MARCH IN IP HISTO®Y

THIS MONTH IN IP HISTO®Y
MARCH FOR MUSIC 
🎼🥁🎷🎺🎸🎹

MARCH HAS QUITE A BAND OF PATENTS FOR MUSICAL INSTRUMENTS
 A FEW HISTO®IC TRADEMA®KS 
®EGISTERED IN THE MONTH OF 
MA®CH:
Two of our favo®ite UDRP DOMAIN DISPUTE VICTORIES 
from the month of MA®CH:  

MOUNTAINVIEWCOUNTRYCLUB.COM (decided by NAF March 28, 2005)
https://www.adrforum.com/DomainDecisions/416462.htm
TB Proprietary Corp. c/o Toll Brothers, Inc. v Village at La Quinta Realtors

Not only did we successfully defend our client's ownership of this valuable domain name from an extremely large and well-known real estate developer, we we also able to obtain a rare finding of Reverse Domain Name Hijacking and bad faith on the part of the Complainant in instituting the proceeding.
 
"The Panel has determined that by bringing the Complaint in bad faith, Complainant has engaged in reverse domain name hijacking. See UDRP Rule 1 (“Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”) see also Deutsche Welle v. DiamondWare Ltd., D2000-1202 (WIPO Jan 2, 2001) (Complaint considered to be brought in bad faith where Complainant must have known that Respondent was not a cybersquatter prior to the filing of the Complaint); see also Curb King Borderline Edging Inc. v. Edgetec Int’l Pty., FA 105892 (Nat. Arb. Forum May 10, 2002) (finding that, when Complainant is aware of facts that bear a direct relation to the dispute and fails to include them in its Complaint, Complainant’s omission constitutes an abuse of the administrative proceeding, warranting a finding of Reverse Domain Name Hijacking); see also G.A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001) (finding that Complainant, by omitting several relevant facts that would have undermined its position, had brought the Complaint in bad faith, which constituted an abuse of the administrative proceeding). 
 ...
Accordingly, it is Ordered that the < mountainviewcountryclub.com > domain name remain as presently registered, with the right of the Respondent to do what it deems fit with the domain name.
                                            ---------------------------------------------------

SEKA.COM (decided by NAF - March 30, 2005)
https://www.adrforum.com/DomainDecisions/420676.htm
Dorothiea H. Patton a.k.a. SEKA v. Psites, Inc. c/o Mark Anthony

On behalf of the Complainant, SEKA, an actress and director of motion pictures who has used the stage name and designation SEKA in conjunction with the offering and sale of a variety of products, including video cassettes, DVDs, streaming video subscriptions, books, magazines, photographs, apparel, linens, and keychains, as well as services including fan club memberships, public appearances, fantasy entertainment and other services, we successfully recovered the domain name SEKA.com which was being used for a (competitive) adult-entertainment website. 
Therein, the Panel found:    

Complainant holds at least two trademark registrations with the United States Patent and Trademark Office for the SEKA mark (Reg. No. 1,331,757 issued April 23, 1985 and Reg. No. 1,331,622 issued April 23, 1985). 

Since 1977, Complainant has been featured in more than 175 adult films and has appeared as a guest on numerous television shows, including The Oprah Winfrey Show, Larry King Live, and Saturday Night Live. Complainant is known worldwide as “SEKA, The Platinum Princess of Porn,” and has been featured in adult-oriented magazines, such as Playbody, Penthouse, Club, Hustler, and others. In addition, Complainant has been featured in several mainstream magazines and newspapers, including Vanity Fair, The Wall Street Journal, and USA Today. Furthermore, Complainant has been the host of a nationally syndicated radio show from WLUP in Chicago and is the subject of a Swedish documentary film entitled Desperately Seeking SEKA. 

Respondent registered the <seka.com> domain name on September 9, 1998. Respondent is using the disputed domain name to resolve to an adult-oriented website, which offers Complainant’s photographs and motion pictures for sale and invites visitors to sign-up for membership subscriptions to view more photographs and streaming video of Complainant as well as the websites of other performers for one price. Furthermore, the website falsely claims to be the “Seka Porn Star Official Site” and “the Official Seka’s Fan Site” and prominently displays Complainant’s SEKA mark.
Registration and Use in Bad Faith
 
Respondent is using the <seka.com> domain name in an attempt to intentionally attract Internet users interested in locating Complainant’s products and services to Respondent’s commercial website. Internet users searching for Complainant’s authorized products and services are likely to type in Complainant’s SEKA mark followed by the common gTLD “.com.” Furthermore, Internet users are likely to become confused as to the sponsorship of Respondent’s website, which purports to be Complainant’s official fan website. Additionally, Respondent profits from its infringing use of Complainant’s mark in the domain name by selling membership subscriptions to its website as well as products and services that compete with Complainant. The Panel concludes under these circumstances that Respondent’s attempts to divert Internet users for commercial gain by attracting them to Respondent’s website through a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).
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