- If the only tool you
have is a hammer, then you tend to see every problem
as a nail
--Abraham Maslow
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ARTNEWS.NET
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Artnews,
L.L.C v. Ecorp.com
- TRANSFERRED
Complainant
is publisher of monthly magazine entitled "ARTnews"
and registered ArtNews mark in 1965. Respondent
began plans in 1996 to use the domain name to
feature digital art and was unaware of
Complainant's mark.
Decision:
Complainant has made use of its mark for digital
art since 1991, and Respondent has offered no
evidence of bona fide use of the name for any other
purpose. "Passive holding of a Domain Name
constitutes a use of the name" (apparently a bad
faith use). Respondent has engaged in a pattern of
registration of domain names in order to prevent
the owners of a trademark from reflecting the mark
in a corresponding domain name
- NAF:
FA0095231
(August 22, 2000) - James P. Buchele,
Panelist
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BARCELONA.COM
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Excelentisimo
Ayuntamiento de Barcelona v. Barcelona.com
Inc.
- TRANSFERRED
Complainant
has nearly 1,000 registered marks in Spain which
cover the expression "Barcelona", from 1984
onwards. Respondent and her husband registered
BARCELONA.COM in February 1995 as a source of news
and tourism information related to the city of
Barcelona.
Decision:
It is reasonable to assume that people visiting the
address BARCELONA.COM "would normally expect to
reach some official body or representative of the
city of Barcelona itself." The arbiter did not
consider the operation of a Barcelona portal to
constitute evidence of a legitimate right to the
address.
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BLUEMAX.COM
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Blue
Max Technology v. Compudigital
Industries
- TRANSFERRED
Complainant
uses common law mark for computer-related products
known as Blue Max and reincorporated under the name
Blue Max Technology in 1998. Respondent registered
domain name on May 3, 1996 and began preliminary
development of an auction site under the name in
1999. Complaint contacted Respondent in 1999 and
learned from an employee of Respondent that the
name was not in use. Employee suggested Complainant
submit an offer, but.Respondent ignored multiple
offers ($200-$10K). Respondent submitted no
response to UDRP complaint.
Decision:
"Failure to respond to the Complaint permits the
inference that the use of the Complainant's mark is
misleading and Respondent has no rights or
legitimate interests in the domain name."
"Respondent and its employee admitted that the
domain name was not in use and was not to be used
in the immediate future. This is evidence of bad
faith.... Respondent used the domain name for a
profit by offering it for sale to the Complainant
and the Complainantís competitors for
valuable consideration in excess of out-of-pocket
expenses."
- NAF:
FA0095107
( August 6, 2000) - James A. Carmody, Judge
(Ret.), Panelist
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BODACIOUS-TATAS.COM
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Tata
Sons Limited v. D & V
Enterprises
- CANCELLED
Complainant
Tata Sons, Ltd., founded in 1907, is India's first
integrated steel plant. Tata Sons, a.k.a. House of
Tata, contends that its name is well-known in India
for both high quality and achievement. Tata said
registrant misappropriated the TATA mark with the
sole intention of passing off its erotic and
pornographic services to users of the Internet.
Registrant is an individual from New Jersey who did
not contest the UDRP allegations.
Decision:
Unaware that "tatas" is a synonym for female
breasts, Panelist agreed with Complainant that the
registration and "outspoken sexuality, promiscuity
and pornography under the heading of
BODACIOUS-TATAS.COM" is bound to affect adversely
the value and selling power of the trademark owner.
Tata
Sons has not yet elected to challenge
BODACIOUSTATAS.COM (no dash in the name) or any of
the other 1,700 domain registrations that
incorporate the "tata" character string. A protest
site was immediately established at
BODACIOUS-TATAS.ORG.
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BRIDGESTONE-
FIRESTONE.NET
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Bridgestone
Firestone, Inc., Bridgestone/Firestone Research,
Inc., and Bridgestone Corporation v. Jack
Myers
- RETAINED by REGISTRANT
Complainants
have registered trademarks for Bridgestone and
Firestone since 1921 for rubber tires and other
rubber products. Respondent is a former employee of
the Firestone Tire and Rubber Company, who has been
engaged in a dispute with the Complainants over
pension payments since 1990.
Decision:
Respondent's use of the domain name for criticism
and commentary about the Complainants constitutes
legitimate noncommercial and fair use within the
meaning of the UDRP. Registrant has posted
disclaimers on the home page and has included
criticism so that a reasonably prudent Internet
user can tell that the site does not originate from
the trademark owner. Respondent's use of
[name].NET has not prevented Complainant
from making its commercial presence known on the
Internet (at .COM). "The Panel sees no reason to
require domain name registrants to utilize
circumlocutions like <TRADEMARKSUCKS.COM> to
designate a website for criticism or consumer
commentary. " Although the domain name registered
by Respondent is identical or confusingly similar
to the trademarks in which the Complainants have
rights, the Respondent has legitimate fair use and
free speech rights and interests with respect to
the domain name and has not used it in bad
faith.
- WIPO:
No.
D2000-0190
(July 6, 2000) - Dana Haviland, Presiding
Panelist
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BRISBANECITY.COM
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Brisbane
City Council v. Warren Bolton Consulting Pty
Ltd
- RETAINED by REGISTRANT
Complainant
is Queensland Council of Australia, which
registered EBRISBANE.COM.AU and
BRISBANE.QLD.GOV.AU. Respondent is Warren Boulton.
who asserts he plans to use the domain name as
information portal for Brisbane users when the
market is right. The Council has also filed a WIPO
UDRP proceeding on the domain name BRISBANE.COM.
Panelist Professor Andrew Christie ruled that the
City failed to demonstrate a trademark interest in
the name for the purposes of the UDRP.
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BRUCESPRINGSTEEN.COM
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RETAINED
BY REGISTRANT
Dispute
between musician Bruce Springsteen and jeff Burgar,
whobuilt a fan site around t he domain name but
prominently marked it as unofficial. Two of three
arbiters found Springsteen's attorneys failed to
show that Burgar registered the name in fad faith
or to misleadingly divert customers. Since The
Boss' name turns up "literally thousands of hits"
and partly because the official Web site at
BRUCESPRINGSTEEN.NET is so successful, the two
panelists ruled that the registrant, who has about
200 mini sites available from his principal site at
CELEBRITY1000.COM, could retain the domain name.
Dissent:
"The average Internet user would not sift through
thousands of hits searching for information on
Bruce Springsteen.... Given a vast array of
information on the performer Bruce Springsteen, the
Internet user is more likely than not to associate
BRUCESPRINGSTEEN.COM with commercial activity and
with an official domain name,resolving to an
official Web site."
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CELLO.COM
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Cello
Holdings, LLC v. Lawrence A, Storey, dba
Lawrence-Dahl Co
- TRANSFERRED
Cello
Holdings, LLC has registered trademarks or service
marks in the U.S. for Cello and variants and
licenses them to subsidiary companies in the areas
of audio and video equipment, entertainment
services, and restaurant and bar services.
Registrant admits he tried to sell the domain name
for a proposed price of $3K to $5,500. Complaint
initiated litigation against registrant in October
1997 in the U.S. District Court for the Southern
District of New York under the Federal Dilution
Act. Complainant says it voluntarily dismissed the
case three years later to avail itself of the UDRP
The court dismissed cross-motions for summary
judgment by the TM holder and the domain registrant
and later dismissed the case on a stipulated
judgment under which the domain name registrant
kept the domain and the TM holder's claims were
dismissed with prejudice.. Respondent says that the
order, "acts as an adjudication on the merits of
complainant's claims" and that "cello" is a common
noun.
Decision:
Tribunal accepted the District Court's observations
that a reasonable fact finder could conclude that
Storey, an amateur musician, was aware of the Cello
mark and registered the name with intent to profit
from its sale. Arbiter wrote, " This particular
form of cyberpiracy while novel and brazen, still
violates the provisions of ICANN Policy and is
thereby impermissible. "
Court
Decision: The registrant took the case back to
the U,S. District Court which issued a sanctions
order against Cello Holdings and counsel and
granted Storey's motion for summary judgment,
attorneys' fees and costs. Judge Chin wrote, "Cello
withdrew its claims, only to reassert them some two
months later. Then, despite warnings from this
Court and the opportunity provided by the safe
harbor provision of Rule 11 to re-evaluate its
defense of this action, Cello chose not to withdraw
its answer and persisted in pressing its meritless
arguments and defenses, which were based largely on
factual misrepresentations."
- Lawrence
Storey v. Cello Holdings, 2002 U.S.
Dist.
Lexis 1029, 01 Civ 208 (S.D.N.Y. Jan. 24,
2002)
- eResolution
Decision:
AF:
0506
(December 21, 2000) -
Presiding
Panelist: Hon. Richard D. Faulkner
- Cello
Holdings, LLC v. Lawrence A, Storey, dba
Lawrence-Dahl Co, S.D.N,Y,
No 97 Civ. 7677 (October 1977)
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CORINTHIANS.COM
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Corinthians
Licenciamentos LTDA v. David Sallen, Sallen
Enterprises, and J. D. Sallen
Enterprises
- TRANSFERRED
Complainant
is exclusive licensee of a Brazilian soccer team,
the Corinthians, and the mark CORINTHAO (Portuguese
for Corinthians). Brazilian Law No. 9615 of March
24, 1998 provides protection to the mark
CORINTHIANS. Respondent registered CORINTHIANS.COM
on August 6, 1998 and offered the domain name for
sale to the team owner. At some point, biblical
references were posted on the site. Respondent said
Complainant intentionally inserted 50 suggestive
domains, to which he has no connection to or
knowledge, and that he is making legitimate
non-commercial use of the name. He also said
soliciting a contact name for sale is different
from demanding valuable consideration from
Complainant.
Decision:
Complainant has ignored the hundreds of similar
domain names not associated with registrant.
Complainant's actions "meet the definition of
harassment."However, the biblical references were
posted after the registrant received a cease and
desist letter and "was fabricated to divert
consumers, or more generally the public interested
in visiting what they think is the site of the well
known Brazilian soccer team." Respondent's
unilateral offer to sell the domain name throws
doubts upon its intention for use for a religious
organization.
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COSCO.COM
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China
Ocean Shipping (Group) Co. Ltd v. Cao Shan
Hui
- TRANSFERRED
Complainant
has a registered mark for transport reservation and
broker services. On February 14, 2000, Complainant
inquired the price to purchase COSCO.COM.
Respondent answered, $9K but only to available to
the trademark owner. Complainant filed UDRP
proceeding the same day it received this
reply.
Decision:
Respondent failed to submit evidence of any rights
in the domain name, has no valid IP address
associated with it and is using it in bad faith.
Respondent's answer to the email query indicates
that the name was registered primarily to sell to
the trademark owner.
- WIPO:
No.
D2000-0066
(March 28, 2000) - Hon Sir Ian Barker QC,
Presiding Panelist; Mr Yong Li, Ms Young
Kim
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CRAFTWORK.COM
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General
Machine Products Company, Inc. v. Prime Domains
(a/k/a Telepathy,
Inc.)
- RETAINED BY REGISTRANT
Complainant
has a stylized CRAFTWORK trademark registration
issued in 1990 to identify a products used in the
utility construction field. Prime Domains
registered the domain name on November 4, 1998 as
part of its busines model to register generic door
descriptive domain names, sell them to interested
parties, and develop Web sites for clients. In
response to a query from General Machine,
Respondent offered to lease or sell the domain
name.
Decision:
General Machines' trademark is not fanciful or
arbitrary, and General Machines has submitted no
evidence to establish either fame or strong
secondary meaning in its mark such that consumers
are likely to associate craftwork.com only with
General Machines. The term "craftwork" is in
widespread use in a descriptive sense. That Prime
Domains has offered to sell this descriptive,
non-source identifying domain name does not make
its interest illegitimate.
- NAF
Decision: FA0001000092531
- Marilyn Carney, Arbitrator; Gervaise Davis and
David H. Bernstein, panelists
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CREW.COM
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J.
Crew International, Inc. v.
crew.com
- TRANSFERRED
Complainant
owns trademark registration "J.Crew" for clothing
and catalog services, issued in 1984 and 1985
respectively, Respondent registered CREW.COM on
July 12, 1998. An employee of Complainant invited
Respondent to join Complainant's affiliate network.
Respondent was permitted to posta banner ad on
Respondent's website which was linked to
Complainant's website. When Respondent rejected an
offer by Complainant to purchase the domain name,
Complainant revoked the affiliate status and
subsequently initiated a proceeding under NSI's
Domain Dispute Policy. CREW.COM was placed on hold
status on September 3, 1999.
Decision:
Respondent has failed to show demonstrable evidence
of plans to use the domain name in good faith and
made no bona fide use of the domain name prior to
being contacted to participate in Complainant's
affiliate program. Respondent had constructive
notice of J.Crew;s trademqrk registration as a
matter of United States trademark law. As a result,
Respondent cannot rely on lack of knowledge as a
defense to its conduct. Respondent admits it is
engaged in a pattern of conduct involving the
speculative registration of domain names for
profit. Although General
Machine
appears to be directly applicable to the present
case, "If it is the holding of the panel in General
Machine that the Policy permits speculative
registration of names that happen to be the
trademarks of others without a demonstrable plan
for bona fide use of the domain name, then a
majority of the present Panel must respectfully
disagree with the decision."
Dissent:
" The majority, in an effort to stop a practice
that it seems to take upon itself to believe is an
unstated purpose of the ICANN Policy, has
completely over-stepped its mandate as
arbitrators." It rejects the idea that someone
might not know exactly how he or she intends to use
the domain name, and makes such uncertainty bad
faith registration. The majority identifies as
automatic "constructive" notice of another's
trademark rights but this element would be
satisfied for all registered trademarks by virtue
of the simple fact of registration. A generic term
permeates any analysis for trademark purposes
Complaint is now trying to use the ICANN rules to
achieve what it cannot do by negotiations for the
purchase of the name.
- WIPO
Decision: D2000-0054
(April 20, 2000) - Richard W. Page, Presiding
Panelist; Mark V.B. Partridge, Panelist ;G.
Gervaise Davis III, Dissenting
Panelist
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CURRENT.COM
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Current
USA, Inc. v. Current
Event
- TRANSFERRED
Respondent
registered CURRENT.COM on May 20, 1997. Complainant
owns at least 8 trademarks on "Current" for
stationery and many gift products.
Decision:
Current Event does not appear to be an active
California corporation. Mail to P.O. Box is
returned to sender and phone number is no longer in
service. Respondent had actual or constructive
notice of the trademark registration, "It is
reasonable to assume that Current Event's purpose
was to preclude Current USA Inc. and its
predecessor in interest from using the CURRENT mark
in a domain name and thereby disrupt its
business."
- NAF
Decision: FA94300
(April 17, 2000) - Judge Paul A. Dorf, (ret.),
Arbitrator
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EAUTOLAMPS.COM
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EAuto,
L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea
Enterprises, Inc.
- REGISTRATION RETAINED
Complainant
offers automotive information to companies and
individuals through EAUTO.COM and was issued the
federal registration of the trademark EAUTO on
August 29, 1997. Respondent has been in the
automotive lamp business for over ten years and
registered EAUTOLAMPS.COM in March 1999 for online
sales of auto lamps. Respondent also registered
EAUTOMIRRORS.COM. Respondent identified 50 other
domain names that begin with "EAUTO".
Decision:
EAUTO is a distinctive mark at the weaker end of
the spectrum. Respondent has a legitimate interest
in the name and rebuts Complainant's assertion that
refusal of attempts to amicably settle this dispute
demonstrate bad faith. "A domain name registrant
has no obligation to respond to or even receive
demand letters. To the contrary, an offer to sell a
domain name has frequently been cited as a factor
showing bad faith; Respondent's refusal to engage
in such discussions shows that it had no bad intent
to profit by selling the domain name to the
trademark owner."
- WIPO:
D2000-0047
(
March 24, 2000)
- David H. Bernstein, Presiding
Panelist
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EDDIEBAUER
CAMPING.COM
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Eddie
Bauer, Inc. v. Cole Sales Solutions,
Inc.
- REGISTRATION RETAINED
Cmplainant
has a registered mark for "Eddie Bauer" in
conjunction with camping equipment and argued that
it has exclusive rights to the name. Respondent
registered EDDIEBAUERCAMPING.COM, which currently
resolves to a "placeholder" website that
featuresadvertisements of website host, Respondent
claimed that the parties were in protracted
negotiations for a licensing agreement regarding
marketing of camping equipment and that the domain
registration was made in good faith,
Decision:
Respondent did not acquire any right or legitimate
interest in a name simply because it engaged in
business discussions with the mark owner. However,
respondent alleges the registration was made in
contemplation of an authorized relationship and
with the knowledge of Complainant's representative.
"Registration alone does not necessarily constitute
an act of infringement and no claim is made that it
was intended to block Complainant's use of the
name." Since Complainant's mark does not appear to
extend to the class of services promoted at the
domain name location, this use does not appear to
be fall within the exclusive jurisdiction of
Complainant's mark. Also, Responden reaps no
commercial gain, and under the current situation,
Respondent is protected.
- eResolution
Decision: AF-0243
(July 21, 2000) - Diane Cabell, Presiding
Panelist
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HEWLETTPACKARD.COM
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Hewlett-Packard
Company v. Jeff Burgar d/b/a/ Hewlett
Club
- TRANSFERRED
Complainant
owns 18 U.S. registrations for HEWLETT PACKARD for
computer hardware, software and services, dating
from 1957. Respondent Jeff Burgar d/b/a Hewlett
Club registered HWELETTPACKARD.COM on October 17,
1996. Respondent claims he registered the domain
name for his daughter, owner of Pegasus Bookstore,
which sells Complainant's products.
Decision:
Respondent is not a licensed dealer of
Hewlett-Packard products and has not demonstrated
any rights to the name except to declare that he is
affiliated with the Pegasus Bookstore. Further,
Respondent has engaged in a pattern of bad faith
conduct and has registered more than 1,300 domain
names that correspond to well-known and famous
names without any purported right or interest in
those names.
Dissent
(Froomkin): Domain was registered for a
business purpose but has been on hold since
December 4, 1996 and thus has never been "used" and
it has never been offered for sale, which compels a
verdict for Respondent.
- NAF
Decision:
FA0093564
(April 10, 2000) - Daniel B. Banks, Jr.,
Chairperson; Judge Harold Kalina, (Ret), A.
Michael Froomkin, Professor of Law,
panelists
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