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| Process | Bad Faith | Rights | Choice of Law |
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Overview | Decisions |
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2. March 2, 2000 through April 6, 2000
3. April 7, 2000 through May 5, 2000
4. May 5, 2000 through June 13, 2000
5. June 14, 2000 through July 3, 2000Mr. Donahey is a member of the panel of neutrals of the World Intellectual Property Organization and the eResolution/Disputes.org consortium, two of the three providers currently certified by the Internet Corporation for Assigned Names and Numbers (“ICANN”) to hear cases under the Uniform Domain Name Dispute Resolution Policy. Mr. Donahey has served as a panelist in several cases, including The World Wrestling Federation v. Bosman, D99-0001, the first case to be heard under the new policy. Mr. Palaniswamy is a first year student in the joint program at Harvard Law School, where he is pursuing a J.D. and the Fletcher School of Law and Diplomacy, where he is seeking an M.A.. He is a graduate of the University of Georgia, where he received an A.B. in Honors Interdisciplinary Study, and a B.S. in Biochemistry & Genetics. Mr. Palaniswamy is currently a Teaching Fellow at the Berkman Center for Internet and Society at the Harvard Law School, and served formerly as a research assistant in the Global Intellectual Property Issues Division of the World Intellectual Property Organization.
Between 9:30 a.m. P.S.T., April 7, 2000, and 5:00 p.m. E.D.T., May 5, 2000, the Internet Corporation for Assigned Names and Numbers (“ICANN”) issued 138 panel decisions under the Uniform Domain Name Dispute Resolution Policy (the “Policy”), bring the total number of decisions issued during the slightly more than six months since it firs accepted cases for filing to 273. Of these additional 138 cases, only twelve were heard by a panel of three, the others being heard by a sole panelist. 105 of these recent decisions resulted in a transfer of the domain name to the complainant, 4 resulted in cancellation of the domain names at issue, and 29 decisions found for the respondent. This complainant success rate of 79% is in keeping with the overall rate for all 273 cases of 79.6%. Most disturbing is the fact that the percentage of cases which cite prior panel decisions, thereby providing continuity and predictability in the system, has risen from only 24% last month to 27.5% this month. Thus, in only 25.5% of the cases decided to date has at least one prior panel decision been cited. This does not bode well for the rule of law, encourages users to forum shop for panelists, and provides little guidance to prospective users as to how a particular issue is likely to be decided.A schism has clearly begun to emerge among the panelists. There are those who would strictly construe the Policy and the Rules and require the complainant to bear a considerable burden of proof before they would require that a name be transferred. Then there is a second group who look to the purpose of the Policy to curb abusive regulation of domain names to guide their evaluation of the evidence. The clash of those views has been especially evident in three split decisions of three three-person panels: J. Crew International, Inc. v. crew.com, ICANN Case No. D2000-0054; Hearst Communications, Inc. and Hearst Magazines Property, Inc. v. David Spencer d/b/a/ Spencer Associates, and Mail.com, Inc., ICANN Case No. FA0093763; and Motorola, Inc. v. New Gate Internet, Inc., ICANN Case No. D2000-0079.
In crew.com, supra, the respondent registered <crew.com>, and shortly thereafter <j.crew.com.> Only the former domain name was at issue in the case. The complainant mark holder thereafter invited the respondent to join the complainant’s affiliated network and place a banner ad on respondent’s web site with a link to complainant’s web site located at www.jcrew.com. Complainant promised respondent commissions for sales made to customers using the link, but apparently defaulted on that promise. Complainant, after a failed attempt to buy the name, instituted proceedings under the prior NSI policy, and the name was placed on hold. Eventually, the complainant was notified that the hold would be released, unless the complainant filed a complaint under the Policy.
Complainant contended that the respondent had no rights or legitimate interests in respect of the domain name at issue, and that the name had been registered and was being used in bad faith. Respondent contended that it had rights and legitimate interests in respect of the name, because of Respondent’s business of registering domain names for use and for sale to others, and that the name had not been registered in bad faith, since it had no knowledge of the trademarks at the time it registered the domain name, and that the name had not been used in bad faith, because it was asked to join Complainant’s affiliate group.
The majority in crew.com found that speculation in domain names is not a legitimate interest in respect of a domain name. Guided by the purpose of the Policy, the majority found that conduct which precludes others who have a legitimate desire to use the domain name and which increases costs to the operators of web sites and limits the availability of domain names is contrary to principles of trademark law which prohibit speculations in trademarks, and by analogy to domain name registration. The majority noted that the respondent had failed to show any evidence of plans to use the domain name in good faith.
Addressing itself to the question of bad faith registration and use, the majority found that respondent had constructive notice of the federally registered trademarks. The panel also found that the lack of any demonstrable plan to use the domain name for a bona fide purpose, respondent’s pattern of conduct involving speculative registration of domain names, and the fact that the registration prevented the trademark holder from having a domain name that corresponded to its registered mark, when coupled with the constructive notice, was sufficient evidence of bad faith registration and use.
The dissent rejected the concept of “constructive notice,” stating this element would be true for all registered trademarks. Since the word “crew” is generic, it is particularly inappropriate for analysis under a “constructive notice” standard. Parties should be held to have rights and legitimate interests in the sale of domain names that are constructed using generic terms. Finding that the facts before the Panel did not fit any of the four examples set out in ¶4(b) of the Policy, the dissent would find no bad faith. “In my judgment the majority’s decision prohibits conduct which was not intended to be regulated by the ICANN policy.”
In the Hearst case, supra, the panel was confronted with a dispute between the owner of the trademark “esquire” for use in conjunction with the magazine of the same name on the one hand, and the registrant respondent and the respondent owner of the domain name <esquire.com>, who had a vanity domain name business, where it rents for email purposes such domain names as <accountant.com>, <dr.com>, <doctor.com,>, <engineer.com>, <teacher.com>, <priest.com>, and <lawyer.com> on the other. The majority held that for purposes of the bad faith analysis, one must look to the intention and conduct of the registrant, rather than the transferee. The registrant respondent had registered the domain name in 1994, many years before the existing policy was in place, and well prior to the time when “cybersquatting” became a public issue. Nevertheless, the majority found that the registrant respondent and registered and used the domain name in bad faith, since it had registered other names confusingly similar to well known marks (as well as generic names), such as <accurasource.com>, <buicksource.com>, <lincolnsource.com>, <porschesource.com>, etc. The majority found that the registrant respondent’s conduct was that which the Policy was designed to prevent, the taking advantage of established trademarks. Curiously, the majority did not cite a single prior panel decision or decided case in support of its position.
The dissent, which cited several prior decisions of ICANN panels, found that no one would necessarily assume that the domain name <esquire.com> was associated with the magazine of the same name, since the word “esquire” is too generic and widely used as descriptive of lawyers and gentlemen generally. The dissent also found that the registrant respondent at no time offered to sell the name to the complainant, and that at the time the domain name was registered the registrant respondent could have legitimately believed that he could have rightfully sold it to Hearst, since the concept of “cybersquatting” had yet to develop. The dissent cited several prior decisions that the sale of domain names in and of itself did not constitute bad faith. “The UDRP is intended to prevent trademark owners from being extorted by cybersquatters, but it is also intended to protect legitimate registrations from being threatened by overreaching trademark owners.”
Finally, in the case of Motorola, Inc. v. NewGate Internet, Inc., supra, the majority held that the respondent had registered and used the domain name <talkabout.com>. in bad faith, that the respondent had no right or legitimate interest in respect of the domain name, and that the domain name was identical to the trademark which had been registered and used by the complainant. The dissent would have found that the complainant’s trademark did not extend beyond the goods for which it held registrations. Since respondent had stated that his intended use of the name was for an “adult sex site” and that this was different from the goods and services covered by complainant’s mark, there was a legitimate interest in respondent in respect of the domain name. The dissent would also have found that by registering the domain name at issue, the respondent acquired rights in respect of the domain name, which rights would continue to exist absent any breach of registration agreement. Finally, the dissent would have used the United States Federal Rules of Evidence, Rule 408, to exclude any evidence of an offer to purchase the domain name at issue, as made as part of settlement negotiations.
Curiously, only six days later, the dissenting panelist joined, without comment, in a unanimous opinion ordering a domain name transfer where 1)the domain name registrant had not apparently breached the registration agreement, and 2) where an offer to sell the domain name at issue was made in the context of settlement negotiations. Ventura Foods LLC v. Vijay Pathi, ICANN Case No. AF-0136.
The following is the monthly digest of panel decisions:
137. Tata Sons Ltd. v. The Advanced Information Technology Association, Case No. D2000-0049
a. Date: April 4, 2000
b. Panelist(s): Maninder Singh
c. Domain Name(s) at Issue: <tata.org>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(b)(iv)
h. Uniform Rules cited: None
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
138. Microsoft Corp. v. Mehrotra, Case No. D2000-0053
a. Date: April 10, 2000
b. Panelist(s): Roderick Thompson
c. Domain Name(s) at Issue: <microsoft.org>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b)
h. Uniform Rules cited: 5, 14(a), 15(a)
i. Panel Decisions cited: Digitronics Inventioneering Corp., v. @Six.NetRegistered, Case No. D2000-0008
j. Judicial decisions and statutes cited: None
139. J. Crew International, Inc. v. crew.com, Case No. D2000-0054
a. Date: April 20, 2000
b. Panelist(s): Richard W. Page, Mark V.B. Partridge, G. Gervaise Davis III
c. Domain Name(s) at Issue: crew.com
d. Response?: Yes
e. Principle(s): “Speculation is not recognized by the Policy as a legitimate interest in a name, and the Policy should not be interpreted to hold that mere speculation in domain names is a legitimate interest.” Distinguishes this case from General Machines.
Dissent Filed.
f. Result: Name transfer
g. Policy cited: 4(a),
h. Uniform Rules cited: None
i. Panel Decisions cited: General Machine Products Company, Inc. v. Prime Domains, ICANN Case No. FA0001000092531, AF-0104<thyme.com>
j. Judicial decisions and statutes cited: 15 USC 1051(b), Commodore Electronics Ltd. V. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503 (T.T.A.B. 1993), Northern Light Technology, Inc. v. Northern Lights Club, 2000 U.S. Dist. Lexis 4732 (D. Mass. March 31, 2000), Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936 (S.D.N.Y. March 30, 2000), 17 U.S.C. 1072, 15 USC 1051(d), 15 USC 1060, Clorox Co. v. Chemical Bank, 40 U.S.P.Q.2d 1098 (T.T.A.B. 1996) Anti-Cybersquatting Consumer Protection Act.
140. The Rockport Co., LLC v. Powell, Case No. D2000-64
a. Date: April 6, 2000
b. Panelist(s): Thomas D. Halket
c. Domain Name(s) at Issue: <1800rockport.com.
d. Response?: Yes
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b)
h. Uniform Rules cited: 15(a)
i. Panel Decisions cited: World Wrestling Federation Entertainment, Inc. v. Bosman, Case No. D99-0001
j. Judicial decisions and statutes cited: None
141. Educational Testing Service v. Netkorea Co., Case No. D2000-0087
a. Date: ?
b. Panelist(s): Robert A. Fashler
c. Domain Name(s) at Issue: <toeci.net>
d. Response?: Default, but response to Rule 12 inquiry
e. Principle(s): Allowed admission of supplemental materials beyond scope of Rule 12 request.
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(c)
h. Uniform Rules cited: 5(a), 12
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
142. Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., Case No. D2000-0090
a. Date: April 11, 2000
b. Panelist(s): M. Scott Donahey
c. Domain Name(s) at Issue: <ink-source.com>
d. Response?: Late response accepted
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a)
h. Uniform Rules cited: 2(a), 10(b), 10(c), 14(a), 15(a)
i. Panel Decisions cited: Talk City, Mondich and American Vintage Wine Biscuits v. Big Daddy's Antiques, ICANN Case No. D2000-0024. The Channel Tunnel Group Ltd. v. Powell, ICANN Case No. D2000-0038. Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003. Cellular One Group v. Brien, ICANN Case No. D2000-0028
j. Judicial decisions and statutes cited: None.
143. Array Printers AB v. Nordell, Case No. D2000-0092
a. Date: April 10, 2000
b. Panelist(s): Jonas Gulliksson
c. Domain Name(s) at Issue: <tonerjet.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: None
h. Uniform Rules cited: 4(a), 4(b), 15(a)
i. Panel Decisions cited: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001.
j. Judicial decisions and statutes cited: None
144. Royal Crown Company, Inc. v. Bishop Marketing, Case No. D2000-0094
a. Date: April 10, 2000
b. Panelist(s): Jordan S. Weintein
c. Domain Name(s) at Issue: <diet-rite.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(b)
h. Uniform Rules cited: 3(b)
i. Panel Decisions cited: World Wrestling Federation Entertainment, Inc. v. Michael Bossman, Dispute No. D99-0001; Robert Ellenbogen v. Mike Pearson, Dispute No. D2000-0001.
j. Judicial decisions and statutes cited: None
145. Eauto, L.L.C. v. Eauto Parts
a. Date: April 9, 2000
b. Panelist(s): David H. Bernstein
c. Domain Name(s) at Issue: <eautoparts.com>
d. Response?: No
e. Principle(s): Failed to establish absence of legitimate interest in Respondent.
f. Result: Decision for Respondent
g. Policy cited: 4(a)
h. Uniform Rules cited: None.
i. Panel Decisions cited: Talk City, Inc. v. Robertson, Case No. D2000-0009, EAuto, L.L.C. v. Triple S. Auto Parts, Case No. D2000-0047.
j. Judicial decisions and statutes cited: None.
146. Nokia Corp. v. Nokiagirls.com a.k.a. IBCC, Case No. D2000-0102
a. Date: April 18, 2000
b. Panelist(s): Geert Glas
c. Domain Name(s) at Issue: <nokiagirls.com>
d. Response?: No
e. Principle(s):
f. Result: Name cancellation
g. Policy cited: 4(i)
h. Uniform Rules cited: 4(a), 4(c), 15(a)
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
147. EAuto, L.L.C. v. Net Me Up, Case No. D2000-0104
a. Date: April 13, 2000
b. Panelist(s): David H. Bernstein
c. Domain Name(s) at Issue: <eatuomtoive.com>
d. Response?: Yes
e. Principle(s): Ownership of a registration is not a prerequisite to filing an action for abusive domain name registration. Actual confusion not required for finding a mark sufficiently similar
f. Result: Decision for Respondent
g. Policy cited: 4(a)
h. Uniform Rules cited: None
i. Panel Decisions cited: EAuto, L.L.C. v. Triple S. Auto Parts d/b/a King Fu Yea Enterprises, Inc., Case No. D2000 - 004, EAuto, L.L.C. v. EAuto Parts, Case No. D2000 -0096
j. Judicial decisions and statutes cited: None
148. Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105
a. Date: April 13, 2000
b. Panelist(s): Frederick M. Abbot, David H. Bernstein, David Kelly
c. Domain Name(s) at Issue: <petwarehouse.com>
d. Response?: Yes
e. Principle(s): The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal.
f. Result: Decision for Respondent
g. Policy cited: 4(a), 4(b)
h. Uniform Rules cited: None
i. Panel Decisions cited: Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000).
j. Judicial decisions and statutes cited: 15 U.S.C. § 1125(d)1)(B)(i)(VII), Committee For Idaho’s High Dessert v. Yost, 92 F.3d 814(9th Cir. 1996), The Money Store v. Harriscorp Finance, Inc., 689 F.2d 666 (7th Cir. 1982), 15 U.S.C. § 1052(f), The New York State Society of Certified Public Accountants v. Eric Louis Assocs., Inc. No. 99 CIV. 3030(LBS), 1999 WL 1084220 at * 7 (S.D.N.Y. Dec. 2, 1999), Mil-Mar Shoe v. Shonac, 75 F. 3d 1153 (7th Cir. 1996), Warehouse Foods, Inc. v. Great Atlantic and Pacific Tea Co., 223. U.S.P.Q. 892 (N.D. Fla. 1984), Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763
149. 3636275 Canada, dba eResolution v. eResolution.com, Case No. D2000-0110
a. Date: April 10, 2000
b. Panelist(s): Hon. Sir Ian Barker QC
c. Domain Name(s) at Issue: <eresolution.com>
d. Response?: Yes
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(c), 4(k), 4(i), 5(b)
h. Uniform Rules cited: 15(a)
i. Panel Decisions cited: Telstra Corporation Ltd v Nuclear Marshmallows, Case No. D2000-0003, China Ocean Shipping (Group) Co. Ltd v Cao Shan Hui, Case No. D2000-0066, Bennett Coleman & Co. Ltd v Lalwani and Long Distance Telephone Company, WIPO Cases D2000-0014 and 0015, Educational Tertiary Service v TOEFL, WIPO Case D2000-0044
j. Judicial decisions and statutes cited: Panavision International LP v Toeppen, 141 F.3d 1315 (9th Circ. 1998).
150. Home Director, Inc. v. HomeDirector, Case No. D2000-0111
a. Date: April 11, 2000
b. Panelist(s): David H. Bernstein
c. Domain Name(s) at Issue: <homedirector.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(i)
h. Uniform Rules cited: 14(b)
i. Panel Decisions cited: Talk City, Inc. v. Robertson, Case No. D2000-0009.
j. Judicial decisions and statutes cited: 15 USC s. 43(d)(1)(B)(vi)-(viii)
151. Stralfors AB v. P D S AB, Case No. D2000-0112
a. Date: April 13, 2000
b. Panelist(s): Jonas Gulliksson
c. Domain Name(s) at Issue: <stralfors.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 2(a), 4(a), 4(b), 4(i)
h. Uniform Rules cited: 2(a), 15(a)
i. Panel Decisions cited: Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003.
j. Judicial decisions and statutes cited: None
152. The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., Case No. D2000-0113
a. Date: April 13, 2000
b. Panelist(s): Dennis A. Foster
c. Domain Name(s) at Issue: <stanleybostitch.com>, <stanley-bostitch.com>, <stanleybostitch.org>, stanley-bostitich.net>, stanley-bostitch.org>, stanleybostitch.net>, bostitch.net>, <bostitch.org>, <bostitchnails.com>, <bostitchtools.com>
d. Response?: Yes
e. Principle(s): “Moreover, even if Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names.”
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(i)
h. Uniform Rules cited: 15(b)
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
153. National Football League Properties, Inc. and Chargers Football Co. v. One Sex Entertainment Co., a/k/a chargergirls.net, Case No. D2000-0118
a. Date: April 17, 2000
b. Panelist(s): Frederick M. Abbott
c. Domain Name(s) at Issue: <chargergirls.com>, <chargergirls.net>
d. Response?: No
e. Principle(s): Cases consolidated for economic/administrative reasons. “If mere registration of the domain names were sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.”
f. Result: Name transfer
g. Policy cited: 4(a), 4(b)
h. Uniform Rules cited: 2(a), 3(c), 4(c), 5(d), 14(a)
i. Panel Decisions cited: Educational Testing Service v. TOEFL, Case No. D2000-0044; Adobe systems Inc. v. Domain OZ, Case No. D2000-0057.
j. Judicial decisions and statutes cited: 15 USC s.1065, 15 USC s.1125, 15 USC s.1057, Avery Dennison v. Sumpton, 1999 US App. Lexis 19954 (9th Cir. 1999).
154. EAuto, Inc., v. Available-Domain-Names.com, d/b/a Intellectual-Assets.com, Inc., Case No. D2000-0120
a. Date: April 13, 2000
b. Panelist(s): David H. Bernstein
c. Domain Name(s) at Issue: <e-auto-parts.com>
d. Response?: No, not according to form
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a)
h. Uniform Rules cited: 14(b)
i. Panel Decisions cited: EAuto, Inc. v. EAuto Parts, Inc., Case No. D2000-0121; Talk City, Inc. v. Robertson, Case No. D2000-0009; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No D2000-0047; EAuto, Inc. v. Net Me Up, Case No. D2000-0104; Gen. Mach. Prods. Co. v. Prime Domains, Forum File FA0001000092531.
j. Judicial decisions and statutes cited: None
155. EAuto, Inc. v. E Auto Parts, Inc., Case No. D2000-0121
a. Date: April 13, 2000
b. Panelist(s): David H. Bernstein
c. Domain Name(s) at Issue:<eautoinc.com>
d. Response?: Yes
e. Principle(s): Cites previous holdings of same panel--”as this panel previously held in . . .” with specific reference to this mark.
f. Result: Decision for Respondent
g. Policy cited: 4(a)
h. Uniform Rules cited: None.
i. Panel Decisions cited: Talk City, Inc. v. Robertson, Case No. D2000-0009; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No. D2000-0047; EAuto, L.L.C. v. EAuto Parts, Case No. D2000-0096.
j. Judicial decisions and statutes cited: Continental Airlines, Inc. v. United Air Lines, Inc., 53 U.S.P.Q.2d 1385 (T.T.A.B. 1999)
156. SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, Case No. D2000-0131
a. Date: April 13, 2000
b. Panelist(s): David Perkins
c. Domain Name(s) at Issue: <seek-america.com>
d. Response?: No
e. Principle(s): “In the absence of any information as to the businesses or activities of the Respondents given in the Complaint, the Panel itself has generated this information from accessing on April 7, 2000 the website of Solo Signs at http://www.solosigns.com. The Panel has taken this step pursuant to the Rules para. 10(b).” “Bad faith on the part of the Respondents is to be inferred from using a hyphen as a device to obtain what is to all intents and purposes a domain name which is identical to the Claimant's service mark and earlier registered domain name.”
f. Result: Name transfer
g. Policy cited: 4(a), 4(c)
h. Uniform Rules cited: 10(b)
i. Panel Decisions cited: D2000-0014, D2000-0015, D2000-0050, D2000-0003
j. Judicial decisions and statutes cited: None
157. Pharmacia &Upjohn Co. v. Moreonline
a. Date: April 19, 2000
b. Panelist(s): Frederick M. Abbott
c. Domain Name(s) at Issue: <rogaine.net>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b)
h. Uniform Rules cited: 2(a)
i. Panel Decisions cited: Educational Testing Service v. TOEFL, Case No. D2000-0044
j. Judicial decisions and statutes cited: 15 USCS s1057(b), Avery Dennison v. Sumpton, 1999 US App. Lexis 19954 (9th Cir. 1999), 15 USCS s.1057(c)
158. A.P. Moller v. Web Society, Case No. D2000-0135
a. Date: April 15, 2000
b. Panelist(s): Alan L. Limbury
c. Domain Name(s) at Issue: <maersksealad.com>, <maersk-sealand.com>
d. Response?: Yes
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(c), 4(i)
h. Uniform Rules cited: None
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
159. Expedia, Inc. v. European Travel Network, Case No. D2000-0137
a. Date: April 18, 2000
b. Panelist(s): Tom Arnold
c. Domain Name(s) at Issue: <xpediatravel.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(c)
h. Uniform Rules cited: None
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
160. Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, Case No. D2000-0138
a. Date: April 19, 2000
b. Panelist(s): David H. Bernstein
c. Domain Name(s) at Issue: <quixtar-sign-up.com>
d. Response?: No
e. Principle(s): Dismissed claim agains Smithberger because panel lacked jurisdiction (Smithberger not personal registrant of domain name), but “[t]his dismissal has no practical effect, though, because the party that is the registrant of this domain . . . is properly before this panel, and thus this Panel is empowered to order any appropriate relief as permitted by the Policy.”
f. Result: Name transfer
g. Policy cited: 4(a)
h. Uniform Rules cited: None
i. Panel Decisions cited: Eauto, LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Enteres., Inc., D2000-0047; Talk City, Inc. v. Robertson, D2000-0009
j. Judicial decisions and statutes cited: None
161. InfoSpace.com, Inc. v. Ofer, Case No. D2000-0075
a. Date: April 27, 2000
b. Panelist(s): Mark V. B. Partridge
c. Domain Name(s) at Issue: <info-space.com>
d. Response?: Yes, but inadequate
e. Principle(s): Late response accepted, but deemed substantively inadequate due to lack of certification to be “to the best of Respondent’s knowledge, complete and accurate.” Panel invoked Rule 12 to allow Respondent additional time to provide evidence; however, Respondent failed to provide the required materials.
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(i),
h. Uniform Rules cited: 5(b), 10(a), 12, 15(b)
i. Panel Decisions cited: Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003; Talk City, Inc. v. Robertson, D2000-0009;
j. Judicial decisions and statutes cited: None
162. Motorola, Inc. v. NewGateInternet, Inc., Case No. D2000-0079
a. Date: April 14, 2000 (dissent filed April 20, 2000)
b. Panelist(s): Richard Hill, Clark W. Lackert, Paul Michael DeCicco (authored dissent)
c. Domain Name(s) at Issue: <talkabout.com>
d. Response?: Yes
e. Principle(s): Majority rules that seller’s use of domain name has no relevance to current users rights in domain name. Dicta: use of a mark as a domain name goes beyond reseller’s rights. Dissent argues that Complainant failed to meet burden of proof.
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(c)
h. Uniform Rules cited: 15(a)
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: Panavision Int’l, L.P. v. Toeppen, 141 F3d 1316 (9th Cir. 1998).
163. Avnet, Inc. v. AV-Network, Inc., Case No. D2000-0097
a. Date: April 25, 2000
b. Panelist(s): M. Scott Donahey
c. Domain Name(s) at Issue: <avnet.org>
d. Response?: Yes
e. Principle(s): Dicta: unlikely a commercial entity would be sought under .org domain.
f. Result: Decision for Respondent
g. Policy cited: 4(a), 4(c)
h. Uniform Rules cited: 15(a)
i. Panel Decisions cited: Shelly Harrison v. Coopers Consulting, Inc., AF-0121; Draw-Tite, Inc. v. Pittsburgh Spring, Inc., D2000-0017
j. Judicial decisions and statutes cited:
164. High-Class Distributions S.r.l. v. Online Entertainment Services, Case No. D2000-0100
a. Date: May 4, 2000
b. Panelist(s): David Perkins
c. Domain Name(s) at Issue: <highclass.com>
d. Response?: Yes
e. Principle(s):
f. Result: Decision for Respondent
g. Policy cited: 4(a), 4(b), 4(i)
h. Uniform Rules cited: 2(a)
i. Panel Decisions cited: Stella D’oro Biscuit, D2000-0012; Nabisco Brands, D2000-0032; American Vintage Wine Biscuit Inc., D2000-0004; World Wrestling Federation Entertainment, Inc. v. Bosman, D99-0001; Ellenbogen v. Pearson, D2000-0001
j. Judicial decisions and statutes cited: Panavision v. Toeppen, 141 F.3d 1316 (9th Cir. 1998)
165. Nike Inc. v. Granger and Associates, Case No. D2000-0108
a. Date: ?
b. Panelist(s): Clive Elliott, Richard Page, William Cornish
c. Domain Name(s) at Issue: <niketown.com>
d. Response?: Yes
e. Principle(s): Contract dispute--lack of evidence about who should register domain name leads panel to conclude domain name was not part of contract and Respondent’s registration is, therefore, in bad faith.
f. Result: Name transfer
g. Policy cited: 4(a)
h. Uniform Rules cited: 2(a), 4, 15
i. Panel Decisions cited: Adaptive Molecular Technologies, Inc. v. Woodward & Thornton, d/b/a Machines & More, D2000-0006 (distinguished from current case).
j. Judicial decisions and statutes cited: None
166. Edgar Rice Burroughs, Inc. v. Adtel Communications, Case No. D2000-0115
a. Date: April 21, 2000
b. Panelist(s): Andrew P. Bridges
c. Domain Name(s) at Issue: <tarzanonline.com>, <tarzanoline.net>, <tarzanonline.org>
d. Response?: Yes, but not formally sufficient and late
e. Principle(s): “In cases of default, a Complainant’s papers will be held to an exacting standard.”
f. Result: Name transfer
g. Policy cited: 4(a), 4(b)
h. Uniform Rules cited: 1, 2(a), 5, 5(b), 14(a), 14(b), 15(a)
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
167. Serta, Inc. v. Maximum Investment Corp., Case No. D2000-0123
a. Date: April 18, 2000
b. Panelist(s): David M. Kelly
c. Domain Name(s) at Issue: <buyserta.com>, <buyaserta.com>, <buyperfectsleper.com>, <buyaperfectsleeper.com>, <buysertaperfectsleeper.com>
d. Response?: Yes
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(b), 4(c)
h. Uniform Rules cited: None
i. Panel Decisions cited: World Wrestling Federation Entertainment, Inc. v. Bosman, D99-0001
j. Judicial decisions and statutes cited: Panavision International, L.P. v. Toeppen, et al., 131 F.3d 1316 (9th Cir. 1998).
168. The Wiggles Touring Pty. Ltd. v. Thompson Media Pty. Ltd., Case No. D2000-0124
a. Date: April 15, 2000
b. Panelist(s): Philip N. Argy
c. Domain Name(s) at Issue: <thewiggles.com>, <henrytheoctopus.com>
d. Response?: No
e. Principle(s): “With slight misgivings, the Panel decides for the purposes of paragraphs 2(f) and (g) of the Rules that the Respondent and its Administrative Contact received actual notice of the Complaint . . .”
f. Result: Name transfer
g. Policy cited: 3(c), 4(a), 4(b), 8
h. Uniform Rules cited: 2(a), 2(f), 2(g), 3(b)(vii), 4(e), 10
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
169. Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127
a. Date: April 22, 2000
b. Panelist(s): Frederick M. Abbott
c. Domain Name(s) at Issue: <efitnesswarehouse.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b)
h. Uniform Rules cited: 2(a), 14(a), 14(b),
i. Panel Decisions cited: Educational Testing Service v. TOEFL, D2000-0044; Pet Warehouse v. Pets.Com, Inc., D2000-0105;
j. Judicial decisions and statutes cited: Avery Dennison v. Sumpton, 1999 U.S. App. Lexis 19954 (9th Cir. 1999); Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999); Sporty’s Farm v. Sportsman’s Market, 202 F.3d 489 (2d Cir. 2000); G. Heileman Brewing v. Anheuser-Busch, 873 F.2d 985 (7th Cir. 1989); Henri’s Food Products Co., Inc. v. Tasty Snacks, Inc., 817 F.2d 1303 (7th Cir. 1987).
170. NFL Properties, Inc. et al. v. Rahe, D2000-0128
a. Date: Richard W. Page
b. Panelist(s): April 26, 2000
c. Domain Name(s) at Issue: <arizonacardinals.com>, <arizona-cardinals.com>, <arizona-cardinals.net>, <greenbaypackers.com>, <greenbay-packers.com>, <greenbay-packers.net>, <jacksonvillejaguars.com>, <kansascitychiefs.com>, <kansascity-chiefs.com>, <kansascitychiefs.org>, <philadelphiaeagles.com>, <philadelphia-eagles.com>, <philadelphiaeagles.net>
d. Response?: Yes
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(i)
h. Uniform Rules cited: 15
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
171. Gateway, Inc. v. Bellgr, Inc., Case No. D2000-0129
a. Date: April 28, 2000
b. Panelist(s): William L. Mathis
c. Domain Name(s) at Issue: <gateway-computer.com>
d. Response?: Yes
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(c)
h. Uniform Rules cited: None
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
172. Moana Pacific Fisheries Ltd. v. Turner New Zealand, Case No. D2000-0139
a. Date: April 26, 2000
b. Panelist(s): David Perkins
c. Domain Name(s) at Issue: <moanapacific.com>
d. Response?: Yes, but late and informal
e. Principle(s): Respondent’s agreement to transfer name constitutes admission of “bad faith.”
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(c)
h. Uniform Rules cited: 2(a)
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
173. RAIMAT, S.A. v. Antonio Casals, Case No. D2000-0143
a. Date: April 24, 2000
b. Panelist(s): Roberto A. Bianchi
c. Domain Name(s) at Issue: <raimat.com>
d. Response?: Yes
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a)(i), 4(b), 4(b)(i), 4(b)(ii), 4(b)(iii), 4(c), 4(i)
h. Uniform Rules cited: 5(b)(i), 15
i. Panel Decisions cited: Robert Ellenbogen v. Mike Pearson, Case No. D2000-0001
j. Judicial decisions and statutes cited: Yes
174. Siba AB v. Hellerstad, Case No. D2000-0146
a. Date: April 27, 2000
b. Panelist(s): Jonas Gulliksson
c. Domain Name(s) at Issue: <siba.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(i)
h. Uniform Rules cited: 15(a)
i. Panel Decisions cited: Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003;
j. Judicial decisions and statutes cited: None
175. NFL Properties, Inc. et al. v. BBC AB, Case No. D2000-0147
a. Date: April 22, 2000
b. Panelist(s): Richard W. Page
c. Domain Name(s) at Issue: <carolinapanthers.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(i)
h. Uniform Rules cited: 15
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
176. CCA Industries, Inc. v. Dailey, Case No. D2000-0148
a. Date: April 26, 2000
b. Panelist(s): Clive D. Thorne
c. Domain Name(s) at Issue: <bikinizone.com>
d. Response?: Yes, but late (Respondent tried to relinquish name)
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(i)
h. Uniform Rules cited: None
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: Section 22 US Trade Mark Act
177. Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150
a. Date: May 2, 2000
b. Panelist(s): Ian Barker
c. Domain Name(s) at Issue: <walmartcanada.com>
d. Response?: Yes
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(c), 4(i)
h. Uniform Rules cited: 5(b), 12, 15(a)
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: British Telecommunciations Plc and Others v. One in a Million Ltd. and Others, 1 WLR 903 (1999); Panavision International LP v. Toeppen, 141 F.3d 1315 (9th Cir. 1998).
178. Arla, ekonomisk forening v. P D S and Lennartsson, Case No. D2000-0151
a. Date: April 28, 2000
b. Panelist(s): Jonas Gulliksson
c. Domain Name(s) at Issue: <arla.com>
d. Response?: No
e. Principle(s): Complaint not sufficient against Lennartsson, so that action is dismissed.
f. Result: Name transfer
g. Policy cited: 4(a), 4(b)
h. Uniform Rules cited: 1, 2(a), 3(b)(ix)(3), 4(i), 15(a)
i. Panel Decisions cited: Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003
j. Judicial decisions and statutes cited: Swedish Match AB, et al v. Lennartsson, Control Alt Delete Stockholm AB, and PDS [no citation provided] (Eastern Dist. VA);
179. Union des Associations Europeennes de Football v. Alliance International Media, Case No. D2000-0153
a. Date: April 25, 2000
b. Panelist(s): Jonas Gulliksson
c. Domain Name(s) at Issue: <uefachampionsleague.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(i)
h. Uniform Rules cited: 2(a), 3(b)(viii), 15(a)
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
180. The Board of Regents of the University of Nebraska v. Saedlo, Case No. D2000-0154
a. Date: April 20, 2000
b. Panelist(s): Jeffrey M. Samuels
c. Domain Name(s) at Issue: <universityofnebraska.com>
d. Response?: No
e. Principle(s):
f. Result: Name transfer
g. Policy cited: 4(a), 4(b), 4(c)
h. Uniform Rules cited: None
i. Panel Decisions cited: Ellenbogen v. Pearson, D00-0001
j. Judicial decisions and statutes cited: Intermatic Inc v. Toeppen, 947 F. Supp. 1127 (ND Ill. 1996); Panavision International v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).
181. TRW Inc. v. Autoscan Inc., Case No. D2000-0156
a. Date: April 24, 2000
b. Panelist(s): Frederick M. Abbott
c. Domain Name(s) at Issue: <trw.net>
d. Response?: No
e. Principle(s): Constructive notice imputed--“there is a substantial likelihood that Respondent would have been aware of Complainant’s trademark when it registered its domain name.”
f. Result: Name transfer
g. Policy cited: 4(a), 4(b)
h. Uniform Rules cited: 2(a), 14(a), 14(b)
i. Panel Decisions cited: None
j. Judicial decisions and statutes cited: None
182. Sanrio Co., Ltd. And Sanrio, Inc. v. DLI, Case No. D2000-0159
a. Date: April 20, 2000
b. Panelist(s): Jeffrey M. Samuels
c. Domain Name(s) at Issue: <pochacco.com>
d. Response?: Yes, Respondent agreed to relinquish rights to domain name
e. Principle(s): “[I]t has been held that inactivity or non-use of a domain name by a Respondent amounts to the domain name being used in ‘bad faith