Domain Name Shame

Proceedings Boomerang. . .

Both Complainant and Respondent are involved in the production and/or marketing of vodka.  On November 10, 2005, Complainant filed its earliest application for trademark registration of the word "Boomerang".  The disputed domain name, "boomerangvodka.com", was registered by Respondent on October 7, 2005 and resolves to a website hosted by the registrar and mainly featuring links to what purport to be sites associated with vodka.

Although the registration of the disputed domain name pre-dates Complainant's earliest application for trademark registration of "Boomerang", Complainant contended that it had started trading earlier than that in 2005 and acquired common law rights.  Fatal to its claim, Complainant failed to submit any evidence as to the alleged nature and extent of the Complainant's purported trade and the Panel was unable to make any finding of common law rights.  Notwithstanding, Complainant overcame the first element of the Policy and established a trademark in which it had rights and which were identical to the disputed domain name, by virtue of its Australian registration of the mark "Boomerang" which came through on June 26, 2006.

Despite this, the Complaint was denied as Complainant failed to satisfy the Panel that the disputed domain name was registered and was being used in bad faith.  In so finding, the Panel pointed to Complainant's failure to produce any evidence of its allegations that it had established common law rights pre-dating the domain name registration or that Respondent had learned of Complainant's trademark through a distiller with whom both parties had dealings and that Respondent, a competitor, registered the domain with the intention of blocking the Complainant and disrupting Complainant's business.  In sharp contract, Respondent went to some lengths to respond to the Complaint and filed an affidavit in which its managing member deposed as to why he selected the domain name ('"Boomerang" is an ordinary word apt to indicate Australia as the geographic source of Respondent's vodka') and expressly denied Complainant's allegations.

So You Wanna Be A Domain Name Rockstar??

The Complainant, Rockstar Games, develops and publishes computer software.  Its parent company holds U.S. trademarks for, among others, the mark "ROCKSTAR GAMES", which was registered on May 29, 2001.  Since 1999, the ROCKSTAR GAMES trademark has been used extensively around the world to advertise Complainant's computer software products, including its well-known video game series "Grand Theft Auto".  Complainant also owns the domain name "rockstargames.com", which it registered in 1998.

The disputed domain name, "wwwrockstargames.com" was created on October 3, 2002.  At the time the WIPO Complaint was filed, the disputed domain name resolved to a website offering, among other things, pop-up advertising and links to various computer games and computer game products.

Respondent failed to respond to the Complaint.  Ordering transfer of the disputed domain name to Complainant, the Panel noted that the main difference between Complainant's trademark and the disputed domain name is the "www" that precedes "rockstargames".  As spaces are not permitted in domain names, there was no other distinguishing feature of the Respondent's domain name which was capable of differentiating it from Complainant's domain.  Recognizing that it is no longer mandatory with most modern browsers, the use of "www." in front of a domain name is invariable global practice when typing a URL into a browser and here, an Internet user would merely have to omit a single dot, rather than misspell the trademark element of the domain name in order to find itself at Respondent's website.

In finding registration and use in bad faith, the Panel cited to the fact that the disputed domain name resolved to a website offering advertisements, as well as "Sponsored links" to Playstation video games, Rockstar Games and credit and dating sites, which provide revenue to the website owner every time an Internet user clicks on those links.  The Panel further noted that Respondent's website contained reference to "Grand Theat Auto 3", a misspelling of Complainant's popular "Grand Theft Auto 3" game.  Rockstar Games v. Juan Carlos Azurdia, WIPO Case No. D2007-1557

Domain Dieting-A Weighty Issue Resolved. . .

Complainant is in the field of providing "weight-loss programs" food and products, under the registered trademark "Nutrisystem" and various iterations thereof.  Complainant has also operated or owned a website at "www.nutrisystem.com" for 10 years.  Respondent registered the disputed domain name "nutrisystems.com", merely adding an "s" to Complainant's marks and domain name.  Complainant instituted a WIPO proceeding seeking transfer of the disputed domain name, thereafter suspending the proceeding for almost 2 months while attempts were made to settle between the parties.  When settlement could not be reached, at Complainant's request, the proceeding was reinstated.

In response to the reinstated proceeding, Respondent agreed to the relief requested by the Complainant.  Since Respondent expressly consented to the remedy sought by Complainant and submitted no arguments or evidence in defense (although Respondent specified that its agreement was not an admission that the elements of paragraph 4(a) of the Policy were satisfied), the sole panelist held it to provide a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.  If only it were always that easy.   

Nutri/System, IPHC, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0864

Domain Dysfunction. . .

In this WIPO proceeding, the Complainant is one of the world's largest pharmaceutical manufacturers and sellers, maintaining operations in more than 150 countries and owning the well-known registered trademark VIAGRA. The Respondent registered, without authorization, the domain name "viagraoysters", linking to a website inviting customers to invest in an oyster growing venture, describing the development of oysters through the provision of Viagra and containing for-profit links to other commercial goods and services.

One key message of the website appeared to have been that the combination of Viagra and oysters could increase the likelihood of a more effective remedy for erectile dysfunction. Ordering the transfer of the domain to the Complainant, the panel held that the Respondent appeared to have used a well-known name which it knew was the subject of a registered trademark to attract visitors to its site with a view to persuading them to invest in his business venture, having nothing to do with the owners of the mark. However, in choosing that mark as the key part of the domain name, the Respondent sought to make people interested in the Complainant's products look at the website to which the disputed domain name resolved, constituting both registration and use in bad faith.

Pfizer Inc. v. Noblemay, George May, WIPO Case No. D2007-1025