Domain Name Shame

Slam Dunk On Domain Name Transfer

Complainant is the business entity of Kareem Abdul-Jabbar, one of the most famous of all professional basketball players.  In addition to a 20 year career as a professional player, Abdul-Jabbar has coached professional basketball teams, acted in first-run movies and appeared in many commercial product endorsements.  Complainant or Abdul-Jabbar own two trademarks for "Kareem Abdul-Jabbar", with a first use date of 1991 for one of those marks.

In 1999, the Respondent registered the disputed domain name, "kareemabduljabbar.com".  In response to the Complaint, Respondent relied upon a fan site defense.  That defense, however, was an "air ball".

Respondent made no use of the disputed domain until 2001, at which point it resolved to a typical "under construction" site with hyperlinks to unrelated commercial websites.  In July 2002, the content changed to a one page summary of Abdul-Jabbar's basketball career.  At some point, the site included either hyperlinks or the Internet address for a commercial website operated by Respondent at www.vegasgamblers.com.  The information about Abdul-Jabbar on the website never changed and the site was disabled in 2007, at which time it read "this account has been suspended".

The Panel held that Respondent's site did not meet predicate requirements for a fan site. The site was never "active" for more than five years and its content never changed from its perfunctory recital of Abdul-Jabbar's resume and accomplishments.  Panels that have deemed fan sites legitimate dealt with sites that served as alternatives to sites authorized by the celebrity or team that owned the name, and provided current information and often the opportunity for fans to learn about and discuss various topics related to their subject.  They typically include non-commercial activities, not a static information sheet like Respondent's site.  As such, these legitimate fan sites have functioned similarly to a non-commercial business, often with activities that were independent of the website. Respondent's website, in contrast, was not entirely "noncommercial". For eight months the site contained no reference to Abdul-Jabbar and contained numerous links to assorted commercial businesses, none of which had any apparent relationship to Abdul-Jabbar or even to basketball.  Then, after posting the information sheet about Abdul-Jabbar, the web page included the reference to Respondent's commercial site, www.vegasgamblers.com -- unrelated to Abdul-Jabbar in any way.  Faced with these facts, the Panel determined that Respondent did not establish a fan site in any reasonable sense of the term and ordered transfer of the disputed domain. A slam dunk for Abdul-Jabbar!  Ain-Jeem, Inc. v. Barto Enterprises, Inc., Philip Barto, WIPO Case No. D2007-1841

Bakers Delight Undelighted by Domain Name

Complainant, Bakers Delight Holdings, is an Australian owned company established 27 years ago.  Complainant operates a bakery franchise, with over 600 bakeries in Australia and over 30 in New Zealand.  Complainant operates a website at www.bakersdelight.com.au.

Respondent created the disputed domain name, "bakersdelightlies.com" on June 22, 2007.  Responded used to be a franchisee of Complainant and uses the domain name to attack Complainant and, in particular, its treatment of franchisees.

While the disputed domain name does contain the Complainant's entire trademark, "Baker's Delight", it also contains at the end the word "lies".  For this reason, the Panel deemed the disputed domain name to fall into the category of so-called "sucks" cases (where a trademark is joined with a negative term).  A majority of panels dealing with "sucks" cases have found that a domain name can be confusingly similar to the trademark for various reasons, including because the domain name contains a trademark and a generic word.  However, some panels have found that these types of domain names are not confusing because it is obvious to Internet users that the Complainant would not use a domain name which consists of its trademark and a derogatory term.  The Panel in this case opined that "sucks" is a more forceful, obvious and derogatory term than "lies" and held to the majority view that the disputed domain was confusingly similar to the "Bakers Delight" mark.

Notwithstanding, the Panel denied the Complaint, holding that Complainant had failed to establish that Respondent has no rights or legitimate interests in the disputed domain name.  In so holding, the Panel found that the website did not have any commercial content and was dedicated to genuine criticism, with relevant non-commercial links, and nothing to establish that Respondent was making any commercial gain, from visitors or advertising or otherwise, or attempting to divert users looking for Complainant's site.  Bakers Delight Holdings Ltd. v. Andrew Austin, WIPO Case No. D2008-0006

The Domain Name Spirit...

Complainants are the producers and distributors of a number of spirits including the Scotch whisky brand "Chivas Regal", established as early as 1909.  In 2006, Complainants sold their whisky Chivas Regal in over 90 countries and, from December 2001 to December 2007, over 225,000,000 liters of Chivas Regal were sold worldwide.  As a result of extensive and long use, the name Chivas Regal has become widely-known worldwide and represents a goodwill and reputation of tremendous value to the Complainants, who own 162 trademark registrations in respect of "Chivas Regal".

Respondent has a pattern of cybersquatting and registered the disputed domain name, "chivasregal.com", in 2004 and used it in connection with a website providing links for third parties' products including products directly competing with those of Complainants.

Ordering transfer of the disputed domain name to Complainants, the Panel held that Respondent had clearly registered and used the disputed domain name in bad faith.  As to bad faith registration, the Panel held it inconceivable that Respondent registered the domain without knowledge of Complainants and their marks, given the high distinctiveness of the Chivas Regal marks and the high profile of Complainants dating back to 1909.  This is particularly so given the fact that Respondent used the disputed domain name to provide links including direct competitors of Complainant and the fact that the name "Chivas Regal" is in itself not descriptive of Complainants' products.

As to bad faith use, the Panel held that Respondent was, in all likelihood, trying to divert traffic intended for the Complainants' website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainants' website, by fully incorporating the Chivas Regal marks into the domain name and using the website as a parking website.  Chivas Brothers Limited et al. v. Demand Domains, Inc., WIPO Case No. D2007-1789.

Domain Name Knockout In The Ring

The Respondent manufactures and sells jewelry products, including engagement rings, wedding and anniversary rings and other types of rings.  Respondent registered the disputed domain name "thering.com" in September 1995. During the period 1998-2001, Respondent used the disputed domain name to direct Internet users to its website displaying and providing information about its rings.  Thereafter, Respondent discontinued this use in favor of "ajaffe.com", which reflects the Respondent's brand, but continued to use the disputed domain name as a corporate email address for its employees.

Complainaint owns various trademark rights for the mark "The Ring" for use with the boxing publication "The Ring Magazine", the earliest of which rights date back to January 1977.  Seeking transfer of the disputed domain name, Complainant contends that the disputed domain name, "thering.com", is identical to and confusingly similar to its trademark and contends that Respondent has never used the disputed domain name for any purpose, thus constituting bad faith under the Policy.

The Panel denied Complainant's complaint.  In so doing, the Panel found that even though Complainant had trademark rights in "The Ring" and that the disputed domain name was identical and confusingly similar to Complainant's mark, Complainant had failed to satisfy its burden of showing bad faith registration and use of the disputed domain name by Respondent.  Instead, Respondent appears to have used the disputed domain name in a descriptive sense and it was noted that a number of panels have held that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive word provided the domain name was not registered with the Complainant's mark in mind, even where it is confusingly similar to the registered mark of a complainant.  Sports and Entertainment Publications LLC v. Sandberg & Sikorski, WIPO Case No. D2007-1693