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July 5, 2011 / Nate Harris

Open the Floodgates?

On June 20, ICANN approved its much-discussed plan to allow generic top-level domains. Sometime in the next year or two, the 22 generic top level domains we all know and love (“.com,” “.org,” etc.) will be joined by an ever-growing set of custom top-level domains (TLDs). Applicants will be given the opportunity to pay a $185,000 application fee to register TLDs corresponding to corporate names or phrases, community interests, or anything else.

Mashable has posted a great overview of the new process called “9 Things You Need to Know About ICANN’s New Top Level Domains.”

June 6, 2011 / Nate Harris

IP Counsel Podcast on gTLDs

Peter Lando, one of the partners at my firm, hosts the IP Counsel podcast. He recently discussed ICANN issues, including the new gTLDs, with Mary Wong. Wong is a Professor of Law at my alma mater, the University of New Hampshire School of Law, and Director of the School’s Franklin Pierce Center for Intellectual Property. On a personal note, I took Professor Wong’s practical course on copyright licensing as a student and enjoyed it immensely.

The podcast is accessible here:

ICANN’s expansion of generic Top-Level Domains (gTLDs)   ICANN’s expansion of generic Top-Level Domains (gTLDs)

I highly recommend giving this engaging discussion a listen, and would recommend the same even if Peter weren’t signing my paycheck.

May 6, 2011 / Nate Harris

Is “amphora” generic for wine?

Summary of  Hutchinson Wines v. Amphora Wome Group Pty Ltd, William Howard

(WIPO Case No. DAU2011-0008)

Filed: March 2, 2011; Decided: April 21, 2011 (Panelist: Michael J. Spence)

Disputed domain name: <amphorawines.com.au>

amphorawines.com.au

The Parties

Complainant Hutchinson Wines (“Hutchinson”) is a California winemaker. Since 1998, it has been using AMPHORA as a mark for wines sold in the United States, including through a website at the domain <amphorawines.com>. According to the Panel, “the term ‘amphora’ is a generic term that refers to an ancient form of vessel used to store and transport wine, amongst other products.”

Respondent Amphora Wine Group Pty Ltd, William Howard (“Amphora”) have been operating under their current business name since 2008. [The decision does not state when the domain was registered.] The business generates AU $3.2 million annually in sales to Australia, China, Hong Kong, New Zealand, amd Tonga.

Identical or Confusingly Similar

The Panel notes that “there can be no doubt” that Hutchinson has demonstrated its rights in the mark AMPHORA, though it has not established rights in AMPHORA WINES. In the Panel’s view, the difficult question is whether the disputed domain is confusingly similar to the mark. The Panel asserts that the common element between the marks, “amphora,” is a “generic” word used in relation to wines for over 8,000 years. Nonetheless, the Panel accepts that it is “plausible” that the mark and the disputed domain name are confusingly similar. Given its decision on the second prong, however, the Panel does not decide this issue.

Rights or Legitimate Interests

In the Panel’s view, Hutchinson failed to overcome Amphora’s assertion that it chose its name (and the disputed domain) in 2008 with the “generic” meaning of the word “amphora” in mind.  Thus, Hutchinson failed to make out a prima facie showing that Amphora lacked rights or legitimate interests in the disputed domain.

In light of the Panel’s decision on the second prong, it declines to consider the third prong.

Decision

The complaint is denied.

Commentary

In my view, this decision took the wrong turn at every opportunity. First, I’m not convinced that the term “amphora” is generic for wine. At most, it was generic at one time for a container not usedwith Hutchinson’s wine. The proper inquiry is whether consumers would view the term as generic. I think it’s safe to say that most people would have no idea what an amphora is. One article on the genericness of obsolete words gives this example:  “[W]e suggest that the term ‘bodkin’ for knives [quoting from Shakespeare’s Hamlet] would be a perfectly acceptable trademark.” A. Greenbaum, J. Ginsburg & S. Weinberg, A Proposal for Evaluating Genericism after “Anti-Monopoly,” 73 Trademark Rep. 101,125, n. 63 (1983). Of course, those authors were considering an obsolete term directly describing a non-obsolete good, whereas here the obsolete term describes an obsolete container for the good. Accordingly, the fact that Hutchinson (along with every other winemaker in the United States) does not use amphoras to sell its wine seems to preclude a finding of genericness.

Even more puzzling, if one accepts that “amphora” is generic, then how does Hutchinson have trademark rights in the term, as the Panel finds?

If asked (I wasn’t), I would analyze the case as follows: As I understand the term’s current meaning as it is likely perceived by relevant consumers, AMPHORA seems to be inherently distinctive for wines. Since Hutchinson has used the mark continuously since 1998, it has common law rights in the mark to assert against junior user Amphora. Under the first prong, the disputed domain can be rendered for our purposes as “Amphora Wines”, with the inherently distinctive term “Amphora” being the dominant portion of the mark as opposed to the generic term “wines.” Thus, “Amphora Wines”  is confusingly similar to the AMPHORA mark. In fact, the addition of the actually generic term “Wines” to Hutchinson’s mark only adds to the confusion, since Hutchinson also sells wine.

In the end, this decision would probably turn on bad faith, and there appears to be very little evidence of Amphora’s intent in adopting the disputed domain name. Thus, since the complainant bears the burden of proof on that issue, the outcome may very well have been the same. And of course, it goes without saying that I didn’t see the evidence of record. Still, I can’t say that I agree with the Panel’s approach here.

April 19, 2011 / Nate Harris

UDRP On MOODYBLUES.COM Turns Whiter Shade of Fail

Summary of  The Moody Blues c/o PAID, Inc. v. Credit Card Marketing Center

(WIPO Case No. D2011-0343)

Filed: February 18, 2011; Decided: April 7, 2011 (Panelist: Frederick M. Abbott)

Disputed domain name: <moodyblues.com>

moodyblues.com

The Parties

Complainant PAID, Inc. (“PAID”) claims to offer “World class celebrity services.” It offers brand management, marketing, and merchandising services to dozens of entertainers including Aerosmith, Motorhead, Weird Al, and–relevantly–the Moody Blues. Its complaint alleges that it has “full and complete rights in the registered trademark Moody Blues.”

Respondent Credit Card Marketing Services (“CCMS”) registered the disputed domain name on February 23, 2004. There is no evidence to suggest that the disputed domain has ever been used.

Identical or Confusingly Similar

The Panel takes “administrative notice” of the musical group “The Moody Blues”. Complainant PAID, Inc., has provided no evidence of an association with that musical group.

Though CCMS claims to own a trademark registration, it has not submitted any evidence thereof. The Panel sua sponte searches the USPTO’s records, but finds nothing tying PAID to the musical group. The Panel notes it has discretion to require additional factual submissions from PAID in order to clarify this point, but declines to do so. Instead, it dismisses the complaint.

Because PAID has not succeeded on the first (or “zeroth”) prong, the Panel does not consider the second and third prongs.

Decision

The complaint is denied.

Commentary

It’s surprising that representatives of the band that gave the world “Nights in White Satin” would screw up so badly on something as basic as standing.

March 31, 2011 / Nate Harris

Tucows Wins UDRP By Proving Rights in LORENZO.COM

Summary of Lorenzo International Limited v. Tucows.com Co.  / Tucows Inc.

(WIPO Case No. D2010-2254)

Filed: December 23, 2010; Decided: March 15, 2011 (Panelists: Desmond J. Ryan, Dan Hunter, and David E. Sorkin)

Disputed domain name: <lorenzo.com>

lorenzo.com


The Parties

Established in 1983, Complainant Lorenzo International Limited (“Lorenzo”) is a Hong Kong-based designer and retailer of “conceptualised lifestyle furniture.” Lorenzo claims to be the owner of 41 trademark registrations in 21 countries for the mark LORENZO, the earliest dating to May 1989 in Singapore.

Respondent Tucows.com Co/Tucows Inc. (“Tucows”) is a Canadian domain registrar. As part of its NetIdentity service, it has registered over 42,000 domain names consisting of surnames in order to provide personalized email addresses to persons having that surname. Tucows registered the disputed domain name in October 1996, predating all but the Singapore registration for LORENZO. The disputed domain points to a website relating to the personalize email address service.

Identical or Confusingly Similar

The Panel notes that Lorenzo is not listed as the owner of the trademark registrations it has submitted. Nonetheless, the Panel is willing to draw an inference that the listed owner and Lorenzo “are related and have a common interest in the protection of the LORENZO trademark.” Accordingly, the disputed domain is identical to the LORENZO mark.

Rights or Legitimate Interests

There is no evidence that Tucows knew of or had reason to suspect Lorenzo’s possible rights in the LORENZO mark when it registered the disputed domain name in 1996. Only the Singapore registration predates the domain registration, yet there is not “strong evidence of use and notoriety” to suggest that Tucows was aware of the mark.

The Panel accepts Tucows’ assertion that its personalized email service is a bona fide offering of services, and attempts to determine when that offering began. Though in some decisions panels have held that the disputed domain was registered on the date it was transferred to the respondent, the Panel here finds that approach to be inappropriate when, as here, the domain is used in conjunction with an ongoing business. Accordingly, the date of registration is considered to be the date of first registration, i.e., 1996. Even if registration were placed at the date of transfer, there is no evidence that the use was not bona fide on that date, as Tucows claims to have been unaware of Lorenzo until it received the complaint.

Accordingly, the Panel finds that Tucows has a legitimate right and interest in the disputed domain name.

Bad Faith

In light of the previous finding, the Panel does not consider this ground. However, the Panel notes that it “would not find bad faith registration or use” based on the above findings.

Decision

The complaint is denied.

Commentary

Substantively, I have no quarrel with this decision. However, the opinion is full of typos and inadvertent substitutions of “Respondent” for “Complainant” and vice versa. I found that somewhat disconcerting, especially considering that this was a three person Panel. You’d think at least one of them would have noticed the phrase “bone fides.”

March 17, 2011 / Nate Harris

Only in Texas: Registrant of texaslotterylive.com proves rights or legitimate interest through bad faith use

Summary of Texas Lottery Commission v. CyberIntegration, LLC
(Nat. Arb. Forum Claim No. 1370321)

Filed: January 31, 2011; Decided: March 1, 2011 (Panelists: Hugues G. Richard, Karl V. Fink, and Diane Cabell)

Disputed domain name: <texaslotterylive.com >

texaslotterylive.com

The Parties

Complainant Texas Lottery Commission (“Texas Lottery”) is the official operator of the Texas state-run lottery. Since 1992, it has used the registered marks TEXAS LOTTERY & Design (registered in 1993) and TEXAS LOTTERY (registered in 2003) in connection with the those lottery services, including the website it operates at <txlottery.org>.

Respondent CyberIntegration, LLC (“CyberIntegration”) registered the disputed domain name on July 31, 2006.  It uses the disputed domain name in conjunction with a website that displays results of drawings conducted by Texas Lottery, as well as links and content from competitors of Texas Lottery.

Identical or Confusingly Similar

Texas Lottery has established rights in the mark TEXAS LOTTERY, through its trademark registrations and its continuous use of the marks since 1992. The disputed domain name is composed of Texas Lottery’s mark plus the “generic” term “live.”

Accordingly, Texas Lottery has satisfied the first prong.

Rights or Legitimate Interests

The Panel finds that Texas Lottery has made a prima facie case that CyberIntegration lacks rights and legitimate interests in the disputed domain name. In particular, CyberIntegration’s service of providing lottery results is a bona fide offering of goods and services. “While [Texas Lottery] asserts that it is the only entity authorized to advertise, offer for sale or sell lottery related goods or services in the state of Texas . . ., nothing in the law prohibits anyone from displaying the results of the lottery.”

Though there is “substantial evidence of bad faith use”, the Panel argues that the rights-or-legitimate-interests prong is different than the bad faith prong: “The adjective bona fide was intended, in the opinion of the majority of this Panel, as a descriptor of Respondent’s goods and services, not of Respondent’s state of mind or legal rights. This is why the phrase bona fide is used instead of such adjectives as ‘good faith’ or ‘non-infringing.'” [I think someone needs to brush up on their Latin.] While there may be a viable trademark claim here, “the UDRP was not intended to substitute for a court of law in determining rights between rival competitors.” [Is there any other kind of competitor, really?]

For these reasons, Texas Lottery has not satisfied the second prong.

Bad Faith

Because CyberIntegration is making a bona fide offering of goods or services, “this Panel cannot conclude that the registration of the Domain Name was done in bad faith.” Therefore, the majority of the Panel finds that Texas Lottery has not satisfied the third prong.

Decision

Relief shall be DENIED. It is Ordered that the disputed domain name REMAIN WITH Respondent.

Dissenting Opinion

Panelist Fink dissents from the majority’s finding that CyberIntegration is making a bona fide offering of goods or services. As he graciously points out, “Bona fide means done or made in good faith.” In his view, “bona fide refers to the good faith intent in using the domain name,” and “[k]nowingly using the mark of another in a domain name to market services or products does not constitute a bona fide offering of goods or services.” He cites decisions where rights or legitimate interests were found to be lacking where the respondent offered pay-per-click websites and sites marketing competing products.

Commentary

This decision is kind of a head-scratcher for me. The Panel admits that “there is substantial evidence of bad faith use” by CyberIntegration, but nonetheless finds that that it  has rights or legitimate interests in the domain. This finding is based on the Panel’s reading of Paragraph 4(c)(i) of the Policy as requiring only bona fide goods or services, “not  [a bona fide] state of mind or legal rights.” I’m not sure I even understand what bona fide goods or services are. Will the respondent always win on the second prong, so long as they are not selling illegal fireworks or Cuban cigars? Paragraph 4(c)(i) of the Policy allows a respondent to overcome a prima facie case that it lacks rights or legitimate interests by showing the following:

before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services

The plain language of the Policy requires a bona fide offering of goods or services, i.e., a non-bad-faith offering. The Panel found substantial evidence of bad faith use here. Therefore, CyberIntegration should not have been able to overcome Texas Lottery’s prima facie case that CyberIntegration lacked rights or legitimate interests in the disputed domain name.

The dissenting opinion is absolutely right: [k]nowingly using the mark of another in a domain name to market services or products does not constitute a bona fide offering of goods or services.” Of course, Texas Lottery would still have to prove bad faith registration…

March 10, 2011 / Nate Harris

Betty Bossi’s 11 year delay leads to denial of UDRP on bettybossi.com

Summary of Betty Bossi Verlag AG v. SinoSwiss Co., Ltd.

(WIPO Case No. D2010-2264)

Filed: December 23, 2010; Decided: February 22, 2011 (Panelist: Sir Ian Barker)

Disputed domain name: <bettybossi.com>

bettybossi.com

The Parties

 

Complainant Betty Bossi Verlag AG (“Bossi”) is “a Swiss corporation which publishes books and magazines on cooking, nutrition, decoration, gardening and healthy living. It also offers classes on cooking and nutrition on television and sells convenience food products.” Bossi takes its name from a fictional cook who was created in the 1950’s. [Who would want to learn cooking and nutrition from a “Bossi” cook?] The Bossi name began being used on a magazine in 1972, and the mark BETTY BOSSI was registered in Switzerland in 1993.

Respondent SinoSwiss Co., Ltd. (“SinoSwiss”) registered the disputed domain in 1999. It is engaged in “management, testing, coaching and recruitment services in the Asia-Pacific region,” which services it promotes to women using the BETTY BOSSI mark. SinoSwiss owns Thai registrations dating to 2000 for the marks BETTY BOSSI and BETTYBOSSI.COM. According to SinoSwiss, the disputed domain name is based a combination of the first name of its administrator and the first letters of the phrases “Be unique”; “Open-minded”; “Sincere”; “Service minded”; “Initiative”.

Identical or Confusingly Similar

“There can be no doubt that the disputed domain name is identical to the Complainant’s registered Swiss trademarks.”

Rights or Legitimate Interests

Bossi relies on the fact that, before notice of the dispute, it was using the disputed domain in connection with a bona fide offering of goods and services. In the Panel’s view, “[t]he available evidence shows that the Respondent has been using the disputed domain name for 11 years in connection with its apparently legitimate business of offering career-enhancement for women.”

Bad Faith

The Panel highlights Bossi’s delay in taking action against the disputed domain:

This is a case where the Complainant has apparently gone to sleep on its rights for a long period. It complains about a domain name some 11 years after it had been registered. No explanation was offered by the Complainant for its delay in filing a complaint. Whilst the equitable doctrine of laches does not apply under the Policy, the longer the interval between registration of the disputed domain name and the filing of a complaint under the Policy, the harder it becomes for a complainant to prove bad faith registration and bad faith use. Both need to be proved.

In the present case, the Complainant’s difficulties [in proving bad faith] are exacerbated by the difficulty for the Panel in being able to infer that the mark of a company which seemingly trades almost exclusively in Switzerland in selling cooking publications and associated products would have been known in Thailand in 1999 by a company which markets self-improvement courses for women in South-East Asia.

The only indication of bad faith registration is that one of the founders of the Respondent appears to have Swiss origins. In that light, the Panel must confess to a certain skepticism about the narrative relating to the choice of name for the Respondent’s operations. However, these misgivings are not enough to create an inference of bad faith registration, given the unexplained delay of 11 years by the Complainant in asserting its rights. It is unnecessary for the Panel to rule on bad faith, since the Respondent has established a defence under paragraph 4(c)(i) of the Policy.

Decision

The complaint is denied.

Commentary

Parts of this decision leave my scratching my head. The Panel notes that one of the founders of SinoSwiss is (surprise!) Swiss, and that Bossi’s BETTY BOSSI mark is “well-known.” Then why does the Panel have “difficulty . . . in being able to infer” that Bossi’s well-known mark would be known to a company whose founder was Swiss? The fact that he moved to Thailand doesn’t change anything.

Furthermore, the Panel asserts that, while laches does not apply to UDRP proceedings, “the longer the interval between registration of the disputed domain name and the filing of a complaint under the Policy, the harder it becomes for a complainant to prove bad faith registration and bad faith use.” This may be true as a practical matter, as witnesses and evidence fade away, but the Panel seems to imply that the burden of proof grows as a matter of law over time. That’s just not the case. Bad faith is bad faith anytime you can prove it, whether it occurred 11 years ago or 11 days ago. This “gradual laches” concept is not applicable.

Looking at the evidence of bad faith with a fresh eye, a company with a Swiss founder has selected a fanciful mark that is identical to a well-known Swiss mark. I share the Panel’s “certain skepticism about the narrative relating to the choice of name for the Respondent’s operations” involving self-improvement courses for women. A quick visit to the Wayback Machine increases those suspicions. In 2001, the disputed domain pointed to a page entitled “Asian Wedding Giftstore” offering “PERSONALIZED GIFT OR REMEMBRANCE ITEMS: ATTRACTIVE FACTORY PRICES!” By 2007, the disputed domain pointed to a placeholder “under construction” page. It seems as though the self-improvement courses for women are a relatively new development. At the least, the domain was clearly not selected based on the acronym of empowering phrases I listed above, which changes the analysis under the rights-or-legitimate-interests prong and the bad faith prong.

Unfortunately, I think the Panel got hoodwinked.

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