A UDRP complaint for the domain orbbitz.com was denied by a 1 member panel at the National Arbitration Forum.

Complainant, Orbitz Worldwide, LLC represented by CitizenHawk, Inc., filed a complaint for the domain orbbitz.com owned by A Kiansu from Vietnam.

Orbitz waited 11 years to file the complaint and still managed to do a terrible job. The panel seemed to punish Orbitz for doing a copy/paste of the requirements of finding bad faith registration and use but not actually providing any evidence at all.

The disputed domain was registered by Respondent in January 2002. This makes one wonder why complainants get 11 years to file for a complaint while respondent gets only 20 days to respond.

The Panel wondered why a party, especially one represented by an experienced representative didn’t make ANY arguments as to prove bad faith registration and use. To make these arguments on behalf of the complainant it would require the Panel to assume facts not in evidence. Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶4(a)(iii).

On March 1, 2013, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

Complainant owns the trademark registration with the United States Patent & trademark Office (“USPTO”) for the ORBITZ mark (Reg. No. 2,799,051 filed Jan. 19, 2001; registered Dec. 23, 2003). Respondent appears to reside in Vietnam.

Registration of a mark with the USPTO establishes rights in a mark, and the rights relate back to the filing date of the registration.

Complainant claims Respondent’s <orbbitz.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. Respondent includes Complainant’s mark and merely adds a single additional letter, “b.” Prior panels have held “the mere addition of a single letter to complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).” See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) and this Panel agrees. Respondent adds the generic top-level domain name (“gTLD”) “.com.”  Adding a gTLD (which is required for a domain name) also does not adequately distinguish Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i).

B. Rights or Legitimate Interests

Complainant claims Respondent has not been commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “A Kiansu” as the registrant.

Complainant argues Respondent is using the disputed domain name to resolve to an empty page featuring no substantive content or links. The website located at Respondent’s <orbbitz.com> is a blank, white page.  Respondent has failed to make an active use of the disputed domain name, which means Respondent is certainly not using the disputed domain name for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).

While Respondent has had the owned the domain name since January 31, 2002, it apparently hasn’t used it at all.  If the web site isn’t used at all, Respondent could not have acquired any rights to the domain name.

C. Registered and Used in Bad Faith

Complainant claims Respondent’s disputed domain name currently resolves to an inactive site and that alone constitutes bad faith registration and use.  That alone isn’t enough.

Complainant argues Respondent’s disputed domain name is a classic example of typosquatting. The Policy does not mention typosquatting as a ground for finding bad faith registration and use. Did Complainant assert Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant for more than Respondent paid?  No.

Did Complainant asset Respondent registered the domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and Respondent has engaged in a pattern of such conduct?  No.

Did Complainant assert Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor?  No.

Did Complainant assert Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark?  No.

Why didn’t Complainant make these arguments? This Panel does not know. This Panel is loath to make an argument for a party, especially one represented by an experienced representative. To make these arguments would require the Panel to assume facts not in evidence.

Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶4(a)(iii).

Respondent has not registered or used the <orbbitz.com> domain name in bad faith if Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii).

The Panel finds Policy ¶4(a)(iii) NOT satisfied.

Decision

So the complaint failed at the third element of the UDRP. For the foregoing reasons, the Complaint was denied.

A UDRP complaint for the domain name uhealth.com, that belongs to Marchex was denied by a 3 member panel at the National Arbitration Forum.

Complainant, University of Miami, filed a complaint for the domain uhealth.com owned by Marchex Sales, Inc., represented by John Berryhill, Pennsylvania, USA.

The disputed domain was originally registered by Ultimate Search Inc. in February of 2002. Respondent has owned the <uhealth.com> domain name since November 2004 after Respondent acquired it in an asset purchase.

Complainant registered the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,629,399 filed on October 17, 2007, registered on June 2, 2009). Complainant registered the <uhealthsystem.com> domain name in 2007. Although Complainant argues to have used the expression UHEALTH as a trademark since 2007, there is no evidence of such use. Consequently, there is neither evidence of secondary meaning nor evidence of use. Thus, Complainant has not proven common law rights regarding the trademark UHEALTH.

It seems that John Berryhill didn’t ask for a Reverse Domain Name Hijacking (RDNH) ruling.

Pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Chair of the Panel, The Honourable Neil Anthony Brown, QC. and Wolter Wefers Bettink, Esq. as Panelists.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

In this case, Complainant argues to have had common law rights over the expression UHEALTH since 2007. Common law rights are obtained with use of the trademark in commerce to identify certain goods or services in commerce and to distinguish them from those of competitors. However, there is no evidence of use or secondary meaning of the expression UHEALTH.

Nonetheless, Complainant proved its rights in the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM. This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive. Thus, Complainant established its rights in the trademark.

The Panel adds that, although Respondent’s <uhealth.com> domain name predates Complainant’s trademark registration, Paragraph 4(a)(i) to the Policy does not require the trademark to be registered prior to the disputed domain name.

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM for purposes of Paragraph 4(a)(i) of the Policy.

Panelist Brown respectfully disagrees with this part of the decision. His view is that the objective observer, making the comparison between the disputed domain name and the trademark, would conclude that the comparison should be made with the trademark as a whole, as it is that trademark that has been registered by the Complainant and as the Complainant has no common law or unregistered trademark rights in UHEALTH. The objective bystander would conclude that the domain name may well be referring not to the Complainant’s trademark but to another university’s health service or, indeed, a general health service directed to the reader, as in “your health.” Consequently, the disputed domain name is not confusingly similar to the only trademark relied on by the Complainant.

B. Rights or Legitimate Interests

UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights.

However, the Panel considers that the reproduction of the UHEALTH portion of Complainant’s trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM by the <uhealth.com> domain name is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark. This is especially so since UHEALTH is the main and most distinctive part of the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM (as shown in the design on Exhibit A to the Complaint) and the disputed domain name does not add any other distinctive element.

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus the requirement set forth in Paragraph 4(a)(i) of the Policy has been duly satisfied.

Panelist Brown respectfully disagrees with this proposition as the word “health” is clearly generic and a well known dictionary word in the English language and the use of the letter “u,” when in juxtaposition with a dictionary word, has the popular meaning “you” or “your.” The combination of the two terms would generally be accepted as referring to a person’s health-related issues. Panelist Brown agrees, however, with the conclusion in this section of the decision to the effect that the Respondent has established rights or legitimate interests in the disputed domain name. 

C. Registered and Used in Bad Faith

Respondent’s website contains sponsored links to commercial websites related to health and insurance.  This Panel believes that, in view of the generic word (“health”) which constitutes the dominant portion of the disputed domain name, the provision of pay-per-click advertisements for health-related services is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith.

Furthermore, in view of the fact that the domain name was registered before the trademark, Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name, since the domain name registration was prior to the trademark registration; or (ii) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant’s trademark, since the disputed domain name registration was prior to the trademark registration.

Finally, Complainant argues that Respondent registered and uses the domain name in bad faith, as Respondent offered to sell the disputed domain name for a price exceeding out-of-pocket cost. Leaving aside that Complainant did not provide evidence hereof, the fact that the disputed domain name (as Complainant admits) was registered or acquired by Respondent prior to the registration of the disputed domain name implies that this statement is incorrect. Therefore, the Panel concludes that Complainant has failed to prove Respondent’s bad faith.

Decision

So the complaint failed at the second and third element of the UDRP. For the foregoing reasons, the Complaint was denied.

Frank Schilling’s domain ColdFront.com gets a Reverse Domain Name Hijacking ruling as John Berryhill gets this complaint dismissed at the National Arbitration Forum.

The Complainant was formed in 2009 and filed for a USPTO registration of the term COLDFRONT in connection with cooling packs on intent to use basis. The Complainant subsequently alleged a first use of the mark in 2010 and obtained registration in 2011.

The Complainant was informed by Respondent prior to this proceeding that the Policy does not provide some sort of retroactive trademark right, by which junior users may hi-jack the domain names of legitimate senior registrants.  The Complainant ignored this warning.

The Panel found that the Complainant had or could easily have obtained knowledge of all these facts before it brought its Complaint to the Forum.  Indeed, the Respondent expressly warned Complainant about the frivolous nature of its claims but the Complainant proceeded.

The Panel also said that if the Respondent has legitimate interests in the domain name, it has the right to sell that domain name for whatever price it deems appropriate regardless of the value that appraisers may ascribe to the domain name.

DECISION Details

Complainant was Personally Cool Inc., New York, USA. Respondent was Name Administration Inc. (BVI), represented by John Berryhill, Pennsylvania, USA.

Complainant submitted the Complaint to the National Arbitration Forum on December 5, 2012. The National Arbitration Forum pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jonas Gulliksson (Chair), David H. Bernstein and Sir Ian Barker as Panelists.

The Respondent registered the disputed domain name ColdFront.com on June 21, 2002, after the prior registrant let it expire.

PANEL’S DISCUSSION

The Panel found in favor of the Complainant in the first element of the UDRP: Identical and/or Confusingly Similar.

The Panel finds that the Complainant’s trademark registrations establish its rights in the COLDFRONT mark under Policy ¶ 4(a)(i), and that the rights date back to the filing date with the USPTO of June 4, 2009. The Panel notes that the Complainant does not present any arguments that the disputed domain name is confusingly similar or identical to the COLDFRONT mark.  However, the Panel is entitled to make an independent evaluation of the similarity of the disputed domain name to the COLDFRONT mark. The Panel notes that the disputed domain name contains the entire COLDFRONT mark, and merely adds the generic top-level domain (“gTLD”) “.com.”  Therefore, the Panel finds that the disputed domain name is identical to the Complainant’s COLDFRONT mark under Policy ¶ 4(a)(i). The Respondent notes that its registration of the disputed domain name predates the Complainant’s alleged rights in the mark. That is true, but it is irrelevant to the issue under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether the Complainant has rights in the mark and whether the disputed domain nameis identical or confusingly similar to Complainant’s mark.

The Panel found in favor of the Respondent in the second element of the UDRP:Rights or Legitimate Interests.

The Panel finds that “cold front” is a generic word relating to weather.  Also, the Panel finds that the search terms used on the website linked to the disputed domain name are not related to the Complainant’s trademark or business. Therefore, the Panel finds that the Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i), through its use of the disputed domain name to take advantage of the generic nature of the terms of the domain name and by virtue of the fact that it does not take advantage of the trademark value of the Complainant’s mark.

The Panel finds that the bona fide nature of the Respondent’s use of the disputed domain name is not affected by whether or not the Respondent is interested in selling the disputed domain name or the preferred price. If the Respondent has legitimate interests in the domain name, it has the right to sell that domain name for whatever price it deems appropriate regardless of the value that appraisers may ascribe to the domain name.

Consequently, the Complainant has failed to meet the burden of proof of the Respondent’s lack of legitimate interest or rights pursuant to Policy ¶ 4(a)(ii).

The Panel found in favor of the Respondent in the third element of the UDRP: Registration and Use in Bad Faith.

With the Panel’s finding of the Respondent’s legitimate interests pursuant to Policy ¶ 4(a)(ii) further inquiries of the remaining element of the Policy is unnecessary. However, in order to assess whether Complainant is guilty of Reverse Domain Name Hijacking, it is useful for the Panel also to consider whether Complainant has satisfied its burden of proving that the Respondent registered and used the domain name in bad faith. The Complainant did not even exist when the Respondent registered the disputed domain name or during several years thereafter, nor did the Complainant’s trademark. For that reason, the Respondent’s initial registration could not possibly have been in bad faith in relation to the Complainant.

The question of the relevant time for a bad faith finding when a domain name registration has been renewed is developing jurisprudence. Generally, a mere renewal of a domain name has not been treated as a new registration for the purpose of assessing bad faith, but a small number of panels have begun to consider the renewal of a domain name as equivalent to a new registration in certain circumstances. See Section 3.17 of the WIPO Overwiew 2.0. In the case at hand, regardless of the fact whether a renewal may be a relevant time period for considering if the Respondent registered the domain name in bad faith, the Complainant has failed to show bad faith at the time of the renewal.  First, despite the Complainant’s application to register its trademark in 2009, there is no evidence in the record that the Respondent specifically knew or should have known of Complainant and its trademark, or was willfully blind to Complainant’s mark, at the time of the renewal.  Had Respondent changed its use of the domain name after renewal to take advantage of the trademark value of COLDFRONT as a website selling competing cold packs for cooling the body, the Panel might have inferred a bad faith intention by the Respondent to take advantage of the trademark that the Complainant registered after the initial registration of the domain name but before the renewal. Here, though, the evidence is to the contrary:  The Respondent did not change its use of the domain name after renewal; rather, it continued to do what it had always done, which was to offer pay-per-click advertising related to weather and related coldfront-topics.  As such, Complainant has not shown that the renewal of the domain name in 2011 was made in bad faith.

Nor has the Complainant proven that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant or to any of the Complainant’s competitors for an amount in excess of out-of-pocket expenses. Further, the Respondent has not violated any of the other factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration or use pursuant to the Policy in connection with the disputed domain name.  The offer to sell a domain name that a party otherwise has rights to is not bad faith; rather, that is nothing more than a legitimate effort to sell property properly owned by the party.  See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Feb. 5, 2001).  Therefore, the Panel concludes that Complainant has failed to show bad faith registration and use under Policy ¶ 4(b).

REVERSE DOMAIN NAME HIJACKING

The Respondent alleges that the Complainant has brought the Complaint in bad faith and is engaging in Reverse Domain Name Hijacking. The Panel finds that the Complainant had or could easily have obtained knowledge of all these facts before it brought its Complaint to the Forum.  Indeed, the Respondent expressly warned Complainant about the frivolous nature of its claims but the Complainant proceeded. It is true that Complainant appeared pro se, without counsel, but that is not an excuse for clear disregard for the limitations of the Policy. Rather, when there are questions about the validity of the claim – and especially where Respondent offered detailed information about why a complaint would have no merit – it is incumbent upon the Complainant to research carefully the validity of its claims, including if necessary consulting with experienced counsel. Therefore, after considering the submissions in this case the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.

The Panel concluded that relief shall be DENIED.

A UDRP complaint was filed for the domain name Outdoor-Fitness.com at the National Arbitration Forum. NAF doesn’t reveal the Complainant before the decision is in but the most obvious Complainant is the owner of the non-hyphenated .com domain: outdoorfitness.com.

Outdoorfitness.com is owned by Outdoor Action Fitness, LLC since 1998. The company has a US registered trademark for “TINA VINDUM’S OUTDOOR FITNESS” since September 29, 2009. Trademark’s first use in commerce is claimed to be March 2006.

Outdoor-Fitness.com was registered in 2004, before the trademark’s first use, but it seems to have changed ownership since then.

All is good so far but this Complaint will be denied. There is a disclaimer in the trademark that is put there to protect descriptive terms like “Outdoor Fitness” and domains like Outdoor-Fitness.com. The disclaimer says:

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “OUTDOOR FITNESS” APART FROM THE MARK AS SHOWN

I am sure that the Complainant knows he shouldn’t have filed for this complaint but he filed it anyway. This is the type of Complaints that should get a Reverse Domain Name Hijacking ruling even if respondent never replies.

Sure, the domain Outdoor-Fitness.com displays fitness PPC ads but how differently could someone use a descriptive domain like this?

Marchex owned domain PetExpress.com gets a Reverse Domain Name Hijacking ruling as John Berryhill gets this complaint dismissed at NAF. This must be the longest decision I have ever seen for the simple reason that it includes the almost the complete complaint and response by the 2 parties. The Response is extended and includes several citations from previous UDRP cases.

My favorite part is where John Berryhill asks for a Reverse Domain Name Hijacking finding: “The Complainant’s behavior here should shock the conscience, and the UDRP requires the Panel, in all instances at its own discretion, to consider whether a complaint constitutes abuse of the Policy.  Reverse Domain Hi-Jacking is not set forth in the Policy as some sort of “counterclaim”.  The Complaint reeks with the stench of violation of the UDRP certification, misleading and objectively false allegations concerning the Complainant’s claimed pre-existence activities, omission of evidence of the prior correspondence between the parties, and what appears to be direct perjury.  The Complaint is such a kettle of wrong, that the Respondent is comfortable to permit this Panel to pick its favorites from it.“

After Complainant failed to buy the domain name from the Respondent, Complainant threatened to file a UDRP proceeding in 2009 and then acquired formal trademark rights to bolster its case. Complainant did not disclose Respondent’s use of the mark in its trademark application.

The Panel accused the Complainant of being “conclusory” in its initial submission and also said that ”conclusory” is a charitable expression. Panel said the Complainant hide the facts above from the USPTO and the Complaint because it wanted to improve its chances in registering its mark and this proceeding.

Also, the Panel found that a willingness to sell a domain name, especially when a respondent has a legitimate interest, is not indicative of bad faith.

DECISION Details

Complainant was Airpet Animal Transport, Inc. Respondent was Marchex Sales, Inc / Brendhan Hight, represented by John Berryhill, Esq., PhD, Pennsylvania, USA..

Complainant submitted the Complaint to the National Arbitration Forum on November 6, 2012. The National Arbitration Forum pursuant to Respondent’s request to have the dispute decided by a three-member Panel appointed The Honourable Neil Brown QC, Judge Carolyn Marks Johnson and Houston Putnam Lowry, Chartered Arbitrator as Panelists.

Respondent registered the petexpress.com domain name on July 2, 2001.

PANEL’S DISCUSSION

The Panel found in favor of the Complainant in the first element of the UDRP: Identical and/or Confusingly Similar. Complainant contends it has rights in the PET EXPRESS mark. Complainant demonstrates it is the owner of the USPTO registration for the PET EXPRESS mark (Reg. No. 4,004,320 filed Nov. 2, 2009; registered Aug. 2, 2011). Panels have held USPTO registration of a mark is normally sufficient to demonstrate rights in a mark and those rights extend back to the date the registration was filed.

The Panel found in favor of the Respondent in the second element of the UDRP:Rights or Legitimate Interests. Complainant has not established a prima facie case in support of its arguments Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii).

The Panel found in favor of the Respondent in the third element of the UDRP: Registration and Use in Bad Faith.

The Panel finds Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii).

The Panel finds Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has rights pursuant to Policy ¶4(a)(ii).

The Panel further finds Respondent has not registered or used the <petexpress.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

Respondent claims its willingness to sell the domain name is not a demonstration of bad faith. Respondent argues it spent $165 million on the purchase of a number of domain names, including the <petexpress.com> domain name, because of the valuable descriptive nature of the domain name, and thus the asking price for the domain name is not unfounded. Panels have found that a willingness to sell a domain name, especially when a respondent has a legitimate interest, is not indicative of bad faith.

Respondent argues it has developed a history of good faith registration and use of domain names. Respondent has prevailed in all but three instances of the nearly two dozen UDRP proceedings to which it has been a party. This Panel believes each case must be judged on its merits. The fact Respondent is a frequent party to UDRP proceedings is immaterial.

Respondent additionally claims its good faith is clear, given the fact its registration of the <petexpress.com> domain name (July 2, 2001) pre-dated Complainant’s PET EXPRESS trademark application (which was filed November 2, 2009). It should be noted Complainant threatened to file a UDRP proceeding in 2009 and then acquired formal trademark rights to bolster its case.  Complainant did not disclose Respondent’s use of the mark in its trademark application.

Lastly, Respondent asserts Complainant has misrepresented numerous “facts” in the Complaint and declarations. Respondent argues the personal knowledge alleged by Mr. Botten is blatantly false as he was not living in the United States or employed by the (non-existent) Complainant prior to 2005. Respondent asserts Mr. Botten’s declaration therefore contradicts his own biography and provides zero documentary evidence of the type normally expected to satisfy the high bar of a common law claim.

It is certainly true Complainant was conclusory in its initial submission (and that is being charitable).  Respondent rightly pointed out Complainant’s claims were not possible as stated because Complainant was not formed until 2005.  While Complainant could have stated all of this in Complainant’s initial submission, it chose not to.  The question is why not?  It seems Complainant did this to improve its chances in this UDRP proceeding. Complainant applied for a trademark after knowing about Respondent’s domain name and did not disclose that fact to either the USPTO or the Panel.  Once again, the question is why not?  Presumably, Complainant wanted to improve its chances in registering its mark and this proceeding.

REVERSE DOMAIN NAME HIJACKING

The Panel has given careful consideration to the matters considered by previous panels on whether or not a panel should make a finding of Reverse Domain Name Hijacking. For the reasons given above in the section of this decision on bad faith, the Panel finds that this proceeding is an abuse of the UDRP administrative procedure.

The Panel concluded that relief shall be DENIED.