Case No Domain(s) Complainant Respondent Ruleset Status
1552833 lufthansa.email
Deutsche Lufthansa AG yoyo.email et al. URS SUSPENDED
18-Jun-2014

Analysis

Clear and Convincing Evidence that Any Use Could Not Possibly Not Be Infringing

22-May-2014 02:49am by UDRPcommentaries

About author

Gerald M. Levine
http://www.iplegalcorner.com

It may have been noticed that 99% + of the complaints filed under the Uniform Rapid Suspension System (URS) involve well-known trademarks: LIPITOR, RIPOFF REPORT, IBM, MCGRAW-HILL, PORSCHE, LUFTHANSA. Pending cases include: MORGAN STANLEY, NETFLIX and WEIGHT WATCHERS. Application of the first to register doctrine depends on a registrant’s choice of the second level domain and the use to which it intends for the resolving website. Domain names composed of generic terms, common words and descriptive phrases used in their semantic senses and held by the original registrants are immune to forfeiture. The hundreds of new suffixes becoming available–.guru, .email, .ceo, .center, .club, .technology and .company that are featured in recent URS challenges–do not change the basic jurisprudence on this issue.

Where it cannot be said that there is a possible use that would not be infringing the respondent not only has no right or legitimate interest in the domain name but the registration is abusive. This applies whether the complaint is filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) or the URS. Current or demonstrable future non-infringing use is the ultimate determining factor.

The first wave of URS decisions make the point that registering well-known trademarks with any new generic top level domain will be infringing because any use–at least, any use that has currently been advanced to support legitimacy–creates a likelihood of confusion with Complainant’s mark “as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.” The only possibility for avoiding forfeiture is a second level domain that does not necessarily invoke the trademark–a geographic location plus the suffix for example, such as <southwest.email> if “Southwest” has no reference to the trademark. The few denials of suspension under the URS have mostly involved insufficient evidence; that is, the evidence has not been "clear and convincing."

In Virgin Enterprises Limited v. lawrence fain, FA1402001545807 (Nat. Arb. Forum March 20, 2014), for example, the Panel held that

failure to establish in the record that the relevant trademark [BRANSON] is strong plus the absence of any evidence that the domain name is currently being used in a manner that is associated with that trademark – do not convince this Examiner by clear and convincing evidence that the Registrant has no legitimate right or interest to the domain name or that the domain was registered and is being used in bad faith.

The holding in Virgin Enterprises is not entirely satisfactory, which is the reason that the Expert concluded the decision as follows: “the URS process is a narrow one and is ‘without prejudice to the Complainant… proceed[ing] with an action in [a] court of competent jurisdiction or under the UDRP,’ URS, para. 8.5, where the record may be more fully developed and the factual and legal arguments not constrained by, among other things, the 500-word limit for URS complaints.”

In all the other cases the trademarks noted above are household names. For what purpose would registrant want <lufthansa.email>, <lipitor.guru>, <morganstanley.solutions> or <h-d.bike>? An anonymous commentator on <udrpsearch.com> reacting to the decision on Deutsche Lufthansa AG v. yoyo.email et al., FA1404001552833 (Nat. Arb. Forum April 30, 2014) notes that “[t]his decision is going be appealed in a competent legal system. The URS and UDRP dispute forums are less than capable/credible.” The Respondent contended that

it intends to use the Domain Name, and a large number of other domain names which have been registered with the .email suffix for the same purpose and with similar surrounding circumstances, for a service to internet users of a recorded delivery service and/or email reply monitoring system each driven by a neutral communication platform.

There are undoubtedly legitimate domain names with the .email suffix but not with well-known trademarks. Domainnamewire.com reported there were 27,966 registrations for .email as of May 8. It is likely that only a handful of these registrations will be infringing but it is also likely that many of the registrations will not be economically viable. The anonymous commentator did not explain why he believed the decision was wrong but there is no “competent legal system” that would permit a registrant to dictate use of a trademark over the owner’s objection.

A similar problem arose with some .ceo domain names, <wolfram.ceo> and <mittal.ceo>. In ArcelorMittal v. Andrew Davis et al., FA1403001550814 (Nat. Arb. Forum April 4, 2014) the Registrant stated that “he plans to offer email and web link services to interested buyers, offering email addresses such as ContactMe@Mittal.CEO, WriteMe@Mittal.CEO, or John@Mittal.CEO, and at the same time states that his website will not contain any content that confuses its visitors with the Trademark/Company MITTAL.” However, there is no explanation for choosing the trademark and the Examiner found “this statement totally inconsistent, since the sole fact that email addresses planned to be sold by the Respondent contain the domain MITTAL which happens to be the name of a company and a registered trademark, does immediately create an association and a confusion with the owner of the trademark that cannot be allowed.”

All of these trademarks–even BRANSON although unsuccessful in the URS–have a high level recognition in the marketplace. As a trademark ascends the classification scale respondents’ explanations for its choice must be more persuasive; default will invariably result in suspension and appearance fares no better if the explanation is unpersuasive.

Comments

  • Gio 02:57 am 01-May-2014
    This decision is going be appealed in a competent legal system. The URS and UDRP dispute forums are less than capable/ credible.
  • cmiller 11:22 am 06-Jun-2014
    Clearly the respondent is a victim; This decision blatantly disregards the respondent's right to infringe upon the complainant's trademark for his own profit. Hopefully the other companies, organizations, and individuals with vested interest in the respondent's .email registrations take a less self-serving view of this parasitic business plan.

    aamco.email
    abercrombie.email
    acer.email
    adidas.email
    airbnb.email
    aircanada.email
    airfrance.email
    airnewzealand.email
    alcoa.email
    aljazeera.email
    alkaseltzer.email
    amazonsupport.email
    americanairlines.email
    americanapparel.email
    americanexpress.email
    amherstcollege.email
    armani.email
    autotrader.email
    avg.email
    bakermckenzie.email
    bally.email
    ballymore.email
    ballymoregroup.email
    ballys.email
    bang-olufsen.email
    bangolufsen.email
    bankofchina.email
    bankofengland.email
    bankofscotland.email
    barclay.email
    barnesandnoble.email
    basf.email
    baskinrobbins.email
    bbc1.email
    bbc2.email
    bbc3.email
    bbc4.email
    bbc5live.email
    bbc6music.email
    bbcfour.email
    bbciplayer.email
    bbcnews.email
    bbcone.email
    bbcradio.email
    bbcsport.email
    bbcthree.email
    bbctv.email
    bbctwo.email
    beatsmusic.email
    bellagio.email
    benandjerry.email
    benandjerrys.email
    benetton.email
    benihana.email
    bergdorfgoodman.email
    berkshirehathaway.email
    blaupunkt.email
    bluehost.email
    bmoharris.email
    bnymellon.email
    borders.email
    bose.email
    boss-design.email
    bossdesign.email
    bossdesigngroup.email
    bradfordandbingley.email
    breyercapital.email
    britneyspears.email
    brunomagli.email
    budweiser.email
    bugatti.email
    butterfinger.email
    buzzfeed.email
    cadbury.email
    cadburys.email
    captialone.email
    carillion.email
    carillionplc.email
    carmax.email
    century21.email
    chicagouniversity.email
    chobani.email
    churchfootwear.email
    churchillinsurance.email
    cibavision.email
    circuscircus.email
    clarion.email
    clinique.email
    coleyporterbell.email
    conocophillips.email
    craigslist.email
    credit-suisse.email
    crownoil.email
    danskebank.email
    davidbeckham.email
    davidclulow.email
    davidlloyd.email
    daytona500.email
    delmonte.email
    deloittedigital.email
    deutschepost.email
    dhl.email
    diadora.email
    digimedia.email
    directtv.email
    directv.email
    disneychannel.email
    disneyland.email
    disneylandparis.email
    disneystore.email
    disneyworld.email
    dolby.email
    ducati.email
    dukeuniversity.email
    dunkindonuts.email
    ebaysupport.email
    edwardjones.email
    eharmony.email
    ellis-brigham.email
    ellisbrigham.email
    emerson.email
    endsleighinsurance.email
    equifax.email
    esteelauder.email
    ethanallen.email
    eudora.email
    evo.email
    faber-castell.email
    fabercastell.email
    facebooksupport.email
    fanniemae.email
    fendi.email
    ferrazzano.email
    fifa.email
    firefox.email
    fisher-price.email
    gapinc.email
    gatwickairport.email
    geico.email
    generalatlantic.email
    generalcatalyst.email
    gizmodo.email
    glaxosmithkline.email
    gloriajeans.email
    gmc.email
    goldmansachs.email
    graffdiamonds.email
    greygoose.email
    gsiinsurance.email
    haagen-dazs.email
    haagendazs.email
    halfords.email
    halliwell.email
    harley-davidson.email
    harleydavidson.email
    harpercollins.email
    harrystyles.email
    harveynichols.email
    hasbro.email
    hdfcbank.email
    heathrow.email
    heathrowairport.email
    heathrowexpress.email
    hellmanns.email
    hermanmiller.email
    hertz.email
    holidayinn.email
    hoover.email
    hp-eprint.email
    hp-eprinter.email
    hpconnected.email
    hpeprint.email
    hpeprinter.email
    hugoboss.email
    hullcitytigers.email
    ipcmedia.email
    ironmountain.email
    itune.email
    itunesfestival.email
    itv2.email
    itv3.email
    itv4.email
    itvnews.email
    itvplayer.email
    itvsport.email
    jackbox.email
    jackinbox.email
    jackinthebox.email
    jdsports.email
    jellybelly.email
    jigsaw-online.email
    jigsaw.email
    jigsawonline.email
    jkrowling.email
    johnlewis.email
    johnniewalker.email
    johnsonandjohnson.email
    justdoit.email
    kelloggs.email
    kickstarter.email
    kleenex.email
    kleinbank.email
    knightfrank.email
    knorr.email
    kodak.email
    kohls.email
    koreanair.email
    krispykreme.email
    ladygaga.email
    lafitness.email
    lagear.email
    lauraashley.email
    leica.email
    leviroots.email
    lindumgroup.email
    lionsgate.email
    lloydsbank.email
    lloydstsb.email
    lockheed.email
    lockheedmartin.email
    logitech.email
    lonelyplanet.email
    lowenbrau.email
    lyondellbasell.email
    macegroup.email
    macmillan.email
    malaysiaairlines.email
    marvell.email
    mattel.email
    maxfactor.email
    mazda.email
    mearsgroup.email
    mediafire.email
    mellon.email
    mgmgrand.email
    michelin.email
    miltonagency.email
    miramax.email
    mircosoft.email
    morningstar.email
    mortons.email
    murphyoil.email
    murphyoilcorp.email
    nascar.email
    navyfederal.email
    nescafe.email
    neutrogena.email
    newbalance.email
    newegg.email
    newsfox.email
    nivea.email
    oanda.email
    oreo.email
    oscardelarenta.email
    pampers.email
    papajohns.email
    parishilton.email
    pcmag.email
    pemex.email
    perrier.email
    phillips66.email
    pirelli.email
    pixar.email
    planethollywood.email
    pokerstars.email
    polk.email
    polkaudio.email
    pomonacollege.email
    priceline.email
    pringles.email
    purina.email
    qatarairways.email
    qualcomm.email
    quandt.email
    quantas.email
    quickenloans.email
    quiksilver.email
    radioshack.email
    razorfish.email
    rbs.email
    rbsbank.email
    realmadrid.email
    reddit.email
    reebok.email
    rigbyandpeller.email
    rigbypeller.email
    rimmel.email
    rimmellondon.email
    ritz-carlton.email
    ritzcarlton.email
    rockfordfosgate.email
    rollingstone.email
    rollingstones.email
    royalalberthall.email
    royalmail.email
    royalmint.email
    royalopera.email
    royaloperahouse.email
    ryanair.email
    sainsburysbank.email
    saksfifthavenue.email
    salamanca-group.email
    salamancagroup.email
    sandalsresorts.email
    sanpellegrino.email
    sarahjparker.email
    schwarzkopf.email
    scjohnson.email
    scotchgard.email
    scrabble.email
    seagate.email
    seaworld.email
    seaworldparks.email
    sega.email
    seinfeld.email
    sheraton.email
    sheratonparklane.email
    shutterfly.email
    siemens.email
    skypeus.email
    smirnoff.email
    smuckers.email
    sothebys.email
    southernrailway.email
    spotify.email
    starwars.email
    stihl.email
    stobart.email
    stobartgroup.email
    stuartweitzman.email
    suncor.email
    sunglasshut.email
    sunoco.email
    sunocoinc.email
    swarovski.email
    swarthmore.email
    swarthmorecollege.email
    sydneyoperahouse.email
    tabasco.email
    tdbank.email
    tepper.email
    tesoro.email
    thaiairways.email
    theguardian.email
    themayfairhotel.email
    theritzlondon.email
    thewestbury.email
    thorntons.email
    thorpepark.email
    tiffanys.email
    tigerwoods.email
    tollbrothers.email
    trivago.email
    ultimo.email
    umbro.email
    underarmour.email
    uniball.email
    unilever.email
    unitedairlines.email
    universalmusic.email
    universalpictures.email
    universityofchicago.email
    vanityfair.email
    vaseline.email
    vauxhall.email
    vero.email
    verowater.email
    victoriabeckham.email
    victoriassecret.email
    viking-direct.email
    vikingdirect.email
    virgin-atlantic.email
    virginamerica.email
    virginatlantic.email
    virginaustralia.email
    virgingalactic.email
    virginholidays.email
    virginmobile.email
    virginmoney.email
    virginradio.email
    virginstartup.email
    virgintrains.email
    viviennewestwood.email
    vizio.email
    volvocars.email
    waltdisney.email
    walter-steiger.email
    waltersteiger.email
    warburtons.email
    warnerbros.email
    washingtonpost.email
    wembleystadium.email
    westernunion.email
    wimbledon.email
    winklevoss.email
    winklevosscapital.email
    winzip.email
    woolworths.email
    wrigleys.email
    yelp.email
    zenith.email
    zuckerberg.email
    zynga.email
  • Mark 01:34 am 10-Jun-2014
    I have been following this case. The respondent is being targeted unfairly. I am surprised how anyone can comment (either way) knowing so little of the facts of the case.
  • Gio 04:20 am 14-Jun-2014
    In reply to Gerald M. Levine comment “the anonymous commentator did not explain why he believed the decision was wrong”

    I hope this explains why I thought the decision was wrong.

    With respect of the duties as URS examiner:

    (i) the duty of the Examiner under the URS is made quite clear and is expressed in mandatory terms (Procedure, 8.1). The Examiner’s duty is :

    (a) to decide if there is “a genuine issue of material fact (Procedure 8.3)”;
    (b) to render a Determination to that effect where found (P 8.3);
    (c) to decide if “genuine issues of fact remain in regards to any of the elements” ( P8.4);
    (d) to decide if there is “ any genuine contestable issue…” ( P 8.5);
    (e) to issue a Determination for the Complainant if there is “no genuine contestable issue.” ( P8.6).


    The Examiner :
    (a) did not decide if there was “a genuine issue of material fact”;
    (b) did not render a Determination whether there was or was not “a genuine issue of material fact;”
    (c) did not decide if there was or was not a “genuine contestable issue” ;
    (d) did not give reasons for any of the above.

    The duty on the Respondent was to present a case such that at the end of the day, the Examiner could say whether or not there was “a genuine issue of material fact”, “genuine issues of fact (that) remain in regards to any of the elements”, or a “genuine contestable issue”.The Examiner did not decide any of these issues although expressly directed by the Procedure to do so.

    I don’t even want to go into the Clear and Convincing standard the URS expressly directs Examiners to follow. The only thing that is clear and convincing is that the Examiner was not clear and convincing. The decision was disgraceful.
  • Gio 04:35 am 14-Jun-2014
    In reply to the ignorant commentator cmiller who calls me a parasite. All I have to say is that you obviously have issues that need addressing professionally. I am not professionally trained to comment on special need issues, so unlike cmiller I won’t comment on things I have no understanding on.

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