Category Archives: Cybersquatting

Parked domain names were in “use in commerce” for purposes of Section 43(a) claim

Plaintiff, the owner of a college student housing facility, filed suit for unfair competition under Section 43(a) of the Lanham Act against a number of entities and individuals that operated a competing student housing facility. Defendants registered eight domain names that incorporated plaintiff’s trademarks. At first defendants used some of the domain names to redirect traffic to the website for defendants’ competing student housing facility. But after plaintiff demanded defendants cease and desist, defendants simply parked the domain names with GoDaddy and permitted pay-per-click ads to appear on the pages. 

The case went to trial and the court found in plaintiff’s favor on the unfair competition claim. The court determined that the domain names were confusingly similar to plaintiff’s marks that had acquired secondary meaning. And the use of the domain names in the manner defendants had set them up constituted use in commerce. Each of the web pages displayed the domain name associated with it – and each such domain contained plaintiff’s mark. And each of the pages showed pay-per-click ads comprised of links to various vendors’ goods and services. This use met the Lanham Act’s definition of “use in commerce”. 

ZP No. 314, LLC v. ILM Capital, LLC, No. 16-521, 2019 WL 4924029 (S.D. Alabama, September 30, 2019)

About the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Yahoo successor does not prevail in bid to obtain ymobile.com domain

Oath, Inc., the successor to Yahoo! Inc., filed an action under the Uniform Domain Name Dispute Resolution Policy (UDRP) against a domainer that acquired ymobile.com earlier in 2019. The split 3-member FORUM panel denied the complaint, finding that Oath failed to demonstrate that the respondent lacked rights or legitimate interests in the disputed domain name, and failed to show it registered and used the disputed domain name in bad faith. 

On the question of rights or legitimate interests, the panel found that the respondent’s purchase and sale of the domain name comprised of the generic term “mobile” prefixed by “y” was legitimate, so long as the respondent did not intend to capitalize on Oath’s YMOBILE mark, which is registered in Japan. The panel accepted the respondent’s assertion that it had no notice of the YMOBILE mark prior to acquiring the disputed domain name. 

Regarding bad faith registration and use, the panel similarly found that the respondent was not targeting the Y! or YMOBILE mark, and that it had no knowledge of the YMOBILE mark’s existence prior to acquiring the disputed domain name. 

One of the panelists dissented, arguing that the disputed domain name should have been transferred. He emphasized how the respondent was using the disputed domain name – which the panel found was identical to a mark the complainant owns – to display pay-per-click ads for goods and services competitive with the complainant’s. Some of the ads, for example, were for online games and downloadable software. And on the issue of bad faith, this panel member observed that although the respondent claimed to not know of the complainant’s YMOBILE mark, a simple web search would have revealed it. 

Oath Inc. v. Mira Hold, No. FA 1909001858330 (Forum, October 8, 2019)

Coachella unsuccessful in domain name dispute, failing to prove bad faith use and registration

Disputed domain name: chellastore.com

The Complainant is the owner of the well-known Coachella festival. It owns a trademark registration, issued in 2016, for the mark CHELLA.

The Respondent asserted that he intended to use the disputed domain name to set up an online women’s clothing store but never did so. He claimed that growing up, his nickname was “Chelle” and that he modified that name to make it sound more feminine for use in connection with the store.

Coachella challenged the domain name registration. A single-member NAF panel denied the complaint. It found in favor of the Complainant on the first two UDRP elements, but did not find that the Respondent registered and used the disputed domain name in bad faith.

In the present case, the Panel found that, in contrast to the COACHELLA mark, the Complainant failed to show that its CHELLA mark was sufficiently well-known. All of the Complainant’s exhibits substantiating the well-known character of its mark related to its COACHELLA mark. Since the disputed domain name was considered to only be confusingly similar to Complainant’s CHELLA mark, the Panel found that future active use of the disputed domain name could thus be legitimate without interfering with the Complainant’s marks.

The Panel was also of the opinion that the Complainant did not sufficiently show the Respondent’s constructive knowledge of the COACHELLA or CHELLA marks to evidence bad faith registration of the disputed domain name. Considering that the term “Chella” is used as a personal name or to denote a town in Spain, the Panel found that it was plausible that the disputed domain name was registered in good faith by the Respondent, without any knowledge of or intention to target the Complainant’s marks. Finally, the Panel found that the Respondent had not violated any of the factors listed in Paragraph 4(b) of the UDRP or engaged in any other conduct that would constitute bad faith registration and use under the UDRP.

Coachella Music Festival, LLC v. John Mercado, FA1904001840140 (Forum, May 27, 2019)

This post originally appeared on UDRP Tracker.

UDRP Panel found no bad faith, but gave the Complainant additional opportunity to prove its case

[This post originally appeared on UDRP Tracker.]

The Complainant established its business beginning in March 2018 and sought to acquire the disputed domain name <zoyo.com> through communications with the Respondent facilitated by the registrar. After the Respondent demanded $10,000 for the disputed domain name – which was the same amount the Respondent claimed to have paid for the disputed domain name “a few years ago” – the Complainant sought relief from a single-member WIPO Panel under the UDRP.

The Panel denied the Complaint, finding that the Complainant failed to show bad faith use and registration under the UDRP.

The evidence on this point was controverted. The Respondent claimed (not in a formal response but through the above-noted negotiations) that he acquired the disputed domain name years ago, and the WhoIs data showed it was first registered in 2002. But the Complainant – looking to the “last updated” field in the WhoIs data, claimed that the Respondent acquired it in April 2018.

The Panel found that “failed to establish that the Respondent’s statement in response to the Complainant’s enquiry that it acquired the disputed domain name ‘some years ago’ [was] false.”

It further noted that the Complainant stated that it required the disputed domain name for use as part of the expansion and development of its business. The Panel surmised that this could indicate that the Complaint was filed as a part of the Complainant’s business expansion plan and perhaps indicated that the Complainant did not fully understand the nature and purpose of the UDRP.

So the Panel’s decision left open the possibility of further action if the facts would support them. The Panel determined that if the Complainant could prove that the Respondent did not acquire the disputed domain name until April 2018, at a time when there was considerable activity and perhaps publicity in relation to the establishment of the Complainant’s group, that might paint a different picture. Accordingly, on the basis of the evidence before the Panel on the present record, the Panel denied the Complaint but without prejudice to the filing of a new Complaint should evidence become available to support the Complainant’s contentions concerning the Respondent’s identity and acquisition of the disputed domain name.

Zoyo Capital Limited v. A. Zoyo, WIPO Case No. D2018-2234

UDRP Panel finds three letter domain name was not registered and used in bad faith

(This is a cross post from UDRP Tracker.)

UDRP complainant manufactures cameras used in science and industry, and claimed to be the sole user of the letters “PCO” in commerce. The respondent acquired the disputed domain name in 2008 and never established an active website there. The UDRP Panel refused to transfer the disputed domain name to the complainant, finding that the respondent did not regsiter and use the disputed domain name in bad faith.

In making this finding, the Panel observed:

  • Contrary to the complainant’s assertions that it was the exclusive user of the letters PCO, it is in fact common three-letter combination.
  • A number of UDRP cases about three-letter domain names show that such terms are generally in widespread use as acronyms and it is conceivable that they are registered for bona fide purposes.
  • The complainant claimed to have a stong worldwide reputation but actually operated only in a niche, so there was nothing to support the complainant’s claim that the respondent was “obviously” aware of the complainant when it acquired the disputed domain name.
  • The complainant overstated its case when it claimed that there was no conceivable good faith use to which the disputed domain name could be put.

For these reasons, despite the fact that the respondent did not reply in the action, the Panel denied the complaint.

PCO AG v. Register4Less Privacy Advocate, 3501256 Canada, Inc., WIPO Case No. D2017-1778 (October 30, 2017)

About the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Confusing UDRP decision regarding proof required for showing of no rights or legitimate interests

(This is a cross-post from UDRP Tracker.)

In the case of BroadPath Healthcare Solutions / Jerry Robertson v. Maria Piro / Nova Nordisk, a one-member NAF Panel held that the Complainant failed to meet the second UDRP element, namely, it failed to establish that the Respondent lacked rights or legitimate interests in the disputed domain name <broad-path.org>.

The decision is confusing because the opinion appears to be self-contradictory. The Panel noted that the Complainant alleged (1) the Respondent is not commonly known by the disputed domain name, (2) that the Complainant had not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s mark, and (3) that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the Complainant argued, the Respondent was attempting to pass off as the Complainant to facilitate fraud on Internet users.

Ordinarily, in an uncontested UDRP matter (such as this one, where the Respondent did not file a response), such allegations would be enough to establish a prima facie showing on the second UDRP element. It is unclear what more the Panel expected to see in terms of proof of lack of rights or legitimate interests. The prima facie showing requirement is used in light of the difficulty of proving a negative, which is what the second UDRP element calls for.

In any event, despite the Complainant’s allegations listed in the decision, the Panel concluded, in summary fashion without explanation, that the Complainant failed to make a legally cognizable argument under this second UDRP element. For this reason, the Panel did not go on to analyze the bad faith element, but instead denied the Complaint.

BroadPath Healthcare Solutions / Jerry Robertson v. Maria Piro / Nova Nordisk, Claim Number: FA1709001748692 (NAF October 31, 2017)

Court orders transfer of domain name at preliminary injunction stage of trademark case

Plaintiff sued a competitor under the Anticybersquatting Consumer Protection Act (15 U.S.C. 1125(d) (“ACPA”)) and brought other trademark-related claims concerning the competitor’s alleged online scam of selling infringing nutritional supplement products. Plaintiff also sued the domain name privacy protection service Namecheap, which the competitor had used to register the domain name. As part of the order granting plaintiff’s motion for preliminary injunction, the court ordered Namecheap to transfer the domain name to plaintiff.

The court noted that a preliminary injunction “is an extraordinary remedy never awarded as of right,” and that the “traditional purpose of a preliminary injunction is to protect the status quo and to prevent irreparable harm during the pendency of the lawsuit.” Given these parameters, one may be reasonably surprised that the court went so far as to transfer the domain name before the case could be taken all the way through trial. Usually the transfer of the domain name is part of the final remedy awarded in a cybersquatting case, whether under the ACPA or the Uniform Domain Name Dispute Resolution Policy.

The opinion did not address the issue of whether the domain name transfer prior to trial might go further than to “protect the status quo”. It would seem the court could have just as easily protected the status quo by ordering the domain name not be used. The court apparently found the evidence to be drastically in favor of plaintiff. And since the defendant-competitor did not show up for the hearing, plaintiff’s evidence went unrebutted.

Nutramax Laboratories, Inc. v. Nutra Max Labs, Inc., 2017 WL 4707447 (D.S.C. October 20, 2017)

See also:

Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

UDRP complainant denied relief where disputed domain name also contained competitor’s trademark

A National Arbitration Forum panel denied relief to industrial manufacturer NSK (owner of the same mark) in a dispute over the domain name <skfnsk.com>. The panel found that the complainant did not meet the first element under the Uniform Domain Name Dispute Resolution Policy (UDRP) – the disputed domain name was not confusingly similar to the complainant’s NSK mark..

The case serves as an example of a panel departing from the ordinary determination that a disputed domain name incorporating the complainant’s mark as a whole will suffice to demonstrate confusing similarity.

The distinguishing fact in this case was that the other portion of the mark (SKF) is the trademark of one of the complainant’s competitors. The panel cited two other cases where complainants were denied relief in UDRP actions over disputed domain names containing both the complainant’s mark and that of another company. In NIKE, Inc. and Nike Innovate, C.V. v. Mattia Lumini and Yykk Snc, NAF Case No. FA1679233 (July 15, 2016), the panel denied relief to Nike over the disputed domain name <nikegoogle.com>. Similarly, in Dell Inc. v. Ionel Adrian Nicolae, NAF Case No. FA1683104 (August 22, 2016) the panel held that “Nvidia Corp. has not been joined as a Complainant in this matter and there is no nexus available through which Complainant can claim to have rights to the transfer of the <alienware-nvidia.xyz>”

NSK LTD. v. Li shuo, NAF Case No. 1683104 (February 16, 2017)

This post also appeared on UDRP Tracker.


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.
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Court stops former dealer and company spokesperson from using trademark in domain name

Plaintiff likely to succeed on merits of claim under Anticybersquatting Consumer Protection Act (ACPA).

Defendant worked as a dealer, spokesperson and consultant to plaintiff. About the time she ended her relationship with plaintiff, defendant and another woman formed a competing business and registered several domain names comprised of plaintiff’s trademark or otherwise mimicking the domain name of plaintiff’s legitimate site. They used those domain names to redirect web users to the new company’s website.

Plaintiff sued under the ACPA and sought a temporary restraining order against the use of the domain names. In entering the TRO, the court found plaintiff was likely to succeed on the merits of its ACPA claim.

The court easily found the domain names were confusingly similar to plaintiff’s registered trademarks.

On the issue of bad faith use or registration, the court looked to the prior relationship between the parties, the electronic mail correspondence between them, and the undisputed fact that the parties were competitors. The court concluded that common sense suggested that the direction of traffic with the use of the disputed domain names to defendants’ website was for the purpose of commercial gain. Therefore, the court concluded that plaintiff had established a likelihood of success on the merits as to the cybersquatting claim.

Ball Dynamics Int’l LLC v. Saunders, 2016 WL 7034974 (D. Colo. December 1, 2016)

When can you use a competitor’s trademark in a domain name?

The recent case of XPO CNW, Inc. v. R+L Carriers, Inc. coming out of a federal court in Michigan tells the interesting story of one company opportunistically using its competitor’s trademark in a domain name to set up an employee recruiting website. The decision sketches out certain circumstances when this practice passes legal muster.

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The parties to the dispute are major trucking lines. If you have driven on any highways in the United States, you have no doubt seen 18-wheelers bearing the trademarks of the parties involved in this case. In late 2015, plaintiff XPO acquired Con-Way Freight. Shortly thereafter, defendant R+L launched a website targeting Con-Way’s employees using the domain name conwaylayoff.com. The website included the following statement:

Were you laid off from Con-way? Don’t worry about the XPO Logistics acquisition, when one door closes another opens. R+L Carriers is hiring today….Turn your valuable years of knowledge and experience into a new career with R+L Carriers, which was named a Top National/Multiregional LRL Carrier in Logistics Management magazine’s 2015 Quest for Quality Awards. R+L Carriers launched Conwaylayoff.com to inform those employees that may have been affected by the recent acquisition of Con-way Freight, of similar opportunities that we have where they may be able to put their skills to work.

Plaintiff sued for trademark infringement and for cybersquatting under the Anti-Cybersquatting Consumer Protection Act (“ACPA”). Defendant moved for judgment on the pleadings. The court granted the motion.

The court found there to be no sufficient allegations of trademark infringement because the documents before the court showed there was no likelihood of confusion as to the origin of defendant’s services. The language on the website (quoted above) contradicted plaintiff’s assertions of likely confusion.

On the ACPA claim, the court found there was no evidence that defendant used the domain name with a bad faith intent to profit.

The court compared this situation with the one in the case of Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004). In Lucas Nursery, there was no evidence that defendant intended to divert consumers from the plaintiff’s online location. Nor was there evidence that defendant ever sought to mislead consumers with regard to the site’s sponsorship. The site explicitly stated that it was established for the purposes of relaying defendant’s experience with the plaintiff’s nursery. Moreover, there was no offer to sell the site to plaintiff, and no other indicators of bad faith existed, such as providing misleading contact information or acquiring batches of additional domain names.

In this case, it was undisputed that defendant set up a web site and used plaintiff’s trademark in the domain name. But this was insufficient to establish that defendant operated in bad faith. Plaintiff did not allege that defendant ever offered to sell the domain name to plaintiff. Nor did it allege that defendant acquired other suspect domain names. Instead, plaintiff offered the court a barebones recital of the statutory language, stating that defendant registered and has used the domain name without plaintiff’s authorization and with bad faith, to profit from plaintiff’s trademark, and that the infringing domain name directed or redirected to a website controlled by defendant, who profited from its use. The court found this to be insufficient to survive the relevant pleading standard. Accordingly the court granted the motion for partial judgment on the pleadings concerning this claim.

XPO CNW, Inc. v. R+L Carriers, Inc., No. 16-10391, 2016 WL 4801283 (E.D. Mich. September 14, 2016)

Photo courtesy of Flickr user Jean-Pierre Magnan under this Creative Commons license.

Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.