Domain Name Shame

Par for the Domain Name Course

Complainant is a wholly-owned subsidiary of Yamaha Motor Co., Ltd and owns several trademark registrations for the mark "YAMAHA".  The first of such registrations expressly includes "golf carts and structural parts therefore" in the specification of goods.  Complainant also owns the domain names "yamaha-motor.com" and "yamahagolfcar.com".

Respondent, a well-known cybersquatter, was the registrant of the disputed domain name "yamahagolfcars".  Prior to initiating WIPO proceedings against Respondent, Complainant sent a letter to the registrant of the disputed domain, asserting its rights and demanding transfer.  The disputed domain name was subsequently transferred to another registrant. Complainant sent a second, similar letter to the second registrant, with the same results. Four registrants later, Complainant initiated WIPO proceedings against the current Respondent.

Respondent failed to respond to the complaint.  The Panel recognized that the trademark YAMAHA is a widely known trademark and that a domain name is to be considered confusingly similar to the registered trademark when a respondent merely adds generic or descriptive terms to an otherwise distinctive and famous trademark.  In addition thereto, the Panel found a lack of rights or legitimate interest of the Respondent in the disputed domain since Respondent's website only showed a "link farm" which hosts a list of sponsored links and does not present any business run by Respondent.  Taking into consideration all of these factors, as well as the fact that the Respondent is a habitual cybersquatter and clearly intended to earn profit from the confusion created in Internet users having an interest in Complainant's activities, the Panel ordered transfer of the disputed domain name to Complainant.  Yamaha Motor Corporation, USA v. Gioacchino Zerbo, WIPO Case No. D2007-1879.

A Domain Name Fashion Faux Pas

Complainant has trademark rights to the mark "JACK&JONES" in the European community, for fashion clothing and certain accessories.  Complainant operates a website under the domain name "jackandjones.dk", which displays pictures of the clothing sold under the "JACK&JONES" trademark.

In this classic case of cybersquatting, Respondent registered the domain name "jackandjones.com", which linked to websites offering fashion goods of third parties and other content.  While the two names "jack" and "jones" are common, the Panel found that their combination as "jackandjones" is not and nor is their use for fashion goods.  The fact that the disputed domain name "jackandjones.com" linked to another website allowing users to make Internet searches for websites displaying other fashion brands was held to be evidence that Respondent was trying to create a risk of confusion with Complainant's trademark and website.  Further, it showed that Respondent used the domain name for the purpose of attracting web traffic intended for the website of Complainant, but directing such web traffic to websites offering fashion goods of third parties.  Holding that Respondent's use of a confusingly similar trademark is liable to exploit Complainant's trademark "JACK&JONES", the Panel ordered transfer of the disputed domain name.  Aktieselskabet af 21. November 2001 v. Domains By Proxy, Inc./John Fox, WIPO Case No. D2007-1623

Fendi's Slow Burn Over Domain Name. . .

Fendi, the prominent designer and manufacturer of clothing products and accessories in the field of luxury fashion, got burnt when it sought transfer of the domain name "fendiman.com" from the Respondent, a professional fire fighter in the Vienna Fire Department.  Fendi owns numerous FENDI trademarks throughout the world and sent the Respondent a cease and desist letter in September 2006, shortly after Respondent's registration of the disputed domain.

In response to Fendi's cease and desist, Respondent claimed that the domain name was registered for private purposes only and was not in use at that time.  Although Respondent offered to transfer the domain to Fendi against payment of his lawyer's costs and the costs associated with cancellation of the domain, Fendi did not respond to his offer and, instead, commenced a WIPO proceeding against him.

In response to the WIPO complaint, Respondent contended that the name "FENDIMAN" was not connected to Fendi, that "Fendi" or "Fendiman" was a nickname given to him by his colleagues soon after he started work at the Vienna Fire Department in 1986 and that he has used this nickname on the Internet since April 3, 2001 in various forums.  To support his contentions, Respondent submitted 10 statements by his co-workers attesting to the nickname and printouts from Internet websites showing Respondent's use of the name "FENDIMAN" on the Internet.

Arguing against registration in bad faith, Respondent claimed that he had searched the Internet for the name "FENDIMAN" prior to the domain's registration without finding any information on Fendi.  In addition, he claimed that he only knew the street "Fendigrasse" in Vienna, which is named after the Austrian painter Mr. Peter Fendi, and that he had never seen any ads from Fendi in Austria. 

The Panel did not ever reach Respondent's bad faith argument, finding that Fendi had failed to prove that Respondent had no rights or legitimate interests under the Policy.  The Panel noted that it is well-established that a nickname can satisfy the requirement of rights or legitimate interest under the Policy if it can be proven that the Respondent has verifiably used such name over a longer period of time.  In the Panel's view, Respondent had provided conclusive evidence that he had been known under the name "FENDIMAN" at least since 1988 and had been actively using such name at least since 2001, thereby denying Fendi's complaint.

Bet that settlement offer didn't look so bad after that decision.
Fendi Adele S.r.l. v. Manfred Fandl, WIPO Case No. D2007-1432

Hey, Hey, Hey...The Cosby Kids Domain Name Exploits

The domain name "cosbykids.com" was registered by the Respondent in this case to resolve to a website entitled "Cosby Kids", which contained a link to the Respondent's "GO Times" website, an e-commerce store, and also contained links to third-party websites providing various entertainment-related goods and services.  Bill Cosby, the well-known comedian, writer, actor and producer who, among other things, developed the popular animated television series "Fat Albert and the Cosby Kids", took issue with this alleged infringement on his trademark rights in "Cosby Kids" and "Cosby" and filed a WIPO proceeding seeking transfer of the domain name.

Given Bill Cosby's extensive use of the marks "Cosby Kids" and "Cosby" in connection with his entertainment goods and services, the Panel recognized the impressive number of panelists in other WIPO proceedings that have recognized that celebrities who use their given names for commercial purposes may establish common law rights in their name sufficient to invoke the Policy, and were persuaded that Bill Cosby had established common law trademark rights or service mark rights in "Cosby" and Cosby Kids".

The Respondent, known for registering other domain names containing third-party trademarks, was readily found lacking in rights or legitimate interest in the disputed domain name, as well as having registered and used the domain in bad faith, particularly since he used the domain for commercial profit and to exploit Bill Cosby's marks.  Ordering that the disputed domain name be transferred, the Panel noted that "when a domain name is so obviously connected with a Complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests 'opportunistic bad faith'".  Mr. William H. Cosby, Jr. v. Research Required, Inc., WIPO Case No., D2007-1556.