Displaying posts tagged under "udrp"
Company filed and dismissed two lawsuits against domain name before filing UDRP.
Life is Now, Inc. has filed a UDRP against the domain name JustBelieve.com.
The company promotes coaching by David Neagle, whose website describes him as “Master Income Acceleration Mentor for Entrepreneurs & Corporate Professionals”. It has a registered trademark for “Just Believe” and claims first use in commerce of 2003.
The domain name is owned by Greg Ricks, who has owned the domain name since 2000. This is the second case Ricks has faced in the past week on a domain name he’s owned for over a decade. His Qualify.com domain name is also under attack.
Life is Now has already sued twice to try to get the JustBelieve.com domain name. It sued two privacy services that have been listed for the domain name during 2012-2013, but later voluntarily dismissed the cases both times.
When the initial lawsuit was filed JustBelieve.com went to a parked page that predominately showed ads for basketball.
After the lawsuits were filed Ricks began forwarding the domain name to sites that had “JustBelieve” in them, either in the domain name or the subject matter of the pages. For example, it forwards to JustBelieveOnline.com and a page on Theme Forest that offers a “Just Believe” theme for churches.
The very short UDRP complaint (see PDF here) claims that forwarding JustBelieve.com to these others sites proves that the owner has no rights or legitimate interests in the the domain name and that it was registered in bad faith.
On the contrary, it basically shows that “Just Believe” has many uses.
It seems that the complainant is a bit confused. Referring to the four sites JustBelieve.com forwards to, the complaint reads:
Each offending website has “justbelieve” as part of the domain name, and identifies themselves by using “just believe” as part of their webpage name. The “justbelieve.com” domain name and the “Just Believe” tags at the top of each of the websites demonstrate that Respondent has intentionally attempted to attract, possibly for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponorship, affiliate, or endorsement of Respondent’s websites or comments.
Is the complainant confused as to who owns the four sites that are forwarded to? Does it think they are in cahoots with the domain owner? It’s not clear to me, but the law firm for the UDRP case (which is different from the previous lawsuits) also cc’d all four websites with the UDRP.
Canadian company tries using UDRP to get “correct” spelling of its name. Qualify.com was registered more than 10 years before the company was founded.
Qwalify, Inc., a company that services the job recruiter industry, has filed a UDRP (pdf) against the domain name Qualify.com.
And yes, this case is as bad as it sounds. It’s rather comical, really.
Qwalify claims to have started using its brand around 2010. To make the case that the domain name was registered in bad faith, it argues that the domain name was acquired in 2012. That’s when the whois privacy service for the domain name changed.
DomainTools’ historical whois records show a number of different privacy services going back to at least 2005. The reality is the domain name has been owned by the same person since 1999.
Even if you forgive Qwalify for not figuring out that it’s the same owner, the case is still ridiculous. Here’s a company that made up a spelling for a word that is now going after the correct spelling. It’s like a reverse typo.
Qwalify argues that Qualify.com is taking advantage of its mark by attracting unsuspecting internet users and monetizing them with a parked page.
…there is further evidence that Respondent is currently using the domain name in an attempt to attract users to its website for its own commercial gain by creating a likelihood of confusion with Complainant’s Qwalify Trademark. Respondent’s domain name is virtually identical to Complainant’s Qwalify Trademark. Respondent has parked the page as a landing site for paid advertising in the hopes that third parties will misspell the Qwalify Trademark when they are looking for Complainant, and land on Respondent’s page.
Wait — qualify.com is a misspelling? Go figure.
…The more people that navigate to Respondent’s page and click on any of the links contained thereon, the more revenue Respondent can generate through the pay per click advertising. There is no question that Respondent is intentionally trying to attract internet users to its site for its own commercial gain by exploiting the likelihood of confusion with the Qwalify Trademark.
Panelists tend to give some weight to this argument when the parked page includes links related to the complainant. But you won’t find any job or recruiter related links on Qualify.com. Qwalify acknowledges this and argues that parking page’s links are unrelated to common meaning of “qualify”.
The complaint points out how baseless the links are, including an ad for Chuck E Cheese.
(When I go to the domain name the ads are all retargeted ads for sites I’ve visited. I wonder if the computer used to do research was also used to visit kids sites or ChuckECheese.com.)
Qwalify makes the case that the domain owner was aware of Qwalify when it registered the domain name because it was “acquired” around the same time Qwalify filed its trademark application with the U.S. Patent and Trademark Office. In reality, it was just a change in the whois proxy service, so this argument fails.
Even when you ignore the inaccurate portrayal of the domain ownership change, the idea that the acquirer of Qualify.com would be aware of a company called Qwalify is certainly not a given.
If you were buying Qualify.com, would you think to look for a made up homophone?
Should you also search for qualifi? Cwalify? Cualify? Where would it end?
Yet Qwalify argues “Here there can be no doubt that had Respondent made such an effort, as is its obligation, that it would have found Complainant’s Qwalify Trademark…Complainant’s use of “Qwalify” would have been known had Respondent done a simple search engine search”.
A simple search? You’d have to know what you’re searching for. If you search for “qualify”, as you likely would if you were acquiring the domain, you wouldn’t find Qwalify. Qwalify tries to make its point by showing that if you search for “Qualify.com” on Google it asks “Did you mean: qwalify.com”.
Qwalify also claims “There is no way Respondent incurred out of pocket costs in the amounts of hundreds of thousands of dollars.”
It’s true that the domain wasn’t acquired for hundreds of thousands of dollars. But that’s because it was actually acquired in 1999. Had the domain sold in 2012, it’s entirely possible it would have been for hundreds of thousands of dollars.
This case is about a company that made a bad naming decision. It bought a domain name that it now has to spell out to everyone. “It’s qualify, that’s q-w-a-l-i-f-y.”
Yes, internet users are confused by this strange spelling. The complainant gives an example of such confusion: a directory listing for Qwalify that links to Qualify.com instead of Qwalify.com.
That’s the price you pay for not acquiring the right domain name to begin with.
If Qwalify wants Qualify.com, it’s going to have to pay for it. Knowing the owner of the domain name, playing dirty by filing a UDRP may have just increased the asking price.
Facing legitimate questions over a trademark’s legitimacy, UDRP panel determines case is outside the scope of the policy.
A couple weeks ago a National Arbitration Forum panel handed down a decision in a complaint brought over the domain name insurance.pro.
On the surface it appeared to just be a case about a seemingly generic domain name. But there are a couple interesting things about this case, and it could end up being an interesting reference case for UDRPs in the future.
First, the respondent in the case (represented by John Berryhill) argued that the complainant was essentially front-running. The respondent said that the complainant got a trademark on insurance.pro ahead of the .pro launch in an effort to secure what could have been a valuable domain name. Although I haven’t seen a lot of similar trademark front-running filings for new TLDs (in the U.S. anyway), this could come up again as new TLDs roll out.
Second, the complainant’s case was rejected because the respondent effectively argued that the trademark may be invalid. Yes, the complainant has a federally registered mark. But the respondent argued it was invalid, and a UDRP panel isn’t necessarily qualified to to make a determination on this and potentially expand trademark rights. So the panel instead determined that this case was outside the scope of UDRP.
It will be interesting to see if this case is referenced in future arguments and decisions.
BusinessESforSale.com (plural) failed to show it had trademark rights in its descriptive name.
Although there are many benefits to using a good descriptive domain name, there’s also a drawback: other people can use similar domains, too.
That’s the case with BusinessESforSale.com, which just lost a UDRP against the owner of BusinessforSale.com.
The complainant failed to show that the disputed domain name was confusingly similar to a trademark in which it has rights since it couldn’t show any sort of trademark rights in BusinessesForSale.com.
This would be like someone using Lemons.com (for selling lemons) going after the owner of Lemon.com or Lemons.co.uk.
The majority of the panel was unimpressed that the complainant’s initial filing failed to mention that its trademark application was denied. Only once this was brought up did the complainant make a supplemental filing explaining that trademarks can be denied for a number of reasons — yet not disclosing why its application was denied. In its supplemental filing it also tried to make the case for a common law mark. The majority of the panel would not consider this additional evidence since it should have been disclosed in the initial complaint.
The complaint included copies of the BusinessESforSale.com website. The panel noted that nowhere on the site does it claim a trademark on the term, and in fact “Businesses For Sale” is used in its descriptive sense immediately below the logo.
One panelist, Richard Page, dissented and said the complainant showed common law rights that were sufficient for a UDRP.
That’s why it’s usually best to go with a three person panel.
The respondent was represented by John Berryhill.
Panels will not always ignore the top level domain name in UDRP cases.
With niche top level domain names like .clothing and .plumbing now on the market, I’d like to clear up a common misconception about UDRP and whether the top level domain name should be ignored in such disputes.
Many people believe that the top level domain name is ignored by panels when it comes to confusing similarity. In other words, if the domain at issue is trademark.com, the panel will say that the mark only has to match the second level domain, not “trademark com”.
It’s true that in this exact case, the panel will usually note that the top level domain should be ignored, and will cite precedent.
Note the precedent language. The actual UDRP language says nothing about ignoring the top level domain name. The only reason most panels ignore it is because it is typically irrelevant.
Sometimes it’s not irrelevant, as with the domain hack Tes.co, in which the panel ruled that the domain name should be transferred to retailer TESCO.
The top level domain name will certainly be considered in certain types of cases going forward, and perhaps not just for confusing similarity.
The first is when the top level domain name is a topic or industry that relates to the mark holder. For example, if you register GAP.clothing, the panel is going to score a point for GAP when it files a UDRP against you, perhaps in the bad faith section. The panel might give you more benefit of the doubt if the domain is Gap.guru, because perhaps GAP stands for something else.
The second category is domain hacks similar to the tes.co case. There will be a lot more domains considered domain hacks in the future. Consider Austin.Ventures, which the venture capital firm now uses. (I once surmised that Austin Ventures would pay for the domain in Early Access Program since it’s a Donuts investor. Turns out Donuts reserved the domain for them.)
Another note on domain hacks: you won’t see a Trademark Claims notice if the second level + first level matches a trademark, only if the second level does. Trademark Claims notices don’t “span the dot”.