Month: November 2013

A recent UDRP case featured a complainant who was definitely taking a shot in the dark by trying to get the domain name calibers.com. The complaint was filed with the National Arbitration Forum by Calibers National Shooters Sports Center, LC against W. D. Group Ltd.

The main issues with this case are threefold:

1. The Complainant only submitted sketchy evidence to support its claim of trademark rights going back to before the domain name was registered. The Respondent points out that the complainant registered the trademark 11 years after the domain name was registered, and that its argument rests on its claim that it has actually used the mark since 1997, a claim for which it provides no evidence.

2. The word “caliber” is a generic term referring to the size of a gun or rifle bore. Because it is a common and descriptive term, the panel determined that the Complainant does not have an exclusive monopoly on the term on the Internet and that the Respondent can establish rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).

3. It’s unlikely that the Respondent, in China, would have ever heard of the Complainant, whose business operates only in Albuquerque, NM. The panel notes that the Complainant failed to submit any evidence that its service mark or related services are widely known in China, where the Respondent markets its services, and therefore it is unlikely the Respondent registered the calibers.com domain in bad faith.

Obviously, all of this added up in the Respondent’s favor, leading the panel to deny the complaint in this case.

A recent UDRP case highlights the fine line between aggressive trademark enforcement and reverse domain name hijacking. J Vineyard & Winery, L.P. (complainant) filed a complaint with the National Arbitration Forum (NAF) against David Perelman/Perloff inc. (respondent) over the domain name jwines.com.

The complainant in this case should have known that it was pushing its luck by filing this complaint. It does not own a trademark for the term JWINE, but it does own the J VINEYARD mark. The NAF panel was quick to address this in its decision to deny the complaint and to find that the domain name is in no way identical or confusingly similar to the complainant’s trademark.

While the panel did end up denying the complaint, it did not go so far as to find the complainant guilty of reverse domain name hijacking (RDNH), as alleged by the respondent.  I have seen that in the majority of cases, panelists are reluctant to find RDNH and this case is a classic example., The panel admits that the complainant’s case was “seriously deficient”, but that it also understands how the complainant may have felt justified in filing its complaint.

Here, the complainant got lucky in that the panel seemed to understand its motives for filing a complaint, but future complainants should be careful. Other panels may not be so forgiving and, like red wine, the stain of being found guilty of RDHN is not so easily washed away.

For the 14 years of the UDRP’s existence it has generally been accepted that a complaining brand owner must prove the responding domain owner registered or acquired the domain in bad faith (with an intent to infringe on the brand) at the time the owner acquired the domain. This is because Par. 4(a)(iii) of the UDRP requires complainants to show that the domain “has been registered and is being used in bad faith.”

In hundreds of decisions complainants have been denied relief because they were unable to show that the domain, although currently being used in bad faith, was not registered or acquired as such. This can be because the brand didn’t exist at the time the domain was registered (how can you infringe a mark that doesn’t yet exist?) or because the respondent initially had a good faith use for the domain but then changed its use over time so that it eventually infringed on the brand.

A recent UDRP decision concerning the domain Big5.com continues an emerging trend of panelists looking at bad faith, not only at the time the domain was first registered or acquired by the respondent, but also at the time the domain was renewed.

In this case, the respondent first registered his domain in 1998 and obtained a trademark registration for BIG5 in his home country of Taiwan for the purpose of helping Chinese-speaking Internet users get to their desired websites.

In 2002, the respondent stopped providing that service and later signed up with the Amazon “aStore” to earn revenue from the sale of the complainant’s BIG5 branded sporting goods. The panel found that the respondent had a legitimate interest in his domain, acted in good faith when it was first registered in 1998, but changed the domain’s use, and was now infringing on the Complainant’s brand.

The panel looked at Par. 2 of the UDRP, which states that when domain name owners register or renew a domain they “represent and warrant” that it does not infringe on the legal rights of others, such as a brand owner. Relying on this paragraph, the panel concluded that, even if the domain was originally registered in good faith, “the elements of the Policy can be studied at the time of the registration or at the time of the renewal….”

This satisfies the long-held desire of brand owners to use the UDRP to enforce their trademarks in situations where use of a domain has turned from good to bad. But it raises the question of what the drafters of the UDRP intended by also requiring proof that a domain “has been registered and is being used in bad faith.”

If the Big5.com panel’s conclusions are applied in other cases, could its interpretation lead to odd situations where a domain can flip back-and-forth between good and bad faith depending on how it is being used at the time of its most recent renewal?

And, if we accept the panel’s view in the Big5.com case, then what exactly is the purpose of the word “and” in Par. 4(a)(iii), since it seems that, for all practical purposes, use would really be the only relevant factor when considering bad faith (unless, under the Big5.com panelist’s interpretation, a complaint is filed prematurely such as when the use has turned bad but the domain is not yet due for its next renewal).

If a domain transitions to bad faith use, and that is considered sufficient grounds to order a transfer under the UDRP after a renewal, then why bother looking at the merely technical act of renewal at all? Also, the Big5.com panel implicitly says that the word “registered” in Par. 4(a)(iii) can also be interpreted to mean “renewed.” However, since Par. 2 uses the terms “register” and “renew” to mean two separate things, it seems wrong to interpret use of the word “registered” in Par. 4(a)(iii) to also mean “renewed.”

On the other hand, if the Big5.com panel’s reasoning is flawed, then what is the relevance of Par. 2 of the UDRP? Is it merely a private matter between the domain owner and its registrar for violation of terms?

Rather than letting Panelists settle these thorny issues, these inconsistencies should be a matter for those seeking to amend the language of the UDRP itself after a full and open debate (after all, the thing is almost 15 years old and could use some renovation!). Perhaps it’s time to change “and” to “or” as it is used in the dispute policies of certain other country-code domains.

We usually talk about domain name strategies for big brands, but startups need to set up shop on the right digital platforms too.

FairWinds is all excited about a new startup:  Threadmason – the latest venture from FairWinds alum, Vincent Ko, and his business partner Jake Huston (we wrote about Ko’s last foray into fashion here.)  The company’s goal is to deliver better-fitting t-shirts to the (male) masses with 24 proprietary sizes that are based off of the wearer’s height, weight, and waist measurements:

Two weeks into its crowdsourced funding campaign on Kickstarter, Threadmason reached 144 percent of its baseline goal and garnered some great press in outlets like TechCrunch and PandoDaily. Donations continue to come in, moving the company towards its “stretch” goals of adding more colors and an additional t-shirt style: v-necks.

You can find the company, naturally, at threadmason.com and twitter.com/threadmason. The company has also secured its name on Instagram, Facebook, and YouTube.

“FairWinds taught me the importance of domain and online branding in building an online company,” said Ko. “Threadmason acquired all our handles/domains prior to launch across all social media channels.  It’s proven to be key during our launch, particularly on Twitter.”

In the coming months, Threadmason will also make use of a generic domain name it purchased – V-Necks.com – which will host content related to style and link visitors to Threadmason.com.

With a solid idea, quality product, and the right digital platforms, Ko and Huston are on their way to delivering on their goal of “bringing a better fit and higher level of quality to men’s clothes.”

In some cases, UDRP complaints are filed when an unauthorized distributor of branded product is using a trademark in a domain name to conduct business. It was interesting, therefore, to read a recent panel decision resulting from a UDRP complaint over the domain name electroluxmallorca.com.

The complaint was filed by Aktiebolaget Electrolux against Pablo Rodriguez Guirao but was was denied, effectively allowing the Respondent, an unauthorized distributor/repair service, to use the domain name, which contains the ELECTROLUX trademark.

The complainant is a producer of appliances and equipment for kitchen and cleaning. It alleges that the respondent is trying to “sponge off” the trademark by using the domain name for a website offering repair services for Electrolux products, thereby misleading Internet users and tarnishing the Electrolux brand.

What is most interesting, is that the Panelist decided this case based on the third element of the UDRP (bad faith) rather than the second element (legitimate interest) as is most commonly used in unauthorized distributor/repair service cases.  Despite conceding that there is considerable doubt as to whether the respondent has a right or legitimate interest in the domain name, the Panelist said he does not find it necessary to probe this issue further given that he did not find the domain name was registered or is being used in bad faith.

The Panelist correctly referenced the decision in OKI Data Americas, Inc. v. ASD, Inc WIPO Case D2001-0903, which is often used as a standard for determining whether unauthorized distributor or repair services are bona fide or not.  In applying the Oki Data test, the panel states that it appears that the respondent is an independent repairer of domestic electrical appliances, it does not mention competing products on its site, and has made it reasonably clear on its website that it is independent of the complainant. Further, the panel found no evidence that the respondent is taking business from the complainant.

The Panelist then went on to consider the bad faith element of the UDRP and, citing some of the same factors as those used in the Oki Data test, found that using the ELECTROLUX trademark merely to identify the type of products it repairs and services (“nominative fair use”) the Respondent showed no bad faith when it registered the accused domain.  Although it didn’t specifically reference the bad faith factors listed in par. 4(b) of the UDRP, the Panelist seems to have decided the matter based on its statement that “there appears to be no detriment suffered by the Complainant.

So, although the decision in this case is unusual in that the focus was not on the issue of rights or legitimate interest, as highlighted in the Oki Data case,  but rather was on the lack of Respondent’s bad faith one could argue that the same result was achieved even if the Panelist had followed the more traditional path.