UDRP complaint for WeKnowMemes.com denied by 3 member panel while UrbanHome.com gets transferred

UDRP complaint for WeKnowMemes.com was denied by 3 member panel at WIPO while the domain UrbanHome.com was transferred as the owner didn’t ask for a 3 member panel and got a crazy decision in return. UDRP providers are businesses and when you don’t pay for a 3 member panel then you usually don’t get the attention a paying “client” does.

UrbanHome.com Complainant is the owner of registration of the word trademark and service mark URBAN HOME on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4160123, dated June 19, 2012. The panelist assumed that the owner of the domain name UrbanHome.com was NOT the first registrant of the domain where that was registered in 1998. There was absolutely no evidence for this assumption.

WeKnowMemes.com

Complainant Cheezburger, Inc. filed a complaint for the domain WeKnowMemes.com owned by WeKnowMemes LLC of San Mateo represented by The Muscovitch Law Firm, Canada. I guess it pays off to have an experienced law firm representing you and advising you on the importance of a 3 member panel. The Center appointed W. Scott Blackmer, Jonathan Agmon and Diane Cabell as panelists.

The Complainant was a Delaware business corporation located in Seattle, Washington. Since 2007, according to the Complaint, the Complainant has researched and documented “Internet memes and viral phenomena”. The Complainant operates a website at “www.knowyourmeme.com”. The Complainant holds United States Trademark Registration No. 4052197 (registered November 8, 2011) for the standard-character mark KNOW YOUR MEME.

The Respondent was a California limited liability company of which Mr. Peterson is the principal. The website, which became active in April 2011, serves as a repository of Internet memes, some of which were originally created or by Mr. Peterson and his team. The Respondent was registered as a California limited liability company on December 5, 2011.

Counsel for the Complainant sent the Respondent a cease-and-desist letter dated October 24, 2011, claiming both trademark and copyright infringement and demanding the transfer of the Domain Name. The Respondent replied with an email dated November 14, 2011, denying infringement but reporting that the Respondent had removed material (four memes and related editorial content copied from the Complainant’s website, as described in the Complaint and Response) that could be construed as infringing the Complainant’s copyright.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

The Complainant indisputably owns the registered trademark, KNOW YOUR MEME. The mark is a phrase comprised of dictionary words, and the Domain Name, <weknowmemes>, is not identical or overwhelmingly similar. However, Policy claims are not based on proof of trademark infringement, and the kinds of evidence necessary to establish confusing similarity in trademark litigation are not required in this proceeding. UDRP panels typically apply a “low threshold” test for confusing similarity under the first element of a Policy complaint, essentially to establish the Complainant’s standing to proceed to the merits of the case under the other elements of the UDRP complaint, rights or legitimate interests and bad faith. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression.

The Panel considers it a close question whether the Domain Name should be considered confusingly similar to the Complainant’s mark for UDRP purposes. But the overall impression is sufficiently similar, especially for the Domain Name used for a competing website, that the Panel concludes the first Policy element has been satisfied.

B. Rights or Legitimate Interests

The Domain Name is a phrase comprised of dictionary words. The Respondent’s use of the Domain Name for a website with content relevant to its generic or descriptive sense can represent a legitimate interest, so long as there is no persuasive evidence that the Domain Name was actually selected for its trademark rather than generic or descriptive value. As discussed further below in connection with the bad faith element of the Complaint, the Panel is not persuaded on this record that the Respondent chose the Domain Name to exploit the Complainant’s trademark.

Apart from the use of the Domain Name, which is generic or descriptive, for a relevant, commercial website, there is also evidence in the record of “demonstrable preparations” to establish a company by the same name before notice of the dispute. Mr. Peterson ordered the formation of the company through the LegalZoom service before the Complainant’s demand letter. It is conceivable that such a step might have been taken in bad faith, in anticipation of a trademark or domain name dispute, but the Panel is not persuaded that this was the Respondent’s motivation. The Respondent had been operating a successful website under the name it sought for the company for nearly half a year by that time, and the name is relevant for the company’s online activities.

The Panel concludes, therefore, that the second element of the Complaint has not been established.

C. Registered and Used in Bad Faith

The Panel must decide these issues on the basis of the submitted record, including the signed Declaration of Mr. Patterson annexed to the Response. Unlike trademark litigation in the United States, there is no opportunity in a UDRP proceeding to conduct discovery or examine witnesses. Mr. Patterson’s Declaration does not deny his awareness of the Complainant’s website, but he plausibly claims that he chose the Domain Name for its undeniable generic or descriptive value, and he made relevant use of it from the outset. In the Panel’s view, the Domain Name is not so similar to the Complainant’s mark that it is inconceivable that the Respondent chose the Domain Name for its generic or descriptive value.

The Complainant relies heavily on alleged copyright violations to demonstrate that the Respondent sought to exploit the Complainant’s efforts and reputation. A handful of copied images or videos, with accompanying text, among hundreds or thousands that appeared on the Respondent’s website, is not persuasive evidence of an intent to disrupt the Complainant’s business or target the Complainant’s mark, especially given the nature of both the Respondent’s and the Complainant’s “meme” websites. In any event, resolving a copyright dispute is beyond the scope of this Policy proceeding.

The Panel concludes on the available record that the Complainant has not met its burden of proof on the third element of the Complaint, bad faith in registration and use of the Domain Name on the part of the Respondent.

Decision

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

UrbanHome.com

Complainant was Urban Home of Oxnard, California. Respondent was Technology Online LLC of Las Vegas, Nevada. The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 1, 2013.

Complainant is the owner of registration of the word trademark and service mark URBAN HOME on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4160123, dated June 19, 2012, in international class (IC) 20, covering “Home furnishings, namely, furniture”, and IC 35, covering “Retail and on-line store services featuring home furnishings and furniture”. Complainant’s application for trademark registration was dated May 12, 2011. Such application asserted first use and first use in commerce of December 1, 2000. Complainant’s application for registration of the URBAN HOME trademark and service mark (hereinafter “trademark”) was initially refused pursuant to a USPTO office action on grounds, inter alia, that the trademark was merely descriptive of the goods and services which it referenced.

Complainant operates a commercial website at “www.shopurbanhome.com”. According to a Domain Tools WhoIs report submitted by Respondent, the record of registration of the domain name <shopurbanhome.com> was created on September 19, 2006, and the Administrative contact was listed as Constantino Papanicolaou.

According to the Registrar’s verification, Respondent Technology Online LLC is the registrant of the disputed domain name. According to a Fabulous.com WhoIs record furnished by Complainant, the record of registration of the disputed domain name was created on March 30, 1998.

Respondent has provided evidence of use of the disputed domain name in connection with an active commercial website dating from as early as October 1999, and identifying a furniture store in Dallas, Texas from as early as October 2000.

Respondent has provided evidence that Constatino Papanicolaou, listed as the administrative contact of Complainant, and as the agent of the Urban Home legal entity in California, has been the subject of several trademark infringement lawsuits resulting in judgments adverse to him.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

The Panel concurs with Respondent’s view that the term “urban home” may be generic for a residence in a city. However, Complainant has not secured trademark registration for the term “urban home” in connection with residences located in cities. It has, instead, secured trademark registration for use of the term in connection with home furnishings, namely furniture, and services featuring home furnishings and furniture (see Factual Background, supra). URBAN HOME is not being used by Respondent to identify a city dwelling, but rather to identify furniture and related services. For this reason, the Panel does not consider Complainant’s trademark invalid or unenforceable because it is generic, and rejects Respondent’s argument that Complainant therefore lacks enforceable rights in a trademark.

Alternatively, Respondent argues that Complainant’s trademark is merely descriptive, by which it means that Complainant purports to own rights in a descriptive term for which it has not established the requisite consumer association or secondary meaning.

In response to an initial refusal by the USPTO examiner of registration for URBAN HOME on grounds of mere descriptiveness, Complainant provided two forms of evidence. The first was a declaration by its president attesting to his personal knowledge that the trademark had been in substantially exclusive and continuous use in commerce for a period of five years preceding the date of the declaration. The second was a printout of its website dated May 12, 2011.

The trademark examiner accepted the affidavit and printout submitted by Complainant as sufficient to establish secondary meaning for purposes of registering Complainant’s URBAN HOME trademark. The affidavit of the president is just that. It is a personal representation (subject to penalty for willful false claims). See USPTO Trademark Manual of Examining Procedure, October 2012, at §§611.03(a), 804.01(b) & 1212.05(d). In a litigation to enforce a trademark, the trademark registration owner may yet need to provide additional evidence of use of the trademark in commerce.

In its application for trademark registration, Complainant asserted first use and first use in commerce of URBAN HOME in 2000, but assertions of first use do not establish any evidentiary presumption, and there is little or no evidence on the record of this proceeding to suggest that Complainant used the URBAN HOME trademark in commerce to identify home furnishings and related services as early as 2000 (although it did establish a business entity with the name Urban Home in California in February 2001).

The disputed domain name, <urbanhome.com>, is for purposes of the Policy identical to Complainant’s URBAN HOME trademark.

Complainant has established that it owns rights in the URBAN HOME trademark, and that the disputed domain name is identical to that trademark.

B. Rights or Legitimate Interests

Respondent consistently refers to the initial registration date of the disputed domain name in 1998 as the basis for establishing its rights or legitimate interests in the disputed domain name. Nowhere in its Response does Respondent indicate when it acquired the disputed domain name, and its Registrar has not furnished that information. It appears from the evidence submitted by Respondent that other parties owned registration of the disputed domain name when it was initially registered and for some time thereafter since Respondent has not suggested any relationship to the businesses (such as a furniture store in Dallas, Texas) that were earlier identified by the disputed domain name. Had Respondent been associated with those prior registrants, Respondent presumably would have provided that information in light of the importance of such facts to this proceeding.

Respondent furnished a website printout addressed by the disputed domain name from May 21, 2008 showing a standard format link farm parking page. The first archive printout showing a website substantially similar to that operated by Respondent as of the date this proceeding is dated July 17, 2011, with a copyright notice date of 2011. In the absence of additional evidence from Respondent concerning the date on which it acquired the disputed domain name, the Panel draws the inference that Respondent acquired the disputed domain name some time at or about July 17, 2011, and began to use the disputed domain name in connection with its commercial website at or about that time.

URBAN HOME does not describe furniture, or services in connection with furniture. (????????????????????????????) Respondent is not using that trademark term in a directly descriptive sense. It is instead using Complainant’s unique trademark identifier to direct Internet users to third-party advertisers competitive with the home furnishing business of Complainant. In the view of the Panel, this does not constitute fair use of Complainant’s trademark term.

The Panel has inferred (???????) that Respondent acquired the disputed domain name on or about July 17, 2011. Complainant submitted its application for trademark registration for URBAN HOME on May 12, 2011.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is using Complainant’s distinctive trademark term to operate a commercial website directing Internet users to third-party providers of goods and services competitive with those of Complainant.

C. Registered and Used in Bad Faith

There is little or no evidence to support a finding in this proceeding that Respondent registered the disputed domain name for the purpose of selling, renting or otherwise transferring it to Complainant or a third party for valuable consideration in excess of its out-of-pocket expenses in connection therewith. There is similarly little or no evidence that Respondent registered or used the disputed domain name for the purpose of disrupting Complainant’s business.

Complainant has argued that Respondent has engaged in a pattern of registering the trademarks of third parties to prevent those third parties from registering their trademarks in corresponding domain names. But, aside from noting that Fabulous.com operates a business model which encourages ownership of registration of substantial quantities of domain names, Complainant has provided no evidence that Respondent has registered any domain name other than the disputed domain name incorporating the trademark of a third party.

Respondent appears, however, to be using the disputed domain name for commercial gain by attempting to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website. Respondent appears to be using the URBAN HOME trademark of Complainant in the disputed domain name in the expectation that Internet users will visit Respondent’s website, and thereupon links on Respondent’s website will divert those Internet users to third-party competitors of Complainant.

Respondent is represented by sophisticated counsel. In its Response, Respondent consistently relies on the initial registration of the disputed domain name on March 30, 1998. By any of Complainant’s own accounts, that 1998 initial registration took place prior to Complainant’s establishment of rights in the URBAN HOME trademark. And, if that initial registration had been undertaken by Respondent (or a party affiliated by ownership with Respondent), it would be exceedingly problematic for Complainant to succeed on its claim that Respondent registered and is using the disputed domain name in bad faith.

In its Response, Respondent studiously avoided any explicit statement regarding the date on which it acquired the disputed domain name, even though it presented substantial evidence from which it may be inferred that Respondent was not the initial registrant. It is the view of this Panel that if Respondent was in a position to have established that it acquired the disputed domain name prior to Complainant having establishing trademark rights, Respondent would have done that.

The best information available to the Panel suggests that the disputed domain name was acquired by Respondent on or about July 17, 2011. That date is subsequent to the priority of Complainant’s rights in its trademark, which date back at least to the filing date of its application for registration, May 12, 2011. Even if that sequencing is imperfect in terms of the date on which Respondent acquired the disputed domain name, Complainant has submitted evidence of use in commerce of what would have been an unregistered or common law trademark dating back at least several years prior to its application for trademark registration. The Panel does not consider it necessary to establish a precise date on which Complainant may have established common law trademark rights.

The Panel considered going back to Respondent for additional evidence regarding the date at which Respondent acquired the disputed domain name. (but instead the Panel arbitrarily assumed whatever it felt that would serve the complainant better) However, it appears to the Panel that Respondent (as represented by counsel) should have been well aware of the importance of establishing that date for purposes of this proceeding, and the fact that it did not do that implies that it acquired the disputed domain name relatively recently.

The Panel determines that Respondent acquired and registered the disputed domain name after Complainant acquired trademark rights in URBAN HOME, and that Respondent is using the disputed domain name for commercial gain to attract Internet users to its website location by creating confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy. Respondent registered and is using the disputed domain name in bad faith.

Decision

The Panel ordered that the disputed domain name <urbanhome.com> be transferred to Complainant.