Domain Name Shame

Domain Name Day at the Spa

The Complainant operates a business based in Los Angeles, California, supplying nail and body care products under the mark SPARITUAL.  Complainant has registered the mark in various countries, including the USA and Mexico, and has pending applications to register the mark in other countries, including Canada.

Respondent is a consultant to a business operating under the name "The Spa Ritual" in Calgary, Canada.  The disputed domain name, "sparitual.com", was registered by Complainant on the business' behalf on October 19, 2006 and points to a website promoting the spa and its facilities, including a boutique selling body care products and noting "Check back soon for online shopping of our exclusive Spa Ritual products".

The Panel denied the Complaint on the evidence that Respondent made demonstrable preparations to use the domain name and the corresponding name "The Spa Ritual" in connection with a bona fide offering of services before any notice to her of a dispute. This evidence included Respondent's retention since 2005 as a consultant to establish, develop, own and operate a full-service day spa in Calgary, Canada and, in connection with that retention, Respondent's preparation of a site assessment report, a strategic business plan, the retention of a design firm which made a proposal regarding branding and a logo, and Respondent's preparation of a concept document which included a proposed layout and design for the spa prior to its opening.  Although Complainant asserted that it had made sales in Canada since at least February 2005, there was no evidence of the extent of those sales and no basis to infer that Respondent must have been aware of them at any particular point in time.

Significantly, the Panel opined that an application to register a trademark in the United States or other countries does not of itself constitute notice of a dispute to a party in Canada for purposes of paragraph 4(c)(i) of the Policy and that the doctrine of constructive notice under US trademark law does not assist in cases under the UDRP where the respondent is outside the USA. SpaRitual, LLC v. Vivienne O'Keeffe, WIPO Case No. D2009-0066

Decedent Domain Name

On December 5, 1999, Respondent registered the domain name "celiacruz.com".  Celia Cruz was a world famous Cuban salsa singer who died on July 16, 2003. She was internationally recognized as the "Queen of Salsa" and during her lifetime received countless awards and honors, including three Grammy Awards, four Latin Grammy Awards, the Lifetime Achievement Award of the Smithsonian Institution and many others. Several streets have even been named in her honor.

The disputed domain name resolves to a portal site with links to a variety of businesses including travel, accommodation, finance, electronics, insurance and many other services.  The site recognized that Celia Cruz was "one of the greatest musical talents of the 20th century" and featured in bold type the words "Great Collection of Celia Cruz Music CDs" which provided a link to a site at www.eTours.com providing travel and accommodation services.  Relying on the common law rights of Celia Cruz having descended to her estate, her estate's sole executor appointed Complainant as his attorney-in-fact to bring this WIPO action, alleging that Ms. Cruz, and by devolution her estate, owns and controls common law trademark rights in the name Celia Cruz.

Ordering transfer of the disputed domain name to Complainant, the Panel found that the record clearly established that the deceased was one of the best known and most widely acclaimed performers in her field, having been known and promoted by reference to her name to such an extent that she had established strong and substantial common law trademark rights in the name "Celia Cruz".  In the absence of a response by Respondent, the Panel assumed that Respondent could not rebut Complainant's prima facie showing that Respondent had no rights or legitimate interests in the disputed domain. Since the disputed domain name was registered long after the name and reputation of Celia Cruz had been established and the honors conferred upon her had been widely publicized, it was presumed that Respondent's use of the domain name as evidenced by its website content had been for the purpose of capitalizing on her name's reputation to attract Internet users to its website for commercial gain.  Eventus Management, Inc. v. Twenty Four Hours, LLC, WIPO Case No. D2009-0067

Derogatory Domain Name Dispute

Complainant, an airline operating under the AIR AUSTRAL trademark, filed Complaint against Respondent for its registration of the domain name "airaustralsucks.com".  Respondent operates, among other things, a website at "www.suetheairlines.com" on which consumers are encouraged to take legal action against airlines with whom they are in dispute. The disputed domain name was registered on June 19, 2008, the same day that Respondent registered several other domain names comprised of the trademarks of other airline companies with the suffix "-sucks".  At the time of the Complaint's filing, the disputed domain name was "parked" and contained click-through links to other sites, including travel related sites.

The Panel noted that the situation in relation to cases containing derogatory suffixes such as "sucks" is contentious.  The panel majority holds that a domain name consisting of a trademark and a negative term is confusingly similar to the complainant's mark. 

In considering whether Respondent had rights or legitimate interests in the disputed domain, the Panel interestingly noted that one potentially relevant fact in this case was the existence of Respondent's cybergriping site under a different domain name "suetheairlines.com".  Even though that domain name was not under dispute in this case, the Panel took into consideration that it was used by Respondent to post a website on information about various means by which airlines (in general) could be sued.  Use of a domain name that contains a complainant's mark to identify a genuine cybergriping site about that complainant can give rise to a legitimate interest in that domain name "or an important vehicle of online critique and discussion may be silenced."  In the Panel's view, the purchase of the disputed domain name for the purpose of operating a genuine cybergriping site would have been a more plausible claim if the domain was in fact being used for a gripe site about the Complainant and the Panel would have had little hesitation in finding for the Respondent. However, the disputed domain name was not being used for that purpose.  Instead, Respondent had left it parked as a click-through revenue generator, making its claim of legitimacy highly suspect.  In making the decision to transfer the disputed domain name to Complainant, the Panel further took into consideration the fact that whether such revenue generating links may be automatically generated by a parking service does not excuse such use.  As observed by numerous panels, a respondent is ultimately responsible for the content of a website generated by such technology.  Air Austral v. Tian Yi Tong Investment Ltd., WIPO Case No. D2009-0020

Disputed Domain Name for Adults Only

Complainant owns various trademark registrations for the mark "VIRTUAL SEX", with the first application filed in April 2000 and a first use in commerce dating back to 1994.  Complainant, which is female owned and operated, is a leading producer of "adult" films and has more than a 40% market share of the adult DVD market.

Respondent registered the disputed domain name, "virtualsex.com", on August 24, 1995 and set up a website for the sale of adult content DVDs, strip club webcam sites, sex chat rooms, adult dating services and "adult toys".  The site was established more than 13 years ago.

Respondent conceded that the disputed domain name is confusingly similar to Complainant's mark but made the contention that the mark is invalid as either "generic" or "merely descriptive".  In fact, Respondent claimed that he thought the disputed domain to be a generic term at the time of its registration.  Nonetheless, the general rule is that registration of a mark is prima facie evidence of validity and it is Respondent's burden to rebut that presumption, which Respondent failed to do. 

Denying the Complaint, the Panel held that a finding of Respondent's lack of rights or legitimate interests in the mark would turn on its analysis of the bad faith issue.  While Complainant alleged that it had acquired secondary meaning in the mark by August 1995 (when Respondent registered the domain), it failed to produce any evidence to support its allegation.  Moreover, Complainant failed to explain why it did not bring this action until 14 years after Respondent's registration of the domain and more than 13 years after Respondent had used the domain to resolve to a website at which products competitive to those offered by Complainant, as well products entirely different from those offered by Complainant, were offered for sale. Based upon the Panel's review of Respondent's website, it further concluded that its "diverse offerings" suggested that Respondent was trading on the descriptiveness of the term "virtual sex", rather than any goodwill attached to Complainant's mark.  In light of all these factors, the Panel held that Complainant failed to establish that the disputed domain name was registered and used in bad faith.  Digital Playground, Inc. v. Network Telephone Services, Inc., Dan Coleman, Frontier Credit Corp., and Harriet Walkup, WIPO Case No. D2009-0105

Domain Name Dispute Reactor

Complainant is an individual who operates a number of sites, including "torrentreactor.net", which provides software and services designed to help users locate and download "torrent files" (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent).  However, most, if not all, of the files promoted by Complainant or available for download were unlawful copies of software, movies, music, etc. -- in other words, works subject to copyright protection.

Respondent is an individual with a history of cybersquatting.  While the registration of the disputed domain name, "torrentreactor.com", predates the registration date of Complainant's domain name, Respondent did not obtain the registration until several years later after winning an auction process for the disputed domain name for the purported sum of $17,500.  Respondent used the domain to link to a parking service (through which he received revenue) and eventually forwards to a site that provides pornographic material.

Prior to the filing of the Complaint, Complainant and Respondent engaged in a series of negotiations.  Respondent offered to sell the domain to Complainant for a mere $150,000; Complainant countered with $30,000 and Respondent made a final offer of $50,000. Complainant then filed its Complaint, which made it pretty clear that Respondent's offer was rejected.

At the end of the day, the Complaint was denied.  Complainant asserted trademark rights in TORRENTREACTOR based solely upon its use of the domain name "torrentreactor.net" and various logos he created and used via the site.  However, mere use of a domain name, even if assumed for a long period of time and with many visitors, does not necessarily give rise to a trademark right.  While Complainant's failure to establish trademark rights was in and of itself sufficient to deny the Complaint, the Panel made note of a few other significant points, including a lack of merit to Respondent's argument that he has a right or legitimate interest in the domain because he paid $17,500 for it in auction.  The Panel deemed that fact irrelevant since domain names are often traded and auctioned off for profit and, it is often the case that domain names that are confusingly similar to an existing trademark fetch a higher price among cybersquatters.  In denying the Complaint, the Panel also noted the Respondent's prior history of cybersquatting and more than sufficient evidence to reach a finding of bad faith use by Respondent.

Notwithstanding the Panel's decision to deny the Complaint, it is significant to note that the Panel expressly noted that, in light of its finding of bad faith by Respondent, if Complainant was subsequently able to show that it had obtained the requisite trademark rights in the TORRENTREACTOR mark, it would not entirely rule out the possibility of the Complainant re-filing against Respondent (provided that the UDRP's relevant re-filing criteria were met).  In any event, the Panel's denial of the Complaint would not prevent either party from pursuing the matter further in a court of competent jurisdiction.  Alexey Kistenev v. Jinsu Kim, WIPO Case No. D2008-1870