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 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.
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.
In another UDRP victory, Lewis & Lin won the transfer of a significant domain name for our client.
Lewis & Lin filed a complaint with the World Intellectual Property Organization (“WIPO”) on behalf of Warehouse Goods, Inc., an internationally-marketed vaporizer company with products ranging from aromatherapy to e-cigarettes. Warehouse Goods is the owner of multiple U.S. trademark registrations for the VAPE WORLD® mark, as well as a community trademark in the E.U.
The domain name registrant had been using the Vape-World.com domain to redirect users to a website selling products in direct competition with Warehouse Goods. Lewis & Lin argued that such use—purely for financial gain and based on the diversion of internet users—was done in bad faith and failed to qualify as a legitimate use of the domain.
A single-member panel of WIPO agreed, ruling that the respondent “capitalized on Complainant’s well-known VAPE WORLD Marks to take advantage of customer confusion and divert sales to Respondent’s own financial benefit.”
The case is Warehouse Goods, Inc. v. Domains By Proxy, LLC / Anthony Barron, WIPO Case No. D2014-0709 (June 24, 2014) and can be accessed here.
Last week, a unanimous three-member panel of the World Intellectual Property Organization (WIPO) held in a domain name dispute that the owner of Shocking.com had legitimate rights to the domain name <Shocking.com>, based on its long-term use in connection with an ISP. Interbasic Holding, S.A. v. Shocking, No. D2012-0654 (June 7, 2012). The dispute involved the acquisition of the domain name as a part of a going concern business. The Respondent operates a network of ISPs, whereas the Complainant owns trademarks for fragrances. In denying the Complaint, the Panel held that: “[t]he Panel is not convinced that the Respondent acquired the Disputed Domain name with the intent to profit from the Complainant’s trade mark. The Respondent’s business is so distinct from the business of the Complainant that Internet users or customers are unlikely to be confused as to whether the Respondent may be associated, affiliated or sponsored by the Complainant, which precludes the presumption that the Respondent acquired the Disputed Domain Name, expecting to profit from this confusion.”