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Safari Casino A.G. v. Global Interactive Ltd -- RETAINED BY REGISTRANT, RDNH

Complainant states that a U.S. Service mark for Safari Casino was issued on October 27, 1998.. A gaming license was issued on September 22, 1997 to Safari Casino AG by the Government of Antigua. Respondent registered the domain name on April 25, 1998 and has a gaming sub-license under that name for its web site issued by the Government of Antigua.

Decision: "It is difficult to see how the disputed domain name could be confused with the US registered service mark when the services offered by the web site bearing the disputed name are legally out of bounds to US clients. . . . Confusion can only exist between customers who may reasonably be expected to use the facilities offered." Complainant has no standing in this case and is not entitled to bring this action since this service mark is registered to Oyster Bay Holdings Ltd domain name. Further, there is nothing in the ICANN Policy that requires that the Respondent had a duty to investigate whether an application was pending for an identical or similar domain name. This proceeding appears to indicate a bad faith intent by Complainant to use the UDRP to orchestrate a reverse domain name hijacking.

  • eResolution Decision: AF-0288 (October 4, 2000) - Maurice Wolf, President; Co-Panelists Peter Michaelson, and Sarah Cole


A Japanese company filed the first UDRP proceeding against an alleged cybersquatter who registered the Asian script version of its trademark and domain name, in English--SANKYO,COM.


Religious Technology Center v. Freie Zone E. V - RETAINED by REGISTRANT

Complainant's mark SCIENTOLOGIE is registered for numerous goods and services from 1984 in 9 countries. A variant, Scientology, has been used in the U.S. since 1951 for books and religious materials. Respondent purchased exclusive rights to market a 1934 book, "Scientology - Science of the Constitution and Usefulness of Knowledge" from the heirs of the late author and registered the domain name in Dec ember 1995. Complainant invoked NSI's Domain Name Dispute Policy, and the name was placed on hold in September 1996. Respondent asserts that Complainant was not able to register the trademark SCIENTOLOGIE in Germany because of Respondent's older rights to the word.

Decision: The domain name is phonetically similar to Complainant's mark and identical to the French translation. However, Respondent holds genuine rights in the book bearing the name in dispute and thus the registration was not made in bad faith.

  • WIPO Decision: No. D2000-0410 (June 23, 2000) - Bernhard F. Meyer-Hauser, Sole Panelist


Smart Design LLC v. Carolyn Hughes - RETAINED BY REGISTRANT, RDNH

Complainant was founded in 1985 and applied for a U.S. trademark in 1990 but the application was abandoned, In 1999, Complaint asked Respondent if it would be willing to put a link to Complainant's website on its inactive SMARTDESIGN.COM to automatically forward customers to Complainant's SMARTNYC.COM. Respondent did not reply. Respondent describes as a thinkubator, research and development lab for development of patentable intellectual property. Respondent disconnected DNS service to domain name after receiving many emails and some pornography intended for Complainant. Complainant argues that the registration renewal was made in bad faith because it was made with constructive knowledge of the Complainant's trademark from the 1999 letter.

Decision: "The lengths to which the Complainant has had to go in order to seek to establish bad faith registration and use have been extraordinary. It could not establish bad faith registration, so it argued bad faith renewal.. . . . It took on the guise of a third rate barrack room lawyer and advanced arguments that were tortuously artificial in the extreme, reckless both as to as to the justification for making those arguments and the seriousness of the overall charge against the Respondent, who was manifestly no cybersquatter. "

  • WIPO Decision: D2000-0993 (October 18, 2000) - Tony Willoughby, Sole Panelist


Gordon Sumner, p/k/a Sting v Michael Urvan - RETAINED by REGISTRANT

The domain name was registered in 1995 and is used as a gaming site. The registrant goes by the nickname of Sting and felt he had as much right to it as the Sting, lead singer for The Police, whose given name is Gordon Matthew Sumner. The Respondent asserted that there are 20 trademark registrations of the word in the US and "sting" is a common word. Registrant offerred to sell the domain name to the Complainant for $25K in response to initial solicitation by Complainant's attorney, but that was not Respondent's purpose in registering STING.COM.

Decision: UDRP not likely applicable to a dispute over personality rights. Also, given the common meaning of the word, " it is far from inconceivable that there is a plausible legitimate use to which the Respondent could put the domain name.


Strick Corporation v. James B. Strickland, Jr. - RETAINED by REGISTRANT

Complainant manufactures transportation equipment and wood flooring; more than 300,000 vehicles in the U.S. bear the "Strick" trademark. Complainant has registered STRCK.COM, STRICKTRLR.COM, STRICKTRAILER.COM, STRICKTRLR.COM, STRICKCORP.COM and STRICKPARTS.COM. Respondent, a computer consultant, registered STRICK.COM on July 28, 1995 without knowledge of the Strick Corporation. In response to the corporation's 1996 overture, registrant offered to transfer the domain name for an estimated $10K fees and expenses. Corporation invoked NSI's Domain Dispute Policy and the domain name was placed on hold on January 10, 1997.

Decision: Respondent is commonly known by the domain name and has legitimate interest in the name. He was not  using it to misleadingly divert consumers from the Complainant. Panel ordered that the name be released from hold status and restored to Respondent. There was a strong feeling that this case may well be an example of reverse domain name hijacking. However, lacking guidance from ICANN, the Panel was reluctant to so rule.   

  • NAF: No: FA # 94801 (July 3, 2000) - Louis E. Condon, Arbitrator, Professor Milton Mueller and Honorable R. Glen Ayers, Panelists


Standard Chartered PLC v. Purge I.T. - TRANSFERRED
Freeserve PLC v. Purge I.T. and Purge I.T. Ltd - TRANSFERRED
Dixons Group PLC v. Purge I.T. and Purge I.T. Ltd - TRANSFERRED
National Westminster Bank PLC v. Purge I.T. and Purge I.T. Ltd - TRANSFERRED
Direct Line Group Ltd, Direct Line Insurance plc, Direct Line Financial Services Ltd , Direct Line Life Insurance Company Ltd, Direct Line Unit Trusts Ltd, Direct Line Group Services Ltd v. Purge I.T., Purge I.T. Ltd. - TRANSFERRED

Complainant owns trademark registrations for Standard Chartered in UK and Hong Kong and 11 variations as domain names. Respondent claims registration of this and four other *SUCKS.COM domains were made to help protect enterprises against being bothered by customer sites at which grievances are aired. The domain names all refer to British companies: ISP Freeserve (FREESERVESUCKS.COM); retailer Dixon's (DIXONSSUCKS.COM); banks NatWest (NATWESTSUCKS.COM) and Standard Chartered (STANDARDCHARTEREDSUCKS.COM; and financial services firm Direct Line (DIRECTLINESUCKS.COM).

Decision: Use of a derogatory term paired with a complainant's name does not necessarily disassociate the Complainant from the web address. "The first and immediately striking element in the domain name is the Complainant's name, and adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with it." Panelist asserted that there was no justification for the role of "officious interferer" which the Respondent took upon itself to provide. Respondent offered to sell the domain name at issue to the Complainant for many thousands, which the arbitrator said indicated Respondent registered the name primarily for th epurpose of selling or transferring the name to the complainant. The arbitrator ordered that five domain names incorporating (NAME)SUCKS.COM be taken away from a UK-based company called Purge I.T., Ltd.


Shirmax Retail Ltd. v. CES Marketing Group, Inc - RETAINED by REGISTRANT

Complainant markets maternity clothing and other merchandise under the registered mark Thyme and Thyme Maternity/Thyme Maternité. Respondent registered THYME.COM in 1996 with 20 to 50 other generic words. Respondent claims that it had made preparations to use THYME.COM but it was placed on hold in August 1999 by a challenge under NSI's Domain Name Dispute Policy.

Decision: Given the generic nature of THYME.COM, Respondent has a tenable legitimate fair use, as long it is not misleading to consumers and does not tarnish a trademark. "Where the domain name . . . in question [is] generic - and in particular where they comprise no more than a single, short, common word - the rights/interests inquiry is more likely to favor the domain name owner." Panel stated that "admittedly perfunctory preparations . . . made by [respondent] for use of the domain name . . . in bona fide commerce are sufficient to demonstrate the rights or legitimate interests." Although a finding of RDNH was considered, Panelist said "Complainant apparently had a valid claim against Respondent under NSI's prior policy, and does not deserve to be admonished here merely for seeking to retain the advantageous position it was able to attain under that policy."

  • eResolution Decision: No. AF-0104 (March 20, 2000) - David E. Sorkin, Lead Panelist


Süd-Chemie AG v. - TRANSFERRED

Complainant is a German chemical products manufacturer producing bleaching earths and clays under the trademark "Tonsil" since 1952. Respondent challenged WIPO's authority to administer this dispute because the Complainant's counsel is listed as a possible WIPO.

Decision: Arbitrators representing clients in domain name proceedings is not grounds for disqualification. Respondent submitted no redible evidence that domain has ever been used in connection with a bona fide offering of goods or services. The panel finds bad faith for: a) Respondent's expressed intent to sell the domain name in response to an overture by Complainant; b) lack of current and complete information in the registration application; c) removal of the site thereby making it impossible for the Panel to examine; d) allowing Respondent's personal website, COMITO.COM, to be used as a redirect for pornography; e) the professionally obscure manner in which the Response was crafted; and e) the high degree of knowledge and sophistication about internet domain name registration and trademark issues which Respondent possesses.

  • WIPO Decision: No. D2000-0376 (July 3, 2000 - Dr. Kamen Troller, Sole Panelist



Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico - TRANSFERRED


Wal-Mart Stores, Inc., employs a600,000 workers. RRespondent is a journalist working on a book relating to labor laws and tension between Wal-Mart and Wal-Mart staff at their stores in Puerto Rico. He registered WAL-MARTCANADASUCKS.COM, WALMARTCANADASUCKS.COM, WALMARTUKSUCKS.COM and WALMARTPUERTORICOSUCKS.COM to organize 'freedom of expression forums for complaints against Wal-Mart". Respondent asserts that Wal-Mart is attempting to silence any form of dissent against the corporation. Wal-Mart has registered WALMART-SUCKS.COM, WALMART-SUCKS.NET, WALMART-SUCKS.ORG, WAL-MART-SUCKS.COM, WAL-MART-SUCKS.NET and WAL-MART-SUCKS.ORG. Complainant asserts that the Respondent threatened to disrupt WalMart's business if his consulting demands were not met. Respondent also registered WALMARTCANADA.COM, which was transferred to the Complainant in an earlier UDRP proceeding.

Decision: " A demand for payment from the potential and actual subject of critical sites is fundamentally inconsistent with the right of free expression." While the registrant argued his domains were fair comment, Purge I.T., above, took a different approach and said it had reserved the derogatory domains in order to spare the companies the embarrassment of having someone wield them in protest.

  • WIPO: No. D2000-0583 (August 13, 2000) - William R. Cornish, Panelist


Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich - RETAINED by REGISTRANT

Complainant is a multinational clothing company, with its earliest trademark for "Zero" registered in Germany in 1980. Respondent registered ZERO.COM on June 10, 1992 because it was short and memorable; he has used it for 7 years primarily for email and file transfer activities in conjunction with his work as a network engineer. He has no other domain names.

Decision: Arbitration panel asserts that the trademark is for a stylized version and does not give Complainant rights in the word "zero" itself. The word is common and may have been registered by others for any purposes. Respondent has made use of the word in connection with his professional interests, and the registration was not made in bad faith. The Panel, however, declined to rule that the Complainant's activities constitute RDNH. To make such a determination would require evidence as to German law, which would delay a prompt resolution to this complaint.

  • WIPO: No. D2000-0161 (May 12, 2000) - Nick Gardner, Presiding Panelist; Gervaise Davis and Geert Glas. Panelists



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