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.
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.
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.
Lewis & Lin obtained another UDRP victory this week, defending the domain name <palace.com> against a complaint filed by the owner of The Palace of Auburn Hills, home to the Detroit Pistons.
The complainant had argued that the domain name was confusingly similar to its registered trademark THE PALACE OF AUBURN HILLS, and its common law rights to the mark PALACE. Complainant further argued that our client lacked rights or legitimate interests to the domain name, and that our client registered and was using the domain name in bad faith.
Lewis & Lin defended the domain dispute on three grounds. First, the domain name <palace.com> was not identical or confusingly similar to a mark the complainant had rights to. Regarding complainant’s federally-registered trademark, its five-word mark combined the generic word “palace” with the geographic modifier “of Auburn Hills,” and therefore obtained distinctiveness only in the combination as registered. Regarding complainant’s allegation that it had common law rights to the term “Palace,” complainant had failed to offer any evidence in support of its claim.
Second, Lewis & Lin pointed out that our client had spent several years prior to learning of the UDRP to prepare to use the domain name in connection with an online gambling business that it was contemplating. Lewis & Lin submitted proof of our client’s actions in creating a website, executing an SEO and marketing strategy, obtaining required licenses, and entering into contracts to develop its business.
Finally, Lewis & Lin argued that the complainant failed to show that our client both registered and used the domain name in bad faith—a required element under the UDRP.
A three-member panel of the World Intellectual Property Organization (“WIPO”) agreed with Lewis & Lin on all three points, ruling for our client, and denying the complaint in its entirety. The full decision is available here.