Dealhunter A/S of Denmark Guilty Of Reverse Domain Name Hijacking On DealHunter.com

A three member UDRP panel has found Dealhunter A/S of Frederiksberg, Denmark, represented by Aumento, Denmark guilty of Reverse Domain Name Hijacking (RDNH) on the domain name DealHunter.com

The domain holder was represented by Ari Goldberger and Jason Schaeffer of ESQwire.com

The domain name was registered in 1998.

The Complainant was incorporated in 2007 and first registered its domain name dealhunter.dk domain name in 2010.

The company didn’t even file for the trademark DEALHUNTER until 2013.

The Complainant offered a whopping $5K and then $7K for the domain which offers were rejected.

The panel that consisted of Nicholas Smith, Daniel Kraus and The Hon Neil Brown Q.C. found:

“In the view of the Panel this is a Complaint which should never have been launched.”

“The Complainant knew that the Domain Name was registered nearly 9 years before the Complainant came into existence and close to 15 years before it acquired any registered rights in the DEALHUNTER Mark.

It made two offers to purchase the Domain Name, and following the rejection of those offers and the registration of the DEALHUNTER Mark, chose to bring this Complaint.

The Complainant made no attempt to demonstrate the existence of any earlier rights.

Furthermore, it its entirely unclear, given the Respondent is based in the United States and was not using the Domain Name to provide a service similar to the services for which the Complainant registered the DEALHUNTER Mark, which of the Complainant’s trade mark rights the Respondent was allegedly violating.

Given the nature of the Policy and previously decided cases on this issue, this, along with any other arguments that the Respondent registered the Domain Name in bad faith, were arguments that had no reasonable prospects of success.

The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The panel also had some very good language which supports the first come first served nature of domain registrations and that quoting a price does not amount to bad faith.

“The Domain Name was registered in 1998. The Complainant was incorporated in 2007, it registered its domain name in 2010 and the DEALHUNTER Mark was registered in 2013. Even taking the Complainant’s evidence at its highest, there is no possibility that the Respondent, when it registered the Domain Name in 1998, could have been aware of the Complainant or its rights in the DEALHUNTER Mark: The Complainant simply did not exist. For this reason, the Domain Name was not registered in bad faith.”

“The Complainant has argued that bad faith registration and use can be found by the fact that the Respondent is seeking to sell the Domain Name, received offers from the Complainant and rejected them.”

“These arguments are unpersuasive to this Panel.”

“The Complainant’s submission that an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs conclusively establishes that the domain name was registered and used in bad faith is an incorrect reading of the Policy.”

After Losing MyArt.com in UDRP, Fed Court Awards Owner Domain + Damages + Attorney Fees

According to a post on the site of the law firm Lewis & Lin, the domain owner of MyArt.com who lost a UDRP in April, filed a lawsuit in federal court and not only stopped the transfer of the domain name but got an award of statutory damages, attorney’s fees and litigation costs.

We wrote about the UDRP back in April of this year and noted it was the 2nd UDRP filed by the same complaint on the same domain.

David Lin, Esq. writing on his firm’s site in a post entitled: “Reverse Domain Hijacking Defendants Consent to Judgement” says:

Reverse Domain Hijacking Defendants Consent to Judgement – See more at: http://www.ilawco.com/blog/reverse-domain-hijacking-myart.html#sthash.KXCiEDeU.dpuf

“After losing a UDRP proceeding by default, the owners of MyArt.com retained Lewis & Lin to stop the transfer of the domain name under ICANN rules.

Lewis & Lin immediately filed suit in the U.S. District Court for the Southern District of New York against My Art SAS, a French company engaged in the sale of artwork, and its principal shareholder. Our complaint sought relief for reverse domain name hijacking under the Lanham Act, as well as related state unfair competition claims.

Barely a month after being served with the complaint, defendants issued an offer of judgment consenting to all of the declaratory relief that we sought on behalf of our client.

Defendants also offered a monetary judgment in an amount that included statutory damages, attorney’s fees and litigation costs. The offer of judgment was accepted and judgment was entered in favor of our client.

This case illustrates that a UDRP loss has absolutely no bearing on subsequent litigation between the same parties and the same domain name. A UDRP panel’s decision, which is not based on U.S. trademark law, will be entitled to no deference, and will have no preclusive effect in a federal court case. For domain name registrants who fall victim to the efforts of reverse domain hijackers attempting to seize a domain in the UDRP process, there is hope to recover a hijacked domain.

Simply by filing a federal lawsuit and requiring the attempted hijacker to defend their actions, a domain name registrant can keep what’s rightfully theirs. For more information on reverse domain hijacking and the UDRP, contact David Lin at Lewis & Lin LLC.”

We are thrilled that a domain name owner stood up for his rights, took the horrible UDRP decision to court and not only quickly got the transfer of the domain name stopped but also got damages, attorney fees and costs.

Big congrats to

 

Pinterest Has Universal Rights On Word PIN? Files UDRP On PinSex.com and PinGay.com

Pinterest, Inc. filed a UDRP back in June against two domain name PinSex.com and PinGay.com

Before you check out the two domains subject to the UDRP,  I should mention that you better be over 18 and have a strong tolerance for some serious adult material that appears immediately as soon as the sites load.

The domain names are fully developed adult sites and  which are not commonly the types of domains that get hit with a UDRP: parked pages, sites which use adsense, gripe sites, domains that do not resolve.com and  domains that are for sale,

It would appear that Pinterest is basing its UDRP claim on the word Pin combined with another dictionary word and “sex” and “gay”.

Unfortunately unlike court cases, pleadings to UDRP cases are not public so we will have to wait until the decision comes out to see what the WIPO panel has to say, but for now it appears that Pinterest thinks its has rights to any site with pictures and/or videos that at least starts with the word “Pin”

We will let you know how this one turns out.

The case number is D2014-1067 and was filed on June 21.

 

BleachStain.com Loses Bid To Grab 8 Year Old Bleachstains.com In UDRP Without A Trademark

Jerry G. Roper of Payson, of Utah just lost his attempt to grab two domain names about a generic as they get; Bleachstains.com and Carpetbleachstains.com

BleachStains.com was registered in 2006

The domain owner was Dave Chretien and Color Spot Carpet of Torrance, California, US.

The Complainant which didn’t have a trademark but a patent

In October 2000, Complainant began selling a system for repairing permanent stains either caused by carpet color loss or from additional color added.

Complainant contends he sold that system using the domain name bleachstain.com and used the phrase “bleach stain carpet repair” in describing the process.

In March 2003, Complainant received a United States patent on the process (U.S. Patent No. 6,533,824 (’824 Patent)) – Method for Restoring Original Color to Bleached Regions of Nylon Carpets).

Complainant asserts that “Bleachstain.com” has been associated commercially and with a website for over 13 years and should be regarded as a non-registered trademark based on the continued commercial use during these 13 plus years.

The use of the domain name bleachstain.com does not describe what Complainant does nor does it accurately describe discoloration of a carpet. Complainant chose this domain name from the phrase “bleach stain carpet repair”.

Complainant used this phrase to distinguish himself from the competitor at the very startup of his business. The “Bleach Stain” word usage greatly increased after Complainant advertised the term “Bleach Stain Carpet Repair. Bleach spills, bleached out spots and bleach marks were the common terminology in describing carpet color loss, according to Complainant.

Because Complainant was involved in the bleaching of stains and not just dyeing spots with an eyedropper, Complainant used the term “bleach stain carpet repair” as a name for his business. This phrase relates to bleaching out impossible stains and then color correcting the area. This is mentioned in the ’824 Patent.

Complainant’s domain name is unique in that it is the only carpet dye company selling a patented process for carpet color restoration. Complainant’s method has changed the industry and the way carpet color repair is preformed worldwide. Complainant was the first company to sell and advertise carpet color repair for the homeowner. Shortly after starting business in 2001 Complainant’s website stated in part:

According to Complainant KIK CUSTOM PRODUCTS (http://www.kikcorp.com) makes a variety of consumer products (e.g., shampoos, soaps, body lotions, sunscreens, household bleach, and cleansers) that can remove color from a carpet. Complainant claims that KIK CUSTOM PRODUCTS has recommended and will continue recommending “bleachstain.com” to their consumers for color correction of stains caused by these products.

Complainant contends he had a unique business that clearly defined his product and service for the consumer. Complainant further contends that there is now a great amount of confusion from consumers regarding services offered by and .

Not only are the domain names similar in sound and spelling but Respondents have recently used the term, “carpet bleach stain repair” in most of their advertisement listings, according to Complainant.

Within the last year, Respondents have produced 23 YouTube videos with most of these having the title “carpet bleach stain repair”. Respondents’ use of the term “Carpet Bleach Stain Repair” and the domain name has greatly increased the confusion amongst consumers.

Complainant contends that Respondents have no rights or legitimate interests in the Domain Names. Respondent Chretien does not have any rights superior to the common law rights of the name “bleachstain.com”, in the United States or elsewhere.

Complainant contends that Respondents registered and are using the Domain Names in bad faith. Respondent Chretien knowingly registered the Domain Name in 2006 with an actual awareness of a confusingly similar name prior to registration. He would surely know Complainant and Respondents were competitors for six years. He had a website prior to “bleachstains.com” using and a business name called “Color Spot Carpet Service”. Respondent Chretien’s focus was on the repair of small carpet spots. He did not refer to his services as “bleach stain carpet repair”. He acquired as a means of creating confusion amongst the consumers for financial gain. Respondent Chretien registered in 2006 but did not have a website associated with that name until 2010. He had directed to from 2007 until 2010. The name server for had the same IP address as . If a consumer made the mistake of making plural, then it was directed to Respondents’ website. It is abundantly clear that was registered to gain financially from .

In its Complaint, Complainant states that his domain name has been associated commercially and with a website for over 13 years and should be regarded as a non-registered trademark based on the continued commercial use during these 13 plus years.

Complainant alleges that in October 2000, he began selling a system for repairing permanent stains either caused by carpet color loss or from additional color added. He sold that system on a website having the associated domain name . On the portion of the website provided to the Panel from the WayBackMachine, the only use of “bleachstain.com” was as a domain name, not a trademark.

Complainant also alleges on that early website he used the phrase “bleach stain carpet repair” in describing the process.

Indeed, he did use that descriptive phrase to describe a “NEW and Improved method for restoring color to regions of missing color on nylon carpet.” The phrase “bleach stain carpet repair” was not used as a trademark on the website. Complainant did not provide the Panel with evidence of its use of “bleachstain.com” for the last thirteen years on his company website.

Complainant points to a company called KIK CUSTOM PRODUCTS that makes a variety of consumer products, which can remove color from a carpet. The company has recommended Complainant’s bleach stain removal product to their consumers for color correction of stains caused by their products. Regardless of the success KIK’s customers might have had with Complainant’s product this complement does not establish that “bleachstain.com” has become a distinctive mark. Complainant also claims that its patented system is sold throughout the world with many positive independent reviews, including selling on Amazon and eBay, with a high rating. These conclusory remarks also are not evidence to prove any use of “bleachstain.com” as a trademark.

Under paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. Because Complainant has not carried his burden on this element, the Panel need not decide whether Complainant has met his burden on the other elements.

For the foregoing reasons, the Complaint is denied.

Owner of Mobile.Pro Loses UDRP Bid To Grab Mobile.Co

Inter123 Corporation lost its bid to grab the domain name mobile.co who was represented by David D. Lin of Lewis & Lin LLC, New York.

The Complainant launched its website in March 2013 at mobile.pro, to provide an online community for mobile communications industry professionals and filed a trademark on the term Mobile.co on March 20, 2014.

Its a pretty interesting case in terms of dealing between the parties but pretty disappointing in terms of the result for the reader as they panel found the complainant having been granted the trademark they applied for in 2013 had to rely on a common law trademark which the panel found the could not estiblish

Here are the highlights of the three member panel decision:

In early 2014, Complainant learned that the disputed domain name was for sale through the domain name auction site at Sedo.com.

A third party, Chadi Ghaith, had registered the disputed domain name and it was hosted on GoDaddy LLC’s server.

Complainant negotiated with Ghaith for purchase of the disputed domain name and reached an agreed price of $59,000.

Ghaith then sent Complainant a “Transfer Overview” page. The purchase agreement between the parties stated that, “in the event a breach of this agreement results in a failed attempt to transfer control of the purchase object mobile.co from seller to buyer, the aggrieved party shall have the right to demand specific performance in lieu of monetary damages.”

Once Complainant’s identity was revealed, Ghaith refused to honour the agreement and did not transfer the disputed domain name to Complainant.

When Ghaith was informed of the suit Complainant brought in the District Court of Arizona, Ghaith attempted to renegotiate sale of the domain name for “not below a $150k reserve.”

Prior to these events the domain name had not been used but now Ghaith began offering services that directly competed with Complainant.

Ghaith then transferred the domain name to Respondent, a personal friend.

13. The disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.

14. Respondent has no rights or legitimate interests in the domain name.

15. Respondent has never been commonly known by the disputed domain name.

16. Respondent acquired the disputed domain name for the purpose of furthering the prior owner’s fraudulent scheme to extort money from Complainant.

17. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

18. Respondent registered and is using the disputed domain name in bad faith.

19. Ghaith and Respondent acquired and registered the disputed domain name for the purposes of engaging in a deliberate and fraudulent scheme to extort substantial sums of money from Complainant by trying to sell the disputed domain name.

B. Respondent

1. Complainant’s allegations do not pertain to any conduct by Respondent apart from his purchase of the domain name from the prior registrant.

2. Complainant asserts a breach of contract claim that is inappropriate for resolution under the UDRP process.

3. There are pending legal proceedings that involve the same issue presented in these Administrative Proceeedings.

4. Complainant has failed to satisfy the elements set forth in the UDRP 4(a) because it does not have trademark rights in the descriptive term “Mobile.”

5. Complainant should be held to have engaged in reverse domain name hijacking.

C. Complainant’s Additional Submissions:

1. Pending litigation does not require dismissal; rather, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.

2. It is a fair and reasonable assumption that Respondent has been inextricably involved from the moment Ghaith transferred the disputed domain name.

3. Complainant has common law rights in the MOBILE.CO, MOBILE.PRO, MOVIL.CO and MOVIL.PRO trademarks.

D. Respondent’s Additional Submissions:

1. There is no possibility that the USPTO will register Complainant’s trademarks since the word “Mobile” (and its Spanish language equivalent, “Movil”) merely describe Complainant’s business and Complainant has not provided any evidence of use proving secondary meaning.

Complainant contends to be the owner of the trademarks MOBILE.CO, MOBILE.PRO, MOVIL.CO and MOVIL.PRO in the United States of America, since their first use in March, 2013. Those trademarks are currently pending registration before the USPTO.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.

Equally, it is the consensus opinion of panelists that a pending application for registration, of itself, gives no such trademark rights. Accordingly, in this case, Complainant must establish unregistered or common law trademark rights if it is to succeed with its Complaint.

In other words, in a common law jurisdiction, if a third party set up in competition with the Complainant under the same or a confusingly similar name, the Complainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.

Therefore, to determine whether or not Complainant owns unregistered trademark rights the Panel must, as a threshold matter, be able to identify a reputation in respect of the name or sign in question. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, available at http://www.wipo.int/amc/en/domains/search/overview2.0/1.9, asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:

The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.

In this case Complainant essentially lays claim to rights in the term MOBILE (or its Spanish language equivalent) either with or without the identifiers “.CO” or “.PRO”, it not being entirely clear from the submissions.

In any event nothing turns on that point since UDRP panelists have long held that the addition of a gTLD or ccTLD to a trademark adds nothing of distinguishing value over and above the trademark. Many panelists, for example, will for the purposes of paragraph 4(a)(i) treat TRADEMARK. COM as “legally identical” to TRADEMARK.

Moreover, this Panel is aware that the USPTO has a similar attitude to the registrability of trademarks which reproduce a domain name. In particular, if the USPTO regards a trademark as prima facie descriptive and unregistrable, then the addition to that trademark of, for example, “.co” or “.pro” will do little if anything to improve the stakes.

In this case Complainant’s trademark applications remain pending and the Panel is told that there is resistance to their registration for reason of lack of distinctive character. Panel need not assume the job of the USPTO examiner since from the Complaint itself Panel is told the Complainant launched the website at to provide an online community for mobile communications industry professionals. In other words, the name was chosen because it was entirely apt to describe the character of the services. On this basis Complainant faces the additional hurdle of showing secondary meaning in a descriptive term other traders are likely to desire to use for their similar services.

The evidence does not advance Complainant’s position. Panel is told that Complainant’s Chairman and Chief Executive Officer, Mr. Jeffrey Peterson, is highly recognized for work for the Hispanic community in the United States of America and that the business has approximately USD 4 million in funding and more than 100 shareholders. Panel is told in broad terms that the promotion of the business under the name MOBILE or MOBILE.PRO is via the Internet and mainly directed to the Hispanic community.

In spite of the great many people who primarily speak Spanish or who would regard themselves as part of the Hispanic community, this information does very little to assist the Panel to understand the reach and recognition of the trademark as an indicator of Complainant’s services and not as a reference to mobile communications services generally.

Finally, it is noted that this enterprise only gained momentum in March 2013. Even allowing for the speed at which online businesses can now promote themselves to a broad audience, the fact remains that 15 months is a very short timeframe for any directly descriptive term to rise to a level where it is connected in the minds of the public, or even a section of the public, with one business undertaking.

For these reasons, this Panel is not able to conclude that Complainant has common law trademark rights and accordingly Panel finds that Complainant has failed to establish the first limb of the Policy.

Rights or Legitimate Interest

No findings required.

Registration and Use in Bad Faith

Again, no findings required.

DECISION

Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.