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In a UDRP dispute resolved by the panel on June 29, 2011, one thing is clear: Babies can have the real 411. Babies411.com, that is…
Denise Fields d/b/a Windsor Peak Press (“Fields”) joined by her husband, both located in Colorado and the owner of baby411.com, brought a UDRP action against Babies411 LLC (“LLC”). Fields is the co-author of a series of books that included the term “411″ in the title (including the book, Baby 411).
According to the UDRP action, “The Complaint states that “411” is used in these book titles because it suggests “information” to North American readers, since that number has long been used for telephone directory information services across the United States and Canada.”
Oops. As a complainant, you don’t want to go around saying that the alleged unique common element of that you’re relying in is really not that unique.
Another oops… In the various ’411′ books, Fields failed to accompany the claimed mark “411″ by the “TM” symbol that would have at least asserted her unregistered trademark rights.
LLC’s position was that Fields had no claim for common law trademark protection. LLC also denied that it had prior knowledge of Fields or the various 411 books, and it also denied that it had any “intent to trade on the Complainants’ reputation.”
LLC asserted it only claim of legitimacy in its interest in domain name, babies411.com as it has a business known by that same name.
Also disclosed by LLC is that there is a pending trademark dispute between Fields and LLC, which is before the USPTO, therefore the UDRP should not be used to resolve the rights questions between the parties. Apparently the Panel disagreed because it did reach a conclusion.
The Panel held that
On balance, it appears more likely that the Domain Name was chosen for its generic value for a parenting website with “the 411” (information) about babies, rather than for the possibility of misleading Internet users seeking information about the Complainants’ Baby 411books. The fact that visitors to the Respondent’s website can find and purchase books about parenting, including the Complainants’, through Amazon.com links does not suffice to establish that the Respondent targeted the Complainants’ unregistered mark in selecting and using the Domain Name.
The burden of proof on this issue, as with each of the elements of the Complaint, is on the Complainant. In a UDRP proceeding, there is no opportunity to conduct discovery, cross-examine witnesses, or assess their demeanor. On the available record, the Panel is presented with a credible, certified Response denying prior knowledge of the Complainants’ asserted mark, accompanied by ample evidence of the generic value and use of the Domain Name. Based on that record, the Panel finds that neither the second nor third elements of the Complaint have been established.
The Panel denied the Complaint.
Don’t overlook the very interesting comment about usage of the disputed domain, when the Panel said:
The fact that visitors to the Respondent’s website can find and purchase books about parenting, including the Complainants’, through Amazon.com links does not suffice to establish that the Respondent targeted the Complainants’ unregistered mark in selecting and using the Domain Name.
That comment will be very important to other domain name owners who register a name with a legitimate purpose in mind, then face a UDRP for post-registration linking that would otherwise appear to be for trading off of the unregistered mark.
Here is a link to the full decision:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0688
WIPO ADMINISTRATIVE PANEL DECISION
Eneco BV v. Eneco
Case No. D2010-0548
Decided July 7, 2010
(Domain name in dispute: eneco.com)
Sometimes the other side shoots down your case with evidence they produce. It happens, and that’s the legal process.
What’s worse, however, is when you, as Complainant submit evidence that you believe makes your case, and yet utterly disproves a necessary element of the UDRP, resulting in the loss of your action. It’s even worse when the Respondent did not file a reply to the action!
Take as an example the UDRP case of Eneco BV v. Eneco, decided by the WIPO in July, 2010. As you might guess, the case involves the trademark name “eneco” and the domain name eneco.com.
Complainant Eneco BV filed its trademarks as early at 1994. Respondent Eneco was a corporation formed in 1991 in Utah, USA. It appears that the Utah Eneco lost its corporate status for non-renewal in 2008.
Here’s where Eneco BV killed its own case: As said by the Administrative Panel,
“Complainant attached as an annex to the Complaint a copy of the Business Entity Search for Respondent, in which documents from the records of the Utah Department of Commerce disclosed that Respondent’s status had expired on June 6, 2008, for failure to file renewal.”
That gave the Panel a clear legal indication that Eneco (Utah) likely had some legal rights to the name “Eneco” so that was the first nail in Complainant’s coffin which it hammered in, itself.
Then, helpfully, Eneco BV hammered another nail in its coffin:
“Complainant filed as part of its evidence a copy of a Business Entity Search of the State of Utah, Department of Commerce dated April 12, 2010, relating to Respondent, Eneco, Inc. The Business Entity Search shows the Registration Date of Respondent as a corporation was March 6, 1991. The address of Respondent corporation is shown as Salt Lake City, UT. The Business Entity Search shows an individual having the same address as Respondent as the Registered Agent of Respondent. The Business Entity Search shows the status of Respondent corporation as “Expired” for “failure to File Renewal” on June 10, 2008.” (Emphasis added)
Helpfully, the Panel added a couple of nails of its own in Eneco BV’s coffin:
“A search of <eneco.com> on the Internet Archive Wayback Machine at “www.archive.org” provided copies of numerous webpages of Eneco in the period between 2002 and 2008 relating to high-efficiency semiconductor technology for heat-to-electricity converters and solid state heat pumps. Some webpages disclosed the United States Trademark Registration identifier comprised of the letter “R” in a circle. The entry of “eneco” as a search term in the United States Patent and Trademarks Office database disclosed Respondent as the registered owner of United States Trademark Registration Number 1963651 on the Principal Register for the trademark ENECO applied for on September 14, 1993 and registered on March 26, 1996 in relation to licensing of intellectual property rights respecting clean energy.”
So, without further ado, the Panel made its obvious findings:
“The Panel finds that Respondent Eneco, Inc. was registered as a corporation on March 6, 1991 based on the information of the State of Utah, Department of Commerce, Business Entity Search and part of the record in this case. The 1991 corporate registration date receives proximate time support from Respondent’s United States Trade Mark application for ENECO applied for in 1993 in the name of Eneco, Inc. and registered in 1996 in the name of Eneco, Inc.
Respondent having registered a corporation under the name Eneco, Inc. in 1991 and carried on business under that name prior to Complainant’s evidence of use of, application for and registration of its Benelux and other trademarks for or including ENECO was not involved in the abusive registration of the disputed domain name <eneco.com>.
The Panel finds that Complainant has failed to prove that Respondent registered the disputed domain name in bad faith.”
As the burden is on the Complainant to prove all of the elements of the UDRP, so its own evidence killed its case, and lead the Panel to find additional evidence to seal Eneco BV’s fate.
What was left unsaid by the Panel was whether they considered a Reverse Domain Name Hijacking charge against Eneco BV. Because of the evidence submitted by Eneco BV, it knew or should have known that it could not prove in good faith all of the UDRP elements. Some panels have taken it upon themselves to make the RDNH finding without prompting from the Respondent.
* * *
If you think you need assistance in a domain name UDRP case, whether as the Complainant or the Respondent, please contact us for a free initial consultation. Even the call is free. 877-789-UDRP (877-789-8377).
Here’s an interesting UDRP decision that may ‘evoq’ a response in you…
In 2004, Dynamo.com (a branding company in New York) registered the domain ‘evoq.com’ for a client who was considering branding it’s clients medical and archaeological illustration with the name ‘Evoq.’ Once registered, the domain pointed to a parking page at the registrar, Enom.
evoq Communications AG is a branding company established in Switzerland 2007, and registered the name “evoq” in Class 35 in Switzerland and some other European countries.
evoq Communications attempted to by the domain from Dynamo, but could not reach terms (Dynamo wanted USD$95,000 for the name)
evoq then filed a UDRP action against Dynamo, claiming that Dynamo registered “Evoq” after General Motors announcement that it would call its new concept car “Evoq” and that since Dynamo doesn’t offer any products or services under the ‘Evoq’ name, Dynamo must have registered the primarily for the purpose of selling, renting or otherwise transferring it to Evoq Communications or others for valuable con$ideration (the $95,000 selling price).
Dynamo pointed out to the panel that GM abandoned its trademark claim (Serial Number 75539604) for the word ‘evoq’ on June 8, 2002. This is both well before Dynamo registered the domain name for a future in a completely different category. Note, also that Dynamo’s registration of the name came well before evoq communications AG came into existence.
The 3-member Panel found, not surprisingly, that evoq had legitimate interest in the name by virtue of its trademarks. But now we turn to the really interesting parts of the Panel’s decision:
“Some members of the Panel are inclined to conclude that, to prove bad faith registration, the Respondent must have had a bad faith intention with respect to the Complainant’s mark. However, the Panel does not need to reach a definitive conclusion on that issue because, even if bad faith directed at third parties could constitute bad faith for the purpose of this requirement, the Panel does not find the existence of any such bad faith on the evidence in this case. By the time the Domain Name was registered, General Motors had abandoned its interest in the name “Evoq”, at least in the USA; and, even if it had not done so, the Domain Name could have been registered and used in good faith in relation to unconnected products or services (which, Respondent persuasively shows, was its intention at the time it registered the Domain Name). The Panel sees no reason to disbelieve the Respondent’s certified explanation that it registered the Domain Name in good faith in connection with a proposal for a client in the business of medical and archaeological illustration.
“Nor has use of the Domain Name in bad faith been established. It is not disputed that the Domain Name has merely been directed to a holding page with no attempt to profit from or damage the Complainant’s reputation under the name “Evoq”. The Complainant has not shown that its mark is so well-known that passive holding could, in this circumstance, constitute bad faith use. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent’s willingness to sell the Domain Name for a substantial price to a purchaser who confirmed its intention “to build a new and bona fide trademark in good faith” does not substantiate bad faith. This four-letter “.com” Domain Name may well be sufficiently attractive intrinsically to have justified this price without reference to General Motors’ long-abandoned mark or the Complainant’s newly-formed company.
“The third requirement of the UDRP is not satisfied. The Complaint must therefore be rejected.”
(Emphasis added)
So what we know from this decision is that:
I note that the decision does not indicate whether Dynamo asked for a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the UDRP defines reverse domain name hijacking as the filing of a complaint in bad faith, resulting in the abuse of the UDRP administrative process.
Too bad if Dynamo.com didn’t ask for the RDNH finding, because it would not have been out the realm of possibilities for the panel to make the finding. Had they, it likely would have been on the timing of the critical events:
1999: Cadillac Evoq mark filed.
2002: Cadillac Evoq mark abandoned.
2004: Dynamo.com registers evoq.com
2007: evoq Communications AG is formed
2007: evoq Communications AG approaches Dynamo.com to buy evoq.com (deal never reached).
2010: evoq Communications AG files UDRP action against Dynamo.com.
2010: WIPO Panel declines to order the requested transfer.
evoq communications AG v. Dynamo.com LLC
Case No. D2010-0538
What amazes me an an attorney is the number of UDRP actions that are undisputed by the challenged domain name holders.
More times than not, if a UDRP action is brought and the respondent (the current holder of the domain in dispute) fails to respond, the panel will order the transfer of the domain. Quite simply, e easiest way to lose a UDRP action is to simply fail to respond to the complaint.
Why?
Because the panel usually accepts as true allegations that are not disputed. Of course some panels do look beyond undisputed claims and will sometimes not order the transfer of a domain even in light of a non-response, but these cases are rarer than the alternative.
If you are the owner of a domain that you believe could be the subject of a UDRP action, be sure that your registration information is correct (you’re required to keep that information current, anyway). If you receive a UDRP action, DO NOT DO NOT DO NOT DO NOT lay it aside. Take action immediately and contact your attorney to discuss the claims against you.
If you don’t have an attorney, and would like a free initial consultation on your matter, please call me. We have been very successful helping our clients protect their valuable domain names against baseless, boilerplate claims.
Jonathan Kramer, Esq.
Kramer Telecom Law Firm, PC
Los Angeles, California
866-KramerLaw
310-312-9900
There are lots of (legal) gun slingers out there trying to take away the legal title your valuable e-land…your Internet Domain Name!
What they won’t tell you is sometimes they try their hold-up with an empty gun! Don’t fall for that old trick!
There are lots of very valuable Internet domain names out there. I own over 100 valuable domains, myself. You may own one or two yourself.
If your domain name happens to sound like a registered trademark (or even an ‘unregistered/common law’ trademark), you might find yourself receiving a demand letter from an attorney telling you that you must turn over your valuable domain name to the attorney’s client.
Do you have to? Like all legal questions, it depends on the specific facts of the matter, so here are some general comments to give you basic guidance:
Trademark registration varies from state-to-state within the U.S., and country to country, and by common law rights that may be acquired by usage.
In the U.S., trademarks can be registered at the state level offering per-state protection for marks not infringing on prior federally-issued trademarks. Federal registration of a trademark is, therefore, superior to state trademark registration especially when the trademark is federally registered BEFORE an inferior state-only registration. Federally-registered trademarks are valid in all states, so they may be superior to state-only registrations.
By the way, trademarks and service marks are different, yet nearly the same. For the most part, a trademark is a protected name placed on a physically tangible product (i.e., the word, “Ford” physically placed on autos and trucks), while a service mark is for protecting a name as used in connection with a non-tangible service (i.e., “The Rivky Paint Method” which is for “Providing courses of instruction and training in the field of art”…you can’t place a name label on ‘courses of instruction’).
Sometimes a mark can be both a trademark and a service mark (“The Linden Method” … you can look it up). Both trademarks and service marks offer the protection required under the UDRP to meet the rights requirement.
If a mark is federally registered (in the U.S. on what’s called the Principal register), then for UDRP purposes in the U.S. the name is protected and that prong of the UDRP analysis is complete IF the domain name AND the domain owner’s usage are the same (or close enough) in the same category as the protected mark.
For example, someone who registers “BuyYourF-450TruckFromMe.com” and that person is NOT authorized by a certain popular truck company, then you have a prima facie (on its face) infringement on Ford’s trademark (No. 3620901). You Kiss off the domain when Ford’s lawyers come a’knock’n.
Contrast what I’ve just said with “GetYourVisaThroughMe.com.” If you registered that domain name and the “Visa” you’re talking about is a government issued document that you’ll help someone secure, and that’s only what your web site promotes (and not getting credit cards, for example), then the nice lawyers at Visa, the credit card company aren’t likely to be successful getting the domain name away from the you.
There are a whole class of domains that incorporate, or sound/spell like, or disparage legal trademark names. Some examples include:
So, how you use your site will determine (at least in part) whether you can register a domain that incorporates or is similar to a registered trademark.
Getting back to domain name defense, one of the WORST things you can do is to ignore an attorney’s demand, or a UDRP notice from the WIPO (or some other arbitration organization). Often cases are decided by default, where the respondent didn’t reply to provide a defense. DO NOT FAIL TO RESPOND unless you know you’re 110% in the wrong, and you don’t care if the domain is taken from you. Of course, you might be sued in federal court for cyber squatting, so that’s a heck of a good reason to find out what your legal rights and duties are. An attorney is the person you’ll want to turn to for those answers.
May we help you protect your valuable e-property (domain name) from such an attack.
There is no charge for an initial consultation with Mr. Kramer (up to 30 minutes…who knows …maybe more if your matter is interesting or fun).
You can reach our firm on (310) 312-9900, or toll-free on 1-866-KramerLaw (1-866-572-6375). Mr. Kramer’s direct extension is 121.
If you’d like to send an electronic message to Mr. Kramer, please CLICK HERE.
The power of protecting a famous name is illustrated by the photo I took a couple of days ago in Alice Springs, NT, Australia. Yes, just be looking at the buns and the shape of the sign, as well as the font, you instantly thought you knew the brand, but then those words between the buns might not be so instantly recognizable.
In the case of Burger King’s expansion into Australia, it had to contend with the fact that a small burger outfit in Adelaide had already trademarked the name in the country. The national BK franchisee for Australia, who’s first name happens to be Jack, picked the name Hungry Jack’s from a list of possible names that could be trademarked in Australia and approved by BK.
The story gets a bit ugly after that, and you should ready the Wikipedia entry for Hungry Jack’s to read a true trademark battle story.
The story is yet another example of protecting your valuable intellectual property by trademarks.
By the way, a unique physical design of a fast food outlet (its “trade dress”) may also be separately protected.
Now you know what ‘DOMAIN’ is ruled by what ‘KING!’
PS: I wonder if Burger King (the big one) ever tried to buy Burger King (the Aussie one) simply to acquire the trademark. Seems like that would have been a, er, ‘whopper’ of a good idea. jlk
(Photo Copyright © 2009 Jonathan L. Kramer)
Welcome! I’m Jonathan L. Kramer, Esq., your host here at UDRP.io.
Domain names come, and domain names go. Somewhere in that mix is the fertile ground of trademark infringement.
This blog will be my sounding board about how trademark (and other rights) challenges to domain names are initiated, handled, and won or lost.
In the writing of this blog, I do not intend that the language be aimed at attorneys. Rather, I’m aiming at the average guy and gal who registers domain names.
I’ll offer discussions about how to go about selecting a domain name that you have a chance of defending against an infringement claim, as well as what you may wish to do if you’re served with a UDRP complaint (or…gasp!…a lawsuit).
By way of background, I am Jonathan L. Kramer, Esq., the head of the Kramer Telecom Law Firm, P.C. (located in Los Angeles, Californa, USA). I’ve been domain collecting since 1993, and have dealt with various trademark claims in my own collection, and in advising my clients.
As you’ll guess, this website is designed for general information only. This website does not comprise legal advice, nor does it create an attorney-client relationship.
Welcome to the blog!
Jonathan
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