Author: slevy

The famous Kenny Rogers song “The Gambler” teaches us that “you got to know when to hold ‘em, know when to fold ‘em” but it says nothing about the importance of picking the right casino.  In the wild and freewheeling world of domain name disputes similar rules apply but those who are savvy enough to survive a long time in this game have learned that some cases just can’t be won in front of a UDRP Panelist.

When Do You Use the UDRP?

The UDRP was created as a fast-track and lower cost alternative to court litigation and, as a result, many of the procedures taken for granted by litigators, such as discovery and witness cross-examination, are not available.  This has lead to a long line of case precedent which explains that the Policy is only for clear cases of cybersquatting and is not suited for more complex disputes.

A Cybersquatting Question Better Suited for Court

In a recent case involving a licensee of the Russian VULKAN trademark as used for gaming and entertainment the Complainant wasn’t very happy when the Respondent registered the domains bestvulkan.com and myvulkan.com and used them for a website offering online casino and gaming services.  In its defense, the Respondent claimed that any trademark rights which may have existed in the VULKAN name had been abandoned since the Russian Federation banned gambling in 2006.  It also claimed that the license, under which the Complainant claimed rights to the mark, was non-exclusive and did not grant the Complainant any right to pursue infringements of the brand.

In what can only be attributed to the saint-like patience and tolerance by the Panel, no less than three supplemental filings were submitted by the Complainant seeking, not only to address the Respondent’s defenses, but also to fix some of the omissions it had made in its complaint and the earlier supplemental filings.  (This is off-topic for this post but many other Panels might not have been so forgiving and wouldn’t even consider anything beyond the first supplemental document.)  In these submissions, the Complainant put forth a copy of the license and argued that the validity of its trademark rights is beyond the scope of the UDPR and so should not be considered by the Panel.

Finally, the Respondent had cited a prior UDRP decision that was unfavorable to the Complainant whose facts and arguments were very similar to the present case. The Complainant shot back that this Panel is required to assess the present case independently of any prior decisions because it involves a different respondent and registrar.  The Panel agreed with the Complainant on this point but that was the last good hand that was dealt to it.

The Panel mentioned that the Complainant itself points out that issues of trademark validity are generally outside the purview of UDRP proceedings.  And much of the substance of the dispute between the parties turns on issues of trademark ownership, validity, and licensing.  These are complex issues best addressed through the court system and, since the facts of this dispute do not establish a clear-cut case of cybersquatting, the Panel denied the Complaint.  In addressing the intended scope of the UDRP, the Panel stated that “The Policy does not contemplate this Panel serving as a tribunal of general jurisdiction over any and all disputes which are somehow related to domain names.”  Issues such as trademark validity, abandonment, acquiescence, and unclean hands simply should not be decided through a process that is a curtailed version of litigation which offers no ability to more deeply delve into the facts and law surrounding such a multi-faceted dispute.

To Be Continued?

At this point the Complainant may still pursue its claim but it will obviously be more costly and time-consuming.  This very factor will test how important these domains are to it and whether it is prepared to “see” the Respondent’s UDRP ante and “raise” it with a trip to the courthouse.

It’s well understood in courts around the world that some judges lean a bit towards plaintiffs and some towards defendants when deciding their cases.  I suppose many are influenced by their private practice careers prior to donning the black robes and is also an undeniable component of human nature.  This is no different in UDRP decisions where some panels are known to lean towards domain owners while others favor complaining brand owners.

In a recent decision I feel the Panel gave a certain amount of leeway to the owner of the SPEX trademark as used in the production and sale of chemicals for industrial and laboratory use, plus certain related instruments such as spectrometers and spectrographs.

The mark is registered in the U.S. and various other countries. The Respondent claims that its spexmachine.com domain is simply a play on the common phrase “sex machine” and that the word “spex” is widely accepted as a slang or short-hand term for “spectacles” (eyeglasses).  He asserts that people who view the domain would also likely assume and realize that it was related to a spectacles store, even before viewing the content of its website. The Respondent claims he is planning to create an online shop offering eyeglasses. However, at the time of the complaint, over one year after the domain was created, the website is merely a registrar parking page.

Considering UDRP Elements

In considering the first UDRP element the Panel found that the Complainant had rights to its SPEX trademark and that the domain incorporates the entire mark.  The fact that it adds a generic term “machine” does not change that conclusion. This is all well and good.  But he went on to state that “[t]he contention of Respondent that ‘spexmachine’ is simply a play on the common phrase ‘sex machine’ is without any merit and deserves to be rejected.”  Now, many respondents in other cases have foisted highly suspect rationalizations upon panels and these are almost always rejected. But here, without any explanation on the part of the Panel, I find this holding rather dismissive.  In any case, it clearly shows that the Panelist didn’t care for the pop music scene of the 1970’s.

On the second element of the the Policy, the Panel noted that resolving a domain to a registrar parking page has routinely been held to not be a bona fide offering of goods or services.  On this point I agree but then feel this merely puts a burden on the Respondent to show demonstrable preparations to use the domain for such an offering.  Earlier in the decision the Panel mentions Respondent’s submission of emails to a potential supplier of spectacle frames in China but no mention of this is made in this section.  The Panel merely refers to “Complainant’s famous SPEX mark” and states that Respondent’s use thereof undermines any claim to a legitimate interest.

Finally, in discussing the third UDRP element, the Panel adopts what has become a clear minority position on the question of whether a respondent chose its domain based on actual knowledge of a complainant’s trademark or whether it is sufficient to find that it had “constructive” (implied) knowledge based on the fact that the trademark was registered.  He clearly agrees with the Complainant’s argument that the “Respondent acquired the subject domain name with actual and/or constructive knowledge of Complainant’s SPEX mark.”  Since there is no evidence mentioned in the decision of Respondent’s actual knowledge of the SPEX mark for chemicals and related apparatus, and since The Panel cites a number of older UDRP decisions to support the constructive knowledge position, it must be assumed that he’s hung the bad faith finding on that point.

Was This Domain Name Really Registered in Bad Faith?

Unless there is evidence in this case that was not discussed in the decision, I have to disagree with the Panel’s conclusion on bad faith.  This case involves a mark in a very specialized, industrial field and, though it may be well-known amongst participants in that field, it is unlikely that the Respondent would have ever heard of Complainant or its mark.  Further, despite the Respondent having submitted evidence of the use of the term “spex” to refer to spectacles, including the names of a number of eyeglass shops in the UK such as Spex Opticians, I Need Spex, and Spex 4 Less, and despite the well-known, though admittedly dated pop-culture use of the phrase “sex machine”, the Panel dismissively concludes that there is no such connection.  Finally, and to me most surprisingly, the decision implies that every registrant must conduct a trademark clearance search prior to registering its domain or risk being tagged with constructive notice of a complainant’s registered mark.  While I haven’t seen all of the evidence in this case, the Respondent’s story about planning an eyeglass shop seems plausible and the subtext of the decision strongly suggests that he had no knowledge of the Complainant’s brand, nor bad faith intent when registering the spexmachine.com domain.

Although I acknowledge that there are many clever and slippery cybersquatters in the world who attempt to squirm out of UDRP cases with spurious stories and concocted evidence, I don’t believe this was the case here.  At least if it was, the decision was lacking in its discussion of supporting facts and I’m left with the feeling that the Respondent is losing his domain unfairly.

In the olden days of UDRP complaints, when pleadings were submitted on printed paper, the domain landscape was ruled exclusively by TLDs such as .COM, .NET, .ORG, and their neglected cousin .BIZ.  When a cybersquatter created some sort of not-too-clever knockoff of a well-known brand and was then hauled before the imposing authority of the NAF or the WIPO, Panels routinely said that the TLD of a domain can be discarded like an inedible apple stem since they add nothing to meaning of a domain or to the analysis of the first UDRP element: likelihood of confusion between the domain and the asserted trademark. Decisions involving domains in these “legacy” TLDs still apply this philosophy.

However, with the advent of new gTLDs we’re seeing a new trend where some Panels acknowledge that some extensions have more meaning and thus carry more weight in the UDRP and URS analysis.  Though some still stick to the old ways, more and more are waking up to what cybersquatters have known for at least the last year of new gTLDs, which is that the TLD is no different than any text to the left of the dot and that, for example, snickers.clothing can tell as much about the nature of a domain as snickersclothing.com.

Although this awakening amongst Panels has been going on for many months now, a recent decision involving the domain novotelqueenstown.kiwi has brought the issue into greater focus and suggested that new gTLDs can have an impact not only on the confusion analysis, but also on the other two elements of the policy: whether a respondent has any rights or interests in a domain, and whether it acted in bad faith when it registered and used the domain.

In this case, the well-known Novotal hotel chain operates properties in 60 countries around the world, including seven in New Zealand and the domain owner, in response to a demand letter, offered to sell it to Novotel for over US$1,700.

Unpacking How a New gTLD UDRP Case Unfolds

The Panel in this case first addressed the question of whether a TLD should be considered or disregarded in the UDRP analysis and cited a string of cases where this was not the case – particularly where the extension relates in some way to the goods or services associated with a complainant’s trademark.  For example, a decision awarding transfer of the domain sanofi.international specifically mentions that use of the “.international” TLD will, inevitably, bring to mind the global dimension of the Complainant’s activities.

But the Panel didn’t stop there and went on to state that “it may be appropriate to consider the use of a gTLD extension in a disputed domain name as part of the analysis of the second and third elements of the Policy, as the extension used may have a bearing on a respondent’s intent in registering or using a domain name “  With regard to the second UDRP element, apart from the other issues typically considered, the Panel recognized that the Respondent specifically chose “the gTLD extension ‘.kiwi’ which suggests a connection to New Zealand” and indicates that it was well aware of the NOVOTEL mark and the presence of branded hotels in New Zealand when it registered the domain.  As such, a presumption is created that it had no rights or legitimate interest in the mark (and the presumption stood since no response was filed in this case).

Finally, on the question of bad faith, the Panel again cited the .kiwi gTLD and found that “it is inconceivable that Respondent registered such a confusing domain name by chance.” This, plus the request for a significant price for the domain lead the Panel to conclude that the Respondent had acted in bad faith.

What This Means for the Future of New gTLD UDRP Disputes

Going forward, we should see more and more of this nuanced approach to new gTLDs.  There may be situations in which they really don’t have any bearing on a dispute but I expect, more of than not, the meaning of the TLD will factor in to consideration of all three UDRP or URS elements.  So, while new gTLDs may have increased, many fold, the opportunities for cybersquatting activity, they have also provided a larger hook on which brand owners can hang their disputes.

As someone who is steeped in domain names every day I’ve undoubtedly developed a skewed view of the world in which knowledge of cybersquatting has reached even the most remote corners of the globe and everyone and their cousins are at least aware that this sort of thing exists.   As a result, I’m often surprised when I hear of a public figure who doesn’t own a domain which consists of their own personal name – at least in the .COM space.

And so it was this week when I read about a musician and businessman named Loney Hutchins who plays a lesser-known role in the mega-famous enterprise that is Johnny Cash.  After growing up in poverty in the Appalachia hills of Tennessee during the 1940’s, Mr. Hutchins had a chance encounter with June Carter Cash, the famous wife of the famous “Man In Black”, which eventually lead to his managing publishing operations for the House of Cash.  He also had some of his own songs cut by Johnny during this time and has since released at least one album of his own.

For a man who had come so far and gained so much since his childhood, two of the only things he didn’t have were a trademark registration and the domain LoneyHutchins.com.  He filled the trademark gap and obtained a US registration for the LONEY HUTCHINS mark in January of this year covering audio recordings featuring a variety of music styles.  The registration claims that the mark has been used since at least 1974.  As for the domain name, it was registered in late 2012 by an individual in Seattle, Washington.  The odd part about this is that the domain owner may never have heard of Mr. Hutchins or his music.

The website at LoneyHutchins.com consists of a series of rambling and sometimes disjointed stories, pleas, and mostly claims that the author was abused for a number of months while a patient at a rehab center for traumatic brain injuries.  And the owner of that rehab center?  A man named Loney Fred Hutchins.

Considering the Three Elements of the UDRP

In considering the three elements of the UDRP, the Panel in this dispute first looked at the disputed domain name in relation to the Complainant’s trademark and found that there is confusing similarity.  However, this is merely a threshold matter in domain disputes and the tougher issues are usually found in the second and third elements:

• whether the domain owner has any rights or legitimate interest in the domain, and
• whether it acted in bad faith when registering and using the domain.

As to the second element, the Panel found that the Respondent had made a “legitimate non-commercial or fair use of the domain name, without intent for commercial gain” by exercising his freedom of speech under the First Amendment to the United States Constitution. The assertion of trademark rights typically cannot prevent someone from freely expressing their opinions.  The case here is made even more defensible by the fact that the “Respondent’s criticisms through the website to which the disputed domain name resolves to, are not even related with Complainant’s trademark LONEY HUTCHINS, which is registered under goods related to audio music recordings.”

In the end, the Panel held that the Respondent is making a fair use of the domain by posting only his complaints against a rehab center unrelated to the Complainant musician.

Then, on the element of bad faith, the Complainant asserted that the LoneyHutchins.com website is “selling illegal advertisements” and “portraying pornography” such that the Respondent is seeking to profit from Complainant’s trademark. Unfortunately, it seems there were some shortcomings in Complainant’s evidence submitted in the case, since the Panel found that Complainant was not able to prove his alleged common law rights prior to his trademark registration.  And, regarding the the commercial or pornographic website content “none of those claims were supported by evidence of any kind either in the Complaint or the Additional Submission.”  For these reasons and those mentioned above under the second UDRP element, the Panel denied the claim.

A Case of Reverse Domain Name Hijacking

Finally, the Panel found that the Complainant had engaged in an attempt at reverse domain hijacking because its pleadings tried to confuse the Panel: the Complainant knew that it lacked prior trademark rights and that the accused website was aimed at another person by the same name.

All of the poor conduct and misuse of the UDRP aside, this whole mess could have been avoided had the Complainant simply registered the domain himself, to promote his career, to memorialize his close relationship to the Johnny Cash dynasty, or at least to prevent cybersquatting.  So my advice to all those reading this post, whether you’re truly world-famous or even just locally famous amongst your family, friends, and colleagues, is to grab that one domain you wouldn’t want anyone else to use.  It’ll cost a lot less than having to try and win it back later!

Most UDRP disputes involve only one or two domain names.  Some involve a few more and dispute providers charge slightly higher fees in these instances.  However, you know you’re dealing with something major when the number of domains in your case place you into the “please contact us for an estimate” category of dispute provider fees.

In a recent case brought by the pharma company F. Hoffman-La Roche, 154 domains were accused of infringing its ACCUTANE, ROACCUTANE, XENICAL, and BACTRIM brands.  Unfortunately for the Complainant, many of these domains listed different owners in their Whois records and some used a Chinese registrar which operates only in the Chinese language.  This raises two questions about how to apply UDRP rules: i) in what language should the case proceed?; and ii) can you consolidate so many different domain owners into a single case?

Under UDRP Rules, What Language Should Be Used?

The Panel addressed the language issue first and explained that, under UDRP rules, a case is usually supposed to be handled in the language of the registration agreement between the Respondent and the registrar.  In this case, some domains were registered under English language agreements but many were registered under agreements in Chinese.

The decision next pointed out that the rules allow some leeway for panels to exercise their discretion and decide that a case may be handled in a language different from that of the registration agreement if the circumstances so warrant.  Past UDRP decisions have looked to factors which indicate that the respondent can understand and use the alternate language proposed by the complainant and the Panel here cited some of those.

It was noted that:

• most of the disputed domains resolve to websites in English
• the Whois records for many of the domains listed addresses in the United States – a country where English is the primary language, and
• many of the disputed domains were formed by copying one of Complainant’s trademarks and appending to it generic words in English (ex. wheretobuybactrim.com).

Based on all of these factors, the Panel decided that the Respondents can function in the English language and so it was decided that this would be the language of the case.

The second procedural issue of consolidation was then discussed.

How Many Respondents is Too Many?

Under UDRP rules, a single complaint may be filed against multiple domains when those domains are under common ownership or control.  If multiple domains are owned by different, unrelated people, separate complaints against each must be filed.

In this case, the owners listed for most of the disputed domains are different.  However, through some time-consuming sleuthing, the Complainant was able to offer evidence that they are all part of a clever scheme set up by one organized crime group.

Amongst the disputed domains are a few which are described as “target” sites – those at which goods are actually sold.  However, the majority of the domains resolve to “feeder” sites which contain links directing users to one of the target sites.  In an attempt to hide its tracks, this group registered the various domains using the names, addresses, and phone numbers of unsuspecting victims of identity theft.  By pointing to such features as common email addresses, similar website layout and content, and the use of very similar “customer service” phone numbers on many of the sites, the Panel concluded, “on the balance of probabilities, the disputed domain names are controlled or under the common ownership.”

In the end, all 154 domains were ordered to be transferred to F. Hoffman-La Roche based on the Respondent’s bad-faith misuse of the various trademarks.  This case demonstrates that, even well-made plans of cybersquatters can often blow up in their faces by a smart and determined complainant.

Though not expressly stated in the UDRP rules, a complaining brand owner must prove a case of domain name squatting through the presentation of a preponderance of the evidence.

What does this means in practical terms? It means that there is often one fact, critical to the case, that the decision hinges on.  Panels have quite a bit of discretion, so from time to time, there are close cases that could go one way or the other.

In a case brought against the domain trumpcard.com, the Panel was faced with just this scenario.

The Arguments

The domain was registered in 1998, at a time when the Complainant, “the Donald” himself was particularly famous for his real estate ventures, his autobiographical books, his brash public statements and, of most importance to this dispute, his ownership of multiple casinos in New Jersey’s Atlantic City. At that time, he owned a number of trademark registrations for the TRUMP name.  It wasn’t until many years later, in 2012, that a rewards program known as TRUMP CARD was launched for regular players at the Complainant’s casinos.  Nevertheless, Mr. Trump asserted that the trumpcard.com domain was registered so as to take advantage of his name and the content of the Respondent’s website supports this conclusion.

In his defense, the Respondent first noted that the phrase “trump card” has a common, descriptive meaning in relation to poker and other card games. He then claimed that he created the domain with the intent to start his own online card game site and that he initially set up his website to seek out potential joint venture partners and to earn affiliate revenue while he developed his business plans.  After he received a demand letter from Trump’s lawyers in 2011 he added a disclaimer to his website and had it mirror an official Trump Casino site.

The Decision

Not surprisingly, the Panel first mentioned that it accepts that “trump card” is a descriptive term when used in relation to gambling.  However, he further noted that the Respondent had not used the domain in this manner.  Despite the fact that the domain was created long prior to the launch of the TRUMP CARD loyalty program, the Complainant was quite famous and the Respondent would certainly have been aware of his rights in the TRUMP brand.  He then noted that, in the past, the trumpcard.com website displayed text mentioning the casino business and Steve Wynn, head of one of the world’s largest casino empires.  The text also offered the domain name for sale to the general public in addition to mentioning that it was available for use in a joint venture.

Based on this evidence, the Panel held that “It is reasonable to infer that the Respondent registered the Disputed Domain Name to trade off the Complainant’s rights in his TRUMP mark.”  He also mentioned that “the Respondent profited from customer confusion through its affiliate arrangements” and that, because of this quest for commercial gain, it “appears to the Panel that the Respondent is trading off the Complainant’s substantial reputation” and that this shows his bad faith.

A Close Call

I view this as quite a close call since, on the one hand, the term “trump card” does have a descriptive use in relation to gambling and card games. However, on the other hand, the Respondent’s website content shows that he was clearly aware of the major players in the casino industry, presumably including the Complainant.

This left the Panel with the question of whether such knowledge, and an attempt to profit from the domain, overcame the descriptive relation of the term to the exact industry engaged in by the Complainant.

I think this case was teetering on the fine line of the preponderance of the evidence standard. Although knowledge of the famous Mr. Trump, alone, might not have delivered the win here, perhaps the Respondent’s mimicking of an actual Trump Casino website tipped the Panel over into a finding for the Complainant.  Had the Respondent kept its website focused on card games, perhaps the descriptive meaning of the phrase would have swayed the Panel in the other direction.

Although the use of three-member Panels for UDRP decisions is far less common than single-member Panels, they are sometimes requested by Respondents who feel that their defense is on the borderline of the Policy.  And while three-member Panels often decide cases unanimously, there are rare instances where one member dissents.

This was the case in a recent decision involving the domain tiryaki.com and it highlights the fact that the UDRP is a fast-track process with limited mechanisms for reviewing and testing the reliability of evidence.

The Arguments

The Complainant submitted evidence that it owns a trademark registration for the TIRYAKI brand in relation to certain agricultural products, but the Respondent countered stating that the word also has a generic meaning which translates to mean “addictive” in English.  The domain was registered in 2001, about one month before Complainant’s trademark application was filed.  Further, the pay-per-click links at Respondent’s website related to various medical companies and not to any agricultural categories. Finally, the Complainant offered to purchase the domain from the Respondent but was told that it’s not for sale. After pressing the Respondent, the Complainant was told that an offer of more than EUR 80,000 would need to be made.

In support of its claim that word has a generic meaning and is not associated exclusively with the Complainant, the Respondent submitted a Turkish company registry showing over one hundred listings within the city of Ankara and evidence of other Turkish trademark registrations for the TIRYAKI name.

The Decision

The majority of the Panel found that the Complainant could not support its claim of the Respondent’s bad faith because there was no solid proof that the TIRYAKI brand was used, as such, by the Complainant at the time the domain was registered, or that it was widely associated with Complainant’s company.

Further, the links on the Respondent’s website do not relate to the Complainant’s line of business and so it can’t be said that they were intended to disrupt Complainant’s business or earn Respondent a profit based on confusion with its trademark.  Finally, Respondent’s request for such a large sum of money to sell the domain was made only at the urging of Complainant and Respondent did not, itself, start out by requesting this price.

The Dissent

The dissenting Panelist came at this from a very different angle and reached some different conclusions based on his review of the submitted evidence:

• First, he took the position that the Respondent has no rights or legitimate interest in the domain based on his position that the pay-per-click links to medical companies bear no relation to the claimed generic meaning of the word tiryaki.
• Next, he cited the strong reputation that the Complainant had even before its trademark application was filed.
• He then turned to Respondent’s submitted evidence and found that there is some duplication on the list of companies in Ankara and that the number of relevant Turkish trademark registrations is lower than claimed.

Based on this, the Panelist reached the conclusion that the Respondent had tried to mislead the Panel and that this, alone, was evidence of bad faith intent.  Finally, he assumed that the Respondent’s initial refusal to sell the domain was a mere ploy and that, as a sophisticated domainer with thousands of names in its portfolio, it knew that it could not initially ask for a high price for fear of running afoul of the UDRP. By waiting and only mentioning the EUR 80,000 figure after some prodding by the Complainant, he knew that it would make it more difficult to use this discussion as evidence in the UDRP context.

I feel this rift between the Panelists shows that evidence in UDRP cases must be clear, unambiguous, and persuasive if a brand owner Complainant wants to succeed.  The lack of any discovery, witness testimony, or cross-examination in UDRP cases leaves Panelists to interpret the submitted evidence only on its face.  In this case, the evidence was on the cusp of what was needed to support the Complainant’s case and it lead to differing interpretations, and was considered differently by the majority and the dissenting Panelists.

Now that the Complainant has lost its UDRP case, I can only speculate on what outrageous price the Respondent will ask if the parties should, again, discuss a sale of the domain.

The town of Heidelberg sits in the south-western part of Germany. It is well-known for a number of things including its castle, a university, and its gothic, historic streets. It is also the home of Heidelberger Druckmaschinen AG, one of the world’s oldest and largest producers of commercial printing machines, and related services, for the global print media industry.

The company owns a number of domain names  in new gTLDs that include its brand, such as heidelberg.press and heidelberg.ink. However, it didn’t register heidelberg.equipment and heidelbergprinting.equipment. These, it turns out, were grabbed by the Respondent in a recent UDRP case filed at the WIPO.

While some elements of this case are rather conventional, others further highlight the impact that new gTLDs are having on the trademark enforcement landscape.

Complainant Vs. Respondent

Before the complaint was filed, the disputed domains resolved to a registrar parking page and the decision doesn’t mention if it contained any pay-per-click links or whether they were competitive to the Complainant. Despite the Respondent failing to file an answer in this case, after the Complaint was filed the domains began resolving to a page purporting to belong to a seller of offset printing equipment, including that of Complainant.

So, the conventional parts of this case are that parked pages and post-dispute website changes can demonstrate both a lack of Respondent’s rights or legitimate interest in the domains and also that it acted in bad faith when registering and using the domains.

The less conventional part of this case involves Complainant’s claim that “the generic Top-Level Domain (gTLD) ‘ equipment’, which serves to categorize websites specialized in equipment, tools, or machinery and which belongs to the lexical field of Complainant’s activity, increases the likelihood of confusion between the Domain Name and the Mark.” Complainant further asserted that use of the word “printing” in the other domain makes confusion even more likely.

Panel Notes that New gTLD Use is “Not a Distinguishing Factor”

What I found interesting about this decision was not the outsize role of new gTLDs urged by the Complainant but the fact that the Panel stuck to the view which is popular for legacy gTLDs such as .COM, .NET, .ORG, and the like. It held that, when considering whether the disputed domains are confusingly similar to the Complainants trademark, “the addition of suffixes such as ‘ equipment’, being a gTLD, is typically not a distinguishing factor.” The Panel did, however, find that the heidelberg.equipment domain is essentially identical to Complainant’s mark and that use of the word “printing” in the heidelbergprinting.equipment domain increases the likelihood of confusion.

While I agree with the Panel’s ultimate conclusion, its dismissal of the .equipment gTLD in the confusion analysis seems quite rote. When .COM’s and other legacy gTLDs are considered, it is natural to flick them aside as they almost never impart any meaning to a domain. So, Internet users focus on the second level (to the left of the dot) when discerning what a domain means. However, I feel that a more holistic view is warranted for new gTLDs. Just as the word “printing” can increase the likelihood of confusion between a domain and Complainant’s mark and also distinguish the domain from having a possible generic-geographic meaning, the word “equipment” serves the same function. Were this word part of the second level in a hypothetical domain heidelbergequipment.com I have no doubt the Panel here would have agreed that it adds to confusion with this mark. The fact that it is separated from the mark by a simple dot should make no difference.

Sometimes the bubble-wrap POPS but sometimes it just deflates with a brief hiss. Either way, all the air goes out of it. So it is with many domain enforcement actions. Some decisions truly hammer a cybersquatter, but some just leave you unsatisfied.

In this urban drama, the domain Breguet.nyc was registered by an individual with a New York City address (as is required for all domains in the .NYC TLD).  The domain resolved to a typical pay-per-click website with links to a number of other companies who compete with the famous Swiss wristwatch maker.  This individual also owns a number of other .NYC domains which copy well-known brands.  Sounds like a winning UDRP claim so far.

In response to a demand letter which was sent to the domain owner, someone claiming to be the owner’s “friend who is also an attorney but is not representing the owner” responded with a phone call.  During the call, the friend stated that the owner “may have plans” for this domain but that he would be willing to sell it “for about what it would cost you to file a complaint.”  Eventually, the range of $5,000-$6,000 was mentioned.  The friend was told that this offer was not acceptable and that a complaint would be filed against the owner and his domain. During a subsequent phone call the friend restated the owner’s request for payment in the range of what the brand owner would pay to file a complaint.

The UDRP Is Filed

As you might guess, very soon after this conversation the brand owner filed a complaint.  The next contact came from a different attorney, this one acknowledging that he actually did represent the now Respondent in this UDRP action.  He asked if the case could be settled and was told “please ask your client if he’ll reimburse the brand owner’s cost of filing the complaint.”  When this offer was rejected, the brand owner said, to no surprise of Respondent’s counsel, “OK, then how about he at least pay about what it would cost for you to defend him?”

Fast forward a few weeks and the UDRP decision is issued upon Respondent’s default.  Expecting to see the Respondent tarred, feathered, and run out of town on a rail, it was somewhat surprising to read a rather brief decision in which the Panel stated that “[a]s a result of Respondent’s consent to transfer, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the <breguet.nyc> domain name.”

Huh?!?  It turns out that, although not constituting a formal “response”, the Respondent had sent an email to the dispute provider stating “I have no use for this domain name or interest. Please transfer the domain name to the party that is requesting for it.”

Though somewhat uncommon, it is within the discretion of a Panel to forego an analysis and discussion of the full merits of a case where the Respondent consents to a transfer of the disputed domain.  This is done in the interests of expediency and in recognition of the common request of both parties.

The Potential Impact of Forgoing An Analysis in this Decision

This is not without consequence, however.  Although it may be rather unsatisfying to see such a brazen cybersquatter simply walk away from the matter after having caused a brand owner significant expense, the lack of a fully analyzed decision may hamper future complainants who are trying to show that the cybersquatter has acted in bad faith by engaging in a “pattern of conduct” under par. 4(b)(ii) of the Policy.  Nevertheless, the simple fact is that the UDRP was created as an expedient process with much lower costs than court litigation.  As such, neither dispute providers nor Panelists are paid very much and some feel that it’s a lot to ask that a full-blown opinion be researched and written when, essentially, both parties are in agreement that the domain should be transferred.

As for this cybersquatter, he still owns the other infringing .NYC domains but may not be so lucky when the next brand owner comes after him.

There are lots of crazy UDRP stories out there (domain owners listed as “Mickey Mouse” or “Haclav Vavel”) but, admit it, who doesn’t love a juicy decision on procedural grounds?  This week’s case provides us with an opportunity to consider the application of res judicata (and poor lawyering) in the domain sphere.

Res Judicata – One Shot to Get it Right

As you may remember, res judicata is the legal principle that once a case has been decided it cannot be re-tried.  Were this not the case it could lead to truly endless litigation, more forum shopping, and greater harassment of those involved.  This rule is not present in the UDRP or any other dispute policy of which I’m aware, but it has found its way into case decisions, and thus precedent, under these policies.

Essentially, once a case has been decided it can’t be brought again unless there are certain extraordinary circumstances. These include the first case being overturned on appeal, serious misconduct by a Panel or one of the parties (for example, submitting false evidence), or the discovery of new material evidence which was not available or known at the time of the first case.  While there has been some leeway in early UDRP jurisprudence, more recently Panels have become less forgiving and now, as one decision noted, parties are expected to “get it right the first time.”

The First UDRP Filed Over <casshies.com.au>

This week’s case involves the domain casshies.com.au (the auDRP is very similar to the UDRP).  Complainant owns the mark CASSHIES in relation to a franchised chain of check-cashing and payday loan businesses. In late 2013 it filed a complaint against the domain owner and, despite the Respondent’s default, lost the case because it hadn’t submitted sufficient evidence on certain key points: This included its own common-law trademark rights and the Respondent’s bad faith registration or use of the domain.  The Panel in that first case tried to be somewhat forgiving, however, and noted that its denial of the complaint was “without prejudice to the Complainant’s right to refile the Complaint in the event that it is able to provide more relevant evidence.”

Second Time’s the Charm?

In October of 2014 the Complainant filed a new complaint and submitted some evidence which was not provided in the first case.  It now claimed that its common-law rights predated the creation of the domain name, pointed out that the Respondent’s website has remained static since 2008 and shows passive holding of the domain, and submitted a photograph of the Respondent’s storefront showing that it was using a name other than “Casshies.”  The Panel addressed these in turn.

• On the subject of Complainant’s trademark, the Panel noted that “There is no new evidence of common law rights predating the registration date of the disputed domain name.”  It thus decided that there was no basis to overturn the first decision’s finding that the disputed domain name had been registered prior to the existence of Complainant’s trademark rights.
• Next, regarding the Respondent’s static website, it was held that the Complainant’s assertions on this point were also not new, and so this has no influence on the assessment of possible bad faith behavior by the Respondent.
• Finally, and most interestingly, the Panel noted that the photograph of Respondent’s storefront, though applicable to the question of bad faith, should not be considered as it very easily could have been submitted with the first complaint. Here, the Panel inferred that “its non-inclusion in the original complaint was an oversight, rather than it being ‘new evidence.’”

Before denying this case for a second time, the Panel addressed the obvious question of why the above points should not be considered despite the first decision being issued “without prejudice.”  It pointed out that allowing a complaint to be refiled is an “exceptional” act and that the refiling complainant has a high burden in meeting at least one of the grounds for refiling.

On the ground asserted here – new evidence of bad faith – the Panel noted that there is a a distinction between “(i) Refiled Complaints that concern the act which formed the basis of the original complaint, and (ii) Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint.” Thus, the “without prejudice” nature of the first decision doesn’t offer Complainant a free pass and eliminate the need to follow precedent. Unfortunately, here, Complainant (and its counsel) failed not once, but twice, to submit sufficient or new evidence that the domain was registered and used in bad faith.  Either the domain was created before the Complainant had trademark rights or perhaps the Respondent was an authorized Casshies franchise (though this was not directly addressed).

So, brand owners are well advised to heed the sage advice of Billy Joel in one of the more obscure songs from his smash “The Stranger” album and “get it right the first time.”

Proving, once again, that business arrangements by handshake or loosely written contracts are a bad idea, two Dutch entrepreneurs found themselves arguing over who owns a domain name that is used to promote their e-cigarrette and smokers’ supply business.

Splitting Up the Business

The parties agreed to form a corporation in which they own equal shares. The business operates under the name XSMOKE and its web address is at the disputed domain name, xsmoke.com.  Despite the creation of this company, the Complainant filed a trademark application for XSMOKE and the Respondent registered the domain – each in their own personal names.  The troubles erupted when the Respondent decided he wanted out and refused to turn over the domain to the company unless his exit demands were met first.

Filing the UDRP

Since the company itself doesn’t own the XSMOKE trademark, the Respondent’s business partner named both himself (personally) and the company as joint Complainants in this dispute.  The Panel’s first task, then, was to determine if such consolidation of complainants was appropriate.

The Panel starts out by noting that the UDRP language does not provide for multiple complainants or respondents but refers to each in the singular.  Not be deterred, however, he points to the body of precedent (non-binding) that has been created from past UDRP decisions and found that this issue has come up in the past.  A seminal case on this issue held that consolidation of multiple complainants, in a single complaint, should be permitted if they have a truly common grievance against the Respondent and if it is equitable and procedurally efficient to consolidate.  One of the fact situations which support a common grievance is where the multiple complainants have a shared interest in a particular trademark.  This doesn’t mean that they have to be co-owners of the mark – one could hold a licensee from the other.

In this case, the individual Complainant is the owner of a significant share in the Complainant company and is also its CEO. Given the very close association between the two in relation to the registration and use of the XSMOKE trademark, the Panel found that a common legal interest exists.

Next, the Panel turned to the thorny issue of deciding who has superior rights to the disputed xsmoke.com domain.

Who Prevails in the UDRP Dispute?

The  Respondent claims to have registered the domain prior to the creation of the Complainant company and prior to Complainant’s having obtained trademark rights to the XSMOKE name.  Nevertheless, the Panel found that:

• The Respondent had no rights or legitimate interests in the domain apart from the company in which he owned shares.
• Further, at the time he acquired the domain, the Respondent was fully aware of the company’s plans and did not act innocently. The fact that he set up the domain to resolve to the company’s website supports this.
• Finally, certain correspondence between the parties provided further evidence that the Respondent actually had the intention to transfer the disputed domain name to the Complainant company but later refused to do so based on his separate commercial dispute with his business partner.

The Panel concluded that “the disputed domain name <xsmoke.com> is more or less being taken hostage by the Respondent.”

In the end, the domain was ordered to be transferred to the Complainants.

The Takeaway

It goes without saying that many small business partners, either through ignorance, arrogance, or lack of funds, enter into arrangements without consulting a lawyer or drawing up a comprehensive agreement. I expect the majority of these situations never result in any sort of irreconcilable dispute.  However, when disputes do flare up, the expense of time and money to put in place a solid business agreement looks, in hindsight, like a rather inexpensive insurance policy. In this case, the business went up in smoke but the Complainant looks like it will be able to burn on for the foreseeable future.