The owner of a trademark on Ovation Hair, DC Labs Inc. was awarded the generic domain name Ovation.com by a one member panel although the term Ovation is a generic term and the trademark OVATION HAIR was not granted by the USPTO until 4 years after the domain name Ovation.com was acquired by the domain holder
Of course the trademark was for a broader term than the domain name itself.
Its a horrible decision in which the one one member panel of Eduardo Machado found a common law trademark to the term “Ovation” and seemed to put great weight on the fact that the domain holder owned a whopping 107 domain names.
Here are the relevant facts and findings:
Complainant DC Labs Inc. is engaged in producing, selling, and distributing hair care products.
Complainant has been in business since 2007 and operates the website at the ovationhair.com domain name.
Complainant owns several U.S. and international trademarks for its OVATION marks, including OVATION. Complainant provides evidence of its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,142,800 filed November 10, 2011, registered May 15, 2012).
Complainant uses the OVATION mark at its website to advertise its goods and to indicate to the public that the goods are provided by Complainant. As a consequence of Complainant’s prolific use of the mark, the OVATION name has attained considerable value and goodwill.
Respondent purchased the <ovation.com> domain name on December 24, 2008, and uses the resolving website to allow an Internet entity to operate a “parked domain monetization”.
Respondent has yet to establish a legitimate website at the domain name, yet Respondent wallpapers the website with the registered OVATION marks.
The monetized links allow a visitor to click on the headings at the top of the site, which results in advertisements appearing as additional pages, none of which have any affiliation with Complainant’s business. Respondent’s activities unlawfully encroach upon Complainant’s rights by generating advertising revenue off of the goodwill created by Complainant’s marks. Respondent intentionally attracts Internet traffic to the website by creating a likelihood of confusion with Complainant’s mark, in order to increase its revenue.
Further, Respondent had full knowledge of Complainant’s rights in the OVATION mark, and deliberately chose the mark in order to deceive members of the relevant public
Complainant is a United States corporation that is engaged in the production, sale, and distribution of hair care products and has been in business in that field since 2007
Complainant is the owner of the OVATION HAIR mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,142,800 filed November 10, 2011, registered on May 15, 2012).
According to Complainant’s information it commenced using the OVATION marks in commerce in the United States at least as early as September 2007 in connection with the sale and offer for sale of hair care products.
Complainant is the owner the domain name ovationhair.com
Complainant has established common law trademark rights in OVATION HAIR.
Respondent registered the disputed domain name on December 24, 2008.
On the time this decision was issued the disputed domain name was resolving to a web site that disclosed Complainant’s mark.
The site is monetized by pay per click advertisements. The resolving page displays advertisements or links for other hair care companies and products.
Complainant is the owner of the OVATION HAIR mark through its trademark registrations with the USPTO (Reg. No. 4,142,800 filed November 10, 2011 registered on May 15, 2012).
Complainant further claims to own several other well-known U.S. and International trademarks, such as OVATION CELL THERARY and OVATION (“the OVATION marks”).
Previous panels have found that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i) if it can establish its rights in the mark through common law rights.
Complainant claims it has been using the OVATION marks in connection with the sale and offer for sale of hair care products since 2007.
Complainant further claims to have exerted significant effort and resources to advertise and promote its goods and Complainant’s advertising expenditures have totaled well over 100 million dollars
The Panel accepts those evidence and the conclusions drawn from it and considers that previous panels have found that complainants can establish common law trademark rights through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark.
The Panel finds that on this basis Complainant has established common law rights in the OVATION marks including the OVATION HAIR mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent is using Complainant’s trademark.
(b) Respondent has not monitored the disputed domain name since it was taken down in 2009
(c) Respondent has since then used the disputed domain name to resolve to a website that is monetized by pay per click advertisements. The resolving page displays advertisements or links for competing hair care companies and products.
(d) Complainant has no affiliation with Respondent. Because Complainant claims that Respondent was not authorized to register a domain name containing Complainant’s registered mark, and there is no evidence that suggests Respondent is commonly known by the disputed domain name, the Panel finds Respondent is not commonly known by the domain name at issue under Policy ¶ 4(a)(i).
(e) Further, the advertisements or links displayed in the disputed domain name lead consumers to competing hair care companies and products. The Panel finds that Respondent’s use of the domain to provide advertisements and links to site competing for Complainant’s business does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)
Given that Respondent owns numerous domain names it is unlikely that it is not aware of how to control the content of the disputed domain name.
The Panel finds that despite Respondent’s claims that it at one time used the disputed domain name in connection with its business, the disputed domain name has been used to park a website containing monetized links.
The Panel notes that Respondent has not offered any proof in the form of evidence of his legitimate intent to use the disputed domain name.
All of these matters go to make out the prima facie case against Respondent.
Complainant has thus made out the second of the three elements that it must establish.
Although not a conclusive argument, the fact that Respondent owns 107 domain names, according to a reverse WHOIS lookup, might be considered a pattern of Respondent’s history of purchasing domain names and not using them for legitimate business purposes.
However, despite the fact that the Panel has visited some of these domain names and verified that many are currently being used to park websites containing monetized links, it is not well clear whether Respondent’s indeed using the appointed domain names for illegitimate business purposes.
Nevertheless, the Panel finds that Respondent has not monitored the disputed domain name since 2009 and has allowed it to be “parked”.
The Panel also finds that the provision in the registration agreement between Respondent and the domain name’s registrar indicates that the registrant is indeed responsible to determine whether the domain name registration or use infringes on another’s rights, and the registrant is responsible for maintaining the website and the content within it. Previous panels have established that maintaining a parked webpage at a disputed domain name is sufficient to make a finding of the respondent’s bad faith registration and use, regardless of the entity that initiates the parked content
Therefore, in view of Respondent’s negligence in monitoring the disputed domain name as well as the above evidences, the Panel finds that Complainant has made out the third of the three elements that it must establish.