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State Farm tries (again) to get a State Farm Bowl domain

by — Policy & Law 0 Comments

The insurance giant really wants this domain name.

Logo for State Farm

Earlier this year, insurance giant State Farm lost a UDRP for the domain name TheStateFarmBowl .com.

The owner of the domain argued that he bought it to sell wooden bowls in the outline of states. Get it? State ‘farm bowls’? (His plans seem to have been delayed because he still hasn’t developed the site.)

This loss came on the heels of losing a similar case for the domain BigStateFarmAgent .com because it could be read is ‘big state’ ‘farm agent’.

State Farm was miffed at losing the seemingly football-themed TheStateFarmBowl .com domain to go along with its defensively-registered StateFarmBowl.com. So it filed a second time with National Arbitration Forum to get the domain.

There are limited cases in which a company can file a UDRP a second time. According to the WIPO Jurisprudential Overview 3.0:

Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis.

For example, had the owner of the domain started selling insurance, then State Farm might have a legitimate reason to refile. But none of the exceptional circumstances applied here, so the panelist declined to render a new decision.

I’m struggling with this UDRP decision

by — Policy & Law 17 Comments

Is EveryFamily.org confusingly similar to Everytown?

Blue image with the letters UDRP

I’m having a difficult time digesting a decision in a National Arbitration Forum UDRP.

Everytown for Gun Safety Action Fund, Inc. filed the dispute against the domain EveryFamily.org. The Complainant uses the domain EveryTown.org.

Let me note at the outset that:

1. I’m sympathetic to the Complainant’s cause
2. The domain owner didn’t bother to respond to the dispute
3. It’s possible that the domain owner isn’t legit or is trying to take advantage of the Complainant.

All of that said, I don’t see how you can argue that EveryFamily.org is confusingly similar to Everytown’s mark.

The Complainant says that the EveryFamily.org domain is being used to mislead people into donating to a different group. It claims that the Respondent copied photographs and text from the Everytown.org website.

I wasn’t able to find the copied text and photographs but it’s possible they’ve been removed.

The panelist, Nicholas J.T. Smith, determined that “every” is the dominant part of the Complainant’s mark. He compared it to a case in which the ADP WORKFORCE NOW mark was determined to be confusingly similar to workforce-now.com.

These seem like entirely different levels of confusing similarity.

Smith points to section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition:

1.15 Is the content of the website associated with a domain name relevant in determining identity or confusing similarity?

The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element.

In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.

Such content will often also bear on assessment of the second and third elements, namely whether there may be legitimate co-existence or fair use, or an intent to create user confusion.

That’s a fair point.

I just don’t think you can argue that ‘Everytown’ and ‘EveryFamily’ are confusingly similar.

Smith ordered the domain name to be transferred.

Seattle business guilty of reverse domain name hijacking

by — Policy & Law 1 Comment

Panelist calls the complaint “patently deficient.”

Picture of masked man with the words reverse domain name hijacking

UDRP panelists usually don’t find reverse domain name hijacking if a Complainant represents themselves. But World Intellectual Property Organization panelist Scott Blackmer decided it was warranted in a recent case.

Structure Cellars, which operates a wine tasting room in Seattle, filed a complaint against HouseofPagne.com (short for Champagne).

The registrant of the domain says she registered it and pitched the Complainant on an idea for a business. The two didn’t end up partnering on the venture. There’s a bit of he said, she said and there might be a legitimate dispute outside of the scope of UDRP.

But that dispute doesn’t warrant a cybersquatting dispute.

Blackmer noted that, even without counsel, the Complainant should have realized it was filing a bad case:

Here, the Complaint is patently deficient. The Complainant has trademark applications, not registrations, and it would need proof to establish common law rights. The Complaint does not address the obvious problem that the Complainant’s business was launched months after the Respondent registered the Domain Name. It should have been clear that if (sic) would be necessary to establish the relationship between the parties, but no evidence was submitted on this point. The Complainant is not represented by legal counsel, but these are common-sense rather than highly technical issues, and the Center’s forms, Rules, and Overview provide accessible guidance on these points. The Respondent, who is also not represented by counsel, certainly grasped their implication when completing the Center’s form Response…

…The Complainant may have a business dispute with the Respondent, but the Complainant should not have pursued a remedy designed only to protect trademark rights when it was not prepared to prove that it has such rights and that the Respondent registered and used the Domain Name in contemplation of the Complainant’s trademark rights. This is so fundamental to the Policy that it must be considered irresponsible to ignore.

This domain dispute might be better in the courts

by — Policy & Law 0 Comments

The Complainant has a right to be upset but will have difficulty showing trademark rights.

Screenshot of the website at UrgentCareLeominster dot com

This website tries to pass itself off as associated with an urgent care facility in Leominster, LA. It inserts a campaign to collect health insurance leads.

UMass Memorial HealthAlliance has lost a UDRP for UrgentCareLeominster .com at World Intellectual Property Organization.

The hospital chain has a right to be upset about how the current owner of the domain is using it. The domain owner has created a copy of a former website used by the Complainant (seemingly on the same domain), only inserting a lead gen campaign for health insurance. It includes a picture of the Complainant’s facility and even its UMass Memorial HealthAlliance Hospital logo (with a typo).

The healthcare company lost the dispute because it didn’t show that it has common law trademarks in Urgent Care Leominster. Leominster is a city in Louisiana. I suspect the panelist, who invited the Complainant to refile with more information about the common law mark, would have accepted even nominal evidence.

Still, it seems like it would be a challenge to show common law rights in a very descriptive term. Should companies be able to have trademark rights in “Urgent Care (city name)”? That’s kind of like having trademark rights in “(city name) Hospital”.

I suspect the Complainant chose UDRP for this dispute because it is fast and affordable. It might want to file a lawsuit instead. It clearly has a case against a domain owner who is up to no good, even if it doesn’t exactly fit under UDRP.

Wine spat: Brewery and vineyard tries reverse hijacking SpringGate.com

by — Policy & Law 3 Comments

Pennslyvania brewery files bad case with WIPO.

Picture of masked man with the words reverse domain name hijacking

A Pennslyvania brewery and winery has been found guilty of reverse domain name hijacking in a dispute over SpringGate.com.

Schoffstall Farm, LLC, which does business as Spring Gate Vineyard, Winery and Brewery, attempted to get the domain name in a cybersquatting dispute at the World Intellectual Property Organization.

The company has traded as Spring Gate since 2014. But the domain’s owner, Ashantiplc Limited, registered the domain name in 2006. Therefore, it could not have registered the domain name in bad faith to target the non-existent brand.

Before filing the UDRP, the Complainant sent a demand letter to Ashanti. Domain attorney John Berryhill responded to the demand letter and noted that his client registered the domain before Schoffstall Farm had any trademark rights in the term. He also requested that the Schoffstall Farm include his response in any UDRP filing.

But the Complainant didn’t include this response. Instead, it argued in the UDRP that the domain was acquired in 2018. While it’s not clear why it chose this date, this is when the registrar Fabulous (where the domain is registered) changed its accredited name to Sea Wasp.

The Complainant also argued “retroactive bad faith”.

In finding reverse domain name hijacking, the panel wrote:

The Complainant is professionally represented in this matter and, in the opinion of the Panel, knew or ought to have known that it had no reasonable chance of prevailing in this proceeding for the reasons set out above. The Complainant produced no material evidence that the Respondent acquired the disputed domain name in 2018 and gave no reasonable explanation for its assertion to that effect. The Panel is particularly perturbed by the Complainant’s failure to exhibit the Respondent’s email dated November 28, 2019, stating that it had acquired the disputed domain name in 2006, having exhibited its own letter of the previous date and having been expressly requested by the Respondent to include its reply. The Panel is also of the view that the Complainant’s purported reliance on the Octogen line of cases implies its clear awareness that its case was fundamentally flawed.

Tucker Arensberg, P.C. represented the Complainant in the reverse domain name hijacking. John Berryhill represented the Respondent.

 



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