org entry for the term in the 1st position.

Pupa is “A pupa (Latin pupa for doll, pl: pupae or pupas) is the life stage of some insects undergoing transformation. The pupal stage is found only in holometabolous insects, those that undergo a complete metamorphosis, going through four life stages; embryo, larva, pupa and imago. (For a list of such insects see Holometabolism).”

You can also see a ton of images for Pupa’s here

It also has an entry on britannica.com

The complainant is MICYS Company S.P.A. of Italy which has two Trademark dated April 28th 2008.  The Trademark was filed in in 2003 and opposed in 2005 and granted in 2008.

One of MICYS trademark is for makeup products the other is for clothing, soaps and deodorants and travel bags.

The Italian company’s official site is pupa.it

There is another trademark on the term by another company as well.

The domain name itself is not parked, nor does it appear to be for sale.

The domain instead has information consistent with the wikipedia.org entry, actually carrying the dictionary term on the page.

As we have said before almost every dictionary word, two, three and four letter combination and every phrase or saying has been trademarked

The domain name was first registered in 2003.

On the first page of Google there is not one entry to the products of the trademark holder but there are suggestions for them on the bottom of the page.

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Buydomains.com which just lost a UDRP on the domain name Faci.com yesterday, just got hit with another UDRP filing today.

Today its another generic term at issue.

The domain is JoyfulEvents.com, which is going to a parked page returning results for things like Weddings and Quinceanera Dresses.

Although the complainant is not yet listed I did find a couple of live trademarks for the term “Joyful Events” filed by Joyful Events, LLC of Arizona.

The Trademark was obtained in June 2007.

The domain name was first registered in 2004.  The earliest record I could find on DomainTools.com is from June 2007 at which time RareNames a NameMedia property owned the domain name, so it would appear Namemedia owned the domain name prior to the US trademark.

We will keep you updated on this one.

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Yup someone just filed for a UDRP on a bunch of generic domain names including:

GoldCoins.org,  GoldPrices.com, RareCoins.com & RareCoins.org

The filing also includes the domains:

acoins.com
austinreport.com
goldinfo.net
silverinfo.net

All of the domain name are currently owned according to the whois by a “Hoa Nguyen” but were owned in December of last year by Aleks Krasnopolski of Linden, NJ

Not sure what is going on here including who the complainant is, but on the face of its looks pretty disturbing.…

A three member UDRP panel just awarded the domain name FACI.com, owned by BuyDomains.com to FACI Industries of Bolingbrook, Illinois

Here are the relevant facts and findings by the panel:

“Complainant markets its wares under the trademark FACI, which was registered as a word mark by the United States Patent and Trademark Office (“USPTO”) in 1998 and 2011.”

“Respondent, since 1999, has been in the business of registering domain names that become available when an existing registration expires. Respondent maintains a large portfolio of domain names. Respondent asserts that its policy is to register and maintain “only those domain names that incorporate common and/or generic dictionary words, phrases, acronyms, abbreviations and/or descriptive terms for which the available evidence suggests no single party has exclusive rights.” Respondent offers some of the domain names it has acquired for sale.”

“Respondent registered the Domain Name on May 27, 2003 after the prior registrant allowed it to lapse. ”

“The Domain Name resolves to a splash page which states that the Domain Name is for sale. ”

“The sale price for the Domain Name was listed by the Respondent as USD 18,800. Complainant alleges, and Respondent does not deny, that this amount exceeds Complainant’s out-of-pocket costs directly related to the Domain Name.”

“Respondent asserts that it has the right to register and use the Domain Name, in part because the term “faci” is “not only a common acronym, but also a common surname and a dictionary term subject to a diversity of third party use.” Respondent also points out that numerous entities unrelated to Complainant have registered and are using domain names containing the term “faci.” Because, Respondent asserts, the term “faci” is “no more than a common acronym, a surname, or dictionary term in three languages,” Respondent was entitled to register and use the Domain Name in a “first come, first served” basis.”

“The pivotal question is whether Respondent may have a right or legitimate interest in respect of the Domain Name because FACI constitutes not only Complainant’s registered trademark but also a variety of other words, acronyms, names and marks in circulation. ”

“The Panel concludes that Respondent does not have a right or legitimate interest in the Domain Name here.”

“It is undisputed that Respondent was aware of Complainant’s FACI mark when it registered the Domain Name.”

“Further in this regard, the fact that other people and entities make use of the term “faci” in various contexts does not by itself legitimize Respondent’s activities vis-à-vis this Domain Name.…

Rick Schwartz’s company eRealEstate.com, has just filed its response to the UDRP on the domain name SaveMe.com, filed by the owners of SaveMe.com.br.

The full response is posted on Ricks site erealestate.com

The response was written by Howard Neu, Esq, who blasts the complainant and asks for a finding of reverse hijacking.

Here are some of the more interesting parts of the response:

“”It is difficult to know where to begin to respond to the Complainant’s improbable and improper claims that have required Respondent to expend funds to defend.”

“The Complainant has no Trademark; while the Respondent registered the domain name SaveMe.com in 1996, which could not have been in “Bad Faith” pursuant to the Rules, the Complainant did not even exist until 2010 and registered the domain name SaveMe.com.br in 2010 and is attempting to use the UDRP Process to hijack the bigger and better domain name SaveMe.com  on the spurious pretext of “unlawful and exploitive actions” of the Respondent.”

“It is really a shame that the UDRP Reverse Hijacking Rules do not have more serious consequences for those, such as counsel for the Complainant, who know that they have no UDRP Action, but bring it anyway on the hopes of stealing a domain name from the rightful owner.”

“Complainant either ingenuously or more likely, knowingly, states “It is undeniable the confusion caused by Respondent’s domain to complainant’s customers, since the disputed domain is a simple typographic error to complainant’s domains.”  We are not sure how to respond to this ridiculous statement as it is so outrageous as to defy response.  15 years after Respondent registered SaveMe.com, Complainant registered SaveMe.com.br, using the country code TLD to divert traffic from Respondent’s domain.  How can that possibly be a typographic error by either party?”

“The only “bad faith” that can be absolutely proven in this case is that of the Complainant.”

“At the time that Complainant registered SaveMe.com.br, it did so in bad faith, knowing that Respondent had been using SaveMe.com in one way or another for over 15 years; had developed substantial traffic to the site; and Complainant wanted to steal that traffic for its own use, just like it now wants to steal the domain name for its own use.”

“Complainant makes a number of libelous statements concerning alleged unethical and illegal conduct of Mr. Rick Schwartz, who is not a party to this action, but is a principal in Respondent corporation.  None of these allegations are proper in a UDRP Action and will not be responded to here.  Suffice it to say that a separate libel action against the complainant is being seriously considered.”

“A definitive discussion and ruling on what comprises Reverse Domain Hijacking was provided by the panel in Prime Pictures LLC v.…

In a case that bears some resemblance to the Saveme.com UDRP, a one member panel just denied the claim of a trademark holder for the generic domain name RentFaster.com

In this case like Saveme.com a domain holder registration predated the trademark holders registration and that simply carried the day for the one member panel.

Here are some quick facts and findings:

The domain holder registered the domain name RentFaster.com on July 23, 2000.

The Complainant registered several  trademarks  on the term “Rent Faster” with the Canadian equivalent to the USPTO on June 26, 2009, alleging its use of the mark began in 2003.

The Complainant’s argument was that it should be awarded the domain since the domain was going to a parked page which “hosted advertisements for Complainant’s competitors, from which Respondent receives click-through fees and was used “to disrupt Complainant’s business.”  The Complainant further alleged that “Respondent registered and uses the domain name to commercially benefit from Internet user confusion.”

The one member panel found that the:

“”Complainant has failed to submit sufficient information to support the contention that that Respondent is not correct as to the registration date, or to establish Complainant’s trademark rights prior to Respondent’s domain registration.”

“Complainant has failed to establish that Respondent registered the rentfaster.com domain name in bad faith because Respondent’s registration predates Complainant’s rights in the marks.”

Clear enough.

Why a domain holder has to spent $5,000 to defend such a obviously flawed action continues to amaze me, but I expect the same outcome on the pending Saveme.com UDRP.

The domain holder did not ask for a finding of Reverse Domain Name Hijacking (RDNH) so the panel did not deal with that issue.
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A UDRP has been filed on the domain name Sidetrack.com.

The domain name is parked but with reference to pretty general stuff including a lot of links to travel sites.

Side track is a common expression and a dictionary word.

According to wikipedia.org “Side Track is  railroad track that is auxiliary to the main track”.

According to thefreedictionary.com, Side Track means:

1. To divert from a main issue or course: I was sidetracked from my work by an unexpected visitor.

2. To delay or block the progress of deliberately: “a bill that would sidetrack food irradiation in this country”.

3. To switch from a main railroad track to a siding.

The complainant  is Side by Side, Inc./dba/ Sidetrack.

Doing a quick check of the USPTO Side by Side, Inc. owns 3 of the 5 trademark filed on the term “Sidetrack” (the other 2 are owned by different company’s)

The earliest registration by the complainant company was 2006.

The domain name was first registered in 1998.

Interestedly enough, when it comes to the name of  the company bringing the complainant, Side by Side Inc. we note that the term “side by side” has 9 federal trademarks, but none are owned by the company bringing the complaint.

3 trademarks are on the term side-by-side

There are 6 Trademark for Side By Side.

None seems to be owned by the complainant.

However the complainant bringing this UDRP does own the domain name Sidebyside.com.

Maybe one of the trademark holders of “side by side” should bring a UDRP against the complainant for its domain.

Also it should be noted that on the site sidebyside.com of the complainant the term “Side Track” is not mentioned even once.

Instead the site is dedicated to the sale of its Side By Side Leadership material.

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