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ICQPLUS.COM
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RETAINED by REGISTRANT
Although Complainant, America
Online, has won most of its UDRP actions involving
its ICQ trademark, Respondent Russian programmer
Vadim Eremeev can retain ICQPLUS.COM . The
arbitrator ruled that the domain is used in good
faith by the software programmer to distribute
freeware he created to work with AOL's ICQ instant
messaging program. This is the first decision AOL
has lost over an ICQ-related domain name among the
approximately 30 it has filed with the UDRP.
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JAL.COM
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Japan
Airlines Company Limited v. TransHost Associates,
JAL Systems and John A Lettelleir -
RETAINED by REGISTRANT
Complainant has registered
trademarks for initials "JAL" in the U.S. and
elsewhere. Complainant asserts many customers have
sent e-mails to Registrant's domain address
expecting to reach the airlines. Respondent
registered his initials to market his services not
to interfere with or attract business from the
airline company. He registered JAL.COM in 1993
before commercial use was widespread. He has
registered no other domain names.
Decision: "Given
that the registration of the domain name was bona
fide, the Respondent's subsequent offer to sell it,
does not in itself constitute bad faith."
- WIPO
Decsion: No.
D2000-0573 (August 21, 2000) - Nick
Gardner, Panelist
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JEANETTEWINTER
SON.COM, NET and ORG
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Jeanette
Winterson v. Mark Hogarth - TRANSFERRED
Complainant is author Jeanette
Winters. Respondent is Mark Hogarth, who registered
hundreds of URLs bearing the names of famous
writers.
Decision:
Complainant has not licensed or otherwise permitted
the Respondent to use the JEANETTE WINTERSON Mark.
Panel finds no evidence that Respondent has rights
to or legitimate interests in respect of the domain
names in issue. Ignorance of the law is no excuse.
The Respondent's lack of bona fides is evidenced by
his intention to auction the domain names.
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JIMIHENDRIX.COM
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TRANSFERRED
Complainant is the Estate of Jimi
Hendrix. Panel notes registrant has other vanity
domains, including ELVISPRESLEY.COM and
JETHROTULL.COM. The panel concluded that the
website using JIMIHENDRIX.COM was not a true "fan
club" site but was merely for the purpose of
selling domains and as such the domain name was
registered in bad faith.
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JT.COM
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Japanese
Tobacco Co. v. Yoshiki Okada -
TRANSFERRED
Complainant identifies
itself and its products with a "JT" logo. It owns
over 100 trademark registrations of "JT" throughout
the world. In the fall of 1999, Complainant
negotiated to purchase the domain name, offering up
to $7.500.Respondent rejected the offer saying even
$1M would be too low) and did not respond to the
UDRP.
Decision: Respondent
adopted JT.COM for no legitimate reason but for the
purpose of selling it to another person for
unjustifiable profit. If the Respondent is allowed
to maintain the registration e or to use it for any
purpose, the consuming public throughout the world
will be mislead as to believe that the Respondent
has some business relationship or connection with
the Complainant, and, moreover, the distinctive
power of the Complainant's well-known ytrademark
and company logo "JT" will be diluted
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JULIAROBERTS.COM
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Julia
Fiona Roberts v. Russell Boyd -
TRANSFERRED
The registrant of JULIAROBERTS.COM
filed a lawsuit on June 13, 2000 against actress
Julia Roberts for her attempts to stop him from
operating a parody, satire and news site about the
famous movie star. The litigation was filed in
federal court in Alexandria, Virginia. Two weeks
earlier, a UDRP
proceeding filed with
WIPO ordered Registrant Russell Boyd to surrender
the domain name to Roberts, noting that Boyd had
placed the domain name for
auction on eBay, Boyd's
lawsuit alleged that Roberts is "using her
influence" to disrupt his right to exclusivity of
the domain name. The lawsuit also named NSI for
allowing Boyd to register the domain name and then
failing to implement domain name policies in a
"fair and even-handed" manner.
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K2R.COM
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K2r
Produkte AG v. Jeremie Trigano -
RETAINED by REGISTRANT (RNDH)
Complainant is a Swiss worldwide
producer of spot removing and household cleaning
products since 1959. Complainant registered K2R.COM
in May of 1997 but failed to pay the renewal fee so
the domain name was released into the public domain
sometime after October 1999. Respondent who
established a clothing/furniture/art store, "Kirk
& Rosie Rich" in 1999 and registered K2R.COM in
March 2000. K2r Produkte complained that registrant
exhibited a pattern of cybersquatting behavior
because it registered the name in order to prevent
the trademark owner from having access to and
reflecting the mark in a corresponding domain name.
Decision: The
products of the two parties are in different market
channels. K2R is a derivative of the name of the
registrant's clothing store, and that assertions of
a pattern of cybersquatting are not supported by
the evidence. Panel found no circumstances to
warrant a finding of bad faith use. "The panel, by
a majority, finds the complaint was filed as an
attempt at Reverse Domain Name Hijacking and was
brought in bad faith primarily to deprive a
registered domain-name holder of a domain name.
Under these circumstances, pursuant to Rule 15(e),
the panel declares the complaint was brought in bad
faith and constitutes an abuse of the
administrative proceeding.
Dissent
(Willoughby): While some of Complainant's
allegations were "unnecessarily and unjustifiably
extravagant", they were actuated by a desire in
good faith to protect its intellectual property
rights.
- WIPO: No.
D2000-0622 (August
23, 2000) - Alan L Limbury, Presiding Panelist;
Diane Cabell, Tony Willoughby, Panelists
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KELSONMD.COM
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Kelson
Physician Partners, Inc. V. Virginia A.
Mason-
TRANSFERRED
Complainant has fregistered service
mark of "Kelson" for health care services.
Respondent is married to a physician who is part
owner of a pediatrics group involved in an ongoing
dispute with Complainant. Respondent says the
domain name is used as a freedom of speech site
with no commercial content or value. Her response
to the UDRP proceeding was submitted past deadline.
Decision: It would
defeat the spirit of the UDRP if a competitor could
avoid the appearance of having the requisite
"intent for commercial gain" by merely permitting
allowing an abusive registration by an employee or
relative controlled by the competitor. Whether or
not Respondent established the domain name for
direct or indirect commercial gain, the primary
purpose of the registration was to divert
Complainant's customers to Respondent's
site.
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LIFEPLAN.COM
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LifePlan
v. Life Plan, C/O Relational Dynamics,
Inc. - RETAINED
by REGISTRANT
Complaint has registration of
"Lifeplan" mark in connection with diet planning
and weight loss. Respondent registered LIFEPLAN.COM
on March 21, 1995 in connection with goal setting
services offered by Relational Dynamics Institute,
Inc. Respondent requests that references to offers
of settlement be stricken under Federal Rule of
Evidence 408.
Decision: No evidence
submitted of actual confusion between use of domain
name and Complainant's rights in Lifeplan mark.
There are other registered and pending trademarks
involving the term LIFEPLAN. Complainant may be
entitled to exclusivity rights or weight reduction
and maintenance, not for Respondent's domain name.
Complainant asserts Respondent offered to sell the
domain name on June 10, 1996. "However, the mere
offering, without more, does not indicate
circumstances suggesting that Respondent registered
the domain nam primarily for the purpose of selling
or transferring it to the complainant. Further,
such evidence is omitted pursuant to FRE 408.
Complainant has failed to meet the burden of proof
of bad faith on the part of the Respondent. " Panel
declined to find reverse domain hijacking as
alleged by Respondent.
- NAF: No.
FA0005000094826 (July
13, 2000) - Herman D. Michels,Chair; Paul
DeCicco, Esq., Honorable Theodore R. Kupferman,
Panelists
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LOOKHEAR.COM
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Jon
Danzig, trading as Look-Hear v. Oscar Music and
Media Ltd - RETAINED
by REGISTRANT
Complainant has been in multimedia
and educational video films and related
publications since 1983 and registered the
"Look-Hear " trademark in the UK in 1995 plus other
variations of the name as domains: LOOK-HEAR.COM,
LOOKHEAR.CO.UK, LOOK-HEAR.CO.UK, LOOK-HEAR.ORG,
LOOKHEAR.ORG and LOOK-HEAR.NET. Respondent planned
to use domain name and rejected Complainant's offer
to purchase it.
Decision: There is
no evidence Respondent was aware of Complainant's
mark when it registered the name and the
combination of the two words could have been
independently derived. Lack of use of the name for
a website is not conclusive that the domain name
was registered in bad faith. Complainant has failed
to provide sufficient evidence as to his reputation
in the "Look Hear" mark.
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MADONNA.COM
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Madonna
Ciccone, p/k/a Madonna v. Dan
Parisi -
TRANSFERRED
The Material Girl filed a UDRP claim to MADONNA.COM, accusing
registrant Dan Parisi of holding the domain name hostage. Parisi
bought the domain for $20,000 in 1998 to use as a sounding board
for his battle with the singer. He says there are 87 active websites
that use "madonna" in their web addresses and 75 federal and state
trademarks for the word in the US and Canada alone. Parisi, who
also registered WHITEHOUSE.COM, offered
to donate the site to the Madonna Rehabilitation
Hospital in Nebraska, but the hospital was reportedly cool to the
offer. The performer's website is located at MADONNAFANCLUB.COM.
Decision:
Complainant's evidence indicates that Respondent
lacks any rights or legitimate interest in the
domain name. Respondent's claim of legitimate
interests is not persuasive.; Respondent has not
even attempted to tie in his web site to any
dictionary definition of "madonna". Respondent's
actionsappears to be an intentional effort to trade
upon the fame of Complainant's name and mark for
commercial gain, violating both UDR policy and
trademark law.
- WIPO Decision: No.
2000-0847 (October
12, 2000) - Mark V.B. Partridge, Presiding
Panelist; James W. Dabney David E. Sorkin,
Panelists
- Was
Madonna.com Decision Rigged? by Brian McWilliams
(InternetNews - October 17, 2000)
- Madonna's
Domain Name Crusade, by
Keith Regan (ECommerce News - August 30, 2000)
- MADONNA.COM
embroiled in domain ownership
spat, by
Rachel Konrad and Evan Hansen (C/Net - August
21, 2000)
- Madonna
wants her name back, by Ben
Charny (ZDNet - August 19, 2000)
- Parisi
comments on dispute
(MADONNA.COM)
- Response
of Sokolow,
Dunaud, Mercadier & Carreras, attnys
(October 20, 1999)
- Proskauer
Rose LLP Demand Letter to
Parisi (July 22, 1999)
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NOKIAGIRLS.COM
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Nokia
Corporation v. Nokiagirls.com a.k.a
IBCC -
CANCELLED
Complainant has two U.S. trademark
registrations for "Nokia" and uses the mark in 130
countries to sell mobile phones. Complainant sent a
cease and desist letter to the Registrant, which
went unanswered. Registrant submitted no response
to the UDRP complaint.
Decision: By not
submitting a response, Respondent failed to invoke
any circumstance which could demonstrate any rights
or legitimate interests in the Domain Name. The
addition of the word "girls" to distinguish the
domain name from the mark of the Complainant is
limited. Respondent's choice of domain name
indicates an eagerness to be identified with the
well-known IT company. The presence of the
trademark NOKIA in the domain name is thereby a key
factor in the financially-driven attempt to draw
internet users, The impression of the content as
adult oriented constitutes an aggravating element
in the assessment of the bad faith. Respondent's
domai n name was registered and used in bad faith,
and the registration is therefore cancelled.
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PUEBLO.ORG
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Pueblo
International, Inc. v. Pueblo
On-Line - RETAINED
by REGISTRANT
Complainant has used mark in
commerce since 1955 to advertise its 50
supermarkets and products and registered the
service mark "Pueblo on September 3, 1996.
Respondent registered PUEBLO.ORG on September 16,
1995 for a website functioning as a guide to
Pueblo, Colorado.
Decision: The
top-level domain .ORG customarily is used by
non-profit entities and not by a supermarket chain
such as Complainant's. PUEBLO.ORG is not identical
to PUEBLO.COM or PUEBLO.NET, either of which would
be a more appropriate domain name for Complainant's
enterprise. There is no evidence of the elements
required to support a finding of bad faith
registration by Respondent. Respondent is making a
fair use of its domain name and is providing a
service to tourists and to the residents of Pueblo,
Colorado. Complainant claim is denied.
- NAF: No.
FA0007000095250 (August 24, 2000) - Judge
Irving H. Perluss (Retired), Panelist
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QTRADE.COM
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QTrade
Canada, Inc. v. Bank of Hydro -
RETAINED by REGISTRANT: RDNH
Complainant is an Internet based
securities broker dealer in Vancouver, B.C. and
publicly known as QTRADE Investor Inc., a
subsidiary of Qtrade Canada Inc. Respondent is the
bank owned by the family of the registrant.
Respondent has registered many domain names
prefaced with "Q" for future use by hisInternet
company, e.g., QTRUST, QTELLER, QESCROW, QTITLE and
others. In response to an unsolicited offer to
purchase, Registrant suggested a price for the
entire lot of Q names but states that he did not
register QTRADE.COM to sell to Complainant and was
unaware of Complainant and its Canadian business
when he registered the domain name
Decision: QTRADE.COM
and the Complainant's corporate name "Qtrade
Canada, Inc." are not identical . Complainant has
not proven that it has a trademark right to
"QTRADE" in either the U.S. or Canada. Complainant
only filed trademark applications in both countries
after almost a year of attempting to purchase the
domain name from Respondent. Respondent has made
demonstrable preparations to offer bona fide goods
or services using the domain name and thus has a
legitimate interest in the name. " I am reluctantly
inclined to agree with the Respondent that if this
case does not rise to the level of bad faith and
reverse domain name hijacking, it is difficult to
imagine a set of facts and circumstances that
would. The complaint was brought in bad faith, in
an attempt at Reverse Domain Name Hijacking or was
brought primarily to harass the domain-name holder,
and therefore constitutes an abuse of these
administrative proceedings."
- eResolution Decision:
No.
AF-0169 (June 19, 2000) - Mark
A. A. Warner, Esq., Sole Panelist
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ROLLERBLADE.NET,
ROLLERBLADING.COM
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Rollerblade,
Inc. v. Chris McCrady -
TRANSFERRED to COMPLAINANT
Complainant makes in-line skates
and related products with registered marks for
"Rollerblade" going back to 1985. Complainant has
registered ROLLERBLADE.COM. Respondent uses
ROLLERBLADE.NET to show pictures of family members
roller skating.
Decision:
Complainant's mark is famous throughout the U.S.
Respondent's enthusiasm for Complainant's products
is not a legitimate right or interest in the
trademark. Respondent registerered ROLLERBLADE.NET
with constructive and actual knowledge of
Complainant's prior trademark rights, but
Respondent seems determined to exploit his nuisance
value with his overtures to be bought off.
Respondent registered and uses the disputed domain
name in bad faith.
- WIPO: No.
D2000-0429 (June
25, 2000) - Dennis A. Fosterl, Sole
Panelist
Rollerblade,
Inc. v. CBNO and Ray Redican Jr.
- RETAINED by RESPONDENT
- WIPO: No.
D2000-00427 (August
24, 2000) - Mark V. B. Partridge, Presiding
Panelist; Dennis A. Foster, Edward G. Poplawski,
Panelists
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ROSSPEROT.COM
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Perot
Systems Corporation v. DomainSale -
TRANSFERRED to COMPLAINANT
Complainant is a leader in the
field of technology consulting and services and the
company founded by Ross Perot and others in 1988.
Respondents DomainSale and Steven Weber have
registered over 100 domain names and is using
ROSSPEROT.COM to redirect traffic to FAMOLOGY.COM.
Decision: Respondent
does not have any substantial rights or legitimate
interests in respect to the domain name
ROSSPEROT.COM. Respondent has registered and
used the domain name ROSSPEROT.COM in bad
faith.
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SELECTED UDRP DECISIONS
A -
H
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OTHER
DISPUTES
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Providers
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