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Panelists for the World Intellectual Property Organization’s Domain Dispute Resolution Center in Geneva, Switzerland rejected two recent complaints by corporate entities, calling their transfer requests “reverse domain name hijacking.” On Oct. 5, a three-member panel denied a complaint by Boston-based Aspen Grove Inc. over the “aspengrove.com” domain, which has been held by a family in Utah since 1997 ( Aspen Grove, Inc. v. Aspen Grove, No. D2001-0798, WIPO). Aspen Grove was incorporated in 1999 and applied for a trademark for the name in the same year. The company had first approached the Utah family about acquiring the “aspengrove.com” domain in 1998, but the final offer of $1,000 was rejected. In June, Aspen Grove filed an arbitration action with the WIPO, contending that the family had no legitimate business purpose for the domain and its alleged offer to sell the domain for a six-figure sum was evidence of bad faith. The panel disagreed: “The rule advocated by Complainant — that maintenance of a domain name without construction of a commercial website is tantamount to bad faith — ignores the history of the Internet and the World Wide Web, is inconsistent with the Policy and Rules, and is generally poor public policy.” The offer to sell a domain, without more, is insufficient for a finding of bad faith, the panel said, pointing to N.C.P. Marketing Group v. Entredomains (WIPO Case No. D2000-0387, July 5, 2000). The panel also noted that the Utah family has consistently and actively used the domain for e-mail and other personal uses since 1997. Panelists called the complaint “utterly unfounded,” and said it placed an “unnecessary and significant burden” on the respondent. Panelists: Dennis A. Foster, G. Gervaise Davis III and Michael A. Albert. Counsel for Aspen Grove Inc.: James Newton of Whitman Breed Abbott & Morgan in Greenwich, Conn. Counsel for Aspen Grove (family): John L. Slafsky and Michael D. Pogue of Wilson Sonsini Goodrich & Rosati in Palo Alto, Calif. NESTL� On Oct. 12, a different WIPO panel made similar findings against Vevey, Switzerland-based Societe des Produits Nestl� S.A., which sought transfer of “maggi.com,” another personally held domain name ( Societe des Produits Nestl� S.A. v. Pro Fiducia Treuhand AG, No. D2001-0916, WIPO). Nestl� sought the domain for its Maggi Enterprises subsidiary, and complained that domain registrant Romeo Maggi, chairman of a Swiss-based respondent Pro Fiducia Treuhand AG, had no legitimate interest in the name and it was being used in bad faith because it infringed the “world famous” Maggi mark. Maggi countered that he intended to utilize the domain for his family and for a family foundation, and was working with web designers on development of the site. He asked the panel to find that Nestl� brought the complaint in bad faith. The three-member panel sided with Maggi. Panelists first rejected Nestl�’s contention that Maggi has no legitimate interest in the domain, pointing to prior decisions recognizing rights to personal names. The fact that Maggi initially registered the domain in his company’s name, rather than his own, does not alter that finding, the panelists said. The panelists also concluded that Nestl� acted in bad faith, saying the company failed to inform the panel of year-long negotiations with Maggi, or that Maggi might have a personal interest. “Had Mr. Maggi failed to defend his position, perhaps Complainant’s lack of candor might have resulted in a decision in its favor,” the panel stated. “Having instead been exposed, that lack of candor concerning material facts, tied with the lack of legal merit to Complainant’s position, leads us to the conclusion that this Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Panelists: Mark V.B. Partridge, Desmond James Ryan and M. Scott Donahey. INJURY LAWYER The Goldberg & Osborne law firm failed to persuade a WIPO panel to transfer the domain “theinjurylawyers.com,” which the firm complained is confusingly similar to its trademark for “The Injury Lawyers” ( Goldberg & Osborne v. Advisory Board Forum, No. D2001-0711, WIPO). The domain was registered on Oct. 31, 2000, by The Advisory Board Forum. Its president, Lee Abrahamson, is a consultant to the law firm of Abrahamson & Uiterwyk, according to the panel’s Oct. 4 decision. The panel found there is no likelihood of confusion because the Web site clearly provides the name of the Abrahamson law firm, and no evidence that it was registered to attract users seeking the Goldberg firm or capitalize on the Goldberg firm’s goodwill. The panel also found that registration of other legal-sounding domains by The Advisory Board Forum did not support Goldberg’s contention that respondent had no legitimate interest in “theinjurylawyers.com.” “The pattern demonstrates that Respondent has registered multiple domain names constituting descriptive/generic phrases regarding injury law and Florida law firms, not that Respondent has attempted to register third party trademarks,” the panel concluded. Panelists: Roderick M. Thompson, M. Scott Donahey and A. Michael Froomkin. INGRAM MICRO A single panelist ordered “ingrammicro.org” transferred to Ingram Micro Corp. on Oct. 10, noting that the same respondent was named by Pizza Hut in a similar case earlier ( Ingram Micro v. RJ Inc., NO. D2001-0948, WIPO). And, again, RJ Inc. and Rick Suarez of Honolulu failed to respond, according to arbitrator Charles E. Miller. Miller noted that Ingram Micro is the holder of various “Ingram Micro” marks. Suarez’s attempt to hide his identity behind a business name that is not registered, and his failure to use the domain in the two years since registration, is evidence he has no legitimate interests, Miller found. Passive holding of a domain amounts to bad faith in these circumstances, he concluded. PHILIPS Another single arbitrator found for and against Koninklijke Philips Electronics on Oct. 10, granting the Dutch company’s request to transfer rights to “myphillips.com” but denying the request for transfer of “myphilipslighting.com” ( Koninkllijke Philips Electronics N.V. v. Manageware, No. D2001-0796, WIPO). Philips brought the action against Manageware, a lighting engineering company, which registered both domains in April 2000. Manageware’s principal, Christopher Lynn, did not submit a formal response, but sent copies of emails written during the course of negotiations with Philips, arbitrator David Lametti wrote. Lametti found “myphillips.com” confusingly similar to the Philips mark, saying it was well established that arbitrators could ignore minor misspellings. He discounted Manageware’s use of the possessive “my.” But the arbitrator said Philips failed to offer sufficient evidence to allow him to make the same finding with respect to “myphilipslighting.” “While it is highly likely that KPEVN does sell lighting products under the PHILIPS mark — given the fact that it has launched this dispute — there is no evidence provided to say how important the sale of lighting products are to the PHILIPS mark, for how long such products have sold under the mark, how much investment has gone into that particular line of products, etc. This evidence is crucial to determining whether the average consumer would confuse the domain name with PHILIPS,” Lametti wrote. Lametti also found that Philips failed to support its bad faith contention. Manageware produced evidence that the sites were to be used to provide information to consumers, with links to manufacturers, and Philips failed to make even a prima facie case of non-legitimate interest, the arbitrator concluded.

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