Domain Spats & Disputes

The National Arbitration Forum ordered that 41 domains resembling weatherunderground.com and wunderground.com be transferred to The Weather Underground, Inc. The domains in dispute included watherunderground.com, weaherunderground.com, weahterunderground.com, weartherunderground.com, weatehrunderground.com, wunnderground.com, wundergtound.com, wundergroundr.com, wundertground.com, wunederground.com, qwunderground.com, swunderground.com, winderground.com, wumderground.com, wundeerground.com, wunderfround.com, udergroundweather.com, undegroundweather.com, undergoundweather.com, undergroudweather.com, undergroundwaether.com, and other similar domains.

The Respondent in the case was Navigation Catalyst Systems, Inc., which has a history of registering domains containing registered trademarks and brand names. NCS initially filed a response claiming that it was “not aware of complainant’s trademarks,” but this defense didn’t have legs.

The NAF panel found that all 3 elements of cybersquatting were present: The domain names were “confusingly similar” to the complainant’s trademark; the respondent did not have any “rights or legitimate interests” in the domains; and the respondent registered and used the domains “in bad faith.”

The Weather Underground, Inc., registered the trademarks back in 1999 and 2000, and NCS registered its look-alike domains between 2004 and 2008.

Read more at TraverseLegal.

Tucker Carlson, co-host of CNN’s Crossfire and anchor of of MSNBC’s Tucker and PBS’s Tucker Carlson: Unfiltered, went to battle with a company called Domain Privacy Ltd. over the domain tuckercarlson.com. Carlson filed a complaint with WIPO (World Intellectual Property Organization). The domain was registered in December 2003; the complain was filed in early 2008.

Under WIPO’s rules, the Complainant (in this case, Tucker Carlson) has to prove three elements:

1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3. The Disputed Domain Name has been registered and is being used in bad faith.

The UDRP (Uniform Domain Name Dispute Resolution Policy) normally does not cover the use of personal names, but “in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.”

The WIPO panel found that Tucker Carlson has a trademark interest in the name Tucker Carlson, and that the domain tuckercarlson.com is identical or confusingly similar to Tucker’s name. This established the first required element of the complaint.

The panel also found that Domain Privacy Ltd. had no rights or legitimate interest in the name — establishing the second element.

In order to prove the third and final element required for a UDRP complaint, Tucker had to prove “bad faith.” In order to prove bad faith, Tucker had to show one of the following four elements:

1. Circumstances indicating that the registrant has registered or the registrant has acquired the 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, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
2. The registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
3. The registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. By using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

The website associated with the domain showed that it was offered for sale for an amount significantly higher than the costs associated costs related to registration and maintenance. The panel found that this constituted bad faith.

The panel ordered that the domain tuckercarlson.com be transferred to Tucker Carlson.

Source