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Domain Name Transfer Ordered Despite Business Agreement - Update - World Trademark Review

Domain Name Transfer Ordered Despite Business Agreement - Update - World Trademark Review

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Published by Eli Federman
http://www.crn.com.au/Tools/Print.aspx?CIID=235927
1SALEADAY (U.S.) AWARDED TRADEMARK OWNERSHIP OF AUSTRALIAN COPYCAT-WEBSITE AFTER INTERNATIONAL EXTORTION ATTEMPT

After months of false and misleading product advertisements, cybersquatting and extortionate threats, Australian daily deal domain names are transferred to rightful owners in America.

(Brooklyn, NY – October 20, 2010) World Intellectual Property Organization (WIPO) [1] has ordered the disputed Australian domain names (onesaleaday.com.au and1saleaday.com.au) transferred to Benyamin Federman, CEO of 1SaleADay.com (U.S.) from the previous illegitimate owners. The WIPO panel found that the Australian domain names were identical and confusingly similar to the 1SaleADay (U.S.) trademark. [2]

On numerous occasions the Australian website listed fraudulent items and sold items that were provided by 1SaleADay (U.S.) but were never paid. At least one Australian news agencies featured one of the ridiculous and misleading items that was never actually possible to deliver: the Apple I-Pad® prior to the Australian release date. [3]

WIPO panelist, Andrew F. Christie, published the decision in favor of Federman on September 27, 2010. Christie stated that the previous owners “registered the disputed domain names so as to benefit, without first obtaining consent, from the goodwill and reputation of [1SaleADay's (U.S.)] trademark – which... constitutes registration [and use] of the disputed domain names in bad faith.”

In addition to acting in bad faith, the previous owners ignored a cease and desist letter and then attempted to extort $50,000 from 1SaleADay (U.S.). Christie found “evidence that the [previous owners] offered to transfer the disputed domain names… to Benyamin Federman or [his] competitors for $50,000.”

“1SaleADay (U.S.) sincerely apologizes to any unwitting customers that assumed affiliation between the Australian and 1SaleADay (U.S.) companies. While 1SaleADay (U.S.) cannot be responsible for any harm done while the Australian domain names were high-jacked, 1SaleADay (U.S.) will do everything possible to compensate misled customers whose orders were not filled. 1SaleADay (U.S.) kindly requests that any customers that have issues with their orders to please contact Support@1SaleADay.com,” says Eli Federman, Vice President of 1SaleADay (U.S.).

Eli Federman, Vice President of 1SaleADay (U.S.) summarizes what happened: “We contacted the operators of the AU website to demand that they stop using the 1SALEADAY marks. When their unethical practices continued, our demand was followed up with a formal cease and desist letter. For a period of several months we tried to come to an amicable resolution with the AU operators of our website. However, they refused to turn over the Domain Names and despite these requests they continued demanding $50,000 to give us back our website and continued using the 1SALEADAY mark and other intellectual property of our Company. We were left with no choice but to file a WIPO action to protect our brand.”

“Our company is approved by the U.S. Better Business Bureau and plans on continuing to live up to its exceptional reputation. We are in the process of developing an authorized Australian franchise which will offer deeply discounted items and a reputable customer service,” said Eli Federman, Vice President of 1SaleADay (U.S.).


# # #

About 1SaleADay (U.S.)

1SaleADay (U.S.), a daily deal website operating since its founding in October 2006, offers one deeply discounted product every day. The company has grown to include several sub-sites specializing in family, jewelry, watch and wireless items. The product is only available for a 24-hour period and expires every day at midnight (EST). With over $25 million in sales, the company has climbed the rankings and is currently in the top 1,100 most popular websites in the United States and the largest privately own daily deal site in the world.

http://www.1saleaday.com/
http://family.1s
http://www.crn.com.au/Tools/Print.aspx?CIID=235927
1SALEADAY (U.S.) AWARDED TRADEMARK OWNERSHIP OF AUSTRALIAN COPYCAT-WEBSITE AFTER INTERNATIONAL EXTORTION ATTEMPT

After months of false and misleading product advertisements, cybersquatting and extortionate threats, Australian daily deal domain names are transferred to rightful owners in America.

(Brooklyn, NY – October 20, 2010) World Intellectual Property Organization (WIPO) [1] has ordered the disputed Australian domain names (onesaleaday.com.au and1saleaday.com.au) transferred to Benyamin Federman, CEO of 1SaleADay.com (U.S.) from the previous illegitimate owners. The WIPO panel found that the Australian domain names were identical and confusingly similar to the 1SaleADay (U.S.) trademark. [2]

On numerous occasions the Australian website listed fraudulent items and sold items that were provided by 1SaleADay (U.S.) but were never paid. At least one Australian news agencies featured one of the ridiculous and misleading items that was never actually possible to deliver: the Apple I-Pad® prior to the Australian release date. [3]

WIPO panelist, Andrew F. Christie, published the decision in favor of Federman on September 27, 2010. Christie stated that the previous owners “registered the disputed domain names so as to benefit, without first obtaining consent, from the goodwill and reputation of [1SaleADay's (U.S.)] trademark – which... constitutes registration [and use] of the disputed domain names in bad faith.”

In addition to acting in bad faith, the previous owners ignored a cease and desist letter and then attempted to extort $50,000 from 1SaleADay (U.S.). Christie found “evidence that the [previous owners] offered to transfer the disputed domain names… to Benyamin Federman or [his] competitors for $50,000.”

“1SaleADay (U.S.) sincerely apologizes to any unwitting customers that assumed affiliation between the Australian and 1SaleADay (U.S.) companies. While 1SaleADay (U.S.) cannot be responsible for any harm done while the Australian domain names were high-jacked, 1SaleADay (U.S.) will do everything possible to compensate misled customers whose orders were not filled. 1SaleADay (U.S.) kindly requests that any customers that have issues with their orders to please contact Support@1SaleADay.com,” says Eli Federman, Vice President of 1SaleADay (U.S.).

Eli Federman, Vice President of 1SaleADay (U.S.) summarizes what happened: “We contacted the operators of the AU website to demand that they stop using the 1SALEADAY marks. When their unethical practices continued, our demand was followed up with a formal cease and desist letter. For a period of several months we tried to come to an amicable resolution with the AU operators of our website. However, they refused to turn over the Domain Names and despite these requests they continued demanding $50,000 to give us back our website and continued using the 1SALEADAY mark and other intellectual property of our Company. We were left with no choice but to file a WIPO action to protect our brand.”

“Our company is approved by the U.S. Better Business Bureau and plans on continuing to live up to its exceptional reputation. We are in the process of developing an authorized Australian franchise which will offer deeply discounted items and a reputable customer service,” said Eli Federman, Vice President of 1SaleADay (U.S.).


# # #

About 1SaleADay (U.S.)

1SaleADay (U.S.), a daily deal website operating since its founding in October 2006, offers one deeply discounted product every day. The company has grown to include several sub-sites specializing in family, jewelry, watch and wireless items. The product is only available for a 24-hour period and expires every day at midnight (EST). With over $25 million in sales, the company has climbed the rankings and is currently in the top 1,100 most popular websites in the United States and the largest privately own daily deal site in the world.

http://www.1saleaday.com/
http://family.1s

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Categories:Business/Law
Published by: Eli Federman on Dec 04, 2010
Copyright:Attribution Non-commercial

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12/26/2010

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CybersquattingArchiveChannel
Domain name transfer ordered despite business agreement
International -Kepdowrie Chambers
December 03 2010In
1SaleADay LLC v LivinWireless
(Case DAU2010-0016, September 27 2010), aWorldIntellectual Property Organisation(WIPO) panel has ordered the Australian owner of thedomain names 'onesaleaday.com.au' and '1saleaday.com.au' to transfer them to the US owner of the corresponding trademark. This decision is an example of a common problem that may arise when a trademark owner thatcarries on business in one country allows (or allegedly allows) another company in another country to use its trademark (including as a domain name) under some form of informallicensing, agency, representation or marketing/distribution/reseller arrangement. In this case, the Australian registrant of the disputed domain names (the respondent) claimedthat it had sought and obtained consent from the US owner of the trademark 1SALEADAY (thecomplainant) pursuant to a 'business agreement' under which the respondent would operate a1SaleADay website in Australia and incorporate a local company under the name One Sale ADay Australia Pty Ltd. It was not disputed that a verbal agreement was reached between theparties for the respondent to begin a 1SaleADay business in Australia. However, as issometimes the case, a dispute subsequently developed between the parties as to the exactterms of this verbal agreement. Nevertheless, the respondent asserted that it had a right or alegitimate interest in the disputed domain names and that they had not been registered or usedin bad faith. Although the WIPO dispute procedure is not equipped to deal with substantive contractualdisputes, the simple facts in this case did not support the respondent’s argument. Therespondent conceded that it was aware of the complainant’s 1SaleADay website and businessprior to its registration of the disputed domain names and the incorporation of One Sale A DayPty Ltd. Even more importantly, the registration of the disputed domain names and theincorporation of the company both occurred some months prior to the respondent firstcontacting the complainant and proposing to establish a 1SaleADay website in Australia – and,thus, prior to any agreement (whatever its terms might have been) with the complainant inrespect of the respondent’s use of the 1SALEADAY trademark. The inevitable conclusion that the panel drew from these facts was that the respondent
Domain name transfer ordered despite business agreement - Up...http://www.worldtrademarkreview.com/daily/Detail.aspx?g=ac...1 of 212/3/10 11:50 AM

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