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.

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

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.”