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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Travel Insured International, Inc. v. International Medical Group, Inc.

Claim No. FA0508000545210 (Nat. Arb. Forum, Oct. 11, 2005)

In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ( "UDRP"), the Panel denied Complainant Travel Insured International's request that its competitor, Respondent I Travel Insured Inc., be compelled to stop using its domain name.  Respondent held a legitimate interest in this domain mandating denial of such relief because it both owned the trademark registration for I Travel Insured, and was operating a business under that name.  By a two to one margin, the Panel also determined that Complainant had engaged in reverse domain name hijacking by pursuing this proceeding.  The Panel reached this result despite the fact that Complainant held a trademark registration in Travel Insured International, operated a web site at the domain and had commenced a proceeding to cancel Respondent's trademark registration on the grounds that it was confusingly similar to its own.

Complainant and Respondent are competitors in the travel insurance industry.  Complainant Travel Insured International offers its products for sale at a web site it operates at travel, which domain it registered in 1997.  Complainant also owns the federal trademark in the mark "Travel Insured International," which mark it first used in commerce in 1994.

Respondent I Travel Insured Inc. offers its products for sale at a web site it operates at, which domain it first registered in 2000.  Respondent owns a federal trademark registration in the mark "I Travel Insured," which mark it first used in commerce in 2000.  According to Respondent, it has done business under the name I Travel Insured continuously since its inception in 2000.  Prior to 2004, Respondent's name was Global Marketing Connections Inc. 

A complainant cannot prevail in a UDRP proceeding if the respondent has a "legitimate interest" in the domain name in dispute.  Under the UDRP, a respondent can have such a legitimate interest if, among other things:

(a) Before any notice to Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (b) Respondents (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.

Finding Respondent had a "legitimate interest" in the domain, the Panel denied Complainant's application for relief.  Such "legitimate interest" existed because I Travel Insured Inc. had a registered trademark in the I Travel Insured mark, which mark it used in its domain name and in the operation of a legitimate business.

In reaching this result, the Panel rejected Complainant's argument that Respondent's use was not legitimate because Respondent's mark infringed, and was confusingly similar to, Complainant's Travel Insured International mark.  Complainant had in fact commenced a proceeding to cancel I Travel Insured's trademark registration.  The existence of such a proceeding was "irrelevant" to the Panel, which reconfirmed that the UDRP was not meant to be used to resolve "complex issues of trademark priority, trademark interference or unfair competition."  Said the Panel: 

The domain name is the subject of a US federal trademark registration, owned by the Respondent, whose mark exists independently from Complainant's mark.  The fact that the Complainant is contesting the validity of the Respondent's mark is irrelevant in these proceedings. 

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As pointed out above, the scope of proceedings under the Policy is narrow, and this is not the venue in which to resolve complex issues of trademark priority, trademark interference, or unfair competition.  Such matters must be left to national courts.

A majority of the Panel found that Complainant, by pursuing a UDRP proceeding notwithstanding its knowledge that Respondent held a registered trademark in the domain name at issue, had engaged in Reverse Domain Name Hijacking.  Reverse Domain Name Hijacking is defined in the UDRP as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."  To establish such "bad faith," a respondent must show "the launching of an unjustifiable Complaint with malice aforethought" or "the pursuit of a Complaint after the Complainant knew it would be insupportable."  Smart Design LLC v. Carolyn Hughes, D2000 - 0993 (WIPO, Oct. 18, 2000).

The majority held such was the case here because Complainant filed, and pursued, this UDRP proceeding despite its knowledge of Respondent's trademark registration.  Said the Panel:

A majority of the Panel notes that Complainant clearly indicates in its Complaint that is was aware of Respondent's registered mark, which is identical to the contested domain name.  Thus, it should have been aware at the outset that its Complaint must fail. 

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A majority of the Panel holds that bringing to this venue matters which are clearly outside the narrow scope of the policy - in the face of clear knowledge that the Respondent has a registered trademark for the disputed domain name - and persisting in the action by filing an additional submission, constitutes an improper action, and harassment, which amount to Reverse Domain Name Hijacking.

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