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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...

mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.

WIPO Case No. D2007-1141 (November 30, 2007)

In this domain name dispute decided in accordance with the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel holds that respondent Navigation Catalyst Systems Inc. (“NCS”) violated the UDRP by registering 35 domain names that contained complainant’s “myxer tones” mark, or variations thereof, which NCS used as pay-per-click landing pages, featuring advertisements of complainant’s competitors.  In reaching this result, the Panel held that respondent’s use of another’s mark in the domain names of pay-per-click landing pages was not a legitimate use of the domain sufficient to defeat complainant’s claim under the UDRP.  The Panel further held that respondent had acted with the requisite bad faith because it had used complainant’s mark to attract users to  advertisements for its competitors.  This finding was supported by the fact that respondent continued to register offending domain names even after the commencement of the instant UDRP proceeding.  Finally, the Panel rejected respondent’s contention that it did not act in bad faith because it was unaware of complainant’s mark.  The Panel held it was reasonable to conclude that respondent was in fact aware of complainant’s prior use of its mark at the time it registered the domains in question because a trademark and even an internet search would have revealed both a pending trademark application for complainant’s mark, and its use thereof.

Complainant owns the federally registered trademark ‘myxer tones,’ and has a pending application for the mark ‘myxer.’  Complainant uses these marks to market and advertise its service, which enables users to mix recorded music into ring tones for use on cell phones.  It markets its services on the web at its domains, myxer.com, myxertones.com and myxertags.com.

Shortly after complainant commenced its use of these marks, and continuing up to and after the commencement of this UDRP proceeding, respondent registered a series of domain names that contained complainant’s mark or slight variants thereof.  Thirteen of the disputed domains contained minor misspellings of complainant’s marks.  An additional three of the disputed domains added or removed the letter s to complainant’s mark.  Most of the remainder contained complainant’s mark, or slight variations thereof, and additional generic words, such a ‘my’ or ‘ring.’

Respondent used these domains to operate pay-per-click landing sites, on which were contained advertisements for complainant’s competitors.

Claiming respondent violated the Uniform Domain Name Dispute resolution policy, complainant commenced this proceeding, seeking to compel respondent to transfer the disputed domains to it.  Finding respondent violated the UDRP, the Panel directed the transfer of the disputed domain names at issue.

To prevail in a UDRP proceeding the complainant must make a three part showing:

(i) “Each domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain names; and
(iii) The Domain names have been registered and are being used in bad faith.”

The Panel found that complainant had established each of the elements necessary to prevail on its UDRP claim. 

Complainant possessed a valid trademark in the ‘myxer tones’ mark.  Respondent, in turn, had registered domains that were confusingly similar to complainant’s mark.  The ‘typo domains,’ which contained slight misspellings of complainant’s mark, were held to be confusingly similar to complainant’s mark.  So too were the domains that merely added or subtracted an s from complainant’s domain.  And finally, domains which combined complainant’s mark, or slight variations thereof, with generic terms, were similarly held to be confusingly similar.  Said the Panel:

Fifteen of the Disputed domain names … are slight misspellings of either Myxer or myxer tones.  These minor variations do not prevent these domain names from being confusingly similar to complainant’s marks. … There of the Disputed domain names … either add or remove the single letter s to the marks.  The addition or deletion of the letter s does not prevent a finding of confusing similarity. ;…  Thirteen of [the disputed domains] are similar to the domain names noted above in that they either fully incorporate Myxer or Myxer tones or some slight variation on those marks [and add] … addition[al] … terms (such as ‘the’ ‘my’ codes and ‘ring’) that in this context are generic for the services at issue.  The addition of these generic terms does not sufficiently distinguish the resulting domain names from complainant’s marks.

The second element was satisfied because respondent had no legitimate interest in the domains at issue.  The Panel rested this holding on the fact that respondent’s business was not operating under, or known by the domain name (myxer), and respondent was not making a non-commercial or fair use thereof. 

In reaching this result, the Panel rejected respondent’s argument that its use of the domains as pay-per-click landing pages that directed users to advertisements related to the subject thereof was a permissible use of the mark under the UDRP in connection with a bona fide offering of goods and services.  While this may be true if the domain was a generic term, the argument failed when the domain incorporated and relied on the trademark of another.  Said the Panel:

Respondent rests its claim of a legitimate interest on a defense of ‘sponsored link’ pay-per-click landing pages. … If the links on a given landing page are truly based on the generic value of the domain name, such use may be bona fide because there are no trademark rights implicated by the landing page. … If, though, the links are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting.  … That is the situation here.  Respondent’s domain names appear to be used for their trademark value and not for any descriptive value in the names.  Indeed, ‘myxer’ is not a dictionary word. … Proof that the real value in these domain names is based on the trademark value of ‘myxer’ is that 33 of the 35 disputed names at issue resolve to landing pages … that include links to services that are closely related to or directly competitive with Complainant’s services.

Finally, the Panel found that respondent had registered the domain names in bad faith, the final prerequisite necessary to establish a claim under the UDRP.  The Panel rested this holding on the fact that the landing pages that appeared when a user entered the disputed domains featured advertisements for complainant’s competitors, and thus were “designed to attract internet users who are looking for complainant’s myxer tones services, appear to cause confusion with complainant’s marks and websites, appear to disrupt complainant’s business by diverting consumers away from complainant’s websites, and do all of these things for commercial gain because respondent profits from the PPC revenue generated by these websites.”  This finding of bad faith was supported by the fact that respondent continued to register disputed domains even after this UDRP proceeding was commenced.

In reaching this result, the Panel rejected respondent’s claim that it was unaware of complainant’s use of the marks at the time it registered the disputed domains.  The Panel held that respondent’s failure to conduct adequate searches of use being made of the mark prior to such registration, which would have revealed complainant’s prior use thereof, compelled it to reject respondent’s claim of lack of knowledge.  A respondent cannot turn a blind eye to prior use, and then seek to rely on such ignorance to protect it from a finding of bad faith.  Said the Panel:

As for respondent’s claim that it was not specifically familiar with Complainant’s trademark, even if the Panel would credit that assertion, that assertion is not enough to avoid a finding of bad faith registration.  Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for uses as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights.  In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.  … [R]egistrants that run PPC landing pages businesses cannot be willfully blind to whether the domain names they register are similar to trademarks and are pulling up PPC advertising related to those trademark rights. … Applying these principles to the facts of this case, the Panel concludes that it is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the PPC landing page business, must have been aware of the relevant trademark.

Accordingly, the Panel resolved this domain name dispute by directing transfer of the disputed domains to the complainant.   

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