Inbay Limited of London Guilty Of Reverse Domain Name Hijacking

Inbay Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Keystone Law, United Kingdom has been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name inbay.com which was registered back on December 11, 1998.

The trademark which inBay Limited of London based their claim on wasn’t filed until 2012.

Here are the RDNH findings by the three member panel of Nicholas Smith Nick J. Gardner, and Diane Cabell:

This is a Complaint which should never have been launched.

The Complainant knew that the Domain Name was registered before the Complainant came into existence and several years before it acquired any rights in the INBAY Mark.

The Complainant made (through two of its employees who did not disclose they were acting on behalf of the Complainant) two approaches to the Respondent seeking to purchase the Domain Name, and did not disclose this fact in its Complaint. Following the rejection of those offers and the registration of the INBAY Mark, the Complainant chose to bring this Complaint. It did so without any prior notice in terms of formal communication to the Respondent. Whilst there is no obligation upon the Complainant to have sent such communication had it done so it would likely have been better appraised of the relevant facts and gained a better understanding of the weaknesses of its case.

The Complainant, in its original Complaint, identified that the Domain Name had been registered in December 1998.

The Complaint also acknowledged that the Complainant itself did not come into existence until 2008, and its registered trademarks were not applied for until 2012.

It also acknowledged that its predecessors in title had carried on business since 2002. It was accordingly quite clear there was a disparity in dates given that the original registration of the Domain Name predated by many years any relevant rights of either the Complainant or its predecessors. Instead of addressing this disparity, the Complaint simply asserted that the actions of the Respondent in offering the Domain Name for sale, somehow amounted to the Respondent registering and using the Domain Name in bad faith. Given the nature of the Policy and previously decided UDRP cases on this issue, this was an argument that had no reasonable prospects of success.

It was apparently only when the Complainant saw the Response that it realised that the Respondent had in fact registered the Domain Name later than it had previously alleged, i.e. in 2007. As the Respondent notes this is something the Complainant could have found out easily had it made some simple investigations before filing the Complaint.

In any event having reviewed the Response, the Complainant then belatedly sought to develop more forcefully the arguments that the Respondent’s registration of the Domain Name was in bad faith by reason of the Complainant’s predecessors activity prior to 2007.

As indicated above the Panel is unpersuaded by this submission.

In any event, even if the Complainant’s recast case does establish that its predecessors in title had acquired common law rights in the name “inbay” by 2007, that case still fails to explain why any such rights should have been known to the Respondent (beyond asserting incorrectly that he was under a duty to search for such rights and/or he had constructive notice of such rights).

Even more significantly the Complainant fails to explain why any such rights extend beyond the United Kingdom. Accordingly it was wholly unclear why it was said that the Respondent, even if he had identified the activities of the Complainant’s predecessors in title, should not have registered the Domain Name.

This was a case that, on the facts as known by the Complainant at the time it commenced this proceeding, and even after it had received the Response, had no prospect of success and should never have been brought.

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

Vertical Axis Beats Back a UDRP on the Domain ThinkThin.com Registered in 2001

Vertical Axis Inc which was as always represented by Esqwire.com beat back a UDRP on the domain name ThinkThin.com

The trademark holder 1st registered their trademark and started selling their product in 2006, somehow they thought they were entitled to the domain although it was registered back in 2001.

Typical.

The three member panel should have found Reverse Domain Name Hijacking but instead just denied the UDRP:

The factual findings pertinent to the decision in this case are that:

1. Complainant has sold weight management snack bars by reference to the trademark THINKTHIN since 2006;

2. Complainant is the proprietor of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,238,772 filed October 19, 2006 for the word mark THINKTHIN;

3. Respondent registered the disputed domain name on August 8, 2001;

4. Respondent is a domain name reseller and the domain name is for sale;

5. The disputed domain name resolves to a portal-style website with links to diet and weight loss plans, including a link to Complainant’s website;

6. Complainant has not licensed or otherwise given permission to Respondent to use its trademark or to register any domain name incorporating the trademark.

Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.

The only live question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Respondent states that it is a generic domain name reseller, and submits that the sale of domain names containing generic terms is a bona fide offering of goods or services.

Respondent registered the domain name five years before Complainant had any interest in the trademark.

The domain name is generic in the sense that it is apt to describe any foodstuffs marketed in connection with weight management.

At that level Respondent had a right to the domain name at the time of registration and in terms of paragraph 4(c)(i) there is a respectable argument that, well before any notice of the dispute, Respondent made bona fide use of the domain name either as part of business which resells generic domain names and this was one such domain name for sale, or as the host site for links to third parties offering goods or services linked in some way to weight loss or dietary products.

The facts that Complainant later came to acquire trademark rights in an all but identical term and that the resolving website linked for a time to Complainant’s official website are additional considerations Panel feels best discussed in relation to paragraph 4(b) of the Policy and for reasons which follow a conclusive finding on this aspect of the Policy is not necessary.

Panel makes a number of preliminary findings. First, it is unequivocal that, at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or of its trademark.

Accordingly, it would be open to the Panel to decline to find bad faith registration and move directly to final decision.

Secondly, it follows that there is no scope for the application of any of subparagraphs 4(b)(i)-(iii) above which all hinge on bad faith registration but for the argument made by Complainant that Respondent was aware of Complainant and its trademark upon Respondent’s re-registration (renewal) of the disputed domain name. In that regard UDRP panels have in the past considered the questions of whether or not transfer or renewal of a domain name constitutes re-registration for the purposes of paragraph 4(b) and – so far as it exists – the consensus viewpoint has been that transfer might be treated as re-registration but not renewal. See Dixons Group Plc v Mr. Abu Abdullaah, WIPO Case No. D2000-1406; but see contra, Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688.

Thirdly, Complaint submits that Respondent had constructive knowledge of Complainant’s trademark rights by reason of registration of the trademark. Constructive knowledge of trademark rights has been largely discredited as a principle to be applied to paragraph 4(b) of the Policy, but in any event, there could have been no knowledge, constructive or otherwise, at the relevant time.

Finally, there is the undeniable evidence that the resolving website provided a link to Complainant’s website after the trademark became registered and Complainant acquired trademark rights.

Moreover, after the establishment of those trademark rights, the resolving website carried links to third parties providing goods and services in competition with Complainant.

Panelists have generally found that a domain name registrant will be deemed responsible for content appearing on a website at its domain name, even if the registrant does not exercise direct control over that content. Respondent explains that the links on the resolving website are and have always been auto-generated by Google and are constantly changing based on Google’s algorithm, keyword advertising inventory and user search behavior. Additionally, Respondent claims to have personally removed references to Complainant and its competitors on the resolving website.

Accordingly, although the evidence undoubtedly reveals instances of conduct which, without more, might be seen as bad faith use, this should not negate or outweigh the Respondent’s other bona fide actions and motivations. On the evidence, the Panel finds that Respondent did not register the domain name in bad faith and, on balance, did not use the domain name in bad faith.

Panel finds that Complainant has failed to establish this third aspect of the Policy.

18 Year Old Domain MyMachine.com Saved in UDRP

Sabrage Media, Inc. just lost his attempt to grab the 18 year old domain name mymachine.com through a UDRP to which the domain owner didn’t even bother to defend.

The factual findings pertinent to the decision in this case are that:

1. Complainant has used the trademark MY MACHINE in connection with a magazine publication, website, and clothing products related generally to motorcycling;

2. Complainant owns United States Trademark Reg. No. 3,158,541, filed November 29, 2005, registered October 17, 2006 for the word trademark MY MACHINE;

3. The disputed domain name was registered on May 13, 1996 by a third party;

4. The domain name resolves to a basic holding webpage showing only a cog device;

5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

The domain name was first registered in 1995 by a third party.

Complainant submits that Respondent became the holder of the name in May 2010.

Provided that were the case, it might have a fundamental impact on assessment of Respondent’s rights and bona fides (see, for example, Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which postdated complainant’s trademark rights).

The evidence before Panel of the claim that Respondent only became the owner of the domain name in 2010 is, forensically, unclear not least because the relevant annexures to the Complainant are not fully legible. In other circumstances that flaw in the Complaint might be corrected by a Panel Order inviting Complainant to provide further and better particulars of the matter but in this case the paragraph 4(a)(iii) bad faith analysis makes that exercise otiose.

Given the following bad faith assessment, Panel finds it unnecessary to reach a final decision as to whether Complainant has made a prima facie case that Respondent lacks a right or legitimate interest in the domain name.

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.

Even making the assumption that Respondent became the holder of the domain name in 2010, there is no evidence showing it to be more likely than not (the relevant standard of proof in these proceedings) that Respondent was, when it acquired the domain name, primarily actuated for the reasons described by any of subparagraphs 4(b)(i)-(iii) above.

The evidence is that, prior to notice of this dispute, the domain name resolved to an equally inspirational holding page and that it was only after Respondent received Complainant’s letter of demand that it amended the page to show a cog device.

Whether that was a result of churlishness or not is unknown but it shines no light on Respondent’s mental state at the time of registration.

Nor, importantly, is that amendment to the holding page any sort of evidence that, for the purposes of paragraph 4(b)(iv), Respondent has used the domain name in bad faith.

Accordingly, Complainant’s arguments that Respondent registered the domain name to disrupt Complainant’s business, or sell the domain name to Complainant at profit, or gain commercially from its use, are unsupported and fail.

It therefore only remains to examine whether, independently from the per se scenarios of bad faith use and registration outlined above, it can be said that Respondent both registered and then used the domain name in bad faith. In that respect Panel has already commented on bad faith registration, but even assuming a finding adverse to Respondent on that question, there is no evidence of bad faith use.

The fact that the holding page now shows a cog device and that, as Complainant argues, images of cogs or gears are related to motorcycles, other vehicles and the nominative meaning of the trademark, is an argument equally true of the domain name itself and in the absence of any other evidence of bad faith, nothing can be read from it.

Finally, insofar as Complainant relies on the argument of so-called “passively holding”, Panel observes that there is no evidence that the renown of the trademark is such that the factors outlined in the seminal case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, are engaged.

Panel finds that Complainant has failed to show either bad faith use or registration and so has failed to establish the final limb of the Policy.

Twitter Files UDRP On Twıtter.com (Its An IDN)

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Twitter.com filed a UDRP on the domain name twıtter.com

Twıtter.com is an IDN; xn--twtter-4ja12b.com and goes to a page that has a picture of what appears to be someone in the armed forces somewhere by the name of RUHUNUZ ŞÂD OLSUN ÖCÜNÜZ ALINDI

There is no advertising or other monetization on the domain nor is there any reference to Twitter.

The domain does not appear to be for sale or have any sort of for sale banner or even contact link.

We will see how this plays out

UDRP Panel Punts Denying Google’s UDRP On Androidtv.com

Google Inc. (“Complainant”) just lost a UDRP on the domain anem androidtv.com and xbmcandroidtv.com

Its a pretty interesting case in which the Panel winds up punting saying the dispute is outside of scope of the UDRP but I think having read all the facts and findings of the panel and the argument of the respondent, this UDRP should not have been dismissed on its merits not as being outside the scope of the UDRP.

Here we go:

“””Complainant offers a software platform and operating system under the ANDROID Mark. The Android operating system was first developed in 2003 by Android, Inc., a Palo Alto company specializing in mobile device software.

“Google acquired Android, Inc. in August 2005. Android is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices.

“One of Google’s products that integrates the Android platform is Google TV. ”

“Launched in October 2010, Google TV offers enhanced viewing of TV episodes, movies and YouTube Channels on demand, and allows users to browse websites and watch television at the same time.”

“Android applications developed for Google TV are available for download on the Google Play store.”

:In its Response, Respondent contends the following:”

On November 2, 2006, Mr. Escovar registered the domain name with GoDaddy.com.

The domain name was registered for purposes of displaying the type of Hollywood-centric videographic content that Mr. Escovar produced, but with a “bot” feel (or theme) to it. To some it may seem odd to connect robots and TV as a viable business strategy, but Mr. Escovar was not the only one to build on that connection.

As early as 2002 a business connection already existed between TV and androids by others.

Shortly after registering the disputed domain name, Mr. Escovar began advertising his business in connection with the new domain name as a commercial website that his customers could visit.

For example, he began advertising in January of 2007 in Jack Magazine.

On August 1, 2013, Mr. Escovar formed a partnership with Messrs. Beaman and LaBossiere to execute a more robust business plan through the use of the domain name.

Messrs. Beaman and LaBossiere brought expertise to the table that Mr. Escovar lacked.

The three gentlemen had been engaged in business talks since at least 2012. Pursuant to the terms of the agreement, each of the three gentlemen owned one-third of the partnership that now owned the domain name as part of the partnership named Exo Level. Jason LaBossiere was the IT administrator for the partnership, and was responsible for updating the registrant information with GoDaddy.com to reflect the update in ownership from full ownership by Mr. Escovar to one-third ownership by Mr. Escovar and Messrs. Beaman and LaBossiere. With the influx of new capital and expertise, Mr. Escovar and his partners were able to enhance and broaden the content of the “www.androidtv.com” website, including continuing to promote Hollywood-centric videographic services, celebrity news, and the promotion of a set top box employing the android platform, which Google permits the public to do.

As of November 2006, the month that Mr. Escovar registered his domain name, Google did not use the term “android” in any commercial sense.

Google did not seek federal trademark protection for ANDROID until October, 31, 2007, almost a year later.

Even then it was filed as an intent-to-use application under Section 1(b). Between November of 2006 and October of 2007, Google did not use the word “android” in any commercial or trademark form; and Google has not submitted any evidence showing otherwise. Thus, as between Mr. Escovar and Google, Mr. Escovar came first.

On November 5, 2007, a few days after filing its federal trademark registration application, and a year after Mr. Escovar registered the domain name , the Open Handset Alliance unveiled for the first time the Android operating platform.

The Open Handset Alliance is an industry consortium that includes Google and many other large members of the software and computer industry. Since then, numerous companies have developed products that employ the Android operating platform and have developed applications that can be used on the android operating platform.

Google not only permits this, it encourages it, as reflected in Google’s published developer guidelines.

Google also permits and encourages use of its green-robot logo. See http://developer.android.com/legal.html and http://developer.android.com/distribute/googleplay/promote/brand.html.

For purposes of addressing likelihood of confusion on the merits in this action, Respondent will presume arguendo that Google established trademark rights in the mark ANDROID as of October 2008.

Google contends essentially that the similarity of the domain name to Google’s ANDROID trademark is sufficient to prove likelihood of confusion. Given the ubiquity of android-based domain names in use today, a simple comparison between Google’s ANDROID mark and Respondent’s domain name is not enough.

The breadth of Google’s ANDROID mark must be considered in view of all of the other marks, registrations, and domain names in use that are the same or similar to Google’s. In that regard, there are numerous domain names that use the word android in the name. Unless all of those companies are infringers, which is not the case given that Google permits companies to promote products using the android operating platform, more must be shown than merely concluding that is likely to be confused with ANDROID by a comparison in the abstract.

Notwithstanding more than six years of concurrent existence, Google has not presented a single shred of evidence of actual confusion, or of how strong a consumer’s association would be between the word “android” and the designation “tv.” It is merely presumed by Google in its Amended Complaint.

The word “tv” added to the domain name does not reflect a product marketed under Google’s ANDROID mark. TV is only marketed by Google under the name GOOGLE TV.

Mr. Escovar registered the domain name before Google ever adopted the word “android” for commercial use, and long before Google ever contacted Mr. Escovar or his company Exo Level. Google only first contacted Exo Level about in late November of 2013. That initial contact was four months after Messrs. Beaman and LaBossiere joined Mr. Escovar as corporate partners, and seven years since Mr. Escovar first registered the domain name .

As discussed above, even as early as 2002, others maintained such a business connection (i.e., Hollywood and robots). Indeed, J. J. Abrams, one of Hollywood’s best-known producers, owns a production company called Bad Robot that has operated since 2001.

Mr. Escovar and Exo Level, like the owner of in 2002 and Mr. Abrams since 2001, see commercial value in linking Hollywood and robots. Thus, Google has not shown that Respondent does not have a legitimate business interest in the domain name.

Respondent has not engaged in activities or actions that reflect bad faith.

Rather, since 2006, Respondent, through Mr. Escovar, has operated and maintained a legitimate Hollywood-centric videographic services business, in which that business is promoted through, among other sites, its site.

The “www.androidtv.com” website has never been used to direct viewers to a non-existent business or to draw consumers away from Google; and Google has not presented any evidence that shows as much. Respondent has also never sought to park the domain name for purposes of renting it or selling it to Google. Nor has Respondent ever attempted to disrupt the business of Google in any way.

In alleging bad faith, Google relies upon two flawed premises.

The first is that Respondent’s first date of domain name use is 2013, rather than 2006.

For reasons discussed above, Google is incorrect.

The second is that Respondent’s selling of a set top box that employs an android operating system and Respondent’s use of the green-robot logo shows bad faith. That is also wrong because Google encourages the public to do both. Google also alleges that Respondent must have proceeded in bad faith because they adopted a domain name with the word “android” in it. That ignores the fact that numerous businesses have adopted the word “android” as part of their domain name and several promote or showcase products that employ an android operating system and use the green-robot logo.

“In that regard, this not a typical ICANN dispute.”

“This case is significantly different because the Complainant encourages countless businesses to use its technology and use its trademark. That is typical of open-source technology. Thus, asking the Administrative Panel to presume bad faith based upon Respondent’s doing what Google expressly permits others to do, would be inappropriate. Although Respondent does not concede that it violated Google’s developer policy, as Google alleges, Google may pursue redress of that alleged violation in a proper forum, but not in the present UDRP domain name dispute. Respondent recognizes that, given its size, Google faces issues with cybersquatters and others that create confusion in bad faith. But it is improper to lump them altogether and presume bad faith without considering all of the facts associated with each case individually.

The disputed domain name was registered on September 24, 2012 by Mr. LaBossiere on behalf of Exo Level Inc. Immediately after registering the domain name, Respondent put it to use.

Google fails to supply any evidence that the public recognizes any connection at all between Google and XBMC. Indeed, it is likely that the public does not because XBMC was originally developed in 2002 for the X-Box device, not for a Google device. More importantly, it was Respondent who first merged open-source XMBC technology together with open-source android technology. To the extent that Google is presently attempting to associate itself with XBMC, such association post-dates Respondent’s use.

On November 2, 2006, Mr. Fernando Escovar registered the disputed domain name . According to GoDaddy.com`s receipt number 51617300 of the same date submitted by Respondent Mr. Escovar paid for the registration. The payment information on the receipt also states the name “Prive TV”.

On August 27, 2012, EXOLEVEL INC was incorporated by Mr. Jason LaBossiere. On September 24, 2012 Respondent registered the disputed domain name.

On August 1, 2013 Messrs. Escovar, LaBossiere and Sean Beaman entered into a partnership agreement to be conducted under the name of Exo Level for the following purpose: “Androidtv.com; AndroidTV(tm); Red carpet & exclusive celebrity interviews, tv channel, streaming tv and movies, televisions and tv set top boxes”.

The Panel is of the opinion that the present UDRP proceeding is not the proper forum to discuss compliance of developers with the guidelines for Android establishing when branding a device should be deemed correct or incorrect.

These issues belong to a legal dispute which is outside the scope of paragraph 4(a) of the UDRP, and should more properly be decided before a court of the competent jurisdiction according to paragraph 15(e) of the Rules. In this regard, the Panel notes that both Complainant and Respondent are located in California, USA and are presumably amenable to the state and federal courts of California.

Clearly differing from any wide-scope action brought before a court of competent jurisdiction, proceedings under the Policy are a simplified and expedited means to obtain an administrative decision after – typically – just one round of writings and without hearings, which makes them apt to determine whether a clear case of cybersquatting exists or not.

Paragraph 135 of the Final Report of the WIPO Internet Domain Name Process of April 30, 1999, states: “(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.”

The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”);

Since the present dispute is beyond the scope of the ICANN UDRP, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the and domain names REMAIN WITH Respondent.”””

The panel did not deal with the fact that the domain was registered before Google’s trademark, that the domain name was in use and had a huge business plan behind it basically punting on the decision.