Domain Name Shame

No Photo Finish for Domain Name Dispute

The Complainant is a German-based provider of photo processing services and the registered proprietor of several trademark registrations comprising or including the word "cewe".   The disputed domain name, "cewe.net", was registered in January 2003, first connected to a website in December 2003 and, in June 2004, the website was a trafficz.com parking page featuring a wide variety of sponsored links, the predominant category being links to adult "girly" sites.  The disputed domain later connected to a Sedo parking site featuring (in the German language version) a mixture of links, some of them being links to the Complainant's site or sites providing similar services and others being adult sites.

In support of its Complaint, the Complainant argued, among other things, that the word "cewe" is artificial and without any inherent meaning.  In response, the Respondent provided support that the word "cewe" is a slang word in Bahasa Indonesia, an abbreviation of "cewek", meaning a girl or young woman.  Respondent contended that using the disputed domain to link (directly or indirectly) to sites featuring pictures and films of attractive young girls is a perfectly legitimate usage of the domain, given its meaning in the Bahasa Indonesia language.  Respondent produced evidence to show that it had registered a number of Bahasa Indonesia language words, many of them apt for use in relation to adult material.

The Panel took the view that to Internet users at large, most of whom will be wholly unfamiliar with the Bahasa Indonesia language, "cewe" will appear, as Complainant asserts, an artificial word without any inherent meaning.  Therefore, there was at least potential that the word could appear particularly distinctive, rendering the disputed domain confusingly similar to the Complainant's "cewe color" trademark.  Notwithstanding, the Panel denied the Complaint based upon a lack of registration and usage of the disputed domain name in bad faith.  In so holding, the Panel held that there was nothing to suggest that when registering the disputed domain, the Respondent is likely to have had the Complainant in mind. The majority of the Complainant's evidence was dated 2007 and 2008, while the disputed domain was registered in 2003.  In contrast, the Respondent demonstrated to the Panel's satisfaction that it was the proprietor of other domain names featuring words in the Bahasa Indonesia language associated with "girl" or "young woman" and those registrations dated back to 2003 and 2004. Accordingly, the Panel reasoned that it was not as if the disputed domain name was an isolated example.
CeWe Color AG & Co. OHG v. Shenbun Limited, WIPO Case No. D2008-0810.

The “Authorized” Domain Name

The Complainant, Authorize.net, provides payment gateway services and allows merchants to accept credit card and electronic check payments through the merchants’ websites.  The Complainant has been providing software and services for payment processing using the mark AUTHORIZE.NET since the late 1990s and holds several trademarks for AUTHORIZE.NET, the first of which was registered in January 2001.  The Respondent first registered the disputed domain name, AUTHORIZE.NET, in 1998 and, since 1999, has been an authorized affiliate/reseller of the Complainant’s services. 

The Respondent does not contest the Complainant’s trademark rights or the confusing similarity of the disputed domain name to them.  Instead, the Respondent’s defense is based on its bona fide use of the disputed domain name and the Complainant’s knowledge and acquiescence of the Respondent’s use of the disputed domain name for almost ten years.  In support, the Respondent points to the Complainant’s explicit approval contained in an email from the Complainant in November 2005. 

In denying relief to the Complainant, the Panel noted that there is no proof, other than a conclusory allegation, that when the Respondent registered the disputed domain name almost ten years ago that it did so for any reason other than to participate in the Complainant’s affiliate program with the Complainant’s full knowledge and consent, and no allegations of fact were presented from which the Panel could infer bad faith at that time.  The Panel further noted that the Complainant profited directly from each referral from the Respondent’s website that generated a commission and that, therefore, the Respondent has shown a legitimate interest in the dispute domain name.  The Panel noted that the only “change” was the Complainant’s apparent “change of mind” after the Respondent’s more than nine years of use of the disputed domain name.