A couple of weeks back a complaint for onelove.net was denied at NAF as well. It was brought by the same company, Raising Cane’s USA, LLC. The Panel then found that Respondent’s use of the domain name as a vanity e-mail address used for personal correspondence demonstrated rights and legitimate interests under the second element of the UDRP.
Now the same company went after the .com version of the domain name and failed again. This time the complaint failed at the third element of the UDRP: Registration and Use in Bad Faith. The second element was not assessed by the Panel. Respondent was Domain Admin / SiteTools, Inc. The Complaint was submitted to the National Arbitration Forum on June 18, 2012.
Raising Cane’s USA, LLC owns 120 restaurant franchises in 16 states across the United States. It specialises in selling chicken tenders. It has marketed its business under the name “One Love” since 2001. Interestingly enough the Respondent acquired the disputed domain name in 2010 from a previous registrant who registered it first in 1995. The Respondent consistently used its website in connection with dating, music and other links unrelated to the Complainant’s restaurant business. Complainant owns a United States registered trademark for the mark “ONE LOVE” for restaurant services since 2001.
The Complainant accused the the Respondent of being a domainer with 2,080 domain names in its possession. Complainant presented a printout that was of “sponsored results for: Chicken.” There was no search link on the Respondent’s website corresponding to ‘Chicken.’ This was a manipulation of search results in order to claim infringement and it is frequently done by Complainants. Most of these attempts fail, especially when a 3 member panel is selected.
The Panel Bad explained that bad faith registration and bad faith use have to be proved separately and that mere allegations from the Complainant are not enough. The Panel was unable to infer bad faith registration by the Respondent in 2010. The expression ‘One Love’ is heavily associated with the Bob Marley song. What is more striking for present purposes is that there are many registered trademarks in the United States alone, incorporating the words in whole or in part for a whole variety of applications in a whole variety of fields of endeavor – including, for example, dating services, which seem a more natural fit for ‘One Love’ than fried chicken.
A parking site per se does not establish bad faith or illegitimacy – see the WIPO Overview extract which reads as below:
Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” [see also paragraph 3.8 below] or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.
As to the Complainant’s contention that the Respondent facilitates links to chicken (KFC and Wendy’s), the following quotation from the A.D. Banker decision, supra, is apposite:
The Panel accepts the Respondent’s contention that the pages brought forward to support this contention are not pages that are taken from the landing page operating for the domain name, but instead seem to be pages generated as a result of specific searches undertaken from that page. The link displayed may well link to competitors of the Complainant. However, if these links were generated not because of any association with the domain name, but simply because of the nature of the search request that the Complainant has dependently chosen, then that is of limited or no evidential value when it comes to assessing the Respondent’s motivations for registration”.
(Ms Diane Cabell was a Panelist in both this case and the A.D. Banker decision.)
The landing page here gave no link to chicken or restaurants so the Panel decided that the Complaint failed at the third element of the UDRP and so the Complaint was denied.