The WIPO Arbitration and Mediation Center published its 2012 review on UDRP called “Internet Domain Name Dispute Resolution”.

In 2012, trademark holders filed a record 2,884 cybersquatting cases covering 5,084 Internet domain names with the WIPO Center under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP). This represents an increase of 4.5% over the record established in 2011.

Since the UDRP’s launch in December 1999, the WIPO Center has received over 25,500 UDRP based cases, covering some 47,000 domain names in both generic and country code Top Level Domains (gTLDs, ccTLDs).

The international reach of Internet commerce is reflected in the diversity of the domain name disputes filed with the WIPO Center in 2012. Those cases include complainants and respondents from 120 countries, ten countries more than the 2011 WIPO caseload.

The 2012 caseload was decided by 341 WIPO panelists from 48 countries, with 13 different languages of proceedings, namely (in order of frequency) English, Spanish, Chinese, French, Dutch, German, Portuguese, Turkish, Korean, Romanian, Italian, Russian, and Czech.

Among WIPO cases in 2012, ccTLDs accounted for almost 12% of filings, with 67 national domain registries now connected to WIPO domain name dispute resolution services. In 2012, the WIPO Center became a provider for the .TZ (Tanzania) and .PW (Palau) domain spaces.

The top three areas of complainant activity in 2012 were retail, fashion and banking and finance. The caseload featured many well-known names from business as well as public interest sectors. Of the gTLD cases filed with WIPO in 2012, three quarters (74.8%) concerned registrations in the .com domain. The increased filings related to fashion and luxury brands reflect in part a growth in the number of cases filed by brand owners alleging counterfeiting via the web pages offered under the disputed domain name.

Parties settled around one out of five WIPO cases before reaching panel decision. Applying UDRP jurisprudence, WIPO panels in 2012 found evidence of cybersquatting in 91% of all decided cases.

Parties to cybersquatting disputes filed with WIPO took advantage of user-friendly online facilities such as the paperless eUDRP, the Legal Index of WIPO UDRP Decisions, and the Overview of WIPO Panel Views on Selected UDRP Questions to assist their case preparation and submission.

Background on the UDRP

The Uniform Domain Name Dispute Resolution Policy (UDRP), which was proposed by WIPO in 1999 and has become accepted as an international standard for resolving domain name disputes outside the courts, is designed specifically to discourage and resolve the abusive registration of trademarks as domain names, commonly known as cybersquatting. Under the UDRP, a complainant must demonstrate that the disputed domain name is identical or confusingly similar to its trademark, that the respondent does not have a right or legitimate interest in the domain name and that the respondent registered and uses the domain name in bad faith.

Disputes are decided by independent panelists drawn from the WIPO Center’s global list of trademark specialists. The domain name registration in question is frozen (suspended) during the proceedings. After reviewing a case, panelists submit their decision within a period of 14 days. If a panelist’s decision to transfer a domain name is not challenged in a competent court within a period of ten business days, the registrar is legally bound to implement the panelist’s decision. The entire case normally takes no more than about two months.

The WIPO Center is the leading global provider of domain name dispute resolution services and provides a range of resources for users and the general public. An illustration of these resources is the freely available WIPO jurisprudential Overview, which provides a distillation of panel findings in the thousands of domain name cases filed with WIPO. Parties, counsel and others around the world use this unique WIPO tool to find their bearings in the growing cybersquatting jurisprudence.

Paypal, Inc. filed a UDRP complaint at the World Intellectual Property Organization (WIPO). The complaint was filed for the domain name, MyPaypal.com. The domain was registered in January 2000 and the current owner is from New York. The domain displays the default coming soon page from Register.com where it is registered. Paypal, Inc.’s official website is of course located at paypal.com.

The UDRP (Uniform Domain Name Dispute Resolution Policy) complaint with case number D2013-0621 has not yet commenced as it is pending compliance review at WIPO. Usually a decision is published within one to two months after a case is commenced.

Twitter, Inc. won the domain name Twitter.org at the WIPO Arbitration and Mediation Center.

The owner was accueil des solutions inc of Vancouver, Canada, did not reply to the Complainant’s contentions.

The Center appointed Richard Tan as the sole panelist in this matter on March 18, 2013.

The decision transferring the domain name to Twitter was published on April 1, 2013 but the domain name has already been transferred to Twitter despite the UDRP policy requiring a 10 business day period before transferring a domain name to a Complainant:
If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision.

The domain Twitter.org was already in Twitter’s possession on the 8th of April and is even in a PENDING TRANSFER status meaning that before the 10 business day period ends not only the domain name was transferred to the Complainant but the domain will be gone from the current registrar.

Being Twitter gets you to bend UDRP rules? I guess there is a reason that ICANN is trying to fix this issue by creating new rules about the domain name lock during UDRP proceedings.

To make matters worse the domain name twitter.org is said to be registered in June 2011 when in fact the domain name was registered in October 2005. That is before Twitter was founded in 2006. The registration date was not contested as the Respondent did not file a response. It might be that the current owner bought the domain in 2011 but that is not explained anywhere in the decision and is not included in Complainants contentions that simply states: “The disputed domain name was registered in June 2011 well after the Complainant started its business and used its trademark. At the time of the disputed domain name registration, the Complainant’s website had more than 27 million visitors a month and was one of the most visited websites in the world.”

Again being Twitter gets you to state anything you want without explaining it and the Panelist will accept that at face value?

Details of the decision:

The Complainant was founded in 2006 and offers a social networking and micro blogging service, enabling its users to send and read other users’ messages called “tweets”. Users can “tweet” through the Complainant’s <twitter.com> website, compatible external applications on smart phones including Twitpic, Tweetie, Twitterrific, Uber Twitter or through SMS (Short Message Service). “Tweets” are text based posts of up to 140 characters displayed on the user’s profile. Users may subscribe to other users.

The Complainant is the owner of the trademark TWITTER at the United States Patent and Trademark Office, with the registration number 3619911 since May 12, 2009 with its first use in commerce on August 31, 2006, among all other trademarks used in connection with the TWITTER brand in relation to telecommunication and other goods and online services. The Complainant is also the owner of the Community Trademark of the mark TWITTER”, at the Office for Harmonization in the Internal Market, “OHIM”, with the registration number 006392997 since January 7, 2009, under the Nice Classifications 38, 42 and 45.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the TWITTER mark. The mark has been registered in many countries and the evidence adduced by the Complainant clearly and amply demonstrates that the Complainant’s mark is well-known throughout the world and that the Complainant has acquired rights in the TWITTER mark.

The Panel further accepts that the disputed domain name is confusingly similar to the Complainant’s mark.

The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain names, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

In this Panel’s view, this threshold test is satisfied. The disputed domain name reproduces the TWITTER mark in its entirety.

The addition of a generic top-level domain (gTLD) “.org” is insufficient to avoid a finding of confusing similarity as that is a requirement of registration.

In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Complainant contends that the Respondent registered the disputed domain name well after the Complainant established its rights in the well-known TWITTER mark. The widespread use of the well-known services provided by the Complainant, with over 500 million users worldwide, and at the time of the registration of the disputed domain name, with more than 27 million visitors a month to the Complainant’s website making it one of the most visited websites in the world, makes it difficult if not impossible to believe that the Respondent was unaware of the Complainant’s mark at the time of the registration of the disputed domain name.

The Panel also finds that there is no evidence that the Respondent has been known by the disputed domain name. There is no evidence that the Respondent has been granted any license or other rights to use the Complainant’s marks for any purposes or evidence that the Complainant is associated or affiliated with the Respondent. Indeed, all the evidence points the other way.

The Complainant further contends that the website associated with the disputed domain name is just a malware website. It creates great confusion among the users of the Complainant’s services and those who visit the Respondent’s website thinking it belongs to the Complainant and puts them at risk.

This Panel accepts the Complainant’s contention that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. It further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith.

The disputed domain name was registered well after the Complainant’s mark was in use. The Panel finds that the Respondent must have had notice of the Complainant’s mark and business when registering the disputed domain name.

The Panel finds that the incorporation of the mark in question in its entirety as part of the disputed domain name is an indication of bad faith under the circumstances.

The Panel further notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product may suggest opportunistic bad faith: See for example Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and RapidShare AG, Christian Schmid v. PrivacyProtect.org, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608.

The Panel also infers that that the Respondent’s registration and use of the disputed domain name was intended to disrupt the Complainant’s business, in particular by damaging the Complainant’s reputation, as a result of members of the public visiting the Respondent’s website thinking that it was related to the Complainant or its business, but running the risk of being infected by malware instead as asserted by the Complainant without rebuttal from the Respondent. The distribution of malware through a deceptive domain name is in this Panel’s view to be regarded as deceptive and malicious conduct sufficient to show that a domain name has been registered and is being used in bad faith: Spoke Media Hodlings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303; 24/7 Real Media Inc. v. Thomas Schultz, WIPO Case No. D2009-0043; DivX, LLC v. Domain Admin / CSRUS Enterprises, WIPO Case No. D2011-0600.

Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <twitter.org> be transferred to the Complainant.

Napster, the legendary p2p file sharing application, seems to still be alive. Napster, created in 1999, was merged with Rhapsody, a US online music store subscription service, in 2011.

Rhapsody International, Inc. filed a UDRP complaint at the World Intellectual Property Organization (WIPO). The complaint was filed for the domain name, Napster.nl. The last Napster related complaint was filed back in 2006.

The UDRP (Uniform Domain Name Dispute Resolution Policy) complaint with case number D2013-0356 has not yet commenced as it is pending compliance review at WIPO. Usually a decision is published within one to two months after a case is commenced.

General Motors LLC won the domain name MyChevrolet.com at the WIPO Arbitration and Mediation Center after waiting 12 years to file a complaint.

The disputed domain name MyChevrolet.com has resolved to an inactive website since it was registered on July 18, 2001. The Panel found that Respondent’s inaction constitutes a passive holding of the disputed domain name.

The owner was John Brady/ N2 The Net of Cookeville, Tennessee, represented internally.

The Center appointed Mark Partridge as the sole panelist in this matter on December 4, 2012.

General Motors, LLC (“GM” or “Complainant”) is the internationally-familiar automotive manufacturing company and is among the world’s largest automakers. GM is the successor in interest to all trademarks and related goodwill formally owned by General Motors Corporation, which was founded in 1908. With global headquarters in Detroit, the Complainant manufactures cars and trucks in 34 countries. Complainant also employs over 200,000 people worldwide, and sells and services vehicles in approximately 140 countries.

Complainant currently holds more than 1,000 registered trademarks consisting of, or containing, the CHEVROLET mark, with use dating from at least 1912. Complainant uses the CHEVROLET mark on a wide variety of products in addition to automobiles, including personal accessories, hats, clothes, car accessories, die cast and collectibles, furniture, posters, tool boxes, watches and clocks, and neon signs.

The Complaint includes or attaches extensive evidence that the CHEVROLET marks are well established, cited frequently not only in advertising but in media stories, industry awards, and even popular culture since at least the 1950s. Other UDRP panels have found that the CHEVROLET marks are distinctive and well-known, as a result of long, continuous, and extensive use and the commercial success of Complainant’s products branded with those marks. See, e.g., General Motors LLC v. Jeffery Page, WIPO Case No. D2011-0710; General Motors LLC v. Vinh Pham, WIPO Case No. D2011-0454.

Complainant operates numerous websites and social media sites using domain names containing the CHEVROLET trademark. Complainant and its predecessor have used the domain name <chevrolet.com> since December 1994.

The disputed domain name <mychevrolet.com> has resolved to an inactive website since it was registered on July 18, 2001.

Respondent contends that the disputed domain name is distinct from and not likely to be confused with Complainant’s known brand. Respondent further alleges that it registered the domain name “with the intention of designing a Chevrolet fan site where users could post and discuss their Chevrolet products . . . in a family-friendly web environment that is free of corporate-based marketing programs and allows honest and open communication among loyal Chevrolet product owners.” Respondent also alleges that while there has been no site hosted on the domain since it was registered in 2001 due to organizational limitations, that it is committed to developing the site and accordingly has not ever offered to sell the domain to a third party. Its most recent business plan indicates that it intends to use the domain name “as a vehicle to drive traffic to the 3 or 4 [other domains owned by Respondent] and build a marketing company around said traffic” – essentially it is intended to be one of several “’drive’ sites that are used as commercial tools that drive traffic to the primary sites.”

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

In the present case, the famous trademark is included in its entirety in the disputed domain name. Moreover, the adjunction of the word “my” to the name “Chevrolet” in the disputed domain name does not change the overall impression to the Panel or diminish the confusing similarity with the trademark, since the essential part of the disputed domain name and the trademark is the term “Chevrolet” and the word “my” is an ordinary English word in common use by website operators for adjunct web pages relating to its customers. Domain names that combine a common word with another’s trademark have been held to be confusingly similar to the trademark.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights and that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In connection with Paragraph 4(a)(ii) of the Policy, the Panel finds that Complainant exclusively owns the federal trademark and service mark registrations for the mark CHEVROLET. The disputed domain name has been inactive since its registration, and Respondent has neither used nor made demonstrable preparations to use the domain name at issue before notice of the dispute in connection with a bona fide offering of goods or services. While Respondent indicates it intends to use the domain name for the purpose of driving traffic to its main websites, other UDRP panels have concluded that use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner is not use in connection with a bona fide offering of goods and services and does not otherwise create a legitimate interest in a domain name.

Respondent is not commonly known by the disputed domain name. Previous UDRP decisions have found this combination of facts insufficient to establish rights or legitimate interest in the domain name.

Therefore, the Panel finds that Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

In this case, Respondent has acknowledged that Complainant’s CHEVROLET trademark is well known and that it was aware of Complainant’s famous trademark at the time the domain name was registered in 2001. Accordingly, the Panel finds that the domain name at issue has been registered in bad faith.

With respect to the use aspect of paragraph 4(a)(iii) of the Policy, the record shows that the website in connection with the disputed domain name has been inactive since its registration. Accordingly, the Panel finds that Respondent’s inaction constitutes a passive holding of the disputed domain name.

It has previously been recognized that a respondent’s passive holding of the domain name amounts to a bad faith use of the domain name in certain circumstances.

In light of the above particular circumstances, the Panel concludes that Respondent’s passive holding of the disputed domain name meets the requirement of paragraph 4(a)(iii) of the Policy that the domain name “is being used in bad faith” by Respondent.

Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.

Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mychevrolet.com> be transferred to Complainant.