Win Your Internet Domain Name Dispute Case




    How it starts: There are a few ways you or your company can end up in a dispute over an internet domain name.


    #1: One way it starts – Business is busy and, maybe, not web-savvy: You have a business. You have a company. Your customers, your prospects, the general public know about what you do. They know your services. They know your products. Your customers are happy with YourSuperAwesomeBusiness.


    You are busy building a bigger, better, and even more awesome business out of YourSuperAwesomeBusiness.


    And, you’ve been so busy building up YourSuperAwesomeBusiness that you, or your partners, or your executives, or your (mostly) awesome assistant, or your tech guys did not register the internet domain name which is your company’s name or it’s services, and somebody else did first.


    Somebody else registered the internet domain name, YourSuperAwesomeBusiness.com. That somebody else, we’ll call Mr. Interloping Cybersquatter.


    And the problem here is that it’s your business and your name and you want your business to have a website at YourSuperAwesomeBusiness.com.


    To make matters worse, whoever it is that registered the domain name that should belong to your business, YourSuperAwesomeBusiness.com is doing one or another thing with the website which is bad for your business. For example, you type in www.YourSuperAwesomeBusiness.com and what happens next is:

  • your web browser goes to a page of links to random websites about building a business or being awesome or being super; OR

  • your web browser is suddenly on an all-flesh-all-the-time porno website; OR

  • your web browser goes to Your Competitor’s Not Nearly As Super Awesome Business web site; OR 

  • your web browser goes nowhere, it goes to a blank page that says nothing, except something like “Error 404 – Page Not Found.”


None of this is any good for YourSuperAwesomeBusiness. Not only is it not good, it is bad. Bad for your business.


    So, after some hunting around, you find the email address for that person who registered your domain name before you did.  It turns out to be Mr. Interloping Cybersquatter.


    And you send Mr. Interloping Cybersquatter an email which says, essentially,


“Dear Mr. Interloping Cybersquatter,

"I own the business named ‘YourSuperAwesomeBusiness.' I recently learned that you registered the internet domain name which is my business’s name plus “dot com,” i.e., YourSuperAwesomeBusiness.com.

"Since the domain name is identical to the name of my business, I’d really like to be able to put up a website on it for my business.


"Would you please transfer the registration of YourSuperAwesomeBusiness.com to me? I would really appreciate it, and would be happy to reimburse you for the cost of registration.

"Please let me know.”

And after this email you get one of three responses from Mr. Interloping Cybersquatter:


        1.    A refusal to transfer; OR


        2.    A demand for thousands of dollars for you to pay for the transfer; OR


        3.    No response at all.


So, now what?


Can you get the internet domain name which is your business’s name, not Mr. Interloping Cybersquatter’s despite his flat refusal, demand for ransom, or total silence? Can you?


    Call my office at 
646.827.4257. See if you can take control of that internet domain name which should be yours, and take it.


    #2: Another way it starts – the wily cybersquatter piggy-backs on your good name: this is essentially the same situation as in #1 above, except, in this one, you did not fail to register YourSuperAwesomeBusiness.com.


    Instead, you registered that domain name which should be yours and in fact is yours:  YourSuperAwesomeBusiness.com. And you even went ahead and built a website on it. You may even be doing a good business on your YourSuperAwesomeBusiness.com website.


    This time, instead, Mr. Interloping Cybersquatter registered one or more domain names that are similar to yours. For example,


    •    YourSuperAwesomeBusinessDiscountCoupons.com OR


    •    YourSuperAwesoomeBusiness.com, or both, plus, maybe a few more.

   
So, these domain names are not exactly your business’s name, but, with the first one, it’s your business’s name plus “discount coupons” tacked on to the end.


    Will your customers, prospects, suppliers, lenders, trading partners think this website, YourSuperAwesomeBusinessDiscountCoupons.com is owned, controlled, or related to your business, even though you have nothing to do with it?


    And with the other one, YourSuperAwesoomeBusiness.com, is not exactly your business’s name, but only because there’s a typing error – Mr. Interloping Cybersquatter spelled it wrong, probably deliberately, in an effort to take advantage of your company’s good name and web surfers’ bad typing (they call this “typosquatting”).


    So. Mr. Interloping Cybersquatter has created either an internet domain name which is your website’s name plus additional words – almost the same as yours. Or he has created a misspelled version of your domain name – again, almost the same as yours.


    Now what? Will your customers and prospects be confused by this? Will they think they are at your website trying to do business with you, when they are actually some place else, where Mr. Interloping Cybersquatter wants them to go?


    Call my office at 
646.827.4257. See if you can take control of that internet domain name which should be yours, and take it.


    #3: Another way it starts – Snatching Famous People’s Names: You are famous. Not just famous for being famous, but famous for something you do. And you make a living based, in part, on your famous name. Like Mick Jagger. Or Kevin Spacey. Or Sandra Bullock. Or JRR Tolkien. Or Michael Crichton. Or Ian Fleming. Or Robin Cook.


    Or, you are not necessarily as famous as the lead singer of the Rolling Stones, or Academy Award winning actors, or authors of beloved fantasy novels or medical thriller novels, but still, you are well known for the work you do, and people associate your name with your work.


    And, like #1 above, somebody – Mr. Interloping Cybersquatter registered your name plus “dot com” before you did.


    And again, maybe you wrote to Mr. Interloping Cybersquatter and asked that the domain name – mickjagger.com, kevinspacey.com, sandrabullock.com, robincook.com, yourfamousname.com – hand over registration and control of the domain name, but again, like in #1 above, you got either

  • a flat refusal, 
  • a demand for money, 
  • or no response at all.


    Now what? What do you do? What can you do?


    Call my office at 
646.827.4257. See if you can take control of that internet domain name which should be yours, and take it.



    #4: Another way it starts – Somebody Else Claims Your Website Should be Theirs: You registered an internet domain name.


    You are happily building a website for your business or because you are just interested in building a website, or because you have some political cause or social commentary you want to talk about and promote.


    And then you get an email, or a letter, or a phone call, from someone saying that the domain name you registered should be theirs — and please transfer the registration of that domain name from you to them.


    Now what? Do you do it? Do you refuse? Do you ask to be paid? Do you ignore them?


    Call my office at 
646.827.4257. Can you keep the domain name you registered first? If yes, do what you have to do to keep it, and do it fast.


    #5: Another way it starts: Same as #4 above: You’ve registered an internet domain name and someone else claims it should be theirs, that you are the bad guy who has no legitimate right to use that internet domain name, and that someone else now wants to take the internet domain name away from you.


    That claimant – that “complainant”
has gone so far as to start a legal action against you. The complainant may have started a law suit in federal court. Or, more likely, they started a special arbitration under the Uniform Domain Name Dispute Resolution Procedure (UDRP) or one of the similar procedures.


    Maybe you have been served with a Written Notice of Complaint and the Complaint which challenges your right to hold the registration to and control of the internet domain name you chose and registered. You have a very few days to respond.


    So, now what? What do you do?


    Call my office at 
646.827.4257. Can you keep the domain name you registered first? If yes, do what you have to do to keep it, and do it fast.


Why Call Me?


    I am an attorney with 19 years experience, including clerkships in federal and state courts. I recently successfully challenged the registration of the internet domain name RobinCook.com on behalf of Dr. Robin Cook, the famous author of medical thrillers who has had close to thirty novels on the New York Times Best Seller list since 1977. (More on this below.)


    The knowledge and skill used to win for this famous author may be put to work to work to win for you.


    I am co-chair of the New York County Lawyers’ Association’s Cyberspace Law Committee, which addresses the legal issues which arise on the internet.


    If you have a case to make to either challenge and dispute the registration of a domain name, or to defend against such a challenge,


Call us at 646.827.4257 if you think you have a case, and want to do something about it.


Check out a recent decision in a case we won for best-selling thriller novel writer, Robin Cook (author of Coma, Fever, Cure, Intervention, and about 26 other New York Times best selling novels. Robin Cook is now the proud registrant of the internet domain name which is his name, RobinCook.com.


He now "owns" (actually holds the registration for) and controls RobinCook.com because of the decision in the UDRP case, Dr. Robin Cook v Alberta Hot Rods, FA1105001391337 (Nat. Arb. Forum July 12, 2011), which is reproduced below:


 

national arbitration forum

 

DECISION

 

Dr. Robin Cook v. Alberta Hot Rods

Claim Number: FA1105001391337

 

PARTIES

Complainant is Dr. Robin Cook (“Complainant”), represented by Allan R. Pearlman of Law Office of Allan R. Pearlman, New York, USA.  Respondent is Alberta Hot Rods (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <robincook.com>, registered with GoDaddy.com, 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 Panelist in this proceeding.

           

            Honorable Carolyn M. Johnson (Ret.), G. Gervaise Davis III, as Panelists and Beatrice Onica Jarka as Presiding Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2011; the National Arbitration Forum received payment on June 1, 2011.

 

On June 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <robincook.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 June 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2011 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@robincook.com.  Also on June 2, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

            On June 29, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Carolyn M. Johnson (Ret.), G. Gervaise Davis III, as Panelists and Beatrice Onica Jarka as Presiding Panelist

 

 

 

 

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. Therefore, the Panel issues its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

        He has established common law rights to his name and mark ROBIN COOK by his thirty five year career as a well known, best-selling author of medical thrillers,

        Respondent’s <robincook.com> domain name is identical to Complainant’s ROBIN COOK mark.

        Respondent does not have any rights or legitimate interests in the <robincook.com> domain name, as he is not known or has not been known by the disputed domain name  which resolves to a non active website.

        Respondent registered and used the <robincook.com> domain name in bad faith, as

-       The Respondent has engaged in a pattern of cybersquatting in order to prevent the owner of the mark to reflect it in a corresponding domain name,

-       The Respondent had used the disputed domain name  to intentionally attract Internet users to the Respondent’s commercial website <celebrity1000.com>,

-       The disputed domain name is currently passively held with no connection to an active website.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant has acquired common law rights in the ROBIN COOK trademark which is fully incorporated in the disputed domain name by the Respondent in the absence of any rights or legitimate interests of the latter.

 

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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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 contends that it has established common law rights in the ROBIN COOK mark, which also happens to be Complainant’s proper name, through continuous use of the mark in conjunction with Complainant’s publishing and books.  Complainant asserts that it has written many New York Times Bestselling novels; the first of which, entitled Coma, was published in 1977.  Complainant has offered screen shots from both Wikipedia and Amazon which illustrate the popularity of the books and the prominent use of the ROBIN COOK mark on the cover of said books.  Complainant indicates that he has published 31 novels under the ROBIN COOK mark and that all but his first novel have made the New York Times Bestseller list.  Additionally, Complainant states that many of his novels have been made into major motion pictures for theatrical release as well as television shows, television movies, and mini-series on broadcast and cable television.  Complainant argues that it has published 31 novels dating back to 1971 and thus has met the threshold determined by previous panels to attain secondary meaning.

 

The Panel finds that a trademark registration is not necessary so long as Complainant provides evidence of acquired secondary meaning in the mark so as to establish common law rights under Policy 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (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)).  Moreover, the Panel is persuaded of the evidence provided by the Complainant to establish secondary meaning in the ROBIN COOK mark and thus the Complainant has common law rights in the mark dating back to at least 1977.  See James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (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 contends that Respondent’s disputed domain name is identical to its own ROBIN COOK mark.  Complainant alleges that the disputed domain name includes the entire mark while only adding the generic top-level domain (“gTLD”) “.com” and removing the space between the terms of the mark.  The Panel finds that these two minor changes fail to sufficiently differentiate the disputed domain name from Complainant’s mark making the two identical under Policy 4(a)(i).  See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy 4(a)(i)”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

Therefore, the Panel considers that the Complainant has proved the first element under Policy 4(a)(i).

 

Rights or Legitimate Interests

 

The Panel considers that the Complainant first made 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 741828 (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); see also AOL LLC v. Gerberg, FA 780200 (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.”).

 

Complainant argues that Respondent is not commonly known by the disputed domain name.  Complainant indicates that Respondent has offered no evidence to show that it is commonly known by the disputed domain name and the WHOIS information identifies the registrant as “Alberta Hot Rods.”

 The Respondent failed to submit a Response under the Policy and failed to rebut the Complainant’s assertions. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii) based on the WHOIS information and the lack of other evidence on the record.  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant also argues that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.  Complainant contends that Respondent’s disputed domain name resolves to a site that is inactive.  The Panel finds that Respondent’s failure to make an active use of the disputed domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy 4(c)(i) and Policy 4(c)(iii).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  4(c)(iii).”).

 

 The Panel considers that the Complainant has proven also the second element under Policy 4(a)(ii).

 

Registration and Use in Bad Faith

 

According to the Complainant’s provided evidences, between 1999 and 2006, the disputed domain name was redirected to a commercial website called <celebrity1000.com>. This represents, in the opinion of the Panel, registration with knowledge of the Complainant’s trademarks rights in ROBIN COOK.

 

Moreover, the Respondent’s failure to make an active use of the disputed domain name for the last five years represents in the opinion of the Panel, also bad faith registration and use.  Previous panels have found that resolving a disputed domain name to an inactive site is affirmative evidence of bad faith registration and use.  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy 4(a)(iii); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). 

 

Complainant has submitted evidence to show that Respondent has been a Respondent in past UDRP proceedings, and was ordered to transfer the disputed domain name in those cases to the respective complainant.  The Panel finds that it is likely to consider that the Respondent has engaged in a pattern of bad faith registration of domain names and as such has registered and used the disputed domain name in this case in bad faith under Policy 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (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).

 

Therefore, it is the Panel opinion that the totality of the case circumstances evidence of bad faith registration and use pursuant to 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 <robincook.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Carolyn M. Johnson (Ret.), G. Gervaise Davis III, as Panelists

 Beatrice Onica Jarka as Presiding Panelist

Dated:  July 12, 2011

 



****



Call 646.827.4257 now to discuss your internet domain name dispute case


Win Your Internet Domain Name Dispute Case
Law Office of Allan R. Pearlman
116 West 23rd Street, Suite 5190
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646-827-4257
http://WinYourInternetDomainNameDisputeCase.com

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