Owner Of Ruraliving.com A $7 Billion Company Loses UDRP On RuralLiving.com

AgStar Financial Services, ACA (“Complainant”),  just lost its bid to grab the domain name RuralLiving.com from Ashantiplc Ltd, who was represented by John Berryhill, Esq. , who also in full disclosure represents our company in UDRP cases.

The complainant owns the domain name Ruraliving.com (missing the other letter “L”) along with a trademark on the term (also with the missing “L”)

The domain holder registered the domain name RuralLiving.com in August 3, 2005, the Complainant’s trademark was issued by the USPTO on January 17, 2006.

Yet just Two members of the three member panel of HPaul M. DeCicco and James A. Carmody denied the claim.

Panelist Houston Putnam Lowry filed a dissenting opinion, voting to transfer the domain to the Complainant.

Panelist Lowry believed the domain should have be giving to the trademark holder because it was listed for sale at SnapNames.com with a minimum bid of $10,000 or more and quite troubling that since the domain holder held the domain under privacy:

“I would hold this gives rise to a rebuttable presumption of bad faith registration and use.”

Here are the highlights of the rest of a very long opinion:

By way of background, Complainant is one of the largest farm credit associations in the nation with assets in excess of $7 Billion USD.

Complainant provides a full range of financial services including mortgage lending, leasing, consulting, and related services focused at farmers and others in the agricultural and related industries.

Complainant is also the premier provider of custom financing solutions for agribusinesses including, among others, equipment manufacturers, distributors, agricultural wholesalers and retailers, farm commodities merchandisers and processors, and agricultural finance companies that provide services to suppliers, distributors and manufactures. In addition to assisting the agricultural business sector, Complainant also provides financing services to consumers living in farm communities and who are interested in obtaining financing for residences, personal projects and hobbies. Complainant is well-known among the farm communities, especially those located throughout the Midwest.

“Registration and Use in Bad Faith

By a majority vote, the Panel determines Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii).

First of all, Respondent registered the disputed domain name in August 3, 2005, which is substantially before Complainant’s trademark was issued by the USPTO on January 17, 2006.

Therefore, Respondent could not have registered the disputed domain name with Complainant’s mark in mind. Respondent’s statement that it did not register the disputed domain name with Complainant’s rather generic mark in mind further corroborates this finding.

Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii).

Respondent is perfectly entitled to negotiate and sell the domain name at a market value determined by its primary meaning.

The Panel finds Policy ¶4(a)(iii) not satisfied.

Having failed to establish all three elements required under the ICANN Policy by a majority vote, the Panel concludes relief shall be DENIED.

Accordingly, it is Ordered the domain name REMAIN WITH Respondent.”

Here is the dissenting opinion of Houston Putnam Lowry:

“”I differ from my brother Panel on the bad faith element.

Complainant claims Respondent registered and is currently using the domain name in bad faith under Policy ¶ 4(b)(i).

Respondent is offering the disputed domain name for sale through the SNAP names domain name auction site with a minimum bid of $10,000. Prior panels have routinely determined offering to sell a disputed domain name for an excessive price is an indication of bad faith under Policy ¶ 4(b)(i).

Complainant claims Respondent’s previous use of the disputed domain name to resolve to a website displaying links that compete with Complainant indicates bad faith use and registration.

Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name.

Complainant claims Respondent is attempting to attract Internet users to its resolving website for commercial gain by causing confusion between the disputed domain name and Complainant’s RURALIVING mark.

Complainant claims Respondent’s bad faith is further demonstrated by Respondent’s prior use of the domain name in connection with generating revenue as a click-through website.

Respondent does not dispute it gets an economic benefit of some kind from the “click through” links.

I would find Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

Finally, Respondent registered the disputed domain name using a privacy service. I would hold this gives rise to a rebuttable presumption of bad faith registration and use under the penumbra of Policy ¶ 4(b) in the commercial context. Respondent has done nothing to rebut that presumption by showing a bona fide reason to conceal its true identity from the marketplace.””

UGN.com Under Same Ownership For 10+ Years Hit With UDRP

The three letter domain name UGN.com which appears to have been owned or under the control of  Boca Database Services, Inc since at least 2004, has been hit with a UDRP.

The domain name is not resolving.

The last entry that Screenshots.com has for the domain name is from 2009, and it looks to be an very simply placeholder.

The name of the COmplainant is not listed but their is suprinly only 1 trademark in the USPTO for the term UGN and that was filed on March 1 2014, by United Golf Network, Inc. of Winston Salem NC.

All I can find on The United Golf Network is they have an App in both the Apple and the Android App store.

We will be watching this case.

TechCrunch.com Wins Rights To The The Hack Domain TechCrun.ch in UDRP

A one member UDRP panel just awarded the domain name hack of Techcrun.ch to the publisher of Techcrunch.com which also owns the domain name TechCrunch.ch

For those that don’t know a domain hack is where a registrant uses a domain extension, typically a two letter country code (ccTLD) to spell a word.

In this case the .Ch extension is the country code for Switzerland and since its a ccTLD is subject to the rules, regulations and laws of the underlying country.

The short decision was published in German which I used Google Translate to get the English version:

“The applicant published under the domain name techcrunch.ch a blog about information technology. The applicant is the owner of the Swiss brand TechCrunch (No. 654 081), which was deposited on 23 September 2013, and is registered in Classes 35, 41 and 42.

“The Respondent has registered the domain name on October 8, 2013, but switched no website. It provides the domain name on the trading platform Sedo for sale. ”

“The Respondent did not submit a request reply. The representation of the applicant has thus remained unchallenged.

In accordance with paragraph 24 (c) of the Regulations is the process expert instead of the application if the registration or use of the domain name constitutes a clear infringement of a trademark law attributable to the applicant under the laws of Switzerland or Liechtenstein.

In accordance with paragraph 24 (d) of the Regulations method is a clear violation of an intellectual property right in particular if:

both the existence and the infringement of trademark rights asserted clearly arise from the wording of the law or of a recognized interpretation of the law and the facts presented and are demonstrated by the evidence submitted; and

the Respondent has no relevant grounds for defense pleaded and proven conclusively; and

the violation of the law, depending on the data collected in application submissions, transfer or cancellation of the domain name justifies.

According to Article 29 paragraph 2 of the Civil Code, a person who is affected by the fact that another is usurping his name, sue for an injunction this presumption. It can on the naming rights for support (BGE 128 II 353 4) both private and legal persons.

 

This requires the existence of an unauthorized Namensanmassung, ie an impairment of a legally worth protecting interests (BGE 112 II 371 E. b). This requirement is met if the acquisition by a third party causes a likelihood of confusion (BGE 112 II 369).

 

The mere risk of confusion (BGE 128 III 353) is sufficient, a real likelihood of confusion, however, is not necessary (BGE 102 II 167 E. a). According to the Federal Court case law is not only the unauthorized use of the full name as Namensanmassung, but already the acquisition of the main component (BGE 102 II 166).

The applicant may be based as a legal entity on the naming rights.

The applicant will be affected by this arrogance on the part of the Respondent.

The use of the domain name is likely to cause a likelihood of confusion with an average Internet user.

The insertion of the point before the ending “ch” is not able to eliminate the likelihood of confusion.

When calling the page “www.techcrun.ch”, a pop-up appears that the page could not be found.

This creates a risk of confusion, as a potential site visitors might assume that www.techcrunch.ch” page no longer exists. Thus, the use of the name is unauthorized and the applicant is entitled to injunctive this presumption.

Since a name infringement is given, it can be left open in this case, whether there is an infringement of trademark of the applicant.

In summary, violated the registration of the domain name rights to the name of the applicant and there is a claim for injunctive relief.

MSC.com Purchased At Sedo Auction For $48K In December Saved In UDRP

MSC Mediterranean Shipping Company Holding S.A. of Geneva, Switzerland, just lost its attempt to grab the domain name MSC.com

Its an interesting case because the domain name was acquired by the domain holder Paul Kocher, in a Sedo auction for $48,000 in December 2013 Actually Jeremiah Johnston of Sedo represented the domain holder.

After the auction the trademark holder offered to buy the domain for $50,000 which the domain holder rejected and the UDRP was filed.

Here are the relevant facts and findings by the three member panel:

The Complainant is the intellectual property holding company of what, for present purposes, can be described as the MSC group. An operating member of the MSC group is MSC Mediterranean Shipping Company SA – “Shipping Company”.

The Shipping Company was founded in 1970 when it commenced operations with one ship. By 1977, it was providing shipping services throughout northern Europe, Africa and the Indian Ocean. In the 1980s, it extended its operations to North America and Australia. According to the Complaint, it is currently the second largest container carrier by terms of vessel capacity. It serves 270 ports with offices in most parts of the world. Since 1989, it has also operated cruise ships.

According to the Complaint, the Shipping Company displays the letters “MSC” prominently on the sides of it ships.

It has provided evidence of registered trademarks for, or based on, MSC in Switzerland, the European Union, USA and Canada. The earliest registration is for MSC in a stylized form. It was registered in Switzerland on April 12, 2001

The disputed domain name was first registered on January 22, 1993.

It was acquired, however, by the Respondent Paul Kocher, in December 2013 through a public auction conducted by Sedo.com.

The Respondent apparently paid EUR 35,000 (or approx. USD 48,000).

At the time the Complaint was filed, the disputed domain name redirected to the website at “paulkocher.com” which contained an image of a dragonfly, personal and work email addresses through which to contact Mr. Kocher and the URL of his “work” website. It would appear, amongst other things, that Mr. Kocher engages in providing services related to cryptography.

Before the Complaint was filed, the Complainant submitted to a domain broker an offer to buy the disputed domain name for USD 50,000.

The broker reported back that this amount was not accepted and that the Respondent wanted substantially more.

“”The Respondent says he was unaware of the Complainant or its trademarks when he acquired the disputed domain name. “”

“”The Respondent points to the fact the disputed domain name is comprised of 3 letters plus the generic Top-Level Domain. The Respondent says that 2 letter and 3 letter domain names of this kind are intrinsically valuable in their own right and he purchased it for that reason. Apparently, he has registered a small number of such domain names.””

“It is also relevant in this context that a search of the USPTO’s trademark site returns some 210 matches for “MSC”. The Panel notes that not all of the records returned are still “live” or active. Nonetheless, there are many indicated as “live”. Wikipedia also has numerous terms for which MSC is an abbreviation or acronym.”

“In the context of this case, it is unnecessary for the Panel to determine finally whether or not these factors give rise to rights or legitimate interests as these matters are also directly relevant to the issues raised under the third requirement under the Policy.””

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the Respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the Complainant.

The Complainant relies on what it says is the inactive nature of the disputed domain name and the registration of the disputed domain name anonymously in support of its claim that the disputed domain name has been registered and used in bad faith.

In the present case, the Respondent has submitted evidence from the Wayback Machine which shows that for a number of years the disputed domain name resolved to a webpage or webpages for Molecular Structure Corporation.

That business would appear to have been acquired and ceased use of the name and acronym in due course. Subsequently, the acquirer of the business released it back on to the market. Before the Respondent acquired it, therefore, the disputed domain name appears to have had a legitimate use quite independent of the Complainant’s group.

Since the Respondent acquired the disputed domain name, it has resolved to his website as described above.

Having regard to nature of the trademark as comprised of 3 letters and the comparatively limited field for which it is registered, there is in this case not sufficient material to infer that the Respondent has in fact registered the disputed domain name to take advantage of its status as the Complainant’s trademark.

The third requirement not having been established, the Complaint must fail.

D. Reverse Domain Name Hijacking

The Respondent seeks an order that the Complainant has engaged in reverse domain name hijacking. The fact that the disputed domain name was registered in 1993 before the Complainant acquired any registered trademarks is not relevant to this issue. The Respondent has only relatively recently acquired the disputed domain name in or about December 2013 which, on the record in this case, is the relevant date for any assessment as the Respondent is wholly unassociated with the predecessor owner and uses.

The Panel is not prepared to find that the bringing of this Complaint was so abusive as to warrant the finding requested by the Respondent. The Complainant has clear trademark rights and is entitled to seek to protect them. In the Panel’s view, it was not inevitable that the Complainant must fail. While there have been many complaints about 3 letter domain names which have failed, they do not establish a rule that all such complaints must fail. Each case must be decided on the particular facts in its record.””

Personal Communication Systems, Inc Gulity Of RDNH On Healthwave.com

Personal Communication Systems, Inc. of Winston-Salem, North Carolina, represented by Bell, Davis & Pitt, P.A. was just found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name healthwave.com.

The Complainant registered a trademark on the term HEALTHWAVE in October 2012.

The domain holder registered the domain in 2002

The one member panel of Andrew D. S. Lothian wrote:

“The Respondent in the present case has requested that the Panel make a finding of Reverse Domain Name Hijacking on the grounds that the Respondent had peacefully used the disputed domain name for more than 10 years before the Complainant’s trademark rights came into being and could not therefore have registered the disputed domain name in bad faith.”

“The Panel agrees with the Respondent’s analysis, as is borne out by its finding above.”

The question before the Panel on this topic is whether the Complainant knew or should have known that it could not prove registration in bad faith at the time that it filed the Complaint.

In the Panel’s opinion, the answer to that question must be in the affirmative.

The content of the amended Complaint itself makes this clear. Paragraph 8 expressly sets out the date of registration of the disputed domain name, namely October 13, 2002. Paragraph 12 contains a specific averment regarding the month and year on which the Complainant is said to have adopted the use of the HEALTHWAVE mark in commerce, namely June 2010. Despite listing these dates, the Complainant makes no attempt to address the obvious issue of the lengthy intervening period between them. Nor does the Complainant attempt to demonstrate the existence of any earlier rights in its HEALTHWAVE mark.

As such, the Panel considers that the Complaint was bound to fail and that the Complainant knew or ought to have known this at the point of filing.

In these circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.””