Last day to apply for .xxx Sunrise registrations
Today is the (extended) last day to apply for .xxx Sunrise registrations, to prevent other parties from later registering a domain name with your trademark in it. More information here. I don’t think it’s been definitively decided whether the UDRP will apply to .xxx domains or whether the URS (“rapid suspension”) system will be in place; but that’s a minor detail when you can go ahead and protect your brand right now. (Also, if anyone has any definitive answers on that, let me know and I’ll update here.)
Update: UDRP does apply and URS doesn’t. Thanks to Kevin Murphy (@DomainIncite) for reminding me!
Prejudice under the UDRP
A typical question that comes up during a UDRP case is, what happens afterwards if the case is denied? Can you simply try again, or are you prevented from ever filing a UDRP complaint on that particular domain again?
The question involves the legal doctrine of prejudice, in other words, whether a matter has already been determined one way or the other. Under the UDRP, the general rule is that once a complaint has been denied, you may not file another complaint on the same domain against the same respondent. There are some limited circumstances, however, including
when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.
Basically, you have to have a pretty darn good reason, otherwise the UDRP panel will say “too bad, this was already denied once, we’re not going to look at it again. If you don’t like it, you should have challenged it in a court of competent jurisdiction.”
Normally, UDRP panel decisions don’t specifically say that a complaint is denied “with prejudice,” meaning that it cannot be re-filed. However, a recent NAF decision issued a denial “without prejudice,” which I thought was interesting. In this case, which involved two domains — surveyclaim.com and surveyresearchcenter.com — the Respondent didn’t even bother to respond, and was apparently using at least one of the sites in an abusive, phishing manner. The Complainant was the University system of Michigan, which claimed to own rights to the SURVEY RESEARCH CENTER mark. The Panel found that the domain surveyclaim.com was not confusingly similar to the mark, and denied the complaint with respect to that domain on that basis, despite the fact that the domain was being obviously* used in bad faith (a false claimed association with the Complainant and phishing stuff).
*There’s nothing there on the site now, so I’m not sure what it looked like.
The Panel then went on to find that the complaint failed under the rights or legitimate interests prong of the UDRP for the surveyresearchcenter.com domain name, because the Complainant failed to provide any evidence whatsoever of what the domain was being used for. This is pretty standard stuff: a complainant must prove its case, bald assertions of fact are not sufficient, etc.
But the interesting thing was this:
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED without prejudice.
So what does this mean, exactly? Normally, in court, it’d mean the case could be refiled, hopefully with corrections to whatever the defect was. But I’m not sure that this really comports with the WIPO Overview 2.0, #4.4, which I cited above. Certainly the evidence that was not provided here by the Complainant could have, and should have, been provided now. In a later filing, it can’t argue that this evidence wasn’t available previously. And if there’s been no change in the way the domains are being used, it would seem to be impossible to argue that there’s some new use that’s come to light since the first filing. Further, does a Panelist even have the power to issue that sort of a proclamation to a future panel, effectively saying “give them another try”? On a certain level, each UDRP is it’s own distinct animal, and cases explicitly do not have precedential authority, although in practice most UDRP panels tend to (at least sort of) treat them in that way.
All in all, it’s a completely foreseeable result when you fail to provide evidence at all, so I wonder how they’ll get around that in any potential future filing.
Disclaimers, good faith, and legitimate use
A recent WIPO case covered the use and effect of a disclaimer on a web site. The domain name in question, cineredcr.com, was registered and being used by a company based in Missouri with operations in Costa Rica (hence the “cr” part of the domain name). The Complainant objected on the basis of its numerous RED CINE trademark registrations, and claimed that the Respondent was cybersquatting on the domain name and profiting from misdirected traffic and customer confusion.
But the Panel disagreed.
It is appears from the record that Respondent has used the disputed domain name in connection with a bona fide offering of services in Costa Rica. Respondent has continuously used CineRed and CineRed CR since 2007, which is now used as its domain name. Respondent claims the disputed domain name was registered to continue normal business and make its services known online. A copy of the web site included in the record shows that Respondent has continually conducted and solicited its services in Costa Rica.
…
The record shows that CineRed was created in Costa Rica, July of 2007, several months before the first use of REDCINE by Complainant. Complainant has no registrations in Costa Rica. Even if Respondent knew of Complainant’s trademark rights in the U.S., it does not necessarily mean the domain name was registered in bad faith. See Drake Bliss v. Cyberline Enterprises, WIPO Case No. D2001-0718. It is possible to adopt a domain name that is similar to another’s name in good faith and with the belief that it would not be an infringement of another’s rights. See also UMB Financial Corporation v. Cynthia Galant, WIPO Case No. 2010-1855.
On the contrary, the record supports a finding of Respondent’s good faith registration and use. Respondent offers actual services that do not compete with Complainant’s business. Respondent attempted to register <cinered.com>, the actual name of its company, but found it was taken by another party; the disputed domain name <cineredcr.com> was the next closest domain name available. Moreover, Respondent never tried to sell the domain name for profit. Rather, Respondent agreed to make changes proposed by Complainant to differentiate the web sites, and include a disclaimer at Complainant’s demand. The only condition Respondent did not concede was to transfer the disputed domain name.
The record does not support the claim that Respondent attempted to attract commercial gain by creating confusion. The companies are not direct competitors. The fact that both companies exist in the broader film or cinema industry does not necessarily create a likelihood of confusion. See Checkpoint Systems Inc. v. Check Point Software Technologies Inc.,104 F. Supp. 2d 427, 467-68 (D. N.J. 2000) aff’d 269 F.3d 270 (3d Cir. 2001) (discussing similar names in the context of broader industry do not necessarily infringe). Complainant develops and manufactures high-end cinema cameras and accessories. Respondent, on the other hand, rents production equipment for film projects in Costa Rica; they do not offer RED cameras, but they will obtain them at the request of a client. Given Respondent’s use as a legitimate film production, logistics, and rental company in Costa Rica since 2007, Complainant has not shown Respondent operated in bad faith.
Further, and more interestingly, the Panel discussed the use of a disclaimer on Respondent’s web site.
It should be noted that the use of a disclaimer on a web site does not clear a respondent of bad faith. A disclaimer may be ignored or misunderstood by Internet users, and it does nothing to dispel initial interest confusion that is inevitable from a respondent’s actions. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com“, WIPO Case No. D2000-0847 (citing Brookfield Commons Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999)). Yet the disclaimer here was added at the request of Complainant, which indicates Respondent’s good faith in use.
Initial interest confusion is probably on the decline, at least in the 9th Circuit, See Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). Plus, come on, you’re citing Brookfield, a 1999 case, and a 2000 UDRP decision? Most of the big players online nowadays didn’t even exist in 1999, and UDRP jurisprudence has developed a lot since that time. I’d argue that Internet users are a lot more savvy with regard to web sites that they visit now, than they were in 1999 (certainly judges are a lot more savvy!). At any rate, the ultimate decision seems correct, even if this language about “initial interest confusion” seems archaic and misplaced.
Fan sites & the UDRP
I’ve had several inquiries lately from domain owners about their ownership and use of “fan sites,” or sites that may incorporate a trademark of a famous person or business for the purposes of talking about that person or business, collecting and republishing news about them, and activities like that. The questions I get are, does the trademark owner have the right to force me to give them the domain name, am I cybersquatting on the trademark owner’s rights? The answer, at least under the UDRP, isn’t 100% clear, but there are some general guidelines to keep in mind.
First, as a threshold matter, any fan site must be “clearly active and noncommercial.” What does that mean? It means you can’t have a blank page there, you have to be making active use of it; mere passive holding of a domain name is unlikely to be held to be a “fair” use. It also means that the site must not be commercial in nature. More on that point in a bit.
As I said, this is not what I would call a “settled” area of UDRP jurisprudence. Under WIPO’s Overview 2.0, #2.5, there are two prevailing viewpoints.
View 1: The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate non-commercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site’s subject). (emphasis added)
…
View 2: A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet. (emphasis added)
Under the first view, a fan site which includes only a very limited number of advertisements, perhaps to offset hosting charges, might be held to be incidental or ancillary. It’s important to stress the might portion of that sentence. How much is too much advertising? It’s difficult to say. But abundant ads in sidebars and banners and footers of every page will likely result in the site being held to not be a legitimate, noncommercial fair use of the trademark. Obviously, no ads is the safest route to take, but may be the most difficult to implement.
Under the second view, the inquiry goes to the intent of the registrant. Any attempts to misleading visitors or imply a false assertion of sponsorship or connection between the registrant and the trademark owner will not be looked upon favorably, whether there are ads or not. Similarly, if the business or individual is being prevented from reflecting their own mark in the gTLD space because of the fan site, that use may not be legitimate. Obviously, this is most often seen in the case of .com domains, for example, this NAF case. But for a counterpoint, check out this case from WIPO. See also my blog post regarding cybersquatting and the 9th Circuit’s nominative fair use doctrine. I think it’s an open question whether a trademark owner has a right to all of the trademark.gTLD domains (i.e. the .net, .org, .info domains as well as the .com domain). I think there’s a good argument to be made that fair and noncommercial use of a .net or a .org as a fan site is probably stronger than a .com, and probably strongest where the trademark owner already owns the .com.
So, the bottom line is, a fan site may be defensible from attack in a UDRP proceeding, but only if a few guidelines are carefully observed in setting up the site. The further a registrant strays into commercial activity, the less likely it is that a UDRP panel will agree with the argument that the site is making fair use of the trademark.
An offer to sell for high $ may not be evidence of bad faith
Nothing, and I mean nothing, makes trademark owners angrier than telling them they can buy your domain for $100,000, or more, particularly if the correlation between their mark and the domain name that you own is very high. This anger can often blind them to the legal issues in question in a UDRP proceeding, as they become so incensed about what they perceive as a demand that amounts to extortion, and may file a UDRP without good evidence to support their argument of bad faith registration and use.
Here’s a case precisely on point: the recent denial of a UDRP filed at WIPO over the domain gea.com. The owner of the trademark, GEA Group Aktiengesellschaft of Dusseldorf, Germany, apparently admitted in their complaint that they tried to purchase the domain, but the owner said he wouldn’t sell for anything less than some multiple of $20,000-$40,0000.
… the Respondent’s refusal to accept the Complainant’s various offers to purchase the Disputed Domain Name [gave] the impression that the Respondent [would sell] the Disputed Domain Name for considerably more than the USD 20,000 – 40,000 offers that it had turned down from other parties. As a consequence the Complainant says that the remaining impression is that the Respondent registered and used the Disputed Domain Name in bad faith.
But, wait just a second.
[The Complainant] says that the Disputed Domain Name was registered long after the Complainant first used the GEA mark as early as the 1920s and that the Respondent appears to use the Disputed Domain Name both for non-commercial and for commercial services in relation to its G. E. A. Design services business. (emphasis added)
It’s entirely possible to engage in legitimate noncommercial or fair use of a domain name containing a trademark. Indeed, it’s even possible, under the UDRP, to engage in commercial use of a domain name that contains a trademark or a term that’s potentially confusingly similar to a trademark provided the registrant has some legitimate rights or interests in the domain name. As we’ve seen before, that’s not a very high bar. And it looks like the Complainant even acknowledged this fact, perhaps unintentionally, in its Complaint.
If so, oops.
And here’s why that’s not a good idea, if you’re a Complainant (and great if you’re a Respondent in a similar situation as this guy):
… the Panel notes that GEA reflects the Respondent’s initials and that he historically and currently uses the Disputed Domain Name for his personal email address. Although it appears that the Respondent initially used the website for his database entry and design business under the “G.E.A.” Design name which would also explain his choice of registering a domain name in the “. com” domain space, it also appears that he has not used the website for this purpose for many years and that he has not used the Disputed Domain Name for any ulterior or illegitimate purpose. (ed. those uses alone would almost certainly be legitimate.)
…
The Respondent has a legitimate explanation for its use of GEA in the Disputed Domain Name based on the use of initials and the Respondent’s original business name and the Panel accepts the Respondent’s explanation that he was not aware of the Complainant’s mark at the date of registration of the Disputed Domain Name.
The Panel notes that at the time of registration and while the Respondent’s business was still operational, it is highly unlikely that the Respondent sought to trade off the Complainant’s reputation by attracting Internet users seeking the Complainant’s services. There is nothing before the Panel to contradict the Respondent’s explanation that he was operating a largely personal site even while providing files off the site which clients could download. Further considering the respective business sizes it seems unlikely to the Panel that the Respondent was ever in real competition with the Complainant.
So the complaint must fail, even though the registrant apparently indicated that he’d sell the domain name for an amount far in excess of its registration costs, which is one of the pieces of evidence specifically described by the UDRP under the bad faith registration and use requirement. Why is that?
Because there were rights or legitimate interests to rely on here.
… the Panel notes that the Respondent has apparently refused numerous offers for sale of the Disputed Domain Name from various organizations, including from the Complainant, on the legitimate basis that it has used its email address from this website for many years and that to sell it and to have to change email addresses would cause the Respondent considerable disruption and inconvenience. In these circumstances the suggestion by the Complainant of its impression, based on its lawyers’ communications with the Respondent in 2009, that the Respondent would be prepared to sell the Disputed Domain Name for a substantial multiple of the USD 2,000 sum offered by the Complainant, carries little weight. (emphasis added)
This is a good example of how the various prongs of the UDRP intertwine upon and inform one another. But, as always, as a potential complainant, you should be wary of trying to solicit the sale of a domain name you’re intending to file against, as you may end up looking like you’re trying to skirt around your inability to prove bad faith or lack of rights or legitimate interests. And, as a potential respondent, be aware that making a large offer to sell won’t necessarily be used against you later, but you should be absolutely sure about your position with respect to bad faith registration and use, or rights or legitimate interests!
There was also a bit of language in this case about the Complainant’s delay, in that they are an international company that’s been around since the 1920s, and apparently didn’t contact the Respondent until 2009, quite a few years after the domain was registered in 1995.
Lexapro v. Flexapro: typosquatting or product name?
The makers of the drug and owners of the trademark LEXAPRO filed UDRPs against the owner(s) of three domains: flexapro.com, flexapro.net, and flexapro.info. The cases were semi-consolidated by a WIPO panel into two identical decisions, available here (.net and .info) and here (.com).
The Complainant argued that the flexapro domain names were typosquatting on its registered mark. Typosquatting is the practice of adding, subtracting, or rearranging letters from a domain name with high traffic numbers. A great example of this is the recent Facebook lawsuit against lots of defendants over various misspellings of its “Facebook” trademark. (I’d love to comment about that case further because there’s some interesting theories involved, but I’m involved in it as legal counsel, so that’s as far as I can go right now.)
But unlike traditional typosquatting, here the Respondent actually made/sold a product by the name Flexapro, a fact that the Panel pointed out.
Here, the Respondent chose the domain names because they are (exactly) the name of his own product.
The Panel also finds some force to the Respondent’s contention that the eye- or ear-catching feature of the disputed domain names is not “lexapro” but the initial syllable “flex”, selected by the Respondent to emphasize athletes, one of his product’s target markets. The registrar [sic; they don't necessarily provide the ad links, not sure why the Panelist thought so] apparently thought so, as “flex”, and not the Complainant, the Complainant’s products, any pharmaceutical products, the Respondent’s products, or any pain relief products, is the basis for its targeted hyperlinks. A single-letter addition or substitution does not automatically mean confusing similarity; compare the disputed domain name <ispinthebottle.com> with the complainant’s mark, ESPINTHEBOTTLE, in eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, WIPO Case No. D2004-0552. One can easily imagine circumstances where the addition of a single letter would not create confusion. (footnote omitted; emphasis added)
Still, even though this plain reading argument had some obvious merit, the Panelist was able to dispose of the case on other grounds.
The Respondent’s evidence of pre-dispute demonstrable preparations to use the disputed domain names to market his pain relief products demonstrates considerable work and expenditure, over a substantial period of time, for marketing this product. The Respondent’s showing far exceeds the relatively low threshold required to come within paragraph 4(c)(i) of the Policy. See e.g. Télévision Française 1 (TF1) v. Khaled Bitat, WIPO Case No. D2007-0137 (“Even perfunctory preparations have been held to suffice for this purpose”). Unless the Panel finds that the Respondent’s entire use of the word “flexapro” is male fide, the Respondent has made out a defense.
The Panel went on to conclude that Complainant’s request to find that the Respondent had chosen the domains specifically to free-ride on its LEXAPRO product name and trademark wasn’t persuasive, because there were other possible reasons, articulated by the Respondent, for the choice of the domain names. Again, as a Respondent, it’s sort of like a criminal defense case, where you don’t need to show what happened, you just need to show reasonable doubt about the prosecution’s theory of the case. And here there was a lot of reasonable explanation for the Respondent’s acts.
Finally, the Panel apparently believed that the Complainant was really more upset about alleged trademark infringement than it was the actual domain names themselves, and noted that a UDRP is not the proper place for a trademark lawsuit.
The Complainant’s real bone of contention with the Respondent is not about entitlement to three domain names; rather it is the asserted trademark infringement based upon the two unrelated products’ similar brand names. Again quoting from the IARAS case, supra (citation omitted):
“Trademark infringement is a far more substantial and complicated cause of action than cybersquatting, with stakes far greater than entitlement to a single domain name. The national courts exist to resolve such disputes; a Policy panel lacks jurisdiction and competence to do so.”
So it is here: the USPTO or the courts are the proper place to resolve this dispute. Under the Policy the Complainant has failed to establish that the Respondent lacks rights or a legitimate interest in the disputed domain names.
And, likewise, it failed to establish the Respondent’s bad faith in registering the domain names. It must be a depressing result (#rimshot!) for the drug manufacturer…
A three letter domain lost via UDRP
I’ve always thought that three letter, or possibly even four or five letter, domain names are probably invulnerable to transfer under the UDRP, because of the potential for the domain to be an acronym for so many possible business names, which would almost guarantee that a respondent could show some rights or legitimate interests in the name, causing any complaint to fail. Apparently, I was wrong, and a WIPO panel recently ordered the transfer of bjp.com to the Bharatiya Janata Party (BJP) of New Delhi, India.
(By the way, for a look at a truly awful website, check out the Respondent’s representative in this case, the-internet-lawyers.com. Be warned, very flash-intensive, but click on it and “enter” and you’ll get to the annoying music, strange layout, and … Latin gibberish text all over the place? Huh? Yeah, I don’t know, either. [Was corrected via Twitter, the "lorem ipsum" is not Latin, it's just nonsense. Thanks @greategress!])
After finding that “latches” [sic; it's laches] doesn’t apply in a UDRP case and finding that the bjp.com domain name was confusingly similar to the BJP mark, the panel proceeded to discuss the Respondent’s (lack of) rights or legitimate interests.
Based on the material presented in these proceedings, the Panel finds it is unlikely that the Respondent was unaware of the pre-existing rights of the Complainant’s mark when it registered the disputed domain name as the Respondent resides in the city of Bangalore where the Complainant is widely known.
The Respondent has not filed any evidence in these proceedings to show that he had a business prior to 1997 to justify honest adoption of the name and registration of the disputed domain name. The documents submitted by the Respondent pertaining to its business is a certificate under Shops and Establishment Act dated July 2008. Further, there is no evidence on record to show that the disputed domain name was used during the period 1997 to 2008, and from this the Panel infers that the Respondent till 2008 passively held the disputed domain name. In its response the Respondent has stated that it proposes to the use of the website in connection with its business once the dispute is over. Mere assertion of a contemplated business plan is insufficient to establish rights and legitimate interests, particularly when contradicted by evidence of abusive conduct (Helen Fielding v. Anthony Corbert aka Anthony Corbett,WIPO Case No. D2000-1000)
Exhibit A of the Respondent’s supplemental submission shows screen shots of the archived website linked to the disputed domain name. On scrutinizing these, the Panel finds that the screen shots show some advertisements for a Hindi film on December 10, 2008 and links to news items dated February 16, 2009 and February 17, 2009. [Ed. Oops! Not good, fellas.] What is significant is that there appears to be little no original content on the website. The Panel is not convinced that the screen shots of the Web pages provided by the Respondent show the Respondent runs a bona fide publishing business or has used the disputed domain name in connection with the said business. Further the purported documents showing use in connection with the publishing business is provided for a very short period of a few months, whereas the Respondent has held the disputed domain name for nearly fourteen years.
As rightly mentioned by the Complainant, no information or evidence about the nature of the Respondent’s business has been provided in these proceedings. The Respondent does not mentioned what type of publishing business it runs, whether it is publishing books or does some kind of online publishing. Nor has the Respondent provided any other evidence that may prove the existence of a bona fide business such as yearly accounts or a statement of turnover, the names of books or journals published by the Respondent. For the reasons discussed, the Panel finds that the Respondent has not established that it uses the disputed domain name in connection with a bona fide offering of goods and services.
…
For the reasons discussed the Panel is satisfied that the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name as required under the second element of paragraph 4(a) of the Policy.
Obviously, to properly defend a UDRP complaint such as this, one would need to have a reasonable and plausible ability to deny knowledge of the claimed right, point to the existence of other business using the same acronym like, oh, I don’t know,
or 
,
and show some legitimate business rights to the domain name. Here, because the Respondent apparently lives in the same town where the Complainant is prominent, there’s no plausible deniability. And because the Respondent just sat on the domain for fourteen years, and then apparently tried to create a (potentially fake/false) publishing business to defend against a threatened UDRP complaint, there’s just no way for the Respondent to succeed here.
And, of course, this didn’t help their case much either:
The Panel also notes the record shows there has been cyber-flight when the complaint was filed, the address and telephone details provided by the first Respondent appear to be false and spurious, Further, as argued by the Complainant, the Respondent is silent about why the search for the Respondent’s name diverts Internet users to the website of its rival political party. The Panel draws adverse inference from all these factors in addition to the other facts and circumstances showing bad faith registration and use of the disputed domain name.
In the end, this seems like a well-reasoned decision. Of course it aroused a lot of ire in the domainer-sphere, but I don’t think there’s anything here that’s poorly argued by the panelist, at least based on the facts that we’re given. Essentially, there was a large amount of evidence of bad faith, and very little to support their contention of rights or legitimate interests, so they lost. End of story.
Obvious cybersquatter wins UDRP
Here’s a very interesting Panel decision that came out of WIPO recently. Starwood Hotels, which owns the “W” hotel brand and trademark, filed a UDRP on several domain names registered by an individual with a history of cybersquatting, as acknowledged by the Panelist. Even though the alleged cybersquatter didn’t respond to the complaint, the Panelist found that Starwood failed to prove up its rights in the claimed mark at issue. What happened here?
The mark at issue in this case was the single-letter mark W, and W HOTELS. The Panelist discussed at length the analysis required to evaluate the first prong of the UDRP, and ultimately decided that while there was a mark at issue, it wasn’t particularly strong.
It is self-evident that the letter “w” is not inherently distinctive.
…
The Panel considers the W mark to be inherently weak because the letter W has a common use, pre-existing and separate to its association with the Complainant. The Complainant argues and presents evidence that its mark has become “well known”. However, the Complainant’s evidence in this respect is primarily from its own websites. That evidence also indicates that the Complainant’s use of its W mark often occurs in conjunction with its W HOTELS mark, and in the context of its advertisement of hotel services more generally. In the Panel’s view, this is not strong evidence that the Complainant’s W mark, on its own, has become well-known. There is even less evidence that the letter W, separate to its representation in the Complainant’s mark, has any particular association with the Complainant.
The Complainant’s W HOTELS mark could also be regarded as weak considering comparable marks the subject of cases under the Policy. (See e.g.Deutsche Telekom AG v. foxQ, WIPO Case No. D2004-0102 concerning the marks T-ONLINE and T ONLINE. In that case, the then panel noted that “As the word ‘online’ is descriptive, and the Complainant’s trademarks only consists of this word with the addition of a ‘T’, the overall distinctiveness of the trademarks T-ONLINE and T ONLINE must be regarded as small.” If that mark is weak, a single letter mark is even more so.)
…
This Panel considers that the broad potential association of the letter “w” make it unlikely that Internet users would confuse the disputed domain names and the Complainant’s mark.
…
Represented as a single letter “w” in the disputed domain names, the capacity to recognize the Complainant’s mark is marginal, particularly where the letter is attached to geographic descriptions which themselves do not form part of a mark in which the Complainant has rights. Each of the disputed domain names incorporate the Complainant’s W mark in much the same way. Each relevant domain name uses “w” and hyphenates it with a geographic description. This is the case for <w-atlanta-buckhead.com>, <w-atlanta-perimeter-center.com>, <w-dallas-victory.com>, <w-istanbul.com>, <w-new-york-the-court.com>, <w-orleans-french-quarter.com>, and <w-san-diego.com>. The only element of these domains which textually corresponds to the Complainant’s mark is the letter “w”. The Panel does not consider that the Complainant’s W mark is relatively substantial in comparison to these domain names.
This is, in my opinion, similar to the analysis that occurs for three-letter domain names, which are often capable of being read as acronyms for a very wide variety of businesses or whatever. Because there’s so much that a single W could stand for, particularly in combination with (arguably) plain geographic descriptors, there’s no clear way to equate these domains with the Complainant’s mark.
Or is there?
The Panel is in little doubt that the Respondent lacks rights or legitimate interests, and has registered and used the disputed domain names in bad faith. Among other things, the Respondent has provided no evidence of having rights or legitimate interests, despite the Complainant’s case against it. The Respondent also has a history of cybersquatting. The content of the Respondent’s websites strongly suggest that the Respondent was motivated to register the disputed domain names in an attempt to exploit confusion with the Complainant’s marks.
Assuming that these domains were registered to capitalize on that confusion, doesn’t that sort of swallow the mark comparison? If you’re intentionally capitalizing on the confusion, don’t you by definition have confusing similarity? Maybe not. And here’s the Panelist’s reasoning why:
While the letter W is first appearing in the disputed domain names and separated by a hyphen, there is insufficient evidence to conclude that Internet users might particularly associate the letter W in these contexts with the Complainant. To find otherwise would, in this Panel’s view, be inconsistent with the very diverse associations that a single letter and a geographic location may carry. By comparison would “m-newyork” be confusingly similar to the McDonalds “golden arches” M trademark; or “f-internet” be confusingly similar to the Facebook F trademark? This Panelist doubts it.
I think those examples are right on. But I’m not convinced that there’s a direct parallel between McDonald’s, which probably has thousands of locations in New York, and a “W” hotel, which has 1(?) hotel in the geographic location indicated by the domain name.
An interesting case. And one that might end up proceeding to the courts. However, the use of dashes in domain names tends to decrease its desirability, and these domains have a bunch of dashes, plus they are pretty long strings as well. One wonders if the domains are even worth the expense of pursuing. Unless, of course, there’s been some documented issues with customers; then maybe it’s worth their time and expense to take action and stop the problem.
Transfers of trademark rights
Under the first prong of the UDRP, a Complainant has to show that they have rights in a mark that is being unfairly used by the domain name at issue. This doesn’t mean that the Complainant has to be the actual owner or originator of the mark at tissue, they could be a licensed user of the mark (as in the case of a distributor or retail seller of the product/service) or simply someone who bought the mark. But they do have to show evidence of how they acquired the rights, and if they are merely a licensed user then they have to show that the actual mark owner approves of, or is included in, the UDRP filing.
A recent NAF case on the domain name ChrisFarley.com shows that it can be fatal to a Complainant’s case to fail to include evidence of how the rights were acquired. There, the Panel noted
Complainant provides records of Mr. Farley’s movies that show Mr. Farley’s first acted on Saturday Night Live in 1990. Complainant further provides evidence of the actor’s continuous TV and movie presence, all under the CHRIS FARLEY name, from 1990 until Mr. Farley’s death in 1997. Complainant asserts that after Mr. Farley’s death, his family transferred all of Mr. Farley’s intellectual property rights to Complainant, including the common law rights to CHRIS FARLEY. (emphasis added)
Complainant claims that it has continuously used the CHRIS FARLEY mark since that time to market t-shirts, wall art, product skins, and prints of photos. However, the Panel determines that Complainant has failed to provide sufficient evidence that Mr. Farley’s family agreed to transfer Mr. Farley’s intellectual property rights to Complainant and the Panel further finds that Complainant has provided no proof that it has used the CHRIS FARLEY mark with its business. (emphasis added)
One of the deficiencies of the UDRP is that we never get to see exactly what evidence was provided to the Panel, which it rejected. Where the Panel doesn’t go into a lot of detail about that evidence, we’re not left with much in the way of instruction, unfortunately. However, based on the language used, it looks like what happened is that the Complainant did not provide any evidence of the transfer of rights, but instead relied on the obvious fact that Mr. Farley was famous, he is deceased, and his estate hasn’t sued the pants off Complainant for its use of his name. Okay, that makes sense, but when you’re in a quasi-legal proceeding, you probably should connect the dots and spell out the connection with actual documentary evidence, just to be on the safe side.
So, as a Complainant, when you should always make sure to show exactly how and when you acquired the rights in the mark at issue that you have, whatever those rights may be (even if limited by a license). And if they are limited, you should be sure to include the full owner on the UDRP filing or at least some evidence of their consent to the complaint.
New site design
Please excuse the lack of content lately, it’s been a very busy July. On top of all of the usual life things that seem to happen during the summer, I’ve been going through a site redesign. If you come across anything that’s broken or that you don’t like, please let me know by e-mail. Thanks for reading!