In a hotly contested domain name dispute, Lewis & Lin today received notice that the World Intellectual Property Organization granted its complaint seeking to transfer the Opentime.com domain name. Our client, Connecting Open Time LLC of Texas, holds a U.S. Trademark Registration for OPENTIME and is the creator of the Opentime scheduling app, which first became available in 2014.
The respondent, an American citizen residing in Japan who was apparently a software marketing professional, registered the domain name in 2016 and contemporaneously filed a trademark application in Japan for OPEN TIME.
In agreeing with us that the respondent lacked legitimate interests to the domain name, a single member panel of WIPO found that “Respondent acquired the disputed domain name after the disputed domain name was put up for sale by Afternic in or about late March 2016, filed a trademark application in March 2016 in Japan (which requires no proof of use) for OPEN TIME, used a privacy service to shield his identity, used the disputed domain name with a click-through portal that included links to timesheet software and related links, and offered the disputed domain name for sale.”
The WIPO panelist further found that the respondent was “likely aware of Complainant when he acquired the disputed domain name” and “failed to come forward with any documentary or credible evidence” that he registered the domain name for a good faith purpose. Accordingly, the panelist ruled that the respondent registered and used the disputed domain name in bad faith, and ordered that the name be transferred to our client.
The case is Connecting Open Time, LLC v. Domains By Proxy, LLC / Kyle Burns and can be accessed here.
Lewis & Lin scored a victory for our client this week in defending his domain name against a trademark holder’s attempt to seize it.
The complainant, Tobam, a Paris-based asset-management firm, filed a complaint under the Uniform Domain Name Dispute Resolution Policy, arguing that our client’s registration and use of the
We argued that our client did not register and use the domain name in bad faith, but rather the complainant instituted the UDRP action itself in bad faith in an effort to “reverse hijack” the domain.
Under the UDRP, a complaining trademark holder can seek to transfer a domain name registered by someone else if it shows (1) the respondent’s domain name is identical or confusingly similar to a trademark in which the complainant has rights, (2) the respondent lacked rights or legitimate interests in the domain name, and (3) the respondent registered and used the domain in bad faith. Reverse Domain Name Hijacking is defined as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
In our case, the complainant did not dispute that our client registered the domain name in 2004–yet the complainant was not incorporated until 2005, and only started trading under the “Tobam” name in 2008. Citing the long-established consensus view under the UDRP, the single-member panel of the World Intellectual Property Organization wrote: “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established . . . the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
Furthermore, at Lewis & Lin’s urging, the panelist concluded that the complainant sought to mislead the panel by omitting key facts about its failed attempts to purchase the disputed domain name, which demonstrated the complainant attempted to bully our client into selling the domain at less than its value. “This is a classic ‘Plan B’ case,” the panel concluded, “using the Policy after failing in the marketplace to acquire the disputed domain name” and thus “a highly improper purpose.” For these reasons, the panel denied the complaint and found Tobam guilty of Reverse Domain Name Hijacking.
If you are involved in a domain name dispute, please contact us at email@example.com.
Last week, Lewis & Lin received a decision from the National Arbitration Forum denying the claim of The Sinclair Group against our client, a best-selling author, award-winning scholar and global business consultant.
The complainant argued that it has had a federal registered trademark for RAPID TRANSFORMATION since 2006 for technical consulting services and business management consulting, and that it has been offering operations management consultancy services under the mark since 2004. It further argued that our client’s RapidTransformation.com domain name redirected web users to a website offering directly competing services, thus constituting illegitimate and bad faith use.
On behalf of the respondent, Lewis & Lin showed that our client was an internationally recognized expert on organizational and leadership transformation who has written five books on how organizations and businesses manage change. One of those books, “Rapid Transformation: A 90-day Plan for Fast and Effective Change,” was published in 2007 by the Harvard Business Review Press. We provided evidence that our client had been using the phrase “rapid transformation” as part of his global business consulting services since 2002.
We further argued that the words “rapid” and transformation” are common use, generic, dictionary words, and that our client registered the domain name for its descriptive significance—not to take advantage of the complainant’s mark.
A single-member panel of the National Arbitration Forum ruled in favor of our client. The panel found that although our client’s RapidTransformation.com domain name was identical to complainant’s RAPID TRANSFORMATION registered trademark, our client had established sufficient rights or legitimate interests to the domain name pursuant to the Uniform Domain Name Dispute Resolution Policy. The panel further concluded that the complainant failed to establish bad faith registration and use of the domain name, as is required under the policy.
The case is The Sinclair Group Nevada, LLC v. Tabrizi, FA1606001679802 (NAF Aug. 3, 2016) and can be accessed here. Please contact us if you have any questions about domain name disputes or the UDRP.
Lewis & Lin recently won a motion for summary judgment in our case against a domain name cybersquatter. We represented plaintiff Alpha Recycling, Inc. a New York company that recycles catalytic converters and scrap metal. The defendant was a precious metal broker who sold several million dollars’ worth of catalytic converters to our client before their business relationship soured. During the course of their dealings, defendant registered a number of domain names that used the term “alpha” in relation to recycling services, including
Lewis & Lin filed a complaint in Federal Court in New York asserting claims for cybersquatting under the Anticybersquatting Consumer Protection Act (“ACPA”), as well as common law claims for defamation and trade libel, unfair competition, and trademark infringement. We also filed a motion seeking summary judgment on our cybersquatting claim.
Under the ACPA, to successfully assert a claim for cybersquatting, a plaintiff must demonstrate that (1) its marks were distinctive at the time the domain name was registered; (2) the domain names complained of are identical to or confusingly similar to plaintiff’s mark; and (3) the infringer had a bad faith intent to profit from that mark. The defendant opposed summary judgment on two grounds: that the ALPHA mark was not distinctive, and that defendant lacked the requisite bad faith.
We argued that the term ALPHA, when used in connection with plaintiff’s goods and services, is arbitrary and therefore inherently distinctive and entitled to trademark protection. As to the defendant’s bad faith, we pointed out that visitors to the domains at issue were directed to defendant’s own website. The defendant testified that he redirected the traffic in order to “get back at [Alpha]” because “they had taken away a very large portion of [his] business.” He also posted a video to YouTube with the title “Alpha Catalytic Converter Recycling Experts” that was actually a commercial for defendant’s own business. Finally, we submitted evidence to show that defendant is a repeat cybersquatter who had registered domain names incorporating the marks of other firms.
Judge J. Paul Oetken of the Southern District of New York agreed with us on both points and ruled in our favor. The case is Alpha Recycling, Inc. v. Crosby, No. 14-CV-5015 (JPO), S.D.N.Y.
A federal court in Arizona today ruled in favor of our client whose domain name was stolen from her eNom account, apparently by a hacker based in China.
Our client, the plaintiff, is a domain name investor who registers generic and descriptive domain names that have value, holding them for development or possible resale. The domain name at issue was <640.com>. Domain names consisting solely of numbers have particular value in China due to their ability to transcend language barriers and provide for limitless usage possibilities.
The defendant appeared to use a number of different proxy servers to mask his true IP address, location, and identity in order to access plaintiff’s account and perpetrate the theft. After gaining access to plaintiff’s account with eNom, defendant transferred the domain to his own eNom account. By the time our client found out, the defendant had already re-transferred the domain to a separate account with GoDaddy. GoDaddy refused to return the domain name to plaintiff.
Lewis & Lin filed suit in U.S. District Court in Arizona (where GoDaddy’s is located), and subsequently filed a motion to effect service on the defendant by email, which was granted. Upon the defendant’s failure to respond, the federal court entered default against him, and then issued judgment. The judgment declared plaintiff as the rightful owner of the domain name, and further made the following order:
Upon Plaintiff’s request, Defendant YAN WANG; their officers, directors, employees, agents, subsidiaries, distributors and all persons in active concert or participation with them having notice of this Order; and those with actual notice of this Order, including any domain-name registrars, domain-name registries or their administrators, are directed to immediately record, change, or assist in changing the registration of record for the Domain Name in Plaintiff’s name and into an account with a domain-name registrar of Plaintiff’s choosing.
The case is Tai v. Wang, No. CV-15-01857-PHX-GMS (D. Ariz. Jan 28, 2016).