Domain Name Disputes Case Law. Domain Name Disputes. Internet Domain Name System (DNS) was designed for locating machines on the Internet by mapping between human-friendly mnemonic names and their underlying (IP) addresses. Even where trademarks are not registered the companies have been able to receive favourable awards by proving that they have obtained trademark rights in the names. Domain name dispute resolution providers have held that a person has common law rights in his/her name and have in a large number of cases ordered the transfer of domain.Till recently cybersquatters registered domain names that were similar to the names/trademarks of companies and names of well-known individuals.

Domain Name Disputes Case Law

Cap Gemini v. Manila Industries Inc., “Cap Gemini” - WIPO Domain Name Decision D2006-0027
Convergys Corporation v. Roshni Sohail - WIPO Domain Name Decision D2006-0043
CPP, Inc. v. Virtual Sky - WIPO Domain Name Decision D2006-0201
Deutsche Post AG v. NJDomains - WIPO Domain Name Decision D2006-0001
Diageo North America, Inc. dba The 7 Crown Distilling Company v. ZJ - WIPO Domain Name Decision D2006-0210
Rolls-Royce Motor Cars Limited v. Maria Stephen - WIPO Domain Name Decision D2006-0152
Tata Sons Limited v. tataconnect - WIPO Domain Name Decision D2006-0572
Tom Cruise v. Network Operations Center, Alberta Hot Rods - WIPO Domain Name Decision D2006-0560
Wal-Mart Stores, Inc. v. Kani - WIPO Domain Name Decision D2006-0032
Wal-Mart Stores, Inc. v. Kuchora, Kal - WIPO Domain Name Decision D2006-0033
Wal-Mart Stores, Inc. v. Terry Davies - WIPO Domain Name Decision D2006-0031

Yahoo! Inc. v. Akash Arora - Plaintiff seeking a decree of permanent injunction restraining defendants, their partners, servants and agents from operating any business and/or selling, offering for sale, advertising and in any manner dealing in any service or goods on the Internet or otherwise under the trademark/domain name 'Yahooindia.Com' 1999 Delhi High Court, India.

Manish Vij & others v. Indra Chugh & others - Plaintiffs instituted the suit for permanent injunction restraining the defendants from operating any business, making, selling/transferring, offering for sale, advertising and in any other manner dealing with the goods or services using domain name 'www.kabadibazaar.com' or any other combination thereof, as a website on the internet, identical with or descriptively similar to plaintiffs trade name / domain name 'www.kabadibazaar.com'.2002 Delhi High Court, India.

Online Indian Captial Co. Pvt. v. Dimensions Corporate - Suit was filed seeking to restrain the defendant permanently from using the website under the name of WWW.MUTUALFUNDSINDIA.COM or in any other identical name, inter alia, alleging that plaintiff No. 2 acquired the proprietary rights of WWW.MUTUALFUNDSINDIA.COM and assigned it in favour of plaintiff No. 1 Company, Website WWW.MUTUALFUNDSINDIA.COM was created on 5th May, 1999. It is alleged that this website provides most comprehensive data on mutual funds. 2000 Delhi High Court, India.

The travel and tourism company Cox & Kings registered the brand name and the ad-line of the company as domain names. Cox & Kings was organising group package holidays under the brand Duniya Dekho and introduced the base line, 'Add More To Your World,' and featured it as an integral part of most of their advertisements. The Company had applied for the registration of a trademark with the words Duniya Dekho, Cox and Kings.
The domain names duniyadekho.com and addmoretoyourworld.com were registered by the Respondent who offered to sell the domain names for valuable consideration.
The Complainant, Cox & Kings filed a case before the World Intellectual Property Organisation (WIPO) and sought transfer of the above domain names.

Bad faith is clear from the Respondent's reply to the Complainant Counsel's demand by letter asking that the Respondent either cancel the ownership of the domain name at issue or agree to assign it to the Complainant. The Respondent replied by e-mail as follows: “I do understand that your client is big corporate and you could win this case at ICANN. It would cost you 1600
United States dollars for an ICANN case. I am willing to co-operate and transfer this domain to you. Can you at least compensate us for our efforts and our domain reg cost etc?”
The Panel noted and agreed with the Complainant’s contentions that the Respondent has registered and is using the domain name at issue to benefit from ‘typosquatting’, through which the Respondent unfairly attracts and benefits from misdirected traffic to the Respondent’s website from Internet users seeking information on the Complainant and its products and services.
Respondent has a history of searching lists of domain names that are about to expire, and then buys those domains that the Respondent suspects will generate significant Internet traffic, based on the similarity of the domain names of legitimate sites. The Respondent registered the domain name at issue, namely <convergs.com>, a common misspelling of the Complainant’s name
“Convergys” one day after it appeared on an expired domains’ list.Decision: "In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name
<convergs.com> be transferred to the Complainant." - Ian Blackshaw, Sole Panelist. Dated: February 17, 2006.

Cap Gemini v. Manila Industries Inc., “Cap Gemini” - WIPO Domain Name Decision D2006-0027

This case refers to a large number of WIPO cases:

“The essence of the Internet is its world wide access” and that therefore “the propriety of a domain name registration may be questioned by comparing it to a trade mark registered in any country” (Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Confusing similarity depends on the similarity of sound, appearance and idea suggested by the trademark and the domain name (Sharman License Holdings, Limited v. Icedlt.com, WIPO Case No. D2004-0713).
“Typosquatting”, which arises where the domain name is a slight alphabetical variation of a registered trademark, the panels have found the circumstances of “typosquatting” to constitute confusing similarity (Deutsche Bank AG v. New York TV Tickets Inc., WIPO Case No. D2001-1314 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201).
The practice of “typosquatting”, that is, registering a domain name with a slight alphabetical variation from a registered trademark, has been found to constitute confusing similarity. See Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299 (finding that the misspelling of the complainant’s name by omission of a letter amounted to confusing similarity).
Misspelling of a complainant’s name and trademark such as the omission of a letter amounts to confusing similarity (Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299). In the Pfizer case, the domain name <pfzer.com> was found to be identical to Pfizer Inc.’s trademarks, except for the omission of an “i”.
The fact that the CAP GEMINI trademarks are registered in France, in the European Community and in the United States of America enables the Complainant to question the propriety of the <capgemni.com> domain name which was registered in the United States of America.
A bona fide offering of goods or services requires, at a minimum, that the Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No D2001-0903).
The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No D2001-0903).
where there is no evidence that the Complainant authorized the Respondent to use the Complainant’s trademark, these circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent (Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v.
Jongchan Kim, WIPO Case No. D2003-0400). even where a user who arrives at the site may promptly conclude that it is not what he or she was originally looking for, a respondent has already succeeded in its purpose of using the trademark to attract the user with a view to commercial gain.
(National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a
chargergirls.net, WIPO Case No. D2000-0118).
The “.com” suffix denoting second-level domain status in the Respondent’s domain name does not affect the fact that the name is identical to the Complainant’s mark pursuant to Policy, paragraph 4(a)(i). See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Indeed, there is a confusing similarity between the <capgemni.com> domain name and the CAP GEMINI trademarks visually, phonetically and conceptually.
Decision: In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <capgemni.com>, be transferred to the Complainant. - Jonas Gulliksson, Sole Panelist. Dated: May 16, 2006.

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