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Your Source for Domain Dispute
News and Information |
July 19, 2007,
Vol. 8 No. 07 |
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In
This Issue
The Hershey Company, Hershey Chocolate & Confectionary Corp. and Hershey
Canada Inc. v. R. Reaves
M.V.A.A.: Market Value of Acronyms Assessed
Apple’s iPhone Release Sparks Registration of Related Domain Names
Registerfly.com Fallout Prompts ICANN to Seek Changes to RAA
Recent
Decisions
Anheuser-Busch,
Incorporated v. Holix Inc.
Complainant, Anheuser-Busch, Incorporated, brought a
claim against Respondent, Holix Inc., for Respondent’s registration of the
<boobweiser.com> and <buttlight.com> domain names. Complainant
contended that the disputed domain names were confusingly similar to
Complainant’s BUDWEISER and BUD LIGHT marks, respectively, bearing both
visual and aural similarity. While the Panel acquiesced to Complainant’s
contentions concerning the resemblance between Respondent’s <buttlight.com>
domain name and Complainant’s BUD LIGHT mark, the Panel ultimately declined
to find that either disputed domain name bore a confusing similarity to
Complainant’s marks. In its discussion of confusing similarity, the Panel
noted that confusing similarity required more than similar sound and
appearance, and included consideration of “the extent to which the domain
name has used the trademark, the nature of the added matter, its relative
prominence, and the overall impression of the two signs.” The Panel found
that Respondent’s <boobweiser.com> and <buttlight.com> domain
names did not incorporate Complainant’s marks in their entirety and that the
respective domain names have “their own overtly obvious meanings,” and thus
Complainant failed to meet its burden under Policy ¶ 4(a)(i). Noting all
elements of Policy ¶ 4(a) were required in order to effectuate Complainant’s
request for transfer, the Panel passed on consideration of the remaining
elements (namely, rights or legitimate interests in the disputed domain
names under Policy ¶ 4(a)(ii) and bad faith registration and use under
Policy ¶ 4(a)(iii)) and denied Complainant’s claim.
Anheuser - Busch, Inc. v. Holix Inc., FA 979961 (Nat. Arb. Forum
June 19, 2007).
eLuxury.com, Inc. v.
Mark Sandulli
Complainant, eLuxury.com, Inc., filed a UDRP complaint
against Respondent, Mark Sandulli, for the <eluxury.mobi> domain
name. Complainant alleged that the <eluxury.mobi> domain was
identical to Complainant’s ELUXURY mark and that Respondent intended to
divert Internet traffic from Complainant’s own commercial luxury goods
website at the <eluxury.com> domain name. Responding to Complainant’s
allegations, Respondent argued the domain name was registered as a portal to
a collection of luxury websites linking Internet users to a variety of goods
associated with the term “luxury,” the purpose for which Respondent’s
present <everythingluxury.com> domain name served. Respondent further
asserted that the “e” in the <eluxury.mobi> disputed domain name was
an abbreviated form of the term “everything,” as contained in Respondent’s
“.com” domain name. Since the gTLD “.mobi” was intended for use by mobile
phone browsers, Respondent posited the abbreviation would result in fewer
text entries on a mobile phone. The Panel ultimately adopted Complainant’s
argument that “everything luxury” could have been abbreviated a variety of
ways so as not to infringe on Complainant’s ELUXURY mark. Further, the Panel
found bad faith registration and use by Respondent in offering the disputed
domain name registration for sale at a minimum price of $25,000. While the
Panel noted that Respondent was not explicitly offering the disputed domain
name registration to Complainant for purchase, “[w]hat appears on the
surface to be a neutral and general offer to the world is, as [a] practical
matter, an offer which the Respondent had to know would attract the special
attention of the Complainant. For this reason the offer was not neutral or
general at all, but was an offer directed to Complainant.” Satisfied that
Complainant met the elements of Policy ¶ 4(a), the Panel ordered the
transfer of the <eluxury.mobi> domain name to Complainant.
eLuxury.com, Inc. v. Sandulli, FA 960178 (Nat. Arb. Forum June 7,
2007).
The Hershey Company, Hershey Chocolate & Confectionary Corp. and Hershey
Canada Inc. v. R. Reaves
Complainant, The Hershey Company, filed a claim against
Respondent, R. Reaves, for the <chocolatekiss.com> domain name.
Complainant contended that the domain name was confusingly similar to its
KISSES mark and that Respondent was using the domain name to take advantage
of the fame of the mark. Respondent asserted that the <chocolatekiss.com>
domain name was simply a combination of two generic terms, that it
intended to develop the domain name, and that it was not trying to mislead
consumers or tarnish Complainant’s mark. Under Policy ¶ 4(a)(i), the Panel
found that the <chocolatekiss.com> domain name was confusingly
similar to Complainant’s KISSES mark, as the term “chocolate” was simply
descriptive of Complainant’s business and the combination of the terms was
calculated to suggest the involvement of Complainant. The Panel also found
that Respondent lacked rights or legitimate interests under Policy ¶
4(a)(ii) because the content displayed on Respondent’s website gave the
erroneous impression that it was affiliated with Complainant. Finally, the
Panel found that Respondent registered and was using the <chocolatekiss.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because
Respondent was using this implied affiliation with Complainant to attract
users to its website for commercial gain. Accordingly, the Panel granted
Complainant’s request for a transfer of the <chocolatekiss.com>
domain name.
Hershey Co. et al. v. Reaves, FA 967818 (Nat. Arb. Forum June 8,
2007).
Happy’s Pizza Company
v. Navigation Catalyst Systems, Inc.
Complainant, Happy’s Pizza Company, filed a claim
against Respondent, Navigation Catalyst Systems, Inc., for the <happyspizza.com>
domain name. Complainant alleged common law rights in the HAPPY’S PIZZA
mark based on a statement in its pending federal trademark application
stating that the mark had been used in commerce since 1993, which predated
Respondent’s 2004 registration of the domain name. Respondent challenged
this allegation, contending that Complainant failed to provide evidence that
the public associated the term with Complainant or that there was secondary
meaning in the term, and asserting that Complainant cannot monopolize the
compilation of two common terms, “happy” and “pizza.” The Panel found that
Complainant had not introduced sufficient evidence to prove that it had
common law rights in the HAPPY’S PIZZA mark, as Complainant’s statement in
its trademark application that the mark had been used in commerce since 1993
was insufficient to establish secondary meaning associated with the mark.
Thus, Complainant did not satisfy Policy ¶ 4(a)(i). Due to its findings on
this threshold issue, the Panel declined to discuss the other two elements
of the Policy. The Panel therefore denied the Complaint.
Happy’s Pizza Co. v. Navigation Catalyst Sys., Inc., FA 975493 (Nat.
Arb. Forum June 15, 2007).
Paxar Americas, Inc.
v. eNom, Inc.
Complainant, Paxar Americas, Inc., brought a claim
against Respondent, eNom, Inc., for Respondent’s registration of the <monarchmarking.com>
domain name, alleging the domain name was both an exact replication of
Complainant’s MONARCH MARKING mark and confusingly similar to Complainant’s
family of registered MONARCH marks. Complainant also asserted that
Respondent was using the disputed domain name to redirect Internet users to
a website displaying commercial links to Complainant’s competitors. While
Respondent did not dispute Complainant’s allegations of
identicalness/confusing similarity or a lack of rights or legitimate
interests in the disputed domain name, Respondent challenged Complainant’s
assertions of bad faith registration and use. Before addressing the issue of
bad faith, however, the Panel had to resolve whether Respondent,
participating both as the registrar of the disputed domain name and the
current registrant of the domain name, was a proper respondent under the
Policy. The Panel found that “where a registrar’s conduct . . . expands
beyond performing mere administerial duties in accepting and implementing
name registration for another into registration and use by itself, then its
role changes from that of a mere registrar to that of an owner-user. Such a
change . . . exposes the registrar to the full force and effect of the
Policy . . . .” Finding that Respondent had moved beyond its general
administrative functions and was thus a proper respondent under the Policy,
the Panel concluded that, although Respondent may have legitimately
conducted itself with respect to discussions concerning transfer of the
domain name, the key determination in assessing bad faith came from
Respondent’s use of <monarchmarking.com> to link Internet users to
products in direct competition with Complainant’s goods and services. As a
result, the Panel ordered the <monarchmarking.com> domain name to be
transferred to Complainant.
Paxar Ams., Inc. v. eNom, Inc., FA 980114 (Nat. Arb. Forum June 22,
2007).
Towmaster, Inc. v.
Dale Hale
Complainant, Towmaster, Inc., brought a UDRP complaint
against Respondent, Dale Hale, over the <bigtow.com> domain name.
Respondent contended that it did not register the domain name in bad faith
because it registered the domain name approximately three weeks before the
USPTO issued Complainant’s BIG TOW federal trademark registration. The Panel
disagreed, holding that Complainant’s rights in the mark dated back to the
original trademark application filing date, fourteen months before
Respondent registered the domain name. The Panel thus found that Complainant
had rights in the BIG TOW mark that predated Respondent’s registration and
that the <bigtow.com> domain name was identical to the mark under
Policy ¶ 4(a)(i). The Panel also found that Respondent lacked rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii)
because Respondent was not commonly known by the domain name and was using
the domain name solely to offer it for sale to other parties, including
Complainant. The Panel further found that these sale offers were evidence
that Respondent registered and was using the <bigtow.com> domain name
in bad faith under Policy ¶ 4(a)(iii). Accordingly, Complainant’s request
for a transfer of the <bigtow.com> domain name was granted.
Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007).
E-PRACTICE
M.V.A.A.: Market Value of Acronyms Assessed
In a report dated June 6, 2007,
NameBio, an online marketer of domain names, released a study on the
market value of domain names containing an acronym. The
report focused on 33 publicly-reported three-letter “.com” domain name
sales over a 60-day period.
The study found that 27 of the 33 domain names resolve
to “parked pages,” or websites that are not in active use. The sale of these
domain names generally ranged from $4,000 to $7,000. NameBio stated that one
of the reasons why these domain names sold for less was because they
contained “weak letters,” identified as J, K, Q, U, V, W, X, Y, and Z.
According to the report, since it is relatively difficult to create an
acronym with these letters, three-letter domain names containing any of
these letters have a lower value. Of the six remaining domain names, four
resolved to active websites. Two of those four were in the top three
reported sales: the <amt.com> domain name sold for $100,000, and the <bcf.com>
domain name sold for $71,200.
However, when choosing an acronym domain name,
trademark rights must be taken into consideration. Some companies invest
time and money into the development of an acronym as a company indicator,
and those rights have been protected by alternative dispute resolution
panels. For example, in
National Rifle Association of America v. Future Media Architects, Inc.,
FA 781430 (Nat. Arb. Forum Oct. 13, 2006), the panel concluded that the
acronym “NRA” was well-known, distinctive, and non-generic as an indicator
of the National Rifle Association. The panel also stated that the respondent
had constructive knowledge of the complainant’s rights to the “NRA” mark
based on the complainant’s numerous trademark registrations with the
United States Patent and Trademark Office (USPTO). Therefore, the panel
concluded that the respondent lacked rights and legitimate interests in the
disputed domain name, which it had registered and used in bad faith, and
consequently ordered that the domain name registration be transferred to the
complainant.
On the other hand, in
Louis Vuitton Malletier S.A. v. Manifest Information Services, FA
796276 (Nat. Arb. Forum Nov. 7, 2006), the panel concluded that the <lv.com>
domain name consisted of two generic letters that could be used to identify
many things. Therefore, despite the complainant’s trademark registrations
with the USPTO for the “LV” mark, the panel concluded that the respondent
could establish rights or legitimate interests in the disputed domain name.
These two cases show that rights in an acronym domain
name are analyzed on a case-by-case basis, and depend upon which letters are
used in the disputed domain name and the overall use of the related website.
Some websites, such as
Acronymfinder.com, allow users to search for acronyms to see what they
are being used for. Other websites, such as
3la.org or
Domainnamesoup.com, allow users to search for acronym domain names to
see if they are available. If an available acronym domain name can be found
that does not infringe upon the rights of others, NameBio’s report indicates
that it could be very valuable.
In
The News
Boston Entrepreneurs
Turn Underappreciated Domain Names into Multi-Million Dollar Businesses
BusinessWeek, June 25, 2007: One man’s pocket change
turned out to be a goldmine for two Boston entrepreneurs. Two years ago, a
German man was using the <chocolate.com> domain name to operate a
pay-per-click website with links to chocolate-related websites. Andrew
Miller and Michael Zapolin saw an opportunity to create a chocolate business
online and negotiated with the man and his lawyer to purchase the <chocolate.com>
domain name registration for only $300,000. Today, the men have created a
major chocolate website and have even recruited Chocolatier magazine
to provide articles and recipes for the website. Miller and Zapolin expect
to make over $2 million in revenue in 2007 from the website. The Boston men
run a domain name acquisition company called Internet Real Estate Group,
which buys underappreciated domain names and turns them into real businesses
rather than park them as pay-per-click sites. The men bought the <beer.com>
domain name in 1998 for $800,000 and later sold it for $7 million to a beer
company. They also obtained the <creditcards.com> domain name for $100,000
in 2003 and turned it into a credit card comparison website before selling
it to a private equity buyer for $2.8 million a year later. Currently, the
men hold the registrations for 17 domain names, including <software.com> and
<relationship.com>, and are actively seeking out offers for other generic
domain names.
Link to Full Story
Mr. Plastic Dispute
Resolved in South Africa
DomainNews.com, June 15, 2007: The battle over the
registration of the <mrplastic.co.za> domain name has reached a conclusion.
The complainant, Mr. Plastic, had been using the MR. PLASTIC mark and logo
for 27 years, while the respondent, Mr. Plastic Mining & Promotional Goods,
had been using the same mark for 18 years. The respondent, however, was
first to register the disputed domain name. The complainant instituted a
proceeding under the new arbitration procedures set up by South Africa’s
Domain Name Authority in November 2006 to resolve domain name disputes. The
panel in the case found that both companies sufficiently established rights
in the mark, but the complainant failed to show distinctiveness in the mark.
The panel also concluded that the use of the domain name by the
complainant’s rival was not unfairly detrimental to the complainant’s
rights. The complainant has since added the letter “s” and registered the <mrplastics.co.za>
domain name, while the respondent maintains the <mrplastic.co.za> domain
name. The president of the South African Institute of Intellectual Property
Law, Mariëtte Viljoen, said that this case shows that the new South African
regulations governing domain name disputes result in the quick and effective
resolution of domain name disputes and are proving their worth.
Link to Full Story
Apple’s iPhone Release Sparks Registration of Related Domain Names
The Mercury News, June 28, 2007: According to Jay Westerdal,
president of Name Intelligence Inc., IPHONE-related domain name
registrations skyrocketed to over 4,000 in anticipation of Apple’s iPhone
release. Name Intelligence Inc. analyzes domain name patterns and expects
twice the current registrations of IPHONE-related domain names by the end of
the year. Apple has experienced many challenges with the IPHONE name. The
domain name <iphone.com> was originally registered back in 1995 and, until
very recently, did not belong to Apple (see follow-up story below). Even the
rights in the IPHONE mark did not belong to Apple until recently, when it
reached an undisclosed settlement with Cisco Systems Inc. Cisco initiated a
suit against Apple in relation to an Internet calling product Cisco operated
under the IPHONE mark. The race to register IPHONE domain names started
after January 9, 2007, when Apple’s Steve Jobs announced the launch of its
iPhone gadget, a smart device integrating Apple’s iPod media player product
along with Internet access. However, IPHONE-related domain name registration
gained momentum as Apple’s iPhone launch date grew closer. Name Intelligence
reports that over 350 IPHONE-related domain names were registered in one day
in the week leading up to the launch.
Link to Full Story
Michael Kovatch Hits
the Big Time with <iPhone.com>
AppleInsider.com, July 2, 2007: Jay Westerdal,
President of Name Intelligence Inc., confirmed that Apple acquired the <iphone.com>
domain name registration from Michael Kovatch in an undisclosed seven-figure
sale, making it one of the largest sales of its kind. Although Kovatch
registered the domain name back in 1995 and was building a company off of
the name, Apple made an offer that was too good to pass up. Traffic on
Kovatch’s website at the <iphone.com> domain name, which featured an online
cell phone store, picked up over the six months following Apple’s
announcement that it would be launching its iPhone product. According to
Westerdal’s blog, “That domain was so valuable that Apple just had to own
it.” Although details of the sale and transfer have not been released, the <iphone.com>
domain name WHOIS information confirms that the domain name was transferred
to Apple on June 29, 2007.
Link to Full Story
ICANN Approves Launch
of <.asia> Top-Level Domain Registration for October
Forbes.com, June 28, 2007: ICANN approved the October
launch of the regional <.asia> top-level domain (“TLD”) for government and
trademark owners. General registration will begin in 2008. DotAsia
Organization Ltd., the organization responsible for operating the <.asia>
TLD, will limit registration to members located within the region. The first
round of registration will close on October 30 and will include governments
looking for geographic-specific domains, such as <china.asia>, and trademark
owners who registered their trademarks prior to March 16, 2004. After that,
application for the “sunrise” period will be accepted until January 15,
2008, followed by general registration.
Link to Full Story
Registerfly.com Fallout Prompts ICANN to Seek Changes to RAA
PC World, June 26, 2007: Following the Registerfly.com
debacle this past spring, which led ICANN to strip the registrar of its
accreditation, ICANN led a workshop at its 29th International Public Meeting
in San Juan, Puerto Rico, to discuss ideas for changing its current Registrar
Accreditation Agreement (“RAA”). ICANN hopes to better protect the
individuals and organizations doing business with registrars operating under
the ICANN RAA, specifically in hopes of preventing another Registerfly.com
disaster. One item that garnered some debate was the institution of a data
escrow provision which would allow ICANN to easily facilitate a registrar
transfer in a Registerfly.com scenario. “This is important to registrants.
We want to be able to reconstitute a registrar if it fails so that
registrants can continue to have access to their domains and be able to work
with them,” said Susan Crawford, an ICANN board member and discussion
moderator. Details for the data escrow provision will need to be worked out,
including what registrant information is to be provided and how to protect
registrants’ private data. Another issue brought up by Beau Brendler,
director of Consumer Report Webwatch, is having ICANN provide more
information about registrars to consumers. In response to Brendler’s
suggestion, Stacy Burnette, ICANN’s director of contractual compliance,
plans to release a bi-annual report based on registrar audits and will also
seek registrar compliance based on the results of the audits. Burnette’s
group is currently conducting various audits and has several future audits
in the works as well. According to Burnette, ICANN wants to “encourage
compliance to enhance ICANN’s liability to preserve and enhance the
operational stability, reliability, security and global interoperability of
the Internet.”
Link to Full Story
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