Brand Name Domain Name

Complainant is a Swiss limited liability company founded in 1866 by Henri Nestle and sells products and services all over the world in various industries, in particular the food industry, including baby foods, breakfast cereals, chocolate and confectionary, beverages, bottled water, dairy products, ice cream, prepared foods and food services.  It is the owner of over 100,000 international and national trademark registrations worldwide, consisting in or including "NESTLE".  Complainant has also registered the world "nestle" in domain names under several different gTLDS and ccTLDs and operates the website www.nestle.com as a main portal aimed at promoting its activities worldwide.

Respondent registered the domain name, "nestle-cereales.com" in September 2008, without Complainant's authorization, which at the time of the Complaint's filing pointed to a website"wwwnestle-cereales.com" where Internet users could find several sponsored links (pay-per-click pages) redirecting mainly to third party websites.  There was also a link reproducing the "Nestle" brand and by clicking on it, Internet users were redirected to an additional pay-per-click page where other dedicated links also displaying the brand "Nestle" were published.

As soon as Complainant became aware of Respondent's registration and use of the disputed domain, its legal representatives sent the domain holder a cease and desist letter, which went ignored.

Although the disputed domain included the descriptive term "cereales" (meaning "cereals" in Spanish), the Panel held that this did not exclude the confusing similarity with Complainant's NESTLE trademark, which was incorporated in whole in the disputed domain.  In addition, the evidence showing that Respondent used the domain name to host a "link farm", i.e. a list of sponsored links, was sufficient to determine that Respondent did not have any right or legitimate interest in the domain and had registered and used it in bad faith. Indeed, the Panel noted that the circumstances amounted to unduly taking advantage of the well-known nature of Complainant's mark to attract more Internet users and generate revenue presumably to Respondent's benefit in the form of pay-per-click.

As a further element evidencing Respondent's bad faith, the Panel noted that there was an attempt by Respondent to avoid submission to the UDRP proceeding, apparently by means of a privacy service.  The initial Respondent as per the Complaint initially submitted was "PrivacyProtect.org" of the Netherlands, who had been involved in prior UDRP proceedings, all of them decided for the transfer of the disputed domain name.  The WhoIs details of the disputed domain in this case were then changed to "Private Registration" of Panama and the Complainant chose to file an amendment to the Complaint.  The Panel noted a change in the ownership of a domain name after a cease and desist letter has already been dispatched by a trademark owner is often an indication of bad faith, i.e. a way to create difficulties for a trademark owner to assert its rights in a UDRP proceeding.  Similarly, a change in the WhoIs details is another evidence of bad faith.  The Panel ordered transfer of the disputed domain.  Societe des Produits Nestle S.A. v. Private Registration, WIPO Case No. D2009-1021

 

No Double Jeopardy for Domain Name Dispute

Complainant, Ashley Judd, is a famous actor who has appeared in multiple television series and films.  The Respondent, Jeff Burgar, carries on activities under the name "Alberta Hot Rods" and various other names.  He registered the disputed domain name, "ashleyjudd.com", in 1996 and has a history of registering domain names consisting of the name of a famous actor, celebrity or company followed by the generic ".com" top level domain suffix. 

Complainant alleged to have taken immediate steps to have the domain transferred to her on becoming aware of Respondent's registration of it in March 2009, by sending a cease and desist letter that was ignored.  In seeking transfer, Complainant alleged that she had common law rights in the mark ASHLEY JUDD, that Respondents have no legitimate right or interest in the domain, which it registered and is using in bad faith.  Complainant also raised that laches is not a defense under the UDRP and that, in any case, it could not be invoked by Respondents since they had suffered no prejudice and had not themselves behaved equitably.

The Panel agreed that Complainant had satisfied the requirements of the Policy and ordered transfer of the domain.  In so holding, the Panel further noted that where, as here, the requirements of the UDRP have been satisfied, there is no separate defense of laches.  The Panel further held that, notwithstanding, any such defense would fail in this case based on the facts, since there was no evidence of detrimental reliance on Respondents' part and they had not acted equitably.  Ashley Judd v. Alberta Hot Rods, Jeff Burgar, WIPO Case No. D2009-1099

Domain Dispute for Sport

Complainant is one of six major American film studios. It is a subsidiary of News Corporation, the media conglomerate owned by Rupert Murdoch, and was founded in 1934 as the result of a merger between Fox Film Corporation and Twentieth Century Pictures.  Complainant owns over 500 active worldwide registrations in over 80 countries for its FOX and FOX SPORTS marks, dating back to 1995.  Among others, Complainant offers online sports entertainment, including news, information, up-to-date scores, play-by-play coverage of games, and streaming videos, accessible by Internet users globally.  Its television broadcasts under the FOX SPORTS mark reach more than 99 million viewers in the United States and over 1 billion viewers worldwide.  The website www.foxsports.com consistently enjoys a ranking among the top 400 websites visited on the Internet as a whole and on average is visited by more than 13 million visitors each month.

The disputed domain name, "livefoxsports.info", was used in connection with Respondent's website which purportedly offered sports coverage similar to that of Complainant, namely coverage of the National Football League games.

In transferring the disputed domain name to Complainant, the Panel held that the addition of the term "live" is insufficient to distinguish it from relevant FOX SPORTS marks.  There was no indication of any right or legitimate interest that Respondent may have in the domain and, given the fact that Respondent offered online sports coverage identical to those offer by Complainant, it was evident that Respondent's only purpose in registering the domain was to divert traffic away from Complainant's website to its own for commercial gain and by confusing consumers into believing that Respondent's site was sponsored, endorsed or otherwise approved of or authorized by Complainant, falling squarely within the terms of paragraph 4(b)(iv) of the Policy.  Twentieth Century Fox Film Corporation v. Domains by Proxy, Inc./Samina Rahman, WIPO Case No. D2009-1121

Model Domain Name Dispute

Complainant is a California-based model, actress, sports broadcaster, columnist and producer.  She began her career in show business in the 1980's as a cheerleader for the Los Angeles Rams.  Throughout her career, Complainant has continuously used the name "Lisa Guerrero".  She owns and operates a website at www.lisaguerrero.net, which site attracts a high volume a web surfers, including fans and consumers interested in Complainant's career, services, and incidental produces such as autographs and other memorabilia.

On February 5, 2002, Respondent registered the domain name "lisaguerrero.com", using the domain in connection with a "click through" site offering a variety of services and wares.

Ordering the transfer of the disputed domain name to Complainant, the Panel held that Complainant had sufficiently developed a reputation in the area of entertainment services, namely acting, modeling and broadcasting, to support a finding of common law rights in her name and that the disputed domain name was confusingly similar to her common law trademark.  Moreover, there was simply no evidence that Respondent had any legitimate right or interest in the domain name and Respondent's use of the domain name for the commercial purpose of diverting Internet traffic intended for the Complainant constituted bad faith.  Lisa Guerrero v. Whois Protection, WIPO Case No. D2009-1055

Respondent Smelling Like Roses in Domain Name Dispute

Complainant sells flowers via the Internet worldwide and owns marks registered in Germany for FLORAPRIMA. Complainant has been using FLORAPRIMA as its company name since 2001 and the earliest of its trademarks was registered in June 2007.

Respondent also sells flowers, as a wholesaler of fresh cut flowers for the United States market. It holds a 90% interest in "Floraprima, LLC", a limited liability company organized under the laws of Texas.  Respondent registered the disputed domain name, "floraprima.com" in November 2001.

Respondent argued, among other things, that Complainant's trademark rights only apply in Germany.  The Panel rejected this argument on the grounds that it is enough that Complainant demonstrated rights in a trademark granted in any jurisdiction.  For purposes of the Policy, in determining whether domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, previous panels have noted that the requirement can be satisfied by proof that the complainant is the owner or licensee of a registered mark anywhere in the world - not just in the country of the respondent's residence.  To find otherwise would artificially limit the scope of the Policy to particular state boundaries.  Based thereon, the Panel found that the disputed domain name was identical to Complainant's registered mark.

Notwithstanding, the Panel denied transfer of the disputed domain name to Complainant, despite the fact that the disputed domain name reverted to a "portal" or "landing" website which contained links in German that each reverted to pages containing a miscellany of other links (some flower related, some not).  In denying transfer, the Panel found that Respondent had provided sufficient evidence that it was operating a legitimate business associated with the disputed domain name (including corporate documents, a shareholder certificate, an agreement for sale and promissory note).  In addition, the Panel considered that Complainant's trademarks were relatively new, having been registered 6 years after the creation of the disputed domain name in 2001. While Complainant claimed to have first used its marks in 2001, there was no evidence to support its claim and no evidence that Complainant had a trading reputation in the United States or Ecuador, where Respondent does business.  FloraPrima GmbH v. Rosaprima Cia. Ltda./Flora Prima, WIPO Case No. D2009-0117

Domain Name Day at the Spa

The Complainant operates a business based in Los Angeles, California, supplying nail and body care products under the mark SPARITUAL.  Complainant has registered the mark in various countries, including the USA and Mexico, and has pending applications to register the mark in other countries, including Canada.

Respondent is a consultant to a business operating under the name "The Spa Ritual" in Calgary, Canada.  The disputed domain name, "sparitual.com", was registered by Complainant on the business' behalf on October 19, 2006 and points to a website promoting the spa and its facilities, including a boutique selling body care products and noting "Check back soon for online shopping of our exclusive Spa Ritual products".

The Panel denied the Complaint on the evidence that Respondent made demonstrable preparations to use the domain name and the corresponding name "The Spa Ritual" in connection with a bona fide offering of services before any notice to her of a dispute. This evidence included Respondent's retention since 2005 as a consultant to establish, develop, own and operate a full-service day spa in Calgary, Canada and, in connection with that retention, Respondent's preparation of a site assessment report, a strategic business plan, the retention of a design firm which made a proposal regarding branding and a logo, and Respondent's preparation of a concept document which included a proposed layout and design for the spa prior to its opening.  Although Complainant asserted that it had made sales in Canada since at least February 2005, there was no evidence of the extent of those sales and no basis to infer that Respondent must have been aware of them at any particular point in time.

Significantly, the Panel opined that an application to register a trademark in the United States or other countries does not of itself constitute notice of a dispute to a party in Canada for purposes of paragraph 4(c)(i) of the Policy and that the doctrine of constructive notice under US trademark law does not assist in cases under the UDRP where the respondent is outside the USA. SpaRitual, LLC v. Vivienne O'Keeffe, WIPO Case No. D2009-0066

Decedent Domain Name

On December 5, 1999, Respondent registered the domain name "celiacruz.com".  Celia Cruz was a world famous Cuban salsa singer who died on July 16, 2003. She was internationally recognized as the "Queen of Salsa" and during her lifetime received countless awards and honors, including three Grammy Awards, four Latin Grammy Awards, the Lifetime Achievement Award of the Smithsonian Institution and many others. Several streets have even been named in her honor.

The disputed domain name resolves to a portal site with links to a variety of businesses including travel, accommodation, finance, electronics, insurance and many other services.  The site recognized that Celia Cruz was "one of the greatest musical talents of the 20th century" and featured in bold type the words "Great Collection of Celia Cruz Music CDs" which provided a link to a site at www.eTours.com providing travel and accommodation services.  Relying on the common law rights of Celia Cruz having descended to her estate, her estate's sole executor appointed Complainant as his attorney-in-fact to bring this WIPO action, alleging that Ms. Cruz, and by devolution her estate, owns and controls common law trademark rights in the name Celia Cruz.

Ordering transfer of the disputed domain name to Complainant, the Panel found that the record clearly established that the deceased was one of the best known and most widely acclaimed performers in her field, having been known and promoted by reference to her name to such an extent that she had established strong and substantial common law trademark rights in the name "Celia Cruz".  In the absence of a response by Respondent, the Panel assumed that Respondent could not rebut Complainant's prima facie showing that Respondent had no rights or legitimate interests in the disputed domain. Since the disputed domain name was registered long after the name and reputation of Celia Cruz had been established and the honors conferred upon her had been widely publicized, it was presumed that Respondent's use of the domain name as evidenced by its website content had been for the purpose of capitalizing on her name's reputation to attract Internet users to its website for commercial gain.  Eventus Management, Inc. v. Twenty Four Hours, LLC, WIPO Case No. D2009-0067

Derogatory Domain Name Dispute

Complainant, an airline operating under the AIR AUSTRAL trademark, filed Complaint against Respondent for its registration of the domain name "airaustralsucks.com".  Respondent operates, among other things, a website at "www.suetheairlines.com" on which consumers are encouraged to take legal action against airlines with whom they are in dispute. The disputed domain name was registered on June 19, 2008, the same day that Respondent registered several other domain names comprised of the trademarks of other airline companies with the suffix "-sucks".  At the time of the Complaint's filing, the disputed domain name was "parked" and contained click-through links to other sites, including travel related sites.

The Panel noted that the situation in relation to cases containing derogatory suffixes such as "sucks" is contentious.  The panel majority holds that a domain name consisting of a trademark and a negative term is confusingly similar to the complainant's mark. 

In considering whether Respondent had rights or legitimate interests in the disputed domain, the Panel interestingly noted that one potentially relevant fact in this case was the existence of Respondent's cybergriping site under a different domain name "suetheairlines.com".  Even though that domain name was not under dispute in this case, the Panel took into consideration that it was used by Respondent to post a website on information about various means by which airlines (in general) could be sued.  Use of a domain name that contains a complainant's mark to identify a genuine cybergriping site about that complainant can give rise to a legitimate interest in that domain name "or an important vehicle of online critique and discussion may be silenced."  In the Panel's view, the purchase of the disputed domain name for the purpose of operating a genuine cybergriping site would have been a more plausible claim if the domain was in fact being used for a gripe site about the Complainant and the Panel would have had little hesitation in finding for the Respondent. However, the disputed domain name was not being used for that purpose.  Instead, Respondent had left it parked as a click-through revenue generator, making its claim of legitimacy highly suspect.  In making the decision to transfer the disputed domain name to Complainant, the Panel further took into consideration the fact that whether such revenue generating links may be automatically generated by a parking service does not excuse such use.  As observed by numerous panels, a respondent is ultimately responsible for the content of a website generated by such technology.  Air Austral v. Tian Yi Tong Investment Ltd., WIPO Case No. D2009-0020

Disputed Domain Name for Adults Only

Complainant owns various trademark registrations for the mark "VIRTUAL SEX", with the first application filed in April 2000 and a first use in commerce dating back to 1994.  Complainant, which is female owned and operated, is a leading producer of "adult" films and has more than a 40% market share of the adult DVD market.

Respondent registered the disputed domain name, "virtualsex.com", on August 24, 1995 and set up a website for the sale of adult content DVDs, strip club webcam sites, sex chat rooms, adult dating services and "adult toys".  The site was established more than 13 years ago.

Respondent conceded that the disputed domain name is confusingly similar to Complainant's mark but made the contention that the mark is invalid as either "generic" or "merely descriptive".  In fact, Respondent claimed that he thought the disputed domain to be a generic term at the time of its registration.  Nonetheless, the general rule is that registration of a mark is prima facie evidence of validity and it is Respondent's burden to rebut that presumption, which Respondent failed to do. 

Denying the Complaint, the Panel held that a finding of Respondent's lack of rights or legitimate interests in the mark would turn on its analysis of the bad faith issue.  While Complainant alleged that it had acquired secondary meaning in the mark by August 1995 (when Respondent registered the domain), it failed to produce any evidence to support its allegation.  Moreover, Complainant failed to explain why it did not bring this action until 14 years after Respondent's registration of the domain and more than 13 years after Respondent had used the domain to resolve to a website at which products competitive to those offered by Complainant, as well products entirely different from those offered by Complainant, were offered for sale. Based upon the Panel's review of Respondent's website, it further concluded that its "diverse offerings" suggested that Respondent was trading on the descriptiveness of the term "virtual sex", rather than any goodwill attached to Complainant's mark.  In light of all these factors, the Panel held that Complainant failed to establish that the disputed domain name was registered and used in bad faith.  Digital Playground, Inc. v. Network Telephone Services, Inc., Dan Coleman, Frontier Credit Corp., and Harriet Walkup, WIPO Case No. D2009-0105

Domain Name Dispute Reactor

Complainant is an individual who operates a number of sites, including "torrentreactor.net", which provides software and services designed to help users locate and download "torrent files" (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent).  However, most, if not all, of the files promoted by Complainant or available for download were unlawful copies of software, movies, music, etc. -- in other words, works subject to copyright protection.

Respondent is an individual with a history of cybersquatting.  While the registration of the disputed domain name, "torrentreactor.com", predates the registration date of Complainant's domain name, Respondent did not obtain the registration until several years later after winning an auction process for the disputed domain name for the purported sum of $17,500.  Respondent used the domain to link to a parking service (through which he received revenue) and eventually forwards to a site that provides pornographic material.

Prior to the filing of the Complaint, Complainant and Respondent engaged in a series of negotiations.  Respondent offered to sell the domain to Complainant for a mere $150,000; Complainant countered with $30,000 and Respondent made a final offer of $50,000. Complainant then filed its Complaint, which made it pretty clear that Respondent's offer was rejected.

At the end of the day, the Complaint was denied.  Complainant asserted trademark rights in TORRENTREACTOR based solely upon its use of the domain name "torrentreactor.net" and various logos he created and used via the site.  However, mere use of a domain name, even if assumed for a long period of time and with many visitors, does not necessarily give rise to a trademark right.  While Complainant's failure to establish trademark rights was in and of itself sufficient to deny the Complaint, the Panel made note of a few other significant points, including a lack of merit to Respondent's argument that he has a right or legitimate interest in the domain because he paid $17,500 for it in auction.  The Panel deemed that fact irrelevant since domain names are often traded and auctioned off for profit and, it is often the case that domain names that are confusingly similar to an existing trademark fetch a higher price among cybersquatters.  In denying the Complaint, the Panel also noted the Respondent's prior history of cybersquatting and more than sufficient evidence to reach a finding of bad faith use by Respondent.

Notwithstanding the Panel's decision to deny the Complaint, it is significant to note that the Panel expressly noted that, in light of its finding of bad faith by Respondent, if Complainant was subsequently able to show that it had obtained the requisite trademark rights in the TORRENTREACTOR mark, it would not entirely rule out the possibility of the Complainant re-filing against Respondent (provided that the UDRP's relevant re-filing criteria were met).  In any event, the Panel's denial of the Complaint would not prevent either party from pursuing the matter further in a court of competent jurisdiction.  Alexey Kistenev v. Jinsu Kim, WIPO Case No. D2008-1870