Complainant failed to show trademark rights in mark comprising disputed domain name

In the case of Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd, a WIPO Panel denied the Complainant’s efforts to have the domain name <banskoexpresstransfer.com> transferred because the Complainant failed to prove that the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant had rights.

The Complainant runs an online business that allows passengers to book and pay for transfers from airports in Bulgaria and Greece to the Bulgarian ski resort of Bansko, and claimed common law trademark rights in the mark BANKSO EXPRESS. The Panel found that the Complainant failed on the first UDRP element — that the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant had rights — because the Complainant did not provide sufficient evidence that the mark BANKSO EXPRESS, a descriptive term, had acquired secondary meaning.

The Complainant did not provide information such as advertising figures to show the reach or extent of his business, the income derived from the trade that he conducted under the trademark BANSKO EXPRESS, or support from members of the public or persons involved in his trade to prove the existence of a secondary meaning associated with his trademark. Given the descriptive nature of the Complainant’s business name, the Panel found this to be a high hurdle to overcome.

In these circumstances, the Panel found that the Complainant failed to prove that the disputed domain name was identical or confusingly similar to a trademark or service mark in which the Complainant had rights, and for that reason the Complaint failed.

Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd. WIPO Case No. D2016-0306 (April 20, 2016)


Evan_BrownAbout 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. Read Evan’s other blog, internetcases, for more information about general internet law.

Complaint failed on bad faith element where there was no evidence Respondent knew of Complainant’s mark

The Complainant’s use of its trademark before the Respondent registered the disputed domain name was not enough in and of itself to show bad faith at time of registration.

In the case of Uline, Inc. v. Hulmiho, a WIPO Panel denied the Complaint seeking transfer of the domain name <uline.com>. It held that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.

Unlike many UDRP cases which fail on the bad faith element, the Complainant in this case introduced evidence that it began using using its mark prior to the time when the Respondent registered the domain name. But that in and of itself was not enough in the Panel’s mind to demonstrate bad faith use and registration.

The Panel found no evidence that the Respondent had the Complainant in mind when  it registered the disputed domain name. Further, that fact that the disputed domain name appeared to be up for sale at a price likely exceeding the Respondent’s out-of-pocket costs in registering it was of no consequence if the Respondent did not have the Complainant in mind at the time.

And the Panel rejected the Complainant’s argument under Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 that non-use of the domain name showed registration in bad faith. The panel in Telstra concluded that no lawful use could have been made of the domain name. But in this case, the Panel had insufficient information to come to that conclusion. The Panel had no information upon which to conclude that back in 1998 (when the disputed domain name was registered) the Complainant’s trade mark was sufficiently well-known to merit the inference that the Respondent was targeting the Complainant when it registered the disputed domain name.

Uline, Inc. v. Hulmiho Ukolen, WIPO Case No. D2016-0065 (March 13, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago 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. Read Evan’s other blog, internetcases, for more information about general internet law.

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.

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

Res judicata barred subsequent UDRP proceeding

Domain Name: vrsim.com

Case: VRSim, Inc. v. John Makara, No. FA1003001314947 (Nat’l Arb. Forum April 30, 2010)

In 2008, Complainant brought a UDRP action over the same domain name at issue in this case – vrsim.com. Complainant lost that proceeding because it failed to establish any protectible trademark rights (it asserted only a registration on the Supplemental Register and did not argue it had any common law rights).

Complainant tried again in this case, but the Panel rejected the effort, holding that the action was barred under principles of res judicata.

The Panel looked to Creo Prods., Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) to see that res judicata will bar subsequent complaints unless complainant meets a high burden.

Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) guided the Panel as to the factors derived from the common law that a panel should apply in evaluating whether this burden has been met:

  • serious misconduct
  • perjured testimony
  • new credible and material evidence
  • breach of natural justice

In this case, the Panel found that Complainant presented nothing that would support entertaining a second complaint. For that reason, the Panel denied relief to Complainant.

Photo courtesy CarbonNYC under this Creative Commons license.


Evan_BrownAbout the Author: Evan Brown is a Chicago 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. Read Evan’s other blog, internetcases, for information about general internet law.

All signs point to descriptiveness in domain name dispute

Domain Name: glasgowsigns.com

Element(s) Not Met: 4(a)(i)

Case: Glasgow Signs v. 1st Signs Limited trading as Sign-A-Rama, No. D2010-0409 (WIPO May 4, 2010)

Complainant and Respondent are both in the commercial signage business around Glasgow, Scotland. Respondent began using the Domain Name for its business in March 2006. The parties disputed when Complainant began using the term GLASGOW SIGNS.

That dispute as to facts, however, was immaterial to the Panel’s decision in the overall domain name dispute.

The Panel noted that under paragraph 4(a)(i) of the UDRP, a complainant may demonstrate rights in a mark which are not registered. But a person can only obtain rights in descriptive terms when it is shown through evidence that the term has become distinctive by acquiring a secondary meaning. Even very extensive use may not be enough to bring a highly descriptive term into the realm of protectibility.

In this case, the Panel found that Complaint failed because Complainant had put forward none of the following:

  • specific evidence as to the extent of its use of the descriptive term
  • a statement as to the value of sales made under the term
  • a statement of expenditures made on advertising or promotion of the term
  • disclosure of the nature of any advertising or promotin
  • evidence showing customers or suppliers had come to perceive the term as a brand

For these reasons, the Panel found that Complainant “fail[ed] at first base,” so there was no need to consider any of the remaining arguments under the UDRP.

Photo courtesy Flickr user rightee under this Creative Commons license.