Frank Schilling North Sound Names has lost its first Uniform Rapid Suspension (URS) on the domain name eos.blackfriday.
North Sound Names registered almost 208,000 domain names Uniregistry new gTLD’s and marks the first time North Sound has lost a domain name in a URS or a UDRP.
Due to the ruling the domain registration will be suspended for the during of the registration.
The term EOS was in the trademark Clearinghouse.
The Complaint was bought by the camera maker Canon.
Another URS was filed against North Sound Names the other day on the domain name nos.link.
The Complainant in that case is not yet listed but is likely to be the maker of the NOS energy drink.
Here is what the examiner said:
The registered domain name(s) is/are identical or confusingly similar to a word mark.
The Examiner considers that the reproduction of the trademark EOS, by the disputed domain name eos.blackfriday, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark .
Specially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements.
Consequently, consumers will assume that the owner of the disputed domain name is the camera manufacturer.
n consequence, as per this reasoning, the Examiner finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark
Registrant has no legitimate right or interest to the domain name.
Complainant has successfully shown evidence to substantiate its trademark rights, such as, several trademark registrations EOS in the United States of America, the United Kingdom, France, Germany, Italy, Spain, Canada, Australia, New Zealand, China, among others, to identify goods included in international class 9. Moreover, as established in Paragraph 8.3 of the URS Procedure, Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith in violation of the URS.
Consequently, the Examiner finds that, in the present case, Respondent has no legitimate right or interest to the disputed domain name, thus, the requirement set forth in Paragraph 1.2.6.2., of the URS Procedure is duly complied with.
Registering a domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, is indicative of bad faith registration and use.
Furthermore, in accordance with Paragraph 5.9.2, of the URS Procedure, a domain name redirecting to a website displaying pay-per-click links does not in and of itself constitute bad faith under the URS.
Blackfriday is the day after Thanksgiving Day in the United States in which stores and manufacturers offer promotional sales.
Hence, it is understood as an expression referring to promotions.
Taking that into account, eos.blackfriday would attract consumers interested in EOS goods.
Moreover, Complainant registered its trademark EOS with the Trademark Clearinghouse.
Hence, Respondent was aware of the trademark EOS registered eos.blackfriday.
Thus, the Examiner concludes that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business.
Furthermore, Respondent’s use of the disputed domain name does not fall into the category of bona fide offering of goods or services, Respondent is not commonly known by the disputed domain name.
As per this reasoning, the Examiner finds that, in the present case, the disputed domain name was registered and is being used in bad faith.
I fully agree with the panel.
@alfred — it is unrealistic to fully agree with the panel’s decision, just like that. Rather, tell us what part of the decision you agree with (the most).
I disagree with the panel. Canon cannot play a monopoly on the EOS term, an acronym that could mean or represent any thing, product or company.
For instance, “EOS” is an acronym for “Evolution of Smooth”, a company that produces rejuvenating skin care and lip care products. They also own the @EOS twitter handle. (I haven’t checked the USPTO TESS database, but I’m certain they have registered marks too).
A Google search for “EOS” on my phone displays results for only “Evolution of Smooth”; not one single result for Canon EOS.
Why don’t Canon go after the skincare company for using the EOS mark to identify their brand and products? They won’t, because they will fail woefully.
Vague / Shady Panelists’ Decision
That is a shady and vague decision.
Did you know, a simple Google search for “EOS Coupons”, displayed results for “Evolution of Smooth” (EOS) skincare product offerings? (even when it’s Blackfriday). No Canon products, offerings or promotions was displayed whatsoever.
Frank has a case here. It would be stupid not to contest the Panels’ vague decision on the domain. Moreover, as the registry operator — he can also list the domain at a premium price of $50k – $100k, after the suspension period. It’s still a win for him.
Shame on Canon and the Panelists for such monopoly.
That is exactly right domain guy had to step into the ring and provide 40 different separate documentations to the USPTO board to show applicant was not the single user of the term. The I had to step it up again and show other users of the term pervious users by more than 5 decades. 50 years. That isn’t enough then I had to show I used the term and go back and forth with the applicant. This is what trademark law is about money at 500 and hour, and specialized knowledge. you speak to know one you have to know all the bullshit rules federal rules of procedure. Trademark law is archaic, decades behind the internet. And then I had to start pointing out the flaws in the USPTO examining process. This is why when you get an idiot like Trump and his high paid legal advisors you straighten them out in public and cost them tens of thousands of dollars as you are prepared to slice an ip attorney below the belt….and believe me they are not ready for a snakebite. They never heard of you and you have no ip license hanging so they do not know how to handle you. 150k ip education is useless! this is how you take a trademark domain and make it useless to the owner…and why because of junk rulings by UDRP panels..you take them right out of the equation.
UDRP should be prerequisite to URS, before affording
an expedited injunction mechanism in one filing.
When mark holders level a URS, absent of milestones like winning
dispute resolution in advance, they may very well be an unrelated trade.
wrong decision. eos is an acronym; how can the panelist state otherwise ? show off panelist or something ?
Steve
Keep in mind that the TM groups want the URS extended to .com’s and other legacy extensions
Perhaps Canon is hoping the day arrives they can URS eos.com. Either they’ve never UDRP’d it, or they lost the UDRP, don’t even have to look it up. Why is URS the readily available instrument to raid all the other extensions when the party never even established rights to the .com?