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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.

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…