No bad faith where registration of domain name predated Complainant’s trademark rights

The Panel denied the Complainant’s efforts to have the domain name <dafea.com> transferred, finding no evidence that the Respondent registered or used the disputed domain name in bad faith.

The Complainant began providing services in the oil and gas industry in 2014. The Respondent registered the disputed domain name in 2011. The web page associated with the disputed domain name contained many sponsored links, but none of them referred to the Complainant or its business. The parties’ were not successful in negotiating a purchase and transfer of the disputed domain.

The Panel found in the Respondent’s favor, finding there was no evidence that the Complainant used its mark as a source identifier for goods or services – i.e., as a trademark – any time before the Respondent registered the disputed domain name. The Complainant admitted that it did not form its business until after the Respondent registered the disputed domain name. There was evidence that the Complainant’s managing director (Mr. Dafea) had given some speeches in 2012 or later, but that likewise was after the Respondent had registered the disputed domain name. Moreover, those presentations identified Mr. Dafea as a representative of some other company, not of the Complainant.

Dafea Limited v. Owner/Operator of Dafea.com / Ali Alsayyar, WIPO Case No. D2016-0158

Evan_BrownAbout the Author: Chicago technology and intellectual property attorney Evan Brown helps clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Pay-per-click links were enough to establish rights or legitimate interests in domain name

In the case of China Ready and Accredited Pty Ltd v. Warren Weitzman, Caramba LLC, the Complainant came up short in its quest to have the Panel transfer the disputed domain name <chinaready.com>. On the second UDRP element, the Panel found that the Complainant made a prima facie showing that the Respondent lacked rights or legitimate interests in the domain name. But the Respondent successfully met and overcame that prima facie case with evidence of its rights and legitimate interests.

Setting up pay-per-click links at a disputed domain name generally does not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. But this case fit into a relatively narrow set of circumstances where pay-per-click links at the disputed domain name do establish those rights and interests.

The 3-member Panel considered that the disputed domain name consisted of the common phrase “China Ready” and the pay-per-click links came within at least a generally understood meaning of the phrase, i.e. “ready for China”. Considering this against the background of the Respondent’s apparent business in advertising and domain monetizing services for others using numerous domain names over the years, and that there was no evidence of the Respondent intentionally targeting the Complainant or its business in using the disputed domain name, the Panel concluded that the Respondent had rights or legitimate interests in the disputed domain name.

The Panel went on to find that the Respondent engaged in reverse domain name hijacking. Because the Respondent registered the domain name before the Complainant established its trademark rights, in this case the Complainant “could never have prevailed.” The Panel found the complaint was brought in bad faith and was an abuse of the proceeding.

China Ready and Accredited Pty Ltd v. Warren Weitzman, Caramba LLC, WIPO Case No. D2015-2164

Complaint site operator had rights and legitimate interests in disputed domain name

The Panel in Titan Enterprises (Qid) Ply Ltd v. Dale Cross / Contact Privacy Inc decided in favor of the Respondent, finding that the Respondent’s registration and use of <bewareoftitangarages.com> for a site critical of the Complainant’s business did not run afoul of the second UDRP element. Specifically, the Panel found that the Respondent was making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the Complainant’s trade mark or service mark.

The Panel rejected the Complainant’s argument that although the disputed domain name was being used for a free speech purpose it was primarily a pretext for commercial advantage. There were no advertisements on the Respondent’s website, there was no evidence that the Respondent was a competitor of the Complainant, nor was there any evidence that the Respondent had operated this website for any commercial purpose. While the Respondent did solicit members of the public to provide information to participate in a legal action against the Complainant, there was no evidence that the Respondent was doing so for a commercial purpose. The fact that the Respondent may have advertised its site was not conclusive of a commercial intention, especially in the face of the operation of the site itself. The Panel rejected the Complainant’s submission, unsupported by evidence, that the Respondent’s conduct was likely to have been undertaken by a commercial competitor as speculative.

The Panel went on to find that the Respondent, in registering the disputed domain name using an appendage that indicated that it was critical of the Complainant, was not attempting to impersonate the Complainant or misleadingly divert Internet users. Rather, the Respondent was using the TITAN mark in the disputed domain name to identify the Complainant for the purpose of operating a website that criticized the Complainant. Such use is generally described as “fair use” of a trade mark.

Additionally, the Panel found unpersuasive the argument that the Respondent was tarnishing the TITAN mark. The mere fact that the Respondent’s website criticized the Complainant and used material that the Complainant considered to be misstatements or misrepresentations did not prove that tarnishment had occurred.

Titan Enterprises (Qid) Ply Ltd v. Dale Cross / Contact Privacy Inc, WIPO Case No. D2015-2062

No bad faith registration where the Respondent registered domain name for its descriptive qualities

The Panel denied the complaint seeking transfer of the domain name <pdfiller.com>, finding that the Complainant failed to establish that the Respondent registered the domain name in bad faith.

The Respondent registered the domain name on April 22, 2007, less than four months after the Complainant alleges that it began to use its PDFFILLER mark in commerce (January 1, 2007). This mark was not actually registered until October 2014, and hence until that date, the Complainant was relying entirely on common law rights.

Despite the fact that the Complainant asserted a U.S. trademark registration for its mark that included the January 1, 2007 date of first use, the Panel found that there was “absolutely nothing” in the record to prove that the Complainant made any actual use of the mark prior to April 22, 2007, much less such substantial use that one would lead one to conclude that the Respondent more likely than not had the Complainant’s (then) common law mark in mind when registering the domain name.

On the other hand, the Panel noted, there was a fair amount of evidence put forth in the response to suggest that the Respondent’s motives here, at least in terms of registering the domain name, were innocent. It appeared clear that, for several years prior to the Complainant’s alleged first use of the PDFFILLER mark as a source identifier for its PDF-related offerings, the Respondent was operating his own business, in a similar field of activity (essentially, ways to create, alter, and manipulate PDF documents). The record shows that some of the Respondent’s offerings included software allowing the user to add content to (i.e., fill in) PDF documents, including adding data to forms that were in PDF format.

The Panel found that to register a few domain names with “pdf” in them and redirect them to a main website where the Respondent features its PDF-manipulation offerings “hardly seem[ed] remarkable or untoward.” As the Respondent claimed, he registered the domain name for its descriptive, not distinctive, qualities. On the same day (April 22, 2007) as Respondent registered the domain name, he also registered a few other domain names containing “pdf” and a descriptive word. This fact, in the Panel’s mind, tended to corroborate the Respondent’s account of his motives here.

Without evidence that the  Respondent was aware of the Complainant’s mark on April 22, 2007, the Panel concluded there was no evidence of bad faith registration by Respondent.

PDFFiller, Inc. v. Chris Truxaw, d/b/a Red Software, WIPO Case No. D2015-2200

Respondent had rights or legitimate interests in domain name where it established site critical of Complainant

Respondent acquired the domain names <newmandenneypc.com> and <louisnewmanesq.com> to establish criticism websites. The Panel denied the Complaint, finding that the Complainant failed to establish the first and second elements under the UDRP.

As for the first element, the Panel found that the Complainant failed to establish secondary meaning of the marks comprising the disputed domain names. A screenshot of the Complainant’s website from 2010 showing the Complainant’s establishment, and a media article mentioning Complainant were not enough to demonstrate the marks had acquired distinctiveness.

The Panel further determined that the Complainant failed to make a prima facie showing that the Respondent lacked rights or legitimate interests in the disputed domain names. It found that the Respondent’s establishment of websites to criticize the Complainant was consistent with a noncommercial or fair use, and thus Respondent had rights or legitimate interests in the domain names.

 

Newman and Denney P.C. v. David Schorr, (NAF) Claim Number: FA1510001643577

 

Complainant failed to demonstrate unregistered trademark rights in UDRP action brought over blog name

In the case of VibrAlign, Inc. v. Armando Martinez / Ludeca, a 3-member Panel denied the complaint where Complainant failed to demonstrate any trademark rights in the expression “thealignmentblog.com”. Because the Complainant failed on this first element of the UDRP, the Panel did not consider the remaining two elements, i.e. rights/legitimate interests or bad faith use and registration.

The Panel found that the two words “alignment” and “blog” together make a description of a service. The only evidence Complainant submitted was a screenshot of a page showing first use of the expression back in 2009. The Panel found the evidence insufficient to show any secondary meaning or trademark rights in the expression owned by Complainant.

VibrAlign, Inc. v. Armando Martinez / Ludeca, FA1510001640543 (Nat’l Arb. Forum November 13, 2015).

About the Author: Chicago technology and intellectual property attorney Evan Brown helps clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Evidence of rights in unregistered trademark was insufficient to meet first UDRP element

In Silver Streak Industries, LLC v. Vietze, Dan / Frederick Manufacturing, a NAF Panel denied the complaint because it found that Complainant had failed to show unregistered rights in the mark SILVER STREAK, which comprised the domain name. Complainant introduced evidence of pending applications for the mark which it claimed to have used since 1978. But the Panel found this evidence unpersuasive, especially for a mark, in the Panel’s view, “by its nature not readily susceptible to monopolization by a single trader.”

Though it did not need to (i.e. it had sufficient grounds already to deny the complaint), the Panel went on to find that Complainant had established a prima facie case that Respondent lacked rights or legitimate interests in the domain name. But on the question of bad faith, the Panel found it more likely than not that, at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or of its trademark, and registered the name for a purpose in no way linked with Complainant.

Silver Streak Industries, LLC v. Vietze, Dan / Frederick Manufacturing, FA 1510001643236 (Nat. Arb. Forum November 23, 2015)

About the Author: Evan Brown is a technology and intellectual property attorney in Chicago helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases

Deliberate intent to associate with geographic location was not sufficient to show bad faith

For over 150 years Complainant has enjoyed a government-granted monopoly for casino and gambling activities, and is the sole company entitled to organize games and gambling in Monaco. Respondent registered the domain names <montecarlo.biz> and <montecarlo.ws> in 2002 and 2005.

The Panel denied the Complaint, finding there was no bad faith registration or use.

No bad faith registration

Complainant registered the term “Monte Carlo” as a trademark in 2013, after Respondent registered or acquired the domain names (in 2002 and 2005 respectively). When Respondent acquired the domain names, Complainant owned only the CASINO DE MONTE-CARLO trademark.

As there may be legitimate and non-infringing third party uses of the “Monte Carlo” denomination by others, the Panel was not prepared to infer that the purpose or aim of the registration of the domain names was to take advantage of confusion between the domain names and the trademark owned by Complainant (or indeed any other intellectual property rights, such as a brand or name owned by Complainant).

The Panel observed that even if previous UDRP panels already ordered transfer of many domain names to Complainant, those cases concerned domain names including the terms “Casino”” and “Monte Carlo”. Consequently, it did not preclude a decision in this case denying the complaint in different circumstances and, in particular, if the disputed domain names did not contain any reference to casino or gambling.

No bad faith use

Concerning the criteria of bad faith in the use of the domain names, the fact that the domain names did not appear to resolve to any website may create inefficiencies in terms of the allocation and availability of domain names. But that on its own was not sufficient in this case for the Panel to make a finding of bad faith. Such a finding required the Complainant to show by a preponderance of evidence that it was more likely than not that the Respondent acted in bad faith. The Panel found here that such a showing had not been made.

A deliberate intent to associate with the geographic location was likewise not sufficient to show bad faith with respect to Complainant.

Moreover, the Panel was unable to identify, in any reliable manner, other circumstances demonstrating bad faith, including, for example, Complainant having a particularly well-known trademark, a lack of response to the Complaint, and the registrant’s concealment of its identity. Complainant did not demonstrate that it was well-known under the term MONTE CARLO which was more, in itself, a reference to a geographic location.

Finally, as to Complainant’s contention relating to a rerouting towards a sports betting site prior to the Complaint, the Panel concluded that there was insufficient probative evidence of this in the record to establish bad faith. The only document supplied by Complainant consisted in a print out of the site without any link with or reference to the domain names. Respondent admitted that there was fleeting use of the domain names in connection with online sports betting. It was not apparent, however, based on the limited record before the Panel that this demonstrated Respondent used the domain names in a deliberate attempt to create confusion with Complainant. Accordingly, even if the Panel considered that Respondent did not contest a fleeting nexus with a sports-related online utilization, in the Panel’s view that use would, on its own, be insufficient to demonstrate bad faith in the use of the domain names.

La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Ritz Advisory Ltd., WIPO Case No. D2015-1087

About the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases

Change of registration information did not break chain of ownership by one person

Panel found that change in WhoIs details that occurred after Complainant’s trademark rights arose did not constitute a new registration. Accordingly, there was no bad faith registration, since the domain name was originally registered more than a decade before Complainant’s trademark rights arose.

Respondent first registered the domain name <bankwell.com> in 2003. Complainant, after a merger of three banks, acquired rights in the BANKWELL mark in 2013, as evidenced by a U.S. registration for that mark dated October 15, 2013. In April 2015, Respondent made changes to the WhoIs infromation to reflect a privacy protection service, and changed the information back in September 2015.

Complainant argued that this 2015 change to the WhoIs data constituted a new registration of the domain name, to which the Panel could look to find that the domain name was registered in bad faith. The Panel refused to make this finding. Accordingly, the domain name was treated as first registered in 2003. Since the first registration of the domain name preceded Complainant’s rights by a decade, it was impossible to find that the domain name could have been registered with a bad faith intent in relation to Complainant’s trademark rights.

Bankwell Financial Group, Inc. v. Whois Privacy Protection Service, Inc. / Domain Manager, Affordable Webhosting, Inc., Advertising, WIPO Case No. D2015-1664

About the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases

No confusing similarity between domain name and Complainant’s combination device and word mark

The recent UDRP decision over the domain name <yourdeliveryexperts.com> provides guidance on whether and to what extent a Complainant’s combination device and word mark can support a finding in Complainant’s favor under the first UDRP element. The Panel in this case found there was no confusing similarity between such a mark and the disputed domain name.

Complainant’s registered French trademark featured a “very prominent parcel design in red” and also contained, in “comparatively small font,” the slogan “your delivery experts”. Since the asserted mark was a device + word, the Panel found that the domain name was not identical to the registered mark, and the question became whether the domain name was confusingly similar.

The Panel looked to Limited Liability Company Infomedia v. c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager, WIPO Case No. D2010-1239 for guidance on analyzing the situation under this first element.

The Panel noted that when a complainant’s mark is a combination trademark featuring a prominent design with a commonly used or generic word beside it, a panel should make a literal comparison of the trademark and the relevant domain name, considering the overall impression given by the mark, taking into account as appropriate the strength of the word mark element which is being directly compared with the domain name, and considering the relevant prominence of the word mark element in the context of the overall impression given by the trademark.

In other instances, particularly where the word component of the relevant mark has not been disclaimed as such, panels have found it appropriate to disregard the device element, and limited the comparison to one between the textual component of the relevant mark and the alphanumeric string in the disputed domain name.

In this case, the Panel found Complainant’s word portion of the mark descriptive and weak. And Complainant did not provide additional evidence of use of the slogan “your delivery experts” such as might demonstrate the development of trade mark significance through use. It further observed that in cases where the word element is a common or dictionary term and not inherently distinctive, panels place the onus on the complainant to present compelling evidence of secondary meaning and distinctiveness through extensive use.

Although the threshold question of trade mark rights and confusing similarity under the first element of the Policy is generally considered by panels to be a low one, the Panel in this case found that there was simply insufficient evidence of the trademark significance of the slogan “your delivery experts” in the combined mark to meet even a basic threshold.

Geopost v. Privacy Protection Service Inc., WIPO Case No. D2015-1602

About the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases

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