TRADEMARKS, DOMAIN NAMES, AND CYBERSQUATTING

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1 TRADEMARKS, DOMAIN NAMES, AND CYBERSQUATTING PDF HANDBOOK OF SELECTED MATERIALS FOR CLASS PRESENTATION NOVEMBER 11, 2015 Speaker: Gerald M. Levine, Esq.

2 Contents UDRP 1. Uniform Domain Name Dispute Resolution Policy; 2. Rules for the UDRP. Lanham Act, 15 U.S.C. Sec Sec Sec (including 1125(d) the ACPA) Decisions UDRP 1. World Wrestling Federation Entertainment, Inc. V. Ringwide Collectibles, D (WIPO January 24, 2001) (Established binary requirement). 2. Guru Denim Inc. v. Ibrahim Ali Ibrahim abu-harb, D (WIPO September 27, 2013) (<truereligion.com>) (Swerved from binary in favor of unitary requirement). 3. Telstra Corporation Limited v. Nuclear Marshmallows., D (WIPO February 18, 2000) (Established basis for passive holding when it supports lack of rights or legitimate interests). 4. San Francisco Bay Area Rapid Transit District v. Chad Laughlin, FA (. Forum September 25, 2015) (Denial of knowledge implausible, therefore actual knowledge of trademark). 5. Oki Data Americas, Inc. v. ASD, Inc, D (WIPO November 6, 2001) (<okidata parts.com>) (Established four part test for commercial or nominative fair use). 6. Newport News, Inc. v. Vcv Internet, AF-0238 [eresolution July 18, 2000]) (<newportnews.com> Semantic use of domain name composed of generic terms). 7. Modefine S.A. v. A.R. Mani, D (WIPO July 20, 2001) (ARMANI and <armani.com> spelling out Respondent s name for personal use. It is improper to import into the test for legitimate interest an element of confusion or bad faith. ) 8. Vanity Shop of Grand Forks, Inc. v. Domain Administrator / Vertical Axis Inc., FA (Forum January 15, 2015) (Where a domain name is comprised of common dictionary words that also correspond to a trademark, its use for a PPC link page can give rise to legitimate interests if the page does contains links related to the common meaning of the words, and not to their trademark sense.) 9. The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, D (WIPO June 3, 2002) (<jerrfallwell.com> and <jerryfalwell.com>. Complaint denied; protected speech). 10. The Reverend Dr. Jerry L. Falwell and The Liberty Alliance v. Lamparello International., FA (Nat. Arb. Forum November 20, 2003) (<fallwell.com>. Good faith/free speech rejected but vindicated, see below by Fourth Circuit Court of Appeals). 11. Philip Morris USA Inc. v. Lori Wagner / David Delman / David@delman.tv, FA (Forum August 19, 2015) (On the issue of free speech there are always aberrational panelists so adamant in their espousal of View 1 that website content is ignored entirely even though a domain name may clearly forecast commentary and criticism. The Panel in this case held that Respondent s bad faith use or registration may not be defended by any claim that using a confusingly similar domain name is protected by free speech rights.

3 12. Sutherland Institute v. Continuative LLC, D (WIPO July 10, 2009) ( [I]n the world of debate about public affairs, many things done with motives that are less than admirable are protected by the First Amendment. ) 13. Eastman Sporto Group LLC v. Jim and Kenny, D (WIPO March 1, 2010) (Against consensus found bad faith measured from use before and after renewal of registration). 14. ecarecenter, O.D., P.A. v. Eye Care Associates, ODPA, FA (Nat. Arb. Forum August 30, 2011) (Trademark EYE CARE CENTER; Respondent added the plural s to the domain name, <eyecarecenters.com>. Both parties are in the eye care business) (Use of domain name descriptive of respondent s business) Response Marketing, LLC v. Nalbant Holding AS, FA (Forum September 18, 2015) The consensus position for standing under paragraph 4(a)(i) of the Policy is that it is satisfied regardless of the date of complainant s acquisition of trademark. Panelist in this case (as he has in deciding earlier cases) departs from consensus. 16. Ramsey Mankarious v. Stanley Pace, D (WIPO August 11, 2015) (Complainant, a prominent businessman, was the registered holder of <mankarious> for 15 years before inadvertent lapse of registration but has no trademark with bitter consequences: On the evidence before the Panel, the Complainant falls squarely into the category of a businessperson (potentially) having a famous name but who does not actually use his/her name as an identifier for the business engaged in, which... is insufficient to constitute unregistered trade mark rights. 17. ipayment, Inc. v. Domain Hostmaster, Customer ID: , Whois Privacy Services Pty Ltd / Kwangpyo Kim, Mediablue Inc., D (WIPO September 2, 2015) (Lapsed or abandoned. Credibility plays a significant role in assessing merits of parties positions). 18. Emazing B.V. v. Joe Pierce, D (WIPO Augut 25, 2015) (Earlier registered domain name later acquired trademark). 19. Pick Enterprises, Inc. v. Domains by Proxy, LLC, Domains ByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, D (WIPO September 22, 2012) (<womantowomanhealthcenter.com>. No evidence of knowledge. Reverse domain name hijacking). 20. East End N.Y. Imports Inc. v. DYNAMO.COM, c/o Privacy Protection and Autorenewal, D (WIPO August 31, 2015) (Although concurring in result to dismiss complaint strong dissenting analysis in favor of RDNH). 21. Nucell, LLC v. Guillaume Pousaz, CAC (ADR.eu September 24, 2015) (3 member Panel without dissent issuing a strong analysis in favor of RDNH). Decisions federal courts 1. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 624 (4th Cir. 2003) (Generic geographic term, <barcelona.com>) Plaintiff formerly Respondent in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc. D (WIPO August 7, 2000). th 2. Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F. 3d 806 (4 Cir. 2004) (Commentary and criticism. Direct ACPA; no UDRP). 3. Lamparello v. Falwell, 420 F.3d 309 (2005) (Reversing judgment in Lamparello v. Falwell, A (U.S. Dist. Court, Eastern Dist. of VA, August 5, 2004) that affirmed UDRP but on appeal the Court of Appeals was critical of the District Court s analysis in failing to address the Plaintiff s free speech rights, th 420 F.3d 309 (4 Cir. 2005). It held that the use of another firm s mark to capture the mark holder s customers and profits [ ] simply does not exist when the alleged infringer establishes a gripe site that criticizes the mark holder. (Previous UDRP, No. 10 above).

4 4. Newport News Holdings Corporation v. Virtual City Vision, Incorporated, d/b/a Van James Bond Tran, 650 F3d 423 (4th Cir. 2011) (Defendant, previously Respondent in UDRP [No.10 above] now found to have changed use and now infringing plaintiff). th 5. Toyota Motor Sales USA Inc. v. Tabari, 610 F.3d 1171(9 Cir. 2010) (<buy-a-lexus.com> and <buyorleaselexus.com>) (Nominative fair use. Direct ACPA; no previous UDRP). 6. WEB-ADVISO, J. TAIKWOK YUNG v. Trump, 11-cv (EDNY 2/28/2013) (Trump prevailed in UDRP and in ACPA on counterclaim for declaration and damages; judgment awarded in Trump s favor for $32,000) (previous UDRP in defendant s favor). 7. Tory Burch v. Yong Shen, 10-cv (SDNY 5/13/11) (In res ACPA action; permanent injunction and transfer of accused domain names. No previous UDRP).. 8. Hugedomains.com, LLC. v. Wills, 14-cv (D.Colorado July 21, 2015) (Plaintiff, earlier Respondent Austen Pain Associates v. Jeffrey Reberry, FA (Forum March 18, 2014), commenced an ACPA action for declaratory judgment that its registration or use of <austinpain.com> was not unlawful under the Act; defendant capitulated to a consent judgment and agreed to pay plaintiff $25, Telepathy, Inc. v. SDT International SA-NV, 14-cv (D. Columbia July 9, 2015). Plaintiff, earlier Respondent in SDT International SA-NV v. Telepathy, Inc., D (WIPO January 13, 2015) (Respondent put Complainant on notice the complaint was without merit and explained why but Complainant refused to withdraw the complaint; proceeding terminated after Respondent commenced the ACPA action. Defendant capitulated in a Consent Judgment and agreed to pay Plaintiff $50,000 together with a permanent injunction). Articles Gerald M. Levine, Opportunistic Registrations of Domain Names: What is Going On, and What Tool are Available for Trademark Owners? NYSBA Bright Ideas (IP Section), Fall 2014 (Vol 23, No. 2). Gerald M. Levine, Forum of Choice for Arbitrating Cybersquatting: The Uniform Domain Name Dispute Resolution Policy, NYSBA New York Dispute Resolution Lawyer (ADR Section), Spring 2014 (Vol. 7, No. 1). Comment and Blogs, Steven M. Levy, Esq. (UDRPSearch.com) on Philip Morris USA Inc. v. LORI WAGNER / DAVID DELMAN / DAVID@ DELMAN.TV, FA (Forum August 19, 2015). Gerald M. Levine, Research Facts and Law under the UDRP. Gerald M. Levine, Role of Credibility in Assessing Claims and Defenses.

5 Uniform Domain Name Dispute Resolution Policy Policy Adopted: August 26, 1999 Implementation Documents Approved: October 24, 1999 Notes: 1. This policy is now in effect. See for the implementation schedule. 2. This policy has been adopted by all ICANN-accredited registrars. It has also been adopted by certain managers of country-code top-level domains (e.g.,.nu,.tv,.ws). 3. The policy is between the registrar (or other registration authority in the case of a country-code top-level domain) and its customer (the domain-name holder or registrant). Thus, the policy uses "we" and "our" to refer to the registrar and it uses "you" and "your" to refer to the domain-name holder. Uniform Domain Name Dispute Resolution Policy (As Approved by ICANN on October 24, 1999) 1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the "Policy") has been adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"), is incorporated by reference into your Registration Agreement, and sets forth the terms and conditions in connection with a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you. Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules of Procedure"), which are available at and the selected administrative-dispute-resolution service provider's supplemental rules. 2. Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights. -1-

6 3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances: a. subject to the provisions of Paragraph 8, our receipt of written or appropriate electronic instructions from you or your authorized agent to take such action; b. our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or c. our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and (k) below.) We may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of your Registration Agreement or other legal requirements. 4. Mandatory Administrative Proceeding. This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative-dispute-resolution service providers listed at (each, a "Provider"). a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present. b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: -2-

7 (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. d. Selection of Provider. The complainant shall select the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation as described in Paragraph 4(f). -3-

8 e. Initiation of Proceeding and Process and Appointment of Administrative Panel. The Rules of Procedure state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the "Administrative Panel"). f. Consolidation. In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN. g. Fees. All fees charged by a Provider in connection with any dispute before an Administrative Panel pursuant to this Policy shall be paid by the complainant, except in cases where you elect to expand the Administrative Panel from one to three panelists as provided in Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will be split evenly by you and the complainant. h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in the administration or conduct of any proceeding before an Administrative Panel. In addition, we will not be liable as a result of any decisions rendered by the Administrative Panel. i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant. j. Notification and Publication. The Provider shall notify us of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision. k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. 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. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal -4-

9 office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name. 5. All Other Disputes and Litigation. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available. 6. Our Involvement in Disputes. We will not participate in any way in any dispute between you and any party other than us regarding the registration and use of your domain name. You shall not name us as a party or otherwise include us in any such proceeding. In the event that we are named as a party in any such proceeding, we reserve the right to raise any and all defenses deemed appropriate, and to take any other action necessary to defend ourselves. 7. Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration under this Policy except as provided in Paragraph 3 above. 8. Transfers During a Dispute. a. Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph. b. Changing Registrars. You may not transfer your domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded. You may transfer administration of your domain name registration to another registrar during a pending court action or arbitration, provided that the domain name you have registered with us shall continue to be subject to the proceedings commenced against you in accordance with the terms of this Policy. In the event that you transfer a domain name registration to us during the pendency of a court action or arbitration, such -5-

10 dispute shall remain subject to the domain name dispute policy of the registrar from which the domain name registration was transferred. 9. Policy Modifications. We reserve the right to modify this Policy at any time with the permission of ICANN. We will post our revised Policy at <URL> at least thirty (30) calendar days before it becomes effective. Unless this Policy has already been invoked by the submission of a complaint to a Provider, in which event the version of the Policy in effect at the time it was invoked will apply to you until the dispute is over, all such changes will be binding upon you with respect to any domain name registration dispute, whether the dispute arose before, on or after the effective date of our change. In the event that you object to a change in this Policy, your sole remedy is to cancel your domain name registration with us, provided that you will not be entitled to a refund of any fees you paid to us. The revised Policy will apply to you until you cancel your domain name registration -6-

11 Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") As approved by the ICANN Board of Directors on 28 September These Rules are in effect for all UDRP proceedings in which a complaint is submitted to a provider on or after 31 July The prior version of the Rules, applicable to all proceedings in which a complaint was submitted to a Provider on or before 30 July 2015, is at UDRP Providers may elect to adopt the notice procedures set forth in these Rules prior to 31 July Administrative proceedings for the resolution of disputes under the Uniform Dispute Resolution Policy adopted by ICANN shall be governed by these Rules and also the Supplemental Rules of the Provider administering the proceedings, as posted on its web site. To the extent that the Supplemental Rules of any Provider conflict with these Rules, these Rules supersede. 1. Definitions In these Rules: Complainant means the party initiating a complaint concerning a domain-name registration. ICANN refers to the Internet Corporation for Assigned Names and Numbers. Lock means a set of measures that a registrar applies to a domain name, which prevents at a minimum any modification to the registrant and registrar information by the Respondent, but does not affect the resolution of the domain name or the renewal of the domain name. Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider. Panel means an administrative panel appointed by a Provider to decide a complaint concerning a domain-name registration. Panelist means an individual appointed by a Provider to be a member of a Panel. Party means a Complainant or a Respondent. Pendency means the time period from the moment a UDRP complaint has been submitted -1-

12 by the Complainant to the UDRP Provider to the time the UDRP decision has been implemented or the UDRP complaint has been terminated. Policy means the Uniform Domain Name Dispute Resolution Policy that is incorporated by reference and made a part of the Registration Agreement. Provider means a dispute-resolution service provider approved by ICANN. A list of such Providers appears at Registrar means the entity with which the Respondent has registered a domain name that is the subject of a complaint. Registration Agreement means the agreement between a Registrar and a domain-name holder. Respondent means the holder of a domain-name registration against which a complaint is initiated. Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, file size and format modalities, the means for communicating with the Provider and the Panel, and the form of cover sheets. Written Notice means hardcopy notification by the Provider to the Respondent of the commencement of an administrative proceeding under the Policy which shall inform the respondent that a complaint has been filed against it, and which shall state that the Provider has electronically transmitted the complaint including any annexes to the Respondent by the means specified herein. Written notice does not include a hardcopy of the complaint itself or of any annexes. 2. Communications (a) When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility: -2-

13 (i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and (ii) sending the complaint, including any annexes, in electronic form by to: (A) the addresses for those technical, administrative, and billing contacts; (B) contested domain name>; and (C) if the domain name (or " followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or links on that web page; and (iii) sending the complaint, including any annexes, to any address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other addresses provided to the Provider by Complainant under Paragraph 3(b)(v). (b) Except as provided in Paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made electronically via the Internet (a record of its transmission being available), or by any reasonably requested preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii)). (c) Any communication to the Provider or the Panel shall be made by the means and in the manner (including, where applicable, the number of copies) stated in the Provider's Supplemental Rules. (d) Communications shall be made in the language prescribed in Paragraph 11. (e) Either Party may update its contact details by notifying the Provider and the Registrar. (f) Except as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made: (i) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable; or, where applicable (ii) if delivered by telecopy or facsimile transmission, on the date shown on the confirmation of transmission; or: -3-

14 (iii) if by postal or courier service, on the date marked on the receipt. (g) Except as otherwise provided in these Rules, all time periods calculated under these Rules to begin when a communication is made shall begin to run on the earliest date that the communication is deemed to have been made in accordance with Paragraph 2(f). (h) Any communication by (i) a Panel to any Party shall be copied to the Provider and to the other Party; (ii) the Provider to any Party shall be copied to the other Party; and be. (iii) a Party shall be copied to the other Party, the Panel and the Provider, as the case may (i) It shall be the responsibility of the sender to retain records of the fact and circumstances of sending, which shall be available for inspection by affected parties and for reporting purposes. This includes the Provider in sending Written Notice to the Respondent by post and/or facsimile under Paragraph 2(a)(i). (j) In the event a Party sending a communication receives notification of non-delivery of the communication, the Party shall promptly notify the Panel (or, if no Panel is yet appointed, the Provider) of the circumstances of the notification. Further proceedings concerning the communication and any response shall be as directed by the Panel (or the Provider). 3. The Complaint (a) Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN. (Due to capacity constraints or for other reasons, a Provider's ability to accept complaints may be suspended at times. In that event, the Provider shall refuse the submission. The person or entity may submit the complaint to another Provider.) (b) The complaint including any annexes shall be submitted in electronic form and shall: (i) Request that the complaint be submitted for decision in accordance with the Policy and these Rules; (ii) Provide the name, postal and addresses, and the telephone and telefax numbers of the Complainant and of any representative authorized to act for the Complainant in the administrative proceeding; -4-

15 (iii) Specify a preferred method for communications directed to the Complainant in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy (where applicable); (iv) Designate whether Complainant elects to have the dispute decided by a single-member or a three-member Panel and, in the event Complainant elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider's list of panelists); (v) Provide the name of the Respondent (domain-name holder) and all information (including any postal and addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a); (vi) Specify the domain name(s) that is/are the subject of the complaint; (vii) Identify the Registrar(s) with whom the domain name(s) is/are registered at the time the complaint is filed; (viii) Specify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (Complainant may also separately describe other goods and services with which it intends, at the time the complaint is submitted, to use the mark in the future.); (ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular, (1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and (3) why the domain name(s) should be considered as having been registered and being used in bad faith (The description should, for elements (2) and (3), discuss any aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable. The description shall comply with any word or page limit set forth in the Provider's Supplemental Rules.); -5-

16 (x) Specify, in accordance with the Policy, the remedies sought; (xi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; (xii) State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction; (xiii) Conclude with the following statement followed by the signature (in any electronic format) of the Complainant or its authorized representative: "Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute's resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the dispute-resolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents." "Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."; and (xiv) Annex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies, together with a schedule indexing such evidence. (c) The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. 4. Notification of Complaint (a) The Provider shall submit a verification request to the Registrar. The verification request will include a request to Lock the domain name. (b) Within two (2) business days of receiving the Provider's verification request, the Registrar shall provide the information requested in the verification request and confirm that a Lock of the domain name has been applied. The Registrar shall not notify the Respondent of the proceeding until the Lock status has been applied. The Lock shall remain in place through the remaining Pendency of the UDRP proceeding. Any updates to the Respondent's data, such as -6-

17 through the result of a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. Any modification(s) of the Respondent's data following the two (2) business day period may be addressed by the Panel in its decision. (c) The Provider shall review the complaint for administrative compliance with the Policy and these Rules and, if in compliance, shall forward the complaint, including any annexes, electronically to the Respondent and Registrar and shall send Written Notice of the complaint (together with the explanatory cover sheet prescribed by the Provider's Supplemental Rules) to the Respondent, in the manner prescribed by Paragraph 2(a), within three (3) calendar days following receipt of the fees to be paid by the Complainant in accordance with Paragraph 19. (d) If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant. (e) If the Provider dismisses the complaint due to an administrative deficiency, or the Complainant voluntarily withdraws its complaint, the Provider shall inform the Registrar that the proceedings have been withdrawn, and the Registrar shall release the Lock within one (1) business day of receiving the dismissal or withdrawal notice from the Provider. (f) The date of commencement of the administrative proceeding shall be the date on which the Provider completes its responsibilities under Paragraph 2(a) in connection with sending the complaint to the Respondent. (g) The Provider shall immediately notify the Complainant, the Respondent, the concerned Registrar(s), and ICANN of the date of commencement of the administrative proceeding. The Provider shall inform the Respondent that any corrections to the Respondent's contact information during the remaining Pendency of the UDRP proceedings shall be communicated to the Provider further to Rule 5(c)(ii) and 5(c)(iii). 5. The Response (a) Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider. -7-

18 (b) The Respondent may expressly request an additional four (4) calendar days in which to respond to the complaint, and the Provider shall automatically grant the extension and notify the Parties thereof. This extension does not preclude any additional extensions that may be given further to 5(d) of the Rules. (c) The response, including any annexes, shall be submitted in electronic form and shall: (i) Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (This portion of the response shall comply with any word or page limit set forth in the Provider's Supplemental Rules.); (ii) Provide the name, postal and addresses, and the telephone and telefax numbers of the Respondent (domain-name holder) and of any representative authorized to act for the Respondent in the administrative proceeding; (iii) Specify a preferred method for communications directed to the Respondent in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy (where applicable); (iv) If Complainant has elected a single-member panel in the complaint (see Paragraph 3(b)(iv)), state whether Respondent elects instead to have the dispute decided by a three-member panel; (v) If either Complainant or Respondent elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider's list of panelists); (vi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; (vii) State that a copy of the response including any annexes has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b); and (viii) Conclude with the following statement followed by the signature (in any electronic format) of the Respondent or its authorized representative: "Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."; and -8-

19 (ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents. (d) If Complainant has elected to have the dispute decided by a single-member Panel and Respondent elects a three-member Panel, Respondent shall be required to pay one-half of the applicable fee for a three-member Panel as set forth in the Provider's Supplemental Rules. This payment shall be made together with the submission of the response to the Provider. In the event that the required payment is not made, the dispute shall be decided by a single-member Panel. (e) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider. (f) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. 6. Appointment of the Panel and Timing of Decision (a) Each Provider shall maintain and publish a publicly available list of panelists and their qualifications. (b) If neither the Complainant nor the Respondent has elected a three-member Panel (Paragraphs 3(b)(iv) and 5(b)(iv)), the Provider shall appoint, within five (5) calendar days following receipt of the response by the Provider, or the lapse of the time period for the submission thereof, a single Panelist from its list of panelists. The fees for a single-member Panel shall be paid entirely by the Complainant. (c) If either the Complainant or the Respondent elects to have the dispute decided by a three-member Panel, the Provider shall appoint three Panelists in accordance with the procedures identified in Paragraph 6(e). The fees for a three-member Panel shall be paid in their entirety by the Complainant, except where the election for a three-member Panel was made by the Respondent, in which case the applicable fees shall be shared equally between the Parties. (d) Unless it has already elected a three-member Panel, the Complainant shall submit to the Provider, within five (5) calendar days of communication of a response in which the Respondent elects a three-member Panel, the names and contact details of three candidates to serve as one of the Panelists. These candidates may be drawn from any ICANN-approved Provider's list of panelists. (e) In the event that either the Complainant or the Respondent elects a three-member Panel, the Provider shall endeavor to appoint one Panelist from the list of candidates provided by each of the Complainant and the Respondent. In the event the Provider is unable within five (5) -9-

20 calendar days to secure the appointment of a Panelist on its customary terms from either Party's list of candidates, the Provider shall make that appointment from its list of panelists. The third Panelist shall be appointed by the Provider from a list of five candidates submitted by the Provider to the Parties, the Provider's selection from among the five being made in a manner that reasonably balances the preferences of both Parties, as they may specify to the Provider within five (5) calendar days of the Provider's submission of the five-candidate list to the Parties. (f) Once the entire Panel is appointed, the Provider shall notify the Parties of the Panelists appointed and the date by which, absent exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider. 7. Impartiality and Independence A Panelist shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist's impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such event, the Provider shall have the discretion to appoint a substitute Panelist. 8. Communication Between Parties and the Panel No Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Provider's Supplemental Rules. 9. Transmission of the File to the Panel The Provider shall forward the file to the Panel as soon as the Panelist is appointed in the case of a Panel consisting of a single member, or as soon as the last Panelist is appointed in the case of a three-member Panel. 10. General Powers of the Panel (a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. (b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. (c) The Panel shall ensure that the administrative proceeding takes place with due -10-

21 expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel. (d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence. (e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules. 11. Language of Proceedings (a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the gistration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. (b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding. 12. Further Statements In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. 13. In-Person Hearings There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint. 14. Default (a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. (b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. -11-

22 15. Panel Decisions (a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. (b) In the absence of exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider within fourteen (14) days of its appointment pursuant to Paragraph 6. (c) In the case of a three-member Panel, the Panel's decision shall be made by a majority. (d) The Panel's decision shall be in writing, provide the reasons on which it is based, indicate the date on which it was rendered and identify the name(s) of the Panelist(s). (e) Panel decisions and dissenting opinions shall normally comply with the guidelines as to length set forth in the Provider's Supplemental Rules. Any dissenting opinion shall accompany the majority decision. If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 16 Communication of Decision to Parties (a) Within three (3) business days after receiving the decision from the Panel, the Provider shall communicate the full text of the decision to each Party, the concerned Registrar(s), and ICANN. The concerned Registrar(s) shall within three (3) business days of receiving the decision from the Provider communicate to each Party, the Provider, and ICANN the date for the implementation of the decision in accordance with the Policy. (b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible web site. In any event, the portion of any decision determining a complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shall be published. 17. Settlement or Other Grounds for Termination (a) If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding. A settlement shall follow steps 17(a)(i) 17(a)(vii): (i) The Parties provide written notice of a request to suspend the proceedings because the parties are discussing settlement to the Provider. -12-

23 (ii) The Provider acknowledges receipt of the request for suspension and informs the Registrar of the suspension request and the expected duration of the suspension. (iii) The Parties reach a settlement and provide a standard settlement form to the Provider further to the Provider's supplemental rules and settlement form. The standard settlement form is not intended to be an agreement itself, but only to summarize the essential terms of the Parties' separate settlement agreement. The Provider shall not disclose the completed standard settlement form to any third party. (iv) The Provider shall confirm to the Registrar, copying the Parties, the outcome of the settlement as it relates to actions that need to be taken by the Registrar. (v) Upon receiving notice from the Provider further to 17(a)(iv), the Registrar shall remove the Lock within two (2) business days. (vi) The Complainant shall confirm to the Provider that the settlement as it relates to the domain name(s) has been implemented further to the Provider's supplemental rules. (vii) The Provider will dismiss the proceedings without prejudice unless otherwise stipulated in the settlement. (b) If, before the Panel's decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel. 18. Effect of Court Proceedings (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. (b) In the event that a Party initiates any legal proceedings during the Pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above. 19. Fees (a) The Complainant shall pay to the Provider an initial fixed fee, in accordance with the Provider's Supplemental Rules, within the time and in the amount required. A Respondent electing under Paragraph 5(b)(iv) to have the dispute decided by a three-member Panel, rather than the single-member Panel elected by the Complainant, shall pay the Provider one-half the -13-

24 fixed fee for a three-member Panel. See Paragraph 5(c). In all other cases, the Complainant shall bear all of the Provider's fees, except as prescribed under Paragraph 19(d). Upon appointment of the Panel, the Provider shall refund the appropriate portion, if any, of the initial fee to the Complainant, as specified in the Provider's Supplemental Rules. (b) No action shall be taken by the Provider on a complaint until it has received from Complainant the initial fee in accordance with Paragraph 19(a). (c) If the Provider has not received the fee within ten (10) calendar days of receiving the complaint, the complaint shall be deemed withdrawn and the administrative proceeding terminated. (d) In exceptional circumstances, for example in the event an in-person hearing is held, the Provider shall request the Parties for the payment of additional fees, which shall be established in agreement with the Parties and the Panel. 20. Exclusion of Liability Except in the case of deliberate wrongdoing, neither the Provider nor a Panelist shall be liable to a Party for any act or omission in connection with any administrative proceeding under these Rules. 21. Amendments The version of these Rules in effect at the time of the submission of the complaint to the Provider shall apply to the administrative proceeding commenced thereby. These Rules may not be amended without the express written approval of ICANN. -14-

25 15 U.S.C Remedies; infringement; innocent infringement by prin of 6 9/16/2015 4:03 PM United States Code TITLE 15 COMMERCE AND TRADE CHAPTER 22 TRADEMARKS SUBCHAPTER III GENERAL PROVISIONS United States Code 15 U.S.C Remedies; infringement; innocent infringement by printers and publishers (1) Any person who shall, without the consent of the registrant (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive. As used in this paragraph, the term "any person" includes the United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, or other persons acting for the United States and with the authorization and consent of the United States, and any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. The United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity. (2) Notwithstanding any other provision of this chapter, the remedies given to the owner of a right infringed under this chapter or to a person bringing an action under section 1125(a) or (d) of this title shall be limited as follows: (A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 1125(a) of this title shall be entitled as against such infringer or violator only to

26 15 U.S.C Remedies; infringement; innocent infringement by prin of 6 9/16/2015 4:03 PM an injunction against future printing. (B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510(12) of title 18, the remedies of the owner of the right infringed or person bringing the action under section 1125(a) of this title as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators. (C) Injunctive relief shall not be available to the owner of the right infringed or person bringing the action under section 1125(a) of this title with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter or violating matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter. (D) (i) (I) A domain name registrar, a domain name registry, or other domain name registration authority that takes any action described under clause (ii) affecting a domain name shall not be liable for monetary relief or, except as provided in subclause (II), for injunctive relief, to any person for such action, regardless of whether the domain name is finally determined to infringe or dilute the mark. (II) A domain name registrar, domain name registry, or other domain name registration authority described in subclause (I) may be subject to injunctive relief only if such registrar, registry, or other registration authority has (aa) not expeditiously deposited with a court, in which an action has been filed regarding the disposition of the domain name, documents sufficient for the court to establish the court's control and authority regarding the disposition of the registration and use of the domain name; (bb) transferred, suspended, or otherwise modified the domain name during the pendency of the action, except upon order of the court; or (cc) willfully failed to comply with any such court order. (ii) An action referred to under clause (i)(i) is any action of refusing to register, removing from registration, transferring, temporarily disabling, or permanently canceling a domain name

27 15 U.S.C Remedies; infringement; innocent infringement by prin of 6 9/16/2015 4:03 PM (I) in compliance with a court order under section 1125(d) of this title; or (II) in the implementation of a reasonable policy by such registrar, registry, or authority prohibiting the registration of a domain name that is identical to, confusingly similar to, or dilutive of another's mark. (iii) A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name. (iv) If a registrar, registry, or other registration authority takes an action described under clause (ii) based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark, the person making the knowing and material misrepresentation shall be liable for any damages, including costs and attorney's fees, incurred by the domain name registrant as a result of such action. The court may also grant injunctive relief to the domain name registrant, including the reactivation of the domain name or the transfer of the domain name to the domain name registrant. (v) A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(ii) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant. (E) As used in this paragraph (i) the term "violator" means a person who violates section 1125(a) of this title; and (ii) the term "violating matter" means matter that is the subject of a violation under section 1125(a) of this title. (3) (A) Any person who engages in the conduct described in paragraph (11) of section 110 of title 17 and who complies with the requirements set forth in that paragraph is not liable on account of such conduct for a violation of any right under this chapter. This subparagraph does not preclude liability, nor shall it be construed to restrict the defenses or limitations on rights granted under this chapter, of a person for conduct not described in paragraph (11) of section 110 of title 17, even if that person also engages in conduct described in paragraph (11) of section 110 of such title. (B) A manufacturer, licensee, or licensor of technology that enables the making of limited portions of audio or video content of a motion picture imperceptible as described in subparagraph (A) is not liable on account of such manufacture or license for a violation of any right under this chapter, if such manufacturer, licensee, or licensor ensures that the technology provides a clear and conspicuous notice at the beginning of each performance that the performance of the motion picture is altered

28 15 U.S.C Remedies; infringement; innocent infringement by prin of 6 9/16/2015 4:03 PM from the performance intended by the director or copyright holder of the motion picture. The limitations on liability in subparagraph (A) and this subparagraph shall not apply to a manufacturer, licensee, or licensor of technology that fails to comply with this paragraph. (C) The requirement under subparagraph (B) to provide notice shall apply only with respect to technology manufactured after the end of the 180-day period beginning on April 27, (D) Any failure by a manufacturer, licensee, or licensor of technology to qualify for the exemption under subparagraphs (A) and (B) shall not be construed to create an inference that any such party that engages in conduct described in paragraph (11) of section 110 of title 17 is liable for trademark infringement by reason of such conduct. ( July 5, 1946, ch. 540, title VI, Sec. 32, 60 Stat. 437; Pub.L , Sec. 17, Oct. 9, 1962, 76 Stat. 773; Pub.L , title I, Sec. 127, Nov. 16, 1988, 102 Stat. 3943; Pub.L , Sec. 3(a), Oct. 27, 1992, 106 Stat. 3567; Pub.L , title II, Sec. 201(a)(8), Oct. 30, 1998, 112 Stat. 3070; Pub.L , Sec. 4(a), Aug. 5, 1999, 113 Stat. 219; Pub.L , div. B, Sec. 1000(a)(9) [title III, Sec. 3004], Nov. 29, 1999, 113 Stat. 1536, 1501A-549; Pub.L , title II, Sec. 202(b), Apr. 27, 2005, 119 Stat ) PRIOR PROVISIONS Acts Feb. 20, 1905, ch. 592, Sec. 16, 33 Stat. 728; Mar. 19, 1920, ch. 104, Sec. 4, 41 Stat AMENDMENTS 2005 Par. (3). Pub.L added par. (3) Par. (1). Pub.L , in undesignated par., inserted after "includes" in first sentence "the United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, or other persons acting for the United States and with the authorization and consent of the United States, and" and, in second sentence, substituted "The United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and any" for "Any". Par. (2). Pub.L , Sec. 1000(a)(9) [title III, Sec. 3004(1)], in introductory provisions, substituted "under section 1125(a) or (d) of this title" for "under section 1125(a) of this title". Par. (2)(D), (E). Pub.L , Sec. 1000(a)(9) [title III, Sec. 3004(2)], added subpar. (D) and redesignated former subpar. (D) as (E) Par. (1). Pub.L substituted "As used in this paragraph" for "As used in this subsection" in last paragraph Par. (1). Pub.L inserted at end "As used in this subsection, the term 'any person' includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such

29 15 U.S.C Remedies; infringement; innocent infringement by prin of 6 9/16/2015 4:03 PM instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity." 1988 Par. (2). Pub.L amended par. (2) generally. Prior to amendment, par. (2) read as follows: "Notwithstanding any other provision of this chapter, the remedies given to the owner of the right infringed shall be limited as follows: (a) Where an infringer in engaged solely in the business of printing the mark for others and establishes that he was an innocent infringer the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing; (b) where the infringement complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper, magazine, or other similar periodical shall be confined to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodical: Provided, That these limitations shall apply only to innocent infringers; (c) injunction relief shall not be available to the owner of the right infringed in respect of an issue of a newspaper, magazine, or other similar periodical containing infringing matter when restraining the dissemination of such infringing matter in any particular issue of such periodical would delay the delivery of such issue after the regular time therefor, and such delay would be due to the method by which publication and distribution of such periodical is customarily conducted in accordance with sound business practice, and not to any method or device adopted for the evasion of this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter." 1962 Par. (1). Pub.L amended provisions generally, and among other changes, inserted "distribution", and struck out "purchasers as to the source of origin of such goods or services" after "or to deceive" in subsec. (a), inserted provisions regarding the likelihood of such use causing confusion, mistake, or deception, in subsec. (b), and struck out the limitation on recovery under subsec. (b) to acts committed with knowledge that such acts would deceive purchasers. Par. (2)(b). Pub.L substituted "publisher" for "published". EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub.L applicable to all domain names registered before, on, or after Nov. 29, 1999, see section 1000(a)(9) [title III, Sec. 3010] of Pub.L , set out as a note under section 1117 of this title. EFFECTIVE DATE OF 1998 AMENDMENT Amendment by Pub.L effective Oct. 30, 1998, and applicable only to any civil action filed or proceeding before the United States Patent and Trademark Office commenced on or after such date relating to the registration of a mark, see section 201(b) of Pub.L , set out as a note under section 1051 of this title. EFFECTIVE DATE OF 1992 AMENDMENT

30 15 U.S.C Remedies; infringement; innocent infringement by prin of 6 9/16/2015 4:03 PM Pub.L , Sec. 4, Oct. 27, 1992, 106 Stat. 3568, provided that: "The amendments made by this Act [enacting section 1122 of this title and amending this section and sections 1125 and 1127 of this title] shall take effect with respect to violations that occur on or after the date of the enactment of this Act [Oct. 27, 1992]." EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub.L effective one year after Nov. 16, 1988, see section 136 of Pub.L , set out as a note under section 1051 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations and rights under prior acts, see notes set out under section 1051 of this title. Copyright 2015 CCH Incorporated or its affiliates

31 15 U.S.C Recovery for violation of rights 1 of 5 9/16/2015 4:06 PM United States Code TITLE 15 COMMERCE AND TRADE CHAPTER 22 TRADEMARKS SUBCHAPTER III GENERAL PROVISIONS United States Code 15 U.S.C Recovery for violation of rights (a) Profits; damages and costs; attorney fees When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party. (b) Treble damages for use of counterfeit mark In assessing damages under subsection (a) of this section for any violation of section 1114(1)(a) of this title or section of title 36, in a case involving use of a counterfeit mark or designation (as defined in section 1116(d) of this title), the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever amount is greater, together with a reasonable attorney's fee, if the violation consists of (1) intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark (as defined in section 1116(d) of this title), in connection with the sale, offering for sale, or distribution of goods or services; or (2) providing goods or services necessary to the commission of a violation specified in paragraph (1), with the intent that the recipient of the goods or services would put the goods or services to use in committing the violation. In such a case, the court may award prejudgment interest on such amount at an annual interest rate established under section 6621(a)(2) of title 26, beginning on the date of the service of the claimant's pleadings setting forth the claim for such entry of judgment and ending on the date such entry is made, or for such shorter time as the court considers

32 15 U.S.C Recovery for violation of rights 2 of 5 9/16/2015 4:06 PM appropriate. (c) Statutory damages for use of counterfeit marks In a case involving the use of a counterfeit mark (as defined in section 1116(d) of this title) in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under subsection (a) of this section, an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just. (d) Statutory damages for violation of section 1125(d)(1) In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just. (e) Rebuttable presumption of willful violation In the case of a violation referred to in this section, it shall be a rebuttable presumption that the violation is willful for purposes of determining relief if the violator, or a person acting in concert with the violator, knowingly provided or knowingly caused to be provided materially false contact information to a domain name registrar, domain name registry, or other domain name registration authority in registering, maintaining, or renewing a domain name used in connection with the violation. Nothing in this subsection limits what may be considered a willful violation under this section. ( July 5, 1946, ch. 540, title VI, Sec. 35, 60 Stat. 439; Pub.L , Sec. 19, Oct. 9, 1962, 76 Stat. 774; Pub.L , Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub.L , Sec. 3, Jan. 2, 1975, 88 Stat. 1955; Pub.L , title II, Sec. 1503(2), Oct. 12, 1984, 98 Stat. 2182; Pub.L , Sec. 2, Oct. 22, 1986, 100 Stat. 2095; Pub.L , title I, Sec. 129, Nov. 16, 1988, 102 Stat. 3945; Pub.L , Sec. 7, July 2, 1996, 110 Stat. 1388; Pub.L , Sec. 3(b), Aug. 5, 1999, 113 Stat. 219; Pub.L , div. B, Sec. 1000(a)(9) [title III, Sec. 3003(a)(2), (b)], Nov. 29, 1999, 113 Stat. 1536, 1501A-549; Pub.L , div. C, title III, Sec (a), (b)(11), Nov. 2, 2002, 116 Stat. 1906, 1908; Pub.L , title II, Sec. 202, Dec. 23, 2004, 118 Stat. 3916; Pub.L , title I, Secs. 103, 104, Oct. 13, 2008, 122 Stat ) PRIOR PROVISIONS Acts Feb. 20, 1905, ch. 592, Sec. 16, 19, 33 Stat. 728, 729; Mar. 19, 1920, ch. 104, Sec. 4, 41 Stat. 534.

33 15 U.S.C Recovery for violation of rights 3 of 5 9/16/2015 4:06 PM AMENDMENTS 2008 Subsec. (b). Pub.L , Sec. 103, amended subsec. (b) generally. Prior to amendment subsec. (b) read as follows: "In assessing damages under subsection (a) of this section, the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever is greater, together with a reasonable attorney's fee, in the case of any violation of section 1114(1)(a) of this title or section of title 36 that consists of intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark (as defined in section 1116(d) of this title), in connection with the sale, offering for sale, or distribution of goods or services. In such cases, the court may in its discretion award prejudgment interest on such amount at an annual interest rate established under section 6621(a)(2) of title 26, commencing on the date of the service of the claimant's pleadings setting forth the claim for such entry and ending on the date such entry is made, or for such shorter time as the court deems appropriate." Subsec. (c)(1). Pub.L , Sec. 104(1), substituted "$1,000" for "$500" and "$200,000" for "$100,000". Subsec. (c)(2). Pub.L , Sec. 104(2), substituted "$2,000,000" for "$1,000,000" Subsec. (e). Pub.L added subsec. (e) Subsec. (a). Pub.L , Sec (a), substituted "a violation under section 1125(a) or (d) of this title," for "a violation under section 1125(a), (c), or (d) of this title,". Subsec. (b). Pub.L , Sec (b)(11), substituted "section of title 36" for "section 110 of the Act entitled 'An Act to incorporate the United States Olympic Association', approved September 21, 1950 (36 U.S.C. 380)" and "6621(a)(2) of title 26" for "6621 of title 26" Subsec. (a). Pub.L , Sec. 1000(a)(9)[title III, Sec. 3003(a)(2)], added references to subsecs. (c) and (d) of section 1125 of this title. Pub.L added provision relating to a willful violation under section 1125(c) of this title. Subsec. (d). Pub.L , Sec. 1000(a)(9)[title III, Sec. 3003(b)], added subsec. (d) Subsec. (c). Pub.L added subsec. (c) Subsec. (a). Pub.L inserted ", or a violation under section 1125(a) of this title," after "Office" in first sentence Subsec. (b). Pub.L substituted "Internal Revenue Code of 1986" for "Internal Revenue Code of 1954", which for purposes of codification was translated as "title 26" thus requiring no change in text Pub.L designated existing provisions as subsec. (a) and

34 15 U.S.C Recovery for violation of rights 4 of 5 9/16/2015 4:06 PM added subsec. (b) Pub.L inserted provisions relating to awarding of attorney fees in exceptional cases. Pub.L substituted "Patent and Trademark Office" for "Patent Office" Pub.L substituted "1114" for "1113(1)(b)". EFFECTIVE DATE OF 1999 AMENDMENT Pub.L , div. B, Sec. 1000(a)(9) [title III, Sec. 3010], Nov. 29, 1999, 113 Stat. 1536, 1501A-552, provided that: "Sections 3002(a) [enacting section 1125(d) of this title], 3003 [amending this section and section 1116 of this title], 3004 [amending section 1114 of this title], 3005 [amending section 1127 of this title], and 3008 [enacting a provision set out as a note under section 1051 of this title] of this title shall apply to all domain names registered before, on, or after the date of the enactment of this Act [Nov. 29, 1999], except that damages under subsection (a) or (d) of section 35 of the Trademark Act of 1946 (15 U.S.C. 1117), as amended by section 3003 of this title, shall not be available with respect to the registration, trafficking, or use of a domain name that occurs before the date of the enactment of this Act." EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub.L effective one year after Nov. 16, 1988, see section 136 of Pub.L , set out as a note under section 1051 of this title. EFFECTIVE DATE OF 1975 AMENDMENTS Amendment by Pub.L effective Jan. 2, 1975, but not to affect any suit, proceeding, or appeal then pending, see section 4 of Pub.L , set out as a note under section 1063 of this title. Amendment by Pub.L effective Jan. 2, 1975, see section 4 of Pub.L , set out as a note under section 1111 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations and rights under prior acts, see notes set out under section 1051 of this title. CONSTRUCTION OF 2004 AMENDMENT Pub.L , title II, Sec. 205, Dec. 23, 2004, 118 Stat. 3917, provided that: " (a) Free Speech and Press Nothing in this title [see Short Title of 2004 Amendments note set out under section 1051 of this title] shall enlarge or diminish any rights of free speech or of the press for activities related to the registration or use of domain names.

35 15 U.S.C Recovery for violation of rights 5 of 5 9/16/2015 4:06 PM " (b) Discretion of Courts in Determining Relief Nothing in this title shall restrict the discretion of a court in determining damages or other relief to be assessed against a person found liable for the infringement of intellectual property rights. " (c) Discretion of Courts in Determining Terms of Imprisonment Nothing in this title shall be construed to limit the discretion of a court to determine the appropriate term of imprisonment for an offense under applicable law. " TRANSFER OF FUNCTIONS For transfer of functions of other officers, employees, and agencies of Department of Commerce, with certain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization and Employees. Copyright 2015 CCH Incorporated or its affiliates

36 15 U.S.C False designations of origin, false descriptions, and dil of 9 9/16/2015 4:08 PM United States Code TITLE 15 COMMERCE AND TRADE CHAPTER 22 TRADEMARKS SUBCHAPTER III GENERAL PROVISIONS United States Code 15 U.S.C False designations of origin, false descriptions, and dilution forbidden (a) Civil action (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. (2) As used in this subsection, the term "any person" includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity. (3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional. (b) Importation Any goods marked or labeled in contravention of the provisions of this section shall not be imported into the United States or admitted to entry at any customhouse of the United States. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given under the customs revenue laws or may have the remedy given by this chapter in cases involving goods refused entry or seized. (c) Dilution by blurring; dilution by tarnishment (1) Injunctive relief Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person

37 15 U.S.C False designations of origin, false descriptions, and dil of 9 9/16/2015 4:08 PM who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. (2) Definitions (A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. (iii) The extent of actual recognition of the mark. (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. (B) For purposes of paragraph (1), "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: (i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark. (C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. (3) Exclusions The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

38 15 U.S.C False designations of origin, false descriptions, and dil of 9 9/16/2015 4:08 PM (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. (B) All forms of news reporting and news commentary. (C) Any noncommercial use of a mark. (4) Burden of proof In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that (A) the claimed trade dress, taken as a whole, is not functional and is famous; and (B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks. (5) Additional remedies In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) and 1118 of this title, subject to the discretion of the court and the principles of equity if (A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2006; and (B) in a claim arising under this subsection (i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or (ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark. (6) Ownership of valid registration a complete bar to action The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that (A) is brought by another person under the common law or a statute of a State; and (B) (i) seeks to prevent dilution by blurring or dilution by

39 15 U.S.C False designations of origin, false descriptions, and dil of 9 9/16/2015 4:08 PM tarnishment; or (ii) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement. (7) Savings clause Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States. (d) Cyberpiracy prevention (1) (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii) registers, traffics in, or uses a domain name that (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section of title 36. (B) (i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to (I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or otherwise assign the

40 15 U.S.C False designations of origin, false descriptions, and dil of 9 9/16/2015 4:08 PM domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section. (ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. (C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. (D) A person shall be liable for using a domain name under subparagraph (A) only if that person is the domain name registrant or that registrant's authorized licensee. (E) As used in this paragraph, the term "traffics in" refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration. (2) (A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if (i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and (ii) the court finds that the owner (I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or (II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by

41 15 U.S.C False designations of origin, false descriptions, and dil of 9 9/16/2015 4:08 PM (aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and address provided by the registrant to the registrar; and (bb) publishing notice of the action as the court may direct promptly after filing the action. (B) The actions under subparagraph (A)(ii) shall constitute service of process. (C) In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which (i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or (ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court. (D) (i) The remedies in an in rem action under this paragraph shall be limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed by the owner of a mark in a United States district court under this paragraph, the domain name registrar, domain name registry, or other domain name authority shall (I) expeditiously deposit with the court documents sufficient to establish the court's control and authority regarding the disposition of the registration and use of the domain name to the court; and (II) not transfer, suspend, or otherwise modify the domain name during the pendency of the action, except upon order of the court. (ii) The domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order. (3) The civil action established under paragraph (1) and the in rem action established under paragraph (2), and any remedy available under either such action, shall be in addition to any other civil action or remedy otherwise applicable. (4) The in rem jurisdiction established under paragraph (2) shall be in addition to any other jurisdiction that otherwise exists, whether in rem or in personam. ( July 5, 1946, ch. 540, title VIII, Sec. 43, 60 Stat. 441; Pub.L , title I, Sec. 132, Nov. 16, 1988, 102 Stat. 3946; Pub.L , Sec. 3(c), Oct. 27, 1992, 106 Stat. 3568; Pub.L , Sec. 3(a), Jan. 16, 1996, 109 Stat. 985; Pub.L , Sec. 3(a)(2), 5, Aug. 5, 1999, 113 Stat. 219, 220; Pub.L , div. B, Sec. 1000(a)(9) [title III, Sec. 3002(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-545; Pub.L , Sec. 2, Oct. 6, 2006, 120 Stat. 1730; Pub.L , Sec. 1(a), Oct. 5, 2012, 126 Stat )

42 15 U.S.C False designations of origin, false descriptions, and dil of 9 9/16/2015 4:08 PM REFERENCES IN TEXT Acts March 3, 1881, and February 20, 1905, referred to in subsec. (c)(2)(iv), (6), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502, and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this chapter by act July 5, 1946, ch. 540, Sec. 46(a), 60 Stat Act Feb. 20, 1905, was classified to sections 81 to 109 of this title. PRIOR PROVISIONS Act Mar. 19, 1920, ch. 104, Sec. 3, 41 Stat AMENDMENTS 2012 Subsec. (c)(6)(a), (B). Pub.L , added subpars. (A) and (B) and struck out former subpars. (A) and (B), which read as follows: " (A)(i) is brought by another person under the common law or a statute of a State; and " (ii) seeks to prevent dilution by blurring or dilution by tarnishment; or " (B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement. " 2006 Subsec. (c). Pub.L , Sec. 2(1), added subsec. (c) and struck out former subsec. (c) which related to remedies for dilution of famous marks. Subsec. (d)(1)(b)(i)(ix). Pub.L , Sec. 2(2), substituted "subsection (c)" for "subsection (c)(1)" Subsec. (a)(3). Pub.L , Sec. 5, added par. (3). Subsec. (c)(2). Pub.L , Sec. 3(a)(2), inserted "as set forth in section 1116 of this title" after "relief" in first sentence. Subsec. (d). Pub.L added subsec. (d) Subsec. (c). Pub.L added subsec. (c) Subsec. (a). Pub.L designated existing provisions as par. (1), redesignated former pars. (1) and (2) as subpars. (A) and (B), respectively, and added par. (2) Subsec. (a). Pub.L amended subsec. (a) generally. Prior to amendment, subsec. (a) read as follows: "Any person who shall affix, apply, or annex, or use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with knowledge of the falsity of such designation of origin or description or

43 15 U.S.C False designations of origin, false descriptions, and dil of 9 9/16/2015 4:08 PM representation cause or procure the same to be transported or used in commerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation." EFFECTIVE DATE OF 2012 AMENDMENT Pub.L , Sec. 1(b), Oct. 5, 2012, 126 Stat. 1436, provided that: "The amendment made by subsection (a) [amending this section] shall apply to any action commenced on or after the date of the enactment of this Act [Oct. 5, 2012]." EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub.L applicable to all domain names registered before, on, or after Nov. 29, 1999, see section 1000(a)(9) [title III, Sec. 3010] of Pub.L , set out as a note under section 1117 of this title. EFFECTIVE DATE OF 1996 AMENDMENT Pub.L , Sec. 5, Jan. 16, 1996, 109 Stat. 987, provided that: "This Act [amending this section and section 1127 of this title and enacting provisions set out as a note under section 1051 of this title] and the amendments made by this Act shall take effect on the date of the enactment of this Act [Jan. 16, 1996]." EFFECTIVE DATE OF 1992 AMENDMENT Amendment by Pub.L effective with respect to violations that occur on or after Oct. 27, 1992, see section 4 of Pub.L , set out as a note under section 1114 of this title. EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub.L effective one year after Nov. 16, 1988, see section 136 of Pub.L , set out as a note under section 1051 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations and rights under prior acts, see notes set out under section 1051 of this title. STUDY ON ABUSIVE DOMAIN NAME REGISTRATIONS INVOLVING PERSONAL NAMES Pub.L , div. B, Sec. 1000(a)(9) [title III, Sec. 3006], Nov. 29, 1999, 113 Stat. 1536, 1501A-550, provided that: " (a) In General Not later than 180 days after the date of the enactment of this Act [Nov. 29, 1999], the Secretary of Commerce, in consultation with the Patent and Trademark Office and the Federal Election Commission, shall conduct a study and report to Congress

44 15 U.S.C False designations of origin, false descriptions, and dil of 9 9/16/2015 4:08 PM with recommendations on guidelines and procedures for resolving disputes involving the registration or use by a person of a domain name that includes the personal name of another person, in whole or in part, or a name confusingly similar thereto, including consideration of and recommendations for " (1) protecting personal names from registration by another person as a second level domain name for purposes of selling or otherwise transferring such domain name to such other person or any third party for financial gain; " (2) protecting individuals from bad faith uses of their personal names as second level domain names by others with malicious intent to harm the reputation of the individual or the goodwill associated with that individual's name; " (3) protecting consumers from the registration and use of domain names that include personal names in the second level domain in manners which are intended or are likely to confuse or deceive the public as to the affiliation, connection, or association of the domain name registrant, or a site accessible under the domain name, with such other person, or as to the origin, sponsorship, or approval of the goods, services, or commercial activities of the domain name registrant; " (4) protecting the public from registration of domain names that include the personal names of government officials, official candidates, and potential official candidates for Federal, State, or local political office in the United States, and the use of such domain names in a manner that disrupts the electoral process or the public's ability to access accurate and reliable information regarding such individuals; " (5) existing remedies, whether under State law or otherwise, and the extent to which such remedies are sufficient to address the considerations described in paragraphs (1) through (4); and " (6) the guidelines, procedures, and policies of the Internet Corporation for Assigned Names and Numbers and the extent to which they address the considerations described in paragraphs (1) through (4). " (b) Guidelines and Procedures The Secretary of Commerce shall, under its Memorandum of Understanding with the Internet Corporation for Assigned Names and Numbers, collaborate to develop guidelines and procedures for resolving disputes involving the registration or use by a person of a domain name that includes the personal name of another person, in whole or in part, or a name confusingly similar thereto. " Importation, see 19 CFR Part 11. CODE OF FEDERAL REGULATIONS Copyright 2015 CCH Incorporated or its affiliates

45 WIPO Domain Name Decision: D of 5 9/25/2015 8:22 PM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION World Wrestling Federation Entertainment, Inc. v. Michael Bosman Case No. D The Parties The complainant is World Wrestling Federation Entertainment, Inc., f/k/a Titan Sports, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at Stamford, Connecticut, United States of America. The respondent is Michael Bosman, an individual resident in Redlands, California, United States of America. 2. The Domain Name(s) and Registrar(s) The domain name at issue is <worldwrestlingfederation.com>, which domain name is registered with Melbourne IT, based in Australia. 3. Procedural History A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 2, 1999, and the signed original together with four copies forwarded by express courier under cover of a letter of the same date. An Acknowledgment of Receipt was sent by the WIPO Center to the complainant, dated December 3, On December 3, 1999 a Request for Registrar Verification was transmitted to the registrar, Melbourne IT requesting it to: (1) confirm that the domain name at issue is registered with MelbourneIT; (2) confirm that the person identified as the respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), address(es)) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) provide a copy of the registration agreement that was in effect at the time of the original registration of the domain name, as well as any subsequent amendments to the agreement; (5) provide a copy of the domain name dispute policy (if different from ICANN's Uniform Domain Name Dispute Resolution Policy) that was in effect at the time of the original registration of the domain name, as well as any subsequent amendments to the policy. On December 8, 1999, MelbourneIT confirmed by reply that the domain name <worldwrestlingfederation.com> is registered with MelbourneIT and that the respondent, Michael Bosman, was the current registrant of the name. The registrar also forwarded the requested Who is details, as well as copies of the registration agreement and applicable dispute resolution policy.

46 WIPO Domain Name Decision: D of 5 9/25/2015 8:22 PM The policy in effect at the time of the original registration of the domain name at issue provided that "Registrant agrees to be bound by the terms and conditions of this Registration Agreement." MelbourneIT Domain Name Registration Agreement, effective as of October 7, 1999, para. 1. Paragraph 7 of the Registration Agreement, entitled, "Dispute Policy," provides in pertinent part: Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by MelbourneIT, that the Registrant is bound by MelbourneIT's current Dispute Policy ("Dispute Policy"). Registrant agrees that MelbourneIT, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant's maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrant's continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database. Registrant agrees that any dispute relating to the registration or use of its domain name will be subject to the provisions specified in the Dispute Policy. Effective December 1, 1999, MelbourneIT adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"). There is no evidence that respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, respondent is bound by the provisions of the Policy. On December 6, 1999, having received written permission from the WIPO Center, the complainant submitted (electronically and in hardcopy) a Supplemental Complaint under cover of a letter of the same date. The Complaint and Supplemental Complaint will hereafter be referred to as the "Complaint." A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on December 8, The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the complainant. No formal deficiencies having been recorded, on December 9, 1999, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the respondent (with copies to the complainant, MelbourneIT and ICANN), setting a deadline of December 28, 1999, by which the respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the respondent by to the addresses indicated in the Complaint and specified in MelbourneIT's Whois confirmation, as well as to <postmster@worldwrestlingfederation.com>; no addresses were found at any web page relating to the disputed domain name. In addition, the complaint was sent by express courier to all available postal addresses. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, evidence of proper notice is provided by the evidence in the record of the respondent's participation in the settlement negotiations with the complainant. On December 14, 1999, in view of the complainant's designation of a single panelist (but without prejudice to any election to be made by the respondent) the WIPO Center invited M. Scott Donahey to serve as a panelist in Case No. D , and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. On December 29, 1999, having received no Response from the designated respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default. Having received on December 14, 1999, M. Scott Donahey's Statement of Acceptance and Declaration of Impartiality and Independence, also on December 29, 1999, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was January 11, The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules. Following these transmittals, the WIPO Center received a series of s from the respondent and the complainant's representative, indicating that the parties intended to settle and had reached a settlement in principle. On January 6, 2000, the WIPO Center received a copy of an unsigned settlement agreement, with assurances that a signed copy would be transmitted by facsimile. On January 6, 2000, in view of the settlement negotiations between the parties, the

47 WIPO Domain Name Decision: D of 5 9/25/2015 8:22 PM Case Administrator notified the parties that the time in which the Panel was to issue a decision on the merits had been extended to January 15, Following repeated requests from the WIPO Center for a copy of the fully executed final settlement agreement, on January 12, 2000, a copy of an agreement, signed only by respondent, was received. While the Panel is aware that the parties are close to completing their settlement, the Panel is also mindful of its responsibility to issue a timely decision, and one in compliance with the deadlines established by the Uniform Rules, the WIPO Supplemental Rules, and those established by the WIPO Center in accordance with those rules. See, e.g., Uniform Rules, paras. 10(c) and 15(b). Accordingly, this decision is issued prior to having received completely executed settlement documents, and, as such, does not rely on any purported settlement agreement. The Administrative Panel shall issue its Decision based on the Complaint, the s exchanged, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from respondent. 4. Factual Background The complainant has provided evidence of the registration of the following marks: 1. Service Mark - WORLD WRESTLING FEDERATION, registered for a term of 20 years from January 29, 1985, with the United States Patent and Trademark Office; 2. Trademark - WORLD WRESTLING FEDERATION, registered for a term of 20 years from November 7, 1989, with the United States Patent and Trademark Office. Complaint, Annexes B and C. The respondent registered the domain name <worldwrestlingfederation.com> for a term of two years from October 7, dated December 7, 1999, from Jan Webster to the WIPO Center Case Administrator, providing Whois details. The respondent is not a licensee of complainant, nor is he otherwise authorized to use complainant's marks. Complaint, para. 14. Complainant is authorized to use and has used its service mark in connection with entertainment services, namely the provision of sporting events such as wrestling exhibitions for television. Complaint, para. 17 and Annex B. Complainant is authorized to use and has used its trademark in connection with metal key chains, phonograph records, prerecorded audio and video cassettes, switch plates, computer programs concerning the sport of wrestling, watches, stickers, book markers, book plates, collection books, pictorial biographies, blowouts, paper napkins, paper table covers, memo boards, posters, stationery-type portfolios, memo pads, book covers calendars, trading cards, pens, pencils, magazines, decals, umbrellas, backpacks, roll bags, seat cushions, towels, shoes, bibs, children's pajamas, T-shirts, sweatshirts, ties, caps, sweaters, sports shirts, headbands, sweatbands, belts, fleece sets comprising warm-up pants and warm-up jacket, puzzles, board games, workout sets comprising exercise equipment in the nature of barbells, dumbbells, handgrips, wristbands. Charts, and/or audio cassette tapes. Complaint, para. 18 and Annex C. Complainant has also used its mark in connection with the promotion of wrestling entertainment services on its internet web site which may be found at <wwf.com>. Complaint, para. 19. On October 10, 1999, three days after registering the domain name at issue, respondent contacted complainant by and notified complainant of the registration and stated that his primary purpose in registering the domain name was to sell, rent or otherwise transfer it to complainant for a valuable consideration in excess of respondent's out-ofpocket expenses. Complaint, paras. 25 and 26. By dated December 3, 1999, respondent contacted complainant's representative and offered to sell the complainant the domain name at issue for the sum of US$1, Supplemental Complaint, para. 4 and Annex A. In his , respondent stated that cybersquatting cases "typically accomplish very little and end up costing the companies thousands of dollars in legal fees, wasted time and energy." Supplemental Complaint, Annex A. The payment of US$1,000 would represent more than payment for respondent's time and money, but also and "most important" [sic] would serve as consideration for "the right of current ownership of the domain name `worldwrestlingfederation.com.'" Supplemental Complaint, para. 7. Respondent has not developed a Web site using the domain name at issue or made any other good faith use of the domain name. Complaint, para. 28. The domain name at issue is not, nor could it be contended to be, a nickname of respondent or other member of his family, the name of a household pet, or in any other way identified with or related to a legitimate interest of respondent.

48 WIPO Domain Name Decision: D of 5 9/25/2015 8:22 PM 5. Parties' Contentions A. Complainant Complainant contends that respondent has registered as a domain name a mark which is identical to the service mark and trademark registered and used by complainant, that respondent has no rights or legitimate interests in respect to the domain name at issue, and that respondent has registered and is using the domain name at issue in bad faith. B. Respondent Respondent has not contested the allegations of the Complaint. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Since both the complainant and respondent are domiciled in the United States, and since United States' courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: 1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, 2) that the respondent has no legitimate interests in respect of the domain name; and, 3) the domain name has been registered and used in bad faith. It is clear beyond cavil that the domain name <worldwrestlingfederation.com> is identical or confusingly similar to the trademark and service mark registered and used by complainant, WORLD WRESTLING FEDERATION. It is also apparent that the respondent has no rights or legitimate interests in respect of the domain name. Since the domain name was registered on October 7, 1999, and since respondent offered to sell it to complainant three days later, the Panel believes that the name was registered in bad faith. However, the name must not only be registered in bad faith, but it must also be used in bad faith. The issue to be determined is whether the respondent used the domain name in bad faith. It is not disputed that the respondent did not establish a Web site corresponding to the registered domain name. Accordingly, can it be said that the respondent "used" the domain name? It is clear from the legislative history that ICANN intended that the complainant must establish not only bad faith registration, but also bad faith use. "These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO." Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for Board meeting of October 24, 1999, para. 4.5,a. Paragraph 4,b,i of the Policy, provides that "the following circumstances... shall be evidence of the registration and use of a domain name in bad faith:... circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark... for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name." (Emphasis added.) Because respondent offered to sell the domain name to complainant "for valuable consideration in excess of" any out-of-pocket costs directly related to the domain name, respondent has "used" the domain name in bad faith as defined in the Policy.

49 WIPO Domain Name Decision: D of 5 9/25/2015 8:22 PM Although it is therefore unnecessary to consult decisions of United States' courts, the panel notes that decisions of those courts in cases which determine what constitutes "use" where the right to a domain name is contested by a mark owner support the panel's conclusion. For example, in the case of Panavision International, L.P. v. Dennis Toeppen, et al., 141 F. 3d 1316 (9 th Cir. 1998), the Court of Appeals held that the defendant's intention to sell the domain name to the plaintiff constituted "use" of the plaintiff's mark: "Toeppen's argument misstates his use of the Panavision mark. His use is not as benign as he suggests. Toeppen's `business' is to register trademarks as domain names and then sell them to the rightful trademark owners. He `acts as a `spoiler,' preventing Panavision and others from doing business on the Internet under their trademarked names unless they pay his fee.'... As the district court found, Toeppen traded on the value of Panavision's marks. So long as he held the Internet registrations, he curtailed Panavision's exploitation of the value of its trademarks on the Internet, a value which Toeppen then used when he attempted to sell the panavision.com domain name to Panavision." Id., at To the same effect is the decision in Intermatic Inc. v. Toeppen, 947 F. Supp (N.D. Ill. 1996). In that case the Federal District Court determined that "Toeppen's intention to arbitrage the `intermatic.com' domain name constitutes a commercial use.... Toeppen's desire to resell the domain name is sufficient to meet the `commercial use' requirement of the Lanham Act. Id., The Panel notes with approval that the Policy and Rules set out by ICANN encourage thesettlement and that the parties in this case have engaged in extensive settlement negotiations. It was noted by the complainant in an to the respondent regarding possible settlement that, while it was not the complainant's policy to pay individuals to stop infringing its intellectual property, it was also complainant's policy not to litigate against its fans. from Complainant's Representative to Respondent, dated December 09, Complainant acknowledged that it could have proceeded to litigation under the United States "Anticybersquatting Consumer Protection Act," but that it elected not to. By engaging in this proceeding, complainant has sought to protect complainant's intellectual property interests while preserving the relationship between complainant and its fans at a minimal cost to all concerned. 7. Decision For all of the foregoing reasons, the Panel decides that the domain name registered by respondent is identical or confusingly similar to the trademark and service mark in which the complainant has rights, and that the respondent has no rights or legitimate interests in respect of the domain name, and that the respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4,i of the Policy, the Panel requires that the registration of the domain name <worldwrestlingfederation.com> be transferred to the complainant. M. Scott Donahey Presiding Panelist Dated: January 14, 2000

50 WIPO Domain Name Decision: D of 8 9/26/2015 5:46 AM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Guru Denim Inc. v. Ibrahim Ali Ibrahim Abu-Harb Case No. D The Parties The Complainant is Guru Denim Inc. of Vernon, California, United States of America (the USA ), represented by Christie, Parker & Hale, LLP, USA. The Respondent is Ibrahim Ali Ibrahim Abu-Harb of Riyadh, Saudi Arabia, self-represented. 2. The Domain Name and Registrar The disputed domain name <truereligion.com> is registered with Domain.com, LLC (the Registrar ). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center ) on July 19, On July 22, 2013, the Center transmitted by to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2013, the Registrar transmitted by to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy or UDRP ), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules ). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 25, In accordance with the Rules, paragraph 5(a), the due date for Response August 14, The Response was filed with the Center August 14, The Complainant filed a supplementary submission and exhibit in response on August 19, The Center appointed Alistair Payne, M. Scott Donahey and Dan Hunter as panelists in this matter on September 16, The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph Factual Background The Complainant is a clothing manufacturer that sells denim and sportswear under its TRUE RELIGION mark in very many stores throughout the United States and in 31 international stores. It commenced its business in California in 2002 and owns numerous trade mark registrations for or incorporating its TRUE RELIGION mark including, in particular, US word mark registration

51 WIPO Domain Name Decision: D of 8 9/26/2015 5:46 AM The Respondent registered the disputed domain name on November 11, Parties Contentions A. Complainant The Complainant submits that the disputed domain name is identical to its TRUE RELIGION trade mark in respect of which it has various registrations as noted above. It says that its mark has attracted considerable repute since it commenced its business in 2002 and is now known throughout the United States and internationally. The Complainant admits that the Respondent used the disputed domain name for several years prior to the commencement of the Complainant s business and that it resolved to a website entitled Understanding Islam. It says that it was only when the Complainant s mark became well known that the Respondent started using the disputed domain name to divert Internet users to its website by causing confusion with the Complainant s trade mark, displaying True Religion Jeans and links to a True Religion Men s Store and to a True Religion Women s Store and pictures of the Complainant s goods and to earn income from Amazon as an affiliate of its website. The Complainant notes that the Respondent also used the metatags jeans and clothes in order to attract additional traffic to its website. Overall the Complainant says that the Respondent s conduct does not amount to a bona fide provision of goods and services in relation to the disputed domain name, that it is not known by the True Religion name and that it is not making a noncommercial or fair use of the disputed domain name. As far as bad faith is concerned the Complainant s argument is essentially that the Respondent s use amounts to conduct that fulfills the requirements of paragraph 4(b)(iv) of the Policy and that this is evidence of both registration and use under the Policy. The Complainant says that its argument to impute bad faith in this case is consistent with the requirement under the Policy that the registrant must not knowingly use the domain name in violation of applicable laws and that based on the circumstances as outlined above the Respondent had prior knowledge of the Complainant s rights but nevertheless chose to use the disputed domain name to infringe the Complainant s rights and that even though there was no initial registration in bad faith the Respondent s subsequent conduct is sufficient to fulfill the requirements of the third limb of the Policy. B. Respondent The Respondent says that the Complainant has been using the True Religion Brand Jeans mark as set out in the Complaint and on its website and that it first registered the True Religion mark in 2006 and further says that the Complainant only changed the brand on its website to True Religion a few days after lodging the Complaint which is indicative of the Complainant s bad faith. The Respondent submits that he registered the disputed domain name in 1998 well before the Complainant admits to having first started its business in 2002 and yet the Complainant proceeded with its use of True Religion Brand Jeans regardless when based on a simple Internet search it should have been aware of the Respondent s presence and prior use. He says that he registered several domain names related to his religious interests and for the promotion of Islam in 1997, 1998, and 1999 and that one of these was the disputed domain name and that he pointed all of these domain names to his website which is based on his book A Brief Illustrated Guide to Understanding Islam. In 2006 the Respondent says that he launched another website for the same cause which is In 2011, he launched a third site which is He submits that all of these sites are administered by him and they have original content and significant numbers of daily visits. In 2009 the Respondent says that he noticed that the disputed domain name was receiving up to 1000 hits per day but that it appeared that these visitors were seeking the Complainant s clothing brand. This factor negatively affected the statistics of page visits on his Islam based sites so he says that he stopped directing its

52 WIPO Domain Name Decision: D of 8 9/26/2015 5:46 AM traffic to his Islamic websites and started making use of it through Google s Adsense program. He submits that the current for sale price of the disputed domain name at USD 380,000 is a reasonable price for a domain name that is attracting 1000 hits per day. Essentially the Respondent submits that it cannot be said that he has no rights or legitimate interests in the disputed domain name in the circumstances of his initial registration and use of the disputed domain name and that he is not trying to confuse consumers or divert the Complainant s consumers into assuming that there is some connection or affiliation between his website and the Complainant or its brand and that it is apparent to consumers on the site that it links to an Amazon shopping site, that he put a disclaimer on the site on August 13, 2013 and that the sign on the website that the disputed domain name is for sale makes it apparent that it is not owned by the Complainant. The Respondent says that at best consumers are coming to his website of their own accord and that through the Amazon shopping link they are in fact being directed for the purposes of purchasing the Complainant s own bona fide products and that this is inconsistent with the theory that he is trying to confuse Internet users and does not amount to infringement. He submits that in all of these circumstances he did not register the disputed domain name in bad faith and that neither his use of the disputed domain name over a ten year period for religious purposes was in bad faith and nor is his current use in relation to the Amazon affiliate program which ultimately only benefits the Complainant by assisting in the selling of more of its genuine products. He further submits that the disputed domain name is not taking any share of the traffic that is coming to the Complainant s official site from search engines, referral sites, or online ads as the disputed domain name is creating its own traffic from direct visitors. The Respondent alleges that this is a case of reverse domain name hijacking on the basis that the Complainant should have known of its use and interest in the disputed domain name when it started its own business and that this Complaint is conceived to try and obtain the disputed domain name after the fact and that the Complainant even tried this tactic in October 2009 at a time when the Respondent had only used the disputed domain name in relation to its religious websites and content. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the Complainant has, as noted above, various trade mark registrations around the world for or incorporating its TRUE RELIGION mark, including in particular US word mark registration Accordingly, the Complainant owns trademark rights for the purposes of this element of the Policy. The Panel notes in passing that the Complainant s TRUE RELIGION mark appears to have developed significant repute since it was first used in 2002 both in the United States and elsewhere and whether the Complainant has also used the mark True Religion Brand Jeans does not alter this finding. The substantive element of the disputed domain name is identical to the Complainant s TRUE RELIGION mark. As a result the Panel has no difficulty in finding that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy it is incumbent upon the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case. The majority of the Panel is of the view that on balance the Complainant has not succeeded in making out its case under this element of the Policy. In the majority s view, the fundamental difficulty for the Complainant is that it is very difficult to argue that the

53 WIPO Domain Name Decision: D of 8 9/26/2015 5:46 AM Respondent has no rights or legitimate interests in the disputed domain name in circumstances that the Respondent registered the disputed domain name in 1998, some years prior to the commencement of the Complainant s business and used it for the bona fide purpose of bringing traffic to various religious interest websites. This state of affairs was maintained for ten years until 2009, at which time according to the Respondent, the site was receiving very many hits per day of Internet users apparently seeking the Complainant s increasingly popular clothing brand. The Respondent says that this upset his religious website statistics and that as a result he started making use of Google s Adsense program and subsequently of an Amazon affiliate program advertising the Complainant s branded products. He admits that there was a commercial aim in this change of approach and it appears that as a result of the increased traffic to the website he has also advertised the disputed domain name for sale for a substantial sum. The fact remains however that the Respondent used the disputed domain name for bona fide noncommercial legitimate purposes to resolve to religious websites for around ten years. Considering that the Respondent registered the disputed domain name several years prior to the Complainant s business establishment and for his own religious purposes, it is clear that he had every right to obtain such registration. In spite of the Respondent s subsequent use of the disputed domain name for commercial purposes and in a manner that by the Respondent s own admission, attracts traffic as a result of the Complainant s success, the majority finds that on balance and in the particular circumstances of this case it is not possible to say that the Respondent has no rights or legitimate interests in the disputed domain name as required under this limb of the Policy and therefore finds that the Complaint fails in relation to the second element of the Policy. Even if the majority was wrong in this regard the majority finds that the Complaint would still fail under the third element of the Policy. Although it is strictly unnecessary to go further, the majority sets out its reasoning below. C. Registered and Used in Bad Faith There are broadly two views of the interpretation of the requirements for bad faith under the third element of the Policy, namely the unitary and the conjunctive views. A synopsis of these views and of relevant decisions is set out at section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ( WIPO Overview 2.0 ). Suffice it to say here that the majority subscribes to the conjunctive view or in other words that the plain literal meaning of the third element of the Policy is that both registration and use in bad faith must be found individually before the requirements of that element are fulfilled. As set out above in Section B the Complainant acknowledges and it is clear from the evidence before the Panel that the disputed domain name was registered some years before the Complainant even started its business and that as a result there can be no question that the Respondent registered the disputed domain name with knowledge of the Complainant s rights, even if there is evidence of much later use in bad faith. In this regard the majority takes a similar view to the panel in Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D The majority s view of registration in good faith is only reinforced by the exceptional circumstance in this case that the Respondent made an apparently bona fide noncommercial use of the domain name for ten years after registration. It was only after this time that the Respondent started taking advantage of the opportunity to earn pay per click type advertising income from the increasing amount of Internet traffic seeking out the Complainant s business and website. Even though the Respondent s subsequent use might be considered to be a diversion of Internet users for commercial purposes in terms of paragraph 4(b)(iv) of the Policy, the majority, similar to the approach of the panel in the Validas decision, does not consider that this provision can be interpreted to deem evidence of use in bad faith as evidence of both registration and use in bad faith in circumstances that there is clear evidence of good faith registration.

54 WIPO Domain Name Decision: D of 8 9/26/2015 5:46 AM Neither does the majority consider that the warranty concerning good faith use in the registration policy operates to overrule the conjunctive requirement. It seems to the majority that if the drafters of the Policy had intended there to be no conjunctive requirement then they would have used different language, such as the term or, but they did not do so. Until ICANN sees fit to facilitate a change the majority thinks that this element of the Policy must be interpreted according to its plain and literal meaning and therefore in accordance with a conjunctive requirement. In the meantime if the Complainant considers that its rights are being infringed then it should look to its remedies under relevant national laws. As a result the majority finds that the Respondent did not register the disputed domain name in bad faith and that the Complaint therefore must fail under the third element of the Policy. In view of the unusual factual circumstances of this case, including the Respondent s more recent use of the disputed domain name for commercial purposes after its long period of noncommercial use and in view of the divergence in panel opinion on the interpretation of the third element of the Policy, the majority is not prepared to find reverse domain name hijacking on this occasion. 7. Decision For the foregoing reasons, the Complaint is denied. Alistair Payne Presiding Panelist M. Scott Donahey Dissenting Panelist Dan Hunter Panelist Date: September 27, 2013 Dissenting Opinion of Panelist, Scott Donahey The majority begins the defense of the majority position on bad faith with the statement: Suffice it to say here that the majority subscribes to the conjunctive view or in other words that the plain literal meaning of the third element of the Policy is that both registration and use in bad faith must be found individually before the requirements of that element are fulfilled. This panelist disagrees that the plain literal meaning of the third element of the Policy is that both registration and use in bad faith must be found individually before the requirements of that element are fulfilled. The third element of the Policy should be read as a unitary one or should be found to be ambiguous. If the Policy were to state clearly that both bad faith registration and bad faith use must be found individually, it would read: your domain name has been registered [in bad faith] and is being used in bad faith, the bracketed portion would necessarily have to be added to the third prong of the test (Policy, paragraph 4(a)(iii)) in order to attain the plain literal meaning that the majority purports to find. As written the phrase in bad faith modifies has been registered and is being used, clearly suggesting that bad faith applies to the entire concept of registration and use, not separately to each. But this panelist concedes it is not as clear as it should be; indeed, it may be said to be ambiguous. Thus one needs to look at other provisions and to the legislative history to determine precisely what is meant. One must first look at what the draftspersons chose to give as examples of bad faith registration and use.

55 WIPO Domain Name Decision: D of 8 9/26/2015 5:46 AM Paragraph 4(b) of the Policy, entitled Evidence of Registration and Use in Bad Faith [and not Evidence of Registration in Bad Faith and of Use in Bad Faith ]. It gives four examples of circumstances, which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first three examples of bad faith registration and use speak only of registration, and say nothing of use. Policy, paragraphs 4(b)(i), (ii), and (iii). How can evidence concerning only the state of mind of the registrant at the time of registration be evidence of bad faith registration and use, if one is required to prove both bad faith registration and bad faith use? The fourth example focuses only on the ultimate use of the domain name, without reference to registration. Policy, paragraph 4(b)(iv). How can evidence concerning only the subsequent use of the domain name be evidence of bad faith registration and use, if one is required to prove both bad faith registration and bad faith use? Not a single example given in the Policy involves both bad faith registration and bad faith use. The majority sets up a dispute that does not exist between the majority and minority view. The minority view has never contended that one need only prove bad faith registration or bad faith use. That would be a conflict between a conjunctive and disjunctive view, a view which the minority has never held. Rather the dispute is that the majority treats bad faith registration and use as a binary concept. One must separately prove bad faith registration, than separately prove bad faith use. Under the majority view one must prove one plus one. The minority view treats bad faith registration and use as a unitary concept. One is required to prove that under all the facts and circumstances that the respondent is acting in bad faith by intending to profit from the good will developed in the complainant s trademark. There is no arithmetical calculation required. The majority cites the decision in Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D in primary support of that decision. The panel in Validas correctly pointed out that the panel in the first decided UDRP case, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D , determined that a finding of bad faith required both evidence of bad faith registration and also evidence of bad faith use, and cited the Second Staff Report on Implementation Documents for the Uniform Domain Name Dispute Resolution Policy for that proposition, a proposition that was faithfully followed for years by UDRP panelists. This panelist cannot deny that this is true, because this panelist was also the panelist in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, supra. It would have spared this panelist much abuse had this panelist maintained this original position, rather than acknowledging the contrary evidence in later legislative history which was unavailable in 1999 at the time decision in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, supra was written. However, this panelist did discover this later available legislative history, which contradicted the view of the Second Staff Report, and this panelist could not ignore it. In any event this panelist believes that the subsequent legislative history, as set out most recently in the dissent in A. Natterman & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc. WIPO Case No. D , should not be ignored, but rather should be considered by any panelist honestly confronting the debate between the traditional binary view of bad faith registration and bad faith use and the unitary concept of bad faith registration and use in the recent minority view. Therefore, I quote that portion of the dissent in the Natterman decision that concerns this later discovered legislative history: The minutes of the initial ICANN Board meeting includes a reference to the establishment of a small drafting committee to assist in formulating the dispute resolution policy: The President or his delegate should convene a small drafting committee including persons selected by him to express views and consider the interests of the registrar, non-commercial, individual, intellectual property, and business interests. Internet Corporation for Assigned Names and Numbers, Minutes of Meeting of August 26, 1999, formally approved October 24, 1999, Resolution 99-83, at #2. The five members of the small drafting committee selected were (1) Kathryn A. Kleiman, of the Association for Computing Machinery s Internet Governance

56 WIPO Domain Name Decision: D of 8 9/26/2015 5:46 AM Committee; Member DNSO Non-Commercial Domain Name Holders Constituency; Co-founder, Domain Name Rights Coalition; (2) Steven J. Metalitz, General Counsel, the International I.P. Alliance; Member, DNSO Trademark, Intellectual Property, and Anti-Counterfeiting Interests Constituency; (3) Rita A. Rodin, Skadden Arps, Slate Meagher & Flom, retained by AOL, a member of the DNSO Registrars Constituency; (4) A. Michael Froomkin, University of Miami School of Law; Former member, WIPO Panel of Experts; (5) J. Scott Evans, Adams Law Firm, P.A.; Member, International Trademark Association s (INTA) Internet Committee; Chair, INTA DNS subcommittee. Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, posted September 29, 1999, corrected October 1, The only record that this panelist was able to locate which references the work of this committee were two law review articles by Professor A. Michael Froomkin: Wrong Turn in Cyberspace, Using ICANN to Route Around the APA and the Constitution, 50 Duke L.J. 17 (2000) ( Duke Article ) and ICANN s Uniform Dispute Resolution Policy Causes and Partial Cures, 67 Brooklyn L.Rev. No. 3, 655 (2002) (the Brooklyn Article ).[i] Professor Froomkin states that the small drafting committee was established in response to criticism arising from the DNSO Names Council forwarding the Working Group report to the ICANN Board for Approval. Brooklyn Article, at 652, n The person who represented the President was then ICANN Counsel Louis Touton. When the small drafting committee was unable to reach a consensus, Mr. Touton decided the matters independently, and his recommendations became those of the staff. Id. In a number of important respects Professor Froomkin s descriptions of the small drafting committee s activities coincides with that of the Second Staff Report. Professor Froomkin reported that the trademark interests pushed for bad faith registration or use. Brooklyn Article, at 655. The registrant interests responded that registration without use should not be actionable and insisted on the language bad faith registration and use. Id. However, unlike the Second Staff Report, Froomkin reports the reasoning behind the registrant interests advocacy of bad faith registration and use: Registrant partisans countered that current trademark registration of a domain, without some kind of commercial use, did not constitute trademark infringement. Although courts had held that offering a domain for sale was commercial use, it could not follow that a plaintiff s psychic conclusion that warehousing was in bad faith could substitute for actual conduct. They also argued that, large-scale cybersquatters excepted, the only way to tell that a registration was in bad faith was to look at subsequent conduct, i.e., use, and that the two therefore should not be separated. Id., (emphasis added). This statement expressly sets forth the unitary nature of bad faith registration and use. It was the Small Drafting Committee that issued the final version of the Policy that was ultimately adopted by ICANN and made part of every registration agreement. There are many other reasons that I believe the unitary interpretation of bad faith registration and use is the correct one, and they are most recently set out in the extensive dissent I filed in the Natterman case, and I commend it to anyone who is interested in learning the entire rationale for the unitary view. It would be much easier for this panelist to maintain that his original decision was correct, and not recant. But in view of the evidence, I am unable to do so. In the present case, when the Respondent registered the disputed domain name, the trademark did not exist. Respondent was therefore entitled to continue using the domain name <truereligion.com> as he had been using it, or to use it for any purpose whatsoever, so long as he did not intentionally use it to profit from the goodwill associated with Complainant s later created trademark. However, as the Respondent candidly admitted, he is now using the disputed domain name to profit from the good will the Complainant created in the mark. I defy any panelist to show me evidence from any portion of the legislative history or from any other provision of the

57 WIPO Domain Name Decision: D of 8 9/26/2015 5:46 AM Policy that would indicate that the drafts persons or the provisions of the Policy as drafted intended that a registrant could use a domain name to target a trademark and profit from its goodwill, so long as at the time that the domain name was registered, the registrant had no intention of doing so. [i] In an dated July 26, 2010, Professor Froomkin informed this panelist that no minutes of any of the meetings of the small drafting committee were ever taken. M. Scott Donahey Dissenting Panelist Date: September 27, 2013

58 WIPO Domain Name Decision: D of 7 9/26/2015 5:40 AM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Telstra Corporation Limited v. Nuclear Marshmallows Case No. D The Parties 1.1 The Complainant is Telstra Corporation Limited, a company incorporated in Australia, with its registered office in Melbourne, Australia. The Respondent is Nuclear Marshmallows. Nuclear Marshmallows is an unregistered business name of an unidentifiable business entity. The address of the Respondent as contained in the domain name registration is a post office box in Gosford, NSW, Australia. The administrative and billing Contact provided for the domain name registered by the Respondent is a Michael Jenkins. 2. The Domain Name and Registrar 2.1 The domain name that is the subject of this Complaint is <telstra.org>. The Registrar of this domain name is Network Solutions, Inc of Herndon, Virginia, USA. 3. Procedural History Issuance of Complaint 3.1 A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"), was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on January 4, A paper original of the Complaint together with annexures and the required fees were forwarded by courier under cover of a letter of the same date, and received by the WIPO Center on January 10, An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, by facsimile and dated January 10, A copy of the Complaint was dispatched by courier to the Registrar on 5 January, 2000, and delivered to the Registrar on 7 January, By to the WIPO Center on 7 January, 2000, the Registrar confirmed that it is the Registrar of the domain name <telstra.org>; confirmed that the current registrant of that domain name is the Respondent, Nuclear Marshmallows; informed that the administrative, technical, zone and billing Contact for the Respondent is Michael Jenkins; and provided a postal and a address, and a telephone and a facsimile number, for the Contact. The Registrar also supplied the terms of the domain name service agreement between it and the Respondent. Amongst other things, that agreement provides that the Respondent agrees to be bound by the domain name dispute policy incorporated therein. The policy incorporated into the agreement is the Uniform Policy. Notification to Respondent 3.3 Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center issued to the Respondent on January 12, 2000, a Notification of Complaint and Commencement of

59 WIPO Domain Name Decision: D of 7 9/26/2015 5:40 AM Administrative Proceeding (including a copy of the filed Complaint), to both the postal and addresses of the Respondent, and to the facsimile of the Respondent s Contact, as provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on the same date. 3.4 On January 14, 2000, an was received by the WIPO Center from the address of Nuclear Marshmallows Contact, saying in full "cannot read attachment". On that day, the WIPO Center replied to the Contact by , attaching the Notification of Complaint in four different formats in four separate transmissions, and inviting the Contact to specify any other format required. No response to these s was received. Moreover, no response to the postal dispatches of the Notification of Complaint to the Respondent was received. Furthermore, all attempts to transmit the Notification of Complaint to the Respondent by facsimile failed. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". 3.5 Having received no response from the Respondent within the specified time in the Notification of Complaint, on February 3, 2000, the WIPO Center issued to both parties a Notification of Respondent Default. On February 4, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Dr Andrew Christie. 4. Factual Background 4.1 The Complaint asserted, and provided evidence in support of, and the Administrative Panel finds established, the following facts. Complainant s Activities 4.2 The Complainant is the largest company listed on the Australian stock exchange, having a market capitalisation of approximately $A62 billion. It is the largest provider of telecommunications and information services in Australia, with financial year revenue exceeding $A16 billion. The Complaint s main activities, each of which is carried out under or by reference to the <TELSTRA> mark, are the provision of a fixed telephony network to residences and businesses across Australia; the provision of local, long distance domestic and international telephone call services to over 7 million residential and business customers in Australia; the provision of 78,000 public payphones in Australia; the operation of mobile telecommunications services to 3.4 million customers; the provision of a range of data, Internet and on-line services (including the largest Internet Service Provider in Australia); the provision of wholesale services to other telecommunications carriers and service providers; the provision of directory information and connection services to over 520 million calls per annum; the publication and distribution of white pages and yellow pages directories in hard-copy, CD-ROM and on-line formats; and the operation of over 80 retail outlets throughout Australia. Complainant s Trading Name and Trademarks 4.3 The predecessor in title to the Complainant s business can be traced back to In April 1993 the Complainant changed its legal name to Telstra Corporation Limited. It has traded under the name <Telstra> outside Australia since that date, and within Australia since July The Complainant is the proprietor of more than 50 registrations in Australia of trademarks consisting of or containing the word <TELSTRA> (details of which are contained in Annexure 3 to the Complaint), including a number of registrations in class 38 in respect of telecommunications services. The various trademark registrations and applications cover an extensive range of goods and services, and span 17 of the 42 trademark classes. As well, the Complainant has registered, or applied for registration of, a range of trademarks consisting of or containing the word <TELSTRA>, in a large number of countries, such as Brunei, Cambodia, France, Germany, Hong Kong, Indonesia, Ireland, Japan, Kazakstan, Kiribati, Korea, Laos, Malaysia, Mauritius, New Zealand, Papua New Guinea, People s Republic of China, South Africa, Russian Federation, Saudi Arabia, Singapore, Taiwan, The Philipines, Tonga, United Kingdom, United States of America, Vanuatu, Vietnam and Western Samoa. In addition, the Complainant has obtained a registered Community Trade Mark for a trademark including the word <TELSTRA>. Details of the trademark registrations in countries outside Australia are set out in Annexure 4 to the Complaint. Complainant s Domain Names and Web Sites 4.4 The Complainant is the registrant of the following domain names containing the word <TELSTRA>: telstra.com telstra.net telstra.com.au telstra-inc.com

60 WIPO Domain Name Decision: D of 7 9/26/2015 5:40 AM telstrainc.com 4.5 The Complainant operates its principal web site at <telstra.com>. The site includes electronic customer services for its fixed-line and mobile-phone customers, news and entertainment services, and White Pages and Yellow Pages directories. Respondent s Identity and Activities 4.6 The Respondent is the registrant of the domain name <telstra.org>, the Registrar of which is Network Solutions, Inc. This domain name does not resolve to a web site or other on-line presence. 4.7 The postal address of the Respondent and its Contact, as contained in the Registrar s registry, is a post office box in a town in the State of New South Wales, Australia. The registers of company names and business names in Australia do not disclose a registration of a company name or business name for the Respondent s name, Nuclear Marshmallows. Accordingly, it is not possible to identify the legal entity conducting business in Australia under the Respondent s name. 4.8 Prior to the issuing of the Complaint, the Complainant made substantial efforts to identify and contact the Respondent, using the details then current on the Registrar s registry. During the course of these attempts, some of the contact details of the Respondent changed. The Complaint then renewed its efforts to contact the Respondent, using the changed contact details. These combined efforts disclosed that the street and post box addresses of the Respondent were for persons unassociated with the Respondent, and that the telephone number was for a person unassociated with the Respondent. 5. Relevant Provisions of the Uniform Policy 5.1 Paragraph 4(a) of the Uniform Policy sets out the three elements which must be present for a proceeding to be brought against the Respondent, and which the Complainant must prove to obtain a remedy. It provides as follows: a. Applicable Disputes. You [the Respondent] are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present. 5.2 Paragraph 4(b) of the Uniform Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The precise wording of this paragraph is as follows: b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

61 WIPO Domain Name Decision: D of 7 9/26/2015 5:40 AM 5.3 It is worthy of note that each of the four circumstances in paragraph 4(b), if found, is an instance of "registration and use of a domain name in bad faith", notwithstanding the fact that circumstances (i), (ii), and (iii) are concerned with the primary intention or purpose of the registration of the domain name, whilst circumstance (iv) is concerned with an act of use of the domain name. The significance of this point is discussed in paragraph 7.10 below. 5.4 Paragraph 4(c) of the Uniform Policy sets out circumstances, in particular but without limitation, which, if found by the Administrative Panel to be proved, demonstrate the Respondent s rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii). The provisions of this paragraph are as follows: c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 6. Parties Contentions The Complaint 6.1 The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to this dispute. In relation to element (i), the Complaint contends that the relevant part of the domain name in issue is <telstra>, and that this is clearly identical with or confusingly similar to the various trademarks for the word <TELSTRA> which are registered and owned by the Complainant. 6.2 In relation to element (ii), the Complaint contends that the word <TELSTRA> is an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complaint further contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks. Accordingly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue. 6.3 In relation to element (iii), the Complainant contends that evidence of bad faith registration and use is established by the following circumstances. First, the Respondent is in breach of the relevant Australian business names registration legislation, by virtue of its failure to register its trading name, Nuclear Marshmallows, as a business name. Secondly, the Respondent has provided false address information for the purposes of its domain name registration, in breach of the Respondent s warranty under paragraph 2(a) of the Uniform Policy. Thirdly, the trademark <TELSTRA> is one of the best known trademarks in Australia, and it is inconceivable that the person or persons behind the Respondent would not be aware of this fact. Fourthly, by virtue of the wide spread use and reputation of the trademark <TELSTRA>, members of the public in Australia would believe that the entity owning the domain name <telstra.org> was the Complainant or in some way associated with the Complainant. Fifthly, any realistic use of the domain name must misrepresent an association with the Complainant and its goodwill, resulting in passing off, breaches of Australian consumer protection legislation, and trademark infringements. The Response 6.4 The Respondent did not file a Response to the Complaint. 7. Findings and Conclusions Identical or Confusingly Similar Domain Name 7.1 The domain name in issue is <telstra.org>. The relevant part of this domain name is <telstra>. The Administrative Panel finds that this part of the domain name is identical to the numerous trademark registrations of the word <TELSTRA> held by the Complainant. In addition, the Administrative Panel finds that the whole of the domain name

62 WIPO Domain Name Decision: D of 7 9/26/2015 5:40 AM is confusingly similar to those trademark registrations. Respondent s Rights or Legitimate Interests in the Domain Name 7.2 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name. Domain Name Registered and Used in Bad Faith 7.3 It is less clear cut whether the Complainant has proved the third element in paragraph 4(a) of the Uniform Policy, namely that the domain name "has been registered and is being used in bad faith" by Respondent. The Administrative Panel notes two things about this provision. First, the provision contains the conjunction "and" rather than "or". Secondly, the provision refers to both the past tense ("has been registered") and the present tense ("is being used"). 7.4 The significance of the use of the conjunction "and" is that paragraph 4(a)(iii) requires the Complainant to prove use in bad faith as well as registration in bad faith. That is to say, bad faith registration alone is an insufficient ground for obtaining a remedy under the Uniform Policy. This point is acknowledged in the Administrative Panel Decision in the WIPO Center Case No. D , the first case decided under the Uniform Policy. In paragraph 6 of that Decision, the Administrative Panel refers to the legislative history of the Uniform Policy, and in particular to the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy submitted to the ICANN Board at its meeting on October 24, That Report, at paragraph 4.5, contains the following relevant statement and recommendation: Several comments (submitted by INTA and various trademark owners) advocated various expansions to the scope of the definition of abusive registration. For example: a. These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO. 7.5 From the fact that the ICANN Board accepted the approach recommended in the Second Staff Report, and thus adopted the Uniform Policy in the form originally proposed, it is clear that ICANN intended that bad faith registration alone not give rise to a remedy under the Uniform Policy. For a remedy to be available, the Complainant must prove both that the domain was registered in bad faith and that it is being used in bad faith. 7.6 This interpretation is confirmed, and clarified, by the use of both the past and present tenses in paragraph 4 (a)(iii) of the Uniform Policy. The use of both tenses draws attention to the fact that, in determining whether there is bad faith on the part of the Respondent, consideration must be given to the circumstances applying both at the time of registration and thereafter. So understood, it can be seen that the requirement in paragraph 4(a)(iii) that the domain name "has been registered and is being used in bad faith" will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith. 7.7 Has the Complainant proved that the domain name "has been registered in bad faith" by the Respondent? In light of the facts established in paragraphs 4.6 to 4.8, the Administrative Panel finds that the Respondent does not conduct any legitimate commercial or non-commercial business activity in Australia. In light of the facts established in paragraphs 4.6 to 4.8, the Administrative Panel further finds that the Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made. Given the Complainant s numerous trademark registrations for, and its wide reputation in, the word <TELSTRA>, as evidenced by the facts established in paragraphs 4.2 to 4.5, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <telstra.org>. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding in paragraph 7.2 that the Respondent has no rights or interests in the domain name, lead the Administrative Panel to conclude that the domain name <telstra.org> has been registered by the Respondent in bad faith.

63 WIPO Domain Name Decision: D of 7 9/26/2015 5:40 AM 7.8 Has the Complainant proved the additional requirement that the domain name "is being used in bad faith" by the Respondent? The domain name <telstra.org> does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name. 7.9 This fact does not, however, resolve the question. As discussed in paragraph 7.6, the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith This understanding of paragraph 4(a)(iii) is supported by the actual provisions of the Uniform Policy. Paragraph 4(b) of the Uniform Policy identifies, without limitation, circumstances that "shall be evidence of the registration and use of a domain name in bad faith", for the purposes of paragraph 4(a)(iii). Only one of these circumstances (paragraph 4(b)(iv)), by necessity, involves a positive action post-registration undertaken in relation to the domain name (using the name to attract custom to a web site or other on-line location). The other three circumstances contemplate either a positive action or inaction in relation to the domain name. That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trade mark owner s use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii)). Nevertheless, the point is that paragraph 4(b) recognises that inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are "without limitation" - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent s passive holding amounts to acting in bad faith The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are: (i) the Complainant s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries, (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, (iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name, (iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and (v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant s rights under trademark law. In light of these particular circumstances, the Administrative Panel concludes that the Respondent s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by Respondent.

64 WIPO Domain Name Decision: D of 7 9/26/2015 5:40 AM 8. Decision 8.1 The Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy. Accordingly, the Administrative Panel requires that the domain name <telstra.org> be transferred to the Complainant. Andrew F. Christie Presiding Panelist Dated: February 18, 2000

65 1 of 7 9/27/2015 9:47 AM DECISION San Francisco Bay Area Rapid Transit District v. Chad Laughlin Claim Number: FA PARTIES Complainant is San Francisco Bay Area Rapid Transit District ( Complainant ), represented by Linda Joy Kattwinkel of Owen, Wickersham & Erickson, P.C., California, USA. Respondent is chad laughlin ( Respondent ), Colorado, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <bart.net>, registered with GoDaddy.com, LLC. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Dennis A. Foster as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the FORUM electronically on August 13, 2015; the FORUM received payment on August 13, On August 14, 2015, GoDaddy.com, LLC confirmed by to the FORUM that the <bart.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN s Uniform Domain Name Dispute Resolution Policy (the Policy ). On August 18, 2015, the FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2015 by which Respondent could file a Response to the Complaint, via to all entities and persons listed on Respondent s registration as technical, administrative, and billing contacts, and to postmaster@bart.net. Also on August 18, 2015, the Written Notice of the Complaint, notifying Respondent of the addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent s registration as technical, administrative and billing contacts.

66 2 of 7 9/27/2015 9:47 AM A timely Response was received and determined to be complete on September 7, On September 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the FORUM appointed Dennis A. Foster as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the FORUM has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant - Complainant is a United States governmental agency that operations public commuter rail services to over 300,000 riders per day in the San Francisco Bay Area. - Complainant's services are provided under a service mark, BART, that is an acronym for a portion of its name and was registered with the United States Patent and Trademark Office ("USPTO") in Complainant also owns the <bart.gov> domain name, through which it uses a website to extensively advertise and promote its services. Moreover, Complainant owns <bart.org>, which resolves to the website found at <bart.gov>. - The disputed domain name, <bart.net>, is identical to the BART mark, save for the addition of the suffix,.net, which is inconsequential in comparing the name to the mark. - The disputed domain name was registered initially in 1995 and has been sold and resold by a number of entities until Respondent acquired the name in June The disputed domain name does not resolve to a website, and Respondent has no rights or legitimate interests in the name. Complainant is not affiliated with Respondent and has not licensed or otherwise authorized Respondent to use the disputed domain name. - Complainant concedes that "Bart" is a common short form of a given male name, but notes that it is unlikely that Respondent, whose name is "Chad," would be commonly known as the disputed domain name. Also, there is no evidence that Respondent operates a company that would be commonly known as that name. - Respondent's motivation in ownership of the disputed domain name is to sell it to Complainant because it is identical to Complainant's service mark. That does not amount to a bona fide activity or legitimate use with respect to that name. - The disputed domain name was registered and is being used in bad faith. Respondent was aware of Complainant's mark prior to registration of the name, and immediately after

67 3 of 7 9/27/2015 9:47 AM such registration contacted Complainant with an offer to sell the name for a price far in excess of Respondent's out-of-pocket registration costs. - Respondent's non-use of the disputed domain name in connection with a legitimate website is further evidence of Respondent's bad faith. B. Respondent - Respondent has been buying and selling domain names composed of common or generic terms for at least fifteen years. Bart is a proper noun that is short for the ancient name, Bartholomew. - After acquiring the disputed domain name, Respondent contacted several potential buyers, including Complainant, who was identified after Respondent discovered the website connected with <bart.org>. - No one entity can lay exclusive claim to a generic mark like, BART, and the solicited price of $11,000 is fair based on prices obtained for like common-word domain names. Ergo, Respondent has not acted in bad faith, but is conducting a legitimate business. FINDINGS Complainant is a United States governmental agency that has been operating a large and well-known regional rail transportation system for decades. It has registered its service mark, BART, with the USPTO (Registration No. 972,406; registered Nov. 6, 1973). Respondent is the owner of the disputed domain name, which Respondent acquired in June Respondent is making no use of the name, but intends to resell it, as Respondent is in the business of buying and reselling common-word domain names. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Respondent does not counter Complainant's contention that the disputed domain name, <bart.net>, is identical to Complainant's BART service mark. The Panel also finds

68 4 of 7 9/27/2015 9:47 AM Complainant's contention to be valid, as the only difference between the name and the mark is the added suffix, ".net," which is immaterial when comparing domain names to marks in proceedings under the Policy. See DINGBATS v. Pool.com, FA (Nat. Arb. Forum Jan. 20, 2010) (finding <dingbats.com> to be identical to the DINGBATS mark); see also Western Union Holdings, Inc. v. XYZ, D (finding <wuib.com> to be identical to the WUIB mark); see also Katadyn N. Am. v. Black Mountain Stores, FA (Nat. Arb. Forum Sept. 7, 2005) (...the addition of the generic top-level domain (gtld) '.net' is irrelevant for purposes of determining whether a domain name is identical to a mark. ). Furthermore, Respondent does not dispute Complainant's rights in the BART mark. Given that such rights are plainly evident to the Panel, since Complainant has submitted pertinent evidence (Annex G) of its registration with the USPTO for that mark, the Panel concludes that Complainant has satisfied this requirement of Policy 4(a)(i) as well. See Schneider Group, Inc. v. Mann, D (WIPO May 5, 2010) ("...Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO."); see also Expedia, Inc. v. Emmerson, FA (Nat. Arb. Forum Feb. 9, 2007) ("Complainant s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy 4(a)(i)."). As a result, the Panel finds that Complainant has proven the element noted in Policy 4(a)(i). Rights or Legitimate Interests It appears to the Panel that Complainant has put forth a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, based upon Complainant's ownership of rights in an identical service mark and the lack of evidence that Complainant has ever licensed or otherwise authorized Respondent to use that mark. It is therefore incumbent upon Respondent to come forward with evidence to rebut that prima facie case. See AOL LLC v. Gerberg, FA (Nat. Arb. Forum Sept. 25, 2006) ( Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names. ) see also Hanna- Barbera Prods., Inc. v. Entm t Commentaries, FA (Nat. Arb. Forum Aug. 18, 2006). Respondent's rebuttal to Complainant's prima facie case centers around the notion that the disputed domain name is a generic term i.e, "Bart" is a short form of the common proper name "Bartholomew" and that Respondent's business is to buy and resell it and other similar generic domain names, a practice that prior Policy panels have found to constitute a legitimate interest in such names. The Panel agrees with Respondent that such panels have deemed the business of buying and reselling domain names to be a legitimate enterprise for the purposes of scrutiny under Policy 4(a)(ii). See Academy, Ltd. v. This Domain For Sale, FA (Nat. Arb. Forum Jan. 23, 2014) ("...it has been held that a respondent demonstrates its rights or a legitimate interests in a disputed

69 5 of 7 9/27/2015 9:47 AM domain name under Policy 4(a)(ii) where the respondent is an Internet business which sells generic domain names."); sea also Parlance Corp. v. Dynamo.com, FA (Nat. Arb. Forum Aug. 19, 2013) ("...there is case law under the Policy to the effect that a business dealing in generic domain names is prima facie legitimate."). However, the Panel concludes that many of those prior Policy panels, while acknowledging the purchase and resale of domain names as generally legitimate, require that in each case the specific disputed domain name must be examined relative to that general practice to determine whether rights or legitimate interests obtain in that name. That examination is particularly appropriate when a disputed domain name is identical or confusingly similar to a valid trademark or service mark, no matter how generic the composition of the mark. The Panel agrees with and will follow that consensus approach in its analysis. See Electronic Trans. Sys. Corp. v. Will E., FA (Nat. Arb. Forum July 28, 2014) ("...the issue is not simply the legitimacy of Respondent s business model, but whether it has a legitimate interest in the disputed domain name itself."); see also Austin Pain Ass'n v. Domain Admin, FA (Nat. Arb. Forum Mar. 18, 2014) ("...the issue is not the legitimacy of Respondent s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another."). In this case, the Panel notes that the BART mark was registered and Complainant has been in operation since Both of those circumstances arose in the country of Respondent's residence and occurred more than forty years before Respondent purchased the disputed domain name. Moreover, while it is a stretch for the Panel to believe that Respondent was unaware of Complainant or its mark before said purchase, certainly minimal effort in running such a reselling business, in which Respondent claims to be engaged, would have disclosed those circumstances. That is particularly true as Complainant has operated a website under both <bart.gov> and <bart.org> for many years. Furthermore, the Panel believes that Respondent's almost immediate offer, after that purchase, to sell the disputed domain name to Complainant undercuts Respondent's contention that it bought the name not for exactly that purpose but because it was generic. See Aspect Capital Ltd. v. Fluder, D (WIPO Apr. 14, 2015) ("It is nonetheless very difficult, if not impossible, for the Respondent to maintain that the Domain Name was not registered to target the Complainant, as the Respondent has offered the Domain Name for sale to the Complainant immediately following registration of the Domain Name."). Respondent contends that it made said offer only when discovering Complainant's ownership of the mark after finding the <bart.org> website, apparently a few days after the purchase. Granting the maximum credence it can to Respondent's contention, the Panel can only wonder why, if such information was so readily and easily obtainable, did not Respondent access it prior to purchasing the disputed domain name in the proper and reasonable exercise of Respondent's business if that business is actually legitimate? Accordingly, the Panel concludes that Respondent's contention is inadequate.

70 6 of 7 9/27/2015 9:47 AM Given that Respondent does not and cannot reasonably claim that he is commonly known as the disputed domain name and makes no actual use (commercial or noncommercial) of that name, Policy 4(c) is otherwise inapplicable to this case, and the Panel determines that Complainant's prima facie case prevails. As a result, the Panel finds that Complainant has proven the element noted in Policy 4(a)(ii). Registration and Use in Bad Faith Complainant refers to, and the Panel cites, Policy 4(b)(i) as a circumstance that, if found to be relevant, warrants a finding of bad faith registration and use of a disputed domain name, as follows: circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name. In this case, Respondent concedes that, within a short time after acquisition of the disputed domain name, he solicited $11,000 (an amount that certainly exceeds his direct out-of-pocket costs related to the name) from Complainant for the purchase of the name. The Panel is compelled to believe that the proposed sale was the primary purpose in Respondent's acquisition of that name. Accordingly, the Panel concludes that Policy 4(b)(i) is applicable and that Respondent registered and is using the disputed domain bad faith. For the sake of completeness, the Panel notes that it has been well-established in previous UDRP decisions that a respondent's acquisition of a disputed domain name is equivalent to a new registration of that name for the purposes of analysis under the Policy. See ifranchise Group v. Bean, D (WIPO Dec. 18, 2007) ("...the general rule established by panels is that a subsequent acquirer of a domain name is held to have 'registered' that domain name for purposes of the Policy as of the date of acquisition of the registration rights."); see also Ass'n of Junior Leagues Int'l Inc. v. This Domain Name, FA (Nat. Arb. Forum Jan. 4, 2007) ("...one only needs to trace the registration date [of a domain name] back to the most recent transfer instead of the original registration."). As a result, the Panel finds that Complainant has proven the element noted in Policy 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel

71 7 of 7 9/27/2015 9:47 AM concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <bart.net> domain name be TRANSFERRED from Respondent to Complainant. Dennis A. Foster, Panelist Dated: September 25, 2015 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

72 WIPO Domain Name Decision: D of 4 9/25/2015 8:30 PM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Oki Data Americas, Inc. v. ASD, Inc. Case No. D The Parties The Complainant is Oki Data Americas, Inc., a corporation organized under the laws of the State of Delaware, USA, with a place of business at 2000 Bishops Gate Road, Mount Laurel, New Jersey , United States of America. Complainant is represented by Akin, Gump, Strauss, Hauer & Feld, L.L.P. The Respondent is ASD, Inc., an entity with a place of business at 613 West Hwy. 11E, New Market, Tennessee 37820, United States of America. Respondent appears pro se. 2. The Domain Name and Registrar The domain name at issue is <okidataparts.com> (the Domain Name ). The Domain Name is registered with Network Solutions, Inc. ( NSI ). 3. Procedural History The Complainant initiated this proceeding by filing a Complaint by with the World Intellectual Property Organization Arbitration and Mediation Center (the Center ) on July 16, On July 17, 2001, the Center received a hard copy of the Complaint. The Center reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy ), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Following this review, the Center notified Complainant that its initial submission suffered a formal deficiency. Complainant submitted an Amended Complaint on August 2, 2001, by and on August 6, 2001, in hard copy, rectifying the Complaint's procedural deficiency. The Center notified Respondent of the commencement of this proceeding on August 8, On August 23, 2001, Respondent submitted its timely Response to the Complaint by ; the hard copy Response was received on August 24, On September 7, 2001, the Complainant submitted a Supplemental Submission to the Center by fax. This Proposed Supplemental Submission was received by on September 8, 2001, and in hard copy on September 11, On September 27, 2001, after clearing for potential conflicts, the Center appointed David H. Bernstein as the sole panelist in this matter. On October 2, 2001, after reviewing Respondent's Response, the Panel noticed that several exhibits to which the Response referred were not attached. The Panel directed the Center to ask Respondent to resubmit these attachments. Respondent faxed the attachments to the Center on October 10, Factual Background Complainant develops, manufactures and sells a full line of computer peripherals and accessories, including printers, facsimile machines and parts thereof. Complainant's products are available for sale around the world.

73 WIPO Domain Name Decision: D of 4 9/25/2015 8:30 PM The OKIDATA trademark is registered in the United States to Oki Electric Industry Co., Ltd. for computer programs, printers and parts thereof. U.S. Registration No. 1,336,348. Oki Electric has granted Complainant an exclusive license to use the mark in the United States. Respondent sells parts for OKIDATA products (purchased from Complainant's distributors) and offers repair services as an authorized Oki Data Repair Center. Respondent is listed on the Oki Data web site as an authorized Oki Data dealer, and has been given access to a password-protected part of Oki Data's website, the Business Partner Exchange, which provides graphics for use on web sites promoting OKIDATA products. Respondent registered the Domain Name with NSI on August 16, Parties' Allegations Complainant asserts that Respondent's registration and use of the Domain Name violates Complainant's rights in the registered trademark OKIDATA. Complainant alleges that <okidataparts.com> is confusingly similar to and incorporates an unauthorized use of the OKIDATA trademark, and that the only difference between the mark and the Domain Name is the addition of the word parts. Complainant alleges that Respondent has no legitimate interest in the Domain Name because Respondent has no trademark rights in or license to use the OKIDATA mark. Complainant states that Respondent's agreement to provide repair services for OKIDATA products contains no trademark license or authorization to use the OKIDATA mark as a domain name. Complainant also contends that the Domain Name has been registered in bad faith. In support of this assertion, Complainant argues, in part, that the Domain Name was registered to create initial interest confusion among consumers, attracting people to the Domain Name instead of to the Oki Data web site, and that Respondent's use of the OKIDATA mark in its domain name without a license or other authority is evidence of bad faith in itself. In defense of its registration of the Domain Name, Respondent does not deny Complainant's claim that the Domain Name is similar to the OKIDATA trademark. Instead, Respondent alleges that, although it used the OKIDATA mark in its domain name, that use does not indicate or imply that its site is owned or controlled by Complainant. Respondent asserts that it has a legitimate interest in the Domain Name based on its sale and repair of OKIDATA products and parts. Respondent alleges that it is an authorized Oki Data Repair Center, and that one of its technicians has received certification from Complainant authorizing him and Respondent to repair and sell OKIDATA products. Respondent claims that it chose to service and sell OKIDATA products because of those products' prominence in the world market for printers. Respondent states that it does not use the OKIDATA name to promote or sell products manufactured by competitors of Complainant. Respondent denies that it registered the Domain Name in bad faith. Respondent alleges that it was fair for it to presume that Complainant did not want to register the Domain Name. Respondent further alleges that, as an authorized dealer of OKIDATA products, Respondent must be able to tell consumers that it sells and repairs those products. Respondent claims that Complainant gave Respondent access to web art containing the OKIDATA mark for use on Respondent's web site, and that Complainant's counsel did not object to Respondent's use of those logos on their site. Respondent further states that neither its dealer agreement nor Complainant's web site contains any prohibition on registration of domain names containing Complainant's marks. Respondent finally contends that Complainant never demanded that Respondent cancel its Domain Name registration, and that Complainant never offered to absorb the cost of obtaining a domain name transfer. 6. Discussion A. Complainant's Supplemental Submission Before reaching the merits, the Panel must decide whether to consider Complainant's September 7, 2001 Supplemental Submission, and what weight to accord it. Rule 12 of the Rules unambiguously provides that only the Panel may request further submissions: In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. The Rules make no provision for a party to file an additional submission without leave of the Panel. This Panel has written extensively about the improper filing of supplemental submissions. See, e.g., Pacific Fence & Wire Co. v. Pacific Fence, WIPO Case No. D (WIPO June 11, 2001). In general, such submissions are appropriate only if they raise new facts or law, not reasonably available (or foreseeable) at the time of the party's initial submission. They are not to be used to simply reply to Respondent's arguments. Magnum Piering Inc., v. Mudjackers, WIPO Case No. D (WIPO Jan 29, 2001). In this case, the Panel rejects the Complainant's Reply. Most of the Reply is simply an effort to reargue the points made in the Complaint. The only new fact alleged that Respondent had changed the OKIDATA logo on its website to OKI is readily apparent to the Panel, on its own, and in any event does not affect the Panel's decision. Accordingly, the Panel has disregarded Complainant's Reply. B. Analysis of the Complaint. In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the Policy ) have been satisfied: (i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests with respect to the Domain Name; and (iii) the domain name has been registered and used in bad faith.

74 WIPO Domain Name Decision: D of 4 9/25/2015 8:30 PM a. The Domain Name is Identical or Confusingly Similar to Complainant's Trademark. There can be no question but that the Domain Name is confusingly similar to Complainant's OKIDATA mark for purposes of the Policy. Respondent's Domain Name incorporates in its entirety the OKIDATA mark, which is registered in the U.S. Patent and Trademark Office and thus is entitled to a presumption of validity. EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D (WIPO Mar. 24, 2000). As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D (WIPO Apr. 9, 2000) ( parts added to mark EAUTO in <eautoparts.com>); Caterpillar Inc. v Off Road Equipment Parts, WIPO Case No. FA (NAF Oct. 10, 2000) ( parts added to mark CAT in <catparts.com>); Komatsu Ltd. v. RKWeb Ltd., WIPO Case No. D (WIPO Nov. 13, 2000) ( -parts added to mark KOMATSU in <komatsu-parts.com>). The Panel rejects Respondent's argument that no one could be confused because the site itself explains that Respondent is not owned or controlled by Complainant. The issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors. See Wal-Mart Stores, Inc. v. MacLeod, Case No. D (WIPO Sept. 19, 2000). b. Complainant Fails to Show that Respondent Does Not Have a Legitimate Interest in the Domain Name. This case raises the difficult question of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name. Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Here, there is no dispute concerning Respondent's status: It is an authorized Oki Data repair facility, and has been offering OKIDATA goods and services since prior to the commencement of this case. The only issue before the Panel, then, is whether Respondent's offerings may be characterized as bona fide. To be bona fide, the offering must meet several requirements. Those include, at the minimum, the following: - Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D (WIPO Jan. 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering). - Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No (CPR July 25, 2001) (bait and switch is not legitimate). - The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D (WIPO April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D (WIPO Nov. 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products). - The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D (WIPO Jan. 29, 2001) ( a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark ). In this case, Respondent's conduct meets all these factors. Respondent is an authorized seller and repair center, is using the okidataparts.com site to promote only OKIDATA goods and services, and prominently discloses that it is merely a repair center, not Oki Data itself. It has not registered numerous okidata-related domain names, and has not improperly communicated with Oki Data customers. Complainant has not presented any other evidence that undermines the bona fides of Respondent's use. Accordingly, the Panel finds that the Respondent, as an authorized sales and repair dealer for Complainant's goods, has a legitimate interest (under the Policy) in using the Domain Name to reflect and promote that fact. See, e.g., Columbia ParCar Corp. v. S. Burstas GmbH, WIPO Case No. D (WIPO Aug. 23, 2001); ABIT Computer Corp. v. Motherboard Superstore, Inc., WIPO Case No. D (WIPO Aug. 8, 2000); Weber-Stephen Products co. v. Armitage Hardware, WIPO Case No. D (WIPO May 11, 2000). See also K&N Engineering, Inc. v. Kinnor Services, WIPO Case No. D (WIPO Jan. 19, 2001) (finding that the use of a manufacturer's mark in a Domain Name merely provide[s], via an electronic medium, the advertising and sales functions related to the business of an authorized distributor of the Complainant ). It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names. The Thread.com, LLC v. Poploff, WIPO Case No. D (WIPO Jan. 5, 2001). If trademark owners wish to prevent the use of their marks by authorized sales and repair agents in domain names, they should negotiate such protections through appropriate contractual language or, when permitted under the relevant law, seek recovery in classic trademark infringement or dilution litigations. In the absence, however, of some element of illegitimacy, they should not use the Policy to prevent uses that ICANN deemed to be legitimate, including the use of domain names in connection with the bona fide offering of goods and services.

75 WIPO Domain Name Decision: D of 4 9/25/2015 8:30 PM c. Respondent Has Not Used and Registered the Domain Name in Bad Faith. In light of the above finding, it is unnecessary for the Panel to reach this third factor. That said, the Panel briefly notes that Complainant has not alleged any cognizable grounds for a bad faith finding. The assertion that Respondent has precluded Complainant from using its mark in a corresponding domain name must be rejected out of hand because there is no allegation of a pattern of such behavior, which is required by the Policy. See Policy paragraph 4(b)(ii). As for Complainant's assertion that the domain name causes initial interest confusion, the Panel concludes that there can be no such initial interest confusion where the Respondent's use of the domain name is, itself, legitimate under the Policy. 7. Decision Complainant has failed to establish that Respondent has no rights to or legitimate interest in the <okidataparts.com> domain name. Accordingly, the Panel denies Complainant's request that the domain name <okidataparts.com> be transferred. David H. Bernstein Sole Panelist Dated: November 6, 2001

76 eresolution Decision of 10 9/26/2015 5:13 AM ADMINISTRATIVE PANEL DECISION Under the ICANN Uniform Domain Name Dispute Resolution Complainant: Respondent: Case Number: Contested Domain Name: Panel Member: NEWPORT NEWS, INC. VCV INTERNET AF-0238 newportnews.com Peter L. Michaelson, Esq. 1. Parties and Contested Domain Name The Complainant in this proceeding is Newport News, Inc. of New York, New York USA. The Respondent is VCV Internet of Fairhope, Alabama USA. The domain name at issue is 'newportnews.com', registered by the Respondent with Network Solutions, Inc. ('NSI') of Herndon, Virginia, USA. 2. Procedural History The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy"), available at which was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved on October 24, 1999, and in accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") as approved on October 24, 1999 as supplemented by the eresolution Supplemental Rules ( the "Supplemental Rules"). The Complaint was filed electronically with eresolution, through its web site, on June 7, 2000 and in hard-copy form on June 8, Appropriate payment was received by eresolution on May 31, The Complaint was accompanied by an annex, containing copies of three US trademark registrations cited in the complaint, filed on June 5, Pursuant to paragraph 4(d) of the Policy, the Complainant selected eresolution as the ICANN-approved administrative dispute resolution service provider (the "Provider") to administer this proceeding. Through the Complaint, the Complainant requested a single member panel. After receiving the Complaint, the Provider, in accordance with paragraph 6 of the Supplemental Rules, determined that the Complaint fully complied with the formal

77 eresolution Decision of 10 9/26/2015 5:13 AM requirements of the Rules and the Supplemental Rules. In that regard, the provider confirmed the identity of the registrar for the contested domain name; verified, based on the registrar's Whois database, the contact information for the respondent; verified if the domain name resolved to an active web page; and finally verified that the complaint was administratively compliant. In accomplishing this, on June 5, 2000, the provider electronically contacted NSI, as the registrar, to confirm the billing contact of the respondent and to obtain a copy of the registration agreement for the domain name. On June 8, 2000, the Provider received a response from NSI containing the requested verification. On June 9, 2000, the Provider notified the Respondent of the filing of the Complaint, including providing a complete copy of the Complaint, with an explanatory cover sheet, to the Respondent. The Complaint, and its accompanying documents, and all subsequent communications associated therewith were provided in the preferred manner and to the address as mandated by paragraphs 2(a) and 4(a) of the Rules. Hence, with the notification to the Respondent having occurred on June 9, 2000, under paragraph 4(c) of the ICANN Policy, this administrative proceeding is deemed to have commenced on June 9, 2000, and the Provider so notified the Complainant, the Respondent, the registrar and ICANN. Having reviewed the Complaint and the succeeding events as delineated by the Provider, the Panel agrees with the determination of the Provider that the Complaint and its handling met the requirements of the Rules and the Supplemental Rules. The Respondent was then provided with a 20 calendar day period, expiring on June 29, 2000 to file its Response with the Provider and serve a copy of the response on the Respondent. On June 28, 2000, the Respondent electronically filed its Response, including supporting annexes, with the Provider and specifically through the Provider's web site. On July 5, 2000, the Provider received a signed hardcopy version of the response. Accordingly, pursuant to the Rules and Supplemental Rules, on July 7, 2000 the Provider contacted the undersigned requesting his service as a sole panelist to consider and decide this dispute. The undersigned accepted the appointment on July 8, 2000 and on July 10, 2000 returned, by facsimile to the Provider, a fully executed Declaration of Independence and Impartiality. On July 10, 2000, the Provider appointed the undersigned as the sole panelist to consider this dispute, and so notified both parties by . The Provider then forwarded a username and password to the undersigned permitting him access to the Complaint, the Response and all supporting annexes then available on the Provider's automated docket management system. Based on deadline set forth in paragraph 15 of the Rules, a decision is to be issued by the undersigned to the Provider on or before July 23, This dispute concerns one domain name alone, specifically "newportnews.com". The language of this proceeding is English. 3. Factual Background The dispute is based on the following trademark and its usage by the Complainant as follows: NEWPORT NEWS (in block letters)

78 eresolution Decision of 10 9/26/2015 5:13 AM This trademark is the subject of three separate United States trademark registrations -- a copy of each of which appears in the Annex to the Complaint: A) registration 1,691,635 issued June 9, 1992 and carrying a first use date of November 1, 1989 and for use in connection with: women's clothing; namely shorts and leggings sold by mail order -- all in international class 25; B) registration 1,892,686 issued May 2, 1995 and carrying a first use date of April 1, 1993 and for use in connection with: women's clothing sold by mail order; namely, blazers, jackets, coats, rain coats, ponchos, parkas, capes, blouses, knit tops, shirts, sweaters, tunics, vests, leggings, overalls, pants, shorts, skirts, dresses, jumpers, jumpsuits, bodysuits, catsuits, rompers, sweatsuits, leotards, crop tops, bike shorts, swimwear, sleepwear, lingerie, belts, gloves, hats, hosiery, socks, scarves and footwear -- all in international class 25; and C) registration 2,105,336 issued October 14, 1997 and carrying a first use date of March 27, 1987 and for use in connection with mail order catalog services in the field of women's clothing -- in international class 35. From the issue dates of the '635 and '686 registrations, appropriate declarations/affidavits of continued use, as required by Section 8 of the Lanham Act (15 USC 1058) would need to have been timely filed and accepted by the United States Patent and Trademark Office (PTO) for these two registrations to continue in force. Since the Complainant has not specified whether such filings have in fact been made, the Panel, for purposes of this proceeding, will assume that these filings have been made and accepted by the PTO and, as such, both registrations are still active. Such a filing is not yet due for the '336 registration; hence, this registration is also currently active in its own right. As indicated on the registrations, the '635 and '686 trademark registrations were originally owned by New Hampton, Inc. (a Delaware Corporation). The Complaint states that these two registrations were ultimately assigned to the Complainant. The '336 registration, as noted on its face, was issued to the Complainant, with presumably title to this registration still residing therewith. The Complainant states that it is a wholly-owned subsidiary of Spiegel, Inc. In its complaint, the Complainant states that it has continuously and exclusively used its mark to identify its various products and services. The Complainant states that, through this mark, it is well known throughout the United States and elsewhere in the world as a mail order catalog retailer of women's and home fashions. The Complainant states that it also operates a web site under its mark, specifically in connection with its Internet-based retail services. Through the Response, the Respondent states that it engages in providing various Internetrelated and e-commerce-based services including, e.g., establishing and maintaining virtual city web-sites; and providing internet access, ISP (Internet service provider) setup, maintenance of user accounts and other related services. The Respondent further states that it markets its virtual city web site design services to various cities across the United States. To document these services, the Respondent has included, as Exhibit 1 in the annex to the Response, a copy of what appears, to the Panel, to be a home page detailing the various services it currently offers. Of particular relevance to the present dispute, the Respondent states that one of the virtual city web-sites it is currently developing is for the city of Newport News, Virginia (henceforth "Newport News"). In that regard, the Respondent has provided in

79 eresolution Decision of 10 9/26/2015 5:13 AM Exhibits 2-57 of its annex hardcopy print-outs of web pages of various cities for which it is has developed web sites, along with a listing of such cities in Exhibit 1 of its annex, with, of particular note and as shown in Exhibit 2, the print-out for a home page for the virtual web site it has developed for the city of Newport News. In the course of marketing a virtual city web-site to various cities, the Respondent, as noted in the Response, registers domain names corresponding to names of those cities to which its intends to market its services. Once such a site is constructed, the Respondent retains title to the domain name and licenses use of the associated domain name to the corresponding city. 4. Parties' Contentions Through the Complaint, the Complainant contends that: (i) the domain name in question is confusingly similar to its family of registered trademarks for the mark "Newport News"; (ii) any rights the Respondent has in the domain name in contention are illegitimate; and (iii) the Respondent has registered this domain name in bad faith. The Respondent, through its Response, specifically denies each of these contentions. A) Confusing Similarity As to similarity of the contested domain name to its registered trademark, the Complainant has provided a copy, as noted above, of its three active US trademark registrations. For all practical purposes, the Panel recognizes that the domain name in question is identical to the Complainant's NEWPORT NEWS trademark. The exceptions are omission of a space between the two words as shown in the registered trademark with respect to those words being appended together in the domain name and the inclusion of a top level domain (.com) in the domain name not included in the trademark, both of which are de minimus and immaterial. Based on the nearly identical nature of the contested domain name to the registered mark, the Complainant alleges that the Respondent has registered a domain name that is "confusingly similar" to its registered trademarks and, as such, is likely to create a false or misleading representation or impression that the Complainant is affiliated, connected or associated with the Respondent or that the Complainant has endorsed, sponsored or approved the establishment, product or services provided by the Respondent -- when, in fact, no such association, affiliation, connection, endorsement, sponsorship or approval exists. The Respondent alleges that the contested domain is not confusingly similar to the registered mark. In that regard, the Respondent states that, given the services it provides, as discussed above, the use of the contested domain name does not constitute trademark infringement inasmuch as no purchasers of the Complainant's goods will likely be confused when seeing the domain name used in conjunction with the virtual city web sites provided by the Respondent. While the Respondent does not dispute or challenge the federal trademark registrations owned by the Complaint for the mark "NEWPORT NEWS", the Respondent argues that, to

80 eresolution Decision of 10 9/26/2015 5:13 AM constitute infringement of a registered trademark by a domain name, more than just similarity between the mark and the domain name in question must be shown, specifically that use of the trademark by the domain name holder has "taken place in connection with goods or services that are competitive with or in some way related to the goods or services for which the trademark has been registered". The Respondent alleges that the Complainant has made no such showing. In essence, the Respondent is arguing that the use of the contested domain name constitutes permissible concurrent use under current US trademark law and hence does not constitute trademark infringement under 32 of the Lanham Act (15 USC 1114). B) Illegitimate Use The Complainant points to its three United States trademark registrations. The Complainant alleges that since it has not authorized the Respondent to use the registered trademark, any such use constitutes trademark infringement. Hence, for that reason alone, the Complainant alleges that the Respondent has no legitimate rights with respect to the domain name. First, the Respondent states that the Complainant has made no factual showing that in support of this allegation. Second, the Respondent, in contrast to the allegation made in the Complaint, states that the services it provides -- again as discussed above, in conjunction with the contested domain name, constitute legitimate business interests. In that regard, the Respondent states, in essence, that by the very nature of the services it renders, namely creating virtual city web sites, its registration of domain names that incorporate the names of its potential or existing client cities effectuates those very business interests. Further, the Respondent states that its business, given its very specific nature of providing virtual city web sites and related Internet based services, does not compete at all with that of the Complainant; namely, marketing of women's clothing and household accessories. In view of a total lack of any competition between the Respondent and Complainant, the Respondent states that "there is absolutely no basis whatsoever for any claim by the Complainant that VCV has registered the domain name 'Newportnews.com' for the purpose of obtaining any competitive advantage over the Complainant" [emphasis added]. Hence, the Respondent concludes that, as evidenced by its activities, it has a legitimate interest in the contested domain name and did not acquire that name for any illegitimate business purpose. C) Bad Faith The Complainant alleges that the Respondent, merely by using the contested domain name that incorporates the registered mark of the Complainant, is intentionally attempting to attract, for commercial gain, Internet users to its web site and other on-line locations by creating a likelihood of confusion with the Complainant's mark with respect to source, sponsorship, affiliation or endorsement between the products and/or web sites of the Complainant and the Respondent. Based on this reason alone, the Complainant alleges that actions of the Respondent evince bad faith. The Respondent contends that the Complainant has made no factual showing of bad faith that substantiates its allegations. Moreover, the Respondent points to having registered the contested domain name for the

81 eresolution Decision of 10 9/26/2015 5:13 AM express and legitimate purpose of using that domain name in conjunction with a virtual city web site it was then establishing for Newport News and the surrounding metropolitan area. The Respondent intentionally registered the city name of Newport News as a domain name for the city web site ostensibly for the convenience of its then future site visitors, i.e. "any individual seeking information relative to the city of Newport News, Virginia would most certainly tend to use that domain in the process of searching for such information.... The name 'Newportnews.com' is used for the legitimate purpose of attracting those individuals who are seeking information relative to the Newport News, Virginia metropolitan area." The Respondent also states that, as evidenced by its actions, it did not acquire the contested domain name to prevent the Complainant from reflecting the mark in a corresponding domain name or for any purpose relative to disrupting the business of the Complainant, or in any attempt that would cause any likelihood of confusion to arise that would attract Internet users to its web site rather than to that of the Complainant. Finally, the Respondent states that it has used the contested domain name, in conjunction with maintaining its web site developed for Newport News, for "some time" prior to receiving notice of this arbitration. 5. Discussion and Findings A. Confusing Similarity As noted above, the Panel recognizes that, for all intents and purposes, the domain name in question is identical (with exception of de minimus differences noted above) to the Complainant's NEWPORT NEWS family of trademarks. However, this similarity alone, contrary to the Complainant's view, is insufficient to support any finding of trademark infringement. Even where visual and/or phonetic identicality is present, trademark infringement, even in the context of two identical marks, requires a finding that some confusion of the relevant consumers is likely to occur from concurrent use of both marks. See A& H Sportswear, Inc. v. Victoria's Secret Stores, Inc. 49 U.S.P.Q. 1481, 1487 (3rd Cir. 1999). The Court here noted that in assessing confusion, confusion must be likely to occur, not just possible. Ibid. In that regard, in assessing whether confusion is likely, product competition or the lack of it is an important but not exclusive factor. "A trademark owner need only show that they [defendant's similarly trademarked products or services and his own] are sufficiently related so that the public is likely to assume that he is their source or that there is a common origin or sponsorship. In other words, he must show that the public is likely to be confused. Likelihood of confusion, not product competition, is the test under both the Lanham Act and the common-law of unfair competition". Gilson on Trademarks [Matthew Bender], 5.05[1]. In the seminal Polaroid case, the Second Circuit Court of Appeals enumerated various factors useful for determining whether confusion is likely to occur between common trademark usage on non-competitive products; namely, "the strength of the mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion and the reciprocal of the defendant's good faith in adopting its own mark, the quality of the defendant's product, and the sophistication of the buyers." See Polaroid Corporation v. Polarad Electronics Corporation 128 USPQ 411, 413 (2nd Cir.

82 eresolution Decision of 10 9/26/2015 5:13 AM 1961). Even with this list, the Court commented this list may prove inadequate in certain instances: " Even this extensive catalogue does not exhaust the possibilities -- the court may have to take still other variables into account." Ibid. As remarked in Gilson, supra, there is no mathematical formula and no proven computer program which can product the "correct" answer in every case. The delicate task of balancing the legal and equitable factors lies at the heart of the judicial process in noncompeting trademark goods cases. While the Polaroid factors are not inclusive, the Panel recognises them to be quite useful in the present situation in assessing whether confusion is likely to occur or not from concurrent use of the registered mark and the contested domain name. Applying these factors to the situation at hand, the Panel finds that: (a) the mark and the domain name here are identical; but: (b) the Complainant's fashion related products are widely disparate from Respondent's city information web site; and (c) the Respondent has adopted its domain name in good faith -- as discussed in section 6(C) below. The Panel also finds that no evidence exists of record as to: (a) the strength of the registered mark; (b) whether the Complainant intends to "bridge the gap" at some time in the near future by offering services competitive with the Respondent, (c) the quality level of the respective goods/services of the Complainant and Respondent, or (d) the sophistication of the consumers, here visitors to both the Complainant's and Respondent's respective sites and also purchasers of the Complainant's branded goods. Consequently, the Panel views these four factors to be immaterial. Hence, it appears to this Panel, that under the factors that do exist, the potential for confusion to occur as a direct result of concurrent use of the domain name and the registered mark is essentially nil, at best; clearly not a "likelihood" as required under the Lanham Act. Moreover, the only factor proven by the Complainant is the identical nature of the mark to the domain name, which by itself is insufficient to prove a likelihood of confusion. Furthermore, the Panel recognizes that although no evidence has been adduced regarding the nature of the visitors to each party's site, it is reasonable to assume that these visitors are consumers who possess some degree of increased sophistication over those ordinarily in the mass market, if for no other reason than a need to possess requisite computer literacy to access these sites. Moreover, the Panel believes that mail-order consumers tend, by their nature, to be rather sophisticated brand-conscious, discerning purchasers, hence further supporting the Panel's view that these visitors would tend to be sophisticated purchasers. Given this, it seems eminently reasonable to conclude, as the Panel does here, that visitors to the Complainant's branded web site, who seek out the latest women's clothing and home

83 eresolution Decision of 10 9/26/2015 5:13 AM fashions would clearly not be confused when seeing a home page of another web site, bearing an identical mark, that explicitly provides city information, as the Respondent's sites purport to do, with no connection whatsoever to women's and home fashions. Thus, the Panel believes that relevant purchasers of the Complainant's branded goods bearing the "NEWPORT NEWS" mark are not likely to be confused when faced with a web site constructed by the Respondent for the city of Newport News, Viriginia that carries the contested domain name as a basic component of a URL of that site. Hence, the Panel finds that the contested domain name is not confusingly similar to the registered marks of the Complainant as required by paragraph 4(a) of the Policy. B. Illegitimacy Apart from alleging illegitimacy, the Complainant has offered no factual basis sufficient to support its allegation. The Panel finds that the virtual city web site services provided by the Respondent in conjunction with the contested domain name and which the Respondent continues to provide to constitute valuable, bona fide service offerings. Clearly, client cities, as is undoubtedly the case with Newport News, would find it economically advantageous to engage web service establishments, such as the Respondent, to design, establish and maintain city-based web sites, if for no other reason than, to disseminate city information in an effort to increase tourism and other visitor traffic to the city; hence, yielding an economic benefit to the general city economy that transcends the cost of the site. Enhanced intangible benefits to these cities, such as improved goodwill, can also result from such sites. The Panel finds that since the domain name is being used directly in support of these services, its use constitutes a legitimate business interest of the Respondent pursuant to paragraph 4(c) of the Policy. C. Bad Faith Apart from merely alleging bad faith, the Complainant has offered no factual basis to support its allegation. In that regard, there is no proof that the Respondent: is using the contested domain name primarily for the purpose of selling, renting or transferring it to the Complainant for consideration in excess of the cost of registration (paragraph 4(b)(i) of the Policy); registered the domain name, as part of a pattern of conduct, to preclude the Complainant of reflecting its mark in a corresponding domain name (paragraph 4(b)(ii) of the Policy); registered the contested domain name to disrupt the business of the Complainant (paragraph 4(b)(iii) of the Policy); or by registering that domain name has intentionally attempted to cause a likelihood of confusion in the minds of Internet visitors faced with the Complainant's mark (paragragh 4(b)(iv) of the Policy). Furthermore, apart from the absence of proof proffered by the Complainant, the Panel finds that the Complainant has in fact registered a domain name ( that incorporates its registered mark. Hence, based on the facts of record, the Panel finds that the Respondent has not engaged in any pattern of conduct that precluded the Complainant from registering that particular domain name. Moreover, the Panel finds that the Respondent's actions, which do constitute a "pattern", of intentionally choosing and registering domain names of its client cities result from an attempt, not out of any bad faith, but rather to enhance user simplicity and convenience --

84 eresolution Decision of 10 9/26/2015 5:13 AM goals which are, in fact, beneficial to its Internet user community. Specifically, being that the Respondent is engaged in establishing virtual city web sites for its client cities, it stands to reason that the Respondent would seek to chose -- as it apparently has -- domain names that, if possible, contain the names of its potential and/or existing client cities without more, if, for no other reason, than to simplify visitor access to those sites. In that regard, if a visitor to a city can simply enter a desired city name as a domain name in a URL and, by doing so, access a web site containing information for that city, then the visitor is not burdened by a need to remember a specific web address -- which appears to the Panel to be a basic motivation underlying the Respondent's actions here. Clearly, the Panel takes judicial notice that it is far easier, i.e. requiring considerably less cognitive mental effort, for any web visitor seeking information for Newport News, Virginia to enter in a browser address field than having to remember something along the lines of or some other such lengthy, contorted URL, let alone then enter it error-free. Moreover, the panel takes judicial notice of the fact that, at first instance, such a web site visitor would reasonably think, given his(her) familiarity with domain name conventions currently in use on the web, that desired information for Newport News might be had by just typing in a browser address field and then seeing what is returned -- which appears to be precisely what the Respondent has effectuated through use of the contested domain name. If this action were to fail to return desired city information, then the visitor could then turn to one of many search engines currently available on the web to seek out appropriate web sites that are likely to contain the desired information. In addition, given the total absence of competition between the businesses of the Complainant and the Respondent which underlie a finding, noted above, of permissible concurrent use, the Panel finds that the Respondent did not register the contested domain name in an effort to cause any likelihood of confusion to arise in the minds of the corresponding visitors to the web sites of the Complainant and the Respondent, or of the purchasers of the Complainant's goods who also happen to visit the web site which the Respondent established and maintains for Newport News. As noted above, the Panel has found that the Respondent is using the contested domain name in furtherance of a legitimate business interest. In conjunction therewith, the Complainant has not contested the Respondent's statement that the latter has used the contested domain name in conjunction with its virtual city web site provided for Newport News for a period of time prior to its receiving notice of the Complaint. Hence, the Panel accepts this statement as reflective of true prior use of the contested domain name. Hence, the Panel finds that Respondent's actions do not evidence any bad faith as that term is illustratively defined in paragraph 4(b) of the Policy. 6. Conclusions Thus, the Panel concludes that, while the contested domain name is identical for all practical purposes with that of the registered mark, when viewed in its context of its present use, the domain name is not confusingly similar with the registered mark as required under paragraph 4(a)(i) of the Policy. Hence, use of the contested domain name by the Respondent and its client city, Newport News, to the extent contemplated herein, constitutes permissible concurrent use. Furthermore, the Respondent's activities with respect to the contested domain name are

85 eresolution Decision of 10 9/26/2015 5:13 AM legitimate and do not evidence bad faith under paragraphs 4(a)(ii) and (iii), respectively, of the Policy. 7. Award Inasmuch as the Complainant has not established all the essential elements delineated by paragraph 4(a) of the Policy and paragraph 3(ix) of the Rules, then under paragraph 4(i) of the Policy and paragraph 15 of the Rules, this Complaint must be and is hereby dismissed. The Provider is authorized to publish this entire decision in its discretion on a publicly accessible web site. July 18, 2000 Red Bank, New Jersey USA (s) Peter L. Michaelson, Esq. Presiding Panelist

86 1 of 7 9/30/2015 3:20 PM NATIONAL ARBITRATION FORUM DECISION Vanity Shop of Grand Forks, Inc. v. Domain Administrator / Vertical Axis Inc. Claim Number: FA PARTIES Complainant is Vanity Shop of Grand Forks, Inc. ( Complainant ), represented by Antoinette M. Tease, Montana, USA. Respondent is Domain Administrator / Vertical Axis Inc. ( Respondent ), represented by Ari Goldberger of Esqwire.com, New Jersey, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <vanityshop.com>, registered with FABULOUS.COM PTY LTD. PANEL The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding. The Hon. Nelson A. Diaz, the Hon. Neil Brown Q.C., and David E. Sorkin (Chair) as Panelists. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2014; the National Arbitration Forum received payment on December 18, On December 18, 2014, FABULOUS.COM PTY LTD. confirmed by to the National Arbitration Forum that the <vanityshop.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN s Uniform Domain Name Dispute Resolution Policy (the Policy ). On December 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2015 by which Respondent could file a Response to the Complaint, via to all entities and persons listed on Respondent s registration as technical, administrative, and billing contacts, and

87 2 of 7 9/30/2015 3:20 PM to postmaster@vanityshop.com. Also on December 19, 2014, the Written Notice of the Complaint, notifying Respondent of the addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on January 8, On January 15, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Nelson A. Diaz, the Hon. Neil Brown Q.C., and David E. Sorkin (Chair) as Panelists. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant is a retail seller of clothing, jewelry, hair accessories, beauty products, and other goods, both online and through retail stores. Complainant uses VANITY in connection with this business, and claims rights in this mark by virtue of numerous U.S. trademark registrations. In support thereof, Complainant provides a list of trademark registrations for VANITY and related marks, including the registration number, the goods or services, and the international class number for each; however, the list does not include the dates on which the registrations issued or of first use of the marks, nor does Complainant provide copies of registration certificates. Complainant states that it currently has 171 retail stores in 26 states throughout the United States, and has used the VANITY mark for its stores since Complainant launched a website at <vanityshops.com> in 1998, and sold products on this site from 1999 to 2003; Complainant launched a website at <evanity.com> in Complainant documents these statements with a redacted copy of an affidavit by its Chief Financial Officer from May 2012, apparently prepared and submitted in connection with a previous UDRP proceeding. Complainant apparently recently switched its online presence to <vanity.com> after acquiring that domain name in late Complainant claims that the VANITY brand is well known in the fashion/apparel industry, particularly among young women. Complainant contends that the disputed domain name <vanityshop.com> is identical or

88 3 of 7 9/30/2015 3:20 PM confusingly similar to its VANITY mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant alleges that Respondent is using the disputed domain name to direct consumers to its website that includes related links and sponsored listings relating to clothing, fashion, and jewelry, among other things; and that Respondent does not actually offer any goods or services for sale itself, but rather directs visitors to third-party sites. Complainant asserts that it is virtually inconceivable that Respondent was not aware of Complainant when it registered or acquired the disputed domain name, given Vanity s widespread brickand-mortar and online presence; and that Respondent s use of the disputed domain name is causing confusion among consumers as to whether Respondent is affiliated with Complainant, at a minimum including initial interest confusion that exists until consumers realize they are not on Complainant s website, resulting in lost sales to Complainant. B. Respondent Respondent states that it registered the disputed domain name in January 2004, after its prior owner failed to renew it and allowed the registration to lapse. Respondent claims that it registered the domain name because it was an available descriptive word domain name composed of two common words in the English language; that Respondent has registered hundreds or thousands of other domain names for similar reasons; and that such common-word domain names have inherent commercial value because they are easy to remember. Respondent lists many other domain names it has registered that include the word vanity or shop, including <bathroomvanityfurniture.com>, <bathroomvanityset.com>, <thefurnitureshop.com>, <travelshop.com>, and others. Respondent states that its goal is to develop or otherwise monetize domain names in order to generate revenue, and that in the interim it hosts domain names with domain name parking services in exchange for a share of advertising revenues. The disputed domain name is hosted with Hitfarm.com, which places pay-per-click advertising links that are auto-generated by Google based upon the words vanity or shop. Respondent disputes Complainant s contention that the disputed domain name is similar to a mark in which Complainant has rights. Respondent notes that Complainant s trademark is for VANITY standing alone, and that Respondent does not appear to have a registered trademark for VANITY SHOP. Respondent argues that the disputed domain name is not confusingly similar to VANITY, and that trademark law does not confer upon Complainant exclusive rights to the word vanity, especially when used for goods or services wholly unrelated to Complainant. Respondent distinguishes its use of the disputed domain name from Complainant s field, noting that Respondent s use, relating to the common meaning of vanity and shop, is for shopping, furniture, and décor; while Complainant uses the VANITY mark in connection with jewelry, lotions, handbags, hair items, and certain clothing. Respondent further contends that it has rights and a legitimate interest in the disputed domain name, and denies that it registered or is using the domain name in bad faith. In support thereof, Respondent argues that registration of descriptive term domain names

89 4 of 7 9/30/2015 3:20 PM establishes a legitimate interest, provided the domain name was not registered with a trademark in mind, and notes that several previous UDRP panels have expressly recognized the bona fide nature of Respondent s practices. Respondent insists that it registered the disputed domain name without any knowledge of Complainant s VANITY mark, and argues that absent evidence that it knew of Complainant s mark at that time, bad faith cannot be proved. Respondent denies that Complainant was known worldwide in 2004, and argues that Complainant did not even possess a registered trademark until (The Panel notes that some of the marks listed in Complainant s submission do appear to predate the disputed domain name, although this fact is not apparent from the submission itself, since it omits registration and first use dates for Complainant s marks.) In addition, Respondent claims that its use of the disputed domain name has never targeted Complainant or its products, precluding a finding of bad faith use. Finally, Respondent objects to Complainant s delay in challenging Respondent s registration and use of the disputed domain name, noting that it has owned the disputed domain name for 11 years. Respondent also notes that Complainant s counsel appears to have filed various trademark applications in 2009 and again in mid-2014, yet took no action against Respondent at either of those times. Respondent states that Complainant s delay rises to the level of prejudicial and unreasonable delay and gives rise to an inference that Complainant did not believe that Respondent registered the domain name in bad faith. FINDINGS The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. The Panel further finds that Complainant has not proved that Respondent lacks rights or legitimate interests in respect of the disputed domain name, nor that the disputed domain name was registered and has been used in bad faith. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar The disputed domain name corresponds to Complainant s registered mark VANITY, with the addition of the generic term shop and the.com top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant s

90 5 of 7 9/30/2015 3:20 PM mark. See, e.g., Amazon Technologies, Inc. v. Caffey, FA (Nat. Arb. Forum Sept. 22, 2014) (finding <kindlestore.com> confusingly similar to KINDLE); DaimlerChrysler A.G. v. Drummonds, D (WIPO June 18, 2001) (finding <mercedesshop.com> confusingly similar to MERCEDES). The Panel finds that the disputed domain name is confusingly similar to Complainant s mark. Rights or Legitimate Interests Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm t Commentaries, FA (Nat. Arb. Forum Aug. 18, 2006). Respondent is using the disputed domain name for a website comprised of pay-per-click links. The images on the site and most of the links relate to furniture, but there are also links for clothing, fashion, and other categories. Respondent explains the links as having been auto-generated by a third party based upon the terms vanity and shop. The Panel notes that the word vanity has multiple common meanings, including excessive pride in one s appearance and a bathroom cabinet or dressing table. Where a domain name is comprised of common dictionary words that also correspond to a trademark, its use for a PPC link page can give rise to legitimate interests if the page does contains links related to the common meaning of the words, and not to their trademark sense. See, e.g., Havanna S.A. v. Brendhan Hight, Mdnh Inc, D (WIPO Nov. 26, 2010); CEAT Ltd. v. Vertical Axis Inc., D (WIPO Feb. 20, 2012). Here, a few of the links on Respondent s site relate to fields in which Complainant has trademark rights; but the Panel considers it more likely than not that those links were generated based solely upon common non-trademark meanings of the word vanity (and possibly shop as well) and not the VANITY mark. Complainant bears the ultimate burden of proof on this issue. The Panel finds that Complainant has not met this burden. Registration and Use in Bad Faith Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent s] web site or location or of a product or service on [Respondent s] web site or location. The requirements of registration and use in bad faith are conjunctive: there must be bad faith both at the time of registration and subsequently. See, e.g., Mile, Inc. v. Burg, D (WIPO Feb. 7, 2011).

91 6 of 7 9/30/2015 3:20 PM To have registered a domain name in bad faith, Respondent must have been aware of Complainant or its mark when it registered the domain name, and the registration must in some way have been targeted at Complainant or its mark. See, e.g., Kanal, Inc. v. Domain Admin, FA (Nat. Arb. Forum Feb. 12, 2013). Some Panelists have applied a heightened willful blindness standard, finding bad faith where a registrant turns a blind eye to third-party trademarks through failure to conduct adequate searches. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.4 (2d ed. 2011), available at In this case, the disputed domain name consists of common dictionary words, and Respondent claims that it registered the domain name solely for that reason. The Panel considers that claim to be plausible and consistent with the evidence. Even if Complainant s mark is well known in the United States, it is not clear that it was true back in 2004, when Respondent registered the domain name. Furthermore, there is no evidence that Complainant s mark has ever been well known outside the United States, while Respondent is located in Barbados. Finally, Complainant asserts rights only in VANITY, not VANITY SHOP, and even today a search of U.S. trademarks corresponding to VANITY SHOP is unlikely to yield any references to Complainant or its mark. For these reasons, the Panel is unwilling to infer that Respondent was aware of Complainant or its mark when Respondent registered the domain name in 2004, nor that Respondent would have learned of Complainant s existence had it performed a trademark search at that time. The Panel therefore concludes that Complainant has failed to prove that the disputed domain name was registered and is being used in bad faith. DECISION Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <vanityshop.com> domain name REMAIN WITH Respondent. David E. Sorkin, Chair The Hon. Nelson A. Diaz, Panelist The Hon. Neil Brown Q.C., Panelist Dated: January 20, 2015 Click Here to return to the main Domain Decisions Page.

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93 WIPO Domain Name Decision: D of 5 9/29/ :18 PM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION G. A. Modefine S.A. v. A.R. Mani Case No. D The Parties The Complainant is G. A. Modefine S.A. of 90, Avenue de France CH-1004 Lausanne, Switzerland. The Respondent is Mr A. R. Mani of Barclay Street, Vancouver, British Columbia V6E 1G8, Canada. 2. The Domain Name and Registrar The domain name in issue is <armani.com> ("the domain name"). The Registrar is Network Solutions. 3. Procedural History The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by on April 12, 2001 and in hardcopy on April 19, On April 20, 2001, Network Solutions transmitted via its verification response confirming that the Respondent is the registrant of the domain name. On April 23, 2001, the Center notified the Respondent that a complaint had been filed against him. On May 11, 2001, the Center received an from the Respondent seeking an extension to the deadline for the Response (which had been set at May 12, 2001) to May 18, On May 11, 2001, the Center granted that extension. The Response was received by the Center by on May 18, 2001, and in hard copy on May 22, On May 22, 2001, the Center received an from the Complainant's Attorneys requesting an opportunity to file a Response to the Respondent's Reply. On May 23, 2001, the Center received by from the Respondent's Attorneys a letter objecting to the Complainant filing further material and requesting an opportunity to reply to any material filed in the event that the appointed Panel acceded to the Complainant s request. On June 26, 2001, the Center notified the parties that this Panel had been appointed. The scheduled date for the Panel to render its decision was July 9, On June 26, 2001, the Panel requested, pursuant to Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") that the Complainant file a further statement within seven days confirming whether or not it accepted that the Respondent s full name is Anand Ramnath Mani and requesting that, if and insofar as the Complainant disputed

94 WIPO Domain Name Decision: D of 5 9/29/ :18 PM this, that the Complainant set out all facts and matters relied upon. The Panel allowed the Respondent to file a statement in response to any further statement filed by the Complainant within a further seven days. On June 29, 2001, the Center received by from the Complainant s Attorneys a Brief of Reply to the Respondent s Response. On July 4, 2001, the Center received an from the Respondent s Attorneys requesting a right of further reply, in particular, advising the Center that the Respondent had requested a copy of his baptismal certificate. On July 5, 2001, the Panel responded to the Respondent s Attorney s dated July 4, 2001, allowing the Respondent a further seven days to file a reply to the Complainant s Brief of Reply. The Panel informed the parties that it would be likely to consider further evidence as to the Respondent s baptismal name relevant. The revised scheduled date for the Panel to render its decision is July 20, On July 10, 2001, the Center received by from the Respondent s Attorneys the Respondent s Reply. The hard copy was received by the Center on July 12, A statement of acceptance and declaration of impartiality and independence has been filed by the Panel. The Complainant is represented by Avvocata Mariacristina Rapisardi of Studio Rapisardi S.A., Via Ariosto, Lugano-CH. The Respondent is represented by Robert J Lesperance of Lesperance Mendez Mancuzo, Howe Street, Vancouver, British Columbia, Canada V6Z 2M4. 4. Factual Background The Complainant is the registered proprietor of the trademarks "ARMANI" "GIORGIO ARMANI" "EMPORIO ARMANI" registered in a large number of countries including the United Kingdom, the United States of America and Canada. The Respondent is a graphic artist and technical illustrator. His full name is Anand Ramnath Mani (see further below). According to the Respondent s evidence he has been trading under the name "A.R.Mani" since The evidence filed in this respect includes a copy of the Respondent s business card (stated first to have been used in 1982), an advertising flyer (stated first to have been published and used in 1990), evidence that the Respondent was using the address armani@breez.wimsey.com from August 1992 and various documents and correspondence addressed to the Respondent as "A.R.Mani" or "Anand R. Mani". The Respondent filed evidence to show that his full name is Anand Ramnath Mani. This consists of pages from the Vancouver Telephone directory indicating the Respondent as "Mani, Anand R" (1988) and "Mani, A R" (1993) and a certified copy of his Finnish Baptismal Certificate which states that Anand Ramnath Mani was born in Helsinki, Finland, on June 24, The Vancouver telephone directory pages show that the surname "Mani" is not that uncommon, with some 20 or so entries. The Respondent registered the domain name on February 20, 1995 (although he has provided some evidence to show that he took steps to register the domain name in 1994). Whilst the Respondent does not have a website at the domain name address, he uses the addresses info@armani.com, me@armani.com and arm@armani.com. The Respondent has provided copies of a number of s sent to or by him at these addresses. The Respondent has provided formal declarations from himself and from a third party attesting to the above matters. The Respondent was first contacted by US lawyers representing the Complainant (or Mr. Giorgio Armani) in 1995, or thereabouts. By letter dated May 22, 1997, the Complainant s US Attorneys offered the Respondent Canadian $1,250 for the domain name. On August 15, 1997 the Respondent made a counter-offer of $1,935 USD and also requested that the Complainant not oppose his registration of the domain name <amani.com>. By letter dated September 29, 1997, the Complainant s US Attorneys rejected the Respondent s counter-offer. This background has become apparent in the papers filed by the Respondent and to some extent in the Brief of Reply, but is not mentioned in the Complaint. The Attorneys representing the Complainant in this Complaint sent a letter to the Respondent dated January 23, 2001, which states that the Complainant "has recently come to know that you registered the domain name armani.com " and invited the Respondent to "consider the possibility of settling the matter in a friendly way". The Respondent sent an in response to this letter which amongst other matters, stated that the Respondent had spoken with employees of the

95 WIPO Domain Name Decision: D of 5 9/29/ :18 PM Complainant over the years, that he had offered to share the domain, that he had been told that the Complainant would not object if he registered <armani.ca> but that this offer was later retracted and that he offered to give up the domain name and register <amani.com> but that this offer was also unacceptable to the Complainant. 5. Parties Contentions A. Complainant The Complainant s contentions (which are lengthy) are summarized below. The domain name is identical to the Complainant s trade marks. The Respondent does not have any legitimate interest in the domain name as the domain name "does not correspond neither to the name, nor to the surname of the respondent; nevertheless to its name or surname [sic]". Nor is it an acronym of his initials. It is not relevant that the Respondent s complete name may be Anand Ramnath Mani. The Respondent could have registered a domain name which would easily distinguish himself from the "ARMANI" mark, for example "anandrmani" or "a-r-mani". No evidence has been provided by the Respondent to show use of the domain name before notice of the dispute as no website has been constructed and no activities are being carried out under the domain name. The Respondent has not proved that he is using the domain name as an address nor that he uses the name "Armani" in connection with his activities. No prohibitive value should be attached to the documents filed by the Respondent to show that he is commonly known by the domain name in the light of the strength of the reputation attaching to the ARMANI trade mark. The confusion caused by the Respondent allows him to exploit the notoriety of the Complainant s marks because "every day, all over the world, people which are looking for the site of the famous stylist, finds, with surprise, the site of Mr. Anand Mani in Vancouver". As far as bad faith is concerned, the Respondent refused the sum of Canadian $1,250 and asked for $1,935 USD and that the Complainant not oppose his registration of the domain name <amani.com>. The Respondent is not using the domain name, has provided no evidence of an effective use of the domain name. Given that the ARMANI mark is famous world-wide, the Respondent must be taken to have known before formal notice of the Complaint that his registration of the domain name was infringing the Complainant s rights. Even if the domain name is used only as an address, it is being "intentionally used to exploit the notoriety and importance of the complaint and to take advantage from the unlawful use of the GA Modefine s trademarks [sic]". Moreover the fact that the domain name is not currently being used as a website "does not guarantee that in the future the respondent will not unlawfully use it worsening the situation on interference with Modefine s trademarks already effected through registration of the domain name at stake [sic]". B. Respondent The Respondent s contentions are summarized below. The Respondent s full name is Anand Ramnath Mani. His Finnish birth certificate could not be located but this would likely have confirmed his parents names but not his own. Third party evidence was provided confirming that this was likely to be the case. The certified copy of the Respondent s baptismal certificate and his Canadian Citizenship certificate show that his full name is as pleaded. The domain name is not confusingly similar to the Complainant s trademark. A detailed analysis of the Canadian case law on confusion in the trademark context is set out in the Response. In short, there is no risk of confusion because of the divergence between the goods sold by the Complainant and the services offered by the Respondent, and between their respective trade channels. The Complainant has not filed any evidence to support its allegation of confusion.

96 WIPO Domain Name Decision: D of 5 9/29/ :18 PM The Respondent has a legitimate interest in respect of the domain name by virtue of the use of the name "A.R. Mani" in connection with his graphic design/illustrator business as early as Moreover the domain name was registered in February 1995, which predates the date the Complainant notified the Respondent that it disputed its ownership of the domain name. Insofar as the Complainant suggests that the Respondent is required to show that he has used the domain name in order to establish a legitimate interest, the Complainant is incorrect. Rather, the Respondent has only to show that he used the domain name or a name corresponding to the domain name. There is no evidence that the Respondent intended to use the domain name for commercial gain by diverting consumers or tarnishing the Complainant s marks. The Complainant s assertion that the Respondent could have registered the domain name "anandrmani" or "a-r-mani" rather than <armani.com> is irrelevant. There is no evidence to show that the Respondent registered his domain name with the intent to offer, sell, transfer or lease it to the Complainant. The Complainant approached the Respondent to purchase the domain name and not the other way around. It was only on the basis of the threat of legal action that the Respondent considered negotiating with the Complainant to assign the domain name. 6. Discussion and Findings The Panel has reviewed the Complaint, the Response, the Complainant s Brief of Reply and the Respondent s Reply, together with documents exhibited and annexed thereto. In the light of this material, the Panel finds as set out below. It is beyond dispute that the Complainant has trademark rights in the "ARMANI" name. The domain name is identical to the "ARMANI" trademark. The Complainant is therefore within paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy (the "Policy"). The Panel accepts that the name Armani is a very widely recognized name, registered world-wide in respect of various classes of luxury goods. Given the identical correspondence between the domain name and this trademark, the Respondent s detailed analysis of the test for determining confusion between trademarks under Canadian law is not relevant to these proceedings. This is, of course, not the only criterion that the Complainant has to satisfy. It also needs to show that the Respondent has no legitimate interest in the domain name and that the domain name has been registered by him in bad faith. What has emerged in the evidence that has been filed is that the Complainant accepts that Anand Ramnath Mani is the Respondent s real name. The original Complaint was unclear in this regard (the original Complaint is surprisingly brief and contains a number of inconsistencies, including as to whether or not a website and addresses were being used by the Respondent). Matters have been clarified following the various procedural steps described above. Detailed evidence has been filed by the Respondent (see above) and this matter is not in dispute. This is therefore not a case of the type sometimes encountered, where an opportunistic registrant adopts a name which is intended to give a spurious air of legitimacy to an otherwise questionable registration. One only has to identify this as being the situation to expose the difficulty which the Complainant then faces. The Complainant s case that the Respondent has no legitimate interest rests in essence on suggesting that the Respondent should not have registered a name which is a mixture of his own initials and surname but should instead have registered his own full name or some other variant of it. The Panel rejects that submission. It is very common practice for people and organizations to register domain names which are based upon initials and a name, acronyms or otherwise variants of their full names. So far as the Panel understands the Complainant s submission at all, it seems to be predicated on the fact that by doing so the Respondent is likely to cause confusion with the Complainant s mark that wrongly imports into the test for legitimate interest an element of confusion or bad faith. So far as bad faith itself is concerned, the Complainant initially relied upon the Respondent s registration itself as bad faith. Following the Respondent s evidence, the Complainant has also sought to rely upon the Respondent s offer to sell the name for $1,935 USD. This was made as long ago as The failure by the Complainant to refer to this initially is surprising. The statement made by the Complainant s Attorneys in their Brief of Reply that they only traced the 1997 correspondence in June 2001, does not explain this omission (not least because the Respondent mentioned the history of the dispute in his to the Complainant s Attorneys sent in response to their letter to him dated January 23, 2001). The sum is no doubt more than the registration costs of the name. The Panel does not however find that it constitutes bad faith. It is a relatively modest sum, far removed from the sort of amounts which were typically sought (especially in 1997)

97 WIPO Domain Name Decision: D of 5 9/29/ :18 PM by "cybersquatters". The evidence establishes that a legitimate business was in existence and presumably if the domain name were changed, costs such as changing stationery and the like would be involved. The figure suggested by the Respondent in his counter-offer seems entirely reasonable. It is a matter for the Complainant as to why it did not accept that offer. Its apparent belief that simply because it is the undisputed owner of a world famous name it can use the ICANN procedure to dispossess summarily a third party of what is a combination of his initials and surname, which on the evidence he has used in a bona fide manner since the early 1990s, is simply wrong. The Panel also finds that the Respondent s willingness as part of his 1997 counter-offer to register the domain name <amani.com> is further evidence of his lack of bad faith. The Panel finds the failure of the Complainant in its Complaint to set out any of the clearly lengthy background to this dispute is surprising. The Complainant or entities associated with it have been pursuing the Respondent since 1995, through various representatives. The Panel is left with a strong sense that the reason these actions have led nowhere is because they come up against the same issue as has been identified in these proceedings, namely, the Respondent s legitimate use of a variant of his own name. The Complaint states (at paragraph 20) in accordance with the Policy, that "the Complainant certifies that the information contained in the Complaint is to the best of the Complainant s knowledge complete and accurate". The Panel does not see how that could properly have been said. In the circumstances, the Panel concludes, pursuant of paragraph 15(e) of the Rules, that this Complaint has been brought in bad faith, and that it constitutes an abuse of the administrative proceeding. 7. Decision In the light of the above findings, the Panel s decision is as set out below. So far as paragraph 4(a)(i) of the Policy is concerned, the Panel concludes that the domain name is identical to the Complainant s "ARMANI" mark. As far as paragraph 4(a)(ii) of the Policy is concerned, the Panel is satisfied that the Respondent has a right to and/or a legitimate interest in the domain name by virtue of the domain name corresponding to the Respondent s first two initials and his surname. So far as paragraph 4(a)(iii) of the Policy is concerned, the Complainant has failed to show that the domain name was registered in bad faith or that it was subsequently used in bad faith. The Panel therefore declines to find that the domain name should be transferred or cancelled. The Panel finds this Complaint to be an abuse of the administrative proceeding. No further action is required to implement the Panel s decision. Nick Gardner Sole Panelist Dated: July 20, 2001

98 WIPO Domain Name Decision: D of 5 9/27/2015 6:28 AM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info Case No. D The Parties 1.1 The titular Complainants are Dr. Jerry Falwell, an individual resident of the Commonwealth of Virginia, United States of America, having a position at Liberty University, 1971 University Boulevard, Lynchburg Virginia, United States of America, and The Liberty Alliance, a corporation organized under the laws of the District of Columbia, United States of America, with its principal place of business at 3906-B Wards Road, Lynchburg, Virginia, United States of America. Complainants petition this Panel to consolidate their disputes pursuant to paragraph 4(f) of the Uniform Domain Name Dispute Resolution Policy (the "Policy"). 1.2 The Respondents are Gary Cohn, an individual resident of the State of Illinois, with an address at 1954 First Street, Highland Park, Illinois, United States of America, God.info, and Prolife.info, who are listed as the respective registrants of the domain names at issue and who list the same address as that of Mr. Cohn. Complainants petition this Panel to consolidate their disputes pursuant to paragraph 4(f) of the Policy. Hereinafter Respondents will be jointly and severally referred to as "Respondent." 2. The Domain Names and Registrars The domain names at issue are <jerryfalwell.com> and <jerryfallwell.com>, which domain names are registered with enom, Inc., of Redmond, Washington, and Bulkregister.com, Inc., of Baltimore Maryland, respectively, both in the United States of America (the "Registrars"). 3. Procedural History 3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on February 22, 2002, and the signed original together with four copies forwarded by express courier was received on February 26, An Acknowledgment of Receipt was sent by the Center to the Complainant, dated March 1, On March 4, 2002, Network Solutions, Inc., the registrar named in the Complaint, advised the Center that it was not the registrar for the domain names at issue and advised the Center of the identities of the Registrars. 3.3 On March 5, 2002, the Center advised Complainants of the need to amend the Complaint to reflect the true identities of the Registrars. On March 6, 2002, by electronic means and on March 11, 2002, in hardcopy, the Center received an amended Complaint (hereinafter the "Complaint") setting forth the true identities of the Registrars. 3.4 On March 7, 2002, the Center received confirmation from the Registrars that the domain names at issue were registered with the respective Registrars. 3.5 The Center determined that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the

99 WIPO Domain Name Decision: D of 5 9/27/2015 6:28 AM WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the Supplemental Rules. The required fees for a threemember Panel were paid on time and in the required amount by the Complainant. 3.6 No further formal deficiencies having been recorded, on March 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrars, and ICANN), setting a deadline of April 1, 2002, by which the Respondents could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by to the addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent s participation in these proceedings. 3.7 A Response was received electronically on March 29, 2002, and in hardcopy on April 3, An Acknowledgment of Receipt (Response) was sent by the Center on April 2, On April 3, 2002, Complainant submitted a "Reply to Response." On April 5, 2002, Complainant submitted a "Supplement to Complaint on the Issue of Tarnishment and Request for Leave to File". On April 9, 2002, Respondent submitted a "Response to Supplemental Filing." It is within the discretion of the Panel whether to accept and consider these supplemental filings. Rules, paragraph On April 26, 2002, the Center sent a Notification of Appointment of Administrative Panel, appointing Diane Cabell, Tony Willoughby, and M. Scott Donahey, each of whom had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence. M. Scott Donahey was designated Presiding Panelist. 4. Factual Background 4.1 Complainants are Dr. Jerry Falwell a religious minister and educator and The Liberty Alliance, a corporation of which Complainant Falwell is principal spokesperson and which corporation is the registrant of <falwell.com>. For purposes of factual background, the Panel will treat Dr. Falwell as the sole Complainant. 4.2 Complainant is the pastor of Thomas Road Baptist Church, a 20,000 member congregation of the Christian religious persuasion. Complainant appears weekly on a televised program entitled "Old Time Gospel Hour." Complainant is the founder and chancellor of Liberty University, a Christian oriented institution of higher education in Lynchburg, Virginia, United States of America. 4.3 Complainant has used the domain name <falwell.com> to resolve to a web site, on which he answers questions posed regarding biblical issues. The web site receives thousands of "hits" every week. 4.4 Complainant claims a common law trademark in his name. Complainant alleges that he has appeared on the cover of Time magazine, and in 1987 Complainant finished second only to former United States President Ronald Reagan in a poll conducted by Good Housekeeping magazine to determine America's Most Admired Men. 4.5 Complainant has not granted Respondent permission to use Complainant's name. Indeed, on October 26, 2001, Complainant sent Respondent a cease and desist letter, by and by overnight courier. 4.6 Respondent is an individual. He has used the domain names at issue to resolve to a web site at which he offers parody, satire, and implied and direct criticism of Complainant and Complainant's views. The web site is non-commercial in nature, but does link to a discussion forum which service is hosted by a commercial third party, Delphi Forums. Delphi Forums does not appear to be connected to Respondent nor do any advertisements for Delphi appear on the Respondent's pages. 5. Parties Contentions 5.1 Complainant contends that Respondent has registered domain names that are identical and/or confusingly similar to Complainant s common law trademark. Complainant further contends that Respondent has no rights or legitimate interests in respect of the domain names at issue, in that Respondent is using Complainant's common law trademark, or a variation thereof, in the domain name itself, and that this is unnecessary to accomplish Respondent's purported objective of satirizing or parodying Complainant. Finally, Complainant contends that Respondent's web site does not fall within the definition of parody, and therefore is a bad faith use. 5.2 Respondent apparently admits that the domain names at issue are identical or similar to Complainant's name, but denies that Complainant s name is protectable under the Policy. Respondent further contends that it has legitimate interests in respect of the domain names at issue, since it is making "a legitimate noncommercial or fair use of the

100 WIPO Domain Name Decision: D of 5 9/27/2015 6:28 AM domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark...at issue. Policy, paragraph 4(c)(iii). Finally, Respondent contends it did not register, nor is it using, the mark in bad faith, because of the above assertions, and because there is no possibility of confusion with Complainant. Respondent requests that the Panel find that Complainant is guilty of "cyberbullying," which the Panel interprets as a request for a finding of Reverse Domain Name Hijacking. 6. Discussion and Findings Paragraph 4(f) of the Policy permits the Panel, in its sole discretion, "to consolidate... any or all disputes" pending between the parties. The majority notes that there are no disputes pending between The Liberty Alliance and any of the named Respondents. The Liberty Alliance is essentially included as a party-complainant as a matter of convenience to Dr. Falwell. "The Liberty Alliance is the registrant of Dr. Falwell's own domain name, FALWELL.COM, and it is to The Liberty Alliance that Dr. Falwell herein asks that the disputed domain names be transferred." Complaint, Section II,A, at paragraph 2. Accordingly, the majority finds that The Liberty Alliance is not a proper party to the present proceeding, and it is hereby dismissed as a Complainant. The sole legitimate Complainant to this dispute is Dr. Jerry Falwell. The dissenting panelist would not have dismissed The Liberty Alliance as a complainant. In the view of the dissenting panelist, if the name of the First Complainant had been a trade mark or service mark, The Liberty Alliance might well have had rights to it in the same way that the trademark rights to the name of the English designer, Elizabeth Emanuel, are owned by the company for which she worked and not by her. The dissenting panelist would have dismissed the complaint of The Liberty Alliance on the ground that it had failed to prove that the name of the First Complainant is a trademark or service mark. Respondent admits that he is effectively the registrant of the domain names at issue, and admits using the pseudonyms God.info and Prolife.net in the registration of the domain names at issue to emphasize the satiric nature of the use of the domain names at issue. Therefore, Complainant's disputes are not only with the named registrants, but with Mr. Cohn, as well. Therefore, the Panel exercises its discretion to consolidate the disputes against the three named Respondents. Paragraph 12 of the Rules provides that "[i]n addition to the complaint and response, the Panel may request, in its sole discretion, further statements or documents from either of the parties." The Panel made no such request. The Panel affirmatively wishes to discourage the litigation tactic of always trying to secure the last word on any subject of dispute. Accordingly, the panel refuses to accept or to consider for any purpose the supplemental pleadings submitted in this matter. Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable." Since both the Complainant and Respondent are domiciled in the United States, since both registrars have their principal places of business in the United States, and since United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (2) that the Respondent has no rights or legitimate interests in respect of the domain names; and, (3) that the domain names have been registered and are being used in bad faith. Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services. The dissent notes that this failure is attributable not only to Dr. Falwell, but to The Liberty Alliance as well. There are many well-known ministers, religious figures, and academics. Are their sermons or lectures to be considered commercial goods? Complainant failed to provide any marketing brochures, trade advertisements, or other evidence of use as a trademark. On September 3, 2001, WIPO issued its Final Report on the Second WIPO Domain Name Process (the "Second WIPO Report"). In that report, WIPO carefully considered to what degree protection should be extended to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been commercially exploited. "Persons who have gained eminence and respect, but who have not profited

101 WIPO Domain Name Decision: D of 5 9/27/2015 6:28 AM from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society." Second WIPO Report, paragraph 199. Complainant is careful to avoid any suggestion that he has exploited his name for "materialistic" or "commercial" purposes. Complainant is an educator and religious minister. He has used his name to advance his views as to morality and religion. That Complainant has acquired a certain fame in the United States is without question. However, this kind of fame is not cognizable under the Policy. See, e.g., Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D (April 11, 2002). This does not mean that Complainant is without a remedy. He may have claims under the Anticybersquatting Consumer Protection Act ("ACPA"), which expressly provides for protection of personal names, or perhaps his actions lie in tort. Complainant is free to pursue his claims in U.S. courts. Moreover, while not necessary to our decision, the majority finds that Respondent is making "a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish[1] the trademark... at issue." Policy, paragraph 4(c)(iii). The fact that the trademark is used in the domain name does not in and of itself defeat the legitimate noncommercial fair use of the trademark in question. Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Case No. D (January 25, 2001). Nor does initial interest confusion affect the legitimate noncommercial fair use of the trademark. See, e.g., Strick Corp. v. Strickland, 162 F. Supp. 2d 372, 377 (E.D. Pa. 2001). The dissenting panelist takes the view that the intended impersonation of another can rarely if ever be fair or legitimate and particularly in circumstances where the Complainant s name has been taken without adornment and where the purpose behind the impersonation of the person in question is to damage him. In the view of the dissenting panelist the fact that the unsuspecting visitor to the Respondent's web site is immediately disabused is irrelevant. By then the damage has been done. The visitor has been misleadingly diverted, and the Complainant has been damaged. Complainant argues that the use being made of the name does not fall within the definition of "parody." However, whether regarded as parody, satire, or critical commentary, the majority believes that legitimate noncommercial fair use commentary is involved. Whether the commentary is in good taste, whether it is funny, whether it is effective, all is beside the point. See, e.g., Wal-Mart Stores, Inc. v. Wal-Martcanadasucks.com and Kenneth J. Harvey, WIPO Case No. D (November 23, 2000), at Respondent effectively asks for a finding of reverse domain name hijacking. The Panel declines to so find. There is a split of authority among panelists as to whether the mere use of a trademark in a domain name defeats fair use. Compare, Estée Lauder, Inc. v. Estelauder.com, Estelauder.net, and Jeff Hanna, WIPO Case No. D (September 25, 2000), with The New York Times Company v. New York Internet Services, WIPO Case No. D (December 5, 2000). Thus, Complainant could have well believed the Panel might have found that any use of the trademark in a domain name precluded fair use. 7. Decision For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical or confusingly similar to the mark in which the Complainant claims rights, but that Complainant's rights in his personal name are not protectable under the Policy. The majority also finds that Respondent has rights to or legitimate interests in respect of the domain names at issue. Accordingly, the relief requested in the Complaint is denied. The Panel declines to find reverse domain name hijacking. M. Scott Donahey Presiding Panelist Diane Cabell Panelist Tony Willoughby Panelist, dissenting in part Dated: June 3, 2002

102 WIPO Domain Name Decision: D of 5 9/27/2015 6:28 AM 1. "Tarnishment" is intended to be limited to acts done with intent to commercially gain. Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for the ICANN Board meeting of October 24, 1999, paragraph 4.5,c. n. 2.

103 Decision 1 of 8 9/27/2015 6:26 AM DECISION The Reverend Dr. Jerry L. Falwell and The Liberty Alliance v. Lamparello International Claim Number: FA PARTIES Complainant is The Reverend Dr. Jerry L. Falwell and The Liberty Alliance, Lynchburg, VA ( Complainant ) represented by John H. Midlen, Jr. of Midlen Law Center, 7618 Lynn Drive, Chevy Chase, MD Respondent is Lamparello International, New York, NY ( Respondent ) represented by Paul Alan Levy, of Public Citizen Litigation Group, th Street, N.W., Washington, D.C REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <fallwell.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelists in this proceeding. Honorable Tyrus R. Atkinson, Jr., David E. Sorkin, and Estella S. Gold, Chair as Panelists. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the Forum ) electronically on October 1, 2003; the Forum received a hard copy of the Complaint on October 1, On October 6, 2003, Network Solutions, Inc. confirmed by to the Forum that the domain name <fallwell.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN s Uniform Domain Name Dispute Resolution Policy (the Policy ). On October 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the Commencement Notification ), setting a deadline of October 27, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via , post and fax, to all entities and persons listed on Respondent s registration as technical, administrative and billing contacts, and to postmaster@fallwell.com by . A timely Response was received on October 27, However, Respondent failed to provide a signature with the Response as is required pursuant to Rule 3(b)(viii). A timely Supplemental Response to Complaint from Respondent was received on November 10, 2003, in accordance with Supplemental Rule No. 7.

104 Decision 2 of 8 9/27/2015 6:26 AM All of the above-listed Complainants, Respondents and Supplements have been considered by the Panelists. On November 6, 2003, pursuant to Complainant s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Tyrus R. Atkinson, Jr., David E. Sorkin, and Estella S. Gold, Chair as Panelists. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES CONTENTIONS A. Complainant Complainant alleges that it has legal rights in the name FALWELL as follows: a. Complainant has a registered trademark in the name Listen America with Jerry Falwell, USPTO Reg which incorporates the last name of the Complainant, Falwell; b. Complainant has a pending mark Jerry Falwell, USPTO Serial No. 78,202,927 which incorporates the last name of the Complainant, Falwell; c. Complainant published a book entitled Falwell in 1997, which Complainant alleges was commercially marketed under the same name as the title; d. Complainant commercially markets goods and services on the Web at <store.falwell.com>, as well as marketing trips to Israel and other subject matter under this personal name, Jerry Falwell. e. Complainant alleges secondary meaning in the name FALWELL by reciting search engine results for his own domain name <falwell.com>; f. Complainant alleges that the domain name registered by the Respondent, <fallwell.com> is confusingly similar to Complainant s unregistered use of his last name and portions of the registered and pending mark recited above; g. Complainant alleges that Respondent has no right or legitimate interests in the domain name which is phonetically identical to Complainant s domain name as well as his personal last name, and that the use of this domain name misdirects internet traffic to the Respondent by creating confusion with Complainant s marks; and h. Complainant alleges that <fallwell.com> is being used in bad faith because Respondent should have been aware of Complainant s trademarks and Respondent established its website out of anger with Complainant. B. Respondent Respondent alleges that Complainant s UDRP Complaint is without merit because Complainant is using the UDRP to silence constitutionally protected communications. a. Respondent alleges that Complainant has not used his last name as a trademark because Complainant does not use his name as a commercial source; b. Respondent alleges that its use of the name fallwell is a legitimate, non-commercial or fair use of a domain name without intent for commercial gain and denies an intent to misleadingly divert consumers, or to tarnish the trademark or service mark at issue ;

105 Decision 3 of 8 9/27/2015 6:26 AM c. Respondent alleges that its use of the name fallwell is nominative fair use in that Respondent alleges that it has a legitimate interest in using a domain name that identifies the subject of his criticism; d. Respondent alleges that the website <fallwell.com> contains a disclaimer which resolves any initial interest confusion, and in addition, provides a link to Complainant s website to avoid consumer confusion; e. Respondent alleges that the book entitled Falwell is no longer in print, and therefore, is not commercially active; and f. Respondent alleges that the domain name is not a typosquat, but a parody on the words fall and well. FINDINGS Preliminary Procedural Matters The Panelists unanimously find on preliminary matters as follows: 1. That although the Response did not include a signature, as required under Rule 5(b)(viii), the Panel rules that the Response is admissible despite formal deficiencies because to find otherwise would be inconsistent with basic principles of due process. See Strum v. Nordic Net Exch. AB, FA (Nat. Arb. Forum Feb. 21, 2002). 2. That Respondent s contentions of forum shopping and the case being time barred are without merit under the Policy. 3. That Complainant s supplemental pleadings should be accepted and were reviewed. While most facts in this matter are undisputed, the majority on the Panel finds the following on the disputed facts: 1. Complainant has made commercial use of his last name Falwell as an unregistered mark in the marketing of the book Falwell: An Autobiography at least as early as 1997, as well as more recently, in the use of a commercial website. 2. The name fallwell is phonetically identical to Complainant s last name, which Complainant has used as a trademark in the marketing of copyrighted material. 3. It is undisputed that Complainant has achieved the highest level access on commonly used search engines on the Web, and the majority of the Panel finds that such search engine access amounts to secondary meaning as defined by the Lanham Act. 4. Although Respondent alleges that fallwell represents the joining of the word fall and the word well, Respondent s acknowledgement through the use of its disclaimer of the likelihood of misdirected Internet traffic, leads the majority of the Panel to conclude that use of the domain name <fallwell.com> will result in initial interest confusion 5. Based upon the presentation of evidence from <web.archive.org>, the Panel finds that Respondent did not begin to use the website associated with <fallwell.com> until 1999, some two years after Complainant initiated commercial use of his last name as a trademark. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ) instructs this

106 Decision 4 of 8 9/27/2015 6:26 AM Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: 1. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2. the Respondent has no rights or legitimate interests in respect of the domain name; and 3. the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar The Panel finds a strong similarity to Complainant s position in the case of Planned Parenthood Assn. of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997), aff d without op., 152 F.3d 920 (2d Cir. 1998). The Court found in Planned Parenthood that when a domain name is used on a website that promotes or preaches social, religious, or political beliefs, the Lanham Act would not be triggered unless there is some provision of services or commercial aspect to the website. The 1997 Planned Parenthood case was the first time that a court directly faced the issue of finding a commercial use when an otherwise infringing domain name is used on a political or religious website. Defendant in that matter was a religious talk show host who vigorously espoused the right-to-life position. Defendant admitted in that case that his purpose was to intercept potential viewers of plaintiff s website and expose them to the right-to-life message of the book featured at the site. On appeal, the Second Circuit noted that while the prohibitions of the Lanham Act 43(a) are limited to commercial activities, the prohibition of 32(1)(a) on infringements of registered marks has no such commercial activity requirement. See United We Stand Am., Inc. v. United We Stand Am., N.Y., Inc., 128 F.3d 86, 44 U.S.P.Q.2d 1351(2d Cir. 1997); see also Jews for Jesus v. Brodsky, 993 F.Supp. 282, 46 U.S.P.Q.2d 1652(D.N.J. 1998), aff d without op. 159 F.3d 1351 (3d Cir. 1998) (where the court held that the defendant intended to intercept, through the use of deceit and trickery, the audience sought by the plaintiff organization). Respondent, understanding that users of the Internet were likely to be deceived into believing that <fallwell.com> was associated with Complainant or who misspelled Complainant s name, posted a disclaimer to redirect Internet traffic intended for the Complainant. In People for Ethical Treatment of Animals, Inc. v. Doughney, 113 F.Supp.2d 915 (E.D. Va. 2000) Judgment aff d 263 F.3d 359, 60 U.S.P.Q.2d 1009, 1112 (4 th Cir. 2001), the district court found that the challenged domain name was likely to prevent Internet users from reaching PETA s own website because if they mistakenly access defendant s website, they may fail to continue to search for [PETA s] own home page due to anger, frustration, or the belief that [PETA s] homepage does not exist. Furthermore, Respondent acknowledges his motivation in his anti-falwell message, expressing anger in response to the content of Complainant s site. Complainant asserts that it has established rights in the JERRY FALWELL mark by filing an application with the U.S. Patent and Trademark Office ( USPTO ) on January 13, 2003 (Ser. No ). See SeekAmerica Networks Inc. v. Masood, D (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications). Complainant contends that it has established rights in the LISTEN AMERICA WITH JERRY FALWELL mark through its registration with the USPTO on September 5, 2000 (Reg. No ). Complainant further alleges that it has established common law rights in the mark by using the mark in commerce since April

107 Decision 5 of 8 9/27/2015 6:26 AM 13, See Men s Wearhouse, Inc. v. Wick, FA (Nat. Arb. Forum Sept. 16, 2002) ( Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning ); see also Roberts v. Boyd, D (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name Julia Roberts has sufficient secondary association with Complainant that common law trademark rights exist); see also Jagger v. Hammerton, FA (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER). Complainant argues that it has established common law rights in the JERRY FALWELL and FALWELL marks because Complainant published a book for sale in 1997 called Falwell, An Autobiography. Complainant has provided articles from newspapers to prove that Complainat is refered to as FALWELL. See Tuxedos By Rose v. Nunez, FA (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services). Furthermore, Complainant asserts that the <fallwell.com> domain name is confusingly similar to each of the marks discussed above because the domain name merely mispells the FALWELL mark by adding the letter l to the mark, which is a common typographical error committed by Internet users who attempt to access Complainant s <falwell.com> website. SeeVictoria s Secret v. Zuccarini, FA (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant s marks); see also Hewlett- Packard Co. v. Zuccarini, FA (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant s HEWLETT-PACKARD mark). Also, Complainant claims that the <fallwell.com> domain name is confusingly similar to Complainant s mark because the domain name is phonetically identical to the FALWELL mark. See Hewlett-Packard Co. v. Cupcake City, FA (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant s mark satisfies 4(a)(i) of the Policy); see also YAHOO!, Inc. v. Murray, D (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant s YAHOO mark). Lastly, Complainant asserts that Respondent s disclaimer on its website is insufficient to prevent Internet user confusion because it causes intitial interest confusion, and therefore cannot circumvent the Panel from finding the domain name confusingly similar to Complainant s mark. See AltaVista Co. v. AltaVista, FA (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the domain name attracts the consumer s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer ); see also DaimlerChrysler Corp. v. Bargman, D (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of Complainant s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by Complainant). Rights or Legitimate Interests Complainant asserts that Respondent is not commonly known by the <fallwell.com> domain name or the FALLWELL mark, and therefore lacks rights and legitimate interests in the domain name pursuant to Policy 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone

108 Decision 6 of 8 9/27/2015 6:26 AM Corp., FA (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use). Also, Complainant asserts that Respondent s domain name is misleading and is being used for commercial gain. The Panel determines that the <fallwell.com> domain name is misleading and is being used to defeat Complainant s commercial benefit, in its mark. The Panel concludes that Respondent lacks rights or legitimate interests in the domain name because such use does not constitute a bona fide offering of goods or services pursuant to Policy 4(c)(i). In addition, Complainant contends that Respondent s free speech conducted under Complainant s protected mark does not create rights or legitimate interests with respect to the domain name. Complainant argues that Respondent s use of the <fallwell.com> domain name does not constitute a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). See Weekley Homes, L.P. v. Fix My House Or Else?, FA (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int l, D (WIPO May 14, 2001) (holding that Respondent s showing that it has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant... is a very different thing from having a right or legitimate interest in respect of [a domain name that is virtually identical to Complainant s mark] ). Registration and Use in Bad Faith Complainant asserts that Respondent s admission that it registered the <fallwell.com> domain name out of anger toward Complainant is evidence of bad faith. The Panel may find that the admission is evidence that Respondent knowingly registered the domain name with the intent to infringe on Complainant s mark, and therefore registered the domain name in bad faith. See Samsonite Corp. v. Colony Holding, FA (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Ty Inc. v. Parvin, D (WIPO Nov. 9, 2000) (finding that Respondent s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, FA (Nat. Arb. Forum May 28, 2003) (By intentionally taking advantage of the goodwill surrounding Complainant s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith ). In addition, Complainant asserts that Respondent is using the <fallwell.com> domain name in bad faith pursuant to Policy 4(b)(iii) because the domain name competes with Complainant s <falwell.com> website for Internet traffic. See Mission KwaSizabantu v. Rost, D (WIPO June 7, 2000) (defining competitor as one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor ); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int l, D (WIPO May 14, 2001) (stating that although Respondent s complaint website did not compete with Complainant or earn commercial gain, Respondent s appropriation of Complainant s trademark with a view to cause damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner s site into visiting the registrant s site in holding that the disputed domain name was registered in bad faith). The majority of the Panel finds that Respondent has engaged in typosquatting by registering and using the <fallwell.com> domain name to redirect Internet users to Respondent s website by taking advantage of Internet users who commit common typographical errors when they attempt to access Complainant s <falwell.com> website. Typosquatting is evidence of bad faith registration and use pursuant to Policy 4(a)(iii). See Nat l

109 Decision 7 of 8 9/27/2015 6:26 AM Ass n of Prof l Baseball Leagues, Inc. v. Zuccarini, D (WIPO Jan. 21, 2003) ( Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith ); see also Black & Decker Corp. v. Khan, FA (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to ensnare those individuals who forget to type the period after the www portion of [a] web-address, evidence that the domain name was registered and used in bad faith). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <fallwell.com> domain name be TRANSFERRED from Respondent to Complainant. Estella S. Gold, Panelist Signing for the Majority Honorable Tyrus R. Atkinson, Jr., Panelist Dated: November 20, 2003 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page I respectfully dissent. DISSENTING OPINION Respondent selected the disputed domain name because of its similarity to the name of a controversial public figure whom Respondent intended to criticize, and is using it for that purpose. The fact that Complainants have some trademark rights in various forms of Dr. Falwell s name is merely incidental. Respondent is using a variant of Dr. Falwell s name in a nominative sense in order to identify him as the focus of a noncommercial web site; Respondent is neither trading on Dr. Falwell s fame nor exploiting the value of his name, as a trademark or otherwise. Respondent s registration and use of the disputed domain name, therefore, cannot be said to be in bad faith. Furthermore, in my view Complainants have also failed to meet their burden of proof on the question of rights or legitimate interests. At best Complainants have a legitimate dispute with Respondent regarding its right to use a variant of Dr. Falwell s name as a domain name for purposes of criticism but much more likely, Complainants have no actionable claim whatsoever against Respondent. In either case, this is not an appropriate matter for resolution under

110 Decision 8 of 8 9/27/2015 6:26 AM the UDRP, which was designed to handle only a relatively narrow class of cases of abusive registrations. Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999), < 4.1(c). Id. [T]he fact that the policy s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger s trademark) is a feature of the policy, not a flaw. The policy relegates all legitimate disputes such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure. I would dismiss the Complaint. David E. Sorkin, Panelist November 20, 2003

111 1 of 9 9/27/2015 8:18 AM DECISION Philip Morris USA Inc. v. LORI WAGNER / DAVID DELMAN / DAVID@DELMAN.TV Claim Number: FA PARTIES Complainant is Philip Morris USA Inc. ( Complainant ), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is LORI WAGNER / DAVID DELMAN / DAVID@DELMAN.TV ( Respondent ), California, USA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <philipmorris.website>, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com>, registered with GoDaddy.com, LLC. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. dr. Katalin Szamosi as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the FORUM electronically on July 8, 2015; the FORUM received payment on July 8, On July 9, 2015, GoDaddy.com, LLC confirmed by to the FORUM that the <philipmorris.website>, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN s Uniform Domain Name Dispute Resolution Policy (the Policy ). On July 14, 2015, the FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2015 by which Respondent could file a Response to the Complaint, via to all entities and persons listed on

112 2 of 9 9/27/2015 8:18 AM Respondent s registration as technical, administrative, and billing contacts, and to postmaster@philipmorris.website, postmaster@philipmorrisviolations.website, postmaster@philipmorriscigarettediseases.org, postmaster@philipmorriscigaretteskill.com, postmaster@philipmorriscigarettescankill.com, postmaster@philipmorriscigarettediseases.com. Also on July 14, 2015, the Written Notice of the Complaint, notifying Respondent of the addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on August 3, Complainant's timely additional submission to the National Arbitration Forum was received on August 6, Respondent's timely additional submission to the National Arbitration Forum was received on August 11, On August 07, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the FORUM appointed dr. Katalin Szamosi as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the FORUM has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant argues that Respondent s <philipmorris.website>, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com>, domain names are identical or confusingly similar to Complainant s mark, in support of this Complainant asserts that Complainant has established common law rights in the PHILIP MORRIS mark through continuous and widespread use of the mark in connection with its business as a leading provider of tobacco products; <philipmorris.website> only differs from the PHILIP MORRIS mark through the addition of the top-level domain.website. ;

113 3 of 9 9/27/2015 8:18 AM the other disputed domain names in question, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com> only add descriptive terms and top-level domains to the Complainant s mark which do not affect the confusing similarity between the PHILIP MORRIS mark and the disputed domain name, even if the descriptive terms denigrate the mark. Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that Respondent has not been commonly known by the disputed domain name, nor has Respondent been authorized to use the PHILIP MORRIS mark in any manner; Respondent s co-opting of Complainant s entire PHILIP MORRIS mark in the disputed domain names indicates that Respondent is intending to divert Complainant s customers illegitimately as Respondent s appropriation of the mark is not related to Respondent s intentions or interest in the mark. Complainant argues that Respondent registered and uses the disputed domain names in bad faith. In support of this Complainant contends that Respondent has demonstrated a pattern of bad faith registration, including previous cases involving Complainant that leads to an inference of bad faith in this instance; Respondent had actual knowledge of Complainant s rights in the PHILIP MORRIS mark at the time of registration; Respondent has operated a gripe site, which necessitates a finding of bad faith under a non-exclusivity analysis of Policy 4(a)(iii). B. Respondent Respondent argues in the Response that Respondent concedes that it has not been commonly known by the disputed domain names, however, use of the domain names is legitimate because the Respondent is using the domains to provide noncommercial anti-smoking commentary; Respondent has not registered and used the domain names in bad faith because Respondent s registration and use of the domain names is for the purposes of criticizing the Complainant and the Complainant s practices which is protected by the free speech guarantee of the Constitution; Respondent s registration and use of the disputed domain names does not properly fit any of the 4(b) categories that illustrate bad faith registration and use domain names. C. Additional Submissions Complainant In the additional submission the Complainant argues that

114 4 of 9 9/27/2015 8:18 AM Respondent s principal argument that the registration of six domain names incorporating Complainant s philipmorris name constitutes protectable free speech and does not create confusion, because they point to an anti-smoking website is irrelevant analogous decisions -- including those involving other philipmorris domain names registered by Respondent -- make clear that there is a difference between registering a domain name that misappropriates another s rights and posting content critical of another on a website to which the domain name points; Other panels, including those addressing Respondent s domain names, have likewise held that it is irrelevant to the confusion analysis whether the Infringing Domain Name resolves to a website critical of the complainant; Contrary to Respondent s assertion, the inclusion of derogatory terms in the domain names at issue, e.g., philipmorriscigarettescankill.com and philipmorrisviolations.website, does not dispel confusion; Other panels interpreting the Policy have held that a non-commercial use may constitute bad faith registration and use. Respondent In the additional submission the Respondent argues that Respondent s domain names are not likely to cause confusion of whether Respondents websites are from Philip Morris USA or approved by Philip Morris USA; Respondent s domain names make fair use of the Philip Morris USA s trademarks to designate the subject of Respondents criticism; Respondent s domain names are non-commercial use; Respondent s domain names are non-commercial speech protected under the First Amendment; Respondent s domain names are non-commercial speech protected under the California Constitution; Respondent s lacks a bad faith intent to profit from Respondents domain names; Respondents believed and had reasonable grounds to believe that the use of the domain names was a fair use or otherwise lawful. FINDINGS Complainant has used Philip Morris continuously throughout the United States and has established common law rights in the mark PHILIP MORRIS. Complainant conducts business under several domain names incorporating its PHILIP MORRIS mark including. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following

115 5 of 9 9/27/2015 8:18 AM three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Preliminary Issue: Multiple Respondents In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ) provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Based on the contentions of the parties and that Respondent in its response did not question the common control of the disputed domain names, the Panel found it proven that the disputed domain names were subject to common control by a single Respondent who is using multiple aliases. Identical and/or Confusingly Similar Complainant contends that its rights in the PHILIP MORRIS mark stem from its continuous and extensive use of the mark in connection with its business as a leading provider of tobacco products. In order to establish its common law rights, Complainant includes numerous articles attesting to its longstanding use of the PHILIP MORRIS mark. Complainant asserts it has also been a party to UDRP disputes where previous panels have held that Complainant has rights in the PHILIP MORRIS mark. The Panel finds that there is no need be a valid trademark registration with a governmental authority in order to establish rights under Policy 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy 4(a)(i)). The Panel has reviewed Complainant s rights under the common law and found that Complainant has demonstrated its common law rights in the PHILIP MORRIS mark under Policy 4(a)(i). See Goepfert v. Rogers, FA (Nat. Arb. Forum Jan. 17, 2007) ( [T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established. ). Panel notes that other panels have held that Complainant has rights in the PHILIP MORRIS mark. See Philip Morris USA Inc. v. Lori Wagner, FA (Nat. Arb. Forum Jan. 29, 2014); Philip Morris USA Inc. v. David Delman/DAVID@DELMAN.TV, FA (Nat. Arb. Forum June 3, 2014). Complainant argues that Respondent s disputed domain names are confusingly similar to

116 6 of 9 9/27/2015 8:18 AM the PHILIP MORRIS mark. Since the domain <philipmorris.website> only differs from the PHILIP MORRIS mark through the addition of the top-level domain.website., this Panel is on the opinion as other panels have routinely found - that the addition of a top-level domain does not affect an analysis of confusing similarity therefore the Panel finds the domain name <philipmorris.website> is confusingly similar to the PHILIP MORRIS mark. See Daedong-USA, Inc. v. O Bryan Implement Sales, FA (Nat. Arb. Forum Dec. 29, 2003) ( Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy 4(a)(i). ) In regards to the domains <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com>; all include the PHILIP MORRIS mark in its entirety only adding generic terms. This Panel shares the view of previous panels which have found that adding a generic term to a complainant s mark does not alleviate confusing similarity. See Am. Express Co. v. MustNeed.com, FA (Nat. Arb. Forum June 7, 2004) (finding the respondent s <amextravel.com> domain name confusingly similar to Complainant s AMEX mark because the mere addition of a generic or descriptive word to a registered mark does not negate a finding of confusing similarity under Policy 4(a)(i)). Therefore, this Panel finds that Complainant has satisfied Policy 4(a)(i) and all disputed domain names in contention are confusingly similar to the PHILIP MORRIS mark. Rights or Legitimate Interests As to the second element, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm t Commentaries, FA (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant argues that Respondent lack rights or legitimate interests in the disputed domain names. Complainant claims that Respondent has not been commonly known by the disputed domain names, nor has Respondent been authorized to use the PHILIP MORRIS mark in any manner. WHOIS information for the disputed domain names lists either David Delman or Lori Wagner as the registrant of the disputed domain names. Panel notes that Respondent conceded that it has not been commonly known by the disputed domain names. Based on the foregoing the Panel finds that Respondent is not commonly known by the

117 7 of 9 9/27/2015 8:18 AM disputed domain name. See Instron Corp. v. Kaner, FA (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Complainant also argues that Respondent s co-opting of Complainant s entire PHILIP MORRIS mark in the disputed domain names indicates that Respondent is intending to divert Complainant s customers illegitimately. The Panel finds, as other panels have, that a Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the confusing similarity between a domain name and the PHILIP MORRIS mark to divert internet users to their own website. See Golden Bear Int l, Inc. v. Kangdeock-ho, FA (Nat. Arb. Forum Oct. 17, 2003) ( Respondent's use of a domain name confusingly similar to Complainant s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii). ). The Panel notes that a Respondent has a right to comment or criticize Complainants business practices, however Respondent had no right to do so in this manner, namely registering a domain name which contains the entire PHILIP MORRIS mark. Complainant and Respondent have been involved in UDRP disputes under similar circumstances. See Philip Morris USA Inc. v. DAVID DELMAN/DAVID@DELMAN.TV, NAF Case No. FA ; Philip Morris USA Inc. v. David Delman and Lori Wagner, WIPO Case No. D (March 25, 2014) (transferring seven philipmorris domain names to PM USA, and holding Respondents cannot masquerade as Complainant in order to exercise their right to free speech.) Based on the above the Panel finds that Complainant has satisfied Policy 4(a)(ii). Registration and Use in Bad Faith Complainant claims that Respondent has demonstrated a pattern of bad faith registration, which may lead to an inference of bad faith in this instance under Policy 4(b)(ii). See Philip Morris USA Inc. v. DAVID DELMAN,DAVID@DELMAN.TV and DAVID NUDELMAN, FA (Nat. Arb. Forum Oct. 20, 2014); Philip Morris USA Inc. v. Lori Wagner (a/k/a Delman), FA (Nat. Arb. Forum Jan. 29, 2014); Philip Morris USA Inc. v. Lori Wagner, FA (Nat. Arb. Forum. May 7, 2015). The Panel finds, as other panels have, that previous adverse UDRP decisions can demonstrate a respondent s bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel notes that other panels have also found multiple infringing domain names in a single UDRP proceeding to

118 8 of 9 9/27/2015 8:18 AM be dispositive. See EPA European Pressphoto Agency B.V. v. Wilson, D (WIPO Feb. 9, 2005) (finding that the respondent s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy 4(b)(ii)). Complainant argues that in light of Respondent s use of the disputed domain names in connection with gripe sites, bad faith registration and use must follow. In support of this point, Complainant cites a previous UDRP dispute with Respondent where the panel found for Complainant, stating, Respondent s bad faith use or registration may not be defended by any claim that using a confusingly similar domain name is protected by free speech rights. Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA (Nat. Arb. Forum June 3, 2014). The Panel finds as other panel in the previous UDRP dispute between Complainant and Respondent that Respondent s bad faith use or registration may not be defended by any claim that using a confusingly similar domain name is protected by free speech rights. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int l, D (WIPO May 14, 2001) (stating that although the respondent s complaint website did not compete with the complainant or earn commercial gain, the respondent s appropriation of the complainant s trademark with a view to cause damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner s site into visiting the registrant s site in holding that the disputed domain name was registered in bad faith). Accordingly, this Panel finds that there is sufficient evidence to conclude Respondent s use and registration of the disputed domain names constitutes bad faith per Policy 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <philipmorris.website>, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com> domain names be TRANSFERRED from Respondent to Complainant. dr. Katalin Szamosi Panelist Dated: 19 August, 2015

119 WIPO Domain Name Decision: D of 8 9/30/2015 3:19 PM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sutherland Institute v. Continuative LLC Case No. D The Parties Complainant is Sutherland Institute, Salt Lake City, Utah, United States of America, represented by Ray Quinney & Neberker, P.C., United States of America. Respondent is Continuative LLC, Salt Lake City, Utah, United States of America. 2. The Domain Name and Registrar The disputed domain name <sutherlandinstitute.com> is registered with Wild West Domains, Inc. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center ) on May 18, On May 27, 2009, the Center transmitted by to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On May 27, 2009, Wild West Domains, Inc. transmitted by to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy or UDRP ), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules ). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 28, In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 19, The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 23, The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. By dated June 10, 2009, Complainant transmitted to the Center and Respondent a supplemental submission in the form of a Second Declaration of Lisa Montgomery, dated June 10, 2009, stating information with respect to alleged Internet user confusion involving the disputed domain name taking place on or about May 29, Because this information is of a factual nature relevant to this proceeding, and relates to events occurring subsequent to the filing of the Complaint, the Panel accepts the supplemental submission. At the request of the Panel, by dated July 7, 2009 the Center advised the parties that the due date for transmittal of the Panel's decision was extended until July 10, Factual Background Complainant is self-described as a non-profit state-based public-policy think tank incorporated and operating in the State of Utah,

120 WIPO Domain Name Decision: D of 8 9/30/2015 3:19 PM United States of America. Complainant was incorporated in 1994, commenced operations in 1995, and since at least August 1999 has maintained an active website at Complainant has not sought to register a trademark or service mark with the United States Patent and Trademark Office (USPTO). Complainant asserts federal common law service mark rights in the term SUTHERLAND INSTITUTE. Complainant indicates that its services consist of non-profit, public-policy advocacy services. By reference to the content of the website operated by Complainant, it appears that those services mainly consist of the development and publication of political advocacy position papers, and the promotion of its policy viewpoints in public fore, including with the intention to influence legislative processes within the State of Utah. Complainant has provided copies of several articles in the mainstream Utah press (e.g., the Salt Lake Tribune) dating back to 1996 referring to the Sutherland Institute and its policy advocacy. Complainant asserts that it is well-known by its service mark within the State of Utah. A simple Google search by the Panel of the term sutherland institute returned over 400,000 hits. The first five pages of the results (and the limit of the Panel's inquiry) virtually entirely referenced Complainant (Panel research of July 9, 2009). The third listing on the first page of the Google search results identified Respondent in this proceeding (with the first two listings referring to Complainant). According to the Registrar's verification, Respondent is the registrant of the disputed domain name. The Administrative and Technical Contact, at the same address as Respondent, is West, Nick. According to the Registrar's verification, the record of registration of the disputed domain name was created on May 16, Based on copies of correspondence between Nick West and Respondent's president, the Panel treats Respondent's Administrative and Technical Contact, Mr. West, as acting on behalf of the registrant of the disputed domain name, Continuative LLC. The disputed domain name <sutherlandinstitute.com> is being used by Respondent to direct Internet users to a website homepage headed with a stylized script banner The Sutherland Institute that is identical to the stylized script banner The Sutherland Institute heading the website home page of Complainant at except that the white stylized script used on Respondent's website is placed against a green background while the white stylized script on Complainant's website is placed against a blue background. Both website homepages use the same text block/module organization formatting. On the far right block, both website homepages use a text block headed with the terms Sutherland Governing Principles. Both website homepages have identical horizontal blocks linking to internal pages, with identifiers for Home, About Us, Events, Newsroom, Legislation, Journal, Contribute and Contact. The color scheme differs as between the two websites. Respondent's website principally uses green, yellow and white. Complainant's website principally uses blue, gray and white. Respondent's website home page includes in an upper left-hand block a picture of residential housing captioned by the statement Private Property as the cornerstone of economic freedom. A computer printout of Complainant's website as of April 29, 2009 shows a row of residential housing set against a snow-covered mountain background with the caption Private Property as the Cornerstone of Economic Freedom. The text within the boxes headed Sutherland Governing Principles differs as between the website homepages. Respondent's stated governing principles are: Oppose The Gay Agenda Limited Government Except When We Don't Get Our Way Our Bigoted Definition of Family The One True Religion Personal Responsibility & Taking Away Others Choice Anti Same Sex Marriage Legislation Free Markets, Exclude Homosexuals from Places of Employment Complainant's governing principles are: Limited Government Family Private Property Religion Personal Responsibility Charity Free Markets Respondent's website includes within four vertically arranged text boxes information headed Join The Si Network, The Natural Family: A Patently Wrong Manifesto, Transcend Series Concludes with More Brainwashing Sheep', and Sutherland In The News. Complainant's website also includes four vertically arranged text boxes that include Stay Connected by Signing up for Sutherland's Newsletter, news items, and announcements concerning materials and events. Complainant states its mission as follows: The Sutherland Institute is a conservative public policy think tank committed to shaping Utah Law and policy based on a core set of governing principles. We strive to make Utah an example of good government for the rest of the nation and a great place to live, work and raise a family.

121 WIPO Domain Name Decision: D of 8 9/30/2015 3:19 PM Respondent's website homepage includes two disclaimers, each in a small font. At the end of the text in the third vertical column the following appears: NOTE: This website is not affiliated with, endorsed or sponsored by the Sutherland Institute. It is a parody site, an opposing political platform. At the bottom of the page the following appears: Copyright 2009 SutherlandInstitute.com All Rights Reserved. This site is a parody of The Sutherland Institute, a Southern Utah based think tank' that tries to mask its anti-gay agenda' as a do good public policy and political organization. Obviously we are not affiliated with, endorsed or sponsored by the Sutherland Institute but we still love them anyway. Want to contact us? PO Box [ ] Salt Lake City, Utah Internal links on Complainant's website are operational and direct Internet users to various information and materials. The link headings on Respondent's website are not operational. Complainant provided a copy of an message appearing to have been sent from Respondent to Complainant's president on February 19, 2009, providing: Mr. Paul Mero, Your 'opinion' during the debate was nothing more than confrontational statements intended to ridicule your opponents lifestyle and their value. All you really did was to demean yourself by exposing your own shortcomings. When are you going to concede that you have to show a modicum of effort working towards solutions, offering ways to reach a consensus or move forward, not just hurling insults. Your confrontational style can only get you so far. Since you use the only legal tactic you have against the gay communities, your voice and your wallet. We will be using our newly formed institute, our voice and our wallet... to be called Sutherland Institute as in to provide an opposing political platform, a legal parody website exposing your chosen verbal diarrhea to the masses. Best regards, Nick J. West Complainant has provided a sworn declaration from the president of Sutherland Institute, Mr. Paul Mero, dated April 29, 2009, and two sworn declarations from the assistant to the president, Lisa Montgomery, dated April 29 (First Declaration) and June 10, 2009 (Second Declaration). Mr. Mero indicates that when he first saw Respondent's website he: was initially very confused. I reached the website after clicking on a link from a Google search-results page. When the home page loaded into my browser, I was confused because the background color was green, even though our official website's background color is blue. Because the logo, menu arrangement, and headings were identical to our official website, it appeared to me at first glance that our official website's background color had been changed. It required several minutes for me to study and read the content, which included many offensive comments, before I realized that it was a parody website. Although I have been with Sutherland Institute since 2001, this was the first time that I became aware that Sutherland Institute did not currently own rights to the.com' domain name incorporating Sutherland Institute's trademark. On February 26, 2009, I personally met with the largest donor to Sutherland Institute. This donor had compiled a list of ideas to improve Sutherland Institute, and we discussed this list in detail. One of the ideas in the list was to improve Sutherland Institute's website. Our donor appeared to be very troubled by certain content on the website. I was surprised by this suggestion because we had recently updated and modified the website. Furthermore, I could not believe that our website had caused such a negative reaction from a donor who has been such a long-time supporter of Sutherland Institute. Upon further investigation, I determined that our donor was referring to sutherlandinstitute.com, not the official Sutherland Institute website sutherlandinstitute.org. It required several attempts to clarify to our donor that the.com' website was not sponsored by Sutherland Institute because our donor did not immediately understand that sutherland institute' could be used as a domain name for both the.org' and.com' top-level domains. More specifically, our donor did not understand the significance of top-level domain differences. Lisa Montgomery states, inter alia: in the execution of my responsibilities for Sutherland Institute, I have firsthand knowledge of patrons of Sutherland Institute who are confused by the sponsorship of sutherlandinstitute.com. For example, we recently hosted an event for which we requested RSVP through our official website. A woman called me to explain that she had been looking for the RSVP information on our website, but was unable to discover it. As I discussed this problem with her, it became clear to me that the woman had visited the website sutherlandinstitute.com and not realized that was a website not sponsored by Sutherland Institute. (First Declaration). She also states: Presently, Sutherland Institute engages i4solutions for its website design and Web hosting services. On May 29, 2009, I discussed certain accounting items with an account representative at i4solutions. Sutherland Institute had not been receiving certain billing statements from i4solutions, and I called to investigate the problem. An account representative from i4s01utions informed me that i4solutions had been sending our billing statements to the addresses lmontgomery@sutherlandinstitute.com,' which is correct except for the top level domain of.com' instead of.org.' i4solutions did not know why my address was recorded in their database with the.com' top-level domain instead of the correct.org' top-level domain. Typically, addresses are only changed when authorized by the customer.

122 WIPO Domain Name Decision: D of 8 9/30/2015 3:19 PM Approximately ten minutes after our conversation ended, the same account representative called me back to ask me if I still wanted the statements. Apparently, a man had just called her in the intervening time period and asked that the billing statements not be sent. The man also told her that i4solutions should be ashamed for doing business with Sutherland Institute. After speaking with him, she called me because she was very confused. Apparently, she did not realize that i4solutions had been mistakenly sending billing statements for Sutherland Institute to the owner of the domain name sutherlandinstitute.com. It appears that the owner of the domain name sutherlandinstitute.com (or a representative) called to complain about receiving i4solution's billing statements for Sutherland Institute, and then proceeded to disparage i4solutions for providing its services to Sutherland Institute. The account representative from i4solutions was very confused by the man's phone call until I explained that someone else owned the domain name sutherlandinstitute.com and that i4solutions had been mistakenly sending that domain-name owner billing statements for Sutherland Institute. Based on the above, I believe that service providers, including i4solutions and possibly many others, are likely to confuse sutherlandinstitute.com as originating from or being affiliated with Sutherland Institute. Correcting the confusion caused by sutherlandinstitute.com consumes valuable resources of Sutherland Institute. Furthermore, confusion among service providers substantially injures Sutherland Institute. For example, i4solution's confusion resulted in the leak of Sutherland Institute's confidential information to the owner of the domain name sutherlandinstitute.com. Sutherland Institute is concerned about this and other possible breaches of confidentiality arising from the existence of a domain name confusingly similar to Sutherland Institute's trademark. Sutherland Institute is especially concerned about this possible breach of confidentiality because the owner of sutherlandinstitute.com has expressed hostile intent toward individuals associated with Sutherland Institute, including posting telephone numbers on the Internet with implicit calls for harassment. (Second Declaration) The Registration Agreement in effect between Respondent and Wild West Domains, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant Complainant alleges that it has U.S. federal common law rights in the trademark SUTHERLAND INSTITUTE based on (a) the distinctive character of the mark, (b) recognition of the mark by the public, and (c) long use in commerce in the United States. Complainant argues that the disputed domain name is identical to its common law trademark. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. According to Complainant, Respondent has not been commonly known by the disputed domain name, did not use the disputed domain name for a bona fide offer of goods or services prior to notice of a dispute, and is not making legitimate noncommercial or fair use of the disputed domain name without intent to misleadingly divert Internet users or tarnish Complainant's trademark. More specifically, Complainant argues that although Respondent has the right to criticize Complainant and its policy positions, Respondent does not have the right to do so with a domain name and website that give the impression that Respondent is, in fact, Complainant. Complainant contends that Respondent is misleading Internet users. Therefore, alleges Complainant, even taking into account some decisions under the Policy that allow the use of third-party trademarks in identical domain names for criticism purposes, Respondent does not fall within the category of a legitimate noncommercial user of its mark because of that intent to mislead. Complainant argues that Respondent registered and used the disputed domain name in bad faith. Complainant alleges that Respondent was clearly aware of its trademark when it registered the disputed domain name, and did so in a way designed to disrupt Complainant's business operations, including interfering with fundraising by Complainant. Complainant further contends that Respondent is misleadingly and in bad faith diverting Internet users to its website, even if Respondent is not gaining commercially from Internet user confusion. Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding. It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The courier tracking record in the files of the Center indicates that the hard copy Complaint dispatched to Respondent was successfully delivered at the address indicated in its record of registration. There is no indication of any technical difficulties in the transmission of notices from the Center to Respondent. The Center has taken those steps specified in the Policy and Rules designed and

123 WIPO Domain Name Decision: D of 8 9/30/2015 3:19 PM presumed to provide adequate notice to Respondent. The Panel determines that Respondent was provided adequate notice of these proceedings and a reasonable opportunity to respond. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that: (i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the domain name; and (iii) respondent's domain name has been registered and is being used in bad faith. Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar Complainant has asserted common law service mark rights in the combination term Sutherland Institute. Because Sutherland is a surname, it is not considered inherently distinctive. The surname is combined with Institute, a common descriptive term for a type of research, academic or policy organization. Sutherland is not an especially common surname in the United States, and there is no evident reason to consider that it may not acquire secondary meaning when used in combination with another term. Complainant has provided evidence of recognition in the public press of its identifier Sutherland Institute dating back as early as An Internet search for the term Sutherland Institute using the Google engine returns a large number of websites referring to Complainant, and review of a sampling of the identified websites makes it evident that Complainant is well-known by the term Sutherland Institute among the policy community in the State of Utah. It may be that many of the persons knowing of Complainant and its Sutherland Institute identifier, and commenting on its policy positions take a contrary position - and very strongly in some cases - but this does not contradict the fact that Complainant is well-known among the relevant public in the State of Utah. Complainant is providing a service to its contributors and supporters in the form of the development and dissemination of political and policy positions, including with the intent to influence legislators in the State of Utah. Lobbying on behalf of a community of supporters constitutes the provision of a service. Complainant has succeeded in demonstrating secondary meaning in the term Sutherland Institute in the State of Utah, and substantial use of the term in commerce in the State of Utah. The Panel determines that Complainant has established rights in the service mark SUTHERLAND INSTITUTE. The disputed domain name <sutherlandinstitute.com> is identical to the service mark from the standpoint of assessment under the Policy. Complainant has established rights in the service mark SUTHERLAND INSTITUTE and that the disputed domain name is identical to its mark. B. Rights or Legitimate Interests The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests: Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)) There is no evidence on the record of this proceeding that Respondent was known as Sutherland Institute prior to its registration of the disputed domain name. Respondent was certainly aware of Complainant and its service mark when it registered, and when it began using, the disputed domain. This is evidenced, inter alia, by an from Respondent to Complainant concerning its intentions. Moreover, the similarity between Respondent's website and Complainant's website makes it apparent that Respondent intended to create a similarity in presentation that would at least initially confuse Internet users seeking Complainant's website. Setting aside the question of legitimate noncommercial or fair use, Respondent did not make a bona fide offer of goods or services using the disputed domain name within the meaning of Paragraph 4(c)(i) prior to notice of a dispute. Respondent has not submitted a Response in this proceeding. It is left to the Panel to presume what Respondent would have argued had it made a submission, and to address the arguments that Respondent would have made, but didn't. The Panel presumes that Respondent would argue that it is making a legitimate noncommercial use of Complainant's service mark in the disputed domain name. There are a substantial number of decisions under the Policy addressing the parameters of legitimate noncommercial use of

124 WIPO Domain Name Decision: D of 8 9/30/2015 3:19 PM trademarks and service marks, 2 including in circumstances where a respondent has adopted a domain name identical to the trademark or service mark, including decisions by this sole panelist. 3 Suffice it to say that each of these decisions is context specific. Freedom of speech or expression is a strongly protected constitutional right in the United States. Yet individuals do not enjoy absolute freedom of expression with respect to terms protected as trademarks or service marks. Rights granted to trademark owners operate as a limited restriction on freedom of speech (see, e.g., Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D ). The strong free speech right may come into tension with trademark rights, and it is the role of courts and administrative panels to sort out the proper balance. From the standpoint of determining whether Respondent is engaged in legitimate non-commercial use of the disputed domain name, the basic question is whether Respondent is justified in (a) calling itself Sutherland Institute in the disputed domain name, and (b) creating a website with the evident purpose of causing Internet user confusion regarding whether its website is operated by Complainant, until a close examination of the website contents should (but apparently does not always) reveal that it is not operated by Complainant. A relevant (though distinguishable) line of cases addresses the nominative fair use of trademarks. 4 The Court of Appeals for the Ninth Circuit permits third-party use of a trademark where it would otherwise be difficult to identify the trademark product. However, the third party may use only so much of the trademark as is necessary, and may not create the impression that it has been authorized or endorsed by the trademark owner. Nominative fair use effectively allows freedom of expression with respect to trademark products for purposes of identification, but with the constraint that the third-party user does not excessively interfere with the trademark right (by using only so much of it as necessary) or deceive the public (by creating the misleading impression of sponsorship or endorsement). In the present case, Respondent is not making nominative fair use of Complainant's service mark. Respondent is not merely trying to identify Complainant or its services. Respondent is more precisely attempting to substantially replicate Complainant's website for purposes of expressing criticism. Respondent has suggested to Complainant that its use of its trademark is a form of protected (non-infringing) parody of Complainant. Parody is a more generally accepted defense against copyright infringement than trademark infringement, though trademark law is not without parody defense cases. 5 In the traditional copyright defense, the copyright parodist has drawn the reader, viewer or listener to his or her work by first appearing to be the original, and then changing direction to make fun of or criticize the original. 6 It is important to a parody defense that the distinction between the parody and original work ultimately be sufficiently clear. The parodist should not make such extensive use of the original work as to essentially rely on the original for its expressive effect. In other words, the parodist must not merely be re-packaging and selling the original. Respondent appears to assume that its portrayal of Complainant's positions is sufficiently over the top to make it clear that Respondent is criticizing Complainant. The response by Complainant's constituency suggests that they perceive few limits to how far Complainant might go in expressing its particular position, perhaps only wishing that Complainant had expressed itself better. Even Complainant seems to have been confused about whether it really said the things Respondent has attributed to it. One of the reason Respondent's approach works is that Respondent has gone to considerable lengths to make its website look like the website of Complainant. It has literally copied the design elements of Complainant's website, including its stylized script banner, and including Complainant's basic statement of philosophy, and a photo quite similar to that highlighted on Complainant's website. It is a difficult question whether Respondent's website would be considered a non-infringing parody of Complainant's website as a matter of copyright law. That is, whether Respondent has sufficiently transformed the content on Complainant's website so that it is not taking undue advantage of Complainant's content. The Panel need not make a determination about that. Respondent has not sought to parody Complainant's service mark, as such, in its domain name. Nor, for that matter, has it done so on its website. Respondent's domain name is identical to Complainant's service mark, and Respondent uses Complainant's service mark on its website in a form identical to that used by Complainant. There literally is no transformation into a potential parody object. If for no other reason, Respondent's use of the disputed domain name does not constitute a parody of Complainant's service mark because there is no transformation of the service mark. 7 The Panel need not further determine whether the extent of the similarity between Respondent's and Complainant's websites would likewise preclude a finding of protected parody. The question for this Panel remains whether Respondent's free speech interest in the disputed domain name is so compelling that it should take precedence over Complainant's service mark rights even though Respondent has gone to considerable lengths to create Internet user confusion regarding Complainant's association with its website. The level of confusion-inducement is apparently sufficient to cause individuals familiar with Complainant and its policy positions, as well as Complainant's Internet service provider, to be uncertain as to the identity of the website operator. The Panel is not convinced that Respondent's free speech interests take such significant precedence over Complainant's interest in being properly identified by the public as to cause Respondent to have a legitimate interest in the disputed domain name, as such. The Panel determines that Respondent has not made legitimate noncommercial use of the domain name because of the extent to which the domain name and its website are designed to induce Internet user confusion. Complainant has succeeded in demonstrating that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy indicates that certain circumstances may, in particular but without limitation, be evidence of the registration and use of a domain name in bad faith. These are (i) circumstances indicating that [the respondent] ha[s] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name ; (ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; (iii) [respondent has] registered the domain name primarily for

125 WIPO Domain Name Decision: D of 8 9/30/2015 3:19 PM the purpose of disrupting the business of a competitor ; or and (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or of a product or service on your website or location. The bad faith elements listed in Paragraph 4 of the Policy are well understood to be non-exhaustive. In other words, a panel rendering a decision under the Policy is not bound to stay within the confines of the described grounds for finding bad faith. An example is decisions that infer bad faith intent despite the fact that a respondent has not made any active use of a disputed domain name. 8 Here Respondent is in this Panel's view using the disputed domain name for purposes of constitutionally protected political speech. In this context, the Panel is reluctant to use a basis for a finding of bad faith other than those expressly enumerated in the Policy. Those expressly enumerated criteria of bad faith reflect the Policy's principal concern with conduct that takes unfair advantage of trademark owners for purposes of commercial advantage. Complainant has principally argued that Respondent registered the disputed domain name for the purpose of disrupting the business of a competitor. Yet only by the exercise of mental gymnastics may a group of gay rights activists be defined as a competitor of a conservative public policy think tank. A person seeking the services of a lobbyist or advocacy group who is unable to secure the services of a conservative think tank is unlikely to decide to take its business instead to a group of gay-rights activists. Perhaps in some very attenuated sense these two entities are competitors in the marketplace for ideas, but the Panel does not think this is what the Policy means when it refers to competitors. There is no evidence to suggest that Respondent registered the disputed domain name for the purposes of selling it to Complainant or a third-party. While Respondent many have registered the disputed domain name at least in part to prevent Complainant from registering its service mark in a domain name, there is no evidence that Respondent has engaged in a pattern or practice of this nature. The requirement of demonstrating a pattern or practice shows the concern of the relevant provision of the Policy (paragraph 4(b)(ii)) with addressing predatory commercial intent. Finally, while Respondent undoubtedly registered and has used the disputed domain name to confuse Internet users concerning Complainant as a source, sponsor, affiliate or endorser of its website, there is no evidence that Respondent has done so for commercial gain. The reference to commercial gain in paragraph 4(b)(iv) of the Policy evidences the purpose of the prohibition. It was not designed to inhibit pure political speech. 9 Complainant in its pleadings recognized that its allegation of bad faith based on Internet user confusion lacked the element of Respondent's commercial purpose, and sought to disclaim the need for such a finding of commercial purpose by reference to an earlier administrative panel decision. 10 But the decision cited by Complainant involved substantially different (and distinguishable) circumstances than the political speech context here and, in any case, involved parties outside the United States. In the instant proceeding, the evidence before the Panel indicates that Respondent is engaged in pure political speech. There are no advertising links on Respondent's website. There are no requests for financial support on Respondent's website. 11 Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant's service mark incorporated in Respondent's disputed domain name, it is preferable that a federal or state court make that application of the concept of bad faith. The Panel determines that Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith. 7. Decision For all the foregoing reasons, the Complaint is denied. Frederick M. Abbott Sole Panelist Dated: July 10, Initially the Registrar reported to Center that the disputed domain name had expired on May 16, However, the record was subsequently revised to indicate that registration of the disputed domain name is not scheduled to expire until May 16, See decisions collected in WIPO Overview of WIPO Panel Views on Selected UDRP Questions (as of March 20, 2008), at para See, e.g., Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D and Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D (as presiding panelist). 4 See, e.g., Pfizer Inc v. Van Robichaux, WIPO Case No. D See Dr. Seuss Enterprises v. Penguin Books, 109 F. 3d 1394 (9 th Cir. 1997), and also compare, e.g., Annheuser-Busch v. Balducci Publications, 28 F. 3d 769 (8 th Cir. 1994) and L.L. Bean v. Drake Publishers, 811 F. 2d 26 (1 st Cir. 1987). 6 See Dr. Seuss, id. (primarily addressing copyright parody defense).

126 WIPO Domain Name Decision: D of 8 9/30/2015 3:19 PM 7 Accord, People for the Ethical Treatment of Animals v. Doughney, 263 F. 3d 359 (4 th Cir. 2001). 8 See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D In a significant number of administrative panel decisions where a free speech interest is raised as a defense, panels have found commercial interests that undercut that argument. See, e.g., Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D The Complaint states: Even if Respondent's use is noncommercial, Respondent cannot escape a finding of bad faith intent. [W]ith regard to paragraph 4(b)(iv) of the Policy, the panelist [sic] remains of the view expressed in Brett Homes case that an intentional effort to create and take advantage of association with a Complainant's trademark is capable of evidencing bad faith. This can, for example, arise where the Respondent uses the Complainant's trademark with a view to obtaining an advantage in a collateral dispute by threatening continued negative publicity about the Complainant. Arnold Clark Automobiles Limited v. Thomas (aka Tam) Coughlan, WIPO Case No. D Accordingly, Respondent's registration was in bad faith regardless of whether or not Respondent's use is commercial or noncommercial. Complainant notes that the list of bad faith factors outlined in the Policy 4(b) are non-exhaustive. (Complaint) The Panel notes that the decision Arnold Clark automobiles referred to by Complainant clearly notes that decisions involving parties in the United States have taken a different approach with respect to the question of freedom of expression then have those decided in other jurisdictions, including the United Kingdom. 11 The panel need not address whether a request for financial support for a political organization would constitute commercial activity in the context of another case such as this, and expresses no view on that question.

127 WIPO Domain Name Decision: D of 6 9/25/2015 8:27 PM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Eastman Sporto Group LLC v. Jim and Kenny Case No. D The Parties Complainant is Eastman Sporto Group LLC, of New York, New York, United States of America, represented by the law firm Kenyon & Kenyon, United States of America. Respondent is Jim and Kenny of Portland, Oregon, United States of America, represented by Jim Leissner, United States of America. 2. The Domain Name and Registrar The disputed domain name <sporto.com> is registered with GoDaddy.com, Inc. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center ) on December 9, On December 10, and , the Center transmitted by to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 11, 2009, GoDaddy.com, Inc. transmitted by to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy or UDRP ), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules ). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 15, In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2010; by agreement of the parties this was extended to January 11, The Response was filed with the Center on January 12, The Center appointed Richard G. Lyon as the sole panelist in this matter on January 29, The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On February 10, 2010, the Panel issued Procedural Order No. 1, requesting Respondent to confirm the most recent date on which it renewed the disputed domain name. Respondent notified the Center on February 14, 2010 that its most recent renewal occurred on October 23, Factual Background Complainant makes and sells many products, including footwear for athletic and outdoor use, under the brand SPORTO. Complainant holds many trademarks for SPORTO registered with the United States Patent and Trademark Office (USPTO). Several of these date back to the 1960s and claim use in commerce since Respondent registered the disputed domain name in According to the archives at the site was first used in

128 WIPO Domain Name Decision: D of 6 9/25/2015 8:27 PM 1998, at which time it was used in connection with training classes offered by Respondent. Content changed in 2001, when the site contained statistical data on stream flow conditions obtained from a governmental agency. In 2004 the site's entire content read: THIS DOMAIN HAS JUST BEEN REGISTERED FOR ONE OF OUR CUSTOMERS! DOMAIN REGISTRATION AND WEBHOSTING AT MOST COMPETITIVE PRICES! [signed] 1&1 Internet Inc. 1 The site owner has blocked the archives from revealing content from November 2006 through September 2007; after that date no content is displayed. At some times during this time period the disputed domain name resolved to a generic pay-per-click site offering links to shoes and footwear. 2 When the Panel accessed the disputed domain name he was automatically re-directed to <planetshoes.com> at which a site apparently operated by that company offered for sale seven pictured models of shoes and boots. Each such merchandise was identified as a Sporto product and Complainant's name and logo (including a distinctive graphic design that is part of some of Complainant's trademarks) is displayed prominently. 3 Complainant has never licensed Respondent to sell its products or otherwise to use its trademarks. On August 21, 2009, Respondent offered to sell the disputed domain name to a third party for USD100,800. This third party was apparently acting on Complainant's behalf. 5. Parties' Contentions A. Complainant The Panel summarizes Complainant's contentions as follows: 1. Complainant holds valid trademark rights in SPORTO by reason of its many USPTO-registered marks. Except for the top-level domain.com the disputed domain name is identical to these marks. 2. Complainant has never authorized Respondent to use its marks. Respondent has never been known by the disputed domain name. Respondent's current use of the disputed domain name, to resolve to a site selling competitive products, is not legitimate under the Policy. Respondent had constructive notice, and probably actual notice as well, of Complainant's marks. These marks have been used continuously in commerce for more than fifty years and have achieved widespread fame. 3. Four factual bases illustrate Respondent's bad faith in registration and use: (a) use of Complainant's clearly distinctive trademarks; (b) Respondent's offer to sell the disputed domain name for an amount far in excess of its costs of registration; (c) Respondent's use of the disputed domain name for a pay-per-click site with links related to Complainant's mark and products; and (d) Respondent can make no reasonable argument that its use is sports related or related to any creative or commercial endeavor. B. Respondent The Panel summarizes Respondent's contentions as follows: 1. While Respondent does not (and perforce cannot) directly contest identity of the disputed domain name and Complainant's marks, it does deny any confusion and notes that it has operated an active website at the disputed domain name for thirteen years without complaint. Respondent also questions Complainant's right to trademark protection for a dictionary word. 2. Respondent cites several legitimate uses in the thirteen years he has owned the disputed domain name. In addition to the uses listed in Section 4, Respondent claims to have operated a sports information service called Online Sports, and offers what he describes as a business plan for this business dated September All of Respondent's uses of the disputed domain name have been undertaken in good faith and do not compete or interfere with Complainant. Respondent had no knowledge of Complainant or its marks in 1997 when it registered the disputed domain name. Sporto is a dictionary word in certain foreign languages and a common colloquial word in English and Respondent chose it for that reason. 6. Discussion and Findings This is a difficult case to resolve for several reasons, including a recent spate of UDRP panel opinions under a modified approach to determining bad faith under paragraph 4(a)(iii) of the Policy. A. Identical or Confusingly Similar Complainant has demonstrated longstanding trademark rights in the word SPORTO, and the disputed domain name is identical to this term. When the two are identical no showing of confusion is required. Complainant has carried its burden of proof under this Policy head. B. Rights or Legitimate Interests The evidence shows that Respondent has used the disputed domain name sporadically between 1997 and 2008 for businesses that do not compete with Complainant and that such use in no way can be said to have played off any goodwill attaching to Complainant's marks. Such use in the Panel's opinion does not establish that Respondent is now or was ever commonly known by SPORTO (see Policy, paragraph 4(c)(ii)), but was under Policy precedent adequate to bring Respondent within the safe harbor of paragraph 4(c)(i). So far as the record reflects, however, all use since 2008 has not been legitimate; on the contrary, it has been activity routinely found to be cybersquatting: a standard pay-per-click page with hyperlinks based upon the mark owner's (Complainant's) name and industry,

129 WIPO Domain Name Decision: D of 6 9/25/2015 8:27 PM followed by a site that purports to sell Complainant's products or products directly competitive with Complainant's products. As discussed more fully in subsection C below, until last year Respondent's pre-2008 use of the disputed domain name may have established a defense to the charge of no rights or legitimate interest (although the absence of such bona fide use today might nullify such defense for the purpose of the second element of the Policy). Furthermore, recent cases that advance a different approach to determination of bad faith under paragraph 4(a)(iii) of the Policy may also undercut that defense on the present facts. Because those cases address Policy language regarding bad faith, the Panel will consider them under that Policy head. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy reads as follows: You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:.... (iii) your domain name has been registered and is being used in bad faith. The Traditional Approach Until last year's decision in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D ( Mummygold ), panels had considered the requirements of registration and use to be conjunctive, requiring a panel to consider both bad faith first at the date of registration, and to examine whether the respondent's use was in bad faith. To establish registration in bad faith the complainant ordinarily must have proven that the respondent, at the time of registration, knew of the complainant and its mark and selected the mark to take advantage of whatever renown attached to that mark. These cases generally (although not always) involved separate analyses of facts pertaining to different points in time. Cases in which clear bad faith use was shown absent a showing of bad faith registration still resulted in a denial of the complaint because there was no evidence of (or sufficient grounds from which to infer) knowledge and targeting at the time of registration. This two-pronged approach became well-settled precedent. While not expressly included in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ( WIPO Overview ), paragraph 3.1 impliedly adopts it: 3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired? Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right. (Citations and Exception omitted) 4 Bad faith in registration, under the traditional approach, may be proven inferentially. 5 The most cited example of this is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D , in which bad faith in registration was inferred from a combination of the respondent's selection of a famous and distinctive mark and lengthy non-use of the domain name. Some of the other bases for an inference of bad faith are set out in Net2phone Inc v. Delta Three Inc., WIPO Case No. D , fn and accompanying text. All of these cases, however, turned on Respondent's state of mind at the time of registration. 6 The Mummygold approach The panels who decided Mummygold and its progeny, 7 however, advance a different view of paragraph 4(a)(iii), and treat registered and used the domain name in bad faith as a unified concept. Under this method of analysis (the Mummygold approach ) a panel may determine that registration in bad faith under paragraph 4(a)(iii) may be established retroactively by subsequent bad faith use. (Mummygold; Octogen) The Mummygold cases cite two Policy provisions in support of this approach. The first is a registrant's representation and warranty in paragraph 2: 2. Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights. The Octogen panel interpreted this paragraph as follows: this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another's rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. (Emphasis in original) The second Policy underpinning is the set of non-exclusive examples of evidence of registration and use in bad faith set out in paragraph 4(b) of the Policy. The first three of these refer only to registration; the fourth refers only to use. Again quoting from Octogen, Under paragraph 4(b)(iv) of the Policy a respondent that uses the domain name to attract Internet users to its website or online location by creating a likelihood of confusion with the complainant's mark and its sponsorship of the website is acting in bad faith, without reference to the respondent's state of mind at the time that the registrant registered the domain name. Clearly, as under the Telstra analysis, in this Panel's view bad faith registration can be deemed to have occurred even without regard to the state of mind of the

130 WIPO Domain Name Decision: D of 6 9/25/2015 8:27 PM registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder, just as bad faith use can occur without regard to the fact that the domain name at issue has not been (or has been passively') used. The Mummygold approach has not to date been universally accepted. The panel in Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D , ably critiques, and declines to follow, the Mummygold approach. 8 This Panel views Mummygold's unified concept notion with skepticism. As this Panel sees it, the argument that paragraph 2 places upon a registrant a continuous obligation to avoid infringing use is to some extent inconsistent with ordinary principles of contract law. Representations and warranties are usually one-off statements, made as of a particular date. They may be repeated, to be sure, and they may impose upon their maker a continuing obligation. In this Panel's view, however, extending paragraph 2 to impose upon a registrant an affirmative duty continuously to monitor (for example) subsequently issued trademarks and modify website content accordingly would run counter to several principles that underscore the UDRP system, most notably simplicity and limiting use of the Policy to a narrow class of cases in which cybersquatting has been proven. To this Panel it seems that, taken to an extreme the Mummygold approach might without any action by the registrant render illegitimate (for purposes of the Policy) an activity at a website that had been in use for years without grounds for complaint a result that would go farther than United States trademark law. More importantly, that result might clash with other express Policy provisions, such as certain of the safe-harbor provisions of paragraph 4(a)(ii) and 4(c). In this Panel's assessment, the most formidable obstacle to the Mummygold approach is the language of paragraph 4(a)(iii) itself. The operative verbs in that provision are clearly conjunctive registered and used. The Internet Corporation for Assigned Names and Numbers (ICANN), when it adopted the Policy and the Rules, apparently made a conscious decision at the time of adoption to require two distinct infringing acts. (To be sure, that decision was taken at a time when the Policy was a new instrument, and without the benefit of hindsight of ten years of its subsequent operation.) The two distinct inquiries required under the UDRP have been criticized as a shortcoming that can countenance unscrupulous conduct, and has led in a few cases to a respondent that engaged in abusive use getting away with it because of insufficient proof of abusive registration. Several subsequently adopted Policy counterparts have declined to require bad faith in both registration and use for transfer. 9 Equally formidable an obstacle, in this Panel's opinion, is the (until recently) unbroken line of precedent, starting with some of the earliest cases decided under the Policy and followed regularly to the present, that has interpreted paragraph 4(a)(iii) as clearly and unequivocally requiring a showing of both registration and use. Development of a body of Policy panel jurisprudence has been a commendable objective in which much effort has and continues to be invested; see, e.g., WIPO Overview, paragraph 4.1 (emphasis supplied): Consensus view: The UDRP does not operate on a strict doctrine of precedent. However panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective and predictable manner for all parties. As this Panel sees it, whether intended or not, the Mummygold approach could impact an otherwise settled rule of decision on which all parties have relied for a decade. That rule of decision moreover defines a fundamental element of the Policy, and departing from our precedent in this matter could modify substantially Complainant's burden of proof especially under the third element of the Policy. That change in some cases could be the equivalent of an amendment to the Policy, in effect comparable to substitution of or for and in paragraph 4(a)(iii), that would result in changes in some subsequent cases. 10 As noted, if fully extended (assuming a complainant had proven the other elements of the Policy) it might result in transfer of a domain name without any action by its owner, simply because someone subsequently acquired or registered a trademark. It could encourage mark owners to overreach in Policy proceedings, something the traditional approach discourages. It could cause substantial changes to those who have built businesses in buying and selling domain names relying upon our precedent. They are among the all parties entitled to a fair, effective and predictable manner of resolution of Policy disputes. Substantially for the reasons expressed by the Validas panel, and those listed above, this Panel for now declines to adopt the unified concept approach of the Mummygold case. This Panel stated of the Mummygold approach in Hertz System, Inc. v. Kwan-ming Lee, WIPO Case No. D : This Panel is not presently prepared to read the few unified concept approach cases to say that any use in bad faith, even occasional conduct that fits squarely within one of the examples of bad faith in paragraph 4(b) of the Policy, as automatically establishing bad faith for purposes of paragraph 4(a)(iii). If it did, the clearly conjunctive language of paragraph 4(a)(iii) could be too easily circumvented. I shall go farther here: unless bad faith use subsequently to registration forms a basis for an inference of Respondent's bad faith at the time of registration, it cannot alone satisfy the complainant's burden of proof under paragraph 4(a)(iii) of the Policy. Renewal of a Domain Name Registration The conjunctive language of paragraph 4(a)(iii) is plain. Equally clear, on this Panel's reading, is the introductory clause of paragraph 2 that sets its applicability as a matter of contract. A registrant provides his undertaking By applying to register a domain name, or by asking [a registrar] to maintain or renew a domain name registration. This, unlike the covenant-type interpretation necessary for the Mummygold approach, is a typical one-time representation as of a discrete date, or rather successive discrete dates. Paragraph 2 does not distinguish among the initial date of registration and subsequent requests for renewal the undertaking by its terms applies as of all such dates. This reading may conflict with another line of precedent dating back to the Policy's early days, one that also finds its place as a Consensus View in the WIPO Overview, paragraph 3.7: Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether the domain name was registered in bad faith? Consensus view: While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name. The first case setting out this view is Teradyne, Inc.Teradyne, Inc. [sic] v. 4Tel Technology, WIPO Case No. D The panel in Teradyne held that the conjunctive nature of paragraph 4(a)(iii) trumped the introductory clause of paragraph 2. Unlike separate

131 WIPO Domain Name Decision: D of 6 9/25/2015 8:27 PM analyses of registration and use, there have been comparatively few subsequent cases expressly addressing this question. All this Panel has found have followed the Teradyne rule, usually without much further analysis. See Smart Design Llc v. Carolyn Hughes, WIPO Case No. D ; Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI ), WIPO Case No. D ; Gamer.tv Limited v. Bestinfo, WIPO Case No. D ; PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D The Panel in PAA Laboratories did so however only in deference to Policy precedent: In making its finding, the Panel wishes to clarify that its decision under this element is based on the need for consistency and comity in domain name dispute jurisprudence'. Were it not for the persuasive force of the cited decisions, this Panel would have expressed the view that paragraph 2 of the Policy demonstrates that references to registration' in the Policy were probably intended to be references to registration' or renewal of registration.' Absent the consistency of approach which has found favour with numerous earlier panels, this Panel would have seen no good reason for a renewal not to be considered as equivalent to registration' in the context of the objectives of the Policy. If the renewal had not been effected the disputed domain name would have lapsed and been available to others. The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in possession' long after the original registration would have expired. This Panel shares those reservations. For the reasons given in the last sentence of the quotation from PAA Laboratories, I doubt that ICANN intended that all renewals could be made without regard to a registrant's paragraph 2 undertaking. It is for that reason that panels (including this one) have in some cases found a transfer of ownership even among related entities to be a new or fresh registration for Policy purposes, see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D ( It might be argued that the conclusion in this case is unfair to Mr. Lutoborski or the Respondent. If a respondent has registered a domain name for a legitimate business purpose, and another business comes along that chooses to use the same name, should he not be allowed to take advantage of that fact? The answer to that question depends upon how exactly the domain name is used. If he merely intends to continue to do what he has always legitimately done, then it is difficult to see how that continued use could be characterised as use in bad faith. The problem is that the Mr. Lutoborski did not do this. Instead, he effectively abandoned his own prior use and actively sought to associate the Domain Name with the Complainant's business. This combined with the subsequent transfer of the Domain Name proved fatal to his case. ); BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D And treating a renewal the same as a registration comports with the language very plain and direct language of paragraph 2. In this Panel's view, the facts and circumstances of the present case provide a more compelling scenario than PAA Laboratories for revisiting the Teradyne rule. There the respondent's use of the domain name changed because of changed business circumstances (insolvency) not related to the domain name, and it could have been argued that respondent's subsequent offer to sell it (the act found to be use in bad faith) was part of the ordinary course of winding up the earlier business. Here, at the time of its most recent renewal last year Respondent's use of the disputed domain name had become prototypical cybersquatting and in no way related to any of Respondent's businesses. The change came about not through intervening circumstances unrelated to Respondent's prior good faith use but by Respondent's conscious choice to change website content. If Respondent's paragraph 2 representation and warranty were given in October 2009 it would have been knowingly false. To summarize, in this Panel's assessment: - Respondent intentionally changed its use of the disputed domain name. - The new use is unrelated to Respondent's earlier business. - The new use is textbook cybersquatting. - The new use occurred prior to the renewal held to be a registration subject to for purposes of paragraph 4(a)(iii). - There has been no legitimate use since renewal. The present case illustrates the problem that can arise from adhering rotely to Teradyne: so long as a Respondent that originally registered a domain name in good faith retains ownership it is free continuously and flagrantly to exploit Complainant's trademark license it to a competitor, perhaps without fear of a Policy proceeding. These consequences could of course be said to flow in part from the conjunctive language of paragraph 4(a)(iii). Yet in this Panel's considered opinion it is not unreasonable to temper those consequences by giving the plain language of paragraph 2 equal standing with the plain language of paragraph 4(a)(iii). Even though included as a Consensus View in the WIPO Overview this Panel's assessment is that the Teradyne rule enjoys comparatively less precedential support than the traditional rule of interpreting paragraph 4(a)(iii). As noted, the cases are few and most simply endorse the Teredyne case without extended discussion, and the most thoughtful discussion, in PAA Laboratories, questions the original rationale for the rule. This Panel's qualifying its application in the stark circumstances of the present case should have considerably less impact on UDRP proceedings and participants' conduct than (for example) adopting the Mummygold approach. This may not be a binary choice that a renewal will always be treated as a new registration. In other circumstances it might well be appropriate to continue to find otherwise infringing use still within the safe harbors of paragraphs 4(c)(i) or 4(c)(ii). The obvious case that comes to mind is when the respondent had nothing to do with the intervening circumstances that changed things a trademark is registered after initial registration but before renewal, and the use to which the respondent puts the domain name remains materially unchanged, for example. That is a matter for panels in future cases. Based upon the record in this proceeding, the Panel deems Respondent's 2009 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith for purposes of paragraph 4(a)(iii), and finds that the Respondent registered and used the disputed domain name in bad faith. The Panel further finds that Respondent's use of it to redirect to a website that includes hyperlinks to Complainant's competitors not legitimate under paragraph 4(a)(ii). 7. Decision

132 WIPO Domain Name Decision: D of 6 9/25/2015 8:27 PM For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sporto.com> be transferred to the Complainant. Richard G. Lyon Sole Panelist Dated: March 1, Respondent claims another use for the disputed domain name, as noted in Section 5-B. 2 Such a page is included as Exhibit 6 to the Complaint. Respondent acknowledges occasional use of the disputed domain name for pay-per-click purposes at this time. Response, paragraph Complainant describes these products as competitive with is own. To the Panel they appear to be Complainant's products. 4 The Exception in paragraph 3.1 is consistent with treating bad faith at registration and in use separately: bad faith may be found when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. (Emphasis supplied). 5 The inference may not be based strictly upon the United States trademark law doctrine of constructive notice, under which the public is presumed to have knowledge of USPTO-registered trademarks. See WIPO Overview, paragraph 3.4; Kellwood Company v. Onesies Corporation, WIPO Case No. D In this case there is little evidence of seeking a free ride on Complainant's marks at the time of registration or indeed for more than a decade thereafter. Respondent was not until 2008 engaged in any business related to sport footwear, and in 1997 (pre-policy, early days of Internet commerce) short, pithy domain names were eagerly sought (as indeed they continue to be). As Respondent notes, the disputed domain name consists of a common slang word in English and a dictionary word in other languages; this is not a case in which the only reasonable inference is that Respondent chose it to target Complainant. Respondent has provided evidence, albeit skimpy and not always internally consistent, of actual use of the disputed domain name for a sports-related business that had nothing to do with Complainant or Complainant's industry. 7 E.g., Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE ; and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-solutions, WIPO Case No. D ( Octogen ); Denver Newspaper Agency v. Jobing.com LLC, NAF Claim No ; Ville de Paris v. Jeff Walter, WIPO Case No. D ; Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi, WIPO Case No. D This Panel encourages the interested reader carefully to study the Mummygold cases set out in note 6 and the Validas case cited in the text, as he has of necessity abridged (and perhaps unwittingly not done full justice to) each panel's thoughtful analysis. 9 For example, paragraph 4(a)(iii) of the audrp requires only that a Complainant prove that the disputed domain name has been registered or subsequently used in bad faith, and the Working Group responsible for drafting it apparently did so to avoid the consequences of proving separately bad faith in registration and use. See < n4. 10 It bears repeating that the number of cases is likely to be small. See, e.g, Octogen, supra. In this Panel's opinion some of the Mummygold cases in which transfer was ordered, especially Denver Post and Country Inns, supra, included a factual basis for inferring bad faith at the time of registration. 11 See also Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D , for a similar holding in closely analogous circumstances.

133 NATIONAL ARBITRATION FORUM 1 of 7 9/25/2015 8:24 PM NATIONAL ARBITRATION FORUM DECISION eyecarecenter, O.D., P.A. v. Eye Care Associates, ODPA Claim Number: FA PARTIES Complainant is eyecarecenter, O.D., P.A. ( Complainant ), represented by T. Stewart Gibson, North Carolina, USA. Respondent is Eye Care Associates, ODPA ( Respondent ), represented by David E. Bennett, North Carolina, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <eyecarecenters.com>, registered with Wild West Domains, Inc. PANEL The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding. James A. Carmody, Terry F. Peppard, Darryl C. Wilson, Chair, as Panelists. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, On July 18, 2011, Wild West Domains, Inc. confirmed by to the National Arbitration Forum that the <eyecarecenters.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN s Uniform Domain Name Dispute Resolution Policy (the Policy ). On July 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2011 by which Respondent could file a Response to the Complaint, via to all entities and persons listed on Respondent s registration as technical, administrative, and billing contacts, and to postmaster@eyecarecenters.com. Also on July 20, 2011, the Written Notice of the Complaint, notifying Respondent of the addresses served and the deadline for a

134 NATIONAL ARBITRATION FORUM 2 of 7 9/25/2015 8:24 PM Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on August 9, An additional submission was timely received from the Complainant on August 15, 2011 and was deemed compliant with Supplemental Rule 7. An additional submission was timely received from the Respondent on August 17, 2011 and was also deemed compliant with Supplemental Rule 7. On August 16, 2011 pursuant to Respondent s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James A. Carmody, Terry F. Peppard, Darryl C. Wilson, Chair, as Panelists. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant contends that it has protectable rights in the word mark EYE CARE CENTER based on common law, state and federal statutory rights. Complainant states that it adopted the words eye care center over 30 years ago and has continuously used the terms in association with its business as a provider of optometry services. Complainant asserts that Respondent is a direct competitor of Complainant who maintains several websites and who registered and is using the disputed domain <eyecarecenters.com> in bad faith. Complainant contends that the disputed domain name is confusingly similar to Complainant s service marks eyecarecenter and EYE CARE CENTER in which the Complainant has rights. B. Respondent Respondent contends that Complainant has not established rights in the mark eye care center. Respondent instead asserts that Complainant s mark is generic. Respondent contends that Complainant s registrations should not be taken as recognition of the Complainant s rights and to the extent that any are recognized that Respondent s domain name is not confusingly similar to the Complainant s marks. Respondent further asserts that Complainant cannot establish rights in the name EYE CARE CENTER standing alone under common law. Respondent also stated that even assuming that Complainant has some rights in the alleged marks, that Respondent still has some right to use the mark in connection with its business. Respondent stated that it did not register the disputed domain with an intention of causing confusion but merely sought to increase the visibility of its services to netizens entering generic terms while searching the web for potential assistance with eye care matters. C. Additional Submissions

135 NATIONAL ARBITRATION FORUM 3 of 7 9/25/2015 8:24 PM Complainant s additional submissions consisted of an affidavit and exhibits on behalf of its current President. The submissions provided some additional history of the company along with a current snapshot of it competitive status relative to the Respondent and others in the optometric field in its geographical area and throughout the United States. The documents provided examples and detailed the expenditures made on Complainant s primary branding eyecarecenter or EYECARECENTER. The additional submissions also state that Complainant was unaware of the Respondent s disputed domain name until 2009 and that upon becoming aware promptly took action by filing a related complaint with the North Carolina Board of Optometry. Respondent s additional submission maintains that Complainant s Additional Submission fails, in all respects, to refute the core contentions of the Response and, at best, merely obscures the essential issues facing the Panel. The Respondent s additional submission then restates the principle arguments of its initial response arguing that Complainant has not shown it has rights in any protectable mark, that Respondent has a legitimate right in the disputed domain name, and that Complainant has not shown that the disputed domain was registered in bad faith. FINDINGS Complainant is Eye Care Center, O.D., P.A. ( ECC ), a professional corporation incorporated in the State of North Carolina on December 15, Complainant has 54 total company and franchised offices located in North and South Carolina employing 473 people including 83 optometrists. One industry trade publication ranked Complainant as 13 th in sales in the United States in Complainant claims a first use of the mark EYE CARE CENTER of January 1980 as reflected in its North Carolina State service mark registration for the mark OPTOMETRIC EYE CARE CENTER and its accompanying design. Additionally Complainant received a federal registration from the United States Patent and Trademark Office (USPTO) for the service mark EYECARECENTER and design on March 2, Complainant also registered the domain name <eyecarecenter.com> on January 13, 2002 and has maintained a website at that domain since March of the same year. Complainant claims to have spent millions of dollars on advertising over the past years to promote its services under the eyecarecenter brand. In 2010 approximately $1, 014,000 was spent on advertising Complainant s services in association with its marks. Complainant has used the marks eyecarecenter or EYECARECENTER in a wide variety of advertising contexts since 1980 and has also engaged in the licensing of its marks to various optometry practices since Respondent Eye Care Associates, O.D., P.A. ( ECA ), was formed in 1993 although it additionally identifies itself as a successor in interest to optometric businesses in continuous operation since Respondent currently owns and operates 20 eye care centers with over 245 employees of whom 28 are trained optometrists. It is ranked by one industry trade publication as the 20 th largest eye care provider in the United States. Respondent received a USPTO service mark registration for the mark EYE CARE ASSOCIATES on January 23, Respondent is Complainant s primary competitor for provision of optometric services both locally and regionally and has operated a website at the domain <eyecareassociatesnc.com> since That domain name is one of 23

136 NATIONAL ARBITRATION FORUM 4 of 7 9/25/2015 8:24 PM domains owned or controlled by Respondent all of which include some reference to ECA and/or its eye and vision care services expressly or by abbreviation. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant is the owner of state and federal service mark registrations for the mark EYECARECENTER in full or in part. The EYECARECENTER service mark federal registration was issued by the USPTO (for EYECARECENTER and Design mark, Reg. No. 3,754,126 filed June 12, 2009) on March 2, Such registration has been found by prior panels under the UDRP to confer rights upon a complainant. See Bloomberg L.P. v. Johnston, FA (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also AOL LLC v. AIM Profiles, FA (Nat. Arb. Forum May 20, 2007) ( Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy 4(a)(i). ). The Panel finds that Complainant has established rights in its EYECARECENTER mark under Policy 4(a)(i) through its registration of such with the USPTO, which dates back to the original filing date on June 12, See Hershey Co. v. Reaves, FA (Nat. Arb. Forum June 8, 2007) (finding that the complainant s rights in the KISSES trademark through registration of the mark with the USPTO date back to the filing date of the trademark application and predate [the] respondent s registration ); see also Planetary Soc y v. Rosillo, D (WIPO Feb. 12, 2002) (holding that the effective date of Complainant s trademark rights date back to the application s filing date). Complainant also submits evidence claiming common law rights in its mark dating back to 1980 based on its alleged first use date reflected in its North Carolina state service mark application. The Panel notes that the State of North Carolina registration contains the terms OPTOMETRIC EYE CARE CENTER with a design and does not reflect the issuance of a registration for the mark EYECARECENTER alone. Complainant does provide evidence of use of both of those marks in examples of advertising that has been used over the years dating back to 1994 to inform consumers of Complainant s services. The Panel takes note of Complainant s efforts and expenditures in advertising its services

137 NATIONAL ARBITRATION FORUM 5 of 7 9/25/2015 8:24 PM in association with its claimed marks and also the number of offices complainant has been operating in the region over the years since Complainant s inception. The Panel finds, based upon Complainant s arguments and submissions, that Complainant has demonstrated that it has some common law rights in the EYE CARE CENTER mark pursuant to Policy 4(a)(i). See Tuxedos By Rose v. Nunez, FA (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass n of Tex. Prof l Educators, Inc. v. Salvia Corp., FA (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years). Complainant also argues that the <eyecarecenters.com> domain name is confusingly similar to its EYECARECENTER mark. The Panel notes that the domain name contains Complainant s entire asserted mark, absent the spaces between the terms of the mark, while adding the letter s and the generic top-level domain ( gtld ).com. The Panel finds that the disputed domain name is confusingly similar to Complainant s mark under Policy 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int l Prop. Assocs., FA (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gtld do not establish distinctiveness from the complainant s mark under Policy 4(a)(i); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter s and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant s BARNESANDNOBLE.COM mark pursuant to Policy 4(a)(i)). While Respondent contends that the <eyecarecenters.com> domain name is comprised of common and generic or descriptive terms and as such cannot be found to be confusingly similar to Complainant s mark, the Panel finds that such a determination is not necessary under Policy 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant s mark. See Precious Puppies of Plorida, Inc. v. kc, FA (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent s generic terms arguments only under Policy 4(a)(ii) and Policy 4(a)(iii) and not under Policy 4(a)(i)). Complainant has proven this element. Rights or Legitimate Interests The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm t Commentaries, FA (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed

138 NATIONAL ARBITRATION FORUM 6 of 7 9/25/2015 8:24 PM domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met its burden. Respondent claims that its use of the disputed domain name is legitimate. Respondent asserts that it registered the <eyecarecenters.com> domain name on July 3, 2003, and has used the domain name to refer Internet users to its official website located at <eyecareassociatesnc.com>. Respondent argues many companies that offer optometry services use the term eye care centers to describe their business, and that Respondent merely took advantage of this term being available. The Panel finds that Respondent s use of the disputed domain name to direct Internet users to its official website is a bona fide offering of goods or services under Policy 4(c)(i). See Workshop Way, Inc. v. Harnage, FA (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Martello v. Cockerell & Assocs., FA (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent s use of the <skindeep.com> domain name to provide information on its derma pathology services was a bona fide offering of goods or services under Policy 4(c)(i) despite the complainant s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services). Respondent also argues that the terms of the <eyecarecenters.com> domain name are common and generic or descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees that Complainant s rights do not confer upon the Complainant the authority to prevent the Respondent from using the words eye care center. The Panel finds that Complainant s rights in the mark are limited and thus do not preclude Respondent from establishing its rights and legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii). See Qwest Commc ns Int l v. QC Publ g Grp., Inc., FA (Nat. Arb. Forum July 23, 2004) (stating that Complainant s rights in the QWEST mark are limited to its application to the tele-communications industry, where a variety of other businesses used the mark in unrelated fields). Without making any express determination on the validity of Respondent s assertions that Complainant s marks are generic, the Panel recognizes that the Complainant s marks are descriptive of the services provided by both parties. One who selects descriptive terms as their mark or brand may put sufficient time and money behind those terms to elevate them to a level of distinctiveness under the doctrine of secondary meaning, but that recognition and commensurate registration cannot take the words out of the common vernacular. The words may continue to be used by all to convey their standard meaning. In this instance despite the size, revenue, and overall sophistication of the parties there was clearly a lack of foresight in regards to selecting marks that did more than indicate the type of services provided. While the Complainant s specialized business acumen is reflected positively in the success of its operations, its practice and understanding in regards to its marks is clearly out of focus.

139 NATIONAL ARBITRATION FORUM 7 of 7 9/25/2015 8:24 PM Complainant has not proven this element. Registration and Use in Bad Faith Because the Panel concludes that Respondent has rights or legitimate interests in the <eyecarecenters.com> domain name pursuant to Policy 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA (Nat. Arb. Forum Jan. 18, 2007) ( Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith. ). Complainant has not proven this element. DECISION As Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant s requested relief shall be DENIED. Accordingly, it is Ordered that the <eyecarecenters.com> domain name REMAIN WITH Respondent. James A. Carmody, Terry F. Peppard, Darryl C. Wilson, Chair, Panelist Dated: August 30, 2011 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

140 1 of 4 9/27/2015 9:28 AM DECISION 800 Response Marketing, LLC v. Nalbant Holding AS Claim Number: FA PARTIES Complainant is 800 Response Marketing, LLC ( Complainant ), represented by Jeffrey Handelsman of Greenblum & Bernstein, PLC, Virginia, USA. Respondent is Nalbant Holding AS ( Respondent ), represented by Matthew Brown of UDRP POLICE DBS, London, UK. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <callfinder.com>, registered with Onlinenic Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. David A. Einhorn appointed as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the FORUM electronically on August 7, 2015; the FORUM received payment on August 7, On August 11, 2015, Onlinenic Inc confirmed by to the FORUM that the <callfinder.com> domain name is registered with Onlinenic Inc and that Respondent is the current registrant of the name. Onlinenic Inc has verified that Respondent is bound by the Onlinenic Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN s Uniform Domain Name Dispute Resolution Policy (the Policy ). On August 12, 2015, the FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 2015 by which Respondent could file a Response to the Complaint, via to all entities and persons listed on Respondent s registration as technical, administrative, and billing contacts, and to postmaster@callfinder.com. Also on August 12, 2015, the Written Notice of the Complaint, notifying Respondent of the addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent s registration as technical, administrative and billing contacts.

141 2 of 4 9/27/2015 9:28 AM A timely Response was received and determined to be complete on September 1, An Additional Submission was timely received from Complainant on Sept. 4, An Additional Submission was timely received from Respondent on Sept. 8, On Sept. 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the FORUM appointed David A. Einhorn as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the FORUM has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Policy 4(a)(i) Complainant has rights in the CALLFINDER mark through its registration with the United States Patent and Trademark Office ( USPTO ) (Reg. No. 4,050,640, registered on November 1, 2011). Respondent s <callfinder.com> domain name is identical to the CALLFINDER mark. Policy 4(a)(ii) Respondent is not commonly known by the <callfinder.com> domain name. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive use, and because, in the past, the website resolved to a parked page offering the domain for sale. Policy 4(a)(iii) Respondent registered and uses the <callfinder.com> domain name in bad faith because the domain was registered for the purpose of selling it for profit, and because its current inactive use is disruptive to Complainant s business operations. B. Respondent Policy 4(a)(i) Respondent s <callfinder.com> domain name was created on November 28, 1999, and as such, predates Complainant s USPTO registration by 12 years. Complainant has not demonstrated any common law rights in the disputed domain name, as Complainant s supposed long and continuous use of the disputed domain name is insufficient to show

142 3 of 4 9/27/2015 9:28 AM acquired distinctiveness. Policy 4(a)(ii) Respondent has not failed to use the <callfinder.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent is in the process of developing a resolving website. In addition, Complainant s rights in the CALLFINDER mark do not prevent Respondent from having rights or legitimate interests in the <callfinder.com> domain name because it is composed of generic terms. Policy 4(a)(iii) Respondent neither registered nor uses the <callfinder.com> domain name in bad faith, as the domain was registered 12 years prior to Complainant s USPTO registration. Because of this, Complainant s argument should be barred by the Doctrine of Laches. Further, Complainant s bringing this complaint constitutes reverse domain name hijacking. C. Additional Submissions Complainant s and Respondent s Additional Submissions provide additional case support for their arguments. FINDINGS AND DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant alleges it has rights in the CALLFINDER mark through its registration with the USPTO (Reg. No. 4,050,640, registered on November 1, 2011, filed on Nov. 2, 2010 and claiming first use date of June 15, The <callfinder.com> domain name was registered on Nov. 28, Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent s domain name is identical or confusingly similar to Complainant s marks. This provision necessarily implies that Complainants rights predate the registration of Registrant s domain name. See Intermark Media, Inc. v. Wang Logic Corp., FA (NAF Feb. 19, 2003). As Complainant has not demonstrated that its rights predate Registrant s domain

143 4 of 4 9/27/2015 9:28 AM name, Complainant has not satisfied paragraph 4(a)(i) of the Policy. Because the Panel has determined that Complainant has not satisfied this requirement of Policy 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain name or whether Respondent registered or used the domain name in bad faith. However, the Panel also determines that this finding of lack of Complainant s rights in the CALLFINDER mark as of the date of registration of Respondent s domain name negates any claim of bad faith registration of the domain name at issue by Respondent. See, LD Products, Inc. v. Viet Tech, FA (NAF Feb. 21, 2013). Reverse Domain Name Hijacking Complainant is a legitimate trademark owner who was attempting to improperly apply the Policy to a domain name which pre-dates its trademark rights. While this Panel notes that the filing of this Complaint and of the Additional Submission were ill-advised, this Panel cannot find, on the record before it, that the Complaint was filed in bad faith with the knowledge that it could not prove the requisite elements of the Policy. See, Netro Corporation v. James Koustas, FA (NAF June 12, 2002). ( This is a close call, but the Panel has determined not to find that Complainant has attempted a Reverse Domain Name Hijacking. True, the case was very weak and probably should not have been filed, but the facts do not justify a finding under Rule 15(c) ). Therefore, this Panel does not find Reverse Domain Name Hijacking based upon the evidence and pleadings submitted. DECISION Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <callfinder.com> domain name REMAIN WITH Respondent. David A. Einhorn, Panelist Dated: September 18, 2015 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

144 WIPO Domain Name Decision: D of 4 9/27/2015 9:18 AM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ramsey Mankarious v. Stanley Pace Case No. D The Parties The Complainant is Ramsey Mankarious of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Stobbs IP Limited, UK. The Respondent is Stanley Pace of Flower Mound, Texas, United States of America ("US"), represented by Howard M. Neu, Esq., US. 2. The Domain Name and Registrar The disputed domain name <mankarious.com> is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 26, On June 26, 2015, the Center transmitted by to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2015, the Registrar transmitted by to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 2, In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, The Response was filed with the Center July 20, The Complainant requested that the dispute be decided by a single-member Panel. Exercising its right under the Rules, paragraph 5(b)(iv) and (v), the Respondent requested a three-member Panel. In accordance with the Supplemental Rules, paragraph 8, the Center accordingly appointed Adam Taylor, Gabriela Kennedy and John Swinson as panelists in this matter on August 5, The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph Factual Background For some twenty five years, the Complainant has worked as an executive in major hotel investment businesses. Currently, the Complainant is chief executive of Cedar Capital Partners ("CCP"), a London-based specialist hotel investment firm which he founded in CCP acquires and manages hotels on behalf of investors.

145 WIPO Domain Name Decision: D of 4 9/27/2015 9:18 AM CCP's portfolio incudes the Savoy Hotel in London, the Four Seasons in Geneva and the Mandarin Oriental in Prague. The Complainant originally acquired the disputed domain name in February 2000 and used it for his business and personal address until it lapsed in 2015 apparently due an error by the Complainant's technology provider. The Respondent registered the disputed domain name on April 11, On April 20, 2015, the Complainant's agent ed the Respondent enquiring if the disputed domain name was for sale and, if so, at what price. The Respondent responded on May 1, 2015, asking simply: "What is your offer?" On May 5, 2015, the Complainant's agent replied saying that he would be prepared to offer "towards the lower end of the scale" and asking for "ball park figures". The agent sent a follow-up on May 15, As at the time of filing the Complaint, the disputed domain name resolved to a parking page with a link to a domain name marketplace, through which bids could be submitted to buy the disputed domain name. 5. Parties' Contentions A. Complainant The Complainant has established a global reputation as specialist in the luxury hotel investment industry, achieved through the Complainant's extensive activities whilst working within the hotel investment industry. As a result of his extensive and high-profile activities and positions, the Complainant has acquired a significant reputation in the name "Mankarious", which has become synonymous with his activities within the industry. He has become a renowned and very well-known personality. The Complainant regularly presents at high-profile conferences worldwide relating to the hotel investment industry and he has held board and advisory positions in high profile and influential organisations within the hotel and hospitality industry. The Complainant has authored numerous articles in high profile publications relating to the hotel industry. The Complainant's use of the disputed domain name for communications with high profile contacts has significantly contributed to the Complainant's reputation in the name "Mankarious". When the disputed domain name lapsed, the Complainant had been in the process of designing a website to be hosted at the disputed domain name which he intended to use for further profile-raising. The disputed domain name is identical to the name "Mankarious", in which the Complainant has acquired a significant business reputation over the past twenty five years. The Complainant has also acquired a significant reputation in the disputed domain name through his continuous and exclusive use of it over a fifteen year period. Given the Complainant's significant reputation in the name "Mankarious", there is no believable or realistic reason for the Respondent's registration or use of the disputed domain name other than to take advantage of the Complainant's established reputation. There is no evidence that the Respondent is preparing to use the disputed domain name in connection with any bona fide offering of goods or services or for any other purpose. So far as the Complainant is aware, the Respondent has acquired no rights or legitimate interests in the mark MANKARIOUS. The disputed domain name was registered or acquired by the Respondent primarily for the purpose of

146 WIPO Domain Name Decision: D of 4 9/27/2015 9:18 AM preventing the Complainant from continuing to use the disputed domain name in the way in which he had been using it for the previous fifteen years, and/or for the purpose of selling, renting or otherwise transferring the dispute domain name back to the Complainant for valuable consideration. The Respondent has engaged in a pattern of conduct of registering domain names in bad faith. B. Respondent A summary of the Respondent's contentions is as follows: The Complainant fails to refer to any registered or unregistered trade mark for "Mankarious". The Complainant claims a "significant business reputation" but the Complainant has not demonstrated that the name has become famous or that it has taken on a secondary meaning. The Respondent is in the business of registering and using surnames for address and has accumulated over 10,000 such domain names. Despite the correspondence between the parties regarding purchase of the disputed domain name, the Complainant suddenly filed the Complaint to obtain the disputed domain name at no cost. The Respondent was not aware of any alleged common law trade mark rights when he registered the disputed domain name and the Complainant has not provided any evidence indicating otherwise. The Respondent is located in Texas, US, and could not have registered the disputed domain name in bad faith. The Respondent has continuously parked the disputed domain name with a reputable aggregator and has used it to refer to only to websites that may be of interest for potential rentals, not to the Complainant's business. The Respondent did not register the disputed domain name to sell to the Complainant, disrupt its business, prevent it from registering its trade mark as a domain name or confuse customers. The Respondent acquired the disputed domain name because it comprises a common word with a meaning appropriate for a site and projects that it is developing. The Respondent parked the disputed domain name with Sedo while it is in development. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant relies on a "significant business reputation" in his surname "Mankarious" arising from his high-profile position and activities in the hotel investment industry overs some twenty five years as well as from his use of the disputed domain name for an address for fifteen years, before it accidentally expired and was registered by the Respondent in April Paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states as follows: "Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.

147 WIPO Domain Name Decision: D of 4 9/27/2015 9:18 AM However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights." The Complainant has supplied limited evidence in support of his claim to a "business reputation" but, even assuming for the moment that the Complainant's assertions are all true, there is still nothing to suggest that the Complainant's name has ever been used as a distinctive identifier of goods and services. On the contrary, the Complaint indicates that the Complainant has always provided his services in his capacity as an executive of various investment firms, none of which are named after him. On the evidence before the Panel, the Complainant falls squarely into the category of a businessperson (potentially) having a famous name but who does not actually use his/her name as an identifier for the business engaged in, which, as noted in paragraph 1.6 of WIPO Overview 2.0, is insufficient to constitute unregistered trade mark rights. The Panel therefore finds that the Complainant has failed to establish the first element of paragraph 4(a) of the Policy and considers it unnecessary to consider the other elements of paragraph 4(a). 7. Decision For the foregoing reasons, the Complaint is denied. Adam Taylor Presiding Panelist Gabriela Kennedy Panelist John Swinson Panelist Date: August 11, 2015

148 WIPO Domain Name Decision: D of 8 9/27/2015 9:37 AM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Emazing B.V. v. Joe Pierce Case No. D The Parties 1.1 The Complainant is Emazing B.V. of Baarn, Netherlands, represented by Van der Goen advocaten B.V., Netherlands. 1.2 The Respondent is Joe Pierce of Louisville, Kentucky, United States of America, self-represented. 2. The Domain Name and Registrar 2.1 The disputed domain name <emazing.com> (the Domain Name ) is registered with GoDaddy.com, LLC (the Registrar ). 3. Procedural History 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center ) on July 20, On July 20, 2015, the Center transmitted by to the Registrar a request for registrar verification in connection with the Domain Name. On July 21, 2015, the Registrar transmitted by to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy or UDRP ), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules ). 3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, The Response was filed with the Center on August 11, A supplemental filing was filed with the Center by the Complainant on August 19, The Center appointed Matthew S. Harris as the sole panelist in this matter on August 20, The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph Later that day the Respondent filed a supplementary filing in response to the Complainant s supplemental filing of August 19, Factual Background 4.1 The Complainant is a company founded in 2000 and based in the Netherlands. It has since that date

149 WIPO Domain Name Decision: D of 8 9/27/2015 9:37 AM provided various Internet-related services, including marketing and web design in the Netherlands and elsewhere in Europe. 4.2 The Complainant is the owner of the following trade marks: (i) Benelux registered trade mark filed on May 29, 2000 for the term Emazing in stylised text in classes 35, 41 and 42; and (ii) Community Trade Mark filed on November 20, 2003 for the word mark EMAZING in classes 35, 41 and 42; 4.3 The Complainant promotes its activities from a website operating from the domain name <emazing.nl>. The website is predominantly in Dutch. 4.4 The Respondent is an individual located in the United States. 4.5 The Domain Name was registered on June 7, Since 1998 the Domain Name has been used for a website that promoted a newsletter business that used the name Emazing. The operator of this site was ing LLC, a Kentucky Limited Liability Company of which the Respondent was a managing member, although rights in the Domain Name may not have passed to this company until April On April 26, 1999 Emazing LLC filed a trade mark application at the United States Patent and Trademark Office for the term Emazing. The application proceeded to grant on February 8, 2000 with registered trade mark no (the US Emazing Mark ). 4.7 On May 27, 1999 Emazing LLC sold its rights to the Domain Name and the US Emazing Mark to Emazing Inc, a subsidiary of Sony Music Entertainment and the Respondent was appointed Senior Vice President and General Manager of Emazing Inc. 4.8 On April 17, 2003 the Domain Name and associated business of Emazing Inc was acquired by Information Outfitters Inc, another company with which the Respondent was associated. Press coverage at this time characterised this transaction as: Emazing.com s founders [having] bought the assets of the company back from Sony Music Entertainment Inc. 4.9 The Emazing newsletter business was discontinued in September 2003, at which point a web page was displayed from the Domain Name that displayed a logo which took the form of a stylised red letter E in a yellow circle and a statement that Emazing was a registered trade mark of Information Outfitters Inc. Minor changes were subsequently made to this logo in about 2006, after which it took the following form:

150 WIPO Domain Name Decision: D of 8 9/27/2015 9:37 AM 4.10 In February 2012 the US Emazing Mark was subject to cancellation At some point after about May 2014 the references to Information Outfitters Inc on the webpage operating from the Domain Name were removed, leaving the logo identified at paragraph 4.9 above as the only thing displayed on the webpage. 5. Parties Contentions A. Complainant 5.1 The Complainant contends that the Domain Name is confusingly identical to the Complainant s registered trade marks. 5.2 The Complainant further contends that as the only use being made of the Domain Name is to display the logo identified at paragraph 4.9 above, the Respondent does not have a right or legitimate interest in the Domain Name for the purposes of the Policy and claims that the Domain Name is simply being held to make a profit by selling it to a party that does have a legitimate interest in the Domain Name. 5.3 Further the Complainant contends that the registration in this case is one of opportunistic bad faith. According to the Complainant: This is confirmed by the fact that the domain is identical to the well known trademarks of [C]omplainant and has no connection to [R]espondent, the fact that respondent must have had actual knowledge of the trademarks given the fact that Emazing is a well known company in Internet services and holder of the European Community trademark Emazing, and given the fact that it would be very easy for the [R]espondent to check the domain, trademarks and tradename on the Intermit, before registering [the Domain Name]. B. Respondent 5.4 The Respondent provides a relatively detailed description of when the Domain Name was registered and how it was used subsequent to registration. This is supported by printouts from the Internet Archive and other documentation, and this history has for the most part already been recounted in the Factual Background section of this decision above. The Respondent claims that the Domain Name has never been used for a business directed to persons in the Netherlands or the European Union. 5.5 The Respondent also claims that the Domain Name was used in recent years for the purpose of providing personal addresses for the Respondent and members of his family. This is said to provide the Respondent with a legitimate interest in the Domain Name. 5.6 Further, the history of the use of the Domain Name is said by the Respondent to demonstrate that the Domain Name cannot have been registered and used in bad faith. So far as registration is concerned, the Respondent relies upon the fact that the Domain Name was initially registered more than two years prior to the date the Complainant s business was founded. It also asks that the Panel make a finding of reverse domain name hijacking. C. The Parties Supplemental Submissions 5.7 Both Parties have submitted supplemental submissions in these proceedings. None of these were called for by the Panel. The position as to the admissibility of unsolicited supplemental submissions is addressed in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ( WIPO Overview 2.0 ) as follows: Consensus view: As the UDRP Rules grant the panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing, such filings, when received

151 WIPO Domain Name Decision: D of 8 9/27/2015 9:37 AM from a party, would typically be put before the panel upon the panel s appointment - at no additional charge - for determination as to admissibility, and assessment of need for further procedural steps (if any). Normally in such cases, a panel would include a ruling on admissibility of any such received filings in its decision, or in the event that an opportunity to reply is offered to the other party, in an administrative panel order. Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of exceptional circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order. 5.8 In large part the supplemental submission of the Complainant comprises argument that attempts to counter various points made by the Respondent in the Response. However, there is one key additional piece of evidence that the Complainant seeks to raise in this document; namely that on October 21, 2003 the Respondent sent an (describing himself as the CEO of Information Outfitters Inc) to the Complainant s lawyer that read as follows: I just received your letter regarding the EMAZING.COM domain. We have operated an newsletter publishing EMAZING.COM since July Additionally, we hold a registered trademark on the term EMAZING in the United States. This mark ( ) was granted by the United States Patent and Trademark Office on February 8, If you re interested in extending an offer for the domain and trademark, we re more than willing to listen. However, please know that the offer would have to be substantial. 5.9 No attempt is made in the supplemental submission to explain why this could not have been brought to the attention of the Panel in the Complaint. Accordingly, the Panel would have been entitled to simply ignore this material. In fact, for reasons that the Panel will go on to explain, the Panel has formed the view that this material even if admitted to these proceedings undermines rather than assists the Complainant in this case. It, therefore, is prepared to allow this into these proceedings There is no need for the Panel to record the contents of the Respondent s supplemental submission in response to the Complainant s supplemental submission save to record the fact that the Respondent contends (as is already reasonably obvious from the text of the October 21, ) that the Respondent in sending that was responding to an approach made by the Complainant to the Respondent at that time. 6. Discussion and Findings 6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). 6.2 The Panel will address each of these requirements in turn and then address the Respondent s allegations of

152 WIPO Domain Name Decision: D of 8 9/27/2015 9:37 AM reverse domain name hijacking. A. Identical or Confusingly Similar 6.3 The Complainant has registered trade mark rights in at least one word trade mark for the term Emazing. The Domain Name takes the form of that term in combination with the.com Top-Level Domain. Given this, the Domain Name is clearly confusingly similar, if not identical, to that trade mark. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests 6.4 The Respondent puts forward a case to the effect that although the Domain Name has not in recent years been used to promote any goods or services, it has been used as part of addresses for the Respondent and members of his family. This is said to provide a right or legitimate interest for the purposes of the Policy. 6.5 However, given the Panel s findings so far as bad faith is concerned, it is not necessary to consider this issue further. C. Registered and Used in Bad Faith 6.6 At first sight the question of whether there has been bad faith registration in this case appears to be very simple. The Respondent (or perhaps a company with which the Respondent was connected), registered the Domain Name not only before the Complainant possessed any registered trade mark rights but before the Complainant had even been created. Except in limited circumstances (see e.g. WIPO Overview 2.0, paragraph 3.1). There cannot be bad faith registration where the domain name registrant could not know of the existence of the complainant or its likely rights because neither the complainant nor its rights yet existed and had no knowledge that the complainant or those rights were likely to come into existence. 6.7 The position is, however, a little more complicated than this. The reason is that according to the Respondent s own case, ownership in the Domain Name has been transferred on a number of occasions. As is recorded in paragraph 3.7 of the WIPO Overview 2.0, transfer of a domain name to a third party does amount to a new registration. Who or what constitutes a third party has been the subject of some debate among UDRP panels, but this Panel has tended to adopt a strict view on this issue. In the opinion of the Panel a transfer to a separate legal entity will constitute a fresh registration for the purposes of the Policy, even if that separate legal entity has close connections with the person in whose name the domain name was previously registered. The reasons for this were explained at some length by the Panel in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D , where it held that a transfer to a corporate entity was a fresh registration even though that corporate entity appeared to be the corporate alter ego of the previous registrant. 6.8 Although the Respondent has provided a detailed and very helpful explanation of how the Domain Name has been used since initial registration, there is no explanation or disclosure of when exactly the Domain Name formally transferred on the WhoIs register into the name of the Respondent. Nevertheless, even if one assumes in the Complainant s favour this was relatively recent, and perhaps even after the correspondence between the Complainant and the Respondent in October 2003, referred to in the parties supplementary submissions, the Panel is not persuaded that such registration was in bad faith. 6.9 The reason is that it is clear not only that the Respondent (or perhaps a company with which the Respondent was connected) registered the Domain Name before the Complainant existed but it was then used for a genuine business in the United States that lasted (albeit it would appear under different corporate ownership) for a significant number of years. That business appears to have come to an end as long ago as September 2003, but it is a business with which the Respondent was closely associated and it is not surprising that the Respondent might want to acquire the Domain Name that had been used for and incorporated the name of that business.

153 WIPO Domain Name Decision: D of 8 9/27/2015 9:37 AM 6.10 In the ehotel case mentioned supra, the Panel held that the transfer to a new corporate entity was in bad faith for the following reasons: Ultimately, the Panel is of the view that regardless of what may have been the original motivations for the registration of the Domain Name, by March 2004 [i.e., the date of transfer to a new corporate entity], [the previous registrant of the relevant domain name and the person who controlled the new corporate entity] had come to the conclusion that the real value to him of the Domain Name lay in taking advantage of its associations not with any business of his own but with the Complainant s business The Panel is unconvinced that it was with similar motives in mind that the Domain Name was transferred into the hands of the Respondent. The term emazing in the Domain Name can be read as portmanteau of the words and amazing. Presumably it was for this reason that the term emazing was initially adopted for a newsletter business. Even if the Complainant s business activities would result in many (European) Internet users associating that term with the Complainant (and the Panel notes that the Complainant has filed no evidence which would support that conclusion), there would still be potential uses of the term emazing in future that would or could take advantage of that portmanteau meaning and which would not in some way trade off of that reputation The fact that in October 2003 there was an exchange of correspondence between the Parties in which the Respondent expressed a willingness to consider offers to sell the Domain Name to the Complainant, does not improve the Complainant s case. As the Respondent points out, it was the Complainant that approached the Respondent. This occurred only a month after the business use of the term emazing had ceased. It is a document that is consistent with the Respondent s case as to how the Domain Name had up to that time been used. Further, the fact that the Respondent was prepared to consider offers for that name (together with the then still extant US Emazing Mark) at that time is neither surprising nor suspicious Even if one were to accept that from this date the Domain Name was held with a view to its possible subsequent sale to others that would not justify a finding of bad faith. The holding of a domain name for the purposes of sale is not per se in bad faith. What is required is for the Complainant to show that the Respondent acquired and then held that Domain Name with a view to taking some unfair advantage of the reputation of the Complainant s marks (whether through by sale to the Complainant or its competitors or otherwise). The October 2003 correspondence gets nowhere near showing this. Further, there is no evidence before the Panel that at any time after that correspondence the Domain Name has been used in a manner that takes some unfair advantage of the reputation of the Complainant s marks 6.14 Given this the Complainant has failed to show that the Domain Name was registered or used in bad faith and has failed to make out the requirements of paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking 6.15 The Respondent has requested that the Panel make a finding of reverse domain name hijacking in this case. Paragraph 4.17 of the WIPO Overview 2.0 summarises what UDRP panels have generally considered to be the circumstances in which a finding of reverse domain name hijacking may be made. In particular, it states, inter alia, as follows: Paragraph 15(e) of the UDRP Rules provides that, if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Reverse Domain Name Hijacking is defined under the UDRP Rules as using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.

154 WIPO Domain Name Decision: D of 8 9/27/2015 9:37 AM WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant s lack of relevant trademark rights, or of the respondent s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g., in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances. WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP; the complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint [see further discussion regarding refiled complaints in paragraph 4.4 above] or otherwise misled the panel; a respondent s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [see further paragraph 3.1 above with respect to bad faith and complainant trademark rights which post-date domain name registration]. The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence. WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where: the complainant has succeeded in establishing each of the three essential elements required under the UDRP; the complainant s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint; there is a question of clean hands or factual accuracy on the part of both parties; the respondent s website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or there appears to be another relevant factual basis for filing the complaint The Complainant or its advisors must have known from the start that the Domain Name was registered before the Complainant s business even came into existence. This would have been apparent from the WhoIs registration details that were included by the Complainant as an Annex to the Complaint For the reasons that have been explained in the context of bad faith above, this of itself would not inevitably have been fatal to the Complainant s case. Even if the initial registration could not have been in bad faith, the Complainant might have argued that a subsequent transfer constitutes a fresh registration in bad faith. However, the Complainant should have known that if it was to succeed in these proceedings, this was an issue that needed to be directly addressed. The Complainant did not do so. Indeed, the issue of transfer only raised its head at all because of the detailed and helpful description of events that was provided by the Respondent in his Response Further, there is the from the Respondent in October Even if in October 2003 the Complainant had been unaware that the Domain Name had previously been used in connection with a United States business that used the term emazing, this would have made this clear. Indeed, the Respondent even provided details of the trade mark that had been registered in the United States in that term in respect of that use That was not disclosed in the Complaint and no attempt was made in the Complaint to disclose or

155 WIPO Domain Name Decision: D of 8 9/27/2015 9:37 AM address the previous use of the term emazing. Although that was sent over twelve years ago, there has been no material change in the use of the Domain Name since that date. Therefore, the Panel considers the failure to disclose the or address this issue to be a significant and material omission on the part of the Complainant. No excuse or explanation is offered for that failure in the Complainant s supplementary submission Therefore, in short, these proceedings were commenced by the Complainant when it or its advisors should have known that the Complainant would have difficulty in showing bad faith registration and where it had in its possession, but initially decided not to disclose, correspondence that not only was relevant to the question of bad faith, but tended to undermine its case in this respect. Given this, the Panel concludes on the balance of probabilities that these proceedings were commenced speculatively with little belief that on any proper analysis they had a real prospect of success Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. This Respondent s allegation of reverse domain name hijacking is made out. 7. Decision 7.1 For the foregoing reasons, the Complaint is denied. Matthew S. Harris Sole Panelist Date: August 25, 2015

156 WIPO Domain Name Decision: D of 6 9/27/ :34 AM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center Case No. D The Parties Complainant is Pick Enterprises, Inc. of Yarmouth, Maine, United States of America (the United States ), represented by the law firm Bernstein Shur, United States. Respondent is Domains by Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States / Woman to Woman Healthcare of Norton, Massachusetts, United States / Just Us Women Health Center f/k/a Woman to Woman Health Center of North Attleboro, Massachusetts, United States, internally represented. 2. The Domain Name and Registrar The disputed domain name <womantowomanhealthcenter.com> is registered with GoDaddy.com, LLC (the Registrar ). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center ) on August 1, On August 1, 2012, the Center transmitted by to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2012, the Registrar transmitted by to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an communication to Complainant on August 6, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 7, The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy or UDRP ), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules ). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 8, In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, The Response was filed with the Center on August 23, The Center appointed Richard G. Lyon as the sole panelist in this matter on September 18, The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

157 WIPO Domain Name Decision: D of 6 9/27/ :34 AM 4. Factual Background Complainant provides health care services to women under the name Women to Women. It appears from Complainant s principal website (though not from the Complaint) that its business involves a wellness program undertaken by its customers, women located throughout the United States, from their homes, using a program devised and tested by Complainant and assisted by personal contact when appropriate. Complainant holds six trademarks registered on the Principal Register of the United States Patent and Trademark Office (USPTO) that include as their dominant feature WOMEN TO WOMEN: one registered in 1997, one in 2001, one in May 2009, two in February 2010, and one in September The earliest of these has a first use in commerce of Complainant operates a clinic in Yarmouth, Maine, United States. Respondent operates a clinic in North Attleboro, Massachusetts, United States, offering certain specified medical services to women. Respondent was founded in 2011 under the name Woman to Woman Health Center by two female nurse practitioners who have been duly certified by the Commonwealth of Massachusetts as Women s Healthcare Nurse Practitioners. In late 2011 Complainant s counsel sent Respondent a demand letter, asserting Complainant s superior rights in WOMEN TO WOMEN and notifying Respondent that Complainant intended to contact Respondent about its intellectual property. Following correspondence between counsel for the parties, Respondent agreed to change its business name to Just Us Women Health Center, which Respondent proceeded to do. Other aspects of the settlement discussions are discussed in Section 6-B below. Both parties agree that during their discussions Complainant requested transfer to it of the disputed domain name and that Respondent refused to do so. When the Panel accessed the disputed domain name he was automatically redirected to <justuswomenhc.com> and viewed a page describing Respondent s clinic and its services. 5. Parties Contentions As the Panel resolves this case based only upon the Complaint, only Complainant s contentions are set out in this Decision. Certain factual matters and evidence provided in the Response are noted in Section 6-B. Complainant contends as follows: 1. Complainant holds incontestable rights in WOMEN TO WOMEN by reason of its USPTO-registered trademarks. The disputed domain name is confusingly similar to these marks, incorporating as its dominant feature the singular form of the marks. 2. Respondent is not now known as WOMAN TO WOMAN and, because of Complainant s earlier trademarks, had no right to be known by that name prior to its name change. Accordingly, it appears that Respondents are intentionally attempting to attract internet users to its site by creating a likelihood of confusion with the Complainant s trademark as to affiliation and source. 3. As to registration and use in bad faith, the Panel quotes Complainant s contentions in full: As discussed in VI.B. above, Respondents had both constructive and actual knowledge of the Complainant and its trademark rights, and it selected a confusingly similar, nearly identical domain name to market its directly competitive services. These activities demonstrate Respondents bad faith in registering and using the womantowomanhealthcenter.com domain. Upon Complainant s information and belief, Respondents intentionally attempted to attract internet users to its site by creating a likelihood of confusion with the Complainant s WOMEN TO WOMEN trademark as to the source, sponsorship, affiliation, or endorsement of its womantowomanhealthcenter.com website and the

158 WIPO Domain Name Decision: D of 6 9/27/ :34 AM services advertised therein. Respondents attempts to use the goodwill and reputation associated with Complainant s trademark for its own commercial benefit demonstrates bad faith on the part of Respondents. This bad faith is highlighted by its continued and unnecessary use of the domain name after implementation of a new business name that is dissimilar to the disputed domain name. 6. Discussion and Findings As provided in paragraph 4(a) of the Policy, to earn a transfer of the disputed domain name Complainant must establish, by a preponderance of the evidence, each of the following: (i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. In this proceeding the Panel looks no further than the Complaint to determine that Complainant has not proven that Respondent registered the disputed domain name in bad faith. A. Registered in Bad Faith Panels in UDRP proceedings have generally declined to adopt the United States doctrine of constructive notice to the bad faith requirement. Absent other indicia of cybersquatting or special circumstances not present in this case, a complainant must normally show that the domain name registrant was actually aware of the complainant and its mark and selected the domain name to take some advantage of the mark and any good will attached to it. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ( WIPO Overview 2.0 ), paragraph 3.4, and cases there cited. As with any other Policy element, actual knowledge and targeting must be proven with competent evidence. Complainant provides no evidence of any kind that Respondent knew of Complainant or its mark when Respondent registered the disputed domain name in October The only basis cited in the Complaint besides the legal notion of constructive notice is a reference to Complainant s demand letter in December 2011, fourteen months after registration of the disputed domain name. While Complainant (as complainants in these cases are wont to do) duly pleads that its mark is well-known, it provides no evidence to back up its conclusionary assertion of Respondent s actual knowledge. In fact Complainant s mark consists of an everyday phrase that has obvious descriptive qualities a relatively weak mark for purposes of establishing Respondent s knowledge of it prior to registration of the disputed domain name. There is likewise no evidence, even of facts that if found true by the Panel might allow an inference of bad faith, to support the information-and-belief legal conclusion, quoted above, that Respondent selected the disputed domain name expressly to target Complainant, or otherwise to allow the Panel to infer that Respondents in fact had actual notice. The only evidence provided by Complainant is a screen shot of Respondent s website, which 2 makes no reference to Complainant and describes a purely local business whose services are reasonably 3 accurately described by its registered business name. The Complaint fails for lack of evidence under paragraph 4(a)(iii). B. Reverse Domain Name Hijacking. Panel s Initiative in Considering Reverse Domain Name Hijacking. On his own initiative the Panel considers whether Complainant has engaged in Reverse Domain Name Hijacking (RDNH). This Panel firmly believes a UDRP panel may make this inquiry in an appropriate case even if not so requested by the respondent, and

159 WIPO Domain Name Decision: D of 6 9/27/ :34 AM indeed should do so fully to discharge its obligations under the Rules, see Goway Travel Limited v. Tourism Australia, WIPO Case No. D (citation omitted) ( The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. ), and to preserve the integrity of the UDRP process, see Credit Europe Bank N. V. v. Peter Yu, WIPO Case No. D (concurring opinion); Bittorrent Marketing GmbH v. Adlntensity Ltd, Adam Smith, WIPO Case No. D (opinion dissenting from denial of RDNH). Factual Background. To understand the Panel s discussion of RDNH it is necessary to furnish the pertinent details of the parties discussions regarding Respondent s change of business name. The following is taken from the Response and annexes submitted with the Response, all consisting of or written communications between counsel for the parties. 4 Neither party submitted an agreed settlement agreement and the correspondence indicates that the parties had not yet agreed all terms of a settlement. In mid-march 2012 Respondent s counsel advised Complainant s counsel that its client would change its name and that for a one year period [after the name change] it will link [the disputed domain name] to its new web address, so its patients can access the correct site. Complainant s counsel replied by demanding a transfer of the disputed domain name within 5 business days. discussions continued through late June, with the parties remaining unable to agree on a domain name transfer; according to the record at no time did Respondent agree to transfer the disputed domain name. Worthy of note is Complainant s counsel s threat to institute a Policy proceeding to recover the disputed domain name and Respondent s counsel s succinct (and prescient) reply: Your client [Complainant] won t prevail on a UDRP claim. RDNH Standard. Paragraph 15(e) of the UDRP Rules provides that, if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Reverse Domain Name Hijacking is defined under the UDRP Rules as using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name... WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP. WIPO Overview 2.0, paragraph Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH. See, for example, Mile, Inc. v. Michael Burg, WIPO Case No. D ; Liquid Nutrition Inc. v. liquidnutrition.com/vertical Axis Inc., WIPO Case No. D However a finding of RDNH is always within the Panel s discretion, see Rudy Rojas v. Gary Davis, WIPO Case No. D (facts justified RDNH but panel determined to leave the parties as it found them ). Application to this Case. In his concurring opinion in Credit Europe, cited above, this Panel stated: [t]he Policy has been in force for more than a decade and the thousands of cases decided under it now constitute a workable body of (to use a legal term) precedent. In my opinion any complainant, and even more so any professional representative of a complainant, should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves. In this case Complainant or its representative has simply ignored three longstanding Policy precedents, two of which are recorded as Consensus Views in the WIPO Overview 2.0 and the other of which in this Panel s opinion approaches that status. The most serious such issue is the requirement that allegations in a complaint must be proven, not merely stated; paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. WIPO Overview 2.0, paragraph 4.6, Consensus View; see also Policy, paragraph 4(a) ( [i]n the administrative proceeding, the complainant must prove that each of these three

160 WIPO Domain Name Decision: D of 6 9/27/ :34 AM elements are present ) and Rules, paragraph 3(b)(xv). Here there is no proof at all of registration in bad faith, and almost no proof of use in bad faith. 5 While Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP (Id., paragraph 3.4) is not designated a Consensus View it is at the very least a default rule, variation from which requires explication, supported by evidence, from one who pleads it. Notwithstanding its certification in the Complaint, required by paragraph 3(b)(xiv) of the Rules, that that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument, Complainant offers the Panel no reason why in this proceeding the Panel should depart from or modify Policy precedent. The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable. The matters identified in the preceding paragraph are not Policy arcana; each is a precedent of long standing and derived from scores of cases, and each addresses a fundamental Policy requirement. Rule 11(b) of the Federal Rules of Civil Procedure, echoed in paragraph 3(b)(xiv) of the UDRP Rules, provides: (b) Representations to the Court. By presenting to the court a pleading, written motion, or other paper whether by signing, filing, submitting, or later advocating it an attorney or unrepresented party certifies that to the best of the person s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances: (1) it is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; (2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law; (3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery. Maine has a similar provision, see Rule 11(a) of The Maine Rules of Civil Procedure. In this Panel s opinion in a Policy proceeding paragraph 3(b)(xiv) of the Rules demands no less of an undertaking and no less pre-filing diligence. Honoring any of these undertakings requires at a minimum an inquiry reasonable in the circumstances which, as I have stated, includes being or becoming at least minimally versed in the relevant precedent and procedure. Complainant s representative has not met that minimal standard in this case. The settlement discussions bear on RDNH for two reasons. First, the attorney who signed the Complaint was the same person who was representing Complainant in the discussions, and so was fully aware of the factual background that preceded the filing of the Complaint. There is nothing in the Response that Complainant s representative was not aware of before making his Rules paragraph 3(b)(xiv) certification; there can be no 6 excuse based upon information solely within the control of Respondent. Second, given the circumstances of this case, especially the dearth of evidence supporting the Complaint, it is difficult to avoid an inference that the Complaint was filed at least in part not to obtain the disputed domain name but rather to increase negotiating leverage in the settlement discussions, a highly improper purpose. Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D Regardless of actual intent, Respondent has been put to time and expense to address a Complaint that the Panel finds objectively groundless, one as to which this Panel believes the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP. These circumstances justify a finding of RDNH in this case, which the Panel accordingly makes.

161 WIPO Domain Name Decision: D Decision For the foregoing reasons, the Complaint is denied. Richard G. Lyon Sole Panelist Dated: September 22, The amended Complaint substituted the name of the domain name holder in place of the proxy service used by Respondent. All references in this Decision to the Complaint are to the amended Complaint. 2 While Respondent s clinic is less than 200 miles from Complainant s, Complainant does not provide evidence to support direct competition between the two clinics. 3 Respondent asserts that it selected its business name in part because Woman to Woman was available both as a business name in the Commonwealth of Massachusetts and as a.com domain name. 4 Complainant submitted only its December 12, 2011 demand letter. 5 Registration and use in bad faith must be separately proven (WIPO Overview 2.0, paragraph 3.1, Consensus View). 6 Compare Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D , cited later in the text above, in which the complainant only learned of certain matters from the response. 6 of 6 9/27/ :34 AM

162 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION East End N.Y. Imports Inc. v. DYNAMO.COM, c/o Privacy Protection and Autorenewal Case No. D The Parties Complainant is East End N.Y. Imports Inc. of Dayton, New Jersey, United States of America ( United States ), represented by Gordon & Jacobson P.C., United States. Respondent is DYNAMO.COM, c/o Privacy Protection and Autorenewal of Austin, Texas, United States, represented internally. 2. The Domain Name and Registrar The disputed domain name <modway.com> (the Domain Name ) is registered with enom (the Registrar ). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center ) on June 12, On June 12, 2015, the Center transmitted by to the Registrar a request for registrar verification in connection with the Domain Name. On June 15, 2015, the Registrar transmitted by to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy or UDRP ), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules ). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 19, In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, The Response was filed with the Center on July 9, On July 15, 2015, the Center received a supplemental filing from Complainant. The Center appointed Christopher S. Gibson, Andrew F. Christie and Tony Willoughby as panelists in this matter on August 6, The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On August 11, 2015 the Panel issued Procedural Order No. 1 requesting that Respondent file an amended response to conform to the Supplemental Rules; in particular, Supplemental Rules paragraph 11(b) provides that the word limitfor a response shall be 5,000 words. Respondent s amended response therefore was directed to be shortened to comply with this Rule. The Panel s Order also stipulated that following the filing of an amended response, the Panel will not accept any unsolicited supplemental filings from either Party. Respondent filed its Amended Response (with attachments) on August 14, The Amended Response

163 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM complies with the Supplemental Rules. Regarding the supplemental filing of Complainant received on July 15, 2015, the Panel has determined that in view of the lengthy initial submissions filed by Complainant and Respondent in this case, there is no need to consider Complainant s supplemental filing. 4. Factual Background Complainant is the owner of the trademark, MODWAY, which was registered on April 1, 2014 by the United States Patent and Trademark Office ( USPTO ) as registration No. 4,507,008. The trademark certificate for the MODWAY mark indicates that it was first used in commerce on April 1, 2012, with the trademark application filed on December 6, The trademark is registered in class 20 covering furniture for house, office and garden. Respondent is a company founded in 2005 that executes name conception, logos and brand graphics, trademark research, and promotional copy for startups and corporations. Respondent holds numerous generic and coined terms as domain names for use in its business. The homepage of Respondent s website at contains a graphical showcase of its name creation and logo work product, including the Centrino name for Intel, the logo for Wiki.com and the AquaBella name for Trump Enterprises, among others. The Domain Name was registered by Respondent on May 3, The Parties do not dispute that the Domain Name, for many years and at all relevant times for purposes of this dispute, has resolved to a blank webpage. 5. Parties Contentions A. Complainant (i) Identical or confusingly similar Complainant submits that it has rights in its trademark, MODWAY, which was registered in the United States on April 1, 2014 covering furniture for home, office and garden. Complainant states that the relevant part of Respondent s Domain Name is the term modway, which is identical to Complainant s trademark. Complainant contends that UDRP panels in cases such as this have consistently found that the domain name in dispute is identical to the complainant s trademark. (ii) Rights or legitimate interests Complainant states that prior to the notice it provided to Respondent, there was no evidence of Respondent s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Complainant asserts that Respondent does not appear to be using the Domain Name in any manner, let alone in connection with a bona fide offering of goods or services. Further, based upon Respondent s admissions to Complainant, Respondent has always pointed the Domain Name toward a blank white webpage. Complainant states that Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Name, nor has Complainant given Respondent permission to use its trademark. Instead, Complainant claims Respondent has been commonly known by its domain name, <dynamo.com>. (iii) Registered and used in bad faith Complainant has made lengthy arguments in support of its claim of Respondent s bad faith registration and use of the Domain Name. Complainant urges that Respondent has cybersquatted on the Domain Name for over a decade. Complainant s arguments are summarized below. Complainant states that Respondent registered the Domain Name on May 3, 2005, but contends that it has never been used in connection with a bona fide offering of goods or services. On or about April 1, 2012,

164 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM Complainant first used its MODWAY trademark in commerce. On several dates commencing in January 2012 until November 12, 2012, Complainant and Respondent exchanged s including a draft contract by which Respondent offered to sell the Domain Name to Complainant for USD 25,500, a sum asserted to be in excess of Respondent s out-of-pocket costs directly related to the Domain Name (Complainant estimates that out-ofpocket costs directly related to the Domain Name have been between USD 8 and 30 per year). On April 1, 2014, Complainant s trademark MODWAY was registered with the USPTO. Complainant s attorney sent a letter on August 21, 2014 to Respondent with terms of a counteroffer to purchase the Domain Name for USD 7,500. On October 8, 2014, Complainant received Respondent s rejection of Complainant s counteroffer. On December 8, 2014 Complainant s attorney sent another letter to Respondent with terms of an offer to purchase the Domain Name for USD 5,000. Complainant s letter also gave Respondent notice that any renewal of the Domain Name beyond May 3, 2015 (the end date of Respondent s initial ten year registration) would constitute a fraudulent renewal because it would infringe on Complainant s rights. On December 9, 2014, Complainant s attorney received an from Respondent rejecting Complainant s offer. Complainant claims that Respondent s contained threats, which are illustrative of a pattern of bad faith dealing by Respondent. On or about May 3, 2015, Respondent renewed the Domain Name for a year until May 3, Complainant contends that from these facts, it is possible to infer that the Domain Name was registered and used primarily for the purpose of selling it for valuable consideration in excess of out-of-pocket costs directly related to it. The price that Respondent offered Complainant for sale of the Domain Name was USD 25,500, which is in excess of the sum of USD 330, a figure based on an estimated USD 30 annual registration costs over eleven years. Complainant cites Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy s Antiques, WIPO Case No. D , a case decided in favor of the complainant. Complainant argues that Mondich is similar because the UDRP panel there found that the respondent s (i) failure to make good faith use of the domain name and (ii) offer to sell it, combined with the respondent s failure to submit evidence rebutting complainant s allegations, supported the complainant s claim of bad faith registration and use. In Mondich, the respondent failed to make use of the domain name for a period of two years, whereas in this case Complainant contends that Respondent has not made bona fide use of the Domain Name for more than ten years. Responding to the argument (made by Respondent in an to Complainant dated December 9, 2014) that there can be no bad faith registration because Respondent registered the DomainName before Complainant registered its trademark, Complainant states that in Mondich, the UDRPpanel did not base its decision on whether the date of registration of the domainnamepredated registration of the trademark. There was no record of the date of registration of the trademark in that case. Complainant further asserts that Respondent s position on this point is contrary to the Policy as well as prior UDRP decisions taking into account such temporal fact patterns. Complainant argues that Respondent s position seeks to construe the Policy so that it confers rights on trademark owners without any remedy in the face of cybersquatting, which cannot be what the drafters of the Policy intended. Complainant states that panelists in various UDRP cases have found bad faith domain name registrations, even when the domain name was registered prior to registration of the relevant trademark. Citing paragraph 4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ( WIPO Overview 2.0 ), Complainant states that the UDRP does not operate on a strict doctrine of precedent; however, UDRP panels consider it desirable that their decisions are consistent with prior decisions, which ensures that the system operates in a fair, effective and predictable manner. Given that prior UDRP panels have found bad faith registration in similar circumstances where the domain name was registered prior to registration of the relevant trademark, Complainant contends that there cannot be a per se rule contrary to those panels decisions or UDRP policy, as suggested by Respondent in its of December 9, Moreover, given the goal of ensuring that the UDRP operates in a fair, effective and predictable manner, Complainant asserts it would be unfair for prior panels to have provided a remedy to complainants in similar circumstances, but deny such a remedy to Complainant here.

165 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM Complainant further contends that Respondent s renewal of the Domain Name, after receiving offers from Complainant to purchase it, constitutes bad faith registration and use. In this case, Respondent initially registered the Domain Name for a period of ten years. Then, after receiving Complainant s offers to purchase the Domain Name, Respondent renewed it for only a single year. Complainant argues that it can be inferred that Respondent s primary intent in renewing the Domain Name for only a single year was to sell it to Complainant, as owner of the MODWAY trademark, for valuable consideration in excess of out-of-pocket costs directly related to the Domain Name. It can be inferred that Respondent did not want to spend more money than was necessary to maintain the Domain Name s registration because Respondent intended to sell it during the one year renewal period. Complainant also states that given Respondent was put on notice by Complainant of Complainant s trademark rights, the renewal of the Domain Name, as well as the passive holding of it, were in violation of Respondent s representations and warranties under paragraph 2 of the Policy. Complainant says that paragraph 2 requires a domain name registrant to make not only representation but also warranties as to the registrant s future conduct. It imposes a duty on the part of the registrant to conduct an investigation not only at the time of registration, but also includes a warranty by the registrant that it will not now or in the futureuse the domain name in violation of any laws or regulations, including intellectual property rights and the laws protecting them. The paragraph 2 representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to use of the domain name in the future. Further, Complainant argues that given the strength of its MODWAY mark, it is not possible to conceive of any plausible active use of the Domain Name by Respondent that would not be a violation of the warranties set out in paragraph 2 of the Policy. Citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D , Complainant urges that Respondent s use of the Domain Name constitutes passive holding with circumstances pointing to the conclusion that this passive holding is a bad faith use of the Domain Name. Complainant states that in Telstra, as in the present case, the respondent s domain name did not resolve to a website or other online presence. Complainant refers to particular circumstances in Telstra that supported a conclusion of bad faith use and compares them to the circumstances in this case: (i) the complainant s trademark in Telstra had a strong reputation and was widely known, as evidenced by its substantial use in Australia and other countries. Here, Complainant contends that during the decade when Respondent has held but did not use the Domain Name, Complainant s trademark generated a strong reputation and became widely known in the furniture industry. Complainant states that its trademark is so well known that many customers have notified Complainant that they were unsuccessful in locating Complainant s website after they have entered <modway.com> into a browser search bar. Also, a worldwide business search for companies related to the phrase modway identified only four companies, two of which are Complainant s companies (i.e., East End Imports and East End N.Y. Imports). Moreover, the combined sales (in millions of USD) of Complainant s companies exceeds all of the others (who have reported sales) by two orders of magnitude, providing further evidence of the strength of Complainant s mark relative to others. (ii) in Telstra the respondent provided no evidence of any actual or contemplated good faith use of the domain name. Complainant argues that in this case, Respondent has similarly provided no evidence of any actual or contemplated good faith use of the Domain Name. Respondent admitted in its of December 9, 2014 that the Domain Name has, for more than a decade, resolved to a blank webpage. (iii) in Telstra the respondent had taken active steps to conceal its identity, by operating under a name that is not a registered business name. Complainant states that this circumstance is not pertinent to the present dispute. (iv) in Telstra the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement. Here, Complainant notes that Respondent renewed the Domain Name with knowledge of Complainant s trademark, and thereby violated section 16 of its registration agreement and the warranties in

166 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM paragraph 2 of the Policy. (v) the panel in Telstra found that taking into account all of the above, it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant s rights under trademark law. Here, Complainant contends that by virtue of the widespread use and reputation of Complainant s MODWAY mark, members of the public (in the United States as well as internationally) would believe that the entity owning the Domain Name was Complainant or in some way associated with Complainant. Any realistic use of the Domain Name, therefore, would misrepresent an association with Complainant and its goodwill, resulting in a trademark infringement and passing off. An online search for modway reveals that a vast majority of the search results are related to Complainant s business rather than any of the other companies in the search results. In view of the strength of Complainant s mark, it is more likely than not that use of the Domain Name for any purpose other than for Complainant would cause confusion as to the source and affiliation of the Domain Name. Complainant provides detailed citation to United States trademark law, in particular the Anticybersquatting Consumer Protection Act ( ACPA ). Complainant argues that, under the ACPA, Respondent s offer to sell the Domain Name to Complainant for financial gain without having used it may be considered by a court for determining whether Respondent had a bad faith intent to profit from the trademark of Complainant, which might be determinative of a violation of the ACPA. Complainant argues that such a violation falls within a violation of any applicable laws or regulations referenced in paragraph 2 of the Policy. Lastly, Complainant argues that Respondent has been involved in disputes with other rights holders and has therefore engaged in a pattern of conduct that might be considered to rise to the level of a domain name troll. Complainant states that while Respondent may have a legitimate branding business that creates domain names for clients, it also has a less creative business of trolling the Internet for unused domain names and warehousing them until such time as a trademark holder approaches Respondent for a domain name corresponding to their trademark. It appears that Respondent has registered over 5,000 domain names. Complainant asserts that many professional domain name registrants, such as Respondent, use automated programs to register domain names as they become available with little to no regard for the rights of third parties. After spending little to no effort to acquire the domain names, the domain name troll attempts to obtain sums of money vastly in excess of what was paid, while justifying its conduct as legal under the Policy. Complainant states that Respondent s of December 9, 2014 appears to be based on Respondent s belief that its conduct cannot be challenged and is not an abuse. However, in this case, Respondent s appears to be an attempt to extort an exorbitant sum (USD 25,500) for the Domain Name, which has no legitimate commercial use other than for Complainant. Complainant believes that such conduct is economically inefficient, as well as contrary to the UDRP and, therefore, requests that the Panel identify that conduct as a violation of the Policy. B. Respondent (i) Identical or confusingly similar Respondent has stipulated that the first element of the UDRP is satisfied in this case. (ii) Rights or legitimate interests Like Complainant, Respondent has made lengthy arguments in its submission, particularly in support of its claims of rights or legitimate interests in the Domain Name and no bad faith registration and use of it. Respondent s arguments are summarized below. Respondent states that in connection with its naming, logo and branding business it holds numerous domain names corresponding to generic and coined terms. Use of these domain names in connection with Respondent s business provides a legitimate interest in them. Respondent explains that there are similar companies in the

167 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM United States, offering the service of coining and locating names that are viable for new commercial use, and that this is a bona fide, established field of trade. Respondent states that its domain names, reflecting Respondent s creative work product, are of the same non-distinctive trademark nature as those of other naming companies. Respondent claims that generic domain names, such as <modway.com>, find legitimate use in Respondent s field of trade. Respondent asserts that it registered the Domain Name for use in its business in May 2005, immediately following its abandonment by a prior registrant. The Domain Name had been registered and dropped by three parties prior to Respondent s registration. Respondent observes that one trademark for MODWAY registered with the USPTO predated Respondent's registration of the Domain Name, but that mark had already been cancelled in Respondent states that the Domain Name was initially registered for use in relation to a dishware (stoneware) product-line, but the name was abandoned as too robotic for that client. However, Respondent retained the Domain Name as an asset for potential future use for its clients. Respondent says that the Domain Name has been repeatedly vetted and researched towards new trademark use for Respondent s clients since its registration in 2005, and was nearly used for an entity offering low-resistance wiring. Respondent further claims that because the Domain Name <modway.com> can convey that a product or service is technologically advanced, it is a versatile and valuable asset for Respondent s business. For instance, Respondent states that the USPTO lists approximately 2,500 marks that include the term delta as part of the marks, and another 2,500 marks that include the term omni. Respondent argues that modway could be used similarly alongside another term in a trademark. Respondent states that it has never offered the Domain Name, or any domain name, for sale to the public at large. Respondent further explains that no embarrassing or sexually suggestive content, or any content that could be confused with a trademark user s rights, has ever appeared at the website linked to the Domain Name. This approach preserves the utility of the Domain Name. The Domain Name is hosted to resolve to a blank white webpage to prevent display of any automated content by the Registrar, which could infringe upon the rights of any known or unknown trademark users. Further, Respondent states that no party may purchase the Domain Name anonymously; instead, Respondent claims its mandatory contract form prohibits sale of a domain name to any party who is ineligible to purchase it from a United States trademark law perspective. Respondent argues it is settled that the registration of domain names containing common words is permissible on a first-come, first-served basis, and such registration establishes Respondent s legitimate interest, provided the Domain Name was not registered with a trademark in mind. Respondent states that in this case there is no evidence that the Domain Name was registered with Complainant s trademark in mind, because Complainant s MODWAY mark did not exist in 2005 when Respondent registered the Domain Name, and did not come into use by Complainant until seven years later. Respondent urges that it was found to have a legitimate interest in use of a domain name in a prior UDRP case, Parlance Corporation v. Dynamo.com, NAF Claim No Consistent with Respondent s legitimate interest in the generic <parlance.com> domain name, Respondent contends that the Domain Name is comprised of two generic words. Arguing that evidence of generic word status can be demonstrated from the presence of a word in a dictionary and online searches (that are configured to exclude a complainant), Respondent asserts that the American Heritage Dictionary defines the generic word mod as fashionably up-to-date, especially in style, design, or dress. An online search for mod, set to exclude Complainant, yields 810,000,000 web pages. The American Heritage Dictionary also defines the generic word way as a road, path or highway affording passage from one place to another. An online search for way, set to exclude Complainant, yields 5,100,000,000 result pages. Respondent maintains that because the Domain Name is comprised of two generic words, the term modway is in use worldwide, including Modway Shoes; Modway, the rock band; Modways, another rock band; Modway construction; Modway industrial saws; the family name, Modway; and Modways leather goods. Modway

168 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM trademarks have been filed by several parties worldwide. There is also allegedly another Modway furniture company, which predates Complainant s trademark registration by four years. Respondent submits that the price of USD 25,500, which it had offered for sale of the Domain Name to Complainant, is at or below market value and that the Domain Name has intrinsic value for use by a new bona fide trademark user wholly unrelated to Complainant. Respondent submits as evidence the prices of other domain names that have been sold. Respondent states that after it had established Complainant s eligibility to purchase the Domain Name under trademark law, the 2012 price was set at USD 25,500, which is the same price that was offered to Complainant in 2014 after Complainant had registered its MODWAY mark. Respondent therefore requests that the Panel find that Respondent has a legitimate interest in its Domain Name, which was non-distinctive at the time of registration and intended to be used solely by a client developing a bona fide new trademark. Respondent argues that this dispute is the second time it has been forced to respond under the largely disavowed retroactive bad faith line of UDRP cases. In the prior case, the complaint listed all of the domain names under Respondent s control and claimed that 13 violated the Policy. Respondent asserts that all were first-in-time or generic and resolved to blank webpages. Respondent defended those registrations, and the complainant terminated the case the day after receiving Respondent s response in that case, in which Respondent had raised alleged grounds for Reverse Domain Name Hijacking ( RDNH ). (iii) Registered and used in bad faith Respondent contends that it could not have registered the Domain Name in bad faith in 2005, because Complainant did not begin to use the term modway until seven years thereafter. Respondent states that the registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Respondent argues that Complainant has filed this case under the largely disavowed retroactive bad faith registration interpretation of the Policy; however, the inclusion of the word and (instead of or ) in paragraph 4(a)(iii) of the Policy is intentional. Further, the system of domain name registration is, in general terms, a first-come, first-served system; absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use it for any legitimate purpose. Citing the WIPO Overview 2.0, Respondent states that the consensus view is that, although a trademark can form the basis for an action under the first element of the UDRP irrespective of its date, when a domain name is registered by a respondent before the complainant s relied-upon trademark right is shown to have been established, the registration of the domain name could not have been in bad faith because the registrant could not have contemplated the complainant s then non-existent right. In addition, on the first element of the conjunctive test, Respondent submits that the Domain Name was presumptively registered in good faith as it is comprised of generic dictionary words possessing intrinsic value. Respondent references UDRP decisions supporting a finding of good faith registration where the domain name at issue contained dictionary terms. Respondent asserts that its numerous domain names are not evidence of a bad faith registration, as Complainant suggests, but are evidence of good faith registration towards a good faith use. The large number of domain names under Respondent s control provides an advantage in its business. One can compare these domain name holdings to those of other branding and name conception companies to see the similarities, targeting terms that are Latin roots, cute words, coined or compound terms, but non-distinctive and non-infringing. Further responding to Complainant s contentions, Respondent emphasizes that paragraph 4(b)(i) of the Policy refers to a respondent acquiring a domain name primarily for the purpose of selling it to a complainant or a competitor of the complainant for valuable consideration. However, in this case Respondent could not have registered the Domain Name primarily for this purpose because Complainant did not exist at the time of registration. That Respondent has considered selling the Domain Name for valuable consideration is not, by

169 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM itself, evidence that Respondent acquired the Domain Name for the purpose of selling it to Complainant or a competitor of Complainant for valuable consideration. Regarding Complainant s arguments under paragraph 2 of the Policy, Respondent contends that even the leading decisions on the applicability of paragraph 2 contemplate that a renewal of a domain name registration might not be considered as having been made bad faith if there is no material change in the use to which the domain name is put after renewal. In this case, there has been no transfer of the Domain Name since its registration by Respondent in Further, there has been no change in use of the Domain Name. It resolved to a blank white webpage long before Complainant began using its MODWAY trademark, and this use continues to this day. It has never been made available for sale to the public. The renewal of Respondent s Domain Name occurs automatically one month prior to its expiry, and this is industry standard as it avoids risk of loss. Respondent also refers to United States court decisions in support of its argument that the re-registration (renewal) of the Domain Name was not in violation of the ACPA, as long as the initial registration was lawful. Respondent asserts that the Complaint omitted to refer to Respondent s website at <dynamo.com>, which presents Respondent s work product, past clients, and content reflecting the good faith use of its domain names. As evidence of good faith use, Respondent claims it exercises care in the protection of the rights of trademark owners, both known and unknown, which goes beyond that required by current law and business practices. Respondent states its contracts are written to protect mark holders and exceed the duties imposed by United States trademark law, and relevant terms are laid out on its website at <dynamo.com>. Respondent argues that it does not benefit from, infringe upon, or tarnish Complainant s trademark in any way. No embarrassing or sexually suggestive content, or any content that could be confused with any modway mark user s rights, has ever appeared at the site connected to the Domain Name. As to cases where passive holding of a domain name may be sufficient to indicate bad faith registration, Respondent argues that those are typically cases in which the complainant s trademark is sufficiently well known that it would be implausible to assume that the respondent was not aware of it, and that is not the case here. Even in the event of a possible disruption of Complainant s future business through confusion among clients, Respondent contends that this, in itself, would not establish Respondent s bad faith use of the Domain Name where there is no evidence that Respondent intended to divert business from Complainant. Further, although Complainant claims Respondent is in the business of domain name speculation, in this case the Domain Name is comprised of two common dictionary words, there are no other registrations by Respondent confusingly similar to Complainant s mark, and there is no pay-per-click advertising on the webpage connected to the Domain Name. (iv) Reverse domain name hijacking Respondent requests that the Panel enter a finding of Reverse domain name hijacking ( RDNH ) against Complainant. Respondent refers to the negotiating history between the Parties (including Respondent s December 9, to Complainant in which Respondent stated its view that the filing of a UDRP case would result in a RDNH finding against Complainant), Complainant s alleged omissions of certain information and misrepresentation regarding Respondent s business, and referring to a number of disputes and other matters allegedly related to Complainant that are outside the scope of this case. 6. Discussion and Findings In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

170 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar Complainant and Respondent agree that Complainant has registered rights in its MODWAY trademark and that the Domain Name is identical to Complainant s mark (with the exception of the.com top-level suffix). Accordingly, the Panel finds that the Domain Name is identical to a trademark in which Complainant has rights, and the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. This case presents a close call as to whether Complainant has successfully made out a prima facie case based on its Complaint. Complainant has presented a number of the elements commonly relied upon by complainants to make a prima facie showing: that Respondent is not commonly known by the Domain Name or the name Modway ; that Complainant did not provide Respondent with permission to use Complainant s MODWAY trademark in the Domain Name; and that, at least according to the Complaint, there is no evidence of Respondent s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Instead, the Domain Name at all relevant times has been linked to a blank webpage. In addition, Complainant has asserted Respondent s abusive passive holding of the Domain Name based on several factors including Respondent s alleged failure to use it, Complainant s developing trademark rights, and the renewal of the Domain Name after Respondent had been given notice of Complainant s mark. Even in light of this showing, there are also several indications in the Complaint (and its attachments) that Complainant had some awareness of Respondent s name/branding business and how Respondent uses its domain name holdings in support of that business, although Complainant did not elaborate on these aspects. Moreover, Complainant was aware that the Domain Name had been registered prior to the existence of its MODWAY trademark rights. As discussed below, all this information offers potential evidence in support of finding a legitimate interest by Respondent in the Domain Name and thereby counters Complainant s prima facie showing. However, the Panel considers that, while it certainly would have been wise to do so, it was not Complainant s responsibility to attempt to explain fully Respondent s business and motives for registering its domain names, including the Domain Name. Instead, Complainant made extensive arguments in an attempt to argue that the registration of the Domain Name pre-dating its trademark rights did not bar its claim. Assuming that Complainant did make out a prima facie case, the Panel finds that Respondent nonetheless has successfully carried its burden of demonstrating a legitimate interest with respect to the Domain Name. The key contested provision in this case concerning the issue of whether Respondent has demonstrated rights or legitimate interests in the Domain Name is set forth in paragraph 4(c)(i) of the Policy: did Respondent, before receiving any notice of this dispute, demonstrate its use of, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Panel concludes, on the balance of the probabilities, that Respondent has provided sufficient evidence of its naming and branding business and how its domain name holdings, including the Domain Name, were acquired for and used in connection with this bona fide business and the services offered by Respondent. Respondent appears to register common words, dictionary and coined terms that are then held to be used in naming, branding and logo projects for its clients. Respondent has shown that there are other companies offering similar services. Moreover, Respondent has

171 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM demonstrated that it has implemented procedures to avoid inadvertently infringing on the rights of known or unknown trademark owners. In addition, there is no dispute that when Respondent registered the Domain Name in 2005, Respondent was not targeting Complainant or its MODWAY trademark, especially as any rights attaching to that mark did not come into existence until sometime after April 2012, approximately seven years later. This undisputed evidence supports Respondent s claim that it registered the Domain Name for its utility as a term combining two common words, mod and way, in a manner that could be suggestive of a product or service that is technologically advanced. Paragraph 2.2 of the WIPO Overview 2.0 states that Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, may not of itself confer rights or legitimate interests in the domain name. Therefore, Respondent s registration of the Domain Name and linking it to a blank webpage did not, on its own, indicate any rights or legitimate interests. However, as noted above, Respondent s holding of the Domain Name for use in connection with its greater branding business creates a sufficient legitimate interest with respect to the Domain Name in this case. A similar finding was made concerning Respondent and its registration of the domain name <parlance.com> in a previous UDRP case. See Parlance Corporation v. Dynamo.com c/o Privacy Protection, supra ( Since parlance is a word in the English language, and the Respondent is in the business of registering domain names composed of common words, the Panel holds that the Complainant has failed to satisfy its burden of proving that the Respondent lacks rights or legitimate interests. ) Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy is not satisfied. C. Registered and Used in Bad Faith Given the Panel s finding regarding Respondent s legitimate interest in the Domain Name, it is unnecessary in this case to determine whether Respondent has registered or subsequently used the Domain Name in bad faith. However, because both Parties submitted detailed arguments on these issues, they are addressed below. The Panel finds that Complainant has failed to demonstrate either bad faith registration or bad faith use. As noted above, it is undisputed that when Respondent registered the Domain Name in 2005, Complainant s trademark did not exist. There was no improper targeting in this case. Complainant, however, has maintained that various UDRP cases have found bad faith registrations even when the domain names had been registered prior to the establishment of the complainant s relevant trademark rights. In particular, Complainant has argued that Respondent s recent renewal of the Domain Name in May 2015 constitutes a bad faith registration. The Panel disagrees. The WIPO Overview 2.0, paragraph 3.7, provides relevant guidance on this point: While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name. In the present case, Respondent has not transferred the Domain Name following its initial registration in Respondent s renewal of the Domain Name in May 2015 was prompted by the imminent expiration of Respondent s initial ten year registration term. However, Complainant has argued that the recent renewal, nonetheless, was in bad faith because it violates the warranties in paragraph 2 of the Policy, given that Respondent had been put on notice by Complainant of Complainant s trademark rights prior to this renewal, as well as Respondent s passive holding of the Domain Name. Again, the Panel disagrees. Paragraph 2 of the Policy provides: Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain

172 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." The WIPO Overview 2.0, in paragraph 3.7, also provides useful direction concerning paragraph 2 of the Policy: However, relying in part on paragraph 2 of the UDRP which expressly references the representations made at the time of renewal, a small number of panels have begun to consider the renewal of a domain name as equivalent to a new registration in certain circumstances, including where it is found that: the registrant changed its use of the domain name prior to renewal; such use amounts to textbook cybersquatting; and the registrant nevertheless proceeded to renew the domain name registration with intent to benefit from its inclusion of the complainant s trademark. In this case, it is undisputed that Respondent did not change its use of the Domain Name before or after the recent renewal (such that Complainant could, for example, seek to rely on Policy paragraph 4(b)(iv)). It has always linked to a blank webpage since the initial registration in Moreover, Respondent has provided plausible reasons related to its naming and branding business for why it continues to maintain its domain name holdings, including registration of the Domain Name, and for why the Domain Name has always resolved to a blank webpage (i.e., to preserve the utility of the Domain Name for Respondent s business and to prevent display of any automated content by the Registrar, which could infringe upon the rights of a trademark user). In view of the circumstances of this case, the Panel finds, on balance, that there is insufficient evidence to indicate that, even at the time of renewal, Respondent violated any of the warranties under paragraph 2 of the Policy (i.e., registering the Domain Name for an unlawful purpose or with intent to knowingly use it in violation of any applicable laws or regulations). As to Complainant s claim that Respondent s alleged passive holding of the Domain Name amounts to bad faith, the Panel also rejects this claim. WIPO Overview 2.0, paragraph 3.2 (addressing passive holding), provides that the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Here, although Complainant has provided evidence to show that the strength of its MODWAY mark covering furniture may have increased over time through Complainant s use and promotion of the mark, this evidence does not suggest that the mark is so well-known that the term modway could not be used by a third-party in relation to a different line of business (which is consistent with the objectives of Respondent s branding business). Moreover, as explained above, there is no sufficient evidence to show that Respondent registered (or renewed) the Domain Name in an attempt to take advantage of Complainant s MODWAY trademark. Respondent has not concealed its identity. Importantly, Respondent has submitted a comprehensive Response in this case and provided credible reasons for why the Domain Name has always resolved to a blank webpage and been held in support of Respondent s branding business. In view of all of these circumstances, the Panel finds there is no abusive passive holding of the Domain Name. Finally, Complainant has also alleged that under paragraph 4(b)(i) of the Policy, Respondent registered the Domain Name primarily for the purpose of selling it to Complainant or a competitor for valuable consideration in excess of out-of-pocket costs directly related to it. The Panel rejects this claim. The record before the Panel shows that Respondent never made any unsolicited offer to sell the Domain Name to Complainant or a third party. Instead, Respondent only responded to inquiries to purchase the Domain Name first initiated by Complainant, which commenced even before Complainant had established any rights in its MODWAY trademark. A protracted and tough set of communications have been exchanged between the Parties; however, these negotiations do not necessarily indicate bad faith. Moreover, the evidence concerning Respondent s

173 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM branding and naming business, and why Respondent maintains its large domain name holdings (including the Domain Name), refutes Complainant s argument of bad faith under paragraph 4(b)(i) of the Policy. Accordingly, for all of the foregoing reasons, the Panel concludes that Complainant has failed to demonstrate Respondent s bad faith registration and use of the Domain Name. D. Reverse Domain Name Hijacking Respondent has requested that the Panel making a finding of RDNH against Complainant. Paragraph 15(e) of the Rules provides that if, after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example, in an attempt at RDNH or primarily to harass the domain name holder, the Panel shall declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. RDNH is defined as using the Policy in bad faith to attempt to deprive a domain name holder of a domain name. WIPO Overview 2.0 states that UDRP panels have found RDNH in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP ; a respondent s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith ; or the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights. It can be argued that each of the above examples is suggestive of certain of the circumstances in this case. Thus, the Panel s decision on RDNH presents a very close call. However, the Panel (by a majority) considers, on balance, that in view of Complainant s submissions, the Complaint was not brought primarily as a means of harassment. Complainant relied on a number of decisions, drawing from a diverse pool of prior UDRP cases, which could be read to support arguably certain of Complainant s claims on particular issues. Moreover, Respondent in support of its RDNH request has sought to introduce information about unrelated matters and allegations concerning Complainant that are irrelevant to these proceedings. Despite the tough communications between the Parties, some of which emanated from Respondent, and in view of the complete record in this case, a majority of the Panel is not persuaded to enter a finding of RDNH against Complainant. 7. Decision For the foregoing reasons, the Complaint is denied. Christopher S. Gibson Presiding Panelist Andrew F. Christie Panelist Tony Willoughby (joining in the main decision but dissenting on issue of RDNH) Panelist (Dissenting) Date: August 31, 2015 Dissent I respectfully dissent from the view of the majority in relation to Respondent s request for a finding of Reverse Domain Name Hijacking.

174 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM As the majority accurately observe: WIPO Overview 2.0 states that UDRP panels have found RDNH in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP ; a respondent s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith ; or the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights. I believe that the Complaint never had a chance of success under either the second or third elements of the Policy, but for simplicity will restrict my comments on this topic to Complainant s contention that the Domain Name was registered and is being used in bad faith, Respondent s bad faith intent being to sell the Domain Name to Complainant at a profit. This was a contention made in the knowledge that the Domain Name was registered several years before Complainant first used its MODWAY trade mark and, more than that, that the negotiations over purchase of the Domain Name were initiated by Complainant several months before Complainant first used its trade mark. It was an absurd contention. Nonetheless the majority decline to make a finding of RDNH on two bases. First, that Complainant raised several arguable points. On the basis that anything is arguable, I agree. However, the arguments were so flawed that I disregard them. 1 Secondly, Respondent s behaviour is not free from criticism. I accept that Respondent has responded to the Complainant s pre-complaint s and in the Response in a manner that one might say is well over the top. But what we are addressing with regard to RDNH is not the behaviour of Respondent, but the behaviour of Complainant in launching the Complaint. While I do not condone the excesses of Respondent, it is the fact that the false allegations of bad faith directed at Respondent were highly provocative and, in my view, wholly unjustified. When Complainant decided to launch its MODWAY brand it was aware that Respondent was the owner of the Domain Name. It tried to buy the Domain Name from Respondent, but declined to accept Respondent s terms. It was aware that if it proceeded with the launch of its MODWAY brand, it was likely that in time its customer base would visit the website connected to the Domain Name, believing it to be the Domain Name of Complainant, and would be confused on finding that it was a website unassociated with Complainant. Nonetheless, despite all that knowledge and without acquiring the Domain Name from Respondent, it went ahead and launched under the MODWAY brand. I have found instructive a passage from Complainant s representative s letter to Respondent dated August 21, 2014: East End is desirous of using the domain name modway.com as its customers expect that the internet domain modway.com is associated with East End. When East End s customers do not find East End s website upon entering modway.com, they are confused, and this is causing damage to East End. It is our understanding that your company owns the domain name modway.com but has never used it for commercial purposes. The domain name modway.com is identical or confusingly similar to East End s trademark MODWAY, and we believe that Dynamo.com has no rights or legitimate interests with respect to the domain name. Further, we believe that Dynamo.com recently renewed the domain name registration in bad faith. As a result, East End is considering filing a complaint with ICANN.org under the Uniform Domain Name Dispute Resolution Policy in order to force Dynamo.com to release the name. It is our understanding that you are willing to sell East End the domain name modway.com but are demanding $25,500 for the sale of the domain name. East End is willing to buy the name form Dynamo.com for a reasonable fee, but considers your demand to be unreasonable. For less than that, East End believes that it can be successful in utilizing ICANN s Uniform Domain Name Dispute Resolution Policy to force Dynamo.com to

175 WIPO Domain Name Decision: D of 14 9/30/2015 5:20 AM release the name. This telegraphs to me that (a) as Complainant must have known from the outset, not having the Domain Name would be a disadvantage hence the attempts to purchase it prior to launch of Complainant s brand; (b) nothing that Respondent has done in relation to the Domain Name could conceivably constitute bad faith use, Respondent never having made any use of it; (c) Complainant will have been aware of Respondent s legitimate business conducted through its website at <dynamo.com>, which involves the warehousing of a portfolio of potentially attractive domain names; and (d) the one argument left to it is one based on Respondent s renewal of the Domain Name with knowledge of Complainant s trade mark rights. Even in cases where UDRP panelists are prepared to treat renewal of a domain name as a re-registration of the domain name, common sense dictates that for a renewal of a legitimately registered and used domain name to constitute bad faith registration and use of that domain name, there has to be some culpable change of use of the domain name targeted at the complainant or its trademark. Here there has been no change of use. Moreover, the renewal authority cited by Complainant, Big 5 Corp. v. EyeAim.com, NAF Case No. FA was a very different case. It is true that in that case the UDRP panel found bad faith registration and use on the basis of bad faith use following renewal with knowledge of the complainant s rights, but the use in question was very different from Respondent s non-use: Respondent used the disputed domain name to resolve to a website that displayed pay-per-click advertisement for, among others, Complainant s goods and goods sold in competition with Complainant s goods. At its simplest, this is a case where, on any basis, there has been no bad faith use. To the knowledge of Complainant the same non-use (a blank page) has been continuous throughout. In my view the Complaint was actuated by a desire to obtain a domain name, which was commercially important to Complainant, but which it could not obtain by legitimate means, otherwise than by paying more than it was prepared to pay. The arguments were artificial in the extreme and must have been known to be so. This Complaint was doomed from the start. To quote another dissenting panelist in another case, a finding of abuse of this proceeding and an attempt at Reverse Domain Name Hijacking is richly deserved. 2 Tony Willoughby Panelist (Dissenting) Date: August 31, They were all based on previous UDRP cases with very different factual backgrounds and to a significant degree on no-response cases with materially different facts (e.g., Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, supra and Telstra Corporation Limited v. Nuclear Marshmallows, supra) 2 Tecnologia Bancaria S.A. v. Marchex Sales Inc., WIPO Case No. D

176 ADR.eu 2 of 11 9/29/ :29 AM Partially Accepted / Rejected Settlement Complaint Rejected On-line ADR Center of the Czech Arbitration Court (CAC) Panel Decision 15 of the UDRP Rules (Rules), 9 of the CAC s Supplemental Rules (Supplemental Rules) Case No Time of Filing :59:06 Disputed domain name MAXIMIZE.COM Case Administrator Name Lada Válková Complainant Organization Nucell, LLC Authorized Representative Name Respondent Steven Rinehart Name Guillaume Pousaz Authorized Representative Name Micah Ogilvie Other Legal Proceedings The Panel is not aware of any related proceedings. Identification of rights The Complainant relies on its registered rights in the US mark, No , a word mark, MAXIMIZE, registered on 22 November 2011 and it also claims common law rights in the trade mark arising from use in commerce since Factual Background The Disputed Domain Name was created and first registered in The Respondent acquired it for USD$10,000 on 28 January 2008 for the express purpose of using it in a business to provide added value post-sale services to websites. That business has not materialized as yet, due in part to this dispute. The Complainant is a Florida Corporation incorporated on 4 June 2008, selling supplements including a supplement called Maximize, which it claims will enhance male performance. On 8 March 2011, the Complainant s application for the US trade mark for the word MAXIMIZE was filed. It was published in September and registered on 22 November 2011 in class 5. That application gives a first use in commerce date as 23 July 2010, with a 2002 first use date.

177 ADR.eu 3 of 11 9/29/ :29 AM PARTIES' CONTENTIONS: COMPLAINANT: The Complainant makes the following contentions. 1. Either the transfer in 2008 or any of the subsequent renewals of the Disputed Domain Name should be treated as the registration of the domain name in this case for the purpose of the requirements of the UDRP policy ( the Policy ). 2. In particular, the change of use at the time of the renewal in 2012 can be taken as the relevant time. 3. The registration was in bad faith as the Respondent must have had actual or constructive notice of the Complainant s mark at any renewal after 2011 at least. 4. The Respondent has had a long period of seven years of passive holding and only the dispute notification led to a parking page being established and this is not bona fide or a genuine offering. 5. The Respondent s use is not legitimate or fair use. 6. The Respondent made offers to sell the Disputed Domain Name to the Complainant at sums above cost and this demonstrates bad faith. 7. The Disputed Domain Name diverts traffic from the Complainant and this is bad faith. RESPONDENT: The Respondent gave the following answers. 1. The Respondent disputes the existence of Complainant s alleged common law rights and says the evidence submitted is wholly inadequate to establish the same. Any rights of Complainant are limited to the registered rights. Renewals are valid means of protecting an investment and are not registrations. The evidence of the Complainant s use (as submitted) to support common law rights is all post the 2008 registration by the Respondent and does not assist the Complainant. The Complainant only reinstated its corporate form in In 2011 its current domain name buymaximize.com was registered. 2. The registered mark post-dates the Respondent s registration of the Disputed Domain Name. Further, the registered mark is descriptive and weak and the evidence filed is wholly inadequate to make out a secondary meaning or acquired distinctiveness and the rights conferred by the registration do not extend to, or prevent, use in the ordinary original non source meaning (as the Respondent uses the Disputed Domain Name). The Complaint s use has been without exclusivity and it has taken seven years for it to bring this complaint. Some 270 other registered marks internationally use the word based on WIPO records including 214 in the US. The late, weak and non-exclusive rights and rights limited to a secondary meaning (not established) mean that there is no actual or constructive knowledge.

178 ADR.eu 4 of 11 9/29/ :29 AM 3. The Respondent acquired the Disputed Domain Name bona fide for a genuine offering and in preparation for his planned business use and paid USD $10,000 and the original correspondence as to the sale demonstrates that the purpose was for a business providing value added post transaction services to online sellers. The Respondent relies on a 2008 business plan which describes the services offered as Maximize.com services the Client at six steps during the process; 1. Smart targeting 2. Private Label, Membership Program 3. Merchant Services, 4. Back-end services, 5. Fulfilment, 6. Customer Service. The Respondent has other category defining domains such as checkout.com. The intention was never sale. The business was then delayed from 2011 pending this dispute. 4. No offer for sale to the Complainant has ever been made and the Complainant s Annex K is a forgery. The inter-parties communications (including a letter from the Respondent s lawyer in 2011 warning of domain name hijacking) is provided and relied on this was in reply to a 2011 first cease and desist to the Respondent. 5. The Complainant has failed to meet its burden under the Policy. 6. The Complainant is engaged in Reverse Domain Name Hijacking. Registered rights the registered mark Rights On 8 March 2011 the application for a US trade mark was filed, it was then published in September and registered in November 2011 in class 5. That application gives a first use in commerce date as 23 July 2010 (with a 2002 first use date). It is not clear who the original applicant was, as both parties accept, and there is no dispute about the fact that in 2009 the Complainant failed to make an annual filing and was struck off the Florida Register of Corporations and was only reinstated in The Respondent says the mark is weak as descriptive and no secondary meaning is made out. Descriptive common words are in theory un-registerable as completely lacking in inherent distinctiveness. Trade marks are badges of origin they indicate the undertaking or business responsible for the quality of the goods/services and therefore enable consumers to distinguish the goods and services of different undertakings and repeat purchases. Therefore marks cannot be registered that lack either inherent or acquired distinctiveness or are descriptive of the goods and services as they do not indicate origin. There is also a public interest underlying this prohibition, in that no trader should be able to acquire exclusive rights to words other traders might wish to use, such as terms with purely informational values. Consumers are not easily confused by such terms as they understand they are common ordinary terms, employed by many undertakings, with a low degree of distinctiveness. The registered mark here was granted by the US Registrar despite being prima facie descriptive and it is not clear that any showing had to be made to the USPTO of acquired distinctiveness or secondary meaning. The Panel understands that this can be a discretionary issue for the US Registrar. While many jurisdictions will grant highly descriptive marks, those marks may be vulnerable to challenge (this is usually an absolute ground) and that may impact enforcement options. It is certainly not clear from the evidence before this panel that any secondary meaning could be made out (not least due to the lack of a continuous period of five years trading and/or an extant entity to engage in the said trading and acquire the resultant claimed goodwill) but even if it could, this would not stop third parties using the ordinary common word maximize in its ordinary common dictionary meaning namely to

179 ADR.eu 5 of 11 9/29/ :29 AM increase as much as possible. The protection offered by the registered mark is limited to the secondary meaning (if any) as a badge of origin for male supplements. As would be expected in the case of a descriptive mark, there are many similar marks as many traders wish to use the same common term and the Respondent points to the many other marks registered using the word and rightly says the Complainant does not have exclusive rights and/or has not enforced any statutory exclusivity in its rights. The Respondent submitted an online search of the term at WIPO showing over 200 marks internationally using the word, including 214 in the US where Complainant is domiciled. The Policy recognizes these limits, and says rights subsist in descriptive terms only if they have acquired a secondary meaning. The Panel does not know if the US application included evidence of secondary meaning or acquired distinctiveness. However acquired distinctiveness is a question of fact and requires an overall assessment of the ability of the mark to distinguish the goods and services of the proprietor taking into account the average consumer a reasonably well-informed and reasonably observant and circumspect consumer of the goods and services in question. Market share, extent of use, geographic use, investment and promotion and the class comprising the relevant buying public must be delineated and considered. While some evidence of use was submitted, the Panel does not have all of the necessary classes of evidence or evidence responsive to all matters in issue in such an inquiry and cannot determine acquired distinctiveness nor is it our task to undertake this complex assessment. We make no finding about acquired distinctiveness here. The WIPO overview version 2 says at 1.4 Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP. This issue is therefore revisited below in relation to those issues. Common law rights The Complainant says the business started in 2006 although the first use in commerce for the Maximize supplement is given as That use in commerce date should reference continuous use in business and be a relevant date, as it was provided in an official context namely on the US trade mark application. Given the Complainant was a dissolved entity until 2014, it is not clear which entity could have been trading or accruing goodwill or reputation between 2010 and Nor is it clear how it was authorizing its attorneys and representatives to send cease and desists or to take any action. Further, the evidence provided to the Panel appears to date from 2013 and 2014 only plus one invoice from It must be said that the evidence filed to support common law claims is wholly inadequate and we have no figures for turnover/sales or accounts, no advertising spend indeed we have only various 2013 and 2014 screen shots and the one invoice. This is not an acceptable showing and mere assertion is not enough. The WIPO overview at 1.7 puts the position as follows: Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of

180 ADR.eu 6 of 11 9/29/ :29 AM parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted. It is also clear in this case that there are many other users of marks and signs containing the term Maximize and the term is a common dictionary word available to all in its common meaning. We note also that common law jurisdictions tend to show a great deal of tolerance for similarity when marks are highly descriptive and even if such rights could be made out, they would be unlikely to be enforceable in passing off. The Panel therefore finds that the Complainant has not met its burden of showing that it has common law rights in the MAXIMIZE mark. The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a) (i) of the Policy), but that finding is limited to the registered trademark referred to above. No rights or legitimate interests This part of the Policy is concerned with fair use and defences. The factors relevant are defined further as follows: c...(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant s case is that there is no valid use of the Disputed Domain Name and the use has been only for pay for click purposes (when parked). Neither party provided the Panel with clear evidence showing how the Disputed Domain Name has resolved at various points in time. The Panel checked online on 16 September 2015 (when the domain name resolved to a very high gloss page with an image and the strapline internet capital. reinvented with the date 2014 and the statement that all rights reserved and the name Maximize LLP). The Panel also reviewed the Way Back machine at which gave only one screen shot between 2008 and 2014 and that resolved to a Sedo landing page (with no advertisements showing on the Way Back view but presumably there may have been ads at the time although for what is not clear).

181 ADR.eu 7 of 11 9/29/ :29 AM The Respondent says that he can rely on all three factors set out above and that he always intended to use the Disputed Domain Name for his after sales service business and relies on the s with the seller in 2008 (when he told the seller this) and a 2008 business plan for that business. He says that development was delayed and then halted when the Complainant sent its first cease and desist demand in He also points to his category business. The WIPO overview at 2.6 says 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 " This reflects fairly the modern view that parking and landing use is not, of itself, objectionable. The WIPO overview continues: 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. It is not clear that any pay for click revenue has been earned based on the evidence submitted but it may have been when the Sedo page was operative. Even if it was earned, the Panel cannot accept that it would have in any way derived from the Complainant s rights or reputation given the finding above as to rights. The evidence of the Respondent is sufficient to show some preparation for the business to be named Maximize and this evidence is dated The s with the seller and the business plan show this. Further, this evidence indicates that the Disputed Domain Name was to be used in its original and ordinary meaning in relation to maximizing revenue --from sales through the after-sales services offering. Being the legal owner of the Disputed Domain Name, it is entirely at the discretion of the Respondent to develop his business in his own time and the domain name system has no period of grace (such as the five year period allowed for registrants of trade marks in most common law jurisdictions). The Respondent s desire to wait before investing further once the Complainant started to raise issues in 2011 is understandable and the threats were raised forcefully. The Panel is also satisfied that the registration and use was in relation to the word s ordinary meaning and not any source or acquired/secondary meaning referencing the Complainant s product and goodwill. In trade mark law, this is paradigm fair use and does not infringe and therefore this factor is made out here and the Complainant has not discharged its burden on this head of the Policy. The Complainant has not, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy). The Policy provides as follows: Bad faith b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is

182 ADR.eu 8 of 11 9/29/ :29 AM the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. Taking the application date as the relevant date for registered rights, this clearly post-dates the registration of the Disputed Domain Name in the name of the Respondent in The Respondent had acquired the Disputed Domain Name prior to the application for the US mark. Its lack of actual use in trade may or may not give him standing as a prior third party or owner of earlier rights in law but under the Policy this issue is relevant to knowledge and bad faith. While noting the authorities cited by both parties on the issue, this is not a case where the Respondent could be expected not to renew the Disputed Domain Name just because a later filing was made. Nowhere is there any legal obligation on a domain name owner not to renew due to later claims. While there is a later filed mark and it is registered, the Respondent may have arguable defences to any claims of infringement that might include priority, abandonment, estoppel and acquiescence and fair use as well as lack of acquired distinctiveness. In this context, under the Policy, these issues are engaged in the analysis of the second factor (rights and legitimate interests) and the third (bad faith). Based on the evidence, the Respondent could not have had and did not have, any actual or constructive notice at the time he acquired the Disputed Domain Name in The Panel is not convinced there was any reason why Respondent should not renew his domain name even after notice in The Panel does not accept the purpose in 2008 was sale, blocking or disruption it could not have been so chronologically. While the Complainant wants the Disputed Domain Name that does not translate into an obligation on the Respondent to surrender it and in doing so lose his USD $10,000. The Panel also notes the Respondent s evidence in relation to the disputed Annex K and while the Panel is unable to make any finding either way on the issue of alleged falsification, this Annex is not be relied upon by the Panel. No adverse inferences are drawn either way. There is no evidence at all on diversion and we are not able to accept a bare assertion of it particularly not where there are no common law rights and an ordinary dictionary word is used referencing its ordinary meaning. Accordingly, the Panel finds that Respondent did not register and use the Disputed Domain Name in bad faith. Reverse Domain Name Hijacking The Panel finds this is a clear case of Reverse Domain Name Hijacking. That is so for the following reasons.

183 ADR.eu 9 of 11 9/29/ :29 AM First, the Complainant has failed on every significant issue in the proceeding and must have known that it would fail. It is true that it has succeeded on one issue, as it has established a registered trademark for MAXIMIZE, but as will be seen, that trademark is of very limited value to the Complainant as it was registered on 22 November 2011, three years after the Respondent acquired the Disputed Domain Name on 28 January 2008, giving rise to the obvious problem that it would be impossible on the known facts to establish bad faith registration of the domain name, an essential element of a successful proceeding under the UDRP. It was no doubt due to this fact that the Complainant went to great lengths to argue that it could also show that it had common law trademark rights to MAXIMIZE. This, it failed to do, as its evidence fell far short of what has been set out on many occasions as being the requisite evidence to establish a common law trademark. Moreover, the word maximize is so generic and descriptive a word that the chances of success should have been seen as very remote in the absence of strong evidence which was clearly not present. Complainant also failed decisively on the issues of rights and legitimate interests and also on the issues of both bad faith registration and bad faith use. The fact that a complainant does not succeed in proving various elements is not by itself a ground for a finding against it of Reverse Domain Name Hijacking. But in the present case Complainant either knew or should have known that it could not prove the essential elements of a claim under the UDRP, yet it went on and brought the claim, after several years of harassing Respondent and not getting its own way in forcing the Respondent to transfer the domain name and, in particular, after being warned by Respondent s attorneys that it was at risk of a finding of Reverse Domain Name Hijacking being made against it. There must now have been hundreds if not thousands of UDRP decisions on the above elements and although they are not precedents in the judicial sense, they are clear guides to parties as to how panelists have correctly interpreted the UDRP and explained what has to be proved. To file a complaint, as in the present case, when essential elements of the claim cannot be proved and where it must be known that they could not be proved and yet to allege bad faith against the Respondent is itself an act of bad faith and constitutes harassment of the Respondent amounting to Reverse Domain Name Hijacking. The second reason why a finding of Reverse Domain Name Hijacking is justified is that, in particular, the Complainant knew or must have known that it could not prove that the domain name had been registered in bad faith due to the obvious registration chronology. Respondent acquired the domain name on 28 January 2008 and yet Complainant s trademark was not registered until 22 November 2011, making it impossible for Respondent to have been motivated by bad faith towards Complainant and its trademark, unless it had clairvoyant powers and could see that the trademark would be registered at some time in the future. Moreover, Complainant had not even applied for its trademark until 8 March 2011 and the Complainant had not been incorporated until June 4, 2008, both of which events occurred after Respondent acquired the domain name. Clearly, it must have been known to Complainant and its advisers when the Complaint was filed that it could not be shown that the domain name had been registered in bad faith. The only recognition by Respondent of this substantial hurdle was to advance an argument that the date of the registration of the domain name could simply be ignored and that bad faith registration could be tested against the dates of the renewal of the registration of the domain name. However, it must also have been known, as was explained in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No.D , that such an argument will not avail a complainant unless the respondent has engaged in clear acts of bad faith after Complainant s trademark was registered. That was clearly not the case here, and was known to be not the case when the Complaint was issued, where all that could be shown against Respondent was that he had registered a domain name for legitimate reasons and had retained it; he had not engaged in any illegitimate activity such as passing off, offering competing goods or causing confusion. Indeed, the only evidence of the use to which Respondent had put the domain name was a screenshot on the Wayback Machine showing a promotion for

184 ADR.eu 10 of 11 9/29/ :29 AM Maximize-Internet Venture Capital Reinvented which clearly has nothing to do with Complainant or its business and is a use that comes within the meaning of the highly generic and descriptive word maximize. The third reason why a finding of Reverse Domain Name Hijacking is justified is the history of four years of harassment by Complainant of Respondent to force it to hand over the domain name. There is no need to go into this in detail, except to say that on 14 November 2011, attorneys for the Respondent wrote to the Complainant s attorneys explaining clearly and persuasively why, if Complainant persisted with its demands it was at risk of a finding of Reverse Domain Name Hijacking being made against it. Despite this, the Complainant, after announcing that it would go after maximize.com in full force in 10 days, but waiting for several years and after being re-instated as a company on the Florida Register of Corporations in 2014, having been de-listed, it launched its proceeding on 3 July 2015 making the same allegations that had already been made and with as little basis as they had originally had. The combination of these considerations leads to the conclusion that there has been an attempt to harass and intimidate Respondent which should be marked by a finding of Reverse Domain Name Hijacking. Moreover, this is not a borderline case, where panelists may be reluctant to make the finding, but a case that is very clear indeed. Finally, in this case, the Complainant obviously feels entitled to the Disputed Domain Name and does not wish to pay for it. Had the Panel felt able to determine the validity of Annex K this would also be relevant to this issue as it would further demonstrate the bad faith necessary for a hijacking finding. The Complainant has not, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy). Reverse Domain Name Hijacking has been found. Procedural Factors The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision. Principal Reasons for the Decision The Complainant has failed to meet its three-fold burden under the Policy: (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present. The burden was not met for (ii) and (iii) and the findings made in relation to (i) were limited as described. A finding of Reverse Domain Name Hijacking was made against the Complainant. Decision For all the following reasons, the Complaint is Rejected and the disputed domain name(s) are to be MAXIMIZE.COM Name Date of Panel Decision Panellists Complaint rejected The Hon. Neil Brown, QC, Vít Horáček, Victoria McEvedy

185 NATIONAL ARBITRATION FORUM 1 of 5 10/2/ :32 PM DECISION Strebor, LLC d/b/a Power Tool Repair v. Ronald Manuele / R & R TOOL REPAIR Claim Number: FA PARTIES Complainant is Strebor, LLC d/b/a Power Tool Repair ( Complainant ), represented by Andrew S. Curfman of Emerson Thomson Bennett, LLC, Ohio, USA. Respondent is Ronald Manuele / R & R TOOL REPAIR ( Respondent ), represented by Steven L. Rinehart, Utah, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <ohiopowertoolrepair.com>, registered with GoDaddy.com, LLC. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra J. Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the FORUM electronically on August 25, 2015; the FORUM received payment on August 26, On August 26, 2015, GoDaddy.com, LLC confirmed by to the FORUM that the <ohiopowertoolrepair.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN s Uniform Domain Name Dispute Resolution Policy (the Policy ). On August 27, 2015, the FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2015 by which Respondent could file a Response to the Complaint, via to all entities and persons listed on Respondent s registration as technical, administrative, and billing contacts, and to

186 NATIONAL ARBITRATION FORUM 2 of 5 10/2/ :32 PM postmaster@ohiopowertoolrepair.com. Also on August 27, 2015, the Written Notice of the Complaint, notifying Respondent of the addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on September 8, Complainant submitted a timely Additional Submission, which was received on September 14, Respondent submitted a timely Additional Submission, which was received on September 16, On September 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the FORUM appointed Sandra J. Franklin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the FORUM has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant 1. Respondent s <ohiopowertoolrepair.com> domain name is confusingly similar to Complainant s POWER TOOL REPAIR mark. 2. Respondent does not have any rights or legitimate interests in the <ohiopowertoolrepair.com> domain name, as it has no business presence in the state of Ohio. 3. Respondent registered and uses the <ohiopowertoolrepair.com> domain name in bad faith. B. Respondent 1. Complainant does not have trademark rights in the descriptive name POWER TOOL REPAIR. 2. Respondent has rights in the <ohiopowertoolrepair.com> domain name,

187 NATIONAL ARBITRATION FORUM 3 of 5 10/2/ :32 PM legitimately used to attract business to his Florida-based national tool repair business. 3. Respondent did not register and does not use the <ohiopowertoolrepair.com> domain name in bad faith, which he registered before Complainant filed its trademark applications with the U. S. Patent and Trademark Office. 4. Complainant is attempting to reverse hijack the <ohiopowertoolrepair.com> domain name. C. Complainant s Additional Submission 1. Complainant has rights in the POWER TOOL REPAIR mark that it has been using for over 18 years. 2. Respondent was aware of Complainant and its rights because the parties met at a trade show prior to Respondent registering the <ohiopowertoolrepair.com> domain name. 3. Respondent uses the <ohiopowertoolrepair.com> domain name to redirect customers to its tool repair business. D. Respondent s Additional Submission 1. Complainant did not address common law rights in its original Complaint and therefore its arguments on that subject in its Additional Submission should not be considered. 2. Complainant has not submitted any evidence of common law rights in the POWER TOOL REPAIR mark, which is merely descriptive. 3. Respondent reiterates his legitimate use of the <ohiopowertoolrepair.com> domain name to drive traffic to his own tool repair business. FINDINGS Complainant has not established trademark rights in the POWER TOOL REPAIR mark. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

188 NATIONAL ARBITRATION FORUM 4 of 5 10/2/ :32 PM (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar The Panel notes that Respondent registered the <ohiopowertoolrepair.com> domain name on June 24, Complainant applied for federal trademark registration of POWER TOOL REPAIR with the U. S. Patent and Trademark Office (the USPTO ) on February 26, 2015, alleging use dating back to Respondent contends that Complainant has no enforceable trademark rights in the POWER TOOL REPAIR mark, arguing that its application with the USPTO has been rejected on the grounds of descriptiveness. Complainant s mark is in fact descriptive of power tool repair services. Complainant did not assert common law rights in POWER TOOL REPAIR in its Complaint, and even if it had, Complainant has not submitted any evidence of secondary meaning showing that Complainant s services are widely associated with those words. Complainant merely asserted that it holds a trade name registration with the Ohio Secretary of State. Thus, Complainant cannot show Policy 4(a)(i) rights where it cannot show common law rights prior to Respondent s registration of the disputed domain name. Indeed, Complainant did not properly allege or establish any trademark rights in the words POWER TOOL REPAIR. Past panels have agreed that a USPTO application is not sufficient to establish rights, and a showing of common law rights is required by the Policy. See ECG European City Guide v. Woodell, FA (Nat. Arb. Forum Oct. 14, 2003) ( Complainant s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark. ); see also Mega Shoes, Inc. v. Ostrick, FA (Nat. Arb. Forum Feb. 1, 2011) (finding the complainant s unsworn assertion that it has been using the MEGA SHOES mark since 1994 failed to establish that complainant had acquired secondary meaning in the MEGA SHOES mark where there was very minimal evidence in the record to support this claim.) Past panels have also declined to extend Policy 4(a)(i) rights to trade names. See Diversified Mortgage, Inc. v. World Fin. Partners, FA (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks ). The Panel thus finds that Complainant has not established trademark rights in POWER TOOL REPAIR for purposes of Policy 4(a)(i). Since the Panel concludes that Complainant has not satisfied Policy 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int l Pty. Ltd., FA (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA (Nat. Arb. Forum Dec. 28,

189 NATIONAL ARBITRATION FORUM 5 of 5 10/2/ :32 PM 2006) (deciding not to inquire into the respondent s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy 4(a)(i)). Reverse Domain Name Hijacking The Panel notes that Complainant has alleged that Respondent registered the <ohiopowertoolrepair.com> domain name after meeting Complainant at a trade show. The Panel finds that this weighs against Respondent and made it more likely that Complainant could prevail, had it proven rights in POWER TOOL REPAIR. For that reason, along with Complainant s alleged use of POWER TOOL REPAIR since 1997, the Panel declines to find Reverse Domain Name Hijacking. See ECG European City Guide v. Woodell, FA (Nat. Arb. Forum Oct. 14, 2003) ( Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith. ); see also Church in Houston v. Moran, D (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy 4(a) was absent). DECISION Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <ohiopowertoolrepair.com> domain name REMAIN with Respondent. Sandra J. Franklin, Panelist Dated: September 28, 2015 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

190 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 1 of 14 9/27/2015 8:11 AM United States 4th Circuit Court of Appeals Reports LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) Christopher LAMPARELLO, Plaintiff-Appellant, v. Jerry FALWELL; Jerry Falwell Ministries, Defendants Appellees. American Civil Liberties Union; ACLU Foundation of Virginia; Intellectual Property Law Faculty, Amici Supporting Appellant. Christopher Lamparello, Plaintiff-Appellee, v. Jerry Falwell; Jerry Falwell Ministries, Defendants-Appellants. American Civil Liberties Union; ACLU Foundation of Virginia; Intellectual Property Law Faculty, Amici Supporting Appellee. Nos , United States Court of Appeals, Fourth Circuit. Argued May 26, Decided August 24, Appeal from the United States District Court for the Eastern District of Virginia, Claude M. Hilton, Chief Judge. Page 310 ARGUED: Paul Alan Levy, Public Citizen Litigation Group, Washington, D.C., for Christopher Lamparello. John Holbrook Midlen, Jr., Midlen Law Center, Chevy Chase, Maryland, for Jerry Falwell and Jerry Falwell Ministries. ON BRIEF: Allison M. Zieve, Public Citizen Litigation Group, Washington, D.C., for Christopher Lamparello. Phillip R. Malone, Bruce P. Keller, Jeffrey P. Cunard, Berkman Center for Internet and Society, Harvard Law School, Cambridge, Massachusetts; Page 311 Rebecca Tushnet, Visiting Associate Professor of Law, Georgetown University Law Center, Washington, D.C., for Amici Curiae, Intellectual Property Law Faculty, Supporting Christopher Lamparello. Rebecca K. Glenberg, American Civil Liberties Union of Virginia Foundation, Inc., Richmond, Virginia; Michael Adams, American Civil Liberties Union, New York, New York, for Amici Curiae, American Civil Liberties Union and American Civil Liberties Union of Virginia Foundation, Inc., Supporting Christopher Lamparello. Before MICHAEL, MOTZ, and KING, Circuit Judges. Reversed and remanded by published opinion. Judge MOTZ wrote the opinion, in which Judge MICHAEL and Judge KING joined. DIANA GRIBBON MOTZ, Circuit Judge. OPINION Christopher Lamparello appeals the district court's order enjoining him from maintaining a gripe website critical of Reverend Jerry Falwell. For

191 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 2 of 14 9/27/2015 8:11 AM the reasons stated below, we reverse. I. Reverend Falwell is "a nationally known minister who has been active as a commentator on politics and public affairs." Hustler Magazine v. Falwell, 485 U.S. 46, 47, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988). He holds the common law trademarks "Jerry Falwell" and "Falwell," and the registered trademark "Listen America with Jerry Falwell." Jerry Falwell Ministries can be found online at " a website which receives 9,000 hits (or visits) per day. Lamparello registered the domain name " on February 11, 1999, after hearing Reverend Falwell give an interview "in which he expressed opinions about gay people and homosexuality that [Lamparello] considered... offensive." Lamparello created a website at that domain name to respond to what he believed were "untruths about gay people." Lamparello's website included headlines such as "Bible verses that Dr. Falwell chooses to ignore" and "Jerry Falwell has been bearing false witness (Exodus 20:16) against his gay and lesbian neighbors for a long time." The site also contained indepth criticism of Reverend Falwell's views. For example, the website stated: Dr. Falwell says that he is on the side of truth. He says that he will preach that homosexuality is a sin until the day he dies. But we believe that if the reverend were to take another thoughtful look at the scriptures, he would discover that they have been twisted around to support an anti-gay political agenda... at the expense of the gospel. Although the interior pages of Lamparello's website did not contain a disclaimer, the homepage prominently stated, "This website is NOT affiliated with Jerry Falwell or his ministry"; advised, "If you would like to visit Rev. Falwell's website, you may click here"; and provided a hyperlink to Reverend Falwell's website. At one point, Lamparello's website included a link to the Amazon.com webpage for a book that offered interpretations of the Bible that Lamparello favored, but the parties agree that Lamparello has never sold goods or services on his website. The parties also agree that "Lamparello's domain name and web site at which received only 200 hits per day, "had no measurable impact on the quantity of visits to [Reverend Falwell's] web site at Page 312 Nonetheless, Reverend Falwell sent Lamparello letters in October 2001 and June 2003 demanding that he cease and desist from using or any variation of Reverend Falwell's name as a domain name. Ultimately, Lamparello filed this action against Reverend Falwell and his ministries (collectively referred to hereinafter as "Reverend Falwell"), seeking a declaratory judgment of noninfringement. Reverend Falwell counter-claimed, alleging trademark infringement under 15 U.S.C (2000), false designation of origin under 15 U.S.C. 1125(a), unfair competition under 15 U.S.C and the common law of Virginia,[fn1] and cybersquatting under 15 U.S.C. 1125(d). The parties stipulated to all relevant facts and filed cross-motions for summary judgment. The district court granted summary judgment to Reverend Falwell, enjoined Lamparello from using Reverend Falwell's mark at and required Lamparello to transfer the domain name

192 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 3 of 14 9/27/2015 8:11 AM to Reverend Falwell. Lamparello, 360 F.Supp.2d at 773, 775. However, the court denied Reverend Falwell's request for statutory damages or attorney fees, reasoning that the "primary motive" of Lamparello's website was "to put forth opinions on issues that were contrary to those of [Reverend Falwell]" and "not to take away monies or to profit." Id. at 775. Lamparello appeals the district court's order; Reverend Falwell cross-appeals the denial of statutory damages and attorney fees. We review de novo a district court's ruling on cross-motions for summary judgment. See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001) [hereinafter "PETA"]. II. We first consider Reverend Falwell's claims of trademark infringement and false designation of origin. Section 32 of the Lanham Act creates a cause of action against: [a]ny person who shall, without the consent of the registrant (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. 1114(1). Similarly, Section 43(a) creates a cause of action against: [a]ny person who, on or in connection with any goods or services,... uses in commerce any word... [or] name..., or any false designation of origin, false Page 313 or misleading description of fact, or false or misleading representation of fact, which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. 15 U.S.C. 1125(a)(1)(A). A. Both infringement and false designation of origin have five elements. To prevail under either cause of action, the trademark holder must prove: (1) that it possesses a mark; (2) that the [opposing party] used the mark; (3) that the [opposing party's] use of the mark occurred "in commerce"; (4) that the [opposing party] used the mark "in connection with the sale, offering for sale, distribution, or advertising" of goods or services; and (5) that the [opposing party] used the mark in a manner likely to

193 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 4 of 14 9/27/2015 8:11 AM confuse consumers. PETA, 263 F.3d at 364 (citing 15 U.S.C. 1114, 1125, and Lone Star Steakhouse & Saloon, 43 F.3d at 930). Trademark law serves the important functions of protecting product identification, providing consumer information, and encouraging the production of quality goods and services. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995). But protections "`against unfair competition'" cannot be transformed into "`rights to control language.'" CPC Int'l, Inc. v. Skippy Inc., 214 F.3d 456, 462 (4th Cir. 2000) (quoting Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, (1999)). "Such a transformation" would raise serious First Amendment concerns because it would limit the ability to discuss the products or criticize the conduct of companies that may be of widespread public concern and importance. Much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark. Id. (internal quotation marks and citations omitted). Lamparello and his amici argue at length that application of the Lanham Act must be restricted to "commercial speech" to assure that trademark law does not become a tool for unconstitutional censorship. The Sixth Circuit has endorsed this view, see Taubman Co. v. Webfeats, 319 F.3d 770, 774 (6th Cir. 2003), and the Ninth Circuit recently has done so as well, see Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 674 (9th Cir. 2005). In its two most significant recent amendments to the Lanham Act, the Federal Trademark Dilution Act of 1995 ("FTDA") and the Anticybersquatting Consumer Protection Act of 1999 ("ACPA"), Congress left little doubt that it did not intend for trademark laws to impinge the First Amendment rights of critics and commentators. The dilution statute applies to only a "commercial use in commerce of a mark," 15 U.S.C. 1125(c)(1), and explicitly states that the "[n]oncommercial use of a mark" is not actionable. Id. 1125(c)(4). Congress explained that this language was added to "adequately address legitimate First Amendment concerns," H.R. Rep. No , at 4 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1031, and "incorporate[d] the concept of `commercial' speech from the `commercial speech' doctrine." Id. at 8, reprinted in 1995 U.S.C.C.A.N. at 1035; cf. Lorillard Tobacco Co. v. Reilly, 533 U.S. 525, 554, 121 S.Ct. 2404, 150 L.Ed.2d 532 (2001) (defining commercial Page 314 speech as "speech proposing a commercial transaction") (internal quotation marks and citation omitted). Similarly, Congress directed that in determining whether an individual has engaged in cybersquatting, the courts may consider whether the person's use of the mark is a "bona fide noncommercial or fair use." 15 U.S.C. 1125(d)(1)(B)(i)(IV). The legislature believed this provision necessary to "protect the rights of Internet users and the interests of all Americans in free speech and protected uses of trademarked names for such things as parody, comment, criticism, comparative advertising, news reporting, etc." S.Rep. No (1999), 1999 WL , at *8.

194 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 5 of 14 9/27/2015 8:11 AM In contrast, the trademark infringement and false designation of origin provisions of the Lanham Act (Sections 32 and 43(a), respectively) do not employ the term "noncommercial." They do state, however, that they pertain only to the use of a mark "in connection with the sale, offering for sale, distribution, or advertising of any goods or services," 15 U.S.C. 1114(1)(a), or "in connection with any goods or services," id. 1125(a)(1). But courts have been reluctant to define those terms narrowly.[fn2] Rather, as the Second Circuit has explained, "[t]he term `services' has been interpreted broadly" and so "[t]he Lanham Act has... been applied to defendants furnishing a wide variety of non-commercial public and civic benefits." United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, (2d Cir. 1997). Similarly, in PETA we noted that a website need not actually sell goods or services for the use of a mark in that site's domain name to constitute a use "`in connection with' goods or services." PETA, 263 F.3d at 365; see also Taubman Co., 319 F.3d at 775 (concluding that website with two links to websites of for-profit entities violated the Lanham Act). Thus, even if we accepted Lamparello's contention that Sections 32 and 43(a) of the Lanham Act apply only to commercial speech, we would still face the difficult question of what constitutes such speech under those provisions. In the case at hand, we need not resolve that question or determine whether Sections 32 and 43(a) apply exclusively to commercial speech because Reverend Falwell's claims of trademark infringement and false designation fail for a more obvious reason. The hallmark of such claims is a likelihood of confusion and there is no likelihood of confusion here. B. 1. "[T]he use of a competitor's mark that does not cause confusion as to source is permissible." Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 380 (7th Cir. 1996). Accordingly, Lamparello can only be liable for infringement and false designation if his use of Reverend Falwell's mark would be likely to cause confusion as to the source of the website found at This likelihood-of-confusion test "generally strikes a comfortable balance" between the First Amendment and the rights of markholders. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002). We have identified seven factors helpful in determining whether a likelihood of confusion exists as to the source of a work, but "not all these factors are always relevant or equally emphasized in each Page 315 case." Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) (internal quotation marks, citations, and brackets omitted). The factors are: "(a) the strength or distinctiveness of the mark; (b) the similarity of the two marks; (c) the similarity of the goods/services the marks identify; (d) the similarity of the facilities the two parties use in their businesses; (e) the similarity of the advertising used by the two parties; (f) the defendant's intent; (g) actual confusion." Id. (citation omitted). Reverend Falwell's mark is distinctive, and the domain name of Lamparello's website, closely resembles it. But, although Lamparello and Reverend Falwell employ similar marks online, Lamparello's website looks nothing like Reverend Falwell's; indeed,

195 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 6 of 14 9/27/2015 8:11 AM Lamparello has made no attempt to imitate Reverend Falwell's website. Moreover, Reverend Falwell does not even argue that Lamparello's website constitutes advertising or a facility for business, let alone a facility or advertising similar to that of Reverend Falwell. Furthermore, Lamparello clearly created his website intending only to provide a forum to criticize ideas, not to steal customers. Most importantly, Reverend Falwell and Lamparello do not offer similar goods or services. Rather they offer opposing ideas and commentary. Reverend Falwell's mark identifies his spiritual and political views; the website at criticizes those very views. After even a quick glance at the content of the website at no one seeking Reverend Falwell's guidance would be misled by the domain name into believing Reverend Falwell authorized the content of that website. No one would believe that Reverend Falwell sponsored a site criticizing himself, his positions, and his interpretations of the Bible. See New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, (9th Cir. 1992) (stating that use of a mark to solicit criticism of the markholder implies the markholder is not the sponsor of the use).[fn3] Finally, the fact that people contacted Reverend Falwell's ministry to report that they found the content at antithetical to Reverend Falwell's views does not illustrate, as Reverend Falwell claims, that the website engendered actual confusion. To the contrary, the anecdotal evidence Reverend Falwell submitted shows that those searching for Reverend Falwell's site and arriving instead at Lamparello's site quickly realized that Reverend Falwell was not the source of the content therein. For all of these reasons, it is clear that the undisputed record evidences no likelihood of confusion. In fact, Reverend Falwell even conceded at oral argument that those viewing the content of Lamparello's website probably were unlikely to confuse Reverend Falwell with the source of that material. 2. Nevertheless, Reverend Falwell argues that he is entitled to prevail under the "initial interest confusion" doctrine. This relatively new and sporadically applied doctrine holds that "the Lanham Act Page 316 forbids a competitor from luring potential customers away from a producer by initially passing off its goods as those of the producer's, even if confusion as to the source of the goods is dispelled by the time any sales are consummated." Dorr-Oliver, 94 F.3d at 382. According to Reverend Falwell, this doctrine requires us to compare his mark with Lamparello's website domain name, without considering the content of Lamparello's website. Reverend Falwell argues that some people who misspell his name may go to assuming it is his site, thus giving Lamparello an unearned audience albeit one that quickly disappears when it realizes it has not reached Reverend Falwell's site. This argument fails for two reasons. First, we have never adopted the initial interest confusion theory; rather, we have followed a very different mode of analysis, requiring courts to determine whether a likelihood of confusion exists by "examin[ing] the allegedly infringing use in the context in which it is seen by the ordinary consumer." Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 319 (4th Cir. 1992) (emphasis added) (citing cases); see also What-A-Burger of Va., Inc. v. Whataburger, Inc., 357 F.3d 441,

196 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 7 of 14 9/27/2015 8:11 AM 450 (4th Cir. 2004). Contrary to Reverend Falwell's arguments, we did not abandon this approach in PETA. Our inquiry in PETA was limited to whether Doughney's use of the domain name " constituted a successful enough parody of People for the Ethical Treatment of Animals that no one was likely to believe was sponsored or endorsed by that organization. For a parody to be successful, it "must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original and is instead a parody." PETA, 263 F.3d at 366 (internal quotation marks and citation omitted). Doughney argued that his domain name conveyed the first message (that it was PETA's website) and that the content of his website conveyed the requisite second message (that it was not PETA's site). Id. Although "[t]he website's content ma[de] it clear that it [wa]s not related to PETA," id., we concluded that the website's content could not convey the requisite second message because the site's content "[wa]s not conveyed simultaneously with the first message, [i.e., the domain name itself,] as required to be considered a parody." Id. at 366. Accordingly, we found the "district court properly rejected Doughney's parody defense." Id. at 367. PETA simply outlines the parameters of the parody defense; it does not adopt the initial interest confusion theory or otherwise diminish the necessity of examining context when determining whether a likelihood of confusion exists. Indeed, in PETA itself, rather than embracing a new approach, we reiterated that "[t]o determine whether a likelihood of confusion exists, a court should not consider how closely a fragment of a given use duplicates the trademark, but must instead consider whether the use in its entirety creates a likelihood of confusion." Id. at 366 (internal quotation marks and citation omitted) (emphasis added). When dealing with domain names, this means a court must evaluate an allegedly infringing domain name in conjunction with the content of the website identified by the domain name.[fn4] Page 317 Moreover, even if we did endorse the initial interest confusion theory, that theory would not assist Reverend Falwell here because it provides no basis for liability in circumstances such as these. The few appellate courts that have followed the Ninth Circuit and imposed liability under this theory for using marks on the Internet have done so only in cases involving a factor utterly absent here one business's use of another's mark for its own financial gain. See, e.g., PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, 253 (6th Cir. 2003); Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002); Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, (9th Cir. 1999). Profiting financially from initial interest confusion is thus a key element for imposition of liability under this theory.[fn5] When an alleged infringer does not compete with the markholder for sales, "some initial confusion will not likely facilitate free riding on the goodwill of another mark, or otherwise harm the user claiming infringement. Where confusion has little or no meaningful effect in the marketplace, it is of little or no consequence in our analysis." Checkpoint Sys., 269 F.3d at For this reason, even the Ninth Circuit has stated that a firm is not liable for using another's mark in its domain name if it "could not financially capitalize on [a] misdirected consumer [looking for the markholder's site] even if it so desired." Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002).

197 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 8 of 14 9/27/2015 8:11 AM This critical element use of another firm's mark to capture the markholder's customers and profits simply does not exist when the alleged infringer establishes a gripe site that criticizes the markholder. See Hannibal Travis, The Battle For Mindshare: The Emerging Consensus that the First Amendment Protects Corporate Criticism and Parody on the Internet, 10 Va. J.L. & Tech. 3, 85 (Winter 2005) ("The premise of the `initial interest' confusion cases is that by using the plaintiff's trademark to divert its customers, the defendant is engaging in the old `bait and switch.' But because... Internet users who find [gripe sites] are not sold anything, the mark may be the `bait,' but there is simply no `switch.'") (citations omitted).[fn6] Applying the initial interest Page 318 confusion theory to gripe sites like Lamparello's would enable the markholder to insulate himself from criticism or at least to minimize access to it. We have already condemned such uses of the Lanham Act, stating that a markholder cannot "`shield itself from criticism by forbidding the use of its name in commentaries critical of its conduct.'" CPC Int'l, 214 F.3d at 462 (quoting L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 33 (1st Cir. 1987)). "[J]ust because speech is critical of a corporation and its business practices is not a sufficient reason to enjoin the speech." Id. In sum, even if we were to accept the initial interest confusion theory, that theory would not apply in the case at hand. Rather, to determine whether a likelihood of confusion exists as to the source of a gripe site like that at issue in this case, a court must look not only to the allegedly infringing domain name, but also to the underlying content of the website. When we do so here, it is clear, as explained above, that no likelihood of confusion exists. Therefore, the district court erred in granting Reverend Falwell summary judgment on his infringement, false designation, and unfair competition claims. III. We evaluate Reverend Falwell's cybersquatting claim separately because the elements of a cybersquatting violation differ from those of traditional Lanham Act violations. To prevail on a cybersquatting claim, Reverend Falwell must show that Lamparello: (1) "had a bad faith intent to profit from using the [ domain name," and (2) the domain name "is identical or confusingly similar to, or dilutive of, the distinctive and famous [Falwell] mark." PETA, 263 F.3d at 367 (citing 15 U.S.C. 1125(d)(1)(A)). "The paradigmatic harm that the ACPA was enacted to eradicate" is "the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark." Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 810 (6th Cir. 2004). The Act was also intended to stop the registration of multiple marks with the hope of selling them to the highest bidder, "distinctive marks to defraud consumers" or "to engage in counterfeiting activities," and "well-known marks to prey on consumer confusion by misusing the domain name to divert customers from the mark owner's site to the cybersquatter's own site, many of which are pornography sites that derive advertising revenue based on the number of visits, or `hits,' the site receives." S.Rep. No , 1999 WL , at *5-6. The Act was not intended to prevent "noncommercial uses of a mark, such as for comment, criticism, parody, Page 319 news reporting, etc.," and thus they "are beyond the scope" of the ACPA. Id. at *9.

198 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 9 of 14 9/27/2015 8:11 AM To distinguish abusive domain name registrations from legitimate ones, the ACPA directs courts to consider nine nonexhaustive factors: (I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of the registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of this section. 15 U.S.C. 1125(d)(1)(B)(i); see also H.R. Rep. No (1999), 1999 WL , at *10. These factors attempt "to balance the property interests of trademark owners with the legitimate interests of Internet users and others who

199 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 10 of 14 9/27/2015 8:11 AM seek to make lawful uses of others' marks, including for purposes such as comparative advertising, comment, criticism, parody, news reporting, fair use, etc." H.R. Rep. No , 1999 WL , at *10 (emphasis added). "The first four [factors] suggest circumstances that may tend to indicate an absence of bad-faith intent to profit from the goodwill of a mark, and the others suggest circumstances that may tend to indicate that such bad-faith intent exists." Id. However, "[t]here is no simple formula for evaluating and weighing these factors. For example, courts do not simply count up which party has more factors in its favor after the evidence is in." Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 234 (4th Cir. 2002). In fact, because use of these listed factors is permissive, "[w]e need not... march through" them all in every case. Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 269 (4th Cir. 2001). "The factors are Page 320 given to courts as a guide, not as a substitute for careful thinking about whether the conduct at issue is motivated by a bad faith intent to profit." Lucas Nursery & Landscaping, 359 F.3d at 811. After close examination of the undisputed facts involved in this case, we can only conclude that Reverend Falwell cannot demonstrate that Lamparello "had a bad faith intent to profit from using the [ domain name." PETA, 263 F.3d at 367. Lamparello clearly employed simply to criticize Reverend Falwell's views. Factor IV of the ACPA, 15 U.S.C. 1125(d)(1)(B)(i)(IV), counsels against finding a bad faith intent to profit in such circumstances because "use of a domain name for purposes of... comment, [and] criticism," H.R. Rep. No , 1999 WL , at *11, constitutes a "bona fide noncommercial or fair use" under the statute, 15 U.S.C. 1125(d)(1)(B)(i)(IV).[fn7] That Lamparello provided a link to an Amazon.com webpage selling a book he favored does not diminish the communicative function of his website. The use of a domain name to engage in criticism or commentary "even where done for profit" does not alone evidence a bad faith intent to profit, H.R. Rep. No , 1999 WL , at *11, and Lamparello did not even stand to gain financially from sales of the book at Amazon.com. Thus factor IV weighs heavily in favor of finding Lamparello lacked a bad faith intent to profit from the use of the domain name. Equally important, Lamparello has not engaged in the type of conduct described in the statutory factors as typifying the bad faith intent to profit essential to a successful cybersquatting claim. First, we have already held, supra Part II.B, that Lamparello's domain name does not create a likelihood of confusion as to source or affiliation. Accordingly, Lamparello has not engaged in the type of conduct "creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site," 15 U.S.C. 1125(d)(1)(B)(i)(V) described as an indicator of a bad faith intent to profit in factor V of the statute. Factors VI and VIII also counsel against finding a bad faith intent to profit here. Lamparello has made no attempt or even indicated a willingness "to transfer, sell, or otherwise assign the domain name to [Reverend Falwell] or any third party for financial gain." 15 U.S.C. 1125(d)(1)(B)(i)(VI). Similarly, Lamparello has not registered "multiple domain names," 15 U.S.C. 1125(d)(1)(B)(i)(VIII); rather, the record indicates he has registered only one. Thus, Lamparello's conduct is not of the suspect variety described in factors VI and VIII of the Act. Notably, the case at hand differs markedly from those in which the

200 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 11 of 14 9/27/2015 8:11 AM courts have found a bad faith intent to profit from domain names used for websites engaged in political commentary or parody. For Page 321 example, in PETA we found the registrant of engaged in cybersquatting because was one of fifty to sixty domain names Doughney had registered, PETA, 263 F.3d at 362, and because Doughney had evidenced a clear intent to sell to PETA, stating that PETA should try to "`settle' with him and `make him an offer.'" Id. at 368. See also Virtual Works, 238 F.3d at Similarly, in Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), the Eighth Circuit found an anti-abortion activist who had registered domain names incorporating famous marks such as "Washington Post" liable for cybersquatting because he had registered almost seventy domain names, had offered to stop using the Washington Post mark if the newspaper published an opinion piece by him on its editorial page, and posted content that created a likelihood of confusion as to whether the famous markholders sponsored the anti-abortion sites and "ha[d] taken positions on hotly contested issues." Id. at 786. In contrast, Lamparello did not register multiple domain names, he did not offer to transfer them for valuable consideration, and he did not create a likelihood of confusion. Instead, Lamparello, like the plaintiffs in two cases recently decided by the Fifth and Sixth Circuits, created a gripe site. Both courts expressly refused to find that gripe sites located at domain names nearly identical to the marks at issue violated the ACPA. In TMI, Inc. v. Maxwell, 368 F.3d 433, (5th Cir. 2004), Joseph Maxwell, a customer of homebuilder TMI, registered the domain name " which differed by only one letter from TMI's mark, TrendMaker Homes, and its domain name, " Maxwell used the site to complain about his experience with TMI and to list the name of a contractor whose work pleased him. After his registration expired, Maxwell registered " TMI then sued, alleging cybersquatting. The Fifth Circuit reversed the district court's finding that Maxwell violated the ACPA, reasoning that his site was noncommercial and designed only "to inform potential customers about a negative experience with the company." Id. at Similarly, in Lucas Nursery & Landscaping, a customer of Lucas Nursery registered the domain name " and posted her dissatisfaction with the company's landscaping services. Because the registrant, Grosse, like Lamparello, registered a single domain name, the Sixth Circuit concluded that her conduct did not constitute that which Congress intended to proscribe i.e., the registration of multiple domain names. Lucas Nursery & Landscaping, 359 F.3d at 810. Noting that Grosse's gripe site did not create any confusion as to sponsorship and that she had never attempted to sell the domain name to the markholder, the court found that Grosse's conduct was not actionable under the ACPA. The court explained: "One of the ACPA's main objectives is the protection of consumers from slick internet peddlers who trade on the names and reputations of established brands. The practice of informing fellow consumers of one's experience with a particular service provider is surely not inconsistent with this ideal." Id. at 811. Like Maxwell and Grosse before him, Lamparello has not evidenced a bad faith intent to profit under the ACPA. To the contrary, he has used to engage in the type of "comment [and] criticism" that Congress specifically stated militates against a finding of bad faith intent to profit. See S.Rep. No , 1999 WL , at *14. And he has neither registered multiple domain names nor attempted to transfer Page 322

201 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 12 of 14 9/27/2015 8:11 AM for valuable consideration. We agree with the Fifth and Sixth Circuits that, given these circumstances, the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting. IV. For the foregoing reasons, Lamparello, rather than Reverend Falwell, is entitled to summary judgment on all counts.[fn8] Accordingly, the judgment of the district court is reversed and the case is remanded for entry of judgment for Lamparello. REVERSED AND REMANDED. [fn1] As the district court noted, although Reverend Falwell "assert[s] a claim under 15 U.S.C. [ ] 1126 for a violation of federal unfair competition law, no such cause of action exists. False Designation of Origin is commonly referred to as unfair competition law...." Lamparello v. Falwell, 360 F.Supp.2d 768, 773 n. 2 (E.D.Va. 2004). Accordingly, the district court "construed any claim by [Falwell] for violation of federal unfair competition law as a claim for violation of 15 U.S.C. [ ] 1125." Id. We will do the same. Furthermore, because "[t]he test for trademark infringement and unfair competition under the Lanham Act is essentially the same as that for common law unfair competition under Virginia law because both address the likelihood of confusion as to the source of the goods or services involved," Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930 n. 10 (4th Cir. 1995), Reverend Falwell's state-law unfair competition claim rises or falls with his federal claims of infringement and false designation of origin. Therefore, we will not analyze his state-law claim separately. [fn2] Indeed, Lamparello agreed at oral argument that the Lanham Act's prohibitions on infringement and false designation apply to more than just commercial speech as defined by the Supreme Court. [fn3] If Lamparello had neither criticized Reverend Falwell by name nor expressly rejected Reverend Falwell's teachings, but instead simply had quoted Bible passages and offered interpretations of them subtly different from those of Reverend Falwell, this would be a different case. For, while a gripe site, or a website dedicated to criticism of the markholder, will seldom create a likelihood of confusion, a website purporting to be the official site of the markholder and, for example, articulating positions that could plausibly have come from the markholder may well create a likelihood of confusion. [fn4] Contrary to Reverend Falwell's suggestions, this rule does not change depending on how similar the domain name or title is to the mark. Hence, Reverend Falwell's assertion that he objects only to Lamparello using the domain name and has no objection to Lamparello posting his criticisms at " or a similar domain name, does not entitle him to a different evaluation rule. Rather it has long been established that even when alleged infringers use the very marks at issue in titles, courts look to the underlying content to determine whether the titles create a likelihood of confusion as to source. See, e.g., Parks v. LaFace Records, 329 F.3d 437, (6th Cir. 2003); Mattel, 296 F.3d at ; Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, (5th Cir. 2000); Rogers v. Grimaldi, 875 F.2d 994, (2d Cir. 1989).

202 LAMPARELLO v. FALWELL, 420 F.3d 309 (4th Cir. 2005) 13 of 14 9/27/2015 8:11 AM [fn5] Offline uses of marks found to cause actionable initial interest confusion also have involved financial gain. See Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 204 (5th Cir. 1998); Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 260 (2d Cir. 1987). And even those courts recognizing the initial interest confusion theory of liability but finding no actionable initial confusion involved one business's use of another's mark for profit. See, e.g., Savin Corp. v. The Savin Group, 391 F.3d 439, 462 n. 13 (2d Cir. 2004); AM Gen. Corp. v. DaimlerChrysler Corp., 311 F.3d 796, (7th Cir. 2002); Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 298 (3d Cir. 2001); Hasbro, Inc. v. Clue Computing, Inc., 232 F.3d 1, 2 (1st Cir. 2000); Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 638 (7th Cir. 1999); Rust Env't & Infrastructure, Inc. v. Teunissen, 131 F.3d 1210, 1217 (7th Cir. 1997); Dorr-Oliver, 94 F.3d at 383. [fn6] Although the appellate courts that have adopted the initial interest confusion theory have only applied it to profit-seeking uses of another's mark, the district courts have not so limited the application of the theory. Without expressly referring to this theory, two frequently-discussed district court cases have held that using another's domain name to post content antithetical to the markholder constitutes infringement. See Planned Parenthood Fed'n of Am., Inc. v. Bucci, No. 97 Civ. 0629, 1997 WL (S.D.N.Y. March 24, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (table) (finding use of domain name " to provide links to passages of anti-abortion book constituted infringement); Jews for Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J. 1998), aff'd, 159 F.3d 1351 (3d Cir. 1998) (table) (finding use of " to criticize religious group constituted infringement). We think both cases were wrongly decided to the extent that in determining whether the domain names were confusing, the courts did not consider whether the websites' content would dispel any confusion. In expanding the initial interest confusion theory of liability, these cases cut it off from its moorings to the detriment of the First Amendment. [fn7] We note that factor IV does not protect a faux noncommercial site, that is, a noncommercial site created by the registrant for the sole purpose of avoiding liability under the FTDA, which exempts noncommercial uses of marks, see 15 U.S.C. 1125(c)(4)(B), or under the ACPA. As explained by the Senate Report discussing the ACPA, an individual cannot avoid liability for registering and attempting to sell a hundred domain names incorporating famous marks by posting noncommercial content at those domain names. See S.Rep. No , 1999 WL , at *14 (citing Panavision Int'l v. Toeppen, 141 F.3d 1316 (9th Cir. 1998)). But Lamparello's sole purpose for registering was to criticize Reverend Falwell, and this noncommercial use was not a ruse to avoid liability. Therefore, factor IV indicates that Lamparello did not have a bad faith intent to profit. [fn8] Given our resolution of Lamparello's appeal, Reverend Falwell's cross-appeal with respect to statutory damages and attorney fees is moot.

203 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 1 of 11 10/28/2010 9:02 PM United States 9th Circuit Court of Appeals Reports DSPT INTERNATIONAL v. NAHUM, (9th Cir ) DSPT INTERNATIONAL, INC., a California corporation, Plaintiff-Appellee, v. LUCKY NAHUM, an individual, Defendant-Appellant. No United States Court of Appeals, Ninth Circuit. Argued and Submitted May 6, 2009 Pasadena, California. Filed October 27, Appeal from the United States District Court for the Central District of California Otis D. Wright, District Judge, Presiding, D.C. No. CV ODW. Andres F. Quintana, Quintana Law Group, APC, Woodland Hills, California, for the appellant. John C. Gorman, Gorman & Miller, P.C., San Jose, California, for the appellee. Before: Cynthia Holcomb Hall, Andrew J. Kleinfeld and Barry G. Silverman, Circuit Judges. Opinion by Judge Kleinfeld. KLEINFELD, Circuit Judge: OPINION We address the scope of the Anticybersquatting Consumer Protection Act. I. Facts This case was tried to a jury, and the appellant challenges the jury verdict, so we "view the evidence in the light most favorable to the nonmoving party... and draw all reasonable inferences in that party's favor."[fn1] DSPT, founded and owned by Paolo Dorigo, designs, manufactures, and imports men's clothing. The company sells clothes to between 500 and 700 retailers. It sells mostly shirts, but also some knitwear, trousers, and t-shirts. Its brand name since 1988 had been Equilibrio. To serve a younger market with somewhat "trendier, tighter fitting fashion," the company created the EQ brand name in At about that time, Dorigo brought his friend Lucky Nahum into the business. Dorigo lived in Los Angeles, Nahum in Rochester, New York. They decided to set up a site on what was then the fledgling internet, and Nahum 's brother, a hairdresser, was doing part-time website design, so DSPT had Nahum arrange to have his brother prepare the site. The

204 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 2 of 11 10/28/2010 9:02 PM website, " (eq for the brand, Italy for Dorigo's and the style's origin), was created solely for DSPT for the purpose of showing DSPT clothes. Nahum 's brother designed the website in consultation with Dorigo, though Nahum registered the site to himself. This seemed trivial at the time, since Nahum was working exclusively for DSPT and registration cost only $25. Dorigo, who was not knowledgeable or interested in computer matters, was unaware that the registration was in Nahum's name. The importance of the website grew with the importance of the internet. By 2005, the website served as DSPT's catalog. Customers accessed it 24 hours a day, chose designs from it, and sent in orders through it. DSPT ed them about new items on the site. Salesmen sold DSPT clothes to retailers by referring them to pictures on the website and soliciting their orders based on the pictures. Unfortunately, during the same period, the friendship between Dorigo and Nahum soured. Nahum 's DSPT contract was up for renewal August 31, 2005, so Dorigo sent him a proposal in mid-august. At the same time, DSPT paid Nahum 's airfare, hotel, and meals for a trip to Las Vegas for the West Coast Exclusive Wear show, an offshoot of the largest menswear show in the world (MAGIC, Men's Apparel Guild in California) which was taking place in Las Vegas. But while there, Nahum spent time in a competitor's booth, and arranged employment with that DSPT competitor. Though Dorigo was also at the show and asked Nahum whether he would be renewing his contract, Nahum only informed Dorigo by after the show that he was not renewing his contract. At the beginning of October, DSPT's website mysteriously disappeared. If a customer typed "eq-italy.com" into his web browser, instead of seeing DSPT 's clothing line, all he saw was a screen saying "All fashion related questions to be referred to Lucky Nahum at: lnahum@yahoo.com." Nahum had no use for the website, but he told his new boss at DSPT 's competitor that "he had inserted that sentence in order to get Equilibrio [ DSPT 's older brand] to pay him funds that were due to him." DSPT repeatedly but unsuccessfully asked Nahum to give back the website. This created a crisis for DSPT. Retailers do around three fourths of their business during the last quarter of the year, so wholesalers and manufacturers, like DSPT, do a large percentage of their business supplying retailers during October, November, and the first part of December. DSPT's website in the fall also generated the orders for the upcoming spring. Without its website, DSPT could not sell anything in a manner approaching its previous efficiency. It was forced to go back to the old way of sending out samples, but retailers did not want to deal with DSPT using the old method. Sales plummeted and inventory was left over in the spring from the very bad fall had been good, and the first quarter of 2005 was the best ever, but the last quarter of 2005, and all of 2006, were disastrous. A lot of inventory had to be sold below cost. DSPT spent $31,572.72, plus a great deal of time, writing to customers to explain the situation and replacing its website and the stationery that referred customers to "eq-italy.com." DSPT sued Nahum for "cybersquatting" and trademark infringement in violation of the Lanham Act.[fn2] Nahum counterclaimed for $14, in additional commissions he claimed he was owed. The case was tried to a jury. The jury returned a special verdict, finding, among other things, that "EQ" and "Equilibrio" were valid trademarks owned by DSPT ; that "Lucky Nahum registered, trafficked in, or used the domain name"; that the name was identical or confusingly similar to DSPT 's distinctive trademark; and that "Lucky

205 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 3 of 11 10/28/2010 9:02 PM Nahum commit[ed] the acts with a bad faith intent to profit from DSPT 's mark." The jury found that DSPT 's damages were $152,000. As for Nahum 's counterclaim for commissions, the jury found that DSPT did not breach its contract with him and owed him nothing. The district court denied Nahum 's renewed motions for judgment as a matter of law, remittitur, and new trial. Nahum appeals, and we affirm. A. Standard of Review II. Analysis We review denial of a motion for judgment as a matter of law de novo, [fn3] and denial of a motion for new trial and remittitur for abuse of discretion.[fn4] A district court may grant a new trial only if the jury verdict is contrary to the clear weight of the evidence.[fn5] The district court's denial of a motion for a new trial is reversible "only if the record contains no evidence in support of the verdict" or if the district court "made a mistake of law."[fn6] "A jury's verdict must be upheld if it is supported by substantial evidence, which is evidence adequate to support the jury's conclusion, even if it is also possible to draw a contrary conclusion."[fn7] "We must view the evidence in the light most favorable to the nonmoving party... and draw all reasonable inferences in that party's favor."[fn8] A jury verdict should be set aside only when "the evidence permits only one reasonable conclusion, and that conclusion is contrary to the jury's verdict."[fn9] On appeal, Nahum argues that the anti-cybersquatting statute has no application to the conduct in this case, that DSPT did not own the trademarks and that EQ-Italy was not identical or confusingly similar to DSPT 's marks, that there was no evidence of bad-faith intent to profit, and that there was insufficient evidence to support the damages award. B. The Anticybersquatting Consumer Protection Act. [1] The Anti-Cybersquatting Consumer Protection Act establishes civil liability for "cyberpiracy" where a plaintiff proves that (1) the defendant registered, trafficked in, or used a domain name; (2) the domain name is identical or confusingly similar to a protected mark owned by the plaintiff; and (3) the defendant acted "with bad faith intent to profit from that mark."[fn10] Nahum first argues that as a matter of law, this statute does not apply to what he did. He argues that the statute applies only to one who registers a well-known trademark as a domain name, and then attempts to profit in bad faith by either (1) selling the domain name back to the trademark holder, or (2) using the domain name to divert business from the trademark holder. He argues that he cannot owe damages under the statute because the evidence shows only that he used DSPT's mark to gain leverage over DSPT in bargaining for money he claimed he was owed, not to sell under DSPT's mark or sell the mark to DSPT. He argues that even if in some sense he had a bad-faith intent to profit, any "intent to profit" under the act must be an intent to profit from the goodwill associated with the mark rather than to gain some other benefit. The core of his argument is that he did not register the domain name in bad faith, and used it only to get what he was entitled to. [2] His arguments are not implausible, but we conclude that they are mistaken. True, the statute was intended to prevent cybersquatters from registering well-known brand names as internet domain names in order to make the trademark owners buy the ability to do business under their own

206 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 4 of 11 10/28/2010 9:02 PM names.[fn11] Nahum cites a remark in a Senate Committee report mentioning the intent to profit from the goodwill associated with someone else's trademark.[fn12] And the Sixth Circuit noted that "[t]he paradigmatic harm that the [Anticybersquatting Consumer Protection Act] was enacted to eradicate [was] the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark."[fn13] [3] But the statute, like so many, is written more broadly than what may have been the political catalyst that got it passed. As in Bosley Medical Institute v. Kremer, we conclude that the words of the statute are broader than this political stimulus that led to its enactment.[fn14] Though there was no evidence of anything wrong with Nahum's registration of the domain name to himself, the evidence supported a verdict that Nahum subsequently, years later, used the domain name to get leverage for his claim for commissions. The statute says "registers, traffics in, or uses," with "or" between the terms, so use alone is enough to support a verdict, even in the absence of violative registration or trafficking. [4] As for whether use to get leverage in a business dispute can establish a violation, the statutory factors for "bad faith intent" establish that it can.[fn15] "Evidence of bad faith may arise well after registration of the domain name."[fn16] The statute contains a safe harbor provision, excluding a finding of "bad faith intent" for persons who reasonably believed that use of the domain name was fair use or otherwise lawful, [fn17] but that safe harbor has no application here. Nahum could not have reasonably believed that he could lawfully use "eq-italy" when he no longer worked for DSPT. The safe harbor protects uses such as parody and comment, [fn18] and use by persons ignorant of another's superior right to the mark.[fn19] [5] The statute provides that a court "may consider factors such as, but not limited to" the previously enumerated list of nine.[fn20] Nahum does not challenge the jury instruction, which listed all of the factors, even though some have no bearing on this case, and some do not offer either side much support. One of the factors, number VI in the statute, strongly supports DSPT's claim. That factor notes that it is "indicative" of a "bad faith intent to profit" from the mark if the person offering to transfer the domain name to the owner of the mark has never actually used or intended to use the domain name for bona fide sales of goods.[fn21] [6] Factor VI may fairly be read to mean that it is bad faith to hold a domain name for ransom, [fn22] where the holder uses it to get money from the owner of the trademark rather than to sell goods. The jury had evidence that Nahum was using the "eq-italy.com" domain name as leverage to get DSPT to pay him the disputed commissions, not for the bona fide sale of clothes. Though there was no direct evidence of an explicit offer to sell the domain to DSPT for a specified amount, the jury could infer the intent to give back the site to DSPT only if DSPT paid Nahum the disputed commissions. The "intent to profit," as factor VI shows, means simply the intent to get money or other valuable consideration. "Profit" does not require that Nahum receive more than he is owed on his disputed claim. Rather, "[p]rofit includes an attempt to procure an advantageous gain or return."[fn23] Thus, it does not matter that, as the jury concluded, Nahum's claim for unpaid commissions was meritless, because he could not hold the domain name for ransom even if he had been owed commissions. [7] In this case, shortly after DSPT 's content disappeared from

207 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 5 of 11 10/28/2010 9:02 PM eq-italy.com, Nahum ed Dorigo stating that the eq-italy.com website would be back up under a new format. Nahum testified that he would transfer the domain to DSPT after Nahum and DSPT were able to resolve the "monetary issues regarding [ Nahum 's] commissions." Nahum 's subsequent employer testified that Nahum told him that DSPT wanted the website returned to them, but Nahum was keeping it to use it as leverage in order to get the money he said DSPT owed him. This is evidence of an "intent to profit" under the Act. C. Distinctive and Confusingly Similar [8] Nahum's second argument is that there was no evidence from which a jury could conclude that " was a distinctive mark, or that it was confusingly similar to DSPT's "EQ" mark. The latter point is meritless, since the evidence showed that only DSPT used the mark "EQ" for a men's shirts line, and used the Italian fashion connection as a selling point. Even though DSPT had not registered the "EQ" mark, ownership of common law trademark "is obtained by actual use of a symbol to identify the goods or services of one seller and distinguish them from those offered by others."[fn24] The evidence shows that DSPT used the mark in commerce in fall 1999, when it exhibited EQ at the New York fashion shows[fn25] and thereafter used the "EQ" symbol. Although Nahum showed that others used an "EQ" mark in subsequent years for other sorts of goods, such as online publications, engine cylinder heads, and bicycles, no one would likely confuse these goods with DSPT's.[fn26] The only other use that was even arguably confusingly similar was EQ equestrian clothing, but the jury could conclude that retailers shopping for men's shirts are unlikely to be confused by a mark also used for equestrian clothing, and that the style in which the marks were displayed was too different to foster confusion. The shirts were marked by the letters EQ, whereas the equestrian apparel was marked by a rectangle inside another rectangle. [9] As for whether "eq-italy.com" is "confusingly similar"[fn27] to EQ, a jury could reasonably conclude that in the context of men's shirts, it was. The jury could have concluded that, at the time Nahum used it, the mark was distinctive and his use of the site after leaving DSPT would confuse retailers trying to shop DSPT 's catalog at the website where they had done so before.[fn28] In fact, as Dorigo testified, several customers were actually confused by the alteration of the website. "Now, people would still call and say, what happened? Where is it? You know, they wanted to know what's this screen?" By 2005, eq-italy.com was identified with EQ and Equilibrio. The similarity of "EQ" and "eq-italy" is considerably greater than "perfumebay.com" and "ebay.com," which we held were similar, and thus the jury's finding should be upheld.[fn29] D. Damages [10] Nahum argues that there was insufficient evidence to support the damages award of $152,000. Under the cybersquatting statute, DSPT was entitled to "any damages" it sustained, [fn30] which, like tort damages, are the reasonably foreseeable harms caused by the wrong.[fn31] The district court barred the testimony of DSPT's expert witness (a ruling not on appeal), so there was no testimony supporting a precise number. But the jury did have as admitted exhibits DSPT's financial statements providing detailed information on sales, expenses, and profits for all those years, as well as DSPT 's president's testimony about the financial impact of Nahum 's cyberpiracy. The wronged party has the burden of proof as to damages, [fn32] but the nature of the proof required depends on the circumstances of the case.

208 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 6 of 11 10/28/2010 9:02 PM [fn33] The calculation is "subject to the principles of equity."[fn34] Because Nahum did not, so far as the record indicates, divert trade from DSPT to himself or his new employer, "defendant's profits"[fn35] were not sought and are not at issue, only consequential damages to DSPT. [11] Nahum 's conduct was not an unintentional infringement where the defendant failed to provide financial information it should have been able to provide, as in Lindy Pen Co., Inc. v. Bic Pen Corp.[fn36] It was an intentional infringement, so our language in Intel Corporation v. Terabyte International, Inc.[fn37] applies. In Intel, we affirmed a "crude" measure of damages that depended on an inference that was "not inexorable, neither [was] it fanciful."[fn38] [12] In the circumstances of this case, precision in the calculation of damages is neither necessary nor possible. Nahum 's wrong made it impossible to know with any precision what DSPT 's sales would have been had he not committed his wrong. Requiring more precision than can be attained, especially where the impossibility of more precise ascertainment was the fault of the wrongdoer, would be inequitable and is not required. "[A] defendant whose wrongful conduct has rendered difficult the ascertainment of the precise damages suffered by the plaintiff, is not entitled to complain that they cannot be measured with the same exactness and precision as would otherwise be possible."[fn39] Just as a business could not know how many phone calls it did not get because its phone number was wrong in the yellow pages, DSPT could not know how many shirts it did not sell because retailers could not find its website. [13] Given the impossibility of precise measurements, the jury had sufficient tools for estimating DSPT's actual damages, including financial statements bracketing the period of the loss and testimony that DSPT spent $31, recreating its website. The law does not require expert testimony to establish damages, [fn40] though that would have made the jury's task easier. It is hard to see what additional data, as opposed to opinion, could have been provided that would have been of any use. Nahum argues that DSPT is not entitled to damages for the expense of recreating the website, but we cannot see why not, since that was a natural and foreseeable consequence of his holding the original site for ransom. The testimony and DSPT's financial statements showed gross profits down around $620,000 in 2006, after an excellent start in early 2005 but a decline when the website disappeared after Nahum took his new job. DSPT presented evidence that the August 2005 show went very well and that the men's clothing market generally went up in "Proof of a decline in sales combined with evidence tending to discount the importance of other market factors, such as the evidence of positive business conditions and the success of similar businesses not subject to the defendant's tortious conduct, can be sufficient to establish a causal connection between the plaintiff's decline in sales and the misconduct of the defendant."[fn41] [14] We must uphold the jury's damages verdict "whenever possible, and all presumptions are in favor of the judgment."[fn42] It is quite possible that the jurors believed Dorigo's testimony about the impact on sales of the unavailability of DSPT's website, and some jurors were familiar with financial statements and went through them, showing the other jurors that $150,000 was a reasonable estimate of the lost profits and replacement cost. In closing argument, DSPT's lawyer argued based on the financial statements for lost sales of $1,200,000 for the relevant period, and a profit margin around 20%, plus approximately $32,000 for rebuilding the web site. After subtracting $32,000 from the $152,000

209 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 7 of 11 10/28/2010 9:02 PM award, only $120,000 of lost profits need to be justified. DSPT's closing argument would suggest a figure of about $240,000 for lost profits (20% of $1,200,000). The jury might reasonably have examined the financial statements, discounted the $240,000 in light of the financial statements and in light of other inferences that might explain some of the loss, and concluded that about one half DSPT's lawyer's argued figure, $120,000, was a fair estimate of its lost profits. That would not be unreasonable. III. Conclusion Even if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. 1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom. The evidence sufficiently supported the jury's verdict that Nahum did so, causing $152,000 in damages to DSPT. AFFIRMED. [fn1] Josephs v. Pac. Bell, 443 F.3d 1050, 1062 (9th Cir. 2006). [fn2] Only the cybersquatting claim is on appeal. DSPT also brought claims (1) for unfair competition and misleading advertising under California Business and Professional Code and 17500, (2) for intentional interference with prospective business relations, and (3) for negligent interference with prospective business relations. DSPT voluntarily dismissed its negligent interference claim. After trial, the district court granted Nahum 's motion for judgment as a matter of law as to the trademark infringement claim and the intentional interference claim. The district court also rejected DSPT 's claims under sections and DSPT also sued Jaysix, the competitor for whom Nahum went to work, but all claims against Jaysix were dismissed and are not before us. [fn3] Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir. 2002). [fn4] Cooper v. Firestone Tire & Rubber Co., 945 F.2d 1103, (9th Cir. 1991). [fn5] Silver Sage Partners Ltd. v. City of Desert Hot Springs, 251 F.3d 814, 819 (9th Cir. 2001). [fn6] Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007) (internal quotation marks and citations omitted). [fn7] Pavao, 307 F.3d at 918. [fn8] Josephs v. Pac. Bell, 443 F.3d 1050, 1062 (9th Cir. 2006). [fn9] Id. [fn10] In relevant part, the statute reads:

210 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 8 of 11 10/28/2010 9:02 PM A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii) registers, traffics in, or uses a domain name that (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark. 15 U.S.C. 1125(d)(1)(A). [fn11] Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002). [fn12] S. Rep. No at 9-10 (1999), available at getdoc.cgi?dbname=106_cong_reports&docid=f:sr 140.pdf. [fn13] Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 810 (6th Cir. 2004). [fn14] 403 F.3d 672, (9th Cir. 2005). [fn15] 15 U.S.C. 1125(d)(1)(B)(i)(I)-(IX). The factors considered are: (I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

211 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 9 of 11 10/28/2010 9:02 PM (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accu rate contact information, or the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the par ties; and (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section. [fn16] Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1202 (9th Cir. 2009) (citation omitted). [fn17] 15 U.S.C. 1125(d)(1)(B)(ii). [fn18] See, e.g., Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, (9th Cir. 2002). [fn19] See, e.g., 15 U.S.C (innocent infringement by publishers); 15 U.S.C (innocent infringement as a defense to right to use a mark). [fn20] See supra n. 15; see also 15 U.S.C. 1125(d)(1)(B)(i). [fn21] The subprovision reads: "the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct...." 15 U.S.C. 1125(d)(1)(B)(i)(VI). [fn22] See Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 680 (9th Cir. 2005) (stating that cybersquatting "occurs when a person other than the trademark holder registers the domain name of a well known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or by using the domain name to divert

212 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 10 of 11 10/28/2010 9:02 PM business from the trademark holder to the domain name holder." (emphasis added) (quoting DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th Cir. 2004))). [fn23] Coca-Cola Co. v. Purdy, 382 F.3d 774, 786 (8th Cir. 2004) (internal quotation marks omitted). [fn24] 2 J.T. McCarthy, Trademarks and Unfair Competition 16:1 (4th ed. 2010). See also Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001). [fn25] See Chance, 242 F.3d at (applying totality of the circumstances test and determining that pre-sales activity could qualify mark for trademark protection); New West Corp. v. NYM Co. of Cal., Inc., 595 F.2d 1194, 1199 (9th Cir. 1979) (holding "that appellee established a prior use of the mark without an actual sale"); see generally 2 McCarthy 16: [fn26] Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1054 (9th Cir. 1999) ("Even where there is precise identity of a complainant's and an alleged infringer's mark, there may be no consumer confusion and thus no trademark infringement if the alleged infringer is in a different geographic area or in a wholly different industry." (citing Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, (C.C.P.A. 1980))). [fn27] The relevant subprovision is 15 U.S.C. 1125(d)(1)(A)(i)(I), which attaches liability to a person who "registers, traffics in, or uses a domain name that[,] in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark...." [fn28] The usual eight factors from AMF Inc. v. Sleekcraft Boats for determining whether passing off one's goods as another is "confusingly similar" are a poor fit in this context, because they are designed to address a different social harm than the cybersquatting statute. 599 F.2d 341, (9th Cir. 1979). [fn29] Perfumebay.com Inc. v. Ebay, Inc., 506 F.3d 1165, 1174 (9th Cir. 2007). [fn30] 15 U.S.C. 1117(a). [fn31] Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1407 (9th Cir. 1993) (quoting 2 J.T. McCarthy, Trademarks and Unfair Competition 30:27, at 509 (2d ed. 1984)). See also Restatement (Third) of Unfair Competition 36(1) (1995). [fn32] Lindy, 982 F.2d at 1407; see also Restatement (Third) of Unfair Competition 36 cmt. c (1995).

213 DSPT INTERNATIONAL v. NAHUM, (9th Cir ) 11 of 11 10/28/2010 9:02 PM [fn33] Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1146 (9th Cir. 1997); Lindy, 982 F.2d at [fn34] 15 U.S.C. 1117(a). [fn35] Id. [fn36] 982 F.2d 1400 (9th Cir. 1993). [fn37] 6 F.3d 614 (9th Cir. 1993). [fn38] Id. at 621. [fn39] Eastman Kodak Co. of N.Y. v. S. Photo Materials Co., 273 U.S. 359, 379 (1927). [fn40] Section 1117 "confers a wide scope of discretion upon the district judge in the fashioning of a remedy." Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 121 (9th Cir. 1968). Many sources can provide the requisite information upon which a reasonable jury may calculate damages. Cf. Louis Vuitton S.A. v. Spencer Handbags Corp., 765 F.2d 966, 973 (2d Cir. 1985) (upholding calculation of damages based on statements made on a videotape and noting that "[r]ecovery under section 1117 is not limited to cases in which the quantum of actual damages is demonstrated."). [fn41] Restatement (Third) of Unfair Competition 36 cmt. h (1995); see also Eastman Kodak Co. of N.Y. v. S. Photo Materials Co., 273 U.S. 359, 379 (1927) ("The plaintiff had an established business, and the future profits could be shown by past experience. It was permissible to arrive at net profits by deducting from the gross profits of an earlier period an estimated expense of doing business."). [fn42] Bouman v. Block, 940 F.2d 1211, 1234 (9th Cir. 1991). Copyright 2010 Loislaw.com, Inc. All Rights Reserved

214 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM United States 4th Circuit Court of Appeals Reports NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, 650 F.3d 423 (4th Cir NEWPORT NEWS HOLDINGS CORPORATION, Plaintiff-Appellee, v. VIRTUAL CITY VISION, INCORPORATED, d/b/a VCV Inc.; Van James Bond Tran, Defendants-Appellants. No United States Court of Appeals, Fourth Circuit. Argued: January 27, Decided: April 18, Appeal from the United States District Court for the Eastern District of Virginia, F. Bradford Stillman, United States Magistrate Judge. Page 424 [EDITORS' NOTE: THIS PAGE CONTAINS HEADNOTES. HEADNOTES ARE NOT AN OFFICIAL PRODUCT OF THE COURT, THEREFORE THEY ARE NOT DISPLAYED.] Page 425 [EDITORS' NOTE: THIS PAGE CONTAINS HEADNOTES. HEADNOTES ARE NOT AN OFFICIAL PRODUCT OF THE COURT, THEREFORE THEY ARE NOT DISPLAYED.] Page 426 [EDITORS' NOTE: THIS PAGE CONTAINS HEADNOTES. HEADNOTES ARE NOT AN OFFICIAL PRODUCT OF THE COURT, THEREFORE THEY ARE NOT DISPLAYED.] Page 427 [EDITORS' NOTE: THIS PAGE CONTAINS HEADNOTES. HEADNOTES ARE NOT AN OFFICIAL PRODUCT OF THE COURT, THEREFORE THEY ARE NOT DISPLAYED.] Page 428 ARGUED: Geoffrey M. Bohn, Bohn & Kouretas, PLC, Arlington, Virginia, for Appellants. Lisa A. Ferrari, Cohen, Pontani, Lieberman & Pavane, New York, New York, for Appellee. ON BRIEF: Robert A. Battey, Bohn & Kouretas, PLC, Arlington, Virginia; Shawn R. Farmer, Muskin & Cusick LLC, Lansdale, Pennsylvania, for Appellants. Delphine Puybareau-Manaud, Martin B. Pavane, Cohen, Pontani, Lieberman & Pavane, New York, New York, for Appellee. Page 429 Before WILKINSON, MOTZ, and DUNCAN, Circuit Judges. Affirmed by published opinion. Judge DUNCAN wrote the opinion, in which Judge WILKINSON and Judge MOTZ joined. DUNCAN, Circuit Judge: OPINION This appeal raises numerous issues arising out of the grant of summary judgment to Newport News Holdings Corporation

215 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM ("NNHC") on its claims against Virtual City Vision and its owner Van James Bond Tran (collectively, "VCV") under the Anticybersquatting Consumer Protection Act ("ACPA"). In addition to challenging summary judgment, VCV argues that the magistrate judge erred in refusing to recuse himself and in improperly finding personal jurisdiction over Tran.[fn1] VCV further contends that the district court abused its discretion in precluding VCV from filing a counterclaim, and in its various rulings on damages, fees and costs, and sanctions. For the reasons that follow, we affirm. The number of issues raised on appeal necessitates a lengthy recitation of the facts and procedural history. We begin with the factual background. NNHC is a women's clothing and accessories company that has been in existence for over twenty years. It owns five federally registered trademarks for the mark "Newport News." These trademarks cover the sale of women's clothing and accessories and the offering of these items for sale through catalogs and the Internet. The trademarks also cover the domain name newportnews.com, which NNHC purchased in November NNHC attempted to acquire the domain name newportnews.com as well, but VCV had already purchased that domain name in October NNHC began offering its goods for sale over the Internet in 1999 using the newportnews.com domain name. VCV, an Alabama corporation, owns at least thirty-one domain names that incorporate the names of geographic locations. Newportnews.com, which initially focused on Newport News, Virginia, is one such example. VCVs "original intent... was to create websites... where residents of, and visitors to, these cities could find information and advertising related to th[e] cities." J.A (internal quotations omitted). VCVs organization is skeletal. Tran is its president, sole employee, and the only participating member of its board of directors. He operates the business from his home. NNHC and VCV first clashed in a private dispute resolution forum. In 2000, NNHC brought a complaint against VCV under the Uniform Domain Name Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers ("ICANN").[fn2] NNHC alleged that VCVs Page 430 newportnews.com website was "confusingly similar to [NNHC's] family of registered trademarks for the mark `Newport News'"; that "any rights [VCV] has in the domain name in contention are illegitimate"; and that VCV "registered this domain name in bad faith." J.A The ICANN panel rejected NNHC's arguments and dismissed its complaint. In doing so, it found that, although the mark and the domain name are identical, "visitors to [NNHC's] branded web site, who seek out the latest women's clothing and home fashions would clearly not be confused when seeing a home page of another web site, bearing an identical mark, that explicitly provides city information... with no connection whatsoever to women's and home fashions." J.A The panel further held I. A.

216 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM that VCVs website provided "bona fide service offerings," which included "disseminat[ing] city information in an effort to increase tourism and other visitor traffic to the city." J.A Significantly, with respect to NNHC's claim of bad faith, the panel noted that "given the total absence of competition between the businesses of [NNHC and VCV]... [VCV] did not register the contested domain name in an effort to cause any likelihood of confusion." J.A Between 2000 and 2004, newportnews.com remained relatively unchanged. It continued to provide information about the city of Newport News and link visitors to local businesses, such as hotels, movie theaters, real estate companies, and entertainment venues. In 2004, the website began running occasional advertisements for women's clothing.[fn3] In the summer of 2007, NNHC made an offer to purchase the newportnews.com domain name, which VCV rejected. VCV responded that it would sell the domain name for a "seven-figure" amount, or, in the alternative, sell NNHC goods on its website for a commission. J.A A substantive evolution in the VCV website began in the fall of The site shifted from a city focus, similar to that of VCVs other locality sites, to one emphasizing women's fashions. By February of 2008, the homepage was dominated by advertisements for women's apparel.[fn4] At about the same time, the management of the site changed as well. Tran began managing the newportnews.com website personally, taking control away from Local Matters, the company that ran VCVs locality sites. The changes to the website were lucrative. Tran would later Page 431 testify that most of VCVs revenue during that time came from the newportnews.com website instead of the locality sites, either individually or in total. On February 21, 2008, NNHC filed its complaint with the district court, alleging trademark infringement under 15 U.S.C. 1114, federal false advertising and unfair competition under 15 U.S.C. 1125(a), copyright infringement under 15 U.S.C. 501, and state law claims of common law trademark infringement, unfair competition, and unjust enrichment. The parties agreed to have the matter handled by a federal magistrate judge. While discovery was underway in September 2008, the magistrate judge informed the parties that counsel for NNHC had served on the advisory panel that voted to reappoint him. Both because his only action in the case to that point had been to issue a scheduling order, and because the reappointment committee had concluded its work, he opined that he was not obligated to recuse himself under the Code of Conduct for United States Judges. He nevertheless asked the parties whether they wanted to seek his recusal and promised to give full consideration to any such request. On September 12, 2008, both parties indicated that they would not seek recusal. VCVs counsel specifically stated that he was satisfied that the magistrate judge could preside. B.

217 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM Shortly thereafter, counsel for NNHC mentioned that he and the magistrate judge had previously practiced at the same law firm and had worked on cases together. VCVs counsel did not raise the issue of recusal during that discussion or the subsequent pretrial conference. In October 2008, NNHC informed VCV that it intended to file an amended complaint. VCV responded that it would file a counterclaim based on evidence obtained through discovery. On November 20, 2008, after obtaining leave from the court, NNHC filed its amended complaint adding a claim for violation of the ACPA and removing its copyright infringement claim. On November 25, 2008, VCV answered the amended complaint but did not raise any counterclaims. On November 28, 2008, the parties filed cross-motions for summary judgment, with VCV moving for summary judgment on all of NNHC's claims and NNHC moving for partial summary judgment as to the ACPA claim. On January 9, 2009, VCV filed its counterclaim. The court informed VCV that, under the Federal Rules of Civil Procedure, VCV was required to request leave from the court to amend its answer to include a counterclaim. VCV sought leave to file its counterclaim on January 16, On February 3, 2009, the magistrate judge issued an order granting summary judgment to NNHC on its ACPA claim pertaining to the newportnews.com domain name. Because NNHC had not moved for summary judgment on its other claims, those claims remained set for trial scheduled to begin on February 9. During a telephone conference that same day, VCV moved for the magistrate judge's recusal for the first time. The magistrate judge vacated the February 9 trial date and established a briefing schedule to consider the recusal motion. On March 13, 2009, the magistrate judge held a hearing both on VCVs motion for recusal and its motion for leave to file a counterclaim; he denied both. On June 6, 2009, VCV sought reconsideration of its recusal motion, which the magistrate judge denied on July 23. The following day, the court issued a Final Order awarding VCV costs on NNHC's abandoned copyright infringement claim Page 432 but denying its motion for attorney's fees on that claim. The Final Order also awarded NNHC statutory damages and attorney's fees on its ACPA claim and imposed sanctions on VCVs counsel.[fn5] VCV timely appealed. VCV asserts numerous issues on appeal: the magistrate judge's failure to recuse; the court's assertion of personal jurisdiction over Tran; its grant of summary judgment to NNHC on the ACPA claim; its denial of VCVs request to file a counterclaim; its award of statutory damages and attorney's fees to NNHC and sanctions against VCVs counsel; and its finding that VCV was not the prevailing party for purposes of an award of attorney's fees on NNHC's abandoned copyright infringement claim. We address each argument in turn. II. VCV challenges the denial of its motion for recusal under 28 U.S.C. 455 and the denial of its motion for A.

218 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM reconsideration seeking recusal. We review for abuse of discretion. United States v. Mitchell, 886 F.2d 667, 671 (4th Cir. 1989). Section 455(a) states: "Any justice, judge, or magistrate judge of the United States shall disqualify himself in any proceeding in which his impartiality might reasonably be questioned." As we have noted, "[t]imeliness is an essential element of a recusal motion.... To prevent inefficiency and delay, motions to recuse must be filed at the first opportunity after discovery of the facts tending to prove disqualification." United States v. Whorley, 550 F.3d 326, 339 (4th Cir. 2008) (first alteration in original) (internal quotations omitted); see also United States v. Owens, 902 F.2d 1154, 1155 (4th Cir. 1990) (noting that timeliness is a "judicially implied" element of 455). VCVs recusal argument is predicated on two facts: (1) that the magistrate judge and NNHC counsel once worked at the same law firm and collaborated on cases; and (2) that NNHC counsel participated in the committee that reappointed the magistrate judge. VCV learned of opposing counsel's participation on the reappointment committee no later than September 11, 2008, and expressly declined to move for recusal when the court held a phone conference on the issue the next day. In fact, VCV affirmatively communicated its satisfaction with the magistrate judge continuing to preside. VCV learned of the law firm relationship on November 7, 2008, but did not raise the issue during the scheduling conference that took place that same day. In fact, it did not move for recusal until February 3, 2009, the day the court issued a partial summary judgment ruling in favor of NNHC. By way of explanation, VCV asserts only that "[e]lucidation of the relevant facts took time." Appellants' Br. at 7. We are not persuaded. VCV had an opportunity to raise the issue almost immediately after becoming aware of the facts of which it now complains, and it chose not to do so. Instead, it waited several months, until the very day the magistrate judge granted summary judgment to NNHC on its ACPA claims. The timing of VCVs motion smacks of gamesmanship. Allowing such belated and seemingly tactical recusal motions would permit a party "to gather evidence of a judge's possible bias and then wait and see if the proceedings went his way before using the information to seek Page 433 recusal." Sine v. Local No. 992 Int'l Bhd. of Teamsters, 882 F.2d 913, 916 (4th Cir. 1989). The magistrate judge's denial of the motion for recusal is therefore justified on timeliness grounds alone. Id. at (finding lack of timeliness to be an alternative ground for affirming the denial of a motion to recuse). Furthermore, VCVs allegations regarding recusal lack merit. The issue of NNHC's counsel's involvement on the reappointment committee is addressed in an advisory opinion on the Code of Conduct for United States Judges, which provides that "after reappointment the magistrate judge is not required to recuse or to notify the parties and attorneys in the proceeding that a member of the panel is appearing as counsel." J.A n. 4 (citing Committee on Codes of Conduct, Advisory Opinion No. 97: Recusal Due to Appointment or Reappointment of a Magistrate Judge (Oct. 13, 1999)).

219 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM As to the law firm relationship between counsel and the magistrate judge, the "objective standard asks whether the judge's impartiality might be questioned by a reasonable, wellinformed observer who assesses all the facts and circumstances." United States v. DeTemple, 162 F.3d 279, 286 (4th Cir. 1998) (internal quotations omitted). The law firm relationship in question ended more than ten years before the instant action began, and VCV does not seem to dispute the fact that the magistrate judge had little personal contact with counsel in the intervening years. Under these circumstances, the magistrate judge did not abuse his discretion in finding that the circumstances would not cause a reasonable observer to question his impartiality.[fn6] VCV also claims that the district court failed to make findings that would justify exercising personal jurisdiction over Tran and holding him personally liable for VCVs actions. We review the district court's legal findings de novo and the facts underlying its determination for clear error. Mylan Lab., Inc. v. Akzo, N.V., 2 F.3d 56, 60 (4th Cir. 1993). Contrary to VCVs contention, the district court made sufficient findings to establish personal jurisdiction as part of its analysis regarding piercing of the corporate veil between Tran and VCV. As the Fifth Circuit has noted: [F]ederal courts have consistently acknowledged that it is compatible with due process for a court to exercise personal jurisdiction over an individual... that would not ordinarily be subject to personal jurisdiction in that court when the individual... is an alter ego... of a corporation that would be subject to personal jurisdiction in that court. Patin v. Thoroughbred Power Boats Inc., 294 F.3d 640, 653 n. 18 (5th Cir. 2002) (collecting cases); see also Mylan Labs., 2 F.3d at 63 (declaring in the analogous context of Maryland law that the analysis of whether the court could pierce the corporate veil of a corporation to reach its parent Page 434 company is "virtually identical" to the analysis of whether the court could exercise personal jurisdiction over that parent company); Estate of Thomson v. Toyota Motor Corp. Worldwide, 545 F.3d 357, 362 (6th Cir. 2008) (endorsing "the use of the alter-ego theory to exercise personal jurisdiction"). Under Virginia law, a court may pierce the corporate veil to find that an individual is the alter ego of a corporation where it finds "(i) a unity of interest and ownership between [the individual and the corporation], and (ii) that [the individual] used the corporation to evade a personal obligation, to perpetrate fraud or a crime, to commit an injustice, or to gain an unfair advantage." CF. Trust, Inc. v. First Flight Ltd. P'ship, 306 F.3d 126, 132 (4th Cir. 2002) (internal quotations omitted). Here the district court found that such veil piercing was appropriate because: VCV had no separate identity from Tran.... Tran is the President of VCV, Tran is the sole employee of B.

220 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM VCV, and Tran is the only participating member of VCVs Board of Directors..... Additionally, Tran admits that VCVs business is conducted out of his home and Tran is the only board member invited to, and present at, meetings of the VCV Board of Directors.... It is Tran, and Tran alone, who is responsible for the decisions and actions of VCV... and it would present a manifest injustice if Tran were now allowed to hide behind a non-existent corporate veil to avoid personal liability for his actions. There is a unity of interest and ownership between Tran and VCV, and Tran controlled and used VCV to commit an injustice. J.A n. 5. The court clearly found both a unity of interest and an intent by Tran to "commit an injustice" using VCV. C.F. Trust, Inc., 306 F.3d at 132. Accordingly, the district court found sufficient facts to pierce the corporate veil and, consequently, to exercise its jurisdiction over Tran. VCV challenges the district court's grant of summary judgment in favor of NNHC on its claim under the ACPA. We review de novo an award of summary judgment, viewing all facts and drawing all reasonable inferences in the light most favorable to the nonmoving party. See EEOC v. Navy Fed. Credit Union, A2A F.3d 397, 405 (4th Cir. 2005). Summary judgment is appropriate when there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). "[T]here is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). To establish an ACPA violation, NNHC was required to "(1) prove that [VCV] had a bad faith intent to profit from using the [newportnews.com] domain name, and (2) that the... domain name is identical or confusingly similar to, or dilutive of, the distinctive and famous [Newport News] Mark." People for the Ethical Treatment of Animals ("PETA") v. Doughney, 263 F.3d 359, 367 (4th Cir. 2001) (citing 15 U.S.C. 1125(d)(1)(A)). VCV argues in particular that the district court erred in finding that VCV acted in bad faith, and that it mistakenly rejected VCVs defenses of laches and acquiescence.[fn7] We address each contention in turn. Page 435 We first consider the issue of bad faith. The ACPA directs courts to consider several factors in making a determination of bad faith. These include whether the defendant has a "bona fide noncommercial or fair use of the mark in a site accessible under the domain name" and whether the defendant intended to divert customers away from the trademark holder by "creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site." 15 U.S.C. 1125(d)(1)(B)(i). Courts are not limited to consideration of these factors. Instead, "[t]he ACPA allows a court to view the C. 1.

221 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM totality of the circumstances in making the bad faith determination." Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 270 (4th Cir. 2001). VCV challenges the district court's finding of bad faith in several respects. It attacks the court's determination that VCV did not provide legitimate services that would constitute a fair use of the domain name. VCV also asserts that the evidence does not support a finding that it intended to create a likelihood of confusion. Finally, it challenges the court's reliance on the ICANN ruling as evidence that VCV knew it was acting unlawfully when it changed its website. VCV claims that, contrary to the district court's conclusion, its website offered a legitimate service by providing information about the city of Newport News. The ACPA permits a registered trade-mark to be used by someone other than the mark owner if it is a "use, otherwise than as a mark,... of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin." 15 U.S.C. 1115(b)(4). The district court found that this provision did not apply here because "[o]n VCVs website, Newport News is no longer used to describe VCVs goods or services, or their geographic origin, because the site is dedicated primarily to women's fashion." J.A VCV disputes this characterization, contending to the contrary that its website offered the legitimate service of providing information about the city of Newport News. We disagree. The record conclusively shows that in making changes to its website in 2007, Page 436 VCV shifted its focus away from the legitimate service of providing information related to the city of Newport News and became instead a website devoted primarily to women's fashion. Most of the items on its homepage, as well as those most prominently placed, related to women's attire. Not only was the site dominated by advertisements for apparel, it also contained dozens of links to shopping websites. The website's references to the city of Newport News became minor in comparison to the fashion-related content. VCV cannot escape the consequences of its deliberate metamorphosis. VCV would apparently have us hold that as long as it provided any information about the city of Newport News, it continued to provide a "bona fide" service. Such a formalistic approach would allow a cybersquatter seeking to profit from another company's trademark to avoid liability by ensuring that it provides some minimal amount of information about a legitimate subject. It would also undermine the purpose of the ACPA, which seeks to prevent "the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks." Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617, 624 (4th Cir. 2003) (quoting S.Rep. No , at 4 (1999)). As we have noted, in analyzing bad faith, we "view the totality of the circumstances." Virtual Works, 238 F.3d at 270. Here, even drawing all reasonable inferences in favor of VCV, the record is clear that after November 2007, VCV was no longer a.

222 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM in the business of providing information about the city of Newport News. The contrast between the newportnews.com website and VCVs other locality websites, which were dominated by links and advertisements for businesses and activities in those cities, is stark. Unlike those websites, newportnews.com went from being a website about a city that happened to have some apparel advertisements to a website about women's apparel that happened to include minimal references to the city of Newport News. The district court correctly held that, once VCV largely abandoned its city information service, it ceased to have a right to use the name of Newport News to describe such service.[fn8] VCV argues that the district court failed to properly analyze whether there was a likelihood of confusion between NNHC's website and VCVs website. Its argument, however, mischaracterizes the nature of an ACPA claim. The standard under the ACPA is not whether there is a likelihood of confusion between the two websites but rather whether the allegedly offending website "creat[es] a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site." 15 U.S.C. 1125(d)(1)(B)(v). The ACPA provides for liability "without regard to the goods or services of the parties." Id. 1125(d)(1)(A). VCV argues that, under our precedent in Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005), we must "determine whether a likelihood of confusion exists by `examin[ing] the allegedly infringing use in the context in which it is seen by the ordinary consumer.'" Id. at 316 (alteration Page 437 in original). However, the court in Lamparello made that statement in the context of trademark infringement, not the ACPA. See id. As the Eighth Circuit court has noted, "[t]he inquiry under the ACPA is... narrower than the traditional multifactor likelihood of confusion test for trademark infringement." Coca-Cola Co. v. Purdy, 382 F.3d 774, 783 (8th Cir. 2004); see also N. Light Tech., Inc. v. N. Lights Club, 236 F.3d 57, 66 n. 14 (1st Cir. 2001) ("[T]he likelihood of confusion test of trademark infringement is more comprehensive than the identical or confusingly similar requirement of ACPA, as it requires considering factors beyond the facial similarity of the two marks." (internal quotations omitted)). "The question under the ACPA is... whether the domain names which [the defendant] registered... are identical or confusingly similar to a plaintiffs mark." Coca-Cola Co., 382 F.3d at 783. Here VCVs domain name was identical to NNHC's mark. VCV further alleges that its disclaimer, "We are Newport News, Virginia," which appeared near the top of the new version of the website, eliminated any likelihood of confusion. Again, VCV misinterprets the applicable law. For ACPA purposes, "[t]he fact that confusion about a website's source or sponsorship could be resolved by visiting the website is not relevant to whether the domain name itself is identical or confusingly similar to a plaintiffs mark." Id.; see also Virtual Works, 238 F.3d at 271 (finding that the domain name vw.net was confusingly similar to the Volkswagen "VW" mark for purposes of the ACPA, even though the domain name was being used as an internet service provider's website); PETA b.

223 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM 263 F.3d at (finding likelihood of confusion under the ACPA where the domain name was identical to the trademark at issue, even though the "website's content ma[de] it clear that it [was] not related to" the mark holder). Given that VCVs domain name was identical to NNHC's mark, we find that the district court correctly held that VCV created a likelihood of confusion as to the source of the site. VCV argues that the district court erred in finding that the ICANN decision was further proof of VCVs bad faith in making the November 2008 changes to its website. It asserts that, because the ICANN decision did not prohibit any of the changes made by VCV, VCVs awareness of the decision does not support a finding that it made the changes in bad faith. VCVs argument misses the mark here as well. What the court deemed most significant was that the ICANN decision found VCVs use proper precisely because its business of providing city information was unrelated to NNHC's clothing business. The ICANN decision found that VCV was not in competition with NNHC precisely because of their disparate business models. Indeed, in holding that there was no evidence of bad faith on the part of VCV, the ICANN relied on "the total absence of competition between the businesses of [NNHC and VCV]." J.A. 438 (emphasis added). The fact that, in the face of this cautionary language, VCV later purposefully transformed its website into one that competed with NNHC by advertising women's apparel is a legitimate factor within the totality of the circumstances supporting the district court's finding of bad faith.[fn9] Page 438 VCV next asserts that the district court mistakenly rejected its defense of laches. VCV argues that laches applied because NNHC did not bring a claim in 2005, when, under VCVs view, "the allegedly infirming use (the ads for women's clothing) actually commenced." Appellants' Br. at 21. Preliminarily, we note that VCV points to no case in this or other circuits that has ever applied the laches defense in the ACPA context. Nor are we aware of any. However, even assuming, without deciding, that the doctrine of laches is applicable to ACPA claims, it would not bar relief here. In the trademark context, "courts may apply the doctrine of estoppel by laches to deny relief to a plaintiff who, though having knowledge of an infringement, has, to the detriment of the defendant, unreasonably delayed in seeking redress." Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 461 (4th Cir. 1996). We have explained that "regardless of when the trademark owner initially discovers the use of a similar mark, action against the infringing user is not necessary until, in light of the circumstances, the `right to protection has clearly ripened.'" What-A-Burger of Va., Inc. v. Whataburger, Inc. of Corpus Christi 357 F.3d 441, 449 (4th Cir. 2004). In other words, the plaintiff must be aware of the facts giving rise to infringement. An ACPA claim, as we have noted, requires a "bad faith intent to profit from using the... domain name." PETA, c. 2.

224 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM 263 F.3d at 367. Here, as the ICANN panel decision found, before the changes in the website NNHC had no reason to believe that VCVs use of the domain name would support a finding of bad faith. Even when VCV started to place a few apparel ads on its otherwise city-focused website in 2005, VCVs bad faith was not obvious, as VCV was still providing a legitimate city-information service and not competing with NNHC. It was not until November 2007, when VCV essentially abandoned its legitimate purpose of providing city-based information in favor of a website focused on women's fashions, that it became clear that NNHC had a viable ACPA claim. Accordingly, NNHC's decision to bring its ACPA claim in November 2008, a year after the relevant changes in VCVs website occurred, did not constitute an unreasonable delay that would support a finding of laches. VCV also asserts that NNHC's ACPA claim "should have been completely barred by NNHC's acquiescence." Appellants' Br. at 22. Again, VCV cites no support for the proposition that this defense applies in the ACPA context. However, once again assuming, without deciding, that it does, it is nevertheless inapplicable to the facts here. In the trademark infringement context we have stated that "[a]n infringement action may be barred by the doctrine of estoppel by acquiescence where the owner of the trademark, by conveying to the defendant through affirmative word or deed, expressly or impliedly consents to the infringement." Sara Lee Corp., 81 F.3d at 462. VCV argues that NNHC impliedly consented to the infringement by "knowingly and deliberately plac[ing] paid Page 439 ads on the VCV website in February 2007." Appellants' Br. at 22. However, as discussed above, VCVs use of the domain name did not become a clear infringement until November 2007, when VCV transformed its website into one focused on women's fashion. Therefore NNHC's advertisements in February 2007 cannot establish its acquiescence to VCVs later infringing conduct, and we agree with the district court that NNHC's ACPA claim was not barred on that ground. VCV next argues that the court erred in denying it permission to file counterclaims. In determining whether a defendant should be permitted to file a new counterclaim after it has filed its responsive pleading, "Rule 13(f) of the Federal Rules of Civil Procedure, which permits amendment of the pleadings to add an omitted counterclaim, is interpreted together with Rule 15(a) on amendment of pleadings, which provides that `leave [to amend] shall be freely given when justice so requires.'" Lone Star Steakhouse & Saloon v. Alpha of Va., Inc., 43 F.3d 922, 940 (4th Cir. 1995) (alteration in original). We have further pointed out "that a motion to amend may be denied when it has been unduly delayed and when allowing the motion would prejudice the nonmovant." Id. at 941. Leave to amend by filing a counterclaim may also be denied based on bad faith or futility of the amendment. Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962). We review a district court's ruling in this regard for abuse of discretion. Lone Star, 43 F.3d at D.

225 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM In October 2008, VCV informed NNHC that VCV would seek leave to file a counterclaim based upon evidence obtained through discovery. On November 20, 2008, after obtaining leave from the court, NNHC filed an amended complaint adding a new claim for violation of the ACPA. On November 25, VCV filed an answer to the amended complaint, but that answer did not raise any counterclaims. VCV filed its counterclaim, without leave from the court, on January 9, 2009, one month before the then-scheduled trial date of February 9. The counterclaim included allegations of conspiracy and fraud by NNHC. The court informed VCV that leave from the court was required to file a counterclaim. VCV sought leave on January 16, The motion was not fully briefed until January 28, 2009, two weeks before the scheduled trial date. On February 3, 2009, the district court issued an opinion granting in part NNHC's motion for summary judgment on its cybersquatting claim. The court ultimately denied VCVs motion for leave to file its counterclaim on March 13, 2009, finding that it was prejudicial and unduly delayed in bad faith.[fn10] "Whether an amendment is prejudicial will often be determined by the nature of the amendment and its timing.... [T]he further the case progressed before judgment was entered, the more likely it is that the amendment will prejudice the defendant or that a court will find bad faith on the plaintiffs part." Laber v. Harvey, Page F.3d 404, 427 (4th Cir. 2006). Here, the court's finding of prejudice was based on the fact that the counterclaim was filed at the "eleventh hour before the then-scheduled trial date" and contained six claims that had never before been raised and "if allowed, [would] substantially change the nature and scope of the trial." J.A The counterclaim included counts for intentional interference with contract, tortious interference with prospective economic advantage, fraud, constructive fraud, civil conspiracy between NNHC and Spiegel, and intentional infliction of emotional harm. The district court found that discovery in the case had closed and "the introduction of six new claims, particularly a claim of fraud, may introduce new factual issues that were not heretofore addressed by counsel." J.A Indeed, several of VCV's assertions, such as its claim that NNHC and Spiegel "entered into an unlawful agreement and conspiracy with each other to... wrongfully take `newportnews.com,'" J.A. 846, would likely have required further discovery. A district court has the discretion to deny leave to amend to add a counterclaim "based upon a balancing of the equities, including whether... additional discovery [would] be required." Barnes Group, Inc. v. C & C Products, Inc., 716 F.2d 1023, 1035 n. 35 (4th Cir. 1983). The fact that allowing the counterclaim would probably have necessitated additional discovery supports our conclusion that the district court's finding of prejudice was not an abuse of discretion. We note as well that VCV appeared to have no valid reason for its belated request. VCV first informed NNHC of the possibility of the counterclaim in October Indeed, VCV now concedes that, by October 15, 2008, it suspected the grounds for the claim. However, VCV argues that it did not seek to file the counterclaim at that point because "until VCV actually received NNHC's financial records in late December 2008, and had them

226 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM interpreted by an expert, VCV lacked sufficient legal foundation to file the counterclaim." Appellants' Br. at 25. This explanation rings hollow because none of the counts in the counterclaim relied primarily on allegations regarding NNHC's financial records. Each of the claims was based on the theory that VCV was fairly and lawfully using the domain name and NNHC was unlawfully interfering with its right to do so in an attempt to obtain the domain name free of charge. None of the counts directly mention any wrongdoing related to NNHC's financial documents. In fact, the financial data that NNHC disclosed to VCV in December 2008, which allegedly triggered the counterclaim, is only mentioned in the background facts. Thus, VCV's assertion that it was justified in waiting until December 2008 to file the claim is unsupported by the record. We have upheld a district court's denial of leave to file a counterclaim in substantially similar circumstances. In Lone Star Steakhouse, the defendant in a trademark infringement suit sought leave, in the last days of discovery, to add a counterclaim alleging that the plaintiff had committed fraud. See 43 F.3d at The defendant based its claim on information that, according to the district court, it possessed approximately three months before requesting leave to file the counterclaim. The district court refused to "inject the defense of fraud," because it "considered the motion unduly delayed and reasoned that the amendment would have seriously prejudiced Plaintiffs and placed them at risk of further infringement because the amendment would have delayed the resolution of the case." Id. at 940. In affirming Page 441 the decision of the district court, we found that the record did not support the defendant's contention that it delayed its counterclaim because it needed to conduct further investigation. Id. We also held that the amendment "would have substantially prejudiced Plaintiffs and would have significantly changed the nature of the litigation" because "[i]nserting the defense of fraud in the case on the last day of discovery would have raised new issues, which were not involved in the case during the discovery and were not the subject of Plaintiffs discovery and trial preparation." Id. Under the similar circumstances presented here, we hold that, given VCV's undue delay and the prejudice to NNHC, the district court did not abuse its discretion in denying VCV's motion for leave to file a counter-claim. VCV argues that its conduct did not merit an award of attorney's fees under the Lanham Act. The Act states that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 15 U.S.C. 1117(a). We review "a decision to award attorneys' fees under 1117 for abuse of discretion and the district court's underlying finding as to whether the case is exceptional for clear error." Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 490 (5th Cir. 2004); see also Williams v. Metro. Life Ins. Co., 609 F.3d 622, 634 (4th Cir. 2010). We have noted that the legislative history of the Lanham Act shows that fees were intended to be provided in cases involving E.

227 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM "[d]eliberate and flagrant infringement." Scotch Whisky Ass'n v. Majestic Distilling Co., 958 F.2d 594, 599 (4th Cir. 1992) (quoting legislative history). Here, the district court found that VCV's conduct was exceptional precisely because "its actions in transforming the virtual city website into a women's fashion website after being made aware [by the ICANN decision] of the rights that NNHC had in the NEWPORT NEWS mark were clearly willful and deliberate." J.A Significantly, VCV advances no factual basis for finding to the contrary. Neither during the proceedings below nor in response to repeated questioning at oral argument on appeal was VCV able to provide a legitimate justification for its decision to shift its website's focus to women's clothing, particularly in the face of the ICANN panel's implicit suggestion that to do so courted the risk of a finding of bad faith. On these facts, we cannot say that the court clearly erred in finding that VCV's infringement was exceptional or abused its discretion in awarding attorney's fees. VCV also challenges the district court's grant of statutory damages of $80,000 under 15 U.S.C. 1117(d), which provides that "the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just." VCV claims the damages awarded here were excessive. "While we review for clear error any factual finding that would determine the appropriate level of statutory damages, we would review an award of those damages within the statutory range for abuse of discretion." Lyons P'ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 799 (4th Cir. 2001). In deciding whether the court's damages were excessive, we must first determine the nature and purpose of such damages. Our analysis of ACPA statutory Page 442 damages is guided, in part, by their similarity to statutory damages under the Federal Copyright Act, 17 U.S.C. 501(a) a similarity noted by other circuit courts. See, e.g., St. Luke's Cataract & Laser Inst, PA. v. Sanderson, 573 F.3d 1186, 1205 (11th Cir. 2009) ("[T]he statutory damages provision in the ACPA, 15 U.S.C. 1117(d), is similar to the statutory damages provision in copyright law."); E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270, 278 (5th Cir. 2002). Both statutory damages provisions have similar structures and language. See 17 U.S.C. 504(c)(1) ("[T]he copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action... in a sum of not less than $750 or more than $30,000 as the court considers just."). Also, like the Copyright Act, the ACPA reflects a Congressional intent to deter offenders. See St. Luke's, 573 F.3d at 1206 & n. 32. Based on this goal of deterrence, the Supreme Court has found that the statutory damages provision of the Copyright Act does "not merely compel[] restitution of profit and reparation for injury but also is designed to discourage wrongful conduct." E. & J. Gallo Winery, 286 F.3d at 278 (quoting F.W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228, F.

228 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM 233, 73 S.Ct. 222, 97 L.Ed. 276 (1952)). "In light of the similarities in the language of these two statutory provisions and Congress's intent to deter cyberpiracy, other circuits have interpreted the ACPA's statutory damages provision to contain a [similar] deterrence element." St. Luke's, 573 F.3d at 1206 (citing E. & J. Gallo Winery, 286 F.3d at 278) (footnote omitted). We find such interpretations persuasive. Because these damages "serve[] as a sanction to deter wrongful conduct," id., a district court may properly weigh the seriousness of the conduct in determining the amount of the award. Here the district court found that damages at the high end of the statutory range were proper because VCV's conduct was "exceptional and egregious."[fn11] JA VCV asserts that the damages award was unjust for reasons that both mirror its laches and acquiescence arguments and fail for reasons similar to those already set forth. VCV claims that it advertised women's clothes for over two years ( ) before NNHC brought its claim, and that during that time, NNHC profited from advertising with VCV and had discussions with VCV about its website in which no infringement was mentioned. However, as noted above, the district court made clear throughout its opinion that VCV's wrongdoing did not crystallize until its "transformation of the NEWPORT-NEWS.COM website into a women's fashion website" in November 2007 "in direct contradiction to a written [ICANN] arbitration opinion." J.A It is this conduct that the court found "exceptional and egregious" for purposes of statutory sanctions. J.A VCV's arguments about why its conduct may not have been egregious prior to November 2007 are irrelevant. We conclude that the district court did not abuse its discretion by finding that VCV's attempt to profit from NNHC's mark by creating a website focused on women's fashion was sufficiently egregious to merit the statutory damages award. Page 443 VCV challenges the district court's entry of $10,000 in sanctions against VCV's attorneys under 28 U.S.C We review the decision to award sanctions for abuse of discretion, Chaudhry v. Gallerizzo, 174 F.3d 394, 410 (4th Cir. 1999), and the factual findings under-pinning that decision for clear error, see Ohio River Valley Envtl. Coal, Inc. v. Green Valley Coal Co., 511 F.3d 407, 413 (4th Cir. 2007); see also Tenkku v. Normandy Bank, 348 F.3d 737, (8th Cir. 2003) (reviewing for abuse of discretion an award of 1927 sanctions and for clear error the related factual findings). However, before reviewing the court's decision, we must first decide whether the issue is properly before us. NNHC argues that VCV waived the issue because its attorneys are not listed as appellants in the notice of appeal. Indeed, Federal Rule of Appellate Procedure 3(c)(1)(A) requires that the notice of appeal "specify the party or parties taking the appeal by naming each one in the caption or body of the notice." Rule 3(c)(4) makes clear, however, that "[a]n appeal must not be dismissed for... failure to name a party whose intent to appeal is otherwise clear from the notice." Under Rule 3(c)(4), we have held that a notice of appeal that covers only an order for sanctions against an attorney is not rendered G.

229 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM invalid for failure to name the attorney as an appellant. Millier v. Dowries, 935 F.2d 660, 663 n. 1 (4th Cir. 1991). We noted that where "the only appealable judgment from the district court is the order imposing sanctions against counsel" and "only one party, plaintiffs counsel, is entitled to bring the appeal... [t]he circumstances... present no risk of ambiguity or confusion." Id. Applying Rule 3(c)(4) to the facts before us, we find that VCV's notice of appeal is far from a model of clarity. Although the notice lists the Final Order as one of the orders appealed, the Final Order contains a number of rulings, several of which were not appealed. VCV has thereby created the "risk of ambiguity or confusion" against which we have cautioned. Id. Tellingly, VCV does not address the issue of sanctions in its Reply Brief, or argue that the deficient notice of appeal is saved by its clear intent under Rule 3(c)(4). In any event, even assuming that the notice of appeal was proper, the court's award of sanctions does not merit reversal. Section 1927 states: "Any attorney... who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys' fees reasonably incurred because of such conduct." 22 U.S.C "A district court's decision to impose sanctions is entitled to `substantial deference'" because "[a] district court `is in the best position to review the factual circumstances and render an informed judgment as [it] is intimately involved with the case, the litigants, and the attorneys on a daily basis.'" Blue v. U.S. Dept. of Army, 914 F.2d 525, 538 (4th Cir. 1990). The district court found that VCV's "Motion for Recusal was made recklessly and in bad faith" and that VCV "more likely than not acted in bad faith in seeking leave to file its counterclaim." J.A It concluded that VCV's counsel "engaged in a pattern of behavior to delay the resolution of this case and... unreasonably and vexatiously multiplied the proceedings." Id. at Relying on the facts we have already outlined, and given the motions' significant substantive weaknesses as well as their suspicious timing, we cannot say that the district court clearly erred in its factual finding that Page 444 they were filed with the purpose of multiplying proceedings. See United States v. Wallace, 964 F.2d 1214, 1217 (D.C. Cir. 1992) (describing a finding of bad faith as a factual finding reviewable for clear error). We therefore hold that the district court's award of sanctions was not an abuse of discretion. Finally, VCV argues that the district court erred in awarding it only costs but not attorney's fees on NNHC's abandoned copyright claim. VCV alleges entitlement to attorneys' fees as a prevailing party under 17 U.S.C. 505, which states "the court may allow the recovery of full costs by or against any party.... [T]he court may also award a reasonable attorney's fee to the prevailing party as part of costs." "[I]f the district court determines, as a matter of law, that a party is not a prevailing party, we review the district court's H.

230 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM determination de novo." Perry v. Bartlett, 231 F.3d 155, 163 (4th Cir. 2000). NNHC raised the copyright infringement claim in its original complaint, but did not raise it in its amended complaint. VCV argues that, because the district court granted leave for NNHC to file its amended complaint, NNHC "dismissed its copyright infringement claim, by court order." Appellants' Br. at 30. We disagree. The district court correctly held that NNHC's abandonment of the claim did not make VCV a prevailing party on that claim. In order for a litigant to be a prevailing party for purposes of attorneys' fees, there must be a "judicially sanctioned change in the legal relationship of the parties." Buckhannon Bd. & Care Home v. W.V. Dept. of Health & Human Res., 532 U.S. 598, 605, 121 S.Ct. 1835, 149 L.Ed.2d 855 (2001). As the Supreme Court has noted, "[n]o material alteration of the legal relationship between the parties occurs until" one of the parties "becomes entitled to enforce a judgment, consent decree, or settlement against the [other]." Farrar v. Hobby, 506 U.S. 103, 113, 113 S.Ct. 566, 121 L.Ed.2d 494 (1992). Here, as the district court noted, the disappearance of the claim did not result from a court dismissal, but rather from NNHC's unilateral withdrawal of the claim by failing to include it in its amended complaint. This change did not alter the legal relationship between the parties because NNHC remained at liberty to bring the claim again at a later point. See Szabo Food Serv. v. Canteen Corp., 823 F.2d 1073, (7th Cir. 1987) (holding that a "dismissal... without prejudice... is not the practical equivalent of a victory for defendant on the merits" because "[t]he plaintiff may refile the complaint" and "[t]he defendant remains at risk"). VCV further argues that the district court's award to VCV of costs related to NNHC's copyright claim necessarily made VCV the prevailing party. However, in awarding VCV costs, the court specifically noted that, in its view, costs could be awarded to a non-prevailing party. See J.A n. 1. Moreover, as mentioned above, the statute states "the court may allow the recovery of full costs by or against any party.... [T]he court may also award a reasonable attorneys' fee to the prevailing party as part of costs." 17 U.S.C. 505 (emphasis added). If the statute had intended every party who received costs to be a prevailing party for purposes of attorneys' fees, the words "prevailing party" in the statute's second sentence would be superfluous, for everyone receiving costs would fall into that category. Such a reading "would ignore the basic principle of statutory interpretation instructing courts to `avoid a reading which renders some words altogether redundant.'" Page 445 Lane v. United States, 286 F.3d 723, 731 (4th Cir. 2002) (citation omitted). Accordingly, we hold that the district court did not err in finding that VCV was not a prevailing party on NNHC's claim. III. For the foregoing reasons, the opinion of the district court is affirmed in all respects. AFFIRMED

231 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM [fn1] Pursuant to the Federal Magistrate Act of 1979, a magistrate judge presided over all aspects of this matter with the consent of the parties. See 28 U.S.C. 636(c)(1). All references to "the district court" or "the court" in this opinion denote the magistrate judge. For the sake of clarity, however, in discussing the recusal issue we refer to the magistrate judge as such. [fn2] "ICANN is a private, non-profit public benefit corporation which was established by agencies of the U.S. government to administer the Internet domain name system." Register.com, Inc. v. Verio, Inc., 356 F.3d 393, 395 (2d Cir. 2004). Its dispute resolution proceedings are non-binding and are not intended to replace formal arbitration. See Dluhos v. Strasberg, 321 F.3d 365, 372 (3d Cir. 2003). [fn3] Between 2004 and 2007, the newportnews.com website ran advertisements for NNHC products on two occasions. The first occurred when an advertising company hired by NNHC placed advertisements on the website for one of the brands managed by NNHC, Spiegel Brands, without NNHC's knowledge. Upon learning of this fact, NNHC ordered the advertising company to cancel the advertisements. Then, between February and March 2007, NNHC placed advertisements on the website in order to measure revenue losses attributable to the website. [fn4] For example, the top of the website's homepage contained two banners: one with the title "NewportNews.com # 1 Shopping Destinations" and the other with the "Top 5 Stores." Both banners included within them a number of links to women's fashion items. The right column of the homepage consisted almost entirely of links to clothing stores. The left column contained several large advertisements for women's retailers. The middle of the homepage contained numerous pictures of women's apparel, followed by the prices for those items and links to the retailers. [fn5] The district court dismissed all of NNHC's remaining claims without prejudice under Rule 41(a)(2) of the Federal Rules of Civil Procedure. [fn6] VCV also argues that the magistrate judge's representation of the city of Newport News, Virginia in civil rights and employment matters over ten years ago required his disqualification. VCV apparently relies on 28 U.S.C. 455(b)(1), which states that a judge "shall also disqualify himself... [w]here he has a personal bias or prejudice concerning a party, or personal knowledge of disputed evidentiary facts concerning the proceeding." However, VCV fails to point to anything in the record that would support the contention that the representation of the city of Newport News in completely unrelated matters more than a decade earlier gave the judge personal knowledge of facts relevant to the current proceedings. Accordingly, its assertion is unpersuasive.

232 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM [fn7] VCV additionally claims that the district court erred by not considering any of its sealed exhibits related to summary judgment. It cites as its only support for this argument that the court failed to mention any of its exhibits in its opinion. Courts are not required to identify every piece of evidence they consider in making a decision. Accordingly, VCV's argument is wholly without merit. VCV also asserts that NNHC's Newport News trademark is not valid because it is not distinctive. We have held that, "[u]nder the Lanham Act, the issuance of a certificate of registration arms the registrant with prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark." Retail Servs. v. Freebies Publ'g, 364 F.3d 535, 542 (4th Cir. 2004) (internal quotations omitted). Here, VCV asserts that it overcame this presumption because it presented evidence that NNHC's mark related to its city of origin and was therefore geographically descriptive, not distinctive. A geographically descriptive mark is nevertheless distinctive if it has acquired a secondary meaning, that is, if "the mark no longer causes the public to associate the goods with the geographical location, but to associate the goods with a particular product or source of the product." OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 340 (4th Cir. 2009). Thus, assuming for the sake of argument that the mark is geographically descriptive, the presumption of validity derived from the mark's registration would necessarily create a presumption that the mark has a secondary meaning. Given that VCV presented no evidence to refute this presumption, the district court was correct in rejecting VCV's challenge to the validity of the mark. [fn8] We also note that, even if VCV had been able to show some measure of fair use, that would not be enough to preclude liability. "[T]he use of a domain name in connection with a site that makes a... fair use of the mark does not necessarily mean that the domain name registrant lacked bad faith." Coca-Cola Co. v. Purdy, 382 F.3d 774, 778 (8th Cir. 2004) (internal quotations omitted). [fn9] VCV's argument that the district court failed to consider the safe-harbor fair use defense fails as well. Under the ACPA's safe-harbor provision, "[b]ad faith intent... shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." 15 U.S.C. 1125(d)(1)(B)(ii). The district court's specific finding that "VCV knew or should have known" that the November 2007 changes to its website "would give rise to some type of liability," J.A. 1329, defeats any contention that VCV "believed and had reasonable grounds to believe" that its use of the domain name was lawful. [fn10] The court also found that the counter-claims were probably moot because they "would almost certainly not survive a... motion to dismiss" and "VCV acknowledged the likely futility of the Counterclaim." J.A It also noted that VCVs claims "assume[] VCVs right to use the... domain name,

233 NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, of 20 9/25/2015 8:50 PM but the Court held that VCVs use of that domain name violated the [ACPA] and ordered VCV to transfer the domain name to NNHC." Id. However, because we find that the district court's other reasons for denying the claim were independently sufficient, we need not address the issue of futility. [fn11] The court found, citing a district court opinion, that "high-end" damages are awarded where the conduct is "egregious" and "exceptional," and found VCV's conduct to be so. J.A (citing Int'i Bancorp, L.L.C., v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 192 F.Supp.2d 467, 490 (E.D.Va. 2002)). Copyright 2015 CCH Incorporated or its affiliates

234 FOR PUBLICATION UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT TOYOTA MOTOR SALES, U.S.A., INC., a California corporation, Plaintiff-counterdefendant-Appellee, No v. D.C. No. CV DSF FARZAD TABARI; LISA TABARI, California residents, d/b/a FAST IMPORTS, Defendants-counter-claimants Appellants. OPINION Appeal from the United States District Court for the Central District of California Dale S. Fischer, District Judge, Presiding Argued and Submitted July 8, 2009 Pasadena, California Filed July 8, 2010 Before: Alex Kozinski, Chief Judge, Ferdinand F. Fernandez and N. Randy Smith, Circuit Judges. Opinion by Chief Judge Kozinski,; Concurrence by Judge Fernandez 9699

235 9702 TOYOTA MOTOR SALES v. TABARI COUNSEL Jens B. Koepke (argued), Robin Meadow, Greines, Martin, Stein & Richland LLP, Los Angeles, California; Alan S. Cooper, Howrey, LLP, Washington, DC, for the plaintiff, counterdefendant, appellee.

236 TOYOTA MOTOR SALES v. TABARI 9703 Lisa Tabari (argued), Farzad Tabari, pro se, Mission Viejo, California, for the defendants, counter-claimants, appellants. KOZINSKI, Chief Judge: OPINION In this trademark infringement case, we consider the application of the nominative fair use doctrine to internet domain names. Facts Farzad and Lisa Tabari are auto brokers the personal shoppers of the automotive world. They contact authorized dealers, solicit bids and arrange for customers to buy from the dealer offering the best combination of location, availability and price. Consumers like this service, as it increases competition among dealers, resulting in greater selection at lower prices. For many of the same reasons, auto manufacturers and dealers aren t so keen on it, as it undermines dealers territorial exclusivity and lowers profit margins. Until recently, the Tabaris offered this service at buy-a-lexus.com and buyorleaselexus.com. Toyota Motor Sales U.S.A. ( Toyota ) is the exclusive distributor of Lexus vehicles in the United States, and jealous guardian of the Lexus mark. A Toyota marketing executive testified at trial that Toyota spends over $250 million every year promoting the Lexus brand. In the executive s estimation, Lexus is a very prestigious luxury brand and it is an indication of an exclusive luxury experience. No doubt true. Toyota objected to the Tabaris use on their website of copyrighted photography of Lexus vehicles and the circular L Symbol Design mark. Toyota also took umbrage at the

237 9704 TOYOTA MOTOR SALES v. TABARI Tabaris use of the string lexus in their domain names, which it believed was likely to cause confusion as to the source of [the Tabaris ] web site. The Tabaris removed Toyota s photography and logo from their site and added a disclaimer in large font at the top. But they refused to give up their domain names. Toyota sued, and the district court found infringement after a bench trial. It ordered the Tabaris to cease using their domain names and enjoined them from using the Lexus mark in any other domain name. Pro se as they were at trial, the Tabaris appeal. Nominative Fair Use When customers purchase a Lexus through the Tabaris, they receive a genuine Lexus car sold by an authorized Lexus dealer, and a portion of the proceeds ends up in Toyota s bank account. Toyota doesn t claim the business of brokering Lexus cars is illegal or that it has contracted with its dealers to prohibit selling through a broker. Instead, Toyota is using this trademark lawsuit to make it more difficult for consumers to use the Tabaris to buy a Lexus. The district court applied the eight-factor test for likelihood of confusion articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, (9th Cir. 1979), and found that the Tabaris domain names buy-a-lexus.com and buyorleaselexus.com infringed the Lexus trademark. But we ve held that the Sleekcraft analysis doesn t apply where a defendant uses the mark to refer to the trademarked good itself. See Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002); New Kids on the Block v. News Am. Publ g, Inc., 971 F.2d 302, 308 (9th Cir. 1992). 1 The Tabaris are using the term Lexus to describe 1 This is no less true where, as here, the defendant s ultimate goal is to describe his own product. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002) (emphasis omitted). In Welles, for instance, we applied our nominative fair use analysis to a former playmate s use of the Playboy mark to describe herself and her website. 279 F.3d at 801. We observed that, in those circumstances, application of the Sleekcraft test, which focuses on the similarity of the mark used by the plaintiff and the defendant, would lead to the incorrect conclusion that virtually all nominative uses are confusing. Id.

238 TOYOTA MOTOR SALES v. TABARI 9705 their business of brokering Lexus automobiles; when they say Lexus, they mean Lexus. We ve long held that such use of the trademark is a fair use, namely nominative fair use. And fair use is, by definition, not infringement. The Tabaris did in fact present a nominative fair use defense to the district court. [1] In cases where a nominative fair use defense is raised, we ask whether (1) the product was readily identifiable without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder. Welles, 279 F.3d at 801 (quoting New Kids, 971 F.2d at ). This test evaluates the likelihood of confusion in nominative use cases. Id. It s designed to address the risk that nominative use of the mark will inspire a mistaken belief on the part of consumers that the speaker is sponsored or endorsed by the trademark holder. The third factor speaks directly to the risk of such confusion, and the others do so indirectly: Consumers may reasonably infer sponsorship or endorsement if a company uses an unnecessary trademark or more of a mark than necessary. But if the nominative use satisfies the three-factor New Kids test, it doesn t infringe. If the nominative use does not satisfy all the New Kids factors, the district court may order defendants to modify their use of the mark so that all three factors are satisfied; it may not enjoin nominative use of the mark altogether. 2 [2] A. The district court enjoined the Tabaris from using any... domain name, service mark, trademark, trade name, meta tag or other commercial indication of origin that includes the mark LEXUS. A trademark injunction, particularly one involving nominative fair use, can raise serious First Amendment concerns because it can interfere with truthful communication between buyers and sellers in the market- 2 If defendants are unable or unwilling to modify their use of the mark to comply with New Kids, then the district court s order to modify may effectively enjoin defendants from using the mark at all.

239 9706 TOYOTA MOTOR SALES v. TABARI place. See Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748, (1976). Accordingly, we must [e]nsure that [the injunction] is tailored to eliminate only the specific harm alleged. E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1297 (9th Cir. 1992). To uphold the broad injunction entered in this case, we would have to be convinced that consumers are likely to believe a site is sponsored or endorsed by a trademark holder whenever the domain name contains the string of letters that make up the trademark. In performing this analysis, our focus must be on the reasonably prudent consumer in the marketplace. Cf. Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998) (describing the test for likelihood of confusion in analogous Sleekcraft context). The relevant marketplace is the online marketplace, and the relevant consumer is a reasonably prudent consumer accustomed to shopping online; the kind of consumer who is likely to visit the Tabaris website when shopping for an expensive product like a luxury car. See, e.g., Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002). Unreasonable, imprudent and inexperienced web-shoppers are not relevant. [3] The injunction here is plainly overbroad as even Toyota s counsel grudgingly conceded at oral argument because it prohibits domain names that on their face dispel any confusion as to sponsorship or endorsement. The Tabaris are prohibited from doing business at sites like independentlexus-broker.com and we-are-definitely-not-lexus.com, although a reasonable consumer wouldn t believe Toyota sponsors the websites using those domains. Prohibition of such truthful and non-misleading speech does not advance the Lanham Act s purpose of protecting consumers and preventing unfair competition; in fact, it undermines that rationale by frustrating honest communication between the Tabaris and their customers.

240 TOYOTA MOTOR SALES v. TABARI 9707 Even if we were to modify the injunction to exclude domain names that expressly disclaim sponsorship or endorsement (like the examples above), the injunction would still be too broad. The Tabaris may not do business at lexusbroker.com, even though that s the most straightforward, obvious and truthful way to describe their business. The nominative fair use doctrine allows such truthful use of a mark, even if the speaker fails to expressly disavow association with the trademark holder, so long as it s unlikely to cause confusion as to sponsorship or endorsement. See Welles, 279 F.3d at 803 n.26. In New Kids, for instance, we found that use of the New Kids on the Block mark in a newspaper survey did not infringe, even absent a disclaimer, because the survey said nothing that expressly or by fair implication connotes endorsement or joint sponsorship. 971 F.2d at 309. Speakers are under no obligation to provide a disclaimer as a condition for engaging in truthful, non-misleading speech. Although our opinion in Volkswagenwerk Aktiengesellschaft v. Church remarked on that defendant s prominent use of the word Independent whenever the terms Volkswagen or VW appeared in his advertising, 411 F.2d 350, 352 (9th Cir. 1969), it isn t to the contrary. The inclusion of such words will usually negate any hint of sponsorship or endorsement, which is why we mentioned them in concluding that there was no infringement in Volkswagenwerk. Id. But that doesn t mean such words are required, and Volkswagenwerk doesn t say they are. Our subsequent cases make clear they re not. See Welles, 279 F.3d at 803 n.26; New Kids, 971 F.2d at The Sixth Circuit enjoined a domain name in part because it did not include words like independent or unaffiliated, but in that case there were additional factors indicating sponsorship or endorsement, including the use of stylized versions of the plaintiff s marks on the site. PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, (6th Cir. 2003). Where these or other factors suggest that nominative use is likely to cause confusion, a disclaimer may well be necessary. But a disclaimer is not required every time a URL contains a mark.

241 9708 TOYOTA MOTOR SALES v. TABARI [4] The district court reasoned that the fact that an internet domain contains a trademark will generally suggest sponsorship or endorsement by the trademark holder. When a domain name consists only of the trademark followed by.com, or some other suffix like.org or.net, it will typically suggest sponsorship or endorsement by the trademark holder. Cf. Panavision Int l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998). 4 This is because [a] customer who is unsure about a company s domain name will often guess that the domain name is also the company s name. Id. (quoting Cardservice Int l v. McGee, 950 F. Supp. 737, 741 (E.D. Va. 1997)) (internal quotation marks omitted); see also Brookfield Commc ns, Inc. v. W. Coast Entm t Corp., 174 F.3d 1036, 1045 (9th Cir. 1999). If customers type in trademark.com and find the site occupied by someone other than the trademark holder, they may well believe it is the trademark holder, despite contrary evidence on the website itself. Alternatively, they may become discouraged and give up looking for the trademark holder s official site, believing perhaps that such a website doesn t exist. Panavision, 141 F.3d at Of course, not every trademark.com domain name is likely to cause consumer confusion. See Interstellar Starship, 304 F.3d at For instance, we observed in Interstellar Starship that an apple orchard could operate at the website apple.com without risking confusion with Apple Computers, in light of the vast difference between their products. Id. at 944. If, however, the apple grower... competed directly with Apple Computer by selling computers, initial interest confusion probably would result, as the apple grower would be using the apple.com domain to appropriate the goodwill Apple Computer had developed in its trademark. Id. When a website deals in goods or services related to a trademarked brand, as in this case, it is much closer to the second example, where apple.com competes with Apple Computers. If a company that repaired ipods, ipads and iphones were to set up at apple.com, for instance, consumers would naturally assume that the company was sponsored or endorsed by Apple (or, more likely, that it was Apple). Where a site is used to sell goods or services related to the trademarked brand, a trademark.com domain will therefore suggest sponsorship or endorsement and will not generally be nominative fair use.

242 TOYOTA MOTOR SALES v. TABARI 9709 [5] But the case where the URL consists of nothing but a trademark followed by a suffix like.com or.org is a special one indeed. See Brookfield, 174 F.3d at The importance ascribed to trademark.com in fact suggests that far less confusion will result when a domain making nominative use of a trademark includes characters in addition to those making up the mark. Cf. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, (9th Cir. 2002). Because the official Lexus site is almost certain to be found at lexus.com (as, in fact, it is), it s far less likely to be found at other sites containing the word Lexus. On the other hand, a number of sites make nominative use of trademarks in their domains but are not sponsored or endorsed by the trademark holder: You can preen about your Mercedes at mercedesforum.com and mercedestalk.net, read the latest about your double-skim-no-whip latte at starbucksgossip.com and find out what goodies the world s greatest electronics store has on sale this week at fryselectronics-ads.com. Consumers who use the internet for shopping are generally quite sophisticated about such matters and won t be fooled into thinking that the prestigious German car manufacturer sells boots at mercedesboots.com, or homes at mercedeshomes.com, or that comcastsucks.org is sponsored or endorsed by the TV cable company just because the string of letters making up its trademark appears in the domain. When people go shopping online, they don t start out by typing random URLs containing trademarked words hoping to 5 Citing our refusal to distinguish between Golden Door, a spa, and a competing Golden Door for Hair, the district court treated buyorleaselexus.com as legally indistinguishable from lexus.com. Golden Door, Inc. v. Odisho, 646 F.2d 347, 350 (9th Cir. 1980); see also PACCAR Inc., 319 F.3d at 252. According to Toyota, such legally identical phrases in a domain name can never be fair use. But there is no such rule; we look to context to determine how much weight to give the words accompanying a mark. See, e.g., Brother Records, Inc. v. Jardine, 318 F.3d 900, 908 (9th Cir. 2003). In Golden Door, we noted that the defendant answered the phone Golden Door, not Golden Door for Hair, and featured the words Golden Door prominently in its signs. 646 F.2d at 350.

243 9710 TOYOTA MOTOR SALES v. TABARI get a lucky hit. They may start out by typing trademark.com, but then they ll rely on a search engine or word of mouth. 6 If word of mouth, confusion is unlikely because the consumer will usually be aware of who runs the site before typing in the URL. And, if the site is located through a search engine, the consumer will click on the link for a likely-relevant site without paying much attention to the URL. Use of a trademark in the site s domain name isn t materially different from use in its text or metatags in this context; a search engine can find a trademark in a site regardless of where exactly it appears. In Welles, we upheld a claim that use of a mark in a site s metatags constituted nominative fair use; we reasoned that [s]earchers would have a much more difficult time locating relevant websites if the law outlawed such truthful, nonmisleading use of a mark. 279 F.3d at 804. The same logic applies to nominative use of a mark in a domain name. [6] Of course a domain name containing a mark cannot be nominative fair use if it suggests sponsorship or endorsement by the trademark holder. We ve already explained why trademark.com domains have that effect. See pp supra. Sites like trademark-usa.com, trademark-of-glendale.com or e-trademark.com will also generally suggest sponsorship or endorsement by the trademark holder; the addition of e merely indicates the electronic version of a brand, and a location modifier following a trademark indicates that consumers can expect to find the brand s local subsidiary, franchise or affiliate. See Visa Int l Serv. Ass n v. JSL Corp., No (9th Cir. June 28, 2010). For even more obvious reasons, domains like official-trademark-site.com or we-aretrademark.com affirmatively suggest sponsorship or endorsement by the trademark holder and are not nominative fair use. 7 6 By word of mouth we, of course, refer not merely to spoken recommendations from friends and acquaintances, but to the whole range of information available to online shoppers, including chat rooms, discussion forums, feedback and evaluation websites, and the like. 7 Domain names containing trademarks may also be prohibited because they dilute the value of those marks for instance, by creating negative

244 TOYOTA MOTOR SALES v. TABARI 9711 But the district court s injunction is not limited to this narrow class of cases and, indeed, the Tabaris domain names do not fall within it. [7] When a domain name making nominative use of a mark does not actively suggest sponsorship or endorsement, the worst that can happen is that some consumers may arrive at the site uncertain as to what they will find. But in the age of FIOS, cable modems, DSL and T1 lines, reasonable, prudent and experienced internet consumers are accustomed to such exploration by trial and error. Cf. Interstellar Starship, 304 F.3d at 946. They skip from site to site, ready to hit the back button whenever they re not satisfied with a site s contents. They fully expect to find some sites that aren t what they imagine based on a glance at the domain name or search engine summary. Outside the special case of trademark.com, or domains that actively claim affiliation with the trademark holder, consumers don t form any firm expectations about the sponsorship of a website until they ve seen the landing page if then. This is sensible agnosticism, not consumer confusion. See Jennifer E. Rothman, Initial Interest Confusion: Standing at the Crossroads of Trademark Law, 27 Cardozo L. Rev. 105, , 140, 158 (2005). So long as the site as a whole does not suggest sponsorship or endorsement by the trademark holder, such momentary uncertainty does not preclude a finding of nominative fair use. Toyota argues it is entitled to exclusive use of the string lexus in domain names because it spends hundreds of milassociations with the brand. Cf. Playboy Enters., Inc. v. Netscape Commc ns Corp., 354 F.3d 1020, 1033 (9th Cir. 2004). For example, the website People of Walmart, which publishes rude photos of Walmart shoppers at peopleofwalmart.com, might dilute the Walmart trademark by associating it with violations of customers privacy and the idea that a visitor to Walmart stores risks being photographed and ridiculed on the internet. See Jeffrey Zaslow, Surviving the Age of Humiliation, Wall St. J., May 5, 2010, at D1. But Toyota does not allege that the Tabaris site has any such effect.

245 9712 TOYOTA MOTOR SALES v. TABARI lions of dollars every year making sure everyone recognizes and understands the word Lexus. But [a] large expenditure of money does not in itself create legally protectable rights. Smith v. Chanel, Inc., 402 F.2d 562, 568 (9th Cir. 1968); see also Ty Inc. v. Perryman, 306 F.3d 509, 513 (7th Cir. 2002); Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, (1999). Indeed, it is precisely because of Toyota s investment in the Lexus mark that [m]uch useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to [Lexus] by using its trademark. New Kids, 971 F.2d at It is the wholesale prohibition of nominative use in domain names that would be unfair. It would be unfair to merchants seeking to communicate the nature of the service or product offered at their sites. And it would be unfair to consumers, who would be deprived of an increasingly important means of receiving such information. As noted, this would have serious First Amendment implications. The only winners would be companies like Toyota, which would acquire greater control over the markets for goods and services related to their trademarked brands, to the detriment of competition and consumers. The nominative fair use doctrine is designed to prevent this type of abuse of the rights granted by the Lanham Act. [8] B. Toyota asserts that, even if the district court s injunction is overbroad, it can be upheld if limited to the Tabaris actual domain names: buyorleaselexus.com and buya-lexus.com. We therefore apply the three-part New Kids test to the domain names, and we start by asking whether the 8 Words... do not worm their way into our discourse by accident. Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 975 (1993). Trademark holders engage in well-orchestrated campaigns intended to burn them into our collective consciousness. Id. Although trademark holders gain something by pushing their trademark into the lexicon, they also inevitably lose a measure of control over their mark.

246 TOYOTA MOTOR SALES v. TABARI 9713 Tabaris use of the mark was necessary to describe their business. Toyota claims it was not, because the Tabaris could have used a domain name that did not contain the Lexus mark. It s true they could have used some other domain name like autobroker.com or fastimports.com, or have used the text of their website to explain their business. But it s enough to satisfy our test for necessity that the Tabaris needed to communicate that they specialize in Lexus vehicles, and using the Lexus mark in their domain names accomplished this goal. While using Lexus in their domain names wasn t the only way to communicate the nature of their business, the same could be said of virtually any choice the Tabaris made about how to convey their message: Rather than using the internet, they could publish advertisements in print; or, instead of taking out print ads, they could rely on word of mouth. We ve never adopted such a draconian definition of necessity, and we decline to do so here. In Volkswagenwerk, for instance, we affirmed the right of a mechanic to put up a sign advertising that he specialized in repairing Volkswagen cars, although he could have used a sandwich board, distributed leaflets or shouted through a megaphone. 411 F.2d at One way or the other, the Tabaris need to let consumers know that they are brokers of Lexus cars, and that s nearly impossible to do without mentioning Lexus, cf. Monte Carlo Shirt, Inc. v. Daewoo Int l (Am.) Corp., 707 F.2d 1054, 1058 (9th Cir. 1983), be it via domain name, metatag, radio jingle, telephone solicitation or blimp. 9 The Seventh Circuit has similarly upheld the right of a seller of Beanie Babies to operate at bargainbeanies.com on the grounds that [y]ou can t sell a branded product without using its brand name. Ty Inc., 306 F.3d at 512. In a prophetic choice of examples, Judge Posner remarked that prohibiting such a domain name would amount to saying that if a used car dealer truthfully advertised that it sold Toyotas, or if a muffler manufacturer truthfully advertised that it specialized in making mufflers for installation in Toyotas, Toyota would have a claim of trademark infringement. Id.

247 9714 TOYOTA MOTOR SALES v. TABARI The fact that the Tabaris also broker other types of cars does not render their use of the Lexus mark unnecessary. 10 Lisa Tabari testified: I in my conviction and great respect for the company always try to convince the consumer to first purchase a Lexus or Toyota product. If customers decide to buy some other type of car, the Tabaris may help with that, but their specialty is Lexus. The Tabaris are entitled to decide what automotive brands to emphasize in their business, and the district court found that the Tabaris do in fact specialize in Lexus vehicles. Potential customers would naturally be interested in that fact, and it was entirely appropriate for the Tabaris to use the Lexus mark to let them know it. Nor are we convinced by Toyota s argument that the Tabaris unnecessarily used domain names containing the Lexus trademark as their trade name. See Volkswagenwerk, 411 F.2d at 352. The Tabaris business name is not buyorleaselexus.com or buy-a-lexus.com; it s Fast Imports. Toyota points out that the Tabaris domain names featured prominently in their advertising, but that by no means proves the domain names were synonymous with the Tabaris business. The Tabaris may have featured their domain names in their advertisements in order to tell consumers where to find their website, as well as to communicate the fact that they can help buy or lease a Lexus. Toyota would have to show significantly more than prominent advertisement to establish the contrary. We therefore conclude that the Tabaris easily satisfy the first New Kids factor. [9] As for the second and third steps of our nominative fair use analysis, Toyota suggests that use of the stylized Lexus 10 Toyota doesn t suggest that the Tabaris used the Lexus mark to refer to those other cars, or that the Tabaris used the Lexus mark in order to redirect customers to those cars. See, e.g., Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1019 (9th Cir. 2004). Everyone seems to concede the Tabaris are bona fide Lexus brokers. We therefore do not consider whether the Tabaris used the Lexus mark in conjunction with brokering vehicles other than Lexus, or whether such use would be infringing.

248 TOYOTA MOTOR SALES v. TABARI 9715 mark and Lexus L logo was more use of the mark than necessary and suggested sponsorship or endorsement by Toyota. This is true: The Tabaris could adequately communicate their message without using the visual trappings of the Lexus brand. New Kids, 971 F.2d at 308 n.7. Moreover, those visual cues might lead some consumers to believe they were dealing with an authorized Toyota affiliate. Imagery, logos and other visual markers may be particularly significant in cyberspace, where anyone can convincingly recreate the look and feel of a luxury brand at minimal expense. It s hard to duplicate a Lexus showroom, but it s easy enough to ape the Lexus site. [10] But the Tabaris submitted images of an entirely changed site at the time of trial: The stylized mark and L logo were gone, and a disclaimer appeared in their place. The disclaimer stated, prominently and in large font, We are not an authorized Lexus dealer or affiliated in any way with Lexus. We are an Independent Auto Broker. While not required, such a disclaimer is relevant to the nominative fair use analysis. See Welles, 279 F.3d at 803. Toyota claims the Tabaris disclaimer came too late to protect against confusion caused by their domain names, as such confusion would occur before consumers saw the site or the disclaimer. See Brookfield, 174 F.3d at But nothing about the Tabaris domains would give rise to such confusion; the Tabaris did not run their business at lexus.com, and their domain names did not contain words like authorized or official. See pp supra. Reasonable consumers would arrive at the Tabaris site agnostic as to what they would find. Once there, they would immediately see the disclaimer and would promptly be disabused of any notion that the Tabaris website is sponsored by Toyota. Because there was no risk of confusion as to sponsorship or endorsement, the Tabaris use of the Lexus mark was fair. [11] This makeover of the Tabaris site is relevant because Toyota seeks only forward-looking relief. In Volkswagenwerk, we declined to order an injunction where the defendant

249 9716 TOYOTA MOTOR SALES v. TABARI had likewise stopped all infringing activities by the time of trial, 411 F.2d at 352, although we ve said that an injunction may be proper if there s a risk that infringing conduct will recur, Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, (9th Cir. 1986). Even assuming some form of an injunction is required to prevent relapse in this case, the proper remedy for infringing use of a mark on a site generally falls short of entirely prohibiting use of the site s domain name, as the district court did here. See Interstellar Starship, 304 F.3d at 948. [O]nly upon proving the rigorous elements of cyber-squatting... have plaintiffs successfully forced the transfer of an infringing domain name. Id. Forced relinquishment of a domain is no less extraordinary. [12] The district court is in a better position to assess in the first instance the timing and extent of any infringing conduct, as well as the scope of the remedy, if any remedy should prove to be required. We therefore vacate the injunction and remand for reconsideration. The important principle to bear in mind on remand is that a trademark injunction should be tailored to prevent ongoing violations, not punish past conduct. Speakers do not lose the right to engage in permissible speech simply because they may have infringed a trademark in the past. C. When considering the scope and timing of any infringement on remand, the district court must eschew application of Sleekcraft and analyze the case solely under the rubric of nominative fair use. Cairns, 292 F.3d at The district court treated nominative fair use as an affirmative defense to be established by the Tabaris only after Toyota showed a likelihood of confusion under Sleekcraft. This was error; nominative fair use replaces Sleekcraft as the proper test for likely consumer confusion whenever defendant asserts to have referred to the trademarked good itself. Id. (emphasis omitted); see also Welles, 279 F.3d at 801.

250 TOYOTA MOTOR SALES v. TABARI 9717 On remand, Toyota must bear the burden of establishing that the Tabaris use of the Lexus mark was not nominative fair use. A finding of nominative fair use is a finding that the plaintiff has failed to show a likelihood of confusion as to sponsorship or endorsement. See Welles, 279 F.3d at 801; New Kids, 971 F.2d at 308 ( Because [nominative fair use] does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition. ). 11 And, as the Supreme Court has unambiguously instructed, the Lanham Act always places the burden of proving likelihood of confusion... on the party charging infringement. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118 (2004); see also id. at In this case, that party is Toyota. [A]ll the [Tabaris] need[ ] to do is to leave the factfinder unpersuaded. Id. at 120. We have previously said the opposite: [T]he nominative fair use defense shifts to the defendant the burden of proving no likelihood of confusion. Brother Records, Inc., 318 F.3d at 909 n.5. But that rule is plainly inconsistent with Lasting Impression and has been effectively overruled. Miller v. Gammie, 335 F.3d 889, 893 (9th Cir. 2003) (en banc); see also 4 McCarthy on Trademarks and Unfair Competition 23:11 at 82 n.5 (4th ed. 2010). A defendant seeking to assert nominative fair use as a defense need only show that it used the mark to refer to the trademarked good, as the Tabaris undoubtedly have here. The burden then reverts to the plaintiff to show a likelihood of confusion. 11 This is necessarily so because, unlike classic fair use, nominative fair use is not specifically provided for by statute. A court may find classic fair use despite proof of infringement because the Lanham Act authorizes that result. See 15 U.S.C. 1115(b)(4). Nominative fair use, on the other hand, represents a finding of no liability under that statute s basic prohibition of infringing use. See id

251 9718 TOYOTA MOTOR SALES v. TABARI Laches The Tabaris claim Toyota s case is barred by laches. This would obviate any need to remand, as it would provide a complete defense to Toyota s trademark claims. The district court rejected this defense, and we review for abuse of discretion. United States v. Marolf, 173 F.3d 1213, 1218 (9th Cir. 1999). [13] The district court found that Toyota waited six months before contacting the Tabaris after it became aware of their domain names. The Tabaris point to no evidence that would justify overturning that finding on appeal. Nor was it an abuse of discretion to conclude that short delay was reasonable. An additional delay of two years ensued before Toyota brought this suit, but during that period the parties were actively seeking to resolve this matter out of court. It was not unreasonable for Toyota to attempt to avoid the expense and inconvenience of a lawsuit. See, e.g., E. & J. Gallo Winery, 967 F.2d at 1285, [14] Nor did the relatively brief delay prejudice the Tabaris. See id. at The Tabaris note that one witness answered I don t remember in her deposition, but they present no evidence that the witness s loss of memory occurred during the period of delay. We must therefore affirm the district court s rejection of the Tabaris laches defense. Seventh Amendment [15] Finally, we consider the Tabaris claim that the district court deprived them of their right to a trial by jury when it failed to empanel a jury to decide Toyota s trademark claims. Because Toyota only sought an injunction, the district court did not err by resolving its claims in a bench trial. See, e.g., Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 611 F.2d 296, (9th Cir. 1979). Nor were the Tabaris entitled to a jury trial on their equitable defenses to those claims, Danjaq LLC v. Sony Corp., 263 F.3d 942, 962 (9th Cir. 2001), or their

252 TOYOTA MOTOR SALES v. TABARI counterclaims seeking declarations of trademark invalidity and non-infringement, Shubin v. U.S. Dist. Ct. for S.D. Cal., 313 F.2d 250, (9th Cir. 1963). The Tabaris also claim the district court erred by bifurcating the trademark claims from the Tabaris counterclaims for intentional and negligent interference with prospective economic advantage, as to which the Tabaris undoubtedly did have a right to trial by jury. After resolving the trademark claims in a bench trial, the district court granted summary judgment against the Tabaris on the interference counterclaims. This was proper only if there were no common factual issues among the bifurcated claims; otherwise, the interference counterclaims should have been addressed first in order to avoid the risk that findings made in the bench trial would become the law of the case and prevent a jury from determining the common issues. See Dollar Sys., Inc. v. Avcar Leasing Sys., Inc., 890 F.2d 165, 170 (9th Cir. 1989). [16] There s no need for an exhaustive inquiry to determine whether there was factual overlap between the claims; we can take Toyota s word for it. After the bench trial, Toyota sought summary judgment on the Tabaris counterclaims on the ground that: Much of the testimony and evidence offered at trial to support or refute Defendants affirmative defenses and... counterclaims... involve the same issues of proof necessary to Defendants pending tortious interference counterclaims. For example, the factual allegations underlying Defendants affirmative defense of inequitable conduct, unclean hands and trademark misuse are also central to Defendants tortious interference counterclaims Toyota claimed there was no longer any need for a jury trial because the district court s bench trial findings constituted the

253 9720 TOYOTA MOTOR SALES v. TABARI law of the case. 12 Of course, this is precisely the result forfeiture of the right to trial by jury that the rule articulated in Dollar Systems strives to prevent. Id. Because Toyota never should have been in a position to make such an argument, the procedure adopted by the district court was error. [17] Nevertheless, it was harmless, and there s no need to revisit the issue on remand. See Kulas v. Flores, 255 F.3d 780, 784 (9th Cir. 2001). When the district court granted summary judgment on the Tabaris counterclaims, it didn t rely on any factual findings made at the bench trial. It determined that any reasonable jury would have to hold for Toyota on the counterclaims: With regard to the Tabaris claim of negligent interference, it held that the Tabaris had failed to provide any evidence that Toyota owed them a duty of care. See Stolz v. Wong Commc ns Ltd. P ship, 31 Cal. Rptr. 2d 229, 238 (Cal. Ct. App. 1994). And, with regard to the intentional interference claim, it found that Toyota s act of bringing suit was absolutely privileged, Silberg v. Anderson, 786 P.2d 365, (Cal. 1990), and that the Tabaris had failed to provide any other evidence of intentional interference. The Tabaris don t challenge the substance of those holdings on appeal Toyota artfully maneuvered to obscure this factual overlap before trial and again on appeal. Toyota argued in favor of bifurcation on the grounds that even a cursory review would show that there are no common issues of fact between any of these original claims and the counterclaims. This was technically correct: The overlap was between the Tabaris defenses and counterclaims, not Toyota s original claims and the Tabaris counterclaims. Toyota evidently hoped that the district court would not notice the careful parsing of its language, and that the Tabaris (who are defending this case pro se) would not call it to the court s attention. Toyota is playing the same game on appeal: It states that bifurcation was proper because [t]here was no factual overlap between Toyota s trademark claims and Fast Imports interference claims. But Toyota is only telling half the story by talking about only half of the relevant claims; Toyota admitted as much in its motion for summary judgment. Such selective memory exceeds the bounds of zealous advocacy. 13 The Tabaris do challenge the district court s holding that they failed to present evidence that they were damaged by Toyota s alleged tortious

254 TOYOTA MOTOR SALES v. TABARI Because the district court could have granted summary judgment on this basis before the bench trial, it was harmless error for it to do so after the trial was concluded. See Kulas, 255 F.3d at 784. On remand, the district court therefore need not disturb its grant of summary judgment on the Tabaris interference counterclaims. * * * We vacate and remand for proceedings consistent with this opinion. At the very least, the injunction must be modified to allow some use of the Lexus mark in domain names by the Tabaris. Trademarks are part of our common language, and we all have some right to use them to communicate in truthful, non-misleading ways. Many of the district court s errors seem to be the result of unevenly-matched lawyering, as Toyota appears to have taken advantage of the fact that the Tabaris appeared pro se. See, e.g., p n.12 supra. To avoid similar problems on remand, the district court might consider contacting members of the bar to determine if any would be willing to represent the Tabaris at a reduced rate or on a volunteer basis. VACATED AND REMANDED. Costs on appeal are awarded to the Tabaris FERNANDEZ, Circuit Judge, concurring: I concur in the majority s conclusion that the district court erred in its handling of the nominative fair use defense. I write conduct. But the district court also found that no reasonable jury could find Toyota liable. The Tabaris argument that they were damaged is irrelevant in light of this unchallenged holding regarding liability.

255 9722 TOYOTA MOTOR SALES v. TABARI separately, however, because I cannot concur in all that is said by the majority. First, and principally, I feel compelled to disassociate myself from statements by the majority which are not supported by the evidence or by the district court s findings. I simply cannot concur in essentially factual statements whose provenance is our musings rather than the record and determinations by trier of fact. For example, on this record I do not see the basis for the majority s assertion that the relevant consumer is... accustomed to shopping online ; 1 or that [c]onsumers who use the internet for shopping are generally quite sophisticated 2 so that they are not likely to be misled; or that the worst that can happen is that some consumers may arrive at [a] site uncertain as to what they will find ; 3 or that, in fact, consumers are agnostic and, again, not likely to be misled; 4 or that [r]easonable consumers would arrive at the Tabaris site agnostic as to what they would find. 5 Second, I am unable to join the gratuitous slap at counsel for Toyota in the majority opinion, 6 which I see as entirely unnecessary to our decision or even to the upholding of the marmoreal surface of the law. Finally, I do not join the final textual paragraph, which nudges the district court to find pro bono counsel for the Tabaris, who have neither chosen to retain their own counsel nor demonstrated that they cannot do so. To the extent that the majority sees their activities as especially socially worthy and above reproach, I do not agree. Thus, I respectfully concur in the result. 1 Majority opinion, page Id. at Id. at Id. at Id. at Id. at 9720 n.12.

256 Case 2:06-cv JLR Document 82 Filed 12/04/2007 Page 1 of 1 AO 450 (Rev. 5/85) Judgment in a Civil Case r United States District Court WESTERN DISTRICT OF WASHINGTON AT SEATTLE DAVID LAHOTI, Plaintiff, JUDGMENT IN A CIVIL CASE v. VERICHECK, INC., CASE NUMBER: C JLR Defendant. Jury Verdict. This action came before the Court for a trial by jury. The issues have been tried and the jury has rendered its verdict. X Decision by Court. This action came to consideration before the Court. The issues have been considered and a decision has been rendered. IT IS ORDERED AND ADJUDGED After a trial to the court, the court made findings and conclusions. The court found in favor of Defendant Vericheck, Inc. and issued an injunction transferring the domain name <vericheck.com> to Defendant and enjoining Plaintiff and his affiliates from using the term VERICHECK in any manner, including as a domain name. The court awarded $100,000 in statutory damages to Vericheck, Inc., and its attorneys fees and costs. Dated this 3rd day of December, BRUCE RIFKIN Clerk s/mary Duett Deputy Clerk

257 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 1 of 26 PageID #: 1188 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK x WEB-ADVISO, J. TAIKWOK YUNG, pro se, DONALD J. TRUMP, Plaintiff-Counterclaim Defendant, -against- Defendant-Counterclaim Plaintiff x DORA L. IRIZARRY, U.S. District Judge: : : : : : : : : : : : : OPINION AND ORDER 11-cv-1413 (DLI) (VVP) Pro se plaintiff-counterclaim defendant J. Taikwok Yung, who purportedly does business under the name Web-adviso ( Plaintiff ), 1 brought this action against defendant-counterclaim plaintiff Donald J. Trump ( Defendant ) seeking a declaration that he is entitled to use the internet domain names trumpabudhabi.com, trumpbeijing.com, trumpindia.com and trumpmumbai.com (collectively, the Domain Names ), because his use of the Domain Names does not infringe on any of Defendant s trademark rights or violate the Anti-Cybersquatting Consumer Protection Act ( ACPA ), 15 U.S.C. 1125(d). (See Compl., Dkt. Entry 1, 2, ) Defendant brought counterclaims against Plaintiff for: 1) federal trademark infringement; 2) federal unfair competition; 3) federal trademark dilution; 4) violation of the ACPA; 5) New York State law unfair competition; 6) violation of New York State Deceptive and Unfair Trade Practices Act; and 7) New York State law trademark dilution. (See Counterclaim, Dkt. Entry 4, ) 1 It does not appear that Web-Adviso is an entity with a separate legal existence from Yung. Therefore, the court uses the term Plaintiff to refer to Yung personally and Yung as his d/b/a, Web-Adviso, interchangeably.

258 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 2 of 26 PageID #: 1189 Defendant moved for partial summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure on Plaintiff s declaratory judgment claims and Defendant s counterclaims for federal and state trademark infringement, federal and state unfair competition and violation of the ACPA. (See Mem. in Supp. of Def. s Mot. for Partial Summ. J., Dkt. Entry 39 ( Def. s Mem. ), at 1.) Plaintiff opposed the motion. (See Pl. s Aff. in Opp n to Def. s Mot. for Partial Summ. J., Dkt. Entry 44 ( Pl. s Opp n ).) For the following reasons, Defendant s motion is granted with respect to the ACPA claim and denied as moot as to all other claims. BACKGROUND Plaintiff is a self-described domainer, which he defines as somebody who acquire[s] interesting and high value domain names and park[s] them initially with domain parking service providers and/or build[s] the website, if feasible, with interesting content which takes significant time to program, customize and debug the back-end codes. (Pl. s Opp n 27.) Plaintiff explains that getting high quality domain names means getting domain names that make sense, easy to remember, concise in spelling and convey a knowledge of quality of the internet in its name. (Id.) Besides the Domain Names, Plaintiff owns almost 200 other domain names, many of which contain names of well-known businesses, such as barclayscapitallehman.com, citigroupwachovia.com, goldmansachsgroup.com, hulufriend.com, milanvogue.com, silversurfergame.com and xbox360sdk.com. (Decl. of James D. Weinberger in Supp. of Def. s Mot. for Partial Summ. J, Dkt. Entry 41 ( Weinberger Decl. ), Ex. 9.) Defendant is, among other things, a real estate developer and hotelier. (See Decl. of Eric F. Trump in Supp. of Def. s Mot. for Partial Summ. J., Dkt. Entry 40 ( Trump Decl. ), 9.) He has authored several books and hosts the nationally broadcast television shows The Apprentice and The Celebrity Apprentice. (Id ; Compl. 4.) In connection with his business 2

259 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 3 of 26 PageID #: 1190 interests, Defendant has registered his last name in capital letters, TRUMP, as a trademark with the United States Patent and Trademark Organization ( USPTO ). (See Trump Decl. Ex. 1.) He has used this mark, personally and through a privately held business entity, The Trump Organization, to promote myriad goods and properties, including residential buildings, hotels, golf courses, clothing and home furnishings. (See id. 4-5, 10.) Defendant also has affirmed to the USPTO that he has used the TRUMP mark continuously for five years or more in connection with hotel services, bottled water and golf course services. (See Weinberger Decl. Ex. 1.) Defendant also holds various domain names that he uses to promote his brand. (Trump Decl. 17.) While the main website for The Trump Organization is located at trump.com, Defendant also holds domain names with the word trump followed by a geographic location, which promote TRUMP-branded real estate projects in the location indicated by the domain name. (Id ) These domain names include trumpchicago.com, trumphollywood.com and trumpistanbul.com.tr, promoting real estate bearing the TRUMP mark in Chicago, Illinois, Hollywood, Florida, and Istanbul, Turkey, respectively. (Id. 19.) In 2007, Defendant s son, who is an Executive Vice President of the Trump Organization, announced plans to build TRUMP-branded hotels and condominiums in Mumbai and Bangalore, India. (Id. 21 & Ex. 4.) Subsequently, in September and November 2007, Plaintiff registered the Domain Names, trumpbeijing.com, trumpindia.com, trumpmumbai.com and trumpabudhabi.com. (Pl. s Opp n 16.) Plaintiff states that the websites are not run for profit and host political and non-political commentary, satire and shared complaints of the poor quality ultra-low budget reality TV show The Apprentice. (Id. 5, 17.) The websites contain disclaimers that they are not affiliated with Defendant, such as: The content and this website has [sic] NOT been approved by Donald Trump, or by the Trump Organization, or by 3

260 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 4 of 26 PageID #: 1191 the shows The Apprentice / The Celebrity Apprentice. (Id. 6 & Ex. C.) On October 27, 2010, an attorney representing the Trump Organization wrote a letter to Plaintiff asserting that his use of trumpmumbai.com and trumpindia.com violated Defendant s common law and federal trademark rights, and subjected Plaintiff to liability under the ACPA. (Trump Decl. Ex. 5.) The letter threatened Plaintiff with litigation if he did not transfer the domain names to Defendant. (Id.) By dated November 4, 2010, Plaintiff declined to comply with Defendant s demands, but consented to negotiate in the hope of reaching a more mutually beneficial agreement. (Id. Ex. 6.) The same day, counsel for the Trump Organization offered to pay $100 for trumpmumbai.com and trumpindia.com to cover reasonable transfer and registration costs incurred by Plaintiff. (Id. Ex. 7.) On November 8, 2010, Plaintiff replied that he agrees to negotiate with your organization in hopes of reaching a more mutually agreeable terms [sic].... [Plaintiff] believes the domain names, the large internet traffic from the site, and the development programming labor/work that has gone into building the site have significant value. (Id. Ex. 8.) On December 17, 2010, Defendant brought an arbitration proceeding against Plaintiff before the World Intellectual Property Organization pursuant to the Uniform Domain Name Resolution Policy ( UDRP ), asserting that the Domain Names infringed on the TRUMP mark. (Weinberger Decl. Ex. 4, 50.) Plaintiff opposed Defendant s claims. (See id. Ex. 5.) On March 5, 2011, the arbitrator ruled in favor of Defendant, and directed that Plaintiff transfer the Domain Names to Defendant. (Id. Ex. 6 at 9.) In a written decision, the arbitrator found that the Domain Names were confusingly similar to the TRUMP trademark, Plaintiff had no legitimate interest in the Domain Names, and Plaintiff had registered and used the Domain Names in bad 4

261 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 5 of 26 PageID #: 1192 faith. 2 (Id. at 6-9.) On March 22, 2011, Plaintiff filed the instant action seeking a declaration that he is entitled to use the Domain Names because they do not infringe on Defendant s trademarks or violate the ACPA. (See Compl. 2, ) Defendant brought counterclaims against Plaintiff for: 1) federal trademark infringement pursuant to Section 32(1) of the Lanham Act, 15 U.S.C. 1114(1); 2) federal unfair competition pursuant to Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A); 3) federal dilution pursuant to Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c); 4) violation of the ACPA; 5) unfair competition under New York State common law; 6) violation of New York State Deceptive and Unfair Trade Practices Act pursuant to Section 349 of the New York State General Business Law; and 7) New York State law trademark dilution under Section 360-l of the New York State General Business Law. (See Counterclaim ) Defendant moved for partial summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure on both of Plaintiff s declaratory judgment claims and Defendant s counterclaims for federal and state trademark infringement, federal and state unfair competition and violation of the ACPA. (See Def. s Mem. 1.) Defendant contends that there is no genuine issue of material fact that: 1) he has a protectable right in the TRUMP mark; 2) Plaintiff s use of the mark is likely to cause confusion; and 3) Plaintiff is a cybersquatter under the ACPA. (See id.) Plaintiff opposed the motion, contending that: 1) the word trump is generic; 2) Plaintiff 2 The parties have not addressed the implications of the UDRP proceeding on this action, but it appears that it has no precedential value. As one court in this circuit has explained: [t]he UDRP process has been described as adjudication lite because the proceedings are handled entirely upon written submissions and the arbitration panel has total discretion to determine the application of precedent and rules of evidence. The UDRP decisions are not binding on the courts. Gen. Media Comm ns, Inc. v. Crazy Troll, LLC, 2007 WL , at *4 (S.D.N.Y. Jan. 16, 2007) (internal citation omitted). 5

262 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 6 of 26 PageID #: 1193 does not run the websites at issue for profit and has not tried to sell the Domain Names; 3) the websites do not cause confusion because they contain disclaimers explaining that they are not affiliated with Defendant; 4) the First Amendment to the United States Constitution and the ACPA s safe harbor provision entitles Plaintiff to maintain the allegedly infringing websites because they are used for parody and commentary; and 5) Defendant s claims are barred by the doctrine of laches. (See generally Pl. s Opp n.) LEGAL STANDARD Summary judgment is appropriate where the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). The court must view all facts in the light most favorable to the nonmoving party, but only if there is a genuine dispute as to those facts. Scott v. Harris, 550 U.S. 372, 380 (2007). When opposing parties tell two different stories, one of which is blatantly contradicted by the record, so that no reasonable jury could believe it, a court should not adopt that version of the facts for purposes of ruling on a motion for summary judgment. Id. A genuine issue of material fact exists if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The nonmoving party, however, may not rely on [c]onclusory allegations, conjecture, and speculation. Kerzer v. Kingly Mfg., 156 F. 3d 396, 400 (2d Cir. 1998). When no rational jury could find in favor of the nonmoving party because the evidence to support its case is so slight, there is no genuine issue of material fact and a grant of summary judgment is proper. Gallo v. Prudential Residential Servs., Ltd. P ship, 22 F. 3d 1219, 1224 (2d Cir. 1994) (citing Dister v. Cont l Grp., Inc., 859 F. 2d 1108, 1114 (2d Cir. 1988)). In addition, the court holds pro se pleadings to to less stringent standards than formal 6

263 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 7 of 26 PageID #: 1194 pleadings drafted by lawyers. Hughes v. Rowe, 449 U.S. 5, 9 (1980). The court construes them to raise the strongest arguments that they suggest. Triestman v. Fed. Bureau of Prisons, 470 F. 3d 471, 474 (2d Cir. 2006) (per curiam) (emphasis omitted). DISCUSSION I. Anti-Cybersquatting Consumer Protection Act The ACPA was enacted to protect consumers and holders of distinctive trademarks from cybersquatting, which involves the registration as domain names of well-known trademarks by non-trademark holders who then try to sell the names back to the trademark owners. Sporty s Farm L.L.C. v. Sportsman s Mkt., Inc., 202 F. 3d 489, 493 (2d Cir. 2000). The ACPA imposes civil liability on a person who, without regard to the goods or services of the parties : (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii) registers, traffics in, or uses a domain name that (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; [or] (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark. 15 U.S.C. 1125(d)(1)(A). Thus, Defendant must show that: (1) the TRUMP mark is either distinctive or famous; (2) the Domain Names are identical or confusingly similar to the TRUMP mark; and (3) Plaintiff had a bad faith intent to profit from use of the mark. See Sporty s Farm L.L.C., 202 F. 3d at A. Distinctive or Famous Under the ACPA, the court must first determine whether [the mark at issue] is a distinctive or famous mark and thus entitled to the ACPA s protection. Id. at 497. There is no 7

264 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 8 of 26 PageID #: 1195 genuine issue of material fact that the TRUMP mark is distinctive and entitled to the ACPA s protection. 3 Prior to Plaintiff registering the Domain Names in 2007, Defendant attested to the USPTO that the TRUMP mark was incontestable when used in hotel services, bottled water and golf club services, because Defendant had registered and continuously used the mark in connection with these goods and services for at least five years. (See Weinberger Decl. Ex. 1; see also Trump Decl. Ex. 1.) The USPTO accepted and acknowledged Defendant s attestation. (See Weinberger Decl. Ex. 1.) This serves as conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant s ownership of the mark, and of the registrant s exclusive right to use the registered mark in connection with hotel services, bottled water and golf club services, subject to certain exceptions enumerated in the Lanham Act. 15 U.S.C. 1115(b). It also entitles Defendant to a presumption that its registered trademark is inherently distinctive. Sporty s Farm L.L.C., 202 F. 3d at 497 (quoting Equine Techs., Inc. v. Equitechnology, Inc., 68 F. 3d 542, 545 (1st Cir. 1995)). Thus, Plaintiff cannot argue that the TRUMP mark lacks secondary meaning. See Park N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 191, 203 (1985) (action to enjoin the infringement of an incontestable mark cannot be defended on grounds that mark is descriptive and lacks secondary meaning). Reading his submissions liberally, Plaintiff attempts to rebut the presumption of distinctiveness by asserting that the word trump is not entitled to protection because it is a generic dictionary word that means any playing card of a suit that for the time outranks other suits, such a card being able to take any card of another suit. (Pl. s Opp n 5; Compl. 21.) 3 Because it is distinctive, the court need not decide whether the TRUMP mark is also famous. See Prime Publishers, Inc. v. American-Republican, Inc., 160 F. Supp. 2d 266, 277 (D. Conn. 2001) ( In contrast to the Federal Trademark Dilution Act ( FTDA ), 15 U.S.C. 1125(c), which protects marks that are both famous and distinctive from dilution, a mark needs only one of those qualities to merit protection under the ACPA. ). 8

265 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 9 of 26 PageID #: 1196 This argument is meritless. Under the Lanham Act, no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered. 15 U.S.C. 1065(4) (emphasis added). In other words, a term is only generic to the extent that it name[s] the species or object to which the mark applies. Nabisco, Inc. v. PF Brands, Inc., 191 F. 3d 208, 215 (2d Cir. 1999), abrogated on other grounds, Moseley v. Secret Catalogue, Inc., 537 U.S. 418 (2003). However, an otherwise generic term can become non-generic, and entitled to protection, when used in connection with goods or services unrelated to its generic meaning. See J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition, 12:1 (4th ed.) ( Certainly, a term can be a generic name of one thing but be a valid trademark for some other product. For example: APPLE is a generic name for the edible fruit of the apple tree, but is a trademark for computers. (footnote omitted)). When an otherwise generic term is used as a trademark for a good or service that bears little or no relationship to its ordinary generic meaning, it becomes arbitrary and fanciful, and thus is inherently distinctive. See Virgin Enters. Ltd. v. Nawab, 335 F. 3d 141, (2d Cir. 2003) ( In relation to the sale of consumer electronic equipment, the VIRGIN mark is inherently distinctive, in that it is arbitrary and fanciful; the word virgin has no intrinsic relationship whatsoever to selling such equipment. ); Gruner + Jahr USA Publ g v. Meredith Corp., 991 F. 2d 1072, (2d Cir. 1993) ( An arbitrary term is one that has a dictionary meaning though not describing the product like IVORY for soap. ); Omega S.A. v. Omega Eng g, Inc., 228 F. Supp. 2d 112, 123 (D. Conn. 2002) ( The Court has no doubt that the marks omega and O, as used in connection with the manufacture and sale of watches, clocks, and electronic timing equipment, are inherently distinctive. The meanings associated with the word omega and letter O do not suggest time 9

266 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 10 of 26 PageID #: 1197 or watches. ). Here, the generic dictionary definition of trump is unrelated to any good or service for which the TRUMP mark is used by Defendant. The word trump is defined in the dictionary as, inter alia, all the cards of a suit... that if legally played will win over a card that is not of this suit and to get the better of. Webster s Third New International Dictionary (Unabridged), 2455 (1993). There is no intrinsic connection between these generic definitions and hotel services, bottled water or golf course services, for which the TRUMP mark has become incontestable. These dictionary definitions also bear no relation to the other goods and products for which the TRUMP mark has been registered, but has not yet become incontestable, such as real estate services, vodka, magazines, restaurant services and furniture. (See Trump Decl. Ex. 1.) The TRUMP mark is arbitrary in these contexts because it is derived from Defendant s last name, not from any colloquial use relating to card games or getting the better of somebody. (See Trump Decl. 14.) Thus, its generic meaning in unrelated settings does not undermine its strength or validity here. Accordingly, as a matter of law, the TRUMP mark is distinctive when used in connection with Defendant s businesses. B. Identical or Confusingly Similar The court next must consider whether the Domain Names are identical or confusingly similar to the TRUMP mark. 15 U.S.C. 1125(d)(1)(A)(ii)(I). The Domain Names, trumpbeijing, trumpindia, trumpmumbai and trumpabudhabi, 4 are not identical to the TRUMP mark because of the geographic terms following the word trump, so the court looks at whether 4 When evaluating whether a domain name is confusingly similar to a trademark, a district court disregards the top-level domain name (e.g..com,.org,.net etc.). Omega S.A., 228 F. Supp. 2d at 126 n

267 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 11 of 26 PageID #: 1198 there are any genuine material factual issues as to whether the Domain Names and the mark are confusingly similar. In determining whether the Domain Names are confusingly similar to the TRUMP mark within the meaning of the ACPA, the court compares solely [Defendant s] marks and [Plaintiff s] domain names, including their intrinsic sound, sight, and meaning, without reference to goods or services with which the domain name is associated by the parties use. Omega S.A., 228 F. Supp. 2d at 127. A comparison reveals that no reasonable juror could conclude that the Domain Names are not confusingly similar to the TRUMP mark. The similarities are instantly apparent because of the inclusion of the word trump in the Domain Names, and Plaintiff does not argue that the trump in the Domain Names reference anything other than Defendant s last name. The differences between the Domain Names and the TRUMP mark lie in the geographic terms in the Domain Names. However, names of places, such as Beijing or India, are similar to the types of common words that other courts have held do not distinguish a domain name from a mark. See, e.g., id. at 127 ( [T]he Court concludes... that the domain names OMEGATIME and OMEGAWATCH are confusingly similar to the marks omega or O. ); Mattel, Inc. v. Adventure Apparel, 2001 WL , at *2 (S.D.N.Y. Sept. 7, 2001) ( The similarities between barbiesbeachwear.com, barbiesclothing.com and the BARBIE trademark are apparent on their face. ); Prime Publishers, Inc., 160 F. Supp. 2d at 280 ( We do not believe the Defendant s addition of a generic or geographic term such as ct is sufficient to distinguish the domain name from Plaintiff s protected mark. ). The place names actually add confusion in this instance. The Domain Names inclusion of geographic terms mimics many of the domain names Defendant uses to promote TRUMP-branded properties in specific places, such as trumpchicago.com, trumphollywood.com, trumptoronto.ca and trumpwaikiki.com. (See Trump 11

268 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 12 of 26 PageID #: 1199 Decl. 19.) As a result, the inclusion of mumbai in trumpmumbai.com, for example, rather than distinguishing the domain name from the TRUMP mark, makes it appear to the unsuspecting internet user that the website is promoting a property in Mumbai, India, associated with Defendant. Plaintiff asserts that the Domain Names could not cause any confusion because the websites contain disclaimers, such as: The content and this website has [sic] NOT been approved by Donald Trump, or by the Trump Organization, or by the shows The Apprentice / The Celebrity Apprentice. (Pl. s Opp n 6.) Plaintiff s contention misses the mark. The relevant inquiry is whether the Domain Names are confusingly similar to the TRUMP mark, not whether the actual websites accessed using the Domain Names cause confusion or compete with Defendant s business. Under the ACPA, any similarities or distinctions between the products themselves, i.e., whether or not the content of [Plaintiff s] website might compete with [Defendant s] product, are irrelevant. Prime Publishers, Inc., 160 F. Supp. 2d at 279; see also 15 U.S.C. 1125(d)(1)(A) (liability attaches under the ACPA without regard to the goods or services of the parties ). It is irrelevant under the ACPA that confusion about a Web site s source or sponsorship could be resolved by visiting the Web site identified by the accused domain name. McCarthy, supra, 25:78 (citing Coca-Cola Co. v. Purdy, 382 F. 3d 774 (8th Cir. 2004)). Congress designed the ACPA to prevent individuals seeking extortionate profits by reserving Internet domain names that are similar or identical to trademarked names with no intention of using the names in commerce themselves. H.R. Rep. No , at 6 (1999). In drafting the ACPA, Congress also found that cybersquatters hurt businesses, because consumers seeking a trademark owner s Web site are diverted elsewhere, which means lost business 12

269 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 13 of 26 PageID #: 1200 opportunities for the trademark owner. Id. at 6. These wrongs would hardly be prevented if individuals could register domain names similar or identical to protectable marks, so long as there is a disclaimer somewhere on the website itself. Owners of trademarks still would face extortionate demands for money from individuals looking to profit off of the goodwill associated with the mark and businesses would be robbed of domain names where potential customers could easily find their products and services. Cf. Savin Corp. v. Savin Grp., 391 F. 3d 439, 458 n.12 (2d Cir. 2004) ( A significant purpose of a domain name is to identify the entity that owns the [website]. Customers searching for a company s website will often search using a domain name identical or similar to the company s name or mark.... Customers unable to locate [a plaintiff s] website using domain names identical to its marks,... may fail to continue to search for [the plaintiff s] own home page, due to anger, frustration, or the belief that [the plaintiff s] home page does not exist. (quoting Pinehurst, Inc. v. Wick, 256 F. Supp. 2d 424, 431 (M.D.N.C. 2003)) (alterations in original)). Accordingly, there is no genuine issue of material fact that Defendant has satisfied the confusingly similar prong of his ACPA claim. C. Bad Faith The court next turns to whether Plaintiff has a bad faith intent to profit from the TRUMP mark. 15 U.S.C. 1125(d)(1)(A)(i). The statute provides nine factors to assist courts in determining whether a party has a bad faith profit motive. These nine factors are: (I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; 13

270 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 14 of 26 PageID #: 1201 (IV) the person s bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person s intent to divert consumers from the mark owner s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person s prior conduct indicating a pattern of such conduct; (VII) the person s provision of material and misleading false contact information when applying for the registration of the domain name, the person s intentional failure to maintain accurate contact information, or the person s prior conduct indicating a pattern of such conduct; (VIII) the person s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person s domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section. Id. 1125(d)(1)(B)(i). The Second Circuit has stressed that courts are not limited to considering just the listed factors when making [a] determination of whether the statutory criterion has been met. The factors are, instead, expressly described as indicia that may be considered along with other facts. Sporty s Farm L.L.C., 202 F. 3d at 498. The court finds that the evidence of Plaintiff s bad faith here is overwhelming. This conclusion ineluctably follows from the nine statutory factors, as well as the holdings by both the district court and the Second Circuit in a previous ACPA action involving Plaintiff. That case, Webadviso v. Bank of America Corp., is materially identical to the instant matter. In Webadviso, 14

271 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 15 of 26 PageID #: 1202 Plaintiff registered the domain names bofaml.com and mlbofa.com on the same day that Bank of America Corporation ( Bank of America ) and Merrill Lynch & Co., Inc. ( Merrill Lynch ) announced their merger. Webadviso v. Bank of Am. Corp., 2009 WL , at *2 (S.D.N.Y. Dec. 31, 2009). An arbitrator found that the domain names were confusingly similar to Bank of America s and Merrill Lynch s trademarks and that Plaintiff had no legitimate right to bofaml.com and mlbofa.com. Id. at *3. Plaintiff subsequently filed an action in the Southern District of New York seeking a declaration that he did not violate the ACPA and Bank of America and Merrill Lynch brought counterclaims under federal and state law. Id. at *1. In granting a preliminary injunction preventing Plaintiff s use of the domain names and then granting summary judgment in favor of Bank of America and Merrill Lynch, then-district Judge Denny Chin of the Southern District of New York held that Plaintiff acted in bad faith because: 1) Plaintiff never had previously used any iterations of bofa or ml in his business; 2) despite Plaintiff s assertions that he has never sold a domain name, the record shows that he is a domainer who seeks to register domain names incorporating well-known marks with the hope that he can sell the domain names back to the trademark owners; 3) Plaintiff had registered approximately 180 domain names, some of which included well-known trademarks; 4) Plaintiff registered bofaml.com and mlbofa.com the same day the media reported the Bank of America- Merrill Lynch merger; and 5) an arbitrator found that the domain names at issue were confusingly similar to Bank of America s and Merrill Lynch s trademarks and that Plaintiff registered the domain names in bad faith. Id. at *4-5; Webadviso v. Bank of Am. Corp., 2010 WL , at *1-3 (S.D.N.Y. Feb. 16, 2010). The Second Circuit summarily affirmed Judge Chin s grant of summary judgment, holding that bad faith was shown because: 15

272 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 16 of 26 PageID #: 1203 By Yung s own admission, he seeks to acquire high value domain names and park them with domain parking service providers to generate pay-per-click revenue. By doing so in this case, Yung ran afoul of the ACPA, for whether or not he had any intention of selling the domain names to appellees, he clearly had the intention to profit from the goodwill associated with the trademarks that comprised the domain names. His business model relied upon diverting internet users (presumably, among others, those who were attempting to access the websites of Bank of America and Merrill Lynch) to his own website which contained content that could tarnish the infringed marks, or at the very least was not what the searchers sought to find in order to profit from the pay-per-click revenue that their increased web traffic would bring his site. Webadviso v. Bank of Am. Corp., 448 F. App x 95, 98 (2d Cir. 2011) (internal citation and quotation marks omitted). The court further explained that summary judgment also was supported by the fact that Plaintiff had registered some 180 domain names, many of which were composed, in whole or in part, of famous trademarks. Id. at 98 n.3. Summary judgment is warranted here for virtually the same reasons described by Judge Chin and the Second Circuit in Webadviso. There is no evidence that Plaintiff has any intellectual property rights in the Domain Names. See 15 U.S.C. 1125(d)(1)(A)(i)(I). He has never done business using the word trump or the word trump followed by geographic names. See id. 1125(d)(1)(A)(i)(III). The Domain Names are wholly unrelated to Plaintiff s name or the name of his business, Webadviso. See id. 1125(d)(1)(A)(i)(II). Plaintiff s assertions that he has never tried to sell a domain name to Defendant or any other third-party and that he does not seek to profit from the Domain Names is belied, as the Second Circuit found in Webadviso, by admissions elsewhere that he seeks to acquire interesting and high value domain names and park them initially with domain parking service providers and/or build the website, if feasible, with interesting content. (Compl. 3; see also Trump Decl. Ex. 8 (letter by Plaintiff informing Defendant that trumpmumbai.com and trumpindia.com have significant value ).) Moreover, Plaintiff states that he registers high value domain names, but the only 16

273 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 17 of 26 PageID #: 1204 reason that can be gleaned from the record why the Domain Names have any value is because they use the TRUMP mark and easily could be confused with Defendant s legitimate websites. (Pl. s Opp n 27.) As discussed above, the Domain Names parrot Defendant s practice of using the TRUMP mark followed by geographic terms to promote specific properties. (See supra I.B.) In addition, Plaintiff registered trumpmumbai.com and trumpindia.com shortly after reports in the media surfaced that TRUMP-branded hotel and condominium projects were being developed in Mumbai and Bangalore, India. (See Trump Decl. 21 & Ex. 4.) In response to these uncontroverted facts, Plaintiff has failed to provide any explanation of why he included geographic terms, such as Mumbai and Abu Dhabi. Indeed, the websites located at the Domain Names have no apparent connection to those places. As a result, the only logical conclusion is that the Domain Names were purposefully designed to confuse internet users into thinking that the Domain Names are used by Defendant to promote his business. See 15 U.S.C. 1125(d)(1)(A)(i)(V). Such calculated exploitation of the goodwill associated with another s trademark is precisely the sort of bad faith the ACPA is designed to combat. See Vogster Entm t, L.L.C. v. Mostovoy, 2009 WL , at *3 (E.D.N.Y. Mar. 16, 2009) (The ACPA was intended to prevent the bad faith, abusive registration and use of the distinctive trademarks of others as internet domain names, with the intent to profit from the goodwill associated with those trademarks. ). As Judge Chin and the Second Circuit also held, Plaintiff s bad faith is further demonstrated by the fact that he owns almost two hundred other domain names, many of which are obvious appropriations well-known brands. Webadviso, 448 F. App x at 98 n.3; Webadviso, 2010 WL , at *1 ( Webadviso has a history of registering domain names that include well-known trademarks.... ). For example, besides mlbofa.com and bofaml.com, Plaintiff has 17

274 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 18 of 26 PageID #: 1205 previously registered barclayscapitallehman.com, citigroupwachovia.com, goldmansachsgroup.com, hulufriend.com, milanvogue.com and xbox360sdk.com, which only have apparent value because they incorporate the names of businesses or goods. (See Weinberger Decl. Ex. 9.) These other domain names provide further undisputed evidence that Plaintiff has violated the ACPA in this instance. See 15 U.S.C. 1125(d)(1)(A)(i)(VIII). In sum, on this record, the conclusion that Plaintiff is a cybersquatter is unavoidable. At a minimum, applying the uncontested evidence to statutory factors I, II, III, V and VIII conclusively shows Plaintiff s bad faith in registering the Domain Names, while nothing shows Plaintiff s good faith. Therefore, there is no genuine issue of material fact that Defendant has established his burden under the bad faith prong of the ACPA. D. Fair Use and First Amendment Defenses Plaintiff asserts that, notwithstanding any other evidence showing bad faith, Defendant is not entitled to summary judgment because the Domain Names are protected by the fair use doctrine and the First Amendment. (See Pl. s Opp n ) The ACPA has a safe harbor for parties who would otherwise be subject to the liability under the ACPA. The statute provides that bad faith shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. 15 U.S.C. 1125(d)(1)(B)(ii). While the Second Circuit has not construed the limits of the safe harbor, notably, courts in other circuits have cautioned that courts should make use of this reasonable belief defense very sparingly and only in the most unusual cases. Lahoti v. VeriCheck, Inc., 586 F. 3d 1190, 1203 (9th Cir. 2009) (quoting Audi AG v. D Amato, 469 F.3d 534, 549 (6th Cir. 2006)). Otherwise, the defense would undermine the rest of the statute because [a]ll but the most blatant cybersquatters will be able to put forth at 18

275 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 19 of 26 PageID #: 1206 least some lawful motives for their behavior. Id. (quoting Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F. 3d 264, 270 (4th Cir. 2001) (alterations in original)). Fair use or otherwise lawful use are not expressly defined in the ACPA, but, elsewhere in the Lanham Act, use of another s trademark is permitted in connection with a description, parody, criticism, commentary and news reporting. See 15 U.S.C. 1125(c)(3) (dilution context); 15 U.S.C. 1115(b)(4) (infringement context); see also TCPIP Holding Co., Inc. v. Haar Commc ns, Inc., 244 F. 3d 88, 103 (2d Cir. 2001) (Describing fair use in infringement context as one party s exclusive right to use a mark will not prevent others from using the word or image constituting the mark in good faith in its descriptive sense, and not as a trademark. (internal quotation marks and alteration omitted)). In this instance, it appears that Congress intended to protect similar uses of trademarks from liability under the the ACPA. See H.R. Rep. No , at 11 (fair use factor balances interests of trademark holder with interests of those who make non-commercial or fair uses of others marks online, such as in comparative advertising, comment, criticism, parody, news reporting, etc. ). Thus, the court must consider whether Plaintiff had a good faith basis in believing that he was using the TRUMP mark as a description, parody, criticism or commentary. The court holds that Plaintiff did not have any reasonable grounds to believe that his use of the Domain Names is a fair use or otherwise lawful. As an initial matter, the scant news, commentary and criticism on the websites provide little evidence that Plaintiff registered the Domain Names in good faith. The record reflects that Plaintiff has put in minimal resources in developing the websites. Plaintiff has stated that there are no operating expenses in connection with the websites. (See Weinberger Decl. Ex. 2 (Interrogatory Resp. 14).) The websites located at the Domain Names, all of which are identical, do not contain any material posted after

276 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 20 of 26 PageID #: 1207 See (last visited Jan. 15, 2013); www. trumpabudhabi.com (last visited Jan. 15, 2013); (last visited Jan. 15, 2013); (last visited Jan. 15, 2013). The content relating to Defendant consists almost entirely of materials taken from third parties, such as videos parodying Defendant that he found on YouTube, generic lawyer jokes with lawyer replaced by Apprentice, and off-color jokes about alcoholics with terms for alcoholics substituted with Apprentice. (See id.; Weinberger Decl. Ex. 2 (Interrogatory Resp. No. 15).) The only apparently original commentary relating to Defendant is a chart listing ten seasons of Defendant s television shows, The Apprentice and The Celebrity Apprentice, containing columns listing the shows declining ratings and short commentary such as OK season and What kind cheap [sic] low budget show is this? Otherwise, the site contains various content unrelated to Defendant under headings that seem to be lifted from the ACPA s safe harbor provision. For example, under a News heading, there is a list of real estate headlines automatically generated by a Google News feed. The Political Commentary section consists largely of off-color jokes about former- Congressman Anthony Weiner posted in In sum, the websites give the appearance that they were haphazardly put together as an attempt to post minimal content under each category traditionally associated with fair use (e.g., news, politics, criticism) in an attempt to benefit from the ACPA s safe harbor. If Plaintiff s conduct were deemed to fall under the safe harbor simply because he has put up websites with token content ostensibly covered by the fair use doctrine, the safe harbor exception would swallow the rule. Moreover, even if the websites contents are the result of a bona fide attempt to create news and commentary sites, Plaintiff s conduct does not fall within the ACPA s safe harbor. As a leading treatise has explained, the safe harbor is not intended to create a loophole that could 20

277 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 21 of 26 PageID #: 1208 swallow the Act by allowing a domain name holder to evade liability merely by putting up a seemingly innocent site under an infringing domain name. McCarthy, supra, 25:78; see also Coca-Cola Co., 382 F. 3d at (defendant barred by the ACPA from using domain names incorporating trademarks to drive internet traffic to anti-abortion websites.) The Domain Names themselves do not provide commentary or criticism about Defendant or his businesses. They also give no indication that they are addresses for websites that are forums for criticizing Defendant, rather than websites operated by Defendant. Cf. McCarthy, supra, 25:76 ( Those who are unhappy with a company may open a web-site complaining and criticizing the company (a gripe site ), using a domain name that makes it clear what kind of a Web site it is. The typical example is the use of a company trademark followed by -sucks, as in ). The Domain Names merely contain the TRUMP mark followed by geographic names that have nothing to do with commentary, criticism or any content on the websites. As discussed supra I.B, they mimic domain names Defendant uses to promote his businesses, a tactic Plaintiff has employed with various other well-known trademarks even after court findings that such conduct violates the ACPA. See Coca-Cola Co., 382 F. 3d at 788 ( Given the extensive evidence of bad faith in the record, we conclude that Purdy lacked reasonable grounds to believe that his conduct was lawful, and he is not entitled to benefit from the safe harbor provision. ). Thus, the use of TRUMP in the Domain Names is not a fair use and there is no evidence that Plaintiff had any good faith reason to believe otherwise. For similar reasons, Plaintiff s assertion that Defendant s ACPA claim is barred by the First Amendment fails as a matter of law. The Second Circuit has explained that [d]omain names... per se are neither automatically entitled to nor excluded from the protections of the 21

278 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 22 of 26 PageID #: 1209 First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name. Name.Space, Inc. v. Network Solutions, Inc., 202 F. 3d 573, 586 (2d Cir. 2000). The extent of the First Amendment s protection is based upon whether the domain names are communicative or appear to identify the source of the communication. Id. at ; see also OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 198 (W.D.N.Y. 2000) ( Defendants offer no argument as to why the Court should determine that their use of thebuffalonews.com is a communicative message rather than a source identifier. ). This is consistent with the well settled principle that the First Amendment confers a measure of protection for the unauthorized use of trademarks when that use is a part of the expression of a communicative message. Yankee Publ g Inc. v. News Am. Publ g Inc., 809 F. Supp. 267, 275 (S.D.N.Y. 1992). However, [w]hen another s trademark (or a confusingly similar mark) is used without permission for the purpose of source identification, the trademark law generally prevails over the First Amendment. Id. at 276. For example, a court in the Southern District of New York, summarily affirmed by the Second Circuit, granted Planned Parenthood s preliminary injunction motion to stop a defendant s use of plannedparenthood.com for a website selling anti-abortion books because the domain name likely infringed on Planned Parenthood s trademark. See Planned Parenthood Fed n of Am., Inc. v. Bucci, 1997 WL (S.D.N.Y. Mar. 24, 1997), summ. aff d, 152 F. 3d 920 (2d Cir. 1998) (table decision). The court rejected the defendant s assertion that his use of the domain name was protected by the First Amendment, holding that the domain name plannedparenthood.com was not part of any communicative message against abortion, but was more akin to a source identifier. Id. at *10. Similarly, here, the Domain Names are not communicative and Plaintiff s use of them is 22

279 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 23 of 26 PageID #: 1210 not protected by the First Amendment. The Domain Names provide no commentary or criticism of Defendant or any other topic. The Domain Names appear to identify Defendant, or an authorized user of the TRUMP mark, as the source of the websites, likely to promote Defendant s business interests in the locations indicated in the Domain Names. As explained by the court in Planned Parenthood, such misidentification of a website s source is not entitled to First Amendment protection. In coming to this conclusion, the court emphasizes that it is not questioning Plaintiff s First Amendment rights to comment upon and criticize Defendant and his businesses. However, he may not do so by using Defendant s mark to confuse people into visiting his websites. The First Amendment protects an individual s right to speak out against a markholder, but it does not permit an individual to suggest that the markholder is the one speaking. SMJ Grp., Inc. v. 417 Lafayette Rest. LLC, 439 F. Supp. 2d 281, 291 (S.D.N.Y. 2006). Accordingly, there is no genuine issue of material fact that Plaintiff s registration and use of the Domain Names runs afoul of the ACPA. Defendant is entitled to judgment in his favor on his ACPA claim as well as Plaintiff s ACPA declaratory judgment claim. 5 II. Laches Plaintiff contends that Defendant s claims to the Domain Names are barred by laches. Plaintiff registered the Domain Names in September and November 2007 and Defendant first demanded Plaintiff transfer the Domain Names in October (See Pl. s Opp n ) 5 The court denies Defendant s motion for summary judgment as moot with respect to his federal and state trademark infringement and federal and state unfair competition counterclaims because of the court s holding that Defendant is entitled to relief under the ACPA. For the same reason, the court dismisses as moot Plaintiff s claim seeking a declaration that the Domain Names do not infringe on Defendant s trademark. See Webadviso, 448 F. App x at 98 n.4 ( We do not address the appellant s arguments regarding the non-acpa claims, as the relief granted to the appellees was available upon the District Court s grant of judgment for the appellees on the ACPA claim. ). 23

280 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 24 of 26 PageID #: 1211 Plaintiff asserts that Defendant s approximately three-year delay in asserting his rights to the Domain Names was unreasonable and prejudiced Plaintiff. (See id.) As a threshold matter, Plaintiff s laches defense fails because he intentionally exploited Defendant s trademark. The Second Circuit has held in the Lanham Act infringement context that [i]t is well established that laches is not a defense against injunctive relief when the defendant intended the infringement. Hermes Int l v. Lederer de Paris Fifth Ave., Inc., 219 F. 3d 104, 107 (2d Cir. 2000) (quoting Harlequin Enters. Ltd. v. Gulf & W. Corp., 644 F. 2d 946, 950 (2d Cir. 1981)). While the court is unaware of any Second Circuit decision addressing whether this principal applies to ACPA claims, the court perceives no reason why it is not equally valid in the ACPA context. The ACPA is an amendment to the Lanham Act and addresses a similar wrong (the unauthorized use of another s trademark to confuse the public). See Mashantucket Pequot Tribe v. Redican, 403 F. Supp. 2d 184, 198 (D. Conn. 2005) ( [T]he ACPA is an amendment to the Lanham Act. Moreover, the goals of the ACPA, like the rest of the Lanham Act, would appear to include protection against public confusion. ) Furthermore, [t]his good-faith component of the laches doctrine is part of the fundamental principle that he who comes into equity must come with clean hands. Hermes Int l, 219 F. 3d at 107 (quoting Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814 (1945)). A party with unclean hands is equally unsuited to benefit from the equitable doctrine of laches in an infringement claim for injunctive relief as it is in an ACPA claim for injunctive relief, since they are the same equitable remedies for similar wrongs. In this instance, Plaintiff does not come to the court with clean hands. As discussed above, Plaintiff registered the Domain Names in bad faith as part of a scheme to capitalize on the goodwill of another s trademarks. Thus, his intentional bad faith use of Defendant s trademark prevents him 24

281 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 25 of 26 PageID #: 1212 from benefiting from laches as a matter of law. Even if the laches defense was available to Plaintiff, there is no genuine issue of material fact that he cannot establish such a defense. A party asserting the defense of laches must establish that: (1) the plaintiff knew of the defendant s misconduct; (2) the plaintiff inexcusably delayed in taking action; and (3) the defendant was prejudiced by the delay. Ikelionwu v. United States, 150 F. 3d 233, 237 (2d Cir. 1998). A party is prejudiced when it has changed his position in a way that would not have occurred if the plaintiff had not delayed. Conopco, Inc. v. Campbell Soup Co., 95 F. 3d 187, 192 (2d Cir. 1996). Other than general speculation that a sophisticated party such as Defendant must have known about the Domain Names before October 2010, when his attorney sent a letter demanding that Plaintiff transfer the Domain Names, Plaintiff has not put forward any evidence that Defendant previously knew about the Domain Names. There also is no evidence that Plaintiff was prejudiced by the three-year delay. Plaintiff asserts that he has renewed the Domain Names registrations three times and has built significant traffic and content at the websites at issue. (Pl. s Opp n 17.) Yet, Plaintiff has not explained what effort or money was expended in reregistering the Domain Names three times. Plaintiff also fails to make any showing that he has built traffic to the websites or has expended meaningful resources on developing the websites. As discussed supra I.D, the websites feature little content, almost all of which is taken from third parties, and has not been updated since Plaintiff also has stated that he has no expenses from operating any of the websites. (See Weinberger Ex. 2 (Interrogatory Resp. No. 14).) Thus, there is no factual basis for Plaintiff s assertion that he has been prejudiced by the three-year delay between his registration of the Domain Names and the October 2010 letter from Defendant s attorney. 25

282 Case 1:11-cv DLI-VVP Document 56 Filed 02/28/13 Page 26 of 26 PageID #: 1213 Accordingly, Plaintiff s laches defense fails as a matter of law. CONCLUSION For the foregoing reasons, Defendant s motion for summary judgment is granted with respect to his ACPA counterclaim and Plaintiff s ACPA declaratory judgment claim. In addition, the court: 1) denies as moot Defendant s motion for summary judgment on his federal and state trademark infringement and federal and state unfair competition counterclaims because of the court s holding that Defendant is entitled to relief under the ACPA; and 2) dismisses as moot Plaintiff s claim seeking a declaration that the Domain Names do not infringe on Defendant s trademark. The court certifies pursuant to 28 U.S.C. 1915(a)(3) that any appeal from this Order would not be taken in good faith and, therefore, in forma pauperis status is denied for the purpose of an appeal. See Coppedge v. United States, 369 U.S. 438, (1962). SO ORDERED. Dated: Brooklyn, New York February 28, 2013 /s/ DORA L. IRIZARRY United States District Judge 26

283 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 1 of 16 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK TORY BURCH LLC; RIVER LIGHT V, L.P. USDCSDNY ~ DOCUMENT I E~.~cn.{ONICAllY 'F1LED J' DOC #: ' DATE FILED: all. -<;/1/ I, f v. Plaintiffs Civil Action No.1 0 Civ (DAB) YONG SHENG INTERNATIONAL TRADE CO., LTD; CONGDADA PENA; BINGFENG QUI; LI Y AXIACHAI; LI BIN; LINJIANPING; JACK WILSON; JIANGUO CHEN; TORYBURCH MALL.COM; ZHUZIXIAN; BILL FISHER; ANTLEO LIN; JQ LIN; WU JUNYU; MILLION MAN d/b/a TORYBURCHOUTLETSHOP.COM; VECTO S. d/b/a TORYBURCHSALE.NET; LIDAYONG; ZHAN JIAQUIN; JIAXINTONG IMPORT & EXPORT CO. LTD d/b/a SPORTS SDFSS; KEYWHOLESALE.COM INC; YUCANG LI; FREESHIPPINGHANDBAG.COM; RUAN FA; NINE NINE TRADE; DONGWEI; LOUBOUTINTIME.COM; DYLAN d/b/a JIMMYBOOTS.COM; ONESTOP ONLINESHOPPING.COM; ZHONGTIAN; RAO YUZHAO d/b/a TOPSHOESTOBAGS TRADE CO. LTD.; COLO CHONG d/b/a UGGLOUBOUTIN CO, LTD; YE JUNJIE d/b/a GUIRE TRADING CO. LTD; XINLI CHEN d/b/a GUANGZHOU FASHIONPURSUE TRADE CO. LTD.; WU DONG d/b/a SPORTS SERIES TRADE CO. LTD; WHOLESALEUSLIVE.COM; JESSKI2010; CHINA SUNSHINE INTERNATIONAL TRADING CO. LTD. d/b/a NAME-BRAND ONLINE.COM; YANG QIAO d/b/a FASHION866 TRADE CO., LTD.; CHEN JIONGY ANG d/b/a FASHIONHOLIC CO. LTD.; XIAO XIANMO d/b/a XIAMEN SHINSON TRADING CO., LTD.; RIHONG LIN d/b/a JACK SMITHS; XYZ COMPANIES; and JOHN and JANE DOES Defendants. DEFAULT JUDGMENT AND PERMANENT INJUNCTION ORDER

284 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 2 of 16 This action having been commenced by TORY BURCH LLC and RIVER LIGHT V, L.P. (collectively, "Tory Burch" or "Plaintiffs") against Defendants YONG SHENG INTERNATIONAL TRADE CO., LTD; CONGDADA PENA; BINGFENG QUI; LI Y AXIACHAI; LI BIN; LINJIANPING; JACK WILSON; JIANGUO CHEN; TORYBURCH MALL.COM; ZHUZIXIAN; BILL FISHER; ANTLEO LIN; JQ LIN; WU JUNYU; MILLION MAN d/b/a TORYBURCHOUTLETSHOP.COM; VECTO S. d/b/a TORYBURCHSALE.NET; LIDAYONG; ZHAN JIAQUIN; JIAXINTONG IMPORT & EXPORT CO. LTD d/b/a SPORTS SDFSS; KEYWHOLESALE.COM INC; YUCANG LI; FREESHIPPINGHANDBAG.COM; RUAN FA; NINE 1'-.1JNE TRADE; DONGWEI; LOUBOUTINTIME.COM; DYLAN d/b/a JIMMYBOOTS.COM; ONESTOP-ONLINESHOPPING.COM; ZHONGTIAN; RAO YUZHAO d/b/a TOPSHOESTOBAGS TRADE CO. LTD.; COLO CHONG d/b/a UGGLOUBOUTIN CO, LTD; YE JUNJIE d/b/a GUIHE TRADING CO. LTD; XINLI CHEN d/b/a GUANGZHOU FASHIONPURSUE TRADE CO. LTD.; WU DONG d/b/a SPORTS SERIES TRADE CO. LTD; WHOLESALEUSLIVE.COM; JESSKI2010; CHINA SUNSHINE INTERNATIONAL TRADING CO. LTD. d/b/aname-brand-online.com; YANG QIAO d/b/a FASHION866 TRADE CO., LTD.; CHEN JIONGY ANG d/b/a F ASHIONHOLIC CO. LTD.; XIAO XIANMO d/b/a XIAMEN SHINS ON TRADING CO., LTD.; RIHONG LIN d/b/a JACK SMITHS; XYZ COMPANIES; and JOHN and JANE DOES (collectively, "Defendants'') for a Temporary Restraining Order, Order to Disable Certain Web Sites, Asset Restraining Order, Expedited Discovery Order and Order to Show Cause for Preliminary Injunction (collectively, the "Temporary Restraining Order") pursuant to Federal Rule of Civil Procedure 65 and the Trademark Act of 1946, 15 U.S.C. 1051, et seq., as amended by the Trademark Counterfeiting Act of 1984, Public Law (October 12, 1984), the 2

285 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 3 of 16 Anticybersquatting Consumer Protection Act of 1996, Pub. L (July 2, 1996), and the Prioritizing Resources and Organization for Intellectual Property Act of2007, H.R (October 13,2008) (the "Lanham Act") for the reason that Defendants are distributing, offering for sale and/or selling, via the Internet, goods bearing counterfeit reproductions of Tory Burch's federally registered trademarks, as listed in Tory Burch's Complaint and incorporated herein by reference, which trademarks (collectively, the "TORY BURCH Marks") are owned and controlled by Tory Burch and used in connection with products listed in Tory Burch's Complaint and incorporated herein by reference (collectively, the "Tory Burch Products"); and the Court, having reviewed the Complaint, Memorandum of Law in support of the Temporary Restraining Order, and supporting Declarations and exhibits, issued such a Temporary Restraining Order on December 17, 2010 and subsequently on January 4,2011 issued an Order of Preliminary Injunction ("Preliminary Injunction"); and Defendants having each been properly served with the Temporary Restraining Order, Complaint, Summons and supporting papers, including notice ofthe show cause hearing held on January 4, 2011 at 11 :00 a.m. in Courtroom 24B in the United States District Court for the Southern District ofnew York, 500 Pearl Street, New York, NY 10007, as well as Defendants having each been properly served with the Preliminary Injunction; and None ofthe Defendants having appeared at the show cause hearing, filed a response to Tory Burch's moving papers or otherwise appeared in this action; and The Clerk ofcourt having entered a default against each Defendant on January 24,2011; and Tory Burch having moved for final default judgment under Fed. R. Civ. P. 55(b) and Tory Burch having shown, inter alia, the following: 3

286 I i Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 4 of Tory Burch owns all right, title and interest in and to the TORY BURCH Marks in connection with the Tory Burch Products and the TORY BURCH Marks are valid and protectable and entitled to protection; and 2. Defendants are manufacturing, distributing, offering for sale and/or selling counterfeit products -- including, inter alia, footwear, handbags and accessories -- bearing counterfeits of the TORY BURCH Marks ("Counterfeit Products") to buyers in the United States, including in this Judicial District; and 3. Defendants are selling Counterfeit Products by operating a network of web sites ("Defendants' Infringing Web Sites") resolving at various domain names set forth in Exhibit 1 attached hereto, including, without limitation, domain names containing the TORY BURCH Marks (the "Infringing Domain Names"); and 4. Defendants have gone to great lengths to conceal themselves and their ill-gotten proceeds from Tory Burch's and this Court's detection including by using multiple false identities and addresses associated with their operations as well as purposely-deceptive contact information; and 5. Defendants have disregarded the Temporary Restraining Order and Preliminary Injunction and so the Court: HEREBY FINDS that each Defendant is liable for federal trademark counterfeiting and infringement under 15 U.S. C. 1114, 1117 and cybersquatting under 15 U.S. C (d)(l); and this Default Judgment and Permanent Injunction Order ("Permanent Injunction") is entered against each Defendant. 4

287 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 5 of 16 THEREFORE, IT IS HEREBY ORDERED that Defendants, their officers, agents servants and employees and any persons in active concert or participation with them are permanently enjoined and restrained from: (i) using the TORY BURCH Marks or any reproduction, counterfeit, copy or colorable imitation of the TORY BURCH Marks in connection with the distribution, advertising, offer for sale and/or sale of merchandise not the genuine products of Tory Burch; and (ii) passing off, inducing or enabling others to sell or pass off any Counterfeit Products as and for Tory Burch Products; and (iii) shipping, delivering, holding for sale, distributing, returning, transferring or otherwise moving, storing or disposing of in any manner footwear, handbags, apparel, accessories or other items falsely bearing the TORY BURCH Marks, or any reproduction, counterfeit, copy or colorable imitation of same; and (iv) utilizing the Infringing Domain Names and registering any additional domain names that use or incorporate any of the TORY BURCH Marks; and (v) operating and/or hosting Defendants' Infringing Web Sites; and IT IS FURTHER ORDERED, that third parties providing services used in connection with Defendants' operations including, without limitation, Internet Service Providers ("ISP"), registries, registrars, or online third-party selling platforms including, without limitation, Alibaba.com, Tradekey.com, ioffer.com, EC21.com, Ecplaza.net and DIYtrade.com, having knowledge of this Permanent Injunction by service, actual notice or otherwise be, and are, hereby permanently enjoined from providing services to any Defendant in conjunction with any of the acts set forth in subparagraphs (i)-(v) above; and IT IS FURTHER ORDERED, that pursuant to 15 U.S.C. 1117(c)(2), Tory Burch is awarded maximum statutory damages for willful trademark counterfeiting of two million dollars and no cents ($2,000,000.00) against each Defendant for its counterfeiting of the TORY BURCH 5

288 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 6 of 16 Mark "TORY BURCH" and is awarded maximum statutory damages for willful trademark counterfeiting oftwo million dollars ($2,000,000.00) and no cents against each Defendant for its counterfeiting of the TORY BURCH Mark ~, for a total award of statutory damages in the amount offour million dollars and no cents ($4,000,000.00) against each Defendant; and IT IS FURTHER ORDERED that monies currently restrained in various Defendants' accounts held by PayPal, Inc. ("PayPal"), are hereby released to Tory Burch as partial payment ofthe above-mentioned damages; and IT IS FURTHER ORDERED that the domain names associated with the Infringing Web Sites identified above be transferred to Tory Burch's ownership and control; and IT IS FURTHER ORDERED that in accordance with this Court's inherent equitable powers and its power to coerce compliance with its lawful orders, until Tory Burch has recovered the full payment of monies owed to them by any Defendant under this Permanent Injunction, in the event Tory Burch discovers new monies or accounts belonging to or controlled by any Defendant, Tory Burch shall have the ongoing authority to serve this Permanent Injunction on any party controlling or otherwise holding such accounts, including but not limited to PayPal or other merchant account providers, payment providers, or third party processors (collectively, "Account Holder"); and IT IS FURTHER ORDERED that Account Holder shall immediately locate and restrain all accounts belonging to or controlled by such Defendant from transferring or disposing of any money, stocks or other of such Defendant's assets, not allowing such funds to be transferred or withdrawn by such Defendant and shall provide Tory Burch with the information relating to those websites and/or accounts; and 6

289 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 7 of 16 IT IS FURTHER ORDERED that after thirty (30) business days following the service of this Permanent Injunction on such Defendant and Account Holder, Account Holder shall transfer all monies in the restrained accounts to Tory Burch, unless the Defendant has filed with the Court and served upon Plaintiffs' counsel a request that such monies be exempted from this Permanent Injunction; and IT IS FURTHER ORDERED, that any Defendant may upon two (2) business days' written notice to the Court and Tory Burch's counsel, upon proper showing, appear and move for the dissolution or modification ofthe provisions ofthis Permanent Injunction concerning the restriction upon transfer of such new monies or accounts belonging to or controlled by any Defendant; and IT IS FURTHER ORDERED that in accordance with this Court's inherent equitable powers and its power to coerce compliance with its lawful orders, and due to Defendants' ongoing operation oftheir counterfeiting activities, in the event Tory Burch identifies any new web sites ("Newly-Detected Web Sites") registered or operated by any Defendant and used in conjunction with the sale ofcounterfeit Products, including such web sites utilizing domain names containing the TORY BURCH Marks or marks confusingly similar thereto, Tory Burch shall have the ongoing authority to serve this Permanent Injunction on the domain name registries and/or the individual registrars holding and/or listing one or more the domain names associated with the Newly-Detected Web Sites; and IT IS FURTHER ORDERED that the domain name registries and/or the individual registrars holding and/or listing one or more ofthe domain names associated with the Newly Detected Web Sites, within seven (7) days shall temporarily disable any domain names associated with the Newly-Detected Web Sites and make them inactive and untransferable; and 7

290 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 8 of 16 IT IS FURTHER ORDERED that after thirty (30) business days following the service of this Permanent Injunction, the registries and/or the individual registrars shall transfer any domain names associated with the Newly-Detected Web Sites to the ownership and control oftory Burch, through the registrar of Tory Burch's choosing, unless the Defendant has filed with the Court and served upon Tory Burch's counsel a request that such Newly-Detected Web Sites be exempted from this Permanent Injunction or unless Tory Burch requests that such domain names associated with the Newly-Detected Web Sites be released rather than transferred; and IT IS FURTHER ORDERED, that any Defendant may upon two (2) business days' written notice to the Court and Tory Burch's counsel, upon proper showing, appear and move for the dissolution or modification of the provisions of this Permanent Injunction concerning the restriction upon transfer of such domain names associated with the Newly-Detected Web Sites belonging to or controlled by any Defendant; and IT IS FINALLY ORDERED that this Court shall retain jurisdiction over the parties and the subject matter of this litigation for the purpose of interpretation and enforcement ofthis Default Judgment and Permanent Injunction Order. This is a FINAL JUDGMENT. t'i SIGNED thislj dayof~_2011. f}lkmj. d. f3tiit THE HONORABLE DEBORAH A. BATTS 8 i I I

291 I : Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 9 of 16 EXHIBIT 1 TO THE [PROPOSED] DEFAULT JUDGMENT AND PERMANENT INJUNCTION ORDER 9 I

292 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 10 of 16 brandfanshome.com brandslead. com i chea;toryburchoutlet.com I chea _ toryburchs.com I cheaptoryburchshoes com I cheap-to~burchshoes.com cheaptoryburchshop. com christianlouboutinmy.com designerhandbags8.com discounttoryburch. com I I discount-tory-burch.com I discounttoryburch.org"'-- -i I discounttoryburchs.com i discount-toryburchshoes com I r-- Eluxuryclothing.com I I etoryburch.com etoryburchshoes. com eugg.us fallinfashon.com.._- i fashion866.com fashionpursue.com I fashionshop911.com flatsshoessh0.l.p_.c_om -i tfreeshippinghandbag.com I goodshoesbuy.com rh_an d_b~ag,7_7_.c_o_m J lhotsaletoryburch.com I hotsdealcom ~yboots.com. keenretailcom keywholesale.com ~ywholesaleclothing.com key'\vholesaleinc.com keywholesaleshop.com I likehighheels.com louboutintime.com lovetoryburch.com 10 I

293 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 11 of 16 maiditrade.com! mytoryburch.net ~l1le-brand-on1ine.com ~ newtoryburch.net --1 Nik~ord-a-n-ce-n-t-er-.-co~m ~--~ onestop-onlineshoppin..._c_o_m --I onlytoryburch.com L ntoryburch_.c_o_m ~ i ontoryburch.net ~--~ i' i outlettoryburch.com I I pop-iuxury.com i-'p_o--a.p_t_ory-"-b~u_rc_h_._c_om ~ [ saletoryburch.com --I,. sale-toryburch.com, --J saletoryburchon.com I-s_a_l_et_o--"-b_u_r_c_h_s._c_o_m ~ sale-toryburchshoes.com I shoesda.com I shoesonshop.net shoestorecn.com shoptoryburchoutlet.com shoptoryburchoutlets.com ThehouseofguccLcom, thetoryburch20 l1.com I topsaletoryburch.com i topshoessale.com topshoestobags.com i tory-burch.us i, toryburch2011.com toryburch2011outlet.com toryburch2u.com toryburchaaa.com toryburchagent.com toryburchandbag.com toryburchba.com I tory-burch-bags.com toryburchbagsonsale.com toryburchbest.com ~ryburchbooties.com 11 I

294 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 12 of 16 toryburchc1assic.com to burchc1earance.com toryburchc1ub.com toryburchcom.com toryburchcool. com toryburchcoupon.com toryburchdiscount. com toryburches. com! toryburcheshop.com toryburchfans.com toryburchflatsoutlet.org... toryburchflatss.com! toryburchflatssale.org toryburchflats-store.com toryburchflipflop.com toryburchhandbagshop.com toryburch-home.com toryburch-hot.com toryburchking.com i toryburchlover.com toryburch-mall.com toryburchmalls.com i toryburchmy.com I toryburchnice.com i toryburchnow.com toryburchofficial.com toryburch-official.com toryburchofficials.com toryburchok.com toryburchonlineshop.org toryburchonsale.com tory-burch-onsale.com toryburchonsale.net 12

295 i i Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 13 of 16 i i i toryburch-outlet.com tory-burch -ou t1 et. com toryburch--outlet com toryburchoutlet.org toryburch~outlet.us I toryburchoutlet2u.com toryburchoutlet-mallcom toryburchoutlets.com toryburchoutlets.org toryburchoutletsale.com toryburchoutletshoes.com toryburchoutletshop.com rt~ryburchoutlet-store.com i toryburchoutlett.com i toryburchoutletus.com ~ ; toryburchoutlet-us.com i toryburchoutletusa.com toryburchoutlet--usa.com toryburchoutlet-usa.net toryburchphilippines:com toryburch-retail.com. toryburch-retailshop.com toryburchreva.net I toryburch-revaflats.com I! toryburchrevaflats.org i toryburchrevaoutlet.com I tory-bur~h-revas.c~m toryburchs.com --.- toryburchs. us toryburch-sale.com tory-burch-sale.com.. toryburchsale.net toryburch-sale.net tory-burch-sale.net ~ryburchsale.org. toryburchsale.us toryburchsale4u.net toryburchsalenice.com toryburchsaleonline.com i

296 i. toryburchshoes-sale.com Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 14 of 16 toryburch-saleonline.com toryburchsale-outlet.com~.. l toryburchsaler. com toryburch -sal er. com I toryburehsaler.net I toryburehsales.eom toryburehsales.net I toryburehsaleshoes.eom I I toryburchsale-shoes.c~o~m -1 tory burehsa1eshoes.net i toryburehsale-shop. com toryburchsalesite.com toryburehsalet.com I-----" toryburchsell.com toryburch-shoe.com.. ioryburchshoeonsale.com i toryburch-shoes.us I toryburchshoesale.eom toryburchshoesclearance.org toryburchshoese. com.. toryburchshoes-flats. com i toryburchshoesol.eom! toryburchshoes-online.com I i i to burchshoes-onsale.com i toryburchshoes-outlet.com toryburchshoesoutlet.net I toryburchshoesoutlet.us toryburchshoes-outlets.com toryburchshoesoutlets.com---i ==:=J I toryburchshoessale.net I toryburehshoessaler.net : toryburchshoessite.com! toryburchshoessite.net I toryburchshoesstore.com I toryburchshoestrade.eom I toryburehshoesusa.com 14 _---/

297 Case 1:10-cv DAB Document 29 Filed 05/13/11 Page 15 of 16 toryburchshoeswholesale.net toryburchshop. us toryburchshops.com toryburchsoutlet. com toryburchsoutlets.com toryburchsoutlets.net I toryburchsoutlets.org I toryburchs-sale.com toryburchssales.com toryburchsshoe.com toryburch-store.com toryburchstores. com toryburchstoreus. com toryburchstoreus.org toryburchsupply.com toryburchtimes. com toryburchto.com toryburchtop.com I! toryburchtops~l~.com toryburehtrad~<:>nline.com toryburehuk.com toryburchus.com toryburch-us.com toryburch-usa. com toryburehwholesale.com toryburchworlds.com toryl b ure h -x.com toryburchyes.eom toryburehzone. com toryshoes. com turyburchstores.com uggbootsell.net uggjordanghd.com ugglouboutin.com usa-toryburchhandbag.com usa-toryburchoutlet.com ustoryburchshoes.com us-toryburchshoes. com ~lesale-go.com 15

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