Domain Name Shame

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