Domain Name Disputes Case Law
Domain Name Disputes
Gemini v. Manila Industries Inc., Cap Gemini - WIPO Domain Name Decision
Corporation v. Roshni Sohail - WIPO Domain Name Decision D2006-0043
CPP, Inc. v. Virtual Sky - WIPO Domain Name Dispute 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
Dispute 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 Dispute
Wal-Mart Stores, Inc. v. Kani - WIPO Domain Name Decision D2006-0032
Wal-Mart Stores, Inc. v. Kuchora, Kal - WIPO Domain Name Dispute 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. Domain Name Dispute Decision
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.
Domain Name Dispute Decision
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. Domain Name Dispute Decision
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.
Corporation v. Roshni Sohail - WIPO Domain Name Decision D2006-0043 Domain Name
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
The Panel noted and agreed with the Complainants 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 Respondents 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 Complainants 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.
Gemini v. Manila Industries Inc., Cap Gemini - WIPO Domain Name Decision
D2006-0027 Domain Name Dispute Decision
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 complainants name by omission of a letter
amounted to confusing similarity).
Misspelling of a complainants 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 registrants 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
where there is no evidence that the Complainant authorized the Respondent to use the
Complainants 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 Respondents
domain name does not affect the fact that the name is identical to the Complainants
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.