Enforcement

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.

Enforcement

First URS Cases Offer Little Guidance

As readers likely know by now, the Uniform Rapid Suspension system (URS) is a quick and low-cost dispute process available to brand owners when confronted with trademark infringement in a new generic top-level domain (gTLD). Rather than the domain being transferred to the brand owner, as is done in UDRP cases, the domain on the losing side of a URS decision is merely locked and any website content is replaced with a standard notice informing visitors that the domain has been suspended.

As with the UDRP, in a URS complaint the brand owner is required to show that the domain website contains some infringing content or is otherwise being used in bad faith. In one of the first URS decisions to be published, against the domains IBM.guru and IBM.ventures, the Panelist found that the domain owner had no legitimate interest in these domains and was using them in bad faith where the domains simply redirected visitors to the IBM.com website. But what happens when the domain only resolves to a parked page or to nothing at all?

In a URS case against BBVA.guru (BBVA is a well-known banking and financial group based in Spain) the domain owner claimed he was planning to develop a game whose acronym was BBVA and which had nothing to do with finance or banking. Although the decision does not say how this website resolved, the Panelist held that the alleged use is purely hypothetical and that no evidence was presented to support the domain owner’s claim. He also noted that the term BBVA is not a common or generic word and so it couldn’t be presumed that the domain owner intended to infringe on the well-known trademark.

Finally, there’s the opinion in a URS case against the domain AEROPOSTALE.clothing that merely recites the rote standards set out in the URS and finds for the brand owner with no further explanation. I personally find this to be rather disappointing since it recites few facts of the case (no mention of any website content at this domain) and offers no guidance for future URS parties.

So where does this leave us when faced with a domain that’s parked (resolves to no website) as is the case with so many new gTLDs? If the domain owner defaults and the infringed trademark is distinctive and well-known then perhaps a Panelist could rely on the BBVA or AEROPOSTALE cases. However, if the mark is capable of different meanings or is less famous a Panelist might decide that, since the domain has only recently been registered, it’s possible that the owner is working on a legitimate website – a non-competing business or even a fan page perhaps?

I suspect that URS Panelists will be presented with such fact patterns fairly soon and hopefully a consistent pattern of decisions will emerge. Given the very high standard of proof and unforgiving nature of the URS process I expect brand owners will appreciate all the guidance they can get!

Enforcement

One Strike, and You’re Out

Baseball

In many of my past entries you’ve heard me discuss the need to have UDRP complaints filed by counsel who are experienced in this specific area rather than simply relying on your usual litigation counsel. There are many examples of winnable cases that have been lost due to UDRP complaints missing some crucial piece of evidence. In some instances, Panelists have been generous enough to either request additional information from complainants or to at least deny these claims without prejudice, meaning that the brand owner can correct and re-file the case. However, that may all be about to end due to a new trend that appears to be forming amongst UDRP Panels.

In this case, the Robert Kennedy College of Zurich, Switzerland filed a complaint with the World Intellectual Property Organization over the domain name kennedyuniversity.com. Unfortunately, even though the Respondent failed to reply, its complaint was unsuccessful.

The problem, according to the Panel in its discussion and findings, was that the College claimed but failed to provide sufficient evidence that it is the owner of the trademark for ROBERT KENNEDY UNIVERSITY, which the Panel did not find to be interchangeable with the name “Robert Kennedy College”.

While the Panel could have asked the Complainant for a better explanation, the Panel decided not to, citing the recent cases of CAM London Limited and Comgest Asset Management International Limited v. Cam LondonLtd, WIPO Case No. D2013-2190 and 5 PRE VIE W AB v. Diego Manfreda, WIPO Case No. D2013-1946.

What these two cases have in common is that both Panels noted that complainants should “get it right” the first time and should provide all the information necessary to prove their case from the material contained in the complaint and its annexes alone. Unfortunately, once a UDRP complaint is denied in this manner it cannot be re-filed except under very limited circumstances and the brand owner could then be forced to spend even more of its precious budget on pursuing the domain in court as its only remaining venue for the dispute.

This trend serves as a warning that other potential complainants should take note of. It is not safe to assume that a Panel will always give you a second chance. As the Panel in this case further stated, “To give the Complainant “a second bite at the apple” would not be in line with the spirit of expediency and efficiency suggested in the Policy”.

As our readers know, the UDRP was created to be a low-cost, fast-track alternative to expensive and lengthy litigation. In order to get that benefit, carefully consider who to use for your UDRP counsel and always go with the seasoned veteran (FYI, we’ve filed over 220 complaints). The rule, now officially, is do it right, do it once.

Enforcement

Barcelona Blues

Barcelona – synonymous with the work of Antoni Gaudi, tapas, football (or soccer as we Americans call it), and the occasional UDRP case, such as the recent complaint filed by Spanish company Social Point, S.L. with the World Intellectual Property Organization (WIPO) against “3745854 Domain Manager / Moniker Online Services, LLC” over the domain name (you guessed it) socialpoint.com.

This case caught my eye because the failure to recover the domain name must surely have been a blow to the Complainant, a developer of social games that can be played via Facebook or downloaded as iOS and Android apps. While the domain, an exact match to the Complainant’s trademark registration for SOCIAL POINT, should have been a slam dunk, the UDRP panel in this case found that the Complainant was only able to prove one of the three UDRP requirements.

The Panel agreed that the domain name was confusingly similar to the Complainant’s trademark, but did not agree that the Respondent had no rights or legitimate interests in the domain name. The panelist cited three previous cases to remind the Complainant that the generic quality of a domain name and the reselling of domain names or using them for paid links can be legitimate in certain cases.

  • Mobile Communication Service, Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (Dictionary term used in its generic sense)
  • Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (Reselling generic domains is legit where no trademark or competing business is referenced)
  • Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276 (Where there’s no indication of the trademark or it products/services, using dictionary terms for advertising is permitted)

In addition, the Panel says the Complainant conceded that the Respondent did not register the disputed domain name in bad faith in 2001, several years before the Complainant company was established. Luckily for complainant’s counsel this did not lead the Panel to find the Complainant guilty of reverse domain name hijacking.

While it may be tempting to use the UDRP to obtain ownership of a domain name that could be valuable to your company, it’s important to remember the rules of the UDRP and the precedents established in previous cases, as well as the rights given to domain name registrants who may not always be guilty of cybersquatting. Complainants may not be so lucky and could find the tables flipped and themselves in the role of villain, not victim.

Enforcement

Not A Bright Idea

In 2003, a predecessor of the Just Bulbs lighting company filed and lost a UDRP case against the domain <justbulbs.com> because the respondent agreed to only advertise flower bulbs at the website and so had a legitimate interest in the domain.

Fast-forward to 2013 and the website at this domain now shows sketchy pay-per-click ads for light bulbs and thus competes with JUST BULBS brand. Also, it turns out that the Respondent has now lost over 140 prior UDRP decisions and is an admitted cybersquatter.

Normally, after a losing decision, a brand owner can’t re-file a UDRP complaint against the same domain unless there are some new facts that have come to light that weren’t available at the time of the first complaint or there was serious misconduct such as falsified evidence.  Here, Just Bulbs claimed that “relevant new actions have occurred since the original decision” in 2003 – namely, that the website now advertises light bulbs, not flower bulbs.

However, the Panelist found that despite this change to the present-day use of the domain this new complaint provided no additional or new evidence of the domain owner’s intent when it first registered the domain (remember that the UDRP requires one to prove bad faith use of the domain and bad faith registration at the time the owner acquired the domain). Since the present case didn’t shed any new light on the owner’s intent at the time the domain was acquired, Just Bulbs had its hopes dimmed for a second time.

The Panelist did leave a sliver of light for Just Bulbs, though. He pointed out that the domain is currently being used in bad faith and hinted that this might be enough to support a claim in court – perhaps under the Anticybersquatting Consumer Protection Act (ACPA). Hopefully this will illuminate a path for Just Bulbs to knock the domain owner’s lights out after all.