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Tag Archives: UDRP

Lewis & Lin Obtains Transfer of Domain Name Against Japanese Registrant

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 Obtains a Finding of Reverse Domain Name Hijacking by WIPO Panel

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 domain name violated the terms of the UDRP, and that the name should be transferred the complainant.

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 trademarks@ilawco.com.

Lewis & Lin Defends RapidTransformation.com Domain Name Against Claim by Registered Trademark Owner

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 Wins Domain Name Dispute Against Sham Criticism Site

Lewis & Lin won a UDRP decision today for our client, AAC Enterprises, LLC, of Metairie, Louisiana. AAC is the owner of the ORACLE brand of automotive lighting products, including ORACLE halo headlights and headlight kits. Internationally recognized as a leader in solid-state automotive LED technology, ORACLE lights have generated tens of millions of dollars in sales since AAC introduced them to the market in 2005.

The disputed domain name, oraclehalos.com, was registered in November 2014 and used for a website ostensibly operated by an anonymous former distributor of AAC’s products. The website appeared to be a complaint site, but then directed readers to one of AAC’s competitors, whose products the former distributor claimed to stock and install. Lewis & Lin argued that such use was commercial in nature, caused confusion with our client’s trademark rights, and was done in bad faith.

A single-member panel of the World Intellectual Property Organization (WIPO) agreed. The panelist ruled: “the disputed domain name is inherently confusingly similar to the Complainant’s trademark and is being used to mislead Internet users into visiting a site criticizing the Complainant’s products and praising those of a specific named competitor.” In attracting Internet users by creating a likelihood of confusion with AAC’s ORACLE mark, and then attempting to profit commercially by selling competing products, such conduct constituted registration and use bad faith. The panelist ordered that the domain name be transferred to our client.

The decision, AAC Enterprises LLC v. Whoisguard, Inc. / Zain Venezuela, can be accessed here. For more information on Lewis & Lin’s domain name litigation practice, contact David Lin.

Lewis & Lin Wins Two Domain Name Disputes

Lewis & Lin attorneys recently obtained two separate domain name victories for our clients in a single week.

In FPK Services, LLC v. Michael Dubendris, we represented the complainant. Our client owned the STDcheck.com website for the provision of online testing services for sexually-transmitted diseases. The respondent had registered STDchecks.com in a clear attempt to divert internet users to its own site, which provided similar services. While the complainant did not have a registered trademark, we were able to show by affidavit that it had used the STDCHECK mark associated with its website continuously and extensively in connection with online testing services. We further showed that the complainant had spent $150,000 on advertising and marketing its services every month. The respondent was a former affiliate of our client’s, and his website contained similarities to our client’s site that were clearly intended to divert our client’s customers. A single-member panel of the National Arbitration Forum agreed with our arguments, and awarded our client with the disputed domain name.

In Boston Private Financial Holdings, Inc. v. Eric Kuniholm, we represented the respondent in a dispute concerning the domain names bostonprivatewealth.com and bostonprivatewealthmanagement.com. The complainant, a national financial services organization managing over $30 billion of client assets, was the owner of websites located at bostonprivate.com and bostonprivatebank.com. It also owned a U.S. trademark registration for BOSTON PRIVATE BANK & TRUST COMPANY. In addition, complainant had allowed its U.S. trademark registration for BOSTON PRIVATE WEALTH MANAGEMENT GROUP to lapse, but had an active application for BOSTON PRIVATE WEALTH MANAGEMENT. Our client was a financial professional who owned a number of valuable domain names, including privatewealthmanagement.com. In pursuing a marketing policy of collecting generic and descriptive domain names for lead generation purposes, he also registered some 700 descriptive domain names containing the root “private wealth management” and similar phrases with geographic descriptors. For instance, the respondent registered: NewYorkPrivateWealthManagement.com, DubaiPrivateWealthManagement.com, PrivateWealthManagementAdvisor.com, and many more.

A majority of a three-member panel of the National Arbitration Forum ruled in favor of our client. The majority agreed with Lewis & Lin that the complainant failed to show that the disputed domain names were identical or confusingly similar to complainant’s trademarks. The panel noted that while there were similarities between the federal trademark registration and the disputed domain names, “the similar elements of both are generic and descriptive of financial services provided in the Boston area.” Moreover, as a trademark application does not establish a trademark right, the complainant failed to show it had rights to the term “Boston Private Wealth Management.” The panel accordingly ruled in favor of our client.