Domain Name Going "South"

The Complainant, Viacom International, Inc., owns trademark registrations in the service mark and trademark "SOUTH PARK", which it has used in connection with various forms of entertainment and related apparel since as early as July 1997.  The marks have been used in connection with an animated television show called "South Park" and Complainant maintains "the official South Park web site" at
www.southparkstudios.com.  The television show has several cartoon characters, including "Stan" and "Mr. Marsh", who is identified as Stan's father.

On March 22, 2007, the Respondent registered the disputed domain name, "stansdad.com", which resolves to a web site in which a cartoon character's face corresponding to Mr. Marsh appears in the place of the "O" in ".COM".  The website contains episodes of the television show South Park (including two copyrighted episodes) and the tagline "W-W-WATCH SOUTH PARK ONLINE FREE!".  The website contains prominent disclaimers identifying the Complainant as the owner of the trademark and copyrighted material and expressly disassociates the disputed domain name with the Complainant.

Denying Viacom's complaint, the Panel pointed out that the UDRP was designed to deal with the problem of cybersquatting.  The disputed domain is clearly not confusingly similar to any trademarks or service marks asserted by Viacom, as "stansdad.com" is not even remotely similar to "South Park".  Instead, Viacom's concerns were not really directed towards the particular domain name itself but, rather, what was occurring on Respondent's website.  While the Panel recognized that Viacom's concerns may be legitimate and perhaps entitled to legal redress, the UDRP is simply not the vehicle to provide that redress.  Here, Viacom was really asserting possible claims of copyright infringement, which goes beyond the purview of the issues that the UDRP was designed to redress and should have been brought in a more traditional legal proceeding.

Smokin' Over Domain Name Dispute…

Complainants are affiliated companies that manufacture, distribute and sell various brands of smokeless tobacco, including the GRIZZLY brand.  Complainants have filed various trademark registrations for the GRIZZLY mark in connection with smokeless tobacco products.

Respondent is in the business of registering and utilizing domain names and, on January 30, 2005 and June 3, 2005, Respondent registered respectively the disputed domain names "grizzlychew.com" and "grizzlysnuff.com".  Respondent contracts with Hitfarm, an Internet advertising service provider, to place targeted advertising links on "grizzlychew.com".  Complainants did not learn of Respondent's registration of the domain names until August 2007.

In arguing that the domain names were not confusingly similar to the GRIZZLY marks, Respondent relied upon the fact that the common term "Grizzly" has been registered as a trademark by numerous companies and it also took the disingenuous position that Complainants do not market GRIZZLY products as "chew" or "snuff" but, rather, as smokeless tobacco.  These arguments, however, did not hold smoke with the Panel.  As the Panel noted, even though true that the term "Grizzly" has been registered for various products by numerous trademark holders, the USPTO's decision to grant Complainants a trademark demonstrates that Complainants have enforceable rights in the mark.  The Panel further noted that regardless of whether Complainants refer to their product as "smokeless tobacco", the evidence submitted made clear that the terms "chew" and "snuff" are commonly used to reference smokeless tobacco.  It was logical to conclude that anyone familiar with the GRIZZLY mark would likely assume that the domain names were affiliated with Complainants, rendering them confusingly similar.

Respondent also argued that offering targeting advertising searches is a legitimate business and that, in any event, they had no control over which advertisers Hitfarm posts using the domain names. Can you say "pass the buck"??  While the Panel conceded that the business of offering targeting advertising searches may be a legitimate business in certain circumstances, those circumstances did not exist in this case. It may be legitimate as long as the domain names have been registered because of their attraction as dictionary words and not because of their value as trademarks.  In this case, however, the domains did not merely refer to "smokeless tobacco", "chew" or "snuff".  Rather, they merged two of those terms with a trademarked brand of smokeless tobacco and use the resulting domain names for a commercial purpose. Under the Policy, that is not a legitimate use capable of establishing rights or legitimate interests.  Not surprisingly, for these same reasons, the Panel also found that Respondent had registered and used the domains in bad faith and ordered transfer of the domain names to Complainants. Conwood Company, LLC, Conwood Sales Company, LLC and Rossvil, LLC v. Texas International Property Associates, WIPO Case No. D2008-0376

Domain Name Win for the Home Team!!!

Complainant is one of the leading public research universities in the American Southwest and has used the name "Arizona Wildcats" since as early as 1915 in connection with the university and its athletic teams.  Complainant holds federal trademark registrations for the mark "Arizona Wildcats and, since as early as 1950, Complainant has used the "Arizona Wildcats" mark in identifying clothing items and other licensed merchandise.

The disputed domain name, www.arizonawildcats.com, was registered on March 4, 1999 and lead to a site displaying advertising from which web-users may "click through" to various sites, including, for example, NFL and NBA sports sites.

This is a classic case of cybersquatting. Respondent's use of the domain name was simply the use of a famous trade mark to divert traffic to itself for the purposes of raising click-through revenue.  Not surprisingly, the Panel ordered transfer of the disputed domain name to Complainant.  What is surprising is that Complainant has been using the mark for over 90 years yet never registered the domain itself (okay, okay…the Internet did not exist that far back but still….it's been around a long time since and Respondent jumped on it way back in 1999! Complainant, get in the game…).  Arizona Board of Regents on behalf of the University of Arizona v. DNS, Admin, Nevis Domains/Gee Whiz Domains Privacy Service, WIPO Case No. D2008-1543

Domain Name Auction

In this WIPO dispute, the Complainant is Margaret C. Whitman, the President and CEO of eBay, Inc. from March 1998 through March 2008.  Ms. Whitman remains on eBay's Board of Directors and is a stockholder.  The Complainant is described in the Complaint as an Internet pioneer and businessperson whose name is internationally famous and synonymous with the accomplishments of eBay.  The Respondent, Domains For Sale, registered the disputed domain names, www.megwhitmanforgovernor.com, www.megwhitman2010.com, www.meg2010.com, www.whitmanforgovernor.com and www.whitman2010.com, between January 28 and March 28, 2008, at which time there was wide speculation in California and elsewhere that the Complainant would run for election as Governor of California in 2010.

 The Complainant claims common law service mark rights in her personal name 'MEG WHITMAN' due to her fame and achievement, the international recognition and wide publicizing of her fame and achievement and further claims that her fame and achievement are inextricably connected to eBay's commercial success.  The Respondent did not respond to the Complaint. 

Merely having a "famous" name is not sufficient to establish common law trademark or service mark rights in the name.  In cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another's goods or services, or for direct commercial purposes in the marketing of the complainant's own goods or services.  The law of publicity gives well-known individuals the right to control commercial exploitation of their names and likenesses.  However, for common law trademark rights to exist, the personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source.  In this instance, the Panel was unable to conclude that the Complainant had common law service mark rights in her personal name because she did not provide services to the public under the name 'MEG WHITMAN' as a source-indicator to the segment of the public based on her performance as President and CEO of eBay.  Accordingly, the Panel concluded that the Complainant failed to establish common law service mark rights in her personal name and therefore denied the Complaint.

New Generic Top Level Domain Extensions

There are currently 21 generic top-level domain extensions ("gTLDs") (such as, .com, .net, .info, etc.). However, with over a billion current Internet users and an ever-increasing demand for websites, there exists a need for more domain names.  To address this, the Internet Corporation for Assigned Names and Numbers (“ICANN”) has recently developed guidelines and procedures to allow companies to register new gTLDs.  Under this new program, any applicant can establish a new gTLD of any string up to 64 letters, consisting of anything from an abbreviation, to a trademark, or personal name.  ICANN is still soliciting public comment and objections in anticipation of developing an implementation plan for this new program.  So, applications are unlikely not open until the middle of 2009 at the earliest. 

Participation in the new gTLD process is not for everyone, however, as the costs of establishing and maintaining a new gTLD will likely be quite costly.  Registration of new gTLDs will consist of very high start up and participation expenses of approximately $500,000 in the first year alone, including an application evaluation fee of $185,000, a $75,000 ICANN annual fee and various other costs such as the cost of legal representation, fees to registry providers, and compliance and insurance costs.

The new program does have its advantages, as it will allow trademark owners and companies who use it to their advantage to more efficiently brand their products and open up an unlimited amount of new domain names for users.  However, the program will also be a cause for concern to many trademark owners who now must be extra cautious and vigilant in protecting their marks due to the possibility that third parties may seek to register other companies’ trademarks as gTLD domains.  In turn, however, similar to the domain name dispute process already in use, WIPO will administer a process for objecting to new gTLDs available to trademark owners who believe their rights are being infringed upon.

And The Disputed Domain Name Winner Is . . .

In this WIPO dispute, Complainant sought transfer of the disputed domain names "goldenglobe.com" and "goldenglobes.com".  Complainant's Golden Globe Award Ceremony is world famous and Complainant is the registered owner of three US trademark registrations for "GOLDEN GLOBE" covering, among other things, services associated with its award ceremony.

The disputed domain names were not in use and were not connected to any website.  Complainant sent Respondent a cease and desist letter, but got no reply to that or its WIPO Complaint.  The Panel ordered that the disputed domain names be transferred to Complainant, holding that Respondent did not appear to have any legitimate rights or interest in the disputed domain names and that they had been registered and used in bad faith.  In so holding, the Panel accepted Complainant's argument that Respondent had registered the domains with the intention of selling them at a profit.  In that regard, the Registrar's Whois database identified the Administrative Contact of the domains as "Sale, For" (i.e. For Sale).  The Panel believed that, under the circumstances, Complainant's argument was a reasonable assumption, particularly since Respondent had not challenged the allegation.  Given that Respondent had no active use planned for the domains and they had remained unused for over 10 years, the Panel accepted that their sale was Respondent's objective at the date of registration. Registration of a domain name with knowledge that it reproduces the Complainant's trademark and with a view to profiting from its sale is bad faith registration and use, warranting transfer of the disputed domain names. Hollywood Foreign Press Association v. F.M.I., WIPO Case No. D2008-1610

My Name, Your Domain Name

Complainant, Peter Bober, is an attorney and mayor of the city of Hollywood, Florida. He is the youngest mayor ever elected to this position and the first of Cuban ancestry.  Mr. Bober and his wife have a law practice, Bober & Bober, P.A., located in Hollywood, Florida, where they specialize in employment law.  He has published legal articles in various law journals and is active in the Hollywood, Florida community. 

Despite this, the Panel denied Mr. Bober's Complaint which sought transfer of the disputed domain name, "peterbober.com".  The disputed domain was not being actively used by Respondent. However, in denying the Complaint, the Panel determined that Mr. Bober had failed to show that his name, Peter Bober, had achieved common law trademark rights as it was not identified with a particular business.  As a general matter, personal names are not protected under the Policy, including the personal names of business men and politicians, unless the business person has established that his name is synonymous with a particular business and that good will exists not only in the name of the business but in the name of the individual with which it is identified, or where a politician has derived commercial success from the use of his name, such as through the authorship of commercially successful books.  In this case, Mr. Bober's law practice was called "Bober & Bober P.A.".  The Panel commented that if he had perhaps been offering legal services under the name "Law Offices of Peter Bober", the result of this case may have been different.  Although Mr. Bober has been published, his authored articles were of a scholarly nature, not commercially successful books. Under all of these circumstances, common law trademark rights in a personal name were not established by Complainant. Peter Bober v. National Institute for Mortgage Education, WIPO Case No. D2008-1668

Ticket To A Domain Name Dispute

Complainant, Ticketmaster, is a global leader in live entertainment ticketing and marketing event ticket sales, operating in 20 global markets and providing ticket sales, resale services, marketing and distribution through "www.ticketmaster.com" -- one of the largest e-commerce sites on the Internet.  Complainant holds federal and foreign trademark registrations for the mark "TICKETMASTER".

The disputed domain name, "tiicketmaster.com", was successfully transferred to the Complainant based upon the Panel's finding that: (i) the disputed domain was confusingly similar to the TICKETMASTER marks given its spelling, (ii) the Respondent has no rights or legitimate interests in the domain, particularly when taking the fame of the TICKETMASTER marks into consideration which lead the Panel to find that Respondent's choice of the disputed domain name could not have resulted from mere coincidence, and (iii) the disputed domain name was registered and used in bad faith, based upon the Panel's review of a screen capture of the website "www.tiicketmaster.com" provided by Complainant, which showed that the disputed domain provided advertising sites that offered links to various businesses, including competing ticketing sites.  At the time of the Panel's decision, the disputed domain resolved to an error page.  Under the circumstances, this type of "passive holding" was further indicative of bad faith use according to prevailing opinions in numerous UDRP panels.  Ticketmaster v. Wang Xiao Ping, WIPO Case No. D20088-150

A Hairy Domain Name Situation

Complainants own a number of trademark registrations of or including the name "Harry Winston".  In this case, it is undisputed that "Harry Winston" is a very well-known, longstanding trademark for fine jewelry, diamonds and timepieces.

The disputed domain name, "hairywinston.com", was registered by Respondent for use in her retail sale of "dog and cat supplies and accessories" under the name "Hairy Winston".  In an interesting twist, Respondent candidly admitted that she selected the name, Hairy Winston, as the name of her business with Complainants' famous trademark very much in mind.  While accepting that the disputed domain name is similar to Complainants' well-known trademark, Respondent denied that it is confusingly similar to that trademark.  Instead, Respondent contends that it will be obvious to all that her use of the name "Hairy Winston" is a playful variation of the Complainants' famous trademark.  One of Respondent's dogs is a hairy dog named Winston and claims to have selected the name "Hairy Winston" for her luxury pet boutique business to make playful fair use of the dog's name and Complainant's trademark by way of parody.

In support of Respondent's argument that the disputed domain name is not confusingly similar to Complainants' marks, she relied heavily on the nature of her luxury pet boutique website. However, as the Panel noted, it is well-established that the content of Respondent's website is an irrelevant factor when assessing confusing similarity under the Policy.  Rather, the test is to be conducted by way of a side-by-side comparison of Complainants' marks and the disputed domain name. By application thereof, the Panel found that "hairywinston.com" was confusingly similar to Complainants' marks. 

Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman, WIPO Case No. D2008-12

Fine Diamond of Domain Names

Complainants have been the owners of well-known marks WINSTON and HARRY WINSTON for fine jewelry and watches since 1932, which marks are especially associated in the minds of the public with fine diamonds.  Complainants seek transfer of the disputed domain name www.harrywinstondiamond.com from the Respondent h.    Respondent failed to reply to the Complaint.

In holding that the disputed domain name is confusingly similar to the Complainants' mark, as a threshold matter the Panel found that a trademark registration adequately demonstrates a complainant's rights in a mark.  The addition of the generic term "diamond" and the top-level domain ".com" to Complainants' mark does not effect the domain name for the purpose of determining whether it is confusingly similar. 

The disputed domain name resolved to a website containing various links to websites featuring jewelry and other products competitive with Complainants' products. Determining that Respondent had no rights or legitimate interest in the disputed domain name, the Panel inferred that the Respondent collects click-through fees for each internet user redirected to competing commercial websites.  The Panel concluded that this was a bona fide offering of goods or services under the Policy, not a legitimate non-commercial or fair use.

Ordering transfer of the disputed domain name to Complainants, the Panel lastly concluded that the Respondent's use of the disputed domain name constituted a disruption of the Complainant's businesses and evidenced bad faith under the Policy due to the website providing internet users with links to various websites offering competing goods.  The Panel also indicated that the domain name will likely cause confusion as to Complainants' sponsorship of, and affiliation with, the resulting website and, consequently, the use of a confusingly similar domain name for Respondent's own commercial gain is evidence of bad faith registration and use under the Policy.  Interestingly, the Panel found further evidence of bad faith by Respondent's intentional hiding of its true identity by providing false and incomplete contact information.  Respondent and its address were both listed as "h" and the Respondent's administrative contact was listed as "hh" in the US with a telephone number of "10000000000".  As the Panel has done in the past, a finding of bad faith was founded (at least in part) on Respondent's failure to provide any contact information.  Harry Winston, Inc.  and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266