If You Can’t Make It, Fake It

I rarely comment on FairWinds’ own cases, but this one, filed with the National Arbitration Forum (NAF) on behalf of DD IP Holder LLC (Dunkin’ Donuts) over dunkin.menu – is worth special mention due to the truly inventive but deceitful way in which the respondent defended his registration and use of the disputed domain name.

The respondent makes the rather creative claim that he teaches a series of basketball clinics in New Delhi offering a “menu” of different dunking (“dunkin”) techniques. He submitted digital mock-ups of posters, which he claims promoted his efforts at local schools (see example).  Dunkin Menu Image UDRP

Since something smelled fishy about these posters and the idea of using the word “menu” in this way, I called these schools. They said they had never heard of the respondent or his classes.  In his Additional Statement, the respondent explained that many of the schools refused to display his posters or host his program due to discrimination against poor children in India.

I had also submitted a reverse whois report showing that the respondent owns over 360 domains, many of which infringe on various well-known global and local  brands.  I asked whether the respondent would submit additional evidence that he teaches a “menu” of techniques in music under his hardrock.menu domain, in cooking using leancuisine.menu; in the history of old western films with RoyRogers.menu; and in the astronomy of celebrity residences at PlanetHollywood.menu.  Would he also rationalize his registration of domains that have no such convenient meanings such as Marriott.menu, Quorn.recipes, and Sbarro.menu? The respondent claimed that he’s holding these domains for possible future ventures such as franchises.  All of this additional cybersquatting further calls into question the validity of respondent’s claims and evidence.

In its decision, the panelist addressed the question of whether respondent has any rights or legitimate interests in the Dunkin.menu domain, saying  “Respondent relies on his right to use a descriptive word ‘dunkin’ as a domain name to promote his basketball courses. However Respondent has not furnished any evidence that he has ever held such courses… When challenged that such documents [the posters] were fabricated for the purpose of this Complaint, Respondent then asserted that while he had used the posters and flyers for promotional literature, he had failed to organize the events due to impediments put in his way by the management of the schools.”

Next, on the topic of bad faith, the decision states: “This Panel finds that on the balance of probabilities Respondent chose and has used the disputed domain name because of its confusing similarity to Complainant’s trademark and service marks and not for the reasons that he has put forward. His explanations are ingenious but improbable and unsupported by any evidence.”

Critical to this case is the fact that UDRP panelists are bound to consider only the evidence before them, since there’s no discovery or cross-examination in these proceedings. This panelist could have accepted the respondent’s manufactured evidence, saying, in effect, that “my hands are tied by the UDRP process”.

However, due to his experience in these matters, he saw through the ruse and acknowledged our counter-evidence and the fact that the respondent, himself, back-pedaled when he admitted some of the schools didn’t display his posters. In the end, the panelist decided to weigh the evidence rather than simply accept the respondent’s claims and posters at face value, thus arriving at the right conclusion that respondent is a cybersquatter trying very hard to game the UDRP system.

While the respondent does have the option to appeal, past experience suggests that doing so will only be a waste of his money and time since brand owners aggressively defend such ransom cases. Of course, the respondent does own several other infringing domains (noted above and listed in the decision). We’ll just have to wait and see if Lean Cuisine, Marriott, Campbell’s Soup, etc. start offering the respondent franchise opportunities at some point in the future.


When It Comes to Domain Names, It’s Not Easy Being Green

This week’s National Arbitration Forum decision involves the domain names greencycler.com and thegreencycler.com. The complainant, Greencycle, Inc., holds a trademark for Greencycle and uses the domain name www.greencycle.com to offer mulch, soil and stone. The respondent, Gail Loos/Ingenious Marketing, uses the domain names at issue to market a counter-top composting device. The respondent applied for a trademark for Greencycler in 2010, but the USPTO rejected the application in 2011, citing likelihood of confusion with the already-registered trademark for Greencycle (held by the complainant).

The panelists in this case found that the complainant satisfied the first of three elements of the UDRP: The complainant successfully demonstrated that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights.

However, the panelists found that the complainant did not establish the other two required elements, that the respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.

A quick look at the respondent’s website suggests that the Greencycler is a legitimate product – an ‘award-winning’ kitchen scrap composter – and that it is also a very different product from the landscaping materials offered on the complainant’s site. According to the Decision Findings, the respondent attempted to “negotiate a co-existence arrangement [with the complainant], but no agreement was reached”. As opposed to cybersquatted or typosquatted sites, the respondent’s site does not include pay-per-click ads that lead to products or sites that compete with the complainant’s products.

Respondent's homepage at www.thegreencycler.com  as of 5.30.14

The respondent’s homepage (www.thegreencycler.com) as of 5.30.14.

Ultimately, there just wasn’t enough – if really, any – evidence that the respondent had registered the domain name in bad faith. However, the respondent felt that the complainant was acting in bad faith by bringing the complaint and alleged that the complainant was engaging in reverse-domain-name hijacking.

Though the panelists did not find that the complainant was engaging in reverse-domain name hijacking (put simply, harassing the competition through filing complaints), the case shows what I feel is an inappropriate and overly-aggressive use of the UDRP that had no chance of success from the start.  This is really just a routine conflict between two companies in similar fields, and it’s my opinion that the complainant used the UDRP only for leverage – perhaps to scare the respondent into negotiating a settlement of the broader trademark dispute.




All Bad Things Come To Those Who Wait – Laches and the UDRP


After considerable exposure to the world of UDRP complaints during my time at FairWinds, I have seen the issue of laches arise time and again. Such was the case in a recent UDRP complaint I came across, in which Novartis AG attempted to recover the domain name clearcare.com. Unfortunately, the Complainant was unsuccessful in its attempt and the National Arbitration Forum (NAF) three-member Panel decided that the domain name should remain with the Respondent, Name Administration Inc.

Here are some of the key facts: The Complainant owns a trademark registration for the CLEAR CARE mark and uses it in the sale of a contact lens cleaning product. On the other hand, the Respondent is a well-known domain investor who picks up expired domain names and then resolves them to PPC pages with links related to the generic terms they may contain. The clearcare.com domain name was acquired by the Respondent in 2005 and resolves to a PPC site with links relating to the word “care”, but none of them specifically relate to eyes or contact lenses.

This was an important detail that helped save the Respondent from losing the domain name. As the Panel notes concerning legitimate interest: “Respondent’s use of the <clearcare.com> domain name is a protectable … bona fide offering of goods, namely an offering of non-competitive related goods vis-à-vis hyperlink advertisements”. On the topic of bad faith, the Panel stated: “the Panel finds that Respondent’s use of the domain name for purposes of an unrelated hyperlink directory cannot rightfully constitute … bad faith”.

However, the most damning factor against Complainant was the laches (delay) defense raised by the Respondent. On that subject the Panel had this to say: “It appears to the Panel that any business disruption or confusion suffered by Complainant as a result of Respondent’s domain name registration was either non-existent or de minimis, else Complainant would have taken action in a more timely fashion.” While the generic nature of the hyperlinks on the website certainly were a factor here, it seems that the coup de grâce was that this Panel just couldn’t ignore the Complainant’s delay in filing its complaint to recover the domain name. At this point the Complainant can either take the matter to court (possibly in the British Virgin Islands?) or just pay a princely sum to buy the domain from the Respondent.

Either way, the clear message to brand owners is to prioritize your enforcement targets and then pursue the most important ones without delay.


The Curious Case of a Law Firm’s Filing

A recent National Arbitration Forum (NAF) decision reveals that even attorneys can make questionable decisions when it comes to filing a complaint against a domain name registrant.

The Complainant, Steven J. Schwartzapfel and Shwartzapfel Lawyers, P.C., requested that http://www.schwartzapfellawyers.com and http://www.socsecuritydisability.com be transferred from the Respondent to the Complainant.

The first makes perfect sense; the latter, not so much.

The Complainant currently uses http://www.fightingforyou.com for its website, and the Respondent – Barrett Sharpe/Legal Hub, LLC – was using http://www.schwartzapfellawyers.com to display the following negative content about the Complainant:

Complainant granted relief for this website in NAF decision.

The Complainant was granted relief for this website according to the Decision, but as of 4/18/14, the Respondent’s content appears to still be up.

The Respondent’s site in NAF decision.

The website used by the Complainant for his law firm: http://www.fightingforyou.com/ on 4-18-14.

The Respondent failed to submit a response, and, not surprisingly, Panelist Neil Anthony Brown QC found that http://www.schwartzapfellawyers.com was identical and/or Confusingly Similar to the Complainant’s business name, that the Respondent lacks Rights or Legitimate Interests in the domain name, and that the domain name was registered and used in bad faith. He then ordered that this domain name be transferred to the Complainant.

However, the Panelist seems to have been as confused by the request to transfer http://www.socsecuritydisability.com as we are, noting in his Decision that “As Complainants do not allege that they have rights in a trademark with respect to the socsecuritydisability.com domain name, the Panel is unable to make any findings as to whether that domain name is identical or confusingly similar to a mark in which Complainant has rights.”

Furthermore, as of April 18, 2014, there is no real content associated with the domain name, much less content regarding the Complainant, so there can’t be any bad faith registration.

Empty blog on www.socsecuritydisability.com as of 4/18/14

An empty blog greets visitors to http://www.socsecuritydisability.com on 4/18/14.

I’m left wondering if this second domain was included in the complaint by mistake or if the Complainant law firm was just uneducated on the proper use of the UDRP. In either case the Panelist made the correct decision in denying the complaint against this domain.

The takeaway? If you think you may have a case against the current holder of a domain name, seek the advice of counsel based upon that counsel’s experience with domain name enforcement and his or her record of success (in case you’re wondering, I’ve only lost one case out of over 230 filed).


Registrar Is Out-Squatted By A Clever Domain Owner

Domain name registrar Namecheap, Inc., a company that has no doubt profited from the cybersquatting activities of its customers, recently found the tables turned when it filed and lost a UDRP complaint over the domain name namechap.com. Namecheap filed the complaint with the National Arbitration Forum against Respondent Ky Song alleging that the domain name infringes upon Namecheap’s trademark registration for NAMECHEAP.

In support of its argument, Namecheap points to the fact that the Respondent is using the domain name to redirect Internet users to competing hosting and domain name registration services, such as GoDaddy. This isn’t the first time that Namecheap has used the UDRP to try to protect its digital assets as evidenced by successful previous complaints filed over domain names such as nmecheap.com, naecheap.com, and namecehap.com.

In its (quite lengthy) discussion, the NAF Panel discusses why Namecheap failed to prove that the domain name is identical and/or confusingly similar to its trademark. The Panel states that “namechap” does not constitute a misspelling or even “typosquatting” given that it consists of two generic terms, “name” and “chap”, each with a clear meaning of its own. The Panel goes so far as to say the missing “e” even distinguishes the domain name from Namecheap’s trademark.

At that point the content of the Respondent’s website no longer mattered, given that Namecheap failed to establish the first of the three elements required under ICANN policy, all that is needed for the Panel to conclude that relief should be denied. It’s interesting to see a domain name registrar lose such a battle, but it could have been worse. While Namecheap failed to recover the domain name, it was able to escape the Respondent’s accusation of reverse domain name hijacking.