The owner of a trademark on Ovation Hair, DC Labs Inc. was awarded the generic domain name Ovation.com by a one member panel although the term Ovation is a generic term and the trademark OVATION HAIR was not granted by the USPTO until 4 years after the domain name Ovation.com was acquired by the domain holder
Of course the trademark was for a broader term than the domain name itself.
Its a horrible decision in which the one one member panel of Eduardo Machado found a common law trademark to the term “Ovation” and seemed to put great weight on the fact that the domain holder owned a whopping 107 domain names.
Here are the relevant facts and findings:
Complainant DC Labs Inc. is engaged in producing, selling, and distributing hair care products.
Complainant has been in business since 2007 and operates the website at the ovationhair.com domain name.
Complainant owns several U.S. and international trademarks for its OVATION marks, including OVATION. Complainant provides evidence of its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,142,800 filed November 10, 2011, registered May 15, 2012).
Complainant uses the OVATION mark at its website to advertise its goods and to indicate to the public that the goods are provided by Complainant. As a consequence of Complainant’s prolific use of the mark, the OVATION name has attained considerable value and goodwill.
Respondent purchased the <ovation.com> domain name on December 24, 2008, and uses the resolving website to allow an Internet entity to operate a “parked domain monetization”.
Respondent has yet to establish a legitimate website at the domain name, yet Respondent wallpapers the website with the registered OVATION marks.
The monetized links allow a visitor to click on the headings at the top of the site, which results in advertisements appearing as additional pages, none of which have any affiliation with Complainant’s business. Respondent’s activities unlawfully encroach upon Complainant’s rights by generating advertising revenue off of the goodwill created by Complainant’s marks. Respondent intentionally attracts Internet traffic to the website by creating a likelihood of confusion with Complainant’s mark, in order to increase its revenue.
Further, Respondent had full knowledge of Complainant’s rights in the OVATION mark, and deliberately chose the mark in order to deceive members of the relevant public
Complainant is a United States corporation that is engaged in the production, sale, and distribution of hair care products and has been in business in that field since 2007
Complainant is the owner of the OVATION HAIR mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,142,800 filed November 10, 2011, registered on May 15, 2012).
According to Complainant’s information it commenced using the OVATION marks in commerce in the United States at least as early as September 2007 in connection with the sale and offer for sale of hair care products.
Complainant is the owner the domain name ovationhair.com
Complainant has established common law trademark rights in OVATION HAIR.
Respondent registered the disputed domain name on December 24, 2008.
On the time this decision was issued the disputed domain name was resolving to a web site that disclosed Complainant’s mark.
The site is monetized by pay per click advertisements. The resolving page displays advertisements or links for other hair care companies and products.
Complainant is the owner of the OVATION HAIR mark through its trademark registrations with the USPTO (Reg. No. 4,142,800 filed November 10, 2011 registered on May 15, 2012).
Complainant further claims to own several other well-known U.S. and International trademarks, such as OVATION CELL THERARY and OVATION (“the OVATION marks”).
Previous panels have found that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i) if it can establish its rights in the mark through common law rights.
Complainant claims it has been using the OVATION marks in connection with the sale and offer for sale of hair care products since 2007.
Complainant further claims to have exerted significant effort and resources to advertise and promote its goods and Complainant’s advertising expenditures have totaled well over 100 million dollars
The Panel accepts those evidence and the conclusions drawn from it and considers that previous panels have found that complainants can establish common law trademark rights through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark.
The Panel finds that on this basis Complainant has established common law rights in the OVATION marks including the OVATION HAIR mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent is using Complainant’s trademark.
(b) Respondent has not monitored the disputed domain name since it was taken down in 2009
(c) Respondent has since then used the disputed domain name to resolve to a website that is monetized by pay per click advertisements. The resolving page displays advertisements or links for competing hair care companies and products.
(d) Complainant has no affiliation with Respondent. Because Complainant claims that Respondent was not authorized to register a domain name containing Complainant’s registered mark, and there is no evidence that suggests Respondent is commonly known by the disputed domain name, the Panel finds Respondent is not commonly known by the domain name at issue under Policy ¶ 4(a)(i).
(e) Further, the advertisements or links displayed in the disputed domain name lead consumers to competing hair care companies and products. The Panel finds that Respondent’s use of the domain to provide advertisements and links to site competing for Complainant’s business does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)
Given that Respondent owns numerous domain names it is unlikely that it is not aware of how to control the content of the disputed domain name.
The Panel finds that despite Respondent’s claims that it at one time used the disputed domain name in connection with its business, the disputed domain name has been used to park a website containing monetized links.
The Panel notes that Respondent has not offered any proof in the form of evidence of his legitimate intent to use the disputed domain name.
All of these matters go to make out the prima facie case against Respondent.
Complainant has thus made out the second of the three elements that it must establish.
Although not a conclusive argument, the fact that Respondent owns 107 domain names, according to a reverse WHOIS lookup, might be considered a pattern of Respondent’s history of purchasing domain names and not using them for legitimate business purposes.
However, despite the fact that the Panel has visited some of these domain names and verified that many are currently being used to park websites containing monetized links, it is not well clear whether Respondent’s indeed using the appointed domain names for illegitimate business purposes.
Nevertheless, the Panel finds that Respondent has not monitored the disputed domain name since 2009 and has allowed it to be “parked”.
The Panel also finds that the provision in the registration agreement between Respondent and the domain name’s registrar indicates that the registrant is indeed responsible to determine whether the domain name registration or use infringes on another’s rights, and the registrant is responsible for maintaining the website and the content within it. Previous panels have established that maintaining a parked webpage at a disputed domain name is sufficient to make a finding of the respondent’s bad faith registration and use, regardless of the entity that initiates the parked content
Therefore, in view of Respondent’s negligence in monitoring the disputed domain name as well as the above evidences, the Panel finds that Complainant has made out the third of the three elements that it must establish.
Apart from the crap decision, the important question now is, “is the Respondent going to issue Court proceedings to block implementation of the UDRP decision” ?. It is important that Respondents fight to death so that this doesnt become the norm. It surely would be beneficial for some of the larger more financially stable domainers to fund such proceedings for their benefit as well.
Agreed, an absolutely horrible decision. The domain owner lost a very valuable domain to a company that didn’t have a trademark when the domain owner acquired the domains because of links that were showing up on a Register.com default landing page.
In reply to Nat Cohen. Which now begs the question “can the domain name owner sue Register.com for the domain name loss, for their showing such default adverts ? ” .
The lesson I get is that we need to be more vigilant, once again a very Valuable domain is lost thanks to a parked page (the Kiss of death)
Nat: ‘Predating’ doesn’t seem to be a valid defense any longer….is it?
the fact is that he did infringe on the TM…
https://web.archive.org/web/20120511082132/http://www.ovation.com/
I assume that the Register.com terms of service give them permission to display advertising links on their default lander.
Registrars who engage in this practice – GoDaddy is another one – aren’t acting with the best interest of their customers in mind. They are profiting from their customers domains while exposing their customers to legal risk.
The problem is less with the registrars, though, than with Panelists who find proof of bad faith on the part of the domain owner in links on a default landing page published by the registrar.
The UDRP is badly broken and is being turned into a tool to steal valuable domains.
Ovation.com was first registered in 1994. Purchased in 2008 by respondent.
Awful decision. Legalized theft.
Monumentally bad decision. However, the domain owner has absolutely been negligent, to his peril.
*sigh*
Why did this guy, the respondent, go with a one-man panel. That is a retarded decision, IMO. Almost as retarded as the panelist who wrote this atrocity of a decision.
As for Ovation Hair, they’re thieves who were given sanction to steal.
Ovation guitars are famous worldwide. Ovation hair is Mickey Mouse. If I was Ovation guitars and knew about this decision I’d be on the warpath.
The lesson I get is that we need to be more vigilant, once again a very Valuable domain is lost thanks to a parked page (the Kiss of death)
Nat: ‘Predating’ doesn’t seem to be a valid defense any longer….is it?
the fact is that he did infringe on the TM…
web.archive . org/web/20120511082132/http://www.ovation.com/
Something tells me this one was going to court anyway.
getting a tm for ovation for hair products – but still not performing proper due diligence on their desired domain(s) at the same time add quite a bit of question
@Danny Pryor Not really good to call anyone retarded. As for choosing a single panelist, (a) some people cannot afford to pay for the 3 member panel (b) a singel panelist does not always mean you lose, it is a lottery as to who is appointed.
What I would like to see is someone like “thedomains.com” establish a database of all Court decisions that are made before ,during or after UDRP proceedings in all Countries so can establish best jurisdiction for protection. I know for example of a good decision in Germany that would help anyone appealing a UDRP decision or defending their domain . If could up a database then would assist everyone and every decision in “our” favour will make next one easier etc. United we stand divided we fall, as they say !.
so johnuk –
if some cannot afford a 3-member panel then they should not own the domain in the first place.
you got to protect your rights – owning decent .com’s is no longer a fairy tail – and coming up with $1500 for a 3-member panel is paltry relative to protecting the domain under ACPA (presumably).
but as mentioned I think this one is going to court regardless.
@brianwick, so only rich people can ever be rich, is that it? if you don’t have money to protect your interests you are better be dead…
one member panel is loosely coupled with good or bad decisions.
the issues imho here are:
1) respondent used the domain in bad faith at some point
2) the panel seemed far fetch to consider that owning several domains and putting them to park is not a fair use, when several decisions have made a point that it is.
“so only rich people can ever be rich, ”
no
free market capitalism 101.
The panelist’s claim that “Respondent intentionally attracts Internet traffic to the website by creating a likelihood of confusion with Complainant’s mark, in order to increase its revenue” is patently false as the Respondent was not receiving a penny from the registrar’s PPC links.
Does anyone know who is the best person to write to complain about this nonsense? The UDRP rules should be changed – at the very least to allow an appeal, without the domain owner having to file an expensive lawsuit – when obviously bad decisions like this one made.
Jon Schultz –
NiceCar.com
@Jon Schultz I dont think that you would get anywhere with a complaint to ICANN . I spoke with WIPO not long ago and even they said that complaints were being filed that were not suited to UDRP. The best answer to a threat of UDRP , issued UDRP or a wrong decision is to spend $200 odd dollars and file a Court proceeding .
@domo sapiens –
the Archive.org screenshot you reference is a Register.com default landing page. It says “Coming soon to Register.com” and is copyrighted by Register.com.
It looks like the domain owner had nothing to do with that landing page, as it argues as stated in the UDRP decision.
Nat,
I see…
playing the devil’s advocate isn’t just very easy to say:
whose domain is it? anyway…
Wasn’t there another very similar case in re: Godaddy (default parked page)
I know you know better and have studied the animal 😉
I read your “must read” piece at domainarts .com…
-Robert
It’s great reading the decision but it’d best to hear from you, Mike, regarding what exactly was wrong in the Respondent’s defense. Was it their choice of legal team? Was it their apparent lack of knowledge that even parking is a valid business use of domains? John Berryhill has used this approach, I believe, with success. Unfortunately, when a matter is approached in an overly confident manner instead of a salvo of strong defense/counter-attack points, such jaw-dropping decisions are made.
In the long run, investors need to develop their most precious domain assets. And by that, I don’t mean silly ‘mini sites’ and ‘coming soon’ pages. If you spent five figures or more to acquire a domain, invest in hiring developers for the job of creating a viable business – even if you plan, long term, to sell the domain.
johnuk@ Hi, Share it, why not ? All knowledge is good.
“I know for example of a good decision in Germany that would help anyone appealing a UDRP decision or defending their domain”
Seems like a good idea to have a insurance policy in the making ?
This has to be one of the sickest UDRP filings, I have ever seen, there is no amount of words to describe how wrong this is.
The UDRP panel members should be given certain training as what a undirected parked page is, and the owner could be developing the site, and haircare is not broad enough to cover this generic mark. The number of domains one person owns should make no bearing on a single case, if no past harm is done. This is pretty serious guys, I don’t mind sending a couple hundred bucks to an attorney, to have this reversed in court, this is so wrong. Speechless…
Does anyone have contact with the Respondent ?. I see from the whois at this time he is based in VA so he should have no problem issuing proceedings in Virginia Courts who have a lot of experience in domain matters, inc the well known barcelona.com case Maybe someone can assist him if he needs ?
Here is the Panelist’s CV and shows who he would side with ;
http://www.wipo.int/amc/en/domains/panel/profiles/machado-eduardo.pdf
I don’t think that many of the Panelists would stand up to scrutiny under the
“appearance of bias” class.
I think thedomains.com has a good chance of getting “the.com”. 😉
Acro
So the pleadings of UDRP cases are not public.
So I don’t know what the Domain holder’s case looked like what they argued and what they did not.
Obviously its crazy to allow any UDRP to go to a one member panel, but that’s not news for for anyone whose had read the blog for a while.
I believe there’s a trend now in these decisions, one panelist, or not. There seems to be an emphasis on what a Respondent does, such as parking, ownership of more than one name etc, instead of the merits of the complainants case, who after all bears the awesome burden of prove; the standard has been watered down to less than preponderance even. It’s become a kangaroo standard!
Therefore, it’s an inside job. 1 kangaroo panelist + 2 kangaroo panelists = 3 kangaroo panelists, where only 2 is needed.
Kangaroo crossed with Equus asinus. Shameful.
If you don’t have the $1,500 for a three member panel your not going to have enough to buy insurance
UDR
panelist 101 –
I have bills to pay – respondents to not initiate action that allows me to pay my bills – complainants do
done.
Ryan Jenkins wrote:
> I don’t mind sending a couple hundred bucks to an
> attorney, to have this reversed in court, this is so wrong.
This sounds like an idea in the making, but on a more ‘global’ scale.
Perhaps a fund should be set up that wealthier domaineers can contribute to, to help fund and defend outrageous decisions like this one. It would be good for the entire community… a collective form of insurance, you might say.
If this is allowed to continue because most domain owners don’t have the needed resources to go to court, it will just keep on continuing, without any past precedent of reversals…
This is extract from a German Judgement;
QUOTE;
“This is especially true if one considers that the defendant [read “Complainant”] was always aware that pursuant to German administration of justice there is in principle no claim for transfer with regard to a domain, and that it thus extensively exposed the problems of compatibility of this administration of law with the extrajudicial dispute settlement proceedings ” END QUOTE
Here is another piece from that Judgement;
QUOTE;
Furthermore, the defendant [read “complainant] is not entitled to a brand name (Section 5 Para. 1 MarkenG) pursuant to German law.
For legal protection of an original trademark to arise, it needs to be used in commercial transactions. This requires, regardless of whether it is a domestic trademark or a foreign trademark, that it is used domestically, suggesting that a start is made regarding long-lasting commercial activity; it is not relevant in this context that the trademark already developed a certain recognition in trade. (BGH GRUR 2008, 1099 –afilias.de, Rn 16).
Thus far, the defendant has not used the trademark “@@@@” in this manner in Germany. Registering the brand name “@@@” in various countries does not represent a tradename use of the trademark “@@@@” in Germany.
END QUOTE
So hopefully you can see from the above quotes that Germany may be a good jurisdiction.It will not protect those few who register well known well used trade marks
but it will protect from those who misuse the UDRP to take others property.
Decision is published now:
http://domains.adrforum.com/domains/decisions/1517659.htm
This is another piece from the Judgment of the German Court regarding domains;
” trading with domain names is in principle permissible and also
constitutionally protected by Art. 12 and 14 GG (BGH GRUR 2009, 685 –ahd.de, Rn 45).”
Note “constitutionally protected” !!