Month: February 2013

Here’s another example of why filing UDRP complaints should be left to the experts. Even lawyers experienced in trademark litigation may not know their way around this tricky field.

At first glance, it would appear that Eyemagine Technology would have a good chance in its UDRP complaint, filed with the World Intellectual Property Organization (WIPO), against Clough Construction concerning the domains Eyemagine.com and Eyemagine.info. However, the Complainant made a number of critical errors that jeopardized its chances of reclaiming the domain name.

Eyemagine is a California-based design and tech firm specializing in ecommerce, and it owns both design and character marks for the term EYEMAGINE. The Respondent, which makes custom home decks, is also a California company, and its current Eyemagine domain names redirect to its construction company homepage.

While the Complainant might own character and design marks for EYEMAGINE, they were not registered until 2012 and 2009, respectively, more than a decade after Clough Construction registered Eyemagine.com in 1996. Thus, its claim that the domain names were registered in bad faith seems dubious, given that the Complainant’s company did not even exist then.

Additionally, the Respondent urges the Panelist to consider charging the Complainant with Reverse Domain Name Hijacking (RDNH), given the fact that after negotiations on the sale of the domain name between the parties broke down, the Complainant filed a UDRP complaint close to the year-end holidays and without telling the Respondent’s attorneys. The Respondent believes that the Complainant was trying to cut response time short to have a better chance of winning the UDRP complaint.

In the end, the dual filings seem to reveal two approaches to the UDRP Complaint. The Complainant attempted to play dirty, being dishonest in its filing and attempting to limit the Respondent’s ability to properly defend itself. The Respondent, on the other hand, clearly and concisely responded to each of the Complainant’s allegations and made a strong case for RDNH. The WIPO Panelist sided with the Respondent and, in finding the Complainant guilty of RDNH, said “It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.”

This complaint should be a lesson to all brand owners to play by the rules and to hire legal counsel specifically experienced in UDRP complaints. Ultimately, the truth will emerge.

The term “fine tubes” generally refers to a variety of metal precision tubes used in construction and manufacturing. Fine Tubes Ltd. is a UK-based manufacturer of these tubes that ships its products around the world. Fine Tubes Ltd. is also the Complainant in a UDRP complaint with the World Intellectual Property Organization (WIPO) for the domain name fine-tubes.com against Ethen Rohre, a German company that makes the same type of tubes.

Follow all of that? The crux of the issue is Fine Tubes Ltd. claiming rights to a term that is both its company name and a generic term used to describe the type of tubes that both companies manufacture. Fine Tubes already owns FineTubes.com, which redirects to its homepage, FineTubes.co.uk, so this seems like a case of attempting to stop a competitor from using a domain name that could be potentially confusing.

The major issue in the complaint is that Fine Tubes Ltd.’s attempt to trademark the term FINE TUBES was rejected by the Office of Harmonization for the Internal Market (OHIM), which registers the Community Trade Mark in the European Union. The Complainant failed to disclose this rejection, which essentially consisted of OHIM saying that the term was too generic to claim rights to, and the Respondent made note of it in its submission.

WIPO explained that it could not refute OHIM and say that Fine Tubes Ltd. has rights to such a generic term, thus the domain name, so it rejected the complaint and ordered the domain name to remain with the Respondent. This case should be a lesson to all brand owners not to rely on UDRP arbitration to decide differently from previous trademark rulings, because the body will most likely agree with precedent.

Dutch company Merk-Echt describes itself as a “trademark agency” committed to protecting its clients’ intellectual property and combating trademark infringement.  You would think that a firm dedicated to trademark matters would have its own trademark and domain portfolio in order, but a recent UDRP filing reveals otherwise.

Merk-Echt filed a complaint with the World Intellectual Property Organization (WIPO) against Tilma Consultants over the domain name MerckEcht.com. In its complaint, the company claims that it holds registrations for both a stylized logo trademark and a word trademark in Benelux (the region comprised of Belgium, the Netherlands and Luxembourg), which were originally filed by the Respondent in 1999 and 2001, respectively but then handed over to Merk-Echt. Why would the Respondent simply hand over the marks? It turns out that Tilma Consultants was one of the founding shareholders of Merk-Echt, and Merk-Echt agreed to purchase Tilma’s shares of the company in 2009.

As of now, the disputed domain name hosts the official page for Merk-Echt, but the company fears that the Respondent will soon take over site content. According to the Complainant, it talked with the Respondent in early summer 2009 about transferring the domain name to the Complainant, but discussions fell apart that July and the domain was never transferred. The Respondent claims that the payment for the shares and domain transfer was never received, so the transfer never occurred.

The Panelist sifted through the arguments and found that although the disputed domain is identical or confusingly similar to the Complainant’s mark, there was no evidence that the Respondent initially registered the domain name in bad faith. Additionally, he suggested that the matter would better be settled in “ordinary court,” before deciding that the domain should remain with the Respondent.

This case should be a lesson to any brand owners regarding trademarks and domain name protection, especially in cases of company division or changes in ownership. When a significant change like this happens, it’s critical for domain names and trademarks to come as a package deal to avoid disputes like this one down the road.

It might seem strange that one of the world’s most recognizable supermodels over the past two decades does not own her name as a .COM domain, but Cindy Crawford falls into this category. It seems like the model finally had enough, however, and she filed a UDRP complaint at the World Intellectual Property Organization (WIPO) against Julian Garcia, the owner of CindyCrawford.com.

It’s not clear what finally pushed Crawford to try to gain control of the domain, because she states in the complaint that she has never owned it, but since August, 2012, the site has hosted pornographic content related to an actress who also uses the Cindy Crawford moniker. It’s possible that this “pornosquatting” compelled the Complainant to take protection of her brand image more seriously.

Garcia did not file a response to the complaint, but it’s clear from the Panelist’s decision that even if he had submitted something, the odds would have been stacked against him. Crawford owns trademarks of her name in more than 50 countries and according to the WIPO, is famous enough that she might have not even needed these registrations to claim rights to the disputed domain name. The Panelist also found that the Respondent had little to show in terms of rights or legitimate interests in regards to CindyCrawford.com and ordered the transfer of the domain name.

According to the filing, third parties have controlled the domain name since 2004, and Crawford used Cindy.com as her professional site. It’s not clear what took Crawford so long to file this UDRP complaint, but by the time that she did, she had a rock solid case to earn it back. This case should be a lesson to all celebrities of how important it is to own the most intuitive domains related to your personal or stage name, because third parties could be using them to earn countless hits on unauthorized, and even harmful content.