Tag Archives: domain

Domains – NATIONAL ARBITRATION FORUM DECISION TRANSFERRED from Respondent to Complainant

PARTIES

Complainant is Lastar, Inc., d/b/a Cables To Go (“Complainant”), represented by David Shough of Law Office of David A. Shough, Ohio, USA.  Respondent is NextEngine Ventures, LLC (“Respondent”), represented by Sue M. Winchester of Winchester Law Group, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gocables.com>, registered with GoDaddy.com, LLC.

 

PARTIES’ CONTENTIONS

  1. Complainant
  2. Complainant is the owner of the CABLES TO GO mark, first used in commerce by Complainant in 1984 and registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,038,794 registered Jan. 10, 2006.)
  3. Complainant’s CABLES TO GO mark is extremely well known in the commercial connectivity industry.
  4. Respondent’s <gocables.com> domain name is confusingly similar to Complainant’s CABLES TO GO mark.
  5. Eliminating the preposition “to” and combining the terms “GO” and “CABLES” are insufficient variations to Complainant’s CABLES TO GO mark to avoid a finding of confusingly similar.
  6. Respondent is not making a bona fide offering of goods and services and is not commonly known by the <gocables.com> domain name.
  7. The disputed domain name resolves to websites unrelated to Complainant’s business.
  8. Respondent is using the <gocables.com> domain name to divert Complainant’s customers to Respondent’s websites.
  9. Respondent has registered and is using the <gocables.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
  10. Respondent’s <gocables.com> domain name resolves to a website featuring modeling industry links.

 

  1. Respondent
  2. Respondent was not aware of Complainant’s CABLES TO GO mark.
  3. Complainant’s brand and mark are not famous.
  4. The <gocables.com> domain name was included in a bulk purchase of 344 domains for $90,000 on October 4, 2010.
  5. Respondent’s <gocables.com> domain name is not confusingly similar to Complainant’s mark.
  6. There is no confusion or similarity between Complainant’s mark and Respondent’s disputed domain name because reversing the terms “GO” and “CABLES” changes the meaning of the term and is therefore  sufficient to distinguish it from Complainant’s mark.
  7. Respondent has rights or legitimate interests in the <gocables.com> domain name.
  8. Respondent is engaged in the business of trading domain names, which previous panels have not objected to as bad faith.
  9. Respondent’s interest in the <gocables.com> domain name is irrelevant and not a legitimate basis for requiring a transfer.
  10. Third party websites are not involved and Respondent is not receiving any compensation.
  11. There is no evidence that Respondent registered the <gocables.com> domain name for the purpose of selling, or otherwise transferring the domain name to Complainant or a competitor of Complainant.
  12. Respondent is not attempting to disrupt Complainant’s business.
  13. Respondent is not trying to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s CABLES TO GO mark.

 

  1. Additional Submissions

The Additional Submissions of the parties did not present any new information relevant to this Decision.

 

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 asserts that it and its CABLES TO GO mark are well known in the commercial connectivity market. Complainant claims that it has rights in the CABLES TO GO mark based on its registration with the USPTO (Reg. No. 3,038,794 registered Jan. 10, 2006.). Registration with a recognized trademark agency is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has rights in the CABLES TO GO mark through its registration with the USPTO.

 

Complainant claims that Respondent’s <gocables.com> domain name is confusingly similar to its CABLES TO GO mark. Complainant argues that the components to Respondent’s disputed domain name are identical to those in Complainant’s registered mark. Complainant claims that Respondent combines the word “GO” with the term “CABLES”, which creates the same impression as does Complainant’s CABLES TO GO mark. Complainant further points out in its complaint that the elimination of the term “to” and reversing the predominant terms in the domain is insufficient to distinguish it from Complainant’s registered mark.

 

In the very similar case of Lastar, Inc. v. The Cable and Wire Supplier, Inc.,       FA 1301907 (Nat. Arb. Forum Feb. 17, 2010), the Panel found respondent’s <cablegodirect.com> registration to be confusingly similar to complainant’s CABLES TO GO registration. In that proceeding, as in this one, the word “to” was eliminated from the CABLES TO GO mark. This Panel therefore similarly finds that Respondent’s <gocables.com> domain name is confusingly similar to Complainant’s CABLES TO GO mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant contends that Respondent has no rights or legitimate interests in the <gocables.com> domain name because it is not commonly known by the name or any version of it. The Panel notes that the WHOIS information for the <gocables.com> domain name lists “NextEngine Ventures, LLC” as Registrant. Previous panels have found that a Respondent is not commonly known by a disputed domain name where there is no evidence in the record to indicate that a respondent was commonly known by a disputed domain name. SeeCoppertown 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). The Panel finds that Respondent is not commonly known by the <gocables.com> domain name according to Policy          ¶ 4(c)(ii).

 

Complainant claims that Respondent has not shown demonstrable preparation to use the disputed domain name wherein Respondent admittedly diverts Complainant’s potential customers to Respondent’s multiple websites.   This Panel agrees, and finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name and thus has no rights or legitimate interests in the <gocables.com> domain name.  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent demonstrated intent to divert internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”.); see also Summit Group, LLC v. LSO Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

 

Complainant claims that Respondent has registered and is using the <gocables.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant argues that Respondent is using the confusingly similar <gocables.com> domain name to redirect consumers to its commercial websites featuring products and services that have no connection with the disputed domain name or Complainant’s products. Complainant asserts that this supports the claim that the <gocables.com> domain name is being used to confuse Complainant’s potential customers as to Complainant’s association to the domain name, and to commercially gain from that confusion. Previous panels have found that diverting a complainant’s potential customers to a site unrelated to the complainant is bad faith pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel thus finds that Respondent registered and is using the <gocables.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

This Panel also infers that Respondent knew of Complainant’s registered mark when it registered the domain name. It can be expected that a domainer such as Respondent, which had the resources to purchase 344 domain names in bulk, exercised its resources to gather information regarding the domains it was purchasing. This inference further supports the Panel’s finding of registration in bad faith.

 

Thus, Complainant has also satisfied 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 <gocables.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David A. Einhorn, Panelist

Dated:  February 28, 2013

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page

 

Continue reading Domains – NATIONAL ARBITRATION FORUM DECISION TRANSFERRED from Respondent to Complainant

No, You Can’t Register a Famous Trademark

 

No, You Can’t Register a Famous Trademark as a Domain Name Just Because “It Was Available”

Yah! I know it 🙂
But here is a nice excerpt of a post that I’v found.

 

Caller: I don’t mean to be rude, but the domain name was available and I paid $10 for it, so it is mine. How can that be illegal?

Domain Name Lawyer: Why did you register the domain name?

Caller: To sell it to Coca-Cola. I came up with this awesome idea of a website all about how people love Coca-Cola, and YourCocaCola.com would be just the perfect domain name for them to launch this site. I can’t believe their marketing company didn’t come up with this themselves….Anyhow, Coca-Cola earned about 2 Billion dollars last year based upon my research, and I think that 1% of that would be a fair price and I would share what we get with you if you will help me sell it to them.

Domain Name Lawyer: I do not mean to be the bearer of bad news, but registering a famous trademark like that to sell to the trademark owner is unlawful, and you best just hand over the domain name before you get into any more trouble. Sorry I can’t help.

Caller: You mean to tell me that Godaddy lets people register illegal names? Are you sure that you are really an expert in domain names? Because I spoke to a couple people before calling you, and they all told me stories of companies paying millions of dollars to get their domain names back after they inadvertently lapsed, or because someone got to them first. So I find it really hard to believe that a big company like Godaddy would allow someone to register a domain name that was illegal.

Domain Name Lawyer: Look, I have been practising domain name law for like 12 years, and there is something called the Anti-Cybersquatting Consumer Protection Act that makes this kind of thing illegal.

Caller: Did you say “legal” or “illegal”?

Domain Name Lawyer: Illegal.

Read it all at http://blog.dnattorney.com/2012/01/no-you-cant-register-famous-trademark.html

Just bought a domain at uniregistry.com

Well!
I did! They interface is hot – no cross sales, forced sales and other *shitty* sales techniques.

My affiliate link to uniregistry! 🙂

Yes! google.com! 🙂uniregistry-domain

US$ 10.88… ya, 99cents + expensive than mydomain.com.
But I decided to move forward with this to test them.

 

uniregistry-domain2

 

YÉH! 5.44 TopCoin!
I don’t know what the heck is this but I decided to accept it.

Topcoin is designed to reward your most loyal customers with incentives to make repeat purchases of your products.

I’v connected it with paypal and activated PRIVACY LINK – looks like its FREE!

Free privacy and 5.44 TopCoin (half of my purchase value in TopCoin)?!
I can’t believe!

Uniregistry Main Panel

uniregistry-domain3

Editing my domain’s configurations/setting

uniregistry-domain4

Editing Name Servers

f*ck! we can set default name servers for future new domains. :’)

uniregistry-domain5 2 Setting up the DNS records

uniregistry-domain5

 

Once again, my affiliate link to uniregisty! 🙂

[email protected]

  • enom might keep the domain on reactivation period for 120 days!
  • renew for themselfs
  • enom’s redemption charge is $250 + 1 year of renewal

 

REACTIVATION-PENDING

a. Reactivation Period Process. For a period of approximately 30 days after expiration of the term of domain name registration services, we may provide a procedure by which expired domain name registration services may be renewed. We may, but are not obligated to, offer this process, called the “reactivation period.” You assume all risks and all consequences if you wait until close to or after the expiration of the original term of domain name registration services to attempt to renew the domain name registration services. We may, in our sole discretion, choose not to offer a reactivation period and we shall not be liable therefore. The reactivation period renewal process, if any, may involve additional fees which we and your Primary Service Provider may determine.

  • We may make expired domain name services(s) available to third parties,
  • we may auction off the rights to expired domain name services (the auction beginning close to the end or after the end of the reactivation period),
  • and/or expired domain name registration services may be re-registered to any party at any time.

According to some pages ENOM might keep the domain for 120 days (3 months!!) or even renew it themselfs…

Now idea why eNom renewed it for another year, I’m quite sure the owner didn’t. That’s the odd part about it. According to the quote it shouldn’t be in Reactivion Period for a whole year.

http://webmasters.stackexchange.com/questions/23519/enom-com-domain-in-reactivation-period-expires-in-2012

Enom’s redemption charge is $250 + 1 year of renewal which I think is very excessive. The domain name is important to me but its borderline as to whether its worth that much to me at the moment.

http://www.webhostingtalk.com/showthread.php?t=980563

 

PendingDelete is 5 days, and 6th day domain will be deleted.