Your Source for Domain Dispute News and Information

Wednesday, March 14, 2007, Vol. 8 No. 03

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In This Issue

XM Satellite Radio Inc. v. Michael Bakker

Virtual Businesses Faced With Real IP Concerns

Google v. Polish Poets

Will the Real Keith Urban Please Stand Up?

Recent Decisions

American Psychological Association v. Lynda Lotman

Complainant, American Psychological Association, filed a claim against Respondent, Lynda Lotman, regarding the <apawriting.com> domain name. The Panel found the disputed domain name to be confusingly similar to Complainant’s APA mark, as it simply appended the generic word “writing” to the mark. Despite a finding that Complainant had established a prima facie case showing Respondent’s lack of rights or legitimate interests in the disputed domain name, the Panel concluded that Respondent had established legitimate interests by using the disputed domain name in association with a bona fide offering of goods and services prior to notice of the dispute. In addition, the Panel found that the use of Complainant’s APA mark was descriptive in nature rather than related in a “trademark sense.” The Panel also found that Complainant failed to provide sufficient evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii) and, therefore, denied Complainant’s request to transfer the <apawriting.com> domain name. The Panel also denied Respondent’s claim that Complainant engaged in reverse domain hijacking, as Complainant was able to show that the disputed domain name was confusingly similar to its mark. Am. Psychological Ass’n v. Lotman, FA 874146 (Nat. Arb. Forum Feb. 12, 2007).

Richard Starkey v. Mr. Bradley

Complainant, Richard Starkey, filed a claim against Respondent, Mr. Bradley, regarding the <ringostarr.mobi> domain name. The Panel found the disputed domain name to be identical to Complainant’s registered and common law RINGO STARR mark. The Panel further found that Respondent had failed to establish that its use of the disputed domain name fell under one of the provisions provided by Policy ¶ 4(a)(ii), and, therefore, Respondent demonstrated no rights or legitimate interests in the disputed domain name. Finally, the Panel concluded that Respondent showed bad faith by opportunistically registering several domain names associated with famous marks, including the disputed domain name, immediately after the registration of the generic top-level domain “.mobi” was permitted. In addition, the Panel found bad faith registration and use because the website resolved to other websites and Respondent earned “click through” revenue. As Complainant established all three elements required by the ICANN Policy, the Panel transferred the <ringostarr.mobi> domain name to Complainant. One Panel member provided a dissenting opinion, finding that non-commercial, non-official, fan-based websites are not evidence of bad faith under the ICANN Policy and that Mr. Bradley's plan to construct such a website was conceivable. Starkey v. Bradley. FA 874575 (Nat. Arb. Forum Feb. 12, 2007).

Shana Hiatt v. personal fan & official site builders : we build great sites c/o zero cost to you contact to build

Complainant, Shana Hiatt, filed a claim under the UDRP against Respondent, “personal fan & official site builders : we build great sites c/o zero cost to you contact to build,” for the registration of the <shanahiatt.com> domain name. Respondent asserted that Complainant had no rights to the SHANA HIATT mark prior to Respondent’s registration of the disputed domain name in 2002. However, Complainant, a model, actress and television show host, asserted use of her name in commerce since 1994, and claimed the disputed domain name was identical to her name and mark. The Panel agreed with Complainant, finding Complainant had satisfied the requirements of Policy ¶ 4(a)(i). The Panel further found that Respondent was not commonly known by the disputed domain name and that Respondent’s use of the disputed domain name to display a website containing hyperlinks to various other websites did not establish rights or legitimate interests in the <shanahiatt.com> domain name. Under Policy ¶ 4(a)(iii), the Panel found that Respondent’s commercial benefit from the likelihood of confusion was indicative of bad faith registration and use. Accordingly, the <shanahiatt.com> domain name was transferred from Respondent to Complainant. Shana Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007).

New Pig Corporation v. Adam Dicker

Complainant, New Pig Corporation, sought the transfer of the <pig.com> domain name from Respondent, Adam Dicker. Complainant is a company that provides various waste management services, and has used its PIG mark in commerce since at least 1987. Complainant asserted, and Respondent agreed, that the <pig.com> domain name was identical to Complainant’s PIG mark, which it had registered with the United States Patent and Trademark Office. After finding that Complainant had satisfied Policy ¶ 4(a)(i), the Panel choose to not analyze Policy ¶ 4(a)(ii) and instead discussed Policy ¶ 4(a)(iii). Under Policy ¶ 4(a)(iii), the Panel found that there was no bad faith registration and use. The Panel found that the disputed domain name had been registered based on the dictionary meaning of the term “pig;” it was not intentionally registered to infringe upon Complainant’s use of the mark. Accordingly, the Panel declined to transfer the <pig.com> domain name. New Pig Corp. v. Dicker, FA 843597 (Nat. Arb. Forum Jan. 29, 2007).

The Vanderbilt University v. U Incorporated

Complainant, The Vanderbilt University, filed a claim against Respondent, U Incorporated, for Respondent’s registration of the <vanderbilt.mobi> domain name. The Panel found that the disputed domain name was identical to Complainant’s VANDERBILT mark under Policy ¶ 4(a)(i). Respondent used the disputed domain name to redirect Internet users to a website promoting an author’s books, including a forthcoming spy thriller that Respondent said would use Complainant’s history and locale as a part of the story. Nevertheless, the Panel found that Respondent had no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), because Respondent was not commonly known by the disputed domain name and because Respondent used Complainant’s mark for Respondent’s commercial gain. The Panel also found bad faith registration and use under Policy ¶ 4(a)(iii), because Respondent offered to sell the disputed domain name registration to Respondent and also requested that professors at Complainant’s university review Respondent’s work. Consequently, the Panel ordered the transfer of the <vanderbilt.mobi> domain name from Respondent to Complainant. The Vanderbilt University v. U Incorporated, FA 893000 (Nat. Arb. Forum Feb. 19, 2007).

XM Satellite Radio Inc. v. Michael Bakker

Complainant, XM Satellite Radio Inc., filed a claim against Respondent Michael Bakker for the registration of the <xm.com> domain name. The Panel first dealt with an initial procedural matter regarding “cyberflying.” “Cyberflying” occurs where the registration of a disputed domain name is transferred after an administrative proceeding has commenced. Here, Respondent had accepted the transfer of the disputed domain name six days after Complainant had filed a complaint against the previous registrant. The Panel concluded that cyberflying had occurred and that the knowledge and actions of the previous registrant should be imputed to Respondent. The Panel found that the previous registrant’s bad faith should be imputed to Respondent because they acted in concert to avoid the effects of the Policy. After finding the disputed domain name to be identical to Complainant’s mark, the Panel found Respondent’s cyberflying to be a significant factor in its findings of no rights or legitimate interests under Policy ¶ 4(a)(ii) and bad faith registration and use under Policy ¶ 4(a)(iii). The Panel ordered the transfer of the <xm.com> domain name from Respondent to Complainant. XM Satellite Radio Inc. v. Bakker, FA 861120 (Nat. Arb. Forum Feb. 27, 2007).

E-PRACTICE

Virtual Businesses Faced With Real IP Concerns

Internet users interested in broadening their business portfolios will find a new opportunity to do so online. A new Internet reality world called Second Life is gaining popularity by offering consumers the opportunity to “imagine[], create[] and own[]” their own virtual person and property online. With a total of over 2.5 million visitors since its inception, and nearly 15,000 to 20,000 people in the virtual world at a time, Second Life creates a new and unique online consumer base for business enterprises. Second Life gives registrants the opportunity to purchase virtual property and open stores to sell their products in the virtual world.

While Second Life offers vast opportunities for people around the world to interact with each other and purchase land, it also creates intellectual property concerns. In Bragg v. Linden Research, a case brought in a West Chester, Pennsylvania local district court, an online user found a questionable backdoor method to buy virtual land through an auction at a fraction of the price. Second Life caught Bragg’s actions and cancelled his account without allowing Bragg to “cash out” his property interests in the virtual world. Bragg is now suing for restitution for the value of the virtual land he won and paid for in Second Life. He claims he has a right to the value of his virtual land, whereas Second life claims they have a right to cancel any account for user violations according to Provision 2.6 of Second Life’s user agreement. The court’s decision will determine whether users’ property rights or the user agreement take precedence in this virtual world.

The intellectual property rights to products sold in the virtual world have also come under scrutiny. Provision 3.2 of Second Life’s user agreement allows users to retain all copyright and other intellectual property rights to content created in the virtual world. However, Second Life states that “real world laws apply to intellectual property infringement [in Second Life].” With respect to copyrights, Second Life follows the laws and procedures described in the Digital Millennium Copyright Act (DMCA), which gives Second Life the right to remove any copyright-infringing material from the virtual world. Second Life takes the same action with trademark-infringing material as well, but uses their own user agreement provisions as grounds for taking action.

In November, a new software program called CopyBot was released which allowed users to duplicate items created in an online virtual world. Second Life users quickly closed their businesses in fear that their copyrights and trademarks would be infringed. In response, Second Life issued a statement explaining that CopyBot violated Provision 4.2 of Second Life’s user agreement. Second Life is attempting to take further steps to increase security and protection of intellectual property rights through open scripts and source codes. The change has brought mixed reactions from Second Life users (see responses).

Ultimately, the next few years will determine much about the intellectual property issues facing Second Life and the virtual businesses in-world. In the meantime, Second Life users will continue to “own” their virtual people and property under Second Life’s Terms of Service.

In The News

Google v. Polish Poets

AFP, February 16, 2007: A group of young Polish artists and writers who call themselves “Grupa Mlodych Artystow i Literatow” or “GMAiL” for short, is being sued by Google, Inc. The Internet search engine giant claims the Polish writers have misappropriated the <gmail.pl> domain name and have no rights to the GMAIL mark. Google has enjoyed much success with its e-mail service and is attempting to lay claim to any variants of the GMAIL mark. The group, for its part, claims that it is not competing with the United States-based Google and purchased the rights to the <gmail.pl> domain name legally and in order to promote its organization, which is designed to publish works of young Polish authors. A spokesperson for the group claims that they have not been offered any financial consideration from Google, Inc. and they have no intention of giving up what they claim to have rightfully purchased. Link to Full Story

Google v. China

CNET, Feb. 26, 2007: Google is facing yet another obstacle to successful entry into the Chinese market. Currently, the <gmail.cn> domain name is registered to ISM Technologies, a Beijing-based Internet service provider. Google is attempting to purchase the domain name registration, which combines the term “gmail,” the name of Google’s email service, with the “.cn” Chinese top-level domain. Google has not yet commenced any sort of legal action over the domain name, perhaps hoping to avoid the complicated politics involved in Chinese intellectual property issues. Google has already captured around 17% of the Chinese Internet e-mail market and has registered the <google.com.cn> and <google.cn> domain names in connection with its Chinese services, but wants to gain market share in China over its biggest rival, Baidu.com. Link to Full Story

Anger and Fear over Dissolution of RegisterFly.com

DataMonitor ComputerWire, February 21, 2007: RegisterFly.com, the well-known registrar of over 900,000 domain names, is in danger of shutting down amidst allegations of corporate malfeasance. As a result, ICANN is considering taking action to protect over 900,000 domain name registrations from being lost in the event RegisterFly goes out of business. Many of RegisterFly.com’s customers have abandoned the company, fearing that their domain names will be taken away. ICANN has not yet determined what actions it will take, but they have confirmed that they have been in contact with RegisterFly.com for some time. RegisterFlies.com, a website formed by a disgruntled former RegisterFly.com customer, has taken on the role of being an informal support mechanism for displeased customers of RegisterFly.com and the remaining staff. Link to Full Story

Increase in Domain Name Disputes

CNET, Feb. 28, 2007: The National Arbitration Forum (FORUM) reported a 21% increase in domain name dispute resolutions in 2006. Since the FORUM began administrating domain name disputes, over 7,600 disputes have been decided through the arbitration process, with 1,658 decisions handed down in 2006 alone. Many disputes involve famous trademarks, including the New York Yankees, George Foreman and Louis Vuitton. This increase in arbitration proceedings parallels an increase in litigation surrounding domain names. All in all, it appears that trademark holders are eager to protect their marks, while domain name registrants are not at all shy about asserting their claims resulting in an overall increase in domain name disputes. Link to Full Story