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September 28, 2016 / Nate Harris

Dollar Bank recovers BITDOLLARBANK.COM

Summary of Dollar Bank, Federal Savings Bank v. Thomas Pillsworth, BTCNYEX

(WIPO Case No. D2016-1403)

Filed: July 8, 2016; Decided: September 7, 2016 (Panelist: Richard W. Page)

Disputed domain name: <bitdollarbank.com>

screen-shot-2016-09-25-at-8-28-54-pm

Screentshot of <bitdollarbank.com> as of Sept. 25, 2016

The Parties

Complainant Dollar Bank, Federal Savings Bank (“Dollar Bank”) is a U.S.-based bank that owns federal trademark registrations for DOLLAR BANK and DOLLARBANK.COM, registered in in 2008 and 2009, respectively. [The DOLLAR BANK registration disclaims the exclusive use of the word “BANK” apart from the mark as shown.]

Respondent Thomas Pillsworth, BTCNYEX (“Pillsworth”) registered the disputed domain on March 13, 2015.  According to Dollar Bank, the disputed domain did not point to an operative website.

Pillsworth’s response to the Complaint was an email to WIPO–sent after WIPO notified the parties of Pillsworth’s default–contesting whether the “generic” terms “bit” or “dollar” could afford trademark protection.  [He didn’t question the distinctiveness of “bank.”]  The Panel considered this informal (and late) response.

Trademark Rights

The Panel finds that Dollar Bank’s trademark registrations are prima facie evidence of their validity of the marks, creating a rebuttable presumption that the marks are inherently distinctive. Pillsworth’s contentions regarding “bit” and “dollar” are found insufficient to overcome the presumption.  The Panel therefore finds that Dollar Bank has trademark rights for purposes of the proceeding.

Identical or Confusingly Similar

Citing the decision in Rapidshare AG v. Randi (WIPO Case No. D2010-1089), the Panel observes that “[n]umerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the Disputed Domain Name is confusingly similar to the DOLLAR BANK Mark.”  Thus, the Panel finds the disputed domain to be confusingly similar to Dollar Bank’s marks.

Rights or Legitimate Interests

Dollar Bank alleged that the disputed domain is not pointed at an active webpage, and so is not part of a bona fide offering of goods or services; Dollar Bank also asserted that Pillsworth is not “commonly known by” the disputed domain, nor is he making a legitimate noncommercial or fair use of the domain.

Because Pillsworth did not respond to rebut this showing, the Panel finds that Dollar Bank has demonstrated Pillsworth’s lack of rights or legitimate interest in the domain.

Registered and Used in Bad Faith

The Panel finds bad faith by Pillsworth based on three factors.

First, it cites Telstra Corp. v. Nuclear Marshmallows (WIPO Case No. 2000-0003) for the proposition that “registration together with ‘inaction’ or ‘passive use’ and other facts can constitute bad faith use.”

Second, the Panel finds that Pillsworth had constructive knowledge of Dollar Bank’s trademark registrations and/or common law rights when registering his domain name.  According to the Panel, “[c]onstructive knowledge of Complainant’s rights in the DOLLAR BANK Mark is a factor supporting bad faith.”

Third, the Panel notes “the use of Complainant’s entire mark in the Disputed Domain Name, thus making it difficult to infer a legitimate use of the Disputed Domain Name by Respondent.”  The Panel cites Cellular One Group v. Paul Brien ( WIPO Case No. D2000-0028) for the proposition that wholly incorporating a mark in this manner is evidence of bad faith.

Thus, bad faith is found based on (i) Pillsworth’s “passive holding” of the domain by “failing to post any content on the Internet”; (ii) Pillsworth’s constructive knowledge of Dollar Bank’s trademark registrations; and (iii) the domain name’s incorporation of the entire DOLLAR BANK mark.

Decision
The Panel orders that the disputed domain name be transferred to Dollar Bank.

Commentary

The bad-faith analysis in this decision warrants a closer look.

First, while the Panel notes that passive holding “and other facts” can constitute bad faith use under Telstra and other decisions, it doesn’t say what those other facts are here.  In Telstra, the other facts included that the Complainant’s trademark had a “strong reputation” and was “widely known” as evidenced by “substantial use” in multiple countries, and that the Respondent (“Nuclear Marshmallows”) took active steps to conceal its true identity and provided false contact detail for the registration. Since Telstra, those factors have coalesced into the “consensus view” of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).  In short, passive holding can be evidence of bad faith where the complainant’s mark is well known and the respondent has concealed its identity.

Here, by contrast, the only evidence of Complainant’s trademark rights is its two registrations– there is no evidence regarding the reputation of the DOLLAR BANK mark or the extent to which it is used.  Respondent Thomas Pillsworth also apparently used his true identity to register the domain.

Second, the Panel finds bad faith in Pillsworth’s constructive knowledge of the DOLLAR BANK mark.  Yet as the WIPO Overview 2.0 summarizes, “[p]anels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP,” except where there are indicia of cybersquatting–again, not in evidence here.  The consensus by these panels makes sense, because constructive notice simply avoids the defense of lack of knowledge of trademark rights; it does nothing to show bad faith intent, which needs to be affirmatively shown by a UDRP complainant.

Third, the fact that the domain incorporates the complainant’s entire mark may be relevant or even noteworthy, but it’s certainly not dispositive in all cases– for example, BUDWEISER.COM incorporates the entire “W” mark of W Hotels, but that’s hardly evidence of bad faith by the beer company.  In the Cellular One Group decision cited by the Panel, bad faith registration of <cellularonechina.com> was found where the trademark was “a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well known mark” (emphasis added).  There is no evidence here that the mark is well-known, so one can’t assume that Pillsworth must have known about Dollar Bank’s mark.

The circumstances evidencing bad faith registration and/or use in Paragraph 4(b) of the Policy are just examples.  But a common theme emerges; bad faith is shown where the respondent has registered/acquired the domain name in order to (i) to sell it to the complainant or a competitor of the complainant for a profit; (ii) prevent the complainant from registering a domain incorporating the mark, as part of a pattern of conduct; (iii) to disrupt the business of a competitor; or (iv) attract visitors to a website associated with the domain name by creating a likelihood of confusion with the complainant’s mark.  Each of the four examples requires that the complainant demonstrate evidence of the respondent’s awareness of –and intent to profit from–the complainant’s mark.

There doesn’t seem to be any such awareness here.  The decision does not mention that “bit” in the context of currency most likely refers to bitcoins, but the respondent here is “Thomas Pillsworth, BTCNYEX”; the Twitter feed for user @btcnyex tweets about bitcoin-related news, and lists an associated website (bankblockchain.io) that is also registered to Mr. Pillsworth.  If I were to speculate, I would guess that Mr. Pillsworth registered <bitdollarbank.com> to evoke bitcoin banking, and had no awareness of the DOLLAR BANK marks–or at least was not trying to exploit their goodwill.  Though the Panel’s decision cites only decisions from 2000, more recent cases would suggest that this is not a situation the UDRP is intended to remedy.

 

 

September 20, 2016 / Nate Harris

KGP Telecom can’t prove bad faith with KGP.COM

Summary of  KGP Telecommunications, Inc. v. KGP International Ltd.

(NAF Case No. FA1607001685573)

Filed: July 27, 2016; Decided: September 7, 2016 (Panelists: Douglas M. Isenberg; Reinhard Schanda; Hon. Karl V. Fink (Ret.))

Disputed domain name: <kgp.com>

screen-shot-2016-09-17-at-8-44-42-pm
kgp.com

The Parties

According to Complainant KPG Telecommunications, Inc., it was founded in 1973 and has become a “leading provider” of supply chain solutions and other services for the communications industry.  It has over 2,000 employees in 15 locations in the United States.  It owns a U.S. trademark registration for the mark KGP for distributorship-related services; the registration claims a first use date going back to 1985, and was registered on January 19, 2010.

Respondent registered the disputed domain the following day, January 20, 2010.  The “registrant name” identified Michael Gleissner, the well-known owner of many three-letter domain names. Since at least September 2013, the domain has resolved to a landing page [Screenshot above] promising a “new project is coming to you.” Complainant asserts that several hundred of Mr. Gleissner’s domains resolve to the same landing page.

In June 2016, Complainant contacted Respondent to inquire about purchasing the domain.  The Respondent indicated that it would not engage without a “serious offer in the 6 figures.”

On July 15, 2016, the WHOIS record for the domain was changed to list “KGP International Ltd.” as the registrant name; other details were unchanged.   The present Complaint was filed on July 27, 2016, and on August 8, 2016, before filing its response, Respondent filed a trademark application for the mark KGP.COM in connection with various entertainment-related services.  [Some extra-decision research: the same day, companies called KGM International Ltd. and KGN International Ltd., both having the same address as the Respondent, also applied to register the marks KGM.COM and KGN.COM, respectively, all for identical services.]

Complainant filed a reply to the Response that reiterated the points made in the Complaint.  It also pointed out that Respondent’s post-Complaint trademark filing was made for the purposes of the proceeding, and cited media reports that Mr. Gleissner has sold over 14,500 domain names.

The Respondent then filed a surreply taking issue with the “14,500” domains” story, noting the “dubious nature of the allegation,” and pointing out that it made no effort to sell the domain for almost 6 years before being approached by the Complainant.  The Respondent also argued that the Complaint is barred by laches.

Laches

The Panel declines to invoke laches, quoting WIPO Overview 2.0 for the observation that “[P]anels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP.”  [Note: The Panel doesn’t quote the Overview’s observation that  “a small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”]

Supplemental Filings

The Panel notes the parties’ right to make their additional filings, but also notes that the Panel may disregard them.  It finds the additional submissions here to be “largely repetitive of their previous arguments”; accordingly, it “does not find them helpful, and . . . gives them little attention.”

Identical or Confusingly Similar – Yes

The Panel finds that Complainant’s trademark registration establish rights in and to its KGP trademark.  The second-level portion of the disputed domain <kgp.com> is therefore identical to Complainant’s mark.

Rights or Legitimate Interests – N/A

“[F]or the reasons set forth above and below” with respect to bad faith, the Panel finds it unnecessary to make a finding regarding Respondent’s rights or legitimate interests in the disputed domain.

Registered and Used in Bad Faith – No

The Respondent claimed to be unaware of Complainant or its trademark when registering the domain name, and Complainant adduced no direct evidence to the contrary.  The Panel notes that “panels in similar situations also involving three character domain names have found that a respondent did not register or use the domain name in bad faith.”

The Panel quotes the decision in General Nutrition Investment Company v. John Gates / The Web Group, WIPO Case. No. D2014-0982, in which a Panel declined to transfer another three-letter domain:

Complainant is of course not the only entity in the world entitled to use those three letters in connection with an offering of goods or services, on the contrary, it is more than likely that many entities around the world could be entitled to use a three-letter abbreviation such as TMG. It is entirely feasible for the Respondent to make a bona fide offering under the disputed domain name <tmg.com>. The Complainant has not given any evidence of to what extent the TMG mark is known, and has not presented any evidence to support his assertion that the Respondent knew of the mark when registering the Domain Name.

Noting that it, too, is not in a position to “second guess” the Respondent’s assertions,  the Panel find that the Respondent has shown “contemplated good faith use” of the domain name, and has not taken active steps to conceal its true identity nor provided false contact details.

Furthermore, because the Respondent is “passively holding” the domain, the Panel concludes that confusion is unlikely, particularly where it is unclear whether Complainant’s mark is well-known outside the United States.

Finally, while the Respondent may have indicated a willingness to sell the domain for a high price, “the purchase and sale of domain names for six or even seven figures is often a legitimate practice that does not in and of itself violate the UDRP.”

Decision
The complaint is denied.

Commentary

As the Panel in the General Nutrition Investment Company decision points out, there are probably a lot of companies out there using every possible three letter combination.  So the takeaway here is that, as the disputed domain name gets shorter, a Complainant may have a harder time showing that the Respondent knew of Complainant’s mark when registering and using the domain.

I agree it would be hard to show specific bad faith registration here, and maybe the decision should have been limited to that ground.  The Panel here suggests that there is no evidence of bad faith use of the domain, which I think is arguable.  First, the fact that the Respondent apparently owns several hundred domain names that all lead to the same landing page seems like an obvious attempt to defend a lot of domain names against UDRP complaints; it’s certainly hard to believe that this is evidence of “contemplated good faith use,” as the Panel finds.  Check out kgn.com and kgm.com— look familiar?

The idea that something fishy is going on here is supported by the recent “registrant name” change and the post-complaint trademark filing, particularly in the context of the same things happening in parallel for the <kgn.com> and <kgp.com> domains (and there may be others).  Those seem like classic examples of a respondent having “taken active steps to conceal its true identity,” though the Panel concludes the opposite. I’d be curious to know if there are actually registered entities in the U.K. called KGP International Ltd., KGM International Ltd., and KGN International Ltd., all having the same address.  Call me skeptical.

It’s also interesting that Panel considers the domain to be a “passive holding,” which the WIPO Overview 2.0 defines as, among other things, a domain not associated with an actively-used website.  What about the landing page?  Whether it is legitimately associated with a nascent business or is a smokescreen for UDRP purposes, it’s still an active website.

As I said, I think this complaint fails on bad faith registration alone, so I’m not sure why the Panel suggests, in the face of such funny business, that the Respondent appears to be using the domain in good faith.

Gerald Levine has written about why he thinks the Panel in this case declined to decide the “rights or legitimate interests” prong; definitely a great read.

September 11, 2016 / Nate Harris

Take my domain, please!: Panel denies ex-husband’s request for strategicchoicearchitecture.com

Summary of  Roger Martin v. Sandra Blevins, Social Design

(WIPO Case No. D2016-0181)

Filed: January 28, 2016; Decided: April 7, 2016 (Panelists: Andrew D. S. Lothian; Robert A. Badgley; D. Brian King)

Disputed domain name: <strategicchoicearchitecture.com>

screen-shot-2016-09-11-at-8-15-43-pm
strategicchoicearchitecture.com

The Parties

Since 1998, Mr. Martin has operated a management consulting business named Strategic Choice Architecture.  The business has earned revenue in excess of $18 million, and has consulted for Proctor & Gamble, American Express, and others.  Mr. Martin claims unregistered service mark rights in the name of the business.  [Ironic-in-Hindsight Book Title Spoiler Alert: Mr. Martin is also the author of a book titled Playing to Win: How Strategy Really Works.]

Complainant Roger Martin and Respondent Sandra Blevins were married (to each other) from 2010 to 2013.  While “[t]he Parties dispute the extent of their professional relationship,” it appears to be undisputed that Ms. Blevins provided marketing and business development services for Mr. Martin during the course of their personal relationship, including website design and domain name registration. For example, in 2009, Ms. Blevins registered both the domain name <rogerlmartin.com> and the disputed domain, presumably on behalf of Mr. Martin.  Both domains were registered in her personal name.

The Parties entered into a separation agreement in 2013.  Purporting to “settle[] all issues between the Parties,” the agreement called, in part, for Ms. Blevins to transfer the <rogerlmartin.com> domain to Mr. Martin, which she did.  The disputed domain name was not addressed in the agreement, and Ms. Blevins did not transfer it to Mr. Martin.

Identical or Confusingly Similar – N/A
In light of the Panel’s finding on bad faith (below), it does not address this prong.

Rights or Legitimate Interests – N/A
In light of the Panel’s finding on bad faith (below), it does not address this prong.

Registered and Used in Bad Faith – No
The Panel finds a lack of evidence of bad faith registration, given the “intertwined” nature of the Parties’ personal and professional relationships.  Though Ms. Blevins registered the disputed domain in her own name, that does not necessarily demonstrate bad faith intent in registering the mark, given the nature of the relationship.  And “[t]here are no other facts in the record pointing in the direction of registration in bad faith.”

The Panel then steps back to note the “far wider issues which have been placed before the Panel.”  In particular, questions arise regarding the nature of the Parties’ relationship (whether a “joint adventure,” subcontracting arrangement, or otherwise).  The separation agreement would also need to be addressed, including the term making it the “full and final settlement of all issues between the Parties” despite addressing only one of two domains registered, ostensibly for Mr. Martin, by Ms. Blevins.

While taking no position on the merits of “any wider dispute between the Parties,” the Panel notes that these “commercial” or “family law” issues are “not suited for resolution under the Policy,” which is designed to address “clear cases of abusive cybersquatting.”  Accordingly, the Complaint “must fail.”

Decision
The complaint is denied.

Commentary
The Panel, not surprisingly, declines to jump into a fact-intensive, personal dispute between a divorced couple.  This falls into the “Soured Relationships” category of cases I blogged about back before I let this blog fall by the wayside in (ahem) 2011.  Speaking of which, it’s good to be back.

Of course, Mr. Martin gave the Panel an out by offering no evidence of bad faith registration.  On the one hand, he asserts that he retained his wife to provide “marketing and business development services, including website design and domain name registration,” and that she registered the disputed domain for him in that capacity.  On the other hand, he claims that she “knowingly registered the disputed domain name for herself” in bad faith by listing herself as the registrant.

Yet there is no suggestion that she intended to register the domain for anything other than Mr. Martin’s benefit, and the fact that he was presumably able to freely use the domain for years afterwards for his business would seem to counter this theory of bad faith registration.  Is the idea that she was playing some sinister long game?  Sounds like a great premise for a domain-name-themed psychological thriller.

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.