Website attorney Steven Rinehart recently won several new UDRP domain name disputes involving common law trademarks. Rinehart issued a press release about successfully establishing common law trademarks rights for two attorneys who were the target of libelous criticism websites (e.g. gripe sites), those domain names being <kendrickmoxon.com>, a California attorney; and <jonahhunt.com>, a Denver attorney.
Rinehart represents clients, with a few attorneys amongst them, in domain name disputes involving Continue reading
Virgin and Richard Branson filed 4 URS complaints on 5 different New gTLD domain names in the past couple of days:
- richardbranson.holdings - richardbranson.ventures
Virgin had a DPML block for the term "Virgin" but that can't stop registrations such as 2. and 3. Richard Branson didn't have a DPML from Donuts so the domains from 1. were registered. He has since bought the DPML block. Richard Branson can NOT get a Continue reading
A URS complaint was filed on the New gTLD domain name dana.holdings yesterday. The complainant is not yet know but it is probably Dana Limited from Ohio that is registered in the trademark clearinghouse for the mark "dana".
The domain was registered on February 7th from someone from Continue reading
A UDRP complaint was filed for the domain name MyMachine.com at the National Arbitration Forum. The domain name was registered in 1996 and according to domaintools.com whois history the current owner has owned it since at least 2001.
The MyMachine.com website displays a picture of a small machine on black background and that is about it.
The complainant is not yet known but since the complaint was filed at the National Arbitration Forum I can assume that the complainant is
The UDRP complaint for the domain name creativ.com was denied at the National Arbitration Forum by a 1-member panel. This was a clear Reverse Domain Name Hijacking case but the owner of the domain did not respond to the complaint. Nevertheless the owner of the domain name won the complaint as the Complainant doesn't even have a registered trademark, yet alone a trademark that predates the domain name registration.
The domain name creativ.com was registered in 1999. The <creativ.com> domain name resolves to a website that includes a general offer to sell the disputed domain name. Complainant claims that Respondent has not replied to numerous offers from Complainant to purchase the domain name beginning in August of 2013, roughly five months ago. Complainant alleged that Respondent had not made any use of the disputed domain name.
Complainant claims Continue reading
Banco Bilbao Vizcaya Argentaria (BBVA), S.A. filed yet another URS complaint on a New gTLD domain names yesterday. BBVA is the New gTLD applicant for .bbva. This time a URS complaint was filed for 5 domain names, all pretty worthless:
All 5 domains were registered by someone from London, Great Britain. The same person has already registered more similar domains: Continue reading
The domain namess ibm.ventures and ibm.guru were suspended on the 12th of February after the URS complaint by IBM. That was just 6 days after the URS complaint by IBM at the National Arbitration Forum on the 6th of February. The decision was published today.
That was the first URS complaint filled for any New gTLD domain name and the first decision.
There was actually a response submitted by the owner but it was only 3 sentences.
This is how the panelists described the response: Continue reading
Banco Bilbao Vizcaya Argentaria (BBVA), S.A. has filed yet another URS complaint on a New gTLD domain name today. This time a URS complaint was filed for the domain name bbva.ventures.
On the 19th of February BBVA, a multinational Spanish banking group and the second largest bank in Spain, filed a URS complaint for the domain name bbva.guru.
Both URS complaints were filed at the National Arbitration Forum that is the only URS provider at this time.
BBVA is registered with the Trademark Clearinghouse. The domain name was registered on the 5th of February from someone from Barcelona, Spain.
Because BBVA is registered with the Trademark Clearinghouse, it got an Continue reading
2 new URS complaints were filed at the National Arbitration Forum for New gTLD domain names:
aeropostale.clothing (filed on the 17th of February)
bbva.guru (filed on the 19th of February)
The first ever URS complaint was filed for the domain names ibm.ventures and ibm.guru by IBM and the domains were suspended just 6 days after the URS complaint.
The first ever UDRP Complaint filed for a New gTLD domain name was that for the domain Canyon.Bike that is still pending at WIPO.
Here are a few more details on the 2 new complaints:
The URS complaint was filed by US clothing company Aéropostale, Inc. that has its trademark registered with the Trademark Clearinghouse. The domain name was registered on the 5th of February from someone from Texas, USA.
The URS complaint was filed by Banco Bilbao Vizcaya Argentaria, S.A. that is a multinational Spanish banking group. BBVA is the second largest bank in Spain. BBVA is also registered with the Trademark Clearinghouse. The domain name was registered on the 5th of February from someone from Barcelona, Spain.
So because both companies were registered with the Trademark Clearinghouse, both got an alert as soon as the 2 domain names were registered and reacted with a URS complaint very fast.
Through the URS Procedure ICANN offers a lower-cost, faster path to relief for rights holders experiencing clear-cut cases of infringement caused by domain name registrations. The URS filling fee at the National Arbitration Forum is $375 for up to 14 domain names. The URS can only lead to suspension of the domain names. The URS will not provide the transfer of the disputed domain name to the trademark holder. If the trademark owner wants to take ownership of and use the disputed domain, it should instead file a UDRP complaint or other legal action.
I was going through UDRP complaint fillings and noticed that a lot of pharmaceutical companies are quite active in filing complaints lately. There was always a company that was going stronger at one time or another but this time there are multiple pharmaceuticals filing 10s of UDRP complaints.
Sanofi has filed for more than 350 URDP complaints in the past 10 years. From sanofi.net in 2003 up until sanofiaventi.com in December 2013. Sanofi has won most of the complaints with the latest being sanofi-sun.com. Very few UDRP complaints from Sanofi has been denied including the complaint for the domain name sinofn.com. This was great decision that displays what a Panelist's job includes: investigation and critical thought. Good job from Panelist Susanna H.S. Leong.
Pfizer Inc. has already won 2 UDRP complaints (for viagra-pfizer-france.com and for pfizerlegaldept.com/pfizerltd.com) in 2014, for a total of over 90 since 2000.
Hoffmann-La Roche Inc. has won 5 UDRP complaints in 2014 and has filed a total of more than 180 complaints since 2003. I am not sure why these 5 complaints (eg. for accutaneus.com) were not part of a single UDRP complaint since all domains are registered in the same registrar, all under privacy with no real name revealed, and all include the same circumstances and the same Roche trademark. Actually 4 out 5 were decided by the same Panelist.