Canyon.bike Lost In 1st UDRP Decision On A New gTLD Domain Name

Canyon Bicycles GmbH of Koblenz, Germany, just won the first UDRP decision on a new gTLD domain name, canyon.bike (all other decision up to now have been URS cases)

The one member panel found that when it comes to new gTLD’s the will take the entire domain name, both on the left and right of the dot in determining whether the domain name infringes on a trademark:

The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.

This case follows the decision in TES.co.

But having said that the panel said the case didn’t turn on that factor.

Here are the relevant facts and findings:

The Complainant is a corporation with its headquarters in Koblenz, Germany and is one of the world’s leading manufacturers of racing, mountain and triathlon bicycles. The Complainant was originally founded in 1985 and has been operating under its present name since 2001.

The Complainant distributes its bicycle products worldwide, has agents in ten countries and has subsidiaries in six countries including the Netherlands where the Respondent is based. The Complainant is involved in numerous international cycling events of global repute and has been the recipient of multiple accolades including over thirty “Bike of the Year” awards together with the “Eurobike Award” in 2012.

The Complainant has secured ownership of numerous registered trademark rights in the term “Canyon” used in connection with bicycles in many jurisdictions throughout the world. For example, the Complainant is the owner of International Trademark (word) No. 687879, CANYON, registered on January 2, 1998, for goods and services in classes 11 and 12.

The Respondent is an individual based in the Netherlands.

The Respondent states that he is a cyclist and web designer in the cycling industry. The disputed domain name was created on February 5, 2014

The “.bike” generic Top-Level Domain (gTLD) had entered its General Availability period, where domain names became available at standard base registration fees, seven seconds earlier. The Respondent registered the disputed domain name using a privacy protection service.

The disputed domain name points to a website parking page provided by the Registrar which, according to the screenshot provided by the Center, features sponsored listings including one entitled “Mountainbikes”.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.

The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for the word “Canyon”, including the example cited in the factual background.

The Panel therefore turns to the second part of the inquiry and notes that the alphanumeric string in the second level of the disputed domain name incorporates the Complainant’s trademark in its entirety with no additional elements.

This is sufficient for the Panel to find identity between the disputed domain name and the Complainant’s trademark as the applicable top-level suffix in a domain name is usually disregarded under this test, except thus far generally in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The Complainant subscribes to the principle expressed in paragraph 1.2 of the WIPO Overview 2.0, which it notes is well-established.

The Complainant also makes the additional argument that the gTLD in the present case, “.bike”, exacerbates confusing similarity because it describes a core product of the Complainant.

The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.

However, the Panel considers that it is not necessary to do so in the present case. The test in paragraph 4(a)(i) of the Policy is “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). There is no doubt in the Panel’s mind that the Complainant’s case on this element of the Policy, with which the Respondent does not take issue, more than meets this threshold.

In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name.

In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions (1) that the Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant’s trademark; (2) that the Respondent cannot assert that he is commonly known by the term “Canyon” or has made demonstrable preparations to use or is using such term in connection with a bona fide offering of goods and services; and (3) that the disputed domain name is currently pointing to a website featuring PPC links which could not be construed as a bona fide or legitimate noncommercial or fair use. Accordingly the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in respect of the disputed domain name.

The Panel notes that the Response is informal in nature, such that it is lacking the Respondent’s certification of completeness and accuracy required by paragraph 5(b)(viii) of the Rules. In these circumstances, the Panel requires to accord this less weight than a fully compliant response.

However this may be, the Panel notes that the Respondent’s brief submissions focus on his alleged motivation to register certain disputed domain names “to protect companies from domain squatting” and, in the case of the disputed domain name, to provide the means for establishing contact with the Complainant with a view to enlarging his network. I

n the Panel’s opinion this does not make out a case in terms of paragraph 4(c) of the Policy, nor can the Panel conceive of any way in which the Respondent’s actions could be considered to have conferred rights or legitimate interests upon him in respect of the disputed domain name. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case.

In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

Registered and Used in Bad Faith

It is clear from the Parties’ respective submissions that they are agreed that the Respondent registered the disputed domain name knowing of the Complainant’s rights and indeed with these in mind. The Respondent expressly acknowledges that he is a web developer and cyclist and that he hoped to be able to make contact with the Complainant through having registered the disputed domain name. The Respondent states that he had a wholly good faith motivation to protect companies such as the Complainant from cybersquatting.

The record does not however support the Respondent’s insistence of a good faith motivation. In particular, the Respondent’s email to the Center of February 12, 2014 indicates that the Respondent was looking to be financially compensated in respect of the registration of the disputed domain name, which if treated as an offer for sale can be evidence of bad faith (see paragraph 3.6 of the WIPO Overview 2.0). Furthermore, the Respondent’s statement that he wished to “enlarge his network” discloses a deliberate and intentional commercial purpose behind the registration of the disputed domain name, given the Respondent’s admitted background as a web developer with interests in the cycling industry. An attempt by a person to improve their commercial prospects through the registration of a domain name which that person knows to correspond to the trademark of another is in the Panel’s view a further indication of registration in bad faith.

Finally, the Panel turns to the website parking page associated with the disputed domain name.

It is clear that this is a page created by the Respondent’s registrar rather than directly by the Respondent.

However, that page features PPC advertisements, at least one of which appears to the Panel to be directly competitive with the Complainant’s products.

On this subject, paragraph 3.8 of the WIPO Overview 2.0 notes the consensus view of WIPO UDRP panels that a registrant will normally be deemed responsible for content appearing on a website at its domain name even if it does not exercise direct control over such content.

Where certain links may constitute evidence of bad faith use of the domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of links which profit from trading on third party trademarks. Furthermore, it may not be necessary for the registrant itself to have profited directly under such arrangement if profit or “commercial gain” was made by a third party.

In the present case, the Panel is satisfied that commercial gain will have been made by the operator of the PPC links on the Respondent’s website and that there is no evidence of any good faith attempt on the part of the Respondent to prevent the inclusion of such links.

On the contrary, paragraph 9 of the Respondent’s registration agreement demonstrates that the commercial nature of the links provided by the registrar had been brought to the Respondent’s attention. They are clearly described as “an online domain monetization system designed to generate revenue” and the registration agreement required the Respondent to agree to their inclusion on the default setting parked page.

 

Paragraph 3.8 of the WIPO Overview 2.0 goes on to note that some panels have found that the inclusion of such links may not be a basis for finding respondent bad faith where (1) these are genuinely automated; (2) there is no evidence that the respondent influenced the advertising content; (3) the respondent credibly denies knowledge of the complainant’s trademark; (4) there is no evidence of the respondent previously being put on notice of such mark; and (5) other indicia of cybersquatting are not present.

This does not describe the circumstances of the present case, where there is no such denial of knowledge of the Complainant’s mark. Indeed, there is effectively an admission of such knowledge together with the other indicia of cybersquatting noted above. In these circumstances, the Panel considers that it is reasonable to hold the Respondent accountable for the inclusion of the PPC links and to find that this constitutes use of the disputed domain name in bad faith.

Finally, the Panel notes that despite the Respondent’s protestations of a good faith intent regarding the registration and use of the disputed domain name, the central feature of the present case is that the Respondent registered the disputed domain name in the clear knowledge of the Complainant’s rights in its CANYON mark and in no doubt that he had not received the Complainant’s permission to do so.

In the Panel’s view, the absence of such permission or indeed any bona fide basis for the Respondent’s actions means that on the facts of this case the Respondent’s alleged good faith intent is irrevocably tainted.

In these circumstances, the Panel finds that the Complainant has established that the Respondent has registered and is using the disputed domain name in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

 

UDRP Filed On 19 Year Old Domain BigBang.com Owned By Vertical Axis

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A UDRP has been filed on the domain name BigBang.com by Javier Zetter Casillas

The domain name BigBang.com was originally registered back in February 1995 making it 19 years old.

The domain name changed hands a few times but has been owned by Vertical Axis, Inc since at least 2006.

The domain name is parked

Of course the most famous meaning  of the term Big Bang refers to how some believe the universe was created.

However there is also a popular television show known as the Big Bang Theory and what seems to be a famous South Korean band by the same name.

The complainant in this case, Javier Zetter Casillas seems to have gotten a trademark for the term BIG BANG IDENTIDAD EMPRESARIAL in 2011/2012 and owns a trademark on the term “THE BIG STITCH COMPANY”

I have no idea of how either recently filed registration gives Mr. Casillas the idea that he is entitled to take ownership of a 19 year old domain and hopefully there will be a Reverse Domain Name Hijacking (RDNH).

Namecheap Loses UDRP In its Attempt to Get the Domain Namechap.com

Namecheap, Inc, just lost a UDRP on its attempt to get the domain name namechap.com

The domain holder defended the registration of the domain which was just registered in 2013 by saying it was a term in and of itself “Name Chap”

Interesting case.

Here are the relevant facts and findings by the one member panel who found the domain name was NOT confusing or similar to the trademark holder Name Cheap.

Complainant was launched in 2000, and is now one of the most prominent domain name registrars on the web.

Operating at , Complainant currently services more than 3,000,000 domain registrations and 800,000 users.

Based on its registration of each mark with the United States Patent and Trademark Office (“USPTO”), Complainant has rights in the NAMECHEAP (Reg. No. 4,213,990 registered September 25, 2012) and NAMECHEAP.COM (Reg. No. 3,622,358 registered May 19, 2009) marks under the UDRP.

Respondent registered the domain name on September 5, 2013

B. Respondent:

1. The disputed domain name consists of the generic terms “name” and “chap,” in which Complainant has established neither registered nor common law trademark rights.

a. The term “chap” has a distinct meaning apart from the term “cheap” found in Complainant’s mark. See Respondent’s Annex I, providing various dictionary definitions for the word “chap.”

b. A Google search for the term “chap” yields over 29,400,000 third-party results. See Respondent’s Annex J.

c. There are over 2,000 registered domain names that end with the term “chap.” See Respondent’s Annex L.

2. Respondent has made preparations to operate a “Kids Fashion Shopping-mall business” at the domain name. See Respondent’s Annex M, which appears to show a website offering children’s clothing under the name “name chap.” This business is unrelated to Complainant.

a. Respondent acquired the domain on September 5, 2013, and has not yet had the time to set up or use the domain for its intended purpose.

3. Respondent did not register the disputed domain name with the intent to disrupt Complainant’s business or to confuse consumers seeking to find Complainant’s website.

4. Respondent registered the contested domain name for its generic meaning and was not aware of Complainant’s business or trademark at that time.

a. Complainant is not well-known in South Korea, where Respondent resides.

5. Complainant’s actions in this case constitute Reverse Domain Name Hijacking under the Policy, as there is no evidence that the disputed domain name was registered or is being used in bad faith.

a. Complainant filed a lawsuit in U.S. Federal Court requesting the transfer of three domain names, including the domain name, from the previous registrar on May 7, 2012. If Complainant really had rights to the domain name, it would have been awarded the domain in that dispute.

C. Complainant’s Additional Submission:

1. Respondent’s arguments that the disputed domain name is comprised of the generic terms “name and “chap,” and that the term “chap” is different from “cheap” as found in Complainant’s mark, are irrelevant under Policy ¶ 4(a)(i).

2. Respondent’s Exhibit M, purporting to show a “Kids Fashion Shopping-mall business” under the domain name is merely a mock-up of a website and business that does not yet exist. Respondent has presented no business records or other evidence of commerce suggesting that Respondent has provided a bona fide offering of goods or services under the disputed domain name.

3. With respect to the Federal Action, Complainant stresses that the court found in Complainant’s favor, and that Complainant expressly identified the domain name in that action such that past registrants of the domain name should have been put on notice of Complainant’s rights in the domain. See Complaint Annexes E, J, & L.

a. Complainant was forced to resort to this UDRP action after Hebei, the registrar of record for the disputed domain name, ignored Complainant’s requests for transfer following the Federal Action.

FINDINGS

The disputed domain name is not confusingly similar to the Complainant’s trademark.

DISCUSSION

Under the Policy ¶ 4(a)(i) element, the panelist has to analyze two issues:

1) the rights of the complainant in the trademarks to which the disputed domain name is allegedly identical or confusingly similar;

2) the identity or confusing similarity between the disputed domain name and the trademarks in which the complainant asserts rights.

For the first issue, the Panel considers the contentions of the Complainant. Launched in 2000 and operating online at ,

Complainant claims to be one of the most prominent domain name registrars on the Internet.

According to Complainant, it currently services more than 3,000,000 domain registrations and 800,00 users.

Complainant claims to use the NAMECHEAP and NAMECHEAP.COM marks in connection with its offering of domain name registrations and related services such as private registration, web hosting, URL forwarding, security features, email forwarding, and other functions related to the registration, management, build-out, and administration of domain names.

Complainant provides evidence of its registration of the NAMECHEAP (Reg. No. 4,213,990 registered September 25, 2012) and NAMECHEAP.COM (Reg. No. 3,622,358 registered May 19, 2009) marks with the USPTO, arguing that such registrations confer rights under the Policy. Past panels have agreed that registration of a mark with the USPTO establishes rights under Policy ¶ 4(a)(i), regardless of the location of the respondent.

The Panel therefore concludes that Complainant has established rights in the NAMECHEAP and NAMECHEAP.COM marks under Policy ¶ 4(a)(i), Respondent’s apparent residency outside of the United States notwithstanding.

For the second issue, Complainant urges the Panel to find the disputed domain name confusingly similar to Complainant’s NAMECHEAP and NAMECHEAP.COM marks pursuant to Policy ¶ 4(a)(i).

In its assertions Complainant notes that the disputed domain name merely omits the second instance of the letter “e” in Complainant’s NAMECHEAP.COM mark.

In addition, the Complainant asserts that a US Federal Court has already considered and adjudicated the infringement issue as to this domain, and presents a decision of the United States District Court for the Central District Court of California in case no. CV 12-03868, by which it was considered that for a number of domain names, including the disputed domain names in this procedure; complainant contends this is a justification for an entry of default judgment.

The said judgment was delivered in connection to the disputed domain name in relationship to the unknown holder of the domain name and the Registrar Hebei Guoji Maoyi (Shanghai) Ltd. The judgment was delivered on August 27, 2012.

The disputed domain was registered with the Registrar Namebay on September 5, 2013 by the actual Respondent.

Therefore, the judgment of the United States District Court for the Central District Court of California in case no. CV 12-03868 could not refer to the same factual situation which had been initiated with the registration of the disputed domain name and which is under analysis to present proceedings.

Moreover, on the aspects regarding the substantive merits and sufficiency of the Complaint, the judgment just reproduces the Plaintiff’s (the Complainant in these proceedings) bulk allegations as to all the domain names under judgment and does not make any kind of analysis as to the confusing similarity of the disputed domain name

Therefore, the Panel considers that under the first element of the Policy Complainant has to make its own analysis as to the identity and or the confusing similarity of the disputed domain name to the Complainant’s trademark NAMECHEAP.COM.

According to “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0″), the threshold test for confusing similarity under the UDRP is that the relevant trademark would generally need to be recognizable as such within the domain name. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.

Applying the said criteria in the analysis subject to these proceedings, the Panel finds that despite the fact that apparently the disputed domain name is different with only one letter “e” from Complainant’s trademark, such difference cannot be considered as misspelling or even “typosquatting,” as the Complainant asserts further under its second element of the Policy contentions.

In fact, the disputed domain name consists of two generic terms “name” and the “chap,” each with its clear meaning of its own.

The disputed domain name may differ with one letter from Complainant’s trademark in their second parts, namely the term “chap” differs with one letter from term “cheap,” but this one letter difference makes also difference from the point of view of the meaning, orthography and pronunciation between the two terms. While, according to oxforddictionaries.com, the term “cheap” has, general meaning of low in price, especially in relation to similar items or services, the term “chap” has total different ones as: a cracked or sore patch on the skin, or a man or a boy.

Considering the absence of a letter “e” in the disputed domain name in comparison with Complainant’s trademark, the Panel finds that this particular absence cannot qualify as a misspelling but rather distinguishes the disputed domain name from the Complainant’s trademark.

Also considering the distinctive character, the disputed domain name gains by the omission of the second letter “e” from the Complainant’s trademark, also “typosquatting” could not be found applicable, as typosquatting is applicable only when a domain name contains a common or obvious misspelling of a trademark, where the misspelled trademark remains the dominant or principal component of the domain name, which is not the case in the disputed domain name .

Last, but not least, the content of the website to which the disputed domain name is resolving cannot be considered to count in the threshold assessment of risk of confusing similarity under the first element of the UDRP, as such content may be regarded as highly relevant to assessment of intent to create confusion under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).

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

The Panel denies a finding of Reverse Domain Name Hijacking.

The Late IGal/Mrs Jello Hit With UDRP On Milly.com

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A domain name registered to Mrs. Jello, LLC which was the company formed by  the late Igal Lichtman  has been hit with a UDRP.

A UDRP has been filed by the Milly LLC on the domain name Milly.com

According to Business Week, Milly LLC is a private company which “designs apparel for women worldwide. It offers dresses, tops, bottoms, outerwear, swimwear, handbags, fashion jewelry, and accessories, as well as clothing for children. The company also provides products for cocktails and offices, as well as weekend casuals. It sells its products through specialty and department stores worldwide, as well as its boutique in Madison Avenue and online. ”

“The company was incorporated in 2000 and is based in New York, New York.”

The company uses the domain name MillyNY.com as its URL.

According to DomainTools.com the domain Milly.com has a original creation date of 1999.

The domain name Milly.com seems to have been acquired on 2006 by Mrs Jello.

The domain is going to a parked page in which every link has a reference to Milly, LLC’s  products as you can see from the screenshot above.

This could be a problem for the domain holder.

 

17 Year Old Patient.com Hit With UDRP

Egton Medical Information Systems Limited has filed a UDRP with the World Intellectual  Property Organization (WIPO) against the domain name Patient.com

The domain name Patient.com is owned by  Health Axis Group of Tampa, Florida but has a Network Solutions placeholder.

Health Axis seems to have acquired the domain in June of 2012.

The domain name has according to domain tools an original registration date of 1997.

According to Screenshots prior to Health Axis acquisition of the domain it was parked for many years.

According to Wikipedia.org:

Egton Medical Information Systems Limited, known as EMIS and part of EMIS Group plc, is a software company that develops and supplies computer systems used by over half of all general practices in the United Kingdom,195 clinical services throughout the United Kingdom,and also internationally, to electronically store patient notes.

It seems that the patient notes product is what the claim maybe based on.

We will keep our eye on this one.