.....About Intellectual Property and IP Case Law.....
Exactly what is Intellectual Property (IP) . . . A product of the intellect that has commercial value, including trademarks, copyrighted property and material such as literary or artistic works, and ideational property, such as patents, appellations of origin, business methods, goodwill, and industrial processes.
There are ongoing WIPO and NFA cases filed involving trademark claims. Here are some interesting and important IP law cases...
- inclusivehealth.com - National arbitration Forum (domain kept) Significant Issues & Deciding Factors:
Editor's Note: Since complaining party first contacted registrant the subsequent offer to sell was not bad faith.
Registration and Use in Bad Faith. The Complainant alleges that the Respondent's offers to sell the disputed domain name to the Complainant indicates bad faith registration and use under Policy # 4(b)(i). The Respondent alleges that, because the Complainant initiated the offer for the sale of the disputed domain name, the Respondent's counteroffer does not exhibit bad faith registration and use under Policy # 4(b)(i). Previous panels have determined that, when a complainant initiates an offer for the sale of a disputed domain name, a respondent's willingness to engage in negotiations for the sale of the domain name does not equate to bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that 'when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses'); see also Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy # 4(b)(i) where the complainant initiated contact with the respondent and the respondent responded with an offer to sell its domain name registration for $50,000).
Therefore, the Panel finds that the Respondent's conduct in this respect does not constitute bad faith use pursuant to Policy # 4(b)(i). The Complainant also argues that the Respondent's inactive holding of the disputed domain name constitutes bad faith registration and use under Policy # 4(a)(iii) in and of itself. The consensus view of panels regarding this matter can be found in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), available at: http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#32
The consensus view is: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).
In the present case, the mark is not well known and it is composed of two common words, 'inclusive' and 'health' which are commonly associated together. The Respondent has replied and has not concealed her identity. There has been no sporadic use of the disputed domain name, nor has it been parked or used to generate incidental revenue from advertising referrals. Thus, as the Respondent correctly points out, the present case must be distinguished from the cases cited by the Complainant, because in those cases there were circumstances to suggest bad faith other than the mere passive holding. As stated in Policy # 4(a), the Complainant must prove that each element of the Policy is present. But, as the Respondent correctly points out, there is no evidence that the Respondent has violated any of the factors listed in Policy # 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy # 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ' 4(a)(iii)).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy # 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy # 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
DECISION. Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the Editor's Note: In our view, the most significant aspect of this case and a major factor which worked in favor of the respondent was the fact there was a pattern of similar domains registered by respondent using the "open" keyword theme, i.e. 'openeconomy.org' 'openpolitics.org', and 'openpolicy.org', which is a clear domain naming pattern giving credibility to respondent's assertion of being unaware of complainant's mark at the time of his registration of the 'opensociety.org' domain. Registration and Use in Bad Faith issue; Respondent contends he was unaware of Complainant's registration of its mark at the time he registered the disputed domain name. In addition, Respondent contends he was unaware the registrar had posted links on the website that might lead to confusion of Internet users regarding an affiliation of the links with Complainant. When Respondent parked the domain name with his registrar, Enom, Inc., he signed an agreement which permitted him to park the domain name without charge in consideration of the registrar's right to use the domain name for commercial purposes. The registrar has, in fact, used the domain name as a site through which Internet users are linked to commercial offerings for which the registrar receives click-through fees. The record shows Internet users may be confused into believing that some of the links are affiliated with Complainant. The record does not show that Respondent knew the registrar was going to use the domain name in that manner or that he intended such use would be made.
Respondent denies that he had actual knowledge of Complainant's mark at the time he registered the disputed domain name. He alleges that he registered a number of domain names that he believed reflected openness and social progress and did not know of the Open Society Institute or its mark when he registered the The record does not show Respondent himself registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant. Nor does the record show that Respondent registered the domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Furthermore, the record does not show that Respondent registered the domain name primarily for the purpose of disrupting Complainant's business or that Respondent himself intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark. Complainant initiated contact with Respondent and inquired whether Respondent was willing to sell the Considering all of the circumstances, the Panel determines that evidence is non-sufficient to show Respondent engaged in any conduct that would constitute bad faith registration and use. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001). The Panel finds that the Complainant has not established that Respondent registered and used the domain name in bad faith within the meaning of Policy # 4(a)(iii). The Panel also finds the record does not support Respondent's allegation that the Complainant has engaged in reverse domain name high jacking. In our view, the most significant aspect of this case and every case ever presented to WIPO is this statement extracted from the case below: Moreover, the Respondent is based in Hong Kong, SAR of China, while protection of the Complainant’s 1STQUOTE-Marks and the Complainant’s business are limited to the United States of America. That certainly is an powerful reason to have your domains registered to a non-US address!
The Respondent denies the Complainant’s contentions. The respondent alleges the phrase “First Quote” is the featured tagline for thousands of insurance, financial and legal websites and can be heard in numerous ads from agencies asking to “come in today for your first quote”. Upon the Respondent’s allegations, the disputed domain name is comprised of a generic term, which may be used in hundreds of ways, and the Complainant is attempting to leverage the domain name from its owner by using the UDRP forum to reverse hijack the domain. The Respondent further states that there are 10 active trademarks for FIRST QUOTE in the US, that there is no proof that the Complainant is the sole owner of and creator of the phrase “first quote” and that the disputed domain name was first registered on January 15, 1997, 6 years prior to the Complainant’s claim of “first use” of the 1STQUOTE-trademarks and even before the Complainant was established, which also shows that the phrase had already been popular before complainant tried to claim it.
The Respondent further argues that he never intended to act in bad faith. Furthermore, according to the Respondent’s allegations, the Complainant has no website, brand, domain name, or anything else associated with “first quote” (rather than 1STQUOTE), and the Complainant does not even own the domain name <1stQuote.com>. The Respondent also requests the Complainant should be fined for Reverse Domain Hijacking.
With regard to the Respondent’s bad faith registration and use, the Complainant contends that the Respondent registered the disputed domain name with actual or at least constructive notice of the Complainant’s 1STQUOTE-Marks and was using the disputed domain name in bad faith primarily to intentionally attract for financial gain Internet users to the Respondent’s website by misleading and confusing Internet users who are searching for the Complainant’s website but, merely, misspell or mistype the brand name of the Complainant’s 1STQUOTE on-line application processing service. Respondent has denied these assertions and provided evidence of substantial third parties’ use of the term “first quote”, including the provision of services similar to those of the Complainant.
It seems to be more likely than not to this Panel, the Respondent acquired the disputed domain name, as he contends because of its meaning and because of the substantial third party use of the underlying words, and not with a view to the Complainant and its 1STQUOTE-Marks. The Complainant’s 1STQUOTE-Marks are not used identically in the disputed domain name but with a different spelling, and they enjoy less than average distinction, if any distinction at all, as they are made up of two generic words which are commonly used together. Moreover, the Respondent is based in Hong Kong, SAR of China, while protection of the Complainant’s 1STQUOTE-Marks and the Complainant’s business are limited to the United States of America.As a result, on the balance of evidence, the Complainant has failed in this Panel’s assessment to prove that the disputed domain name was registered in bad faith, i.e. with the Complainant in mind. Complainant has established that it is the owner of United States Trademark Reg. No. 3208452 for the trademark CPR SAVERS & FIRST AID SUPPLY and design including CPR SAVERS as a prominent element registered on the Principal Register in the United States on February 13, 2007 in relation to the goods first aid kits. The registration includes a disclaimer to the exclusive right to use “CPR” and “FIRST AID SUPPLY” apart from the trademark as shown. Complainant is also the owner of United States Trademark Reg. No. 3349191 for the trademark CPR SAVERS TRAINING and design registered on December 4, 2007. The registration includes a disclaimer to the exclusive right to use “CPR SAVERS TRAINING” apart from the trademark as shown. Further particulars of both the above noted registrations are provided in paragraph 4 above.
Respondent registered the disputed domain name
The Panel finds that Complainant has proven based on the record as set out above and on a balance of probabilities that Respondent does not have any rights or legitimate interests in the domain name in dispute.
Registered in Bad Faith? Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.
The onus of proving that Respondent registered the disputed domain name in bad faith is on Complainant. The disputed domain name
Having found that the Complainant has not proven that the domain name in dispute was registered in bad faith the Panel need not decide this issue. The complaint is denied. Respondent contends Complainant has failed to demonstrate the Domain is identical or confusingly similar to a trade or service mark right and further that Complainant has neglected to mention it has had costs awarded against it for unsuccessfully making the same argument in the past. Respondent states it's one of a family of companies formed for development of subject-matter specific multimedia channels and is a limited liability company of which its sole member is Media Ventures LLC. It states that Respondent acquired the Domain Name in the course of preparations for media channels to be serviced by other entities associated with it in relation to online production, hosting and technical services. It also contends that these activities were conducted in parallel with the acquisition of other generic and descriptive “.tv” domain names. Accordingly, it submits its activities are entirely proper and there is no merit in the complaint.
As we have noted above we consider domain-name speculation not per se prohibited by the UDRP. Speculation in domains may under certain circumstances point towards bad faith, for example, when the main purpose is to extract money from the mark owner or from a competitor. In that case we accept that such speculation may amount to bad faith conduct.
However, there can be no doubt that the word “Paris” is in common use. First and foremost perhaps, it is the name of the capital city of France, and is used to describe that city and geographic area. There are many towns, many companies and even individuals who use the name, including the celebrity Paris Hilton who has her own television programs. Complainant does not have exclusive world-wide rights to use the term. As we see it the UDRP was designed to take into account that mark rights are local in nature and that many common and legitimate users of local rights would have to learn to share Internet space. The purpose of the UDRP is not to privilege the first of many mark name users to seek redress, but instead to prevent any mark owner from being particularly and purposefully harassed and targeted.
We see no indication, other than the similarity of names, the Respondent intended to use the Domain Name for any of the purposes identified in paragraph 4(b) of the Policy. Respondent has made no effort to sell the Domain Name to Complainant or a competitor (at least not yet). Further, Complainant’s Trademark includes only the term “Paris” and not “paris.tv” so we do not see how it has been prevented from reflecting the term “Paris” or its Trademark online, particularly as it already has the domain name paris.fr. Finally, even if some degree of confusion may result, it does not appear the purpose for which Respondent registered the Domain. Respondent has made no attempt to interfere with Complainant’s business, or attract users for commercial gain, or pass itself off as Ville de Paris.
For all these reasons we consider, at least for now, Complainant has not shown that the Domain Name was registered and used in bad faith. Decision: For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the majority of the Panel denies the Complaint. Paragraph 4(a) of the Policy requires Complainant must prove each of the following three elements to obtain an order a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. DECISION: Having failed to establish that the domain name in dispute is confusingly similar to a trademark or service mark in which Complainant has rights, the Panel concludes relief shall be DENIED. Thus, here the evidence suggests the domain name was acquired
by the Respondent because of its descriptive value,
but has been used on a pay-per-click website in
a way that is not clearly related to that descriptive
value but also not clearly related to the Complainant’s
trademark. In some circumstances, these facts may
not be sufficient for the Respondent to show use
of the disputed domain name is bona fide. Here,
the Respondent has an additional factor in its favor
a United States trademark registration covering
search engines. In these particular circumstances,
the Respondent could be said to be providing, or
at least to have taken some demonstrable steps towards
providing, a search engine under the Jackass brand. That, in this Panel’s view, is enough to tip the
finely balanced scales in the Respondent’s favor
on the provided record in this particular case. The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests: Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c))
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent] ha[s] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name”; “(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; “(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor”; or and “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on your website or location”.
The Panel determines that Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith. For the foregoing reasons, the Complaint is denied. As noted above, a number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain was to profit from and exploit the complainant’s trademark. See, e.g., National Trust for Historic Preservation v. Barry Preston, supra. The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra; National Trust for Historic Preservation v. Barry Preston, supra. The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant’s rights. See, e.g., The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 0285459.
The Panel notes that Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, where a registrant is engaged in the wholesale registration of large numbers of domain names. Media General Communications, Inc., supra. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. However, Paragraph 2 of the Policy has generally not been read as routinely requiring registrants to conduct trademark searches, see, e.g., Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254, and a complainant generally must proffer some evidence, whether direct or circumstantial, indicating that the respondent had the complainant’s mark in mind when registering the disputed domain name. See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661.
No such showing has been made by the Complainant in this case. The circumstances as reflected in the record do not indicate that the Respondent actually knew, reasonably should have known, or could even be deemed to have constructive notice of the Complainant’s rights in the FRONTRUNNERS mark at the time the Respondent acquired the disputed domain name. Clearly, a search of the USPTO trademark database at that time would not have alerted the Respondent to the Complainant’s rights in the mark. Further, while the Respondent has been a party to a number of UDRP proceedings, this without more does not establish a clear pattern of abusive domain name registration practices which may under other circumstances support an inference of the Respondent’s bad faith in this case. And as noted above, the registration of a domain name in order to generate pay-per-click advertising revenue is not a per se violation of the Policy where the registrant is not seeking to take advantage of the complainant’s rights. The Panel does not see how that certification properly could have been made because before filing this proceeding, there was apparently no attempt to confirm whether Respondent possessed a legitimate interest in using his given name. Nonetheless, the Policy is clear that being commonly known by the disputed domain name is a clear ground establishing a respondent’s right or legitimate interest. Complainant has therefore disregarded the mandatory rules governing this dispute, in particular, Policy paragraph 4(c)(ii).7
As also explained above, Respondent registered the disputed domain name corresponding to his given name 10-years ago, and has seemingly used the disputed domain name with a live website since then. The Complaint fails to present any basis for suggesting that Respondent’s conduct was or is in bad faith, and misrepresents readily available facts respecting how (and whether) the website is and has been used.
The misleading factual allegations of the Complaint present the Panel with inaccurate and incomplete information, in contradiction of the certification quoted above. This contradiction is combined with a failure of diligence and the absence of the Complaint to present any arguments or authorities which might underpin a legal position that is contrary to the plain meaning of the Policy......For all the foregoing reasons, the Complaint is denied. The Panel further declares that the Complaint constitutes an abuse of the administrative proceeding. Identical and/or Confusingly Similar. With respect to Complainant’s pending trademark application for EDIBLE BRANDS, which is closely similar to the Domain Name, the Panel agrees with the Respondent that this application confers no enforceable rights as against the Respondent. As Complainant itself has stated in its complaint, the date of January 2, 2009 is the date of application and first use for this mark. This is in contrast to Respondent’s registration of the Domain Name in July 2005.
The Panel does find that some of the trademarks relied upon by the Complainant – some of the EDIBLE ARRANGEMENTS and related family of marks – pre-date registration of the Domain Name. However, the Domain Name
In this case, where the Respondent’s Domain Name has replaced the term ARRANGEMENTS with another non-synonymous, generic term, BRAND, the Panel finds that this change is sufficient to distinguish the Domain Name,
One way of looking at this is by analogy with the concepts of agency that exist in various legal systems, whereby the principal is responsible for the actions of his agent. However, the Panel would approach this issue somewhat more simply. A domain name registrant is under the Policy responsible for the way in which a domain name has been and is used (at least so far as a website that is operating directly from the domain name without further addition is concerned).
A registrant cannot avoid responsibility for the way in which that domain name is used by saying these are the actions of a third party. The registrant ultimately has control over the way in which a domain name is used and should he decide to cede control of the domain name to a third party (whether by contract or otherwise) he nevertheless remains responsible for how that domain name is used. Were this not the case the whole purpose and intent of the Policy could be undermined by the use of such contracts. That cannot have been the intent of the framers of the Policy. Both Complainant’s domain name registration and its use of the name in commerce were substantially subsequent to Respondent’s registration of the disputed domain name. Obviously then, Complainant had acquired no rights in a common law trademark or service mark at the time of Respondent’s registration of the disputed domain name. It may be assumed, arguendo, that Complainant’s domain name and the disputed domain name are confusingly similar (which they are). It may also be assumed, arguendo, Respondent does not have a legitimate interest or rights in the disputed domain name (which it does have). It may even be assumed, arguendo, Respondent is using the domain name in bad faith (which it is not).
Nevertheless, the essential prerequisite which Complainant cannot demonstrate is bad faith registration of the disputed domain name by Respondent. The disputed domain name was registered before Complainant’s business began, and, indeed, before he had even commenced acquiring a common law trademark. (See Interep National Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26 2000), wherein on page 5 it is said: "6.4 Although the Panel has found that Complainant has satisfied Policy 4(a)(i) and 4(a)(ii), it cannot find bad faith use and registration pursuant to Policy 4(a)(iii) on this record. The fact that Respondent registered its domain name two years before the intent to use application of Complainant was filed and three years before Complainant started using the mark is persuasive to the Panel none of the bad faith factors in Policy 4(b) apply.") There is no question the Respondent, or related parties, have been found in the past to have engaged in the practice of cyber-squatting. In particular, (S.P) who appears to be related to the Respondent, is known to CIRA domain name panels. However, this is not relevant to this particular case, which relates to what is undoubtedly
a generic domain name registration. While the Panel does not endorse the Respondent’s unauthorized domain name registrations, it needs to be proven that the Respondent was
cyber-squatting in this case, which has not been established.
The registration of domain names which are descriptive, generic, or otherwise not known to infringe on the rights of current trade-mark holders is an acceptable practice in
the area precisely because they do not infringe on trade-mark rights. Note, however, that descriptive or generic domain names may still be found to have been registered in bad
faith. In this case, though, the domain name is so clearly generic that its registration cannot be seen as being registered in bad faith.
In all past cases decided under the Policy, the existence of a confusing trade-mark has been sufficient to defeat a claim of reverse domain name hijacking. While the existence of a trade-mark registration is most certainly a relevant consideration in deciding whether a Complaint was filed in good faith, a Panel must also consider other factors, including the conduct of the complainant and the nature of the domain name. The Panel is well aware of the extraordinary nature of a ruling of Reverse Domain Name Hijacking under the Policy, as it includes the potential for an award of costs of up to $5,000. Indeed, to date there have been no awards of cost under the Policy. Yet the extraordinary behavior of the Complainant cannot be tolerated or endorsed by the Panel and merits a ruling on costs.
As a result, this Panel finds the Complainant has engaged in Reverse Domain Name Hijacking under paragraph 4.6 of the Policy. The Panel may therefore award the
Respondent up to $5000 to defray its costs. However, before such an award can be made, the Panel invites the Respondent to make its submissions on costs. Thereafter, the Panel
will render its decision on the quantum of costs. ORDER ON COSTS: The Panel hereby directs the Registrant (Respondent) to provide its submissions on costs within 5 business days in connection with the Panel's finding of Reverse Domain Name Hijacking. The submissions are to include legal fees incurred as well as disbursements. The Complainant’s name never appears on any Apple products or services. No reference is made to the Complainant on packaging or marketing materials. The Complainant’s employer has a corporate strategy which minimizes the contributions of individual designers, by labeling all products as “designed by Apple in California”. It is therefore not possible to claim that JONATHAN IVE or JONY IVE performs the function of a trade mark. Each component of the names (“Jonathan”, “Jony” and “Ive”) are not inherently distinctive. The Complainant only filed its Community Trade Mark applications in October 2008, after Apple Inc. had tried to coerce the Respondent into assigning the disputed domain names in July 2008.
The Respondent has a clear right and legitimate interest in the disputed domain names. In particular, the Respondent used the disputed domain names before any notice of a dispute arose, as an educational fan site. Respondent obtained the disputed domain name
The Respondent and his fan site have become commonly known by the disputed domain name
The Respondent’s legitimate interest in the disputed domain names has been acknowledged by the Complainant on at least three previous occasions where the parties discussed the contents of the Respondent’s fan site and the Complainant approved the contents. Apple Inc. has admitted that the fan site does not tarnish its trade marks, and this is evidence from the fact that the website advertises Apple Inc.’s own products and provides links to its online store. The Respondent regularly updates the website. The information on the website was properly researched. While Google ads are used on some pages, they are not for the sale of products or services belonging to the Complainant. The advertisements have generated an amount of less than USD500 since Feb 2006, and hardly amounts to commercial activity. Such ads are clearly not central to the site.
Apple Inc. first sought to acquire the Respondent’s disputed domain names in February 2008. Prior to this date the Complainant or Apple Inc. never challenged the Respondent’s rights or legitimate interests. Rather, other employees of Apple Inc. acknowledged that the Respondent was operating a legitimate fan site. The Respondent was asked to add a clearer disclaimer, and this was done by the Respondent immediately (after seeking and obtaining approval from Apple Inc.). The Respondent is not a competitor of the Complainant, and the disputed domain names were not registered by the Respondent primarily to disrupt the Complainant’s business. The Respondent’s fan website cannot be perceived as having any detrimental impact on the Complainant’s business, or to have diverted any Internet traffic away from it. The website does not lead to any disreputable sites or products, and Apple Inc. actually benefits from and advertises on the fan site using Google advertisements.
As discussed above, the Respondent did not acquire the disputed domain names primarily for the purpose of selling, renting or transferring them to the Complainant
The evidence provided indicates the Complainant (and Apple Inc.) do not promote the Complainant’s name as a brand or trade mark, and therefore do not use it in trade or commerce. Firstly, because the Complainant’s work for which he is most famous is publicly recognized and primarily attributable to Apple Inc. rather than the Complainant. Secondly, despite having the opportunity to pursue individual endeavors outside his employment, which under certain circumstances might be branded under his personal name, the Complainant has made a conscious decision not to do so. In fact, the Complainant has actively sought to keep his personal name out of trade and commerce. As was the case in The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohen, Profile.net and God.Info, WIPO Case No. D2002-0184: “Complainant is careful to avoid any suggestion that he has exploited his name for ‘materialistic’ or ‘commercial’ purposes.”
The following comments from the Jerry Falwell case are similarly applicable here: “The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services. … Complainant failed to provide any marketing brochures, trade advertisements, or other evidence of use as a trademark. On September 3, 2001, WIPO issued its Final Report on the Second WIPO Domain Name Process (the ‘Second WIPO Report’). In that report, WIPO carefully considered to what degree protection should be extended to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been commercially exploited. ‘Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to Society.’ Second WIPO Report, paragraph 199.”
For the foregoing reasons, the Complainant has failed to establish that he has unregistered trade mark rights in his name, and accordingly the first element has not been met. On the material before the panel the Respondent has shown he and his brother are and have been for some time commonly known by the names "muscle" and "fitness". The Respondent also submitted evidence that prior to this dispute (namely on January 1, 2001), he and his brother prepared a document entitled "Website Project". That document contains the words "Muscle" and "Fitness", followed in parentheses by the names "Donho and Namho" and the names of their father, mother, sister and brother-in-law, as well as the brothers’ names in full. The document comprises a summary description of the contents and structure of a proposed website. There is a "Project Progress Schedule" showing the various planned stages from "Project Plan", starting on January 1, 2001, through to "Test and Completion" ending on January 30, 2001. The Respondent stated that the intended opening of the website on February 1, 2001, was delayed by the bringing of this complaint.
On the material before the panel, there is no reason to doubt Respondent’s assertion and the panel accepts that, before the Respondent received notice of this dispute, he engaged in demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services, namely information about his family and about heath and fitness in general.
The panel finds the Complainant has failed to prove the Respondent has no rights or legitimate interests in respect of the disputed domain name under Rule 4(a)(ii) and the Respondent has demonstrated he does have rights or legitimate interests in and to that name, under Rule 4(c)(i). Bad faith: Since it is unnecessary to deal with this issue, it may be noted simply the Respondent’s lack of knowledge of the trademark prior to this dispute is fatal to this aspect of the Complainant’s case. In any event, prior knowledge of a weak mark does not, without more, establish bad faith: Goldline International Inc., v. Gold Line WIPO Case (D2000-1151). The complainant has not shown either bad faith registration or bad faith use. The Domain Name Groovle is “nearly identical or confusingly similar” to Complainant’s GOOGLE Mark. Minor alterations or misspellings do not eliminate the confusingly similar aspects of the Domain Name and Complainant’s mark. Here, the Domain Name is only two letters different from Complainant’s GOOGLE mark; therefore, the Domain Name is confusingly similar to Complainant’s mark. Registrant is using the Domain Name in connection with Complainant’s search engine services and is using a website layout that mimics Google’s search homepage. Registrant is clearly using Complainant’s famous GOOGLE Mark to attract internet users to its own website for commercial gain.
Google contracts with developers such as the Respondent to distribute Google Pay Per Click (“PPC”) advertisements via customized start page services. Users who use the Respondent’s service will see advertisements provided by Google, and Google will pay a small percentage of these PPC advertising revenues to developers, such as the Respondent. Since the Respondent has contracted with the Complainant, the Respondent has consistently been paid by Google for its efforts in distributing Google PPC advertisements via the Groovle.com service. Respondent has also made various changes to the appearance of the Web Site, in order to further differentiate itself from the Complainant. There is little or no likelihood of any confusion between Groovle.com and the Complainant. The Complainant has not provided any evidence whatsoever of any actual confusion.
There is no misspelling of GOOGLE involved. The Disputed Domain Name contains an important “R” and important “V” that serve to distinguish the sound, appearance, meaning, and connotation of GROOVLE from GOOGLE. The addition of the “R” and the “V” clearly make the predominant word and meaning “GROOVE” or “GROOVY” rather than GOOGLE. Respondent has a legitimate interest in the Domain Name. Respondent has carried on business under the Groovle.com web site and domain name for over 2 ½ years, unmolested and undisturbed by the Complainant, who was a joint venture of sorts with the Respondent. Complainant considers the “froogles.com case” (Googe Inc. v. Richard Wolfe, FA0275419 (Nat. Arb. Forum July 18, 2004)) to have been wrongly decided. Assuming the
Before notice of the dispute, Respondent used the Domain Name in connection with an offering of goods and services that was so bona fide that the Complainant itself pays for it. The question of trademark infringement is outside the scope of the UDRP. The UDRP is concerned with cyber squatting only, and this is not a cyber squatting case. Likewise, the question of whether or not the Respondent breached the Contract and Guidelines, is an argument outside of the scope of the UDRP. None of the four enumerated grounds in Paragraph 4(b) of the UDRP for a finding of bad faith exist in this case.
Since the Panel found that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not confusingly similar to the mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
DECISION. Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED. Accordingly, it is Ordered that the
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