Parties in Same Business and Operating in the Same Geographical Area

Posted on January 24, 2012 by Gmlevine

Distance is not only geographical and temporal but also measured by product or service offerings. The principle underlying temporal distance is that the respondent could not have registered the domain name in bad faith if the trademark had not then come into existence. Subsequent bad faith use (except in the view of panelists who argue for “retrospective” bad faith) is not grounds for forfeiture of the domain name under UDRP. The greater the distance of all three combined the less likely that the complainant can prevail on the bad faith element, which is the ultimate test.

Geographical distance by itself does not favor the respondent’s good faith claim, but temporal distance (acquiring the domain name prior to existence of the trademark) does. The numerous proceedings by western complainants against eastern respondents are more likely to be resolved in complainants’ favor because geographical distance is unpersuasive where the domain model is merely farming the domain name for pay per click revenue. But, add product or service distance and the respondent is a clear winner.

The reverse is that the closer in geographical and product/service distance the more persuasive complainant’s allegations that the respondent lacks rights or legitimate interests and has registered and is using the domain name in bad faith. This is illustrated in Hoboken Publications, LLC v. Hoboken411.com, LLC., FA1111001414530 (Nat. Arb. Forum January 13, 2012). The parties in this proceeding “operat[e] in the same limited Hoboken geographical area and in the same general business as Complainant.” The likelihood is greater that the respondent “must have had actual knowledge of Complainant and its HMAG mark relative to print and online services.” The inference is clear that

In seeking to own the disputed domain name, identical to Complainant’s mark, and attaching a website at the name that generates advertising revenue – the same sort of revenue sought by Complainant – Respondent surely intended to divert such revenue from Complainant (i.e., disrupt Complainant’s business) and gain commercially from the likelihood of Internet user confusion with respect to the source, sponsorship, affiliation or endorsement of Respondent’s website.

In many instances close geographical distance make denial of knowledge implausible – Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd., D2009-1066 (WIPO November 3, 2009) () (Direct competitor who registered the disputed domain name one year after Complainant established its business) – while far distance supports the opposite inference, namely that more likely than not there is neither knowledge nor targeting. EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (Germany and U.S.A) contesting a nondescript trademark EURO DATA (). As the distance increases actual knowledge is more likely to be found only where the trademark in issue is particularly strong and heavily advertised or promoted.

An interesting footnote on the heavily advertised or promoted is international companies with strong presences in respondents’ markets. Although there is great geographical distance in one respect (corporate headquarters), it is local in another (operating a business). La Quinta Worldwide, L.L.C v. Rudi Seiberlich, D2011-0385 (WIPO April 11, 2011) (Complainant “is the registered proprietor of many trademarks for LA QUINTA and variants of that trademark both within the United States and internationally, including in Italy where the Respondent is domiciled).

The burden of proving a violation of the Policy is lighter for suggestive and arbitrary and heavier for generic and descriptive terms current in commercial activity – HSM Argentina S.A. v. Vertical Axis, Inc, D2007-0017 (WIPO May 1, 2007) in which the Panel pointed out that eEvidence of third party use of terms identical to the trademark “mitigates against a finding that the Respondent knew specifically of the Complainant or its mark when the disputed domain name was registered.” Denying knowledge is unpersuasive where the respondent uses the domain name to advertise the same goods or services as the complainant. A case in point is ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010) (Parties in the United States and Hong Kong). The Respondent denied knowledge, but populated its website with competitive links.

Use speaks for itself. So, the Panel in ChemRite transferred the domain name to Complainant. If no other inference can be drawn except that the respondent is taking advantage of the complainant’s trademark, respondent loses. Hoboken Publications wins for the same reasons.

Posted in Denial of knowledge, Geographic distance, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Prima facie case, Totality of facts, Website content | Tagged , , , , | Leave a comment

Assessing Similarity of Part for Confusing Similarity of the Whole

Posted on January 18, 2012 by Gmlevine

The test for establishing confusing similarity is relatively modest. Low though the bar is set, however, it is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts. “The concept of ‘confusingly similar’ lies at the very heart of all trademark conflicts, where the test is whether the names are phonetically, visually or conceptually similar.” Advance Magazine Publishers v. MSA, Inc. & Moniker Privacy Servs., D2007-1743 (WIPO Feb. 28, 2008). In assessing domain names under the first element of the Policy panelists apply rules familiar to trademark infringement. Put another way, Todito.com, S.A. de C.V. v. Affordable Webhosting, Inc., D2004-0688 (Nat. Arb. Forum Oct. 11, 2004):

when determining whether . . . similarity may give rise to situations of confusion or false association, it is necessary to consider not only the degree of similarity of the terms in the strict sense but also the degree of distinctiveness of the mark given that, obviously, the greater the distinctiveness or originality of the registered mark, the greater the risk of confusion.

A good summary of views is set out in salesforce.com, inc. v. Domain Admin / Internet Venture Holdings, Inc. (ivh.com), FA111100 1416951 (Nat. Arb. Forum January 5, 2012). Letters and words added to or subtracted from the trademark are evidence of confusing similarity if the similarity of a part suggests the whole, but not confusingly similar if the whole contains its own meaning and the domain name is used consistently with it. Letters and words added to or subtracted from the trademark are evidence of confusing similarity if the similarity of a part suggests the whole.

Thus, the mere addition of a letter, or the creation of similar word, can create a domain name that is confusingly similar to a mark. Either the variation is phonetically identical to the mark or it renders the domain name indistinguishable from it. To illustrate the first example, substituting a “k” for the letter “c” does not change the pronunciation of the word, as in ECOLAB and . Ecolab USA Inc. v. Tomasz Kluz / Ekolab s.c. Tomasz I Aleksandra Kluz, FA 1386906 (June 3, 2011). The second example is WIRED and <wwwwired.com> where “wired” is the dominant element of the mark. Advance. In Ecrush, Inc. v. Cox, Davis & Simpson, LLC, D2004-0552 (WIPO Sept. 11, 2004) (ESPIN THE BOTTLE and) the Respondent changeda single letter, “i” for “e.” The Panel found that the “one-letter change is not a misspelling of Complainant’s mark that results in an otherwise nonsensical word or phrase; on the contrary, the Disputed Domain Name and Respondent’s other domain names are everyday phrases incorporating the name of the parlor game.”

“These cases” (the Panel in salesforce.com explains)

are in contrast to the present case. First, the word “forces” has an apparent relationship to the military, thus having no evident connection to any business activity of the Complainant. Second, as to SFORCE and FORCE.COM there is no phonetic or visual similarity between the domain name and Complainant’s marks. Although the word “forces” is arguably visually similar to Complainant’s FORCE mark, the lack of distinctiveness to the mark, and the demonstrably different meaning of the words, results in a lack of any confusing similarity between the two.

The dissenter in Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) – who is the sole panelist in salesforce.com – proposed that the similarity must be confusing to an “objective bystander.” Applying that standard he rejected <opensociety.org> as being confusingly similar to OPEN SOCIETY INSTITUTE). However, the “objective bystander” standard carries a burden of subjectivity. For this reason, Panels generally tend to give complainant the benefit of the doubt on this element. In salesforce.com the objective bystander (as fictively breathed into life by the Panel) is called upon to make an assessment whether is confusingly similar to FORCE. Framed by the Panel in Advance, the question is whether the “alphanumeric string comprising the challenged domain name is identical to Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name is ‘confusingly similar’ to the mark.” The domain name trademark FORCE

Whatever similarity in part between trademark and domain name does not prove confusing similarity to the whole.

Posted in UDRP | Leave a comment

Injunctive Relief Against Domain Name Registrants for Unauthorized Registration of Personal Name

Posted on January 12, 2012 by Gmlevine

Unless personal names have achieved trademark status they are not protected under the UDRP. Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names In the Internet Domain Name System, dated September 3, 2001 which states: “the application of the UDRP to the protection of personal names [is authorized only] when they constitute trademarks,” Paragraph 179. Excluded are living persons whose reputations are earned out of the spotlight of commerce even though active in the figurative scrum of their businesses or professions. This rule applies however extraordinary the individual’s contribution is to business, science, politics, the professions and the academy. The WIPO Report states that it may result in an “injustice” and is undoubtedly an unhappy limitation: “many sensitivities [will be] offended by the unauthorized registration of personal names as domain names” and the “result is that there are some perceived injustices.” Report paragraph 199.

In contrast, the Lanham Act provides a remedy for cyberpiracy of personal names that do not qualify for trademark protection, formerly codified at 15 U.S.C. 1129, now 15 U.S.C. 8131 (Cyberpiracy protections for individuals). Explaining the necessity for the provision, Senator Hatch, noted

As with trademark cybersquatting, cybersquatting of personal names poses similar threats to consumers and e-commerce in that it causes confusion as to the source or sponsorship of goods or services, including confusion as to the sponsorship or affiliation of websites bearing individuals’ names. In addition, more and more people are being harmed by people who register other people[’]s names and hold them out for sale for huge sums or money or use them for various nefarious purposes.

There has been a couple of reported cases and several unreported. In one of the reported case the court granted an injunction, Schmidheiny v. Weber, 319 F.3d 581, 66 U.S.P.Q.2d 1062 (3d Cir. 2003), and in the other it denied it, Carl v. BernardJCarl.com, 662 F. Supp. 2d 487 (E.D. Va. 2009), aff’d 409 F. App’x 628, 630 (4th Cir. 2010) (per curium) (unpublished). In Schmidheiny, the court based its conclusion on a consideration of factors including the defendants’ past similar behavior, the short time-lapse between registration and offer for sale, and the placement of the domain names “for auction at a price that had no reasonable connection to its value to anyone other than the plaintiff.” 319 F.3d at 628.

In one of the unreported case from the Middle District of Florida, Salle v. Meadows, 6:07-cv-1089-Orl-31 (August 6, 2007) the court granted a preliminary injunction against defendant who admitted purchasing the domain name and attempting to sell it to the plaintiff for $9500. He claimed he was merely attempting to recover money plaintiff owed him. The court rejected this “defense”: “cyber-extortion is not a permissible way of recovering a debt” and ordered the domain name transferred.

The latest of these cases, unreported from New York has just recently been filed, Paul Bogoni v. Vicdania Gomez, 11 Civ. 08093 (S.D.N.Y. December 28, 2011) the court has also granted an injunction. The court found that “defendant purchased [two domain names] – multiple versions of the plaintiff’s real name – for less than twenty dollars in total, and, within several days, posted an offer to sell the Domain Names for $1,000,000 each.” The court concluded that plaintiff stated a claim under § 8131(A) and proceeded to examine whether defendant’s defense under § 8131(B) “remove[d] her from the reach of the ACPA.”

Section 8131(B) requires defendant to prove absence of bad faith. This she was unable to do. The Section reads:

A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially or confusingly similar thereto, shall not be liable under the paragraph if such name is used in, affiliated with, or related to a work of authorship protected under Title 17, including a work made for hire, as defined in section 101 of Title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by contract between the registrant and the named person.

The defendant concocted a set of facts that made it appear as though there was a copyright issue. The court concluded is was a sham, that the registration violated the statute and granted a preliminary injunction enjoining defendant from continuous use of the domain names.

Posted in Anticybersquatting Consumer Protection Act, Personal name, WIPO Second Report | Tagged , , | Leave a comment

Temporary and Inadvertent Infringing Use of Domain Name

Posted on January 10, 2012 by Gmlevine

Complainants of trademarks on the lower end of the classification scale have a greater burden to prove bad faith registration even where respondent is in the domain name business and there is proof of temporary infringing use of the domain name. “The number of other persons or entities holding identical if non-competing marks and the number of other users with rights in [a] name are clear evidence of the limited ownership claims of the Complainant.” Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett, FA1111001415905 (Nat. Arb. Forum January 4, 2012) disputing over <ssx.com>. The Respondent in this case is a high volume registrant. It acquired the disputed domain name as part of a portfolio of three and four letter generic names from a prior holder.

High volume registrants have an enhanced duty of care, but it does not impose an impossible burden of investigating every domain name for possible infringement of a third party’s trademark rights. Where Panels have rejected respondent’s good faith allegations it generally involves trademarks well-known in the market place. For registrants who regularly engage in the business of registering and reselling domain names, and/or using them to display advertising links they must be able to show that

1. It had made good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
2. The domain name in question is a dictionary word or a generic or descriptive phrase;
3. The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
4. There is no evidence that the Respondent had actual knowledge of the Complainant’s mark.

Where there is no evidence of bad faith registration the Policy does not penalize a respondent for changing use of the domain name after notice that it contains infringing content. Inadvertent transgressors typically involving domain names composed of generic or descriptive words and combinations used in their commonplace sense are treated more kindly than respondents advertently taking advantage of the complainant or its trademark. Enhanced investigation of domain names identical or confusingly similar to trademarks can be traced to Mobile Communication Service Inc. v. WebReg, RN., D2005-1304 (WIPO February 24, 2006) contending for. The Panel in that case held that MOBILCOM (an unregistered trademark) was not a dictionary word or a generic or descriptive phrase. He concluded that where

a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.

This is in contrast to high volume registrants such as the respondent in Electronic Arts who is “in the business of buying and selling generic domain names.”SSX is composed of generic letters. “Complainant clearly does not have an exclusive monopoly” on letters that can equally and legitimately be employed by other parties in unrelated fields. Although it is not a defense that respondent’s hosting company was responsible for placing content of a website, nevertheless where hyperlinks are quickly removed it is some evidence of its intentions. “Respondent alleges that the resolving website was only supposed to contain generic hyperlinks and not competing hyperlinks.” The Panel accepted this explanation. “Generic hyperlinks” is the broadest generic meaning that an ordinary dictionary word is capable of carrying. Tomsten Inc. v. Registrant [7281], FA 925448 (Nat. Arb. Forum April 20, 2007). For made up words like “mobilcom” there can be no legitimate use by another party in an unrelated field. For “ssx” the opposite is true.

Dissents in a number of cases have argued for greater diligence. The dissent in BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. Future Media Architects, Inc., D2006-0534 (WIPO July 28, 2006) for example suggested that registrants who use their vast accumulations to exploit a business opportunity have “a greater duty … to verify that the use of a domain name … is legitimate.” In that case the parties were contending for. But, the consensus view is that bulk registrants may legitimately hold generic domain names absent clear and convincing evidence that their use demonstrates knowledge and targeting of the trademark.

Unintentional hyperlinking quickly removed upon receipt of notice reinforces a respondent’s assertion of good faith registration. By “[m]odifying such a website also may attenuate the harm to a complainant whose trademark or commercial interests are allegedly compromised by the website prior to remediation.” American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Nat. Arb. Forum July 27, 2010)(). The Panel’s point is that respondents (in the inadvertent class) should not be discouraged from “this positive behavior…. [T]he fact of a website’s remediation should not create an evidentiary inference adverse to the respondent.”

Posted in High volume registrant, Links to competitive goods or services, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Parking, Pay-per-click, Policing trademark, Targeting / Not targeting, Transfer of domain name | Tagged , | Leave a comment

Legitimate Noncommercial or Fair Use of Domain Name Identical or Confusingly Similar to Trademark

Posted on January 5, 2012 by Gmlevine

Lego is one of those trademarks instantly recognizable in the marketplace. The number of UDRP proceedings against Lego infringers runs into the dozens (I’m probably underestimating). Here is a baker’s dozen decided in December 2011: <legodiscounter.com>, <legoninjagofiretemple.com>, <legoverhuur.com>, <legoland florida.com>, <legolandorlando.com>, <legosoft.com>, <legowatches.org>, <lego-fan.net>, <legomen.com>, <legostarwarsgames.org>, <legoharrypotterquidditch match.net>, <legoarmory.com>, <legocitycorner.com>. How can a respondent escape losing a “lego” domain name? The issue in the first instance is how the domain is being used and the purpose for which it was registered. There has to be a match. Even with famous trademarks, complainant can be defeated if the purpose for the domain name is “legitimate noncommmercial” and its use fair under paragraph 4(c)(iii) of the Policy. Complainant was unsuccessful for <legoworkshop.com> in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, D2011-1263 (WIPO October 1, 2011). Why?

The Panel in Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) explained that “it would take an exceptional case to succeed where there was no malicious or exploitative intent directed at the complainant [or its trademark] at time of registration of the domain name.” The Respondent in Velcro was a creative “velcro” artist. In Lego v. Griffith, the Respondent stated that he

registered [the domain name] on behalf of his 15 year old 10th grade son who has been a LEGO enthusiast since he was 3 years old. His intent was to create a website that showed off the creations that he (the son) has built over the years in “both photographs and occasional video while also showing steps to build his creations”.

It was “part of a high school project” and that his son has

chosen this to be his project as it allows his passion for the product, the creativity of building using the product and the programming technology required to create and maintain the site to flourish while helping other kids to build creations that they might not be able to dream up on their own and to share building ideas”.

A 4(c)(iii) defense is credible if the use matches the assertion of noncommercial or fair. In a 2008 case Respondent argued that his registration of <narnia.mobi> was a birthday present for his son who was a fan of the Narnia books, C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith, D2008-0821 (WIPO July 21, 2008). His sole intent of using the domain name for a child’s e-mail address and with no commercial motivation establishes rights or legitimate interests under the Policy. But, his use (or, rather nonuse) of the domain name gave him away:

the Panel cannot envision any plausible, good faith basis upon which the Respondent could have concluded that he was free to appropriate the Complainant’s distinctive and widely known NARNIA mark for use as a personal email address.

Contrastingly, in the Lego case there was a matching of allegations with use of the website. The Panel “is confirmed in its view that the Respondent has shown that the circumstances specified in paragraph 4(a)(ii) exist. He continues,

In many circumstances, bad faith registration in the face of such knowledge can be readily inferred. However, the record here would suggest that, notwithstanding such knowledge the Respondent and his son did not intend to cause any confusion or diversion of custom and did not, indeed, believe this to be likely, given the nature of their intended website. While the facts of each case will differ, in the present case the Panel accepts that this is sufficient to dispel the inference of bad faith registration that might otherwise arise.

The language of 4(c)(iii) “makes it clear that the operator of a noncommercial fan site can take advantage of this provision unless the operator, with an intent for commercial gain, is misleadingly diverting consumers or tarnishing the mark.” Estate of Francis Newton Souza v. ZWYX.org Ltd, D2007-0221 (WIPO June 18, 2007).

Posted in Abusive intent, Commercial gain, Fair use, Knowledge, Legitimate use, Likelihood of confusion, Noncommercial, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(iii) of the Policy | Tagged , , | Leave a comment