Domain Name Shame

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

Domain Name Clean-up

Since 1980, Complainant has owned and used the service mark "Merry Maids" for use in connection with commercial and residential cleaning services.  It registered the domain name "merrymaids.com" in 1994 to direct Internet users to a commercial website promoting its services and those of its franchisees.

Complainant found it dirty pool when Respondent, Mary's Maid to Order, registered the domain name "marysmaids.com" for usage with a web portal homepage providing a  search function and listing a variety of cleaning related services, including "Maid Service", "Merry Maid Cleaning" and others.

Arguing that the disputed domain name is confusingly similar to its service mark, Complainant alleged that Respondent was using a "homonym to capitalize on Complainants' marks".

Denying the Complaint, the Panel made its determination based upon factors typically assessed in a trademark infringement proceeding, taking into account unique features of the Internet.  In so doing, the Panel noted that Complainant's "Merry Maids" service mark is synonymous with a "happy cleaning service provider", formed by common, highly descriptive terms and constituting a "weak" service mark.  Since "maids" is a generic term for cleaning service providers, the Panel held that Complainant's mark must be compared for confusing similarity on the basis of the adjectival term "merry" and the possessive term used in the disputed domain name, "marys".  Holding that the terms were not confusingly similar, the Panel observed in detail the different visual impression and sound between the terms (including one "r" versus two; and the difference in vowels), as well as the difference in meaning between "merry" (synonymous with happy) and "Mary" (a given name).

Of particular note in the Panel's denial of the Complaint, the Panel rejected Complainant's argument that a common typographical error may result in Internet users being taken to Respondent's, not Complainant's, website.  While keyboard users can mis-type almost anything, the Panel was doubtful that "marysmaids.com" could be inadvertently typed for "merrymaids" and that the mere possibility of such mis-typing was not enough to give Complainant' more extensive rights in its mark. In the Panel's opinion, to give Complainant rights in "marysmaids.com" would be substantially expanding Complainant's dominion over the universe of "-maids" combination terms, which the Panel was disinclined to do.

Merry Maids, Inc., ServiceMaster Brands, L.L.C. v. Mary's Maid to Order, WIPO Case No. D2007-1283

Domain Name Ticketmastery No-More

The Complainant, Ticketmaster Corporation, acts as a ticket agent on behalf of its clients, selling tickets to live entertainment and sporting events in 20 markets worldwide.  The Complainant is the holder of a worldwide portfolio of more than 250 registered trademarks for the mark “TICKETMASTER” and variations and has used the mark since 1993 in connection with online ticket sales and related activities.  The Complainant uses the domain name www.ticketmaster.com in connection with its online sale of tickets.  The Respondent registered the disputed domain name, www.ticketmastery.com, on January 30, 2006. 

The Complainant alleged that the disputed domain name, consisting of a slight typographical variation of the registered mark, is confusingly similar to its registered trademark and that the Respondent has no right or legitimate interest in the disputed domain name.  Furthermore, the Complainant contends that since the website associated with the disputed domain name consists of advertisements which ultimately resolve to www.stubhub.com, a competitor of Complainant, it is plainly designed to lead a consumer who mistypes TICKETMASTER to a competitor’s site, a clear form of ‘typosquatting’, and the site, therefore, was registered and is being used in bad faith.   The Respondent failed to respond to Complainant’s contentions.  Ultimately, the Panel ordered the transfer of the disputed domain to the Complainant after finding that the Respondent violated the Complainant’s trademark rights in that the disputed domain name was confusing similar to the mark, Respondent had no right or legitimate interest in the disputed domain name and the disputed domain name was registered and being used in bad faith.

Interestingly, the Panel points out that “the Complainant refers to the Respondent’s constructive knowledge of the Complainant’s registered trademarks and the latter’s long use and fame.  Nevertheless, the Panel consider[ed] that the Complainant’s submissions regarding ‘typosquating’ and the potential for internet users looking for the Complainant’s site to misspell the Complainant’s own <ticketmaster.com> domain name as the disputed domain name as the most compelling.”  The Panel states that “it [could] not conceive of any alternative explanation” for the Respondent’s registration of the disputed domain name other than to “intentionally [attempt] to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.” 

The Panel found for the Complainant and ordered transfer of the disputed domain name to the Complainant.  However, Respondents and Complainants alike should take notice that the Panel was not compelled by the Complainant’s seemingly bulletproof “constructive knowledge” argument.  The Panel instead chose to rely on the Complainant’s ‘typosquatting’ argument and clearly points to the Respondent’s failure to respond and provide justification for its use of the disputed domain name as a reason for its ruling.  Ticketmaster Corporation v. WhoisGuard Protected, Case No. D2008-0350.