Displaying posts tagged under "udrp"
Financial services company and rating agency can’t have “boycott” domain name, panel rules.
Standard & Poor’s has lost a UDRP against the domain name BoycottStandardandPoors.com at World Intellectual Property Organization.
The domain name owner argued that he’s exercising his first amendment rights by owning the “gripe” style domain name.
The panel determined that the domain name could be used as a gripe site and be protected, so it denied Standard & Poor’s request to transfer the domain name.
But the panel’s wording – and the brevity of its decision – is rather interesting.
Consider that the domain owner registered the domain name in 2011, but hasn’t done anything with it. The panel gave the benefit of the doubt on whether or not he did not have rights/legitimate interests in the domain name:
As Respondent conceivably could use the domain name at issue in a manner that would not constitute bad faith registration and use, and as the domain name at issue has yet to be used to resolve to a web site, Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the domain name at issue.
The section for Registered and Used In Bad Faith is also peculiar. The three person panel says the complaint was brought prematurely “Since it is conceivable that Respondent could use the domain name in such a way that Respondent did not seek to profit from the good will attached to Complainant’s family of marks.” The panel then notes that S&P can file another UDRP should the domain owner use the domain name in bad faith.
It’s rare that a panel considers what is conceivable, and it’s surprising they didn’t address the lack of progress in turning the domain into a non-commercial website.
I’m not saying the panel got it wrong, it’s just that the full decision is rather interesting. I think some panels would have found differently.
Florida bar filed UDRP despite knowing domain name wasn’t registered in bad faith.
Castaways Bar, LLC , owner of Square Grouper Tiki Bar in Jupiter, Florida, has been found guilty of reverse domain name hijacking by filing a UDRP against SquareGrouper.com.
When the company opened its bar in 2003, SquareGrouper.com was already registered. The registrant apparently was working on a screenplay by the name Square Grouper, and had already registered a “treatment” with the Writers Guild of America West for the screenplay.
Thus, the bar ended up registering SquareGrouper.net. It says it was “forced to utilize” the domain name squaregrouper.net “due to the misappropriation and holding ‘hostage’ by the Respondent of the .com domain name”.
In other words, the respondent had already registered the domain name before Square Group Tiki Bar was in existence, so it went with the alternative .net domain name instead.
Fast forward to 2013, when a representative for the bar sent a note to the respondent that read “I see you are the owner of SquareGrouper.com and I wanted to reach to you about purchasing this domain from you. I represent Square Grouper Tiki Bar in Jupiter, FL. We have had the .net domain for a few years now but would like to get the .com as well”.
When the respondent didn’t reply, Square Group Tiki Bar filed a UDRP, a clear abuse of the proceeding:
However, in the circumstances of this case that delay leads to the conclusion that Complainant did not regard Respondent’s registration as having been made in bad faith. This in turn leads the Panel to the conclusion that, knowing that the Domain Name was not registered in bad faith, Complainant nevertheless brought this proceeding in an attempt to deprive the registrant of the Domain Name and has thereby engaged in Reverse Domain Name Hijacking.
Humorously, the complainant argued that the respondent “apparently routinely traffics in domain names for the purpose of speculation and resale profiteering” because it owned 22 domain names.
The bar was represented by Carl Spagnuolo of McHale & Slavin, P.A..
Grand Theft Auto publisher fails in case to get GTA.tv domain name.
Take-Two has a trademark for GTA, but it was unable to persuade a World Intellectual Property Organization panel that the owner was trying to take advantage of Take-Two’s mark.
iCity Corp, which owns GTA.tv, argued that the unused domain stood for “Greater Toronto Area”. iCity is based in Toronto, and previously created websites about the city at gta411.com and gtanews.com.
The panel determined that iCity has rights or legitimate interests in the domain name, and that it didn’t register and use the domain name in bad faith.
Take-Two pointed out that iCity has a number of other domain names that seem like they might infringe on trademarks. iCity debunked most of the domain names’ similarities to trademarks. Regardless, the panel determined this was in no way a clear-cut case of cybersquatting:
The rationale of the Policy is to remedy clear cases of abusive domain name registrations. In order to maintain a balance in the system, UDRP panels are required to analyze whether the domain name owner has any rights or legitimate interests to said domain name, given the specific and very narrow nature of the Policy, and the problem it deals with. In the presence of rights or legitimate interests on the side of the Respondent, the controversy exceeds the scope of, and remedies available under the Policy.
In this case, the Respondent has demonstrated to the satisfaction of the Panel that the term GTA is used as a term related to a geographical location referring to the Greater Toronto Area, and that the inhabitants of said area use this term commonly.
This is the second UDRP the company has lost in as many months, suggesting that perhaps the tactics people use to win its video games are spill over into its intellectual property department.
Online coffee seller fails to snag CoffeeDirect.com through a UDRP for a second time.Coffee Bean Direct LLC, an online coffee seller, has lost its second UDRP against the domain name CoffeeDirect.com. In both cases the owner of CoffeeDirect.com didn’t bother to respond but still won the case.
If you look at the facts, this won’t come as a surprise.
The owner of CoffeeDirect.com actually sold coffee on the site from the late 1990s until 2006, when it threw in the towel. With full knowledge that CoffeeDirect.com was registered, Coffee Bean Direct (which operates at CoffeeBeanDirect.com) decided it wanted to use the shorter Coffee Direct name and domain name.
So Coffee Bean Direct tried to acquire the domain. When the price wasn’t to its liking, it filed a UDRP with World Intellectual Property Forum in 2010. It lost the case, as it was clear that the domain name was not registered in bad faith. Not only did the registrant register the domain many years before Coffee Bean Direct started using the brand, but it actually sold coffee at the domain!
Coffee Bean Direct decided to wait for the domain to expire. But CoffeeDirect.com was renewed in 2013, so Coffee Bean Direct decided to file yet another UDRP, this time at Czech Arbitration Court.
In general, CoffeeBeanDirect.com tried to push the “renewed in bad faith” argument that has become a popular last ditch effort for companies trying to reverse hijack a domain name.
Here are some of its arguments:
When no agreement was reached between the parties concerning the disputed name and in light of the Respondent’s abandonment of its mark “COFFEE DIRECT”, the Complainant formulated plans to adopt and use its COFFEE DIRECT mark in connection with its ongoing coffee roasting and sales business. To that end, on June 17, 2008 the Complainant filed an application to register the mark COFFEE DIRECT in the US Patent and Trademark Office (USPTO).
Why on earth would you adopt a brand when you know full well you aren’t able to acquire the domain for a price you’re willing to pay? Is it because you think you’ll be able to claim trademark rights at a later date to get the domain? Or maybe…
After issuance of the WIPO Decision D2010-0162, confirming that the Respondent no longer had legal rights in the Domain Name, [Coffee Bean Direct] fully expected that the Respondent, Mr. Pope would allow his Domain Name registration to expire in due course in June 2013. After all, there was no legitimate business logic to renew registration if it could not be legitimately used by the Respondent. Therefore upon the expiration of the Respondent’s registration, CBD planned to register and adopt the Domain Name for its Web portal, consistent with its existing use of the COFFEE DIRECT marks on packaging, newsletters, social media and its existing “coffeebeandirect.com” Web portal home page display. . In early 2013 CBD commenced monitoring the Domain Name Registrar’s WHOIS data for expiration and purchase availability notices.
Hmm. Why would you hold on to a valuable domain you used to use for your business rather than let it expire? Maybe because it’s valuable.
Coffee Bean Direct then argued that the domain was “renewed in bad faith”:
On April 4, 2013 — three years after the WIPO Decision 2010-0162,–the Respondent, fully aware of the Complainant’s continuing exclusive trademark rights and its inability in light of those rights to utilize the mark Coffee Direct without infringing those rights, nevertheless, and in spite of that knowledge, intentionally renewed his name registration for another 3 years, as reflected in the WHOIS. The Respondent continues to hold the Domain Name passively since its re-registration.
The Respondent is still actively disrupting Complainant’s business by continuing to cause its long inactive COFFEEDIRECT.COM website to resolve to a “broken link”. The broken link disrupts consumer online purchasing of Complainant’s products—the very heart of its business. A consumer viewing the Complainant’s actual products bearing the “Coffee Direct” trademarks or Complainant’s active pages with Coffee Direct as the identifier for its Twitter, Facebook, Instagram and Pinterest social media sites cannot order products from Complainant by keystroking COFFEEDIRECT.COM in a web browser or search engine on the Web. In contrast, a consumer easily finds the Complainant when searching social media sites where the Complainant has active pages with Coffee Direct as the identifier.
Coffee Bean Direct decided to threaten the owner of CoffeeDirect, Claude Pope, as explained in the UDRP filing:
Shortly after the Respondent’s April 4, 2013 Domain Name renewal [Coffee Bean Direct] sent a registered mail letter to Mr. Pope reminding him of CBD’s trademark rights and his inability to use his Domain Name in view of those rights. [Coffee Bean Direct] said that under these new circumstances Mr. Pope’s 2013 renewal was done in bad faith. However, as a gesture of good will, to avoid the expense and inconvenience of further domain name transfer proceedings, [Coffee Bean Direct] offered Mr. Pope a payment of $2500 to cover any reasonable expenses incurred by him to transfer the Domain Name to CBD.
Gee, how nice.
The Czech Arbitration Court decided to consider the facts even though this may have qualified as a “refiled” case, which generally won’t be heard. It decided along the same lines as the first panel, which determined that the domain name was not registered in bad faith.
Coffee Bean Direct was represented by Peter Luccarelli Jr.
Company goes after domain names registered many years before it started using the trademark in question.
I just don’t get it.
TruTag Technologies, Inc. just wasted money filing a UDRP against the domain names trutag.com, truetag.net, and truetag.org.
The company sells microtags for authentication and anti-counterfeiting. It uses the domain name TruTags.com, which it probably chose because TruTag.com had already been registered for several years when it started its business.
According to the company’s trademark filing, its first use in commerce for the term “TruTag” was in 2012. Its first use anywhere was in 2009.
Strategic Solutions International registered the domains in 2006 for its own product offerings. It has a product called TrueTag, and registered the misspelled version to protect its brand.
Yet TruTag Technologies still decided to file a UDRP against Strategic Solutions, even though the latter couldn’t have registered the domain names in bad faith. Strategic Solutions called TruTag Technologies out on this in its response:
Complainant could have confirmed the fact that Respondent had rights by conducting a simply search of the term “truetag” in connection with the term “strategic-solutions” and found that Respondent had been using the marks since 2006. Given Complainant’s extensive usage of the WHOIS databases to find information, it is likely that Complainant did in fact know these details about Respondent yet filed this Complaint anyway.
Panelist Karl V. Fink obviously found in the respondent’s favor. Fink didn’t find TruTag guilty of reverse domain name hijacking, and he didn’t really give a reason.
Regardless, this was a dead-on-arrival UDRP. The complainant either didn’t do its research or, worse, did so and filed the complaint anyway.