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SAFARICASINO.COM
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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
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SANKYO.COM
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- 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.
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SCIENTOLOGIE.ORG
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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
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SMARTDESIGN.COM
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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 Smartdesign.com 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
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STING.COM
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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.
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STRICK.COM
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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
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[name]SUCKS.COM,
STANDARD
CHARTEREDSUCKS.COM
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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.
- WIPO:
No.
D2000-0681
(August 13, 2000) - William R. Cornish,
Panelist
- WIPO:
No.
D2000-0585
(August 13, 2000) - William R. Cornish,
Panelist
- WIPO:
No.
D2000-0584
(August 13, 2000) - William R. Cornish,
Panelist
- WIPO:
No.
D2000-0583
(August 13, 2000) - William R. Cornish,
Panelist
- Domain
Arbitrator Blows Away More "Sucks"
Addresses,
by Steven Bonisteel (32 Bits Online - August 18,
2000)
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THYME.COM
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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
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TONSIL.COM
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Süd-Chemie
AG v. Tonsil.com
- 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
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WALMARTSUCKS.COM
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Wal-Mart
Stores, Inc. v. Walsucks and Walmarket Puerto
Rico
- TRANSFERRED
WAL-MARTSUCKS,COM
WIPO D2000-0662
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.
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ZERO.COM
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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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