Loney John Hutchins v. dylan jacobsen / www.jaggedlittledyl.com, LLC
Claim Number: FA1502001606568
Complainant is Loney John Hutchins (“Complainant”), Tennessee, USA. Respondent is dylan jacobsen / www.jaggedlittledyl.com, LLC (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loneyhutchins.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he 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.
Fernando Triana, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2015; the Forum received payment on February 24, 2015.
On February 25, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name <loneyhutchins.com> 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 February 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@loneyhutchins.com. Also on February 27, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 9, 2015.
A timely Additional Submission was received from Complainant on March 13, 2015 in accordance with the Forum's Supplemental Rule 7.
A timely Additional Submission was received from Respondent on March 18, 2015 in accordance with the Forum's Supplemental Rule 7.
On February 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the trademark LONEY HUTCHINS registered at the United States Patent and Trademark Office (USPTO) on January 27, 2015 under the registration number 4,677,881 in International Class 9. (Annex 1 of Complaint).
Complainant is the owner of the trademark LONEY HUTCHINS registered in State of Tennessee of the United States of America since May 1, 2014, to identify goods within international class 9. (Annex 2 of Complaint).
Complainant states that since 1974 has used in commerce the trademark LONEY HUTCHINS to identify the services of a professional musician, (Annex 2 of Complaint).
In 2012, Respondent registered the disputed domain name <loneyhutchins.com> in his name.
Complainant asserts that the disputed domain name <loneyhutchins.com> is identical and confusingly similar to the registered trademark LONEY HUTCHINS.
Complainant argues that Respondent has no right or legitimate interest in the disputed domain name since he has used it to exploit wrongfully Complainant’s name by selling advertisements and displaying graphic pornography.
Respondent is taking advantage of the goodwill associated with the trademark LONEY HUTCHINS and attempting to commercially benefit from diverted internet traffic, which cannot be consider a bona fide offering of goods or services.
Respondent is not commonly known by the trademark LONEY HUTCHINS, is neither its licensee nor authorized agent of Complainant.
Respondent is not using the disputed domain name in a legitimate noncommercial or fair use sense.
Complainant claims that the disputed domain name have been registered in bad faith because Respondent is using it for the sole purpose to distribute pornography and selling pay-per-click advertisements with the trademark LONEY HUTCHINS.
Respondent had constructive notice as to the existence of the trademark. Therefore, Respondent registered the disputed domain name in order to commercially benefit from the fame associated with the trademark LONEY HUTCHINS, which demonstrates Respondent’s bad faith.
B. Respondent
Respondent is the owner of the disputed domain name <loneyhutchins.com>, registered in 2012.
Respondent asserts that registration of the disputed domain name (2012) predates LONEY HUTCHINS trademark registration (2014).
Respondent states that he registered the disputed domain name with no intention of selling the disputed domain name to Complainant. The disputed domain name features one episode of his life.
Respondent argues that he did not try to prevent Complainant from registering the disputed domain name because the owner of the trademark had enough time before 2012 to register any domain name that pointed to some music-site.
Respondent believes that he has legitimate interest in the disputed domain name because he is documenting his experience with Loney Hutchins and his company, who according to Respondent ruined his life at least for a year.
Respondent claims that the disputed domain name does not lead to anything pornographic; it could be regarded as that only because what and how he wrote could offend a lot of people.
C. Complainant’s Additional Submission
Complainant emphasizes that there is no doubt that the disputed domain name is identical to the trademark LONEY HUTCHINS, as the evidence submitted by Complainant shows. In fact, Respondent did not object the filing of the trademark.
Complainant argued that it is not necessary to have a registered trademark prior to registration of a domain name, but that Complainant’s rights must predate the registration of a domain name, which in this case there is submitted evidence that Complainant has exercised his rights over the trademark since 1974. (Annex 4 and 5 of Complaint)
Complainant ratifies that the disputed domain name was registered in bad faith because Respondent uses the disputed domain name as an illegal porn website that features 1,000 of porn pages and images. Also, Respondent uses Complainant’s trademark knowing that LONEY HUTCHINS is a popular entertainer.
Complainant asserts that Respondent offers no proof of his baseless claims directed toward Complainant.
D. Respondent’s Additional Submission
Respondent argues that he has an innocent and legitimate reason for using LONEY HUTCHINS in the disputed domain name, which is to “inform other victims of brain – injury about the nefarious business that loney hutchins owns”.
Respondent reiterates that there was no LONEY HUTCHINS trademark registered before the disputed domain name, in that sense, Complainant is trying to infringe upon the disputed domain name by registering the trademark.
1. Complainant has owned the trademark LONEY HUTCHINS in State of Tennessee of the United States of America since May 1, 2014, to identify goods within international class 9.
2. Complainant has owned the trademark LONEY HUTCHINS in the United States Patent and Trademark Office (USPTO) since January 27, 2015 under the registration number 4,677,881 in International Class 9.
3. In order to determine whether or not the disputed domain name is confusingly similar to a trademark such registration does not require predating the registration of the disputed domain name.
4. To prove lack of rights or legitimate interest and bad faith, Complainant argues to have common law rights since 1974. Nonetheless, there is no evidence of such rights. A mention of first use by the USPTO does not automatically means common law rights dating from such first use.
5. After a review of Complaint’s evidence regarding his alleged common law rights, the Panel only found the current screenshot of the ebay and iTunes, and an undated picture of what seems like a disc cover. Consequently, there is neither evidence of secondary meaning nor evidence of use. Thus, Complainant has not proven common law rights regarding the trademark LONEY HUTCHINS, since 1974.
6. Moreover, Respondent uses the disputed domain name to share his experience at the institution 21ST CENTURY LIVING SERVICES managed by a man who goes by the name of Loney Hutchins, that is not the same person as Complainant.
7. Complainant failed to prove its assertions regarding lack of rights or legitimate interests and the consequent bad faith.
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.
Complainant contends to be the owner of the trademark LONEY HUTCHINS and to have common law rights over the expression LONEY HUTCHINS since 1974 in the United States of America to identify a music performer.
a) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of jurisdictions throughout the world.
The worldwide-accepted definition of a trademark involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it in connection with goods and services of the type with respect to which the trademark is registered.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not need to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark in order to deserve legal protection, based solely on its use in commerce.
To make an analysis of the alleged trademark rights, we will proceed to study Complainant’s allegations regarding his common law rights (1974) and then proceed with his trademark registrations (2014 and 2015).
In this case, Complainant argues to have had common law rights over the expression LONEY HUTCHINS since 1974.
Common law rights are obtained with use of the trademark in commerce to identify certain goods or services and to distinguish them from those of competitors[2].
However, there is no evidence of use filed by Complainant in the length and amount that would allow a Panel to conclude the existence of common law rights of the expression LONEY HUTCHINS.
After a review of the Exhibits to the Complaint where, according to Complainant, there would be examples of use, the Panel only found the current screenshot of ebay and iTunes, and an undated picture of what seems like a disc cover. Consequently, Complainant has not proven use of the expression LONEY HUTCHINS required to declare common law rights. Thus, Complainant has not established common law rights regarding the trademark LONEY HUTCHINS, as from 1974.
Nonetheless, Complainant proved its rights in the trademark LONEY HUTCHINS. Exhibit 1 and 2 to the Complaint include a copy of the following registrations certificates:
· State of Tennessee of the United States of America, Registered since May 1, 2014, to identify goods within international class 9.
· United States Trademark Registration No. 4,677,881 issued on January 27, 2015, for “audio recordings featuring gospel, Christian, country, folk, traditional, bluegrass music,” goods within international class 9.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[3]. Thus, Complainant established its rights in the trademark[4] since 2014.
The Panel adds that, although Respondent’s disputed domain name <loneyhutchins.com> predates Complainant’s trademark registration, Paragraph 4(a)(i) to the Policy does not require the trademark to be registered prior to the disputed domain name[5].
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark LONEY HUTCHINS for purposes of Paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s trademark LONEY HUTCHINS since the disputed domain name <loneyhutchins.com> contains Complainant’s trademark.
In the first place, before establishing whether or not the disputed domain name is confusingly similar to Complainant’s trademark LONEY HUTCHINS, the Panel wants to point out that the addition of generic top-level domains (“gTLDs”), i.e., “.com,” “.biz,” “.edu,” and “.org,” cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[6]. Neither the addition of country code top-level domains (“ccTLDs”), i.e., “.co.,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD have a distinctive function[7].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (“gTLD”) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
However, the Panel considers that the reproduction of Complainant’s trademark LONEY HUTCHINS by the disputed domain name <loneyhutchins.com> is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[8] and the disputed domain name does not add any other distinctive element.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus the requirement set forth in Paragraph 4(a)(i) of the Policy has been duly satisfied[9].
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a disputed domain name:
(i) Before any notice of the dispute, 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; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial 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.
Although, Complainant argues that Respondent does not have any rights or legitimate interests regarding the disputed domain name and that he has not authorized Respondent to use the trademark within the disputed domain name, Complainant failed to make a prima facie case to revert the burden of proof and did not file any evidence to prove his assertions.
In contrast, Respondent established its rights and legitimate interest in the disputed domain name, as per Paragraph 4(c)(i) and Paragraph 4(c)(iii) of the Policy, as follows:
(i) Regarding Paragraph 4(c)(i) of the Policy: before any notice of the dispute, Respondent used the disputed domain name.
Respondent acquired the disputed domain name before Complainant registered his trademark and has used it since 2012 in connection with an experience of Respondent related to an institution managed by a Loney Hutchins. Thus, Respondent has used the disputed domain name before any notice of the dispute.
(ii) Concerning Paragraph 4(c)(iii) of the Policy: Respondent is making a legitimate non-commercial 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.
In fact, Respondent is exercising his freedom of speech, using the disputed domain name for non commercial purposes, only to document one episode of his life in a rehabilitation facility.
The Panel reviewed the content of the website to which the disputed domain name resolves to and found that Respondent is criticizing Loney Hutchins and his business activities related to a rehabilitation facility, which is not related to the trademark LONEY HUTCHINS, registered to identify audio recordings of international class 9; therefore, Respondent is exercising his right to free speech and gives him further justification to register and use the disputed domain name at issue.
Since both parties in this case are domiciled in the United States Citizens, the Panel must consider the First Amendment of the United States Constitution that states the following:
“Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the government for a redress of grievances”.
In that sense, like in The American National Red Cross v. Mafiabusters.com LLC a/k/a Thomas Quinn[10], Respondent’s activities performed through the disputed domain name are evidence that he is exercising his freedom of speech. This right can be exercised through the website to which the disputed domain name resolves to or any other. Hence, the use of the disputed domain name <loneyhutchins.com> to criticize Loney Hutchins and his business activities related to a rehabilitation facility is lawful. Banning Respondent from using such domain name would constitute an illegitimate limitation of his right to free speech.
In McLane Company v. Fred Craig[11], the Panel found that the right to make such use of third party’s trademarks is based on the First Amendment of the United States Constitution and is considered a legitimate use. Specifically, the Panel stated that:
“Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrant’s rights or legitimate interests in the name. One such circumstance is the legitimate non-commercial or fair use of the domain name without intent for commercial gain to mislead diverts consumers. Respondent is using the domain name “mclanenortheast.com” as a means of protesting against Complainant. Respondent has a grievance against Complainant and has chosen to publicize this grievance via a web site. Protest and commentary is the quintessential non-commercial fair use envisioned by the Policy. Protest and commentary are also considered typical fair use under U.S. law relating to domain names. When commenting on the “Anticybersquatting Consumer Protection Act”, the House Judiciary Committee specifically referred to comment and criticism as lawful non-commercial fair use of a mark. Thus Respondent has raised a plausible claim that he has a legitimate interest in the domain name “mclanenortheast.com” and Complainant has not met its burden of proving an absence of such a legitimate interest. Complainant’s bare allegation of tarnishment does not overcome Respondent’s claim of a legitimate interest”.
Similarly, in this case Respondent is using the disputed domain name to express his point of view by disapproving Loney Hutchins and his business activities related to a rehabilitation facility and to let the public know a specific episode of his life in such rehabilitation facility. Consequently, the Panel finds that Respondent has shown that he is using the disputed domain name in connection with a legitimate non-commercial and fair use of the domain name, consistent of criticizing Loney Hutchins and his business activities related to a rehabilitation facility in use of its constitutional right to free of speech.
Moreover, a previous Panel has found legitimate interests in a similar case. In Bridgestone Firestone, Inc. v. Myers[12], the Panel stated:
“The question presented in this case is whether fair use and free speech are defenses to a claim for transfer of a domain name under the Policy. Under Paragraph 4 (c)(iii) of the Policy, non-commercial fair use is expressly made a defense. Although free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, the list is not exclusive, and the Panel concludes that the exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4 (c)(iii). The internet is above all a framework for global communication, and the right to free speech should be one of the foundations of Internet law”.
As stated above, the Panel finds that the use of the Complainant’s trademark as an exercise of free speech is lawful and the criticism of third party’s products or services is free under the United States Constitution. The trademark rights held by Complainant cannot prevail over the constitutional right of the people to freely express their opinion. Furthermore, Respondent’s criticisms through the website to which the disputed domain name resolves to, are not even related with Complainant’s trademark LONEY HUTCHINS, which is registered under goods related to audio music recordings.
Moreover, Respondent’s criticisms do not even refer to Complainant or Complainant’s trademark, but to someone else named Loney Hutchins.
Thus, in view of the above arguments taken together, Respondent has established rights or legitimate interests in the disputed domain name, which Complainant failed to rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy has not been satisfied.
According to paragraph 4(b) of the Policy, 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 disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) 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; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her 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 his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith as Respondent is selling illegal advertisements with the trademark LONEY HUTCHINS, is profiting commercially from the fame associated with Complainant’s trademark and had actual and constructive notice of Complainant’s trademark when registered the disputed domain name.
However, none of those claims were supported by evidence of any kind either in the Complaint or the Additional Submission.
On the contrary, all what was proven was that Respondent’s website to which the disputed domain name resolves to, contains his view of an experience he had in a rehabilitation facility and his website does not sell illegal advertisement and it is not for profit.
Furthermore, as Complainant was not able to prove his alleged common law rights, there is no evidence that the disputed domain name was registered in bad faith.
Moreover, Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name, since the domain name registration was prior to the trademark registration; or (ii) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant's trademark, since the disputed domain name registration was prior to the trademark registration[13].
Therefore, the Panel concludes that Complainant has failed to prove Respondent’s bad faith.
Consequently, all three elements of the Policy paragraph 4(a) have not been established in the present case.
Reverse Domain Name Hijacking
Finally, as per Paragraph 15(e) of the Rules, the Panel is entitled as follows:
“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”.
As per Paragraph 1 of the Rules: “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Regarding Reverse Domain Name Hijacking, there must be sufficient evidence for the Panel to conclude that Complainant has filed the Complaint in bad faith. Even though, the claim of Reverse Domain Name Hijacking usually comes from Respondent, given the facts of the case, as per Paragraph 15(e) of the Rules, the Panel might find that a Complaint has been filed in bad faith[14].
Reverse Domain Name Hijacking would succeed when Respondent’s use of the disputed domain name has not constituted bad faith and weaknesses in the Complaint are revealed during the proceeding[15], such as, Complainant’s knowledge of: (i) its lack of relevant trademark rights, (ii) Respondent's rights or legitimate interests in the disputed domain name, or (iii) Respondent's lack of bad faith in the disputed domain name.
In the present case, the disputed domain name was registered in 2012, for Respondent to express his feelings of an experience he had in a rehabilitation facility managed by someone named Loney Hutchins different from Complainant.
Complainant registered its trademark in 2014 before the State of Tennessee, not even under a Federal trademark registration which was obtained only in 2015, but the domain name <loneyjohnhutchins.com> dates back to 2012, which means that at least when registering his domain name Complainant should have known that the disputed domain name was not available and neglected to proceed against it, until 2015, which is 3 years after Complainant should have known of the existence of a conflict.
Furthermore, Complainant is not clear regarding his identity, since Respondent stated that there are at least two persons holding the name Loney Hutchins to which Complainant does not make any references. The first one, manager of the institution 21ST CENTURY LIVING SERVICES and the second one, Complainant himself, owner of the trademark LONEY HUTCHINS.
Moreover, Complainant tried to confuse the Panel regarding Respondent’s bad faith, as the Complaint asserted that Respondent offered selling illegal advertisements and obtained commercial profit and portraying pornography, when from the Response it is obvious that Respondent is not selling anything, is not obtaining commercial profit from his domain name and no pornography was found whatsoever.
Finally, Complainant’s delay in bringing this action is the final factor supporting a finding of its bad faith. The fact that Complainant filed this proceeding nearly 3 years after Complainant should have known of the existence of the disputed domain name suggests that Complainant knew it had a very weak claim and nevertheless filed its UDRP Complaint in bad faith.
The Panel accordingly finds that Complainant’s actions constitute an abuse of the UDRP process.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Moreover, the Panel declares that the Complaint was brought in bad faith and thus constitutes Reverse Domain Name Hijacking.
Accordingly, it is Ordered that the disputed domain name <loneyhutchins.com> domain name REMAIN WITH Respondent.
Fernando Triana, Esq., Panelist
Dated: April 7, 2015
COLO 1308 0960 68489/SÁG
4290210417166
[1] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
[2] See Lilian Vachovsky, COO, Aplus.Net Internet Servs. v. A+ Hosting Inc., D2006-0703 (WIPO Oct. 26, 2006) (“Common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owner’s goods or services from those of its competitors. See T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996). Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918)”).
[3] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[4] See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Grp. plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[5] See Konstantin Graf Lambsdorff v. Eighty Bus. Names, D2012-2039 (WIPO Dec. 21, 2012) (“Paragraph 4.a.(i) does not require that the common law rights pre-date, or the trademark be registered prior to, the domain name; though it may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below.”).
[6] See Altec Indus., Inc. v. I 80 Equip., FA 1437753 (Nat. Arb. Forum May 18, 2012).
[7] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Nat. Arb. Forum July 15, 2011)
[8] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[9] Panelist Brown respectfully disagrees with this part of the decision. His view is that the objective observer, making the comparison between the disputed domain name and the trademark, would conclude that the comparison should be made with the trademark as a whole, as it is that trademark that has been registered by the Complainant and as the Complainant has no common law or unregistered trademark rights in UHEALTH. The objective bystander would conclude that the domain name may well be referring not to the Complainant’s trademark but to another university’s health service or, indeed, a general health service directed to the reader, as in “your health.” Consequently, the disputed domain name is not confusingly similar to the only trademark relied on by the Complainant.
[10] See The American National Red Cross v. Mafiabusters.com LLC a/k/a Thomas Quinn
Claim Number: FA0206000114589 (Nat. Arb. Forum. August 6, 2002).
[11] See McLane Company v. Fred Craig. D2000-1455 (WIPO January 11, 2001).
[12] See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000).
[13] See Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc. D2000-0174 (WIPO May 26, 2000) (“The fact that Respondent registered its domain name two (2) years before the intent to use application of Complainant was filed and three (3) years before Complainant started using the mark is persuasive to the Panel that none of the bad faith factors in Policy 4(b) apply”).
[14] See Goway Travel Limited v. Tourism Australia. D2006-0344 (WIPO, June 6, 2006) (Under the Rules, the Panel must also consider whether Complainant is guilty of Reverse Domain Name Hijacking (“RDNH”). That is true notwithstanding that Respondent has not requested such a finding, and even in the absence of a Response. 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.” Rules, paragraph 1 and 15(e)).
[15] See Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, Case No. D2005-0309 (WIPO, July 19, 2005) (Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151)). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.) See also Prime Pictures LLC v. DigiMedia.com L.P. Case No. D2010-1877 (WIPO February 2, 2011).
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