Domain Name Handbook
DNS NewsDomain DisputesU.S. PolicyICANNMailing ListsArchivesTable of ContentsReviews & CitesViewpointAcknowledgmentGlossarySpecial FeaturesBooklist

Never mistake a clear view for a short distance.
-- Paul Saffo, technology pundit



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.


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


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.



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.


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


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.


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


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.


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


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.


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.


Nokia Corporation v. 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.


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.



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


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


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. 


A - H

S - Z


ICANN Arbitration Providers


UDRP Policy

Statistical Summary

Proceedings by NAME

Proceedings by NUMBER

SEARCH Decisions Index

SEARCH Proceedings Index

Arbitration Providers

UDRP Library



Contact | Order | Site | News | Disputes | Policy | ICANN | Lists | Archives
Contents | Reviews | Viewpoint | Acknowledgment | Glossary | Special Features | Booklist

 The Domain Name Handbook: High Stakes and Strategies in Cyberspace
Copyright© 2000 - 2001 Ellen Rony and Peter Rony. All Rights Reserved.