Calvin Klein Loses UDRP To a Take F*ckCalvinKlein.com Away From “Fat, bald” Domain Owner

Calvin Klein just lost a UDRP In Attempt To a gain control of the domain name FuckCalvinKlein.com with the domain owner using a pretty unique argument to keep control of the domain name that was parked.

The Domain holder responded to the UDRP arguing that he” does not believe any consumer could reasonably believe that the best route to finding Complainant’s goods on the Internet is by entering fuckcalvinklein.com into a web browser”.

“Respondent registered the domain name to be used in the future as a protest site within a larger scheme of registering other domain names that include famous trademarks preceded by the word “fuck” so as to create a network of easily identifiable protest sites”.

However, Respondent admits that he is not yet using the fuckcalvinklein.com domain name.

He is only “preserving its potential as a site for the consumer’s voice, while a much better alternative is found.”

The domain holder went on to argue,

“it is ludicrous to imagine that I am going to triumph in any legal tussle with someone of David’s [counsel for Calvin Klein] caliber. ”

“Asked to wager between a highly trained and skilled IP lawyer such as David, and a fat, bald, 58-year-old, semi-retired Parish Councillor who has three unruly children, a Retriever who refuses to retrieve and a permanently aloof cat who has treated us all like servants for the past 16 years, I know precisely where I would place my money. And it wouldn’t be on me. …”

R. Glen Ayers, Panelist agreed that the domain name is not confusingly similar to Complainant’s CALVIN KLEIN mark under Policy ¶ 4(a)(i), because the term “fuck” provides an indication that Respondent is not affiliated with Complainant and the Internet user entering the domain name could not possibly expect Complainant to be, or desire to be, affiliated with such a domain name.

Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i),the Panel declines to analyze the other two elements of the Policy.”

According to UDRPSearch.com this is the first time out of 12 UDRP where the domain owner of a trademark starting with the word “fuck” won the case.

In all 11 other cases the domain was either ordered transferred or the domain holder transferred the domain with the trademark holder withdrawing their complaint.

Hershey’s Files UDRP On 16 Year Old ChocolateWorld.com; 17 Year old NewBody.com Also Hit

A couple of interesting UDRP filings today

Hershey’s filed a UDRP on the domain name ChocolateWorld.com

The domain name was registered in back in 1997 however it is going to a blank page and according to Screenshots.com the domain may never have resolved to any type of site or page, not even a parked page.

Hershey does have a trademark on the term Chocolate World going back to 2005 as well as HERSHEY’S CHOCOLATE WORLD which was registered in 2011/2012

Another UDRP filed today is against another domain consisting of a seemly generic term, NewBody.com

NewBody.com has an original registration date older than ChocolateWorld.com or 1996

The complainant in the NewBody.com case is Cocolabel AB which filed for a US trademark on the term New Body in 2012 and to which opposition was filed to in 2013.

The domain appears to have sold or been transferred to a new owner in late 2013 or early 2014

NewBody.com currently goes to a parked page

 

Y8.net Lost in UDRP

Web Entertainment, LLC of Las Vegas, Nevada, just won a UDRP on the domain name y8.net

The Respondent did not reply to the UDRP

The complainant has a trademark on the term Y8 that was filed in 2012 and has a gambling website at Y8.com

The domain name Y8.net was first registered in 1998 but the current owner acquired it in May 2012.

The panel found

“although the Domain Name was first registered in 1998,  for the purposes of finding bad faith, May 2012 or later, is when the Respondent first acquired the Domain Name.

Under the UDRP, a change of registrant or transfer of a domain name constitutes a new registration.

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the Y8 Mark at the time the Respondent registered the Domain Name. The Respondent’s Website offers services that directly compete with the Complainant and make reference to the Complainant. The registration of the Domain Name in awareness of the Y8 Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

 

The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Y8 Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website offers online gaming services that compete with the Complainant, makes references to the Complainant’s Website and is of a similar design to the Complainant’s Website. The Respondent’s Website also contains prominent advertising, suggesting that the Respondent receives revenue from the site. It appears both from the Domain Name itself and from the Respondent’s Website that it highly likely that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Y8 Mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s Website. The Panel finds that such use amounts to use in bad faith.

 

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

Dune.com Hit With UDRP

The domain name Dune.com has been hit with a UDRP.

The complainant was filed by Dune Holdings Limited which was formed in 2001 and uses the domain name dunelondon.com

According to BusinessWeek.com, “Dune Holdings Ltd. designs and retails fashion footwear and accessories for men and women. It offers boots, shoes, sandals, bags, scarves/gloves/hats, and sunglasses, as well as belts and jewelry. The company provides its products through its stores and department stores worldwide, as well as online. The company was incorporated in 2001 and is based in London, United Kingdom. It has its own and franchised stores in the United Kingdom and internationally. Dune Holdings Ltd. operates as a subsidiary of Browning Enterprises Ltd.”

The domain name was first registered in 1997 by Dune Microsystems Corporation. The domain changed ownership in 2003 to UltraSearch Proprietary, then was owned in 2005 by SearchMachine, LLC of Calabasas, California. The domain registration went into privacy in December 2012 where is currently sits.

According to Screenshots.com the domain name has been parked since at least 2005.

As for the term Dune it is probably best know for a best selling science fiction book that was made into a movie in 1984 by David Lynch

Thamesrivers.com Lost in UDRP

F&C Management Limited of London, United Kingdom of Great Britain just got the domain name thamesrivers.com awarded to them by a UDRP panel based off of a Community Trade Mark registration.

The domain holder did not respond to the complaint

Here is the relevant facts and findings:

The Complainant states that it is an international company which specializes in investment and asset management and has operated since 1868. It acquired Thames River Capital Group Limited and its subsidiary companies on September 10, 2010. It submits evidence that Thames River Capital Group Limited traded under the marks THAMES RIVER and THAMES RIVER CAPITAL and the “boat” device since at least March 2001 and that it registered the domain name in 1998.

The Complainant submits that the Domain Name incorporates the whole of its trademark THAMES RIVER and is identical or highly similar to both that mark and its mark THAMES RIVER CAPITAL.

Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present.

The Complainant has established that it is the proprietor of a Community Trade Mark registration for the mark THAMES RIVER. Ignoring the space between the words, the Domain Name is identical to the Complainant’s mark but for the addition of a letter “s” and the generic Top-Level-Domain (“gTLD”) “.com”. In the view of the Panel the addition of the letter “s” does not serve to distinguish the Domain Name from the Complainant’s trademark. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests

The Complainant submits that the Respondent has failed to demonstrate that it has any rights or legitimate interests in respect of the Domain name, and in the view of the Panel, has made out a prima facie case in that regard.

Paragraph 4(c) of the Policy sets out a number of matters upon which the Respondent may rely to demonstrate that it has rights or legitimate interests in respect of the Domain Name. While it was open to the Respondent to reply to the Complainant’s case, no Response has been received from the Respondent in this proceeding and there is no other evidence available to the Panel to suggest that the Respondent has any rights or legitimate interests in respect of the Domain Name.

Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith

The Complainant has submitted credible evidence that the Respondent is using the Domain Name for the purposes of a website which impersonates the Complainant’s subsidiary company and which may be implicated in fraudulent financial activities. In particular, the Complainant has produced evidence that the Respondent’s website falsely presents itself as that of the Complainant’s subsidiary, Thames River Capital Group Limited, using not only the name of that company but also its prior business address and the Complainant’s THAMES RIVER mark including its distinctive “boat” device.

The Respondent has not disputed the Complainant’s claims and the Panel finds in the circumstances that the Respondent has used the Domain Name intentionally to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website (paragraph 4(b)(iv) of the Policy).

Accordingly, the Panel concludes that the Domain Name has been registered and is being used in bad faith.