By Zak Muscovitch.

Recently I reviewed a UDRP decision that deserves additional attention and respect. The case was Riveron Consulting, L.P. v. Stanley Pace, and it was decided by Paul M. DeCicco in 2010. It concerned the domain name, RIVERON.COM. Of particular interest however, was how the Panelist approached the issue of “Legitimate Interest” in a logical fashion.

For a complainant to succeed in a UDRP case, the complainant must of course meet each part of the three-party UDRP test. The second part of the UDRP requires the complainant to prove that the respondent (the domain name registrant) has no rights or legitimate interest in the disputed domain name.


In examining this part of the UDRP test, the Panelist noted the well-established and widely accepted general approach to the burden of proof to be employed when determining if a respondent has no rights or legitimate interest:

“Complainant must first make out a prima facie case showing that Respondent lacks rights  and legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the  Policy. The threshold for such prima facie showing is low.  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).  Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights and legitimate interests in the at-issue domain name.”

Accordingly, the Panelist noted that it first falls to the complainant to make out the appearance of a case that the respondent has no rights or legitimate interest. It is only once the complainant accomplishes this first task, that the respondent must then answer the case by proving its rights or legitimate interest. So, for example, typically a complainant will make a variety of basic allegations that constitute a “prima facie case” that the respondent has no legitimate interest (such as the respondent is not known by the domain name, has not used the domain name, or has no license to use the mark corresponding to the domain name, etc.). Then, typically, the respondent will have to rebut this prima facie case, by showing that it does indeed have a legitimate interest, such as for example, by having used the domain name in a bona fide fashion for business, email, etc.

But it is the next part of the Panelist’s analysis that really stands out and is quite compelling:


“Because the <riveron.com> domain name registration pre-dates Complainant’s trademark registration as well as Complainant’s first use of the  RIVERON mark… Complainant logically needs to show either that it had common law trademark rights in RIVERON at the time the disputed domain name was registered despite the first use date reflected on its USPTO registration…

Without evidence of either Complainant’s trademark rights at the time of the at-issue domain name’s registration, or a showing that Respondent somehow lost any rights and interests in the domain name, there is no foundation from which to conclude that Respondent is, or was, legally bound to license the mark from the Respondent. 

If Respondent had no duty to license the domain name before registering it, then the fact that there was no license from Complainant and the fact that Respondent did not commonly go by the domain name, are each ultimately immaterial regarding paragraph 4(a)ii.”


The Panelist is essentially saying, that logically, a complainant simply cannot make out a prima facie case against a respondent, i.e. cannot claim that the respondent has no rights or legitimate interest in a domain name, when at the time of registration, the complainant itself had no rights or interest in a trademark corresponding to the domain name. In other words, it is preposterous to claim that a respondent has no right or legitimate interest in a domain name, when at the time that he registered it, the complainant was not even in existence, and accordingly, such a preposterous claim surely cannot constitute a “prima facie case”. Who is the complainant to say that the respondent has no rights or legitimate interest in a domain name that was created before the complainant was even incorporated or used a corresponding trademark, for example? 


Usually, panels will just take a look at how the domain name was used by the respondent since it was registered. If it was not used at all, or if it was used for PPC advertising alone, often a panel will find no legitimate interest, despite plenty of cases to the contrary. But what this Riveron case shows, is that logically, a panel should first determine if the complainant can even meet the prima facie test by showing its own rights at the time of domain name registration, before even looking at how the respondent has used the domain name. If it was any other way, it would be illogical, as in the case of a domain name which precedes a trademark, as between the respondent and the complainant, there is only one party that could conceivably have any rights or interest at all; and that of course must be the respondent, since the complainant had no rights at all at that time.


 


By Zak Muscovitch.

One of the great things about registering new gTLD’s is that you sometimes can find out what happened to the last guy who tried the same thing with the .com version. I am usually in a good enough mood to happily answer general domain name law questions, but my mood can change when someone spends all of $10 or whatever on a new gTLD which is clearly a trademark-infringing cybersquat, and then turns to me for advice on ‘what they should do’, or even, to ‘help them sell it’.

The explanations and rationalizations provided by such registrants of clearly infringing new gTLD domain names are sometimes amazing:

1.  It was available so I registered it.

2.  I registered it because Coca-Cola’s marketing department failed to come up with the brilliant idea, so I thought I would sell it to them for a million dollars.

3.  I wasn’t going to use it to compete with Coca-Cola.

4.  I heard that someone sold another Coca-Cola domain name to Coca-Cola for a million dollars.

5.  If I wasn’t supposed to register it, why did GoDaddy let me do it?

6.  Shoot, if I have to give up this Coca-Cola domain name, then what am I supposed to do with the other 487 Coca-Cola domain names I registered?

7.  So Pepsi.club is OK?

8.  Who is going to reimburse me for this error?

9.  Coca-cola doesn’t just mean the soft drink.

10. All I am asking for is to be reimbursed for my time and ingenuity; $150,000.00.

Now, I agree that one of the great things about domain name speculation is that for $10 it is indeed possible to buy a domain name that can be flipped one day for a lot of money. It happens. Of course, it happens more often to people who paid the $10 back in 1997 and have held on to the domain name ever since. And it happens almost never to people who register clearly cybersquatted domain names. The point is that domain name speculators who are new to the industry and who are interested in investing in new gTLD’s, should do a little homework before spending even $10 on a domain name, particularly if they don’t know what to do the next day when Coca-Cola sends them a C&D and demands the transfer. It’s not right to need $400 worth of legal work to deal with a $10 problem, especially when it is avoidable.

One thing that they can do, is check out UDRPSearch.com and enter in the key word or brand, and see what happened to the last guy that tried registering a similar domain name in one of the “legacy” TLD’s or ccTLD’s, such as .com or .eu. For example, this fellow registered Coca-cola.eu.com, despite his valiant arguments which were that;

a) the disputed domain name was available without restrictions and that it was bought legally and in good faith; and

b) the Complainant had been asked only to reimburse the cost of the disputed domain name and costs incurred, thereby making a small donation to the first Respondent’s new political party in the U.K.

Same thing happened in this case regarding coca-colalife.com, but the registrant’s arguments were even more incredible! The registrant contended that:

a) The words “coca”, “cola” and “life” predate the Complainant. The Complainant merely joined three descriptive words together. The fact that the Complainant’s mark is old and famous does not change history or the reality of the mark’s origin;

b) The Domain Names are being used in connection with a bona fide offering of design and consultancy services with no relation to the COCA-COLA mark. Almost all of the Complainant’s COCA-COLA LIFE domain names were registered after the Domain Names; and

c) Respondent has never contacted the Complainant to attempt a sale or demonstrate any intention to profit from the Domain Names.

As you can see, one of the great things about registering new gTLD’s, is that many, many .com registrants came before you, and were the guinea pigs trying out “innovative” defence arguments. Accordingly, check to see what happened to the last guy that tried registering a similar domain name.


By Zak Muscovitch.

It happens. A lawyer sends a C&D letter, or serves a UDRP that relies on a “Registered Trademark”. It shows up in the USPTO database, but it may not really be a trademark. How is that possible? When the “trademark” is registered on the “Supplemental Register”.

The United States Trademark Act provides for the registration of trademarks on either the “Principal” or “Supplemental Register”. Unlike Principal Register registrations, Supplemental Register registrations do not enjoy any prima facie or conclusive presumptions of validity or exclusive right to use the mark.  
When the USPTO examiner indicates that the applied-for mark is clearly descriptive and as such does not qualify to be registered on the Principal Register, an applicant may choose to have its mark recorded on the Supplemental Register.
As held in First American Real Estate Solutions L.P. v. Manila Industries, Inc., NAF Claim Number: FA0607000758614¸ “Under United States trademark law, “[r]egistration of a mark on the Supplemental Register does nothing to enlarge the substantive rights of the registrant. Clairol, Inc. v. Gillette Co., 389 F.2d 264 (2d Cir. 1968). To the contrary, registration on the Supplemental register shows that at the time of registration the mark was descriptive and had not acquired secondary meaning. CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Oct. 30, 2001)”. Registration of a mark on the Supplemental Register is an admission that the mark is “merely descriptive” (See for example; America’s Community v. Charles R. Wing , WIPO Case No. D2000-1780; and Quester Group, Inc. v. DI S.A.,WIPO Case No. D2010-1950).
As held in, Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668, “it is well settled that a Supplemental Registration in the U.S. is not sufficient in itself to establish that a Complainant has rights to a mark for the purposes of the Policy”[1]Registration of a mark on the Supplemental Register is not evidence that a complainant owns rights that come within the meaning of “rights” in Para. 4(a)(i) of the Policy (See; Jahnke & Sons Construction, Inc. v. Trachte Building Systems, Inc.,NAF Claim Number: FA0910001292233).
Accordingly, just because a party has a “registered” trademark does not mean that it is an actual distinctive mark if it is only on the Supplemental Register, absent any proven common law trademark rights. Moreover, if a Complainant has no registered trademark rights whatsoever as far as the UDRP is concerned, it cannot rely upon its Supplementary trademark registration in order to try to meet the first part of the three-part UDRP test. 

Always check to see if the trademark that is being relied upon is on the Principal or Supplemental Register.



[1] See also, Advance News Service Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-1475 (holding that a Supplemental Registration for RELIGION NEWS SERVICE did not provide sufficient rights under the Policy to confer standing); PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437 (holding that a Supplemental Registration for MOBILE MALL did not provide sufficient rights under the Policy to confer standing); Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (holding that a Supplemental Registration for SCUBADIVING.COM did not provide sufficient rights under the Policy to confer standing); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) section 1.1.

By Zak Muscovitch.

Let’s start with the meaning of the word, “Meshugas” (pronounced Meshoo-gahz”). Meshugas refers to something that is “meshuga”. Meshuga, a Yiddish word, refers to something that is “crazy, foolish, or senseless”.  Unfortunately, there is no monopoly on the word, meshugas. But there supposedly is, on the word, “realtor”.

According to the U.S. National Association of Realtors (NAR), they are the only people who are entitled to use or license the use of the word, “realtor”, as:

The term REALTOR® is a registered collective membership mark that identifies a real estate professional who is a member of the National Association of REALTORS® and subscribes to its strict Code of Ethics.

The word however, in ordinary common parlance, of course refers to a real estate broker or real estate agent.  However, the NAR obtained a US registered trademark in 1950, for REALTOR and for REALTORS, referring to what else…real estate brokerage services, etc.

Apparently, it is a “made up” word.  According to The Word Detective, “it all began back in 1916, when C.N. Chadbourn, Chairman of the National Association of Real Estate Boards (precursor of the NAR), declared, “I propose that the National Association adopt a professional title to be conferred upon its members which they shall use to distinguish them from outsiders… the title of ‘realtor’”. 

The precise meaning of the word was debated on the floor of the United States House of Representatives, according to The Word Detective; a “Rep. Curry (R-Ca.),  explained that the word “comes from the Spanish words ‘real’ meaning ‘royal’ and ‘tor’ meaning ‘bull’.” According to the New York Times of May 18, 1922, Mr. Raker, shouting to be heard above the uproar on the House floor, responded, “And that’s just what these realtors have been giving us…”

Nevertheless, The Word Detective states that the word invented word simply refers to “the fragment “realt” from “realty” with that dignified agent suffix “or” tacked on.”

In Canada, “realtor” is also a registered trademark, but of the Canadian equivalent of the NAR, Realtor Inc., formerly The Canadian Real Estate Association (CREA). They too have a trademark for REALTOR, but only apparently going back to 2005, for of course, “real estate brokerage services”, etc. The registration claims that it was used in Canada since as early as 1921, and the registration is a “certification mark”, for members comprising; (1) Real Estate Boards and Associations; and (2) licensed real estate brokers/agents and salespersons who are members of Member Real Estate Boards and Associations.

According to CREA,“the term [realtor] is now ubiquitous enough that most people have at least a basic idea of what they think those terms represent.” Of course we do. It means, a “real estate agent”, doesn’t it? Certainly not according to CREA. In fact, they expressly state the exact opposite: 

“The term REALTOR® is not synonymous with “real estate agent” or “broker”. The trademark REALTOR® identifies only those real estate professionals who are members of the Canadian Real Estate Association and, as such, subscribe to a high standard of professional service and a strict Code of Ethics.”

Quite remarkably, the CREA exclaims on its own website, that, “You might be surprised to know that both [REALTOR and MLS] are registered trademarks owned by the Canadian Real Estate Association (CREA), and used under license by real estate boards and associations across Canada.Surprised, yes indeed we are, but why on earth would CREA think anyone else would be surprised? Could it possibly be, because it means “a real estate agent”, to most average people? 

Although I won’t get into the meshugas with the term, “MLS” now, it is worth mentioning that CREA has some very interesting things to say about this word:

“Now let’s talk about the term MLS®. It’s not a noun, or a thing, but an adjective that refers to a standard of service – the MLS® Services – that are provided by CREA members. Local real estate boards or associations license the term MLS® from CREA to use to describe their co-operative selling systems, referred to as MLS® systems.” 

Wow, CREA sure has to go to some great lengths to explain to the public that their marks are not words. Most real brand owners don’t need to do that…

Interestingly, the Merriam-Webster dictionary (“America’s leading and most-trusted provider of language information”, says that the word, “realtor” (since when are trademarks in the dictionary? The word, “Pepsi” is not listed in this dictionary, and the word, “coke” is listed as referring to the residue of coal), is a word “used for a real estate agent who is a member of the National Association of Realtors”. 

However, in an interesting contrast, the UK-based Collins Dictionary, which is arguably equally famous as the Merriam-Webster one, succinctly states that the word, “realtor” is a simple noun and refers to an estate agent, especially an accredited one, and no reference at all to the NRA or any other governing body for real estate agents. 

Fortunately, somebody once tried to do something about the REALTOR trademark, at least in the U.S. According to Wikipedia, in 2003, a Jacob Zimmerman, who was a student no less, and not a member of the NAR, petitioned the USPTO to cancel the REALTOR and REALTORS trademarks on the basis that they were generic. Unfortunately, he was not successful as the USPTO ruled against him. According to the USPTO decision, upon graduating from Cornell, Jacob was “in the business of buying and selling website addresses containing the word ‘realtor’ and ‘realtors’.

Jacob asserted “that the marks were generic bcause, in common parlance, the words “realtor” and realtors” are synonymous with real estate agent or real estate agents.” Jacob further alleged that:

“Respondent’s registrations and trademark policies preclude him from offering his websites to real estate agents: Petitioner has been injured in his business by the continuance of the registration of the “realtors” mark. Potential purchasers of petitioner’s web site are mainly real
estate agents. Many such realty agents are aware of NAR’s threats to file suit against any person using the term “realtors” in web site names, and are therefore unwilling to purchase any of petitioner’s web site names. In addition, realty agents are unwilling to pay petitioner for placement on such web sites as bostonrealtors.org because of the threat by NAR to enjoin the use of such web site names. NAR’s continuing registration of the “realtors” mark has severely lowered the demand for petitioner’s web site names and petitioner’s promotional services.”

In response, the NAR contended that its registered collective marks are distinctive, not generic. And the three judges agreed. He found inter alia, that,

“The evidence establishes aggressive marketing of these marks and constant policing of media usage of these terms, supporting respondent’s position that it has preserved for the term no small degree of proprietary meaning, even among general news outlets.

Against this backdrop, we find that this record supports a decision protecting the critical interests of the users of these marks within the real estate community. When real estate professionals see and use these identifiers, an entire packet of information is succinctly
conveyed among them. Hence, they should be permitted to continue making knowledgeable and informed decisions based on the source-indicating functions of these marks. We find
that this result is entirely consistent with the holding in the Bayer case.20 Furthermore, there is insufficient probative evidence in this record on which we could base a
finding as to the perceptions of the “Realtor marks” among members of the general public.
Accordingly, based upon all the evidence in this record, we find that the marks REALTOR and REALTORS continue to function as collective service marks and have not become generic terms.”

So, we can see that at least according to the NRA and CREA, the word, “realtor” is not a noun or a regular descriptive word, but a trademark and certification mark, respectively. But CREA is not content with that; Article 26 of its code of ethics (called the “REALTOR® Code”, of course), CREA places strict requirements on its usage, even by its own licensed members. For example, according to the CREA code of ethics, aside from requiring important things like “protecting and promoting the interest of clients” (Article 3), “discovering facts pertaining to properties” (Article 4),  and “disallowing a personal interest in a property without disclosure” (Article 11), realtors are forbidden from the following:

“26.1 A REALTOR ® shall not challenge the validity of CREA’s Trademarks.

26.2 A REALTOR® shall not use any of CREA’s Trademarks in domain names, e-mail addresses or metatags unless specifically authorized to do so by CREA policies.

26.3 CREA’s Trademarks are not to be used as hypertext links in Internet websites.

26.4 A REALTOR ® shall not use, display, or attempt to register as trademarks any word, phrase, term, initials or design marks that incorporate, or are confusingly similar to, any trademark of CREA.

26.5 A REALTOR ® shall not incorporate into corporate or trade names any trademark of CREA or any confusingly similar mark.”

From the above, one wonders what an accredited real estate agent who is designated a “REALTOR”, can do other than perhaps whisper the term in the ear of a client.

Which brings us to domain name disputes. According to UDRPSearch.com, the NAR has brought a total of 7 UDRP cases involving domain names comprising the word, “realtor”. It won four cases incoluding gayrealtor.com and realtor.biz, terminated two others, and lost one; realtors.biz. In the latter, it took a Korean UDRP panelist, Young Kim, to point out to the NAR that the term, “realtor” is an ordinary noun and means a real estate agent, and is also a term used by many people without referring to the complainant’s trademark:

“The term “realtor” is also listed in the dictionary as an ordinary noun to indicate a real estate agent, in addition to meaning the Complainant and there are multiple companies and persons other than the Complainant that have registered and own multiple domain names and trademarks related to “realtor(s)”. Namely, it is thought that the term “realtor” may have been recognized only as the trademark of the Complainant at first but then its use became ordinary and it gradually lost its function as a trademark and has become an ordinary noun. Therefore, there is not enough proof to say that the Respondent knew of the existence of the Respondent and then registered this Domain Name with the intent of acquiring unjust enrichment from it.”

Unfortunately, that was the very last case that the National Arbitration Forum had Mr. Kim adjudicate, as shown in a search of the NAF database.

In my view, the “REALTOR” mark is ripe for cancellation, since it is so widely used in my opinion, by people who do not use it as a trademark whatsoever. It has become generic in my opinion, despite the efforts that have apparently been made by organizations such as CREA and the NAR. In my opinion, it is meshuga to pretend that “realtor” is some kind of super-exclusive professional designation, when in reality it likely just means a real estate agent. What does it accomplish? Nobody is allowed to act as a real estate agent unless they are licensed anyhow, so why go to such lengths to protect a mere word? Doesn’t make any sense, other than if one considers that it may be a mere power-grabbing tactic by the real estate associations.











Written by Zak Muscovitch

The most common misunderstanding that I see on a regular basis in terms of people using the term, “cybersquatting”, is that people do not realize that this word has a very specific meaning.

Many people thing that ‘anyone who has registered a domain name that corresponds to that person’s business name’ is a “cybersquatter”. But that is wrong. Cybersquatting is a special term that has a very specific meaning; Cybersquatting only occurs when someone has registered a domain name because they knew of your well known business name or trademark, and speciefically registered the domain name to prevent you from registering it, extort you, or otherwise interfere with your business.

Accordingly, if the domain name was registered BEFORE you adopted your trademark or before you acquired common law rights in your business name through extensive advertising, etc., then it is simply impossible that this is a cybersquat, as it would have been impossible for the domain name registrant to have specifically targeted your business name or trademark, since it didn’t even exist then.

When it is not cybersquatting, it is usually a case of you wanting the domain name but having no legal right to it. Then, your best course of action is to buy the domain name, or choose another one altogether.


Perhaps the greatest domain name dispute related skill that I am able to offer my clients, is to properly counsel them on their chances for winning a domain name dispute.

After having helped thousands of clients with domain name dispute issues since 1999, I have developed a pretty good nose for gauging the chances of winning or losing a domain name dispute. Once in while a “curve-ball” is thrown, and once in a while the case falls within a small “grey area”, but for the most part, I feel comfortable telling a client, in advance, whether they will win or lose a case.

I am able to do this because I am very familiar with cases that have come before and have already been decided, and have a good feel for what facts are insurmountable and will nearly inevitably lead to the decision that will be made.

For example, when I am contacted by a brand or trade-mark owner, I research the domain name that they are targeting, and determine whether they have “no chance”, absent a careless UDRP panelist, because simply, the targeted domain name was registered prior to the brand even being a twinkle in the eye of the trademark owner. It is the domain name attorneys who do not do this important service for their clients, that end up getting “Reverse Domain Name Hijacking” decisions made against them.

Similarly, when a domain name owner contacts me about a pending domain name dispute notice that he or she received notice of, I research the trademark rights belonging to the complainant, and am usually able to tell the client right away, whether this is a “winnable” case, or whether there is “no hope”. If for example, a domain name owner registered a domain name years after a famous brand was registered as a trademark, and was using the domain name in an infringing manner, and admits to being aware (or was obviously aware) of the pre-existing trademark, then there is no hope of winning the case, absent an errant decision.

There are some cases that fall into a grey area, but I am usually able to also give the client good advice on these cases too. Not every “potentially” winnable case deserves to be defended. One must take into account the costs, the importance or value of the domain name in dispute, and the risk of having a decision go against you.

Accordingly, when a client comes to me with a domain name dispute, I will simply not accept the case unless it is a winnable case, and if it is in the client’s best interest to defend. I hope that this also helps my clients because Panelists will realize that I do not bring frivolous complaints or responses.

So, if I take your case, it means that you have an excellent chance of winning your domain name dispute.

Zak Muscovitch


GOOGLE just lost a dispute over the domain name, Oogle.com. This is the third time that I assisted a client in fending off a UDRP from Google The other cases were over Groovle.com and Goggle.com. Thank you to the Panelists for their time and decision and in particular to their well reasoned explanation of “beneficial ownership” which adds a lot of clarity to UDRP law.. The text of the case is below:

national arbitration forum

 

DECISION

Google Inc. v. Blue Arctic LLC
Claim Number: FA1206001447355

 

PARTIES

Complainant is Google Inc. (“Complainant”), of Mountain View, California, USA, represented by Anne H. Peck, Gavin L. Charlston and Morgan A. Champion of Cooley LLP, Palo Alto, California, USA.  Respondent is Blue Arctic LLC (“Respondent”), of Kissimmee, Florida, represented by Zak Muscovitch of The Muscovitch Law Firm, of Toronto, Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oogle.com>, registered with Moniker.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Douglas M. Isenberg (chair), Reinhard Schanda and Professor David E. Sorkin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2012; the National Arbitration Forum received payment on June 6, 2012.
On June 8, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <oogle.com> domain name is registered with Moniker and that Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oogle.com.  Also on June 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On July 2, 2012, Respondent submitted a Response.
On July 9, 2012, Complainant submitted an additional statement.  On July 10, 2012, Respondent submitted an objection to Complainant’s additional statement and, “in the alternative,” an “Additional Response of the Respondent.”  The Panel determines that these additional documents were timely submitted pursuant to the National Arbitration Forum’s Supplemental Rule 7 and, accordingly, the Panel accepts them.
On July 12, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg as the Chair of the three-member Panel along with Reinhard Schanda and Professor David E. Sorkin as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant
In its Complaint, Complainant contends, in relevant part, as follows:
·         Complainant’s search engine “has become one of the largest, most highly recognized, and widely used Internet search services in the world.”
·         “The GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin,” and Complainant’s “services have been publicly available under the GOOGLE mark since 1997.”
·         “As reflected in [Complainant’s] trademark registrations and affirmed by [Complainant’s] officers in filings made to the U.S. Patent & Trademark Office under penalty of perjury, [Complainant] has used the GOOGLE mark in U.S. commerce in connection with its services since September 1997 and in connection with other products and services since early 1999.”
·         The Disputed Domain Name was “originally registered on February 7, 1999” and “transferred to the current registrant in late 2004.”
·         The Disputed Domain Name “resolves to a variety of adult websites” and “has previously been used to host websites that blatantly copy the Google logo, recreate the overall look and feel of the Google website, and create confusion as to whether the website is sponsored by, endorsed by, or affiliated with Google.”
·         The Disputed Domain Name is currently being offered for sale “on a common domain name auction site” for $300,000.
·         The Disputed Domain Name is confusingly similar to the GOOGLE trademark because it “merely delete[s]” one letter from a famous mark and “appears intended to capitalize on frequent user misspellings or typographical errors.”
·         Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,  “the GOOGLE Mark is so well known throughout the world that it is difficult to conceive of any purported rights or legitimate interests Respondent may claim in the Domain Name”; “Respondent is not commonly known as the Domain Name or any name containing Complainant’s GOOGLE Mark” because “there is no indication it is known by that name”; “Complainant has not authorized or licensed Respondent to use any of its trademarks in any way”; the Disputed Domain Name “currently resolves to a website offering sexual services and displaying pornographic and profane content”; the Disputed Domain Name is “an example of typosquatting”; and because “the Domain Name has historically resolved to websites mimicking the look and feel of Google’s home page . . . Respondent is now and has historically been capitalizing on the near identity between the Domain Name and Google’s famous trademark to generate revenue from consumers who are seeking Google’s services and arrive at Respondent’s website by mistake.”
·         Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “[t]he fame and unique qualities of the GOOGLE Mark, which was adopted and registered by Complainant years prior to the registration of the Domain Name by Respondent, make it extremely unlikely that Respondent registered the Domain Name without independent knowledge of Google”; “even constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith”; “[p]rior use and registration of the Domain Name by a third party is irrelevant for purposes of evaluating Respondent’s bad faith”; “Respondent’s current use of the Domain Name to divert Google’s users to a fee-based sexual networking site that contains pornographic and vulgar content establishes Respondent’s bad faith”; “Respondent’s recent use of the Domain Name to obtain users’ personal information through scam survey sites is evidence of phishing and represents bad faith” (internal punctuation omitted); “it is impossible to conceive of any potential legitimate use of the Domain Name”; “[w]here a domain name is so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith” (internal punctuation omitted); “Respondent’s use of Complainant’s famous trademark in the Domain Name, combined with the offer to sell the domain for hundreds of thousands of dollars, amounts to bad faith use of the Domain Name”; and ““registration and use of a domain name that differs from Complainant’s mark by only the deletion of one letter indicates ‘typosquatting’, which is evidence of bad faith registration and use” (internal punctuation omitted).
B. Respondent
In its Response, Respondent contends, in relevant part, as follows:
·         A declaration provided by Christopher Neuman states that he is “the sole member and manager of” Respondent and that he “personally registered” the Disputed Domain Name on or about February 7, 1999, when, at the age of 13, he “carried on business under a fictional unregistered business name, namely Fusion3k Designs, and accordingly registered the Domain Name under Fusion3k Designs.”
·         In the declaration, Neuman states that he has “been the continuous and uninterrupted beneficial owner of the Domain Name since I originally created it on February 7, 1999,” and that the “only reason why I ever changed the nominal registrant details was to reflect my current business name, which evoled from Fusion3k Designs to Blue Arctic (another unregistered business name) to most recently Blue Arctic LLC, a registered company.”
·         The declaration further states: “My reason for registering the Domain Name was because in or about 1998 or 1999, I had become acquainted through the online world of software programming and website design, with another young programmer named Justin Tunney, who went under the online moniker of ‘Oogle’ or ‘Criminal Oogle’.”
·         The declaration further states: “Through my friendship with Oogle, I learned that Oogle had a personal website associated with the domain name, [<oogle.net>], which Oogle had selected due to Oogle’s online moniker of ‘Oogle’.  I noticed that Oogle had not registered [<oogle.com>] and proceeded to register the Domain Name with the intention of collaborating on a website with Oogle.”
·         The declaration further states: “At no time prior to my registration of the Domain Name did I ever for even a second consider that [<oogle.com>] was an attractive domain name due to the existence of [<google.com>] or the Complainant’s trademarks.”
·         The declaration further states that Neuman previously used the Disputed Domain Name in connection with an “online shopping website” and later intended to use it as “a forum for programmers.” 
·         The declaration further states: “In 2010 there were a few weeks where the Domain Name displayed a certain logo which was created and uploaded by a friend of mine, David Shiffman.  This logo resembled the Google logo but it had originally had a playful tag line of, ‘Due to the economy the G has been laid off’.  At the time we thought it was a funny and innocent usage, however upon reflection, I had it taken down after only a matter of weeks.”
·         The declaration further states: “The Domain Name was also temporarily used in connection with adult matchmaking services, but I thought that this was lawful and permissible.”
·         The name “Oogle” “has been used by numerous parties and business for many years, in connection with all manner of goods and services that have absolutely nothing to do with the Complainant.”  In support thereof, Respondent cites the following U.S. trademark registrations: Nos. 820,267; 1,329,546; 1,392,389; 2,496,755; 3,889,157; and 2,883,240.
·         “Harvard University has published a study which shows that over 15% of Americans use the term ‘Oogle’ as a word to describe gawking at someone, and 4.5% of Americans use the term ‘ogle’ and ‘oogle’ interchangeably.”
·         With respect to paragraph 4(a)(i) of the Policy: “The Respondent acknowledges that the Complainant has several registered trademarks for GOOGLE in connection with its widely known search engine and related services” and “[t]he Respondent further acknowledges that the Domain Name is sufficiently ‘confusingly similar’ to the Complainant’s current trademark rights for the purposes of meeting this part of the three-part test under the UDRP, based upon the Complainant’s date of first use of its registered trademarks.”
·         With respect to paragraph 4(a)(ii) of the Policy: “Years before any notice of this dispute, the Domain Name was used in connection with a bona fide offering of goods and services, namely the shopping website from 2000-2002 . . . and the programming related website from 2002-2003.”
·         With respect to paragraph 4(a)(iii) of the Policy: The Disputed Domain Name could not have been registered in bad faith because “the evidence shows that there can be no doubt that the genuine reason for registering the Domain Name in the first place, had nothing to do with the Complainant, who was barely known at that time in 1999”; changes in the name of the registrant of the Disputed Domain Name since 1999 are irrelevant and do not constitute a new registration because “Christopher Neuman has had uninterrupted and continuous beneficial ownership of the Domain Name from its original creation to-date.”
C. Additional Submissions
In its additional submission, Complainant contends, in relevant part, as follows:
·         “[O]ther than the testimony of Mr. Christopher Neuman, self-identified as the ‘sole member and manager’ of Respondent, Respondent provides no documentary evidence setting forth the ownership of the Domain Name prior to December 13, 2002, or the transfer of ownership from Fusion3k Designs, the owner of the Domain Name as of that date, to Respondent.”
·         “[T]he uncontroverted evidence establishes that Respondent has, since coming into possession of the Domain Name in late 2004, repeatedly and willfully used the Domain Name to take advantage of Google’s users and to trade off the goodwill in and extensive investment Google has devoted to the protection of the famous GOOGLE Mark.”
·         “[W]hile Respondent goes to great efforts to cast itself in a positive light, its knowing and willful abuse and deception of Google’s users over the course of many years, for its own financial gain, demonstrates a pattern of behavior that undermines its claims of good faith and makes clear its wrongful intent and motivation in registering and using the Domain Name.”
·         Complainant sent a demand letter to Respondent in September 2009; initially, Respondent offered to sell the Disputed Domain Name for $600,000 and, later, Respondent stopped used the Disputed Domain Name.  Then, in March 2010, Neuman contacted Complainant and indicated that he was “very interested in setting up a parking page for [<oogle.com>],” which would “give Google full access to the contents displayed on [<oogle.com>].”
·         “[T]he GOOGLE Mark had become very well known and recognized far prior to February 1999,” so “Respondent’s attempt to deny bad faith on this basis is therefore without merit.”
·         “Mr. Neuman avers that, even as a thirteen-year-old child, he was a ‘programmer and website designer’ and participated in ‘online chats and forum postings’ relating to ‘software programming and website design.’ . . . An individual with such experiences was likely to be highly aware of all available internet search engine options in 1999, and in particular, the well-regarded and highly publicized Google search engine.”
In its additional submission, Respondent contends, in relevant part, as follows:
·         “[T]he earliest available historical Whois information from 2002… clearly shows that Christopher Neuman was the administrator of the Domain Name, with identical address as the registrant, which was an unregistered business name that Christopher adopted at the age of 13.”
·         “[T]here is no reasonable basis for creating the fiction that the name was registered ‘like new’ by a stranger” in 2004.
·         A letter from Respondent’s attorneys dated September 21, 2009, in response to the demand letter sent by Complainant, states: “Our client registered [<oogle.com>] in February 1999 based on the nickname of one of our client’s friends, a programmer who went by the name ‘oogle’ on various message boards in the 1990’s . . . . In registering the domain name [<oogle.com>], our client was not in any way referring to Google, Inc.”
·         “[T]here is nothing inherently wrongful in offering to sell a domain name for in excess of out of pocket expenses, when the domain name was registered in good faith to begin with, i.e. was not registered because someone else‘s trademark rights.”

FINDINGS

The record does not support a finding that the Disputed Domain Name has been registered and is being used in bad faith.  As a result, and for the reasons set forth below, the Panel makes no findings with respect to whether the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights or whether Respondent has rights or legitimate interests in respect of the Disputed Domain Name.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2)  Respondent has no rights or legitimate interests in respect of the domain name; and
(3)  the domain name has been registered and is being used in bad faith.
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy.  Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., D2005-1246 (WIPO June 7, 2012) (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element . . . it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter, D2005-1289 (WIPO Jan. 31, 2006) (finding that, where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”).  Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the third element of the Policy – that is, paragraph 4(a)(iii) – with respect to the Disputed Domain Name, the Panel makes no findings with respect to the first or second elements of the Policy.

Identical and/or Confusingly Similar

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the first element of the Policy, paragraph 4(a)(i), the Panel refrains from doing so.

Rights or Legitimate Interests

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.

Registration and Use in Bad Faith

The Panel initially addresses the issue raised by Respondent that it has been the “beneficial owner”[1] of the Disputed Domain Name since it was created on February 7, 1999, even though the current registrant is identified as Blue Arctic LLC and the original registrant appears to have been Fusion3k Designs.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 3.7, states:
Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.
This consensus view has been adopted in at least a few decisions that have referred to the concept of a “beneficial owner” of a domain name, including Intellogy Solutions, LLC v. Schmidt, D2009-1244 (WIPO Dec. 24, 2009).  In that case, the panel found that a “transfer did not effect any material change in the beneficial ownership of the domain name” given the relationship that one individual had to both registrants, including serving as a sole proprietor “doing business as” one registrant and as CEO of another registrant.
The beneficial owner concept also arose in Justin.tv, Inc. v. Amador Holdings Corp, FA 1436777 (Nat. Arb. Forum May 17, 2012).  There, the panel said:
When assessing bad faith registration, one normally need only trace the registration date back to the most recent transfer of the domain name . . . [but] [t]he strictness of the rule may be relaxed where a respondent can demonstrate that there has been no change in beneficial ownership between initial date of registration and last transfer. 
Although the panel in Justin.tv refused to accept that the current registrant of the disputed domain name had been the beneficial owner since its creation, this refusal was based in part on the presence of “various registrants” through the years, the “repeated use of privacy services” and [s]kepticism at th[e] [Respondent’s] explanation . . . invited by the copycat nature of the Respondent’s website.”
Similarly, in Int’l Truck Intellectual Prop. Co., LLC v. B, D2011-0599 (WIPO June 7, 2011), “the Respondent allege[d] that it has always been the underlying owner of the disputed domain name.”  But, the panel refused to accept this because “the evidence of record does not clearly establish an unbroken chain of underlying ownership” and “[t]here is in fact scant evidence in the record regarding the original registrant’s actual or intended use of this disputed domain name.”
Despite these mixed outcomes, the WIPO Overview 2.0 and the decisions cited above seem consistent on the following: With adequate explanation and in the absence of efforts to conceal a domain name registrant’s identity, the current registrant of a domain name may be considered to have been the beneficial owner of the domain name since its creation date, despite changes in the WHOIS record.  This Panel adopts this view, although it cautions that the rule should be applied only in narrow circumstances where the explanation is not unbelievable and is supported by appropriate evidence.
In light of the above, this Panel finds that the Respondent in this proceeding, Blue Arctic LLC, has been the beneficial owner of the Disputed Domain Name since it was created on February 7, 1999.
Accordingly, the Panel must determine whether the Disputed Domain Name “has been registered” in bad faith when registration occurred on February 7, 1999, despite the Respondent’s subsequent activities. See, e.g., RapidShare AG v. Ilya, D2010-1105 (WIPO Aug. 17, 2010) (“[T]he Complainants have failed to show that there was registration in bad faith”).
It is unclear whether, on February 7, 1999, Complainant had rights in the GOOGLE trademark.  For example, although the Complaint states that “Google has used the GOOGLE mark in U.S. commerce in connection with its services since September 1997,” Complainant apparently did not own any trademark registrations for the mark on February 7, 1999, and Complainant had received only limited media attention by that time.
In any event, regardless of whether Complainant had obtained any common law trademark rights as of February 7, 1999, Respondent has provided a declaration clearly stating that it (as beneficial owner of the Disputed Domain through registration by Mr. Neuman) registered the Disputed Domain Name not “due to the existence of Google.com or the Complainant’s trademarks” but instead due to his relationship with a “young programmer named Justin Tunney, who went under the online moniker of ‘Oogle’ or ‘Criminal Oogle’.”
Despite the Panel’s extreme suspicions about this explanation, the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.  See, e.g., Jumblatt v. SlantMedia, D2012-1011 (WIPO June 28, 2012) (“The Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”); Thump Records, Inc. v. WebPros, FA 446911 (Nat. Arb. Forum May 11, 2005) (referring to “[t]he limited scope of the Policy”); and Shedrick v. Princeton, FA 236575 (Nat. Arb. Forum ) (referring to “the very narrow scope of the UDRP procedure”).
In light of these concerns, this Panel notes that “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development.  The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.”  Trans Continental Records, Inc. v. Compana LLC, D2002-0105 (WIPO Apr. 30, 2002).
In any event, on the record before it, the Panel finds that Complainant has not prevailed in showing that the Disputed Domain Name “has been registered” in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <oogle.com> domain name REMAIN WITH Respondent.
Douglas M. Isenberg (chair), Reinhard Schanda and Professor David E. Sorkin, Panelists
Dated: July 25, 2012


[1] The concept of “beneficial owner” in this proceeding (where the registrant identified in the Whois database has changed prior to the filing of the complaint) is distinct from the concept of “beneficial owner” in cases in which a complaint was filed against a privacy or proxy service (and the identity of the registrant changed after the filing of the complaint).  See, e.g., Baylor Univ. v. Domains by Proxy, Inc., FA. 1145651 (Nat. Arb. Forum Apr. 11, 2008).

In an ICANN WIPO UDRP decision released today, the Complaint brought against the registrant (represented by me) of ARMOURGAMES.COM was dismissed by UDRP Panelist Alistair Payne. The Panelist found, inter alia, that the domain name registrant had a legitimate interest in the domain name because he registered it after conceiving of the domain name, and before the Complainant had used the American spelling, i.e. without the “u”, even though the Complainant had registered its domain name a week earlier. The Panelist found that since the Respondent registered the domain name before the Complainant had acquired any trademark rights in its mark/domain name, the Respondent could not have registered the domain name in bad faith:

There is no evidence that the Complainant had made any substantive use of its domain name or of a corresponding trade mark by this stage. At best the Complainant’s first use date is one week prior to the Respondent’s registration of the Disputed Domain Name, but in all likelihood according to the Wayback machine evidence submitted by the Respondent, the Complainant started actively using its domain name or any corresponding trade mark after this time. Certainly the Complainant had no registered trade mark rights at this time and it seems extremely unlikely on the evidence presented that it had any common law rights either.

This case demonstrates how a Panelist properly interepred the ICANN UDRP as it was intended; narrowly, i.e. it is not intended as a broad trademark enforcement mechanism, but merely to catch so-called “cybersquatters”.

A copy of the decision is available here.


In a remarkable decision by the Federal Court of Canada dated, January 9, 2009, the Honourable Madam Justice Simpson brilliantly dismissed an unmeritorious claim against a domain name owner – even though the domain name owner didn’t even defend.

The publisher of a local Toronto Iranian-Canadian newspaper, called Salam Toronto, had brought an action for trademark infringement against the domain name registrant of SALAMTORONTO.COM.

The newspaper publisher operated under the domain names salamtoronto.net and salamtoronto.ca. The publisher also had a registered trademark for SALAM TORONTO in connection with newpaper publication, since February, 2004. the publisher’s friend had previously registered the disputed domain name, SALAMTORONTO.COM on the publisher’s behalf, but had let it lapse. It was picked up by a “Salam Toronto” Immigration Services.

The Plaintiff publisher brought an action for tradmeark infringement against the domain name owner. The Plaintiff alleged that the domain name, a web site, an automated reply email from the Immigation company, and its letterhead, all “infringed” the Plaintiff’s registered trademark.

The Judge efficieintly and correctly dismissed the claim, even though it was undefended, simply because “”Salam Toronto” was an “inherently distinctive trademark” and was therefore “weak”. Furthermore, and more importantly, there was  “no confusion” between newspaper publication and immigration services.

This is a fundamental tenet of tradmeark law, where a mark is not particularly famous or distinctive, more than one trader can use the mark, albeit in connection with sufficeintly different wares or services.

Good for the judge and congratulations to the domain name owner!


This interesting news item reported by the CBC indicates that a legal opinion obtained in the course of a European Union proceeding, stated that Google Inc. does not violate luxury goods makers’ trademarks when it sells brand names as advertising keywords triggered by internet searches. How sweet it is. The $2500 purse lobby thinks that Google should police their valuable marks, i.e. determine whether a purse is a counterfeit or just your wife’s out of style but genuine article.

I have seen these guys in action; they object when anybody except their own stores and their licensed dealers sell their purses, etc., even though this “grey market” is perfectly legal. We saw them try this in two court cases Canada with Seiko watches and with Toblerone chocolate bars for example…I have also seen them come down hard on mom and pop stores that have a few articles for sale but are not “authorized dealers”, which you do not have to be to seel something in a free country…