According to the Respondent, at the time of registration of the disputed domain name, the Complainant was unknown outside France. Only now is it known in France, Belgium, Italy and Spain where it has opened stores in the last few years. In 1996, the Complainant’s product offer was primarily gifts and accessories, but not furniture. Even today, this continues to be the majority of their product offer in their brick-and-mortar stores, and much of the Complainant’s product range still concentrates on non-furniture products.

The Respondent alleges (but does not provide evidence to show) that the Complainant only offered furniture for sale gradually after 1996 and only started developing its website in 2004. The Complainant’s furniture sales business on the web only started to take off in 2006.

The Respondent states that his product offering has not changed significantly since 2000, when he first started selling furniture in brick-and-mortar stores, and via the Internet, through the disputed domain name which was registered at the same time, together with <maisondumonde.co.uk>.

Further, says the Respondent, when the disputed domain was registered in 2000, the Complainant was a small company in France and had no more claim to use the disputed domain name than anybody else in any country other than France where it had successfully received trade name protection in its home territory.

The Respondent goes on to provide his version of the discussions between the parties that started in 2006. As stated above, the Panel will not summarize those discussions in any further detail because it considers that they are not relevant for the present case.

The Respondent states (and provides evidence to prove) that the authority that rejected his opposition to the Complainant’s CTM application found that “one of the few undisputed points in the proceedings is the fact that the presented evidence is sufficient to prove that the opponent has actually used the name Maison Du Monde in the course of trade”, in particular in the UK, primarily in the London area. (emphasis added)

The Panel found that the Respondent did have some rights or legitimate interests in the domain name, from which it had been operating its business selling furniture since 2000, and also found that there was no evidence of bad faith on the part of the Respondent in registering the domain name.

In the present case, the Complainant knew that the Respondent was offering furniture for sale in 2000 when the Respondent first registered the disputed domain name, and the Complainant did not present any evidence showing that that business was not bona fide back in 2000. Further, the Complainant did not rebut, in its unsolicited rebuttal, the Respondent’s allegation to the effect that his activities were perfectly legitimate back in 2000. After having received the Response, the Complainant should have known that its case was insupportable under the Policy.

While the Panel does take good note of the Complainant’s allegations concerning the situation since 2006, it has no choice but to apply the Rules and to find Reverse Domain Name Hijacking, for the reasons explained above. (emphasis added)

The part that’s a little funky is “After having received the Response…” So, the Panel is creating a duty to withdraw a complaint? Hmm. In any event, they should have been prepared to argue that the Respondent knew about their business prior to starting his business in 2000. Still, I don’t see how they could have overcome the Respondent’s argument that their respective goods/services were not similar at that time (and thus it would not have been a trademark issue back then).

The Panel does wish to note, in addition, that the Response and the Respondent’s unsolicited submission were unnecessarily lengthy because they included certain allegations (not summarized above) and hundreds of pages of exhibits that were not relevant for the present case.

Looks like the Panel wasn’t very pleased with the amount of reading material it was subjected to. There are page limits, but they seem to be routinely ignored. Something to keep in mind: don’t annoy your panel! Although in this case it doesn’t seem to have affected the outcome.

A little brief elaboration: a name can be used as a mark, of course. But you have to show that it has been used as a mark. This could be as simple as putting your name on a line of t-shirts, or paper products, or business cards for your maid service. The point is that you must show a connection between the name and the goods or services offered. And, as with unregistered marks, the old problems of sufficiency of the evidence must be overcome.

In one of the cases published this morning, Wernher Pramschufer’s complaint about wernherpramschufer.net failed because he did not show how his name was being used as a mark. The panelist denied the complaint “without prejudice” though, probably believing that Mr. Pramschufer could ultimately show the required evidence but for some reason was unable to do so within the time frame for the UDRP action.

And the trio of Proskauer cases from WIPO earlier this month, the greggmashberg.com, josephleccese.com, and allenfagin.com denials, several partners at the prominent law firm were unable to obtain transfer of domain names being used as gripe sites about them personally, in part because they were unable to show that they had any trademark rights in their names as such, apart from their employment by the prominent Proskauer firm (which was able to show rights in the PROSKAUER mark, but still failed to obtain transfer of proskauerlawfirm.com because of its use as a gripe site).

Contrast this with cases where transfers were ordered, like juliaroberts.com, tommylee.com, and tomcruise.com. In those cases, the individuals were able to show actual rights in their names as marks, typically through the long and public use of their names in connection with their services (acting, music, whatever). But the point remains, under the UDRP a name without something more — some solid evidence of use of the name as a mark — will not satisfy the first prong of the UDRP.

The Panel notes the Respondent’s claim to want to use the Domain Name for future services of his/her company Technolyst.Inc in Colombia. The Panel finds this explanation highly improbable since this company does not appear to use the name anywhere “Infotools” on its website.

It is also apparent from the evidence that the Respondent and T. Dayal have registered large numbers of domain names. It is therefore reasonable to infer that they would have checked who owned the domain name <infotools.com> before registering <infotools.co> and found that it was the Complainant.

In these circumstances, it does not appear to the Panel that the Domain Name was directed to a web page containing sponsored links innocently as a temporary measure pending a genuine commercial use of the Domain Name. Rather, the Panel infers that the Respondent intentionally attempted to attract Internet users to the web page by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web page, for commercial gain in the form of click-through commissions. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of bad faith registration and use, or at any rate would have done so if T. Dayal had remained the registrant.

The Panel further finds that the Domain Name was transferred to the present Respondent in bad faith in the hope of defeating the Complaint. The Panel infers that the Domain Name was registered in the name of the Respondent with the likely intention of continuing the previous use for sponsored links and/or with a view to sale to the Complainant at a profit.

In all the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith. (emphasis added)

So there was some shenanigans going on with transferring the domain name to attempt to avoid an adverse decision under the UDRP, which ultimately proved both futile and probably helped the Complainant’s case, as anyone who has children will know: when they’re acting guilty, they invariably have done something they shouldn’t have.

Still, this is an interesting decision because the panelist seems to believe that the registrant(s) knew about the company that owned infotools.com, and purposefully chose infotools.co to profit on the misdirected traffic (this is, in essence, a typosquatting case). And yet there’s a totally different side of this that the panelist didn’t get into: the generic nature of the mark at issue. Apparently that issue wasn’t raised because the respondent(s) did not raise it, and that’s a classic example of why you should protect your domain name portfolio. I think this one could have easily gone the other way.

In support of its complaint, the Complainant provided an affidavit of the founder Joe Ehle, which detailed the use of the LIVERPOOL LUMBER CO INC and JOE EHLE marks over several decades. Neither mark appears to have been registered.

As I recently showed, the bar is high for common law marks, and a single affidavit is probably never going to be sufficient (unless the unregistered mark is so immediately recognizable that a Panel can’t conclude otherwise; I can’t imagine that ever being the case, as if it was that recognizable, you’d expect it to be registered at some point). That’s exactly how the Panel held here:

Complainant alleges that both marks have been used in conjunction with the lumber products business it runs and in conjunction with one another, the LIVERPOOL LUMBER CO INC mark since the 1940s and the JOE EHLE mark for the last 20 years.  Complainant provides an affidavit where Mr. Joseph Ehle testified to the effect that the lumber company has been in his family since its opening in the 1940s.  Complainants have also provided corporate registration documents from New York state including the date of formation. Except for the affidavit of Mr. Joseph Ehle, no other evidences was submiited to support the common law rights in either LIVERPOOL LUMBER CO INC or JOE EHLE marks.Common law rights arise from actual use of a mark in connection with certain services and/or products. In addition, to successfully assert common law or unregistered trademark rights, a Complainant must show that its alleged mark has become a distinctive identifier associated with the complainant or its goods and services.

. . .

In connection to LIVERPOOL LUMBER CO INC, the Complainant asserts that it acquired common law rights for services of sale distribution and installation of windows, doors, cabinetry, interior and exterior fabrications and other lumber related products and related design services. The evidence brought by the Complainant to support this assertion refers to the date of creation of the business back in 1940s, the advertisement and the sales under the alleged mark level of $8 million per year. All this data results, mainly, from Joe Ehle’s affidavit. Except for the registration information of the company LIVERPOOL LUMBER CO., INC and two ads by which the services of the company LIVERPOOL LUMBER CO., INC with its contact data are presented, none of the evidence brought, refers to the use of mark LIVERPOOL LUMBER CO., INC in connection to certain services, but to the name of the company LIVERPOOL LUMBER CO., INC selling these services. Moreover, after performing its own search on internet, the Panel found that no reference is made to LIVERPOOL LUMBER CO., INC as a mark for certain services but to LIVERPOOL LUMBER CO., INC as a company name with contact data delivering such services. It is also, the opinion of the Panel, that the Complainant failed to show that its alleged LIVERPOOL LUMBER CO., INC mark has become a distinctive identifier associated with the Complainant or its goods and services.

. . .

Joe Ehle is the CEO and President of the company LIVERPOOL LUMBER CO., INC. The Complainant asserts common law trademark rights in JOE EHLE for the same services provided by the company, because he has been associated with the business for more than thirty years. The only evidence provided in support to this statement is Joe Ehle’s affidavit and an article in some “Business publication” , which mentions Ehle as the President and Owner of the company LIVERPOOLLUMBER CO.,INC. No mention whatsoever is made in connection to offering the company services under JOE EHLE trademark.

JOE EHLE’s name does not appear on the Complainants’ marketing material or building.

The Panel finds that the Complainant has failed to establish its rights in the JOE EHLE mark under Policy ¶ 4(a)(i). . . . (emphasis added)

This is an important distinction. A company/business name, or a personal name, is not necessarily a trademark or service mark! A Complainant has to show an actual use of the mark in connection with a service or products. So, either you’re doing something and advertising your doing of that something under this name — Johnny’s Expert Dog-washing Services, Inc. — or you’re putting your mark on a widget that you’re selling to a consumer. Here, apparently the Complainant wasn’t doing either, merely listing the company name on advertisements which sold the products that it was in the business of selling. In any event, the Panel did not find the evidence submitted particularly persuasive.

I think it’s quite easy to say that Respondents are in a much better position in cases under the UDRP that invoke common law rights in a mark, because it’s always easier to poke holes in what the other side is arguing. And from a Complainant’s perspective, if unregistered rights are all that you have, you should absolutely bury the Panel with evidence of your rights, because a Respondent’s job of calling that evidence into doubt is so much easier.

The Panel didn’t even reach the rights or legitimate interests of the Respondent in this decision, though I think they would have had a strong argument to make that the sites were being used for legitimate gripe sites about the Complainant’s business. (I checked and there doesn’t appear to be any commercial gain from those web sites at all, which is good if you’re looking to set up such a gripe site!)

The Complainant argued that the Respondent had no rights or legitimate interests in the domain name because the domain merely redirected to the complainant’s P90x.com domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant. There is no evidence that the Respondent has registered the disputed domain name to advance legitimate or bona fide offering of goods and services. The disputed domain name redirects users to the “www.p90x.com” website, that currently displays several links to divert Internet users to websites that offer potentially counterfeit versions of the Complainant’s products and deceive consumers into falsely believing that there is an association, affiliation or sponsorship relationship between the Respondent and the Complainant. The Respondent’s use of the disputed domain name evidences the Respondent’s illegitimate purpose.

I checked, and px90.com returns a DNS error, so it’s not pointing anywhere at the moment. I also checked p90x.com, which seems to be the Complainant’s web site, so I’m really unsure why they would say that web site contains “several links to divert Internet users…” Maybe the Panel made a typographical error in copying the Complainant’s argument here?

In any event, a Respondent need only produce some credible evidence to show some right or legitimate interest in the domain name at issue to cause the complaint to fail, and in this case, the Respondent was able to do just that.

Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:

(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent has been commonly known by the domain name; or

(iii) The respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

The Panel concludes that the Respondent has proven the legitimate interest referred on the item (ii) above.

Exhibit A to the Response shows that the Respondent has been commercially identified by the domain name (PX90) since 1993. Exhibits B to E to the Response also prove that the domain name is still being used to designate the store operated by the Respondent in Mumbai, India.

The simultaneous use of the additional word “Fashions” on the Respondent’s commercial name and store (“PX 90 Fashions”) does not change this conclusion, mainly considering that the term “PX 90” is the distinctive and core part of this expression.

Consequently, the Panel finds the Complainant has failed in these proceedings to prove the requisite second element of the Policy.

It might be helpful to see the Exhibits, just to have a better idea of what exactly the Respondent showed the Panel, because right now the domain name doesn’t resolve to or designate any such store (so far as I can tell). As it stands now, it might be the case that the Complainant could argue the Respondent was passively holding the domain and holding it for ransom, although that sort of argument usually requires that the Respondent has attempted to prohibit the Complainant from reflecting its mark in any domain name (probably not the case for the Complainant here).

Still, this is a good example of the limitation of the UDRP. It is designed to adjudicate clear and obvious cases of cybersquatting, and where there any sort of credible argument to be made on the Respondent’s side, a Complainant’s case becomes vastly more difficult, if not outright impossible.

Enter this recent denial by a WIPO panel, on the domain serv-air.com. The Complainant is a subsidiary of Air France, and operates a global catering business under its mark, SERVAIR, which was apparently registered in 2002. The domain name was registered in 2010.

The Complainant seemed to rely on the global scope of its business and its many other registrations of domains, especially ccTLDs, containing the SERVAIR mark. The Panel’s decision doesn’t describe whether any variations of the SERVAIR mark were registered, which is something I would have found important (as in, some registrations for “serv-air” or the like).

Even though the Respondent didn’t respond at all, the Panel determined that the requirement of bad faith registration and use, the third prong of the UDRP, had not been met by the complaint.

Apart from the fact that the disputed domain name has been found by this Panel to be confusingly similar to the Complainant’s trademarks for the purpose of the first element standing requirement, the Panel finds there is not much direct evidence of the Respondent’s intention to create a likelihood of confusion for the purpose of diverting Internet users to Respondent’s website based on the Complainant’s mark in particular. The Panel notes the website appears to be in use to post links to inter alia human resource services which bear little if any apparent relationship to goods and services provided by the Compliant under its SERVAIR mark. This is not a case in which, for example links to the direct competitors of the Complainant are in evidence. (emphasis added)

This is significant for domain developers. Pay-per-click advertisement pages, landing pages, link farms, whatever you want to call them, have been found to carry a sort of stigma of cybersquatting, but recently the tide has turned away from an automatic finding of bad faith and Panels have been more willing to consider the content displayed on the pages. This was especially important in the Octopus.com decision recently, where the travel-related links doomed the apparent generic use of the domain name, because it seemed to specifically target the trademark use of a company called Octopustravel Group Ltd. Lots of domainers cried foul about that case, and perhaps there’s an element of truth to the argument that “octopus” is a wholly generic term. But the Respondent apparently doomed itself with PPC links that directly related to the business of a company that use that term as part of its name.

Here, critically, the Respondent did not do that. And this was despite the Respondent’s allegedly poor history with respect to domain name registrations and the UDRP.

On the other hand, the Panel notes the evidence provided by the Complainant alleging that VALUE-DOMAIN COM has also registered and is using at least three other domain names that visibly infringe the rights of Société Air France’s subsidiaries. Evidently such consideration does little to assist the Repondnent.

However, this Panel finds such conduct per se (while suggestive) is not enough to tip a finding of bad faith use in the Complainant’s favour in the present finely balanced case.

Interpreting the case provided by the Complainant, SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092 regarding <sembcorp.com>: “surrounding circumstances would lead one to infer that the [r]espondent ‘knew’ or ‘ought to have known’ of the existence/trademark rights of the [c]omplainant”. All the evidence suggests that Respondent’s registration of the disputed domain name was calculated rather than accidental.

This Panel understands that while the Respondent may have been a respondent in several UDRP cases, which may reflect a pattern of behaviour, such past behaviour is not enough to determine bad faith use in present case where clear evidence of bad faith use, as the use of pay-per-click links to competitors’ websites is lacking.

The Panel is not convinced on the balance of the evidence in this case that in using the disputed domain name <serv-air.com>, VALUE-DOMAIN COM is intending to refer to the Complainant.

The Panel understand that the Complainant‘s business, although it is used by millions of people all over the world, does not necessarily correspond to a trademark of such notoriety, that a term like “serv-air” would necessarily bring to mind the Complainant’s trademark.

Although the Complainant has presented evidence that the Respondent is in the business of domain name speculation, in this case in particular, this Panel finds insufficient evidence of bad faith use to enable it to confidently find bad faith.

This Panel seems to say that where there’s no clear bad faith use currently, it will not necessarily rely on allegations of a poor history with respect to the UDRP. (This statement seems odd; if there’s clear evidence of bad faith currently, you shouldn’t have to point out a Respondent’s history. Though I guess you would normally do that, just for extra support. Still, if it’s not helpful in a borderline case, one wonders when or where it’s supposed to be helpful. It is, in point of fact, written into the definitions.)

As I’ve said elsewhere, if you’re engaging in the practice of parking pages with PPC ads, you would be well advised to ensure that the links provided do not reference any obvious (or perhaps even some nonobvious) trademarks. Since the business model depends on this, it might be a good idea to retain a lawyer to do a full review of the portfolio of web sites, to be sure there’s no possibility of a UDRP being filed.

Grubhub, the awesome website that you can use to order up food, didn’t think it was all that awesome when it found out a guy in Massachusetts registered the Domain Name. So it filed a UDRP Complaint. But there were some problems.

The Panel disregarded Grubhub’s trademark registration, because it was in the name of the founder and not the company (who was the Complainant). Without any evidence that the registration was assigned to the company, the Panel refused to find that it stood for any ownership rights in the Complaint. But that’s not all — the Panel also found that the HUBGRUB and GRUBHUB, though interpositions of the same two words, were not confusingly similar.

Case: Lawrence Gurreri v. To Thai Ninh, No. 1328554 (Nat’l. Arb. Forum July 12, 2010)

Complainant owned the Domain Name until October 2008. A hacker allegedly got into Complainant’s Yahoo email account and thereby acquired his Godaddy username and password. Just days thereafter, the Respondent transferred the domain name to his own name. Bizarrely, there’s a website active at the Domain Name which purports to be founded by Complainant.

Though the whole story sounds like a real shame, the Panel refused to find that the Respondent had violated the UDRP. It’s likely that Respondent has no rights and legitimate interests in the domain name, and that the registration was most likely in bad faith. But we don’t know what the Panel would find on those points because it didn’t have to get there — it found that Complainant failed to establish ownership of trademark rights.

More specifically, the Panel found that the words INTERNATIONAL CIRCUIT had not acquired secondary meaning. It was a tough row to hoe for the Complainant. It sounds like the main piece of evidence he used was a screenshot from the website of the bogus website. And the Panel noted that the issue of domain name theft was outside the scope of those types of matters that can be heard under the UDRP.

Bring on the lawsuit.

Element not met: 4(a)(ii)

Domain Name: plan-net.com

There seems to be no shortage of UDRP cases in which the respondent is a party who registered the domain name years ago. (Or in internet time, registered the domain name in the ancient era.) This case is one of those.

Respondent is an Italian company who registered the Domain Name way back in 1998. Complainant is a well known online advertising company with a mark very similar to the Domain Name. The Panel agreed that the mark was confusingly similar, but denied relief because Respondent demonstrated its rights and legitimate interests in the Domain Name.

The Panel found that even though the Domain Name did not point to an active site, it “[did] not have to stretch its imagination too far to believe that the company that the Respondent owns, ‘Plannet sas’ . . . might be known as or some close variation.”

But the Panel went even further to find rights and legitimate interests. There was a dispute as to whether Respondent acquired the Domain Name in 1998 or 2008. The Panel found that even if the Domain Name was not acquired until 2008, that would not negate the Respondent’s legitimate interest in obtaining a domain name, , that is so close in spelling and look to the Respondent’s Italian trademark, PLANNET, and company name, “Plannet sas”.

Photo courtesy Flickr user juandesant under this Creative Commons license.

Case: Arnoldo Mondadori Editore S.p.A. v. Grazia Solazzi, No. FA 1323771 (Nat’l. Arb. Forum June 23, 2010).

In this action under the usTLD Dispute Resolution Policy (which mirrors the Uniform Domain Name Dispute Resolution Policy), Complainant sought transfer of the Domain Name grazia.us. Complainant, an Italian company, has used the mark GRAZIA for many years in several markets around the world in connection with its fashion magazine.

Respondent registered the Domain Name in 2008, but as of the time of the dispute, had not established a website there. Importantly, though, Respondent’s first name is Grazia. And she was able to demonstrate that she had plans to start a food blog at the domain.

So the Panel denied the complaint. It found that Respondent had rights or legitimate interests in the Domain Name because through the use of her name in reference to her journalistic activities and projects, she had become commonly known by the Domain Name.

The Panel also found that Respondent had made demonstrable preparations to use the Domain Name prior to receiving notice of the dispute, and that such preparations were to use the Domain Name in connection with a bona fide offering of goods or services.

Because Respondent had rights and legitimate interests in the Domain Name, the Panel concluded that she did not register or use it in bad faith. On this point the Panel cited Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name) and Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registrations is not in bad faith.”).

Photo courtesy Flickr user Michelle Chagnon under this Creative Commons license.