Month: September 2013

Pursuing bad actors who sell counterfeit goods is a major goal for brands looking to protect their reputations. There are, of course, consumers who will actively sacrifice quality for price and pursue counterfeit goods. But while brands need to address this, it’s particularly important to shut down sites that could dupe unsuspecting consumers into thinking they are receiving authentic goods or content when they are not. In these cases, consumers are not making a choice to sacrifice quality and will associate the brand with poor products, poor online experiences, and in some cases, the harm that could come from using a counterfeit product.

Recently, Nike used the UDRP to take down a counterfeit goods website hosted on the domain name NikeIran.com. In its Complaint, Nike noted that it “does not have any stores in Iran and does not provide its products to any distributors in Iran. As such, any products offered by the Respondent in Iran are either illegally obtained or counterfeit.” The Respondent defaulted, and the sole panelist determined that the domain name should be transferred to Nike. A great win for Nike that will help the company protect its customers from products it cannot guarantee are up to Nike’s quality standards.

The panel found that the domain name was confusing with the world-famous NIKE brand: “The geographic indicator ‘Iran’ simply suggests that the Complainant’s products may be purchased in Iran” and even though “the Disputed Domain Name could be interpreted as ‘Nike, I ran’ (i.e., similar to ‘Nike, I jumped’; or ‘Nike, I walked’)…the addition of a generic expression relating to running would not change the Panel’s conclusion in respect of this element” because Nike makes running shoes.

Ultimately, the offering for sale of counterfeit goods proved that the Respondent was attempting to profit from the Complainant’s rights and was sufficient to find bad faith registration and use.

A recent UDRP case came to my attention over the domain name 14oz.com. The complaint, which was denied, was filed by BREAD & Butter GmbH & Co. (complainant) against Paul E. Grindle (respondent) via the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center.

The complainant in this case is an established German business operating under the brand “14oz” with a focus on the design, production, and retail of high quality apparel. Formerly known as Fourteen Ounce GmbH, the complainant changed its name in 2007, yet continued to operate a website at www.14oz.net and still owns the 14oz registered mark.

The respondent failed to file a formal reply to the complaint, which is not unusual in UDRP practice. What really caught my eye, though, were the reasons behind the Panel’s decision to deny the complaint.

The complainant probably thought that it had a good chance of recovering the domain name. Unfortunately, as stated in the “Discussion and Findings” section of the opinion, there were a number of reasons that the Panel found no bad faith, including the fact that 1) the domain name refers to a generic term relating to measurement; 2) the complainant’s brand was only well-known in Berlin, Germany while the respondent is based in the US (this is less of a problem with world-famous brands); and 3) the website content at the domain name showed nothing that was related to the complainant’s line of business.

In addition, the Panel also brought up the issue of laches, a topic that I am very familiar with and on which I have written before here and here. The problem, as the Panel points out, is that the domain name in question was registered 13 years before the complainant got around to filing a complaint with no explanation from the complainant for the delay.

What it all comes down to is that the complainant was simply unable to show that the respondent had registered the domain name in a bad faith attempt to infringe on the 14oz trademark. It should also serve as a gentle reminder to brand and trademark owners to stay on top of their domain name strategy so that time will be on their side.

Internet giant Google, despite having what must surely be an almost unlimited legal budget and no qualms about taking its foes to court, continues to make good use of the UDRP again and again. Not only does this demonstrate Google’s domain name savvy, but also the fact that the UDRP is one of the most effective means of recovering a domain name, even when cost may not be an issue.

In one of its most recent UDRP cases, Google was able to successfully recover the domain name osandroid.com after filing a complaint with the National Arbitration Forum (NAF) against Zharkov Maxim. Google had originally included the domain name youadroid.info and the respondent Aleksey Lebedev in the complaint, but later withdrew them and they were dismissed from the proceedings.

At the heart of Google’s complaint was its issue with the osandroid.com domain’s use of the ANDROID name which is the subject of hundreds of trademark applications and registrations throughout the world, and is the marquis brand for Google’s immensely popular mobile device operating system.  The ANDROID mark has become world famous amongst customers for smart phone and tablets, as well as developers who create software for such devices.

While it must certainly be daunting to find yourself going head to head with a behemoth like Google, this respondent had no problems responding to the complaint with his own set of contentions in defense of his registration of the domain name. He went on at length about his website associated with the domain name, which features information and mobile application downloads.

Eventually, though, after sifting through all of the facts, the NAF Panel’s findings led it to side with Google, taking into account Android’s popularity, Google’s commercial use of the ANDROID trademark, as well as Zharkov’s registration of the domain name well after Google’s use of the mark, receipt of click-through fees, and his attempt to imitate Google’s logo with the logo used on his website.

All of the above led the NAF Panel to believe that Zharkov knew of and was trying to pass himself off as Google and that he had indeed registered and was using the domain name in bad faith – one of the major components of any successful UDRP decision. While Zharkov clearly didn’t go down without a fight, the evidence was overwhelmingly against him in this case.

While some companies can pursue UDRPs more sparingly, pharmaceutical companies generally have to be more aggressive in reclaim efforts. After all, even if a domain name does not receive much traffic, the potential harm associated with counterfeit drug sales or misleading information can be significant.

Proof of bad faith, at least, is often easy for a Complainant to prove. This was the case for a UDRP complaint filed by the pharmaceutical company F. Hoffmann-La Roche against Respondent PrivacyProtect.org over the domain name Valiums.info, which recently resulted in success for Roche.

In this complaint, the sole panelist found that indeed, the root of the domain, “Valiums” was confusingly similar to Roche’s VALIUM trademark, and that the Respondent did not appear to have any legitimate rights or interests for registering the domain name. Furthermore, screen shots of the website that the Respondent hosted on Valiums.info showed “commercial activity in the area of pharmaceutical products, which is the core business for which the Complainant has and uses the mark VALIUM.” The panelist found in favor of Roche, ordering the transfer of the domain.

The Respondent made it particularly easy for the panelist – the Respondent did not submit any defense as is often the case with habitual cybersquatters.

This highlights a serious issue with the UDRP as a tool against cybersquatting – it’s not necessarily the best deterrent against the practice. While brand owners spend time and money to pursue cybersquatted domain names, Respondents can easily just default without wasting any resources to address the complaint. It’s a pretty great situation for the cybersquatter; there’s no slap on the wrist, brand owners are left holding the bill, and the cybersquatter can just snap up another infringing domain name to replace the one they’ve lost. Many times, cybersquatters can even remain anonymous throughout the whole proceeding, further minimizing risk.

This unfortunately leaves brand owners fighting an uphill battle – especially pharmaceutical companies like Roche.  Court litigation is the only alternative, but most judges are reluctant to order squatters to pay any significant damages. Although distasteful to some, one solution might be to offer the squatter a nominal sum of money in exchange for a settlement agreement permanently banning it from future use of the brand. A future claim for breach of contract would have a higher likelihood of a significant damages award and might be a better deterrent.

This week’s chosen UDRP decision drives home the point that you can only file a UDRP to enforce your own registered trademarks – it’s not a tool to enforce pending trademarks and certainly not one to grab domain names from a competitor.

The Complainant, Swift Unlocks, Inc., filed a UDRP complaint against Respondent Swift Cellular King.com. Inc. d/b/a Instantunlock.com over the domain names unlockfusion.com and swiftunlock.com

The Complainant argued that they had a right to the disputed domain names because of 1) pending trademark applications and 2) the fact that the Complainant has used the domain name swiftunlocks.com (similar to the disputed domain root “swiftunlock”, with an added “s”) since 2008; it also used the domain name unlockfusion.net (similar to the disputed domain name unlockfusion.com, but with the “.net” extension) since 2011. The Respondent defended by asserting that the Complainant cannot have rights to the phrase UNLOCK FUSION mark, as this simply refers to a third parties’ trademarked product – the “fusion” cell phone – and “unlocking” services that several companies provide. In the complaint, the Respondent made the analogy that they “could not claim trademarks if he unlocked cars in a mark called ‘UNLOCK FORD.'”

The panel’s findings were short and to the point: the Complainant “does not have registered trademark rights in the disputed domain names … Complainant has failed to demonstrate valid common law rights that predate the registration of the disputed domain names.”

The fact of the matter is, if you own domains that include the brand of a third-party company (here the SWIFT and FUSION marks) you can’t stop others from using domains with that same brand unless you have express, written authority from the brand owner – which the Complainant did not.