Tag Archives: domain names

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

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.

Donald Trump wins smackdown victory in defamation and tortious interference lawsuit over domain name dispute

Donald Trump filed a UDRP action against plaintiff Stevens over plaintiff’s registration of the domain name TrumpEstates.com. While that action was pending, plaintiff filed a lawsuit against Trump, his organization, and his lawyers, asserting claims of defamation, tortious interference with business relations, and also seeking a declaratory judgment concerning cybersquatting.

Trump moved to dismiss for failure to state a claim upon which relief may be granted. The court granted the motion and dismissed the action with prejudice.

The defamation claim failed because plaintiff had established a website at the disputed domain name that provided a link to a New York Post article that republished the report of the defamatory allegations, namely, that plaintiff had violated the law and had committed cybersquatting by registering the disputed domain name. This claim failed under New York law because words voluntarily disseminated to the world by the party allegedly aggrieved cannot, by definition, be found defamatory.

The tortious interference claim failed because plaintiff did not identify any third party with which it had a business relationship, let alone one with which the Trump defendants interfered and injured.

Plaintiff’s claim for declaratory judgment sought an order from the court holding that plaintiff had not improperly registered the domain name. The court found that plaintiff did not offer any factual allegations of he acted in good faith when he registered the disputed domain name. Instead, plaintiff actually admitted that his business centered around the reselling of domain names. Federal law recognizes it to be an indication of bad faith when it offers to transfer, sell, or otherwise assign a domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in a bona fide offering of any goods or services. (In this case, the disputed domain name had been advertised as being for sale for $400,000.)

The case can be properly characterized as a “smackdown” because the court dismissed the action with prejudice, meaning that plaintiff does not have the opportunity to refile the deficient complaint. The court added some gloss on the part of the opinion where it determined that leave to amend it would be improper. It noted that the “network of regulations” that protect trademark owners’ interests in domain names makes “crystal clear that, even in cyberspace, the TRUMP mark is entitled to regulatory protection fair and square.” The court went on to note that it was inconceivable that plaintiff could, as the silence of his papers emphasized, plead any facts that would entitle him to co-opt the Trump name.

Stephens v. Trump, 2016 WL 4702437 (E.D.N.Y., September 7, 2016)

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.

Court will not order seizure of domain name in copyright infringement case

Plaintiffs – the owners of the copyright in photographs – sued defendants for copyright infringement over the unauthorized publication of photos on one of the business defendant’s websites that used the domain name <4umf.com>. The court awarded judgment and damages in plaintiffs’ favor when the business defendant defaulted.

Even after having received two extensions of time from the court, though, plaintifsf had not yet served the summons and complaint upon one of the individual defendants. The court ordered plaintiffs to show cause why the action should not be dismissed against that defendant for failure to serve him. In response, plaintiffs stated that despite diligent efforts, they could not identify or locate the individual plaintiff. So it asked the court – via a “motion to seize domain name” – to order the turnover of the <4umf.com> domain name for the purpose of uncovering the defendant’s true identity.

The court denied the motion. It found that plaintiffs had failed to demonstrate why the court should exercise auhority over the domain name as property subject to the court’s control and authority. It rejected plaintiffs’ attempts to liken the situation to other cases in which courts had ordered the seizure of domain names in trademark actions for over disputed domain names. “[S]eizures under the former circumstances were contemplated by the [Anticybersquatting Consumer Protection Act] to combat ‘cybersquatting.'”

The court also noted that seizure of copyrighted materials is a permissible remedy under the Copyright Act and has been granted by certain courts in some circumstances. But in this case, plaintiffs did not seek seizure pursuant to the Copyright Act § 503, nor did they seek impoundment or seizure in their complaint or motion for default. Plaintiffs sought only damages and attorneys’ fees, which the Court awarded.

Further, the court noted that plaintiffs were not seeking to reclaim their copyrighted material by seizing the six infringing photos, but rather the entirety of the domain name. The court was sympathetic – although plaintiffs may have had difficulty locating defendants and enforcing the default judgment, plaintiffs had not demonstrated why that entitled them to seizure of the whole domain name, or how seizing the domain name would facilitate identification or location of defendants or collection on the judgment. Even if seizure were appropriate at this late stage, it the court found that to be an overly broad remedy for the violations here.

BWP Media USA, Inc. v. NV Media Group, Inc., 2015 WL 2152679 (S.D.N.Y. May 6, 2015)

Use of trademark in gripe site subdomain was not likely to cause confusion

Ascentive, LLC v. Opinion Corp., 2001 WL 6181452 (E.D.N.Y. December 13, 2011)

Plaintiffs sued gripe site pissedconsumer.com for trademark infringement and other forms of unfair competition. The court denied plaintiffs’ motion for preliminary injunction. It found, among other things, that defendants’ use of plaintiffs’ trademarks as subdomains (e.g., ascentive.pissedconsumer.com) was not likely to cause confusion.

The court looked to other cases where gripe site operators chose negative words to use in conjunction with the company being criticized. Over the years, gripe site operators have commonly chosen to add the word “sucks” to the target brand. For example, in Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003), the court held there was no trademark violation by the site taubmansucks.com.

Other “suck” parts of the URL have risen above the trademark infringement fray. A case from over a decade ago found that the web address compupix.com/ballysucks would not create a likelihood of confusion because no reasonable visitor to the site would assume it to come from the same source or think it to be affiliated with, connected with, or sponsored by Bally’s. Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998).

And it’s not just that these brands purport to suck. In Taylor Building Corp. v. Benfield, 507 F.Supp.2d 832 (S.D. Ohio 2007), the court found that taylorhomesripoff.com, used in connection with a forum for criticizing plaintiff, did not create any likelihood of confusion.

In this case, the notion of being “pissed” joins a lexicon of permissible gripe site nomenclature (depending on the circumstances, of course). So says the court: “Like the word ‘sucks,’ the word ‘pissed’ has entered the vernacular as a word instinct with criticism and negativity. Thus, no reasonable visitor to the [offending pages] would assume the sites to be affiliated with [plaintiffs], and PissedConsumer’s use of plaintiffs’ marks in the various domain names at issue is not likely to cause confusion as to source.”

Aside: Good lawyering by my friend Ron Coleman for the defendants in this case.

Court won’t let marijuana activist change his legal name to njweedman.com

In re Robert Edward Forchion, Jr., 2011 WL 3834929, (Cal.App. 2 Dist. August 31, 2011)

A long time marijuana activist (who now self-identifies as a “marijuana capitalist”) asked a California court to legally change his name to match the domain name of his website — njweedman.com. The court denied the request.

The court gave three reasons why it would not allow the name change:

  • A name change would last indefinitely, but a domain name could expire or be lost. Therafter, people might be confused.
  • The name change would associate the petitioner’s legal name with a website that advocates illegal activities, and that should not be allowed.
  • The petitioner tried to change his name in New Jersey back in 2001 but failed. The California court, looking to principles of “comity,” went along with the New Jersey Court.

At least we know Sunshine Megatron is not as controversial.