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You love fruit. I love this UDRP

by — Policy & Law 0 Comments

A WIPO panelist draws important distinctions in deciding a case for YouLoveFruit.com.

A picture of YouLoveFruit fruit leathers

The company that sells these fruit leathers lost a UDRP to get the domain name YouLoveFruit.com. Images from Complainant’s website.

A National Arbitration Forum panelist has denied a cybersquatting dispute against the domain name YouLoveFruit.com. Panelist Nicholas Smith made several key distinctions that other panelists should pay attention to.

The Complainant You Love Fruit Inc. is a New York company that sells dried produce products under the names You Love Fruit and You Love Veggies. It uses the domain name YouLoveFruitLeather.com.

First, Smith noted that the domain name is made up of three generic words — you, love, fruit. While the Complainant has a trademark, it’s only for fruit leathers. Smith pointed out that the Complaint did not show evidence that the mark was so well-known and ubiquitous that he could conclude, for that reason alone, that the domain owner registered the domain for that reason.

Second, Smith understood something about GoDaddy’s parked domain pages. The Complainant argued that the domain owner registered the domain to sell it because it is being offered for sale by GoDaddy. Smith noted that the parked page is GoDaddy’s standard holding page that includes a link to “Get this Domain.” This is something GoDaddy puts on all parking pages that lets people use GoDaddy’s domain buy service. Smith correctly stated that it’s not indicative that the domain owner is selling the domain.

Finally, Smith points out that UDRP was designed only for limited circumstances:

The Uniform Domain Name Dispute Resolution Policy, is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable. ”).  In the present case Respondent has registered a domain name consisting of 3 descriptive words that happens to correspond with YOU LOVE FRUIT mark and redirected the domain name to a parking page operated by the Registrar.  Absent any evidence of fame of the YOU LOVE FRUIT mark or any other evidence that Respondent has engaged in bad faith conduct, those facts are not sufficient to establish bad faith under the Policy.

There is something else a bit interesting about this case. The domain owner didn’t respond, but historical Whois records show that the domain owner registered the domain before the Complainant filed its intent to use trademark application for You Love Fruit. But only by a few months. Both the Complainant and Respondent are in New York. This could be a coincidence, and the Complainant makes no mention of any relationship between the parties in its filing (at least, that is included in the published decision).

 

Spase.io tries reverse domain name hijacking

by — Policy & Law 0 Comments

A new company goes after domain registered in 2005.

Picture of masked man with the words reverse domain name hijacking

The owner of a business called Spase has been found to have tried reverse domain name hijacking the domain name Spase.com.

Spase is a service that converts photographs into 3D models. The business was just launched last year at Spase.io. The owner of Spase.com registered it in 2005.

In other words, this was a dead-on-arrival UDRP filing. The Complainant could not show that the domain registrant acquired the domain in 2005 to target a business that launched in 2019.

It’s another example of a case that could have been avoided if UDRP providers would ask a simple question on their intake form:

Do you claim trademark rights that predate the current registrant’s registration of the domain name?

If the answer is no, the UDRP provider can explain to the Complainant that they don’t understand the policy and are wasting their time and money.

In this case, the Complainant wasted money filing the UDRP and paying for a three-member panel as requested by the Respondent. The Respondent had to pay for the panel and hire an attorney. It was a waste of both parties’ time.

The Complainant, Sahil Gupta, was internally represented. Greenberg & Lieberman represented the domain owner Mrs. Jello, LLC. William Towns, Knud Wallberg, and Neil Brown decided the case for World Intellectual Property Organization.

 

Denmark firm tries reverse domain name hijacking Mountaintop.com domain

by — Policy & Law 0 Comments

Panel determines the case was “dead on arrival”.

Picture of masked man with the words reverse domain name hijacking

Mountain Top ApS, which manufactures covers for pick up truck beds, has been found to have engaged in reverse domain name hijacking over the domain name Mountaintop.com. The company uses the domain Mountaintop.dk for its website.

The owner of the domain registered in 1995. The Complainant argued that there was a transfer in ownership in 2012-2013 and that this should count as the registration date. But the transfer was merely a change of registrant name involving the same owner. Even if it was a transfer, the new owner used Mountaintop in its brand, showing rights or legitimate interests in the domain. (Mountain Top claims common law trademark rights dating to 2002, hence its desire to show a transfer date after it claims rights).

The domain owner has used the domain for a personal blog and email.

While the Complainant could not find the owner’s full details in Whois at the time it filed its case, it was made aware of them during the verification phase and did not withdraw the case. A bit of additional research before filing the case would have shown the domain’s use over the years, too.

A three-person World Intellectual Property Organization panel ruled that this was a case of reverse domain name hijacking even though the domain owner didn’t ask for it.

…This Complaint was dead on arrival and likely would have been denied had there been no Response. The Complainant’s entire case on bad faith is that the Respondents registered the Disputed Domain Name intending to sell it to the Complainant. Not only is this allegation supported by no evidence at all, the charge is grounded on a theory of constructive notice that has long been held to be inadequate for Policy purposes (see WIPO Overview 3.0, section 3.2.2) and the obviously spurious statement that “mountaintop” is not a common term. The Complainant, which bears the burden of proof on each Policy element, did at best minimal due diligence once it learned the identity of the Respondents – enough to find that the Respondent Business used the term in its business name, something that normally constitutes bona fide use. “Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH.” Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668, quoting from Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598.

The Complainant’s allegation that the Respondents acquired the Disputed Domain Name to sell it to the Complainant has no evidentiary support. It is wholly inconsistent with the fact, documented in the Response, that the Respondents have never offered or invited offers to sell the Disputed Domain Name and did not respond to the Complainant’s offer to purchase the Disputed Domain Name for that reason.

The Complainant also failed to demonstrate that it had been targeted by the Respondents or provide any evidence to support a conclusion that an individual or organization in the United States was likely to be aware of the use of the Trade Mark (a common English word mark) by a Danish automotive parts supplier.

The Panel considers the Complainant likely launched the proceeding either in anticipation of a default or, more likely, to encourage the Respondents to engage in negotiations with the Complainant to sell the Disputed Domain Name. Either such motive belies the Complainant’s undertaking, required by paragraph 3(b)(xiii) of the Rules, “that this Complaint is not being presented for any improper purpose”…

It appears that Mountain Top’s interest in the domain might be because it’s opening a production plant in the U.S. it announced the plant yesterday.

Elmann IPR Law Firm represented the Complainant. John Berryhill represented the Respondent. The panelists were John Swinson, Andrew Lothian, and Richard Lyon.

Shredder company Kobra gets shredded in UDRP

by — Policy & Law 2 Comments

Company tries to reverse domain name hijack Kobra.com.

Picture of masked man with the words reverse domain name hijacking

Elcoman Srl, an Italian maker of shredding products under the brand name Kobra, has been found to have engaged in reverse domain name hijacking for the domain name Kobra.com.

The company filed a cybersquatting dispute over the domain name with World Intellectual Property Organization. Panelist Scott Blackmer determined that Elcoman did not show that the domain name was registered in bad faith.

Kobra.com was registered in 1999, and it appears that the current owner has controlled the domain name since at least 2002. During that time, he had a website related to Kobra financial trading software.

In finding reverse domain name hijacking, Blackmer wrote:

The Complainant here did not properly investigate the facts, alleging that the Respondent “has merely passively held the Domain Name,” when a simple visit to the Internet Archive’s Wayback Machine would have revealed years of use for at least a minimal blog site on topics relevant to the meaning of the name to a relevant audience, which would make it very difficult to establish bad faith. The Complainant is represented by legal counsel, but the Complaint is devoid of legal citations and shows no awareness of relevant resources, such as the WIPO Overview 3.0. The Complaint deals with a Domain Name registered roughly 20 years ago but does not satisfactorily address the obvious need to establish the likelihood that the Respondent was aware of the trademark at the time of the Domain Name registration, or the improbability that the Domain Name was acquired “primarily for the purpose of selling” it to the Complainant, given that the Respondent made no motion to do so for decades. The Complainant argues summarily that the Respondent’s bad faith in registration can be inferred because the Respondent (or at least the broker) demanded a high price when the Complainant recently decided, in its own words, to purchase the Domain Name “on a very urgent basis”. Refusal to sell is not necessarily bad faith, and the UDRP is not designed to assess claims geared to putting a dormant domain name to use.

Elcoman was represented by Andrea Colombo. The domain owner represented himself.

Concierge Auctions fails to take down gripe site through UDRP

by — Policy & Law 0 Comments

UDRP usually can’t be used to take down a gripe site.

Concierge Auctions has at least one unhappy customer.

Luxury real estate auction service Concierge Auctions has lost a cybersquatting dispute against the domain name ConciergeAuctionScam.net. The domain name was used to point to negative press about the real estate company.

World Intellectual Property Organization panelist Frederick Abbott determined that Concierge Auctions did not show that the domain owner lacked rights or legitimate interests in the domain, and did not show that it was registered in bad faith.

Panelists often consider free speech principles when both the Complainant and Respondent are located in the United States. It helps when the domain name contains a derogatory domain that shows that the domain isn’t owned by the trademark holder. Abbott wrote:

By effectively adding the term “scam” to Complainant’s trademark, Respondent puts Internet users on notice that the website to which it is linked is not associated with Complainant, and that the Internet user should expect to find negative information.

Currently, ConciergeAuctionsScam.net resolves to a Darkspire Hosting page that says the domain has been suspended. So it appears that Concierge Auctions got the site removed through some other means.

Moses & Singer LLP represented Concierge Auctions. The domain owner did not respond to the dispute.

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