Trademark Holder of “Ovation Hair” Registered In 2012 Wins UDRP On Ovation.com

[lennco]

Trademark Holder of “Ovation Hair” Registered In 2012 Wins UDRP On Ovation.com Registered in 2008
2013 November 19
by Michael Berkens

The owner of a trademark on Ovation Hair, DC Labs Inc. was awarded the generic domain name Ovation.com by a one member panel although the term Ovation is a generic term and the trademark OVATION HAIR was not granted by the USPTO until 4 years after the domain name Ovation.com was acquired by the domain holder

Of course the trademark was for a broader term than the domain name itself.

Its a horrible decision in which the one one member panel of Eduardo Machado found a common law trademark to the term “Ovation” and seemed to put great weight on the fact that the domain holder owned a whopping 107 domain names.

Here are the relevant facts and findings:

Complainant DC Labs Inc. is engaged in producing, selling, and distributing hair care products.

Complainant has been in business since 2007 and operates the website at the ovationhair.com domain name.

Complainant owns several U.S. and international trademarks for its OVATION marks, including OVATION. Complainant provides evidence of its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,142,800 filed November 10, 2011, registered May 15, 2012).

Complainant uses the OVATION mark at its website to advertise its goods and to indicate to the public that the goods are provided by Complainant. As a consequence of Complainant’s prolific use of the mark, the OVATION name has attained considerable value and goodwill.

Respondent purchased the <ovation.com> domain name on December 24, 2008, and uses the resolving website to allow an Internet entity to operate a “parked domain monetization”. Read More....

Another domain holder gets completely Screwed

 

[SearchEngineZ]

If your domain is both a generic keyword and someone's brand (especially if they are a large business), then you need to make sure that no connection can be made with the brand.

That means:

- not using it to promote the brand's product
- not generating an income (even if you don't directly profit) based on your content being in the same field/topic as the brand

As an example, I have blackberry.info. If I parked it, ads for smartphones would probably be displayed. So I made a mini-site to protect it. Of you can just do something minimal like I have at virtual-server.net. It might only be 2 sentences of plain text - but that is a developed website!

If I did park my blackberry domain, I would probably lose it.

THE DECISION WAS BAD. The respondent had created a site initially, and did not profit from the parking. Not monitoring your site for 5 years or redeveloping it shouldn't be a crime, some people take their time. It is especially sad because the domain is probably worth high $xx,xxx or more.

But what does need to be done is for registrar parking pages to be opt in. Some innocent people could lose a domain that they had definite intentions to develop.

Hopefully one day, instead of targeting the domain holder, a company sues the registrar for damages. Many a class action funded by some wealthy domainers??

 

[Dave_Z]

- not using it to promote the brand's product
- not generating an income (even if you don't directly profit) based on your content being in the same field/topic as the brand

It seems that's what happened:

http://domains.adrforum.com/domains/decisions/1517659.htm

Respondent has since then used the disputed domain name to resolve to a website that is monetized by pay per click advertisements. The resolving page displays advertisements or links for competing hair care companies and products.

Hopefully one day, instead of targeting the domain holder, a company sues the registrar for damages. Many a class action funded by some wealthy domainers??

UBid sued Go Daddy and lost due to a technicality. The Oscars people are currently in a lawsuit against the registrar.

Even if some wealthy domainers pool their resources to sue a registrar for damages, they have to show how they were materially harmed. That's easier said than done.

 

[ecuadorbusiness]

Who the heck do this guys believe they are? What gives them the right to take something someone possessed before and give it to another guy with big pockets who recently claimed a TM for it?
This scares me.

 

[lennco]

Who the heck do this guys believe they are? What gives them the right to take something someone possessed before and give it to another guy with big pockets who recently claimed a TM for it?
This scares me.

It should scare all of us

 

[SearchEngineZ]

Even scarier, having a lawyer didn't help them.

 

[alien51]

I've read all the WIPO references used in this specific decision. And one thing i can say, is that these UDRP panelists are a complete bunch of lunatics.

The lack of an appeal process to seek a 2nd opinion from a possibly more reasonable human, makes this entire UDRP system one of the most fascist systems in this modern day era.

It is sad that while this kind of murder is being committed by these Nazis, those attending Domainer Conferences are more concerned about selling $990 per plate VIP dinners.

 

[ecuadorbusiness]

fascist

That is the grammatically, syntactically and semantically exact term to describe these honorable pharisees.

 

[VirtualT]

Hmmm

web.archive.org/web/20120511082132/http://www.ovation.com/

No sympathy

 

[Kate]

web.archive.org/web/20120511082132/http://www.ovation.com/

Classic.

 

[alien51]

Seriously, if somebody rented your house and used the place to sell drugs, should you be convicted as an accomplice?

In order to prove your association to the crime, it must be proven first that you have a motive to commit the crime. Like purposely obtaining the house knowing that such a crime will be committed.

It's the same logic here with third-party advertising. They should first prove that you regged the domain in bad faith, AND THEN pursued the "crime" of letting third-party advertisers show ads and make money from it illegally.

What they did here was the reverse. They saw that the ads being shown are "inappropriate", and THEREFORE, they concluded he regged the domain in bad faith.

 

[Kate]

Convicted as an accomplice, maybe not, but convicted for negligence yes. Naivety is not a legal excuse .
vanity.com was challenged in UDRP for the very same reason.

 

[alien51]

Naivety is not a legal excuse .

I'm not arguing about being naive about the rules.

I'm arguing that the rules itself, are screwed.

Again, how could you control what a third-party advertiser displays on your website

Someone has adsense on his website, then suddenly out of the blue his account gets banned because of some gambling content that was posted by some third party entity he has no control of "preventing".

I am not sure, whether that vanity.com incident you mentioned is something you agree with as justified.

 

[Dave_Z]

Again, how could you control what a third-party advertiser displays on your website

Don't some, if not all, parking page providers or so let users control the kind of ads to show? Of course, that means trying to keep an eye out for all possible trademark uses.

This kind of issue is, to a degree, scary. That's why we try to learn from it, then we do what we can.

 

[alien51]

Don't some, if not all, parking page providers or so let users control the kind of ads to show?

Yes, but mostly you can only set the "Category" of the ads. You cannot filter out ads from a competitor or a specific product.

This kind of issue is, to a degree, scary. That's why we try to learn from it, then we do what we can.

Yes, this is scary especially for domainers who own "high commercial value" domains.

Trademarks are intended for "use in commerce". And therefore, if someone else got a trademark for the domain you own, it severely curtails your own usage of your own domain in commerce. And the worst part, like in this case with Ovation, your attempt to use your own domain for commerce can be grounds for WIPO to steal the domain and hand it to the trademark owner.

It is difficult to run a legitimate business, when the rules itself are on shaky ground.

There seems to be a trend nowadays of end-users acquiring a trademark instead of buying the domain, then attempting to reverse hijack you. And the outrage is that the panelists seem to agree with that strategy.

 

[Bhavinj]

Hi,
Let me know if I have to start another thread.
But I have similar question related to such issue.
What if i register a new produce with the same name as Domain.
Still another company can snatch the domain on trademark issue ?