Domain Name Shame

“Squeaky-Free” Domain Name Transfer

The Complainant, WD-40 Company, owns valid US trademarks in WD-40 and seeks immediate transfer from the Respondent, Texas International Property Associates, of the disputed domain name www.wd-40company.com.  The Complainant contends that its mark is famous and internationally recognized and that consumers are likely to be confused in assuming that there is a relationship between Complainant and Respondent’s website.  Complainant attempted to settle this dispute with Respondent informally, but Respondent failed to respond to numerous cease and desist letters.  In turn, the Complainant seeks the Panel’s intervention in effectuating a transfer of the disputed domain name.  Interestingly, in response to the Complaint, the Respondent requested an immediate transfer of rights in the disputed domain name, without admitting the three element required under the Policy for transfer (i.e., identical or confusing similarity of the domain name with a trademark in which Complainant has rights; a lack of rights or legitimate interest in the domain; and registration and use in bad faith).

The Panel therefore determined that Respondent had consented to transfer in the disputed domain name to the Complainant and found no evidence to suggest that the consent was not genuine.  Consequently, the Panel directed an immediate transfer of the disputed domain name to the Complainant, following past UDRP precedent that "… under such circumstances, where Respondent has agreed to comply with the Complainant's request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names."    As the saying goes, looks like this squeaky wheel got the grease.... WD-40 Company v. Texas International Property Associates, Case No. D2008-0876

Domain Name Dilemma

The Complainant owns registered trademarks for the name "Blackberry", dating between 2000 and 2006.  The disputed domain name, "theblackberrycoach.com", was first created on October 10, 2007.

The disputed domain name consists of the Complainant's trademark in its entirety, inserted between the definite article and the generic word "coach", which normally would have no impact on whether the domain name was confusingly similar to the trademark concerned.  In the Panel's view, however, the problem here was that the Complainant's mark is a generic word in common use for a fruit.  However, with the additional words of "the" and "coach", the Panel recognized it as an expression or term commonly used in the world of computers to provide assistance, notably in relation to "help" buttons, and the Complainant's mark relates to a form of computer technology.  For these reasons, the Panel concluded on balance that the domain name is confusingly similar to the mark in which Complainant has rights.

At the time of the proceeding's commencement, the disputed domain name contained no content.  Annexed to the Complaint was an image of a website to which it used to resolve, containing references podcasts and other items that appeared to relate to versions of computer software.  There was no reference to the alternative meaning of "blackberry" as a fruit.  The Panel opined that from this, one can deduce that the Respondent had in mind the information technology aspect of the name "blackberry" when registering and in using the website to which the domain resolved, suggesting that Respondent knew of Complainant's rights in connection with its trademark.  Although failing to respond to the Complaint, the Respondent indicated to the Center that he no longer held the disputed domain name when, in fact, the Respondent did indeed still hold the registration.  The Panel determined that this supported the conclusion that the Respondent was not acting in good faith and ordered transfer of the domain.  Research in Motion Limited v. Louis Espinoza, WIPO Case No. D2008-0759

No Photo Finish for Domain Name Dispute

The Complainant is a German-based provider of photo processing services and the registered proprietor of several trademark registrations comprising or including the word "cewe".   The disputed domain name, "cewe.net", was registered in January 2003, first connected to a website in December 2003 and, in June 2004, the website was a trafficz.com parking page featuring a wide variety of sponsored links, the predominant category being links to adult "girly" sites.  The disputed domain later connected to a Sedo parking site featuring (in the German language version) a mixture of links, some of them being links to the Complainant's site or sites providing similar services and others being adult sites.

In support of its Complaint, the Complainant argued, among other things, that the word "cewe" is artificial and without any inherent meaning.  In response, the Respondent provided support that the word "cewe" is a slang word in Bahasa Indonesia, an abbreviation of "cewek", meaning a girl or young woman.  Respondent contended that using the disputed domain to link (directly or indirectly) to sites featuring pictures and films of attractive young girls is a perfectly legitimate usage of the domain, given its meaning in the Bahasa Indonesia language.  Respondent produced evidence to show that it had registered a number of Bahasa Indonesia language words, many of them apt for use in relation to adult material.

The Panel took the view that to Internet users at large, most of whom will be wholly unfamiliar with the Bahasa Indonesia language, "cewe" will appear, as Complainant asserts, an artificial word without any inherent meaning.  Therefore, there was at least potential that the word could appear particularly distinctive, rendering the disputed domain confusingly similar to the Complainant's "cewe color" trademark.  Notwithstanding, the Panel denied the Complaint based upon a lack of registration and usage of the disputed domain name in bad faith.  In so holding, the Panel held that there was nothing to suggest that when registering the disputed domain, the Respondent is likely to have had the Complainant in mind. The majority of the Complainant's evidence was dated 2007 and 2008, while the disputed domain was registered in 2003.  In contrast, the Respondent demonstrated to the Panel's satisfaction that it was the proprietor of other domain names featuring words in the Bahasa Indonesia language associated with "girl" or "young woman" and those registrations dated back to 2003 and 2004. Accordingly, the Panel reasoned that it was not as if the disputed domain name was an isolated example.
CeWe Color AG & Co. OHG v. Shenbun Limited, WIPO Case No. D2008-0810.

The “Authorized” Domain Name

The Complainant, Authorize.net, provides payment gateway services and allows merchants to accept credit card and electronic check payments through the merchants’ websites.  The Complainant has been providing software and services for payment processing using the mark AUTHORIZE.NET since the late 1990s and holds several trademarks for AUTHORIZE.NET, the first of which was registered in January 2001.  The Respondent first registered the disputed domain name, AUTHORIZE.NET, in 1998 and, since 1999, has been an authorized affiliate/reseller of the Complainant’s services. 

The Respondent does not contest the Complainant’s trademark rights or the confusing similarity of the disputed domain name to them.  Instead, the Respondent’s defense is based on its bona fide use of the disputed domain name and the Complainant’s knowledge and acquiescence of the Respondent’s use of the disputed domain name for almost ten years.  In support, the Respondent points to the Complainant’s explicit approval contained in an email from the Complainant in November 2005. 

In denying relief to the Complainant, the Panel noted that there is no proof, other than a conclusory allegation, that when the Respondent registered the disputed domain name almost ten years ago that it did so for any reason other than to participate in the Complainant’s affiliate program with the Complainant’s full knowledge and consent, and no allegations of fact were presented from which the Panel could infer bad faith at that time.  The Panel further noted that the Complainant profited directly from each referral from the Respondent’s website that generated a commission and that, therefore, the Respondent has shown a legitimate interest in the dispute domain name.  The Panel noted that the only “change” was the Complainant’s apparent “change of mind” after the Respondent’s more than nine years of use of the disputed domain name.

You Stole My Domain Name!

In an interesting twist of facts, the Complainant in this proceeding claims to have been the former owner of the disputed domain, "www.all.com", which he used since at least 2005, until Respondent allegedly "stole" it from him in January 2008.  Arguing that Respondent has no rights or legitimate interests in the disputed domain name and that it was registered and is being used (passively) in bad faith, the Complainant seeks transfer of "www.all.com", relying upon its similarity to his stylized trademark ALL.COM and design, registered in Mexico.

In response, the Respondent claimed that the Complaint failed to mention that the parties had a substantial business relationship dating from 2005, when Respondent financed Complainant's purchase of the disputed domain name, which Complainant was supposed to register in both his and Respondent's name and to develop into a "search engine" website.  The Respondent relied upon correspondence in 2005, as well as a document entitled "Domain Name Purchase Agreement", made as of January 10, 2008 between Complainant as "seller" and Respondent as "buyer", under which seller agreed to transfer to buyer his entire right, title and interest in and to the disputed domain name, together with other rights, for $80,000 (of which $40,000 was said to have been paid in 2005).  Respondent additionally relied upon an invoice for $40,000 for the domain name "all.com", purportedly signed by Complainant, as well as a payment order confirmation showing the monetary transfer.  According to Respondent, Complainant controls the proceeds from the sale of the domain name and is using the WIPO proceeding in an attempt to steal the domain name which he sold only a few months ago.

In reply, Complainant denied Respondent's allegations, denied engaging in the 2005 correspondence and disputed the genuineness of the documents proffered by Respondent, claiming that the documents and his purported signature were forgeries.

The Panel was faced with a difficult predicament, as this case required the Panel, based on the limited material before it and without hearing evidence on oath or affirmation, tested by cross examination, to determine issues of fraud, theft and forgery, involving the credibility of the parties.  These issues go beyond the usual relatively simple and straightforward questions that are within the scope of the Panel's limited jurisdiction under the Policy.  Under these circumstances, and recognizing that an unscrupulous respondent could manufacture a dispute beyond the reach of the UDRP in order to retain a stolen domain name, the Panel was unable to come to a conclusion on the forgery issue merely on the materials submitted by the parties (which did not include any original documents) and in the absence of the kind of full hearing that is available in court proceedings.  Based thereon, the Panel expressed no view on the respective merits of the parties' cases as presented in this dispute and denied both the Complaint and Respondent's request for a finding of reverse domain name hijacking.  Eric Haddad Koenig v. All Ltd, Selena Kovalski, WIPO Case No. D2008-0322

The Famous-Name Domain-Name

The Complainant, Tucker Carlson, is an “internationally famous television news anchor and author, most famous for his role as anchor of the eponymous televised newsmagazines Tucker (MSNBC) and Tucker Carlson: Unfiltered (PBS), as well as his role as co-host of Crossfire (CNN).”  Complainant alleges that the name ‘Tucker Carlson’ has acquired secondary meaning and, as a result, has obtained common law trademark status. Respondent, owner of the disputed domain name www.tuckercarlson.com, failed to reply to the complaint.

While the UDRP does not protect personal names, “in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.”  Ultimately, the Panel found enough evidence documenting the name was being used in commerce and found that the Complainant had established common law trademark rights in the mark.  In addition, in following well-established principal in ignoring the top-level domain name (i.e., ‘.com’), the Panel found the name (‘tuckercarlson’) to be identical to the mark (‘Tucker Carlson’).

The disputed domain name resolves to a website that “provides links to websites that purport to sell products or provide information relating to Mr. Carlson and his services established under the ‘Tucker Carlson’ mark.”  After a finding that the Respondent had no rights or legitimate interest in the mark, the Panel also found that the disputed domain name was registered and being used in bad faith and “that the links on the website associated with the disputed domain name may indeed create a likelihood of confusion with the ‘Tucker Carlson’ mark . . .”  Interestingly, the Panel also considered the evidence presented by the Complainant indicating that the Respondent had offered to sell the disputed domain name for $1,088.00 and agreed with the Complainant’s contentions that “this figure likely exceeds any registration and maintenance costs.”  The Panel found for the Complainant and ordered transfer of the disputed domain name to him.  Tucker Carlson v. Domain Privacy Ltd.,  WIPO Case No. D2008-0474

Domain-Name “Lonely Planet”

The Complainant, Lonely Planet Publications Pty, Ltd, of Australia, is the publisher of independent travel books, and since 1973 has published approximately 444 titles, distributed in over 118 countries, under the LONELY PLANET trademark.  At the time of the filing of the instant complaint, the disputed domain name, www.lonelyplanethotels.com, was being used to redirect traffic to www.hotelsonline.net, but now points to a generic webpage containing sponsored links, among other links to the Complainant which are shown as a sponsored link.  The Respondent did not reply to the Complaint.

In finding the disputed domain name to be “confusingly similar” the Panel held that “[a] non-distinctive addition of the generic term ‘hotels’ to the widely known trademark LONELY PLANET does not sufficiently differentiate the domain name at issue from the Complainant’s trademarks.”  Ultimately, the Panel also found that the Respondent had no legitimate interest with respect to the disputed domain name and the disputed domain name was both registered and being used in bad faith and ordered the disputed domain name be transferred to the Complainant.  Lonely Planet Publications Pty Ltd v. Moker Privacy Services / Darren Abela, WIPO Case No. D2008-0475

Domain Name Dispute By Design...

The Complainant, Rocco Barocco, is a well-known Italian fashion designer who has registered his name as a trademark in several countries in the field of fashion, design and accessories.  His chief website can be found at "www.roccobarocco.it".  Respondent has a pattern of registering other well-known trademarks as part of domain names and, apparently by design, registered the disputed domain "www.roccobarocco.com".

Faced with no reply by the Respondent to the Complainant's contentions, the sole panelist readily ordered transfer of the disputed domain based upon the fact that the domain was identical to Complainant's trademark, there was no evidence of rights or legitimate interest of the Respondent in the domain name and the record was clearly indicative that Respondent had registered and used the domain in bad faith.  In so holding, the Panelist cited to the facts that: Respondent offered to sell the domain to the highest bidder on its website; Complainant and his trademark are well-known in the fashion industry; and Respondent had a history of cybersquatting.

A curious element to the Panel's decision involved the proper language for the proceeding and decision.  The registration agreement for the disputed domain name was in Russian. Pursuant to paragraph 11 of the UDRP Rules, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the Panel's authority to determine otherwise, having regard to the circumstances of the proceeding.  Here, in determining that the proceedings and the decision would be in English, the Panel noted that the Complainant had submitted a request that English be the language of the proceeding, plus the Center had notified the Complaint in both Russian and English. Barocco Roma srl Unipersonale v. Eurobox Ltd./Whois privacy services, provided by DomainProtect LLC/"Barocco Roma srl Unipersonale", WIPO Case No. D2008-0047

Domain Name “Privacy-Guard” Denied

The Complainant, a provider of comprehensive marketing services and loyalty solutions to many of the largest and most respected companies in the world, owns two (USPTO) trademarks for PRIVACYGUARD and PRIVACY GUARD.COM.  The trademarks, registered in 1994 and 2002, respectively, are used in connection with services related to identity theft protection, providing consumer credit reports and credit monitoring.  The Respondent is the owner of the disputed domain name, www.privacyguard.net, first registered in 2002, which continuously has resolved to a web site featuring articles about privacy, identity theft, and consumer protection against fraud.  Interestingly, at the “About Privacy Guard.net” tab of the website associated with the disputed domain name, it is stated that “PrivacyGuard.net is purely an information web site about the privacy issues facing internet users.  This site does not sell services or products.  PrivacyGuard.net is not affiliated with or endorsed by privacyguard.com or the Trilegiant Corporation.”  (Complainant is affiliated with the Trilegiant Corporation).

The Complainant claimed, among other things, that Respondent was using “PrivacyGuard mark and Domain Name for the purpose of diverting Internet traffic to Respondent’s website for Respondent’s own financial gain through revenue for impressions and click-throughs.”   The Respondent did not reply to the Complainant’s contentions.

The decision is highlighted by a discussion over the nature of the disputed domain name, to wit, a web site with mixed commercial and non-commercial materials.  In the instant matter, the sole Panelist found that “nearly all of the website currently is and appears from the archives always to have been non-commercial” and that even though the site is “not entirely non-commercial”, the “non-commercial content is substantial” and “the site’s content does not indicate that the disputed domain name is being used to divert Complainant’s customers or to tarnish its trademarks.”  The Panel goes on to suggest that the “Ads by Google” with links to consumer credit services “could be incidental to the site’s informational purpose.”  However, despite a brief, but detailed discussion of the Respondent’s rights or legitimate interests in the disputed domain name, the Panel did not ultimately decide the issue, instead stating that “this is not a clear case of cybersquatting.”  Instead, the Panel denied the complaint due to a lack of a showing of bad-faith registration and went on to state that this dispute should be a “matter for the national courts, not the Panel.” 

The “Side-Effects” of Domain Name Bad-Faith

The Complainant is a New York based pharmaceutical company whose trademark rights in the LEXAPRO mark pre-date the Respondent’s registration of the disputed domain name www.lexapro-side-effects.net.  To wit, the Complainant was granted its trademark rights on February 4, 2003, having filed an intent-to-use application on December 22, 2000, and the disputed domain name was registered on February 28, 2004.

The disputed domain name resolves to websites that contain keyword advertisements and links to other websites that are related to the mark, but that are not affiliated with or sponsored by the Complainant, some of which even sell unauthorized versions of LEXAPRO and/or competitive products.  The Complainant contends that the disputed domain name was both registered and is being used in bad faith.   The Respondent failed to reply to the complaint and the Panel’s decision, therefore, is based on the Complainant’s assertions, evidence and inferences drawn from the Respondent’s failure to reply.  Nevertheless, the Panel noted that it “must not decide in the Complainant’s favor solely given the Respondent’s default” and, therefore, the Complainant must nonetheless prove each element proscribed by the Policy to receive transfer of the disputed domain name.

In this instance, the Panel found that the Complainant proved to have trademark rights in LEXAPRO and consequently found that the “mere addition of the generic words “side” and “effects” in the disputed domain name is insufficient to avoid the likelihood of confusion with the Complainant’s mark – specifically noting that many users are likely to suppose just the opposite.  Moreover, the Panel concluded that “the Respondent knew or should have known the Complainant’s LEXAPRO mark at the time of registration of the disputed domain name and therefore, the registration [was] made in bad faith.”   Evidenced by the fact that the disputed domain name has “sponsored links that transfer visitors to other online locations, which offer products which are competing or related to the one’s offered by the Complainant”, the Panel found that the Respondent, in fact, “attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion” and therefore, ordered the disputed domain name transferred to the Complainant. Forest Laboratories, Inc. v. candrug, WIPO Case No. D2008-0382