In its complaint arguing for the panel to recognize the uniqueness of the ‘ARCELOR’ mark, ArcelorMittal stated, “It has no meaning in English or in any other language. A Google search of the word “arcelor” displays several results, all related to the complainant (ArcelorMittal).”

The WIPO decision was handed down on July 23, 2010 by a sole panelist, James A Barker. The panelist found that Defendant Taj Group of Companies (a Mumbai-based firm) was in violation of the federal Anti-cybersquatting Consumer Protect Act (ACPA) and infringing on AcelorMittal’s trademark for its conduct in registering and use of the following domain names:

1. www.arcelorcement.com
2. www.arcelorchemicals.com
3. www.arcelorchemicals.net 
4. www.arcelorlaboratories.com
5. www.arcelorlabs.com
Presiding over and deciding the WIPO arbitration dipute, Barker found that the above mentioned names all infringed upon AcelorMittal’s ‘ARCELOR’ (Reg. No 2935304) and ‘ARCELORMITTAL’ (Reg. No 3643643) federally registered trademarks. Furthermore, Panelist Barker found that the domains were registered in bad faith and that each of the five disputed domains were either in part identical or confusingly similar to ‘ARCELOR’ trademarks.

Consequently, the WIPO issued the finding on this proceeding that the five disputed domains should be turned over to AcelorMittal.

The WIPO case is – Arcelormittal v. PrivacyProtect.org, Taj Pharmaceuticals Ltd., Taj Group of Companies, Case No. D2010-0899

For more related information on this lawsuit and on cybersquatting in general;

ArcelorMittal wins cybersquatting case

ArcelorMittal wins cybersquatting case against Mumbai firm

ArcelorMittal wins cybersquatting case against Mumbai firm

Wiki – Arcelor Mittal

Verizon’s most recent efforts to fight cybersquatting of its ‘VERIZON’ mark have been in the form of Uniform Domain-name Resolution Policy (UDRP) arbitration disputes filed through the World Intellectual Property Organization (WIPO).

Presently, Verizon has at least two live UDRP complaints still pending and has won a victory for ‘VERIZON’ cybersquatted domain names including;

• verizoin.com
• verizonswireless.com
• verizonwieless.com
• verizoon.com
• verizopn.net
• versizon.net
• vewrizon.net
• virazon.com
• verion.com

Speculators suggest that Verizon’s recent change of tactics could be a result of the location of the cybersquatted domains being foreign, thus making it harder to get a judgment against the trademark infringing domains via US court system.

For more information on Verizon’s fight against cybersquatters to protect its intellectual property rights check out any of these;

Domains Dispute Alert: A federal court in Northern California has awarded $33.15 million in a default judgment to Verizon Communications in what the company is calling the largest cybersquatting judgment ever

Verizon v Navigation Catalyst Cybersquatting Lawsuit Settled: NCS Continues to Cybersquat Trademark Protected Domains

Verizon Changes Tactics: Files UDRP Complaints Instead of Lawsuits

Originally the Mattapoisett, MA, located Kavanaugh-Brownell Boat Stands, LLC (Kavanaugh) sued the Fairhaven, MA, located Brownell Trailers, LLC (BT) over use of the ‘BROWNELL’ trademark. In that first suit Judge Young presiding over the case determined that BT could continue to sell its boat stands under the ROK trademark so long as the mark made it clear to consumers that the products for sale were boat stands. BT then adopted the above ‘ROK’ trademark which was approved by Judge Young. In conjunction with adoption of the ROK mark, BT also registered and began use of www.rokboatstands.com.

However, Young’s ruling did not end the dispute between these two parties. Just recently, BT brought a lawsuit against Kavanaugh for typosquatting, cybersquatting and related trademark claims stemming from BT’s trademark ‘BOK’ for use in conjunction with its boat stands business. BT’s recent suit alleges that Kavanaugh registered www.rokkboatstands.com after BT began use of www.rokboatstands.com , that Kavanaugh’s conduct in using this domain constitutes typosquatting, cybersquatting, unfair competition and that Kavanaugh is infringing upon BT’s trademark rights.

Usually these types of disputes are handled under a Uniform Domain Resolution Policy (UDRP) arbitration proceeding. However, perhaps smartly recognizing that Judge Young has already presided over the history behind this dispute, BT has chose to file lawsuit against Kavanaugh in the same court that handled the previous litigation between the parties.

As Kavanaugh’s use of www.rokkboatstands.com  makes use of a domain name that is only 1 character (rokk in place of rok) different from BT’s domain name and because it incorporates BT’s mark it is highly unlikely that Kavanaugh will be able to retain this domain name in the upcoming litigation.

The most recent case is, Brownell Trailers, LLC v. Kavanaugh-Brownell Boat Stands, LLC, 10-11234-WGY (D. Mass. July 22, 2010).

More on this story can be found here;

Boat Stand Makers Rok A Rematch Before Judge Young

1) A presumption of bad faith flows directly from any indication that a domain name owner, after already being accused of cybersquatting on a mark, registered additional domain names infringing (potentially) on the complainant’s mark to exacerbate the conflict. Instead, any party registering domain names that may potentially be infringing should register those domain names ‘as part of its program to connect with customers’.

2) A presumption of conduct indicating good faith is supported when a domain name owner accused of cybersquatting immediately ceases use of the infringing (allegedly) domain name after the cybersquatting allegations are brought to the domain owner’s attention.

3) (carrying the most weight in this opinion) A domain name owner accused of cybersquatting or trademark infringement can demonstrate ‘good faith’ by offering to unconditionally transfer the (possibly) infringing domain names to the complaining party.

Overview;

Plaintiff in this suit is Rearden LLC (Rearden), founded by Steve Perlman. Rearden owns the federal registered trademark for ‘REARDEN’ – Serial No. 77194957.

The Defendant, Rearden Commerce Inc., (RC), adopted that name in January 2005. RC owns the federal registered trademark for ‘REARDEN COMMERCE’ – Serial No.76632927.

At issue in this ACPA lawsuit are the following domain names; ReardenInc.net, ReardenInc.org, ReardenInc.us, ReardenCo.com, ReardenCo.net, ReardenCo.org, ReardenCo.us, ReardenC.net, ReardenC.org, ReardenC.us, ReardenLLC.com, ReardenLLC.net, ReardenMobile.com and MobileRearden.com.

Brief background history of this suit and of the Parties involved;

Steve Perlman is an intellectual property entrepreneur and inventor who co-founded WebTV and acted as the former president & CEO of OnLive. Perlman also founded Rearden Steel, Inc. in 1999 and later changed the company’s name to Rearden LLC. Through Rearden LLC, Perlman registered and has continually used rearden.com since 2001 and has since then procured federal trademark registrations for ‘REARDEN’, ‘REARDEN STEEL’ (no longer a live mark), ‘REARDEN STUDIOS’, ‘REARDEN COMMUNICATIONS’ and ‘REARDEN COMMERCE EMAIL’ among others.

Defendant RC registered the following families of domain names on March 4, 2005: ReardenInc (ReardenInc.net, ReardenInc.org and ReardenInc.us); ReardenCo (ReardenCo.com, ReardenCo.net, ReardenCo.org and ReardenCo.us) and ReardenC (ReardenC.net, ReardenC.org and ReardenC.us).

On October 8, 2006, RC opened up dialogue with Rearden about purchasing the Rearden.com domain. Two days later, Perlman replied stating: 1) the domain name was not for sale; 2) he had obtained an extension of the review period for RC’s “Rearden Commerce” trademark application; and 3) he was considering seeking a further extension to decide whether to oppose the application.

Later that October, after receiving Rearden’s negative reply to its offer to purchase Rearden.com, RC instructed its employees to register both ReardenLLC.com and ReardenLLC.net.

Judge Marilyn Hall Patel, presiding over this Northern California District Court case, acknowledged in the opinion that Sandoval (as RC’s counsel) may have been on tenuous ground by registering ReardenLLC.com;

“At this time, Sandoval was aware both that Perlman’s company was a limited liability company (“LLC”) and that RC was not and had never been an LLC. Nor were there any plans regarding RC becoming an LLC. Indeed, RC does not and has not ever used the phrase “Rearden LLC” to refer to or describe its business, and neither party has applied for a federally registered trademark for “ReardenLLC.” Sandoval testified that “there’s no written policy” for registering domains, “processes were informal,” “a lot of it’s haphazard,” and “there was no rhyme or reason to it.”

Defendant RC didn’t stop there, in November 2006 it went on to register ReardenLLC.net, ReardenMobile.com and MobileRearden.com.

Plaintiffs filed suit on November 30, 2006.

Rearden LLC, et al., v. Rearden Commerce, Inc., No. 06-7367, N.D. Calif.; 2010 U.S. Dist. Lexis 65567

In this opinion, decided on July 1, 2010, Judge Patel decided both parties’ cross-motions for summary judgment regarding impermissible cybersquatting under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), and unfair competition under California Business and Professions Code section 17200 as it relates to cybersquatting.

Plaintiff Rearden moved for summary judgment regarding the ReardenLLC domain names under the ACPA and California’s unfair competition law, and Defendant RC moved for summary judgment regarding all fifteen ‘Rearden’ domain names claiming its acquisitions did not violate the ACPA.

Cybersquatting under the ACPA;

Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), was passed by Congress in 1999 and is designed to defend against cybersquatting. Judge Patel painted a nice characterization of cybersquatting in the opinion as she noted;

“Cybersquatting is the Internet version of an unlawful land grab. Cybersquatters register well-known brand names as Internet domain names in order to force the rightful owners of the marks to come forward and pay for the right to engage in electronic commerce under their own name.” Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002).

The ACPA protects both federal registered trademarks and common law marks (established through use). Violations of the ACPA arise where a person uses a trademark owned by a third party and that person;

(A) has a bad faith intent to profit from that mark, and
(B) registers, traffics in, or uses a domain name [that is confusingly similar to another's mark or dilutes another's famous mark].

In order to prevail on a claim under the ACPA, a valid trademark owner must establish that;

(1) it has a valid trademark entitled to protection;
(2) its mark is distinctive or famous;
(3) the defendant’s domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owner’s mark; and
(4) the defendant used, registered, or trafficked in the domain name…
(5) with a bad faith intent to profit.” Bosley Medical Inst., Inc. v. Kremer, 403 F.3d 672, 681 (9th Cir. 2005)

(Prongs (1) and (5) were at issue but (1) was quickly resolved in favor of Plaintiff Rearden)

Bad Faith v. Good Faith (prong 5);

Judge Patel enumerated a number of factors in regards to whether RC used, registered, or trafficked in the domain name with a bad faith intent to profit.

As noted earlier, RC didn’t register ReardenLLC.com and ReardenLLC.net until after its offer to purchase Rearden.com from Plaintiff Rearden was rejected and Rearden put RC on notice that it may contest RC’s federal trademark registration of ‘REARDEN COMMERCE’.

In spite of this (remember that RC is not a LLC and has no plans to become one), Judge Patel, examining the facts according to a summary judgment standard, found that RC’s conduct conclusively demonstrates good faith.

In reaching this good-faith determination, Judge Patel pointed to a number of factors. She asserted that a jury could reasonably find that RC had not earlier considered ReardenLLC domain names during its ‘initial registration frenzy’ and instead registered them when it became aware of them as part of its program to connect with customers (and that this does not constitute bad faith). Also, Patel stated that RC’s immediate cessation of use of the ReardenLLC domain names when the alleged cybersquatting activity was brought to RC’s attention demonstrates good faith. Finally and conclusively in support of RC’s conduct in registering the ReardenLLC domains in good faith, Patel stated that, “RC’s recent offer to unconditionally transfer the ReardenLLC domain names to Rearden conclusively demonstrates RC’s good faith.”

After finding that Rearden was unable to satisfy the (5) prong to succeed on a claim brought under the ACPA, Patel awarded summary judgment in favor of RC with respect to the ReardenLLC domain names and then expanded this ruling to apply to all of the RC’s registered domain names at issue in this suit.

Unfair Competition;

California’s Unfair Competition Law defines unfair competition as “any unlawful, unfair or fraudulent business act or practice.” Cal. Bus. & Prof. Code § 17200

Plaintiffs’ arguments regarding the unlawful prong of the UCL are identical to their cybersquatting arguments; thus, for the reasons stated above, summary judgment on this prong is granted in favor of defendant.

Conclusion;

Judge Patel ruled that Plaintiff Rearden’s summary judgment motion is denied and Defendant’s summary judgment motion is granted;

“Here, plaintiffs have presented no evidence of harm, save their argument that the cybersquatting “likely impacted Rearden LLC’s ability to connect with potential clients, investors, members of the media, and jobseekers.” Docket No. 276 (Reply) at 11:11-17. Pure argument, with no supporting evidence, is insufficient to meet the summary judgment standard. Moreover, in light of the court’s prior ruling that there does not exist a strong likelihood of confusion, it is unclear how this misdirection was “unfair.” Indeed, it is unclear whether plaintiffs suffered any harm whatsoever from RC’s actions. Consequently, summary judgment on this prong is granted in favor of defendant.”

For related articles on good faith and cybersquatting under the ACPA;

UDRP Panel Recognizes that where a Registrant Reasonably Believed that what He was Doing was Legitimate, then Registrant’s Domain Name Registration Cannot be in Bad Faith

Bad News for Google, Facing Typo-squatting Lawsuit After its Motion for Summary Judgment was Denied

California District Court Finds in Favor of Intel Corporation, Denying ANIPs Motion to Dismiss in Trademark Infringement and Cybersquatting Lawsuit Brought to Protect the Intel Trademark

The Daily Caller hasn’t stopped there, they are offering @keitholbermann.com email addresses to the most creative names @kietholbermann.com that get submitted, and all you’ve got to do is ask. To get a keitholberman.com email, go to Win a keitholbermann.com e-mail address. Early email winners include; throwrocks@keitholbermann.com, WorstPersonInTheWorldLives@keitholbermann.com, and IFoundMyBlueDress@keitholbermann.com.

Although the Whois registration info has the registrant information hidden behind Domains by Proxy, Inc., the Daily Caller has publicly announced its acquisition of the keitholbermann.com domain name address.

As he’s indicated, Tucker Carlson believes he can hold onto and has plans for his ideally named domain name for providing Keith Olbermann commentary and criticism. However, there is no new original content as-of-yet; Carlson’s recently purchased www.keitholbermann.com remains a mirror-site of www.dailycaller.com. 

Perhaps it has been a good move for the Daily Caller to hold off on generating original content for keitholbermann.com. The Daily Caller’s conduct could possibly be in violation of federal laws;

In an article posted yesterday on NYMag.com, Dan Amira provided commentary on the Daily Caller’s acquisition of keitholbermann.com from an interview with intellectual property rights attorney Enrico Schaefer, founder of Traverse Legal, PLC. Enrico Schaefer said that the Daily Caller may be in violation of trademark infringement and anti-cybersquatting laws. The bulk of the exchange (Amira’s entire article can be found here, The Daily Caller May Regret Buying That Keith Olbermann Site) has been re-produced below;

“There’s always room for some debate on this kind of stuff,” Schaefer told us. “But the reality is that Keith Olbermann has got strong trademark rights in his name — a show called Countdown With Keith Olbermann, with his name used as a brand — and therefore anyone that registers a domain name in bad faith, or a personal name of a famous individual who has trademark right, is potentially liable for up to $100,000 in damages, plus attorney fees.”

“But wait a second,” we ignorantly inquired, “What about, you know, freedom of speech? Doesn’t the First Amendment allow us to criticize public figures however we damn well please?” Not always. Some “gripe sites,” as they’re known, are okay, if they “have no financial stake, no positive benefit that they receive. They just have something to say and they’re going to say it,” Schaefer explains. But “the moment that you start to make money or derive a benefit for your business, you lose a whole layer of First Amendment protection.”

“So what’s Olbermann’s next move? Schaefer says he has three options of varying intensity. On the lower end of the spectrum, he can send the Daily Caller a cease-and-desist letter, giving it five days to hand over control of the website and possibly pay him damages. The middle ground would be forcing it into binding arbitration, which the Daily Caller would have to comply with under the Uniform Domain-Name Dispute-Resolution Policy, which applies to anyone in the world who registers a domain name. Or he could sue the Daily Caller in federal court under the Anticybersquatting Consumer Protection Act. “I think the Daily Caller would likely lose this across the board,” Schaefer predicts.”

Not that he has much sympathy for Olbermann. “People who don’t register their domain name and the variations of their name, they’re just asking for it,” he says, incredulously. “The concept that someone as famous as Keith Olbermann could have gotten this far in life without registering KeithOlbermann.com is shocking.”

More information on the Keith Olbermann and Daily Caller dispute and related articles on political cybersquatting can be found here;

The Daily Caller acquires KeithOlbermann.com

Keith Olbermann Gets Lunch Handed to Him by The Daily Caller

Representative Pete Hoekstra, Victim of a Cybersquatter?

DNCS was a Web-address consulting firm started by Temme with the aim of advising large corporations about what kinds of URLs they should register to both protect their brand and to avoid consumer confusion and dissatisfaction. By pre-registering domains, DNCS aimed to save these companies large amounts of money they’d likely have to spend down the road in costly litigation to retrieve domains which they should already have owned.

What Temme did was to compile a list of domain addresses he thought these large corporations should register and then he would show a smaller list (about 50% of the domains he thought the company needed to procure) to whomever he could pitch his business idea to within the corporation in the hopes they would hire DNCS for consultation on which domains to register.

However, even in the earliest stages of DNCS, Temme ran into problems. Potential clients took the domain name suggestion list, registered those domains themselves, and then wanted nothing further to do with Temme. Later, when Temme began pre-registering some of these domains before showing any list to a potential, he ran into real problems. Potential customers treated him as a cyber-criminal instead of valuing his DNCS company as a consulting service. Temme writes that he approached companies only in good faith and that;

“I thought it would behoove companies to avoid expensive and time-consuming efforts years later to obtain domain names from others who, by then, would likely have registered those domains in faraway countries, where they would be difficult to obtain… It seemed a very practical idea to save all these large corporations a lot of money and grief later.”

The money and grief he’s referring to is shed when these same corporations rely on filing lawsuits to get domain names similar to their brand or trademark back from cybersquatters and typosquatters. Temme writes that;

“My consulting service was a similar idea to doing preventative exercise rather than allowing illness to develop and having to spend far more money and time to restore health.”

There are two primary methods for retrieving a domain name that is confusingly similar to your trademark;

The Anti-cybersquatting Consumer Protection Act (ACPA),

The ACPA may be used against people who had bad faith intent to profit from a domain name and who registered, used or trafficked in a domain name; that is identical, confusingly similar, or dilutive of certain trademarks. It provides fines between $1,000 and $100,000 per infringing domain name for which the cybersquatter is found liable and also a lawsuit under the ACPA can force the bad-faith registrant to transfer the domain name to the rightful trademark owner.

The Uniform Domain-name dispute Resolution Policy (UDRP),

The UDRP allows for a cheaper and more efficient means for resolving cybersquatting disputes. A brand / trademark / or domain-name owner may bring a UDRP action if she in good faith believes that someone is cyber squatting on a domain name that rightfully should be hers. To succeed in a UDRP challenge the complainant must demonstrate three things;

1. That the domain name is either identical or confusingly similar to a trademark or service mark in which the complainant has rights,

2. The domain name registrant does not have any rights or legitimate business interests in the domain name, and

3. The registrant registered the domain name and is using it in bad faith

Temme’s brief history of squaring off against alleged intellectual property violations;

Alaska Airline,

Temme compiled his list of suggested domain names for Alaska Airline to register; including typo-domains and some like flytobaja.com, flytoalaska.com, flytoacapulco.com, and some top level .net and .org domains he thinks Alaska Airline should have registered along .com addresses it already owned. After Temme approached the company, he writes;

“The airline’s marketing department wouldn’t hear my proposal; I was turned over to Alaska’s legal department, which deals with intellectual property issues. My list of domains was immediately stolen and registered by Alaska Airlines. They could easily do that because I registered most of these domains in violation of the two laws, and Alaska Airlines had trademark and intellectual property rights to most of them.

And guess what, that resulted in my first arbitration case against me. No consulting service sign-up. So I scratched it up to misunderstanding. (I still own those flytoalaska.com and other “fly to” domains because the airline could not lay claim to those.)”

Air France arbitration,

The next ICANN arbitration case Temme ran into was in 2004 Air France. He again registered a number of typo-domains and others including flytoparis.com. Temme’s DNCS consulting offer was again rejected and the result was a lose-lose arbitration proceeding for Temme brought under ICANN’s UDRP.

Dell Computers,

Temme had also registered computer-related domains, examples including bestcomputeranimation.com and bestcomputergraphics.com, and seven typo-domains which he had attempted to turn over to Dell after giving up on DNCS as a viable company.

Alf Temme posted about the Dell v. Temme dispute at http://www.domainnamesquatting.com/, that post is still live and shows that the Dell dispute was over these seven disputed domain names in a ‘good but illfated business idea he (Temme) had’. The typo-squatted domains which ended up being retrieved by Dell in the proceeding are; d3ell.com, de3ll.com, d4ell.com, de4ll.com, dedll.com, derll.com, dxell.com

Microsoft,

Most recently, Temme writes that he had registered 26 Microsoft typo-domains during his time trying to make DNCS consulting work out. He notes that;

“Without sending me a demand letter first, Microsoft filed suit in March, demanding the 24 domains and up to $2.4 million – plus legal costs – in damages. Simultaneously, I received an offer from Microsoft to settle the case for $500,000.”

Temme points out that he has returned all 26 Microsoft typo-squatted domains (the 24 requested and 2 others he found in his portfolio) but the case remains still pending.

Temme argues he is creating no more consumer confusion than Microsoft is with Bing;

In his SeattlePI guest-post, Temme goes onto argue in relation to the Microsoft suit that;

“In my case, misspelled hotmail.com domains redirected to my fastexercise.com website, where I sell my Romfab ROM exercise machine. Microsoft correctly alleges in its lawsuit that I created such confusion and annoyance for people who intended to go to hotmail.com but wound up at fastexercise.com.

Ironically, Microsoft does the same by redirecting misspelled Hotmail domains, including my old ones, to Bing – equally annoying and confusing to the users who intended to go to hotmail.com.

Their accusing me of confusing Hotmail users is like the pot calling the kettle black.”

Microsoft’s view on the Microsoft v. Temme dispute can be found on the Microsoft Blog here.

The 26 Microsoft owned trademark ‘Hotmail’ typo-squatted domains:
• otmil.com
• hotmiil.com
• h9otmail.com
• h9tmail.com
• hbotmail.com
• hlotmail.com
• hnotmail.com
• ho0tmail.com
• ho6mail.com
• ho6tmail.com
• ho9tmail.com
• hoftmail.com
• hogtmail.com
• hot5mail.com
• hotgmail.com
• hotma8l.com
• hotma9il.com
• hotma9l.com
• hotmailp.com
• hotmaipl.com
• hotmajil.com
• hotmakil.com
• hotmauil.com
• hotmawil.com
• hotmzail.com
• mzsn.com
 

Despite his earnest arguments, positive criticism of Temme’s Web-activities is hard to find. Here are a few less than endearing comments left on Temme’s guest-post;

unregistered user #545158, 7/3/2010 8:55 a.m.,

So he loses his credibility when he decides that the best way to get them to pay for his “services” is to buy, own and control the domain names he thinks they should have purchased.

It’s called blackmail. When Italian gentlemen do it to local businesses, it’s called protection.

unregistered user #545181, 7/3/2010 10:05 a.m.,

is “consulting” a euphemism for “extortion”?

checkReality, user #545204 7/3/2010 11:11 a.m.,

Grade for defense of your reputation: FAIL.

However, there is some positive feedback;

unregistered user #545208 7/3/2010 11:18 a.m.,

He says he always willingly turned over the domains if asked. I think you guys are being too hard on him. If his intention was exortion, he would not have been willing to hand over the domains for no cost.

Is Alf Temme a good-faith entrepreneur or a cyber-squatting Web-extortionist?

Whether or not you agree with Temme’s business model of cyber-squatting and typo-squatting on unregistered domain names and then attempting to resell them packed with his DNCS consulting service, or simply redirecting traffic on these domain names to his http://www.fastexercise.com/ ROM exercise machine site, his activities have certainly put him in the crossfire of some of the heavyweights in the intellectual property world.

Novo Nordisk had registered the FlexTouch trademark with the commercial goal of advertising the FlexTouch product as an aid in pharmaceutical preparations for the treatment of diabetes.

On March 19, 2010 the lone panelist Brigitte Joppich writing for the WIPO Arbitration and Mediation Center  in the WIPO case of Novo Nordisk A/S v. Andrew Melcher, Case No. D2010-0095, rendered an Administrative Panel Decision. That full decision can be found here.

The Panel found that while complainant Novo Nordisk;

“Neither provided any evidence that it promoted its FLEXTOUCH product in any way nor listed any other circumstances supporting the assumption that the Respondent must have been aware of the Complainant and its rights in the term “flextouch” at the time of the registration of the disputed domain name.”

In contrast, the Panel looked favorably upon Andrew Melcher and noted that;

“The Respondent, in turn, provided evidence of substantial third parties’ use of the terms “flex touch” and “flexible touch” in connection with various products. As far as this Panel is aware, he has not been found to infringe the Policy in an earlier proceeding.”

If you are faced with a cybersquatting case under the UDRP or the ACPA, you should contact an internet attorney specializing in cybersquatting.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.

For more information and related articles;

Cybersquatting-saramortazavi.blogspot.com- Healthcare company loses arbitration for domain name,

Domainnamewire.com- Novo Nordisk Loses Domain Name Dispute

“Steinway, Inc. the acclaimed manufacturer of pianos, recently lost a cybersquatting action to recover the domain name www.american-steinway.com, While the cybersquatting panel found that Steinway had a federal trademark registration for the STEINWAY way, the panel also found that the registrant of the domain name had been in the business of buying, restoring, and selling Steinway pianos for several years, and had used the domain name in its nominative sense. Therefore the panel found that the registrant had rights in the STEINWAY mark and did not use the domain name in bad faith. Thus, the panel denied Steinway’s claim.”

If you are faced with a cybersquatting case under the UDRP or the ACPA, you should contact an internet attorney specializing in cybersquatting.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.

The case is Human Resource Certification Institute v. Tridibesh Satpathy, and it is an example of a dwindling number of recent cases where an innocent domain name owner is allowed to retain his domain name even though it appears to infringe on a complainant’s service mark rights.

The Panel held in favor of Defendant and noted that, “if the Respondent reasonably believed that what he was doing was legitimate, it cannot be said that his registration of the Domain Name was in bad faith.”

The Panel further elaborated on trademark law and cybersquatting;

“The Policy was designed to deal with a relatively narrow form of dispute between trade mark (and service mark) proprietors and domain name registrants, namely the deliberate registration of a domain name featuring the complainant’s trade mark or a confusingly similar variant of it with a view to causing damage or disruption to the complainant or his business or unfairly exploiting the complainant’s trade mark for the registrant’s own advantage.”

Allemann also noted of the Panel’s ruling that “it followed up with an explanation of why this is not a clear-cut case of cybersquatting, and why then the complaint must fail:”

“Is the Respondent’s use of the Domain Name in violation of the Complainant’s service mark rights in a traditional trademark sense? The Panel cannot be certain. By reference to which country’s trade mark law is the question to be answered? One of the members of the Panel believes that in certain jurisdictions such a use of another’s service mark might be regarded as a fair descriptive use of the service mark to describe the educational services provided by the Respondent.
However, whether or not the Respondent’s use of the Domain Name constitutes trade mark/service mark infringement is outside the scope of this proceeding. For the purposes of the Policy, if the Respondent reasonably believed that what he was doing was legitimate, it cannot be said that his registration of the Domain Name was in bad faith.”

The Panel’s full ruling on the case can be found here,

If you are faced with a cybersquatting case under the UDRP or the ACPA, contact one of our cybersquatting attorneys today for a free consultation.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.

Domain names can be incredible assets for a business.  Like a well placed piece of commercial real estate, domain names can be the key to turning a dwindling business into a healthy and vibrant economic powerhouse.  A well thought out and developed domain name can increase sales, increase brand recognition, and extend a business’ reach across international borders.  Cybersquatting and cybersquatters seek to profit from the inherent value that domain names provide to trademark holders.  Cybersquatters and, more specifically, typosquatters will, for example, register domain names that are common misspellings or typographical errors of a business’ trademark to siphon off the web traffic and goodwill that a trademark owner has created in its brand and domain name.

Cybersquatting cases can be filed through two similar methods.  The first is the Uniform Domain Name Dispute Resolution Policy (UDRP).  The UDRP is a contract created by ICANN that every domain name registrant of a major top-level domain name (.com, .net, or .org) must agree to in order to register a domain name.  Under this contract, the registrant agrees to have disputes over the domain name, specifically disputes over the abusive registration of a domain name, decided by arbitration under the Policy.  These arbitration proceedings are typically brought in front of the National Arbitration Forum or the World Intellectual Property Organization.

The second method is the Anticybersquatting Consumer Protection Act (ACPA).  The ACPA allows a plaintiff to bring a cybersquatting case in federal court against a person that registers or uses a domain name in bad faith that is identical or confusingly similar to the trademark or the personal name of the plaintiff.  This remedy allows the plaintiff to seek statutory damages of up to $100,000 per domain name and attorneys fees in exceptional circumstances.  Additionally, a plaintiff can bring an in rem suit against foreign defendants to recover a domain name that was registered with a registrar or registered through a registry located on US soil, but monetary damages are not available in an in rem suit under the ACPA.

If you are faced with a cybersquatting case under the UDRP or the ACPA, contact one of our cybersquatting attorneys today for a free consultation.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.