Domain Name Handbook
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If the only tool you have is a hammer, then you tend to see every problem as a nail
--Abraham Maslow


Artnews, L.L.C v. - 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


Excelentisimo Ayuntamiento de Barcelona v. 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.


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


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.


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


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.



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."


Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club - TRANSFERRED


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)


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.


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


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 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


J. Crew International, Inc. v. - 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


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


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


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



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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