Domain Name Shame

Respondent Smelling Like Roses in Domain Name Dispute

Complainant sells flowers via the Internet worldwide and owns marks registered in Germany for FLORAPRIMA. Complainant has been using FLORAPRIMA as its company name since 2001 and the earliest of its trademarks was registered in June 2007.

Respondent also sells flowers, as a wholesaler of fresh cut flowers for the United States market. It holds a 90% interest in "Floraprima, LLC", a limited liability company organized under the laws of Texas.  Respondent registered the disputed domain name, "floraprima.com" in November 2001.

Respondent argued, among other things, that Complainant's trademark rights only apply in Germany.  The Panel rejected this argument on the grounds that it is enough that Complainant demonstrated rights in a trademark granted in any jurisdiction.  For purposes of the Policy, in determining whether domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, previous panels have noted that the requirement can be satisfied by proof that the complainant is the owner or licensee of a registered mark anywhere in the world - not just in the country of the respondent's residence.  To find otherwise would artificially limit the scope of the Policy to particular state boundaries.  Based thereon, the Panel found that the disputed domain name was identical to Complainant's registered mark.

Notwithstanding, the Panel denied transfer of the disputed domain name to Complainant, despite the fact that the disputed domain name reverted to a "portal" or "landing" website which contained links in German that each reverted to pages containing a miscellany of other links (some flower related, some not).  In denying transfer, the Panel found that Respondent had provided sufficient evidence that it was operating a legitimate business associated with the disputed domain name (including corporate documents, a shareholder certificate, an agreement for sale and promissory note).  In addition, the Panel considered that Complainant's trademarks were relatively new, having been registered 6 years after the creation of the disputed domain name in 2001. While Complainant claimed to have first used its marks in 2001, there was no evidence to support its claim and no evidence that Complainant had a trading reputation in the United States or Ecuador, where Respondent does business.  FloraPrima GmbH v. Rosaprima Cia. Ltda./Flora Prima, WIPO Case No. D2009-0117

Domain Name Day at the Spa

The Complainant operates a business based in Los Angeles, California, supplying nail and body care products under the mark SPARITUAL.  Complainant has registered the mark in various countries, including the USA and Mexico, and has pending applications to register the mark in other countries, including Canada.

Respondent is a consultant to a business operating under the name "The Spa Ritual" in Calgary, Canada.  The disputed domain name, "sparitual.com", was registered by Complainant on the business' behalf on October 19, 2006 and points to a website promoting the spa and its facilities, including a boutique selling body care products and noting "Check back soon for online shopping of our exclusive Spa Ritual products".

The Panel denied the Complaint on the evidence that Respondent made demonstrable preparations to use the domain name and the corresponding name "The Spa Ritual" in connection with a bona fide offering of services before any notice to her of a dispute. This evidence included Respondent's retention since 2005 as a consultant to establish, develop, own and operate a full-service day spa in Calgary, Canada and, in connection with that retention, Respondent's preparation of a site assessment report, a strategic business plan, the retention of a design firm which made a proposal regarding branding and a logo, and Respondent's preparation of a concept document which included a proposed layout and design for the spa prior to its opening.  Although Complainant asserted that it had made sales in Canada since at least February 2005, there was no evidence of the extent of those sales and no basis to infer that Respondent must have been aware of them at any particular point in time.

Significantly, the Panel opined that an application to register a trademark in the United States or other countries does not of itself constitute notice of a dispute to a party in Canada for purposes of paragraph 4(c)(i) of the Policy and that the doctrine of constructive notice under US trademark law does not assist in cases under the UDRP where the respondent is outside the USA. SpaRitual, LLC v. Vivienne O'Keeffe, WIPO Case No. D2009-0066

Decedent Domain Name

On December 5, 1999, Respondent registered the domain name "celiacruz.com".  Celia Cruz was a world famous Cuban salsa singer who died on July 16, 2003. She was internationally recognized as the "Queen of Salsa" and during her lifetime received countless awards and honors, including three Grammy Awards, four Latin Grammy Awards, the Lifetime Achievement Award of the Smithsonian Institution and many others. Several streets have even been named in her honor.

The disputed domain name resolves to a portal site with links to a variety of businesses including travel, accommodation, finance, electronics, insurance and many other services.  The site recognized that Celia Cruz was "one of the greatest musical talents of the 20th century" and featured in bold type the words "Great Collection of Celia Cruz Music CDs" which provided a link to a site at www.eTours.com providing travel and accommodation services.  Relying on the common law rights of Celia Cruz having descended to her estate, her estate's sole executor appointed Complainant as his attorney-in-fact to bring this WIPO action, alleging that Ms. Cruz, and by devolution her estate, owns and controls common law trademark rights in the name Celia Cruz.

Ordering transfer of the disputed domain name to Complainant, the Panel found that the record clearly established that the deceased was one of the best known and most widely acclaimed performers in her field, having been known and promoted by reference to her name to such an extent that she had established strong and substantial common law trademark rights in the name "Celia Cruz".  In the absence of a response by Respondent, the Panel assumed that Respondent could not rebut Complainant's prima facie showing that Respondent had no rights or legitimate interests in the disputed domain. Since the disputed domain name was registered long after the name and reputation of Celia Cruz had been established and the honors conferred upon her had been widely publicized, it was presumed that Respondent's use of the domain name as evidenced by its website content had been for the purpose of capitalizing on her name's reputation to attract Internet users to its website for commercial gain.  Eventus Management, Inc. v. Twenty Four Hours, LLC, WIPO Case No. D2009-0067

Derogatory Domain Name Dispute

Complainant, an airline operating under the AIR AUSTRAL trademark, filed Complaint against Respondent for its registration of the domain name "airaustralsucks.com".  Respondent operates, among other things, a website at "www.suetheairlines.com" on which consumers are encouraged to take legal action against airlines with whom they are in dispute. The disputed domain name was registered on June 19, 2008, the same day that Respondent registered several other domain names comprised of the trademarks of other airline companies with the suffix "-sucks".  At the time of the Complaint's filing, the disputed domain name was "parked" and contained click-through links to other sites, including travel related sites.

The Panel noted that the situation in relation to cases containing derogatory suffixes such as "sucks" is contentious.  The panel majority holds that a domain name consisting of a trademark and a negative term is confusingly similar to the complainant's mark. 

In considering whether Respondent had rights or legitimate interests in the disputed domain, the Panel interestingly noted that one potentially relevant fact in this case was the existence of Respondent's cybergriping site under a different domain name "suetheairlines.com".  Even though that domain name was not under dispute in this case, the Panel took into consideration that it was used by Respondent to post a website on information about various means by which airlines (in general) could be sued.  Use of a domain name that contains a complainant's mark to identify a genuine cybergriping site about that complainant can give rise to a legitimate interest in that domain name "or an important vehicle of online critique and discussion may be silenced."  In the Panel's view, the purchase of the disputed domain name for the purpose of operating a genuine cybergriping site would have been a more plausible claim if the domain was in fact being used for a gripe site about the Complainant and the Panel would have had little hesitation in finding for the Respondent. However, the disputed domain name was not being used for that purpose.  Instead, Respondent had left it parked as a click-through revenue generator, making its claim of legitimacy highly suspect.  In making the decision to transfer the disputed domain name to Complainant, the Panel further took into consideration the fact that whether such revenue generating links may be automatically generated by a parking service does not excuse such use.  As observed by numerous panels, a respondent is ultimately responsible for the content of a website generated by such technology.  Air Austral v. Tian Yi Tong Investment Ltd., WIPO Case No. D2009-0020

Disputed Domain Name for Adults Only

Complainant owns various trademark registrations for the mark "VIRTUAL SEX", with the first application filed in April 2000 and a first use in commerce dating back to 1994.  Complainant, which is female owned and operated, is a leading producer of "adult" films and has more than a 40% market share of the adult DVD market.

Respondent registered the disputed domain name, "virtualsex.com", on August 24, 1995 and set up a website for the sale of adult content DVDs, strip club webcam sites, sex chat rooms, adult dating services and "adult toys".  The site was established more than 13 years ago.

Respondent conceded that the disputed domain name is confusingly similar to Complainant's mark but made the contention that the mark is invalid as either "generic" or "merely descriptive".  In fact, Respondent claimed that he thought the disputed domain to be a generic term at the time of its registration.  Nonetheless, the general rule is that registration of a mark is prima facie evidence of validity and it is Respondent's burden to rebut that presumption, which Respondent failed to do. 

Denying the Complaint, the Panel held that a finding of Respondent's lack of rights or legitimate interests in the mark would turn on its analysis of the bad faith issue.  While Complainant alleged that it had acquired secondary meaning in the mark by August 1995 (when Respondent registered the domain), it failed to produce any evidence to support its allegation.  Moreover, Complainant failed to explain why it did not bring this action until 14 years after Respondent's registration of the domain and more than 13 years after Respondent had used the domain to resolve to a website at which products competitive to those offered by Complainant, as well products entirely different from those offered by Complainant, were offered for sale. Based upon the Panel's review of Respondent's website, it further concluded that its "diverse offerings" suggested that Respondent was trading on the descriptiveness of the term "virtual sex", rather than any goodwill attached to Complainant's mark.  In light of all these factors, the Panel held that Complainant failed to establish that the disputed domain name was registered and used in bad faith.  Digital Playground, Inc. v. Network Telephone Services, Inc., Dan Coleman, Frontier Credit Corp., and Harriet Walkup, WIPO Case No. D2009-0105

Domain Name Dispute Reactor

Complainant is an individual who operates a number of sites, including "torrentreactor.net", which provides software and services designed to help users locate and download "torrent files" (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent).  However, most, if not all, of the files promoted by Complainant or available for download were unlawful copies of software, movies, music, etc. -- in other words, works subject to copyright protection.

Respondent is an individual with a history of cybersquatting.  While the registration of the disputed domain name, "torrentreactor.com", predates the registration date of Complainant's domain name, Respondent did not obtain the registration until several years later after winning an auction process for the disputed domain name for the purported sum of $17,500.  Respondent used the domain to link to a parking service (through which he received revenue) and eventually forwards to a site that provides pornographic material.

Prior to the filing of the Complaint, Complainant and Respondent engaged in a series of negotiations.  Respondent offered to sell the domain to Complainant for a mere $150,000; Complainant countered with $30,000 and Respondent made a final offer of $50,000. Complainant then filed its Complaint, which made it pretty clear that Respondent's offer was rejected.

At the end of the day, the Complaint was denied.  Complainant asserted trademark rights in TORRENTREACTOR based solely upon its use of the domain name "torrentreactor.net" and various logos he created and used via the site.  However, mere use of a domain name, even if assumed for a long period of time and with many visitors, does not necessarily give rise to a trademark right.  While Complainant's failure to establish trademark rights was in and of itself sufficient to deny the Complaint, the Panel made note of a few other significant points, including a lack of merit to Respondent's argument that he has a right or legitimate interest in the domain because he paid $17,500 for it in auction.  The Panel deemed that fact irrelevant since domain names are often traded and auctioned off for profit and, it is often the case that domain names that are confusingly similar to an existing trademark fetch a higher price among cybersquatters.  In denying the Complaint, the Panel also noted the Respondent's prior history of cybersquatting and more than sufficient evidence to reach a finding of bad faith use by Respondent.

Notwithstanding the Panel's decision to deny the Complaint, it is significant to note that the Panel expressly noted that, in light of its finding of bad faith by Respondent, if Complainant was subsequently able to show that it had obtained the requisite trademark rights in the TORRENTREACTOR mark, it would not entirely rule out the possibility of the Complainant re-filing against Respondent (provided that the UDRP's relevant re-filing criteria were met).  In any event, the Panel's denial of the Complaint would not prevent either party from pursuing the matter further in a court of competent jurisdiction.  Alexey Kistenev v. Jinsu Kim, WIPO Case No. D2008-1870

Domain Name Going "South"

The Complainant, Viacom International, Inc., owns trademark registrations in the service mark and trademark "SOUTH PARK", which it has used in connection with various forms of entertainment and related apparel since as early as July 1997.  The marks have been used in connection with an animated television show called "South Park" and Complainant maintains "the official South Park web site" at
www.southparkstudios.com.  The television show has several cartoon characters, including "Stan" and "Mr. Marsh", who is identified as Stan's father.

On March 22, 2007, the Respondent registered the disputed domain name, "stansdad.com", which resolves to a web site in which a cartoon character's face corresponding to Mr. Marsh appears in the place of the "O" in ".COM".  The website contains episodes of the television show South Park (including two copyrighted episodes) and the tagline "W-W-WATCH SOUTH PARK ONLINE FREE!".  The website contains prominent disclaimers identifying the Complainant as the owner of the trademark and copyrighted material and expressly disassociates the disputed domain name with the Complainant.

Denying Viacom's complaint, the Panel pointed out that the UDRP was designed to deal with the problem of cybersquatting.  The disputed domain is clearly not confusingly similar to any trademarks or service marks asserted by Viacom, as "stansdad.com" is not even remotely similar to "South Park".  Instead, Viacom's concerns were not really directed towards the particular domain name itself but, rather, what was occurring on Respondent's website.  While the Panel recognized that Viacom's concerns may be legitimate and perhaps entitled to legal redress, the UDRP is simply not the vehicle to provide that redress.  Here, Viacom was really asserting possible claims of copyright infringement, which goes beyond the purview of the issues that the UDRP was designed to redress and should have been brought in a more traditional legal proceeding.

Smokin' Over Domain Name Dispute…

Complainants are affiliated companies that manufacture, distribute and sell various brands of smokeless tobacco, including the GRIZZLY brand.  Complainants have filed various trademark registrations for the GRIZZLY mark in connection with smokeless tobacco products.

Respondent is in the business of registering and utilizing domain names and, on January 30, 2005 and June 3, 2005, Respondent registered respectively the disputed domain names "grizzlychew.com" and "grizzlysnuff.com".  Respondent contracts with Hitfarm, an Internet advertising service provider, to place targeted advertising links on "grizzlychew.com".  Complainants did not learn of Respondent's registration of the domain names until August 2007.

In arguing that the domain names were not confusingly similar to the GRIZZLY marks, Respondent relied upon the fact that the common term "Grizzly" has been registered as a trademark by numerous companies and it also took the disingenuous position that Complainants do not market GRIZZLY products as "chew" or "snuff" but, rather, as smokeless tobacco.  These arguments, however, did not hold smoke with the Panel.  As the Panel noted, even though true that the term "Grizzly" has been registered for various products by numerous trademark holders, the USPTO's decision to grant Complainants a trademark demonstrates that Complainants have enforceable rights in the mark.  The Panel further noted that regardless of whether Complainants refer to their product as "smokeless tobacco", the evidence submitted made clear that the terms "chew" and "snuff" are commonly used to reference smokeless tobacco.  It was logical to conclude that anyone familiar with the GRIZZLY mark would likely assume that the domain names were affiliated with Complainants, rendering them confusingly similar.

Respondent also argued that offering targeting advertising searches is a legitimate business and that, in any event, they had no control over which advertisers Hitfarm posts using the domain names. Can you say "pass the buck"??  While the Panel conceded that the business of offering targeting advertising searches may be a legitimate business in certain circumstances, those circumstances did not exist in this case. It may be legitimate as long as the domain names have been registered because of their attraction as dictionary words and not because of their value as trademarks.  In this case, however, the domains did not merely refer to "smokeless tobacco", "chew" or "snuff".  Rather, they merged two of those terms with a trademarked brand of smokeless tobacco and use the resulting domain names for a commercial purpose. Under the Policy, that is not a legitimate use capable of establishing rights or legitimate interests.  Not surprisingly, for these same reasons, the Panel also found that Respondent had registered and used the domains in bad faith and ordered transfer of the domain names to Complainants. Conwood Company, LLC, Conwood Sales Company, LLC and Rossvil, LLC v. Texas International Property Associates, WIPO Case No. D2008-0376

Domain Name Win for the Home Team!!!

Complainant is one of the leading public research universities in the American Southwest and has used the name "Arizona Wildcats" since as early as 1915 in connection with the university and its athletic teams.  Complainant holds federal trademark registrations for the mark "Arizona Wildcats and, since as early as 1950, Complainant has used the "Arizona Wildcats" mark in identifying clothing items and other licensed merchandise.

The disputed domain name, www.arizonawildcats.com, was registered on March 4, 1999 and lead to a site displaying advertising from which web-users may "click through" to various sites, including, for example, NFL and NBA sports sites.

This is a classic case of cybersquatting. Respondent's use of the domain name was simply the use of a famous trade mark to divert traffic to itself for the purposes of raising click-through revenue.  Not surprisingly, the Panel ordered transfer of the disputed domain name to Complainant.  What is surprising is that Complainant has been using the mark for over 90 years yet never registered the domain itself (okay, okay…the Internet did not exist that far back but still….it's been around a long time since and Respondent jumped on it way back in 1999! Complainant, get in the game…).  Arizona Board of Regents on behalf of the University of Arizona v. DNS, Admin, Nevis Domains/Gee Whiz Domains Privacy Service, WIPO Case No. D2008-1543

Domain Name Auction

In this WIPO dispute, the Complainant is Margaret C. Whitman, the President and CEO of eBay, Inc. from March 1998 through March 2008.  Ms. Whitman remains on eBay's Board of Directors and is a stockholder.  The Complainant is described in the Complaint as an Internet pioneer and businessperson whose name is internationally famous and synonymous with the accomplishments of eBay.  The Respondent, Domains For Sale, registered the disputed domain names, www.megwhitmanforgovernor.com, www.megwhitman2010.com, www.meg2010.com, www.whitmanforgovernor.com and www.whitman2010.com, between January 28 and March 28, 2008, at which time there was wide speculation in California and elsewhere that the Complainant would run for election as Governor of California in 2010.

 The Complainant claims common law service mark rights in her personal name 'MEG WHITMAN' due to her fame and achievement, the international recognition and wide publicizing of her fame and achievement and further claims that her fame and achievement are inextricably connected to eBay's commercial success.  The Respondent did not respond to the Complaint. 

Merely having a "famous" name is not sufficient to establish common law trademark or service mark rights in the name.  In cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another's goods or services, or for direct commercial purposes in the marketing of the complainant's own goods or services.  The law of publicity gives well-known individuals the right to control commercial exploitation of their names and likenesses.  However, for common law trademark rights to exist, the personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source.  In this instance, the Panel was unable to conclude that the Complainant had common law service mark rights in her personal name because she did not provide services to the public under the name 'MEG WHITMAN' as a source-indicator to the segment of the public based on her performance as President and CEO of eBay.  Accordingly, the Panel concluded that the Complainant failed to establish common law service mark rights in her personal name and therefore denied the Complaint.