Recent Case Notes & Commentary

Commonly Known - Evidence Needed

Bad faith - domain names in common words are legitimate.


Miami Style, Inc. v. Lusette Lopez

Claim Number: FA1408001573611


Disputed Domain Name: <shopmiamistyle.com>


Facts:

‘The disputed domain name was created on April 08, 2002. [The] Complainant owns the MIAMI STYLE mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,382,793 registered August 13, 2013, filed September 19, 2012).’


The Complainant contended that it ‘has used the mark since 1997 in furtherance of its retail efforts relating to apparel and beachwear, and ‘has owned and operated the domain name <miamistyle.com> since April 2002’, using the ‘website to offer on-line retail services to customers’ for the last several years. It accused the Respondent of ‘using the disputed domain name to sell unauthorised goods under the Complainant’s trademark’.


The Respondent argued in turn that its registration of the domain name predates the Complainant’s claimed rights in the mark, that the alleged mark ‘is comprised of a descriptive phrase’, that the mark is weak because it is ‘primarily geographically descriptive of the origin of the Complainant’s goods’, and that it is is ‘used by numerous third parties. Moreover, the Respondent is commonly known by the disputed domain name, as evinced by its active Florida LLC: ‘Shop Miami Style LLC’.


Why is this case interesting?

This is a good example of a case where a Respondent is able to successfully argue against a bad faith finding on the basis that a domain name consists of common or descriptive terms.


Identical and/or Confusingly Similar:

The Panel found that the disputed domain name was confusingly similar to the Complainant’s mark. Adding the generic term ‘shop’, affixing a gTLD and eliminating the spacing in the mark was not sufficient to differentiate the domain name from the mark.


Rights or Legitimate Interests:

The Panel found that the Respondent could establish rights or legitimate interests in the disputed domain name.


The fact that the Respondent had an LLC filing with the Florida Department of State – ‘Shop Miami Style LLC’ – created a ‘sufficient nexus’ between Respondent and the terms of the disputed domain name so as to establish that the Respondent was commonly known by the domain name pursuant to the Policy ¶4(c)(ii). Next, the Panel found that the Respondent had established rights in the domain name by operating an online shop, so as to warrant the protections afforded under Policy ¶¶4(c)(i) and (iii). Thirdly, in relation to the Respondent’s contention that because the ‘domain name at issue is comprised of descriptive terms, Complainant does not have exclusive right in the terms on the Internet’, the Panel stated that ‘that the Respondent [could] establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii), invoking Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”)


Registration and Use in Bad Faith

The Panel found that Complainant failed to meet the burden of proof for bad faith registration and use under Policy ¶4(a)(iii), invoking Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) which found that ‘general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith’.


Further, the Panel stated that ‘a respondent is free to register a domain name consisting of common terms and the domain name currently in dispute contains such common term.’ In light of this, and presumably because the Panel thought that the domain name in question consists of such common terms, it found that the Respondent did not register or use the domain name in bad faith.


Outcome

Having to make out the three necessary elements under the Policy, the Complainant’s request for transfer of the domain name was denied.