What domain not to register #2 and #3

I was going thought the Namejet list of pending delete domains and my eye caught this "hot" domain name. The domain cocacola.biz has a bidder with a $69 bid and drops in a couple of days.

The Coca-Cola Company owns several domain names including:
cocacola.me (won in WIPO)
coca-cola.com (official website)
thecoca-colacompany.com (official company website)

The Coca-Cola Company has filed 61 UDRP complaints with the World Intellectual Property Organization (WIPO) and the National Arbitration Forum (NAF).  The Coca-Cola Company has only lost one Complaint. The one for sprite.nu. 3 of the cases are still active. Their first UDRP Complaint was in 2000. So it is apparent that they are vigilant and actively enforcing their trademark rights. The Coca-Cola Company has 490 live trademarks registered at the USPTO.

The domain name was owned by someone from Korea since 2002 and only last year ownership was changed to someone from the US. This is it's first drop as it carries a 2002 registration date.

Before I could recover I saw another one: billgates.info with a $73 bid. Billgates.info is a LR2 domain registered since 2002 to a person in Sri Lanka.

Surprisingly, William Henry "Bill" Gates III, co-founder, former chief executive and current chairman of Microsoft, owns NON of these domain names:

Bill Gates operates his official website at thegatesnotes.com: The Official Site of Bill Gates - The Gates Notes. He also operates his and his wifes foundation at gatesfoundation.org: Bill & Melinda Gates Foundation. Bill Gates has no history of UDRP complaints but Microsoft sure does. He only owns a registered trademark for "BILL & MELINDA GATES FOUNDATION" at USPTO.

Again, even from a cybersquatter's point of view registering these domains doesn't make any sense. Why pay $69 or $73 for these domains? These will hardly get any type-in traffic. And why register domain names that nobody will ever want to buy?

So who will register these domain name and why? In What domain not to register #1 the domain was actually caught by the trademark owner. This also might be the case for cocacola.biz but I don't think Bill Gates will register the domain billgates.info. We will know in a couple of days.

risingstar.com UDRP complaint denied at WIPO while Panel considers buying a domain as an investment

The UDRP Complaint for the domain name risingstar.com was denied at WIPO while the Panel recognized that buying a domain name can be considered an investment and that offering a domain for sale is not necessarily improper and does not make its use illegitimate. This is the second nod at domaining by a UDRP Panel this week after the dismissal of the Complaint for cloudprovider.com.

The Complaint for the disputed domain name risingstar.com was filed with the WIPO Arbitration and Mediation Center on June 19, 2012.

The Complainant was Rising Star AG from Bottighofen, Switzerland and Respondent was Domain Administrator from Hong Kong, China.

The Complainant is a Swiss company engaged in financial consultation services that was founded in 2001 and operates it's website at the domain name risingstar.ch.

The Complainant is owner of 2 trademark registrations:

  • Swiss trademark registration no. 604110 RISING STAR CAPITAL LTD. (device), applied for on August 4, 2010.
  • Swiss trademark registration no. 560385 RISING STAR AG – INVEST WITH THE BEST (device) applied for on July 5, 2007.

Rising Star AG purchased the domain name risingstar.com from it's previous owner for USD 5,000 and then redirected it to it's main website at risingstar.ch. At some point Complainant failed to renew the registration of the disputed domain name and in 2010, the disputed domain name was purchased at a domain name auction by Respondent for USD 3,330. Respondent points the domain name risingstar.com to a landing page with links to other websites and also the website displays a notice that the domain name is for sale. It can be bought through domainbrokers.com

The Complaint barely passed the first hurdle of the UDRP: Identical or Confusingly Similar. The mark "RISING STAR CAPITAL LTD" did not predate the registration date of the disputed domain name by the Respondent. The other mark "RISING STAR AG – INVEST WITH THE BEST" barely made it as it was rather more complex than the disputed domain and incorporated a device element, and also because “Rising Star” is not a fancy or a fantasy word but rather a specific expression. The Panel found the Complainant proved that the disputed domain name was confusingly similar to a trademark or service mark, in which the Complainant had rights because as "RISING STAR" was not directly descriptive of the services for which trademark protection was claimed, one may assume that RISING STAR was the dominant element of this trademark, which coincided with the textual string of the disputed domain name.

However, the Complaint failed in both the 2nd and the 3rd element of the UDRP.

Rights or Legitimate Interests:

[...] the Respondent contends that it bought the disputed domain name at an auction for the price of USD 3,300, [...] , which is an amount considerably in excess of mere registration costs for a domain and can be considered an investment in a domain name. Besides that, the Respondent has stated that the motivation for its choosing the disputed domain name for acquisition was the fact that “Rising Star” is a generic dictionary word or descriptive domain name in line with other names it has already registered on its behalf and in line with the intended subject matter of the website, for which it is descriptive in order to generate revenues by pay-per-click advertising links related to general interest topics alluding to the common meaning of the phrase “Rising Star”. As the Complainant did not provide any further facts in this respect in the first place, it cannot be expected that it would have been in a position to substantially rebut these contentions, so considering also that the arguments of the Respondent make sense from a commercial perspective, the allegations of the Respondent appear well-founded. In fact, the pay-per-click links provided by the Respondent on the website, into which the disputed domain name resolves, all relate to employment opportunities and entertainment. For these subject matters, the term “Rising Star” is a word that bears a positive connotation, meaning either a person who succeeds in his or her job (“the rising star of the xyz company”) or gives an outstanding performance in the entertainment sector, to which the links “recordsong”, “karaoke” or “casino” relate.

As far as the contention of the Complainant goes, that the additional offering of the disputed domain name by the Respondent for sale indicates a non-legitimate use, the Panel shares the opinion of the Respondent that the offering of a domain for sale per se is not necessarily improper and does not make its use illegitimate (Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (<lfo.com>). Finally, the Complainant has not shown, nor is it in any way obvious that the Respondent with its use of the website under the disputed domain name is targeting the Complainant. This could only be assumed, possibly, if the website would display pay-per-click links related to the financial services industry, which is not the case here.

Therefore, in view of the foregoing, the Panel holds that the Complainant has not made its case under the paragraph 4(a)(ii) of the Policy in that it has not established that the Respondent has no rights or legitimate interests in the disputed domain name. Even if one would for argumentative purposes assume that a prima facie case had been made out by the Complainant in this regard, the Respondent has succeeded in rebutting this by having provided evidence to the contrary.

Therefore, the Panel finds that the Respondent has successfully demonstrated under the paragraphs 4(c)(i) and (iii) of the Policy that it has rights or legitimate interests to the disputed domain name.

Registered and Used in Bad Faith:

Considering the fact that the Complainant has failed to make its case under the paragraph 4(a)(ii) of the Policy as outlined above, there is no need for this third requirement for the requested transfer of the disputed domain name to be discussed in detail. However, the Panel wishes to specify that the Complainant has failed to provide evidence for any of the above criteria set out in paragraph 4(a)(iii) of the Policy to prove registration and use in bad faith. In particular, given the circumstances of the loss of the disputed domain name by the Complainant at an unspecified point of time after 2006, and the mere information that the disputed domain name was bought at an auction in 2010, and to infer from this meager information that “it seems obvious” that the Respondent bought the disputed domain name for the purpose of selling the disputed domain name to the Complainant, and to infer additionally that “these circumstances are indicating that the domain name was registered or acquired primarily for the purposes of selling the domain name to its former owner”, are conclusions that are entirely unwarranted in the absence of further evidence. Besides that, it is not obvious or conceivable that the Respondent, who according to the Response is based in Canada and Hong Kong, went to the auction with the Complainant in mind and to see if it could get a domain name that reflected the trademark or the company name of the Complainant. In this respect, this Panel accepts the submission of the Respondent that knowledge of a foreign trademark, unless demonstrably known in a trans- or international context, is not imputed in this case (Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 (<allocation.com>), nor is concurrent existence of a national trademark to be imputed to a Respondent living in that same country, if the Complainant and the Respondent are active in unrelated businesses and the trademark is not assumed to be generally known (MAHA Maschinenbau Haldenwang GmbH & Co. KG v. Deepak Rajani, WIPO Case No. D2000-1816 (<maha.com>).

Therefore, the Panel finds that the Complainant has not provided evidence of the element of registration and use in bad faith under the paragraph 4(a)(iii) of the Policy either.

For the foregoing reasons, the Complaint was denied.

New auction from Moniker, SnapNames and Afternic

Moniker, SnapNames, and Afternic will be sponsoring a new online domain name auction beginning August 29th and running through September 20th. Most names will have low or no reserves.

In the previous auction domains like Paranormal.com and Hipsters.com were offered and went for $65,000 and $28,500 respectively.

Included in the upcoming list are the following names:

MartialArts.com (my favorite)
FutonBeds.com (my second favorite)
… and more.

Does my (dropping) domain worth the backorder?

I didn't renew usedrobot.biz and it is dropping today, 28th of August. I bought the domain name in 2006 and this year I felt that it wasn't worth the renewal fee.

My expired and now dropping domain usedrobot.biz is on Pool.com's HOTLIST. This is supposed to be a list of the best dropping domains of the day. I guess there is a shortage of quality dropping domains as most of the top registrars are auctioning their best expired domains before they drop. But including usedrobot.biz is a bit of a stretch. The domains usedrobot.org and usedrobot.info are available to register and also usedrobot.biz didn't get much traffic either. Of course I got zero offers to sell it.

So, does my dropping domain usedrobot.biz worth the $60+ backorder? I say it isn't worth it. Let's see if this is caught, by what service and by whom.

Pool's Hot List from today includes other "hot" domains as well. These 2 caught my eye at first glance:

  • wwwtripadvisor.com (This is a typo of tripadvisor.com that would be very easy to be lost in a UDRP complaint)
  • jewlery.info (This is a typo of the U.S. spelling of the word jewelry. This would only get some typo traffic if the correct spelling jewelry.info was developed but it is actually parked at Sedo.)

Complaint for cloudprovider.com denied at WIPO while Panelist acknowledges domaining

This was the first UDRP Complaint for a descriptive "cloud" related domain name and of course the Complaint was denied. I am sure a the cloud popularity increases many "cloud" UDRPs will follow.

The Complaint for the domain cloudprovider.com was filed with the WIPO Arbitration and Mediation Center on June 14, 2012. The disputed domain name cloudprovider.com was registered on April 8, 2008.

The Complainant was XXL Webhosting B.V from Leeuwarden Netherlands and the Respondent was J Lapp from Scottsdale Arizona. The Respondent did not reply to the Complainant’s contentions but that didn't stop the Panel from dismissing the Complaint.

The Complaint failed on the first element of the UDRP: Identical or Confusingly Similar.

The disputed domain name cloudprovider.com was registered on a date (April 8, 2008) prior to the date the Complainant registered their domain names cloudprovider.nl, cloudprovider.eu (both September 18, 2008) and cloudproviderusa.com (October 2, 2011). Therefore the Panel concluded that the registration of the disputed domain name predates the time the Complainant commenced offering its relevant services.

The Complainant had no relevant registered trademarks so Complainant had to establish that it had rights in the unregistered mark. It is not impossible for a Complainant to establish that it has rights in a descriptive or generic term or terms, but it must advance sufficient evidence of secondary meaning acquired by use. The terms must distinguish the Complainant as the source of the particular services or goods offered under the mark. In the present case, the terms “Cloud Provider” are inherently descriptive, as they describe a provider of cloud computing services or on-demand server space. The Complainant itself admitted the terms have “a certain generic character”. The terms are descriptive of the kind of service the Complainant provides. Consumers of computer storage products and services would be familiar with the meaning of these terms in their descriptive primary sense. Neither word is created or invented or fanciful, or combined in a particular or unusual way.

The Complainant did not provide data concerning turnover or sales, client numbers, advertising expenditure or volume, and the like. Nor did it provide consumer survey evidence. It did not provide evidence of cumulative data over a period of time. Further the evidence the Complainant did supply did not provide any historical data going back to 2008.

The Complainant  claimed that it uses as its mark and business name “CloudProviderUSA” and also uses the domain  cloudproviderusa.com, although the Panel noted that in the screenshot it provided of the CEO’s profile, there was a statement that “Cloud Provider” is only active in the Netherlands. 

The totality of this evidence was not, in the Panel’s view, sufficient to establish the secondary meaning or distinctiveness the Complainant contended for. The Panel noted that local reputation might be sufficient for the purpose of establishing rights in a common law mark. However, the evidence before the Panel did not on the balance of probabilities establish that in the Netherlands alone the terms have the necessary secondary meaning.

In conclusion, because: of the inherent descriptiveness of the terms at issue; of the insubstantial nature of the evidence of secondary meaning provided; of the absence of historical data concerning the volume and extent of the service offerings of the Complainant, or of its use of the terms “Cloud Provider”; of the fact that establishing distinctiveness of a particular representation of descriptive terms is not by itself enough to establish distinctiveness of the terms not so represented; the term “CloudProvider” was commonly used by the Complainant in a particular colour and script and in combination with a particular device; and because there was no evidence before the Panel of the volume of advertising, consumption or broad consumer perception of the Complainant’s services even in the Dutch market, the Panel was not persuaded that the Complainant has established sufficient rights in the terms “Cloud Provider” for purposes of satisfying the first element of the Policy in this proceeding.

Moreover, the Panel noted that the disputed domain name was apparently registered before the Complainant started to use the incorporated terms for its own service, and before it registered any domain names incorporating those terms. Therefore it is not apparent that the Respondent registered the disputed domain name in bad faith, nor can it be said on this record that in the absence of competing trade mark rights he has no legitimate interest in a domain name that is descriptive of a class of services. It may be perfectly legitimate for a party, when a new descriptive term such as cloud computing starts to emerge, rapidly to register it with the intent of turning it to account once it has become common currency.

So the Sole Panelist acknowledged the domaining industry by confirming that any person can have legitimate interests in a domain name that comprises from descriptive terms.

So the Panelist concluded that the Complainant did not made out that the disputed domain name was identical or confusingly similar with a trademark in which it had rights and the Complaint was denied.

Moniker and Snapnames announced a Priority Call-Back Service

I got 2 emails today, one from Moniker and one from Snapnames announcing a Priority Call-Back Service. The emails were word for word the same as Moniker and Snapnames are owned by the same company, KeyDrive, that bought both companies from Oversee.net. This is a step to the right direction although a lot or credibility has been lost to Snapnames through the Halvarez scandal and the company acquisitions over the years. Similarly Moniker has lost most of the momentum it had in 2005 when it was the top registrar choice to many people in the domain industry. Since then Moniker is stale with no system or interface upgrades.

Here is the email:

Dear Valued Customer,

We are pleased to announce our new Priority Call-Back service for phone support inquiries! What does this mean for you? If there is a wait time when you call Moniker (Snapnames) Support during our recently extended phone support hours, you now have the option to reserve your place in line and we will call you back as soon as a customer service representative is available. Simply provide us with a number to reach you at and carry on with your day, simple as that.

This increased service level is effective immediately.

Contact us by phone any day of the week.
Toll free in the U.S. and Canada: +1 800-688-6311
Outside the U.S. and Canada: +1 954-607-1294

Monday through Friday
7:00am to 8:00pm US Eastern Standard Time
4:00am to 5:00pm US Pacific Standard Time
11:00am to 12:00 Midnight UTC

Saturday and Sunday
8:00am to 6:00pm US Eastern Standard Time
5:00am to 3:00pm US Pacific Standard Time
Noon to 10:00pm UTC

Contact us online 24/7.
To access Moniker (Snapnames) support information, simply Login to your Moniker  (Snapnames) account then click on the "Support" icon from the upper right hand corner.

We value your business and are available to assist with any questions.

Oakley loses dispute over myfakeoakleysunglasses.com at NAF

Oakley Inc. filed a complaint at the National Arbitration Forum (NAF) over  myfakeoakleysunglasses.com and surprisingly the complaint was denied by a sole Panelist.

The Complaint was submitted to the National Arbitration Forum electronically on July 24, 2012 and Respondent failed to submit a Response in this proceeding.

Although Panelist found that the 2 elements "Rights or Legitimate Interests" and "Registration and Use in Bad Faith" of the UDRP were satisfied, Panelist denied the complaint because element "Identical and/or Confusingly Similar" was NOT satisfied.

Complainant adequately established its rights in the OAKLEY mark by registering it with the United States Patent & Trademark Office (“USPTO”). Complainant submitted multiple trademark certificates bearing the OAKLEY mark, which all list Complainant as the owner of the registration. Therefore, the Panel concluded that Complainant had established rights in the OAKLEY mark under the first element of the UDRP.

Complainant asserted that Respondent’s myfakeoakleysunglasses.com domain name was confusingly similar to Complainant’s OAKLEY mark. Clearly, the addition of the descriptive word “sunglasses” did not adequately distinguish Respondent’s domain from Complainant’s mark. Complainant did not address the issue of whether the phrase “MyFake” to the beginning of the disputed domain name adequately differentiated the disputed domain from Complainant’s mark. This is probably because no cases have been decided that address this issue.

There have been three cases where the domain name included the word “replica” at the end of the domain name, all of which resulted in a finding the disputed domain name was confusingly similar to the related mark without much discussion, eLuxury.com Inc. v WangJunJie, FA1075554 (Nat. Arb. Forum Nov. 30, 2007), Louis Vuitton Malletier S.A., L.L.C. v Iani Derdena, FA1178961 (Nat. Arb. Forum May 29, 2008) and American Express Marketing & Development Corp. v BCR / John Hayes, FA1449262 (Nat. Arb. Forum July 21, 2012). The test under the UDRP is whether the domain name is “identical or confusingly similar”; not whether there is “confusion” nor whether the disputed domain name merely contains Complainant’s mark.

Complainant’s mark and the disputed domain name are not identical; they almost never are. This Panel did not see a confusing similarity between Complainant’s mark and the disputed domain name, see Homer TLC, Inc. v GreenPeople, FA550345 (Nat. Arb. Forum October 25, 2005). Everybody knows what the work “fake” means. The word “fake” appears before the trademark in the domain name. The web site makes it pretty clear these are counterfeit goods. People are going to this web site because they know it isn’t affiliated with Complainant. People are buying these good because the purchasers want to pretend they are Complainant’s goods. While it would seem obvious there is trademark infringement, that is not the test under the UDRP.

So the Panel found that the first element of the UDRP was NOT satisfied and the complaint for the domain myfakeoakleysunglasses.com was denied.

This was another good decision on the line with the consensus view that the UDRP was not created for companies to fight counterfeit goods or copies. Dyson was taught a hard lesson by loosing 2 UDRP complaints in a row.

Dynadot becomes an Afternic DLS Premium partner

Dynadot is now live as an Afternic DLS Premium partner.

Here is the email that I received from Afternic:

DynaDot is now live as an Afternic DLS Premium partner! Because you have domains listed for sale on Afternic that are registered with Dynadot we have some good news for you: You can dramatically increase sales of your domains on Afternic by upgrading your domains to the DLS Premium network.

Enjoy these benefits by listing your DynaDot registered domains via the DLS Premium network:
Unmatched Reach: Promote your names to 75 million+ prospective buyers monthly
Increased Sales Velocity: Sell more domains faster, at the industry's highest prices
Unique "Instant Transfer" Capability: Provides buyers with immediate access to the domain, eliminates the escrow process, and delivers funds to you quicker

These are good news for anyone that has domain name registered with Dynadot and also have the domain names listed at Afternic with Buy It Now prices. Most of my domains are not priced so I don't think I will be joining in. Especially since I don't have much luck selling domains at Afternic.

“Intent To Use” trademark application used to win a UDRP complaint at WIPO

Is an ITU (intent to use) trademark application enough to win a UDRP complaint? According to this freak decision, yes. Panelist Dr. Clive N.A. Trotman has a very good track record of fair decisions (with a few exceptions apparently) under the UDRP but this time he went too far in order to find in favor of the Complainant Citrix Online LLC of California. I have never before seen a similar decision. If anyone has seen one please contact me.

Here is the time line of the events:

The Complainant Citrix Online LLC filed an "Intent To Use" application for the mark "GOTOTRAINING" at the United States Patent and Trademark Office (USPTO) on March 10, 2008.

Respondent Ramalinga Reddy Sanikommu Venkata registered the domain name gototraining.net on August 5, 2009.

The Complainant first used the mark  "GOTOTRAINING" on February 16, 2010. This is according to their statement filed at the United States Patent and Trademark Office (USPTO).

The trade mark "GOTOTRAINING" was registered with USPTO on  June 22, 2010. (registration No. 3,807,572)

The Complaint for the domain name gototraining.net was filed with the WIPO Arbitration and Mediation Center on June 29, 2012.

The Complainant states that it has a pending Indian trademark application for GOTOTRAINING, application No. 2091680.

The complainant registered the domain name gototraining.com on December 2007 and also has many other registered trademark at USPTO such as "GOTOMYPC" that was registered on October 14, 2003 but unfortunately these facts should have been irrelevant to these proceedings.

What is an “intent to use” trademark?

If you have not yet used the trademark, but plan to do so in the future, you may file an application with the United States Patent and Trademark Office (USPTO) based on a good faith or bona fide intention to use the trademark in interstate commerce. You do not have to use the trademark before you file your federal trademark application. Later on in the application process, you will need to file proof of using your trademark in interstate commerce. A total of five extensions, each lasting six months in duration, may be granted by the USPTO before proof of use in interstate commerce is required. Each extension incurs additional filing fees.

Filing of the Intent To Use trademark application does not itself automatically give an applicant trademark rights that can be enforced against third parties. Rather, it provides the applicant the ability to obtain trademark rights that have a priority date as of the application filing date even though the applicant did not start using the mark until a later date. In this case first use date is after the registration of the disputed domain name. In other words, the applicant would not be able to enforce any trademark rights against third parties until after the applicant had actually used the mark as a trademark.

The Panelist went fact though the first elements of the UDRP, "Identical or Confusingly Similar" and "Rights or Legitimate Interests", finding in favor of the Complainant. Then Panelist went on to the 3rd element (Registered and Used in Bad Faith). He said that there was no evidence of any intended use of the disputed domain name, or of the Respondent having any business related to the website content. The Respondent’s immediate reply to the Complainant’s cease and desist letter, by inviting an offer to buy, largely negated any possible implication by the Respondent of having a bona fide commitment to the disputed domain name.

This comment would have been suitable for the 2nd element of the UDRP  "Rights or Legitimate Interests" and I don't understand why Panelist put it in the 3rd section.

Then the Panel went very far to conclude on the balance of probabilities that the Respondent, having registered the disputed domain name, then dressed it with a token but inactive website content in order to create a visible presence on the Internet, that action did not convert a passive holding of a disputed domain name into an active holding. Panel said that Respondent’s avoidance of any direct placement of the disputed domain name for sale at a nominated price, and the avoidance of naming a price in reply to a cease and desist letter, do not circumvent the spirit and intent of paragraph 4(b)(i) of the Policy, so the Panel found that the cumulative evidence was sufficient to conclude that the disputed domain name has been used in bad faith.

Then the Panel tried to prove the "registration in bad faith" part of the 3rd element which was actually impossible to prove as the registration of the domain name predated the first use AND the registration of the mark "GOTOTRAINING". The Panelist improperly used an intent to use trademark application to twist the facts and find in favor of the Complainant. 

Here is what the Panelist said and in the end ordered that the disputed domain name gototraining.net be transferred to the Complainant:

In terms of registration, the Respondent acquired the disputed domain name on August 5, 2009. The Complainant’s trademark GOTOTRAINING was granted registration at the USPTO on June 22, 2010, with first use claimed for February 16, 2010 and the application having been filed on March 10, 2008. Thus, the Complainant’s trademark was granted registration after the disputed domain name was registered, but application for the trademark pre-dated the Respondent’s acquisition of the disputed domain name.

The simple dates are not definitive, however. Registration in bad faith may be found where, on the balance of probabilities, it is reasonable to conclude that a Respondent knew or ought to have known that the proposed domain name would conflict with the intellectual properties of another party.

Paragraph 2 of the Policy imposes upon a registrant the requirement, inter alia, that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and further states “It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights”.

The Respondent could have searched the relevant USPTO trademark application registry and should have found the Complainant’s application in respect of GOTOTRAINING. More pertinently, it is noted that the Complainant held trademarks registered between 2001 and 2006 for constructs commencing in the style GOTO, although contrary to its reference to “the GOTO trademarks”, the Complainant has not produced any evidence of any rights in a trademark GOTO standing alone.

In reaching a decision in terms of bad faith registration, the Panel has reviewed the totality of the evidence, including the long previous existence of the Complainant’s related trademarks GOTOMEETING, GOTOWEBINAR, GOTOMYPC and GOTOASSIST. The Complainant’s application for the trademark GOTOTRAINING was a matter of public record more than 16 months before the Respondent acquired the disputed domain name. The Complainant’s businesses of facilitating web-based assistance, and the training facilitation projected by the Respondent’s holding page, have broad similarities. It may reasonably be expected that the Respondent, in selecting a domain name for a business, would have conducted elementary searches and would have noted the pre-existence and unavailability of <gototraining.com> and the fact that it had been registered by the Complainant in December 2007.

Having regard to all the evidence the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.

Dyson loses 2 UDRP complaints in a row at WIPO

Dyson lost 2 identical UDRP complaints within a month. Both complaints were for similar domain names, but with different Respondents, and both were decided by the same Panelist. The complaints were for bladelessfansmall.com and bladelessfanonline.com.

Do you wonder why Dyson lost these complaints? It is no surprise as Dyson owns no trademarks that are similar to these 2 domain names, ie "bladeless fan". Dyson only owns trademakrs for "Dyson” and “Air Mulitiplier”. Good job on Dyson's legal counsel Wragge & Co. LLP from United Kingdom charging Dyson with legal fees for what was bound to be a certain loss! In fact no party holds a trade mark for the term "bladeless fan" at the USPTO.

Both cases would have been clear Reverse Domain Name Hijacking decisions but both Respondents did not reply to the Complainant’s contentions. And of course if you don't ask for a RDNH ruling, you will not get one.

Dyson argued that while it has no registered trade mark for the words “bladeless fan” with respect to fans and similar products, it nonetheless has common law rights in these words as an unregistered mark based on its extensive use of them in the promotion of its fan product. This argument didn't really cut it with the Sole Panelist that decided both cases at WIPO. The Panelist found that both cases failed on the first element of the UDRP: Identical or Confusingly Similar. The Panelist used an Administrative Panel Procedural Order to seek further submissions from Dyson with respect its reputation in, and usage of, the expression “bladeless fan” but was not convinced.

Panelist said that because the Complainant had no registered trade mark, national or otherwise, in respect of these words, must therefore establish that they are capable of protection as an unregistered trade mark by virtue of the reputation attaching to them through usage and consumer recognition. In the present case, the burden on the Complainant is even greater, in that the words “bladeless fan” are almost completely descriptive of the goods themselves, namely domestic fans without blades. As with any descriptive expression, it is therefore necessary to show that there is some secondary meaning associated with this expression that indicates a specific trade origin rather than just a characteristic or quality of the goods concerned. On the material before it, however, the Panel was unable to determine whether the words “bladeless fan” had been used as a trade mark by the Complainant, rather than just as a general description of the product which is usually identified by reference to the registered trade marks DYSON or AIR MULTIPLIER.

The "Discussion and Findings" portion of the 2 decisions was almost identical (copy paste) with only the reference of the first decision on the second one.

Panelist denied both complaints but reached these decisions "with some regret". Panelist said that it appeared to be evidence in the Complaints with respect to elements 2 (Rights or Legitimate Interests) and 3 (Registered and Used in Bad Faith) of the UDRP that suggested that both Respondents were engaging in a course of conduct that may well be confusing and an infringement of copyright to boot. Such matters may give rise to other rights of action against the Respondents, but cease to be relevant to the present proceeding once the Complainant has failed to show that it has rights in a trade mark that has been incorporated in the Respondent’s domain names.

There shouldn't have been any regret on behalf of the Panelist as this was the correct usage of the UDRP proceedings. Panelist should be proud of these decisions. The UDRP proceedings were not created for companies to go after people selling products that are counterfeit or copies.

One last thing. While it appears that the 2 Respondents are not the same person both  bladelessfansmall.com and bladelessfanonline.com resolve to what seems to be almost the same website. In the contact us page of the bladelessfanonline.com website there is a mention of a "service@air-multiplier.org" email that is linked to another UDRP decision for the domain name air-multiplier.org that Dyson won against a different person. It is safe to assume that all 3 domain names are owned by the same person or people that use different aliases to avoid mass UDRP complaints.